2.3.2 Bona fide attempt to deal with the examining division's objections

In T 802/97 the board stated that when applying Art. 96(2) EPC 1973 to determine whether an applicant should be given a further opportunity to present comments or amendments before refusing an application after a single official communication, the established practice of the examining divisions as set out in particular in the Guidelines applicable at the time was to warn the applicant who had made a bona fide attempt to deal with the examining division's objections, e.g. by a telephone conversation or by a short further written action, that the application would be refused unless he could produce further more convincing arguments or make appropriate amendments within a specified time limit. It held that only when the applicant had not made any real effort to deal with the objections raised in the first communication, should the examining division consider immediate refusal of the application, this however being an exceptional case. See also T 89/93, T 201/98, T 587/02.

In T 201/98 the board accepted that in the case in hand the appellant's response to the single communication was a bona fide attempt to deal with the examining division's objections. However according to the established case law of the boards of appeal an examining division did not exceed its discretionary power by immediately refusing an application, provided that the decision complied with Art. 113(1) EPC 1973, i.e. was based on grounds on which the appellant had had an opportunity to present comments, see T 84/82 (OJ 1983, 451) and T 300/89 (OJ 1991, 480). In the case in hand, the board considered that the decision of the examining division was based on grounds on which the appellant had had an opportunity to present comments in accordance with Art. 113(1) EPC 1973.

In T 1002/03 the board found that in the circumstances of the case no special warning (that the following stage might be the refusal of the application) in the official communication was necessary. The reasons given in the decision under appeal were essentially the same as those presented in the IPER on which the appellant had had an opportunity to present comments. The appellant's right to be heard (Art. 113(1) EPC) had not been violated and the examining division had not exercised its discretion in an unreasonable way by refusing the application after a single official communication (see also T 1969/07).

In T 1388/10 the appellant argued that it had indeed made a "bona fide" attempt to overcome the examining division's objections and that its application should therefore not have been refused without a further "warning". The board noted that the Guidelines were not the law – unlike the EPC and its Implementing Regulations. It pointed out that when reviewing examining divisions' decisions it did not assess whether the division had complied with the Guidelines. Rather, it considered whether the division had exercised its discretion within the limits set by the EPC and its Implementing Regulations. In the case in hand, the board held that the examining division's decision not to issue a second communication under Art. 94(3) EPC fell within the discretion available to it, and its exercise of that discretion had not been flawed.