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Case Law of the Boards of Appeal

2.8.1 Telephone conversations

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. Such informal communications and the practice relating to them should be clearly distinguished from the formal examination procedure governed by Art. 96(2) EPC 1973 and R. 51 EPC 1973. The examiner's discretion as to whether to make such an informal communication had to be exercised in accordance with the Guidelines, having regard to the particular circumstances of each individual case. An exercise of such discretion adversely to an applicant, such as in the case in question, could not by its nature be a procedural violation, however, because the procedure for such conversations was informal in the sense that it was not governed by the EPC 1973, but was additional to the procedure provided by the EPC 1973. In any event, in the board's view, in the case in question no criticism could properly be made of the examiner in relation to his failing to telephone the appellant.

In T 160/92 (OJ 1995, 35) the appellant claimed that in two telephone conversations with the primary examiner he was misled into believing that a refusal was not imminent, as a further communication would be issued as the next step of the procedure. The board noted that telephone calls between examiners of the EPO and applicants, in some situations, could be a tool for speeding up an otherwise slower procedure. However, one should be warned against expecting too much from them in critical situations, as misunderstandings could happen more easily than in writing, sometimes promoted by the fact that one of the two participants in the conversation might not be fully prepared for dealing with the case. It was with good reason that the procedure before the EPO was in principle, with the exception of oral proceedings under Art. 116 EPC 1973, a written procedure. Moreover, in the examination (as well as in the opposition) procedure the primary examiner was only one of a division of three examiners, it being well-known that his individual statements could not be binding for the division. Furthermore, telephone conversations were not provided for in the Convention and did not, as such, form part of the formal procedure before the EPO. The board held that the answer to the controversial question whether the applicant was misled about the possibility of imminent refusal of the application must be sought by focusing on the procedurally relevant content of the file.

In T 1905/07 the board held that such an oral communication could in principle allow the applicant to exercise the right to present comments enshrined in Art. 113(1) EPC 1973, either orally (for instance in the oral proceedings planned for the next day) or in writing. However, presenting new grounds in a telephone conversation should not be equated with presenting the same grounds in formal oral proceedings or in a formal written communication. First, mere verbal communication by telephone was more prone to misunderstandings. Secondly, a party also had a right to be heard by the organ which took the decision, i.e. the examining division in the case at issue. A telephone conversation with only one of the examiners of that division did not safeguard this right in the same way as oral proceedings. Whether or not a party's fundamental right to be heard had been infringed depended on the particular circumstances of the case.