3.
The boards' application of the Guidelines in specific cases 
III.S.3. The boards' application of the Guidelines in specific cases 

Although the boards are not bound by the Guidelines, this does not mean that they do not take them into account or turn to them for inspiration when reaching their decisions. It should be borne in mind that the edition of the Guidelines referred to in the decisions summarised below to illustrate the related case law is that applied by the board in the specific case concerned and not necessarily that currently in force (November 2015 version).

In T 651/91 the board cited with approval the Guidelines, confirming that a generic disclosure did not normally deprive any specific example falling within that disclosure of novelty.

In T 523/89 the board saw no reason to disagree with the general principle of interpretation laid down in the Guidelines.

In T 631/97 (OJ 2001, 13) the board found that the interpretation of R. 46(1) EPC 1973 was in agreement with that of the Enlarged Board of Appeal in Opinion G 2/92. It also found that the Guidelines were fully consistent with G 2/92 and R. 46 EPC 1973.

In T 587/98 (OJ 2000, 497) the board found that the claims were not "conflicting" claims within the meaning of the Guidelines.

The Enlarged Board in G 3/14 (OJ 2015, A102) observed that neither the EPC itself nor the Implementing Regulations made any distinction between independent and dependent claims when it came to their compliance with the requirements of the EPC at the examination stage. Although not part of the express legal framework of the EPC, the Guidelines likewise made no distinction between independent and dependent claims when it came to objections of lack of clarity (see e.g. Part F‑IV, 4.1 – November 2014 version; this part is unchanged in the November 2015 version). 

In T 32/95 (ex parte) the board found that, once the applicant had indicated sound reasons for doubting whether a cited document belonged to the state of the art, the examiner should have acted as recommended in the Guidelines, i.e. not pursued the matter further if additional investigation failed to produce sufficient evidence to remove that doubt.

In T 802/97 the board noted that when applying Art. 96(2) EPC 1973, the established practice of the examining divisions was set out in particular in the Guidelines for Examination in the EPO.

In T 946/96 the board noted that if an examining division refused its consent to a further amendment under R. 86(3) EPC 1973, the recognised correct procedure for the examining division to follow was clearly set out in the Guidelines.

In T 300/89 (OJ 1991, 480) the board held, in relation to the appellant's complaint as to the failure of the examiner to telephone as requested, that the practice in relation to such informal communications was clearly set out in the Guidelines.

In T 839/95 the board noted that an interlocutory decision in the case of an allowable auxiliary request was foreseen in the instructions to examiners only for auxiliary requests in opposition proceedings.

In T 736/95 (OJ 2001, 191), having regard to the Enlarged Board of Appeal's decisions in G 10/91 (OJ 1993, 420) and G 1/95 (OJ 1996, 615) and to the Guidelines for Examination in the EPO, the board concluded that the department of first instance at least had to examine whether a fresh ground was relevant. The aim of first-instance proceedings was to avoid invalid patents.

The applicant's request "to render a decision on the record" was 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 (see T 1309/05, T 583/04).

In T 1709/06 the board noted that although the Guidelines for Examination E‑X, 4.4, suggested a procedure for issuing a decision "on the state of the file" taking a standard form, a number of decisions of the boards of appeal (see T 1309/05, T 1356/05) had pointed out that such a standard decision form did not meet the "reasoned" requirement of R. 68(2) EPC 1973 (now R. 111(2) EPC).

In T 1123/04 the board noted that R. 68(2) EPC 1973 (now R. 111(2) EPC) stipulated that decisions of the European Patent Office which were open to appeal had to be reasoned. The criteria for the "reasoning" were, for instance, elaborated in the Guidelines.

The board in T 1741/08 remarked that it would seem that while the statement in Guidelines G‑II, 3.7, was not actually inconsistent with the case law of the boards of appeal, the optimistic tone might sometimes mislead (potential) applicants.

The reasons given in the EPO notice of 8 November 2013 on handwritten amendments for changing a practice that had been applied for years at first instance and was also recognised in the Guidelines do not warrant changing the established practice of the boards of appeal and the related case law (T 37/12, citing T 1635/10, point 5 of the Reasons).

With regard to the requirements of Art. 84 EPC, the appellant in T 1882/12 argued that Guidelines C‑III, 4.9 [F‑IV, 4.9 in the November 2015 version] on optional features did not impose a ban on the terms "preferably", "preferred" and "more particularly" to which the examining division had objected, but rather required that they be looked at carefully in their specific context to ensure that they did not introduce ambiguity. In the appellant's view the examining division's procedural violation was essentially that it had incorrectly assessed the clarity requirement because the claim wording in the case in point had not been carefully examined, which was inconsistent with the Guidelines and hence contrary to the principle of equal treatment. Yet the mere fact that other examining divisions had not raised such objections in similar cases did not imply a breach of the principle of equal treatment. As the appellant itself had submitted, the Guidelines prescribed a careful examination.

In T 1060/13 the board, in explaining the conditions under which interlocutory revision must be granted by the examining division, drew attention to an inconsistency both in the Guidelines of June 2012, applicable to the case, and with the version of September 2013. However, the text quoted has been amended in the meantime and is no longer to be found as such in the Guidelines dated November 2015 (E‑X, 7.4.2). In particular, the reference to the obiter dictum has been deleted.

In T 2068/14 the board had to consider whether the decision of the examining division was adequately reasoned. The board endorsed the following statement in the Guidelines, as it reflected the jurisprudence of the boards of appeal: "It is particularly important that special attention should be paid to important facts and arguments which may speak against the decision made. If not, the impression might be given that such points have been overlooked" (Guidelines of September 2013, then applicable (idem Guidelines November 2015, E‑IX, 5, Reasoning of decisions).

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