It Just Might Be A One-Shot Deal

On preparing a request to enter the European regional phase from an international application, one of the key questions to ask is whether the EPO was the international searching authority (ISA). If they were, the written opinion of the ISA, if it raises objections, will need to be addressed. The first opportunity to do this, if international examination was not requested, is in response to the communication under Rules 161 and 162 EPC, which issues shortly after European regional phase entry. Rule 161(1) EPC states that the applicant will be given an "opportunity to comment on the written opinion [...] and, where appropriate, invite him to correct any deficiencies". If no response is filed to such a communication, the application is deemed withdrawn.  

Frank Zappa's lovely white teeth. Source here.

Since it is well known that EPO examiners can get impatient with applicants that are viewed as not progressing their applications towards allowance, if a response at this stage does not move the application forward it can be considered by an examiner as the applicant losing one chance of addressing their objections. I therefore tend to advise applicants that a full response to the written opinion should be made either on regional phase entry or within the six month period given by the Rule 161/162 communication. If any objections remain these can be addressed at the examination stage, where the applicant will always get at least one shot at responding to such objections. 

An important point to note, however, is that examiners are not always reasonable. A safety net in any response filed at the EPO is therefore always advisable in the form of a standing request for oral proceedings under Article 116 EPC in the event the Examining Division (ED) is not minded to allow the application. The ED cannot then issue a decision under Article 97(2) to refuse the application until after issuing a summons to oral proceedings and, if necessary, holding oral proceedings at which a final decision is made. 

A tricky question is how many communications under Article 94(3) EPC can the ED issue before they take things further. Article 94(3) merely states that the applicant shall be invited "as often as necessary" to file observations and amend the application. The interpretation of this can vary widely. Sometimes the ED will string things out for several communications, particularly if the applicant is making efforts each time to resolve the objections. In some cases, however, and particularly if the applicant does not seem to be making much of an effort, the ED can issue a summons after just one communication, or even in some cases as a first communication. Of course, if a standing request for oral proceedings is not on file, this can instead be a decision to refuse, which can take the applicant by surprise. See an earlier post here for a cautionary tale of what can happen if an applicant does not take objections by the ED seriously and does not have such a request on file. 

All this is a lengthy preamble to a decision that has recently been issued by the EPO Boards of Appeal, T 17/22. This relates to an application that was a European regional phase entry where the EPO was the ISA. The application claimed an "oral care composition" (i.e. toothpaste), defined by various ingredients and their properties, including a whitening agent.  The international written opinion had raised various objections covering lack of novelty, inventive step and clarity. 

As usual, the Rule 161 /162 communication invited the applicant to respond to the objections raised and the applicant responded by making some amendments to the claims with supporting arguments. The examiner was not, however, satisfied with the amendments, which included amending claim 1 to incorporate features from claims 2 and 3. The examiner's problem with this, which was set out in a communication issued under Rule 137(4) and Article 94(3) EPC, was that both claims 2 and 3 as originally filed depended only on claim 1. The applicant responded with arguments as to why the combination of features was supported by the application as filed, requesting the examiner "to reconsider the opinion as expressed in the invitation". The examiner clearly still did not agree with the applicant and, instead of issuing an examination report, issued a decision to refuse the application, the grounds for which stated that the applicant "still has not provided a satisfactory basis and/or argument why the introduction of the combined teachings of claims 1-3 should be allowable", and that the applicant "has not requested oral proceedings and had the opportunity to comment and amend more than once and consequently the ED considers that the right to be heard under Article 113(1) is respected". This apparently took the applicant somewhat by surprise, and the decision was appealed, in part on the grounds that the ED had committed a substantial procedural violation because the right to be heard under Article 113(1) EPC had been violated. The applicant this time did request oral proceedings (although, when it comes to the Boards of Appeal, this does not always work).

In considering whether the ED had committed a substantial procedural violation, the Board noted that the expression "as often as necessary" in Article 94(3) required the ED to issue at least one substantive communication under Article 94(3) EPC before issuing a decision to refuse the application, unless a summons to oral proceedings could be issued. This was supported by the Guidelines C-III 5 and the case law in T 305/14. In the present case, the ED had issued two communications before the decision to refuse. Neither communication was, however, considered to be a substantive one under Article 94(3). The first one, under Rules 161 and 162 EPC, was an invitation that allowed the applicant to make voluntary amendments as well as dealing with objections in the international written opinion, while the second one, under Rule 137(4) EPC, was of a formal nature and also therefore not substantive. The ED had, in the Board's opinion, committed a substantial procedural violation by not issuing a communication under Article 94(3) EPC after the applicant's response. The application was therefore remitted to the ED for further prosecution and the appeal fee was reimbursed. 

Although this was, in the end, the correct result for this applicant, it provides another useful example of why it is always a good idea to have a request for oral proceedings on file. You never know when the examiner is going to be unreasonably difficult, and it is not necessarily good practice to find out that you were correct after all by going through a lengthy appeal procedure that could have been avoided by simply adding one line to your response in the first instance.