Accueil Patents in Europe Grant Procedure Examination of the Application and Grant of a Patent

Examination of the Application and Grant of a Patent

Request for Examination

Case of the « Standard » Application

Filing the Request for Examination

Form and Time Limit

The request for examination (A94(1) EPC) must:

  • be filed in writing (R70(1) EPC, the form 1001 has a pre-checked box for the applicant) by the applicant,
  • be accompanied by payment of the examination official fee (A94(1) EPC),
  • be filed at any time (Guidelines C-II 1), but within 6 months from the date of publication of the search report in the European Patent Bulletin (R70(1) EPC).

This time limit benefits from further processing under A121 EPC.

If the date of publication of the ESR in the EPB is incorrect in the notification under R69(1) EPC, this date must be taken into account (unless it is absurd, e.g., publication in 5013, R69(2) EPC).

If this request is filed at the time of filing, a box is already pre-checked in the form 1001 for the request for grant (Guidelines A-VI 2.2) and the examination official fees must be paid.

It may also be filed on plain paper by paying the examination official fee.

The date of filing the request for examination is recorded in the EPB (R143(1) m) EPC).

The date of publication of the European search report is notified to the applicant by means of a notification issued under R69(1) EPC.

Examination Official Fee
Principle

The examination official fee is [montant_epo default= »1555 € » name= »A2(1).6 RRT – examination of application filed after 1 July 2005″] (A2(1).6 RRT) for applications filed after 1 January 2005 and [montant_epo default= »1730 € » name= »A2(1).6 RRT – examination of application filed before 1 July 2005″] otherwise.

This official fee may be paid by anyone.

Reduction Before 1 April 2014

A 20% reduction (R6(3) EPC together with A14(4) EPC and A14(1) RRT) may be obtained if the applicant (having their residence or principal place of business in a contracting state with an official language other than English, French, or German, or being a national of such a state) files the request for examination in that national language.

Reduction as of April 1, 2014

However, for filings (entering the phase) as of April 1, 2014 (« Decision of the Administrative Council of December 13, 2013 amending Rule 6 of the Implementing Regulations to the European Patent Convention and Article 14(1) of the Rules relating to Fees« , JO 2014, A4), to benefit from this reduction, all applicants must be (R6(4) EPC and R6(7) EPC):

  • a small or medium-sized enterprise;
  • a natural person; or
  • a non-profit organization, a university, or a public research organization.

The criteria are set out in Commission Recommendation 2003/361/EC of May 6, 2003 (R6(5) EPC).

Applicants must declare their affiliation to one of the above-mentioned categories, but the EPO may request evidence in case of doubt (R6(6) EPC).

The applicant will obtain a 30% reduction in official fees (A14(1) RFees).

Payment of the official fee before submission of the request

If an examination official fee is paid before submission of the examination request, it will be automatically refunded, even if the examination request is submitted the following day (official fee paid without cause, Guidelines A-X 10.1.1).

Confirmation of the request

Principle

Where the applicant has validly submitted an examination request before the search report is notified to them, confirmation will be requested (R70(2) EPC) within a set period.

This set period is 6 months from the date of publication of the ESR in the EPO Bulletin (« Notice from the European Patent Office dated October 15, 2009 concerning amendments to the Implementing Regulations to the European Patent Convention« , JO 2009, 533, point 5.1.4, Guidelines C-II 1.1).

A121 EPC applies to this period.

Within the same period, the applicant may respond to the objections raised in the ESER (R70bis(2) EPC).

Responding to the objections is considered as a declaration by the applicant confirming the maintenance of the application, even if this is not explicit (Guidelines C-II 1.1).

Waiver of confirmation

This confirmation is subject to two exceptions, however.

No confirmation will be requested if:

In the case of a waiver, and if the applicant has opted for automatic debiting, the examination official fee is debited upon receipt of the waiver.

Sanction

Failure to File

If not filed within the time limits, the application is deemed withdrawn (A94(2) EPC).

This finding is made by the Receiving Section, which is then competent (R10(1) EPC).

If examination official fees have been paid (in full or in part), these are fully refunded (A11 a) RFees).

Failure to Confirm

If the applicant does not confirm the examination within the prescribed time limit or does not respond to the objections of the EESR, the application is deemed withdrawn (R70(3) EPC and R70bis(3) EPC).

This finding is made by the Receiving Section, which is then competent (R10(3) EPC).

If the request is ultimately not maintained, the examination official fee will then be fully refunded (A11 a) RFees), as the Examining Division is not yet competent (Guidelines A-VI 2.2).

Withdrawal

Of the Request

If a request is filed, it can no longer be withdrawn (R70(1) EPC).

Of the Application

If the application is withdrawn, the examination official fee is fully refunded (A11 a) RFees) if the substantive examination has not yet begun (the EPO informs of the expected start date of this examination (« Notice from the European Patent Office dated 30 June 2016 concerning the refund of the examination fee (Article 11 of the Rules relating to Fees« , OJ 2016, A49)) but only in the register OJ 2019, A104).

If the substantive examination has begun (A11 b) RFees):

  • is refunded at 50% if the withdrawal occurs:
    • before the expiry of the time limit for response to the first communication under A94(3) EPC;
    • or in the case of a direct R71(3) EPC notification, before the day preceding the date of that notification.
  • is not refunded in all other cases.

