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Guidelines for Examination

 
 

9.2 Consequences for the Division

In situation (a) above, grant or maintenance is handled by the formalities officer, and the dossier goes back to the Division merely for checking the classification and title and adding any references to supplementary technical information (STIN) or newly cited documents (CDOC).

In situation (b) above, the Board has taken a final decision on the wording of the claims which ends the matter. The Division can no longer amend the claims or allow the applicant or proprietor to do so, even if new facts (e.g. new relevant citations) come to light (see T 113/92, Headnote No. 2, and T 1063/92, Headnote, second paragraph). Corrections under Rule 139, however, may still be allowable.

Applicants and proprietors should exercise all possible procedural economy when bringing the description into line with the claims' wording as decided by the Board of Appeal. Normally, therefore, completely retyped texts should not be accepted (see T 113/92, Headnote No. 1).

In situation (c) above, the Division whose decision was appealed is bound by the Board's ratio decidendi, in so far as the facts are the same (Art. 111(2)). However, new relevant documents or facts which come to light must be taken into account. In particular:

(a)
the parties must be given the opportunity to submit further requests, and 
(b)
the Division must check whether requests from examination or opposition proceedings prior to the appeal (e.g. for oral proceedings) are still outstanding - see T 892/92, Headnote.