2.5.1 Reply within the meaning of Article 94(4) EPC

In J 37/89 (OJ 1993, 201), the Legal Board noted that requesting in good time a time-limit extension could also be regarded as a timely answer, even if it did not address the matter at issue. Applicants' answers did not have to contain relevant matter enabling the examining division to alter the view expressed in its communication for a loss of rights under Art. 96(3) EPC 1973 to be avoided. However, an applicant who merely requests an extension of the term for reply which request is then refused, 'fails to reply' within the meaning of that sub-paragraph, with the consequence that the application must be deemed withdrawn.

In T 160/92 (OJ 1995, 35) the board held that Art. 96(3) EPC 1973 did not require "a complete reply", but only "a reply" in order to avoid the consequence of having the application deemed to be withdrawn. A letter of reply to a communication of the examining division filed in due time by the applicant and dealing with substantial points of this communication constituted a reply within the meaning of Art. 96(3) EPC 1973 and thus, from the point of view of procedural law, ruled out the possibility of deemed withdrawal.

In J 29/94 (OJ 1998, 147) the Legal Board observed – in relation to Art. 110(3) EPC 1973 – that there was another form of reply which could result in a refusal, and not in the deemed withdrawal of the application; if the applicant did not want to reply in substance to the communication, it was permissible for him to ask for a decision on the file as it stood. In T 685/98 (OJ 1999, 346) the board noted that this type of reply was in effect a waiver of the right under Art. 113(1) EPC to present comments in relation to the disclosed deficiencies. It concluded, with reference also to J 3/89 and T 160/92 that prior to a valid refusal the applicant must either have exercised his right to comment or have waived this right.

In J 5/07 the Legal Board held that the filing of a divisional application did not constitute a response to an invitation by the examining division in the parent application within the meaning of Art. 96(3) EPC 1973. The Legal Board noted that a divisional application was legally and administratively separate and independent from the grant proceedings concerning the parent application (see G 1/05 date: 2007-06-28, OJ 2008, 271; T 441/92). The filing of a divisional application left the text of the patent application objected to unamended.

In T 861/03 the board found that filing a request for an interview with the processing examiner without also submitting substantive observations on deficiencies identified in the communication under Art. 96(2) EPC 1973 did not amount to an adequate reply for the purposes of Art. 96(3) EPC 1973, under which the legal consequence of failing to submit such a reply was that the application was deemed to be withdrawn.