Chapter 1. Request for examination
Section 1.1. Case of the "standard" request
1.1.1. Submission of the request for examination
1) Form and time
The request for examination (A94 (1) EPC) must :
- be presented in writing (R70 (1) EPC, the form 1001 has a box pre-checked the applicant) by the applicant,
- accompanied by payment of the examination fee (A94 (1) EPC),
- to be presented at any time (Guidelines C-II 1) but in the 6 months from the mention of the publication of the search report to the European Patent Bulletin (R70 (1) EPC).
This period benefits from the continuation of the procedure of theA121 EPC.
If the date of the mention of the publication of the RRE to the BEB is not correct in the notification according to the R69 (1) EPCit is this date that must be taken into account (unless it is absurd, eg publication in 5013, R69 (2) EPC).
It can also be presented on free paper by paying the examination fee.
The date of submission of the request for examination is entered in the REB (R143 (1) (m) EPC).
The date of publication of the European search report shall be notified to the applicant by means of a notification issued in accordance with R69 (1) EPC.
2) Examination fee
The examination fee is 1635€ (A2 (1) .6 RRT) for applications filed after 1 January 2005 and 1825€ if not.
This tax can be paid by anyone.
Discount before April 1, 2014
It is possible to benefit from a 20% discount (R6 (3) EPC together A14 (4) EPC and A14 (1) RRT) if the applicant (domiciled or domiciled in a Contracting State having a language other than German, English or French as an official language, or being a national of that State) submits the request for examination in that national language .
Discount effective April 1, 2014
Nevertheless, for applications filed (incoming in phase) as of 1 April 2014 ("Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulation to the European Patent Convention and Article 14 (1) of the Rules relating to Fees” , OY 2014, A4), to benefit from this reduction, all depositors will have to be (R6 (4) EPC and R6 (7) EPC):
- a small or medium business
- a physical person ; or
- a non-profit organization, a university and a public research organization.
Criteria are given in the Commission Recommendation 2003/361 / EC of 6 May 2003 (R6 (5) EPC).
Applicants must declare their membership in a higher mentioned category, but the EPO may ask for evidence in case of doubt (R6 (6) EPC).
The applicant will obtain a 30% tax reduction (A14 (1) RRT).
3) Payment of the fee before the presentation of the request
If an Exam fee is paid before the submission of the request for examination, it will be refunded automatically, even if the request for Examination is presented the next day (tax paid without cause, AX 10.1.1 Guidelines).
1.1.2. Confirmation of the request
In the event that the applicant has validly submitted a request for examination before the search report is notified to him, confirmation will be requested (R70 (2) EPC) within a specified time.
This time limit is 6 months from the mention of the publication of the RRE at the BEB ("Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533, point 5.1.4, Guidelines C-II 1.1).
TheA121 EPC is applicable to this period.
Within the same period, the applicant may respond to the objections raised in the RREE (R70bis (2) EPC).
Responding to objections is considered a statement by the applicant confirming the continuation of the request even if it is not explicit (Guidelines C-II 1.1).
2) Waiver of confirmation
This confirmation has two exceptions.
No confirmation will be requested if:
- the holder explicitly renounced it (Directives C-VI 3);
- the holder has submitted a PACE request (acceleration of the procedure, Directives E-VIII 3.2).
In the case of the waiver, and if the applicant has subscribed to the direct debit, the examination fee is levied upon receipt of the waiver.
1) No show
If not submitted in time, the request is deemed withdrawn (A94 (2) EPC).
This finding is made by the depositing section which is then competent (R10 (1) EPC).
If examination fees have been paid (in whole or in part), these are fully refunded (A11 a) RRT).
This finding is made by the depositing section which is then competent (R10 (3) EPC).
1) The request
If a request is made, it can no longer be withdrawn (R70 (1) EPC).
If the request is withdrawn, the examination fee is refunded in full (A11 a) RRT) if the examination on the merits has not started (the EPO informs of the estimated date of the beginning 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“, JO2016, A49).
If the examination on the merits has begun (A11 b) RRT):
- is reimbursed at 50% if the withdrawal occurs:
- is not reimbursed in other cases.