Transfer of Competence

If the request is validly filed within the time limits, the examining division becomes competent:

  • as soon as the RREE is transmitted to the applicant:
    • if the request was previously filed and
    • if the applicant has waived their right of confirmation (R10(4) EPC);
  • failing that, upon receipt of the applicant’s confirmation,
    • if the request was filed before transmission of the RREE (R10(3) EPC);
  • failing that, upon filing of the examination request (R10(2) EPC).

If the application is withdrawn, the examination official fee is refunded in full (A11 a) RFees) if substantive examination has not commenced (the EPO informs of the expected start date of this examination (« Notice from the European Patent Office dated 30 June 2016 concerning the refund of the examination fee (Article 11 of the Rules relating to Fees« , OJ 2016, A49)).

If substantive examination has commenced (A11 b) RFees):

  • it is refunded at 50% if the withdrawal occurs:
    • before expiry of the time limit for response to the first communication under A94(3) EPC;
    • or, in the case of a direct R71(3) EPC notification, before the day preceding the date of that notification.
  • it is not refunded in other cases.

The fact that examination has commenced must be based on clear and transparent elements (« Notice from the European Patent Office dated 29 January 2013 concerning the adaptation of the system for refunding search and examination fees« , OJ 2013, 153): the date of initiation of the prior art document search algorithm by the examiner in charge of the examination under A54(3) EPC is thus recorded in the file for verification purposes.

Euro-PCT Application Case

The process is exactly the same as for a standard application. However, there is a slight particularity regarding the time limit for filing the request!

The examination request must be filed:

  • within 6 months from the international publication of the international search report (A153(6) EPC together with R70(1) EPC);
  • if the above time limit expires before entry into the national phase, upon entry into the national phase.

These time limits benefit from the further processing under A121 EPC.

Principles Guiding Examination

Good Faith

The examination procedure must be guided by the principle of good faith, including that of the Examining Division (J27/92).

For example, if the office treats a response from the applicant as a valid procedural act (e.g., request for extension of time), it is not possible to reconsider its validity (T1825/14).

Adversarial Principle

Furthermore, the procedure is adversarial (A113(1) EPC). Decisions must therefore be based on grounds on which the parties have had an opportunity to present their comments:

  • a party must be given the opportunity to comment on a document, even if it was that party who submitted the document (T18/81);
  • gross errors (e.g., reversal of document dates) must be pointed out to the parties (T185/82).

Examiner Not Bound

The Examiner is not bound by the positions of the Search Division regarding lack of unity (Guidelines C-III 3.1.1).

Recusal of the Examiner

Although the provisions of A24(3) EPC concerning recusal should apply only to members of the Boards of Appeal and the Enlarged Board of Appeal, decision G5/91 stated that the obligation of impartiality also applies to staff of the first-instance departments of the EPO.

However, the fact that a member of the Opposition Division is a former employee of the applicant is not sufficient grounds to declare that member partial (T143/91).

If a member of a Board has a close family relationship with a party, that member should withdraw (G1/05).

Examination File

The file forwarded to the Examiner contains:

  • the request for examination;
  • the description, drawings, and claims (as filed);
  • amendments made to date (if any):
    • amendments made after the transmission of the search report to the applicant (R70(2) EPC);
    • amendments made on the applicant’s own initiative (R137(2) EPC);
  • the applicant’s observations in response to any third-party observations (R114(2) EPC);
  • the search report and any observations by the applicant;
  • the priority documents;
  • copies of the cited documents.

Examination Stages

Response to the Search Report

Principle

A response to the extended European search report is mandatory if irregularities are indicated (R70bis(1) EPC and R70bis(2) EPC).

No Response Required

No response to the search report is required if:

Time limit

The time limit for responding is 6 months from the date of publication in the EPO Bulletin of the ESR (R70bis(1) EPC together with R70(1) EPC or R70bis(2) EPC together with R70(2) EPC together with « Notice from the European Patent Office, dated 15 October 2009, concerning amendments to the Implementing Regulations to the European Patent Convention« , OJ 2009, 533, point 5.1.4).

A121 EPC applies to this time limit.

Amendment

It is possible to introduce any desired amendment (R137(2) EPC) provided that the amendment has been searched or is unitary with the initial invention (R137(5) EPC).

These amendments do not need to be prompted by any objection (R137(2) EPC), but must be made simultaneously with the response to the ESR (Guidelines C-III 2).

This possibility will no longer be available thereafter (R137(3) EPC).

Sanction in case of no response

In case of no response (and if a response is mandatory), the application is deemed withdrawn (R70bis(3) EPC).

Not considered an acceptable response (Guidelines B-XI 8):

  • a procedural request (e.g., request for interview);
  • a request that cannot be accepted at this stage (e.g., request for a decision according to the state of the file).

Analysis of the response to the ESER

Analysis of amendments

The examiner examines the amendments and the applicant’s observations in response to the ESER (Guidelines C-I 4).

If amendments have not been identified or their basis has not been identified in the application, a notification pursuant to R137(4) EPC is sent to obtain this indication.

If objections concerning unity of invention (A82 EPC), any issue that led to an incomplete search (R63(1) EPC), or the uniqueness of claims of the same category have been raised (R43(2) EPC) and these objections remain valid, the examiner:

  • re-examines these issues and
  • invites the applicant to limit the application if they remain relevant (respectively A82 EPC, R63(3) EPC and R62bis(2) EPC).

