T 1946/17 - Decision state of the file unreasoned

Key points

• Another decision 'according to the state of the file' (EPO Form 2061), another substantial procedural violation. Three substantial procedural violatons, even. 
• The applicant had submitted some arguments. In the last substantive Communication, the ED had" merely stated that the "arguments were carefully considered", but "no new evidence" was provided. Such blanket statements cannot be considered to address the arguments raised. Hence, the present "standard form" decision [...] does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned." 
• The decision is also inconsistent in that in 2015, the ED had stated that examination of A54 and A56 was deferred, but in the last communication, the ED had stated that the earlier objections under A54 and A56 were maintained. Hence, the decision is not properly reasoned.
• Furthermore, the decision is factually incorrect in that it states that the applicant had merely requested a decision according to the state of the file with the letter of 17.03.2017 without comments, whereas in fact, the letter included four substantive comments. 

EPO T 1946/17 -  link

Summary of Facts and Submissions

I. The Appellant (Applicant) is contesting the Examining Division's decision dated 3 April 2017, with which the European patent application no. 07 811 466.7 was refused.

II. The contested decision is a decision according to the state of the file, taken by means of a standard form referring to previous communications. The grounds for the decision read as follows:

"In the communication(s) dated 26.02.2016, 11.05.2015, 17.02.2014 the applicant was informed that the application does not meet the requirements of the European Patent Convention. The applicant was also informed of the reasons therein.
The applicant filed no comments or amendments in reply to the latest communication but requested a decision according to the state of the file by a letter received in due time on 17.03.2017.
The application must therefore be refused."

 Reasons for the Decision

1. The appeal is admissible.

2. Main Request, Rule 111(2) EPC

2.1 At the time when the contested decision was issued, the requirements for issuing a refusal using a standard form referring to previous communications were set out in the Guidelines for Examination in the EPO, November 2016, C-V, 15.2.

According to the first paragraph of Guideline C-V, 15.2, in order to comply with the requirement that a decision be reasoned (Rule 111(2)), it is only possible to use this form of decision where the previous communication addresses all the arguments raised by the applicant.

The second paragraph of Guideline C-V, 15.2 states that it is possible by way of exception to refer to more than one communication in the standard form, but that the examiner should carefully consider the requirements of Rule 111(2) EPC. An example is given of a situation in which it might be not clear which of the reasons given by the Examining Division in its communications might be essential to the decision to refuse, and it is stated that in that situation a fully reasoned decision should be issued instead (see C-V, 15.3 "Issuing a self-contained decision").

2.2 In the present case, the applicant submitted some arguments in their reply dated 28 October 2015 that were not presented in their earlier submissions. The response to the Examining Division's argument that "enough applications are filed (and state of the art is existing) concerning lighting devices correctly defined by specific technical features only" and the indications about the public availability of the cited US Patent applications are but two examples.

The only subsequent communication of the Examining Division, that dated 26 February 2016, merely stated that the "arguments were carefully considered", but "no new evidence" was provided. Such blanket statements cannot be considered to address the arguments raised. Hence, the present "standard form" decision does not meet the requirements set out in the first paragraph of Guideline C-V, 15.2 and does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned.

2.3 In addition to the above, the Examining Division stated in their communication dated 11 May 2015 that the examination in view of Article 54 and 56 EPC was deferred, but in the last communication dated 26 February 2016 they stated that the objections under Article 56 EPC as raised in the communication of 11 May 2015 and the objections under Articles 54 and 56 raised in the communication of 17 February 2014 were maintained. In view of these contradictory statements in the communications referred to in the present standard form decision, it is not clear which of the reasons given by the Examining Division under Articles 54 and 56 EPC, if any, might form part of the reasons for the decision to refuse. Hence, for reasons similar to those set out in the example given in the second paragraph of Guideline C-V, 15.2, the decision does not comply with the requirement of Rule 111(2) EPC that the decision be reasoned.

2.4 Further to the above, the Board notes that the Examining Division's last communication before the contested decision was that dated 26 February 2016. The Applicant replied to that communication in a letter dated 3 March 2017 and made four comments as to what they considered the contentions presented by the Examining Division to include (see last four paragraphs of page 1). When the Applicant requested a "decision on the papers now on file" (letter of 17 March 2017, second paragraph), they expressly stated that this included their "response filed on 3 March 2017". Hence, the statement in the contested decision that the "applicant filed no comments ... in reply to the latest communication" is factually incorrect.

2.5 For the reasons set out above the Board considers that it was not appropriate in the circumstances for the Examining Division to use the "standard form" of decision referred to in Guideline C-V, 15.2. Either a self-contained decision (Guideline C-V, 15.3) or a further communication (Guideline C-V, 15.4) would have been appropriate. As a result the decision was not sufficiently reasoned to meet the requirement of Rule 111(2) EPC.

2.6 For these reasons the Board decided to accede to the Appellant's main request.

3. Request for Reimbursement of the Appeal Fee

In the present case the Board considers the failure to comply with the requirement of Rule 111(2) EPC to be a procedural violation that affects the entire basis of the appeal proceedings. Hence, the Board finds reimbursement of the appeal fee to be equitable by reason of a substantial procedural violation pursuant to Rule 103(1)(a) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The request for reimbursement of the appeal fee is allowed.