In T 802/97 the board noted that when applying Art. 96(2) EPC 1973 to determine in a specific case whether an applicant should be given a further opportunity to present comments or amendments before refusing an application after a single official communication, the established practice of the examining divisions as set out in particular in the Guidelines for Examination in the EPO is to warn the applicant who had made a bona fide attempt to deal with the examining division's objections, e.g. by a telephone conversation or by a short further written action, that the application will be refused unless he can produce further more convincing arguments or makes appropriate amendments within a specified time limit. Only when the applicant has not made any real effort to deal with the objections raised in the first communication, should the examining division consider immediate refusal of the application, this however being an exceptional case (see also T 587/02).
In T 1388/10 the appellant argued that the refusal of its application had been flawed because refusal directly after a first examining communication was allowed only if the applicant failed to make a "bona fide" response to that communication, whereas in the present case it had indeed made a "bona fide" attempt to overcome the examining division's objections. Its application should therefore not have been refused without a further "warning".
The board noted that examining divisions have discretion over how often to invite an applicant to comment (see Guidelines C-VI, 4.3, last paragraph - April 2010 version). It also had to be borne in mind that the Guidelines merely offered general guidance covering normal occurrences. Their application in specific individual cases was the responsibility of the examining division, which could depart from them in exceptional cases. Also, the Guidelines were not the law – unlike the EPC and its Implementing Regulations (see Guidelines General Part, 3.2 - April 2010 edition). The board pointed out that when reviewing examining divisions' decisions it did not assess whether the division had complied with the Guidelines. Rather, it considered whether the division had exercised its discretion within the limits set by the EPC and its Implementing Regulations. In the case before it, the board held that the examining division's decision not to issue a second communication under Art. 94(3) EPC fell within the discretion available to it, and its exercise of that discretion had not been flawed.
In T 201/98 the board accepted that in the case at issue the appellant's response to the single communication was a bona fide attempt to deal with the examining division's objections. However it was the established jurisprudence of the boards of appeal that an examining division did not exceed its discretionary power by immediately refusing an application, provided that the decision complied with Art. 113(1) EPC 1973, i.e. was based on grounds on which the appellant had had an opportunity to present comments, see T 84/82 (OJ 1983, 451) and T 300/89 (OJ 1991, 480). In the case before it, the board considered that the decision of the examining division was based on grounds on which the appellant had had an opportunity to present comments in accordance with Art. 113(1) EPC 1973.
In T 677/97, the board took the view that the pre-decision examination procedure did not meet the minimum legal standard set by the EPC in Art. 96(2) EPC 1973 and R. 51(2) and (3) EPC 1973. R. 51(3) EPC 1973, by virtue of the phrase "where appropriate", allowed the examining division discretion to issue a first communication which is less than comprehensive. This interpretation of the EPC had been approved in decision T 98/88. It was incumbent on the examining division under Art. 96(2) EPC 1973 to send a second communication containing a reasoned statement as to why the objection under Art. 56 EPC was maintained. In making this finding the board was not departing from the established jurisprudence of the EPO boards of appeal which recognised that it was within the discretion of an examining division to issue a refusal decision after a single communication. In the circumstances of the case at issue, however, an immediate refusal was not a reasonable exercise of this discretion. The limits on the examining division's discretion in this respect were explained in decision T 951/92 (OJ 1996, 53).
The board stated that if a communication under R. 51(3) EPC 1973 and pursuant to Art. 96(2) EPC 1973 did not set out the essential legal and factual reasoning which would lead to a finding that a requirement of the EPC had not been met, then a decision based upon such a finding could not be issued without contravening Art. 113(1) EPC 1973, unless and until a communication had been issued which contained such essential reasoning. If a decision was issued in the absence of a communication containing such essential reasoning, Art. 96(2) EPC 1973 was also contravened, since in order to avoid contravening Art. 113(1) EPC 1973 it was "necessary" to issue a further communication (following decision T 640/91, OJ 1994, 918)."
In T 89/93 the board again held that the examining division could not refuse an application after a first communication if the applicant had made a serious attempt to overcome the objections raised or if it appeared likely that continuing the procedure would lead to a positive result. Following T 908/91, the board decided, however, that reimbursement of the fee for appeal would not be equitable (T 181/95, T 958/99, T 1578/05).
In T 1002/03 the board stated that it was established jurisprudence of the boards of appeal that an examining division did not exceed its discretionary power pursuant to Art. 96(2) EPC 1973 ("as often as necessary") by proceeding to an immediate refusal after a first communication, provided that the decision complied with Art. 113(1) EPC 1973, i.e. was based on grounds on which the appellant had had an opportunity to present comments. In the case in point, the examining division's first and only official communication under Art. 96(2) EPC 1973 stated that the deficiencies mentioned in the IPER gave rise to objections under the corresponding provisions of the EPC. In reply to the official communication the appellant filed a new set of claims in which only claim 1 had been amended to overcome the objection of lack of clarity in the IPER. In the board's view no special warning in the official communication was necessary in these circumstances. Accordingly the appellant's right to be heard (Art. 113(1) EPC 1973) was not violated and the examining division did not exercise its discretion in an unreasonable way by refusing the application after a single official communication (see also T 1969/07).