OJ EPO 2020, A133 - Notice from the European Patent Office dated 23 November 2020 concerning annexes to decisions of the examining divisions

In decisions to refuse an application, the examining divisions indicate the subject of the application and the documents (in particular the claims) on which the decision is based. They also usually annex a copy of the claims to the decision.[ 1 ]

The application documents and any subsequently filed documents (in particular the main request and any auxiliary requests) are, however, contained in full in the publicly available file. With a view to reducing its paper consumption, the EPO has therefore decided to discontinue the practice of annexing a copy of the claims to refusals.

Transparency and legal certainty will not be affected, as all application documents and subsequently filed documents are available via file inspection.[ 2 ] Moreover, decisions to refuse include a detailed reference to the application documents which are the subject of the decision, including all maintained amendments and auxiliary requests. In addition, the text of the independent claim(s) and other particularly important claims may also, as before, be included in the decision if the examining division considers it appropriate. Any claims submitted during oral proceedings will continue to be annexed to the minutes of the proceedings.

The above change in practice will enter into force on 1 February 2021. The practice of annexing a copy of the claims to refusals as described in Guidelines E-X, 2.4 will therefore be discontinued with effect from this date.



[ 1 ] See Guidelines E-X, 2.4.

[ 2 ] The files of published patent applications are accessible online via the European Patent Register (epo.org). Prior to publication, applicants can access their applications via the online My Files service (Guidelines A-XI, 2.2 and 2.5).