2. Decisions taken by the examining or opposition divisions
2.6 Reasoning of decisions
If the division is of the opinion that no patent can be granted, it will substantiate this in a decision citing the individual EPC articles and rules involved. For important general aspects relating to the reasoning of decisions, see the example below and E‑X, 1.3.3.
Example:
Often an application lacking an inventive step also lacks clarity. The decision must clearly set whether the application is refused because the subject-matter of the claims is unclear and would also lack inventive step once clarified or whether it is refused because the subject-matter of the claims lacks inventive step and would have to be clarified once the inventive step objection is overcome.
The reasoning for each of the grounds on which the decision is based must contain, in logical sequence, those arguments which justify the order. It must be complete and independently comprehensible, i.e. generally without references. If, however, a question has already been raised in detail in a particular communication contained in the file, the reasoning of the decision may be summarised accordingly and reference may be made to the relevant communication for the details.
The conclusions drawn from the facts and evidence, e.g. publications, must be made clear. In particular, there must be consistency between the reasons and the facts as set out in the decision and in the minutes (also see E‑X, 2.4). The parts of a publication which are important for the decision must be cited in such a way that those conclusions can be checked without difficulty. Therefore, reference is made to each particular passage in the publication. It is not sufficient, for example, merely to assert that the cited publications show that the subject of a claim is known or obvious, or, conversely, do not cast doubt on its patentability.
The arguments put forward by the examiner during the proceedings form the "skeleton" for the decision and already define a complete and unbroken chain of reasoning leading to refusal. The decision may be based only on reasons already communicated to the applicant (Art. 113(1)). The applicant's arguments must be dealt with either point by point at the appropriate juncture in the chain of reasoning or en bloc at the end. The latter approach is often preferable as it makes clear that the final result is based solely on reasons already communicated to the applicant in compliance with Art. 113(1). In the part refuting the applicant's arguments, the decision must make clear why none of those arguments persuaded the examining division to depart from the final result.
It is particularly important that special attention be paid to important facts and arguments which may speak against the decision made. If not, the impression might be given that such points have been overlooked. Documents which cover the same facts or arguments may be treated in summary form, in order to avoid unnecessarily long reasoning.
The need for complete and detailed reasoning is especially great when dealing with contentious points which are important for the decision; on the other hand, no unnecessary details or additional reasons need to be given which are intended to provide further proof of what has already been proven.
The decision is a standalone document and must include the statement that the application is refused. This serves to indicate that, in case of several grounds, all of them form the basis for the refusal.
The decisions will not contain any matter on which the parties have not had an opportunity to comment.