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CLR IV B Examination procedure

Stage before substantive examination

Amendments made by the applicant of his own volition under Rule 137(2) EPC

Request for examination (Rule 70 EPC)

The invitation to confirm early request for examination (R. 70(2) EPC)

The first stage of substantive examination

Beginning of "substantive examination"

One invention to be the subject of examination

Consolidation of proceedings

Communications under Rule 71(1) and (2) EPC

Invitation to correct deficiencies and to propose amendments (Rule 71(1) EPC)

Content of Rule 71(2) EPC communication

Refusal after a single communication

Failing to make a "bona fide" response

Amendments under Rule 137(3) EPC

Discretion of the examining division under Rule 137(3) EPC

Consent under Rule 137(3) EPC in oral proceedings

The burden of proposing amendments

Reasons for the exercise of discretion

Second communication under Rule 71(3) EPC: the consent of the examining division

Failure to reply to the communication from the examining division (Article 94(4) EPC)

Reply within the meaning of Article 94(4) EPC

Waiver of the applicant's right to present comments

Issue of a further communication under Article 113(1) EPC

Arguments taken into account in the decision of the examining division

Information on non-compliance: the essential reasoning

Essential reasoning based on an International Preliminary Examination Report (IPER)

Fresh argument based on grounds and evidence communicated beforehand

Bona fide attempt by the applicant to overcome the objections

Form of the communication under Article 113(1) EPC

Informal communications

Telephone conversations

The grant stage in examination

Rule 71(3) EPC communication: the text for approval

Approval of the text by the applicant

Clear and unambiguous approval of the text

Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)

Auxiliary request issues

Examination procedure under the previous system (Rule 71 EPC and Rule 51(4) EPC 1973)

Amendments or corrections filed in response to the communication under Rule 71(3) EPC

Amendments where Rule 71(3) EPC communication is the first communication

Amendments and corrections requested according to Rule 71(6) EPC

Criteria for admitting amendments filed in reply to the Rule 71(3) EPC communication

Claims fees due in response to Rule 71(3) EPC communication

Amendment after approval of the text for grant

Examination after remittal for further prosecution

Amendments after the decision to grant

Withdrawal of amendments and abandonment of subject matter

Effects of non-payment of claims fees

Withdrawal of the patent application

Correction of the withdrawal of the application under Rule 139 EPC

Refusal of a European patent application under Article 97(2) EPC (former Article 97(1) EPC 1973)

Entry into force of a decision to grant a European patent

Errors in the Patent Bulletin

Additional searches during examination

Rule 63 EPC governing incomplete search

Additional search necessary: limited discretion of the examining division

Declaration under Rule 63(2) EPC

Notoriously well-known technical features

Subject‑matter not having technical character

Statement indicating the subject-matter to be searched not sufficient to overcome the deficiency noted under Rule 63(1) EPC

Non-payment of further search fees under Rule 64 EPC

Amendments relating to unsearched subject-matter – Rule 137(5) EPC

The purpose of Rule 137(5) EPC

Applicability of Rule 137(5) EPC

Extent of the European search report

Subject-matter of amendment not combining with the originally claimed invention

Criteria for consent to amendments under R. 137(5) EPC

Amendment not affecting the notion of unity of invention

Amendments filed to meet an objection

Non-compliance with Rule 137(5) EPC: a ground for refusing an application

Source: http://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_iv_b.htm

Date retrieved: 17 May 2021

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Case Law Book

X CLR TOC OF CONTENTS

Case Law Book: IV Divisional Applications

X CLR IV PROCEEDINGS BEFORE THE DEPARTMENTS OF first instance

X CLR IV B 1 Stage before substantive examination

X CLR IV B 1.1 Amendments made by the applicant of his own volition under Rule 137(2) EPC

X CLR IV B 1.2 Request for examination (Rule 70 EPC)

X CLR IV B 1.2.1 General issues

X CLR IV B 1.2.2 The invitation to confirm early request for examination (R. 70(2) EPC)

X CLR IV B 2 The first stage of substantive examination

X CLR IV B 2.1 Beginning of "substantive examination"

X CLR IV B 2.2 One invention to be the subject of examination

X CLR IV B 2.3 Consolidation of proceedings

X CLR IV B 2.4 Communications under Rule 71(1) and (2) EPC

X CLR IV B 2.4.1 Invitation to correct deficiencies and to propose amendments (Rule 71(1) EPC)

X CLR IV B 2.4.2 Content of Rule 71(2) EPC communication

X CLR IV B 2.5 Refusal after a single communication

X CLR IV B 2.5.1 General issues

X CLR IV B 2.5.2 Failing to make a "bona fide" response

X CLR IV B 2.6 Amendments under Rule 137(3) EPC

X CLR IV B 2.6.1 Discretion of the examining division under Rule 137(3) EPC

X CLR IV B 2.6.2 Consent under Rule 137(3) EPC in oral proceedings

X CLR IV B 2.6.3 The burden of proposing amendments

X CLR IV B 2.6.4 Reasons for the exercise of discretion

X CLR IV B 2.6.5 Second communication under Rule 71(3) EPC: the consent of the examining division

