Guidelines for Examination in theEuropean Patent Office
March 2022 2023

March 2023

List of Contents – a

Guidelines for Examination in the EPO

List of Contents

General Part
Contentsa1.

Preliminary remarks

1

2.

Explanatory notes

1

3.

General remarks

5

4.

Work at the EPO

6

5.

Summary of the processing of applications andpatents at the EPO

7

6.

Contracting states to the EPC

8

7.

Extension to and validation in states not party to
the EPC

9Part A – Guidelines for Formalities
Examination
Contentsa

Chapter I – Introduction

I-1

Chapter II – Filing of applications and examination on filing

II-1

Chapter III – Examination of formal requirements

III-1

Chapter IV – Special provisions

IV-1

Chapter V – Communications concerning formal
deficiencies; amendment of application;correction of errors

V-1

Chapter VI – Publication of application; request for
examination and transmissionof the dossier to examining division

VI-1

Chapter VII – Languages

VII-1

Chapter VIII – Common provisions

VIII-1

List of Contents – b

Guidelines for Examination in the EPO

March 2023

Chapter IX – Drawings

IX-1

Chapter X – Fees

X-1

Chapter XI – Inspection of files; communication of
information contained in files; consultation of theEuropean Patent Register; issuance of certified
copies
XI-1

Part B – Guidelines for SearchContentsa

Chapter I – Introduction

I-1

Chapter II – General

II-1

Chapter III – Characteristics of the search

III-1

Chapter IV – Search procedure and strategy

IV-1

Chapter V – Preclassification, IPC and CPC classification ofEuropean patent applications

V-1

Chapter VI – The state of the art at the search stage

VI-1

Chapter VII – Unity of invention

VII-1

Chapter VIII – Subject-matter to be excluded from thesearchVIII-1

Chapter IX – Search documentation

IX-1

Chapter X – Search report

X-1

Chapter XI – The search opinion

XI-1

Part C – Guidelines for Procedural Aspects ofSubstantive Examination
Contentsa

Chapter I – Introduction

I-1

Chapter II – Formal requirements to be met before thedivision starts substantive examination

II-1

Chapter III – The first stage of examination

III-1

March 2023

List of Contents – c

Guidelines for Examination in the EPO

Chapter IV – Examination of replies and further stages of
examination

IV-1

Chapter V – The final stage of examination

V-1

Annex

Standard marks for indicating amendments orcorrections by the divisions

V-25

Chapter VI – Time limits and acceleration of examination

VI-1

Chapter VII – Other procedures in examination

VII-1

Chapter VIII – Work within the examining division

VIII-1

Chapter IX – Special applications

IX-1

Part D – Guidelines for Opposition and
Limitation/Revocation Procedures
Contentsa

Chapter I – General remarks

I-1

Chapter II – The opposition division

II-1

Chapter III – Opposition

III-1

Chapter IV – Procedure up to substantive examination

IV-1

Chapter V – Substantive examination of opposition

V-1

Chapter VI – Procedure for the examination of the
opposition

VI-1

Chapter VII – Details and special features of theproceedings

VII-1

Chapter VIII – Decisions of the opposition division

VIII-1

Chapter IX – Costs

IX-1

Chapter X – Limitation and revocation procedure

X-1

List of Contents – d

Guidelines for Examination in the EPO

March 2023

Part E – Guidelines on General Procedural
Matters
Contentsa

Chapter I – Introduction

I-1

Chapter II – Communications and notifications

II-1

Chapter III – Oral proceedings

III-1

Chapter IV – Taking and conservation of evidence

IV-1

Chapter V – Derogations from the language of theproceedings in oral proceedings

V-1

Chapter VI – Examination by the EPO of its own motion;
facts, evidence or grounds not submitted in duetime; observations by third parties

VI-1

Chapter VII – Interruption, stay and consolidation of theproceedings

VII-1

Chapter VIII – Time limits, loss of rights, further andaccelerated processing and re-establishment ofrights

VIII-1

Chapter IX – Applications under the Patent Cooperation
Treaty (PCT)

IX-1

Chapter X – Decisions

X-1

Chapter XI – Impartiality of the examining or opposition
division

XI-1

Chapter XII – Appeals

XII-1

Chapter XIII – Request from a national court for a technicalopinion concerning a European patent
XIII-1
Chapter XIV – Registration of changes of name, transfers,
licences and other rights

XIV-1

March 2023

List of Contents – e

Guidelines for Examination in the EPO

Part F – The European Patent Application
Contentsa

Chapter I – Introduction

I-1

Chapter II – Content of a European patent application(other than claims)

II-1

Annex 1 Checklist for considering the abstract (see F-II, 2.5)

II-22

Annex 2 Units recognised in international practice as
determined by the President under Rule 49(2) andcomplying with Rule 49(10) (see F-II, 4.13)

II-23

Chapter III – Sufficiency of disclosure

III-1

Chapter IV – Claims (Art. 84 and formal requirements)

IV-1

Annex

IV-56

Examples concerning essential features

Chapter V – Unity of invention

V-1

Chapter VI – Priority

VI-1

Part G – Patentability
Contentsa

Chapter I – Patentability

I-1

Chapter II – Inventions

II-1

Chapter III – Industrial application

III-1

Chapter IV – State of the art

IV-1

Chapter V – Non-prejudicial disclosures

V-1

Chapter VI – Novelty

VI-1

Chapter VII – Inventive step

VII-1

Annex

Examples relating to the requirement of inventive
step – indicators

VII-38

List of Contents – f

Guidelines for Examination in the EPO

March 2023

Part H – Amendments and Corrections
Contentsa

Chapter I – The right to amend

I-1

Chapter II – Admissibility of amendments – general rules

II-1

Chapter III – Admissibility of amendments – otherprocedural matters

III-1

Chapter IV – Allowability of amendments – Art. 123(2) and
(3)

IV-1

Chapter V – Allowability of amendments – examples

V-1

Chapter VI – Correction of errors

VI-1

Index for Computer-Implemented Inventions

1

Guidelines for Examination Alphabetical
keyword index

1

List of sections amended in 2023 revision1General Part

March 2023

General Part – Contents – a

Guidelines for Examination in the EPO

Contents
1.

Preliminary remarks

1

2.

Explanatory notes1

2.1

Overview

12.2

Abbreviations

3

3.

General remarks

44.

Work at the EPO

6

5.

Summary of the processing of applications andpatents at the EPO

6

6.

Contracting states to the EPC

7

7.

Extension to and validation in states not party to
the EPC

8

March 2023

Guidelines for Examination in the EPO

1. Preliminary remarks
In accordance with Art. 10(2)(a) of the European Patent Convention (EPC),
the President of the European Patent Office (EPO) had adopted, effective
as at 1 June 1978, the Guidelines for Examination in the European Patent
Office.
These Guidelines are updated at regular intervals to take account ofdevelopments in European patent law and practice. Usually, updates
involve amendments to specific sentences or passages on individual
pages, in order to bring the text into line with patent law and EPO practiceas these continue to evolve. It follows that no update can ever claim to becomplete. Any indication from readers drawing attention to errors as well assuggestions for improvement are highly appreciated and may be sent by
email to: patentlaw@epo.org.
The binding version of the Guidelines for Examination in the European
Patent Office is published by the EPO in searchable HTML format on theinternet at epo.org.
Both the HTML and PDF versions of the Guidelines contain:(a)a non-exhaustive alphabetical keyword index;(b)

an index of computer-implemented inventions (CII), with a collectionof direct hyperlinks to the relevant chapters in the Guidelines;(c)a full list of the sections that have been amended, together with thecorresponding hyperlinks.

In the HTML publication, modifications can be viewed by ticking the "Showmodifications" box in the upper right corner, which displays inserted text
with a green background and deleted text in red strikethrough font. For
sections in which no changes have been made, the tick box is greyed out.
2.

Explanatory notes

2.1 Overview
The main body of these Guidelines comprises the following eight parts:
Part A:Part B:
Part C:Part D:Part E:Part F:
Part G:
Part H:

Guidelines for Formalities Examination
Guidelines for Search
Guidelines for Procedural Aspects of Substantive
Examination
Guidelines for Opposition and Limitation/Revocation
Procedures
Guidelines on General Procedural Matters
The European Patent Application
Patentability
Amendments and Corrections

Part A deals with the procedures for formalities examination mainly withregard to grant proceedings. Part B deals with search matters. Parts Part C

General Part – 1

General Part – 2

Guidelines for Examination in the EPO

March 2023

and Part D relate to procedures to be followed in examination andopposition proceedings, respectively.
Part E deals with general procedural matters relevant to several or all of thestages in procedures before the EPO, including Euro-PCT applications.
Part F deals with the requirements which the application must fulfil otherthan patentability, in particular unity of invention (Art. 82), sufficiency of
disclosure (Art. 83), clarity (Art. 84) and the right to priority (Art. 87 toArt. 89). Part G deals with the requirements of patentability provided for in
Art. 52 to Art. 57, in particular exclusions from patentability (Art. 52(2) andArt. 53), novelty (Art. 54), inventive step (Art. 56) and industrial application(Art. 57). Part H deals with the requirements relating to amendments andcorrections. It relates in particular to questions of admissibility (Rule 80 andRule 137) and compliance with Art. 123(2) and (3), Rule 139 and Rule 140.
The following notices relating to this and other recent updates have been
published in the Official Journal of the European Patent Office:
Re March 2023 update:
Re March 2022 update:
Re March 2021 update:
Re November 2019 update:
Re November 2018 update:
Re November 2017 update:
Re November 2016 update:
Re November 2015 update:
Re November 2014 update:
Re September 2013 update:
Re June 2012 update:
Re April 2010 update:
Re April 2009 update:
Re December 2007 update:
Re June 2005 update:
Re December 2003 update:
Re October 2001 update:
Re February 2001 update:
Re June 2000 update:

OJ EPO 2022, A10
OJ EPO 2021, A6
OJ EPO 2019, A80
OJ EPO 2018, A73
OJ EPO 2017, A75
OJ EPO 2016, A76
OJ EPO 2015, A74
OJ EPO 2014, A88
OJ EPO 2013, 447
OJ EPO 2012, 420
OJ EPO 2010, 230
OJ EPO 2009, 336
OJ EPO 2007, 589
OJ EPO 2005, 440
OJ EPO 2003, 582
OJ EPO 2001, 464
OJ EPO 2001, 115
OJ EPO 2000, 228

Each part of the Guidelines is divided into chapters, each subdivided into
numbered sections that may be further divided into subsections.
Cross-references to other sections include the relevant letter of that part,followed by the chapter number (a Roman numeral) and then the section orsubsection number (thus, e.g. C-V, 4.6, would be used if it were desired torefer to subsection 4.6 of chapter V of Part C).
Marginal references to articles and rules without further identification
indicate the Articles or Rules of the European Patent Convention as thelegal basis for what is stated in the text. It is believed that such references
avoid the need for extensive quotation from the EPC itself.
Any references to persons made in the Guidelines are to be understood as
being gender-neutral.

March 2023

Guidelines for Examination in the EPO

2.2 Abbreviations
In the Guidelines, the following abbreviations are used:EPC
EPO
OJ EPO
Art.
RFees
WIPO
PCT
ISA
WO-ISA
IPEA
IPRP
IPER
EESR
ESOP
ADA
AAD
BNS
rec.
Prot. Art. 69
Prot. Centr.
EU
EVL

European Patent Convention
European Patent Office
Official Journal of the European Patent Office
ArticleRules relating to Fees
World Intellectual Property Organization
Patent Cooperation Treaty
International Searching Authority
Written Opinion of the International Searching Authority
International Preliminary Examining Authority
International Preliminary Report on Patentability
International Preliminary Examination Report
Extended European Search Report
European Search Opinion (Rule 62)
Arrangements for deposit accounts
Arrangements for the automatic debiting procedure
back-file conversion numerical system
RecitalProtocol on the Interpretation of Art. 69 EPC
Protocol on the Centralisation of the European patent
systemandon its introduction(Protocol
onCentralisation)
European Union
Electronic virtual library

References to the European Patent Convention (EPC) are references tothe European Patent Convention as amended by the Act revising the EPC
of 29 November 2000 and the decision of the Administrative Council of
28 June 2001 adopting the new text of the European Patent Convention(OJ EPO Special editions No. 4/2001, pages 56 et seq; No. 1/2003,
pages 3 et seq; No. 1/2007, pages 1 to 88) and the Implementing
Regulations as adopted by decision of the Administrative Council of7 December 2006 (OJ EPO Special edition No. 1/2007, pages 89 et seq)
and as subsequently amended by decisions of the Administrative Council of
6 March 2008 (OJ EPO 2008, 124), 21 October 2008 (OJ EPO 2008, 513),
25 March 2009(OJ EPO 2009, 296
andOJ EPO 2009, 299),
27 October 2009(OJ EPO2009,
582),
28 October 2009(OJ EPO 2009, 585), 26 October 2010 (OJ EPO 2010, 568, 634 and 637),
27 June 2012 (OJ EPO 2012, 442), 16 October 2013 (OJ EPO 2013, 501,
and 503), 13 December 2013 (OJ EPO 2014, A3 and A4), 15 October 2014
(OJ EPO 2015, A17), 14 October 2015 (OJ EPO 2015, A82 and A83),
30 June 2016
(OJ EPO 2016, A100),
14 December 2016
(OJ EPO 2016, A102), 28 June 2017 (OJ EPO 2017, A55), 29 June 2017
(OJ EPO 2017, A56),
13 December 2017
(OJ EPO 2018, A2),
28 June 2018 (OJ EPO 2018, A57), 28 March 2019 (OJ EPO 2019, A31),
12 December 2019(OJ EPO 2020, A5),27 March 2020
(OJ EPO 2020, A36), 15 December 2020 (OJ EPO 2020, A132 andOJ EPO 2021, A3),
14 December 2021
(OJ EPO 2022, A3)
and
13 October 2022 (OJ EPO 2022, A101).

