7. Enlargement of the examining division; consultation of a legally qualified examiner member

If the examining division deems it necessary given the nature of a decision, it is enlarged to include a legally qualified examiner member. The decision to enlarge or to set aside an enlargement lies with the examining division.

The participation of a legally qualified examiner member or at least internal consultation of Directorate Patent Law and Processes, the unit responsible for providing legally qualified members for examining and opposition divisions, will be required in the event of a difficult legal question not yet solved by the Guidelines or jurisprudence.

The applicant is informed of the division's enlargement in the communication accompanying and/or the annex to the summons or the decision following enlargement, as appropriate. Once the division has been enlarged, communications or decisions must be signed by all four members.

If the examining division has been enlarged to four members, the chair will have a casting vote. As a rule, enlargement will be required in cases involving technical opinions (Art. 25 – see E‑XIII, 3.1) and where evidence has to be taken according to Rule 117 (including the giving of evidence by witnesses – see E‑IV). It is also to be considered in the case of oral proceedings.

Where an examining division has been enlarged pursuant to Art. 18(2) but the case is decided in a three-member composition, there should be clear evidence in the public file that a decision to set aside enlargement was taken by the division in its four-member composition prior to the final decision.

Therefore, if enlargement is considered no longer necessary, the examining division will set it aside. This decision is not separately appealable. The applicant is informed about the setting aside of the enlargement in the communication accompanying and/or the annex to the summons or the decision following the setting aside of the enlargement.

Depending on the nature of the problem, as an alternative to enlarging the examining division, it may be sufficient to consult a legally qualified examiner member in Directorate Patent Law and Processes. For instance, doubts may arise whether an application concerns an invention within the meaning of Art. 52(2) or whether the claimed invention is excluded from patentability by virtue of Art. 53. Such consultation may also be appropriate where legal considerations predominate in a decision, as in proceedings following a request for re-establishment of rights according to Art. 122. Formalities officers may also consult Directorate Patent Law and Processes within the scope of the duties conferred to them under Rule 11(3) (see the decision of the President of the EPO dated 12 December 2013, OJ EPO 2014, A6).