Guidelines for Examination
List of sections amended in 2017 revision

MAJOR AMENDMENTS

General Part

3; 4

Clarified scope of the Guidelines

PART A

II, 1.1

Opening hours of the EPO filing offices and update on automated mailbox

II, 1.4

Deletion of references to the discontinued EP-EASY software

II, 4.1.4

Added information on legal remedies

III, 6.1; III, 6.6

Clarified practice regarding a priority claim to an application filed on the same day

III, 10.2

Clarified practice relating to the content of the abstract

III, 12.4

Clarified practice regarding states for which the extension or validation fee has been paid

IV, 1.1.1

Clarification of when an application is deemed to be pending before the EPO

IV, 1.8

Clarified practice regarding the publication of a divisional application

IV, 5.3

Clarified practice regarding sequence listings of a divisional application

VI, 2.5

Amended in view of Art. 11 RFees in force as of 1 July 2016

VII, 3.4

Clarified practice regarding requests for translations of evidence filed in a non-official EPO language

VIII, 1.3

Clarification of who can act as common representative

VIII, 1.5; VIII, 2.4

Clarified practice regarding representatives appointed to act in several applications from the same applicant

VIII, 2.5

Clarification of documents for which the web-form filing service can be used

X, 4.2.3

New practice regarding partial revocation of debit orders

X, 4.2.4

New practice regarding partial debiting of fees

X, 4.3

New practice regarding order of priority for processing debit orders

X, 9.3.1

Updated list of the International Searching Authorities to which the reduction of the search fee for a supplementary European search applies

XI, 1; XI, 2.2; XI, 4

All general remarks moved to XI, 1

XI, 2.1; XI, 2.3

List of documents excluded from file inspection moved from XI, 2.1, to XI, 2.3; added practice for excluding parts of a submission

XI, 5.1

Clarified practice regarding the issuance of certified copies of documents

XI, 5.2

Clarified practice regarding the issuance of priority documents

PART B

I, 2

Clarified responsibility of the search division in case of non-unity

II, 4.3.2

Updated list of the International Searching Authorities to which the reduction of the search fee for a supplementary European search applies

III, 3.2.3

Clarified example

IV, 1.2

Brought into line with current practice

V, 1; V, 2; V, 4

Amended in view of the introduction of the CPC classification system

V, 3

Clarified use of IPC classification

VII, 1.2; VII, 2.3; VIII, 3.4; VIII, 4.5; XI, 5

New practice regarding the documents accompanying the partial search report

PART C

II, 1

Clarified practice regarding legal remedies

II, 3.1; II, 3.2; III, 4; III, 5; V, 14

New practice regarding summons as first action in examination

III, 3.1

Clarified practice relating to examination after non-unity

IV, 8

Clarified practice regarding submissions in reply to summons to oral proceedings

V, 1.1; V, 4.6.2; V, 4.9

Clarified practice regarding auxiliary requests

V, 1.5

Clarified content of the annex to the communication under Rule 71(3)

V, 6.1

Clarified procedure regarding resumption of examination after approval

V, 15.1

Clarified practice regarding requests for a decision according to the state of the file

VI, 3

Clarified practice regarding waiving the invitation pursuant to Rule 70(2)

Amended in view of Art. 11 RFees in force as of 1 July 2016

VII, 2.1

Clarified practice regarding enquiries about the progress of the file

VII, 2.3

Clarified practice regarding accompanying persons in oral proceedings

VII, 2.7

Clarified practice regarding minutes of a telephone conversation as first action in examination

VIII, 1

Clarified practice regarding re-allocation of a dossier to another examiner

VIII, 6

Clarified practice regarding signing of a decision by the division

VIII, 7

Clarified practice regarding enlargement of the examining division or setting enlargement aside

PART D

I, 3

Clarified practice regarding amendments occasioned by national prior rights

I, 6

Clarified practice regarding multiple oppositions to the same patent

II, 4.3

Clarified practice for excluding (parts of) a submission from file inspection

III, 4

Clarified practice regarding requests for translations of evidence filed in a non-official EPO language

IV, 1.2.2.1 (v)

Clarification of the underlying principle regarding substantiation of a notice of opposition

IV, 5.5

Clarified practice where all oppositions are considered inadmissible

VI, 3.2

Clarified practice regarding filing an appeal against summons to oral proceedings

VII, 5.1

Clarified practice regarding the application of Rule 84(1)

PART E

 

The introduction to Part E is now Chapter I, in line with the other parts of the Guidelines; all other chapters have been renumbered accordingly.

