CLR IV B 3.5 Examination after remittal for further prosecution

If a case is remitted from the boards of appeal for further prosecution, the examining division must check whether requests from examination proceedings prior to the appeal are still outstanding and must give the party an opportunity to comment (see T 1494/05; see also Guidelines E‑X, 2.1 – November 2018 version).

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

R. 71a (2) EPC (Conclusion of the grant procedure) makes it clear that, until the decision to grant the European patent is issued, the examining division may resume the examination proceedings at any time.

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

According to R. 71(4) EPC (in force since 1 April 2012) if the European patent application in the text intended for grant comprises more than fifteen claims, the examining division shall invite the applicant to pay claims fees in respect of the sixteenth and each subsequent claim within the period under paragraph 3 unless the said fees have already been paid under R. 45 or 162 EPC.

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

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

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

The applicant's right to amend the application of his own volition after receipt of the examiner's first communication was shifted to the procedural stage of response to the opinion accompanying the European search report (see Decision of the Administrative Council, which entered into force on 1 April 2010, OJ 2009, 299).

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

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

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

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

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

CLR IV B 3.2.3.B Auxiliary request issues

Where it is not clear which higher request the applicant wishes to pursue, the examining division must request the applicant to clarify this in resumed examination proceedings. (Guidelines C‑V, 4.9 – November 2018 version).

CLR IV B 3.2.3.A General issues

Art. 113(2) EPC states that the EPO shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. See also Guidelines C‑V, 4.9 – November 2018 version.