T 0640/91 (Examination procedure) of 29.09.1993

I. The requirement in Article 96(2) EPC that the Examining Division shall invite the applicant to file his observations "as often as necessary" implicitly recognises that in certain circumstances, there is a legal obligation upon the Examining Division to invite further observations from the applicant before issuing a decision which adversely affects the applicant.

II. Having regard to Article 113(1) EPC, there is a "necessary" legal obligation for an Examining Division to invite further observations from an applicant, before issuing a decision adversely affecting the applicant in which the immediate issue of the decision is justified on the ground that the applicant has shown lack of good faith in his previous observations.

III. A Board of Appeal should only overrule the way in which a first instance department has exercised its discretion in a decision in a particular case if the Board comes to the conclusion that the first instance department in its decision has exercised its discretion according to the wrong principles, or without taking into account the right principles, or in an unreasonable way.

IV. It is in principle not the function of an Examining Division to assess either the degree of collaboration from an applicant or his good faith, when deciding whether or not to invite further observations in the exercise of its discretion under Article 96(2) EPC. The exercise of such discretion depends primarily upon whether or not there is a reasonable prospect that such an invitation could lead to the grant of the patent application (following Decisions T 162/82, OJEPO 1987, 533, and T 84/82 OJEPO 1983, 451).