The European Patent Office (EPO) has published a revised version of its Guidelines for Examination, which will come into effect on 1 November 2017. Whilst primarily addressed to EPO Examiners, the Guidelines are also helpful a tool for practitioners and Applicants, as they illustrate the law and practice in proceedings before the EPO.
The most notable change relates to the power to issue a Summons to Oral Proceedings, as discussed below.
In addition to setting out upcoming changes to EPO practice, the revisions reflect any practice changes that came into effect in recent months or even years. Thus, many of the changes are merely a clarification or codification of what has already become current practice. A full list of the sections which have been amended, together with corresponding hyperlinks, is available on the EPO website.
Under current practice, the first substantive communication from the EPO’s Examination Division must be an Examination Report under Article 94(3) of the European Patent Convention (EPC) setting out any objections, or a communication under Rule 71(3) EPC indicating that the application is in order for acceptance. A Summons to Oral Proceedings pursuant to Rule 115(1) EPC may only be issued once the applicant has been given the opportunity to respond to at least one Examination Report.
Under the amended Guidelines, in the event that the Examining Division considers that the response to the Search Opinion does not place the application in order for acceptance, the Examining Division has the power to issue a Summons to Oral Proceedings as the first substantive Communication.
The Guidelines set out that this should only happen in exceptional situations, where despite the applicant's reply to the Search Opinion, no possibility of a grant can be envisaged. More particularly, the following conditions have to be met:
-the content of the claims on file is not substantially different to that of the claims which served as a basis for the search, and
–one or more of the objections raised in the Search Opinion which are crucial to the outcome of the examination procedure still apply.
It was previously possible to file an ambitious response to the Search Opinion safe in the knowledge that, in the event of any outstanding objections, the Examining Division would be obliged to issue an Examination Report to give the applicant at least one opportunity to respond thereto. By contrast, under the new practice there is a risk that failing to make any persuasive arguments or concessions in the response to the Search Opinion may trigger the issue of a Summons to Oral Proceedings. Applicants should bear this in mind when deciding how to respond to the European Search Opinion.
Where a Summons to Oral Proceedings is the first substantive communication from the Examination Division, it must give at least 6 months’ notice of the date scheduled for the Oral Proceedings. As with any Summons to ex parte Oral Proceedings, the applicant may submit arguments and/or amendments in response thereto. The revised Guidelines confirm that if the applicant's submissions contain a genuine effort to overcome the objections, the Examining Division may decide to cancel or postpone the Oral Proceedings. They also confirm that informal discussions with the primary Examiner may be used to try to address any outstanding objections. This is already frequently happens under current practice, but there is hope that the revised Guidelines will prompt Examiners to be more amenable to such discussions.
Clarification regarding priority claim Section A-III, 6.1 and 6.6
A clarification has been added to set out that priority may only be claimed from an Application filed at least one day before the priority-claiming European Application. Thus, where a priority claim relates to an Application filed on the same day as the European Application, it will be disregarded, unless the priority date can be corrected.
The Guidelines have finally been amended to reflect changes to Article 11 of the Rules relating to Fees that came into force on 1 July 2016.
Thus, the Guidelines confirm that the examination fee is refunded in full if the European Application is withdrawn, refused or deemed to be withdrawn before substantive examination has begun. The EPO will inform the applicant of the expected date of start of examination (via Form 2095), thus allowing applicants to withdraw an Application before this start date, if desired.
Once substantive examination has begun, a refund of 50% of the examination fee is available if the European Application is withdrawn, refused or deemed to be withdrawn before expiry of the time limit for replying to the first substantive communication issued by the Examining Division proper. This first substantive communication may be
(a) an invitation under Article 94(3 EPC); or
(b) a communication under Rule 71(3) EPC.
An invitation under Article 94(3) is typically an Examination Report, but other examples of applicable types of such communications are listed in section A-VI, 2.5. A communication under Rule 71(3) EPC is a communication indicating that the Application is in order for acceptance.
In the event that the Search Division finds a lack of unity, it draws up a partial Search Report in respect of the invention first mentioned in the claims. The applicant is given an opportunity to pay additional search fees in respect of any of the remaining inventions.
The amended Guidelines now clarify that the partial Search Report must comprise a provisional opinion on the patentability of the searched invention. This opinion is for guidance only. Any response thereto is not required; moreover, any response will not be taken into account when the Extended European Search Report is drawn up.
Fess for Further Processing or Re-establishment of rights
The fee(s) for further processing depend on the type of procedural act(s) that has/have been omitted. If several acts have the same legal basis, they form a unitary procedural act and are subject to a unitary time limit. Further processing in respect of such a time limit is subject to the payment of a single fee for further processing. However, the amount of this single fee depends on the number and character of the omitted acts forming the unitary procedural act.
By contrast, multiple further processing fees are payable if multiple independent procedural acts are omitted
Illustrative examples are discussed in the Guidelines. The exception regarding Rule 71(3), i.e. completion of the grant formalities, remains unchanged, so it remains the case that a single flat further processing fee is due if the deadline set under Rule 71(3) is missed.
The principles regarding unitary and independent procedural acts also apply to the fees for re-establishment of rights. Thus, where one unitary procedural act is omitted by not performing one or more actions forming that act, only one fee for re-establishment is due. Where several independent procedural acts are omitted, each resulting in the application being deemed withdrawn, a fee for re-establishment is due for each omitted act.
Products of essentially biological processes Section G-II, 5.2-5.5
The Guidelines have been updated to reflect the amendments to Rules 27 and 28 EPC that came into effect as of 1 July 2017 (with retrospective effect). Thus, the Guidelines set out that plants and animals exclusively obtained by essentially biological processes are excluded from patentability under Article 53(b) EPC.
'In exceptional situations where despite the applicant's reply to the search opinion no possibility of a grant can be envisaged, the examining division may issue a summons to oral proceedings as the first action in examination.'