T 0583/04 06-06-2006

1. The appeal is admissible.

2. The decision under appeal is a so-called "decision on the state of the file". This board (in differing compositions) in decisions T 1360/05 and T 1356/05 both of 16 February 2006 has dealt in some length with the appropriateness of decisions in this form and their compatibility with the requirements of Rule 68(2) EPC. In the interests of making the present decision self-contained the present decision reproduces below extensive parts of those decisions.

3. The function of appeal proceedings is to give a judicial decision upon the correctness of a separate earlier decision taken by a first instance department (cf inter alia T 34/90 (OJ 1992, 454) and G 9/91, point 18 of the reasons (OJ 1993, 408)). A reasoned decision issued by the first instance department meeting the requirements of Rule 68(2) EPC is accordingly a prerequisite for the examination of the appeal pursuant to Article 110 EPC.

4. In the present case the examining division refused the application in response to a request for a decision "according to the state of the file". The Guidelines for Examination in the EPO (June 2005) E-X 4.4, state:

"Applicants may request a decision 'on the file as it stands' or 'according to the state of the file', eg when all arguments have been sufficiently put forward (sic) in the proceedings and the applicant is interested in a speedy appealable decision. In such a case, the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision."

5. In the view of this board such a first instance decision by reference is entirely appropriate when the communication incorporated by reference contains a fully reasoned exposition of the examining division's objections to the current application text and refutation of any rebuttal by the applicant. Such a procedure is not only efficient but also effective in making it transparent that the decision is being taken on the agreed text and that nothing is being said in the decision which has not already been communicated to the applicant with an opportunity to present comments, thus guaranteeing compliance with Article 113(1) and (2) EPC.

6. A number of decisions of the EPO Boards of Appeal have pointed out however that a decision form which refers to several communications, leaving it to the board of appeal to construct the applicable reasons by mosaicing various arguments from the file, or which leaves it in doubt which arguments apply to which claim version, does not meet the 'reasoned' requirement of Rule 68(2) EPC; cf T 278/00 (OJ 2003, 546), T 861/02, T 897/03, T 276/04 and T 1309/05. The decision under appeal in T 701/01 also used the standard form for a decision 'according to the state of the file' and the deciding board found that Article 113(2) EPC had not been complied with since the preprinted form text used did not reflect the facts.

7. Notwithstanding the fact that the guidelines and the standard form text of the decision under appeal sanction reference to previous communication(s) - which in this context has to be understood as reference to communications pursuant to Article 96(2) EPC - the dates inserted by the examining division in the form text of the decision under appeal here are those of the phone call note, the July 2003 annex and the October 2002 communication respectively.

8. The October 2002 communication and the July 2003 annex were however issued before the applicant submitted an amended set of claims in November 2003, which is the set of claims on which the application was refused. It is, therefore, not immediately clear to what extent the objections raised in these earlier communications apply to the latest version of the claims.

9. The phone call note is the summary record of the conversation between the first examiner and the applicant and is not sensu stricto a communication pursuant to Article 96(2) EPC. A communication should contain the factual and legal reasoning as to why an application does not fulfil the requirements of the EPC and invite the applicant to file his observations (Article 96(2) EPC). Whereas the phone call note is a record of a dialogue, a communication constitutes a unilateral legal notice to a party. The two documents serve quite different purposes. This does not exclude the possibility of the statements made orally by phone being confirmed and adopted in a formal communication from the examining division inviting observations with a term set for reply. This was not the case here, for the understandable reason that the fate of the oral proceedings which had been arranged was still uncertain at the end of the phone call.

10. The applicant requested a decision on the state of the file. Such a request is not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the suggested procedure in the guidelines; cf T 1309/05, point 3.7 of the reasons. Quite apart from the fact that no provision of the guidelines can override an article or rule of the EPC, such as Rule 68(2) (T 861/02, point 5 of the reasons), it is noted that the quoted passage in the guidelines (point 4 above) does not discuss in detail the procedure to be followed if such a request is presented during a phone call during which there has been a substantial discussion of the case and it is not at all apparent that the suggested procedure is to be applied under such circumstances. On the contrary, it appears rather to concern the situation where an applicant relies only on the written procedure. The term "state of the file" implies that all relevant facts and arguments are already on file - ie they exist in a written form - , which can hardly be the case immediately following a phone call if, as in the present case, oral arguments have been made.

11. A phone call note is most probably not meant to be included in the term "previous communications" in the cited passage of the guidelines (E-X 4.4). As noted above, these passages of the guidelines are not intended to free the examining division from its obligation to comply with Rule 68(2) EPC, ie the obligation to issue a decision presenting the legal and factual reasons for refusing the application which have been formally notified to the applicant with an opportunity to comment.

12. By the same token, even if an applicant were to waive his right to a reasoned first instance decision expressis verbis, it hardly authorises the examining division to dispense with it. The duty to provide reasons in administrative decisions is a fundamental principle in all contracting States, Rule 68(2) EPC being simply an expression of this principle. Further, from the point of view of the practical functioning of the system envisaged in the EPC, absent a reasoned decision within the meaning of Rule 68(2) EPC the board cannot examine the appeal (Article 110 EPC); cf T 278/00 supra, at point 3 of the reasons.

13. In accordance with the established jurisprudence of the boards of appeal, the case is remitted to the department of first instance for further prosecution, such prosecution to take account of amendments made on appeal. The appeal is allowed insofar as the decision is set aside and the appeal fee is reimbursed pursuant to Rule 67 EPC by reason of the substantial procedural violation constituted by non-compliance with Rule 68(2) EPC. The reimbursement is equitable since the appellant was obliged to file this appeal to obtain a reasoned decision to which he was entitled pursuant to Rule 68(2) EPC and which will allow the board to examine the factual and legal reasoning underlying the refusal. It follows also that no purpose would be served by appointing oral proceedings as requested.