General Part – 3

General Part – 4

Guidelines for Examination in the EPO

March 2023

Where necessary, reference is made to the European Patent Convention of
5 October 1973 as amended by the act revising Article 63 EPC of
17 December 1991 and by the decisions of the Administrative Council of
21 December 1978, 13 December 1994, 20 October 1995, 5 December
1996, 10 December 1998 and 27 October 2005.
The reference to articles and rules – and their paragraphs – of EPC 2000
will be as follows: "Article 123, paragraph 2" will be: "Art. 123(2)", "Rule 29,
paragraph 7" will be: "Rule 29(7)". Articles and rules of EPC 1973, of the
PCT and articles of the Rules relating to Fees are referred to in a similarway, e.g. "Art. 54(4) EPC 1973", "Art. 33(1) PCT" and "Art. 10(1) RFees"
respectively. Only where deemed appropriate, i.e. in order to avoid
confusion, will references to articles and rules of the EPC be provided withthe extension "EPC 2000".
Decisions and opinions of the Enlarged Board of Appeal will only bereferred to with their capital letter and their number, e.g. "G 2/88".
Decisions of the technical boards of appeal and the Legal Board of Appeal
will be referred to in the same way, e.g. "T 152/82", "J 4/91" and "T 169/88".
It is noted that all decisions and opinions of the Enlarged Board of Appeal
and all decisions of the boards of appeal of the EPO are published on theinternet (epo.org).
The arrangements for deposit accounts and their annexes, including thearrangements for the automatic debiting procedure plus explanatory notes,
are published from time to time as Supplements to the Official Journal of
the EPO, which are available on the EPO website (epo.org).
3. General remarks
These Guidelines provide guidance in respect of the practice inproceedings before the EPO in accordance with the European Patent
Convention and its Implementing Regulations (see section 5).
The search and examination practice and procedure as regards PCTapplications in the international phase are not the subject of these
Guidelines, but are dealt with in the PCT International Search andPreliminary Examination Guidelines, which are available on the WIPO
website (wipo.int). Whenever considered appropriate, options given in thelatter Guidelines and the way they are dealt with by the European Patent
Office when acting as Receiving Office, International Searching Authority,
Supplementary International Searching Authority or International
Preliminary Examining Authority are the subject of separate notices
published in the Official Journal of the EPO and on the EPO website.
Please also consult the Guidelines for Search and Examination at the EPO
as PCT Authority, which are available on the EPO website. It is important tonote that, in respect of international applications filed under the PCT thatare subject to proceedings before the EPO, the provisions of the PCT and
its Regulations apply, supplemented by the EPC. In case of conflict theprovisions of the PCT prevail (Art. 150(2) EPC).
The present Guidelines are addressed primarily to examiners andformalities officers of the EPO, but are also intended to serve the parties toMarch 2023

Guidelines for Examination in the EPO

the proceedings and patent practitioners as a basis for illustrating the law
and practice in proceedings before the EPO. As a general rule, party to theproceedings denotes the applicant, the patent proprietor or the opponent
and, if the party is represented, its representative (see A-VIII, 1).
The Guidelines cannot cover all possible occurrences and exceptions inevery detail, but must be regarded as general instructions that may need tobe adapted to the individual case.
The application of the Guidelines to individual European patent applications
or patents is the responsibility of the formalities officers and examiners. As
a general rule, parties may expect the EPO to act in accordance with the
Guidelines until such time as they – or the relevant legal provisions – areamended. Notices concerning such amendments are published in the
Official Journal of the EPO and on the EPO website.
It should be noted also that the Guidelines do not constitute legal
provisions. For the ultimate authority on practice in the EPO, it is necessary
to refer firstly to the European Patent Convention itself including the
Implementing Regulations, the Protocol on the Interpretation of Article 69
EPC, the Protocol on Centralisation, the Protocol on Recognition, theProtocol on Privileges and Immunities and the Rules relating to Fees, andsecondly to the interpretation put upon the EPC by the boards of appeal
and the Enlarged Board of Appeal.
Where a decision or an opinion of the Enlarged Board of Appeal is referred
to, this is to inform the reader that the practice described has been adopted
to take account of the decision or opinion referred to. The same applies todecisions of the Legal Board of Appeal or technical boards of appeal.
In case of diverging decisions of the Legal Board of Appeal or technicalboards of appeal, EPO examiners and formalities officers will, as a rule,
follow the common practice as described in the Guidelines, which applies
until further notice. Furthermore, the Guidelines reflect only those decisionsof the boards of appeal incorporated into the EPO's general practice due totheir general procedural significance; they do not take into account any
deviating decisions taken in the individual case, given that the binding
effect referred to in Art. 111(2) applies to that specific case only.
As regards search, the EPO also carries out searches for national patentapplications from certain countries. The instructions in Part B apply in themain also to such searches.
These Guidelines address those aspects of the procedure which relate to
the European patent grant procedure. They do not deal with proceedings
relating to Unitary Patent protection (Regulations (EU) No 1257/2012 and
1260/2012, OJ EPO 2013, 111 and 132) other than those aspects arisingduring the European patent grant procedure (see C-IV, 7.2) or, for example,
as temporary measures (see Part C-V, 2). General information on the
aspects of the Unitary Patent system is available on the EPO website(epo.org/applying/european/unitary.html).

General Part – 5

General Part – 6

Guidelines for Examination in the EPO

March 2023

4. Work at the EPO
The setting up of the EPO represented a major step forward in the historyof patents. Its reputation depends on all employees, regardless ofnationality, working harmoniously together and giving of their best. But it ison the search, examination and opposition, more than anything else, that
the EPO will be judged by the patent world.
Employees of the EPO work with colleagues who not only speak a different
language but also come from a different patent background with different
training. Some may also have had experience in their national patent office.
It is therefore important to mention that all employees in the EPO areworking under a common system as laid down in the EPC. The Guidelines
will support them in applying the same standards.
One of the purposes of the Guidelines is also to make clear how the areasof responsibility are distributed among the different departments, e.g. theReceiving Section, the examining or opposition divisions, in order toharmonise the working processes and to avoid duplicate work.
It should not be forgotten that the reputation of the EPO depends not only
on the quality of the work it provides but also on the timeliness with which itdelivers its work products. The EPC imposes various time limits on theparties. The European patent system will be judged a success only when
examiners and other employees also operate within reasonable timeframes.
Finally, it should hardly need stating that all European applications andpatents, regardless of their country of origin and the language in which they
are written, receive equal treatment. An international patent system can becredible only if all trace of national bias is absent.
5. Summary of the processing of applications and patents at the
EPO
The processing of a European application and of a European patent iscarried out in a number of distinct steps which may be summarised asfollows:(i)the application is filed with the EPO or a competent national
authority;(ii)

the Receiving Section examines the application to determine if a dateof filing can be accorded to the application;(iii)

the Receiving Section carries out the formal examination of theapplication;(iv)

if the Receiving Section has established that the application complies
with the formal requirements, the search division draws up an
extended European search report (EESR), a copy of which isforwarded to the applicant;March 2023

Guidelines for Examination in the EPO(v)

the application and the search report are published by the EPO either
together or separately;(vi)

on receipt of a request for examination from the applicant, or, if therequest for examination has been filed before the search report has
been transmitted to the applicant, on confirmation by the applicant
that he desires to proceed further with the European patentapplication, the application is subjected to substantive examination
and any necessary formal examination before a European patent isgranted by the examining division;(vii)

provided the requirements of the EPC are met, a European patent isgranted for the states designated;(viii) the specification of the European patent is published by the EPO;
(ix)

within nine months from publication, any person may give notice of
opposition to the European patent granted; after examining the
opposition, the opposition division decides whether to reject the
opposition, maintain the patent in amended form or revoke thepatent;(x)

the patent proprietor may request limitation or revocation of the
granted European patent; the examining division will decide on thisrequest;(xi)

if the European patent is amended, the EPO publishes a new
specification of the European patent amended accordingly.

A European patent application may also be filed via the PCT route("Euro-PCT application – entry into the European phase"). For further
details, see E-IX, and subsections.
Any decision by the Receiving Section, an examining division, an
opposition division or the Legal Division which adversely affects a party isappealable and, thus, subject to review before a board of appeal of the
EPO. With the exception of important aspects relating to interlocutory
revision, the appeals procedure is not dealt with in these Guidelines.
6. Contracting states to the EPC
The following states are contracting states* to the EPC (date of effect of theratification in brackets):
Albania
Austria
Belgium
Bulgaria
Croatia
Cyprus*(1 May 2010)(1 May 1979)(7 October 1977)(1 July 2002)(1 January 2008)(1 April 1998)

An up-to-date list of the contracting states to the EPC is published each year in issue No. 4 of the
Official Journal of the EPO.

General Part – 7

General Part – 8

Guidelines for Examination in the EPO

Czech Republic
Denmark1
Estonia
FinlandFrance2
Germany
GreeceHungary
Iceland
IrelandItaly
LatviaLiechtenstein
Lithuania
Luxembourg
Malta
MonacoMontenegro
Netherlands3
Republic of North Macedonia
NorwayPolandPortugal
Romania
SerbiaSan Marino
Slovak Republic
Slovenia
Spain
SwedenSwitzerland
TürkiyeTurkey
United Kingdom4(total: 38 39)

March 2023

(1 July 2002)(1 January 1990)(1 July 2002)(1 March 1996)(7 October 1977)(7 October 1977)(1 October 1986)(1 January 2003)(1 November 2004)(1 August 1992)(1 December 1978)(1 July 2005)(1 April 1980)(1 December 2004)(7 October 1977)(1 March 2007)(1 December 1991)(1 October 2022)(7 October 1977)(1 January 2009)(1 January 2008)(1 March 2004)(1 January 1992)(1 March 2003)(1 October 2010)(1 July 2009)(1 July 2002)(1 December 2002)(1 October 1986)(1 May 1978)(7 October 1977)(1 November 2000)(7 October 1977)

7. Extension to and validation in states not party to the EPC
Currently it is possible to extend the European patent to two one extension
states state and in four validation states not party to the EPC. For further
details, see A-III, 12, and subsections.

1

The EPC does not apply to Greenland and the Faroe Islands.

2

The EPC applies to the territory of the French Republic, including the overseas territories.

3

The EPC is also applicable to Sint Maarten, Curaçao, Bonaire, Sint Eustatius and Saba, but not to
Aruba.

4

The EPC is also applicable to the Isle of Man. For further information on the registration ofEuropean patents (UK) in crown dependencies, UK overseas territories and Commonwealthcountries, see OJ EPO 2018, A97.

Part A
Guidelines for Formalities
Examination

March 2023

Part A – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – Introduction

I-1

1.

Overview

I-1

2.

Responsibility for formalities examination

I-1

3.

Purpose of Part A

I-1

4.

Other Parts relating to formalities

I-1

Chapter II – Filing of applications andexamination on filing

II-1

1.

Where and how applications may be filed

II-1

1.1

Filing of applications by delivery by hand or by postal
services

II-1

1.2.1
1.2.2

Filing of applications by means of electronic
communication
Filing of applications by fax
Filing of applications in electronic form

II-1
II-1
II-2

1.3

Filing of applications by other means

II-2

1.4

Subsequent filing of documents

II-3

1.5

Debit orders for deposit accounts held with the EPO

II-3

1.6

Forwarding of applications

II-3

1.7
1.7.1
1.7.2

Application numbering systems
Applications filed before 1 January 2002
Applications filed on or after 1 January 2002

II-3
II-3
II-4

2.

Persons entitled to file an application

II-4

3.

Procedure on filing

II-5

3.1

Receipt; confirmation

II-5

3.2

Filing with a competent national authority

II-5

4.

Examination on filing

II-6

4.1
4.1.1
4.1.2
4.1.3

Minimum requirements for according a date of filing
Indication that a European patent is sought
Information concerning the applicant
Description

II-6
II-6
II-6
II-7

1.2

Part A – Contents b

Guidelines for Examination in the EPO

March 2023

4.1.3.1
4.1.4
4.1.5

Reference to a previously filed application
Deficiencies
Date of filing

II-7
II-9
II-10

5.

Late filing of missing drawings or missing partsof the description

II-11

5.1

Late filing of missing drawings or missing parts of thedescription – on invitation
II-11

5.2

Late filing of missing drawings or missing parts of thedescription – without invitation
II-11

5.3

The filing date changes

5.4

Missing parts based on the priority application, nochange in filing date
Late-filed missing parts when priority is claimed
The missing parts are completely contained in thepriority application
Copy of the priority application
Translation of the priority application

5.4.1
5.4.2
5.4.3
5.4.4
5.5

II-11

II-12
II-13
II-13
II-14
II-14

Withdrawal of late-filed missing drawings or missing
parts of the description

II-15

5.6

Additional fee for pages

II-16

6.

