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Guidelines for Examination

 
 
Table of Contents - Guidelines for Examination
Part E Guidelines on General Procedural Matters

Part E

Guidelines on General Procedural Matters

 

Contents
Introduction
Chapter I – Communications and notifications
1.
Communications
1.1
General remarks
1.2
Number of communications
1.3
Form of decisions, communications and notices
2.
Notification
2.1
General remarks
2.2
Method of notification
2.3
Notification by post
2.4
Notification to representatives
2.5
Irregularities in the notification
Chapter II – Oral proceedings
1.
General
2.
Oral proceedings at the request of a party
2.1
Request for oral proceedings by an opponent whose opposition is to be rejected as inadmissible or is deemed not to have been filed
3.
Request for further oral proceedings
4.
Oral proceedings at the instance of the EPO
5.
Preparation of oral proceedings
5.1
When can summons to oral proceedings be issued in substantive examination?
6.
Summons to oral proceedings
7.
Requests for the postponement of oral proceedings
7.1
Postponement of oral proceedings at the instigation of the Division
7.2
Postponement of oral proceedings - defined notice period
8.
Conduct of oral proceedings
8.1
Admission of the public to proceedings
8.2
Conduct of oral proceedings
8.2.1
Use of laptops or other electronic devices during either ex parte or inter partes oral proceedings
8.3
Opening of oral proceedings: non-appearance of a party
8.3.1
Checking the identity and authorisations of participants at oral proceedings
8.3.2
Opening the oral proceedings
8.3.3
Late arrival or non-appearance at oral proceedings
8.3.3.1
General
8.3.3.2
Procedure in opposition proceedings
8.3.3.3
Procedure in examination proceedings
8.4
Opening of the substantive part of the proceedings
8.5
Submissions by the parties
8.5.1
Use of computer-generated slideshows in oral proceedings
8.5.1.1
Opposition proceedings (inter partes)
8.5.1.2
Examination proceedings (ex parte)
8.6
Facts, evidence or amendments introduced at a late stage
8.7
Unity objection raised for the first time in examination oral proceedings
8.8
Use of Rule 137(4) for amendments filed during oral proceedings in examination
8.9
Discussion of the facts and of the legal position
8.10
Right of the other members of the Division to put questions
8.11
Closure of oral proceedings
8.11.1
Requesting postponement during oral proceedings
9.
Delivery of the decision
10.
Minutes of oral proceedings
10.1
Formal requirements
10.2
Language
10.3
Subject-matter of minutes
10.4
Request for correction of minutes
11.
Oral proceedings and interviews held by video-conference
11.1
Requests for video-conferencing
11.1.1
Discretion regarding grant of requests for video-conferences
11.1.2
Status of oral proceedings held by video-conference
11.2
Preparations for the video-conference
11.2.1
Room reservations
11.2.2
Document camera
11.2.3
Fax
11.2.4
Technical problems
11.2.5
Checking the identity of the representative
11.2.6
Recording of the video-conference
Chapter III – Taking and conservation of evidence
1.
Taking of evidence by the departments of the EPO
1.1
General remarks
1.2
Means of evidence
1.3
Taking of evidence
1.4
Order to take evidence
1.5
Summoning of parties, witnesses and experts
1.6
Hearing of parties, witnesses and experts
1.6.1
General remarks
1.6.2
Witnesses and experts not summoned
1.6.3
Guidance to persons heard
1.6.4
Separate hearings
1.6.5
Examination as to personal particulars
1.6.6
Examination as to res gestae
1.6.7
Entitlement of parties to put questions at hearings
1.7
Minutes of taking of evidence
1.8
Commissioning of experts
1.8.1
Decision on the form of the opinion
1.8.2
Objection to an expert
1.8.3
Terms of reference of the expert
1.9
Costs arising from oral proceedings or taking of evidence
1.10
Entitlements of witnesses and experts
1.10.1
Expenses for travel and subsistence
