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Guidelines for Examination

 
 
2.5
Minutes of an interview or telephone conversation 

Where the interview is concerned with the clarification of obscurities, the resolution of uncertainties, or putting the application in order by clearing up a number of minor points it will usually be sufficient if the examiner makes a note in the minutes of the matters discussed and the conclusions reached or amendments agreed. If, however, the interview is concerned with resolving weightier matters, such as questions of novelty, inventive step, unity or whether the amendment introduces fresh subject-matter, then a fuller note of the matters discussed should be made in the minutes (see below).

The minutes should list the participants, summarise the main results and state any oral requests. They must be signed by the examiner. Documents filed during a personal interview, such as new claims or an amended description, must be listed in the minutes and signed by the applicant/representative.

With regard to weightier matters which are discussed, it should always be the aim when drafting the minutes to specify in concrete terms the topics discussed, together with any amendments agreed, any opposing views, the reasons for any change of opinion and any conclusions drawn, unless these are clear from other documents in the dossier. In particular, the reasons for any amendments required by the examiner should be clearly indicated.

The use of indefinite, ambiguous or universally applicable statements in minutes should be avoided. For example, statements such as "Amendments to the claims were proposed to take account of the prior art cited in the search report" are of no assistance to members of the public, other members of the Division, or indeed the primary examiner himself at later stages of the procedure. The same applies to conclusions worded in a generalised manner.

In every case the minutes of an interview or telephone consultation should be placed in the dossier and a copy communicated to the applicant or his representative to notify him, even where a telephone consultation merely changes/confirms/cancels the time/date of a proposed interview. However, by way of exception, telephone consultations relating to amendments agreed immediately preceding completion of the communication according to Rule 71(3) may be minuted in that communication, provided that there is no uncertainty for the public as to what was agreed. The amendments must be identified as exactly as possible.

The minutes of interviews or telephone conversations should always indicate whether the next action is due to come from the applicant or the examiner. The minutes when dispatched to the applicant may:

(i)
be dispatched for information only, in which case if a time limit is still running, it should be observed; if no time limit is running, no action is required from the applicant; 
(ii)
be dispatched such as to extend a running time limit, in which case the applicant must reply within that extended time limit, or 
(iii)
be dispatched such as to set a new time limit for response, in which case the applicant must reply within this new time limit. 

However, a time limit may only be set in connection with the dispatch of minutes of an interview or telephone consultation if a communication from the Examining Division has been issued. Otherwise the minutes must be sent as an annex to a first communication according to Art. 94(3).

Where an objection of a lack of unity is raised for the first time in the telephone call or interview, notification of the minutes may trigger the period for mandatory division according to Rule 36(1)(b) (for more details see A-IV, 1.1.1.3).