3. The boards' application of the Guidelines in specific cases

This section provides a brief overview of the cases mentioned in this report in which the boards have applied the Guidelines. These cases show that, although the boards are not bound by the Guidelines, this does not mean that they do not take them into account or turn to them for inspiration when reaching their decisions. It should be borne in mind that the edition of the Guidelines referred to in the decisions summarised below to illustrate the related case law is that applied by the board in the specific case concerned and not necessarily that currently in force (June 2012).

In T 651/91 the board cited with approval the Guidelines, confirming that a generic disclosure did not normally deprive any specific example falling within that disclosure of novelty.

In T 523/89 the board saw no reason to disagree with the general principle of interpretation laid down in the Guidelines.

In T 631/97 (OJ 2001, 13) the board found that the interpretation of R. 46(1) EPC 1973 was in agreement with that of the Enlarged Board of Appeal in Opinion G 2/92. It also found that the Guidelines were fully consistent with G 2/92 and R. 46 EPC 1973.

In T 587/98 (OJ 2000, 497) the board found that the claims were not "conflicting" claims within the meaning of the Guidelines.

In T 32/95 (ex parte) the board found that, once the applicant had indicated sound reasons for doubting whether a cited document belonged to the state of the art, the examiner should have acted as recommended in the Guidelines, i.e. not pursued the matter further if additional investigation failed to produce sufficient evidence to remove that doubt.

In T 802/97 the board noted that when applying Art. 96(2) EPC 1973, the established practice of the examining divisions was set out in particular in the Guidelines for Examination in the EPO.

In T 946/96 the board noted that if an examining division refused its consent to a further amendment under R. 86(3) EPC 1973, the recognised correct procedure for the examining division to follow was clearly set out in the Guidelines.

In T 300/89 (OJ 1991, 480) the board held, in relation to the appellant's complaint as to the failure of the examiner to telephone as requested, that the practice in relation to such informal communications was clearly set out in the Guidelines.

In T 839/95 the board noted that an interlocutory decision in the case of an allowable auxiliary request was foreseen in the instructions to examiners only for auxiliary requests in opposition proceedings.

In T 736/95 (OJ 2001, 191), having regard to the Enlarged Board of Appeal's decisions in G 10/91 (OJ 1993, 420) and G 1/95 (OJ 1996, 615) and to the Guidelines for Examination in the EPO, the board concluded that the department of first instance at least had to examine whether a fresh ground was relevant. The aim of first-instance proceedings was to avoid invalid patents.

In T 121/06 the board noted that issuing a R. 51(4) EPC 1973 communication containing amendments was not foreseen in the EPC. However, according to the Guidelines for Examination C-VI, 15.1 (old version), an examining division could, instead of issuing an Art. 96(2) EPC 1973 communication, include amendments in the R. 51(4) EPC 1973 communication.

In T 1093/05 the board noted that the examining division should make only such amendments in the communication under R. 51(4) EPC 1973 as it could reasonably expect the applicant to accept, as stipulated in the Guidelines for Examination in the EPO, Part C­VI, 15.1 (old version). Otherwise, it had to issue a communication under Art. 96(2) EPC 1973 (see also T 121/06).

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 T 1709/06 the board noted that although the Guidelines for Examination E-X, 4.4, suggested a procedure for issuing a decision "on the state of the file" taking a standard form, a number of decisions of the boards of appeal (see T 1309/05, T 1356/05) had pointed out that such a standard decision form did not meet the "reasoned" requirement of R. 68(2) EPC 1973 (now R. 111(2) EPC).

In T 1123/04 the board noted that R. 68(2) EPC 1973 (now R. 111(2) EPC) stipulated that decisions of the European Patent Office which were open to appeal had to be reasoned. The criteria for the "reasoning" were, for instance, elaborated in the Guidelines.

The board in T 1741/08 remarked that it would seem that while the statement in Guidelines G-II, 3.7, was not actually inconsistent with the case law of the boards of appeal, the optimistic tone might sometimes mislead (potential) applicants.


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