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Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part C Guidelines for Procedural Aspects of Substantive Examination

Part C

Guidelines for Procedural Aspects of Substantive Examination

 

Contents
Chapter I – Introduction
1.
General remark
2.
Work of an examiner
3.
Overview
4.
Purpose of examination
Chapter II – Formal requirements to be met before the Division starts substantive examination
1.
Request for examination
1.1
Confirmation of early request for examination
1.2
Euro-PCT applications
1.3
Invention to be examined
2.
Allocation of the application
3.
Response filed before first communication in examination
3.1
Response to the search opinion
3.2
Response to PCT actions prepared by the EPO
3.3
The invitation under Rule 70a(1)
4.
Designation fee(s), extension fees
5.
Copy of the search results on the priority or priorities
Chapter III – The first stage of examination
1.
Missing drawings or parts of the description filed under Rule 56 or claims filed after accordance of a date of filing
2.
Amendments made by the applicant of his own volition
2.1
Amendments made in response to the search opinion
2.2
Amendments made in response to the WO-ISA, IPER or supplementary international search report
3.
Unity of invention
3.1
Relation to unity in search; limitation to searched invention
3.1.1
No additional search fees paid
3.1.2
Additional search fees paid
3.2
Excision of other inventions; filing divisional applications
3.3
Refund of additional search fees
3.4
Changing from one searched invention to another
4.
First communication
4.1
Reasoned objections
4.2
Invitation to file comments and amendments
5.
Requesting information on prior art (not confined to priority)
6.
Evaluation of prior art documents cited in search report and late priority claim
Chapter IV – Examination of replies and further stages of examination
1.
General procedure
2.
Extent of examination of replies
3.
Further action upon examination of replies
4.
Later stages of examination
5.
Examination of amendments
6.
Admissibility of amendments made by the applicant
7.
Search-related issues in examination
7.1
Search for conflicting European applications
7.2
Additional searches during examination
7.3
Search at the examination stage
7.4
Citing documents not mentioned in the search report
Chapter V – The final stage of examination
1.
Communication under Rule 71(3)
1.1
Text for approval
1.2
Grant and publishing fee
1.3
Translations of the claims
1.4
Claims fees due in response to Rule 71(3) communication
1.5
Other information in the communication under Rule 71(3)
2.
Grant of a patent
3.
Application deemed withdrawn
4.
Amendments or corrections filed in reply to a Rule 71(3) communication
4.1
No payment of fees or filing of translations necessary
4.2
Crediting of fees paid voluntarily
4.3
Amendments or corrections should be reasoned
4.4
Admissibility of amendments
4.5
Adaptation of the description
4.6
Amendments/corrections admitted and allowable - second Rule 71(3) communication sent
4.6.1
Applicant rejects amendments proposed by Examining Division in first Rule 71(3) communication
4.6.2
Second Rule 71(3) invitation based on higher request initially rejected in first Rule 71(3) invitation
4.6.3
Examining Division proposes amendments in second Rule 71(3) communication
4.7
Amendments not admitted and/or not allowable, examination resumed
4.7.1
Communications/oral proceedings after resumption
4.7.2
Agreement reached on a text - second Rule 71(3) communication
4.7.3
No agreement reached on a text - refusal
4.8
Fees to be paid within the second Rule 71(3) period
4.8.1
Claims fees
4.8.2
Fee for grant and publishing
4.9
Applicant disapproves of the text proposed for grant
4.10
Amendments/corrections filed in second Rule 71(3) period
5.
Further requests for amendment after approval
6.
The Examining Division resumes examination after approval of the text
6.1
When does the Examining Division resume examination after approval?
6.2
A further communication under Rule 71(3)
6.3
Crediting of fees under Rule 71a(5)
7.
Correction of errors in the decision to grant
8.
Further processing
9.
Refund of the fee for grant and publishing
10.
Publication of the patent specification
11.
Withdrawal before publication of the patent specification
12.
Certificate
13.
European Patent Bulletin
14.
Refusal
15.
Decision according to the state of the file
15.1
The request for a decision according to the state of the file
15.2
Decision by means of a standard form
15.3
Issuing a self-contained decision
15.4
Issuing a further communication (no refusal)
Chapter VI – Time limits and acceleration of examination
1.
Time limits for response to communications from the examiner
1.1
General considerations
1.2
Special circumstances
2.
PACE
3.
Further ways to accelerate examination
Chapter VII – Other procedures in examination
1.
General remark
2.
Telephone conversation, personal interview, e-mail
2.1
Request for an interview; arranging an interview
2.2
Persons attending the interview
2.3
Conduct of an interview or telephone conversation
2.4
Effect of statements made in an interview or by telephone
2.5
Minutes of an interview or telephone conversation
2.6
Use of e-mail
2.6.1
Examples of where e-mail could be used
2.6.2
Initiation of e-mail
2.6.3
Confidentiality
2.6.4
Filing of amended documents and new requests
2.6.5
Inclusion in the file of any e-mail exchange
3.
Taking of evidence
3.1
General remark
3.2
Producing evidence
3.3
Written evidence
4.
Oral proceedings
5.
Examination of observations by third parties
Chapter VIII – Work within the Examining Division
1.
General remarks
2.
Recommendation to grant
3.
Recommendation to refuse
4.
Tasks of the other members of the Examining Division
5.
Further communication with the applicant
6.
Decision
7.
Enlargement of the Examining Division; consultation of a legally qualified examiner
Chapter IX – Special applications
1.
Divisional applications (see also A-IV, 1)
1.1
General remarks
1.2
Voluntary and mandatory division
1.3
Time limit; abandonment of subject matter
1.4
Examination of a divisional application
1.5
Description and drawings
1.6
Claims
2.
Applications resulting from a decision under Art. 61
2.1
General remarks
2.2
Original application no longer pending
2.3
Partial entitlement
2.4
Entitlement for certain designated States only
3.
Applications where a reservation has been entered in accordance with Art. 167(2)(a) EPC 1973
4.
International applications (Euro-PCT applications)