EPO guidelines for examination - Direct citation to oral proceedings after search report

From November 1st, 2017 the new and updated Guidelines for Examination are applicable.

The marked-up version of the November 2017 Guidelines can be found here.

While in the past, following the reply to the Search Report the EPO had to emit an official communication before scheduling oral proceedings, this has changed. According to the Guidelines C-II 5. the applicant can directly be cited to oral proceedings after reply to search report.

The details are as follows:

After the reply to the search report, where no possibility of a grant can be envisaged, the examining division may issue a summons to oral proceedings as the first action in examination.

The examining division may decide to do so only if: 

  • the content of the claims on file is not substantially different to that of the claims which served as a basis for the search, and
  • one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply.

The annex to the summons issued as the first action in examination must deal with the applicant's requests in their entirety. It must not include any new objections or cite new documents. In addition the Examining Division must indicate the reasons for direct summons to oral proceedings.

Albeit the Guidelines state that this is an exceptional case, it stresses the need to address the objections in the Search Report in a complete manner. In particular, it is to be expected that this measure will be applied when not amending the claims in reply to the search report. Any reply to the search report without substantial amendment should therefore be particularly well reasoned.

If you have any questions concerning this newsletter, please contact Oliver Tischner.

This IP Alert is for information purposes only and does not constitute legal advice.

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