1.1.5. Skills transfer
If the application is validly filed in time, the Examining Division becomes competent:
- as soon as the TPP is sent to the applicant:
- if the request has been made previously and
- if the applicant has waived his right of confirmation (R10 (4) EPC);
- failing this, upon receipt of the applicant's confirmation,
- if the request was made before the transmission of the TPP (R10 (3) EPC);
- failing that, upon submission of the request for examination (R10 (2) EPC).
If the request is withdrawn, the examination fee is refunded in full (A11 a) RRT) if the examination on the merits has not started (the EPO informs of the estimated date of the beginning 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“, JO2016, A49)
If the examination on the merits has begun (A11 b) RRT):
- is reimbursed at 50% if the withdrawal occurs:
- is not reimbursed in other cases.
The fact that the examination has begun must be based on clear and transparent elements ("Notice from the European Patent Office dated 29 January 2013 concerning the adaptation of the search and examination fee refund system ", OG 2013, 153): the launch date of the document search algorithm A54 (3) EPC Examiner in charge of the examination is included in the file for this to be verifiable.
Section 1.2. Case of the Euro-PCT application
Everything goes exactly like a classic request. Nevertheless, there is a small peculiarity as to the delay presentation of the request!
The request for examination must be submitted:
- in the 6 months from the international publication of the international search report (A153 (6) EPC together R70 (1) EPC);
- if the previous delay expires before entering phase, upon entering phase.
These delays benefit from the continuation of the procedure of theA121 EPC.
Chapter 2. Principles Guiding the Review
Section 2.1. Sincerity
The examination procedure must be guided by the principle of sincerity, including that of the Examining Division (J27 / 92).
For example, if the Office treats an applicant's response as a valid procedural act (eg request for extension of time), it can not be reconsidered (T1825 / 14)
Section 2.2. Contradictory
In addition, the procedure is contradictory (A113 (1) EPC). Decisions must be based on grounds on which the parties have taken a position:
- a party must have the opportunity to express themselves on a document, even if it is the latter who has presented this document (T18 / 81);
- it is important to point out to the different parties their gross errors (eg reversal of document dates, T185 / 82).
Section 2.3. Unbound examiner
The Examiner is not bound by the positions of the Research Division regarding non-unity (Guidelines C-III 3.1.1).
Section 2.4. Challenge of the Examiner
Even if the provisions of theA24 (3) EPC the challenge should only apply to members of the Boards of Appeal and the Enlarged Board of Appeal, the decision G5 / 91 stated that the obligation of impartiality also applies to staff members of the EPO's first instance
Nevertheless, the fact that a member of the Opposition Division is a former employee of the applicant is not a sufficient reason to declare that member to be biased (T143 / 91).
If a member of a chamber has a close family relationship with a party, that member should beG1 / 05).
Chapter 3. Examination file
The file sent to the Examiner contains:
- the request for examination;
- description, drawings and claims (as filed);
- changes made on this date (if they exist):
- the applicant's positions following any comments by third parties (R114 (2) EPC);
- the search report and the applicant's possible observations;
- priority documents;
- copies of the documents cited.
Chapter 4. Review Steps
Section 4.1. Response to the research report
4.1.2. No answer needed
It is not necessary to answer a search report if:
- no objection is reported in the RER (R70bis (1) EPC and R70bis (2) EPC);
- the notice was waived R70 (2) EPC.
4.1.3. Time limit
The deadline to answer is 6 months from the mention of the BEB publication of the RRE (R70bis (1) EPC together R70 (1) EPC or R70bis (2) EPC together R70 (2) EPC together "Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533point 5.1.4).
TheA121 EPC is applicable to this period.
This possibility will not be possible later (R137 (3) EPC).
4.1.5. Sanction in case of no response
In case of non-response (and if the answer is mandatory), the request is deemed withdrawn (R70bis (3) EPC).
Not considered an acceptable answer (Directives B-XI 8):
- a procedural request (eg request for maintenance);
- a request that at this stage can not be accepted (eg motion for decision rendered in the state of the file).
Section 4.2. Analysis of the response to the RREE
4.2.1. Analysis of changes
The examiner reviews the applicant's amendments and comments in response to the RREE (CI Guidelines 4).
If changes have not been identified or their basis has not been identified in the application, a notification according to R137 (4) EPC is sent to obtain this indication.
