Immediate Refusal – When can the European Examining Division refuse an application?

Friday afternoon: office debate on the European Patent Convention (EPC).

The question that arose was: when should you request Oral Proceedings in a written response to the European Patent Office?

With the European Patent Office providing a form of “examination” at the search stage (the “Written Opinion”), it is now mandatory to respond to any objections raised therein before “examination” officially begins (via Rule 70a EPC). In this response should you request Oral Proceedings?

The question then becomes: can the Examining Division refuse a European patent application in the “first” examination communication under Article 94 EPC?

For

The case law that was laid down under the old rules (i.e. with no “Written Opinion”) held that a decision to refuse could legitimately be issued by the Examining Division as a second communication, i.e. no “further” communication under Article 94(3) EPC (nee Article 96(2) EPC 1973) was necessary. See the link for more details. This generally applied to cases where the applicant made no effort to address any objections raised in a first communication.

If these cases are applied to the present set of circumstances, where the “Written Opinion” is practically a first “examination” communication, it could be argued that the Examining Division can legitimately refuse the application without issuing an official examination communication (e.g. with a second communication relating to substantive issues). It could be argued that the right to be heard, set out in Art. 113 EPC is met, as the applicant had the chance (moreover had) to respond to the Rule 70a EPC communication.

However, if this is the case, and a request for Oral Proceedings is made in the response to the R.70a EPC communication, is the request made to the Examining Division or the Search Division? A request to the Search Division may not be valid as the Search Division cannot refuse the application. As the Examining Division “take account” of the response (see here), does this pass on the request in a valid manner?

Against

Article 94(3) EPC states that:

 “the Examining Division shall invite the applicant, as often as necessary, to file his observations and…to amend the application”.

Now the “shall” in this provision seems to suggest that at examination the applicant should have one opportunity to file observations and/or amend the application. This would rule out a decision to refuse as the first examination communication.

However, the “as often as necessary” complicates matters – if the applicant has not responded to substantive issues in a Written Opinion at the Rule 70a EPC stage, is it necessary to give them another chance? Does “as often as necessary” mean one or more times (consistent with “shall“) or does it make the “shall” conditional (zero or more times)?

If anyone is aware of any case law or guidance that clears this up please let me know.

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