2.4 Minutes of a consultation 

The minutes of a consultation should list the participants, summarise the main results and state any oral requests. They must be signed by the examiner. Documents filed by email during a consultation (see C‑VII, 3), such as new claims or an amended description, must be attached to the minutes.

The minutes should always indicate whether the next action is due to come from the applicant or the examiner. In this regard, the minutes when despatched to the applicant may:

(i)be issued for information only, in which case if a time limit is still pending, it should be observed; if no time limit is pending, no action is required from the applicant 

(ii)be issued such as to extend a pending time limit, in which case the applicant must reply within that extended time limit 

(iii)be issued such as to set a new time limit for response, in which case the applicant must reply within this new time limit 

(iv)be issued such as to cancel a pending time limit 

(v)be issued such as to reflect the decision to cancel scheduled oral proceedings. This may be the case, for instance, when where an agreement on an allowable set of claims can be reached during the consultation. Cancellation of the oral proceedings is communicated to the applicant orally during the consultation and noted in the minutes. No separate communication regarding the cancellation of the oral proceedings is issued.

(vi)be issued for information only where the applicant announces during the consultation that they do not intend to attend oral proceedings. The applicant is informed that oral statements must be confirmed in writing to be procedurally effective (see C‑VII, 2.3).

Where the consultation is concerned with the clarification of obscurities, the resolution of uncertainties or putting the application in order by clearing up a number of minor points, it will usually be sufficient for the examiner to make a note in the minutes of the matters discussed and the conclusions reached or amendments agreed unless a time limit is set for reply (see below).

Where the consultation involves the discussion of weightier matters, such as questions of novelty, inventive step, unity or whether the amendment introduces added subject-matter, a fuller note of the topics raised will be made in the minutes. In particular, the minutes will specify in concrete terms the topics discussed, together with any amendments agreed, any opposing views, the reasons for any change of opinion and any conclusions drawn unless these are clear from other documents in the dossier. Furthermore, the reasons for any amendments required by the examiner should be clearly indicated.

It is important to avoid statements that are unclear, ambiguous or universally applicable in the minutes. For example, statements such as "Amendments to the claims were proposed to take account of the prior art cited in the search report" are of no assistance to members of the public, other members of the division or indeed the first examiner member at later stages of the procedure. The same applies to conclusions worded in a generalised manner.

If the minutes are sent as a first communication in examination, see C‑VII, 2.5.

The minutes are placed in the dossier, made available for file inspection (including all documents filed by an applicant or representative during the consultation) and sent to the applicant or their representative, even where the consultation merely changes/confirms/cancels the time/date of a proposed consultation.

However, by way of exception, consultations relating to amendments agreed immediately prior to completing the Rule 71(3) communication may be reflected in that communication, provided that there is no uncertainty for the public as to what was agreed. The amendments must be identified as precisely as possible.