Search for interfering patent applications

The examiner will then search for interfering patent applications (A54(3) EPC) if this search has not yet been carried out (Guidelines B-VI 4.1).

The initiation of this search is recorded in the file.

Examination of missing parts

If the examiner considers that, despite the filing date not being changed following the filing of a missing part, the conditions of R56(3) EPC (or R20.5.d PCT) are not met, this is indicated to the applicant, who is given the opportunity to present observations.

The examiner then indicates the new filing date (Guidelines C-III 1). The applicant is notified that they may still withdraw the missing parts within a 2-month period in order to retain the original filing date… otherwise, the filing date will indeed be changed.

Examination of claims filed after the filing

The examiner checks whether the claims contravene A123(2) EPC (Guidelines C-III 1).

A request for indication of the basis in the description may be made under R137(4) EPC.

Official letters

The notification

Of course, despite the amendments made or the arguments presented in response to the search report, the examining division may:

  • maintain its objections;
  • not be convinced;
  • raise new objections.

A notification (A94(3) EPC and R71(1) EPC) is then sent to the applicant to encourage the submission of new arguments or amendments to put the application in order for grant.

This notification must be reasoned (R71(2) EPC).

Response deadline

Principle

A response to this notification must be filed within a set period (R71(1) EPC): i.e., between 2 and 4 months (R132(2) EPC). Normally, the following principle applies (Guidelines E-VII 1.2):

  • 2 months if the irregularity raised is minor or purely formal in nature;
  • 4 months in all other cases.

This period benefits from A121 EPC.

Extension

This period may be extended to 6 months upon request before the expiration of said period (R132(2) EPC).

Normally, no justification is required (Guidelines E-VIII 1.6).

The response

Principle

In principle, it is possible to amend the application (A123(1) EPC), but such amendment must be authorized by the examining division (R137(3) EPC).

Limits of the discretionary power of the Examining Division

Case law has sought to limit the discretionary power that might appear absolute on the part of the Examining Division.

Thus, an amendment aimed at withdrawing a previous amendment remains an amendment that must be authorized (Guidelines H-III 2.5).

Furthermore, amendments should be acceptable if (T937/09):

  • they are made in response to a communication raising, for the first time, reasoned objections;
  • these objections could already have been raised in the first communication;
  • they constitute an objective attempt to overcome these objections.

While requests must be prima facie valid to be accepted, the refusal of a request must not be based on mere allegations (T233/12 or T1214/09) and must indicate why the applicant’s arguments are incorrect.

Waiver of the response?

The fact that the applicant submits a letter of a procedural nature does not mean that they have responded to the communication and waived their right to be heard (T685/98).

Special case of waiver of confirmation of examination

If the applicant has requested examination and waived the possibility of confirming it, the written opinion is omitted: a communication under Article 94(3) EPC (Guidelines C-VI 3 and Rule 62(1) EPC) is issued a few days later.

When responding to this first communication under Article 94(3) EPC, it is entirely possible for the applicant to amend the application as they see fit (i.e., without authorization from the Examining Division, Rule 137(2) EPC, Guidelines H-II 2.2).

Amendment with unsearched subject-matter
Principle

Amendments to the claims (R137(5) EPC):

  • must not relate to subject-matter which has not been searched and
  • which is not linked to the invention or to the plurality of inventions initially claimed so as to form a single general inventive concept.

These two conditions are cumulative (Guidelines H-II 6.2 and T708/00, paragraph 4, last paragraph).

The following conclusions may thus be drawn:

  • the fact that the subject-matter has not been searched while the initial claims are unitary with the new claims does not allow an objection under R137(5) EPC to be raised;
  • the amendment of the initial claim by a limitation based on the description does not generally allow an objection under R137(5) EPC to be raised (T377/01);
  • the fact that an additional search is necessary is not a criterion for raising an objection under R137(5) EPC (Guidelines H-II 6.2) unless the inventive concept of the claim has changed (T1394/04);
  • it is possible to combine two claims except if one of the claims belonged to a group considered as non-unitary (a priori or a posteriori) with the initial claim (T708/00 and T333/10), as in this case, the inventive concept changes.
Lack of unity and combination of two claims from different groups

As we have seen, it is possible to combine two claims except if one of the claims belonged to a group considered as non-unitary (a priori or a posteriori) with the initial claim (T708/00 and T333/10), as in this case, the inventive concept changes.

However, care must be taken.

For the sake of simplicity, the Examiner most often indicates broad groupings, with each claim belonging to only one group. For example:

  • group 1 consists of claims 1, 2, 5, 9 and
  • group 2 consists of claims 3, 4, 6, 7 and 8.

In reality, this division is incorrect due to the usual multiple dependencies of claims.

For example, if claim 3 depends on « any one of the preceding claims« , this claim 3 will only be in group 2 in its dependency on claim 1 but will also be in group 1 in its dependency on claim 2.

Therefore, in the above example, it will not be possible to combine 1+3 but it will be possible to combine 1+2+3.

Special case of Euro-PCT applications

If the ISR during the international phase of a Euro-PCT application covered all the claims, but during the supplementary search report, a unity issue was raised and only the first invention was searched, only the latter will be considered as having been searched (T1981/12).

R137(5) EPC may serve as a basis for a refusal in this case (T2459/12) and not R164(2) EPC, which only states that a notification is sent.