If objections concerning the unity of invention A82 CBEany problem that resulted in an incomplete search R63 (1) EPC or the uniqueness of claims of the same type have been raised R43 (2) EPC and that these objections are still valid, the examiner:
- review these issues and
- invites the applicant to limit his request if they remain valid (respectively A82 CBE, R63 (3) EPC and R62bis (2) EPC).
4.2.2. Search for interfering patent applications
The launch of this search is recorded in the file
4.2.3. Examination of missing parts
If the examiner considers that, despite the non-modification of the filing date following the filing of the missing part, the conditions of the R56 (3) EPC (or R20.5.d PCT) are not completed, he indicates this to the applicant giving him the opportunity to comment.
The examiner then indicates the new filing date (Directives C-III 1). The applicant is notified that he can still withdraw the missing parts within a 2 months, in order to keep its date ... otherwise the filing date will be changed.
4.2.4. Review of claims filed after filing
A request for indication of the support in the description may be formulated according to the R137 (4) EPC.
Section 4.3. Official Letters
4.3.1. The notification
Of course, despite the modifications made or the arguments presented in the response to the search report, the Examining Division may:
- to keep his objections;
- not to be convinced;
- to have new objections.
This notification must be motivated (R71 (2) EPC).
4.3.2. The response time
- 2 months whether the irregularity raised is minor or of a purely formal nature;
- 4 months in other cases.
This period benefits from theA121 EPC.
This period may be extended to 6 months on request before the expiry of that period (R132 (2) EPC).
Normally, no justification is required (Directives E-VIII 1.6).
4.3.3. The answer
2) Limits of Discretion of the Examination Division
The case law has sought to limit the discretionary power that may appear absolute of the Examination Division.
Thus, an amendment to withdraw a previous amendment remains an amendment to be authorized (H-III 2.5 Guidelines).
In addition, the changes should be acceptable if (T937 / 09):
- they are made in response to a notice raising for the first time reasoned objections;
- these objections could already have been raised in the first notification;
- they constitute an objective attempt to overcome these objections.
If, in order to be accepted, requests must be prima facie the refusal of the application must not be limited to mere allegations (T233 / 12 or T1214 / 09) and must indicate how the applicant's arguments are erroneous.
3) Renunciation of the answer?
The fact that the applicant sends a procedural letter of instruction does not mean that he has replied to the notification and that he waives his right to be heard (T685 / 98).
4) Special case of waiver to confirm the examination
If the applicant has requested an examination and has waived the possibility of confirmation, the written opinion is omitted: a notification under theA94 (3) EPC (Directives C-VI 3 and R62 (1) EPC) is issued a few days later.
When responding to this first notification under theA94 (3) EPCit is entirely possible for the applicant to modify his request as he sees fit (ie without the authorization of the Examining Division, R137 (2) EPC, H-II Guidelines 2.2).
5) Modification with unwanted elements
The modifications of the claims (R137 (5) EPC):
- should not relate to items that have not been searched for and
- which are not related to the invention or plurality of inventions originally claimed so as to form a single general inventive concept.
It is thus possible to draw the following conclusions:
- the fact that the elements have not been sought while the original claims are unitary with the new claims does not allow an objection to be R137 (5) EPC ;
- the amendment of the original claim by a limitation of the description generally does not raise an objection to R137 (5) EPC (T377 / 01);
- the fact that additional research is necessary is not a criterion for raising an objection under R137 (5) EPC (Directives 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 block considered as non-unitary (a priori or a posteriori) with the original claim (T708 / 00 and T333 / 10), because in this case the inventive concept changes.
No unity and combination of two claims of different groups
As we have seen, it is possible to combine two claims except if one of the claims belonged to a block considered as non-unitary (a priori or a posteriori) with the original claim (T708 / 00 and T333 / 10), because in this case the inventive concept changes.
Nevertheless, you have to be careful.
For the sake of simplicity, the Examiner most often indicates coarse groups, 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 wrong because of the usual multi-dependencies of the claims.
For example, if Claim 3 depends "of one of the preceding claims", This claim 3 will be in group 2 only in its dependence on claim 1, but will also be in group 1 in its dependence on claim 2.
Therefore, in the example above, 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 RRI during the international phase of a Euro-PCT application covered all the claims, but that in the supplementary search report, a unity problem was raised and only the first invention was sought, only this last will be considered as having been the subject of a search (T1981 / 12).
