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Guidelines for Examination

 
 
1.
Missing drawings or parts of the description filed under Rule 56 or claims filed after accordance of a date of filing

Where the applicant has supplied missing drawings or parts of the description after accordance of a filing date (see A-II, 5) under Rule 56, and the Receiving Section has determined that the missing drawings or parts of the description are "completely contained" in the claimed priority application, the application is not re-dated to the date on which the missing drawings or parts of the description were supplied. The Examining Division may review the findings of the Receiving Section on the applicability of Rule 56(3), unless those findings have become final after a decision of a Board of Appeal. Should the Examining Division come to the conclusion that the missing elements are not "completely contained" in the priority document, contrary to the original finding of the Receiving Section, it must communicate this to the applicant and, once it has been established that the right to be heard under Art. 113(1) has been observed, notify him of the new date of filing (see A-II, 5). The Examining Division must also inform the applicant that the missing drawings or parts of the description can still be withdrawn within two months from the date of notification of the new date of filing. If the applicant opts for withdrawal, the re-dating of the application will be deemed not to have been made (see also B-XI, 2.1). For Euro-PCT applications a review is possible under Rule 82ter PCT.

If the applicant does not agree with the finding of the Examining Division, he may (within the above time limit) request an appealable decision on the matter. In this case, the examiner will issue a reasoned decision, informing the applicant of the new date of filing, of the reasons for the re-dating and (where appropriate) of the detrimental effect of the re-dating on the claimed priority right. This decision will allow a separate appeal according to Art. 106(2).

Once the period for filing an appeal has expired without an appeal being filed, the examiner will resume examination on the basis of the new date of filing.

If the applicant files an appeal in due time, competence for the file passes to the Board of Appeal for reviewing the decision on the accordance of a filing date. While the case is pending before the Board of Appeal, the Examining Division will not continue substantive examination. Once the Board of Appeal has issued a decision, the file will be returned to the examiner, who will be bound on this point by the decision of the Board (Art. 111(2)). He will then resume examination.

If the claims were not present at the date of filing the application, the Examining Division must check whether the subsequently filed claims satisfy the requirements of Art. 123(2). If the basis for these subsequently filed claims in the application as filed has not been indicated by the applicant (see H-III, 2.1) and the application is one of those mentioned in H-III, 2.1.4, the Examining Division may send a communication according to Rule 137(4) requesting the applicant to provide this information (see H-III, 2.1.1).