T 0246/08 (Seismic sensor/SCHLUMBERGER) 14-08-2008

1. The appeal is admissible.

2. Right to be heard (Article 113(1) EPC 1973)

2.1 Article 113(1) EPC 1973 reads:

"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments"

2.2 Established jurisprudence has interpreted this provision to mean that the comments presented must be considered in the ensuing decision (J 7/82 OJ EPO 1982, 391). Thus a decision which fails to take explicitly into account potentially refutative arguments submitted by a party, ie arguments which may militate against or cast doubt on the decision in question, contravenes Article 113(1) EPC 1973, thereby constituting a substantial procedural violation. In brief, a decision must show that all potentially refutative arguments adduced by a party are actually refutable.

2.3 The examining division objected in a first communication (February 2006)(summarized under point IV.(a) above) that the coupling device of claim 1 was not new, as document D1 disclosed a coupling device comprising a collar (24) defining an opening (25a) therethrough to receive a seismic sensor (3) such that the collar permitted rotation about the seismic sensor and at least three extensions from the collar, the extensions capable of rotating with the collar such that any two of them may couple to the ground (fig. 5b and page 16).

2.4 In response (June 2006) the applicant argued that the base member 24 in D1, which the examining division equated to the collar of the present application, was not a collar, but had an extension in the axial direction that was comparable to the extension in the transverse direction. A collar, however, had generally the form of a band or ring, with relatively limited extent in the axial direction. The applicant subsequently (July 2007) submitted evidence in the form of a dictionary definition of collar stating that the latter was "any of various ring-like devices used to limit, guide or secure a machine part" (see points IV.(b), (d) and (l) above).

2.5 The examining division did not refute these arguments, contest the dictionary evidence or explain why in their view the base member disclosed in document D1 could be considered a collar, either in the communications sent to the applicant or in the decision under appeal. The latter merely contains the assertion that, as already stated in the first communication, document D1 "clearly shows" the features of the device of claim 1 of the main request.

2.6 There is thus no evidence in the decision that the examining division took the applicant's evidence and arguments into consideration. As stated in T 763/04 "it is not sufficient to observe Article 113(1) merely formally by granting the Applicant the procedural possibility for presenting comments, as this was the case here. This procedural step falls short of its legislative purpose and remains a pure formality, if there is no trace in the file that such comments were indeed read and discussed on the merits, beyond a mere acknowledgement of their existence. In summary, Article 113(1) requires not merely that a party be given an opportunity to voice comments, but more importantly it requires that the deciding instance demonstrably hears and considers these comments." (reasons, 4.4)

2.7 The board judges therefore that the failure to take into due account a potentially refutative argument of the applicant when deciding the case deprived the applicant of their right to be heard in contravention of Article 113(1) EPC 1973 and amounts to a substantial procedural violation.

3. Application of Rule 137(3) EPC (former Rule 86(3) EPC 1973)

3.1 The examining division declared in the fax of 5 June 2007 (IV.(g)) that no consent was given to further amendments under Rule 86(3) EPC 1973. A similar declaration, stating that no further amendments were consented to, was reiterated in the minutes of the oral proceedings and in the subsequent communication of 18 June 2007, although the minutes contained a new argument as to why claim 1 did not fulfil Article 123(2) EPC 1973 (see point IV.(j)above).

3.2 It is the established jurisprudence of the boards of appeal that the power of the examining division to consent to amendments under Rule 137(3) EPC is a discretionary power that has to be exercised after considering all the relevant factors of the specific case and balance in particular the applicant's interest in obtaining an adequate protection for his invention and the EPO's interest in bringing the examination to a close in an effective and speedy way. Moreover, the exercise of a discretionary power has to be reasoned, otherwise it would be arbitrary. Thus, in T 872/90 the then deciding board held that neither the remark "the applicant has already once amended the claim" nor a reference to Rule 86(3) EPC 1973 could be considered as reasoning, because such statements solely constituted a reference to the power given to the examining division by the above rule.

3.3 It follows that a refusal of consent to amend made in advance of any amendment being submitted cannot be a reasonable exercise of discretion pursuant to Rule 137(3) EPC. Indeed in the judgement of the board it is ipso facto a substantial procedural violation since it risks deterring an applicant from making an amendment which could not reasonably have been forbidden. There is a world of difference between a preemptive formal declaration that no amendments will be admitted and advising the applicant that a discretionary power to permit or refuse amendment exists and will be exercised in the event that amendments are submitted.

3.4 As set out in detail at point IV(l) above, the applicant amended claim 1 of the main request in response to a new objection, insisting that they had the right to do so. The examining division gave two reasons for finding the amended claim request inadmissible (see point IV(m) above). The first reason merely invoking its earlier preemptive declaration constituted a further substantial procedural violation for the reasons explained at point 3.2 above. The second reason based on the fact that the amended claim 1 returned in substance to claim 1 as originally filed, and to which the original objection of lack of novelty still applied, would have been per se procedurally in order were it not for the fact that it failed fully to address the applicant's responses of November 2006 and July 2007 in particular on the meaning of the word collar. To that extent this second reason was also tainted by a substantial procedural violation.