III, 1; III, 8.2; III, 8.5; III, 8.5.1; III, 8.5.1.1; III, 8.5.1.2; V, 6

Clarified practice regarding oral proceedings before the Legal Division

III, 2

Amended procedure regarding unconditional requests for oral proceedings

III, 5.1; IX, 4.1

New practice regarding summons to oral proceedings as first action

III, 6

New practice regarding summons to oral proceedings as first action

Clarified practice regarding filing an appeal against summons to oral proceedings

Clarified practice regarding citing new documents in the annex to the summons to oral proceedings

III, 7.2; III, 7.2.1; III, 7.2.2; III, 8.3.3.1

Clarified practice regarding cancellation or maintenance of oral proceedings.

III, 8.1

Clarified practice regarding discussions about a request for exclusion of a document from file inspection

III, 8.3.3.3; X, 2.9

Clarified practice regarding auxiliary requests

III, 8.7.1

Clarified practice regarding submissions at oral proceedings

III, 8.7.2

Clarified practice regarding handwritten amendments submitted during appeal proceedings when a case is remitted to the examining division

III, 9

Added example of the operative part of a decision

III, 10.1

Clarified practice regarding the employees responsible for signing the minutes

III, 10.3

Clarified practice regarding the structure of the minutes

IV, 1.6.8

Clarified practice regarding the necessity to hear a witness

IV, 1.11.2; IV, 1.11.3

Amended procedure regarding the inspection of models

VI, 3

Clarified practice regarding third-party observations filed during the international phase

VI, 4

Clarified practice regarding external complaints

VII, 3

Clarified practice regarding stay of proceedings where a referral to the Enlarged Board of Appeal is pending

VII, 4

Added practice regarding consolidation of proceedings before the department of first instance

VIII, 1.2

Clarified practice regarding communications from the Legal Division

VIII, 1.4

Clarified practice regarding time limits interrupted by a stay of proceedings under Rule 14 EPC

VIII, 1.9.3

Clarified practice regarding auxiliary requests for legal remedies

VIII, 2

Clarified practice regarding further processing for several acts having the same legal basis

VIII, 3.1.3

Clarified practice regarding re-establishment of rights for several acts having the same legal basis

VIII, 7

Clarified practice regarding enquiries about the progress of the file

VIII, 8.2

Clarified practice regarding withdrawal of one priority claim where multiple priorities are claimed

IX, 1

Updated list of the International Searching Authorities for which the EPO can act as International Preliminary Examining Authority

IX, 2.1.2

Clarified practice regarding initial processing of international applications by the EPO as designated or elected Office

IX, 2.1.3

Clarified practice regarding payment of claims fees to the EPO as designated or elected Office

IX, 2.2

Clarified practice regarding late filing of missing parts before the EPO as designated or elected Office

IX, 2.3.1

Clarified practice regarding representation before the EPO as designated or elected Office

X, 1.1; X, 1.2; X, 1.3; X, 1.3.1; X, 1.3.2; X, 1.3.3; X, 2.3; X, 2.4; X, 2.6

Clarified practice regarding the drawing up of decisions

XII, 7.1

Clarified practice regarding interlocutory revision in opposition proceedings

Clarified practice regarding signature of the decision to allow interlocutory revision

XIV, 3

Clarified practice regarding who is entitled to sign an assignment of a European patent application

XIV, 5

Clarified practice regarding changes of the applicant’s name

XIV, 6.2

Clarified practice regarding cancellation of the registration of licences

PART F

III, 3

Clarified practice regarding sufficiency of disclosure with respect to claims directed to the use of chemical compounds

III, 4

Clarified practice regarding the burden of proof as regards Art. 83

III, 11

Added example of practice regarding whether Art. 83 is satisfied in case of a parametric definition

IV, 3.8

Clarified practice regarding a method claim for using an apparatus

IV, 3.9

Clarified practice regarding the assessment under Art. 84 EPC of claims directed to computer-implemented inventions (CII)

IV, 3.9.1

Added example of an acceptable claim formulation for a computer-readable [storage] medium/data carrier