Correction of erroneously filed application
documents or parts

II-16

6.1

Correction of erroneously filed application documentsor parts – on invitation
II-16

6.2

Correction of erroneously filed application documentsor parts – without invitation
II-16

6.3

The filing date changes

6.4

6.4.2
6.4.3

Correct application documents based on priority
application, no change in the filing date
Later-filed correct application documents or parts
when priority is claimed
Copy of the priority application
Translation of the priority application

6.5

Withdrawal of correct application documents or parts

II-18

6.6

Same-day corrections

II-19

6.7

Correct application documents or parts filed after the
search has started

II-19

Additional fee for pages

II-19

6.4.1

6.8

II-16

II-17
II-18
II-18
II-18

March 2023

6.9

Part A – Contents c

Guidelines for Examination in the EPO

Claims fee

II-19

Chapter III – Examination of formal
requirements

III-1

1.

General

III-1

1.1

Formal requirements

III-1

1.2

Further checks

III-1

2.

Representation

III-2

2.1

Requirements

III-2

2.2

Non-compliance

III-2

3.

Physical requirements

III-2

3.1

General remarks

III-2

3.2

Documents making up the application, replacement
documents, translations
Physical requirements of applications filed byreference to a previously filed application
Physical requirements of late-filed application
documents or correct application documents or parts

3.2.1
3.2.2

III-2
III-4
III-4

3.3

Other documents

III-5

4.

Request for grant

III-5

4.1

General remarks

III-5

4.2
4.2.1
4.2.2
4.2.3

Examination of the request for grant form
Information on the applicant
Signature
Further requirements laid down by Rule 41(2)

III-5
III-5
III-6
III-6

5.

Designation of inventor

III-6

5.1

General remarks

III-6

5.2

Waiver of right to be mentioned as inventor

III-6

5.3

Designation filed in a separate document

III-6

5.4

Deficiencies

III-7

5.5

Incorrect designation

III-7

6.

Claim to priority (see also F-VI)

III-8

6.1

General remarks

III-8

Part A – Contents d

Guidelines for Examination in the EPO

March 2023

6.2

Applications giving rise to a right of priority

III-9

6.3

Multiple priorities

III-9

6.4

Examination of the priority document

III-10

6.5
6.5.1
6.5.2
6.5.3

Declaration of priority
Filing a new priority claim
Correcting an existing priority claim
Deficiencies in the priority claim and loss of thepriority rightIII-10
III-10
III-11

6.6

Priority period

III-12

6.7

Copy of the previous application (priority document)

III-12

6.8
6.8.1
6.8.2

III-14
III-156.8.6

Translation of the previous application
Invitation to file the translation before examination
Invitation to file the translation in
examination/opposition
Loss of rights and legal remedies
Translation of previous application already filed
Voluntary filing of the translation of the previous
application
Declaration replacing the translation

6.9

Non-entitlement to right to priority

III-18

6.10

Loss of right to priority

III-18

6.11

Notification

III-18

6.12

Copy of the search results for the priority or priorities III-19

7.

Title of the invention

III-21

7.1

Requirements

III-21

7.2

Responsibility

III-218.

Prohibited matter

III-21

8.1

Morality or "ordre public"

III-21

8.2

Disparaging statements

III-229.

Claims fee

III-22

10.

Abstract

III-24

10.1

General remark

III-24

10.2

Content of the abstractIII-24

6.8.3
6.8.4
6.8.5

III-11

III-15
III-16
III-17
III-17
III-17

March 2023

Guidelines for Examination in the EPO

10.3

Figure accompanying the abstractIII-24

11.

Designation of contracting states

III-24

11.1

General remarks

III-24

11.2

European patent applications filed on or after
1 April 2009
Designation fee; time limits
Payment of designation fee
Consequences of non-payment of the designation
fee
Withdrawal of designation
Euro-PCT applications entering the European phase11.2.111.2.211.2.311.2.411.2.511.3
11.3.1
11.3.211.3.311.3.411.3.511.3.611.3.711.3.811.3.9European patent applications filed before
1 April 2009
Designation fee; time limits
Consequences of non-payment of designation fees
Amount paid insufficient
Application deemed to be withdrawn
Request for grant form
Indication of the contracting states
Amount payable
Withdrawal of designation
Euro-PCT applications entering the European phase
before 1 April 2009

III-24
III-24
III-25
III-25
III-25
III-26

III-26
III-26
III-27
III-27
III-27
III-27
III-28
III-28
III-29
III-2912.

Extension and validation of European patentapplications and patents to/in states not party to
the EPC
III-29

12.1

General remarks

III-2912.2

Time limit for payment of extension and validationfees

III-31

12.3

Withdrawal of the extension or validation request

III-32

12.4

Extension and validation deemed requested

III-32

12.5

National registerIII-3213.

Filing and search fees

III-32

13.1

Payment of fees

III-3213.2

Additional fee (if application documents comprise
more than thirty-five pages)

III-3313.3

Additional fee for divisional applications

III-3714.

Translation of the application

III-38

Part A – Contents e

Part A – Contents f

Guidelines for Examination in the EPO

March 2023

15.

Late filing of claims

III-3816.

Correction of deficiencies

III-3916.1

Procedure formalities officer

III-3916.2

Period allowed for remedying deficiencies

III-40Chapter IV – Special provisions
1.

IV-1

European divisional applications (see also
C-IX, 1)

IV-1

1.1
1.1.1
1.1.2
1.1.3

General remarks
Pendency of the earlier application
Sequences of divisional applications
Persons entitled to file a divisional application

IV-1
IV-1
IV-3
IV-3

1.2
1.2.1
1.2.2

Date of filing of a divisional application; claiming
priority
Date of filing
Priority claim of a divisional application

IV-3
IV-3
IV-4

1.3
1.3.1
1.3.2
1.3.3
1.3.4
1.3.5

Filing a divisional application
Where and how to file a divisional application?
Request for grantLanguage requirements
Designation of contracting states
Extension and validation states

IV-5
IV-5
IV-5
IV-6
IV-6
IV-6

1.4
1.4.1
1.4.1.1

IV-6
IV-6

1.4.2
1.4.3

Fees
Filing, search and designation fee(s)Additional fee for divisional applications of second or
subsequent generations
Claims fees
Renewal fees

1.5

Designation of the inventor

IV-9

1.6

Authorisations

IV-9

1.7

Other formalities examination

IV-9

1.8

Search, publication and request for examination ofdivisional applications

IV-9

Art. 61 applications and stay of proceedings
under Rule 14

IV-10

2.1

General

IV-10

2.2
2.2.1

Stay of proceedings for grantResponsible department

IV-10
IV-11

2.

IV-7
IV-8
IV-8

March 2023

2.2.2
2.2.3
2.2.4
2.2.5
2.2.5.1
2.2.5.2

2.3

Guidelines for Examination in the EPO

Date of the stay of proceedings
Legal nature and effects of the stay
Interruption of time limits
Resumption of the proceedings for grant
Resumption after final decision in entitlement
proceedings
Resumption regardless of the stage of entitlement
proceedings

IV-11
IV-11
IV-12
IV-13
IV-13
IV-13

Limitation of the option to withdraw the European
patent application

IV-13

2.4

Prosecution of the application by a third party

IV-13

2.5

Filing a new application

IV-14

2.6

Refusal of the earlier application

IV-14

2.7

Partial transfer of right by virtue of a final decision

IV-14

3.

Display at an exhibition

IV-15

3.1

Certificate of exhibition; identification of invention

IV-15

3.2

Defects in the certificate or the identification

IV-15

4.

Applications relating to biological material

IV-15

4.1
4.1.1
4.1.2

Biological material; deposit thereof
IV-15
New deposit of biological material
IV-17
The application was filed by reference to a previously
filed application
IV-17

4.2

Missing information; notification

4.3

Availability of deposited biological material to expert
only
IV-18

4.4

Requests for samples of biological material

IV-19

5.

Applications relating to nucleotide and aminoacid sequences

IV-20

5.1

Sequence information filed under Rule 56

IV-21

5.2

Sequence information filed under Rule 56a

IV-23

5.3

5.2 Sequence listings of an application filed byreference to a previously filed application

IV-23

5.4

5.3 Sequence listings of a divisional application

IV-24

6.

Conversion into a national application

IV-25

IV-18

Part A – Contents g

Part A – Contents hGuidelines for Examination in the EPO

March 2023

Chapter V – Communications concerning
formal deficiencies; amendment ofapplication; correction of errors

V-1

1.

Communications concerning formal deficiencies

V-1

2.

Amendment of application

V-1

2.1

Filing of amendments

V-1

2.2

Examination of amendments as to formalities

V-2

3.

Correction of errors in documents filed with the
EPO

V-2

Chapter VI – Publication of application;
request for examination and transmissionof the dossier to examining division

VI-1

1.

Publication of application

VI-1

1.1

Date of publication

VI-1

1.2

No publication; preventing publication

VI-1

1.3

Content of the publication

VI-2

1.4

Publication in electronic form only

VI-3

1.5

Separate publication of the European search report

VI-3

2.

Request for examination and transmission of thedossier to the examining division

VI-3

2.1

Communication

VI-3

2.2

Time limit for filing the request for examination

VI-4

2.3

Legal remedy

VI-4

2.4

Transmission of the dossier to the examining division

VI-5

2.5

Refund of examination fee

VI-6

2.6

Reduction in examination fee

VI-7

3.

Response to the search opinion

VI-7

Chapter VII – Languages

VII-1

1.

Admissible languages on filing

VII-1

1.1

GeneralVII-1

March 2023

Guidelines for Examination in the EPO

1.2

Filing by reference

VII-1

1.3

European divisional applications; Art. 61 applications VII-1

1.4

Invitation to file the translation

VII-1

2.

Language of the proceedings

VII-1

3.

Derogations from the language of theproceedings in written proceedings

VII-2

3.1

Parties' written submissions

VII-2

3.2

Admissible non-EPO languages

VII-2

3.3

Priority document

VII-2

3.4

Documents filed as evidence

VII-3

3.5

Third-party observations

VII-3

4.

Derogations from the language of theproceedings in oral proceedings

VII-3

5.

Documents filed in the wrong language

VII-3

6.

Languages of publication

VII-4

7.

Correction and certification of the translation

VII-4

8.

Authentic text of the application or patent

VII-4

Chapter VIII – Common provisions

VIII-11.

Representation

VIII-1

1.1

General principles

VIII-1

1.2

Representation by a professional representative; listof professional representatives
VIII-1

1.3

Representation by an employee

VIII-2

1.4

Common representative

VIII-2

1.5

Representation by a legal practitioner

VIII-2

1.6

Signed authorisation

VIII-2

1.7

General authorisation

VIII-4

1.8

Invitation to file authorisation and legal consequencein case of non-compliance
VIII-4

Part A – Contents i

Part A – Contents j

Guidelines for Examination in the EPO

March 2023

2.

Form of documents

VIII-4

2.1

Documents making up the European patentapplication

VIII-4

2.2

Replacement documents and translations

VIII-5

2.3

Other documents

VIII-5

2.4

Number of copies

VIII-52.5

Filing of subsequent documents

VIII-53.

Signature of documents

VIII-6

3.1

Documents filed after filing the European patentapplication

VIII-6

Documents forming part of the European patentapplication

VIII-7

3.3

Form of signature

VIII-7

3.4

Joint applicants

VIII-83.2

Chapter IX – Drawings
1.

IX-1

Graphic forms of presentation considered as
drawings

IX-1

1.1

Technical drawings

IX-1

1.2

Photographs

IX-1

2.

Representation of drawings

IX-1

2.1

Grouping of drawings

IX-1

2.2

Reproducibility of drawings

IX-2

2.3

Figure accompanying the abstract

IX-2

3.

Conditions regarding the paper used

IX-2

4.

Presentation of the sheets of drawings

IX-2

4.1

Usable surface area of sheets

IX-2

4.2

Numbering of sheets of drawings

IX-3

5.

General layout of drawings

IX-3

5.1

Page-setting

IX-3

March 2023

Part A – Contents k

Guidelines for Examination in the EPO

5.2

Numbering of figures

IX-3

5.3

Whole figure

IX-4

6.

Prohibited matter

IX-4

7.

Executing of drawings

IX-4

7.1

Drawings of lines and strokes

IX-4

7.2

Shading

IX-5

7.3
7.3.1
7.3.2

Cross-sections
Sectional diagrams
Hatching

IX-5
IX-5
IX-5

7.4

Scale of drawings

IX-5

7.5
7.5.1
7.5.2
7.5.3
7.5.4

Numbers, letters and reference signs
Leading lines
ArrowsHeight of the numbers and letters in the drawings
Consistent use of reference signs as between
description, claims and drawings
Consistent use of reference signs as between
drawings

IX-6
IX-6
IX-6
IX-6

7.6

Variations in proportions

IX-7

8.

Text matter on drawings

IX-8

9.

Conventional symbols

IX-8

10.

Amendments to drawings

IX-8

11.

Graphic forms of presentation not considered as
drawings

IX-9

11.1

Chemical and mathematical formulae

IX-9

11.2
11.2.111.2.2

TablesTables in the description
Tables in the claims

IX-9
IX-9
IX-10

7.5.5

IX-6
IX-7

Chapter X – Fees

X-1

1.

GeneralX-1

2.

Methods of payment

X-1

3.

Currencies

X-2

Part A – Contents l

Guidelines for Examination in the EPO

March 2023

Date considered as date on which payment is
made

X-2

Payment or transfer to a bank account held by theEuropean Patent Organisation

X-2

4.2
4.2.1
4.2.2
4.2.3
4.2.4

Deposit accounts with the EPO
General remarks
Payments to replenish a deposit accountDebiting the deposit account
Date of receipt of the debit order; insufficient funds

X-2
X-2
X-2
X-3
X-5

4.3

Automatic debiting procedure

X-5

4.4

Payment by credit card

X-6

5.