6) Modification with elements excluded from the search
The applicant may have indicated a subset of the claims to be searched:
- because the EPO had considered that the claims as filed did not comply with the R43 (2) EPC (only one independent claim of the same type, R62bis EPC);
- because the EPO had considered that a complete search was not possible (R63 EPC).
In this situation, it is not possible to reintroduce, as principal (ie as independent) the elements excluded from the research (R137 (5) EPC).
On the other hand, it is still possible to combine two claims: a first claim and a second dependent claim, if the first claim has been sought, even if the second dependent claim has not been sought (T708 / 00 contra T333 / 10).
7) Modification with abandoned elements
If the applicant has deleted an element of the application, he must avoid any statement that could be interpreted as abandonment. In the case of abandonment, this element can not be reintroduced (H-III 2.5 Guidelines).
8) Form of changes
In particular :
- the modifications must be clearly indicated to the EPO and indicate, where appropriate, the basis of the amendment (R137 (4) EPC).
- if this is not the case, the EPO may request that this irregularity be corrected 1 month (R137 (4) EPC, except in oral proceedings or when preparing it, Directives H-III 2.1.3).
- in the absence of a response, the request is deemed withdrawn (A94 (4) EPC);
- the deadline for 1 month is not prorogeable ("Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Regulations under the European Patent Convention” , OJ 2009, 533point 7.3);
- theA121 EPC is applicable to this period;
- if new modifications are submitted within this period, always without indicating the basis of the modifications, the request is directly deemed withdrawn (A94 (4) EPC) without further notification (Directives H-III 2.1.2).
- if the initial application has not been filed in an official language, it is sufficient to indicate the basis in the translated version (Directives H-III 2.1);
- if this is not the case, the EPO may request that this irregularity be corrected 1 month (R137 (4) EPC, except in oral proceedings or when preparing it, Directives H-III 2.1.3).
- the modifications of the description or the claims may be made:
- via the deposit copies of pages of the original application on which the changes appear (Directives H-III 2.3)
- via the deposit replacement pages identified with markups (H-III 2.2 Guidelines),
- but this technique should (in theory) be permitted only if the modifications are so numerous as to affect the clarity of the copies mentioned above (Directives H-III 2.3);
- the re-filing of fully retyped parts would normally not be allowed, as verification that there is no unsupported and "hidden" addition can be extremely time-consuming and tedious (T113 / 92);
- they must respect the conditions of the R49 EPC and R50 EPCand, in principle, must be typed 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” , OG 2013, 603):
- thus handwritten modifications should normally be prohibited.
It is not possible to "file" new claims simply by stating that claims 1 and 7 are merged (T1480 / 12).
9) Principle of uniqueness of the request
In principle, the European demand forms a whole and it is not possible to have several sets of claims (A118 EPC).
This principle has certain exceptions if:
- the EPO is informed of the existence of prior national rights (R138 EPC) within the meaning ofA139 (2) EPC.
- it is not for the examiner to judge whether the applicant has correctly limited his application in relation to the previous national law (Guidelines H-III 4.5);
- he must check that the limitation does not contravene the requirements of the EPC;
- a description and modified drawings may be required (eg modification of the description to explain why a new game has been introduced (Guidelines H-III 4.5);
- there is a document A54 (3) EPC considered as prior art for an application filed before December 13, 2007 (ie under the CBE73 regime) and not designating the same countries as the prior art (R87 CBE73 and Directives H-III 4.2);
- there was a transfer of the patent for certain designated states only, under theA61 CBE.
- there were reservations from some states under theA167 (2) (a) CBE73 or A167 (2) (b) CBE73 :
- these reservations applied only to applications filed before October 7, 1992;
- States could exclude from patentability:
- chemical, pharmaceutical or food products as such;
- agricultural or horticultural processes.
- theAustria has reservations about chemicals, pharmaceuticals or food as such ("Reservations made by Austria Article 167 (2) (a) EPC” , OJ 1979, 289); these reserves have no effect since 7 October 1987;
- the Greece and Spain have reservations about chemicals, pharmaceuticals or food as such ("Greece and Spain, Contracting States to the European Patent Convention from 1 October 1986” , OJ 1986, 200). These reservations have no effect since 7 October 1992 ("Notice from the President of the European Patent Office of 13 May 1992 relating to 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 issued (and therefore not to opposition proceedings, "Notice from the European Patent Office dated 18 June 2007, further to the communiqué of 8 March 2007 on the question of the direct applicability in Spain of Article 70 (7) of the Agreement on TRIPS to European patent applications filed before the expiry of the reservation made by Spain under Article 167 (2) (a) EPC” , OG 2007, 439).
