Guidelines for Examination

7.1

General remarks

If the department whose decision is contested considers the appeal to be admissible and well founded, it must rectify its decision. This does not apply where the appellant is opposed by another party to the proceedings.

Art. 109(1)

The obligation or possibility of rectification may thus arise in connection with a decision by the Receiving Section, the Legal Division or an Examining Division. In opposition proceedings, it only arises in the special case that all the notices of opposition have been withdrawn and the proprietor of the patent files an appeal.

After receipt of the statement of grounds, only three months are available for rectification of the decision by the department of the first instance. That department must therefore consider the appeal with the highest priority and start the examination on admissibility immediately, and if the appeal is considered admissible in the form in which it has been filed, the competent department will start its examination on allowability immediately.

Art. 109(2)

The department concerned will rectify its decision if convinced in the light of the grounds of appeal that the appeal is admissible and well founded. This could arise, for example, because:

(i)

the department failed to take due account of some of the material available to it at the time the decision was made;

(ii)

the department did not receive material filed at the EPO in due time before the issue of the decision, owing to an office error; or

(iii)

the decision of the department concerned does not appear to be incorrect, but the applicant presents new information or evidence or files amendments to the application, which overcome the objections of the decision under appeal (see T 139/87).

For the advantages of a decision covering more than one objection, see E-IX, 5.5, last paragraph.

Art. 109(1)

Art. 109(2)

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Guidelines for Examination