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2.3.1 Examples of the exercise of discretion under Rule 137(3)

Overview

General Part
1. Preliminary remarks
2. Explanatory notes
2.1 Overview
2.2 Abbreviations
3. General remarks
4. Work at the EPO
5. Summary of the processing of applications and patents at the EPO
6. Contracting states to the EPC
7. Extension to and validation in states not party to the EPC
8. Unitary Patent protection
Part A – Guidelines for Formalities Examination
Chapter I – Introduction
1. Overview
2. Responsibility for formalities examination
3. Purpose of Part A
4. Other parts relating to formalities
Chapter II – Filing of applications and examination on filing
1. Where and how applications may be filed
1.1 Filing of applications by means of electronic communication
1.1.1 Filing of applications in electronic form
1.1.2 Filing of applications by fax
1.2 Filing of applications by delivery by hand or by postal services
1.3 Filing of applications by other means
1.4 Subsequent filing of documents
1.5 Debit orders for deposit accounts held with the EPO
1.6 Forwarding of applications
1.7 Application numbering systems
1.7.1 Applications filed before 1 January 2002
1.7.2 Applications filed on or after 1 January 2002
2. Persons entitled to file an application
3. Procedure on filing
3.1 Receipt; confirmation
3.2 Filing with a competent national authority
4. Examination on filing
4.1 Minimum requirements for according a date of filing
4.1.1 Indication that a European patent is sought
4.1.2 Information concerning the applicant
4.1.3 Description
4.1.3.1 Reference to a previously filed application
4.1.4 Deficiencies
4.1.5 Date of filing
5. Late filing of missing drawings or missing parts of the description
5.1 Late filing of missing drawings or missing parts of the description – on invitation
5.2 Late filing of missing drawings or missing parts of the description – without invitation
5.3 The filing date changes
5.4 Missing parts of the description or missing drawings based on the priority application, no change in filing date
5.4.1 Late-filed missing parts when priority is claimed
5.4.2 The missing parts of the description or missing drawings are completely contained in the priority application
5.4.3 Copy of the priority application
5.4.4 Translation of the priority application
5.5 Withdrawal of late-filed missing drawings or missing parts of the description
5.6 Additional fee for pages
6. Correction of erroneously filed application documents or parts
6.1 Correction of erroneously filed application documents or parts – on invitation
6.2 Correction of erroneously filed application documents or parts – without invitation
6.3 The filing date changes
6.4 Correct application documents based on priority application, no change in the filing date
6.4.1 Later-filed correct application documents or parts when priority is claimed
6.4.2 Copy of the priority application
6.4.3 Translation of the priority application
6.5 Withdrawal of correct application documents or parts
6.6 Same-day corrections
6.7 Correct application documents or parts filed after the search has started
6.8 Additional fee for pages
6.9 Claims fee
Chapter III – Examination of formal requirements
1. General
1.1 Formal requirements
1.2 Further checks
2. Representation
2.1 Requirements
2.2 Non-compliance
3. Physical requirements
3.1 General remarks
3.2 Documents making up the application, replacement documents, translations
3.2.1 Physical requirements of applications filed by reference to a previously filed application
3.2.2 Physical requirements of late-filed application documents or correct application documents or parts
3.3 Other documents
4. Request for grant
4.1 General remarks
4.2 Examination of the request for grant form
4.2.1 Information on the applicant
4.2.2 Signature
4.2.3 Further requirements laid down by Rule 41(2)
5. Designation of inventor
5.1 General remarks
5.2 Waiver of right to be mentioned as inventor
5.3 Designation filed in a separate document
5.4 Deficiencies
5.5 Incorrect designation
6. Claim to priority (see also F‑VI)
6.1 General remarks
6.2 Applications giving rise to a right of priority
6.3 Multiple priorities
6.4 Examination of the priority document
6.5 Declaration of priority
6.5.1 Filing a new priority claim
6.5.2 Correcting an existing priority claim
6.5.3 Deficiencies in the priority claim and loss of the priority right
6.6 Priority period
6.7 Copy of the previous application (priority document)
6.8 Translation of the previous application
6.8.1 Invitation to file the translation before examination
6.8.2 Invitation to file the translation in examination/opposition
6.8.3 Loss of rights and legal remedies
6.8.4 Translation of previous application already filed
6.8.5 Voluntary filing of the translation of the previous application
6.8.6 Declaration replacing the translation
6.9 Non-entitlement to right to priority
6.10 Loss of right to priority
6.11 Notification
6.12 Copy of the search results for the priority or priorities
7. Title of the invention
7.1 Requirements
7.2 Responsibility
8. Prohibited matter
8.1 Morality or "ordre public"
8.2 Disparaging statements
9. Claims fee
10. Abstract
10.1 General remark
10.2 Content of the abstract
10.3 Figure accompanying the abstract
11. Designation of contracting states
11.1 General remarks
11.2 European patent applications filed on or after 1 April 2009
11.2.1 Designation fee; time limits
11.2.2 Payment of designation fee
11.2.3 Consequences of non-payment of the designation fee
11.2.4 Withdrawal of designation
11.2.5 Euro-PCT applications entering the European phase
11.3 European patent applications filed before 1 April 2009
11.3.1 Designation fee; time limits
11.3.2 Consequences of non-payment of designation fees
11.3.3 Amount paid insufficient
11.3.4 Application deemed withdrawn
11.3.5 Request for grant form
11.3.6 Indication of the contracting states
11.3.7 Amount payable
11.3.8 Withdrawal of designation
11.3.9 Euro-PCT applications entering the European phase before 1 April 2009
12. Extension and validation of European patent applications and patents to/in states not party to the EPC
12.1 General remarks
12.2 Time limit for payment of extension and validation fees
12.3 Withdrawal of the extension or validation request
12.4 Extension and validation deemed requested
12.5 National register
13. Filing and search fees
13.1 Payment of fees
13.2 Additional fee (if application documents comprise more than 35 pages)
13.3 Additional fee for divisional applications
14. Translation of the application
15. Late filing of claims
16. Correction of deficiencies
16.1 Procedure for formalities officers
16.2 Period allowed for remedying deficiencies
Chapter IV – Special provisions
1. European divisional applications (see also C‑IX, 1)
1.1 General remarks
1.1.1 Pendency of the earlier application
1.1.2 Sequences of divisional applications
1.1.3 Persons entitled to file a divisional application
1.2 Date of filing of a divisional application; claiming priority
1.2.1 Date of filing
1.2.2 Priority claim of a divisional application
1.3 Filing a divisional application
1.3.1 Where and how to file a divisional application
1.3.2 Request for grant
1.3.3 Language requirements
1.3.4 Designation of contracting states
1.3.5 Extension and validation states
1.4 Fees
1.4.1 Filing, search and designation fee(s)
1.4.1.1 Additional fee for divisional applications of second or subsequent generations
1.4.2 Claims fees
1.4.3 Renewal fees
1.5 Designation of the inventor
1.6 Authorisations
1.7 Other formalities examination
1.8 Search, publication and request for examination of divisional applications
2. Art. 61 applications and stay of proceedings under Rule 14
2.1 General
2.2 Stay of proceedings for grant
2.2.1 Responsible department
2.2.2 Date of the stay of proceedings
2.2.3 Legal nature and effects of the stay
2.2.4 Interruption of time limits
2.2.5 Resumption of the proceedings for grant
2.2.5.1 Resumption after final decision in entitlement proceedings
2.2.5.2 Resumption regardless of the stage of entitlement proceedings
2.3 Limitation of the option to withdraw the European patent application
2.4 Prosecution of the application by a third party
2.5 Filing a new application
2.6 Refusal of the earlier application
2.7 Partial transfer of right by virtue of a final decision
3. Display at an exhibition
3.1 Certificate of exhibition; identification of invention
3.2 Defects in the certificate or the identification
4. Applications relating to biological material
4.1 Biological material; deposit of such
4.1.1 New deposit of biological material
4.1.2 Application filed by reference to a previously filed application
4.2 Missing information; notification
4.3 Availability of deposited biological material to expert only
4.4 Requests for samples of biological material
5. Applications relating to nucleotide and amino acid sequences
5.1 Sequence information filed under Rule 56
5.2 Sequence information filed under Rule 56a
5.3 Sequence listings of an application filed by reference to a previously filed application
5.4 Sequence listings of a divisional application
6. Conversion into a national application
Chapter V – Communications concerning formal deficiencies; amendment of application; correction of errors
1. Communications concerning formal deficiencies
2. Amendment of application
2.1 Filing of amendments
2.2 Examination of amendments as to formalities
3. Correction of errors in documents filed with the EPO
Chapter VI – Publication of application; request for examination and transmission of the dossier to examining division
1. Publication of application
1.1 Date of publication
1.2 No publication; preventing publication
1.3 Content of the publication
1.4 Publication in electronic form only
1.5 Separate publication of the European search report
2. Request for examination and transmission of the dossier to the examining division
2.1 Communication
2.2 Time limit for filing the request for examination
2.3 Legal remedy
2.4 Transmission of the dossier to the examining division
2.5 Refund of examination fee
2.6 Reduction in examination fee
3. Response to the search opinion
Chapter VII – Languages
1. Admissible languages on filing
1.1 General
1.2 Filing by reference
1.3 European divisional applications; Art. 61 applications
