2.3.1 Invitation to correct deficiencies and to propose amendments (Rule 71(1) EPC)

The applicant's response to the search opinion required by R. 70a EPC (or filed voluntarily in response to search opinions not requiring a response) will be taken into account by the examining division when drafting the first communication (Guidelines C-II, 3).

If deficiencies persist in the application even after the applicant has filed his response to the search opinion, the examining division will issue a communication according to Art. 94(3) and R. 71(1) and (2) EPC in subsequent examination proceedings and will consider the applicant's reply thereto before issuing a decision or a summons to oral proceedings (Guidelines C-III, 5).

According to Art. 94(3) EPC if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC, the examining division shall invite the applicant, as often as necessary, to file his observations and, subject to Art. 123(1) EPC to amend the application. In line with EPO practice, it has now been made clear that the EPO may not only invite the applicant to file his observations, but may also invite him to amend the application in accordance with Art. 123 EPC.

Further, according to R. 71(1) EPC (former R. 51(2) EPC 1973) in any communication under Art. 94(3) EPC the examining division shall, where appropriate, invite the applicant to correct any deficiencies noted and to amend the description, claims and drawings within a period to be specified.

In T 301/10 the board stated that according to the established case law developed in relation to Art. 96(2) EPC 1973 and also applicable to Art. 94(3) EPC, the expression "as often as necessary" in this article indicates that the examining division has discretion which has to be exercised objectively in the light of the circumstances of the case (see, for instance, decisions T 162/82 (OJ 1987, 533), T 300/89 (OJ 1991, 480), and T 726/04).

Under Art. 113(1) EPC, however, it is not necessary to give the applicant repeated opportunities to comment on the examining division's submissions if the main objections to the grant of a European patent remain the same. A further invitation to present comments following a substantiated communication in which deficiencies were recorded is only appropriate if it would appear likely that, in the light of the applicant's reply, the examination proceedings would terminate in the granting of a patent (see T 84/82, OJ 1983, 451; T 161/82, OJ 1984, 551; T 162/82, OJ 1987, 533; T 243/89, T 300/89, OJ 1991, 480; T 793/92 and T 516/93).

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