Part C
Guidelines for Procedural Aspects of Substantive Examination

Contents

Chapter I – Introduction

1.General remark

2.The work of examiners

3.Overview

4.Purpose of examination

Chapter II – Formal requirements to be met before the division starts substantive examination

1.Request for examination

1.1Confirmation of the intention to proceed further with the application

1.2Euro-PCT applications

1.3Invention to be examined

2.Allocation of the application

3.Response filed before first communication in examination

3.1Response to the search opinion

3.2Response to PCT actions prepared by the EPO

3.3The invitation under Rule 70a(1)

4.Designation fee(s), extension and validation fees

5.Copy of the search results on the priority or priorities

Chapter III – The first stage of examination

1.Missing parts or elements

1.1European applications

1.1.1Missing drawings or parts of the description filed under Rule 56Application documents filed under Rule 56 or Rule 56a

1.1.2Claims filed after accordance of a date of filing

1.2Euro-PCT applications – Missing elements and parts filed under Rule 20.5 and 20.6 PCT

1.3Euro-PCT applications – Erroneous elements filed under Rule 20.5bis PCT

2.Amendments made by applicants of their own volition

2.1Amendments made in response to the search opinion

2.2Amendments made in response to the WO‑ISA, IPER or supplementary international search report

2.3Searches under Rule 164(2)

3.Unity of invention

3.1Searches under Rule 164(2)

3.23.1 Relation to unity in search; limitation to searched invention

3.2.13.1.1 No additional search fees paid

3.2.23.1.2 Additional search fees paid

3.2.33.1.3 Invitation to pay additional search fees combined with invitation to restrict the scope of the search

3.33.2 Excision of other inventions; filing divisional applications

3.43.3 Refund of additional search fees

3.53.4 Changing from one searched invention to another

4.First communication

4.1Reasoning

4.1.1Reasoned objections

4.1.2Positive statements/suggestions

4.2Invitation to file comments and amendments

5.Summons to oral proceedings as the first action in examination

6.Requesting information on prior art (not confined to priority)

7.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

3.1Further action where a request for a translation of the priority application was sent earlier in examination proceedings

4.Later stages of examination

5.Examination of amendments

6.Admissibility of amendments made by the applicant

7.Search-related issues in examination

7.1Search for conflicting European applications

7.2National prior rights

7.37.2 Additional searches during examination

7.47.3 Search at the examination stage

7.57.4 Citing documents not mentioned in the search report

8.New submissions in reply to summons

Chapter V – The final stage of examination

1.Communication under Rule 71(3)

1.1Text for approval

1.2Grant and publishing fee

1.3Translations of the claims

1.4Claims fees due in response to Rule 71(3) communication

1.5Other information in the communication under Rule 71(3)

2.Approval of the proposed text – grant of a patent

3.No reply in time – application deemed withdrawn

4.Request for amendments or corrections in reply to the Rule 71(3) communication

4.1No payment of fees or filing of translations necessary

4.2Crediting of fees paid voluntarily

4.3Amendments or corrections should be reasoned

4.4Admissibility of amendments

4.5Adaptation of the description

4.6Amendments/corrections admitted and allowable – second Rule 71(3) communication sent

4.6.1Second Rule 71(3) communication reversing the amendments proposed by the examining division in first Rule 71(3) communication

4.6.2Second Rule 71(3) communication based on higher-ranking request initially rejected in first Rule 71(3) communication

4.6.3Examining division proposes amendments in second Rule 71(3) communication

4.7Amendments not admitted and/or not allowable, examination resumed

4.7.1Communications/oral proceedings after resumption

4.7.1.1Higher-ranking request not admissible and/or not allowable

4.7.2Agreement reached on a text - second Rule 71(3) communication

4.7.3No agreement reached on a text - refusal

4.8Fees to be paid within the second Rule 71(3) period

4.8.1Claims fees

4.8.2Fee for grant and publishing

4.9Reply explicitly disapproving the proposed text without indicating an alternative text

4.10Amendments/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

6.1When does the examining division resume examination after approval?

6.2A further communication under Rule 71(3)

6.3Crediting 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

15.1The request for a decision according to the state of the file

15.2Decision by means of a standard form

15.3Issuing a self-contained decision

15.4Issuing a further communication (no refusal)

AnnexStandard marks for indicating amendments or corrections by the divisions

Chapter VI – Time limits and acceleration of examination

1.Time limits for response to communications from the examiner

1.1General considerations

1.2Special circumstances

2.Influencing the speed of examination proceedings – PACE

3.Further ways to accelerate examination

Chapter VII – Other procedures in examination

1.General remark

2.Consultations

2.1General

2.2Persons participating in the consultation

2.3Informal nature of consultations

2.4Minutes of a consultation

2.5Minutes as the first communication in examination

3.Use of email

3.1Initiation of exchanges by email

3.2Confidentiality

3.3Inclusion in the file of any email exchange

4.Taking of evidence

4.1General remark

4.2Producing evidence

4.3Written evidence

5.Oral proceedings

6.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)

1.1General remarks

1.2Voluntary and mandatory division

1.3Abandonment of subject-matter

1.4Examination of a divisional application

1.5Description and drawings

1.6Claims

2.Applications resulting from a decision under Art. 61

2.1General remarks

2.2Original application no longer pending

2.3Partial entitlement

2.4Entitlement 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)