Amendment with elements excluded from the search

The applicant may have indicated a subset of the claims to be searched:

  • either because the EPO considered that the claims as filed did not comply with R43(2) EPC (only one independent claim of the same category, R62bis EPC);
  • or because the EPO considered that a full search was not possible (R63 EPC).

In this situation, it is not possible to reintroduce, as a main claim (i.e., as independent), elements excluded from the search (R137(5) EPC).

However, it is always possible to combine two claims: a first claim and a second dependent claim, if the first claim was searched, even if the second dependent claim was not searched (T708/00 contra T333/10).

Amendment with abandoned elements

If the applicant has deleted an element from the application, they must avoid any statement that could be interpreted as an abandonment. In the case of abandonment, that element cannot be reintroduced (Guidelines H-III 2.5).

Form of amendments

Amendments must satisfy the formal requirements, in particular R50 EPC (A123(1) EPC).

In particular:

  • amendments must be clearly indicated to the EPO and, where applicable, specify the basis for the amendment (R137(4) EPC).
    • if this is not the case, the EPO may request that this irregularity be corrected within 1 month (R137(4) EPC, except in oral proceedings or in preparation thereof, Guidelines H-III 2.1.3).
      • if no response is provided, the application is deemed withdrawn (A94(4) EPC);
      • the 1-month time limit is not extendable (« Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Implementing Regulations to the European Patent Convention« , OJ 2009, 533, point 7.3);
      • A121 EPC applies to this time limit;
      • if new amendments are submitted within this time limit, still without indicating the basis for the amendments, the application is directly deemed withdrawn (A94(4) EPC) without further notification (Guidelines H-III 2.1.2).
    • if the original application was not filed in an official language, it is sufficient to indicate the basis in the translated version (Guidelines H-III 2.1);
  • amendments to the description or claims may be made:
    • by filing copies of pages of the original application on which the amendments appear (Guidelines H-III 2.3);
    • by filing replacement pages and identifying them using revision marks (Guidelines H-III 2.2),
    • however, this technique should (in theory) only be permitted if the amendments are so numerous that they would affect the clarity of the aforementioned copies (Guidelines H-III 2.3);
    • the filing of entirely retyped documents should normally not be permitted, as verifying that there are no unsupported and « hidden » additions can be extremely time-consuming and tedious (T113/92);
  • they must comply with the conditions of R49 EPC and R50 EPC, and must, in principle, be typewritten or printed (« Notice from the European Patent Office dated 8 November 2013 concerning the application of Rules 49 and 50 EPC in the case of handwritten amendments« , OJ 2013, 603):
    • thus, handwritten amendments should normally be prohibited.

It is not possible to « file » new claims simply by indicating that claims 1 and 7 are merged (T1480/12).

Principle of unity of the application

In principle, the European application forms a single whole, and it is not possible to have multiple sets of claims (A118 EPC).

This principle has certain exceptions if:

  • the EPO is informed of the existence of earlier national rights (R138 EPC) within the meaning of A139(2) EPC.
    • it is not for the examiner to judge whether the applicant has correctly limited the application in relation to the earlier national right (Guidelines H-III 4.5);
    • the examiner must verify that the limitation does not contravene the requirements of the EPC;
    • a modified description and drawings may be required (e.g., amendment of the description to explain why a new set has been introduced (Guidelines H-III 4.5));
  • there is an A54(3) EPC document considered as prior art for an application filed before 13 December 2007 (i.e., under the EPC 1973 regime) and not designating the same countries as the prior art (R87 EPC 1973 and Guidelines H-III 4.2);
  • there has been a transfer of the patent for certain designated states only, pursuant to A61 EPC.
  • there were reservations by certain states pursuant to A167(2)(a) EPC 1973 or A167(2)(b) EPC 1973:
    • these reservations only applied to applications filed before 7 October 1992;
    • the States could exclude from patentability:
      • chemical, pharmaceutical or food products as such;
      • agricultural or horticultural processes.
    • Austria made reservations concerning chemical, pharmaceutical or food products as such (« Reservations made by Austria Article 167(2)(a) of the EPC« , OJ 1979, 289); these reservations ceased to have effect on 7 October 1987;
    • Greece and Spain made reservations concerning chemical, pharmaceutical or food products as such (« Greece and Spain, Contracting States to the European Patent Convention as of 1 October 1986« , OJ 1986, 200). These reservations ceased to have effect on 7 October 1992 (« Notice from the President of the European Patent Office dated 13 May 1992 concerning the reservations made by Spain and Greece under Article 167 EPC« , OJ 1992, 301);
    • these reservations apply only to applications and not to patents already granted (and therefore not to the opposition procedure, « Notice from the European Patent Office dated 18 June 2007, following the notice dated 8 March 2007 on the question of the direct applicability in Spain of Article 70(7) of the TRIPS Agreement to European patent applications filed before the expiry of the reservation made by Spain under Article 167(2)(a) EPC« , OJ 2007, 439).
Languages

Contrary to popular belief, the applicant may use any official language of the EPO (R3(1) EPC and Guidelines A-VII 2) to respond to communications.

In reality, only the EPO is bound by the language of the proceedings (Guidelines A-VII 1.2).

However, amendments to the application must be filed in the language of the proceedings (R3(2) EPC).

They are not required to be submitted within a specific time limit and therefore cannot benefit from the exceptions under A14(4) EPC.

