3.3.3 Preparing the decision 

If the examining division is able to allow an auxiliary request (but not the main request or any higher-ranking auxiliary requests), it will inform the applicant accordingly in a communication under Rule 71(2) or in an annex to the communication according to Rule 71(3), giving a brief indication of the essential reasons for refusing the main and higher-ranking auxiliary requests (see C‑V, 1.1).

Where an auxiliary request appears to comprise subject-matter that offers a good starting point for an allowable request, but it is considered expedient to issue a communication under Art. 94(3), a brief indication is given of the essential reasons for the non-allowability or non-admissibility of the subject-matter of the higher-ranking requests, and a suggestion is provided as to the most promising request (see C‑III, 4.1.2).

Care needs to be taken where oral proceedings have been specifically requested in cases where the examining division has not allowed the main request: the applicant must be summoned to oral proceedings even if the examining division considers one of the auxiliary requests to be patentable. In such cases it may be appropriate to ask applicants in a telephone call whether, in view of the examining division's intention to issue a communication under Rule 71(3) for the allowable auxiliary request, they would be prepared either to withdraw the request for oral proceedings for the main request or to replace the main request with the allowable auxiliary request.

During oral proceedings, the division addresses the main request and decides on the admissibility of the auxiliary requests, if any, filed in reply to the summons to oral proceedings (see H‑II, 2.3 and H‑III, 2.1.3). Moreover, it may be appropriate to ask applicants whether, in view of an allowable request, they would be prepared to withdraw the unallowable higher-ranking request(s). However, the applicant is not obliged to do so.

The summons to oral proceedings must indicate the essential reasons that led the examining division not to allow or not to admit the auxiliary requests already filed so that the applicant is not taken by surprise by the refusal of the application in case the applicant decides not to attend the oral proceedings (C‑V, 1.1 and C‑V, 4.9). This applies regardless of whether oral proceedings are held in the absence of the applicant or are cancelled.

In deciding on the admissibility of the auxiliary requests, the examining division will apply the criteria set out in:

(i)H‑III, 3.3.2.1 if auxiliary requests are submitted by the date set according to Rule 116(1);

(ii)H‑III, 3.3.2.1 and H‑III, 3.3.2.2 if auxiliary requests are submitted after the date set according to Rule 116(1).

The examining division may then exercise its discretion under Rule 137(3) not to admit one or more of the requests (see H‑II, 2.3, H‑II, 2.7, H‑II, 2.7.1 and H‑III, 3.3.1), and it may do so in the absence of the applicant/representative. A decision to refuse the application in these circumstances must not take the applicant by surprise (E‑III, 8.3.3.1, and E‑III, 8.3.3.3).