2.1. Beginning of "substantive examination"

In J 9/10 the Legal Board held that a communication pursuant to Art. 94(3) EPC on EPO Form 2001A entitled "Communication pursuant to Article 94(3) EPC" which was automatically generated by a computer and posted by a formalities officer without the involvement of an examiner appointed to the examining division did not constitute a legally effective act of the examining division and therefore could not be regarded as the beginning of "substantive examination" pursuant to Art. 10b(b) RFees (as amended by decision of the Administrative Council of 15 December 2005; now Art. 11 RFees as last amended by decision of the Administrative Council of 29 June 2016). The Legal Board noted that to ensure predictability and verifiability of the application of Art. 10b(b) RFees, the beginning of "substantive examination" had to be interpreted as requiring a concrete and verifiable act of the examining division as regards "substantive examination" after having assumed responsibility for the examination of the application (see also J 25/10, OJ 2011, 624). The Legal Board held that if a communication of a particular examining division was to be legally valid, it had to have been written on behalf of and represent the views of the members who had been appointed to that division to examine the issues forming the subject of the communication. There was, however, no indication in the file that the appointed primary examiner had actually authenticated the communication under Art. 94(3) EPC before it was despatched by the formalities officer. Therefore, the communication could not be attributed to the examining division, but only to the formalities officer whose name was indicated on EPO Form 2001A. Further, the Legal Board found that the formalities officer, although acting in good faith, had had no power to issue the communication pursuant to Art. 94(3) EPC. Following decisions J 9/10 and J 25/10 the EPO made adjustments to the system for refunding examination fees (see notice dated 29 January 2013, OJ 2013, 153). The examination starting date is now stored in the publicly available part of the electronic file to ensure that it is verifiable. For published applications, this date is visible in the European Patent Register.

In J 17/92 the Legal Board held that allowing consolidation of proceedings was something both permissible and desirable under the EPC, in accordance with the desire expressed in the preamble to the EPC that protection be obtainable in the contracting states by means of a single procedure for the grant of patents. Consolidation was not only in the interest of applicants, but also in that of the public not to have to take into account two separate European patents with the same text. The Legal Board noted that the conditions to be imposed on consolidation should not be more restrictive than necessary. It therefore took the view that the condition that the two applications at issue as filed had to be identical was too stringent. In the case in hand, the Legal Board found that if the form of claims with which the applicant wished to proceed in the consolidated applications was acceptable either as an amended set of claims or as being identical to the set of claims as filed, consolidation should be possible. In the Legal Board's view, such an amended set of claims should prima facie not prevent consolidation.