Guidelines for Examination in the EPO

Chapter I - Introduction

1.

General remark

2.

Work of an examiner

3.

Overview

Chapter II - Content of a European patent application (other than claims)

1.

General

2.

Abstract

3.

Request for grant - the title

4.

Description

4.1

General remarks

4.2

Technical field

4.3

Background art

4.4

Irrelevant matter

4.5

Technical problem and its solution

4.6

Rule 42(1)(c) vs. Art. 52(1)

4.7

Drawings

4.8

Reference signs

4.9

Sufficiency of disclosure

4.10

Art. 83 vs. Art. 123(2)

4.11

Insufficient disclosure

4.12

Industrial application

4.13

Manner and order of presentation

4.14

Terminology

4.15

Computer programs

4.16

Physical values, units

4.17

Proper names, trademarks and trade names

4.18

Registered trademarks

4.19

Reference documents

5.

Drawings

5.1

Form and content

5.2

Printing quality

5.3

Photographs

6.

Inventions relating to biological material

6.1

Biological material

6.2

Public availability of biological material

6.3

Deposit of biological material

7.

Prohibited matter

7.1

Categories

7.2

Matter contrary to "ordre public" or morality

7.3

Disparaging statements

7.4

Irrelevant matter

7.5

Omission of matter from publication

CHAPTER II - Annex Units recognised in international practice and complying with Rule 49(11) (see II, 4.16)

1.

SI units and their decimal multiples and submultiples

1.1

SI base units

1.1.1

Special name and symbol of the SI unit of temperature for expressing Celsius temperature

1.2

Other SI units

1.2.1

Supplementary SI units

1.2.2

Derived SI units

1.2.3

Derived SI units having names and symbols

1.3

Prefixes and their symbols used to designate certain decimal multiples and submultiples

1.4

Special authorised names and symbols of decimal multiples and

submultiples of SI units

2.

Units which are defined on the basis of SI units but are not decimal multiples

or submultiples thereof

3.

Units used with the SI, and whose values in SI are obtained experimentally

4.

Units and names of units permitted in specialised fields only

5.

Compound units

Chapter III - Claims

1.

General

2.

Form and content of claims

2.1

Technical features

2.2

Two-part form

2.3

Two-part form unsuitable

2.3.1

No two-part form

2.3.2

Two-part form "wherever appropriate"

2.4

Formulae and tables

3.

Kinds of claim

3.1

Categories

3.2

Number of independent claims

3.3

Objection under Rule 43(2) or Rule 137(5)

3.4

Independent and dependent claims

3.5

Arrangement of claims

3.6

Subject-matter of a dependent claim

3.7

Alternatives in a claim

3.8

Independent claims containing a reference to another claim

4.

Clarity and interpretation of claims

4.1

Clarity

4.2

Interpretation

4.3

Inconsistencies

4.4

General statements, "spirit" of invention

4.5

Essential features

4.6

Relative terms

4.7

Terms like "about" and "approximately"

4.8

Trademarks

4.9

Optional features

4.10

Result to be achieved

4.11

Parameters

4.12

Product-by-process claim

4.13

"Apparatus for ...", "Method for ...", etc.

4.14

Definition by reference to use or another entity

4.15

The expression "in"

4.16

Use claims

4.17

References to the description or drawings

4.18

Method of and means for measuring parameters referred to in claims

4.19

Reference signs

4.20

Negative limitations (e.g. disclaimers)

4.21

"Comprising" vs. "consisting"

4.22

Functional definition of a pathological condition

5.

Conciseness, number of claims

6.

Support in description

6.1

General remarks

6.2

Extent of generalisation

6.3

Objection of lack of support

6.4

Lack of support vs. insufficient disclosure

6.5

Definition in terms of function

6.6

Support for dependent claims

7.

Unity of invention

7.1

General remarks

7.2

Special technical features

7.3

Intermediate and final products

7.4

Alternatives

7.4.1

Markush grouping

7.5

Individual features in a claim

7.6

Lack of unity "a priori" or "a posteriori"

7.7

Examiner's approach

7.8

Dependent claims

7.9

Lack of unity during search

7.10

Lack of unity during substantive examination

7.10.1

Amended claims

7.11

Euro-PCT applications

7.11.1

International applications without supplementary search

7.11.2

International applications with supplementary search

7.11.3

International preliminary examination report (IPER)

7.11.4

Restricted IPER

8.

Different texts of the patent application in respect of different Contracting

States (see also D-VII, 4)

8.1

Different text in respect of the state of the art according to Art. 54(3)

8.2

Different text where a partial transfer of right has taken place pursuant to

Art. 61

8.3

Different text where a reservation has been entered in accordance with

Art. 167(2)(a) EPC 1973

8.4

Different text where national rights of earlier date exist

8.5

Calculation of claims fees

Chapter IV - Patentability

1.