X CLR IV B 2.7 Failure to reply to the communication from the examining division (Article 94(4) EPC)

X CLR IV B 2.7.1 Reply within the meaning of Article 94(4) EPC

X CLR IV B 2.7.2 Waiver of the applicant's right to present comments

X CLR IV B 2.8 Issue of a further communication under Article 113(1) EPC

X CLR IV B 2.8.1 Introduction

X CLR IV B 2.8.2 Arguments taken into account in the decision of the examining division

X CLR IV B 2.8.3 Information on non-compliance: the essential reasoning

X CLR IV B 2.8.4 Essential reasoning based on an International Preliminary Examination Report (IPER)

X CLR IV B 2.8.5 Fresh argument based on grounds and evidence communicated beforehand

X CLR IV B 2.8.6 Bona fide attempt by the applicant to overcome the objections

X CLR IV B 2.8.7 Form of the communication under Article 113(1) EPC

X CLR IV B 2.9 Informal communications

X CLR IV B 2.9.1 Telephone conversations

X CLR IV B 2.9.2 Interviews

X CLR IV B 3 The grant stage in examination

X CLR IV B 3.1 ‍‍Rule 71(3) EPC communication: the text for approval

X CLR IV B 3.2 Approval of the text by the applicant

X CLR IV B 3.2.1 General issues

X CLR IV B 3.2.2 Clear and unambiguous approval of the text

X CLR IV B 3.2.3 Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)

X CLR IV B 3.2.3.A General issues

X CLR IV B 3.2.3.B Auxiliary request issues

X CLR IV B 3.2.4 Examination procedure under the previous system (Rule 71 EPC and Rule 51(4) EPC 1973)

X CLR IV B 3.3 Amendments or corrections filed in response to the communication under Rule 71(3) EPC

X CLR IV B 3.3.1 Amendments where Rule 71(3) EPC communication is the first communication

X CLR IV B 3.3.2 Amendments and corrections requested according to Rule 71(6) EPC

X CLR IV B 3.3.3 Criteria for admitting amendments filed in reply to the Rule 71(3) EPC communication

X CLR IV B 3.3.4 Claims fees due in response to Rule 71(3) EPC communication

X CLR IV B 3.4 Amendment after approval of the text for grant

X CLR IV B 3.5 Examination after remittal for further prosecution

X CLR IV B 3.6 Amendments after the decision to grant

X CLR IV B 3.7 Withdrawal of amendments and abandonment of subject matter

X CLR IV B 3.7.1 General issues

X CLR IV B 3.7.2 Effects of non-payment of claims fees

X CLR IV B 3.8 Withdrawal of the patent application

X CLR IV B 3.8.1 General issues

X CLR IV B 3.8.2 Correction of the withdrawal of the application under Rule 139 EPC

X CLR IV B 3.9 Refusal of a European patent application under Article 97(2) EPC (former Article 97(1) EPC 1973)

X CLR IV B 3.10 Entry into force of a decision to grant a European patent

X CLR IV B 3.11 Errors in the Patent Bulletin

X CLR IV B 4 Additional searches during examination

X CLR IV B 4.1 ‍‍Rule 63 EPC governing incomplete search

X CLR IV B 4.1.1 Introduction

X CLR IV B 4.1.2 Additional search necessary: limited discretion of the examining division

X CLR IV B 4.1.3 Declaration under Rule 63(2) EPC

X CLR IV B 4.1.3.A Notoriously well-known technical features

X CLR IV B 4.1.3.B Subject‑matter not having technical character

X CLR IV B 4.1.3.C Statement indicating the subject-matter to be searched not sufficient to overcome the deficiency noted under Rule 63(1) EPC

X CLR IV B 4.2 Non-payment of further search fees under Rule 64 EPC

X CLR IV B 5 Amendments relating to unsearched subject-matter – Rule 137(5) EPC

X CLR IV B 5.1 General issues

X CLR IV B 5.2 The purpose of Rule 137(5) EPC

X CLR IV B 5.3 Applicability of Rule 137(5) EPC

X CLR IV B 5.3.1 General issues

X CLR IV B 5.3.2 Extent of the European search report

X CLR IV B 5.3.3 Subject-matter of amendment not combining with the originally claimed invention

X CLR IV B 5.4 Criteria for consent to amendments under R. 137(5) EPC

X CLR IV B 5.4.1 Amendment not affecting the notion of unity of invention

X CLR IV B 5.4.2 Amendments filed to meet an objection

X CLR IV B 5.5 Non-compliance with Rule 137(5) EPC: a ground for refusing an application