Case Law of the Boards of Appeal

In T 292/90, regarding inventive step, the examining division had merely said that the claimed process amounted to an obvious juxtaposition of the teachings of documents 2, 3 and 4. There was no explanation of how the examining division had arrived at this conclusion. The board considered this form of reasoning to be insufficient. The reasoning given in a decision open to appeal had to enable the appellants and the board of appeal to examine whether the decision was justified or not. A decision on inventive step therefore had to contain the logical chain of reasoning which had led to the relevant conclusion (see also T 52/90).

In T 740/93 the case had been sent back to the department of first instance because of a procedural violation (incorrect composition of the opposition division), with the order for further prosecution by a correctly composed opposition division. The new opposition division rendered a decision which was nearly identical to the first one. The board held that, in accordance with R. 68(2) EPC 1973 (now R. 111(2) EPC), decisions of the EPO which were open to appeal had to be reasoned. In this respect the board accepted that reasoning did not mean that all the arguments submitted should be dealt with in detail, but it was a general principle of good faith and fair proceedings that reasoned decisions should contain, in addition to the logical chain of facts and reasons on which every decision was based, at least some reasoning on crucial points of dispute in this line of argumentation, in so far as this was not immediately apparent from the reasons given, in order to give the party concerned a fair idea of why his submissions were not considered convincing. Since the second decision was nearly identical to the first one, it did not meet the requirements of R. 68(2) EPC 1973, in that it was not sufficiently reasoned, which failure amounted to a substantial procedural violation.

In T 698/94 the board noted that neither the minutes of the oral proceedings before the opposition division nor the "Summary of Facts and Submissions" of the appealed decision itself contained the slightest hint at the arguments brought forward by the parties. It was impossible for the parties to the proceedings to see how the opposition division had arrived at its conclusion of lack of novelty. As a result, the losing party was deprived of its legitimate right to challenge the reasoning on which the decision was based, which was the very purpose of proceedings before the boards of appeal (see G 9/91, OJ 1993, 408). The board explained that the requirement of R. 68(2) EPC 1973 (now R. 111(2) EPC) for decisions to be "reasoned" meant that the decision had expressly to set out the logical chain of argument upon which the conclusion and therefore the final verdict were based, in respect of each and every ground that had been pleaded and substantiated. The de facto absence of reasoning in the decision under appeal represented a substantial procedural violation.

In T 652/97 the board held that the principle enshrined in R. 68(2) EPC 1973 (now R. 111(2) EPC) ensured a fair procedure between the EPO and parties to proceedings, and the EPO could only properly issue a decision against a party if the grounds on which it was based had been adequately reasoned. The decision had not provided the opponent with any reasoning concerning its main argument, which conflicted with the requirements of R. 68(2) EPC 1973 and constituted a substantial procedural violation.

In T 473/98 (OJ 2001, 231) the board held that it is entirely appropriate and desirable in the interests of overall procedural efficiency and effectiveness that an opposition division should include in the reasons for a revocation decision pursuant to Art. 102(1) EPC 1973 employing the standard decision formula, by way of obiter dicta, findings which could obviate remittal in the event of the revocation being reversed on appeal.

In T 897/03 the board held that a decision that leaves it to the appeal board and the appellant to speculate as to which of the reasons given by the examining division in different communications might have been decisive for the refusal of the application, could not be considered to meet the requirements of R. 68(2) EPC 1973. The decision under appeal did not contain any specific reasons, but merely referred to various communications issued by the examining division (see T 652/97 and T 278/00, OJ 2003, 546).

In T 1356/05 (also T 1360/05) the applicant requested a decision on the state of the file. The board held that such a request was not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the suggested procedure in the Guidelines (Guidelines E-X, 4.4 - June 2005 version; see also T 1309/05). The board stated that quite apart from the fact that no provision of the Guidelines could override an article or rule of the EPC 1973, such as R. 68(2) EPC 1973 (now R. 111(2) EPC) (T 861/02), it noted that the quoted passage in the Guidelines did not discuss in detail the procedure to be followed if such a request was presented during oral proceedings, and it was not at all apparent that the suggested procedure was to be applied under such circumstances. On the contrary, it appeared rather to concern the situation where an applicant relied only on the written procedure. The term “state of the file” implied that all relevant facts and arguments were already on file - i.e. they exist in a written form -, which could hardly be the case immediately following oral proceedings if, as in the case at issue, oral arguments had been made.

