IP Cases & Articles

Updated EPO Guidelines for Examination

The European Patent Office (EPO) has issued a new version of its Guidelines for Examination. These guidelines, which came into force on 01 November 2017, provide guidance for examiners and applicants on European patent law and procedure.

EPO Guidelines for Examination

You can view the full Guidelines for Examination on the EPO website.

Guidelines for Examination

Many of the changes form part of the EPO’s Early Certainty initiatives to speed up prosecution and opposition proceedings, some of which are discussed in this article.

Summons to oral proceedings as the first action in examination

The EPO can now issue a summons to oral proceedings as the first action in examination (C-III, 5). This will only occur in exceptional circumstances if:

  • the content of the claims 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 procedure still apply.

The annex to the summons must deal with the applicant’s requests in their entirety and must include reasons why the division decided to directly summon to oral proceedings as the first action in examination In order to allow the applicant sufficient time to prepare any submissions ahead of the oral proceedings, the summons should be issued with at least six months’ notice. 

Advantageously, any requests filed after the deadline for making written submissions under Rule 116 EPC will not be treated as late-filed (H-III 3.3.1.2), and are therefore not subject to the “clearly allowable” criterion for admissibility.

Telephone minutes as the first communication in examination

A telephone conversation can now be used as a first action in examination (C-VII, 2.7), on condition that:

  • telephone minutes are issued;
  • the telephone minutes present the matters discussed with the same level of information and structure as an Art. 94(3) communication;
  • the telephone minutes are issued with a time limit for reply not shorter than four months, unless agreed otherwise with the applicant.

The minutes may also include matters which were not discussed during the telephone conversation, provided it is clear in the minutes that these matters were not discussed during the telephone conversation.

Refund of examination fees

In accordance with Art. 11(b) Fees, a 50% refund of the examination fee is available in the above situations (A-VI, 2.5), provided the European patent application is withdrawn before expiry of the time limit for replying to the first communication in examination. For a summons to oral proceedings, this is the deadline provided on the summons for making written submissions and/or amendments under Rule 116 EPC.

Other formats for a first communication in examination are also now possible, such as an invitation under Rule 137(4) EPC to indicate basis for amendments. With these changes, the rules regarding the refund of examination fees have become more complicated. Your D Young & Co patent attorney can advise whether it is possible to gain an examination fee refund.

Enquiries

In general, the EPO will reply to enquiries about the progress of a file by indicating the period within which the next office action may be expected, taking into account the workload in the technical area concerned and the internal deadline for the completion of the pending action.

In certain circumstances, an enquiry will automatically cause the EPO to issue the next action (E-VIII, 7). The next action will be issued within one month from receipt of the enquiry if:

  • the extended/partial European search report in respect of European patent applications filed on or after 01 June 2014 has not been issued within six months from the filing date or from expiry of the period under Rule 161(2); or
  • an office action in respect of an application which is being processed under the PACE programme or for which a previous enquiry has been made has not been performed within the committed period;

The next action will be issued within six months from receipt of the enquiry if:

  • the extended/partial European search report in respect of European patent applications filed before 01 June 2014 and which do claim priority (second filings) has not been issued.

Although filing an enquiry does not guarantee acceleration of examination, it can provide more certainty as to when the next communication may be expected. There are other measures made available by the EPO for speeding up prosecution, such as the accelerated prosecution of European patent applications (PACE) procedure.

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