1.1 European patent applications
Where the applicant has supplied missing drawings or parts of the description after the accordance of a filing date (see A‑II, 5) under Rule 56 and the Receiving Section has determined that the missing drawings or parts of the description are "completely contained" in the claimed priority application, the application is not redated to the date on which the missing drawings or parts of the description were supplied. The same applies to correct application documents or parts filed after the accordance of a filing date (see A‑II, 6) under Rule 56a.
The examining division may review the findings of the Receiving Section on the applicability of Rule 56(3) and Rule 56a unless there has been a decision of a board of appeal.
Normally this review will have been initiated at the search stage (see B‑III, 3.3.1 and B‑XI, 2.1). However, it can still be started during substantive examination.
For the criteria for determining whether the "completely contained" requirement of Rule 56(3) and Rule 56a is satisfied, see A‑II, 5.4.2 and A‑II, 6.4.1 respectively.
Should the examining division conclude, contrary to the original finding of the Receiving Section, that the missing elements are not "completely contained" in the priority document, it will raise an objection under Rule 56 or Rule 56a in the first communication under Art. 94(3), presenting detailed arguments as to why the "completely contained" requirement is not satisfied. In addition, it will warn that non-compliance with the requirements of Rule 56(3) or Rule 56a(4) as applicable can result in redating, which in turn can lead to loss of a priority right if the redating causes the filing date to be more than 12 months after the claimed priority date.
Note that if the review was initiated at the search stage and an objection under Rule 56 or Rule 56a was raised in the extended European search report (EESR), the applicant may already have submitted a response to the search opinion (required by Rule 70a or filed voluntarily in response to a search opinion not requiring a response). The examining division will treat this response in the same manner as the reply to the first communication.
If the applicant replies by withdrawing the missing parts or the subsequently filed correct application documents or parts, the examination will continue as normal with the original filing date, but without the missing parts or the correct application documents or parts (see also A‑II, 5.5 and F‑III, 10).
If the applicant succeeds in arguing in their reply that the "completely contained" requirement is satisfied, the examination will continue as normal with the missing parts or the subsequently filed correct application documents or parts, as the case may be, and with the original filing date.
If the applicant maintains the missing parts or the subsequently filed correct application documents or parts and their arguments do not succeed, the examining division will issue a further communication under Art. 94(3) informing them of the application's impending redating to the date on which the EPO received the missing parts or the correct application documents or parts. This communication gives the applicant a further opportunity to withdraw the subsequently filed missing parts or the correct application documents or parts within a time limit of two months (Rule 132(2)) so as to restore the original filing date or to request an appealable decision on the redating. It indicates the reasons why the "completely contained" requirement is not met and also deals with any counter-arguments presented by the applicant.
If the applicant does not reply to the above communication in due time, the application is deemed withdrawn (Art. 94(4)).
If the applicant opts to withdraw the subsequently filed missing parts or the correct application documents or parts, the redating of the application will be deemed not made (see also B‑XI, 2.1). The examiner will continue the examination procedure as normal with the original filing date but without missing parts and/or the correct application documents or parts (see also F‑III, 10).
If the applicant does not agree with the finding, they may (within two months (Rule 132(2)) request an appealable decision on the matter. In this case, the examining division will issue a reasoned decision informing them of the new filing date, the reasons for the redating and (where appropriate) the detrimental effect of the redating on the claimed priority right. This decision will allow a separate appeal according to Art. 106(2).
Once the period for filing an appeal has expired without an appeal being filed, the examiner will resume examination on the basis of the new filing date. Note that the EESR may contain documents that could become relevant as a result of the redating.
If the applicant files an appeal in due time, the file passes to a board of appeal to review the decision on the filing date's accordance. The examining division will not continue substantive examination while the case is pending before the board. Once the board has issued a decision, the file will be returned to the examining division, which will be bound on this point by the board's decision (Art. 111(2)). It will then resume examination on the basis of the filing date fixed by the board.