General

1.1

Basic requirements

1.2

Further requirements

1.3

Technical progress, advantageous effects

2.

Inventions

2.1

Exclusions

2.2

Examination practice

2.3

List of exclusions

2.3.1

Discoveries

2.3.2

Scientific theories

2.3.3

Mathematical methods

2.3.4

Aesthetic creations

2.3.5

Schemes, rules and methods for performing mental acts, playing games

or doing business

2.3.6

Programs for computers

2.3.7

Presentations of information

3.

Biotechnological inventions

3.1

General remarks and definitions

3.2

Patentable biotechnological inventions

4.

Exceptions to patentability

4.1

Matter contrary to "ordre public" or morality

4.2

Prohibited matter

4.3

Offensive and non-offensive use

4.4

Economic effects

4.5

Biotechnological inventions

4.6

Plant and animal varieties, processes for the production of plants or animals

4.6.1

Plant varieties

4.6.2

Processes for the production of plants or animals

4.7

Microbiological processes

4.7.1

General remarks

4.7.2

Repeatability of results of microbiological processes

4.8

Surgery, therapy and diagnostic methods

4.8.1

Limitations of exception under Art. 53(c)

5.

Industrial application

5.1

General remarks

5.2

Method of testing

5.3

Industrial application vs. exclusion under Art. 52(2)

5.4

Sequences and partial sequences of genes

6.

State of the art

6.1

General remarks and definition

6.2

Internet disclosures

6.2.1

Establishing the publication date

6.2.2

Standard of proof

6.2.3

Burden of proof

6.2.3.1

Technical journals

6.2.3.2

Other "print equivalent" publications

6.2.3.3

Non-traditional publications

6.2.4

Disclosures which have no date or an unreliable date

6.2.5

Problematic cases

6.2.6

Technical details and general remarks

6.3

Enabling disclosures

6.4

Date of filing or priority date as effective date

6.5

Documents in a non-official language

7.

Conflict with other European applications

7.1

State of the art pursuant to Art. 54(3)

7.1.1

Requirements

7.2

Euro-PCT applications

7.3

Commonly designated States

7.4

Double patenting

8.

Conflict with national rights of earlier date

9.

Novelty

9.1

State of the art pursuant to Art. 54(2)

9.2

Implicit features or well-known equivalents

9.3

Relevant date of a prior document

9.4

Enabling disclosure of a prior document

9.5

Generic disclosure and specific examples

9.6

Implicit disclosure and parameters

9.7

Examination of novelty

9.8

Selection inventions

10.

Non-prejudicial disclosures

10.1

General

10.2

Time limit

10.3

Evident abuse

10.4

International exhibition

11.

Inventive step

11.1

General

11.2

State of the art; date of filing

11.3

Person skilled in the art

11.4

Obviousness

11.5

Problem-and-solution approach

11.5.1

Determination of the closest prior art

11.5.2

Formulation of the objective technical problem

11.5.3

Could-would approach

11.6

Combining pieces of prior art

11.7

Combination vs. juxtaposition or aggregation

11.8

"Ex post facto" analysis

11.9

Origin of an invention

11.10

Secondary indicators

11.10.1

Predictable disadvantage; non-functional modification; arbitrary choice

11.10.2

Unexpected technical effect; bonus effect

11.10.3

Long-felt need; commercial success

11.11

Arguments and evidence submitted by the applicant

11.12

Selection inventions

11.13

Dependent claims; claims in different categories

11.14

Examples

CHAPTER IV - Annex Examples relating to the requirement of inventive step - indicators (see IV, 11.13)

1.

Application of known measures?

1.1

Inventions involving the application of known measures in an obvious way

and in respect of which an inventive step is therefore to be ruled out:

1.2

Inventions involving the application of known measures in a non-obvious way

and in respect of which an inventive step is therefore to be recognised:

2.

Obvious combination of features?

2.1

Obvious and consequently non-inventive combination of features:

2.2

Not obvious and consequently inventive combination of features:

3.

Obvious selection?

3.1

Obvious and consequently non-inventive selection among a number of

known possibilities:

3.2

Not obvious and consequently inventive selection among a number of

known possibilities:

4.

Overcoming a technical prejudice?

Chapter V - Priority

1.

The right to priority

1.1

Filing date as effective date

1.2

Priority date as effective date

1.3

Validly claiming priority

1.4

First application

1.4.1

Subsequent application considered as first application

1.5

Multiple priorities

2.