IV, 4.10

Clarified practice regarding product claims defined by a result to be achieved

IV, 4.12

Clarified practice regarding product-by-process claims

Amended in view of Rule 28 in force as of 1 July 2017

IV, 5

Clarified practice regarding conciseness of dependent claims

V, 8.1

Clarified practice regarding lack of unity objections

VI, 1.5; VI, 2.2

Amended in view of G 1/15

PART G

II, 3.6

Clarified definition of computer-implemented inventions (CII)

Brought into line with the content of F‑IV, 3.9.1

II, 3.7

Clarified practice regarding presentations of information

II, 3.7.1

Clarified practice regarding graphical user interfaces (GUI)

II, 4.2.1

Clarified practice regarding claims to medical devices, computer programs and storage media comprising subject-matter corresponding to a method of treatment or a diagnostic method

II, 4.2.1.1

Clarified practice regarding computer-implemented surgical methods

II, 4.2.1.2

Clarified practice regarding computer-implemented therapeutic methods

II, 4.2.1.3

Clarified practice regarding computer-implemented diagnostic methods

II, 5.2; II, 5.3; II, 5.4; II, 5.4.1; II, 5.4.2; II, 5.4.2.1; II, 5.5.1

Amended in view of Rule 27 and Rule 28 in force as of 1 July 2017

IV, 3

Amended in view of G 1/15

IV, 6

Clarified practice regarding national prior rights in post-grant proceedings

IV, 7.2.2

Clarified practice regarding agreements on secrecy

IV, 7.3.4

Added practice regarding standard of proof for oral disclosures

IV, 7.4

Clarified practice regarding publication date of brochures for advertising

V, 3

Clarified practice regarding evident abuse in the context of non-prejudicial disclosures

VI, 1

Aligned with F‑IV, 4.6

VI, 7.1

Clarified practice regarding Swiss-type claims versus claims drafted in accordance with Art. 54(5)

VI, 7.1.2

Added examples of claims which would not be considered novel

VI, 7.2

Amended in view of T 151/13

VII, 5.1

Clarified practice regarding determination of the closest prior art

VII, 5.4.2.3

Example 3 clarified

VII, 10.2

Clarified practice regarding unexpected effects in the context of inventive step assessment

PART H

I

Clarified practice regarding admissibility of amendments

II, 2.2

Clarified practice regarding filing own-volition amendments after expiry of a time limit

II, 2.3; II, 2.7; II, 2.7.1

Clarified practice regarding the examining division’s exercise of discretion under Rule 137(3)

II, 2.3.1; II, 2.3.1.1;
II, 2.3.1.2;
II, 2.3.1.3;
II, 2.3.1.4

Added examples of the exercise of discretion under Rule 137(3)

II, 2.5.2

Clarified practice regarding waiving a further Rule 71(3) communication

II, 2.5.4; III, 2.1.1

Clarified practice regarding the application of Rule 137(4)

II, 6.2

Clarified practice regarding the application of Rule 137(5), first sentence

III, 3.3.1.1; III, 3.3.1.2;
III, 3.3.2; III, 3.3.4

Clarified practice regarding auxiliary requests

III, 4

Clarified practice regarding different sets of claims for validation states

III, 4.1; III, 4.3.2; III, 4.4

Clarified practice regarding national prior rights in opposition proceedings

III, 4.2

Clarified practice regarding different text in respect of the state of the art according to Art. 54(3)

III, 4.5

Added practice regarding opposition proceedings where the claims as granted are different for different contracting states

IV, 2.1; V, 3.2

Clarified practice regarding the use of the novelty test to assess the allowability of amendments under Art. 123(2)

IV, 2.2

Clarification of who assesses the allowability of amendments under Art. 123(2)

V, 3.1

Clarified practice regarding allowability of amendments removing several features at the same time

V, 3.2.1

Deleted example 2

V, 3.4

Added practice regarding Art. 123(3) when claims are broadened

V, 7.3

Clarified practice regarding changing a process claim in the format of a Swiss-type claim to a product claim in accordance with Art. 54(5) during opposition proceedings

VI, 1; VI, 3.3; VI, 4

Clarification that correction of formatting/editing errors is a correction under Rule 140

VI, 2

Clarification of the department which is competent to deal with requests for corrections under Rule 139

VI, 2.1

Clarified practice regarding limitations on requesting correction of an error in a document filed with the EPO

VI, 2.1.1

Added practice regarding admissibility of corrections in opposition and limitation proceedings

VI, 3; VI, 3.1; VI, 3.5; VI, 4

Added practice regarding correction of errors in the decision to grant and related patent documents while opposition proceedings are pending

 

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