Guidelines for Examination in the EPO

Introduction

1.

Communications

1.1

General remarks

1.2

Number of communications

1.3

Form of decisions, communications and notices

2.

Notification

2.1

General remarks

2.2

Method of notification

2.3

Notification by post

2.4

Notification to representatives

2.5

Irregularities in the notification

1.

Amendment by submitting missing documents or by filing replacement pages

2.

Amendments using copies

3.

Amendments made by the EPO at the request of a party and amendments made by a party at the EPO

1.

General

2.

Oral proceedings at the request of a party

3.

Request for further oral proceedings

4.

Oral proceedings at the instance of the EPO

5.

Preparation of oral proceedings

6.

Summons to oral proceedings

7.

Requests for the postponement of oral proceedings

8.

Conduct of oral proceedings

8.1

Admission of the public to proceedings

8.2

Conduct of oral proceedings

8.3

Opening of oral proceedings: non-appearance of a party

8.4

Opening of the substantive part of the proceedings

8.5

Submissions by the parties

8.6

Facts, evidence or amendments introduced at a late stage

8.7

Discussion of the facts and of the legal position

8.8

Right of the other members of the Examining or Opposition Division to put questions

8.9

Closure of oral proceedings

9.

Delivery of the decision

10.

Minutes of oral proceedings

10.1

Formal requirements

10.2

Subject-matter of minutes

1.

Taking of evidence by the departments of the EPO

1.1

General remarks

1.2

Means of evidence

1.3

Taking of evidence in substantive examination and opposition proceedings

1.4

Order to take evidence

1.5

Summoning of parties, witnesses and experts

1.6

Hearing of parties, witnesses and experts

1.6.1

General remarks

1.6.2

Witnesses and experts not summoned

1.6.3

Guidance to persons heard

1.6.4

Separate hearings

1.6.5

Examination as to personal particulars

1.6.6

Examination as to res gestae

1.6.7

Entitlement of parties to put questions at hearings

1.7

Minutes of taking of evidence

1.8

Commissioning of experts

1.8.1

Decision on the form of the opinion

1.8.2

Objection to an expert

1.8.3

Terms of reference of the expert

1.9

Costs arising from oral proceedings or taking of evidence

1.10

Entitlements of witnesses and experts

1.10.1

Expenses for travel and subsistence

1.10.2

Loss of earnings, fees

1.10.3

Details of the entitlements of witnesses and experts

2.

Conservation of evidence

2.1

Requirements

2.2

Request for the conservation of evidence

2.3

Competence

2.4

Decision on the request and the taking of evidence

3.

Taking of evidence by courts or authorities of the Contracting States

3.1

Legal co-operation

3.2

Means of giving or taking evidence

3.2.1

Taking of evidence on oath or in equally binding form

3.2.2

Cases where evidence is taken by a competent court

3.3

Letters rogatory

3.4

Procedures before the competent authority

3.5

Costs of taking evidence

3.6

Taking of evidence by a person appointed by the competent authority

4.

Evaluation of evidence

4.1

General remarks

4.2

Evaluation of the testimony of a witness

4.3

Evaluation of the testimony of parties

4.4

Evaluation of an expert opinion

4.5

Evaluation of an inspection

1.

Use of an official language

2.

Language of a Contracting State or other language

3.

Exceptions from sections 1 and 2

4.

Language used in the taking of evidence

5.

Language used by employees of the EPO

6.

Language used in the minutes

1.

Examination by the EPO of its own motion

1.1

General remarks

1.2

Limits on the obligation to undertake examination

2.

Facts, evidence or grounds for opposition not submitted in due time or arguments presented at a late stage

3.

Observations by third parties and examination thereof

1.

Interruption

1.1

Cases in which the proceedings may be interrupted

1.2

Resumption of proceedings

1.2.1

Resumption of time limits

1.3.

Department responsible

2.

Stay of proceedings when entitlement proceedings are pending

3.

