5. Principles for the exercise of discretion

The EPO can only exercise discretion if the power to do so can be derived from the EPC (J 4/87 and J 20/87 OJ 1989, 67).

Thus, in the event of an unforeseeable postal delay causing non-compliance with a time limit, where R. 85(2) EPC 1973 (relating to general interruption or subsequent dislocation in the delivery of mail in a Contracting State) was not applicable so as to extend the time limit, the EPO had no discretion to extend it (J 4/87). Similarly, there was no support anywhere for the idea that the EPO was entitled to exercise any general discretion based on equity in respect of refunding the fee for the European search report (J 20/87, OJ 1989, 67).

When a decision hinges upon the exercise of discretion the reasons should be given. Such reasons should take into account those factors which are legally relevant to the issue in question, and should not simply consider whether the facts of the case are exactly the same as in a previously decided case. Such factors are determined by considering the purpose of the exercise of the discretion in its context, and in the context of the EPC as a whole, e.g. the balancing of the EPO's interest in a speedy completion of the proceedings against the applicant's interest in obtaining a patent which is legally valid in all the Contracting States (T 182/88, OJ 1990, 287; citing T 183/89). This has been followed in many decisions, see e.g. T 951/97, T 749/02, T 497/03, and T 1837/07.

In G 7/93 (OJ 1994, 775) the Enlarged Board stated that if an examining division had exercised its discretion under R. 86(3) EPC 1973 (now R. 137 EPC) against an applicant in a particular case and the applicant filed an appeal against the way in which discretion had been exercised, it was not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the department of first instance, in order to decide whether or not it would have exercised its discretion in the same way as the department of first instance. If a department of first instance was required under the EPC to exercise its discretion in certain circumstances, it should have a certain degree of freedom when doing so, without interference from the boards of appeal. In the circumstances of a case such as that before the referring board, a board of appeal should only overrule the way in which a department of first instance had exercised its discretion if it came to the conclusion either that the department had not exercised its discretion in accordance with the proper principles, or that it had done so in an unreasonable way, and had thus exceeded the proper limits of its discretion (see also T 640/91, OJ 1994, 918).

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