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Guidelines for Examination

 
 
1.3
Documents cited or supplied by the applicant 

Under the utilisation scheme (see Rule 141(1) and B-XI, 9, as well as OJ EPO 2010, 410), for applications where a priority is claimed the applicant is expected to file a copy of the results of any search carried out by the office of first filing (for more details see A-III, 6.12)

If the prior art information of the office of first filing is made available before the search is completed, the examiner should check these citations and evaluate their relevance to examination and in the definition of the search strategy.

Documents cited in the application under consideration should be examined if they are cited as the starting point of the invention, as showing the state of the art, or as giving alternative solutions to the problem concerned, or when they are necessary for a correct understanding of the application (see, however, B-IV, 2.4). However, when such citations clearly relate only to details not directly relevant to the claimed invention, they may be disregarded. In the exceptional case that the application cites a document that is not published or otherwise not accessible to the Search Division and the document appears essential to a correct understanding of the invention to the extent that a meaningful search would not be possible without knowledge of the content of that document, the Search Division should apply the procedure under Rule 63 and invite the applicant to either submit the document or indicate the subject-matter to be searched (see B-VIII, 3). The invitation should contain the following information:

(i)
which cited document is needed; 
(ii)
why the document is needed; 
(iii)
the consequences of not supplying the document in time (see below). 

If no copy of the document is received within the time limit according to Rule 63(1) and the applicant is unable to convince the Search Division in a timely response to the Rule 63(1) invitation that the document is not essential to facilitate a meaningful search, an incomplete search report or, where applicable, a declaration replacing the search report under Rule 63 is prepared (see B-VIII, 3.2.1). This incomplete search report or declaration will be issued giving the following grounds:

(i)
the non-availability of the document rendered the invention insufficiently disclosed within the meaning of Art. 83; and
(ii)
the insufficient disclosure mentioned in (i) existed to such a degree that a meaningful search was not possible on at least part of the claimed invention (see B-VIII, 3).

It should also be noted that where the applicant furnishes the document after the search report and the search opinion (if applicable, see B-XI, 7) have been prepared, an additional search on that subject-matter originally excluded from the search may be carried out due to the correction of the deficiency which led to the incomplete search (see C-IV, 7.2). However, applicants must be aware that such later furnished information can only be taken into account for sufficiency of disclosure pursuant to Art. 83 under certain circumstances (see F-III, 8).

References

Rule 66
Rule 141