4. Time limit of a communication sent under Article 96(2) EPC 1973

4.1 The communication under Article 96(2) EPC 1973 of 18 June 2007 (IV.(k)) was sent with a time limit of one month.

4.2 Article 120 EPC states that the Implementing Regulations shall specify inter alia the time limits which are to be observed in proceedings before the EPO and are not fixed by the Convention. Pursuant to this article Rule 132(2) EPC (former Rule 84 EPC 1973) stipulates that, unless otherwise provided, a period specified by the EPO shall be neither less than two months nor more than four months. Although, in some circumstances, this period may be extended, it may not be shortened.

4.3 The sending of a communication setting a time limit of only one month, and stipulating that failure to respond in due time would result in the application being deemed withdrawn (Article 96(3) EPC 1973), amounted to a further substantial procedural violation, since it deprived the applicant of their right to the conventionary minimum period of two months to prepare and submit their response.

5. The refusal ground for the main request

5.1 The decision under appeal specified the legal ground for refusing the main request as "the application is lacking a valid set of claims for the Main Request as required by Article 78(1) EPC.".

5.2 The board notes that the Guidelines for Examination indicate Article 113(2) EPC 1973 as the legal basis for refusing an application in the circumstances of the present case, ie in which there exists no agreed claim text (C-VI.4.9, 5th paragraph, version December 2007).

5.3 The board prefers the approach of the examining division for the reason that Article 78(1)(c) EPC 1973 is a requirement of the application not only for according a filing date, but also for substantive examination and grant (Singer/Stauder EPC 3rd ed Art 78 @ 6) and Benkard EPÜ Art 78 2nd paragraph) whereas Article 113(2) EPC 1973 is silent as to the legal consequence of the absence of an agreed text.

5.4 Although an examining division should normally apply the guidelines, failure to do so is neither a mistake in law nor a procedural violation. For the reasons given above, in this particular instance the board sees the deviation as a matter for approval rather than reproach.

6. What could have been done procedurally

6.1 It is at first sight odd that a contravention of Article 113(1) EPC 1973 could have occurred in this case, considering the several communications from the examining division and the non-appearance of the applicant at oral proceedings appointed at the latter´s request. However, the occurrence of a substantial procedural violation is an objective fact that may arise even with the best intentions of the persons concerned. As shown by this case, an applicant is not helped even by several communications if their potentially refutative argument is not dealt with in any of them and not even in the refusal. Given that the examining division decided, for whatever reasons, that the applicant would be given a further opportunity to comment on the possible grounds of refusal the latter could expect that the opportunity to comment pursuant to Article 113(1) EPC 1973 was not a mere formality, but a genuine opportunity to voice their arguments and have them heard. Otherwise the invitation to submit further arguments would be nugatory.

6.2 Admittedly, the non-appearance of the applicant did not make the application of Rule 86(3) EPC 1973 easier, and the board recognises that the guidelines do not offer clear instructions for this situation. It is not for the board to pinpoint the exact moment when things went wrong or to prescribe the correct procedure for applying Rule 86(3) EPC 1973 in this specific case. That said, in retrospect it appears to the board that things could have been put right procedurally even at a late stage of the proceedings, practically at any time before the issuance of the refusal decision. A discussion of the meaning of "collar" could have been included in any of the communications or at least in the refusing decision. The application of Rule 86(3) EPC 1973 in the decision could also have been defended, simply by justifying its application with the substance of point II.I.2 of the refusing decision, instead of relying on the mere existence of this rule and the discretionary power of the examining division based on this rule.

6.3 The two procedural violations referred above under points 3 and 4 could have been remedied afterwards respectively by informing the applicant that their amendments would be considered, but that the discretionary power of the examining division would be exercised and by sending a further communication with a new, correct time limit of at least two months.

6.4 For the avoidance of doubt the board emphasises that the above considerations relate solely to the procedural aspects of this case. In view of the order below the board refrains from commenting on the substantive issues.

7. Having regard to the substantial procedural violations identified above and the fact that inter alia the applicant was obliged to file this appeal to ensure a hearing of potentially refutative arguments reimbursement of the appeal fee is equitable (Rule 67 EPC 1973).

8. Pursuant to Article 111(1) EPC 1973 and 11 RPBA 2007 it is appropriate that the case be remitted to the department of first instance for further prosecution absent special reasons for doing otherwise.

9. It is noted that the applicant has no right to further oral proceedings before the examining division on the same issues (Article 116(1) EPC 1973, second sentence).