Auxiliary requests

It is entirely possible, in response, to submit auxiliary sets of claims without abandoning the main set (T1105/96).

However, if too many sets are filed, they will not be admissible (T907/91).

If the applicant indicates that the main set is not withdrawn if an auxiliary request is allowed, the auxiliary requests cannot be the subject of a communication under R71(3) EPC: the auxiliary requests are not « true » auxiliary requests (Guidelines H-III 3).

The examiner will first examine the main request and, if it is not considered patentable (Guidelines C-V 1.1), the auxiliary requests in the order of preference indicated until a patentable one is found. The examiner will then issue a communication under R71(3) EPC, stating why the other requests are not allowable (generally by reference to previous communications, Guidelines E-X 2.9).

Sanction

In the event of no response, the application is deemed withdrawn (A94(4) EPC).

Consideration of the response

It is important to note that the Examining Division must take into account the arguments provided by the applicant.

This consideration cannot be merely dismissive, such as « the arguments are not convincing. »

It must address each argument precisely (T1385/16).

Otherwise, there is a violation of the right to be heard (T1385/16).

Telephone interviews and interviews

When the application is about to be granted, the examiner may consider a telephone interview in order to overcome the final issues (Guidelines C-IV 3).

When it is the applicant who requests an interview or a telephone interview, the examiner should accept it unless they consider that it will be of no use in advancing the file (Guidelines C-VII 2.1). In any event, the topics to be discussed should be specified in advance.

During a telephone interview or an interview, the examiner will note the key points of the discussion, draft minutes, and finally include them in the file (Guidelines C-VII 2.5). A copy of the minutes will be notified to the applicant or, where applicable, to their representative.

Refusal of the application

Principle

The application is refused if the examining division (as a whole and not simply the primary examiner) considers that the application does not satisfy the requirements set by the EPC (A97(2) EPC) after at least one communication from the examining division: in practice, this means that a refusal cannot be issued before any communication under A94(3) EPC.

It may be questioned whether a refusal can be issued after a communication under R161(1) EPC (since the examining division is competent – R10(2) EPC – unlike under R161(2) EPC, where the examining division is not yet competent – R10(3) EPC or R10(4) EPC). It would appear that the answer is no: at minimum, a communication under A94(3) EPC, R71(1) EPC or R71(2) EPC is required (Guidelines E-IX 4.1).

The signature of all members (or their seal) must appear on the decision (Guidelines C-VIII 6 and R113(2) EPC). The name of the agent may only be omitted if the document is produced automatically by computer (which is not the case for a decision, even if the document is computer-generated).

The examining division’s power in this regard is entirely discretionary (T84/82), but:

  • the refusal cannot occur before the response to the first communication from the examining division;
  • the refusal cannot be based on grounds on which the applicant has not had an opportunity to comment (A113(1) EPC).

The refusal must be reasoned (R111(2) EPC).

There is no partial refusal (T5/81).

The examining division must strike a fair balance between the applicant’s interest (appropriate protection) and the EPO’s interest (speedy conclusion of the proceedings) (T755/96).

Focus on adapting the description to the claims

According to Guidelines F-IV 4.3, parts of the description not covered by the amended claims must be deleted or identified as no longer covered, as they give rise to doubt as to the extent of protection to the point that the claims become unclear or are not supported by the description (A84 EPC).

And examining divisions strictly follow these guidelines to the point of rejecting certain applications.

Decision T1989/18 holds that A84 EPC (or R42 EPC, R43 EPC, R48 EPC, T56/21) does not allow such a rejection, since, if the claims are clear in themselves and supported by the description, their clarity is not affected by the fact that the description also contains subject-matter that is not claimed (contra T1024/18).

Focus on the « decision issued on the state of the file »

The applicant may wish to expedite proceedings and request that a decision on the state of the file be issued (Guidelines E-X 2.5): an appeal may be filed against this decision.

Care must be taken to ensure that the decision is properly reasoned, complete, and self-contained (unless reference is made to a previous communication containing all the objections Guidelines C-V 15.2). The grounds for refusal must have been provided in earlier communications (mere minutes of oral proceedings are often insufficient) (T1309/05, T1442/09, T1612/07).

If new arguments need to be presented or if the applicant has submitted new amendments/arguments, a decision on the state of the file will not be possible, and a new communication under A94(3) EPC will be issued (Guidelines C-V 15.4).

Grant envisaged

Grant may well be envisaged as early as the response to the extended European search report, if any further searches conducted by the examiner have yielded no results (« Communication from the European Patent Office dated 1 July 2005 concerning the new Rule 44bis EPC (introduction of the extended European search report), the amendment of Articles 2 and 10 of the Rules relating to Fees, and the reduction of the search fee for supplementary European search reports under Article 157(3)(b) EPC« , OJ 2005, 435, point I.2).

Notification of the Intended Text

The grant decision may only be based on a text submitted or approved by the applicant (A113(2) EPC).

Thus, prior to the grant decision, the Examining Division notifies the applicant with the text (or « DruckExemplar ») for which it intends to grant a patent (A97(1) EPC together with R71(3) EPC).

