Pages 510-522

INFORMATION FROM THE EPO

Notice dated 26 May 1999 concerning amendment of the Guidelines for Examination in the European Patent Office

By decision of the President of the EPO dated 26 May 1999 the Guidelines for Examination have been amended pursuant to Article 10(2) EPC. The amendments are being published in the form of a complete "July 1999" edition of the Guidelines1. The ring-binders for the loose-leaf edition2 can be retained for use with this new edition.

Amendments to the Guidelines for Examination in the European Patent Office

The Guidelines for Examination have been revised following consultation with the Standing Advisory Committee before the EPO (SACEPO). The amendments are mainly due to

(i) amendments to the European Patent Convention, the Implementing Regulations and the Rules relating to Fees,

(ii) decisions of the boards of appeal on issues important for search, examination and opposition,

(iii) the wish to bring the Guidelines up to date in respect of current practice.

The opportunity has also been taken to incorporate suggestions made by the SACEPO Working Party on Guidelines, as well as to remove a number of editorial and linguistic inconsistencies and to harmonise the way of indicating subdivisions of paragraphs (see the General Remark below).

A summary of the main amendments is given below, indicating the part of the Guidelines in which the amendments occur.

General remark:

The numbering of sub-paragraphs in the Guidelines has not always been consistent, sometimes (a), (b), etc. was used, sometimes (i), (ii), etc. and sometimes a combination of both. Certain paragraphs, which have been inserted later, have received an appended "a", "b" or "c", (eg "4.3a" in C-III, 4.3a). For computer retrieval this was confusing.

From now on the following applies for a subdivision of a paragraph: (i), (ii), (iii) etc.

If such a subdivision is further subdivided, then (a), (b), (c) is used.

As usual, if a new paragraph is to be inserted between two existing paragraphs, it will receive an "a", "b" or "c" directly after its number, which is the same as that of the preceding paragraph (e.g C-III, 4.3a follows after C-III, 4.3; C-III, 4.7b follows C-III, 4.7a).

A-II, 1.1 (now further subdivided into 1.1.1-1.1.4):

Applications can also be prepared by means of the EASY software and can, together with the application documents, be filed on diskette. The paragraph has been subdivided, such that filing by facsimile and by EASY-diskette is treated separately. It is furthermore mentioned explicitly that filing by e-mail is not possible. It is further made clear that the sub-office in Vienna is not a filing office. The information about the filing offices has been grouped in paragraph 1.1. The information on the national offices allowing facsimile has been updated.

A-III, 6.1:

If one of joint applicants has been the applicant of the priority application or is the successor in title to that application (or only to the right of priority), this suffices. No special transfer of priority rights to the other applicants is necessary.

A-III, 6.6:

The addition of Rule 84a (late receipt of documents) to the Implementing Regulations has been taken into account.

A-III, 6.7:

The recent decision of the President regarding priority documents issued by the Japanese Patent Office has been included.

A-III, 6.8:

What can be accepted as a declaration that the European patent application is a complete translation of the priority application is now clarified. This declaration can now also be made in the Request for Grant form.

A-III, 12.2-12.9 (the content of 12.6 and 12.7 is new):

This paragraph is now subdivided into more paragraphs, for better understanding. Furthermore, the amendment of Article 2, No. 3 of the Rules relating to Fees ("ceiling" in the designation fees) has been accounted for.

A-III, 13 and 14:

The numbering of chapters 13 and 14 is switched for reasons of clarity. It is clearer to have the contents of the former chapter 14 follow upon chapter 12. The payment of the designation fees no longer has to be made within one month of filing the application. This also applies to extension fees.

The correct way to designate extension states in Euro-PCT applications has been clarified, as well as the different ways in which the information regarding extension states is made available to the public. In paragraph 14.2 the situation regarding the filing of authorisations has been clarified.

A-IV, 1.1.1 -1.1.4:

A new paragraph (1.1.3) is inserted concerning the applicant who may validly file a divisional application. Experience has shown that this is often overlooked by applicants who may, by the time a divisional application is filed, have had the application transferred to them, but have not had the transfer registered with the EPO at the time of filing the divisional application.

