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 2018 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. Guidelines F‑IV, 4.1 – November 2014 version; this part is unchanged in the November 2018 version, F‑IV, 4.1).

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 the ex parte case T 655/13 (examining division's reasoning based on a pertinent prior-art document in a non-official EPO language), the board based its reasoning partly on the Guidelines (E‑X, 2.6 – November 2017 version; E‑IX, 5 – June 2012 version, in force at the time of the appealed decision; and G‑IV, 4 – November 2017 version).

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.

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.

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 E‑X, 2.6 – November 2018 version, Reasoning of decisions). The board in T 1998/10 (use of standard form) backed up its reading of the R. 111(2) EPC provision on the need to give reasons for decisions by referring to the same section of the Guidelines (E‑IX, 5 "Reasoning of decisions"), according to which the reasons given in a decision should be "complete and independently comprehensible, i.e. generally without references".

In T 833/99, which concerned a number of alleged prior uses, the board observed that, contrary to what the appellant (opponent) had argued, it was not the conditions set out in the first paragraph of Guidelines D‑V, (G‑IV, 7.2.1 – November 2018 version) that applied but those in the last sentence of the final paragraph (also G‑IV, 7.2.1 – November 2018 version: "... however, all concealed features which could be ascertained only by dismantling or destroying the object will not be deemed to have been made available to the public.").

The opponents' argument that the product-by-process feature was meaningless (i.e. non-limiting) was based on section F‑IV, 4.12 of the Guidelines for Examination (November 2015 version), in which it was stated that a claim defining a product in terms of a process is to be construed as a claim to the product as such. However, the board in T 658/13 could not agree that said section of the Guidelines implied that a product-by-process formulation as such could only be meaningless.

In T 261/15, in respect of the argument that a selected sub-range has inter alia to be sufficiently far removed from the end-points of the known range, the board pointed out that it was not aware of any jurisprudence stating this condition in such a general way. It was true that the Guidelines for Examination, G‑VI, 8, recited under point (ii)(b) this criterion as a condition for acknowledging novelty of a numerical selection. However, neither decision T 198/84 nor T 279/89, which are cited in this passage of the Guidelines, stipulates this condition.

In interpreting R. 116(1) EPC and deciding whether or not the department of first instance had applied it correctly, the board in ex parte case T 1750/14 applied a literal reading of its provisions in conjunction with those of R. 132(2) EPC, as found in the Guidelines (D‑VI, 3.2, last sentence – September 2013 version).

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 – 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.

Although only one reason is required to refuse an application, in case T 1710/11, numerous clarity objections were set out in the contested decision and the examining division held that "a final decision on [novelty and inventive step] can properly be taken only after the scope of the claims has been clarified". In the knowledge that the subject-matter of the "unclear" claim was not inventive, it appeared to be somewhat inefficient to issue a decision which gave lack of clarity – but not a lack of inventive step – as a reason for refusal, thus forcing the appellant to address each of the clarity objections before being able to challenge the inevitable inventive step objection. The board noted that this approach did not appear to be in line with the "constructive and helpful" attitude that the Guidelines require the examiner to adopt (C‑I, 2).

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 E‑X, 7.4. – November 2015 version. In particular, the reference to the obiter dictum has been deleted.

The board in T 736/14, whilst observing that the EPC contains no explicit provisions about how to proceed if an applicant whose application is non-unitary responds unclearly or in a misleading way to an invitation from the examining division to specify which searched invention it wishes to prosecute further, nevertheless found that Guideline H‑II, 7.1 (version 2013; entitled "Restriction to a single, searched invention") should not have been applied at all when refusing to admit the auxiliary request, since the applicant had not clearly indicated the invention to be further examined at that stage of the examination proceedings.

When dealing with internet disclosures, the boards have referred to the Guidelines (see G‑IV, 7.5.2 – November 2018 version) and established the balance of probabilities as the applicable standard of proof (T 2227/11, upheld more recently in T 1711/11, T 353/14, T 545/08). Earlier decision T 1134/06 that the stricter standard of proof "beyond reasonable doubt" had to be applied to internet disclosures has been refuted by the later case law cited above.

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