Press
Contact

Part E

Guidelines on General Procedural Matters

 

Contents
Chapter I – Introduction
Chapter II – Communications and notifications
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 postal services
2.4
Electronic notification
2.5
Notification to representatives
2.6
Irregularities in the notification
Chapter III – Oral proceedings
1.
General
1.1
Introduction
1.2
Format of oral proceedings
1.3
Request for oral proceedings to be held on EPO premises
1.4
Request to hold on-site oral proceedings at a particular site
2.
Oral proceedings at the request of a party
2.1
Request for oral proceedings by an opponent whose opposition is to be rejected as inadmissible or is deemed not to have been filed
2.2
Request for oral proceedings in examination to be held on EPO premises
3.
Request for further oral proceedings
4.
Oral proceedings at the instance of the EPO
5.
Preparation of oral proceedings
5.1
When can summons to oral proceedings be issued in substantive examination?
6.
Summons to oral proceedings
7.
Change of date, cancellation or maintenance of oral proceedings
7.1
Changing the date of oral proceedings
7.1.1
Requests to change the date of oral proceedings
7.1.2
Change of date of oral proceedings at the instigation of the division
7.1.3
Change of date of oral proceedings – defined notice period
7.2
Cancellation or maintenance of oral proceedings
7.2.1
General
7.2.2
Withdrawal of the request for oral proceedings
8.
Conduct of oral proceedings
8.1
Admission of the public to proceedings
8.2
Conduct of oral proceedings
8.2.1
Oral proceedings on the EPO premises – use of laptops or other electronic devices during either ex parte or inter partes oral proceedings
8.2.2
Oral proceedings by videoconference before examining divisions
8.2.1
8.2.2.1 Participation of parties and their representatives from different locationsRemote connection of applicants and their representatives
8.2.2
8.2.2.2 Participation of members of the division from different locationsRemote connection of members of the examining division
8.2.3
Technical problems
8.2.4
Recording
8.3
Opening of oral proceedings; non-appearance of a party
8.3.1
Checking the identity and authorisations of participants at oral proceedings
8.3.2
Opening the oral proceedings
8.3.3
Late arrival, non-appearance and failure to connect
8.3.3.1
General
8.3.3.2
Procedure in opposition proceedings
8.3.3.3
Procedure in examination proceedings
8.4
Opening of the substantive part of the proceedings
8.5
Submissions by the parties
8.5.1
Use of computer-generated slideshows in oral proceedings
8.5.1.1
Opposition proceedings (inter partes)
8.5.1.2
Examination proceedings (ex parte)
8.5.2
Written submissions during oral proceedings by videoconference
8.6
Facts, evidence or amendments introduced at a late stage
8.7
Handwritten amendments in oral proceedings
8.7.1
General principles
8.7.2
Procedure in examination proceedings
8.7.3
Procedure in opposition proceedings
8.8
Use of Rule 137(4) for amendments filed during oral proceedings in examination
8.9
Discussion of the facts and of the legal position
8.10
Right of the other members of the division to put questions
8.11
Closure of oral proceedings
8.11.1
Requesting postponement during oral proceedings
8.11.2
Adjournment of oral proceedings due to lack of time
9.
Delivery of the decision
10.
Minutes of oral proceedings
10.1
Formal requirements
10.2
Language
10.3
Subject-matter of minutes
10.4
Request for correction of minutes
11.
Oral proceedings held by videoconference – technical aspects
11.1
Equipment and technology
11.1.1
Videoconference rooms at the EPO
11.1.2
Document camera
11.2
Preparations for the videoconference
11.3
Technical problems
11.4
Recording
Chapter IV – Taking and conservation of evidence
1.
Taking of evidence by the departments of the EPO
1.1
General remarks
1.2
Means of evidence
1.3
Taking of evidence
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
1.6.8
Hearing of a witness no longer necessary
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
1.11
Models
1.11.1
When may models be submitted?
1.11.2
Procedure
1.11.3
Keeping the model
1.12
Video recordings
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
3.2.2
Evidence 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 an appointed person
4.
Evaluation of evidence
4.1
General remarks
4.2
Types of evidence
4.3
Examination of evidence
4.4
Asking for evidence
4.5
Evaluation of the testimony of a witness
4.6
Evaluation of the testimony of parties
4.7
Evaluation of an expert opinion
4.8
Evaluation of an inspection
Chapter V – Derogations from the language of the proceedings in oral proceedings
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
Chapter VI – Examination by the EPO of its own motion; facts, evidence or grounds not submitted in due time; observations by third parties
1.
Examination by the EPO of its own motion
1.1
General remarks
1.2
Limits on the obligation to undertake examination
2.
Late-filed submissions
2.1
General principles in opposition proceedings
2.2
Submissions filed in preparation for or during oral proceedings
2.2.1
New facts and evidence
2.2.2
Amendments filed in preparation for or during oral proceedings
2.2.3
Principles relating to the exercise of discretion
2.2.4
Right to be heard
2.2.5
Costs
3.
Observations by third parties
4.
External complaints
Chapter VII – Interruption, stay and consolidation of the proceedings
1.
Interruption
1.1
Cases in which the proceedings may be interrupted
1.2
Responsible department
1.3
Date of interruption
1.4
Resumption of proceedings
1.5
Resumption of time limits
2.
Stay of proceedings under Rule 14 due to pending national entitlement proceedings
3.
Stay of proceedings when a referral to the Enlarged Board of Appeal is pending
4.
Consolidation of proceedings
