2.2.1 Invitation to correct deficiencies and to propose amendments (Rule 71(1) EPC)

The applicant's response to the search opinion required by R. 70a EPC (or filed voluntarily in response to search opinions not requiring a response) will be taken into account by the examining division when drafting the first communication (EPC Guidelines C‑II, 3.1 – April 2025 version).

According to R. 71(1) EPC (R. 51(2) EPC 1973) in any communication under Art. 94(3) EPC the examining division shall, where appropriate, invite the applicant to correct any deficiencies noted and to amend the description, claims and drawings within a period to be specified.

Article 94(3) EPC states that if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC, the examining division shall invite the applicant, as often as necessary, to file their observations and, subject to Art. 123(1) EPC to amend the application.

In T 301/10 the board stated that according to the established case law developed in relation to Art. 96(2) EPC 1973 and also applicable to Art. 94(3) EPC, the expression "as often as necessary" in this article indicates that the examining division has discretion which has to be exercised objectively in the light of the circumstances of the case (see T 162/82; OJ 1987, 533; T 300/89, OJ 1991, 480; T 726/04). See also T 1734/10.

Neither Art. 113(1) EPC 1973 nor Art. 96(2) EPC 1973 (Art. 94(3) EPC) require that the applicant be given repeated opportunities to comment on the examining division's submissions if the main objections to the grant of a European patent remain the same (T 84/82, OJ 1983, 451; T 161/82, OJ 1984, 551; T 162/82, T 243/89, T 958/99). A further invitation to present comments following a substantiated communication in which deficiencies were recorded is only appropriate if it would appear likely that, in the light of the applicant's reply, the examination proceedings would terminate in the granting of a patent (see T 84/82, T 161/82, T 162/82, T 243/89, T 300/89, T 793/92, T 516/93, T 201/98).

In T 17/22 the examining division had issued a communication headed "Invitation pursuant to R. 137(4) EPC and Art. 94(3) EPC". In the annex to this communication the examining division had raised an objection under Art. 123(2) EPC, and had added: "nota bene: The amendment appears also not suitable to remedy the deficiencies." The decision to refuse the application was based on Art. 123(2) EPC as well as on lack of novelty, inventive step and clarity. The board held that said communication could not be considered a substantive communication under Art. 94(3) EPC nor a communication which would obviate the need for such a communication. The communication under R. 137(4) EPC, with a period for reply of one month, was of a formal nature. The applicant was merely asked to identify the amendments and to indicate the basis for them in the application as filed, independently of whether these amendments complied with Art. 123(2) EPC. The objection raised by the examining division under Art. 123(2) EPC in the annex to the communication under R. 137(4) EPC, and the added nota bene that the amendment appeared also not suitable to remedy the deficiencies did not turn this communication into a substantive communication under Art. 94(3) EPC and R. 71(1) EPC, especially as the period for a reply was still only one month. The mere reference to Art. 94(3) EPC in the heading of the communication did not affect this conclusion. The omission of a communication under Art. 94(3) EPC was, in the board's view, a substantial procedural violation, as it deprived the applicant of the opportunity to react to such a communication. See also chapter III.B.2.5.3 regarding the violation of the right to be heard.