Due date for fees

X-6

5.1
5.1.1
5.1.2

GeneralDue date
Amount of the fee

X-6
X-6
X-7

5.2
5.2.1
5.2.2
5.2.3
5.2.4
5.2.5
5.2.6

X-7
X-7
X-7
X-8
X-8
X-11

5.2.7

Due date for specific fees
Filing fee and search fee
Examination fee and designation fee
Fee for grant and publishing
Renewal fees
Claims fees
Fees for limitation/revocation, opposition, appeal,
petition for review
Fees payable for procedural and other requests

6.

Payment in due time

X-11

6.1

Basic principle

X-11

6.2

6.2.3
6.2.4
6.2.4
6.2.5

Application of Art. 7(3) RFees andArt. 7(4) RFeesLate payment of fees – period for
payment considered observed
RequirementsFees paid by bank transfer –application of Art. 7(3) and (4) RFees
Safety provision for late Late replenishment ofdeposit accounts
Debit orders filed with a competent national authority
Payment of fee at the normal fee rate
6.2.5 Amount of fee payable
6.2.6 Noting of loss of rights

7.

Purpose of payment

X-13

7.1
7.1.1
7.1.2

GeneralConditions for valid payment
Purpose of payment

X-13
X-13
X-14

4.

4.1

6.2.1
6.2.2

X-11
X-11

X-12
X-12
X-12
X-13
X-13
X-13
X-13

March 2023

7.2

7.3
7.3.1
7.3.2

8.

Guidelines for Examination in the EPO

Indication of the purpose of the payment in the caseof designation fees
Indication of the purpose of payment in the case ofclaims fees
Claims fees payable on filing the European patentapplication
Claims fees payable before the grant of theEuropean patent

X-15

X-15
X-15
X-15

No deferred payment of fees, no legal aid, nodiscretion

X-15

9.

Reduction of fees

X-16

9.1

General

X-16

9.2
9.2.1
9.2.2
9.2.3

Reduction under the language arrangements
Conditions
Reduction of the filing fee
Reduction of the examination fee

X-16
X-16
X-18
X-19

9.3
9.3.1

Special reductions
Reduction of the search fee for a supplementary
European search
Reduction of the examination fee where theinternational preliminary examination report is being
drawn up by the EPO

X-19

10.

Refund of fees

X-20

10.1
10.1.110.1.210.1.3General remarks
Fee payments lacking a legal basis
Late payments
Insignificant amounts

X-20
X-20
X-20
X-21

10.2
10.2.110.2.210.2.310.2.410.2.5Special refunds
Refund of the search fee
Refund of the further search fee
Refund of the examination fee
Refund pursuant to Rule 37(2)Refund of the fee for grant and publishing

X-21
X-21
X-21
X-21
X-22
X-22

10.3
10.3.1
10.3.2

Method of refund
Refunds to a deposit accountRefunds to a bank account

X-22
X-22
X-23

10.4

Re-allocation instead of refund

X-23

11.

Crediting of fees under Rule 71a(5)

X-23

11.1

Crediting of the fee for grant and publishing

X-24

11.2

Crediting of claims fees

X-24

9.3.2

X-19

X-20

Part A – Contents m

Part A – Contents n

Guidelines for Examination in the EPO

March 2023

11.3

Separate crediting of the fee for grant and publishingand claims fees
X-25

11.4

Further processing fee and crediting of fees

X-25

Chapter XI – Inspection of files;
communication of information contained infiles; consultation of the European Patent
Register; issuance of certified copies

XI-1

1.

GeneralXI-1

2.

Inspection of files

XI-1

2.1

Documents open to file inspection

XI-1

2.2

Conducting file inspections

XI-2

2.3

Restrictions to file inspection

XI-2

2.4

Confidentiality of the request

XI-3

2.5

File inspection before publication of the application

XI-3

2.6

Publication of bibliographic data before publication of
the application

XI-4

Communication of information contained in the
files

XI-4

4.

Consultation of the European Patent Register

XI-5

5.

Issuance of certified copies

XI-5

5.1

Certified copies of documents from the files or ofother documents

XI-5

Priority documents issued by the EPO

XI-5

3.

5.2

March 2023

Guidelines for Examination in the EPO

Part A – Chapter I-1

Chapter I – Introduction
1. Overview
This Part A of the Guidelines deals with the following:(i)the requirements and procedure relevant to the examination as toformalities of European patent applications (chapters A-II to VI);(ii)

formalities matters of a more general nature which can arise during
the application procedure or the post-grant stage (chapters A-VII and
VIII),(iii)

the presentation and execution of drawings and figurative
representations accompanying a European patent application(chapter A-IX);(iv)

fee questions (chapter A-X);(v)

inspection of files, communication of information contained in files,
consultation of the Register of European Patents and issuance ofcertified copies (chapter A-XI).

2. Responsibility for formalities examination
The matters covered by this Part A are directed to the formalities staff ofthe EPO whether they be in The Hague, Munich or Berlin. They are
directed primarily to the Receiving Section which is specifically responsible
under the EPC for ensuring that the formal requirements for European
patent applications are adhered to. Once the application is transferred tothe examining division, the latter accepts responsibility for the formalities of
the application, although it should be understood that reference to theexamining division is intended to cover the formalities officer to whom thiswork is entrusted (see the decision of the President of the EPO dated
12 December 2013, OJ EPO 2014, A6, the decision of the President of the
EPO dated 23 November 2015, OJ EPO 2015, A104, and the decision of
the President of the EPO dated 14 June 2020, OJ EPO 2020, A80).
3. Purpose of Part A
The formalities staff should note that this Part A of the Guidelines isintended to provide them with the knowledge and background which it is felt
will assist them in carrying out their functions in a uniform and expeditious
manner. It does not, however, provide authority for ignoring the provisionsof the EPC and in that regard specific attention is directed to paragraph 3 of
the General Part of the Guidelines.
4. Other Parts relating to formalities
It is not the intention that the formalities staff should concern themselveswith only this Part A of the Guidelines. It is expected that they will have torefer frequently to the other Parts and in particular Part E.

Rule 10
Rule 11(3)March 2023

Guidelines for Examination in the EPO

Part A – Chapter II-1

Chapter II – Filing of applications andexamination on filing
1. Where and how applications may be filed
European patent applications must be filed in writing. They may be filed bydelivery by hand, by postal services (see A-II, 1.1) or by means ofelectronic communication (see A-II, 1.2).

Rule 1
Rule 2(1)1.1 Filing of applications by delivery by hand or by postal services
European patent applications may be filed by delivery by hand or by postal
services at the EPO's filing offices in Munich, The Hague or Berlin. The
EPO's sub-office in Vienna is not a filing office, nor is the Brussels Bureau.

Art. 75(1)Rule 35(1)The opening hours of the filing offices of the EPO were published in thenotice from the EPO dated 14 February 2018, OJ EPO 2018, A18. Dates
on which at least one of them is not open to receive documents are likewiseannounced at regular intervals in the Official Journal of the EPO (see also
E-VIII, 1.4). The filing offices of the EPO may remain open during public
holidays observed in the contracting states in which they are located. Since
mail is not delivered on these days (see also E-VIII, 1.4), applications may
be filed by delivery by hand or using other permitted means of filing(see A-II, 1.2; A-II, 1.3).
The EPO filing offices in Berlin and Munich (only the PschorrHöfe building,see the decision of the President of the EPO dated 3 January 2017,
OJ EPO 2017, A11) are equipped with automated mail-boxes, which may
be used at any time. The automated mail-box facility is currently notavailable at the filing offices at Munich's Isar building and The Hague.
Outside office hours documents may be handed in to the porter.
European patent applications (with the exception of divisional applications,
see A-IV, 1.3.1, and applications according to Art. 61(1)(b), see A-IV, 2.5)
may also be filed at the central industrial property office or other competentauthority of a contracting state if the national law of that state so allows(see A-II, 1.6).
1.2

Filing of applications by means of electronic communication

1.2.1 Filing of applications by fax
Applications may also be filed by fax with the filing offices of the EPO orwith the competent national authorities of those contracting states which so
permit, namely – at present – Austria (AT), Bulgaria (BG), Czech
Republic (CZ), Denmark (DK), Estonia (EE), Finland (FI), France (FR),Germany (DE), Greece (GR), Iceland (IS), Ireland (IE), Liechtenstein (LI),
Luxembourg (LU), Monaco (MC), Norway (NO), Poland (PL), Portugal (PT),San Marino (SM), Slovakia (SK), Slovenia (SI), Spain (ES), Sweden (SE),Switzerland (CH) and United Kingdom (GB). For further details, see thelatest version of the brochure "National Law relating to the EPC".
Where a document transmitted by fax is illegible or incomplete, thedocument is to be treated as not having been received to the extent that itPart A – Chapter II-2

Guidelines for Examination in the EPO

March 2023

is illegible or that the attempted transmission failed and the sender must be
notified as soon as possible (see the decision of the President of the EPO
dated 20 February 2019, OJ EPO 2019, A18).
If a European patent application is filed by fax, a written confirmation isrequired only where the documents are of inferior quality. In this case, theEPO will invite the applicant to supply such documents within a period of
two months (Rule 2(1)). If the applicant fails to comply with this invitation indue time, the European patent application will be refused. To prevent
duplication of files, applicants are asked to indicate on the paper version of
the application documents the application number or fax date and the nameof the authority with which the documents were filed and to make it clearthat these documents represent "confirmation of an application filed by fax".
1.2.2 Filing of applications in electronic form
European patent applications and international (PCT) applications may also
be filed with the EPO in electronic form (see the decision of the President of
the EPO dated 14 May 2021, OJ EPO 2021, A42) using either(i)

EPO Online Filing (OLF), by packaging and submitting the
documents using the software provided by the EPO (see the decisionof the President of the EPO dated 21 September 2020 8 July 2022,
OJ EPO 2022, A70 OJ EPO 2020, A105), unless the use of othersoftware is permitted. Filings using OLF may be made online or onelectronic data carriers accepted by the EPO. At present, the datacarriers permitted are CD-R discs conforming to the ISO 9660
standard and DVD-R or DVD+R discs (see the decision of the
President of the EPO dated 14 May 2021, OJ EPO 2021, A42);(ii)

Online Filing 2.0; or(iii)

the EPO web-form filing service.

Other documents may also be filed electronically in proceedings under the
EPC (see the decision of the President of the EPO dated 14 May 2021,
OJ EPO 2021, A42).
Certain procedural acts may be filed electronically using the MyEPO
Portfolio service (see the decision of the President of the EPO dated
11 May 2022, OJ EPO 2022, A51, and the notice from the EPO dated
11 May 2022, OJ EPO 2022, A52). Currently, only those documents
specified in the above decision may be filed using this service.
European patent applications may also be filed in electronic form with thecompetent national authorities of those contracting states which so permit.
1.3 Filing of applications by other means
The filing of European patent applications by other means such as email is
at present not allowed (see also the notice dated 12 September 2000,
OJ EPO 2000, 458).

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1.4 Subsequent filing of documents
For the subsequent filing of documents, see A-VIII, 2.5.
1.5 Debit orders for deposit accounts held with the EPO
For European patent applications debit orders for the fees due must be filed
in an accepted electronic format (see A-X, 4.2.3), irrespective of how theapplication itself is filed. If an application is filed with a competent national
authority (Art. 75(1)(b)) on paper, a paper debit order on mandatory
Form 1020 for the fees intended to be paid is exceptionally accepted if it isincluded with that application on the date of filing (see the Arrangements fordeposit accounts (ADA), Supplementary publication 4, OJ EPO 2019
Supplementary publication 3, OJ EPO 2022). Paper Form 1020 is not
accepted if filed direct with the EPO. For the abolition of payments bycheque, see A-X, 2.
1.6 Forwarding of applications
The central industrial property office of a contracting state is obliged toforward to the EPO, in the shortest time compatible with national law
concerning the secrecy of inventions, applications filed (see A-II, 3.2) withthat office or with other competent authorities in that state (for debit order
enclosures, see A-II, 1.5).

Point 5.1.2 ADA
Point 7.1.2 ADA
Point 5.6.1 ADA
Point 12.1 ADA

Art. 77(1)Rule 37(1)A time limit of six weeks after filing is specified for the onward transmission
to the EPO of applications the subject matter of which is obviously not liable
to secrecy, this time limit being extended to four months or, where priority
has been claimed, to fourteen months after the date of priority, forapplications which require further examination as to their liability to secrecy.
It should be noted, however, that an application received outside thespecified time limits, either six weeks or four months, must be processed
provided the application is received in Munich, The Hague or Berlin before
the end of the fourteenth month after filing or, where appropriate, after thedate of priority. Applications received outside this last mentioned time limit
are deemed to be withdrawn. Reestablishment of rights and further
processing in respect of the period under Rule 37(2) are not possible, since
the loss of rights does not result from a failure of the applicant to observe atime limit (see J 3/80), but a request for conversion under Art. 135(1)(a)may be filed (see A-IV, 6).

Art. 77(3)Rule 37(2)Art. 135(1)(a)If the time limit referred to in Rule 37(2) expires on a day on which there isan interruption or subsequent dislocation in the delivery or transmission of
mail within the meaning of Rule 134(2), the time limit will extend to the firstday following the end of the period of interruption or dislocation.

