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EPO revise Guidelines for Examination

November 7, 2017

The new guidelines include a series of changes, including to oral proceedings, fees and searches.

The European Patent Office has published a revised version of the Guidelines for Examination, which provide general instructions on the varied aspects of applications and patents in Europe, reports Lexology.

One of the key changes that is likely to imminently affect applicants is concerning oral proceedings. Previously, the guidelines allowed for the issuing of an Extended European Search Report (EESR) during the search and examination phase of a patent. The EESR could be followed by examination reports, should the EPO deem it necessary. Any objections raised in an examination report could also be raised in the search opinion included in the EESR. Currently, if the examination division feels that no progress is made during the examination, then the applicant is summoned to attend oral proceedings, during which a decision is made on outstanding objections.

Under the revised guidelines, however, the examining division may now issue a summons to oral proceedings as the first action in an examination. Nevertheless, the revised guidelines state this will only occur in exceptional circumstances; particularly, if the claims on file are not substantially different to those on which the search was based, and if the objections raised in the search opinion still apply. The new guidelines also state that the summons should be issued with at least six months’ notice.

Lexology note that in the past, the examining division has justified oral proceedings as the most efficient way of bringing the examination phase to an end, and suggest this amendment to the guidelines is a further move in this direction.

Another key change regards lack of unity at the search stage. Under the old guidelines, if the search examiner believed the claims lacked unity during the search, a partial search report would be issued, inviting the applicant to pay further search fees to cover inventions besides the first, already-searched invention. It was at the examiner’s discretion as to whether or not they would provide a reason for the finding. This had the effect of variation in the levels of information provided in search reports, from one application to another.

However, the new guidelines require the provision of a reason for the non-unity finding, as well as a provisional opinion on the patentability of the searched invention, in the partial search report.

Lexology argue that this is a welcome change from the EPO, as it will standardise their work and allow applicants to make a more informed decision, early in the prosecution, as to which inventions further search fees should be paid for.

The EPO has also clarified procedure concerning further processing and re-establishment fees. According to the new guidelines, one fee is required for each unitary procedural act which was not carried out. A unitary procedural act is formed from two or more acts if they have the same legal basis, and the fee will depend on the number and the nature of the acts.

The revised guidelines also make clear that only a single, flat fee is required when requesting further processing for paying the grant and publishing fee, and for filing a translation of the claims at the grant stage. Lexology remark that these changes “provide clarity on the EPO’s approach to further processing and re-establishment fees, but do not reflect a change in current EPO practice.”

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