EPO Guidelines 2016: Parts A and B

The most salient changes in the Guidelines 2016, for Part A and B

Part A

A-III 6.7

A paper copy of the previous application for which priority is claimed (priority document) must be filed before the end of the sixteenth month after the date of priority. Priority documents may not be filed in electronic form unless they have been digitally signed by the issuing authority and the signature is accepted by the EPO (see the Decision of the President of the EPO dated 10 November 2015, OJ EPO 2015, A91, and the Notice from the EPO dated 15 September 2004, OJ EPO 2004, 562). Nor may they be filed by fax (see the Decision of the President of the EPO dated 12 July 2007, Special edition No. 3, OJ EPO 2007, A.3). Where multiple priorities are claimed, the above-mentioned time limit runs from the earliest date of priority.

A-III 9

If the claims fees have not been paid in due time, they may still be validly paid within a non-extendable period of grace of one month of notification of a communication under Rule 45(2) pointing out the failure to observe the time limit. The applicant cannot waive this communication. If a claims fee is not paid within the period of grace, the claim concerned is deemed to be abandoned and the applicant is notified to that effect. The applicant cannot waive the communication under Rule 112(1) noting the deemed abandonment of claims under Rule 45(3). 

A-III 13.2

The additional fee is calculated on the basis of the pages of the description, claims, any drawings and one page for the abstract, in the language of filing. Where formal deficiencies in the documents making up the European patent application need to be corrected, the number of pages complying with the physical requirements (see A‑III, 3, and A‑IX) is taken as the basis for calculation.

A-IV 1.3.1

The divisional application may be filed by reference to a previously filed application, this being the earlier (parent) application from which it derives. The procedures are as provided for in Rule 40(1)(c), Rule 40(2) and Rule 40(3) (see A‑II, 4.1.3.1). It will not be necessary for the applicant to file a copy or translation of the previous (parent) application according to Rule 40(3), provided that the parent application was a Euro-direct application or an international application filed with the EPO as receiving Office under the PCT, since these will already be available to the EPO in the file of the previous (parent) application. If the parent application was a Euro-PCT application filed under the PCT at a receiving Office other than the EPO, a certified copy will be required.

A-X 5.2.4 Renewal fees

If the renewal fee has not been validly paid on or before the due date, it may still be validly paid within six months of the said date, provided that the additional fee is paid within this period. The additional fee can be paid until the last day of the sixth month following the month containing the anniversary of the date of filing (see J 4/91, reasons 2.7). This six-month period begins on the last day of the month referred to in Rule 51(1), first sentence, even if the circumstances described in Rule 134(1), (2) and (5) apply. Rule 134 is applicable to the calculation of the expiry of the six-month time limit for payment of the additional fee (see J 4/91, reasons 3.2). Whilst a notice draws the applicant's attention to the possibility under Rule 51(2) and Article 2(1), No. 5, RFees, he may not invoke the omission of such notification (see J 12/84 and J 1/89). For renewal fees for European divisional applications see A‑IV, 1.4.3.

For Euro-PCT applications, if the renewal fee in respect of the third year would have fallen due earlier under Rule 51(1), it does not fall due until expiry of the 31st month, i.e. on the last day of the 31-month period under Rule 159(1). This deferred due date, and hence the expiry of another period (the 31-month period), forms the basis for calculating the additional period for payment of the renewal fee with an additional fee (see J 1/89, the principles of which apply). For example:

12.05.2008 (Mon) 18.04.2012 (Wed)	Priority date
12.11.2008 (Wed) 15.10.2012 (Mon)	Filing date
30.11.2010 (Tues) 31.10.2014 (Fri)	Due date for third-year renewal fee under Rule 51(1)
12.12.2010 (Sun)	EPO closed
13.12.2010 (Mon) 18.11.2014 (Tue)	Expiry of 31-month period under Rule 159(1) (extended under Rule 134(1))
13.06.2011 (Mon) 18.05.2015 (Mon)	Last day for payment of the renewal fee (plus additional fee) since the six-month period under Rule 51(2) expires that day

A-XI 2.6 Publication of bibliographic data before publication of the application 

The EPO has not hitherto availed itself of the power under Art. 128(5) to publish bibliographic data before the European patent application is published.
In accordance with Art. 128(5), the EPO publishes in the European Patent Bulletin the bibliographic data relating to European patent applications which had been announced for publication but for which the application documents were not published, either because the application was withdrawn or because the announcement was erroneous. The lists of these publication numbers can be found on the European publication server, which is accessible via the EPO website (www.epo.org).

Part B

B-II 1.1 Contact between the applicant and the Search Division

• Telephone conversations and informal interviews with an examiner can only take place after the application has entered the examination stage, with the exception of cases indicated in B-VIII, 3.2.2 and 4.2.2, and regarding issues related to the timing of the drawing up of the search report (see OJ EPO?? 2016, … and E-…..). The examiner must not consent to these earlier (see also B-XI, 8). The applicant must be told that any issues he refers to will be dealt with in examination. For the procedure at the examination stage see C-VII, 2.5. 
• Previously in B.XI.8.

B-III 3.5

In principle, and insofar as possible and reasonable, the search should cover the entire subject-matter to which the claims are directed or to which they might reasonably be expected to be directed after they have been amended (see, however, B‑VII, 1.3, in case of lack of unity and H-II, 6, for the ambit of Rule 137(5)).

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However, it is not sufficient for the application as filed to contain one broad claim, with no dependent claims, in order to be entitled to a search to all the features of a large number of embodiments covered by the wording of that claim (see T 1679/10).

B-XI 3.2 Reasoned objectionsReasoning

3.2.1 Reasoned objections

For each objection the search opinion should indicate the part of the application which is deficient and the requirement of the EPC which is not met, either by referring to specific Articles or Rules, or by other clear indication; it should also give the reason for any objection where this is not immediately apparent. For example, where prior art is cited and only part of a cited document is relevant, the particular passage relied upon should be identified. If the cited prior art is such as to demonstrate lack of novelty or inventive step in the independent claim or claims, and if, consequently, there is lack of unity between dependent claims (see F‑V, 9), the applicant should be informed of this situation (see H‑IV, 4.2(i)). Substantive matters should normally be set out first. The search opinion should be drafted in such a manner as to facilitate later examination of the amended application and, in particular, to avoid the need for extensive rereading (see C‑IV, 2).
If in the search report the examiner has cited a document of category "X" or "Y" against a given claim, the examiner in the search opinion should raise a novelty or inventive step objection against the same claim. Where this relates to a dependent claim and detailed reasoning is given in support of objections to the related independent claim, only short comments for that dependent claim are required.
In general, all claims should be referred to, and all documents cited as “X” or “Y” against certain claims should be referred to in the search opinion with a corresponding objection. In the case of dependent claims, while detailed reasoning may not always be necessary in the search opinion, it should at least be apparent what the reason for the objection is.

3.2.2 Positive statements

The examiner should also make positive statements on patentability in the search opinion, where applicable. The level of detail should be such as to assist the applicant in his decision-making. Therefore, it is not necessary to provide such detailed reasoning as for a negative objection, but a mere statement without any explanation is sufficient only if the reason is immediately apparent.