A refusal decision by the Examining Division must be preceded by the issuance of at least one substantive communication pursuant Art. 94(3).

• At least one substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the application on such substantive grounds is issued.
• The mere reference to Article 94(3) EPC in the heading of a communication does not turn this communication into a substantive communication under Article 94(3) EPC.

This article is about case T0017/22

Background

During the international phase of the 18750027.7 patent application, the EPO acted as International Search Authority (ISA) and issued a written opinion raising lack of novelty, lack of inventive step and lack of clarity objections. Once the application reached the European phase, the ED issued two communications before issuing the decision to refuse the application. First, a communication under Rules 161 and 162 EPC inviting A to correct any deficiencies mentioned in the written opinion was issued. Second, a communication under Rule 137(4) EPC headed “Invitation pursuant to Rule 137(4) and Art. 94(3) EPC” was issued in response to the Rule 161 and 162 EPC reply of A. This second communication was accompanied by an annex which raised an additional Art. 123(2) objection and the statement: “nota bene: The amendment appears also not suitable to remedy the deficiencies.”. The application was subsequently refused based on lack of novelty, lack of inventive step, lack of clarity, and added subject-matter.

A appealed the decision, arguing that they had never had the opportunity to address the raised objections and that they had only been alerted that certain amendments had not been sufficiently identified and/or their basis in the application as filed had not been sufficiently indicated.

Substantial Procedural Violation

The Board investigated whether A’s right to be heard under Art. 113(1) EPC had been violated and whether the ED had made a substantial procedural violation.

Art. 94(3) reads that “if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC, the examining division shall invite the applicant, as often as necessary, to file his observations and, subject to Article 123(1) EPC, to amend the application”. According to the Board, the expression “as often as necessary” in Art. 94(3) EPC indicates that at least one substantive communication pursuant Art. 94(3) EPC and Rule 71(1) EPC is required before a decision to refuse the patent application can be issued. In the current case, the ED only issued two communications: a communication under Rules 161(1) and 162 EPC, and a communication under Rule 137(4) EPC headed “Invitation pursuant to Rule 137(4) and Art. 94(3) EPC”. The Board stated that neither of these communications amounted to a substantive communication under Art. 94(3) EPC for the reasons explained below.

The first issued communication under Rules 161(1) and 162 invited A to correct any deficiencies noted in the written opinion. Accordingly, this communication allowed A to respond to the search opinion by filing voluntary amendments before the stage of examination was started. The Board thus considered that a communication under Rules 161(1) and 162 EPC cannot be considered a communication under Article 94(3) EPC, as this type of communication is issued during the examination phase.

The second issued communication under Rule 137(4) EPC must be considered as a formal communication, according to the Board. This communication, which has a period for reply of one month, merely asked A to identify the amendments and to provide basis for these amendments in the application as filed. The Board considered that the short period of one month for reply is inappropriate for a reply to substantive issues. Although this communication also contained an annex which included an additional Art. 132(2) EPC objection and a statement “nota bene: The amendment appears also not suitable to remedy the deficiencies", the Board considered that this annex did not turn this Rule 137(4) EPC communication into a substantive Art 94(3) and Rule 71(1) EPC communication, especially as the period for a reply was still only one month. The Board further stated that the mere reference to Art. 94(3) EPC in the heading of the communication does not affect this decision.

Decision of the Board

In view of the above, the Board decided that the ED failed to issue a substantive communication pursuant to Article 94(3) EPC and Rule 71(1) EPC. The Board further stated that the omission of a such communication under Article 94(3) EPC is a substantial procedural violation as it deprived the applicant of the opportunity to react to such a communication. Because of this, the Board decided that A was entitled to a reimbursement of the appeal fee under Rule 103(1)(a) EPC. The decision under appeal was set aside and the case was remitted to the ED for further prosecution.