3.9. Refusal of a European patent application under Article 97(2) EPC (former Article 97(1) EPC 1973)

Under Art. 97(2) EPC (former Art. 97(1) EPC 1973) if the examining division is of the opinion that the European patent application or the invention to which it relates does not meet the requirements of the EPC, it shall refuse the application unless the EPC provides for a different legal consequence.

In R 14/10 the Enlarged Board held that there was no obligation under the EPC to carry out the examination of a European patent application or patent in its entirety, i.e. in respect of all pending claims if a claim considered unallowable has been maintained and no auxiliary request relating to a set of claims not comprising this unallowable claim had been submitted. In such a case the application or patent failed to meet a requirement of the EPC and was open to refusal or revocation (see T 228/89, referring to T 5/81, OJ 1982, 249; see also T 293/86, T 398/86, T 98/88).

In T 162/88 it was stated that if the European patent application in the version submitted or approved by the applicant contained a claim which the examining division considered unallowable, the examining division had to refuse the European patent application in its entirety under Art. 97(2) EPC and not just the claim concerned (see also T 117/88, T 253/89, T 228/89).

In T 11/82 (OJ 1983, 479) the board held that a European patent application had to satisfy the conditions laid down in the Implementing Regulations (see Art. 78(3) EPC 1973). If, in the opinion of the examining division, the application did not do so, the examining division was obliged by Art. 97(1) EPC 1973 to refuse it.

In several decisions the boards pointed out that it was highly desirable that the examining division should give an appealable decision with sufficient reasoning on all the issues that had been properly raised by the EPO during the examination proceedings and dealt with substantively in the applicant's reply. Such "complete" decisions streamlined the procedure, rendering remittal to the department of first instance unnecessary; the board could decide all issues already raised in the department of first instance without depriving the appellant of the opportunity to have them considered at two instances (see T 153/89, T 33/93, T 311/94).

In T 839/95 the examining division did not take a final decision as provided for in Art. 97 EPC 1973. Instead, it issued a decision indicated as an interlocutory decision under Art. 106(3) EPC 1973 rejecting the main and two auxiliary requests and stating that the invention claimed according to the third auxiliary request was found to meet the requirements of the EPC. The board noted that an interlocutory decision in the case of an allowable auxiliary request was foreseen in the instructions to examiners only for auxiliary requests in opposition proceedings. It did not consider it appropriate for the department of the first instance to proceed in the same way in grant proceedings. In the board's judgment, the purpose of the interlocutory decision in opposition proceedings was intended to save the proprietor the further cost of fulfilling the formal requirements under R. 58(5) EPC 1973 before there was a final decision on the version in which the patent could be maintained (T 89/90, OJ 1992, 456). A corresponding situation did not exist in grant proceedings because there was no adverse party who might object to the version to which the applicant had agreed. The appeal was admissible, since the appellant was adversely affected by the rejection of his preceding requests.

In T 856/05 the appellant had argued that since the decision of the examining division did not give any reasons for refusing claim 6, it was not reasoned, thereby contravening R. 68(2) EPC 1973. The board held that it was sufficient for the examining division, when deciding to refuse a European patent application under Art. 97(1) EPC 1973, to state one ground only which in their opinion would prejudice the grant of a European patent, since the EPC did not contain any provision which would allow a European patent to be partially granted. In the case in hand, the examining division was unable to grant a patent because it was of the opinion that the subject matter of claim 1 did not involve an inventive step. Consequently, the examining division was under no obligation to comment on the other claims.

In T 1423/07 the examining division had refused the application on the basis of the Guidelines. The board stated that the EPC did indeed not contain any explicit provision which would prohibit double patenting. By invoking an "accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention", the passage of the Guidelines made reference to Art. 125 EPC as a basis for not allowing double patenting. Therefore, what had to be evaluated was whether a European application could be refused on the grounds of double patenting on the basis of Art. 125 EPC. The board found that there was a general principle of law generally recognised in the contracting states which did not allow double patenting arising from a granted national patent and a granted European patent, but this did not provide a basis for refusing a European application under Art. 97(2) EPC or Art. 97(1) EPC 1973. In view of the fact that the national patent laws of only two of the contracting states and the case law of a third contracting state provided a basis for refusing a patent application on the grounds of double patenting, there was no principle of law generally recognised in the contracting states which justified refusing a European patent application on the ground of double patenting. For more on the topic of double patenting, see chapter II.F.5 "Prohibition of double patenting".