T 1356/05 16-02-2006

1. The appeal is admissible.

2. 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.

3. 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."

4. If the board is correctly informed, the practice of accepting a request for a so-called decision 'according to the state of the file' was adopted informally in the early days of the EPO from the German Patent Office practice of facilitating applicants who had an interest in obtaining a formal refusal decision for the purposes of the German statute relating to employed inventors - a decision which, albeit appealable, it was not normally intended to appeal. Since then the practice in the EPO has emerged from the shadows and since 1999 has a mention in the guidelines, with the crucial difference that now the aim in view is to draft and dispatch the adverse decision as speedily as possible to facilitate an early appeal.

5. It would perhaps have reduced misunderstanding if this new 'product' had been relabelled as a 'decision by reference'. 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 minutes, the November communication (cf point 8 below) and the telephone call note respectively.

8. No document on file has a date of 27 October 2004; the board assumes that the November communication was meant.

9. The November communication was however issued before the applicant submitted amended main and first to fourth auxiliary requests, which are the sets of claims on which the application was refused. Although the versions of independent apparatus claim 13 (erroneously referred as claim 15 in the November communication) before and after the November communication differ from each other, there is no record in the file that either the amendments made to the claim or their relevance or lack of it were afterwards discussed (cf points II (e) and II (f) above). It is, therefore, not clear whether the objections raised in the November communication apply to the latest version of the claims.

10. The telephone call note is the summary record of the conversation between the first examiner and the applicant. No objections against the patentability of the application are mentioned therein. The applicant was merely invited to be prepared to discuss in the forthcoming oral proceedings the technical background of the invention and to present comments on a US patent (cf point II (g) above).

11. The minutes cannot be considered a communication pursuant to Article 96(2) EPC. By definition minutes of proceedings are drafted after the proceedings and contain the essentials of the proceedings (Rule 76 EPC). In contradistinction, 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 minutes are a record of proceedings, a communication constitutes a legal notice to a party. The two documents serve quite different purposes.

12. In the decision under appeal the minutes are referred to on the one hand as a communication of the examining division (cf the first paragraph of the decision) and on the other hand the contents of the minutes are treated as "the letter of the applicant" requesting a decision according to the state of the file (cf the second paragraph of the decision). This wishful double vision should have alerted the examining division to the fact that the standard form used for issuing the decision 'according to the state of the file' was not appropriate, but it could also be the sign of a deeper malaise in the form itself and the associated section of the guidelines.

13. During the oral proceedings arguments were exchanged between the applicant and the examining division and these arguments, insofar as they were of substance, were recorded in the minutes, but should have been additionally dealt with in a separate reasoned decision.

14. Moreover the minutes cannot be regarded by themselves as a reasoned decision, since a novelty objection is recorded against the first and second auxiliary requests with respect to an unidentified document D7. In the file however only documents D1 to D4 are identified and the identity of documents D5 to D7 remains obscure. This is unacceptable from the point of the public interest, as explained below in point 17. This holds good even if the appellant does actually know which documents are meant, and therefore does not appear to be adversely affected himself by this flaw in the decision, as evidenced by the appeal in the present case.

15. 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 (cf point 3 above) does not discuss in detail the procedure to be followed if such a request is presented during oral proceedings, 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 oral proceedings if, as in the present case, oral arguments have been made.

16. However, it is beyond doubt that arguments of the applicant presented at oral proceedings must also be considered in the reasons of the decision. Since the minutes of the oral proceedings are prepared only after the oral proceedings itself (cf point 11 above), the minutes are 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. Therefore, the board concludes that in this case a decision must properly address the requests and arguments treated during oral proceedings, and the use of a summary decision ("standard form") briefly hinted at in the guidelines is indeed not appropriate, quite apart from the substantial legal difference between the "minutes" and "communications" as explained at point 11 above.

17. 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 point 3 of the reasons.

18. In accordance with the established jurisprudence of the boards of appeal, the case is remitted to the department of first instance for further prosecution. 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.