Stay of proceedings when a referral to the Enlarged Board of Appeal is pending

1.

Time limits and loss of rights resulting from failure to respond within a time limit

1.1

Determination of time limits

1.2

Duration of the time limits to be determined by the EPO on the basis of EPC provisions

1.3

Time limits which may be freely determined

1.4

Calculation of time limits

1.5

Effect of change in priority date

1.6

Extension of a time limit

1.7

Late receipt of documents

1.8

Failure to respond within a time limit

1.9

Loss of rights

1.9.1

Cases of loss of rights

1.9.2

Noting and communication of loss of rights

1.9.3

Decision on loss of rights

2.

Further processing and re-establishment of rights

2.1

Request for further processing of the European patent application

2.2

Re-establishment of rights

2.2.1

General remarks

2.2.2

Extension of re-establishment of rights to opponents

2.2.3

Relevant time limits

2.2.4

Time limits not covered

2.2.5

Request for re-establishment of rights

2.2.6

Special considerations in proceedings with more than one party

2.2.7

Decision on re-establishment of rights

3.

Accelerated prosecution of European patent applications

4.

Accelerated processing of oppositions

5.

Accelerated processing before the Boards of Appeal

6.

Renunciation of rights

6.1

Withdrawal of application or designation

6.2

Withdrawal of priority claim

6.3

Statement of withdrawal

6.4

Surrender of patent

1.

General remarks

2.

The EPO as a receiving Office

3.

The EPO as an International Searching Authority (ISA)

3.1

General remarks

3.2

Limitations

4.

The EPO as an International Preliminary Examining Authority (IPEA)

4.1

General remarks

4.2

The international preliminary examination report (IPER)

4a.

Response to the WO-ISA, IPER or search opinion

5.

The EPO as a designated Office

5.1

General remarks

5.2

Communication to the EPO as a designated Office

5.3

Publication of the translation of the international application

5.4

Supplementary European search report

5.5

Delaying of the procedure before the EPO

5.6

Review by the EPO as a designated Office

5.7

Examination and processing

5.8

Inspection of files

6.

The EPO as an elected Office

6.1

General remarks

6.2

Opening of the European phase and of substantive examination

6.3

Substantive examination of a Euro-PCT application accompanied by an international preliminary examination report (IPER)

6.3.1

Comparative test results

6.3.2

Documents forming the basis for substantive examination

6.3.3

Consideration of the contents of the international preliminary examination report during substantive examination

6.4

Inspection of files

1.

Basis of decisions

1.1

General remarks

1.2

Examples

2.

Consideration of time limits

3.

Authoritative text of documents

4.

Written form of decisions

4.1

General remarks

4.2

Order

4.3

Facts and submissions

4.4

Decision on the file as it stands

5.

Reasoning of decisions

6.

Decisions which do not terminate proceedings - interlocutory decisions

7.

Binding nature of decisions on appeals relating to the same case

8.

Information as to means of redress

9.

Notification

10.

Correction of errors in decisions

1.

Suspensive effect

2.

Appeals after surrender or lapse of the patent

3.

Appeals against the apportionment of costs

4.

Appeals against the decision of the Opposition Division on the fixing of costs

5.

Persons entitled to appeal and to be parties to appeal proceedings

6.

Time limit and form of appeal

7.

Interlocutory revision

7.1

General remarks

7.2

Remittal to the Board of Appeal

7.3

Reimbursement of appeal fees

8.

Rules of Procedure for the departments of second instance

1.

General

2.

Scope of the technical opinion

3.

Composition and duties of the Examining Division

3.1

Composition

3.2

Duties

4.

Language to be used

5.

Procedure

5.1

Formalities check

5.2

Preliminary examination

5.3

Withdrawal of the request

5.4

Establishment and issue of the technical opinion

5.5

File inspection

5.6

Appearance before the national court

1.

Transfer of the European patent application

2.

Transfer of the European patent

3.

Licences and other rights

4.

Change of name