Rule 134(2)1.7Application numbering systems

1.7.1 Applications filed before 1 January 2002
For applications filed before 1 January 2002, the following numberingsystem applies:
The application number consists of nine digits. The first two digits (from left
to right) of the application number indicate the filing year. The last (ninth)Part A – Chapter II-4

Guidelines for Examination in the EPO

March 2023

digit is a check digit. The third digit or third and fourth digits of theapplication number indicate(s) the place of filing.
The remaining digits are used for consecutively numbering the applicationsin the order in which they come in at the place of filing.
International applications filed under the Patent Cooperation Treaty (PCT)
and designating "EP" (Euro-PCT applications) receive the digit "7", "8" or"9" as the third digit.
1.7.2 Applications filed on or after 1 January 2002
For applications filed on or after 1 January 2002, the following numberingsystem applies:
The application number consists of nine digits. The first two digits (from left
to right) of the application number indicate the filing year. The last digit is acheck digit. The remaining six digits in between are used for consecutively
numbering the applications in the order in which they arrive at the place offiling, starting from the lowest number within a specific range of six-digit
numbers. The specific range reflects the place of filing. Where applicable,
the range is subdivided into two ranges in order to distinguish between
paper and online filings.
For international applications designating "EP" (Euro-PCT applications), thededicated range for the above-mentioned six-digit number within theapplication number uses "7", "8" or "9" as the third digit and does not reflect
the place and method of filing.
A list of the number ranges introduced in 2002, along with, whereappropriate, the corresponding places of filing, is published in
OJ EPO 2001, 465.

Art. 58

2. Persons entitled to file an application
A European patent application may be filed by any natural or legal person,or anybody equivalent to a legal person by virtue of the law governing it.

Art. 60(3)For the purposes of proceedings before the EPO, the applicant shall bedeemed to be entitled to exercise the right to the European patent.

Art. 59
Art. 118

The application may be in the name of one person or several persons may
be named as joint applicants. The application may also be filed by two or
more applicants designating different contracting states. It may arise that afirst applicant designates one group of contracting states and a second
designates a different group of contracting states, while both applicants
jointly designate a third group of contracting states. If the applicants for apatent are not the same for different contracting states they will be
regarded as joint applicants in proceedings before the EPO (see A-III, 4.2.1
and 11.1 as to when and under what circumstances the matter dealt with in
this paragraph need be considered during the formalities examination).

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Guidelines for Examination in the EPO

If it is adjudged that any person other than the applicant is entitled to the
grant of a European patent that person has the option of prosecuting theapplication as their own application in place of the applicant (see A-IV, 2).
3.

Part A – Chapter II-5

Art. 61(1)Procedure on filing

3.1 Receipt; confirmation
The authority with which the application is filed – either the EPO (Munich,
The Hague or Berlin) or the competent national authority – must mark the
documents making up the application with the date of receipt and issue areceipt to the applicant. The receipt must be issued without delay andinclude at least the application number, the nature and number of the
documents and the date of their receipt. The receipt should also include theapplicant's or representative's file reference number or any otherinformation which would be helpful in identifying the applicant. The receipt
of European patent applications filed online will be acknowledged
electronically during the submission session. Where it becomes apparent
that such acknowledgment was not successfully transmitted, the authority
with which the application is filed will promptly transmit theacknowledgment by other means where the necessary indications
furnished to it so permit (see Art. 13 of the decision of the President of the
EPO dated 14 May 2021, OJ EPO 2021, A42). The EPO will in principle nolonger issue an acknowledgement of receipt by fax (see the decision of the
President dated 20 February 2019, OJ EPO 2019, A18, and the notice fromthe EPO dated 20 February 2019, OJ EPO 2019, A15). If still requested
under exceptional circumstances, e.g. non-availability of the EPO'selectronic filing tools, the service will be provided free of charge.
3.2 Filing with a competent national authority
If the application is filed with a competent national authority, that authority
must without delay inform the EPO of receipt of the documents making up
the application and indicate the nature and date of receipt of the
documents, the application number and any priority date claimed. It is
recommended that the competent national authority should indicate as well
the applicant's or representative's reference number where such has been
indicated. In practice, the above-mentioned information is provided to the
EPO by the forwarding of the application itself, unless national security
checks by the national office delay the forwarding of the application, in
which case a separate notice is sent by that office to the EPO.

Rule 35(2)Rule 35(3)When the EPO has received an application which has been forwarded by
the central industrial property office of a contracting state, it notifies theapplicant, indicating the date of receipt at the EPO. Once thiscommunication has been received, all further documents relating to theapplication must be sent directly to the EPO.

Rule 35(4)Where an application is not received at the EPO from the central industrial
property office of a contracting state before the end of the fourteenth monthafter filing or, if priority has been claimed, after the date of priority and isconsequently deemed to be withdrawn (see A-II, 1.6), the applicant must be
notified accordingly; all fees must be refunded, including any fees paid in
advance of their due date.

Art. 77(3)Rule 37(2)Rule 112(1)Part A – Chapter II-6

Guidelines for Examination in the EPO

4.

Art. 90(1)Rule 10(1)March 2023

Examination on filing

4.1 Minimum requirements for according a date of filing
The EPO examines applications to determine whether they meet theminimum requirements for according a date of filing (since this occurs
before the examining division assumes responsibility, this check is carriedout by the Receiving Section). These requirements are satisfied where thedocuments filed contain:

Rule 40(1)(a)(a)

an indication that a European patent is sought;

Rule 40(1)(b)(b)

information identifying the applicant or allowing the applicant to becontacted; andRule 40(1)(c)(c)

a description or reference to a single previous application.

It is not necessary that the applicant provide any claims in order to obtain adate of filing. If the application is filed without claims, but satisfies all
requirements for obtaining a date of filing, the applicant will be requested toprovide at least one claim later according to Rules 57(c) and 58(see A-III, 15).
Where the description is filed by reference to a previously filed application(see A-II, 4.1.3.1), the reference must contain the following information inorder for the application to qualify for a filing date according to Rule 40(2):Rule 1(i)

the filing date of the previous application(ii)

its file number(iii)

the office where it was filed(iv)

an indication that this reference replaces the description and any
drawings.

To be accorded a date of filing, these documents do not have to meet any
particular requirements as to form or presentation. It is essential, however,that the documents be sufficiently legible to enable the information to bediscerned.
4.1.1 Indication that a European patent is sought
Use of the prescribed request for grant form, available in or the software
provided by the EPO for EPO's online electronic filing tools (see A-II, 1.2.2)
or downloadable free of charge from the EPO website (epo.org), best
provides "the indication that a patent is sought" as referred to in A-II, 4.1(a)(see also A-III, 4).
4.1.2 Information concerning the applicant
For the purposes of establishing a date of filing, information must be
supplied which:(i)identifies the applicant orMarch 2023

(ii)

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Part A – Chapter II-7

allows the applicant to be contacted.

If there are multiple applicants, for the purposes of establishing a filing date,
the above information only has to be supplied concerning one of them. Anykind of information which allows the applicant to be contacted will beconsidered to fulfil requirement (ii), as for example:(a)the name and address of the applicant's representative(b)

a fax number(b)(c) a PO box number(c)(d) a phone number.

If the information supplied is sufficient to establish a date of filing but is not
sufficient for the EPO to establish whether or not the applicant requires a
representative according to Art. 133(2), the procedure outlined in A-III, 16
will be followed.
In deciding whether or not the above information concerning the applicant
satisfies the above requirements, the EPO will take into account all datacontained in the documents filed (see J 25/86). Objection should not beraised at this stage with regard to the status of the applicant or theentitlement to apply, or where, in the case of joint applicants, there is doubt
as to the contracting states designated by the individual applicants.
4.1.3 Description
The contents of the description do not require close scrutiny – it is sufficient
to identify a document (or documents) which appear(s) to include a
description. If instead of filing a description, the applicant has filed areference to a previously filed application, see A-II, 4.1.3.1.
4.1.3.1 Reference to a previously filed application
Instead of filing application documents, the applicant can file a reference toa previously filed application according to Rule 40(1)(c). The previously
filed application relied on for the reference does not need to be claimed aspriority.
Details required on the date of filing
According to Rule 40(2), in order to qualify for a date of filing, the applicant
must indicate the following details on the filing date:(i)the filing date of the previous application(ii)

its file number(iii)

the office where it was filed(iv)

an indication that this reference replaces the description and any
drawings.

Rule 40(2)Part A – Chapter II-8

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March 2023

The previous application referred to may also be an application for a utility
model.
Rule 40(3)Rule 53(2)Copy of the previously filed application
The applicant must supply a copy of the previously filed application certified
as correct by the authority with which that application was filed within twomonths of the filing date (Rule 40(3)). However, according to Rule 40(3),last sentence, this requirement is dispensed with where the previously filed
application is already available to the EPO under the conditions specified
by the President. According to the notice from the EPO dated
14 September 2009, OJ EPO 2009, 486, a certified copy does not need tobe filed where the previously filed application is a Euro-direct application or
an international one filed with the EPO as receiving Office under the PCT.
In all other cases, a certified copy of the previously filed application towhich reference is made must be filed within the time limit under
Rule 40(3).
Where the previously filed application referred to is the claimed priority
application, only one certified copy needs to be filed in order to satisfy both
the requirements relating to the filing date (Rule 40(3)) and those relating to
the priority claim (Rule 53(1), see A-III, 6.7).
For divisional applications filed by reference, see A-IV, 1.3.1.

Rule 40(3)Translation of the previously filed application
If the previously filed application is not in an official language of the EPO,
the applicant must also file a translation into one of those languages within
two months of the filing date (Rule 40(3)). If the translation of the previously
filed application is already available to the EPO, a copy of this will be
included in the file free of charge and the applicant will not need to file it(Rule 40(3)).
Note that where the previously filed application is in a language according
to Art. 14(4) (an official language of a contracting state to the EPC), theapplication may qualify for a reduction of the filing fee, provided that theapplicant is entitled according to Rule 6(3) in conjunction with Rule 6(4) to(7) (see A-X, 9.2.1 and 9.2.2). The reduction applies even in cases where
the description is filed by reference to a previously filed applicationaccording to Rule 40(1)(c), where the previously filed application is in alanguage specified in Art. 14(4) but the claims are filed after the date of thefiling in accordance with Rule 57(c) and Rule 58 and in an official languageof the EPO. This is because the essential element for establishing a filingdate (the provision of a description, see Rule 40(1)(c)) has been provided ina language giving rise to the entitlement to the reduction (see G 6/91,
mutatis mutandis).
The claims
Applicants also have the option of indicating that they wish the claims of thepreviously filed application to take the place of claims in the application as
filed. Such an indication must be made on the date of filing, preferably byMarch 2023

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Part A – Chapter II-9

crossing the appropriate box in the request for grant (EPO Form 1001). If
this indication is made, then the claims of the previously filed application
will form the basis for the search, and will satisfy the requirement ofRule 57(c), so that an invitation under Rule 58 to file claims later will not be
issued.
If the applicants do not refer to the claims of the previously filed application,but only to the description and any drawings thereof, they may at the sametime as filing the reference (i.e. on the date of filing), file a set of claims. Ifthey do not do so, they will be invited by the EPO to file claims(see A-III, 15).
4.1.4 Deficiencies
If the EPO (Receiving Section) notes either of the following deficiencies:–

Rule 40(1)(a) – no indication that a European patent is sought, or–Rule 40(1)(c) – no description or reference to a previously filed
application,either of which prevents the application being accorded a date of filing, it
communicates this to the applicants and invites them to remedy the
deficiency within a non-extendable period of two months from notification of
a communication under Rule 55. If the requirements of Rule 40(1)(a) orRule 40(1)(c), as applicable, are not met at the end of this period, theapplication will not be dealt with as a European patent application. The
EPO will notify the applicant accordingly under Rule 112(1). In reply, theapplicant may file a request for a decision under Rule 112(2)(see E-VIII, 1.9.3) or request re-establishment of rights under Art. 122 andRule 136 (see E-VIII, 3).
If none of the available means of redress is filed on time, any fees paid arerefunded. If the applicant wishes to pursue a European patent application,
all documents relating to the purported European patent application will
have to be re-filed. Any such newly filed European patent application will beaccorded as the date of filing the date on which all the requirements ofRule 40 are fulfilled.
Deficiency under Rule 40(1)(b)In the event that the information concerning the applicants is missing or
does not enable the EPO to contact them (Rule 40(1)(b)), a communication
concerning the deficiency cannot be sent. The European patent application
will not come into existence unless the applicants correct this deficiency of
their own motion within two months of the date of receipt of the original
documents. In this case, the date of filing is the date on which all therequirements of Rule 40 are met.

Art. 90(1) and(2)
Rule 55
Rule 112(1)Part A – Chapter II-10

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March 2023

Filing by reference to a previous application
Where the application is filed by reference to a previously filed applicationand the EPO (Receiving Section) notes that any of the following information
is missing:(i)the filing date of the previous application(ii)

its file number(iii)

the office where it was filed(iv)

an indication that this reference replaces the description and any
drawings

then it proceeds as above and invites the applicant to remedy the
deficiency within a two-month time limit (Rule 55). If the applicant does not
remedy the deficiencies in due time, the application is not treated as aEuropean application.
If the applicant does not provide the certified copy of the previously filed
application within two months of filing the application (Rule 40(3)) and thisis not already available to the EPO (see A-II, 4.1.3.1), then acommunication according to Rule 55 will be sent to the applicant,requesting that the certified copy be filed within a non-extendable period of
two months. If the applicant does not provide the certified copy in due time,
the application is not treated as a European application. Where atranslation of the application is required and this is not provided within theabove time limit, the procedure given in A-III, 14 is followed. The filing dateis unaffected by a missing translation.
4.1.5 Date of filing
The date of filing accorded to the application is the date the application
meets the requirements of Rule 40 and is either:(i)the date of receipt at the EPO or competent national authority; or(ii)

the date, not later than the two-month period referred to in Rule 55,
on which the applicant rectifies any deficiencies. In the latter case,the applicant is informed of the date of filing accorded to theapplication.

