Date: 14 May 2018
By Dr.Silke Petzold
Revised Guidelines for Examination of the EPO are in force since November 2017.
The most important change for applicants is the possibility that the first action in examination can now be a summons for oral proceedings instead of a mandatory examination report (Chapter C-III. 5).
This measure has been introduced to increase efficiency of the examination procedure. According to the EPO, a Summons as a first action in examination may be issued when, despite the applicant’s reply to the search opinion, the Examining Division believes that there is no realistic possibility that the application will be granted.
It appears that an invitation to oral proceedings is only issued instead of a first examination report if:
i) the content of the claims is not substantially different than that of the claims which served as a basis for the search; and
ii) one or more of the objections raised in the search opinion, which are crucial to the outcome of the procedure, still apply at this point of the examination procedure.
Accordingly, the Summons may not include any new objections or cite new documents which have not been included during the search stage, and the Annex to the Summons must justify why Summons are issued as a first action. Also, the invitations to oral proceedings are issued with at least 6 months notice.
We believe that this change of procedure may violate Article 94(3) EPC, which specifies that the Examining Division shall invite the applicant as often as necessary to file observations and amendments if the examination reveals that the application or the invention to which it relates does not meet the requirements of the EPC.
Thus, it seems to us that the Examining Division must send at least one examination report to comply with the requirement of Article 94(3) EPC.
Discussions are ongoing behind the scenes, and further amendments which may further limit the use of the Summons as a first action and thus bring the Guidelines again closer to the provisions of the EPC might be forthcoming.
However, currently the amended Guidelines allow invitations to oral proceedings to be issued as the first action during examination.
For the applicant it is thus important to identify and address all critical issues raised during the search stage in order to avoid a Summons being issued early. It might be advantageous in some cases to consider filing of auxiliary requests even as early as the search stage, to manoeuvre amendments before examination begins.
Another possibility which may help in avoiding to receive a Summons as a first action is to file a Demand during the International phase, in order to advance examination at an early stage.
However, it remains to be seen how much use the EPO will make of the possibility to issue a Summons as a first action during the examination procedure.