[…] In the present case the Examining Division (ED), in response to the appellant’s request “to render a decision on the record”, refused the application using EPO form 2061 for a so-called “decision on the state of the file”.
The Guidelines for Examination in the EPO E-X 4.4, state: “Applicants may request a decision ‘on the file as it stands’ or ‘according to the state of the file’, e.g. when all arguments have been sufficiently put forward in the proceedings and the applicant is interested in a speedy appealable decision. In such a case, the decision will be of a standard form, simply referring to the previous communication(s) for its grounds and to the request of the applicant for such a decision.”
This standard form is entirely appropriate in the special case where the ED fully expressed and reasoned its objections to the current application text in the preceding communication(s) taking into account the applicant’s submissions, and the applicant has not presented further counter-arguments in the reply in which it requests a decision according to the state of the file.
A number of decisions of the EPO Boards of Appeal have pointed out however that a decision form which refers to several communications, leaving it to the board of appeal and the appellant to speculate as to which of the reasons given by the ED in its communications might be essential to the decision to refuse the application does not meet the ‘reasoned’ requirement of R 68(2) EPC 1973 (see T 861/02, T 897/03, T 276/04 and T 1309/05). [4]
In its letter of 14 October 2004, the appellant limited the claimed subject-matter by further adding the feature of the “capacity of the upper bag segment being 20 to 40 liters” and explained why the subject-matter was inventive. [5]
In the annex to the summons [to oral proceedings (OPs)] the ED raised for the first time an objection of lack of clarity in respect of the terms “capacity of lower bag segment” and “capacity of upper bag segment”. These terms were considered to be unusual parameters in the sense of Guidelines C-III, [4.11] since no comparison with the prior art could be made. These parameters thus would disguise a lack of novelty as per Guidelines C-IV [9.6]. However no further explanation was given as to why these specific terms would fall under the concept mentioned in the Guidelines. This was probably meant to be discussed at the OPs. [6]
With its reply of 31 January 2005 the appellant filed amended pages of the description [and] explained why in its opinion the subject-matter of claim 1 on file was novel and inventive and why the clarity objection raised in the annex to the summons was not justified. In particular the appellant explained that the capacities could be clearly and reliably determined by objective procedures which are usual in the art and that the skilled man would not unavoidably arrive at these values when carrying out the invention of D1. [7]
The decision of the ED however does not contain any specific reasons, but merely refers to the communications (including the annex to the summons) which had been issued before the appellant’s reply of 31 January 2005. By not commenting on the amended pages of the description and/or on any of the counterarguments brought forward by the appellant in its last reply it is left to the board and to the appellant to speculate as to which were the decisive reasons for the refusal.
As a matter of fact several options could be possible: it could well be that the ED no longer upheld the lack of clarity objection but considered the lack of inventive step detrimental or that clarity and novelty of the subject-matter of claim 1 was at stake, or even that only the amended description was not considered allowable. [8]
This is at odds with the established jurisprudence that for the requirements of R 68(2) EPC 1973 to be fulfilled the decision must include, in logical sequence, the arguments justifying the order. The grounds upon which the decision is based and all decisive considerations in respect of the factual and legal aspects of the case must be discussed in detail in the decision (see T 278/00). The applicant’s request “to render a decision on the record” is not to be construed as a waiver of the right to a fully reasoned first instance decision, even in the light of the suggested procedure in the Guidelines (see T 1309/05, T 583/04). The applicant even expressly requested that “the subject-matter of the present claims be re-examined taking into account the following explanations”. In view of this and of the fact that amended pages of the description were filed the board is of the opinion that a decision of a standard form, simply referring to the previous communications for its grounds and to the request of the applicant for such a decision was not appropriate in the present case. Instead, in its decision, the ED should have explained the very reason or reasons for its decision and why the counterarguments of the applicant were not considered convincing.
By failing to do so the ED did not issue a reasoned decision within the meaning of R 68(2) EPC 1973 and committed, therefore, a substantial procedural violation. [9]
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