2.8.2 Arguments taken into account in the decision of the examining division

According to the jurisprudence of the boards of appeal, the examining division does not have to address each of the party's arguments (see e.g. T 1969/07, T 1557/07, R 19/10).

In T 1557/07 the board stated that with regard to the allegation that the examining division did not fully and accurately deal with all the relevant arguments submitted by the applicants, the examining division was under no obligation to address each and every argument presented by the party concerned. In the case in hand, the examining division had commented on the crucial points of dispute thus giving the applicants a fair idea of why their submissions were not considered convincing. This allegation was therefore also not conclusive. In conclusion, the examining division had not committed a substantial procedural violation.

In R 19/10 the petitioner submitted that Art. 113(1) EPC not only enshrined a party's right to be heard before a decision was issued against it, but also guaranteed its right to have the relevant grounds fully taken into account in the written decision. The Enlarged Board stated that it agreed in principle. However, this principle was not without any limitation, as explained in T 1557/07, referred to by the petitioner itself: provided that the reasons given enable the parties concerned to understand whether the decision was justified or not, the deciding organ is under no obligation to address each and every argument presented by the party concerned.

In T 802/97 the board held that if a decision included several grounds, it should meet the requirements of Art. 113(1) EPC 1973 with respect of each of the grounds. In the board's judgment, if a decision of the EPO included several grounds supported by respective arguments and evidence, it was of fundamental importance that the decision as a whole met the mandatory requirements of Art. 113(1) EPC 1973. Leaving it up to the deciding body to suggest which of the grounds were to be considered as the basis of the decision and which were not – and did not therefore need to comply with the requirements of Art. 113(1) EPC 1973 – could only lead to legal uncertainty and confusion of the parties. An exception from the above principle could be obiter dicta which were not part of the grounds on which a decision is based.