CLR IV B 2.8.6 Bona fide attempt by the applicant to overcome the objections

In a case where an applicant has made a bona fide attempt to overcome the objections raised by the examining division, Art. 113(1) EPC may require such an attempt to be confirmed in the light of amended claims and substantial comments of the applicant (T 734/91, T 582/93).

CLR IV B 2.8.5 Fresh argument based on grounds and evidence communicated beforehand

According to the case law of the boards of appeal, the use of a fresh argument in a decision still based on grounds and evidence communicated beforehand is not precluded.

CLR IV B 2.8.4 Essential reasoning based on an International Preliminary Examination Report (IPER)

CLR IV B 2.8.3 Information on non-compliance: the essential reasoning

CLR IV B 2.8.2 Arguments taken into account in the decision of the examining division

According to the jurisprudence of the boards of appeal, the examining division does not have to address each of the party's arguments (see e.g. T 1969/07, T 1557/07, R 19/10).

CLR IV B 2.8.1 Introduction

If it appears that the previous communications were insufficiently reasoned or incomplete, or if the applicant has filed amendments and/or arguments since the previous communication, the examiner should carefully consider Art. 113(1) EPC before issuing a refusal. A further communication may have to be issued with sufficient reasoning, unless oral proceedings are to be held (see Guidelines C‑V, 15.4 – November 2018 version).

CLR IV B 2.8 Issue of a further communication under Article 113(1) EPC

2.8.1 Introduction

2.8.2 Arguments taken into account in the decision of the examining division

2.8.3 Information on non-compliance: the essential reasoning

CLR IV B 2.7.2 Waiver of the applicant's right to present comments

CLR IV B 2.7.1 Reply within the meaning of Article 94(4) EPC

In J 37/89 (OJ 1993, 201), the Legal Board construed Art. 96(3) EPC 1973 to mean that an applicant who merely requests an extension of the term for reply which request is then refused, 'fails to reply' within the meaning of that sub-paragraph, with the consequence that the application must be deemed withdrawn.

CLR IV B 2.7 Failure to reply to the communication from the examining division (Article 94(4) EPC)

According to Art. 94(4) EPC, if the applicant fails to reply in due time to any communication from the examining division, the application shall be deemed to be withdrawn. Art. 94(4) EPC corresponds in essence to Art. 96(3) EPC 1973.