In reality, only the EPO is bound by the language of the procedure (Directives A-VII 1.2).
However, amendments to the application must be filed in the language of the proceedings (R3 (2) EPC).
They have no obligation to be delivered within a specified period and therefore can not benefit from the derogations of theA14 (4) EPC.
11) Subsidiary requests
It is quite possible, in response, to present subsidiary games of claims, without abandoning the main game (T1105 / 96).
However, if too many games are dropped, they will not be eligible (T907 / 91).
If the applicant indicates that the main game is not withdrawn if a subsidiary request is accepted, the auxiliary requests can not be notified R71 (3) EPC : Subsidiary requests are not "true" subsidiary requests (Guidelines H-III 3).
The examiner will first examine the main request and then, if it is not considered patentable (CV 1.1 Guidelines), the subsidiary requests in order of preference indicated until one finds a patentable one. He will then make a notification R71 (3) EPC indicating why other requests are not acceptable (in general, by referring to previous notifications, EX Guidelines 2.9).
In case of non-response, the request is deemed withdrawn (A94 (4) EPC).
Section 4.4. Taking into account the answer
It is important to note that the Examination Division must take into account the arguments provided by the applicant.
This consideration can not really be pithy type "the arguments are not convincing".
It must answer precisely to the different arguments (T1385 / 16).
Otherwise, there is a violation of the right to be heard (T1385 / 16).
Section 4.5. Telephone interviews and interviews
When the application is about to be issued, the examiner may consider a telephone interview to overcome the latest problems (Guidelines C-IV 3).
When the applicant requests an interview or a telephone interview, the reviewer should accept it unless he or she considers that it will be of no use in advancing the file (Directives C-VII 2.1). In any case, it is important to specify in advance the topics to be discussed.
During a telephone interview or an interview, the examiner will note the main points of the discussion, write a report and finally show it in the file (Directives C-VII 2.5). A copy of the minutes will be notified to the applicant or, where appropriate, to his representative.
Section 4.6. Rejection of the request
The request is rejected whether the examining division (as a whole and not merely the first examiner) considers that the application does not meet the conditions laid down in the EPC (A97 (2) EPC) after at least one notification from the examining division: in practice, this means that a rejection can not be obtained before any notification A94 (3) EPC.
It is questionable whether a rejection can be pronounced after a notification R161 (1) EPC (because the Examining Division is competent - R10 (2) EPC - unlike the R161 (2) EPC where the Examining Division is not yet competent - R10 (3) EPC or R10 (4) EPC). It seems like no : at least one notification is required A94 (3) EPC, R71 (1) EPC or R71 (2) EPC (E-IX Guidelines 4.1).
The signature of all members (or their seal) must appear on the decision (Directives C-VIII 6 and R113 (2) EPC). The agent name can only be omitted when the document is produced automatically by computer (this is not the case in a decision, even if the document is produced by computer).
His power is totally discretionary in this matter (T84 / 82), but:
- the rejection can not occur before the reply to the first notification of the Examining Division;
- the rejection can not be based on grounds on which the plaintiff could not take a position (A113 (1) EPC).
The rejection must be motivated (R111 (2) EPC).
There is no partial rejection (T5 / 81).
The examining division must strike the right balance between the interest of the applicant (appropriate protection) and the interest of the EPO (prompt conclusion of the procedure) (T755 / 96).
4.6.2. Focus on the "decision rendered in the state of the file"
The applicant may wish to abridge a proceeding and request that a decision be made on the record (EX 2.5 guidelines): an appeal is possible on this decision.
It must be ensured that the decision is correctly reasoned, complete and self-supporting (unless reference is made to prior notification which contains all objections CV 15.2 Guidelines). Reasons for rejection must have been given in previous notifications (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, the decision will not be possible and a new notification will not be possible. A94 (3) EPC will be issued (Guidelines CV 15.4)
Section 4.7. Proposed issuance
This issue may very well be considered from the time of the response to the RREE, if the possible new researches made by the examiner gave nothing ("Notice from the European Patent Office dated 1 July 2005 concerning new Rule 44a EPC (introduction of the extended European search report), the amendment of Articles 2 and 10 of the Regulation on Fees and Reduction of search fee due for additional European search reports under Article 157 (3) (b) EPC” , OJ 2005, 435point I.2).