Determining priority dates

2.1

Examining the validity of a right to priority

2.2

The same invention

2.3

Priority claim not valid

2.4

Some examples of determining priority dates

2.4.1

Intermediate publication of the contents of the priority application

2.4.2

Intermediate publication of another European application

2.4.3

Multiple priorities claimed for different inventions in the application with an

intermediate publication of one of the inventions

2.4.4

A situation in which it has to be checked whether the application from which

priority is actually claimed is the "first application" in the sense of Art. 87(1)

3.

Claiming priority

3.1

General remarks

3.2

Declaration of priority

3.3

Certified copy of the previous application (priority document)

3.4

Translation of the previous application

3.5

Abandonment of priority claim

3.6

Re-establishment of rights in respect of the priority period

Chapter VI - Examination procedure

1.

The start of examination

1.1

Request for examination

1.1.1

Confirmation of early request for examination

1.1.2

Acceleration of examination procedure

1.1.3

Euro-PCT applications

1.1.4

Invention to be examined

1.2

Allocation of the application

1.3

Examining Division

1.4

Designation fee(s), extension fees

2.

Examination procedure in general

2.1

Purpose of examination

2.2

Topping-up search

2.3

Communication with the applicant

2.3.1

Requesting information from the applicant

2.4

Re-examination, refusal, appeal, interlocutory revision

2.5

Communication under Rule 71(3)

2.6

Grant of a patent

2.7

Application deemed withdrawn

2.8

Amendments

2.9

Examination stages

3.

The first stage of examination

3.1

Missing drawings or parts of the description filed under Rule 56 or claims filed

after accordance of a date of filing

3.2

Response to the search opinion, PACE

3.3

Amendments by the applicant following the EESR and made of his own volition

3.4

Unity of invention

3.5

First communication

3.5.1

Euro-PCT applications and reply to the WO-ISA/IPER

3.6

Reasoned objections

3.7

Invitation to file comments and amendments

4.

Examination of replies

4.1

General procedure

4.2

Extent of examination of replies

4.3

Further action upon examination of replies

4.4

Later stages of examination

4.5

Decision according to the state of the file

4.6

Examination of amendments

4.7

Admissibility of amendments made by the applicant

4.8

Examples of inadmissible amendments

4.9

Amendments filed in reply to a communication under Rule 71(3)

4.10

Further requests for amendment after approval

4.11

Resumption of the examination proceedings

5.

Amendments

5.1

Making amendments

5.2

Allowability of amendments

5.3

Additional subject-matter

5.3.1

Basic principle; priority document

5.3.2

Examples

5.3.3

Clarification of a technical effect

5.3.4

Introduction of further examples and new effects

5.3.5

Evidence

5.3.6

Supplementary technical information

5.3.7

Revision of stated technical problem

5.3.8

Reference document

5.3.9

Alteration, excision or addition of text

5.3.10

Replacement or removal of a feature from a claim

5.3.11

Disclaimers not disclosed in the application as filed

5.4

Correction of errors

5.5

Plural forms of amendment

5.6

Rule 62a and/or Rule 63 cases

5.7

Indication of amendments and their basis under Rule 137(4)

5.7.1

Rule 137(4) communication and response thereto

5.7.2

Amendments withdrawn or superseded in the Rule 137(4) period

5.7.3

Rule 137(4) and oral proceedings

5.7.4

Transitional provisions relating to Rule 137(4)

6.

Discussion with the applicant

6.1

General remark

6.2

Telephone conversation, personal interview

7.

Work within the Examining Division

7.1

General remarks

7.2

Recommendation to grant

7.3

Recommendation to refuse

7.4

Tasks of the other members of the Examining Division

7.5

Further communication with the applicant

7.6

Refusal

7.7

Decision

7.8

Enlargement of the Examining Division; consultation of a legally qualified

examiner

8.

Search-related issues in examination

8.1

Search for conflicting European applications

8.2

Additional searches during examination

8.3

Search at the examination stage

8.4

Citing documents not mentioned in the search report

9.

Special applications

9.1

Divisional applications (see also A-IV, 1)

9.1.1

General remarks

9.1.2

Voluntary and mandatory division

9.1.3

Time limit; abandonment of subject-matter

9.1.4

Examination of a divisional application

9.1.5

Description and drawings

9.1.6

Claims

9.2

Applications resulting from a decision under Art. 61

9.2.1

General remarks

9.2.2

Original application no longer pending

9.2.3

Partial entitlement

9.2.4

Entitlement for certain designated States only

9.3

Applications where a reservation has been entered in accordance

with Art. 167(2)(a) EPC 1973

9.4

International applications (Euro-PCT applications)

10.

Time limits for response to communications from the examiner

10.1

General considerations

10.2

Special circumstances

11.

Examination of observations by third parties