2.4.4 Failure to consider submissions made after a communication

In T 1709/06 it was held that, in accordance with established case law (see in this chapter III.B.2.4.2), not only must an opportunity to present comments be given, but these comments must actually be taken into account. The decision "on the state of the file" expressly stated that the applicant had filed no submissions after the final communication, which was incorrect. The board held that, because the examining division had ignored potentially significant arguments presented in a reply following a communication containing a new objection, the applicant had been denied its right to comment on all the grounds for refusing the application. The applicant's right to be heard enshrined in Art. 113(1) EPC had therefore been infringed.

The board in T 1997/08 held that for an examining division not to violate an applicant's right to be heard, its decision had to actually address the arguments put forward by the applicant in its reply to the communication. It may be assumed that the right to be heard has been contravened if the reasons given for the examining division's decision merely repeat the reasons given for the communication issued before the said reply (see also T 116/12).

In T 921/94 the board held that the appellant's bona fide submissions and the technical information provided in reply to a communication substantially changed the points at issue, and that the examining division had an obligation under Art. 96(2) and 113(1) EPC 1973 to inform the appellant of the objections arising in the new situation and to invite it to file further observations before refusing the application. A decision which only comprises a mere formal acknowledgement of the applicant's submissions, without dealing with them in substance, contravenes the general principle of good faith and fair proceedings that reasoned decisions contain at least some reasoning on the crucial points of dispute in order to give the party concerned a fair idea of why his submissions were not considered convincing (see also T 1154/04).

In T 296/96 the applicant had submitted unconvincing arguments in his reply to the first and only communication. The examining division refused the application on the basis of the objections mentioned in the first communication, and did not issue a second one. Since, however, the main arguments for refusing the application were a mere repetition of those mentioned in the first communication, the contested decision was based on grounds on which the applicant had had an opportunity to present his comments. Consequently, Art. 113(1) EPC 1973 was not contravened (see also T 2316/10).