Part E
Guidelines on General Procedural Matters

Contents

Chapter I – Introduction

Chapter II – Communications and notifications

1.Communications

1.1General remarks

1.2Number of communications

1.3Form of decisions, communications and notices

2.Notification

2.1General remarks

2.2Method of notification

2.3Notification by postal services

2.4Electronic notification

2.5Notification to representatives

2.6Irregularities in the notification

Chapter III – Oral proceedings

1.General

1.1Introduction

1.2Format of oral proceedings

1.3Request for oral proceedings to be held on EPO premises

1.4Request to hold on-site oral proceedings at a particular site

2.Oral proceedings at the request of a party

2.1Request for oral proceedings by an opponent whose opposition is to be rejected as inadmissible or is deemed not to have been filed

2.2Request for oral proceedings in examination to be held on EPO premises

3.Request for further oral proceedings

4.Oral proceedings at the instance of the EPO

5.Preparation of oral proceedings

5.1When can summons to oral proceedings be issued in substantive examination?

6.Summons to oral proceedings

7.Change of date, cancellation or maintenance of oral proceedings

7.1Changing the date of oral proceedings

7.1.1Requests to change the date of oral proceedings

7.1.2Change of date of oral proceedings at the instigation of the division

7.1.3Change of date of oral proceedings – defined notice period

7.2Cancellation or maintenance of oral proceedings

7.2.1General

7.2.2Withdrawal of the request for oral proceedings

8.Conduct of oral proceedings

8.1Admission of the public to proceedings

8.2Conduct of oral proceedings

8.2.1Oral proceedings on the EPO premises – use of laptops or other electronic devices during either ex parte or inter partes oral proceedings

8.2.2Oral proceedings by videoconference before examining divisions

8.2.18.2.2.1 Participation of parties and their representatives from different locationsRemote connection of applicants and their representatives

8.2.28.2.2.2 Participation of members of the division from different locationsRemote connection of members of the examining division

8.2.3Technical problems

8.2.4Recording

8.3Opening of oral proceedings; non-appearance of a party

8.3.1Checking the identity and authorisations of participants at oral proceedings

8.3.2Opening the oral proceedings

8.3.3Late arrival, non-appearance and failure to connect

8.3.3.1General

8.3.3.2Procedure in opposition proceedings

8.3.3.3Procedure in examination proceedings

8.4Opening of the substantive part of the proceedings

8.5Submissions by the parties

8.5.1Use of computer-generated slideshows in oral proceedings

8.5.1.1Opposition proceedings (inter partes)

8.5.1.2Examination proceedings (ex parte)

8.5.2Written submissions during oral proceedings by videoconference

8.6Facts, evidence or amendments introduced at a late stage

8.7Handwritten amendments in oral proceedings

8.7.1General principles

8.7.2Procedure in examination proceedings

8.7.3Procedure in opposition proceedings

8.8Use of Rule 137(4) for amendments filed during oral proceedings in examination

8.9Discussion of the facts and of the legal position

8.10Right of the other members of the division to put questions

8.11Closure of oral proceedings

8.11.1Requesting postponement during oral proceedings

8.11.2Adjournment of oral proceedings due to lack of time

9.Delivery of the decision

10.Minutes of oral proceedings

10.1Formal requirements

10.2Language

10.3Subject-matter of minutes

10.4Request for correction of minutes

11.Oral proceedings held by videoconference – technical aspects

11.1Equipment and technology

11.1.1Videoconference rooms at the EPO

11.1.2Document camera

11.2Preparations for the videoconference

11.3Technical problems

11.4Recording

Chapter IV – Taking and conservation of evidence

1.Taking of evidence by the departments of the EPO

1.1General remarks

1.2Means of evidence

1.3Taking of evidence

1.4Order to take evidence

1.5Summoning of parties, witnesses and experts

1.6Hearing of parties, witnesses and experts

1.6.1General remarks

1.6.2Witnesses and experts not summoned

1.6.3Guidance to persons heard

1.6.4Separate hearings

1.6.5Examination as to personal particulars

1.6.6Examination as to res gestae

1.6.7Entitlement of parties to put questions at hearings

1.6.8Hearing of a witness no longer necessary

1.7Minutes of taking of evidence

1.8Commissioning of experts

1.8.1Decision on the form of the opinion

1.8.2Objection to an expert

1.8.3Terms of reference of the expert

1.9Costs arising from oral proceedings or taking of evidence

1.10Entitlements of witnesses and experts

1.10.1Expenses for travel and subsistence

1.10.2Loss of earnings, fees

1.10.3Details of the entitlements of witnesses and experts

1.11Models

1.11.1When may models be submitted?