1.10.2
Loss of earnings, fees
1.10.3
Details of the entitlements of witnesses and experts
1.11
Models
1.11.1
When may models be submitted?
1.11.2
Must the model be considered?
1.11.3
Keeping the model
1.11.4
Procedure
1.12
Video recordings
2.
Conservation of evidence
2.1
Requirements
2.2
Request for the conservation of evidence
2.3
Competence
2.4
Decision on the request and the taking of evidence
3.
Taking of evidence by courts or authorities of the Contracting States
3.1
Legal co-operation
3.2
Means of giving or taking evidence
3.2.1
Taking of evidence on oath
3.2.2
Evidence taken by a competent court
3.3
Letters rogatory
3.4
Procedures before the competent authority
3.5
Costs of taking evidence
3.6
Taking of evidence by an appointed person
4.
Evaluation of evidence
4.1
General remarks
4.2
Types of evidence
4.3
Examination of evidence
4.4
Asking for evidence
4.5
Evaluation of the testimony of a witness
4.6
Evaluation of the testimony of parties
4.7
Evaluation of an expert opinion
4.8
Evaluation of an inspection
Chapter IV – Derogations from the language of the proceedings in oral proceedings
1.
Use of an official language
2.
Language of a Contracting State or other language
3.
Exceptions from sections 1 and 2
4.
Language used in the taking of evidence
5.
Language used by employees of the EPO
6.
Language used in the minutes
Chapter V – Examination by the EPO of its own motion; facts, evidence or grounds not submitted in due time; observations by third parties
1.
Examination by the EPO of its own motion
1.1
General remarks
1.2
Limits on the obligation to undertake examination
2.
Late filed submissions
2.1
General examples in opposition proceedings
2.2
Examples concerning oral proceedings in opposition procedure
3.
Observations by third parties
Chapter VI – Interruption and stay of the proceedings
1.
Interruption
1.1
Cases in which the proceedings may be interrupted
1.2
Resumption of proceedings
1.2.1
Resumption of time limits
1.3
Department responsible
2.
Stay of proceedings when entitlement proceedings are pending
3.
Stay of proceedings when a referral to the Enlarged Board of Appeal is pending
Chapter VII – Time limits, loss of rights, further and accelerated processing and re-establishment of rights
1.
Time limits and loss of rights resulting from failure to respond within a time limit
1.1
Determination of time limits
1.2
Duration of the time limits to be determined by the EPO on the basis of EPC provisions
1.3
Time limits which may be freely determined
1.4
Calculation of time limits
1.5
Effect of change in priority date
1.6
Extension of a time limit
1.7
Late receipt of documents
1.8
Failure to respond within a time limit
1.9
Loss of rights
1.9.1
Cases of loss of rights
1.9.2
Noting and communication of loss of rights
1.9.3
Decision on loss of rights
2.
Further processing and re-establishment of rights
2.1
Request for further processing
2.2
Re-establishment of rights
2.2.1
General remarks
2.2.2
Extension of re-establishment of rights to opponents
2.2.3
Relevant time limits
2.2.4
Time limits not covered
2.2.5
Request for re-establishment of rights
2.2.6
Special considerations when there is more than one party
2.2.7
Decision on re-establishment of rights
3.
Accelerated prosecution of European patent applications
3.1
Accelerated search
3.2
Accelerated examination
4.
Accelerated processing of oppositions
5.
Accelerated processing before the Boards of Appeal
6.
Renunciation of rights
6.1
Withdrawal of application or designation
6.2
Withdrawal of priority claim
6.3
Statement of withdrawal
6.4
Surrender of patent
Chapter VIII – Applications under the Patent Cooperation Treaty (PCT)
1.
General remarks
2.
EPO as designated or elected Office
2.1
General
2.1.1
Introduction
2.1.2
Initial processing and formal examination; copy of the international application; translation
2.1.3
Filing fee, designation fee, request for examination, search fee and claims fees