1.4 Invitation to file the translation
2. Language of the proceedings
3. Derogations from the language of the proceedings in written proceedings
3.1 Parties' written submissions
3.2 Admissible non‑EPO languages
3.3 Priority document
3.4 Documents filed as evidence
3.5 Third-party observations
4. Derogations from the language of the proceedings in oral proceedings
5. Documents filed in the wrong language
6. Languages of publication
7. Correction and certification of the translation
8. Authentic text of the application or patent
Chapter VIII – Common provisions
1. Representation
1.1 General principles
1.2 Representation by a professional representative; list of professional representatives; associations
1.3 Representation by an employee
1.4 Common representative
1.5 Representation by a legal practitioner
1.6 Signed authorisation
1.7 General authorisation
1.8 Invitation to file authorisation and legal consequence in case of non-compliance
2. Form of documents
2.1 Documents making up the European patent application
2.2 Replacement documents and translations
2.3 Other documents
2.4 Number of copies
2.5 Filing of subsequent documents
3. Signature of documents
3.1 Documents filed after filing the European patent application
3.2 Documents forming part of the European patent application
3.3 Form of signature
3.4 Joint applicants
Chapter IX – Drawings
1. Graphic forms of presentation considered as drawings
1.1 Technical drawings
1.2 Photographs
2. Representation of drawings
2.1 Grouping of drawings
2.2 Reproducibility of drawings
2.3 Figure accompanying the abstract
3. Conditions if drawings are filed on paper
4. Presentation of the sheets of drawings
4.1 Usable surface area of sheets
4.2 Numbering of sheets of drawings
5. General layout of drawings
5.1 Page‑setting
5.2 Numbering of figures
5.3 Whole figure
6. Prohibited matter
7. Executing of drawings
7.1 Drawings of lines and strokes
7.2 Shading
7.3 Cross-sections
7.3.1 Sectional diagrams
7.3.2 Hatching
7.4 Scale of drawings
7.5 Numbers, letters and reference signs
7.5.1 Leading lines
7.5.2 Arrows
7.5.3 Height of the numbers and letters in the drawings
7.5.4 Consistent use of reference signs in description, claims and drawings
7.5.5 Consistent use of reference signs in drawings
7.6 Variations in proportions
8. Text matter on drawings
9. Conventional symbols
10. Amendments to drawings
11. Graphic forms of presentation not considered as drawings
11.1 Chemical and mathematical formulae
11.2 Tables
11.2.1 Tables in the description
11.2.2 Tables in the claims
Chapter X – Fees
1. General
2. Methods of payment
3. Currencies
4. Date considered as date on which payment is made
4.1 Payment or transfer to a bank account held by the European Patent Organisation
4.2 Deposit accounts with the EPO
4.2.1 General remarks
4.2.2 Payments to replenish a deposit account
4.2.3 Debiting the deposit account
4.2.4 Date of receipt of the debit order; insufficient funds
4.3 Automatic debiting procedure
4.4 Payment by credit card
5. Due date for fees
5.1 General
5.1.1 Due date
5.1.2 Amount of the fee
5.2 Due date for specific fees
5.2.1 Filing fee and search fee
5.2.2 Examination fee and designation fee
5.2.3 Fee for grant and publishing
5.2.4 Renewal fees
5.2.5 Claims fees
5.2.6 Fees for limitation/revocation, opposition, appeal, petition for review
5.2.7 Fees payable for procedural and other requests
6. Payment in due time
6.1 Basic principle
6.2 Late payment of fees – period for payment considered observed
6.2.1 Fees paid by bank transfer – application of Art. 7(3) and (4) RFees
6.2.2 Safety provision for late replenishment of deposit accounts
6.2.3 Debit orders filed with a competent national authority
6.2.4 Amount of fee payable
6.2.5 Noting of loss of rights
7. Purpose of payment
7.1 General
7.1.1 Conditions for valid payment
7.1.2 Purpose of payment
7.2 Indication of the purpose of the payment in the case of designation fees
7.3 Indication of the purpose of payment in the case of claims fees
7.3.1 Claims fees payable on filing the European patent application
7.3.2 Claims fees payable before the grant of the European patent
8. No deferred payment of fees, no legal aid, no discretion
9. Reduction of fees
9.1 General
9.2 Reduction under the language arrangements
9.2.1 Conditions
9.2.2 Reduction of the filing fee
9.2.3 Reduction of the examination fee
9.3 Special reductions
9.3.1 Reduction of the search fee for a supplementary European search
9.3.2 Reduction of the examination fee where the international preliminary examination report is drawn up by the EPO
10. Refund of fees
10.1 General remarks
10.1.1 Fee payments lacking a legal basis
10.1.2 Late payments
10.1.3 Insignificant amounts
10.2 Special refunds
10.2.1 Refund of the search fee
10.2.2 Refund of the further search fee
10.2.3 Refund of the examination fee
10.2.4 Refund under Rule 37(2)
10.2.5 Refund of the fee for grant and publishing
10.2.6 Refund of the appeal fee
10.3 Method of refund
10.3.1 Refunds to a deposit account
10.3.2 Refunds to a bank account
10.4 Reallocation instead of refund
11. Crediting of fees under Rule 71a(5)
11.1 Crediting of the fee for grant and publishing
11.2 Crediting of claims fees
11.3 Separate crediting of the fee for grant and publishing and claims fees
11.4 Further processing fee and crediting of fees
Chapter XI – Inspection of files; communication of information contained in files; consultation of the European Patent Register; issue of certified copies
1. General
2. Inspection of files
2.1 Documents open to file inspection
2.2 Conducting file inspections
2.3 Restrictions to file inspection
2.4 Confidentiality of the request
2.5 File inspection before publication of the application
2.6 Publication of bibliographic data before publication of the application
3. Communication of information contained in the files
4. Consultation of the European Patent Register
5. Issue of certified copies
5.1 Certified copies of documents from the files or of other documents
5.2 Priority documents issued by the EPO
Part B – Guidelines for Search
Chapter I – Introduction
1. Scope of Part B
2. Search division
2.1 Consultation with other examiners
2.2 Search division has more than one member
2.2.1 Where claimed unitary subject-matter covers more than one technical field
2.2.2 Further searches in a different technical field for a non-unitary application
Chapter II – General
1. Search and substantive examination
1.1 Contact between the applicant and the search division
2. Aim of the search
3. Search documentation
4. Search report
4.1 European searches
4.2 Additional European searches
4.3 Supplementary European searches
4.3.1 Dispensing with the supplementary European search report
4.3.2 A supplementary European search report is required
4.3.3 Application documents for the supplementary European search report
4.4 International (PCT) searches
4.5 International-type searches
4.6 Searches on national applications
Chapter III – Characteristics of the search
1. Opinions of the search division
1.1 Opinions in relation to the search report
1.2 Opinions on matters relating to limitation of the search
2. Scope of the search
2.1 Completeness of the search
2.2 Effectiveness and efficiency of the search
2.3 Search in neighbouring fields
2.4 Internet searches
3. The subject-matter of the search
3.1 Basis for the search
3.2 Interpretation of claims
3.2.1 Claims with explicit references to the description or drawings
3.2.2 Using the description and/or drawings to identify the technical problem
3.2.3 Using the description and/or drawings to define unclear terms not defined in the claims
3.2.4 Using the description and/or drawings to define clear terms given a definition different from their usual meaning
3.2.5 Ascertaining whether there is a fallback position
3.3 Amended claims, missing parts (Rule 56) or erroneously filed application documents or parts (Rule 56a)
3.3.1 General considerations
3.3.2 Specific rules applicable to Euro-PCT applications
3.4 Abandoned claims
3.5 Anticipation of amendments to claims
3.6 Broad claims
3.7 Independent and dependent claims
3.8 Search on dependent claims
3.9 Combination of elements in a claim
3.10 Different categories
3.11 Subject-matter excluded from search
3.12 Lack of unity
3.13 Technological background
Chapter IV – Search procedure and strategy
1. Procedure before searching
1.1 Analysis of the application
1.2 Formal deficiencies
1.3 Documents cited or supplied by the applicant
2. Search strategy
2.1 Subject-matter of the search; restrictions
2.2 Devising a search strategy
2.3 Carrying out the search; types of documents
2.4 Redefining the searched subject-matter
2.5 Closest prior art and its effects on the search
2.6 End of search
3. Procedure after searching
3.1 Drawing up the search report
3.2 Documents discovered after completion of the search
3.3 Errors in the search report
Chapter V – Preclassification, IPC and CPC classification of European patent applications
1. Definitions
2. Preclassification (for file routing and allocation)
2.1 Incorrect preclassification
3. IPC classification of the application
3.1 IPC classification of late-published search reports
3.2 IPC classification where the scope of the invention is unclear (e.g. a partial search)
3.3 IPC classification in cases of lack of unity of invention
3.4 Verification of the IPC classification
4. CPC classification of the application
Chapter VI – The state of the art at the search stage
1. General
2. Oral disclosure, use, exhibition, etc. as state of the art
3. Priority
4. Conflicting applications
4.1 Potentially conflicting European and international applications
4.1.1 Published European patent applications as "E" documents
4.1.2 Published international applications (WO) as "E" documents
4.2 National prior rights
5. Relevant date for documents cited in the search report; filing and priority date
5.1 Verification of claimed priority dates
5.2 Intermediate documents
5.3 Doubts about the validity of the priority claim; widening of the search
5.4 Documents published after the filing date
5.5 Non-prejudicial disclosures
5.6 Doubts about the state of the art
6. Contents of prior-art disclosures
6.1 General remark
6.2 Citation of documents corresponding to documents not available or not published in one of the EPO's official languages
