2. Decisions taken by the examining or opposition divisions
2.6 Reasoning for decisions
If the division finds that a patent cannot be granted, it will substantiate this in a decision citing the individual EPC articles and rules involved. For important general aspects relating to the reasoning for decisions, see the example below and E‑IX, 1.3.3E‑X, 1.3.3.
Example
Often an application lacking an inventive step also lacks clarity. The decision must clearly set out whether the application is refused because the subject-matter of the claims is unclear and would also lack inventive step once clarified or whether it is refused because the subject-matter of the claims lacks inventive step and would have to be clarified once the inventive step objection is overcome.
The reasoning for each of the grounds on which the decision is based must contain, in logical sequence, those arguments which justify the order. It must be complete and independently comprehensible, i.e. generally without references. If, however, a question has already been raised in detail in a particular communication on file, the reasoning for the decision may be summarised accordingly and the communication can be referred to for the details.
The conclusions drawn from the facts and evidence, e.g. publications, must be made clear. In particular, the reasons must be consistent with the facts as set out in the decision and in the minutes (also see E‑IX, 2.4 E‑X, 2.4). The parts of a publication which are important for the decision must be cited in such a way that conclusions drawn from them can be checked without difficulty. Therefore, reference is made to each particular passage in the publication. It is not sufficient, for example, merely to assert that the cited publications show that the subject of a claim is known or obvious, or, conversely, do not cast doubt on its patentability.
The arguments put forward by the examiner during the proceedings form the "skeleton" for the decision and already provide a complete and unbroken chain of reasoning leading to refusal. The decision may be based only on reasons already communicated to the applicant (Art. 113(1)). The applicant's arguments must be dealt with either point by point at the appropriate juncture in the chain of reasoning or all together at the end. The latter approach is often preferable as it makes clear that the final result is based solely on reasons already communicated to the applicant in compliance with Art. 113(1). In the part refuting the applicant's arguments, the decision must make clear why none of those arguments persuaded the examining division to depart from the final result.
It is particularly important to address important facts and arguments which may speak against the decision made, as it may otherwise appear that they have been overlooked. Documents which cover the same facts or arguments may be dealt with in summary form, in order to avoid unnecessarily long reasoning.
It is especially crucial to give complete and detailed reasoning when dealing with contentious points which are important for the decision; on the other hand, there is no need to include unnecessary details or additional reasons as further proof of what has already been proven.
The decision is a standalone document and must include a statement that the application is refused to show, where there are several grounds, that all of them form the basis for the refusal.
The decision must not contain any matter on which the parties have not had an opportunity to comment.