2.5.1 General issues

An examining division may refuse an application after a single communication if it does not consider that there is a prospect of a positive result (see T 201/98, T 79/91, T 1969/07), without warning (T 1002/03, T 1969/07). The refusal of an application after the first communication is justified if decisive objections against patentability remain (see T 84/82, T 161/82, T 300/89, T 95/04), particularly where the claimed subject-matter has not been substantially modified (see also T 66/83, T 304/91, T 63/93).

In T 640/91 (OJ 1994, 918) the board stated that the requirement in Art. 96(2) EPC 1973 that the examining division must invite the applicant to file his observations "as often as necessary" implicitly recognised that in certain circumstances the examining division would be legally obliged to invite further observations from the applicant before issuing a decision. Having regard to Art. 113(1) EPC 1973, there was a "necessary" legal obligation for an examining division to invite further observations from an applicant before issuing a decision adversely affecting him, where the division might be inclined to issue an immediate decision on the ground that he had shown lack of good faith in his previous observations. The board pointed out, moreover, that it was in principle not the function of an examining division to assess either the degree of collaboration from applicants or their good faith when deciding whether or not to invite further observations in the exercise of its discretion under Art. 96(2) EPC 1973. The exercise of this discretion depended primarily upon whether or not there was a reasonable prospect that such an invitation could lead to the grant of a patent. See also T 855/90.

In T 821/96 the board stated that, according to the established case law, it was left to the examining division's discretion to decide whether to issue a further invitation to present comments under Art. 96(2) EPC 1973. A further invitation would only be appropriate if it appeared likely that, in the light of the applicant's reply, the examination proceedings would terminate in the granting of a patent. See also T 201/98.

In T 449/03 the board stated that the appellant's allegation that the applicant was generally entitled to receive at least two communications in the examination proceedings before a negative decision on patentability was unfounded (see T 84/82, OJ 1983, 451). However, where features are added to a claim in response to an official communication, it is only in exceptional cases that a further communication may be dispensed with (cf. T 161/82, OJ 1984, 551): for example where it can be held that the features added to the claim are implicit to the specific part of the prior art document already held against the subject-matter of the claim, so that the objection against patentability communicated to the applicant remains the same.

In T 5/81 (OJ 1982, 249) the appellant submitted that, in the only communication sent, the examiner had failed to comment on claim 5, an omission which was contrary to Art. 96(2) EPC 1973 and R. 51(3) EPC 1973. The board noted that an appeal might relate only to a decision subject to appeal within the meaning of Art. 106(1) EPC 1973 and not to preparatory measures. Art. 96(2) EPC 1973 and R. 51(3) EPC 1973 applied exclusively to that preparatory procedure. A failure to comply with these requirements could not be taken into consideration unless it had some influence on the decision to refuse, as in the case of a breach of Art. 113(1) EPC 1973 (see also T 808/90). The appellant's objection was unfounded, not only for this reason, but also because the examiner commented on the content of the claim in question by drawing attention to the possibility of formulating an independent claim based thereon. Since the appellant did not make use of that possibility, the examining division was not obliged to discuss it when refusing the application. The allusion thereto in the reasons for the decision did not form part of the ratio decidendi and was intended solely to demonstrate that the examining division was aware of the fact that the application might contain patentable subject‑matter. A refusal under these circumstances was not open to challenge. See also T 228/89, T 347/04, R 14/10.

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