6.3 Conflict between abstract and source document
6.4 Insufficient prior-art disclosures
6.5 Incorrect compound records in online databases
7. Internet disclosures ‒ technical journals
Chapter VII – Unity of invention
1. General remarks
1.1 Partial European search report
1.2 Invitation to pay further search fees
1.2.1 General
1.2.2 Cascading non-unity
1.2.3 The applicant has not paid all further search fees
1.3 Documents relevant only to other inventions
1.4 Assessment and possible review of the unity requirement
2. Procedures in cases of lack of unity
2.1 Request for refund of further search fees
2.2 Complete search despite lack of unity
2.3 Supplementary European search
3. Lack of unity and Rule 62a or Rule 63
Chapter VIII – Subject-matter to be excluded from the search
1. General remarks
2. Considerations relating to specific exclusions from and exceptions to patentability
2.1 Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body
2.2 Subject-matter excluded from patentability under Art. 52(2) and (3)
2.2.1 Computer-implemented business methods
3. No meaningful search possible
3.1 Invitation to indicate subject-matter for search
3.2 Reply to the invitation under Rule 63(1)
3.2.1 No or late reply
3.2.2 Reply in time
3.3 Content of the extended European search report (EESR)
3.4 Applications falling under Rule 63 and lacking unity
4. More than one independent claim per category (Rule 62a)
4.1 Invitation to indicate which independent claim to search
4.2 Reply to the invitation under Rule 62a(1)
4.2.1 Failure to reply in time
4.2.2 Reply filed in time
4.3 Content of the extended European search report (EESR)
4.4 Cases under Rule 62a where claims fees have not been paid
4.5 Applications falling under Rule 62a and lacking unity
4.6 Handling of dependent claims under Rule 62a
5. Invitation under both Rule 62a(1) and Rule 63(1)
6. Claims contravening Art. 123(2) or Art. 76(1)
Chapter IX – Search documentation
1. General
1.1 Organisation and content of the documentation available to the search divisions
1.2 Means of searching systematically
2. Patent documents arranged for systematic searching
2.1 PCT minimum documentation
2.2 Unpublished patent applications
2.3 Search reports
2.4 Patent family system
3. Non-patent literature arranged for systematic access
3.1 Periodicals, records, reports, books, etc.
4. Non-patent literature arranged for library-type access
4.1 Content
5. Access to EPO documentation for the national patent offices
Chapter X – Search report
1. General
2. Different types of search report drawn up by the EPO
3. Form and language of the search report
3.1 Form
3.2 Language
3.3 Search summary
3.4 Record of search strategy
4. Identification of the European patent application and the search report type
5. Classification of the European patent application
6. Technical fields searched
7. Title, abstract and figure to be published with the abstract (as indicated on supplemental sheet A)
8. Restriction of the searched subject-matter
9. Documents found in the search
9.1 Identification of documents in the search report
9.1.1 Bibliographic data
9.1.2 "Corresponding documents"
9.1.3 Language of the documents cited
9.1.4 Supplementary European search report
9.2 Categories of documents (X, Y, P, A, D, etc.)
9.2.1 Particularly relevant documents
9.2.2 Documents defining the state of the art and not prejudicing novelty or inventive step
9.2.3 Documents which refer to a non-written disclosure
9.2.4 Intermediate documents
9.2.5 Documents relating to the theory or principle behind the invention
9.2.6 Potentially conflicting patent documents
9.2.7 Documents cited in the application
9.2.8 Documents cited for other reasons
9.3 Relationship between documents and claims
9.4 Identification of relevant passages in prior-art documents
10. Authentication and dates
11. Copies to be made available with the search report
11.1 General remarks
11.2 Electronic version of cited document
11.3 Patent family members; the "&" sign
11.4 Reviews or books
11.5 Summaries, extracts or abstracts
11.6 Citation of video and/or audio media fragments available on the internet
12. Transmittal of the search report and search opinion
Chapter XI – The search opinion
1. Search opinion is part of the EESR
1.1 The search opinion
1.2 Position of the examining division
2. Basis for the search opinion
2.1 Application documents filed under Rule 56 EPC, Rule 56a EPC, Rule 20.5 PCT or Rule 20.5bis PCT
2.2 Applications containing claims filed after the accorded filing date
3. Analysis of the application and content of the search opinion
3.1 The search division's dossier
3.2 Reasoning
3.2.1 Reasoned objections
3.2.2 Positive statements
3.3 Comments and amendments in response to the search opinion
3.4 Scope of first analysis for generally deficient applications
3.5 Contribution to the known art
3.6 EPC requirements
3.7 Search division's approach
3.8 Making suggestions
3.9 Positive opinion
4. Priority claim and the search opinion
4.1 Use of "P" and "E" documents in the search opinion
5. Unity in relation to the search opinion
6. The search opinion where the search was limited
7. No search opinion is issued
8. Response to the extended European search report (EESR)
9. Art. 124 and the utilisation scheme
Part C – Guidelines for Procedural Aspects of Substantive Examination
Chapter I – Introduction
1. General remark
2. The work of examiners
3. Overview
4. Purpose of examination
Chapter II – Formal requirements to be met before the division starts substantive examination
1. Request for examination
1.1 Confirmation of the intention to proceed further with the application
1.2 Euro-PCT applications
1.3 Invention to be examined
2. Allocation of the application
3. Response filed before first communication in examination
3.1 Response to the search opinion
3.2 Response to PCT actions prepared by the EPO
3.3 The invitation under Rule 70a(1)
4. Designation fees, extension and validation fees
5. Copy of the search results on the priority or priorities
Chapter III – The first stage of examination
1. Missing parts or elements
1.1 European patent applications
1.1.1 Application documents filed under Rule 56 or Rule 56a
1.1.2 Claims filed after accordance of a date of filing
1.2 Euro-PCT applications – missing elements and parts filed under Rule 20.5 and 20.6 PCT
1.3 Euro-PCT applications – erroneous elements filed under Rule 20.5bis PCT
2. Amendments made by applicants of their own volition
2.1 Amendments made in response to the search opinion
2.2 Amendments made in response to the WO‑ISA, IPER or supplementary international search report
3. Unity of invention
3.1 Searches under Rule 164(2)
3.2 Relation to unity in search; limitation to searched invention
3.2.1 No additional search fees paid
3.2.2 Additional search fees paid
3.2.3 Invitation to pay additional search fees combined with invitation to restrict the scope of the search
3.3 Excision of other inventions; filing divisional applications
3.4 Refund of additional search fees
3.5 Changing from one searched invention to another
4. First communication
4.1 Reasoning
4.1.1 Reasoned objections
4.1.2 Positive statements/suggestions
4.2 Invitation to file comments and amendments
5. Summons to oral proceedings as the first action in examination
6. Requesting information on prior art (not confined to priority)
7. Evaluation of prior-art documents cited in the search report and late priority claim
Chapter IV – Examination of replies and further stages of examination
1. General procedure
2. Extent of examination of replies
3. Further action upon examination of replies
3.1 Further action where a request for a translation of the priority application was sent earlier in examination proceedings
4. Later stages of examination
5. Examination of amendments
6. Admissibility of amendments made by the applicant
7. Search-related issues in examination
7.1 Search for conflicting European patent applications
7.2 National prior rights
7.3 Additional searches during examination
7.4 Search at the examination stage
7.5 Citing documents not mentioned in the search report
8. New submissions in reply to a summons
Chapter V – The final stage of examination
1. Communication under Rule 71(3)
1.1 Text for approval
1.2 Grant and publishing fee
1.3 Translations of the claims
1.4 Claims fees due in response to Rule 71(3) communication
1.5 Other information in the communication under Rule 71(3)
2. Approval of the proposed text – grant of a patent
2.1 Request for unitary effect
3. No reply in time – application deemed withdrawn
4. Request for amendments or corrections in reply to the Rule 71(3) communication
4.1 No payment of fees or filing of translations necessary
4.2 Crediting of fees paid voluntarily
4.3 Amendments or corrections should be reasoned
4.4 Admissibility of amendments
4.5 Adaptation of the description
4.6 Amendments/corrections admitted and allowable – second Rule 71(3) communication sent
4.6.1 Second Rule 71(3) communication reversing the amendments proposed by the examining division in first Rule 71(3) communication
4.6.2 Second Rule 71(3) communication based on higher-ranking request initially rejected in first Rule 71(3) communication
