2.3.6 Reliance on the International Preliminary Examination Report (IPER)

In T 587/02 the board held that if the only communication preceding the decision to refuse an application merely draws attention to an IPER, the requirements of Art. 113(1) EPC are met provided the IPER constitutes a reasoned statement as required by R. 51(3) EPC 1973 (R. 71(2) EPC), using language corresponding to that of the EPC; in the case of an inventive step objection this requires a logical chain of reasoning which can be understood and, if appropriate, answered by the applicant. In the case in hand, the IPER did not fulfil these requirements, and the board held that the applicant's right to be heard had been violated (see also T 1020/15).

In T 1065/99 the board stated that when an IPER drawn up by the EPO under the PCT was relied on by the examining division, such reliance should not be presented to applicants in such a manner as to suggest that the examining division had not given objective consideration to the patentability requirements of the EPC. In this case, the IPER had been adopted by the examining division as the only basis for its opinion that the application did not meet the requirements of the EPC. The board came to the conclusion that there were three objections which were only obliquely touched upon in the IPER, and thus in the communication under R. 51(2) EPC 1973 (R. 71(1) EPC). Therefore, the party had had no opportunity to contest those objections.