This text may include possible amendments made by the Examiner (e.g., formal corrections, substantive limitations, T1255/04, etc.) if the examiner reasonably believes these will be accepted by the applicant (Guidelines C-V 1.1):

  • Harmonization of the description and claims;
  • Removal of vague or clearly irrelevant statements;
  • Introduction of SI units;
  • Introduction of reference numerals in the claims;
  • Introduction of a summary of the closest prior art;
  • Amendments that, although modifying the scope of an independent claim, are nevertheless clearly necessary;
  • Correction of linguistic errors;
  • etc.

The applicant then has a period of 4 months to approve this text (R71(3) EPC).

The A121 EPC is applicable to this period.

Sanction

The application is deemed withdrawn (R71(7) EPC):

  • in case of no response, or
  • if the response (in case of approval) omits an essential element (grant official fee, translation, claim official fees).

If the A121 EPC is applicable to this period, only a single further processing official fee is payable even if several acts were missed (forgotten official fees, translations not provided): [montant_epo default= »240 € » name= »A2(1).12 RRT – poursuite de procédure pour la 71(3) »] for further processing (A2(1).12 RRT).

If the Applicant Agrees with the DruckExemplar

Actions to be taken to give consent

Within the 4-month period mentioned above, the applicant must:

  • pay the grant and publishing official fee (R71(3) EPC): [montant_epo default= »875 € » name= »A2(1).7 RRT »] (A2(1).7 RRT and A2(2).7 RRT);
    • for European patent applications filed before 1 April 2009 and international applications entering the regional phase before that date, this official fee includes an additional official fee per page from the 36th page (inclusive) (Guidelines C-V 1.2):
      • [montant_epo default= »14 € » name= »A2(2).7 RRT – page supplémentaire au delà de 35″]/page from the 36th page (A2(2).7 RRT).
      • The number of pages is calculated based on the DruckExemplar and not on the specification (J4/81).
    • This additional official fee is now included in the filing official fee (Guidelines A-III 13.2) and is therefore not due for European patent applications filed after 1 April 2009 and international applications entering the regional phase after that date.
  • provide a translation of the claims (for all sets where applicable Guidelines C-V 1.3) in the two other official languages than the language of the proceedings (R71(3) EPC) for the specification (A14(6) EPC);
  • pay the claims official fee (R71(4) EPC), provided for in A2(1).15 RRT ([montant_epo default= »225 € » name= »A2(1).15 RRT – revendication de la 16 à la 50″]/claim from the 16th and [montant_epo default= »555 € » name= »A2(1).15 RRT – revendication au delà de la 50″]/claim from the 51st, if the application is filed after 1 April 2009) and A2(2).15 RRT ([montant_epo default= »225 € » name= »A2(2).15 RRT – revendication au delà de la 15″]/claim beyond the 16th, if filed before 1 April 2009):
    • if the set of claims to be granted contains more than 15 claims (strictly);
    • if the claims official fee has not already been paid at the time of filing (R45(1) EPC) or at the time of entry into the national phase (R162(1) EPC);
    • furthermore, if the number of claims has decreased between filing and grant, the claims official fees are not refunded (Guidelines C-V 1.4);
    • the set to be considered for the calculation is the one containing the highest number of claims (Guidelines C-V 1.4, e.g., several sets due to national prior art).

Completion of all these actions constitutes consent (R71(5) EPC).

It should be noted that the texts of the translations of the claims in the two official languages other than the language of the proceedings have no legal effect at the EPO level (Guidelines A-VII 8). Nevertheless, it is advisable to consult the national law of each country to determine the legal effect of these translations regarding the protection conferred by the patent (e.g., in France, if the translation is narrower than the initial claims, the narrower scope must be taken into account for infringement analysis, L614-10 CPI).

Withdrawal of agreement

It is possible to exceptionally withdraw one’s agreement (Guidelines H-II 2.6) but at the discretion of the examining division:

  • admission of minor amendments that do not require resuming the examination and do not significantly delay the grant decision (G7/93);
  • filing of separate sets of claims for designated states that have made a reservation.

If the division does not wish to resume the examination, a refusal will likely be issued based on A97(2) EPC.

In any event, the examining division cannot restart the examination after the grant decision (G12/91).

If the applicant does not agree with the DruckExemplar

Principle

It is possible to propose certain amendments within the 4-month time limit (R71(6) EPC).

These amendments may be submitted within this time limit, even if the applicant’s agreement had already been given previously (G7/93, although it refers to EPC73, its reasoning appears to remain valid) as long as the grant decision has not been handed over to the internal mail service (G12/91, i.e., 3 days before the date indicated on the notification, unless a date of handover to the internal mail service is clearly indicated on the decision, T2573/11) and the amendments are minor and do not require resuming the substantive examination.

By submitting the amendments, the applicant is deemed to have withdrawn their agreement (Guidelines H-II 2.6).

If the examining division approves the proposed amendments and/or is convinced by the arguments presented, it will issue a new notification under R71(3) EPC unless the applicant explicitly waives this right (« Notice from the European Patent Office dated 8 June 2015 concerning the possibility of waiving the right to receive a further communication under Rule 71(3) EPC« , OJ 2015, A52). Of course, if the applicant waives their right to receive a new R71(3) EPC, they must simultaneously perform all necessary acts to give their agreement (see above: official fees, translation, etc.).

Otherwise, the examination procedure will resume (R71(6) EPC).

The same applies if the applicant requests the cancellation of all or part of the amendments made by the examiner (Guidelines C-V 4.1).

Of course, all relevant rules for responding to an A94(3) EPC apply here: in particular, it is necessary to identify the basis for the amendments (R137(4) EPC).

