Once the examining division has decided that a patent can be granted it must inform the applicant of the text on the basis of which it intends to do so. This text may include amendments and corrections made by the examining division on its own initiative which it can reasonably expect the applicant to accept. In case of doubt as to whether the applicant would agree to the amendments proposed by the examining division, the applicant should be contacted by telephone or an official communication has to be written. The applicant's agreement to such amendments will usually be recorded in the communication according to Rule 71(3) (see C‑VII, 2.5).[Rule 71(3); ]
Examples of amendments where no such consultation with the applicant is required are the following:
Examples of amendments which may not be proposed without consulting the applicant are:
With regard to such amendments and corrections made by the division, it is important to bear in mind that the above list is designed to avoid changes which the applicant is more likely to reject, thus helping to avoid delays in the conclusion of examination proceedings. The standard marks used by the division for indicating amendments and corrections using the electronic tool are listed in C‑V, Annex.
The text is communicated to the applicant by despatching a communication under Rule 71(3), in which the applicant is furthermore invited to pay the fee for grant and publishing (see C‑V, 1.2) and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings (see C‑V, 1.3) within a period of four months, which is non-extendable. If the applicant pays the fees and files the translations within this period (and files or requests no corrections or amendments to the text proposed for grant in the Rule 71(3) communication, see C‑V, 4.1), he will be deemed to have approved the text intended for grant (Rule 71(5)).
If during examination proceedings a main and auxiliary requests have been filed (see C‑IV, 1 and E‑X, 2.9) and one of the requests is allowable, the communication pursuant to Rule 71(3) is to be issued on the basis of the (first) allowable request and must be accompanied by a short indication of the essential reasons for the non-allowability of the subject-matter of the higher-ranking requests or the non-admissibility of these requests (see also H‑III, 3). This short indication should provide sufficient information about the objections raised by the examining division to enable the applicant to comment on them.
Handwritten amendments by the applicant to the description, claims and abstract, unless they involve graphic symbols and characters and chemical or mathematical formulae, are no longer accepted in strict compliance with Rule 50(1) in conjunction with Rule 49(8) (see OJ EPO 2013, 603, and A‑III, 3.2). For the procedure to follow in oral proceedings, see E‑III, 8.7.
Date retrieved: 30 December 2018
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EPC Implementing Rules
EPO Guidelines - A Formalities Examination
EPO Guidelines - B Search
EPO Guidelines - C Procedureal Aspects of Substantive Examination
XGL C V 4.6.2 Second Rule 71(3) communication based on higher -ranking request initially rejected in first Rule 71(3) communication