The European Patent Office (EPO) has introduced some changes to its Guidelines for Examination, which took effect on November 01, 2017. In addition to the latest changes to the EPO practice, these amendments provide further clarifications on what had already been in practice.
The most important changes to the EPO Guidelines are as follows:
After receiving the search report and the corresponding search opinion, and prior to the first substantive communication from the Examining Division, the applicant is obliged to respond substantially to the search opinion, e.g. by filing amendments to the description, claims or drawings and/or by responding to every objection raised in the search opinion. The applicant’s response to the search opinion required by Rules 70(2) and 70a EPC will be taken into account by the Examining Division when drafting the first substantive EPO Communication under Article 94(3) EPC.
According to previous practice, Summons to Oral Proceedings pursuant to Rule 115(1) EPC could only be issued after the first Examination Report, i.e. after the first substantive EPO Communication under Article 94(3) EPC had been provided to the applicant.
According to the revised EPO Guidelines, if the Examining Division is of the opinion that the response to the search opinion does not properly address the objections in the search opinion, the Examining Division may now immediately issue Summons to Oral Proceedings, said Summons then forming the first substantive Communication. This, however, should only happen in exceptional situations, where the subject-matter of the claims on file is not substantially different from that of the claims serving as the basis for the search, and at least one of the most relevant objections raised in the search opinion still applies.
Therefore, different from the previous practice, where the Examining Division was obliged to issue an Examination Report to give the applicant at least one opportunity to respond thereto, the revised Guidelines allow the Examining Division to issue Summons to Oral Proceedings immediately in those cases where the applicant fails to make any persuasive arguments in the response to the search opinion. The applicant should bear this in mind when responding to the search opinion.
In the case that a Summons to Oral Proceedings is the first substantive communication from the Examination Division, the applicant should be given a term of at least 6 months before the date scheduled for the Oral Proceeding. During this time, the applicant may submit arguments/amendments by responding to the Summons. According to the revised Guidelines, if the Examining Division is of the opinion that the arguments/amendments submitted by the applicant are sufficient to overcome the remaining objections, the Examining Division can decide to cancel or postpone the Oral Proceedings. In the meantime, informal discussions may be carried out with the primary Examiner to address the outstanding objections.
According to the revised Guidelines, where the date of a priority claim is the same as the date of filing of the European patent application, the EPO will inform the applicant that priority cannot be claimed from this application unless the priority date can be corrected.
DThe revised Guidelines also clarify the changes to Article 11 relating to refund of fees that have been in effect since July 01, 2016. Accordingly, the examination fee is fully refunded if the European application is withdrawn, refused or deemed to be withdrawn before the EPO has started substantive examination. Moreover, 50% of the examination fee can be refunded if the European patent 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. Such substantive communication may be an invitation under Article 94(3) EPC or a communication under Rule 71(3) EPC. Other examples of corresponding communications are listed in Guidelines A-VI, 2.5.
If the EPO is of the opinion that the application documents serving as the basis for the supplementary European search do not comply with the unity requirement, it should draw up a partial supplementary search report on those parts of the application which relate to the invention, or the group of inventions first mentioned in the claims. The applicant is given an opportunity to pay additional search fees in respect of any of the remaining inventions, within a period of two months. According to the revised Guidelines, the partial search report has to comprise a provisional opinion on the patentability of the searched invention, and this opinion is only for guidance and a response thereto is not needed. Moreover, any response will not be taken into account if the Extended European Search Report is drawn up.
The fees for further proceeding depend on the procedural actions which have been omitted. When several actions have the same legal basis, allowing them to form a unitary procedural action and be subject to a unitary time limit, the further proceeding is subject to the payment of a single fee. However, the amount of this single fee still depends on the number and character of the omitted actions forming the unitary procedural action. Contrary thereto, multiple further proceeding fees should be paid if multiple independent procedural actions are omitted.
The exception in respect of Rule 71(3) EPC remains unchanged, and a single further proceeding fee should be paid if the deadline set under Rule 71(3) EPC is missed.The same principles with respect to unitary and independent procedural acts also apply to the fees for re-establishment of rights.
The revised Guidelines also reflect the amendments to Rules 27 and 28 EPC that are effective since July 01, 2017. Accordingly, plants and animals exclusively obtained by essentially biological processes are excluded from patentability under Article 53(b) EPC.