2.6.6 Bona fide attempt by the applicant to overcome the objections

In a case where an applicant has made a bona fide attempt to overcome the objections raised by the examining division, Art. 113(1) EPC may require such an attempt to be confirmed in the light of amended claims and substantial comments of the applicant (T 734/91, T 582/93).

In T 734/91 the appellant had filed a fresh set of claims in reply to a communication of the examining division, the subject-matter of claim 1 being considerably changed in the light of the objection of lack of novelty raised by the examining division. The effort by the appellant was therefore considered to represent a bona fide attempt to overcome these objections. Claim 1 as amended had not been dealt with in the communication by the examining division but only in the contested decision. Thus the appellant did not have an opportunity to present his comments with regard to the grounds for refusal of this amended claim 1. The board stated that the examining division had to communicate the grounds against the grant of a patent to the applicant before refusing an application. In doing so it had to exercise its discretion to decide when it was deemed necessary and appropriate to invite the applicant's comments. This had to be done objectively in the light of the circumstances of each case (T 162/82, OJ 1987, 533). This did not mean that the applicant should be given repeated opportunity to comment on the same objections (T 161/82, OJ 1984, 551; T 42/84, OJ 1988, 251; T 243/89). In a case where an applicant had made a bona fide attempt to overcome the objections raised by the examining division, Art. 113(1) EPC 1973 may require such an attempt to be confirmed in the light of amended claims and substantial comments of the applicant. See also T 998/05.

In T 763/04 the board held that the appellant, who had made a bona fide attempt to address the sole objection raised, could have legitimately expected the examining division out of fairness to use the discretion afforded by Art. 96(2) EPC 1973 to offer at least one further opportunity to address the objection. The board considered the refusal after the third communication, which was the first R. 51(3) EPC 1973 compliant communication as regards the ground of lack of novelty, without the issuance of a further communication, to represent a violation of the general principle of good faith and fair proceedings underlying the proceedings before the EPO.

In T 92/96 the board found that, after notification of a correctly reasoned communication from the examining division, the applicants had had an opportunity to comment on the objections set out therein, but had confined themselves to suggesting a minor correction to the claim. The examining division decided to refuse the application, since the applicants had made no real effort to reply to the objections. In the board's view, the applicants had therefore suffered no prejudice. Consequently, the examining division had not committed a procedural violation, particularly with regard to Art. 113(1) EPC 1973.