4.6.3 Examining division proposes amendments in second Rule 71(3) communication
4.7 Amendments not admitted and/or not allowable, examination resumed
4.7.1 Communications/oral proceedings/refusal after resumption
4.7.1.1 Higher-ranking request not admissible and/or not allowable
4.7.2 Agreement reached on a text – second Rule 71(3) communication
4.7.3 No agreement reached on a text – refusal
4.8 Fees to be paid within the second Rule 71(3) period
4.8.1 Claims fees
4.8.2 Fee for grant and publishing
4.9 Reply explicitly disapproving with the proposed text without indicating an alternative text
4.10 Amendments/corrections filed in second Rule 71(3) period
5. Further requests for amendment after approval
6. The examining division resumes examination after approval of the text
6.1 When does the examining division resume examination after approval?
6.2 A further communication under Rule 71(3)
6.3 Crediting of fees under Rule 71a(5)
7. Correction of errors in the decision to grant
8. Further processing
9. Refund of the fee for grant and publishing
10. Publication of the patent specification
11. Withdrawal before publication of the patent specification
12. Certificate
13. European Patent Bulletin
14. Refusal
15. Decision according to the state of the file
15.1 The request for a decision according to the state of the file
15.2 Decision by means of a standard form
15.3 Issuing a self-contained decision
15.4 Issuing a further communication (no refusal)
Annex – Standard marks for indicating amendments or corrections by the divisions
Chapter VI – Time limits and acceleration of examination
1. Time limits for response to communications from the examiner
1.1 General considerations
1.2 Special circumstances
2. Influencing the speed of examination proceedings – PACE
3. Further ways to accelerate examination
Chapter VII – Other procedures in examination
1. General remark
2. Consultations
2.1 General
2.2 Persons participating in the consultation
2.3 Informal nature of consultations
2.4 Minutes of a consultation
2.5 Minutes as the first communication in examination
3. Use of email
3.1 Initiation of exchanges by email
3.2 Confidentiality
3.3 Inclusion in the file of any email exchange
4. Taking of evidence
4.1 General remark
4.2 Producing evidence
4.3 Written evidence
5. Oral proceedings
6. Examination of observations by third parties
Chapter VIII – Work within the examining division
1. General remarks
2. Recommendation to grant
3. Recommendation to refuse
4. Tasks of the other members of the examining division
5. Further communication with the applicant
5.1 When can a summons to oral proceedings be issued in substantive examination?
6. Decision
7. Enlargement of the examining division; consultation of a legally qualified member
Chapter IX – Special applications
1. Divisional applications (see also A‑IV, 1)
1.1 General remarks
1.2 Voluntary and mandatory division
1.3 Abandonment of subject-matter
1.4 Examination of a divisional application
1.5 Description and drawings
1.6 Claims
2. Applications resulting from a decision under Art. 61
2.1 General remarks
2.2 Original application no longer pending
2.3 Partial entitlement
2.4 Entitlement for certain designated states only
3. Applications where a reservation has been entered in accordance with Art. 167(2)(a) EPC 1973
4. International applications (Euro-PCT applications)
Part D – Guidelines for Opposition and Limitation/Revocation Procedures
Chapter I – General remarks
1. The meaning of opposition
2. Opposition after surrender or lapse
3. Territorial effect of the opposition
4. Entitlement to oppose
5. Intervention of the assumed infringer
6. Parties to opposition proceedings
7. Representation
8. Information to the public
Chapter II – The opposition division
1. Administrative structure
2. Composition
2.1 Technically qualified members
2.2 Legally qualified members
2.3 Chair
3. Allocation of duties and appointment of members of the opposition division
4. Tasks of the opposition divisions
4.1 Examination of oppositions
4.2 Decision concerning the awarding of costs by the opposition division
4.3 Ancillary proceedings
5. Allocation of tasks to members
6. Duties and powers of members
7. Allocation of individual duties
Chapter III – Opposition
1. Time allowed for filing notice of opposition
2. Opposition fee
3. Submission in writing
3.1 Form of the opposition
3.2 Notices of opposition filed electronically
3.3 Notices of opposition filed by fax
3.4 Signature of the notice of opposition
4. Derogations from language requirements
5. Grounds for opposition
6. Content of the notice of opposition
Chapter IV – Procedure up to substantive examination
1. Examination for deficiencies in the notice of opposition and communications from the formalities officer arising from this examination
1.1 Forwarding of the notice of opposition to the formalities officer
1.2 Examination for deficiencies in the notice of opposition
1.2.1 Deficiencies which, if not remedied, lead to the opposition being deemed not to have been filed
1.2.2 Deficiencies which, if not remedied, lead to the opposition being rejected as inadmissible
1.2.2.1 Deficiencies under Rule 77(1)
1.2.2.2 Deficiencies under Rule 77(2)
1.3 Issue of communications by the formalities officer as a result of examination for deficiencies
1.3.1 Communication in the event of deficiencies as described in D‑IV, 1.2.1 which, if not remedied, will lead to the opposition being deemed not to have been filed
1.3.2 Communication in the event of deficiencies as described in D‑IV, 1.2.2 which, if not remedied, will lead to rejection of the opposition as inadmissible
1.3.3 Extent of the formalities officer's obligation to issue the above communications
1.4 Subsequent procedure in the event of deficiencies which may no longer be remedied
1.4.1 Deficiencies which may no longer be remedied, as a result of which the opposition is deemed not to have been filed
1.4.2 Deficiencies which may no longer be remedied in accordance with Rule 77(1) and (2), resulting in the opposition being rejected as inadmissible
1.5 Notifications to and observations by the patent proprietor
1.6 Subsequent procedure
2. Activity of the opposition division
3. Rejection of the opposition as inadmissible by the opposition division, the patent proprietor not being a party
4. Termination of opposition proceedings in the event of inadmissible opposition
5. Preparation of substantive examination
5.1 Inadmissibility at a later stage
5.2 Invitation to the patent proprietor to submit comments and communication of opposition to the other parties concerned by the formalities officer
5.3 Filing of amended documents in reply to the notice of opposition
5.4 Communication of observations from one of the parties to the other parties
5.5 Decision concerning the admissibility of an opposition, the patent proprietor being a party
5.6 Examination of the admissibility of an intervention and preparations in the event of an intervention
Chapter V – Substantive examination of opposition
1. Beginning of the examination of the opposition
2. Extent of the examination
2.1 Extent to which the patent is opposed
2.2 Examination of the grounds for opposition
3. Non-patentability pursuant to Art. 52 to 57
4. Insufficient disclosure of the invention
5. Clarity of claims and support by the description
6. Subject-matter of the European patent extending beyond the original disclosure
6.1 Basis of this ground for opposition
6.2 Distinction between allowable and unallowable amendments
Chapter VI – Procedure for the examination of the opposition
1. General remarks
2. Adherence to the text of the European patent submitted or approved by the patent proprietor
2.1 Basis for the examination
2.2 Revocation of the patent
3. Invitation to file observations
3.1 Opposition division's communications
3.2 Summons to oral proceedings
4. Communications from the opposition division to the patent proprietor
4.1 Communications from the opposition division; reasoned statement
4.2 Invitation to file amended documents
5. Additional search
6. Examination of the opposition during oral proceedings
7. Preparation of the decision
7.1 General remarks
7.2 Preparation of a decision to maintain a European patent in amended form
7.2.1 Procedural requirements
7.2.2 Decision on the documents on the basis of which the patent is to be maintained
7.2.3 Request for publishing fee, translations and a formally compliant version of amended text passages
8. Request to stay opposition proceedings
Chapter VII – Details and special features of the proceedings
1. Sequence of proceedings
1.1 Basic principle
1.2 Exceptions
2. Request for documents
3. Unity of the European patent
3.1 Basic principle
3.2 Factors affecting the unity of the European patent
4. Procedure where the patent proprietor is not entitled
4.1 Stay of proceedings
4.1.1 Date of the stay of proceedings
4.1.2 Legal character and effect of the stay of proceedings
4.2 Continuation of proceedings
4.2.1 Continuation after a final decision
4.2.2 Continuation regardless of the stage reached in national proceedings
4.3 Interruption of time limits
4.4 Department responsible
5. Continuation of the opposition proceedings in the cases covered by Rule 84
5.1 Continuation in the case of surrender or lapse of the patent
5.2 Continuation on the death or legal incapacity of the opponent
5.3 Continuation after the opposition has been withdrawn
6. Intervention of the assumed infringer
7. Publication of a new specification of the patent
8. Transitional provisions for Art. 54(4) EPC 1973 and Art. 54(5)
Chapter VIII – Decisions of the opposition division
1. Final decisions on an admissible opposition
1.1 General remarks
1.2 Revocation of the European patent
1.2.1 Revocation on substantive grounds
1.2.2 Revocation for failure to pay the prescribed fee for publishing, to file a translation or to file a formally compliant version of amended text passages
1.2.3 Revocation for failure to notify the appointment of a new representative
1.2.4 Revocation in the event of requirements not being met until after expiry of time limits
1.2.5 Revocation of the patent in the event that the patent proprietor no longer wishes the patent to be maintained as granted
1.3 Rejection of the opposition
1.4 Maintenance of the European patent as amended
1.4.1 Taking of a final decision
1.4.2 Statement in the decision of the amended form of the European patent
2. Other decisions
2.1 Decision on the inadmissibility of an opposition or intervention
2.2 Decisions which do not terminate proceedings
2.3 Decision on a notified loss of rights at the request of the person concerned
2.4 Decision on re-establishment of rights
2.5 Decision on closure of the opposition proceedings
Chapter IX – Costs
1. Charging of costs
1.1 General principle
1.2 Decisions on the apportionment of costs
1.3 Costs to be taken into consideration
1.4 Principle of equity
2. Procedure for the fixing of costs
2.1 Fixing of costs by the opposition division
2.2 Appeal against the fixing of costs by the opposition division
3. Enforcement of the fixing of costs
Chapter X – Limitation and revocation procedure
1. Introduction
2. Examination for deficiencies in the request
2.1 Deficiencies which lead to the request being deemed not to have been filed
2.2 Deficiencies which, if not remedied, lead to the request being rejected as inadmissible
3. Decision on request for revocation
4. Substantive examination (limitation)
4.1 Department responsible
4.2 Basis for the examination
4.3 Scope of the examination
4.4 Further stages of the examination
4.5 Third-party observations during the examination
5. Formal procedure for limitation when the request is allowable
6. Rejection of the request
7. Relation to opposition proceedings
7.1 Precedence of opposition proceedings
7.2 Filing of opposition after decision on limitation
8. Legal status of decisions
9. Withdrawal of the request
10. Different sets of claims
10.1 Limitation results in the claims becoming different in different contracting states
10.2 Limitation is different for different contracting states because the claims as granted were different for different contracting states
11. Multiple requests
Part E – Guidelines on General Procedural Matters
Chapter I – Introduction
Chapter II – Communications and notifications
1. Communications
1.1 General remarks
1.2 Number of communications
1.3 Form of decisions, communications and notices
2. Notification
2.1 General remarks
2.2 Method of notification
2.3 Electronic notification
2.4 Notification by postal services
2.5 Notification to representatives
2.6 Irregularities in the notification
Chapter III – Oral proceedings
1. General
1.1 Introduction
1.2 Format of oral proceedings
1.3 Request for oral proceedings to be held on EPO premises
1.4 Request to hold on-site oral proceedings at a particular site
2. Oral proceedings at the request of a party
2.1 Request for oral proceedings by an opponent whose opposition is to be rejected as inadmissible or is deemed not to have been filed