1.11.2Procedure

1.11.3Keeping the model

1.12Video recordings

2.Conservation of evidence

2.1Requirements

2.2Request for the conservation of evidence

2.3Competence

2.4Decision on the request and the taking of evidence

3.Taking of evidence by courts or authorities of the contracting states

3.1Legal co-operation

3.2Means of giving or taking evidence

3.2.1Taking of evidence on oath

3.2.2Evidence taken by a competent court

3.3Letters rogatory

3.4Procedures before the competent authority

3.5Costs of taking evidence

3.6Taking of evidence by an appointed person

4.Evaluation of evidence

4.1General remarks

4.2Types of evidence

4.3Examination of evidence

4.4Asking for evidence

4.5Evaluation of the testimony of a witness

4.6Evaluation of the testimony of parties

4.7Evaluation of an expert opinion

4.8Evaluation of an inspection

Chapter V – 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 VI – 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

1.1General remarks

1.2Limits on the obligation to undertake examination

2.Late-filed submissions

2.1General principles in opposition proceedings

2.2Submissions filed in preparation for or during oral proceedings

2.2.1New facts and evidence

2.2.2Amendments filed in preparation for or during oral proceedings

2.2.3Principles relating to the exercise of discretion

2.2.4Right to be heard

2.2.5Costs

3.Observations by third parties

4.External complaints

Chapter VII – Interruption, stay and consolidation of the proceedings

1.Interruption

1.1Cases in which the proceedings may be interrupted

1.2Responsible department

1.3Date of interruption

1.4Resumption of proceedings

1.5Resumption of time limits

2.Stay of proceedings under Rule 14 due to pending national entitlement proceedings

3.Stay of proceedings when a referral to the Enlarged Board of Appeal is pending

4.Consolidation of proceedings

Chapter VIII – 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

1.1Determination of time limits

1.2Duration of the periods to be specified by the EPO on the basis of EPC provisions

1.3Time limits which may be freely determined

1.4Calculation of time limits

1.5Effect of change in priority date

1.6Extension of a time limit

1.6.1Extension of time limits set by the EPO under Rule 132

1.6.2Extension of periods under Rule 134

1.6.2.1Extension of periods under Rule 134(1)

1.6.2.2Extension of periods under Rule 134(2) and Rule 134(5)

1.6.2.3Scope of application of Rule 134

1.7Late receipt of documents

1.8Failure to respond within a time limit

1.9Loss of rights

1.9.1Cases of loss of rights

1.9.2Noting and communication of loss of rights

1.9.3Decision on loss of rights

2.Further processing

3.Re-establishment of rights

3.1Admissibility of the request

3.1.1Time limits covered

3.1.2Entitlement to file the request

3.1.3Form of the request and applicable time limit

3.1.4Substantiation of the request

3.2Merit of the request

3.3Decision on re-establishment of rights

4.Accelerated prosecution of European patent applications

4.1Accelerated search

4.2Accelerated examination

4.3Patent Prosecution Highway (PPH)

5.Accelerated processing of oppositions

6.Accelerated processing before the boards of appeal

7.Enquiries

8.Renunciation of rights

8.1Withdrawal of application or designation

8.2Withdrawal of priority claim

8.3Statement of withdrawal

8.4Surrender of patent

Chapter IX – Applications under the Patent Cooperation Treaty (PCT)

1.General remarks

2.EPO as designated or elected Office

2.1Entry into the European phase

2.1.1Requirements for entry into the European phase

2.1.2Initial processing and formal examination; copy of the international application

2.1.3Translation of the international application

2.1.4Filing fee, designation fee, request for examination and search fee

2.2Instructions in Chapter A‑II ("Filing of applications and examination on filing")

