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Guidelines for Examination

 
 

10.3 Subject-matter of minutes

Minutes must contain the essentials of the oral proceedings and the relevant statements made by the parties, together with arguments relevant to the decision and not contained in the parties' written submissions.

Relevant statements are, for example, new or amended procedural submissions or the withdrawal thereof, the fresh submission or amendment or withdrawal of application documents, such as claims, description and drawings, and statements of surrender.

The essentials of the oral proceedings include new statements by the party or parties and by the member or members of the department concerning the subject-matter of the proceedings. In examination and opposition proceedings, the essentials are principally new statements arguing the presence or lack of novelty, inventive step and other patentability criteria.

Vague or general statements are to be avoided. Also, care must be taken to ensure that statements crucial to the decision are correctly recorded. In case of doubt, the record of such statements should be read out to the parties concerned before the decision is taken and announced. If new facts or evidence are submitted during the oral proceedings, the minutes should make clear that the division has examined them under Art. 114(1). They should also indicate whether or not the Division, after having heard the parties, subsequently disregarded them under Art. 114(2).

The minutes should summarise the following elements, where present:

(a)
relevant arguments of the parties  
(b)
substance of any new requests by the parties, and 
(c)
presentation of the case by a member of the Division. 

The parties' final requests should be recorded in the minutes immediately prior to the part indicating the decision or, if no final decision is taken, the outcome of the proceedings.

The minutes should also contain procedural information, such as how the proceedings are to be continued after closure of the oral proceedings.

If a decision is given, the wording of the operative part must be reproduced in the minutes.

If the exact wording of a statement or submission is not of importance, only a concise summary of the essentials should appear in the minutes.

The minutes with the result reached during the proceedings are communicated to the parties as soon as possible.

References

Rule 124(1)