Response to a second R71(3) EPC

The official fees already paid upon the first notification R71(3) EPC are credited toward the new official fees (R71bis(5) EPC, but with separate processing, one cannot be used to pay the other).

If the grant and publication official fee (« Notice from the European Patent Office, dated 13 December 2011, concerning amended Rule 71 EPC and new Rule 71a EPC« , OJ 2012, 52 and Guidelines A-X 11.1):

  • increases (e.g., increase in fee scales), the balance must be paid within the prescribed period.
  • decreases (e.g., reduction in the number of pages), the excess is refunded.

If the claims official fee (« Notice from the European Patent Office, dated 13 December 2011, concerning amended Rule 71 EPC and new Rule 71a EPC« , OJ 2012, 52 and Guidelines A-X 11.2):

  • increases (e.g., increase in the number of claims), the balance must be paid within the prescribed period.
  • decreases, the excess is refunded.

Other official fees paid (e.g., continuation of proceedings official fee) are not credited toward these new official fees (Guidelines A-X 11.4).

Legal value of the Druckexemplar

If the specification is incorrect, only the text on which the grant decision was based is legally binding (Guidelines C-V 10).

Resumption of examination

It may happen that the examining division resumes examination even after an R71(3) EPC notification has been issued: this is rare but remains possible until the grant decision (R71bis(2) EPC, i.e., 3 days before dispatch of the notification by the EPO, G12/91, unless a date of internal mail delivery is clearly indicated on the decision, T2573/11).

This may occur, in particular (Guidelines C-V 6.1):

  • in case of third-party observations providing relevant prior art;
  • in case of amendments made by the applicant.

Withdrawal or refusal before notification of the grant decision

If the application is refused, withdrawn, or deemed withdrawn before notification of the grant decision, the grant and publication official fee will be refunded (R71bis(6) EPC):

  • for withdrawal, the refund is immediate;
  • for refusal, the refund occurs at the end of the period for filing an appeal (Guidelines A-X 10.2.5);
  • for deemed withdrawal, the refund occurs at the end of the period for requesting further processing (Guidelines A-X 10.2.5).

Any claims official fees paid are not covered by this refund (Guidelines A-X 10.2.5).

Grant decision

Content of the Decision

If the grant decision is ultimately taken (after the applicant’s approval, see above, and after completion of the technical preparations for publication Guidelines C-V 10), the decision specifies:

  • the version of the text on which the decision was based (R71bis(1) EPC);
  • the date of the mention of the grant.

Deadline for a Grant

One may wonder whether the expiration of the patent will block a potential grant. According to the board of appeal, the applicant is fully entitled to request a grant even after the expiration of the application, as rights may be affected by such grant (T910/18).

Correction of Errors in the Decision

Principles

Errors in the text of the patent in the grant decision cannot be corrected (G1/10).

Translations of the claims do not form part of the decision and therefore cannot be corrected under R140 EPC (Guidelines H-VI 3.3).

A legal error cannot be corrected (G1/97): only an appeal is possible.

Case of a Manifestly Erroneous Text in the 71(3) Communication

It may happen that the text of the Rule 71(3) EPC communication is manifestly erroneous (e.g., every other page is missing) but the proprietor nonetheless gives their approval of the text.

Under this assumption, the boards of appeal may still accept an appeal against the grant decision by considering that the EPO’s practice of making minor amendments to the text and justifying such amendments would not be followed: the text annexed to the communication under Rule 71(3) EPC could not be the text on the basis of which the examining division intended to grant the patent (T1003/19).

Correction of the Description Using a Re-translation

It is always possible to bring the text of the application into conformity with the text as filed (A14(2) EPC) since it is the filed text that prevails (A70(2) EPC).

However, after grant (e.g., in opposition), the correction must not extend the scope of protection (A101(3) EPC together with A123(3) EPC).

Date of the Decision

In oral proceedings, it is customary to consider that the date of the decision is that of the closure of the debate during the oral proceedings (G12/91 and R111(1) EPC).

For a written procedure, the Enlarged Board of Appeal has determined that the decision is issued 3 days before the dispatch of the notification by the EPO (G12/91).

Effect of the decision

The decision concludes the examination procedure: no further arguments or new documents may be considered by the Examining Division.

Conversely, the Examining Division may take into account new elements submitted by the parties up until the day before the date of the decision. Furthermore, the Examining Division is not bound by the fact that it issued a communication under R71(3) EPC, i.e., by the fact that it once contemplated grant.

Thus, the examination procedure may be resumed at any time before the grant decision (R71bis(2) EPC).

If the application is refused, withdrawn, or deemed withdrawn before the notification of the grant decision, the grant and publication official fee is refunded (R71bis(6) EPC).

Publication of the mention of grant

Date of publication

This publication normally occurs on one of the Wednesdays following the grant decision (4 weeks after the issuance of the decision, « Notice from the European Patent Office, dated 25 April 2006, concerning the completion of technical preparations for the publication of European patent specifications« , OJ 2006, 409).