3. Request for further oral proceedings
4. Oral proceedings at the instance of the EPO
5. Preparation of oral proceedings
5.1 When can a summons to oral proceedings be issued in substantive examination?
6. Summons to oral proceedings
7. Change of date, cancellation or maintenance of oral proceedings
7.1 Changing the date of oral proceedings
7.1.1 Requests to change the date of oral proceedings
7.1.2 Change of date of oral proceedings at the instigation of the division
7.1.3 Change of date of oral proceedings – defined notice period
7.2 Cancellation or maintenance of oral proceedings
7.2.1 General
7.2.2 Withdrawal of the request for oral proceedings
8. Conduct of oral proceedings
8.1 Admission of the public to proceedings
8.2 Conduct of oral proceedings
8.2.1 Participation of parties and their representatives from different locations
8.2.2 Participation of members of the division from different locations
8.2.3 Technical problems
8.2.4 Recording
8.3 Opening of oral proceedings; non-appearance of a party
8.3.1 Checking the identity and authorisations of participants at oral proceedings
8.3.2 Opening the oral proceedings
8.3.3 Late arrival, non-appearance and failure to connect
8.3.3.1 General
8.3.3.2 Procedure in opposition proceedings
8.3.3.3 Procedure in examination proceedings
8.4 Opening of the substantive part of the proceedings
8.5 Submissions by the parties
8.5.1 Use of computer-generated slideshows in oral proceedings
8.5.1.1 Opposition proceedings (inter partes)
8.5.1.2 Examination proceedings (ex parte)
8.5.2 Written submissions during oral proceedings by videoconference
8.6 Facts, evidence or amendments introduced at a late stage
8.7 Handwritten amendments in oral proceedings
8.7.1 General principles
8.7.2 Procedure in examination proceedings
8.7.3 Procedure in opposition proceedings
8.8 Use of Rule 137(4) for amendments filed during oral proceedings in examination
8.9 Discussion of the facts and of the legal position
8.10 Right of the other members of the division to put questions
8.11 Closure of oral proceedings
8.11.1 Requesting postponement during oral proceedings
8.11.2 Adjournment of oral proceedings due to lack of time
9. Delivery of the decision
10. Minutes of oral proceedings
10.1 Formal requirements
10.2 Language
10.3 Subject-matter of minutes
10.4 Request for correction of minutes
Chapter IV – Taking and conservation of evidence
1. Taking of evidence by the departments of the EPO
1.1 General remarks
1.2 Means of evidence
1.3 Taking of evidence
1.4 Order to take evidence
1.5 Summoning of parties, witnesses and experts
1.6 Hearing of parties, witnesses and experts
1.6.1 General remarks
1.6.2 Witnesses and experts not summoned
1.6.3 Guidance to persons heard
1.6.4 Separate hearings
1.6.5 Examination as to personal particulars
1.6.6 Examination as to res gestae
1.6.7 Entitlement of parties to put questions at hearings
1.6.8 Hearing of a witness no longer necessary
1.7 Minutes of taking of evidence
1.8 Commissioning of experts
1.8.1 Decision on the form of the opinion
1.8.2 Objection to an expert
1.8.3 Terms of reference of the expert
1.9 Costs arising from oral proceedings or taking of evidence
1.10 Entitlements of witnesses and experts
1.10.1 Expenses for travel and subsistence
1.10.2 Loss of earnings, fees
1.10.3 Details of the entitlements of witnesses and experts
1.11 Models
1.11.1 When may models be submitted?
1.11.2 Procedure
1.11.3 Keeping the model
1.12 Video recordings
2. Conservation of evidence
2.1 Requirements
2.2 Request for the conservation of evidence
2.3 Competence
2.4 Decision on the request and the taking of evidence
3. Taking of evidence by courts or authorities of the contracting states
3.1 Legal co-operation
3.2 Means of giving or taking evidence
3.2.1 Taking of evidence on oath
3.2.2 Evidence taken by a competent court
3.3 Letters rogatory
3.4 Procedures before the competent authority
3.5 Costs of taking evidence
3.6 Taking of evidence by an appointed person
4. Evaluation of evidence
4.1 General remarks
4.2 Types of evidence
4.3 Examination of evidence
4.4 Asking for evidence
4.5 Evaluation of the testimony of a witness
4.6 Evaluation of the testimony of parties
4.7 Evaluation of an expert opinion
4.8 Evaluation of an inspection
Chapter V – Derogations from the language of the proceedings in oral proceedings
1. Use of an official language
2. Language of a contracting state or other language
3. Exceptions from sections 1 and 2
4. Language used in the taking of evidence
5. Language used by employees of the EPO
6. Language used in the minutes
Chapter VI – Examination by the EPO of its own motion; facts, evidence or grounds not submitted in due time; observations by third parties
1. Examination by the EPO of its own motion
1.1 General remarks
1.2 Limits on the obligation to undertake examination
2. Late-filed submissions
2.1 General principles in opposition proceedings
2.2 Submissions filed in preparation for or during oral proceedings
2.2.1 New facts and evidence
2.2.2 Amendments filed in preparation for or during oral proceedings
2.2.3 Principles relating to the exercise of discretion
2.2.4 Right to be heard
2.2.5 Costs
3. Observations by third parties
4. External complaints
Chapter VII – Interruption, stay and consolidation of the proceedings
1. Interruption
1.1 Cases in which the proceedings may be interrupted
1.2 Responsible department
1.3 Date of interruption
1.4 Resumption of proceedings
1.5 Resumption of time limits
2. Stay of proceedings under Rule 14 due to pending national entitlement proceedings
3. Stay of proceedings when a referral to the Enlarged Board of Appeal is pending
4. Consolidation of proceedings
Chapter VIII – Time limits, loss of rights, further and accelerated processing and re-establishment of rights
1. Time limits and loss of rights resulting from failure to respond within a time limit
1.1 Determination of time limits
1.2 Duration of the periods to be specified by the EPO on the basis of EPC provisions
1.3 Time limits which may be freely determined
1.4 Calculation of time limits
1.5 Effect of change in priority date
1.6 Extension of a time limit
1.6.1 Extension of time limits set by the EPO under Rule 132
1.6.2 Extension of periods under Rule 134
1.6.2.1 Extension of periods under Rule 134(1)
1.6.2.2 Extension of periods under Rule 134(2) and Rule 134(5)
1.6.2.3 Scope of application of Rule 134
1.7 Late receipt of documents
1.8 Failure to respond within a time limit
1.9 Loss of rights
1.9.1 Cases of loss of rights
1.9.2 Noting and communication of loss of rights
1.9.3 Decision on loss of rights
2. Further processing
3. Re-establishment of rights
3.1 Admissibility of the request
3.1.1 Time limits covered
3.1.2 Entitlement to file the request
3.1.3 Form of the request and applicable time limit
3.1.4 Substantiation of the request
3.2 Merit of the request
3.3 Decision on re-establishment of rights
4. Accelerated prosecution of European patent applications
4.1 Accelerated search
4.2 Accelerated examination
4.3 Patent Prosecution Highway (PPH)
5. Accelerated processing of oppositions
6. Accelerated processing before the boards of appeal
7. Enquiries
8. Renunciation of rights
8.1 Withdrawal of application or designation
8.2 Withdrawal of priority claim
8.3 Statement of withdrawal
8.4 Surrender of patent
Chapter IX – Applications under the Patent Cooperation Treaty (PCT)
1. General remarks
2. EPO as designated or elected Office
2.1 Entry into the European phase
2.1.1 Requirements for entry into the European phase
2.1.2 Initial processing and formal examination; copy of the international application
2.1.3 Translation of the international application
2.1.4 Filing fee, designation fee, request for examination and search fee
2.2 Instructions in Chapter A‑II ("Filing of applications and examination on filing")
2.3 Instructions in Chapter A‑III ("Examination of formal requirements")
2.3.1 Representation, address for correspondence
2.3.2 Physical requirements
