Dr. Christian Heubeck

Revision of the EPO Guidelines for Examination – Key Aspects for Applicants

16.01.2018

According to an announcement of the European Patent Office (EPO) dated 4 August 2017 (OJ EPO 2017, A 75) the Guidelines for Examination (“the Guidelines”) have been amended.

In general, the Guidelines give instructions on the practice and procedure to be followed in the various aspects of the examination and prosecution of European applications and patents in accordance with the European Patent Convention (EPC). Basically addressed to the EPO Examiners, they are, of course, a helpful tool for all applicants and patent practitioners.

The revised Guidelines for Examination having come into effect 1 November 2017 are available online in the EPO’s three official languages in both pdf and html format. As a html publication, there is also a version available in which the individual amendments carried out are marked-up. The print version has been discontinued.

Amendments and clarifications in the 2017 revision have been made in all eight parts of the Guidelines in order to bring the text into line with legal and procedural developments as well as actual standing practice. The major change is the expansion of Part A, which now includes a comprehensive chapter on fees. Further, a number of amendments has been made in the sections relating to computer implemented inventions.

In the following, we would like to discuss three specific aspects, which we consider as highly relevant for applicants.

Summons to Oral Proceedings may replace first Examination Report (Section C-III, 5)

From all changes done, the clearly strengthened power of Examining Divisions to issue summons to attend oral proceedings has to be deemed the most remarkable amendment.

Under former practice of the EPO, the first substantive communication from the Examining Division had to be a communication under Rule 71(3) EPC indicating that the application is in order for allowance, or an office action under Article 94(3) EPC setting out any objections raised. Thus, the applicant had been given the opportunity to respond to at least one office action from the Examining Division before summons to oral proceedings pursuant to Rule 115(1) EPC could be issued.

However, under the amended Guidelines, the Examining Division has the power to issue summons for oral proceedings as a first action in examination if despite the applicant’s reply to the search opinion, no possibility of a grant can be envisaged. In the new Guidelines it is stated that this should happen only in exceptional situations, in particular

  • if the content of the application on file is not substantially different to that of the claims which served as a basis for the search, and
  • one or more of the objections raised in the search opinion which are crucial to the outcome of the examination proceedings still apply.

The summons issued as the first action in examination must not include any new objections or new documents. Moreover, the Examining Division must give at least six months’ notice from the date scheduled for the oral proceedings. In addition, it must include a reason why the Division decided to directly summon to oral proceedings as the first action in examination. In accordance with former practice, the applicant may avail himself of the possibility to submit any arguments and amendments by expiry of said deadline.

We assume that this amendment is a further measure of the EPO in order to streamline the examination proceedings for applications. We therefore expect that at least some Examiners will readily make use of this new possibility.

In order to avoid oral proceedings at such an early stage of the proceedings, it seems to be advisable in the future to file a detailed response to the search opinion which at least partially addresses the specific objections raised therein, including the filing of claim amendments. The previous option to file an ambitious response which only traverses the raised specific objections under the assumption that at least one communication pursuant to Article 94(3) EPC will be issued should be avoided.

Further, in our opinion, any response to the search opinion should now include a request for issuing a communication under Article 94(3) EPC and auxiliary for summons for oral proceedings pursuant to Article 116(1) EPC.


Refund of Examination Fees (Section A-VI, 2.5)

The Guidelines have been amended to reflect pending Article 11 of the Rules relating to fees being into force since 1 July 2016.

Accordingly that the examination fees are refunded in full if the European patent application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun, or at a rate of 50% if the European patent application is withdrawn after substantial examination has begun, and if before the expiry of the time limit for replying to the first office action under Article 94(3) EPC issued by the Examining Division, or if no such invitation has been issued before the date of the communication under Rule 71(3) EPC.

Moreover, the date of start of examination is indicated by means of EPO form 2095, thus giving applicants the opportunity to withdraw an application before that date, if desired.


Lack of Unity of Subject-matter to be searched (Section B-I, 2 and B-VII, 1.2)

Previously, if the search division found a lack of unity, it drew up a partial search report with respect to the invention first mentioned in the claims. Applicant was given an opportunity to pay additional search fees covering inventions other than the first invention. According to the previous practice, it was at the Examiner’s discretion as to whether reasons for the non-unity objection were given. Further, it was also at the Examiner’s discretion as to whether an opinion as to the patentability of the searched invention was provided. As a consequence, the partial search reports of different applications often strongly varied regarding their information contents.

The new Guidelines clarify that reasons for the non-unity findings need to be provided. Moreover, the partial search report must comprise a provisional opinion on the patentability of the first identified and searched invention.

However, this opinion is for guidance for the applicant only. A response, however, will even not be taken into account before the extended European search report is drawn up.  

This amendment of the Guidelines which is supposed to standardize the examination proceedings before the EPO is surely to be appreciated. Being familiar with the raised objections the Applicant will be able to make substantiated decisions with regard to the question for which inventions further search fees should be paid. In particular, this can be a helpful tool in cases in which due to the provisional opinion on the searched first invention difficult examination proceedings must be expected. It may be advantageous to pay one or more search fees for unsearched inventions identified by the Examiner, which may then be brought forward to grant within the scope of the application. Thereby, the need of filing of divisional applications might be avoided.

We, of course, are pleased to assist you in any questions you may have with regard to the above discussed amendments or any other amendments carried out in the newly revised Guidelines for Examination.

 

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