2.8.1 Introduction

If it appears that the previous communications were insufficiently reasoned or incomplete, or if the applicant has filed amendments and/or arguments since the previous communication, the examiner should carefully consider Art. 113(1) EPC before issuing a refusal. A further communication may have to be issued with sufficient reasoning, unless oral proceedings are to be held (see Guidelines C‑V, 15.4 – November 2018 version).

Under Art. 113(1) EPC, the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments.

In T 645/11 the board stated that Art. 113(1) EPC 1973 guarantees that proceedings before the EPO will be conducted openly and fairly (see J 20/85, OJ 1987, 102; J 3/90, OJ 1991, 550). The right to be heard ensures that the parties to proceedings are not taken by surprise by grounds mentioned in an adverse decision (see e.g. T 669/90, OJ 1992, 739; T 892/92, OJ 1994, 664). That requires, firstly, that a party be given an opportunity to comment on the grounds and evidence alleged against it. In particular, it means that if a decision to refuse is taken on the basis of grounds which have not previously been presented to the applicant, then the decision does not comply with the provisions of Art. 113(1) EPC 1973. It is not sufficient that the applicant be presented with an assertion that the application fails to comply with some provision of the EPC. There must also be an explanation of why it fails to comply. The right to be heard also requires the deciding instance demonstrably to hear and consider any relevant comments (see T 763/04, T 246/08).

In T 690/09 the board stated that if a request for amendment is refused, the examining division must inform the applicant of the reasons for not admitting the amendments in order to satisfy the right to be heard according to Art. 113(1) EPC. The applicant will typically be invited to request grant on the basis of a preceding acceptable version of the claim set if such a version exists. Otherwise, if the applicant maintains his request for amendment, the application has to be refused under Art. 97(2) EPC, since there is no text which has been approved by the applicant and allowed by the examining division (see Art. 113(2) EPC 1973, see also T 647/93, OJ 1995, 132; T 946/96; T 237/96).

In T 246/08 the board stated that established jurisprudence has interpreted Art. 113(1) EPC 1973 to mean that the comments presented must be considered in the ensuing decision (J 7/82, OJ 1982, 391). Thus a decision which fails to take explicitly into account potentially refutative arguments submitted by a party, i.e. arguments which may militate against or cast doubt on the decision in question, contravenes Art. 113(1) EPC 1973, thereby constituting a substantial procedural violation. In brief, a decision must show that all potentially refutative arguments adduced by a party are actually refutable. See also T 1170/07.

In T 1854/08 the applicant was informed by e-mail that the three newly filed requests were not admitted into the proceedings because they introduced substantial obscurities. The board stated that the applicant had not been given any opportunity to present his comments to overcome the negative position expressed in the e-mail. Contrary to that, he had had to gather from the e-mail that it was no longer possible to convince the examining division. This followed from the fact that the refusal to admit the newly filed request was not presented as a provisional opinion of the division but as a decision which could not be overturned. This contravened Art. 113(1) EPC.

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