2.3.3 Request for grant
2.3.4 Designation of inventor
2.3.5 Claim to priority
2.3.5.1 Priority document
2.3.5.2 Information on prior art
2.3.5.3 Restoration of priority
2.3.6 Title of the invention
2.3.7 Prohibited matter
2.3.8 Claims fee
2.3.9 Drawings
2.3.10 Abstract
2.3.11 Designation fee
2.3.12 Renewal fees
2.4 Instructions in Chapter A‑IV ("Special provisions")
2.4.1 Divisional applications
2.4.2 Sequence listings
2.4.3 Certificate of exhibition
2.4.4 Biological material
2.5 Instructions in Chapter A‑VI ("Publication of application; request for examination and transmission of the dossier to examining division")
2.5.1 Publication of the international application
2.5.2 Request for examination
2.5.3 Supplementary European search
2.6 Reduction and refunds of fees in respect of international (PCT) applications
2.7 Communication to the EPO as a designated Office
2.8 Early processing
2.9 Review by the EPO as a designated/elected Office and rectification of errors made by the receiving Office or the International Bureau
2.9.1 Review by the EPO under Art. 25 PCT
2.9.2 Review by the EPO under Art. 24 PCT and excuse of delays under Art. 48(2) PCT
2.9.3 Rectification of errors made by the receiving Office or the International Bureau
2.9.4 Determination of filing date in the case of erroneously filed elements or parts of the international application
2.10 Inspection of files
3. The communication according to Rule 161
3.1 Applications for which a supplementary European search report is prepared
3.2 Applications for which no supplementary European search report is prepared
3.3 Exceptions where a reply to the Rule 161(1) invitation is not required
3.3.1 Earlier filed amendments or comments
3.3.2 Positive WO‑ISA, SISR or IPER
3.3.3 Rule 161 communication issued before 1 April 2010
3.3.4 Voluntary reply to Rule 161(1) communication
3.4 Rule 137(4) applies
4. Examination procedure
4.1 At least one communication in examination
4.2 No examination of multiple inventions in EP phase
4.3 Substantive examination of a Euro-PCT application accompanied by an IPER
4.3.1 Comparative test results
4.3.2 Basis for substantive examination
4.3.3 Consideration of the contents of the IPER
Chapter X – Decisions
1. Basic principles of decisions
1.1 General remarks
1.2 Consideration of time limits
1.3 Form and content
1.3.1 Order
1.3.2 Facts and submissions
1.3.3 Reasoning
2. Decisions taken by the examining or opposition divisions
2.1 Right to be heard
2.2 Authoritative text of documents
2.3 Requirements as to form
2.4 Facts and submissions
2.5 Decision on the file as it stands
2.6 Reasoning of decisions
2.7 Content
2.8 Analysing the parties' arguments
2.9 Main and auxiliary requests
2.10 Late-filed submissions
2.11 Refusal to admit amendments under Rule 137(3)
3. Decisions which do not terminate proceedings – interlocutory decisions
4. Binding nature of decisions on appeals
5. Information as to means of redress
6. Notification
7. Expiry of the term of the European patent
Chapter XI – Impartiality of divisions
Chapter XII – Appeals
1. Suspensive effect
2. Appeals after surrender or lapse of the patent
3. Appeals against the apportionment of costs
4. Appeals against the decision of the opposition division on the fixing of costs
5. Persons entitled to appeal and to be parties to appeal proceedings
6. Time limit and form of appeal
7. Interlocutory revision
7.1 General remarks
7.2 Remittal to the board of appeal
7.3 Reimbursement of appeal fees
7.4 Examples
7.4.1 No amended claims filed with the appeal
7.4.2 Amended main/single request filed with the appeal
7.4.3 Main and auxiliary requests filed with the appeal
7.4.4 Response to communication pursuant to Rule 58 filed with the appeal
8. Rules of Procedure of the Boards of Appeal
9. Remittal to the examining or opposition division after appeal
Chapter XIII – Request from a national court for a technical opinion concerning a European patent
1. General
2. Scope of the technical opinion
3. Composition and duties of the examining division
3.1 Composition
3.2 Duties
4. Language to be used
5. Procedure
5.1 Formalities check
5.2 Preliminary examination
5.3 Withdrawal of the request
5.4 Establishment and issue of the technical opinion
5.5 File inspection
5.6 Appearance before the national court
Chapter XIV – Registration of changes of name, transfers, licences and other rights
1. General
2. Responsible department
3. Transfer of the European patent application
4. Transfer of the European patent
5. Changes of name
6. Licences and other rights
6.1 Registration
6.2 Cancellation of the registration
Part F – The European Patent Application
Chapter I – Introduction
Chapter II – Content of a European patent application (other than claims)
1. General
2. Abstract
2.1 Purpose of the abstract
2.2 Definitive content
2.3 Content of the abstract
2.4 Figure accompanying the abstract
2.5 Checklist
2.6 Transmittal of the abstract to the applicant
2.7 Abstract in examination
3. Request for grant – the title
4. Description (formal requirements)
4.1 General remarks
4.2 Technical field
4.3 Background art
4.3.1 Format of background art citations
4.3.1.1 Examples of quotation for non-patent literature
4.3.1.2 Examples of quotation for patent literature
4.4 Irrelevant matter
4.5 Technical problem and its solution
4.6 Rule 42(1)(c) vs. Art. 52(1)
4.7 Reference in the description to drawings
4.8 Reference signs
4.9 Industrial application
4.10 Manner and order of presentation
4.11 Terminology
4.12 Computer programs
4.13 Physical values, units
4.14 Registered trade marks
5. Drawings
5.1 Form and content
5.2 Printing quality
5.3 Photographs
6. Sequence listings
6.1 Reference to sequences disclosed in a database
6.2 Sequences that need to be itemised in the sequence listing
6.2.1 Requirements relating to sequence length and enumeration of residues
6.2.2 Sequences comprising residues that are not specifically defined (n or X)
6.2.3 Variants
6.2.4 The qualifier "mol_type"
7. Prohibited matter
7.1 Categories
7.2 Matter contrary to "ordre public" or morality
7.3 Disparaging statements
7.4 Irrelevant or unnecessary matter
7.5 Omission of matter from publication
Annex 1 – Checklist for considering the abstract (see F‑II, 2.5)
Annex 2 – Units recognised in international practice as determined by the President under Rule 49(2) (see F‑II, 4.13)
1. SI units and their decimal multiples and submultiples
1.1 SI base units
1.1.1 Special name and symbol of the SI derived unit of temperature for expressing Celsius temperature
1.2 SI derived units
1.2.1 General rule for SI derived units
1.2.2 SI derived units with special names and symbols
1.3 Prefixes and their symbols used to designate certain decimal multiples and submultiples
1.4 Special authorised names and symbols of decimal multiples and submultiples of SI units
2. Units which are defined on the basis of SI units but are not decimal multiples or submultiples thereof
3. Units used with the SI, and whose values in SI are obtained experimentally
4. Units and names of units permitted in specialised fields only
5. Compound units
Chapter III – Sufficiency of disclosure
1. Sufficiency of disclosure
2. Art. 83 vs. Art. 123(2)
3. Insufficient disclosure
4. Burden of proof as regards the possibility of performing and repeating the invention
5. Cases of partially insufficient disclosure
5.1 Only variants of the invention are incapable of being performed
5.2 Absence of well-known details
5.3 Difficulties in performing the invention
6. Inventions relating to biological material
6.1 Biological material
6.2 Public availability of biological material
6.3 Deposit of biological material
6.4 Priority claim
6.5 Euro-PCT cases
7. Proper names, trade marks and trade names
8. Reference documents
9. "Reach-through" claims
10. Sufficiency of disclosure and Rules 56 and 56a
11. Sufficiency of disclosure and clarity
12. Sufficiency of disclosure and inventive step
Chapter IV – Claims (Art. 84 and formal requirements)