Chapter VIII – Time limits, loss of rights, further and accelerated processing and re-establishment of rights
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 periods to be specified 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
1.6.1
Extension of time limits set by the EPO under Rule 132
1.6.2
Extension of periods under Rule 134
1.6.2.1
Extension of periods under Rule 134(1)
1.6.2.2
Extension of periods under Rule 134(2) and Rule 134(5)
1.6.2.3
Scope of application of Rule 134
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
3.
Re-establishment of rights
3.1
Admissibility of the request
3.1.1
Time limits covered
3.1.2
Entitlement to file the request
3.1.3
Form of the request and applicable time limit
3.1.4
Substantiation of the request
3.2
Merit of the request
3.3
Decision on re-establishment of rights
4.
Accelerated prosecution of European patent applications
4.1
Accelerated search
4.2
Accelerated examination
4.3
Patent Prosecution Highway (PPH)
5.
Accelerated processing of oppositions
6.
Accelerated processing before the boards of appeal
7.
Enquiries
8.
Renunciation of rights
8.1
Withdrawal of application or designation
8.2
Withdrawal of priority claim
8.3
Statement of withdrawal
8.4
Surrender of patent
Chapter IX – Applications under the Patent Cooperation Treaty (PCT)
1.
General remarks
2.
EPO as designated or elected Office
2.1
Entry into the European phase
2.1.1
Requirements for entry into the European phase
2.1.2
Initial processing and formal examination; copy of the international application
2.1.3
Translation of the international application
2.1.4
Filing fee, designation fee, request for examination and search fee
2.2
Instructions in Chapter A‑II ("Filing of applications and examination on filing")
2.3
Instructions in Chapter A‑III ("Examination of formal requirements")
2.3.1
Representation, address for correspondence
2.3.2
Physical requirements
2.3.3
Request for grant
2.3.4
Designation of inventor
2.3.5
Claim to priority
2.3.5.1
Priority document
2.3.5.2
Information on prior art
2.3.5.3
Restoration of priority
2.3.6
Title of the invention
2.3.7
Prohibited matter
2.3.8
Claims fee
2.3.9
Drawings
2.3.10
Abstract
2.3.11
Designation fee
2.3.12
Renewal fees
2.4
Instructions in Chapter A‑IV ("Special provisions")
2.4.1
Divisional applications
2.4.2
Sequence listings
2.4.3
Certificate of exhibition
2.4.4
Biological material
2.5
Instructions in Chapter A‑VI ("Publication of application; request for examination and transmission of the dossier to examining division")
2.5.1
Publication of the international application
2.5.2
Request for examination
2.5.3
Supplementary European search
2.6
Reduction and refunds of fees in respect of international (PCT) applications
2.7
Communication to the EPO as a designated Office
2.8
Early processing
2.9
Review by the EPO as a designated/elected Office and rectification of errors made by the receiving Office or the International Bureau
2.9.1
Review by the EPO under Art. 25 PCT
2.9.2
Review by the EPO under Art. 24 PCT and excuse of delays under Art. 48(2) PCT
2.9.3
Rectification of errors made by the receiving Office or the International Bureau
2.9.4
Determination of filing date in the case of erroneously filed elements or parts of the international application
2.10
Inspection of files
3.
The communication according to Rule 161
3.1
Applications for which a supplementary European search report is prepared
3.2
Applications for which no supplementary European search report is prepared
3.3
Exceptions where a reply to the Rule 161(1) invitation is not required
3.3.1
Earlier filed amendments or comments
3.3.2
Positive WO‑ISA, SISR or IPER
3.3.3
Rule 161 communication issued before 1 April 2010
3.3.4
Voluntary reply to Rule 161(1) communication
3.4
Rule 137(4) applies
4.
Examination procedure
4.1
At least one communication in examination
4.2
No examination of multiple inventions in EP phase
4.3
Substantive examination of a Euro-PCT application accompanied by an IPER
4.3.1
Comparative test results
4.3.2
Basis for substantive examination
4.3.3
Consideration of the contents of the IPER
Chapter X – Decisions
1.
Basic principles of decisions
1.1
General remarks
1.2
Consideration of time limits
1.3
Form and content
1.3.1
Order
1.3.2
Facts and submissions
1.3.3
Reasoning
2.
Decisions taken by the examining or opposition divisions
2.1
ExamplesRight to be heard
2.2
Authoritative text of documents
2.3
Requirements as to form
2.4
Facts and submissions
2.5
Decision on the file as it stands
2.6
Reasoning of decisions
2.7
Content
2.8
Analysing the parties' arguments
2.9
Main and auxiliary requests
2.10
Late-filed submissions
2.11
Refusal to admit amendments under Rule 137(3)
3.
Decisions which do not terminate proceedings – interlocutory decisions
4.
Binding nature of decisions on appeals
5.
Information as to means of redress
6.
Notification
Chapter XI – Impartiality of the examining or opposition division
Chapter XII – Appeals
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
7.4
Examples
7.4.1
No amended claims filed with the appeal
7.4.2
Amended main/single request filed with the appeal
7.4.3
Main and auxiliary requests filed with the appeal
7.4.4
Response to communication pursuant to Rule 58 filed with the appeal
8.
Rules of Procedure of the Boards of Appeal
9.
Remittal to the division after appeal
9.1
Orders on remittal
9.2
Consequences for the division
Chapter XIII – Request from a national court for a technical opinion concerning a European patent
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
Chapter XIV – Registration of changes of name, transfers, licences and other rights
1.
General
2.
Responsible department
3.
Transfer of the European patent application
4.
Transfer of the European patent
5.
Changes of name
6.
Licences and other rights
6.1
Registration
6.2
Cancellation of the registration

 

 

Quick Navigation