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C. PROCEDURE BEFORE SEARCH, EXAMINING AND OPPOSITION DIVISIONS

C.1 Grant procedure in general

Decision of the President of the European Patent Office dated 12 December 2013 concerning the entrustment to non-examining staff of certain duties incumbent on the examining or opposition divisions

Version consolidating the text published in OJ EPO 2014, A6 with amendments published in OJ EPO 2015, A1041

The President of the European Patent Office, having regard to Rule 11(3) EPC, has decided as follows:

Article 1

Entrustment to formalities officers of certain duties incumbent on the examining divisions of the EPO

Within the framework of the responsibilities of the examining divisions of the EPO, certain employees (formalities officers) who are not technically or legally qualified examiners shall be entrusted with the following duties incumbent on the examining divisions:

1. Examination as to formal deficiencies under Article 90(3) to (5) EPC.

2. Examination of documents submitted under Rule 46(1) and (2), Rule 49(2) to (9) and (12) as well as Rule 50(2) and (3) EPC in so far as this is not covered in number 1 above.

3. Examination under Rules 159(1) and 163(1) to (6) EPC.

4. Examination of duly-made appointments of representatives and authorisations as well as communications under Rule 152(2), (3) and (6) EPC.

5. Communications under Article 94(3) EPC in cases 1 to 4 referred to above.

6. Refusal of the European patent application in so far as this has to take place in cases 1 to 4 referred to above.

7. Communications concerning loss of rights under Rule 112(1) EPC.

8. Decisions and informing the party requesting the decision, under Rule 112(2) EPC.

9. Examination and communications under Rule 71(3) to (5), (7) and Rule 71a(3) and (4) EPC; issuing decisions whereby European patents are granted (Rule 71a(1) EPC).

10. Decisions on requests under Article 121 and Rule 135 EPC in cases where

(a) the application is deemed withdrawn under Article 94(4) or Rule 71(7) EPC; or

(b) the application has been refused on grounds covered by point 6.

11. Decisions on requests under Article 122 and Rule 136 EPC in cases where the request can be dealt with without oral proceedings under Article 116 EPC or without further taking of evidence under Rule 117 EPC.

12. Request to the applicant to comment on an application for inspection of files under Article 128(1) EPC.

13. Decisions concerning inspection of files in cases covered by Article 128(2) to (4) EPC and Rule 144 EPC and provision of information from the files under Rule 146 EPC.

14. Summons to oral proceedings under Rule 115(1) EPC following request by the examining division.

15. Summons to give evidence before the European Patent Office under Rule 118(2) EPC following request by the examining division.

16. Notification as required under Article 119 EPC in conjunction with Rules 125 to 130 EPC, examination of proof of notification and decisions concerning notification.

17. Extension of a time limit under Rule 132 EPC.

18. Issue of a certificate for a European patent and issue of duplicate copies of the certificate under Rule 74 EPC.

19. Correction of the designation of contracting states where the designation is withdrawn after a decision to grant a European patent and before the decision takes effect.

20. Notification of refusals of European patent applications under Article 97(2) EPC.

21. Decisions concerning the refund of fees, with the exception of the European search fee, the fee for appeal and the fee for petitions for review. The decision to refund the appeal fee shall be taken by the formalities officer where it is part of his duty to rectify the decision.

22. Decisions concerning the correction of errors in documents filed with the European Patent Office, with the exception of the description, claims and drawings (Rule 139 EPC); decisions concerning the correction of the declaration of priority (Rule 52(3) EPC).

22a. Decisions under Rule 140 EPC concerning the correction of errors in the decision to grant or to limit a European patent, with the exception of errors in the description, claims or drawings.

22b. Correction of publication errors in the patent specification.

23. Decisions of the European Patent Office as designated Office under Article 25(2)(a) of the Patent Cooperation Treaty (Rule 159(2) EPC).

24. Examination of an application for evidence to be taken under Rule 123(2)(a) and (b) and (3) EPC and notification that the taking of evidence has been ordered.

25. Examination under Article 105a(1) and (2) EPC, Rule 92(1) and (2) EPC, communications under Rules 93(1), 94 and 95(1) and (3) EPC, as well as decisions under Rules 93(2) and 95(1) EPC.

26. Decisions to reject the request for limitation under Rule 95(4) EPC where the requester does not respond in due time to the communication issued under Rule 95(2) EPC and where the requester fails to perform the acts required under Rule 95(3) EPC in due time.

