CLR III B 2.3.1 principles

Art. 113(1) EPC requires that decisions may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

According to the Enlarged Board of Appeal (see Chapter IV.F.3.13.8 "Reasons for a decision allegedly surprising"), this implies that a party may not be taken by surprise by the reasons of a decision, referring to unknown grounds or evidence (see also T 1378/11). A purely subjective surprise, however, has no bearing on whether a party had an adequate opportunity to comment. 'Grounds or evidence' within the meaning of Art. 113(1) EPC need not emanate from the board. If the reason given in a decision corresponds to an argument put forward by the other party (see also T 405/94), the petitioner was aware of it and thus not taken by surprise, unless the board clearly indicated that it regarded those arguments as not convincing.

In T 996/09 the board held that the right to be heard was a fundamental guarantor for the parties that proceedings before the EPO will be conducted fairly and openly (with further reference to J 20/85 and J 3/90) and is intended to ensure that the parties to the proceedings are not taken by surprise by grounds mentioned in an adverse decision (following T 669/90, T 892/92, T 594/00 and T 343/01; see also T 197/88, T 220/93). In T 435/07 the board held that the grounds on which a decision were based had to be communicated to the applicants in such a way that they are put in the position to defend their rights. An objection against the grant of a patent had to be raised in such a way that the applicants were able to understand its factual basis and to react accordingly without having to guess first what the examining division might have had in mind.

Although parties may not be taken by surprise by the reasons for a decision, it is also settled case law of the Enlarged Board of Appeal under Art. 112a EPC that a board of appeal is not required to provide the parties in advance with all foreseeable arguments in favour of or against a request. In other words, parties are not entitled to advance indications of all reasons for a decision in detail (see Chapter IV.F.3.13.5 "No obligation to provide detailed reasons for a decision in advance"). In T 1634/10, T 2405/10 and T 1378/11 the boards explicitly applied this case law of the Enlarged Board of Appeal under Art. 112a EPC to first instance proceedings.

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