1. General
2. Form and content of claims
2.1 Technical features
2.2 Two-part form
2.3 Two-part form unsuitable
2.3.1 No two-part form
2.3.2 Two-part form "wherever appropriate"
2.4 Formulae and tables
3. Kinds of claim
3.1 Categories
3.2 Number of independent claims
3.3 Objection under Rule 43(2) or Rule 137(5)
3.4 Independent and dependent claims
3.5 Arrangement of claims
3.6 Subject-matter of a dependent claim
3.7 Alternatives in a claim
3.8 Independent claims containing a reference to another claim or to features from a claim of another category
3.9 Claims directed to computer-implemented inventions
3.9.1 Cases where all method steps can be fully implemented by generic data processing means
3.9.2 Cases where method steps define additional devices and/or specific data processing means
3.9.3 Cases where the invention is realised in a distributed computing environment
4. Clarity and interpretation of claims
4.1 Clarity
4.2 Interpretation
4.3 Inconsistencies
4.4 General statements, "spirit of the invention", claim-like clauses
4.5 Essential features
4.5.1 Objections arising from missing essential features
4.5.2 Definition of essential features
4.5.3 Generalisation of essential features
4.5.4 Implicit features
4.5.5 Examples
4.6 Relative terms
4.6.1 Clarity objections
4.6.2 Interpretation of relative terms
4.7 Terms such as "about", "approximately" or "substantially"
4.7.1 Interpretation of terms such as "about", "approximately" or "substantially"
4.7.2 Clarity objections
4.8 Trade marks
4.9 Optional features
4.10 Result to be achieved
4.11 Parameters
4.11.1 Unusual parameters
4.12 Product-by-process claim
4.12.1 Product claim with process features
4.13 Interpretation of expressions stating a purpose
4.13.1 Interpretation of expressions such as "Apparatus for ...", "Product for ... "
4.13.2 Interpretation of means-plus-function features ("means for ... ")
4.13.3 Interpretation of expressions such as "Method for ..."
4.14 Definition by reference to (use with) another entity
4.14.1 Clarity objections
4.14.2 Dimensions and/or shape defined by reference to another entity
4.15 The expression "in"
4.16 Use claims
4.17 References to the description or drawings
4.18 Reference signs
4.19 Negative limitations (e.g. disclaimers)
4.20 "Comprising" vs. "consisting of"
4.21 Functional definition of a pathological condition
4.22 Broad claims
4.23 Order of claims
4.24 Interpretation of terms such as identity and similarity in relation to amino or nucleic acid sequences
5. Conciseness, number of claims
6. Support in description
6.1 General remarks
6.2 Extent of generalisation
6.3 Objection of lack of support
6.4 Lack of support vs. insufficient disclosure
6.5 Definition in terms of function
6.6 Support for dependent claims
Annex – Examples concerning essential features
Chapter V – Unity of invention
1. Introduction
2. Requirement of unity of invention
2.1 Insufficient grounds for lack of unity
2.2 Division's approach
3. Assessment of unity
3.1 Non-unity and prior art
3.1.1 Non-unity and prior art under Art. 54(3)
3.1.2 Non-unity and prior art under Art. 54(2)
3.2 Grouping of inventions
3.2.1 Plurality of independent claims in the same category
3.2.2 Plurality of independent claims in different categories
3.2.3 Dependent claims
3.2.4 Common dependent claims
3.2.5 Markush grouping (alternatives in a single claim)
3.2.6 Claims for a known substance for a number of distinct medical uses
3.2.7 Intermediate and final products
3.3 Reasoning for a lack of unity objection
3.3.1 Minimum requirements for reasoning of lack of unity
3.4 Determination of the invention first mentioned in the claims
4. Procedure in the case of lack of unity during search
4.1 Provisional opinion accompanying the partial search results
4.2 Consequences for the applicant
5. Procedure in the case of lack of unity during substantive examination
5.1 General principles
5.2 Objections to unsearched inventions
5.3 Review of non-unity findings
6. Amended claims
7. Euro-PCT applications
7.1 International applications without supplementary search
7.2 International applications with supplementary search
7.3 International preliminary examination report (IPER)
7.4 Restricted IPER
Chapter VI – Priority
1. The right to priority
1.1 Filing date as effective date
1.2 Priority date as effective date
1.3 Validly claiming priority
1.4 First application
1.4.1 Subsequent application considered as first application
1.5 Multiple priorities and partial priorities
2. Determining priority dates
2.1 Examining the validity of a right to priority
2.2 The same invention
2.3 Priority claim not valid
2.4 Some examples of determining priority dates
2.4.1 Intermediate publication of the contents of the priority application
2.4.2 Intermediate publication of another European application
2.4.3 Multiple priorities claimed for different inventions in the application with an intermediate publication of one of the inventions
2.4.4 A situation in which it has to be checked whether the application from which priority is actually claimed is the "first application" within the meaning of Art. 87(1)
3. Claiming priority
3.1 General remarks
3.2 Declaration of priority
3.3 Certified copy of the previous application (priority document)
3.4 Translation of the previous application
3.5 Withdrawal of priority claim
3.6 Re-establishment of rights in respect of the priority period
Part G – Patentability
Chapter I – Patentability
1. Patentability requirements
2. Technical progress, advantageous effect
Chapter II – Inventions
1. General remarks
2. Examination practice
3. List of exclusions
3.1 Discoveries
3.2 Scientific theories
3.3 Mathematical methods
3.3.1 Artificial intelligence and machine learning
3.3.2 Simulation, design or modelling
3.4 Aesthetic creations
3.5 Schemes, rules and methods for performing mental acts, playing games or doing business
3.5.1 Schemes, rules and methods for performing mental acts
3.5.2 Schemes, rules and methods for playing games
3.5.3 Schemes, rules and methods for doing business
3.6 Programs for computers
3.6.1 Examples of further technical effects
3.6.2 Information modelling, activity of programming and programming languages
3.6.3 Data retrieval, formats and structures
3.6.4 Database management systems and information retrieval
3.7 Presentations of information
3.7.1 User interfaces
4. Exceptions to patentability
4.1 Matter contrary to "ordre public" or morality
4.1.1 Prohibited matter
4.1.2 Offensive and non-offensive use
4.1.3 Economic effects
4.2 Surgery, therapy and diagnostic methods
4.2.1 Limitations of exception under Art. 53(c)
4.2.1.1 Surgery
4.2.1.2 Therapy
4.2.1.3 Diagnostic methods
4.2.2 Methods for screening potential medicaments and clinical trials
5. Exclusions and exceptions for biotechnological inventions
5.1 General remarks and definitions
5.2 Patentable biotechnological inventions
5.3 List of exceptions (Rule 28)
5.4 Plant and animal varieties or essentially biological processes for the production of plants or animals
5.4.1 Plant varieties
5.4.2 Essentially biological processes for the production of plants or animals
5.4.2.1 Examples
5.5 Microbiological processes
5.5.1 General remarks
5.5.2 Repeatability of results of microbiological processes
6. Antibodies
6.1 General remarks
6.1.1 Definition by structure of the antibody
6.1.2 Definition by reference to the target antigen
6.1.3 Definition by target antigen and further functional features
6.1.4 Definition by functional and structural features
6.1.5 Definition by production process
6.1.6 Definition by hybridoma
6.2 Inventive step of antibodies
Chapter III – Industrial application
1. General remarks
2. Method of testing
3. Industrial application vs. exclusion under Art. 52(2)
4. Sequences and partial sequences of genes
Chapter IV – State of the art
1. General remarks and definition
2. Enabling disclosure
3. Date of filing or priority date as effective date
4. Documents in a non-official language
4.1 Machine translations
5. Conflict with other European applications
5.1 State of the art pursuant to Art. 54(3)
5.1.1 Requirements
5.1.2 Accorded date of filing and content of the application still subject to review
5.2 Euro-PCT applications
5.3 Commonly designated states
5.4 Double patenting
6. Conflict with national rights of earlier date
7. State of the art made available to the public "by means of a written or oral description, by use, or in any other way"
