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Case Law of the Boards of Appeal

 
 
2.1. Beginning of "substantive examination"

Responsibility for examining the application passes from the Receiving Section to the examining division at the time when a request for examination is filed. This is subject to two exceptions: (i) if the applicant has filed a request for examination before the European search report has been sent to him, then the examining division is responsible only from the time when the confirmation of the request is received by the EPO following an invitation under R. 70(2) EPC; (ii) if the applicant has filed a request for examination before the European search report has been sent to him and has also waived the right to receive an invitation to confirm under R. 70(2) EPC, then the examining division is responsible only from the time when the search report is sent to the applicant (Guidelines C-II, 1).

In order for examination of a European application can begin, the applicant is required to file a request for examination, which, however, is not deemed to be filed until after the examination fee has been paid.

In J 9/10 the board held that a communication pursuant to Art. 94(3) EPC on EPO Form 2001A which was automatically generated by a computer and posted by a formalities officer without the involvement of an examiner appointed to the examining division did not constitute a legally effective act of the examining division and therefore could not be regarded as the beginning of "substantive examination" pursuant to Art. 10b(b) RFees (inserted by decision of the Administrative Council of 10 June 1988, as last amended by decision of the Administrative Council of 15 December 2005).

The fulfilment of the second condition for the refund of the examination fee according to Art. 10b(b) RFees, gave rise to the questions of what "substantive examination" was and what kind of act or acts amounted to the beginning of "substantive examination". The board noted that to ensure predictability and verifiability of the application of Art. 10b(b) RFees, the beginning of "substantive examination" had to be interpreted as requiring a concrete and verifiable act of the examining division as regards "substantive examination" after having assumed responsibility for the examination of the application (J 25/10). The board held that if a communication of a particular examining division was to be legally valid, it had to have been written on behalf of and represent the views of the members who had been appointed to that division to examine the issues forming the subject of the communication. There was, however, no indication in the file that the appointed primary examiner had actually authenticated the communication under Art. 94(3) EPC before it was despatched by the formalities officer. Therefore, the communication could not be attributed to the examining division, but only to the formalities officer whose name was indicated on EPO Form 2001A. Further, the board found that the formalities officer, although acting in good faith, had had no power to issue the communication pursuant to Art. Art. 94(3) EPC. Such power was transferred to formalities officers by R. 11(3) EPC in conjunction with the Decision of the President of the European Patent Office dated 12 July 2007 concerning the entrustment to non-examining staff of certain duties normally the responsibility of the examining or opposition divisions (Special edition No. 3, OJ 2007, 106).