7.1 Search for conflicting European patent applications 

The examiner should make a search for any additional conflicting European patent applications falling within the area defined by Art. 54(3) unless this was already covered by the search report.

This is because, in general, the search files will not be complete in respect of such material at the time of the main search. Since priority dates claimed (if any) may not be accorded to all or part of the application but may be accorded to the appropriate part of a conflicting application (see F‑VI, 2.1), this search should be extended to cover all European patent applications published up to eighteen months after the filing of the application under consideration.

If the examiner is unable to complete this top-up search when preparing the search opinion or the first communication under Art. 94(3), they should ensure that it is completed before the application is reported to be in order for the grant of a patent. In the rare cases where the application is found to be in order before this search can be completed (e.g. due to a request for accelerated prosecution of an application not claiming priority, "PACE", see the notice from the EPO dated 30 November 2015, OJ EPO 2015, A93), the grant of a patent should be postponed until the top-up search can be completed.

If the top-up search is performed at the earliest 18 months from the filing date of the application under examination, the priority situation needs to be checked only if intermediate documents and/or conflicting applications are retrieved.

The top-up search may exceptionally be performed at the earliest 18 months after the priority date on On condition that the priority claim is valid for the whole content of the patent application under examination, the top-up search may exceptionally be performed at the earliest 18 months from the priority date. If examiners are unable to complete this "topping-up" search at the time the search opinion or the first communication under Art. 94(3) is prepared, they should ensure that such search is completed before the application is reported to be in order for the grant of a patent. In the rare case in which the application is found to be in order before this search can be completed (e.g. due to a request for accelerated prosecution of an application not claiming priority, "PACE", see the notice from the EPO dated 4 May 2010, OJ EPO 2010, 352), the grant of a patent should be postponed until the topping-up search can be completed (T 1849/12).

In addition to retrieving Art. 54(3) documents not available at the time of the original search, the top-up search takes into consideration potentially relevant prior art cited by other patent offices on applications belonging to the same patent family as the application under examination at the EPO and therefore needs to be performed for any file at the start and end of examination.

The examiner may retrieve relevant intermediate and/or conflicting Euro-PCT applications for which it is not yet clear if they will become prior art under Art. 54(3) alone or in conjunction with Rule 165 (see G‑IV, 5.2). In these cases, the examining division cannot issue an intention to grant before it can be established if these documents are prior art under Art. 54(3). The examiner will first check if the Euro-PCT application has entered the European phase at 31 months after the earliest priority date of the application. If not, it may still constitute conflicting prior art under Art. 54(3) if the PCT applicant has paid the required filing fee under Rule 159(1)(c) and has supplied the PCT application in any official EPO language. The examiner will then verify if the application has become prior art under Art. 54(3) in conjunction with Rule 165. Since August 2021, the EPO publishes these cases in section I.2(2) of the European Patent Bulletin under the heading "International applications considered as comprised in the state of the art under Rule 165 and Art. 54(3) EPC".

For the refund of examination fees (see A‑VI, 2.5), the launch of a top-up search is triggered at the start of examination. This creates a marker that serves as evidence in the file that the examining division has started its substantive work.