2.1.4
PCT vs. EPC provisions
2.2
Provisions of Chapter A-II ("Filing of applications and examination on filing")
2.3
Provisions of Chapter A-III ("Examination of formal requirements")
2.3.1
Representation
2.3.2
Physical requirements
2.3.3
Request for grant
2.3.4
Designation of inventor
2.3.5
Claim to priority
2.3.6
Title of the invention
2.3.7
Prohibited matter
2.3.8
Claims fee
2.3.9
Drawings
2.3.10
Abstract
2.3.11
Designation fee
2.4
Provisions of Chapter A-IV ("Special provisions")
2.4.1
Divisional applications
2.4.2
Sequence listings
2.5
Provisions of Chapter A-VI ("Publication of application; request for examination and transmission of the dossier to Examining Division")
2.5.1
Publication of the international application
2.5.2
Request for examination
2.5.3
Supplementary European search
2.6
Reduction and refunds of fees in respect of international (PCT) applications
2.7
Communication to the EPO as a designated Office
2.8
Delaying of the procedure before the EPO
2.9
Review by the EPO as a designated Office
2.10
Inspection of files
3.
The communication according to Rule 161
3.1
Applications for which a supplementary European search report is prepared
3.2
Applications for which no supplementary European search report is prepared
3.3
Exceptions where a reply to the Rule 161(1) invitation is not required
3.3.1
Earlier filed amendments or comments
3.3.2
Positive WO-ISA, SISR or IPER
3.3.3
Rule 161 communication issued before 1 April 2010
3.3.4
Voluntary reply to Rule 161(1) communication
3.3.5
Indications on Form 1200
3.4
Rule 137(4) applies
4.
Examination procedure
4.1
At least one communication in examination
4.2
No examination of multiple inventions in EP phase
4.3
Substantive examination of a Euro-PCT application accompanied by an IPER
4.3.1
Comparative test results
4.3.2
Basis for substantive examination
4.3.3
Consideration of the contents of the IPER
Chapter IX – Decisions
1.
Basis of decisions
1.1
General remarks
1.2
Examples
2.
Consideration of time limits
3.
Authoritative text of documents
4.
Written form of decisions
4.1
General remarks
4.2
Order
4.3
Facts and submissions
4.4
Decision on the file as it stands
5.
Reasoning of decisions
5.1
Content
5.2
Analysing the parties' arguments
5.3
Main and auxiliary requests
5.4
Late-filed submissions
5.5
Further grounds for refusal
6.
Decisions which do not terminate proceedings – interlocutory decisions
7.
Binding nature of decisions on appeals
8.
Information as to means of redress
9.
Notification
Chapter X – Appeals
1.
Suspensive effect
2.
Appeals after surrender or lapse of the patent
3.
Appeals against the apportionment of costs
4.
Appeals against the decision of the Opposition Division on the fixing of costs
5.
Persons entitled to appeal and to be parties to appeal proceedings
6.
Time limit and form of appeal
7.
Interlocutory revision
7.1
General remarks
7.2
Remittal to the Board of Appeal
7.3
Reimbursement of appeal fees
7.4
Examples
7.4.1
No amended claims filed with the appeal
7.4.2
Amended main/single request filed with the appeal
7.4.3
Main and auxiliary requests filed with the appeal
8.
Rules of Procedure for the departments of second instance
9.
Remittal to the Division after appeal
9.1
Orders on remittal
9.2
Consequences for the Division
Chapter XI – Request from a national court for a technical opinion concerning a European patent
1.
General
2.
Scope of the technical opinion
3.
Composition and duties of the Examining Division
3.1
Composition
3.2
Duties
4.
Language to be used
5.
Procedure
5.1
Formalities check
5.2
Preliminary examination
5.3
Withdrawal of the request
5.4
Establishment and issue of the technical opinion
5.5
File inspection
5.6
Appearance before the national court
Chapter XII – Registering transfers, licences, other rights, etc.
1.
Transfer of the European patent application
2.
Transfer of the European patent
3.
Licences and other rights
4.
Change of name