3.3. Patentability requirements under examination in ex parte proceedings

In G 10/93 (OJ 1995, 172) the Enlarged Board ruled that, where the examining division had refused an application, the board had the power to examine whether the application or the invention to which it related met the requirements of the EPC 1973. This also held good for requirements the division had not considered in the examination proceedings or had regarded as fulfilled. The board should then, where appropriate, decide either to rule on the case itself or send it back to the examining division.

This followed from the fact that ex parte review was not of a contentious nature. It involved examination of the patentability requirements in proceedings in which only one party (patent applicant) was involved. The departments involved at every instance had to ensure that these requirements were fulfilled. In ex parte proceedings, therefore, the boards of appeal were not restricted either to examination of the grounds for the contested decision or to the facts and evidence on which that decision was based, and could include new grounds even though in ex parte cases too the main aim of appeal proceedings was to review the contested decision.

This decision was based on case T 933/92, in which an examining division had refused an application for non-compliance with Art. 123(2) EPC 1973. Whilst sharing the examining division's view with respect to Art. 123(2) EPC 1973, the board felt the application should be refused for lack of inventive step. In the board's view, the question whether grounds could be added or replaced was not resolved by G 9/91 and G 10/91.

If an application for which no search had been carried out in accordance with R. 45 EPC 1973, inter alia for lack of clarity of the claims, had been refused for the same reason, a board of appeal need only examine whether the claims failed to comply with the clarity requirement of Art. 84 EPC 1973 to such an extent that it was not possible to carry out a meaningful search. Having found that the claims fulfilled the requirements of the EPC to such an extent that it should have been possible to carry out a search, the board in T 1873/06 remitted the application to the examining division for an additional search to be performed and the substantive examination to be continued. R. 45 EPC 1973 has been streamlined and is now R. 63 EPC.

In T 1367/09, when preparing the communication pursuant to Art. 15(1) RPBA 2007 the board did not raise the issue of Art. 84 EPC 1973. Nevertheless, when reconsidering the case in preparation for the oral proceedings the board noted that Art. 84 EPC 1973 should indeed be addressed in the oral proceedings. The board noted that in the light of G 10/93 (OJ 1995, 172) the board had the power, in ex parte appeal proceedings, to enforce any grounds for refusal of an application, in particular grounds which the examining division did not consider at all or held to be satisfied.

The extent of the obligation to review a case where the appeal is partially withdrawn is discussed in chapter V.A.6.3.4 "Partial withdrawal of appeal by sole appellant and opponent".