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Case Law of the Boards of Appeal

 
 
4.3.2 Decisions 'on the file as it stands' to be reasoned

No provision of the Guidelines can 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 is therefore well-established that, notwithstanding the provisions of the Guidelines, decisions open to appeal must still be reasoned. The standard form provided for by the Guidelines is entirely appropriate in the special case where the examining division fully expressed and reasoned its objections to the application text in preceding communications (T 1182/05). However, a standard decision form for issuing a decision "on the state of the file" which refers to several communications, leaving it up to the board of appeal to construct the applicable reasons by "mosaicing" various arguments from the file, or, which leaves it in doubt which arguments apply to which claim version, does not meet the "reasoned" requirement of R. 68(2) EPC 1973 (now R. 111(2) EPC). See, for example, T 278/00 (OJ 2003, 546), T 861/02, T 897/03, T 276/04, T 1182/05, T 1309/05, T 1356/05, T 1360/05, T 1709/06, T 952/07, T 1612/07, T 1442/09 and T 180/10. These requirements obviously aim at allowing the losing party to understand the reasons for the negative decision taken against it so that it can envisage the filing of an appeal. The same is true for the board of appeal, which has to understand why the department of first instance took the impugned decision (T 952/07).

In T 180/10, contrary to what was stated in the second communication ("the applicant's explanations … have been carefully considered"), it was apparent that the examining division had ignored all the appellant's arguments since this communication and, therefore, the decision were silent on them. The requirements of R. 68(2) EPC 1973 were not fulfilled.

The Guidelines (C-VI, 4.5 - June 2012 version) explain that, in order to comply with the requirement that a decision on the state of the file be reasoned (R. 111(2) EPC), use of a standard form referring to the previous communication is only possible where the previous communication properly identifies the application documents on file and is well-reasoned and complete with respect to the grounds and the reasons for the refusal of the current request.