Short-notice summons to oral proceedings with a new objection
EP application 2 456 789.1 is in examination. On 15 October 2024 the examining division issued a summons to oral proceedings fixed for 3 December 2024, notified to the MyEPO Mailbox the same day. The accompanying annex states that the division intends to refuse the application for lack of inventive step over D1 combined with D4, that auxiliary request 2 on file is not admitted, and - for the first time - that auxiliary request 1 is objectionable under Article 123(2) EPC because its feature 'the housing is welded' appears only in a drawing. The client wants to postpone the hearing because its technical expert will be in Japan on business throughout December, and wants to file a new auxiliary request 3 based on a feature from page 14 of the description. Instructions reach you on 20 October 2024 and the representative will be on annual leave from 8 to 22 November 2024. The client is nervous about the cost of a hearing and asks whether it can simply not attend.
1. Is the notice period for the summons correct? What should you do about it, and by when?
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The notice is too short. Rule 115(1) EPC requires the summons to be despatched at least two months before the date fixed for the oral proceedings, unless the parties agree to a shorter period. Two months from 15 October 2024 is 15 December 2024; the hearing is fixed for 3 December 2024, roughly seven weeks later. The requirement is therefore not met.
What to do. Object in writing immediately - do not wait and do not simply fail to appear. State the calculation, refer to Rule 115(1), and request that the hearing be rescheduled to a date giving the full two months, which conveniently also accommodates the expert's absence in December. Ask for a date after mid-January 2025. Do this well before 3 December, and in parallel ask whether the division is prepared to agree to the shorter period only if a suitable date is offered.
Why not just accept it. The short notice is a procedural defect that prejudices preparation, especially because the division has added a new Article 123(2) objection to auxiliary request 1 at the same time. If the division refuses to move the date and then refuses the application, the failure to observe Rule 115(1) can be raised as a procedural violation in the appeal. That is a fallback, not a strategy: the primary aim is a hearing you can prepare for.
Attendance. Do not simply not attend. Under Article 116 EPC the proceedings can take place in the party's absence and a decision can be taken against the applicant. Absence without a prior request for postponement, or after a refusal of one, is treated as an abandonment of the right to be heard on the day.
2. If the hearing goes ahead on 3 December 2024, by when must the new auxiliary request 3 and any new submissions be filed, and what is the risk of filing late?
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The one-month rule. Rule 116(1) EPC provides that any new facts, evidence or amendments must be filed at least one month before the date of the oral proceedings; the division may disregard anything filed later. One month before 3 December 2024 is 3 November 2024, a Sunday, so under Rule 134(1) EPC the last day is Monday 4 November 2024.
Risk of filing on 25 November, as the client suggested. The request would be late by three weeks. The division has an express discretion to disregard it, and in practice the EPO applies Rule 116(1) strictly, especially where the amendment could have been prepared earlier. The practical consequence is severe: the only substantive fallback would be lost at the hearing itself, leaving the client with the main request and auxiliary request 1, one of which is already under an Article 123(2) objection.
Practical handling. Note the collision with the representative's annual leave from 8 to 22 November: the work must be finished before 8 November, which means drafting in the last week of October. If the hearing is postponed, a new summons will normally fix a new date and the one-month period will run again from the new hearing date, but do not rely on that. Prepare on the assumption that 4 November 2024 is a hard date.
Content of auxiliary request 3. Before filing anything, check that the feature on page 14 has a clear basis and is not itself an intermediate generalisation; adding a new request that invites a fresh Article 123(2) objection at the hearing is worse than having one fewer request.
3. How should the new Article 123(2) objection against auxiliary request 1 be handled, and what should you tell the client about the cost of the hearing?
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The objection. A feature disclosed only in a drawing can be a legitimate basis, but only if it is directly and unambiguously derivable and its technical function is clear from the drawing and the description. Check what the drawing actually shows and whether the description explains the weld. If it does, answer the point in writing before the hearing (by 4 November 2024) with the specific passage, so that the division does not come to the hearing with the objection unresolved. If the objection is sound, do not defend the indefensible: replace auxiliary request 1 with a version in which the feature is defined in words taken from the description, or drop it and rely on the new auxiliary request 3.
Right to be heard. The objection is new and was raised with the summons. Article 113(1) EPC entitles the applicant to comment before any decision based on it; the hearing itself provides that opportunity, but a written response before the hearing is far more effective and may remove the issue altogether.
Cost message for the client. A hearing is not the expensive part of this file - losing the application is. Explain that the auxiliary request for oral proceedings was already on file, that a hearing of a few hours is usually cheaper than an appeal, and that the appeal route (two months from the decision, appeal fee, Article 108 EPC) is the fallback if the division refuses. Point out that non-attendance does not save money: it removes the chance to argue the new objection and very likely produces a refusal. Confirm instructions in writing before 4 November 2024.