2.3Instructions in Chapter A‑III ("Examination of formal requirements")

2.3.1Representation, address for correspondence

2.3.2Physical requirements

2.3.3Request for grant

2.3.4Designation of inventor

2.3.5Claim to priority

2.3.5.1Priority document

2.3.5.2Information on prior art

2.3.5.3Restoration of priority

2.3.6Title of the invention

2.3.7Prohibited matter

2.3.8Claims fee

2.3.9Drawings

2.3.10Abstract

2.3.11Designation fee

2.3.12Renewal fees

2.4Instructions in Chapter A‑IV ("Special provisions")

2.4.1Divisional applications

2.4.2Sequence listings

2.4.3Certificate of exhibition

2.4.4Biological material

2.5Instructions in Chapter A‑VI ("Publication of application; request for examination and transmission of the dossier to examining division")

2.5.1Publication of the international application

2.5.2Request for examination

2.5.3Supplementary European search

2.6Reduction and refunds of fees in respect of international (PCT) applications

2.7Communication to the EPO as a designated Office

2.8Early processing

2.9Review by the EPO as a designated/elected Office and rectification of errors made by the receiving Office or the International Bureau

2.9.1Review by the EPO under Art. 25 PCT

2.9.2Review by the EPO under Art. 24 PCT and excuse of delays under Art. 48(2) PCT

2.9.3Rectification of errors made by the receiving Office or the International Bureau

2.9.4Determination of filing date in the case of erroneously filed elements or parts of the international application

2.10Inspection of files

3.The communication according to Rule 161

3.1Applications for which a supplementary European search report is prepared

3.2Applications for which no supplementary European search report is prepared

3.3Exceptions where a reply to the Rule 161(1) invitation is not required

3.3.1Earlier filed amendments or comments

3.3.2Positive WO‑ISA, SISR or IPER

3.3.3Rule 161 communication issued before 1 April 2010

3.3.4Voluntary reply to Rule 161(1) communication

3.4Rule 137(4) applies

4.Examination procedure

4.1At least one communication in examination

4.2No examination of multiple inventions in EP phase

4.3Substantive examination of a Euro-PCT application accompanied by an IPER

4.3.1Comparative test results

4.3.2Basis for substantive examination

4.3.3Consideration of the contents of the IPER

Chapter X – Decisions

1.Basic principles of decisions

1.1General remarks

1.2Consideration of time limits

1.3Form and content

1.3.1Order

1.3.2Facts and submissions

1.3.3Reasoning

2.Decisions taken by the examining or opposition divisions

2.1ExamplesRight to be heard

2.2Authoritative text of documents

2.3Requirements as to form

2.4Facts and submissions

2.5Decision on the file as it stands

2.6Reasoning of decisions

2.7Content

2.8Analysing the parties' arguments

2.9Main and auxiliary requests

2.10Late-filed submissions

2.11Refusal to admit amendments under Rule 137(3)

3.Decisions which do not terminate proceedings – interlocutory decisions

4.Binding nature of decisions on appeals

5.Information as to means of redress

6.Notification

Chapter XI – Impartiality of the examining or opposition division

Chapter XII – 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

7.1General remarks

7.2Remittal to the board of appeal

7.3Reimbursement of appeal fees

7.4Examples

7.4.1No amended claims filed with the appeal

7.4.2Amended main/single request filed with the appeal

7.4.3Main and auxiliary requests filed with the appeal

7.4.4Response to communication pursuant to Rule 58 filed with the appeal

8.Rules of Procedure of the Boards of Appeal

9.Remittal to the division after appeal

9.1Orders on remittal

9.2Consequences for the division

Chapter XIII – 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

3.1Composition

3.2Duties

4.Language to be used

5.Procedure

5.1Formalities check

5.2Preliminary examination

5.3Withdrawal of the request

5.4Establishment and issue of the technical opinion

5.5File inspection

5.6Appearance before the national court

Chapter XIV – Registration of changes of name, transfers, licences and other rights

1.General

2.Responsible department

3.Transfer of the European patent application

4.Transfer of the European patent

5.Changes of name

6.Licences and other rights

6.1Registration

6.2Cancellation of the registration