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Guidelines for Examination

 
 
3.4
Extent of first analysis 

It is emphasised that the first sentence of B-XI, 3 only sets out the general rule. There may be cases in which the application is generally deficient. In these cases the examiner should not carry out a detailed analysis, but should send a search opinion to the applicant informing him of this fact, mentioning the major deficiencies and saying that when the application enters the examination stage, further examination will be deferred until these have been removed by amendment. There may be other cases in which, although a meaningful analysis is possible, a fundamental objection arises, e.g. it is clear that certain claims lack novelty and that the statement of claim will have to be drastically recast, or there are substantial amendments (International applications entering the European phase - see B-XI, 2) which are not allowable either because they introduce new matter not present in the application as filed (Art. 123(2)), or they introduce other deficiencies (e.g. the amendment makes the claims unclear - Art. 84). In such cases, it may be more appropriate to deal with this objection before making a detailed analysis; if, e.g. the claims need recasting, it may be pointless to raise objections to the clarity of some dependent claims or to a passage in the description which may have to be amended or even deleted in examination proceedings as a consequence. However, if there are other major objections these should be dealt with. Generally, the examiner should seek to make the maximum impact in the search opinion with the broad aim of facilitating as efficient a decision making process as possible in later examination proceedings.