Guidelines for Examination in the EPO

Guidelines for Examination - Table of Contents

PART C GUIDELINES FOR SUBSTANTIVE EXAMINATION

CHAPTER II CONTENT OF A EUROPEAN PATENT APPLICATION (OTHER THAN CLAIMS)

4. Description

4.19 Reference documents

4.19	Reference documents

References in European patent applications to other documents may relate either to the background art or to part of the disclosure of the invention.

Where the reference document relates to the background art, it may be in the application as originally filed or introduced at a later date (see II, 4.3 and 4.4).

Where the reference document relates directly to the disclosure of the invention (e.g. details of one of the components of a claimed apparatus), then the examiner should first consider whether knowing what is in the reference document is in fact essential for carrying out the invention as meant by Art. 83:

Art. 65

If not essential, the usual expression "which is hereby incorporated by reference", or any expression of the same kind, should be deleted from the description.

If matter in the document referred to is essential to satisfy the requirements of Art. 83, the examiner should require the deletion of the above-mentioned expression and that, instead, the matter is expressly incorporated into the description, because the patent specification should, regarding the essential features of the invention, be self-contained, i.e. capable of being understood without reference to any other document. One should also bear in mind that reference documents are not part of the text to be translated pursuant to Art. 65.

Such incorporation of essential matter or essential features is, however, subject to the following restrictions:

(i)	it must not contravene Art. 123(2) (see also T 689/90, OJ 10/93, 616) in the sense that the description of the invention as originally filed leaves a skilled reader in no doubt that:

(a)

protection is or may be sought for such features;

(b)

such features contribute to solving the technical problem underlying the invention;

(c)

such features at least implicitly clearly belong to the description of the invention contained in the application (Art. 78(1)(b)) and thus to the content of the application as filed (Art. 123(2)); and

(d)

such features are precisely defined and identifiable within the total technical information in the reference document.

(ii)	if the reference document was not available to the public on the date of filing of the application, it can only be considered if (see T 737/90, not published in OJ):

(a)

a copy of the document was available to the EPO on or before the date of filing of the application; and

(b)

the document was made available to the public no later than on the date of publication of the application under Art. 93 (e.g. by being present in the application dossier and therefore made public under Art. 128(4)).

It may be that the Search Division has requested the applicant to furnish the document referred to, in order to be able to carry out a meaningful search (see B-IV, 1.3).

If, for the disclosure of the invention, a document is referred to in an application as originally filed, the relevant content of the reference document is to be considered as forming part of the content of the application for the purpose of citing the application under Art. 54(3) against later applications. For reference documents not available to the public before the filing date of the application this applies only if conditions II, 4.19(ii)(a) and II, 4.19(ii)(b) above are fulfilled.

Because of this effect under Art. 54(3), it is very important that, where a reference is directed only to a particular part of the document referred to, that part should be clearly identified in the reference.

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Guidelines for Examination in the EPO