4.7.1. Notification of the proposed text
The decision to issue can only be based on a text proposed or validated by the applicant (A113 (2) EPC).
This text may include any modifications made by the Examiner (eg: shape corrections, background limitation, T1255 / 04etc.) if the examiner reasonably believes that they will be accepted by the applicant (CV 1.1 Guidelines):
- Harmonization of description and claims;
- Deletion of vague or obviously unimportant indications;
- Introduction of SI units;
- Introduction of reference numbers in the claims;
- Introduction of a summary of the state of the art closest to the invention;
- Amendments, which, although changing the scope of an independent claim, are however clearly necessary;
- Correction of language errors
The applicant then has a period of 4 months to agree to this text (R71 (3) EPC).
TheA121 EPC is applicable to this period.
The request is deemed withdrawn (R71 (7) EPC):
- in case of non-response, or
- if the answer (in case of agreement) omits an essential element (fee, translation, claim fees).
If theA121 EPC is applicable to this time limit, there is only one procedure fee to be paid even if several acts have been missed (forgotten taxes, translations not provided): 255 € of the prosecution fee (A2 (1) .12 RRT).
4.7.3. If the applicant agrees with the DruckExemplar
1) Acts to be done to give his agreement
Within the time limit of 4 months mentioned above, the applicant must:
- pay the fee for issuing and publishing (R71 (3) EPC): 925 € (A2 (1) .7 RRT and A2 (2) .7 RRT);
- for European patent applications filed before April 1, 2009 and international applications entering the regional phase before that date, this fee includes an additional fee per page from the 36th page (inclusive) (CV 1.2 guidelines):
- this additional fee is now included in the filing fee (Directives 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.
- produce a translation claims (for all games if applicable CV 1.3 Guidelines) in both official languages other than the language of the proceedings (R71 (3) EPC) for the booklet (A14 (6) EPC);
- pay the claim fee (R71 (4) EPC), provided for inA2 (1) .15 RRT (235 €/ Rev. from the 16th and 585 €/ Rev. from the 51st, if the application is filed after April 1, 2009) and A2 (2) .15 RRT (235 €/ Rev. Beyond the 16th, if filed before April 1, 2009):
- if the set of claims to be issued contains more than 15 claims (strictly);
- if the claims fee has not already been paid at the time of filing (R45 (1) EPC) or when entering phase (R162 (1) EPC);
- on the other hand, if the number of claims has decreased between filing and delivery, claim fees are not refunded (CV 1.4 Guidelines);
- the game to take into account for the calculation is the one that contains the most claims (CV 1.4 Guidelines, ex. several games due to national prior art).
The accomplishment of all these actions is worth agreement (R71 (5) EPC).
It should be noted that the texts of the translations of the claims in both official languages other than the language of the proceedings have no legal effect at the level of the EPO (Directives A-VII 8). Nevertheless, it is necessary to look at the national law of each country to know the legal effect of these translations concerning the protection conferred by the patent (eg in France, if the translation is more restricted than the initial claims, it is the scope the smallest that will have to be taken into account for the analysis of counterfeiting, L614-10 CPI).
2) Withdrawal of the agreement
It is possible to withdraw its agreement (H-II 2.6 Guidelines) but at the discretion of the Examining Division:
- admission of slight modifications that do not require re-examination and do not significantly delay the decision to grantG7 / 93);
- depositing separate sets of claims for designated States making a reservation.
If the division does not wish to resume the examination, a rejection will probably be pronounced on the basis of theA97 (2) EPC.
In any case, the Examining Division can not return to restart the examination after the decision to grantG12 / 91)
4.7.4. If the applicant does not agree with the DruckExemplar
It is possible to propose certain modifications within the 4 months (R71 (6) EPC).
These modifications can be produced within this period, even if the applicant's agreement had already been given previously (G7 / 93even if it refers to the CBE73, it seems that its reasons remain valid) as long as the decision to grant has not been delivered to the internal mail service (G12 / 91, ie 3 days before the date indicated on the notification, unless a date of delivery to internal mail is clearly indicated on the decision, T2573 / 11) and that the amendments are minor and do not require the re-examination of the merits.
