The European Patent Office has issued a revised version of its Guidelines for Examination, which will come into effect on 1 November 2017. One key change has been made, which is that Examiners can issue a summons to attend oral proceedings as a first office action after the extended European search report (EESR).
How it works now
The current practice is that the EPO can only issue a summons to oral proceedings after issuance of the EESR and a first examination report, assuming objections still remain.
The change in practice is that the EPO will no longer be required to issue an examination report after the EESR and before a summons to oral proceedings. So, under the new procedure, a summons to oral proceedings may be the second substantive office action issued by the EPO (after the EESR). This means there will be only two guaranteed office actions (provided objections remain) in the lifetime of an application.
The situation of a summons to oral proceedings being issued as the second office action is said in the new Guidelines to be something that will only take place ‘in exceptional situations’ in which ‘no possibility of grant can be envisaged’ despite the applicant’s reply to the EESR. This may only occur if:
- the content of the claims on file is not substantially different from that of the claims which served as a basis for the search, and
- one or more of the objections raised in the EESR which are crucial to the outcome of the examination procedure still apply.
If this procedure is followed, the summons to oral proceedings ‘must not include any new objections or cite new documents’.
The likely effect of the change – and what to do differently
The new procedure is therefore expected to be rarely used. However, applicants should be aware of the possibility of having only two substantive office actions. We therefore recommend that where possible a full and detailed response to the EESR is filed.
Potential scenario - PCT applications
Even though the new procedure is unlikely to be used often, where it may be used is in relation to amendments made to the claims on (or shortly after) entry of a PCT application into the European regional phase, before an EESR is issued. If objections are then raised in the EESR that the amendments do not have basis in the application as filed, and the applicant does not adequately address the objections in the response to the EESR, the EPO may then issue a summons to oral proceedings. It is therefore important to ensure that any claim amendments meet the EPO’s standards.