A decision to refuse the application cannot be issued without a first communication in examination having been sent (see C‑III, 4 and E‑IX, 4.1) or oral proceedings having been held (see C‑III, 5). Therefore the examining division may not refuse the application directly after the reply to the search opinion under Rule 70a(1) or directly after the reply to the WO‑ISA under Rule 161(1), even if the objections raised in the search opinion or WO‑ISA remain the same and there is no pending request for oral proceedings.
If, despite the applicant's submissions, i.e. amendments or counter-arguments, objections persist after the applicant's reply to the first communication under Art. 94(3) in examination, then a refusal can be issued. If there is a pending request for oral proceedings, oral proceedings must be held and the decision to refuse will, where appropriate, be announced at the end of the oral proceedings. Similarly, if summons were issued as the first action in examination, the decision to refuse will, where appropriate, be announced at the end of the oral proceedings.
In the event that refusal is contemplated, the examiner should bring the application before the other members of the examining division, which may then decide to refuse the application. In any event, at some stage, the primary examiner will consult the other members of the examining division with a view to establishing whether the application should be refused or a patent should be granted. If the division intends to refuse the application, a written reasoned decision is necessary and this will normally be prepared by the primary examiner (see E‑X, 2.3 and E‑X, 2.6). In preparing the decision, the examiner must take care to abide by the general principles set out in Art. 113(1), i.e. the decision must be based on grounds or evidence on which the applicant has had the opportunity to comment (see E‑X, 1.1 and E‑X, 1.2).
In addition, the applicant's attention must be directed to the provisions for appeal laid down in Art. 106 to Art. 108. If oral proceedings take place (see E‑III), the decision may be given orally but must subsequently be notified in writing, the time limit for appeal then running from the date of such notification.
If the applicant appeals against the decision and the examining division considers, in the light of the applicant's statement, that the appeal is admissible and well-founded, it should rectify its decision accordingly within three months after receipt of the statement of grounds. Otherwise, the appeal will be considered by a board of appeal. If a decision to refuse a patent is reversed on appeal, the application may be referred back to the examining division for further examination. In such a case, the further examination will normally be entrusted to the examiner who performed the original examination. The examining division is bound by the ratio decidendi of the board of appeal, in so far as the facts are the same.