27. Issue of a new certificate for a European patent as amended under Rule 96 EPC and issue of duplicate copies of the certificate under Rule 74 EPC.

28. Invitations under Article 124(1) and Rule 141 EPC.

29. Invitations under Rule 161(1) and Rule 162 EPC.

Article 2

Entrustment to formalities officers of certain duties incumbent on the opposition divisions of the EPO

Within the framework of the responsibilities of the opposition divisions of the EPO, certain employees (formalities officers) who are not technically or legally qualified examiners shall be entrusted with the following duties incumbent on the opposition divisions:

1. Examination as to formal deficiencies, under Rules 46(1) and (2), 49(2) to (9) and (12) and 50(2) to (3) EPC on the basis of Rule 86 EPC, of the notice of opposition, the amendments of the European patent made by the proprietor and the documents filed.

2. Examination of duly-made appointments of representatives and authorisations as well as communications under Rule 152(2), (3) and (6) EPC.

3. Communication of documents to the parties and invitation to state observations or to file documents in routine cases or on the instructions of the opposition division.

4. Communications concerning loss of rights under Rule 112(1) EPC.

5. Decisions and informing the party requesting the decision, under Rule 112(2) EPC.

6. Communication to the opponent concerning deficiencies under Rule 77(1) and (2) EPC.

7. Examination and decisions under Rules 76 and 77 EPC in ex parte proceedings on the inadmissibility of the opposition and the intervention of the assumed infringer, with the exception of the cases provided for in Rule 76(2)(c) EPC.

8. Communications under Rule 82(1) and (2) EPC on the instructions of the opposition division and communications under Rule 82(3) EPC.

9. Issue of a decision on the maintenance of the European patent as amended under Article 101(3)(a) EPC.

10. Issue of a new certificate for a European patent as amended under Rule 87 EPC and issue of duplicate copies of the certificate under Rule 74 EPC.

11. Revocation of the European patent in accordance with Rule 82(3) EPC.

12. Decisions on requests under Article 122 and Rule 136 EPC in cases where the request can be dealt with without oral proceedings under Article 116 EPC or without further taking of evidence under Rule 117 EPC.

13. Invitations under Rule 83 EPC.

14. Decisions concerning inspection of files in cases covered by Article 128(2) to (4) EPC and Rule 144 EPC and provision of information from the files under Rule 146 EPC.

15. Summons to oral proceedings under Rule 115(1) EPC following request by the opposition division.

16. Summons to give evidence before the European Patent Office under Rule 118(2) EPC following request by the opposition division.

17. Notification as required under Article 119 EPC in conjunction with Rules 125 to 130 EPC and examination of proof of notification.

18. Extension of a time limit under Rule 132 EPC.

19. Decisions concerning discontinuance of the opposition proceedings in cases covered by Rule 84 EPC where such proceedings are not continued by the opposition division of its own motion.

20. Decisions concerning the refund of fees, with the exception of the appeal fee and the fee for petitions for review.

21. Decisions concerning the correction of errors in documents filed with the European Patent Office, with the exception of the description, claims and drawings (Rule 139 EPC).

21a. Decisions under Rule 140 EPC concerning the correction of errors in the decision under Article 101(3)(a) EPC maintaining the European patent in amended form, with the exception of errors in the description, claims or drawings.

21b. Correction of publication errors.

22. Examination of an application for evidence to be taken under Rule 123(2)(a) and (b) and (3) EPC and notification that the taking of evidence has been ordered.

23. Revocation of a European patent during opposition proceedings where the patent proprietor states that he no longer approves the text in which the patent was granted and does not submit an amended text or where the proprietor requests that the patent be revoked.

24. Fixing of costs in accordance with Rule 88(2) EPC.

Article 3

Competence of the examining or opposition division to take decisions itself

Delegation of a duty under Articles 1 and 2 to an employee who is not a technically or legally qualified examiner shall not affect the competence of the examining or opposition division to take decisions itself.

Article 4

Entry into force

This decision shall enter into force on 1 January 2014 and shall replace the decisions of the President of the European Patent Office dated 12 July 2007, 31 August 2009, 11 May 2010 and 21 November 2013 (Special edition No. 3, OJ EPO 2007, F.2; OJ EPO 2009, 478; OJ EPO 2010, 350; OJ EPO 2013, 602).

Done at Munich, 12 December 2013

Benoît BATTISTELLI

President