GL E X 2.11 Refusal to admit amendments under Rule 137(3)

When, in exercising its discretion under Rule 137(3), the examining division refuses to admit amended claims, it must give reasons for so doing. For details on how to exercise this discretion, see H‑II, 2.3, and H‑II, 2.7.[Rule 137(3); ]

GL E X 2.10 Late-filed submissions under Rule 116

If an examining or opposition division has exercised its discretion under Rule 116 to refuse late-filed facts, evidence or requests, its decision must give the reasons for its refusal. A mere reference to the discretionary power given under Rule 116 is not sufficient (see T 755/96). For details on how to exercise this discretion, see H‑II, 2.7.[Rule 116; ]

GL E X 2.9 Main and auxiliary requests

If during examination proceedings a main and auxiliary requests have been filed (see E‑X, 2.2) and none of these is allowable, the reasons for the decision to refuse the application pursuant to Art. 97(2) must not be limited to the main request, but must also comprise the reasons for the non-allowability of each auxiliary request.

GL E X 2.8 Analysing the parties' arguments

All significant arguments advanced by a losing party to the proceedings are carefully examined and comprehensively refuted in the decision. The decision must substantiate the division's view that none of the submitted arguments overcome the objections it has raised.

However, facts not in dispute need be mentioned only briefly. Arguments by the parties which are clearly irrelevant to the issues involved do not need to be discussed.

GL E X 2.7 Content

The decision normally deals with all independent claims of the valid request(s) that were discussed during the proceedings. A single ground is enough to refuse an application, so it is not always necessary to deal with all the dependent claims. If however a particular dependent claim has been discussed, the decision includes the relevant arguments.

Any additional requests still outstanding must be dealt with in the refusal decision.

GL E X 2.6 Reasoning of decisions

If the division is of the opinion that no patent can be granted, it will substantiate this in a decision citing the individual EPC articles and rules involved. For important general aspects relating to the reasoning of decisions, see the example below and E‑X, 1.3.3.

Example:

Often an application lacking an inventive step also lacks clarity.

GL E X 2.5 Decision on the file as it stands

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. C‑V, 15 and subsections, describes the procedure to be followed in case of such a request.

GL E X 2.4 Facts and submissions

For general aspects relating to facts and submissions, see E‑X, 1.3.2. Facts and submissions which are irrelevant to the decision, e.g. requests for amendment which are not maintained, are to be omitted.

GL E X 2.3 Requirements as to form

Decisions taken by the examining or opposition divisions have to adhere to the principles laid down in E‑X, 1.

GL E X 2.2 Authoritative text of documents

The EPO must decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or proprietor and last used as a basis for the proceedings.