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Case Law of the Boards of Appeal

 
 
2.3.2 Content of Rule 71(2) EPC communication

According to R. 71(2) EPC (R. 51(3) EPC 1973) any communication under Art. 94(3) EPC (Art. 96(2) EPC 1973), shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent.

If no search opinion has been issued (see Guidelines C-VI, 3; F-V, 13.1(ii) and B-XI, 1.1), the examiner's first communication under Art. 94(3) EPC will, as a general rule (see B-IX, 3) and by analogy with the search opinion, cover all objections to the application (Guidelines C-III, 5).

In T 937/09, the board observed that, according to R. 71(2) EPC, any communication under Art. 94(3) EPC had to contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent. This rule thus contained two requirements: applicants had to be informed, first, of each EPC requirement deemed not to be met and, second, for each such requirement, of the legal and factual reasons why it was deemed not to be met.

In J 32/95 (OJ 1999, 733) the board held that the objection raised by the appellant that the examining division had unduly dealt with the application in a piecemeal manner was also unfounded. According to the Guidelines C-III, 5 (see also version 2012), cited by the appellant, the examiner's first letter should, as a general rule, cover all objections to the application. Pursuant to R. 51(3) EPC any communication shall, where appropriate, cover all the grounds against the grant of the European patent. Thus, whether and to what extent this is to be done is a matter of procedural expediency. This means that the examining division has to weigh the aspects of the case involved. In particular, the likelihood that the objection raised can be overcome, the kind of amendments which can be expected, and any objections which could yet remain thereafter have to be weighed against the amount of additional work involved for the examining division.

In the case at issue, an objection concerning lack of novelty was raised in the first communication against all claims of the application. Such a far-reaching objection can normally only be overcome by substantial amendment of the claims. Therefore, claims amended in this way, if filed, have to be largely re-examined with respect to the prior art. In the view of the board, R. 51(3) EPC therefore does not require that an examining division should immediately raise the objection that the claims on file lack inventive step in relation to other documents, if it is of the opinion that all the claims in the application are anticipated by one document. By contrast, in its second communication concerning the amended claims filed by the appellant, the examining division, although maintaining the non-novelty objection against new claim 1, also raised an objection of lack of inventive step. Thus the board came to the conclusion that the appellant's submission that the examining division had breached R. 51(3) EPC by issuing several communications was unfounded (see also T 937/09).

In T 2311/10, the board held that whether and to what extent the examining division covered all the grounds against the grant of the European patent in a communication of was a question of procedural economy (see J 32/95) and a matter for the division's discretion (see Guidelines C-III, 4).

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 EPC 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 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 EPC itself. The validity of a patent in various contracting states was however not an immediate condition under the EPC (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 (see also T 677/97).