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Guidelines for Examination


4.1 Use of "P" and "E" documents in the search opinion

Where a document relating to potential prior art according to Art. 54(3) is referred to in the search opinion, two situations may arise, depending on whether or not the examiner can conclusively establish that said prior art document has an earlier relevant date than that of the application. If so, the examiner should raise an objection under Art. 54(3). If not, he should assume that any priority which cannot be checked is valid. This leads to two different scenarios:

The prior art document is comprised in the state of the art under Art. 54(3). The examiner consequently raises an objection under Art. 54(3) in the search opinion and indicates which priorities have been assumed to be valid;
The prior art document does not belong to the state of the art under Art. 54(3). Where the search opinion raises other objections, it will refer to the document potentially falling under Art. 54(3) (and its relevant passages) and will explain which priorities have been assumed valid.

Where there are also "P" documents cited in the search report and these are not potential Art. 54(3) documents (because they are not international or European patent applications), these documents may constitute prior art under Art. 54(2) and thus be relevant for the assessment of novelty and inventive step insofar as the priority of the application is not valid. Where the priority of the application can be checked, the examiner checks the priority and makes objections in the search opinion based on the "P" documents if the priority is not valid. If the priority of the application cannot be checked, it is assumed to be valid and no objection is raised in the search opinion.

The issue of the validity of the priority claim(s) then needs to be reviewed in examination (see F‑VI, 2).