In T 1182/05 the board observed that a number of decisions of the boards of appeal pointed out that a decision form which refers to several communications, leaving it to the board of appeal and the appellant to speculate as to which of the reasons given by the examining division in its communications might be essential to the decision to refuse the application did not meet the "reasoned" requirement of R. 68(2) EPC 1973 (now R. 111(2) EPC) (see T 861/02, T 897/03, T 276/04 and T 1309/05). In the case at issue the examining division, in response to the appellant's request "to render a decision on the record", refused the application using EPO form 2061 for a so-called "decision on the state of the file". The Guidelines for Examination in the EPO (June 2005; now April 2010) E-X 4.4, provides for a standard form which was entirely appropriate in the special case where the examining division fully expressed and reasoned its objections to the application text in preceding communications. However, the decision of the examining division did not contain any specific reasons. Thus it was left to the board and to the appellant to speculate as to which were the decisive reasons for the refusal. This was at odds with the established jurisprudence of the boards of appeal that for the requirements of R. 68(2) EPC 1973 (now R. 111(2) EPC) to be fulfilled the decision must include, in logical sequence, the arguments justifying the order. The grounds upon which the decision was based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see T 278/00 (OJ 2003, 546)). The applicant's request "to render a decision on the record" was not to be construed as a waiver of the right to a fully reasoned first-instance decision, even in the light of the suggested procedure in the Guidelines (see T 1309/05, T 583/04). In its decision, the examining division should have explained the precise reason or reasons for its decision and why the counterarguments of the applicant were not considered convincing. By failing to do so the examining division did not issue a reasoned decision within the meaning of R. 68(2) EPC 1973 and therefore committed a substantial procedural violation.

In T 1123/04 the board noted that it was established jurisprudence of the boards of appeal that the opportunity to present comments and arguments guaranteed by Art. 113(1) EPC 1973 was a fundamental principle of the examination, opposition and appeal procedures. As pointed out in decision T 508/01 this was not just a right to present comments but also to have those comments duly considered. Further, the board noted that R. 68(2) EPC 1973 (now R. 111(2) EPC) stipulates that decisions of the European Patent Office which are open to appeal must be reasoned. The criteria for the "reasoning" are, for instance, elaborated in the Guidelines, Part E-X, 5 : the requirement in R. 68(2) EPC 1973 for a "reasoned decision" was not only motivated by the basic legal principle that a party should be informed of the detailed grounds of a negative decision, but that such reasoning and grounds should be comprehensible to those conducting a later judicial review (R. 68(2) EPC 1973: "Decisions ...which are open to appeal"). It should not be necessary for a board of appeal to have to reconstruct or even speculate as to the possible reasons for a negative decision in the first instance proceedings. In principle, a decision referred to in R. 68(2) EPC 1973 should be complete and self-contained.

In T 265/03 the board held that the decision of the examining division could not be considered to be a reasoned decision within the meaning of R. 68(2) EPC 1973 (now R. 111(2) EPC), in the sense that it was not reasoned in relation to the subject matter on file, i.e. the applicant's latest request. The board stated that it was clear that the applicant's request for a decision "on the status of the file" was only a waiver of his right under Art. 113(1) EPC 1973 to present comments on the reasons for a likely refusal, such waiver being in accordance with his expressed intention not to comply with the summons to oral proceedings. Such a request was not to be construed as a waiver of the right to a fully reasoned first-instance decision. As a matter of fact, the "state of the file" was not restricted to those documents on file which were issued by the EPO, but also included all those documents and arguments which were filed by the applicant prior to (or even simultaneously with) his request for a decision "on the status of the file". Therefore, it was clear that the request of the applicant encompassed all the requests filed. The examining division was obliged by R. 68(2) EPC 1973 to issue a decision presenting all the legal and factual reasons for refusing the application. The board made it clear that the duty to provide reasons in administrative decisions was a fundamental principle in all contracting states, R. 68(2) EPC 1973 being simply an expression of this principle. Further, from the point of view of the practical functioning of the system envisaged in the EPC, without a reasoned decision within the meaning of R. 68(2) EPC 1973, the board could not examine the appeal (Art. 110 EPC 1973).

In T 246/08 the board noted that established jurisprudence has interpreted Art. 113(1) EPC 1973 to mean that the comments presented must be considered in the ensuing decision (J 7/82, OJ 1982, 391). Thus a decision which explicitly fails to take into account potentially refutative arguments submitted by a party, i.e. arguments which may militate against or cast doubt on the decision in question, contravenes Art. 113(1) EPC 1973, thereby constituting a substantial procedural violation. In brief, a decision must show that all potentially refutative arguments adduced by a party are actually refutable.