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Guidelines for Examination

 
 

8.7Handwritten amendments in oral proceedings

The requirement of Rule 49(8), that the description, claims and abstract, as well as the request for grant, must be typed or printed extends to documents replacing application documents and to amended patent specification documents (Rules 50(1) and 86). This applies to documents submitted during oral proceedings as well.

Responsibility for formally correct submissions and, in particular, for compliance with Rule 49(8) lies with the applicant/proprietor. In order to assist the parties in such circumstances, the Office provides technical facilities that allow for compliance with the formal requirements, in particular computers equipped with a word processor and a printer, network printers and copiers enabling documents to be printed from a USB stick, and internet access in public areas via a public wireless network.

Whereas the formal requirements of Rule 49 apply to documents submitted during oral proceedings as well, documents containing handwritten amendments will normally be accepted by the division as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent. A final decision granting a patent or maintaining it in amended form may be taken only on the basis of a document which is not formally deficient.

If the applicant or the patent proprietor is unable to provide formally correct amendments during oral proceedings, the following applies:

(a)
If a decision to refuse a patent application or revoke a patent is imminent and handwritten documents making up the application or the patent are on file, to avoid prolonging the proceedings the Examining or Opposition Division should go ahead and issue the decision, based on substantive arguments. It may however mention this formal deficiency in the decision.
(b)
If, in examination proceedings, there is agreed patentable subject-matter, the Examining Division should invite the applicant to file the submissions in typed or printed form within two months. Should the applicant fail to do so, the application is deemed to be withdrawn. If the amendments submitted differ from what was agreed in the oral proceedings, the procedure described in C‑V, 4.7 applies.
(c)
If, in opposition proceedings, the patent can be maintained in amended form, the parties should be informed that the proceedings will be continued in writing. The Opposition Division will then invite the patent proprietor to file compliant documents within two months. Opponents have to be given sufficient time to analyse, comment on and/or object to these documents. If the requested documents are not filed in due time, and there is no pending request for oral proceedings, the patent is revoked pursuant to Art. 101(3)(b).