The situation in examination where the applicant files a conditional approval of the text proposed for grant is now treated more extensively.

Further, in (renumbered) 1.1.4, it is made clear that if a divisional application is filed from a divisional application it is only the divisional, but not the parent application which still has to be pending.

A-IV, 4.1-4.4:

Concerns the adaptation to amended Rules 28 and 28a EPC.

A-VI, 1.3:

The publication of the application now contains all contracting states, as these are expressly designated with the pre-crossed box in 32.1 of Form 1001. The different situation for divisional applications and applications under Art. 61(1)(b) EPC is also treated. The reference to correction of designations is no longer relevant, as the designation fees can now be paid later.

A-VI, 2.2:

Applicants making use of the automatic debiting procedure are made aware of the fact that the examination fee is only debited at the end of the six-month period. If they wish the application to proceed more rapidly they should make payment separately.

Legal advice 1/79 is no longer valid.

A-VII, 1.3:

A reference to decision J 6/96 is included, which makes clear that the amount to be paid for the claims fees is determined by the number of claims which are present in the application upon expiry of the normal period of 21 or 31 months.

A-VII, 3.5:

Rule 17.2 PCT has been changed in the meantime and no longer refers to 16 months, but to international publication.

A-IX, 1.1:

An opponent (who has to be represented) who, during proceedings, is no longer represented, must still be informed of the date and location of the oral proceedings. He can, however, not perform procedural acts.

A-IX, 2.1:

A reference to the requirements as to the form of documents when preparing the application with the EP-EASY software is included.

A-IX, 2.5:

The impossibility of filing documents via the Internet is now explicitly mentioned.

A-IX, 3.1, 3.2, 3.5 (new):

The old text, due to the absence of commas, linked the part "filed after filing the European application" to the annexes and not to "all documents". This has been corrected.

The signing of the documents in the case of joint applicants has been clarified by deleting part of paragraph 3.2 and treating this subject in new paragraph 3.5.

The conformity statement, when preparing applications with the EP-EASY software, also needs to be signed.

A-X, 1:

The Guidelines now also refer to the situation of photographs being filed with the application. The paragraph has been subdivided for better comprehension.

A-X, 2.2:

If the drawings are also contained on the diskette filed with the application prepared with the EP-EASY software, they should preferably be generated with the recommended means of image processing. The amendment of Rule 35(3) EPC has also been taken into account.

A-X, 7.4:

The amendment of Rule 32(2)(c) EPC has been taken into account.

A-XI, 2, 2a, 3, 5, 6, 10.1.3:

Adaptation to the amendments of the Rules relating to Fees as concerns payment in euro, in cash and by money order and of the arrangements for deposit accounts (ADA) and their annexes.

A-XI, 7.2:

The amendment of Article 2, No. 3 of the Rules relating to Fees ("ceiling" on the designation fees) has been accounted for.

A-XII, 1:

Rule 94 PCT regarding file inspection in the files of international applications has been modified to allow easier access to those files. Thus a reference to the relevant parts of E-IX is included.

A-XII, 2.1:

There is no longer a form available for requesting file inspection; applicants can do this in any written form. There is however a form available via the Internet website of the EPO. More applicable than Rule 36(5) EPC referred to, is Rule 94 EPC, which concerns file inspection.

A-XII, 2.4:

When the application has not yet been published, file inspection can only be allowed with the consent of the applicant. The wording of the paragraph was not correct. It was furthermore inappropriate to refer to a time limit set on the applicant in this respect.

A-XII, 3.1:

Rule 94 PCT regarding file inspection in the files of international applications, under PCT Chapter II examination (Rule 94.2 PCT), or in the possession of the EPO as elected Office (Rule 94.3 PCT), has been modified to allow easier access to those files. Furthermore the amendment of Rule 95a EPC has been taken into account.

A-XII, 5:

Certified copies of the application itself and of documents present in the application file are issued under the provisions of Rule 94(4) EPC.

A distinction is made between the special certified copy of the application (=priority document with certificate of date of filing) and normal certified copies of the application or other parts of the file. The former is only for the (original) applicant and his successor in title, or their representatives. The latter is for any third party, as long as the conditions for file inspection are fulfilled.