By submitting the amendments, the applicant is deemed to have withdrawn the agreement (H-II 2.6 Guidelines).
If the examining division approves the proposed amendments and / or is convinced by the arguments presented, it will issue a new notification in accordance with the 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 new notification under Rule 71 (3) EPC” , OJ 2015, A52). Of course, if the applicant waives his right to receive a new R71 (3) EPChe must at the same time as this renunciation carry out all the acts necessary to give his agreement (see above: taxes, 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 modifications made by the examiner (CV 4.1 guidelines).
2) Reply to a second R71 (3) EPC
- increase (eg increase of scales), the balance must be paid within the prescribed time.
- decreases (eg decrease in the number of pages), the surplus is refunded.
- increases (eg increase in the number of claims), the balance must be paid within the prescribed time.
- decreases, the surplus is repaid.
Other taxes paid (eg tax of continuation of the procedure) are not imputed on these new taxes (AX 11.4 Guidelines).
4.7.5. Legal value of DruckExemplar
If the specification is incorrect, only the text on the basis of which the decision to grantCV Guidelines 10).
4.7.6. Resumption of the examination
It may happen that the Examining Division resumes examination even though a R71 (3) EPC notification has been sent: this is rare, but remains possible until the grant decision (R71bis (2) EPC, ie 3 days prior to the dispatch of the notification by the EPO, G12 / 91unless a date of delivery to internal mail is clearly indicated on the decision, T2573 / 11).
This case may occur in particular,CV Guidelines 6.1):
- in the case of comments from third parties providing an interesting document;
- in case of changes made by the applicant.
4.7.7. Withdrawal or rejection before notification of the decision to grant
If the application is rejected, withdrawn or deemed withdrawn before service of the decision of grant, the fee for grant and publication will be refunded (R71bis (6) EPC):
- for the withdrawal, the refund is immediate;
- for rejection, the repayment occurs at the end of the time limit for filing an appeal (AX 10.2.5 Guidelines);
- for the deemed withdrawn, the repayment occurs at the end of the period to require the continuation of the procedure (AX 10.2.5 Guidelines).
Any claims fees paid are not covered by this refund (AX 10.2.5 Guidelines).
Section 4.8. Decision of issue
4.8.1. Content of the decision
If the decision to issue is finally made (after the agreement of the applicant, see above, and after the end of the technical preparations for publication CV Guidelines 10), the decision states:
- the version of the text on which the decision was taken (R71bis (1) EPC);
- the date of the mention of the issue
4.8.2. Correction of errors in the decision
Errors in the patent text of the grant decision born can not be corrected (G1 / 10).
An error of law can not be corrected (G1 / 97): only an appeal is possible.
4.8.3. Correction of the description with a re-translation
4.8.4. Date of the decision
For a written procedure, the Enlarged Board of Appeal determined that the decision was 3 days prior to the dispatch of the notification by the EPO (G12 / 91).
4.8.5. Effect of decision making
The decision-making closes the Examination procedure: no further argument or new document can be considered by the Examination Division.
On the other hand, the Examination Division may take into account new elements relied on by the parties up to the day before the date of the decision. In addition, the Examination Division is not bound by the fact that it has made a notification R71 (3) EPC, ie by the fact that one day it considered the issue.
Thus, the Examination procedure be resumed at any time before the decision to grantR71bis (2) EPC).
If the application is rejected, withdrawn or deemed withdrawn before meaning the issuing decision, the fee for issuing and publishing is refunded (R71bis (6) EPC).
Section 4.9. Publication of the mention of the issue
4.9.1. Date of publication
This publication normally occurs Wednesdays following the decision to grant4 weeks after the issuance of the decision, "Notice from the European Patent Office dated 25 April 2006 concerning the completion of the technical preparations undertaken for the publication of the European patent specifications” , OG 2006, 409).