Two situations may block the grant process:

  • if an annuity official fee
    • becomes due before the notification under R71(3) EPC, the grant decision is suspended (Guidelines C-V 2 and R71bis(1) EPC);
    • becomes due after the notification under R71(3) EPC and before the next possible publication date in the OJ, this due date must be settled with the EPO, and the publication of the mention of grant is suspended until payment is made (R71bis(4) EPC);
      • the applicant is informed (R71bis(4) EPC);
      • if the official fee (and, where applicable, the additional official fee) is not paid in due time, the application is deemed withdrawn (A86(1) EPC). Only A122 EPC applies.
  • if the designation official fee
    • becomes due before the notification under R71(3) EPC, the grant is suspended (Guidelines C-V 2 and R71bis(1) EPC);
    • becomes due after the notification under R71(3) EPC (normally, the latter is due 6 months after the publication of the European Search Report, R39 EPC), the publication of the mention of grant is suspended until payment is made (R71bis(3) EPC).
      • if the official fee is not paid in due time, the application is deemed withdrawn (A79(2) EPC together with R39(2) EPC).

The date of publication is recorded in the EPR (R143(1) o) EPC).

Effects of publication

The decision to grant takes effect only upon publication of the mention of grant: this publication is the event that « gives birth » to the patent (A64(1) EPC and A97(3) EPC).

The term of protection conferred by the patent is 20 years from the filing date of the application (A63(1) EPC, and not from its priority date). However, a contracting state may provide for a longer term in certain specific situations, particularly if the product or process is subject to an administrative procedure (A63(2) EPC, such as marketing authorizations).

This protection extends to the territories of the contracting states for which the patent is validated (A64(1) EPC) and, where applicable, certain dependent territories if these have been declared by the contracting states (A168(1) EPC, e.g., Mayotte for France, former Netherlands Antilles for the Netherlands, the Isle of Man for the United Kingdom).

The publication of the mention of grant triggers the following events:

  • it is no longer possible to divide the application (the application no longer being pending, G1/09, and Guidelines A-IV 1.1.1);
  • it is no longer possible to withdraw the application (same remark);
  • it is no longer possible to centrally assign the application (A71 EPC, same remark).

Finally, the 9-month opposition period begins from this date.

Publication of the patent specification

Publication date

The EPO publishes the specification as soon as possible after the publication of the mention of grant (simultaneously according to the « *Notice from the European Patent Office dated 25 April 2006 concerning the completion of technical preparations for the publication of European patent specifications* », OJ 2006, 409).

Legal nature and authentic text

The authentic text is the Druckexemplar and not the specification (Guidelines C-V 10): its sole purpose is simply to facilitate public access to the content of the patent.

Technical preparations for the publication of the specification

The time between the start of technical preparations for the publication of patent specifications and their actual publication is 5 weeks (« *Notice from the European Patent Office dated 25 April 2006 concerning the completion of technical preparations for the publication of European patent specifications* », OJ 2006, 409).

Content and form

The specification comprises (R73(1) EPC):

  • the description,
  • the claims,
  • where applicable, the drawings.

It also mentions:

  • the period during which an opposition may be filed (R73(1) EPC),
  • the designated contracting states (R73(3) EPC), i.e. those still designated at the time of completion of the technical preparations (Guidelines C-V 10).

These specifications are published in electronic form on the Internet (R73(2) EPC and « Decision of the President of the European Patent Office, dated 12 July 2007, on the form of the publication of European patent applications, European search reports and European patent specifications » OJ 2007, Special Edition No. 3 D.3, A2(1)).

No paper copy is sent to the applicant unless requested (this is a free request, Guidelines C-V 1.5 for grant, Guidelines D-VI 7.2.3 for opposition).

The specification is published in the language of the proceedings (A14(6) EPC) and the claims are in the three official languages of the EPO.

Correction of errors in the specification

If an error is found in the specification, the EPO may at any time correct its error of its own motion or upon request (Guidelines C-V 10 or Guidelines H-VI 4).

This correction is recorded in the EPO Bulletin.

There is no point in filing an appeal against the grant decision (T84/16) since the specification is not part of the decision.

Some have argued that this correction procedure was not provided for in the EPC and that an appeal was therefore fully justified: for the Board of Appeal (T84/16), the obligation imposed on the EPO by A98 EPC to publish the text of the granted patent implies the obligation to correctly reproduce this text. The fact that the EPO may at any time correct errors in the published text is therefore in accordance with the principle of good administration.

Patent certificate

Upon publication, the EPO issues a certificate to the patent proprietor (R74 EPC).

This certificate is provided in paper format to the proprietor(s).

It is possible to obtain certified copies of the certificate upon payment of an administration fee of [montant_epo default= »50 € » name= »Schedule of fees and official fees – Certified copies of the certificate »] (« Decision of the President of the European Patent Office, dated 12 July 2007, concerning the completion of the technical preparations for the publication of the European patent application » , OJ 2007, Special Edition No. 3 D.1, A1(3) and « Schedule of fees and official fees » OJ EPO 3/2012, supplement, 2.1 point 4, p19).

Graphic summary

schemadelivrance

Duration of examination

There is no « standard » duration for the examination of a filing.

However, situations may arise where several years elapse between each notification from the EPO: this may constitute a procedural violation.

By way of illustration, the following situation was considered a procedural violation (T823/11):

  • entry into the European phase: 1997;
  • supplementary European search report: 1999;
  • first notification from the examining division: 2004;
  • second notification: 2005;
  • third notification: 2006,
  • oral proceedings: 2010.

Nevertheless, let’s not be mistaken… you will only be reimbursed for your appeal fee, not for all the official fees you will have paid throughout the entire procedure, right?

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