If an application is filed, eg in Spanish, the priority document can naturally only relate to the application in Spanish, as that is the one which constitutes the original application as filed and not to the translation thereof in one of the official languages.

B-III, 4.4:

The EPO, as International Searching Authority, adheres to the PCT-Search Guidelines when performing international searches.

Furthermore the non-unity procedure has been brought up to date.

Sub-paragraph (x) was no longer up to date as the PCT procedure for amendment of the abstract is now more in line with the EPC.

B-X, Annex:

In view of the frequent changes in layout of the forms used in Directorate-General I, the reprint thereof in the Guidelines has been discontinued.

C-II, 4.1:

The reference in C-II, 4.1 to the skilled person, in relation to the question of sufficiency of disclosure, has been brought into agreement with the case law.

C-II, 4.3:

With the amendment of Article 79(2) EPC the payment of the designation fees can be deferred up to six months after mention of the publication of the search report in the European Patent Bulletin, thus it has to be checked whether these fees have been paid. Furthermore, it is not necessary to refer in the description of the application under examination to Article 54(3) EPC documents (including such PCT applications designating Europe) if no designation fees have been paid therefor.

C-II, 4.9:

In the instances where a broad field claimed is exemplified by a limited number of examples, the application must contain sufficient guidance for the skilled person on how to perform the invention over the whole area claimed.

C-II, 4.18:

The conditions which have to be fulfilled for Article 123(2) EPC are now included in full in C-II, 4.18(i).

In C-II, 4.18(ii) and B-IV, 1.3 cross-references have been included.

In the penultimate paragraph it is made clear that documents referred to as state of the art do not form part of the disclosure of the invention, such as to distinguish from documents incorporated by reference for certain features of the invention.

C-II, 5.1-5.3:

The existing sub-paragraphs have been given their own numbers; a further paragraph (5.3) has been added, referring to photographs in application documents. See also A-X, 1.The substantive question whether the photographs are actually necessary, it being impossible to disclose properly the subject-matter by drawings, is a matter for the substantive examiner.

C-II, 6.1 and 6.2 and C-II, 6.3(i)-(iii):

Adaptation to new Rules 28 and 28a EPC. Further, Chapter C-II had an Annex 2 regarding the necessary information the applicant has to supply regarding the characteristics of the micro-organism. In view of the rapid development in this field and the change of Rule 28 EPC to "biological material", such an annex is very rapidly out of date, thus this annex is no longer maintained.

C-III, 1.3:

As C-III refers to the practice in substantive examination, the references to Article 69 EPC should be limited to the aspect of the clarity of the claims, which is important to observe in order to avoid later problems in opposition or before the national courts, when the extent of protection may have to be determined pursuant to Article 69(1) and the Protocol on the Interpretation thereof.

C-III, 4.11:

The requirement of Rule 29(7) EPC is considered of great importance, such that reference signs should be included if this helps in understanding the features of the claim.

If there is a large number of embodiments, only the reference numbers of the most important embodiments need be in the independent claims.

C-III, 4.13 (new):

An explanation is introduced as to how "comprising" and "consisting", frequently used in patents, are to be understood in practice.

C-III, 7.8:

This paragraph has been updated to the present practice with regard to dependent claims.

C-IV, 6.1a-6.4, 6a:

With the amendment of Article 79(2) EPC the payment of the designation fees can be deferred up to six months after mention of the publication of the search report in the European Patent Bulletin. According to new Rule 23a EPC applications can only be state of the art under Article 54(3) EPC for a contracting state when designation fees have been validly paid for that state.

For Euro-PCT applications, inter alia, the payment of designation fees as part of the national fee on entry into the regional phase determines whether the PCT application may be considered state of the art under Article 54(3) EPC.

The possibilities to take account of prior national rights are more than just filing different sets of claims; in fact all possibilities mentioned in III, 6.3, are open to the applicant.

C-V, 3.2 and 3.3:

The recent decision of the President regarding priority documents issued by the Japanese Patent Office has been included. Furthermore, it is explained what can be accepted as the declaration of identity between the priority document and the European application (see also A-III, 6.8). Finally, it is made clear that changes taking effect after publication do not affect the assessment of the state of the art under Article 54(3) EPC.

