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Under the procedure set out in Art. 94(3) EPC, (former Art. 96(2) EPC 1973) any communication shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent (R. 71(2) EPC, former R. 51(3) EPC 1973). Moreover, the examining division should invite applicants as often as necessary to file their comments.
In T 5/81 (OJ 1982, 249) the appellant submitted that, in the only communication sent, the examiner had failed to comment on claim 5, an omission which was contrary to Art. 96(2) EPC 1973 and R. 51(3) EPC 1973. The board noted that an appeal might relate only to a decision subject to appeal within the meaning of Art. 106(1) EPC 1973 and not to preparatory measures. Art. 96(2) EPC 1973 and R. 51(3) EPC 1973 applied exclusively to that preparatory procedure. A failure to comply with these requirements could not be taken into consideration unless it had some influence on the decision to refuse, as in the case of a breach of Art. 113(1) EPC 1973. The appellant's objection was unfounded, not only for this reason, but also because the examiner commented on the content of the claim in question by drawing attention to the possibility of formulating an independent claim based thereon. Since the appellant did not make use of that possibility, the examining division was not obliged to discuss it when refusing the application. The allusion thereto in the reasons for the decision did not form part of the ratio decidendi and was intended solely to demonstrate that the examining division was aware of the fact that the application might contain patentable subject‑matter. A refusal under these circumstances was not open to challenge.
In T 161/82 (OJ 1984, 551) the board noted that a distinction had to be made between the grounds on which a decision was based (ie the requirements of the Convention which were not satisfied by the application or the invention to which it related) and the reasoned statement explaining in greater detail why the examining division was of the opinion that such grounds existed (see R. 51(3) EPC 1973). Art. 113(1) EPC 1973 did not require an applicant to be given repeated opportunity to comment on arguments of the examining division so long as the decisive objections to the grant of the European patent remained the same except for some supplementary observations concerning the applicant's arguments which did not convince the examining division.
In T 568/89 the board held that whether the given reason was correct or not was a matter of judgment and not of procedure.
In T 20/83 (OJ 1983, 419) the board noted that Art. 96(2) EPC 1973 prescribed that the examining division had to draw all obstacles to patentability to the applicant's attention. This conclusion related to the requirements for patentability as laid down in the Convention itself. The validity of a patent in various contracting states was however not an immediate condition under the Convention (see T 830/91, OJ 1994, 728).
In T 98/88 the board pointed out that R. 51(3) EPC 1973 did not make it compulsory for communications in accordance with Art. 96(2) EPC 1973 to set out all the grounds against the grant of the patent. The board's view in this case was that deferral of the examination in respect of the requirements under Art. 52 EPC 1973 until a clear version of the claims had been received did not conflict with R. 51(3) EPC 1973.