7.1 Types of use and instances of state of the art made available in any other way
7.2 Matters to be determined by the division as regards prior use
7.2.1 General principles
7.2.2 Agreement on secrecy
7.2.3 Use on non-public property
7.2.4 Example of the accessibility of objects used
7.2.5 Example of the inaccessibility of a process
7.3 State of the art made available by means of oral description
7.3.1 Cases of oral description
7.3.2 Non-prejudicial oral description
7.3.3 Matters to be determined by the division in cases of oral description
7.3.4 Standard of proof
7.4 State of the art made available to the public in writing and/or by any other means
7.5 Internet disclosures
7.5.1 Establishing the publication date
7.5.2 Standard of proof
7.5.3 Burden of proof
7.5.3.1 Technical journals
7.5.3.2 Other "print equivalent" publications
7.5.3.3 Non-traditional publications
7.5.4 Disclosures which have no date or an unreliable date
7.5.5 Problematic cases
7.5.6 Technical details and general remarks
7.6 Standards and standard preparatory documents
8. Cross-references between prior-art documents
9. Errors in prior-art documents
Chapter V – Non-prejudicial disclosures
1. General
2. Time limit
3. Evident abuse
4. International exhibition
Chapter VI – Novelty
1. State of the art pursuant to Art. 54(2)
2. Implicit features or well-known equivalents
3. Relevant date of a prior-art document
4. Generic disclosure and specific examples
5. Implicit disclosure and parameters
6. Examination of novelty
6.1 First or further medical use of known products
6.1.1 Products that may be claimed for a further medical use
6.1.2 Therapeutic uses pursuant to Art. 54(5)
6.1.3 Diagnostic uses pursuant to Art. 54(5)
6.1.4 Surgical uses pursuant to Art. 54(5)
6.1.5 Dependent claims pursuant to Art. 54(5)
6.2 Second non-medical use
7. Selection inventions
7.1 Error margins in numerical values
8. Novelty of "reach-through" claims
Chapter VII – Inventive step
1. General
2. State of the art; date of filing
3. Person skilled in the art
3.1 Common general knowledge of the skilled person
4. Obviousness
5. Problem-solution approach
5.1 Determination of the closest prior art
5.2 Formulation of the objective technical problem
5.3 Could-would approach
5.4 Claims comprising technical and non-technical features
5.4.1 Formulation of the objective technical problem for claims comprising technical and non-technical features
5.4.2 Examples of applying the COMVIK approach
5.4.2.1 Example 1
5.4.2.2 Example 2
5.4.2.3 Example 3
5.4.2.4 Example 4
5.4.2.5 Example 5
6. Combining pieces of prior art
7. Combination vs. juxtaposition or aggregation
8. "Ex post facto" analysis
9. Origin of an invention
10. Secondary indicators
10.1 Predictable disadvantage; non-functional modification; arbitrary choice
10.2 Unexpected technical effect; bonus effect
10.3 Long-felt need; commercial success
11. Arguments and evidence submitted by the applicant
12. Selection inventions
13. Inventive step assessment in the field of biotechnology
14. Dependent claims; claims in different categories
15. Examples
Annex – Examples relating to the requirement of inventive step – indicators
1. Application of known measures?
2. Obvious combination of features?
3. Obvious selection?
4. Overcoming a technical prejudice?
Part H – Amendments and Corrections
Chapter I – The right to amend
Chapter II – Admissibility of amendments – general rules
1. Introduction
2. Admissibility in the examination procedure
2.1 Before receipt of the search report – Rule 137(1)
2.2 After receipt of the search report – Rule 137(2)
2.3 After receipt of the first communication – Rule 137(3)
2.3.1 Examples of the exercise of discretion under Rule 137(3)
2.3.1.1 Rule 137(3) in conjunction with Art. 83
2.3.1.2 Rule 137(3) in conjunction with Art. 123(2)
2.3.1.3 Rule 137(3) in conjunction with Art. 84 – missing essential feature
2.3.1.4 Rule 137(3) in conjunction with auxiliary requests
2.4 At an advanced stage of the proceedings
2.5 Amendments filed in reply to a Rule 71(3) communication
2.5.1 Criteria for admitting such amendments
2.5.2 Further course of proceedings
2.5.3 Exceptional case where amendments must be admitted
2.5.4 Rule 137(4) applies to amendments filed at this stage
2.6 Further requests for amendment after approval
2.7 Late-filed requests after summons to oral proceedings in examination
2.7.1 Concept of "clear allowability"
3. Admissibility in opposition procedure
3.1 Amendments in reply to the notice of opposition
3.2 Amendments not related to the grounds for opposition
3.3 Amendments occasioned by national rights
3.4 Insistence on inadmissible amendments
3.5 Late-filed requests in opposition proceedings
4. Amendments in limitation procedure
5. Amendments required by a limitation of the search under Rule 62a and/or Rule 63
6. Amendments in the case of non-unity
6.1 Restriction to a single, searched invention
6.2 Restriction to an unsearched invention
6.3 No restriction to a single invention searched
6.4 Further procedural aspects concerning Euro-PCT applications
6.4.1 Where the EPO does not perform a supplementary search
6.4.2 Where the EPO performs a supplementary search
Chapter III – Admissibility of amendments – other procedural matters
1. Introduction
2. Procedure for amendments to documents
2.1 Indication of amendments and their basis under Rule 137(4)
2.1.1 Rule 137(4) communication and response thereto
2.1.2 Amendments withdrawn or superseded in the Rule 137(4) period
2.1.3 Rule 137(4) and oral proceedings
2.1.4 Transitional provisions relating to Rule 137(4)
2.2 Amendment by submitting missing documents or by filing replacement pages
2.3 Amendments using copies
2.4 Amendments made by the EPO at the request of a party
2.5 Withdrawal of amendments/abandonment of subject matter
3. Auxiliary requests
3.1 General principles
3.1.1 Sequence of requests
3.1.2 Obligation to give reasons
3.1.3 Neither main nor auxiliary requests allowable
3.2 In the search phase
3.3 In examination proceedings
3.3.1 Indication of the amendments made in the requests and of their basis
3.3.2 Admissibility of auxiliary requests
3.3.2.1 Criteria for admissibility of auxiliary requests
3.3.2.2 Timeliness and structure of auxiliary requests
3.3.3 Preparing the decision
3.3.4 Complete text for auxiliary request not yet available
3.3.5 Complete text for auxiliary request available
3.3.6 Applicant does not approve the text proposed for grant
3.4 In opposition proceedings
3.4.1 Written procedure
3.4.2 Oral proceedings
3.5 In limitation proceedings
3.5.1 General principles
3.5.2 Written procedure
3.5.3 Oral proceedings
4. Different texts in respect of different contracting states
4.1 Dealing with different texts in examination
4.2 Different text in respect of the state of the art according to Art. 54(3) EPC and Art. 54(4) EPC 1973
4.3 Different text where a transfer of right takes place pursuant to Art. 61 or Rule 78 in respect of certain designated states
4.3.1 Different text where a transfer of right takes place pursuant to Art. 61 in examination proceedings
4.3.2 Different texts where a transfer of the patent in respect of certain designated states takes place in opposition proceedings
4.3.3 Opposition cases with different texts where a transfer of rights by virtue of a final decision pursuant to Art. 61 takes place in examination proceedings
4.4 Different texts where national rights of earlier date exist
4.5 Opposition proceedings where the claims as granted are different for different contracting states
5. Calculation of claims fees
Chapter IV – Allowability of amendments
1. Introduction
2. Allowability of amendments under Art. 123(2)
2.1 Basic principle
2.2 Content of the application as "originally" filed – general rules
2.2.1 Features described in a document cross-referenced in the description
2.2.2 Missing parts of the description or missing drawings filed under Rule 56 after the date of filing
2.2.3 Erroneously filed application documents or parts under Rule 56a
2.2.4 Claims filed after the date of filing
2.2.5 Sequence listings filed after the date of filing
2.2.6 Priority documents
2.2.7 Citation of prior art in the description after the filing date
2.2.8 Clarifications
2.2.9 Trade marks
2.3 Content of the application as "originally" filed – special applications
2.3.1 Applications filed by reference to an earlier application
2.3.2 Divisional applications
2.3.3 Applications resulting from a decision under Art. 61
2.3.4 International applications
3. Allowability of amendments under Art. 123(3)
3.1 Basic principles
3.2 Protection conferred by the patent as granted
3.3 Version of the granted patent to be considered
3.4 Assessment of impermissible extension of the protection conferred
3.5 Conflicts between Art. 123(2) and Art. 123(3)
3.6 Conflicts between Art. 123(3) and other requirements of the EPC
4. Amendments relating to unsearched matter
4.1 Rule 137(5)
4.1.1 Rule 62a and/or Rule 63 cases
4.1.2 Subject-matter taken from the description
4.2 Euro-PCT applications
5. Compliance of amendments with other EPC requirements
5.1 General principles
5.2 In examination proceedings
5.3 In opposition proceedings
5.4 In limitation proceedings
5.4.1 Art. 84
5.4.2 Examination of the description and/or drawings
5.4.3 Points to be disregarded
Chapter V – Allowability of amendments – examples
1. Introduction
2. Amendments in the description
2.1 Clarification of a technical effect
2.2 Introduction of further examples and new effects
2.3 Supplementary technical information
2.4 Revision of stated technical problem
2.5 Reference document
2.6 Alteration, excision or addition of text in the description
2.7 Bringing the description into line with amended claims
3. Amendments in claims
3.1 Replacement or removal of features from a claim
3.2 Inclusion of additional features
3.2.1 Intermediate generalisations
3.3 Deletion of part of the claimed subject-matter
3.4 Further cases of broadening of claims
3.5 Amendments relating to ranges
4. Disclaimers
4.1 Disclaimer disclosed in the application as originally filed
4.2 Disclaimers not disclosed in the application as originally filed
4.2.1 The subject-matter to be excluded is not disclosed in the application as originally filed (so-called undisclosed disclaimers)
4.2.2 The subject-matter to be excluded is disclosed in the application as originally filed
5. Amendments to drawings
6. Amendments derived from drawings
7. Changes in claim category in opposition
7.1 Product claim to use claim
7.2 Product claim to method claim
7.3 Method claim to product claim
7.4 Method claim to use claim
8. Changes in the title
Chapter VI – Correction of errors
1. Introduction
2. Corrections of errors in documents filed with the EPO
2.1 Admissibility
2.1.1 Admissibility in opposition and limitation proceedings
2.1.1.1 Errors in the description, claims and drawings
2.2 Allowability
2.2.1 Correction of description, claims and drawings
2.2.2 Missing parts of description, missing drawings or correction of erroneously filed application documents filed as corrections under Rule 139
3. Correction of errors in decisions
3.1 Admissibility
3.2 Allowability of the correction of bibliographic data
3.3 Correction of the decision to grant while opposition proceedings are pending – procedural aspects
4. Correction of formatting/editing errors
5. Correction of the translations of the claims
6. Errors in publication
Index for Computer-Implemented Inventions
Alphabetical Keyword Index
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
Z
&
List of sections amended in 2024 revision

2.3.1 Examples of the exercise of discretion under Rule 137(3)

A revised version of this publication entered into force, see here
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