C-VI, 1.3 and 1.5 (new):

With the amendment of Article 79(2) EPC the payment of the designation fees can be deferred up to six months after the mention of the publication of the search report in the European Patent Bulletin, which is the same time limit as for paying the examination fee. The examination of the actual payment of the designation fees thus normally rests on the examining division, because as soon as the request for examination has been validly made the Receiving Section ceases to be responsible for the application (Art. 18(1) EPC).

C-VI, 8.4:

In the rare case (eg PACE request on an application not claiming priority) that the examiner can grant a patent without there being the possibility of performing the complete search under Article 54(3) EPC, the grant should not be delayed, unless the examiner has knowledge of such a conflicting application.

C-VI, 9.3:

The wording of this paragraph has been updated with respect to the actual practice in examination, where it is no longer necessary to adapt the parent application to the divisional application. Furthermore, a reference to opinion G 10/92 is added, making clear that a subsequent withdrawal of the consent to the version communicated under Rule 51(4) EPC cannot reopen the possibility of filing a divisional application.

C-VI, 15.2.3 (new):

Concerns the adaptation to Rule 51(8a) EPC.

C-VI, 15.5:

By a request under the provision of Article 97(6) EPC the five- months waiting period pursuant to Article 97(5) EPC can be shortened. The relevant conditions are now listed. Further, at the time of grant originally designated states may have been withdrawn.

D-III, 5:

Decisions G 1/95 and G 7/95 give the definition of what should be considered a new ground of opposition.

D-IV, 1.2.2.1 (v):

Decision T 328/87 gives a listing of the requirements of Rule 55(c) EPC as regards sufficient substantiation of prior use in relation to admissibility, therefore a reference thereto has been included.

The third sub-paragraph gave the impression that an opposition can be partially inadmissible, which is not correct.

D-IV, 5.1:

This paragraph now includes more on the admissibility of an opposition, which is recognised to be deficient or is objected to at a later stage.

D-V, 6.2 and 6.3 (new):

This paragraph has been updated in the light of the case law regarding a change of category in claims (paragraph 6.3-new) and the interaction between Article 52(4) and Article 123(3) EPC.

D-VII, 6.1:

If in an opposition the proprietor unequivocally declares to the EPO the surrender, abandonment or renunciation of the patent, this is interpreted as equivalent to a request that the patent be revoked. For the further procedure the reference to D-VIII, 1.2.5 (new), has been included.

E-II, 1:

For procedural efficiency, applicants should indicate on which passages of the original application the amendments are based.

E-III, 3:

Further oral proceedings are not allowed, except in specific circumstances.

Furthermore, generally at the end of oral proceedings a decision is taken. If a decision has been taken the proceedings are closed and no fresh evidence can be admitted nor can the proceedings be reopened.

E-III, 8.3:

The procedure followed normally at oral proceedings has been further specified. In particular the question of the introduction of new facts or evidence, one party being absent, is now more fully described.

E-III, 10.1:

The amendment of Rule 76(3) EPC has been accounted for.

E-VIII, 1.7 (new):

The addition of Rule 84a (late receipt of documents) to the Implementing Regulations has been taken into account.

E-IX, 4.8:

The interpretation of Article 128(4) EPC, in respect of international applications in a non-EPO language, to mean that file inspection has to wait until the EPO has published the translation of that application pursuant to Article 158(3) EPC, was considered incorrect, as it provided preferential treatment to those applications which are not in English, French or German.

E-IX, 6.5:

Rule 94 PCT regarding inspection of the files of international applications has been modified to allow easier access to those files.

E-X, 3 and 5:

Legal advice 15 (now 15/98 rev) regarding the way of examining main and auxiliary requests has been updated, particularly in view of such requests in the examination procedure.

E-X, 4.4 (new):

The Guidelines did not mention the possibility of requesting a decision on the file "as it stands".

E-X, 10:

The case law makes clear that the decision to refuse a correction pursuant to Rule 89 EPC must be reasoned.

The text of a patent as granted or of a patent as maintained in amended form forms part of the decision and therefore errors on the part of the division made in that text can be corrected under Rule 89 EPC.