2.3.1 Discretion of the examining division

In T 821/96 the board stated that, according to the established case law, it was left to the examining division's discretion to decide whether to issue a further invitation to present comments under Art. 96(2) EPC 1973.

In T 162/82 (OJ 1987, 533) the board held that the interests of orderly and economic examining procedures may preclude the sending of more than one communication where this would not appear to be likely to lead to a positive result. In T 84/82 (OJ 1983, 451) the board found that it was within the discretion of the examining division to interpret the submissions on behalf of the applicant as complete and final, and to assume, in consequence, that no useful purpose would be served by the provision of further opportunities for filing observations, and to reject the application in the second communication, when this was justified by in the circumstances. See also T 201/98, T 79/91, T 1969/07, T 2351/16.

In T 201/98 the board noted, with reference to the established case law of the Boards of Appeal (T 84/82, OJ 1983, 451; T 300/89, OJ 1991, 480) that an examining division did not exceed its discretionary power by an immediate refusal, provided that the decision complied with Art. 113(1) EPC, i.e. was based on grounds on which the appellant had had an opportunity to present comments. In T 162/82 (OJ 1987, 533) the board held that neither Art. 113(1) EPC 1973 nor Art. 96(2) EPC 1973 required that the applicant be given a repeated opportunity to comment on the argumentation of the examining division so long as the decisive objection against the grant of a patent remained the same (see also T 300/89, T 95/04). The board in T 63/93 held that this was particularly the case when the claimed subject-matter had not been substantially modified (see also T 304/91). 

In T 300/89 (OJ 1991, 480) the board noted that the burden lay with an applicant to propose amendments which overcame the objections raised by the examining division in his observations in reply to the first communication in which such objections were raised.

In T 640/91 (OJ 1994, 918) the board stated that the requirement in Art. 96(2) EPC 1973 that the examining division must invite the applicant to file his observations "as often as necessary" implicitly recognised that in certain circumstances the examining division would be legally obliged to invite further observations from the applicant before issuing a decision, for example before issuing a decision based on grounds or evidence on which the Applicant had not previously had an opportunity to present his comments (Art. 113 EPC) Having regard to Art. 113(1) EPC, there was a "necessary" legal obligation for an examining division to invite further observations from an applicant before issuing a decision adversely affecting him in which the immediate issue of the decision was justified on the ground that he had shown lack of good faith in his previous observations. The board pointed out, moreover, that it was in principle not the function of an examining division to assess either the degree of collaboration from applicants or their good faith when deciding whether or not to invite further observations in the exercise of its discretion under Art. 96(2) EPC 1973. The exercise of this discretion depended primarily upon whether or not there was a reasonable prospect that such an invitation could lead to the grant of a patent. See also T 855/90.

In T 677/97 the board noted that R. 51(3) EPC 1973, by virtue of the phrase "where appropriate", allowed the examining division discretion to issue a first communication which was less than comprehensive. This interpretation of the EPC had also been approved in T 98/88. The board held it was incumbent on the examining division under Art. 96(2) EPC 1973 to send a second communication containing a reasoned statement as to why the objection under Art. 56 EPC was maintained. In making this finding the board stated it was not departing from the established case law of the EPO boards of appeal which recognised that it was within the discretion of an examining division to issue a refusal decision after a single communication. In the circumstances of the case in hand, however, an immediate refusal was not a reasonable exercise of this discretion. The limits on the examining division's discretion in this respect were explained in T 951/92 (OJ 1996, 53), in which decision the board stated that if a communication under R. 51(3) EPC 1973 and pursuant to Art. 96(2) EPC 1973 did not set out the essential legal and factual reasoning which would lead to a finding that a requirement of the EPC had not been met, then a decision based upon such a finding could not be issued without contravening Art. 113(1) EPC 1973, unless and until a communication had been issued which contained such essential reasoning. If a decision was issued in the absence of a communication containing such essential reasoning, Art. 96(2) EPC 1973 was also contravened, since in order to avoid contravening Art. 113(1) EPC 1973 it was "necessary" to issue a further communication (following T 640/91, OJ 1994, 918).

In T 449/03 the board stated that the appellant's allegation that the applicant was generally entitled to receive at least two communications in the examination proceedings before a negative decision on patentability was unfounded (see T 84/82, OJ 1983, 451). However, where features are added to a claim in response to an official communication, it is only in exceptional cases that a further communication may be dispensed with (cf. T 161/82, OJ 1984, 551).

In T 5/81 (OJ 1982, 249) the board noted that an appeal might relate only to a decision subject to appeal within the meaning of Art. 106(1) EPC 1973 and not to preparatory measures referred to in Art. 96(2) EPC 1973 and R. 51(3) EPC 1973. A failure to comply with these requirements could not be taken into consideration unless it had some influence on the decision to refuse, as in the case of a breach of Art. 113(1) EPC 1973 (see also T 808/90). The appellant's objection was unfounded, not only for this reason, but also because the examiner commented on the content of the claim in question by drawing attention to the possibility of formulating an independent claim based thereon. Since the appellant did not make use of that possibility, the examining division was not obliged to discuss it when refusing the application. The allusion thereto in the reasons for the decision did not form part of the ratio decidendi and was intended solely to demonstrate that the examining division was aware of the fact that the application might contain patentable subject-matter. A refusal under these circumstances was not open to challenge. See also T 228/89, T 347/04, R 14/10.