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Guidelines for Examination

 
 

1.1 Text for approval

Once the Examining Division has decided that a patent can be granted it must inform the applicant of the text on the basis of which it intends to do so. This text may include amendments and corrections made by the Examining Division on its own initiative which it can reasonably expect the applicant to accept. In case of doubt as to whether the applicant would agree to the amendments proposed by the Examining Division, the applicant should be contacted by telephone or an official communication has to be written. The applicant's agreement to such amendments will usually be minuted in the communication according to Rule 71(3) (see C‑VII, 2.5).

Examples of amendments where no such consultation with the applicant is required are the following:

(a)
bringing a statement of invention in the description into conformity with the claims 
(b)
deletion of vague general statements in the description (see F‑IV, 4.4) or of obviously irrelevant matter (see F‑II, 7.4)
(c)
insertion of values in SI units (see F‑II, 4.13)
(d)
insertion of reference numerals in claims, unless the applicant is known to object to this or has previously objected to this 
(e)
introduction of a summary of background art which clearly represents the prior art closest to the invention 
(f)
amendments which, in spite of the fact that they change the meaning or scope of an independent claim, would very clearly have to be made, so that it can be assumed that the applicant would not object to them 
(g)
correction of linguistic and other minor errors 
(h)
reformulation of method-of-treatment claims into an allowable format (see G‑II, 4.2).

Examples of amendments which may not be proposed without consulting the applicant are:

(a)
amendments which significantly change the meaning or scope of the claims, if there are different ways of amending the claim, so that the examiner cannot assume to which possibility the applicant will agree. 
(b)
deletion of entire claims, with the exception of so-called "omnibus claims" (i.e. claims reading "An apparatus substantially as described herein", or the like) 
(c)
combining claims so as to overcome a novelty or inventive step objection. 

With regard to such amendments and corrections made by the Division, it is important to bear in mind that the above list is designed to avoid changes which the applicant is more likely to reject, thus helping to avoid delays in the conclusion of examination proceedings. The standard marks used by the Division for indicating amendments and corrections using the electronic tool are listed in C-V, Annex.

The text is communicated to the applicant by despatching a communication under Rule 71(3), in which the applicant is furthermore invited to pay the fee for grant and publishing (see C‑V, 1.2) and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings (see C‑V, 1.3) within a period of four months, which is non-extendable. If the applicant pays the fees and files the translations within this period (and files or requests no corrections or amendments to the text proposed for grant in the Rule 71(3) communication, see C‑V, 4.1), he will be deemed to have approved the text intended for grant (Rule 71(5)).

If during examination proceedings a main and auxiliary requests have been filed (see C‑IV, 1 and E‑IX, 3) and one of the requests is allowable, the communication pursuant to Rule 71(3) is to be issued on the basis of the (first) allowable request and must be accompanied by an explanation of the reasons why the higher-ranking requests are not allowable (see also H‑III, 3).

Handwritten amendments by the applicant to the description, claims and abstract, unless they involve graphic symbols and characters and chemical or mathematical formulae, are no longer accepted in strict compliance with Rule 50(1) in conjunction with Rule 49(8) (see OJ EPO 2013, 603, and A‑III, 3.2). For the procedure to follow in oral proceedings, see E‑II, 8.7.

References

Rule 71(3)