3.2.4 Examination procedure under the previous system (Rule 71 EPC and Rule 51(4) EPC 1973)

Under the system existing before 1 April 2012, R. 51 EPC 1973 implemented the examination procedure established in Art. 96 and 97 EPC 1973. In particular, R. 51(4) EPC stipulated that the examining division had to communicate to the applicant the text in which it intended to grant the patent and invite him to pay the fees and file the translation. According to the last sentence of this provision, the payment of the fees and the filing of the translation was considered to be implicit approval of the text proposed by the examining division.

In T 1181/04 (OJ 2005, 312) the board noted that the function of a communication under R. 51(4) EPC 1973 was to establish whether the applicant approved the proposed text of the patent as foreseen in Art. 97(2)(a) and Art. 113(2) EPC 1973. If, after receiving the communication under R. 51(4) EPC 1973, the applicant approved the version of the patent proposed by the examining division and fulfilled the formal requirements for grant, the examining division would issue a decision to grant according to Art. 97(2) EPC 1973. If he did not approve, the application was refused according to Art. 97(1) EPC 1973, since the EPC did not provide any other sanction in this case. The board pointed out that the way in which R. 51(4) EPC 1973 and Art. 97(1) and (2) EPC 1973 operated indicated that a communication under R. 51(4) EPC 1973 was not intended to terminate the examination procedure but was rather a preparatory action and was therefore not appealable. An appeal against a communication under R. 51(4) EPC 1973 would therefore normally be considered inadmissible. The board noted that the communication under R. 51(4) EPC 1973 from the examining division gave the appellant the impression that no possibility was available to him other than to pay and accept the proposed text or not to pay and lose the application. This impression was even stronger because reasons for turning down the higher-ranking requests were also contained in the document and no indication was given as to how to proceed if the appellant wished to maintain these higher-ranking requests. The board observed that where approval was not given, this also had a legal consequence, namely the refusal of the application in accordance with Art. 97(1) EPC 1973. The legal consequence of the non-existence of the applicant's approval was not the same as that foreseen for the failure to pay the fees or to file the translation. In the former case the application was refused, whereas in the latter it was deemed to be withdrawn. The board noted that the fact that an applicant's disapproval of the text proposed for grant had special legal consequences also made it necessary to ensure that disapproval was clearly established by the examining division. The board noted that the communication sent to the applicant reflected an EPO practice that did not provide for a procedure to be followed in the event that the applicant did not agree with the version proposed by the examining division. The board found that this practice was not justified by the EPC. The applicant's approval of the text proposed for grant by the examining division was an essential and crucial element in the grant procedure and its existence or non-existence needed to be formally ascertained. Further, the applicant should have been given the opportunity to express his disapproval of the text proposed for grant by the examining division with a communication under R. 51(4) EPC 1973 and to obtain an appealable decision refusing his requests. See also T 1255/04, OJ 2005, 424; T 1226/07.

The board in T 1377/15 observed that the communication the appellant had received under R. 71(3) EPC – unlike the one under R. 51(4) EPC 1973 at issue in T 1181/04 – had expressly referred to the possibility of expressing disapproval and subsequently obtaining an appealable decision giving the reasons for refusing the higher-ranking requests. It therefore held that the conditions set out in T 1181/04 for exceptionally treating such a communication as an appealable decision were not met.

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