If deficiencies persist in the application even after the applicant has filed his response to the search opinion, the examining division will issue a communication according to Art. 94(3) and Rule 71(1), Rule 71(2) in subsequent examination proceedings and will consider the applicant's reply thereto before issuing a negative decision or a summons to oral proceedings. For the exceptional case where summons to oral proceedings are issued as the first action in examination proceedings, see C‑III, 5.[Rule 71(1); Rule 71(2); Rule 132; Art. 94(3); ]
When drawing up such a communication (or exceptionally the summons to oral proceedings), the examining division will take into account the documents (if any) cited in the search report and any further documents found as the result of the search referred to in C‑IV, 7.1, as well as any amendments proposed, or comments made, by the applicant in reply to the search opinion (see B‑XI, 8) or in reply to the communication under Rule 161(1) (see E‑IX, 3). The examiner should identify in this communication any requirements of the EPC which, in his opinion, the application does not satisfy. The communication will give reasons for any objections raised and will invite the applicant within a specified period to file his observations or submit amendments. The filed application documents are not sent back to the applicant although a copy of the description and claims may be sent in appropriate cases (see H‑III, 2). When the applicant has replied, the examiner will then re-examine the application.
If no search opinion has been issued (see C‑VI, 3, F‑V, 9.1(ii) and B‑XI, 1.1), the examiner's first communication under Art. 94(3) will, as a general rule (see B‑XI, 3) and by analogy with the search opinion, cover all objections to the application (see B‑XI, 3.4, for exceptional cases where not all objections are raised). Summons will not be issued as the first office action in examination proceedings in such cases.
Date retrieved: 30 December 2018