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Guidelines for Examination

 
 

3.4.2 Oral proceedings

If the Opposition Division is able to allow an auxiliary request but not the main or higher-ranking auxiliary requests, the chairman should inform the parties (possibly after interrupting the proceedings) which request is allowable and that the higher-ranking request(s) is/are not allowable (and on which grounds they are not allowable), ensuring beforehand that the parties have already had the opportunity to comment on all grounds and evidence underlying this finding. The chairman will then normally ask the proprietor if he is prepared to convert the allowable auxiliary request into a main request (by abandoning all higher-ranking unallowable requests). The Division cannot, however, insist on the proprietor making such a declaration.

If, despite the existence of an allowable auxiliary request, the proprietor continues to maintain higher-ranking unallowable requests, the Division issues an interlocutory decision to the effect that:

(a)
the main request and possibly one or more auxiliary requests is/are not allowable 
(b)
in respect of the allowable auxiliary request, the amended patent and the invention to which it relates satisfy the requirements of the EPC. 

If, on the other hand, the proprietor withdraws the higher-ranking requests such that the allowable auxiliary request becomes the main request, the Division will issue an interlocutory decision to the effect that this request satisfies the EPC.

The Division should try as far as possible to ensure that, if it allows an auxiliary request at oral proceedings, the complete final text is available at the end of the proceedings.