EPO Guidelines 2016: Parts C and D

The salient changes of Part C (Examination) and Part D (Opposition) in the Guidelines 2016

C-III. 4.1.2 Positive statements/suggestions

Where appropriate, the [first] communication should also contain positive statements on patentability where some of the claims meet the patentability requirements (see B-XI, 3.2.2). In this phase of the proceedings, the examiner should make such statements in particular where the claims for which a positive conclusion is reached have not yet been commented on.
Concerning making suggestions on how to overcome objections, see B-XI, 3.8.

C-V 15.2 Decision by means of a standard form 

The examiner may be in a position to refuse the application using a standard form referring to the previous communication. In order to comply with the requirement that such a decision be reasoned (Rule 111(2)), this is only possible where the previous communication properly identifies the application documents on file, is well-reasoned and complete with respect to the grounds and the reasons for the refusal of the current request and addresses all the arguments raised by the applicant. A further condition is that no new arguments or amendments have been submitted by the applicant since the previous communication.

D-IV 5.3 Filing of amended documents in reply to the notice of opposition 

[...] The proprietor's observations, and any amendments he makes, are communicated to the opponent(s) by the formalities officer without delay for information only.

D-IV. 5.4 Communication of observations from one of the parties to the other parties 

Communication of observations from one of the parties to the other parties 

The formalities officer will, at any stage in the procedure, immediately communicate the observations of any of the parties to the other parties for information.

If the proprietor files amended documents with his observations, where applicable as part of an alternative request, the formalities officer will invite the other parties to submit observations within a period to be fixed by him (normally four months).

D-V 4. Insufficient disclosure of the invention 

Determination of whether the disclosure of an invention in a European patent application is sufficient is dealt with in F‑III, 1 to F-III, 3.

The principles set out there will also apply mutatis mutandis to the opposition procedure. The overriding consideration in this context is the disclosed content of the European patent specification, that is to say what a person skilled in the art is able to infer derive directly and unambiguously from the explicit and implicit disclosure in the patent claims, description and drawings, if any, without reflection as to using inventiveness. Pursuant to Art. 100(b), the patent has to disclose the invention in a manner sufficiently clear and complete for it to be carried out by persons skilled in the art. If the patent specification does not disclose the invention sufficiently clearly to enable it to be carried out over the full scope of the claim in accordance with Art. 100(b), this may be remedied, provided the original documents contained a sufficient disclosure, but subject to the condition that, as required under Art. 123(2), the subject-matter of the European patent does not extend beyond the content of the application as filed and, as required under Art. 123(3), the protection conferred is not extended.