A New Claim Interpretation, Featured First in a Written Decision, Can Violate The Right to be Heard
Article 113(1) EPC states that 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.
During first instance proceedings, Swarovski-Optik KG's European patent, EP1746451, was upheld with limited claims. However, during second instance (appeal) proceedings, the patent was revoked.
Swarovski-Optik KG filed a petition for review by the Enlarged Board of Appeal under Article 112a(2)(c), alleging that their right to be heard, in the second instance proceedings, had been violated. Swarovski-Optik KG alleged that three procedural errors had occurred.
The first objection was dismissed on the basis that the Patentee had not raised the objection during the appeal proceedings as required by Rule 106 EPC.
The second objection proved to be more successful. The allegation raised by the Patentee was that the Technical Board of Appeal had, in the written decision, construed claim 1 in a way that was not discussed at Oral Proceedings and as a consequence of its construction, reformulated the objective technical problem such that the patent was held to merely provide an alternative solution which was found to be obvious. Of course, by adopting such a claim construction for the first time in the written decision, the Technical Board of Appeal gave the parties no opportunity to comment on it.
The Enlarged Board of Appeal found this to be a serious violation of the Patentee's right to be heard and as a consequence the Technical Board of Appeal's decision to revoke the patent was annulled and the case was sent back to the Technical Board of Appeal to be reheard.
The third objection raised by the Patentee was not considered in light of the Enlarged Board of Appeal's decision with regards to objection two.