Case (ii) is subject to one exception. Where the application is filed byreference to a previously filed application and the applicant fails to file thecertified copy of the previously filed application within two months of thefiling date as required by Rule 40(3), an invitation is sent to the applicant tofile it within a period of two months from a communication according toRule 55. If the applicant files the certified copy within this two-month period,
the application maintains its original date of filing, provided that all otherrequirements for acquiring a date of filing have been met.

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The date of filing may also change in cases where the applicant inserts
missing parts of the description or missing drawings under Rule 56(see A-II, 5) or corrects erroneously filed parts under Rule 56a (see A-II, 6)
after the date of filing (see A-II, 5).
5.

Late filing of missing drawings or missing parts of the description

5.1 Late filing of missing drawings or missing parts of thedescription – on invitation
The application is examined on filing to check that it is entitled to a date offiling. If, during this check, the EPO notes that parts of the description, or
drawings appear to be missing, it shall invite the applicant to file themissing parts within a time limit of two months from the invitation of acommunication under Rules 56(1) and 56a(1) (see A-II, 6). During this time
limit, the applicant may proceed under Rule 56 or Rule 56a. If the applicant
does not reply to this invitation communication in time, then all references
to the missing parts are deemed to be deleted. It is to be noted that theapplicant may not invoke the omission of the invitation communication
under Rule 56(1) Rules 56(1) and 56a(1).
5.2 Late filing of missing drawings or missing parts of thedescription – without invitation
Applicants may also file missing parts of the description, or missing
drawings, of their own motion (without being invited to do so by the EPO)
within two months of the original date of filing. If the applicant does not filethe missing parts within this period, all references to the missing parts are
deemed to be deleted. However, if If the applicant is invited by the EPO tofile the missing parts, the period under Rule 56(1) takes precedence(see A-II, 5.1).

Art. 90(1)Rule 56(1)Rule 56(4)(a)Rule 56a(1)Rule 56(2)Rule 56(4)(a)If, within two months of the original date of filing, the applicants notice thatparts of the description or drawings are missing they have neglected toinclude drawings and/or parts of the description in the application as
originally filed, they should, of their own motion, file the missing parts or
missing drawings it is advisable to file these as soon as possible of theirown motion according to under Rule 56(2), since if because, in the absenceof a communication from the EPO sent under Rules 56(1) and 56a(1), thedoes not invite them to file the missing parts, then any possibility for
applicants to file any missing or correct parts them to file them later ends
two months after the original date of filing.
The time limits referred to in Rule 56 are excluded from further processing(Rule 135(2)).
5.3 The filing date changes
If the applicant files missing parts of the description, or missing drawings, inaccordance with the procedures explained in A-II, 5.1 or 5.2, then the dateof filing changes to the date on which the missing parts are received at the
EPO. The applicant is informed of the new date of filing. This is subject tothe exception explained in A-II, 5.4.

Rule 135(2)Rule 56(2)Part A – Chapter II-12

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A "drawing" means a single numbered figure. Only whole figures will be
accepted according to Rule 56, even where only a part of the original figure
was missing.

Rule 56(3)5.4 Missing parts based on the priority application, no change infiling date
If the applicant files missing parts of the description, or missing drawings,
after the date of filing in accordance with the procedures explained in
A-II, 5.1 or 5.2, the date of filing does not change, provided that all of thefollowing criteria are satisfied:(i)the missing parts are filed within the applicable time limit*(ii)

the application claims priority on the date on which the requirements
laid down in Rule 40(1) were fulfilled (see A-II, 4.1 and A-II, 5.4.1)(iii)

the applicant requests that the late-filed missing parts be based on
the claimed priority in order to avoid a change in the date of filing(see A-II, 5.4.1), and does so within the applicable time limit*(see A-II, 5.4.1)(iv)

the late-filed missing parts of the description, or missing drawings,
are completely contained in the priority application (see A-II, 5.4.2)

Rule 56(3)(a)(v)

the applicant files a copy of the priority application within theapplicable time limit*, unless such copy is already available to the
EPO under Rule 53(2) (see A-II, 5.4.3)

Rule 56(3)(b)(vi)

where the priority application is not in an official language of the
EPO, the applicant files a translation into one of these languages
within the applicable time limit*, unless such a translation is alreadyavailable to the EPO under Rule 53(3) (see A-II, 5.4.4)

Rule 56(3)(c)(vii)

the applicant indicates where in the priority application and, if
applicable, where in its translation, the late-filed missing parts of thedescription, or missing drawings, are completely contained, and does
so within the applicable time limit* (see A-II, 5.4.2).

* For the applicable time limit see whichever of A-II, 5.1 or 5.2 applies.
Where the conditions for including the missing parts of the description or
missing drawings under Rule 56(3) are fulfilled, the date of filing remains
unchanged. The EPO informs the applicants of this in a communication
under Rule 56(3).
Where criterion (i) is not satisfied, the late filing of those missing parts isdeemed not to have been made and all references thereto in theapplication are deemed to be deleted under Rule 56(4)(a) (see A-II, 5.1 and
5.2). In this case the filing date does not change, but the late-filed missing
parts are not introduced into the application either.

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Part A – Chapter II-13

If the request according to Rule 56(3) does not comply with one or more of
the above requirements (ii)-(iv), then according to Rule 56(2) the date offiling will change to the date on which the EPO received the late-filed
missing parts of the application. The EPO will send a communication
informing the applicant of this according to Rule 56(2).

Rule 56(2)If the request according to Rule 56(3) does not comply with one or more of
the above requirements (v)-(vii), then according to Rule 56(5) the date offiling will change to the date on which the EPO received the late-filed
missing parts of the application. The EPO will send a communication
informing the applicant of this according to Rule 56(5).

Rule 56(5)5.4.1 Late-filed missing parts when priority is claimed
In the context of a request under Rule 56(3) the EPO will check that therequirements for the priority claim are met (see A-III, 6).
Where the applicant files a request under Rule 56(3) (see A-II, 5.4), thepriority claim in question must have been in existence no later than the dateon which the requirements laid down in Rule 40(1) were first fulfilled(see A-II, 4.1). no later than the filing of this request. To this end, theapplicant can file a simultaneous request, contained in one single
submission:(i)

to insert a new priority claim not present when the application was
filed according to Rule 52(2), and(ii)

to base late-filed missing parts of the description, or drawings, onthat priority claim according to Rule 56(3)This is subject to the proviso that the above simultaneous request respects
both the time limit according to Rule 52(2) for insertion of a new priority
claim (see A-III, 6.5.1) and the applicable time limit for making the request
according to Rule 56(3) (see whichever of A-II, 5.1 or 5.2 applies). If this is
the case, then the requirement under Rule 56(3) that priority be claimed ismet (see A-II, 5.4(ii)).
Alternatively, the applicant may file submission (i) earlier (again, provided
that it is filed within the time limit according to Rule 52(2)) and thensubsequently file submission (ii) (again, provided that it complies with theapplicable time limit). However, it is not possible to file request (ii) before
request (i), because in this case request (ii) would be filed at a time when
there is no priority claim, and it would not meet the requirements ofRule 56(3).
5.4.2 The missing parts are completely contained in the priority
application
In cases where no translation of the priority application is required and boththe European patent application and the priority application are in the sameofficial language, the requirement that the late-filed parts of the applicationare "completely contained" in the priority application is met only if the partsof the priority application identified by the applicant according toRule 40(1)Part A – Chapter II-14

Guidelines for Examination in the EPO

March 2023

Rule 56(3)(c) contain the same drawings, with the same annotations or, forlate-filed parts of the description, contain the same text.
If a translation of the priority application is required, then the requirementthat the late-filed parts of the application are "completely contained" in thepriority application is met only if the parts of the translation identified by theapplicant according to Rule 56(3)(c) contain the same drawings, with thesame annotations or, for late-filed parts of the description, contain the same
text.
Rule 56a

In addition to the requirement that the missing drawings or the missing
parts of the description be identical to the corresponding drawings or partsof the priority application, they must also be inserted in the description in amanner which does not result in the presence of additional technicalcontent. Drawings of low visual quality are not considered missing in thesense of Rule 56 and can, therefore, not be remedied under this provision(see J 12/14). However, it may be possible to remedy drawings of low
visual quality under Rule 56a (see A-II, 6).
Final assessment of the "completely contained" requirement falls within the
responsibility of the examining division (see C-III, 1).
5.4.3 Copy of the priority application
The copy of the priority application which is required for the request
according to Rule 56(3) does not need to be certified. However, if theapplicants do provide a certified copy in the context of their request
according to Rule 56(3), they will not need to provide it again in the context
of their priority claim according to Rule 53(1).
Where a copy of the priority document is already available to the EPO
under Rule 53(2) in accordance with the conditions laid down by the
President, the applicant does not need to file it. See also A-III, 6.7.
5.4.4 Translation of the priority application
Where a translation of the priority application is already available to the
EPO under Rule 53(2), the applicant does not need to file it.
In cases where the priority application is in an official language of the EPO
and the European application is in a different official language of the EPO,
there is no requirement for the applicant to file a translation of the priority
application according to Rule 56(3)(b). However, since the language of thepriority and of the European applications differ application differs, therequirement that the newly introduced drawings (if they containannotations) or parts of the description are "completely contained" in thepriority application (Rule 56(3)) is not met.
This can be overcome by the applicant's supplying within the applicabletime limit (see whichever of A-II, 5.1 or 5.2 applies), either:(i)a translation from the official language of the priority application into
the official language of the European application of those parts of thepriority application identified by the applicant as completely

March 2023

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Part A – Chapter II-15

containing the missing parts of the description, or missing drawings(Rule 56(3)(c)), or(ii)

a declaration indicating that the late-filed missing parts of thedescription, or missing drawings, are an exact translation of the partsof the priority application identified by the applicant according toRule 56(3)(c).

The entire priority application does not need to be translated, since thistranslation is required to satisfy the "completely contained" requirement ofRule 56(3), not the translation requirement of Rule 56(3)(b).
5.5 Withdrawal of late-filed missing drawings or missing parts of thedescription
Where applicants file missing parts of the description, or missing drawings,
and make no request to base these late-filed parts on a claimed priority,
they are informed of the new date of filing in a communication from theEPO (see A-II, 5.3). Within one month of this communication, the applicants
may withdraw the late-filed parts of the application and if they do so, theredating of the application is deemed not to have been made and allreferences to the missing parts of the description, or missing drawings, aredeemed to be deleted. The EPO will inform the applicants of this.
Where applicants file missing parts of the description, or missing drawings,
and request that these late-filed parts be based on a claimed priority, but
the requirements of Rule 56(3) are not met within the applicable time limit,
the date of filing changes to the date on which the late-filed parts of theapplication are received at the EPO (Rule 56(2) or (5)). The applicants are
informed of the new date of filing in a communication from the EPO. Within
one month of this communication, they may withdraw the late-filed parts of
the application (Rule 56(6)); if they do so, the redating of the application isdeemed not to have been made, any filing of missing parts of thedescription or missing drawings is deemed not to have occurred and allreferences to the missing parts of the description, or missing drawings, aredeemed to be deleted (Rule 56(4)). The EPO will inform the applicants of
this.
Where references to a missing figure, e.g. "see Fig. 4", are deemed to bedeleted, then reference signs cited in the context of that reference are also
deemed to be deleted, although any technical information in the reference
which is still technically meaningful without the reference may be retained:
e.g. "see Fig. 4, a distillation column (1), provided with a condenser (2)"becomes "a distillation column provided with a condenser". The publicationof the application (see A-VI, 1.3) in such a case will contain the application
documents as originally filed, without the references being physicallydeleted.
If the late-filed missing parts of the application do not satisfy the physicalrequirements of Rule 49, Rule 49(2) in conjunction with the decision of the
President of the EPO dated 25 November 2022 (OJ EPO 2022, A113), theEPO will not request the applicant to correct this deficiency according toRule 56(2) and (4)Rule 56(2), (4) and (5)Part A – Chapter II-16

Guidelines for Examination in the EPO

March 2023

Rule 58, until the one-month period for withdrawing them has expired
without the applicant having withdrawn them (see A-III, 3.2.2).
5.6 Additional fee for pages
For the calculation of the additional fee for pages in excess of 35 ("pagefee"), see A-III, 13.2.
6.