Two situations can block the delivery process:
- if a annual fee
- expires before notification R71 (3) EPCthe decision to grant is suspended (CV 2 Guidelines and R71bis (1) EPC);
- expires after notification R71 (3) EPC and before the next possible date of publication in the BO, this deadline is due from the EPO and the publication of the mention of the issue is suspended until the payment is made (R71bis (4) EPC);
- if the designation fee
- expires before notification R71 (3) EPC, the deliverance is suspended (CV 2 Guidelines and R71bis (1) EPC);
- expires after notification R71 (3) EPC (normally, the latter is due 6 months after the publication of the RRE, R39 EPC), the publication of the mention of the grant is suspended until the payment is made (R71bis (3) EPC).
The publication date is entered in the REB (R143 (1) (o) EPC).
4.9.2. Effects of publication
The term of protection conferred by the patent is 20 years as from the filing of the application (A63 (1) EPCnot from its priority date). However, it is possible for a Contracting State to provide for a longer period in certain particular situations, in particular if the product or process is subject to an administrative procedure (A63 (2) EPC, like the AMM).
This protection extends to the territories of the Contracting States for which the patent is validated (A64 (1) EPC) and possibly certain additional territories if declared by the Contracting States (A168 (1) EPC, ex. Mayotte for France, former Netherlands Antilles for the Netherlands, Isle of Man for the United Kingdom).
The publication of the mention of the issue results in the following events:
- it is no longer possible to divide the request (the application is no longer pending, G1 / 09, and Guidelines A-IV 1.1.1);
- it is no longer possible to withdraw the request (same remark);
- it is no longer possible to transfer the request centrally (A71 CBE, same comment).
Finally, the opposition period of 9 months starts from this date.
Section 4.10. Publication of the patent specification
4.10.1. Publication date
The EPO publishes the booklet as soon as possible after the publication of the mention of issue (at the same time according toNotice from the European Patent Office dated 25 April 2006 concerning the completion of the technical preparations undertaken for the publication of the European patent specifications” , OG 2006, 409).
4.10.2. Legal nature and authentic text
The authentic text is the DruckExamplar and not the booklet (CV Guidelines 10): its sole purpose is simply to facilitate public access to the content of the patent.
4.10.3. Technical preparations for the publication of the booklet
The period between the beginning of the technical preparations for the publication of the patent specifications and their effective publication is 5 weeks (“Notice from the European Patent Office dated 25 April 2006 concerning the completion of the technical preparations undertaken for the publication of the European patent specifications” , OG 2006, 409).
4.10.4. Content and form
The booklet includes (R73 (1) EPC):
- the description,
- the revendications,
- where appropriate, the drawings.
He also mentions:
- the period during which opposition is possible (R73 (1) EPC),
- the designated Contracting States (R73 (3) EPC), ie those still designated at the time of the end of preparations (CV Guidelines 10).
These issues are published in electronic form on the Internet (R73 (2) EPC andDecision 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” OG 2007, Special Edition No. 3 D.3, A2 (1)).
The booklet is published in the language of the proceedings (A14 (6) EPC) and the claims are in the three official languages of the EPO.
4.10.5. Correction of errors in the booklet
This correction is entered in the BER.
There is no point in appealing the decision to grantT84 / 16) because the booklet is not part of the decision.
Some argued that this correction procedure was not provided for in the EPC and therefore that an appeal was quite justified: for the Board of Appeal (T84 / 16), the obligation imposed on the EPO by theA98 CBE to publish the text of the granted patent implies the obligation to reproduce the text correctly. The fact that the EPO can correct errors in the published text at any time is therefore in line with the principle of good administration.
4.10.6. Patent certificate
On publication, the EPO issues to the patent holder a certificate (R74 EPC).
This certificate is provided in paper format to the holder (s).
It is possible to obtain certified copies of the certificate against the payment of an administration fee of 50 € (“Decision of the President of the European Patent Office dated 12 July 2007 concerning the completion of the technical preparations undertaken for the publication of the European patent application” , OG 2007, Special Edition No. 3 D.1, A1 (3) and "Schedule of Fees and Royalties" OJ EPO 3/2012, supplement, 2.1 point 4, p19).
Section 4.11. Graphic abstract
Chapter 5. Duration of the examination
There is no "classic" duration for a review of the application.
However, there may be situations in which several years elapse between each notification by the EPO: this may constitute a procedural flaw.
By way of illustration, the following situation was considered as 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 procedure: 2010.
Nevertheless, do not be fooled ... you will only be reimbursed for your appeal fee, not all taxes you have paid throughout the procedure, eh?