Second oral proceedings of a European Patent Application

Question

A European Application has been filed. The Examining Division raised a "lack of sufficient disclosure" and a "lack of clarity" objection against the Application. The Examining Division could not be convinced about the sufficiency and clarity of the Application. After an Oral Proceedings the Examining Division issued a decision to refuse the Application. Neither the client nor the representative participated in the Oral proceedings.

An Appeal has been filed against the decision of Examining Division. According to the decision of Board of Appeal the appealed decision must be set aside and the case is remitted to the Examining Division for further prosecution.

The Examining Division raised further objections against the Application.

My question is:

• Will my request for a Second Oral Proceedings be refused?

I only found Art. 116(1) relevant:

Art. 116(1) EPC: Oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings. However, the European Patent Office may reject a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same.

Does the subject of the proceedings mean only the given case or the raised objection against a given case? Are there other articles/rules relevant?

Is my assumption, that the future decision of the Examining Division is also appealable, true? I did not found anything against it.

Answer 1

No, your request will not be refused as long as the topic ("the subject") to be discussed is not the same. The refusal of your request for OP would be a substantial procedural violation that you can appeal, and the request of reimbursement of the appeal fee would have to be accepted.

It is unlikely that you end up discussing the same topic, so the OP request shall be accepted. I imagine the Boards of Appeal set aside the decision and remitted the case to the Examining Division with the acceptance of its decision regarding sufficiency of disclosure and clarity. At first that would appear to mean that sufficiency and clarity cannot be revisited, but that can change if you introduce new matter in the claims or the description that raises new objections on the grounds of lack of sufficiency or lack of clarity. As such objections will refer to a new combination of features, the subject is not the same despite the objections being raised pursuant to the same articles of the EPC.

Any further decision of the Examining Division will be appealable, yes. If you were to appeal a further decision, maybe the Boards of Appeal would examine and decide the fate of the application instead of remitting it to the Division for further prosecution if the appealed decision were to be set aside.