Rule 56a(1)Rule 56a(5)Rule 56a(3)Correction of erroneously filed application documents or parts

6.1 Correction of erroneously filed application documents or parts –on invitation
The application is examined on filing to check that it is entitled to a date offiling. If, during this check, the EPO establishes that the description, claims
or drawings (or parts of them) appear to have been erroneously filed, it will
invite the applicant to file the correct documents within a time limit of twomonths of a communication under Rules 56(1) and 56a(1) (see A-II, 5).
During this time limit, the applicant may proceed under Rule 56a orRule 56. If the applicant does not reply to this invitation in time, any filing of
the correct application documents or parts will be deemed not to haveoccurred and the erroneously filed application documents or parts willremain in the application as filed (Rule 56a(5)). It is to be noted that theapplicant may not invoke the omission of the communication under
Rules 56(1) and 56a(1) (see the notice from the EPO dated 23 June 2022,
OJ EPO 2022, A71).
6.2 Correction of erroneously filed application documents or parts –without invitation
Applicants may also file correct (parts of) the description, claims ordrawings of their own motion (without being invited to do so by the EPO)
within two months of the original date of filing. If the applicant is invited by
the EPO to file correct application documents or parts, the period under
Rule 56a(1) takes precedence (see A-II, 6.1).
If, within two months of the original date of filing, applicants notice that they
filed erroneous application documents or parts, they should, of their own
motion, file correct application documents or parts as soon as possible
under Rule 56a(3) because, in the absence of a communication from the
EPO sent under Rules 56 and 56a(1), the possibility for applicants to file
any missing or correct parts ends two months after the original date offiling.
Whether documents were erroneously filed depends only on the applicant's
statement as to what was intended. No further evidence is required by the
EPO.

Rule 135(2)Time limits under Rule 56a(1) and (3) to (7) are excluded from further
processing (Rule 135(2)).
6.3 The filing date changes
If, after the filing date, the applicant corrects the application documents (orparts) in accordance with the procedures explained in A-II, 6.1 or A-II, 6.2,
then the erroneously filed application documents will be deemed not toMarch 2023

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Part A – Chapter II-17

have been filed and the correct documents will be added to the application.
The date of filing changes to the date on which the correct parts arereceived at the EPO. The applicant is informed of the new date of filingunder Rule 56a(3). This is subject to the exception explained in A-II, 6.4.
Erroneously filed application documents remain in the file, even if they are
considered not to form part of the application as filed. As such, following
publication of the application, the erroneous application documents or parts
are open to file inspection (see A-XI, 2.1 and A-XI, 2.3).
6.4 Correct application documents based on priority application, nochange in the filing dateIf, after the filing date, the applicant corrects the application documents (orparts) in accordance with the procedures explained in A-II, 6.1 or A-II, 6.2,
then the date of filing does not change, provided that all of the following
criteria are satisfied:(i)the correct application documents (or parts) are filed within theapplicable time limit*(ii)

the application claims priority on the date on which the requirementsof Rule 40(1) were fulfilled (see A-II, 4.1 and A-II, 6.4.1)(iii)

the applicant requests that the correct application documents bebased on the claimed priority (see A-II, 6.4.1) in order to avoid achange in the date of filing, and does so within the applicable time
limit*(iv)

the correct application documents are completely contained in thepriority application (see A-II, 6.4.1)(v)

the applicant files a copy of the priority application within theapplicable time limit* unless such a copy is already available to the
EPO under Rule 53(2) (see A-II, 6.4.2)(vi)

where the priority application is not in an official language of the
EPO, the applicant files a translation into one of those languages
within the applicable time limit* unless such a translation is alreadyavailable to the EPO under Rule 53(3) (see A-II, 6.4.3)(vii)

the applicant indicates where in the priority application and, if
applicable, where in its translation, the correct application documents
are completely contained, and does so within the applicable time
limit* (see A-II, 6.4.2).

*For the applicable time limit, see whichever of A-II, 6.1 or A-II, 6.2 applies.
Where the conditions for including the correct application documents orparts under Rule 56a(4) are fulfilled, the date of filing remains unchanged.
The correct application documents or parts are included in the applicationand the erroneously filed parts remain in the application as filed. The EPO
informs the applicants of this in a communication under Rule 56a(4). The

Rule 56a(4)Part A – Chapter II-18

Guidelines for Examination in the EPO

March 2023

erroneously filed documents may only be removed by amending theapplication during the grant proceedings and subject to Art. 123(2).
Rule 56a(5)(a)Where criterion (i) is not satisfied, any filing of the correct application
documents or parts is deemed not to have been made. In this case, thefiling date does not change and the erroneously filed application documentsor parts remain in the application. The EPO will send a communication
informing the applicant of this in accordance with Rule 56a(5).

Rule 56a(3)If the request according to Rule 56a(4) does not comply with one or more of
criteria (ii)-(iv) above, then the date of filing will change to the date on which
the EPO received the correct application documents or parts. The correct
application documents or parts will be included in the application and theerroneously filed application documents or parts will be deemed not to havebeen filed. The EPO will send a communication informing the applicant of
this in accordance with Rule 56a(3).

Rule 56a(6)If the request according to Rule 56a(4) does not comply with one or more of
criteria (v)-(vii) above, then the date of filing will change to the date on
which the EPO received the correct application documents or parts and theerroneously filed application documents or parts will be deemed not to havebeen filed. The EPO will send a communication informing the applicant of
this in accordance with Rule 56a(6).

Rule 56a(4)6.4.1 Later-filed correct application documents or parts whenpriority is claimed
In the context of a request under Rule 56a(4), the EPO will check that therequirements for the priority claim are met (see A-III, 6).
Where the applicant files a request under Rule 56a(4) (see A-II, 6.4), thepriority claim in question must have been in existence on the date on which
the requirements laid down in Rule 40(1) were fulfilled (see A-II, 4.1).
The requirement that the correct application documents or parts becompletely contained in the priority application is the same as for missing
parts of the description or missing drawings filed under Rule 56(3)(see A-II, 5.4.2).
Final assessment of the "completely contained" requirement falls under the
responsibility of the examining division (see C-III, 1).
6.4.2 Copy of the priority application
The same requirements apply as for missing parts of the description or
missing drawings filed under Rule 56(3) (see A-II, 5.4.3).
6.4.3 Translation of the priority application
The same requirements apply as for missing parts of the description or
missing drawings filed under Rule 56(3) (see A-II, 5.4.4).

Rule 56a(7)6.5 Withdrawal of correct application documents or parts
Where applicants are informed about the new date of filing, they may,within one month of the communication under Rule 56a(3) or (6) asMarch 2023

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Part A – Chapter II-19

applicable (see A-II, 6.3 and A-II, 6.4), withdraw the correct application
documents or parts in order to maintain the initial date of filing. In this case,redating of the application and any filing of the correct documents or parts
will be deemed not to have occurred. The erroneously filed documents orparts will be restored to the application as filed. The EPO will inform theapplicants of this in a communication in accordance with Rule 56a(7).
6.6 Same-day corrections
If applicants become aware that they filed incorrect application documentsor parts and wish to file correct application documents or parts on or before
the date the requirements of Rule 40(1) are fulfilled (see A-II, 4.1), they can
do so without needing to file a new application and pay the corresponding
fees (Rule 56a(2)). The correct application documents or parts are includedin the application and the erroneously filed application documents or parts
are deemed not to have been filed. The EPO will inform the applicants inaccordance with Rule 56a(2).
6.7 Correct application documents or parts filed after the search has
startedIf applicants file correct application documents or parts after the EPO has
already begun to draw up the search report, the EPO will invite them to pay
a further search fee under Rule 56a(8) within a time limit of one month. If
the fee is paid in due time, the search will be completed on the basis of thefiling date and of the application documents established under theprocedures described in A-II, 6.3, 6.4 or 6.5. If the fee is not paid in duetime, the application will be deemed to be withdrawn (Rule 112(1)). Further
processing is available (Rule 135(2)). Payment of the further search fee is
excluded from automatic debiting (see Annex A.1 to the ADA, point 3(l)).
6.8 Additional fee for pages
For the calculation of the additional fee for pages in excess of 35 ("pagefee"), see A-III, 13.2.
6.9 Claims fee
For the calculation of the claims fee, see A-III, 9.

Rule 56a(2)Rule 56a(8)Rule 112(1)Rule 135(2)March 2023

Guidelines for Examination in the EPO

Part A – Chapter III-1

Chapter III – Examination of formal
requirements
1.

General

1.1 Formal requirements
The formal requirements that an application has to meet are the subject ofan examination by the Receiving Section. These requirements relate to thefollowing:(i)representation;(ii)

signature(iii)

physical requirements of the application;(iv)

abstract;(v)

request for grant;(vi)claim to priority;(vii)

designation of inventor;

Art. 90(3)Rule 57(viii) translations, where required;(ix)

the presence of at least one claim;(x)filing and search fees

1.2 Further checks
In addition to the above, it is necessary for the Receiving Section to:(i)carry out a preliminary check of the description and claims in order toensure that the title of the invention, which will appear in the
published application, is in general accord with the requirements ofRule 41(2)(b)Rule 41(2)(b)(ii)

check whether any claims fees due have been paid (see also A-III, 9)

Rule 45(1) and (2)(iii)

check whether the certificate of exhibition under Rule 25 has been
filed where the invention has been displayed under Art. 55(1)(b)(see also A-IV, 3)

Art. 55(1)(b)Rule 25(iv)

check whether in the case of European patent applications relating tobiological material the information pursuant to Rule 31(1)(c) and (d)is complete (see also A-IV, 4)Rule 31(v)

check whether in the case of an application with nucleotide and/or
amino acid sequences a prescribed sequence listing has also been
filed (see also A-IV, 5 and the Decision of the President of the EPO

Rule 30

Part A – Chapter III-2

Guidelines for Examination in the EPO

March 2023

dated 28 April 2011, OJ EPO 2011, 372, and the Notice from the
EPO dated 18 October 2013, OJ EPO 2013, 542, as well as thedecision of the President of the EPO dated 9 December 2021,
OJ EPO 2021, A96, and the notice from the EPO dated 9 December
2021, OJ EPO 2021, A97).
The requirements of the above paragraphs and the procedure to befollowed when the requirements are not met are considered in subsequent
sections of this chapter.
2.

Representation

2.1 Requirements
The formalities officer must ensure that the requirements with regard torepresentation as set out in A-VIII, 1 are met. The main points to beconsidered are:Art. 133(2)(i)

the necessity for applicants who have neither a residence nor
principal place of business in a contracting state to be represented byan authorised professional representative or by an authorised legal
practitioner fulfilling the requirements of Art. 134(8);Art. 133(3)(ii)

that, where an applicant having residence or principal place ofbusiness in a contracting state is represented by an employee, theemployee is authorised; andRule 152(iii)

that the authorisation, if any is required (see A-VIII, 1.5 and thedecision of the President of the EPO dated 12 July 2007, Special
edition No. 3, OJ EPO 2007, L.1), is in order, duly signed(see A-VIII, 3.2 and A-VIII, 3.4) and is filed in due time.

2.2 Non-compliance
The effect of non-compliance with the provisions with regard torepresentation and the action to be taken by the formalities officer indealing with any deficiency are considered in A-III, 16.
3.

Art. 90(3)Physical requirements

3.1 General remarks
Every application that is subject to formal examination is examined forcompliance with the requirements as to form set out below.
Non-compliance with the requirements is considered in A-III, 16.
3.2 Documents making up the application, replacement documents,
translations
It is the responsibility of the Receiving Section to ensure that the
documents making up the application, i.e. request, description, claims,
drawings and abstract, meet the requirements of Rule 49(2) to (9) and (12)and, with regard to drawings, the requirements of Rule 46, in conjunction
with Art. 4(2) of the decision of the President of the EPO dated
25 November 2022 (OJ EPO 2022, A113) to the extent necessary for the
purpose of a satisfactory reproduction and a reasonably uniform publication

March 2023

Guidelines for Examination in the EPO

Part A – Chapter III-3of the application under Rule 68(1). This equally applies to any
supplementary document filed as an appendix to the description. Whenevaluating the quality of the application documents and their suitability forelectronic and direct reproduction, the Receiving Section's objective must
be to ascertain the discernibility of all details originally disclosed in the
documents received on the date of filing. Furthermore, the Receiving
Section should not draw the attention of the applicant to any deficiencies
related to the content of the application, namely those under Rule 46(2)(i)or (j) or 49(9), fourth sentence listed in Art. 1(2)(i) and (j) and Art. 2(8),fourth sentence, of the decision of the President of the EPO dated
25 November 2022 (see also the notice from the EPO dated
25 November 2022, OJ EPO 2022, A114, point 8, and A-III, 16.1).
With regard to those requirements in relation to which some technicalknowledge may be needed, such as those of Art. 1(2)(f) and (2)(h) of thedecision of the President of the EPO dated 25 November 2022
Rule 46(2)(f) and (h), the Receiving Section should, in case of doubt,
consult and take the advice of the search division. The Receiving Section
should also consider taking action when the search division draws its
attention to a deficiency which it had overlooked. It should be noted that, in
accordance with Rule 46(3), flow sheets and diagrams are to be consideredas drawings (Art. 1(3) of the decision of the President of the EPO dated
25 November 2022).
If the formal requirements of Rule 46 and Rule 49 Rule 49(2) are not met,
the applicant is invited to remedy this deficiency within a non-extendable
two-month period (Rule 58 and Rule 50(1)). If this deficiency is not
remedied in due time, the application is refused (Art. 90(5)).
Once the examining division assumes responsibility for the application, it
also becomes responsible for formal matters. It should pay particularattention to the more technical requirements of Rule 46 and Rule 49,
including in particular the above-mentioned requirements under
Rule 46(2)(i) and (j) and Rule 49(9), fourth sentence, and those laid downin Art. 1(2)(i) and (j), Art. 2(8), fourth sentence, and Art. 2(9) and (10) of thedecision of the President of the EPO dated 25 November 2022 (see also
the notice from the EPO dated 25 November 2022, point 8) Rule 49(10)and (11).

Rule 10Art. 94(1)Rule 46

Replacement documents, including the amendment of granted patents(Rule 86), and translations in an official language of documents filed under
the provisions of Art. 14(2) or (4) are subject to the same requirements as
the documents making up the application. As a consequence, they must be
typed or printed. Submissions containing handwritten amendments toapplication or patent specification documents are formally deficient andneed to be corrected (see OJ EPO 2013, 603; however, see also E-III, 8.7
and OJ EPO 2016, A22, as well as H-III, 2.2).

Rule 1
Rule 49(2)Rule 50(1) and(2)
Rule 86

In examination proceedings the invitation to correct formal deficiencies issent by the formalities officer on behalf of the examining division (see thedecision of the President of the EPO dated 12 December 2013,
OJ EPO 2014, A6).

Part A – Chapter III-4

Guidelines for Examination in the EPO

March 2023

In the event of deficiencies under Rule 30, the Receiving Section must
invite the applicant to remedy them within a non-extendable two-month
period. If this deficiency is not remedied in due time, the application isrefused by the Receiving Section under Rule 30(3) (see the Decision of the
President of the EPO dated 28 April 2011, OJ EPO 2011, 372, and the
Notice from the EPO dated 18 October 2013, OJ EPO 2013, 542 thedecision of the President of the EPO dated 9 December 2021,
OJ EPO 2021, A96, and the notice from the EPO dated 9 December 2021,
OJ EPO 2021, A97; see also A-IV, 5).
The particular requirements for drawings are dealt with in A-IX.
3.2.1 Physical requirements of applications filed by reference to apreviously filed application
If the application is filed by reference to a previously filed applicationaccording to Rule 40(1)(c) (see A-II, 4.1.3.1), where no translation isrequired, the certified copy of the previously filed application required under
Rule 40(3) must satisfy the physical requirements. If the previously filed
application is not in an official language of the EPO, only the translation
required under Rule 40(3) must satisfy the physical requirements, provided
that the authenticity of the contents of the original is not impugned and thatthe original is of sufficient quality to allow good reproduction(Rule 49(2)Rule 49(12)).
3.2.2 Physical requirements of late-filed application documents orcorrect application documents or parts
Where claims are filed after the date of filing (see A-III, 15) or where
missing parts of the description, or missing drawings, or correct application
documents or parts, are inserted after the date of filing (see A-II, 5 and A-II,
6), all of these late-filed application documents must also satisfy thephysical requirements. Consequently, the EPO will carry out two separate
checks, first on the physical requirements of the original application
documents, and second on any late-filed claims or missing parts of thedescription, or missing drawings, or correct application documents or parts.
Any deficiencies will only be communicated when the complete application
documents are on file.
In the event that late-filed missing parts of the description, or missing
drawings, or correct application documents or parts, result in a change ofthe date of filing, the applicant can withdraw the late-filed parts of thedescription, or drawings up to one month after being notified of the change
in filing date (Rule 56(6)). Similarly, the applicant can withdraw correct
application documents or parts filed under Rule 56a within the same period(Rule 56a(7)). Consequently, if the late-filed missing parts of thedescription, or missing drawings, or correct application documents or parts:(i)contain deficiencies with regard to the physical requirements, and(ii)

result in a change of the date of filing,March 2023

Guidelines for Examination in the EPO

Part A – Chapter III-5

then the EPO will wait until the one-month period for their withdrawal has
expired and will then send a communication according to Rule 58 in respectof these deficiencies, if the applicant has not withdrawn them in due time.
3.3 Other documents
All documents other than those making up the application shall be
typewritten or printed with a margin of about 2.5 cm on the left-hand side ofeach page (Art. 3 of the decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113).
4.

Rule 50(2)Request for grant

4.1 General remarks
The request for grant must be made on the appropriate EPO form
(EPO Form 1001), even though the request (the indication that a patent issought, referred to in A-II, 4.1(i)) need initially be in no particular form. The
latest version of that form is available for download on via the EPO website
on the internet (epo.org) and, with the exception of the web-form filingservice, is also included in the software provided by the EPO for electronic
filing can be accessed in the EPO's online filing tools (see A-II, 1.2.2).
Whenever a new version of the request for grant form is issued, attention isdrawn to this fact in the Official Journal of the EPO. It is recommended
always to use the latest version of the form. Similarly, it is recommended
always to use the latest version of the EPO Online Filing software for filing(see A-II, 1.2.2 (i)).
4.2 Examination of the request for grant form
The Receiving Section examines the request to ensure that it contains theinformation listed in Rule 41(2). The request form provides for the entry ofthat information. The petition for the grant (Rule 41(2)(a)) is an integral partof the form. The applicant must be allowed to correct deficiencies in therequest to the extent indicated in A-III, 16.
4.2.1 Information on the applicant
The request must contain, in the manner specified in Rule 41(2)(c), thename, address and nationality of the applicant and the state in which thatparty's residence or principal place of business is located. Where theapplication is filed by more than one applicant, the requirement must be
satisfied for each applicant. At this stage in the proceedings, the formalities
officer will consider the entitlement of the person named as applicant toapply for a patent (A-II, 2).
Applicants (whether natural or legal persons) whose residence or principal
place of business is in an EPC contracting state and who act without aprofessional representative can use an address for correspondence otherthan their residence. The address for correspondence must be theapplicant's own address and be in an EPC contracting state. For that
address to be used in proceedings before the EPO applicants must
explicitly inform the EPO that it is to be used as the address forcorrespondence, preferably by entering it in the Box marked "Address forcorrespondence" of EPO Form 1001 (see the notice from the EPO dated

Rule 41(1)Part A – Chapter III-6

Guidelines for Examination in the EPO

March 2023

4 September 2014, OJ EPO 2014, A99). Post cannot be sent to a different(natural or legal) person, since that requires a valid form of representation
under Art. 133 and 134.

Rule 41(2)(h)4.2.2 Signature
The request must be signed by the applicant or the appointed
representative. If there is more than one applicant, each applicant or their
appointed representative must sign the request. For further details as to thesignature of the request, see A-VIII, 3.2 to 3.4.
4.2.3 Further requirements laid down by Rule 41(2)The provisions of Rule 41(2)(b), (e), (f) and (g), dealing respectively withthe title of the invention, divisional applications, Art. 61 applications andclaim to priority are considered under these headings in subsequent
sections of this chapter and in A-IV.
5.

Art. 81
Rule 19
Rule 41(2)(j)Rule 20(1)Rule 143(1)(g)Rule 144(c)Art. 129(a)Rule 19(1)Designation of inventor

5.1 General remarks
Every application must designate the inventor. , who must be a person withlegal capacity (J 8/20). The designation is incorporated in the software
provided by the EPO for electronic filing (see A-II, 1.3). When filing on
paper, the designation is filed in a separate document where the applicant
is not the inventor or the sole inventor; otherwise the designation must be
effected in the request for grant form (EPO Form 1001) by placing a crossin the appropriate box in section 22. Where the designation is effected in a
separate document, a trilingual form available from the EPO website should
preferably be used (EPO Form 1002).
5.2 Waiver of right to be mentioned as inventor
Inventors designated by the applicant may address to the EPO a written
waiver of their right to be mentioned as inventor in the published European
patent application and the European patent specification, in which casetheir name is not mentioned in the published European patent application,
the European patent specification, the Register of European Patents(Rule 143(1)(g)) and, consequently, the European Patent Bulletin, always
provided that the waiver is received in time. Moreover, in accordance with
Rule 144(c), the designation of the inventor as well as the waiver is thenexcluded from file inspection pursuant to Art. 128(4). If such a waiver isreceived after the publication of the European patent application, themention of the inventor will be removed in the Register of European
Patents.
5.3 Designation filed in a separate document
Where the designation is filed in a separate document it must contain thefamily name, given names and country and place of residence of theinventor. The place of residence is the city or municipality, i.e. not theprovince or region, where the inventor permanently resides and should
preferably include the postal code (see the notice from the EPO dated
22 February 2021, OJ EPO 2021, A12). The country and place of residence
may also be that of the inventor's employer applicant (e.g. a company).
Furthermore, the designation must contain the statement, referred to inMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter III-7

Art. 81, indicating the origin of the right to the patent and the signature of
the applicant or the appointed representative.
In the case of assignment, the words "by agreement dated ..." suffice, in thecase of inventions by employees a mention that the inventor(s) is/are
employee(s) of the applicant(s) and in the case of succession a mention
that the applicant(s) is/are heir(s) of the inventor(s).
The designation of inventor must be signed by the applicant or theappointed representative. With regard to the signature, the provisions set
out in A-VIII, 3.2 to A-VIII, 3.4, apply.
The EPO does not verify the accuracy of the information given in thedesignation of the inventor.

Rule 19(2)If the designation of inventor is filed subsequently, the requirements set out
in A-VIII, 3.1 apply.
5.4 Deficiencies
Where a designation is not filed, or where the designation filed is deficient(e.g. inventor's name or country or place of residence or the signature of
the applicant is missing) so that it cannot be considered as validly filed, theapplicant is informed that the European patent application will be refused if
the deficiency is not remedied within the period prescribed under
Rule 60(1), which is within 16 months of the date of filing or, if priority isclaimed, of the date of priority. This time limit is deemed to have been met if
the information is communicated before completion of the technicalpreparations for publication (see A-VI, 1.2). Where the applicant hasrequested early publication and, accordingly, technical preparations for
publication are completed before expiry of the 16-month time limit, theapplicant can still file the designation within the said time limit (see J 1/10).
If the deficiencies are not rectified in due time, the application is refused
and the applicant is notified accordingly (as regards divisional applications,
see A-IV, 1.5). Further processing is possible according to Art. 121 andRule 135 (see E-VIII, 2).
5.5 Incorrect designation
An incorrect designation may be rectified provided a request is received
accompanied by the consent of the wrongly designated person and by theconsent of the applicant for or the proprietor of the patent where therequest is not filed by that party. If a further inventor is to be designated, theconsent of the inventor(s) previously designated is not necessary(see J 8/82). The provisions of A-III, 5.3 apply to the corrected designation
mutatis mutandis. Rectification may also be requested after theproceedings before the EPO are terminated.
Where an incorrect designation has been rectified and where the incorrect
designation was entered in the European Patent Register or published in
the European Patent Bulletin, its rectification or cancellation shall also be
published therein. Rectification of the designation of an inventor falls within
the responsibility of the Legal Division (see the decisions of the President of
the EPO dated 21 November 2013, OJ EPO 2013, 600 and 601).

Art. 90(3) to (5)Art. 93(1)Rule 60(1)Art. 121

Rule 21(1)Rule 21(2)Part A – Chapter III-8

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6.

March 2023

Claim to priority (see also F-VI)

6.1 General remarks
The applicant for a European patent is entitled to and may claim the priorityof an earlier first application where:
Art. 87(1), (2)and (5)(i)the previous application was filed in or for a state or WTO member
recognised as giving rise to a priority right in accordance with theprovisions of the EPC (see also A-III, 6.2);(ii)

the applicant for the European patent was the applicant, or is the
successor in title to the applicant, who made the previous application;(iii)

the European application is made during a period of twelve months
from the date of filing of the previous application (see, however,
A-III, 6.6); and(iv)

the European application is in respect of the same invention as theinvention disclosed in the previous application (see also A-III, 6.4 andF-VI, 1), which must be the "first application" (see F-VI, 1.4 and1.4.1).

As concerns (i) above, the previous application may be an application for apatent or for the registration of a utility model or for a utility certificate.
However, a priority right based on the deposit of an industrial design is notrecognised (see J 15/80).
Art. 87(3)So long as the contents of the previous application were sufficient toestablish a date of filing, it can be used to determine a priority date,irrespective of the outcome (e.g. subsequent withdrawal or refusal) of theapplication.
As concerns (ii) above, the transfer of the application including the priority
right (or of the priority right as such) must have taken place before the filingdate of the later European application and must be a transfer valid under
the relevant national provisions. Where the previous application was filed
by joint applicants, all these applicants must be amongst the applicants of
the later European patent application or have transferred their rights in thepriority application to the applicant of the later European patent application(see T 844/18). Proof of the transfer can be filed later.
However, in the case of joint applicants filing the later European patentapplication, it is sufficient if one of the applicants is the applicant or
successor in title to the applicant of the previous application. There is noneed for a special transfer of the priority right to the other applicant(s),since the later European application has been filed jointly. The same
applies to the case where the previous application itself was filed by joint
applicants, provided that all these applicants, or their successor(s) in title,
are amongst the joint applicants of the later European patent application.
As concerns (iii) above, the priority period starts on the day following thedate of filing of the first application (Art. 4C(2) Paris Convention andMarch 2023

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Part A – Chapter III-9

Rule 131(2)). Accordingly, where a priority claim relates to an application
filed on the same day as the European application, it will be disregarded(see, however, also A-III, 6.6).
6.2 Applications giving rise to a right of priority
Applications giving rise to a right of priority referred to in A-III, 6.1(i) arethose filed at industrial property offices:(a)of or acting for states party to the Paris Convention for the Protectionof Industrial Property,

Art. 87(1)(b)

of or acting for any member of the World Trade Organisation (WTO),
orArt. 87(1)(c)

not subject to either the Paris Convention or the Agreement
establishing the WTO, but where:

Art. 87(5)(i)

that authority recognises that a first filing made at the EPO
gives rise to a right of priority under conditions and with effects
equivalent to those laid down in the Paris Convention, and(ii)

the President of the EPO issues a communication indicating
this.

To date, no such communication referred to in (c)(ii) has been issued andso this does not as yet apply. Furthermore, the members of the WTO do
not necessarily have to be states as such, but may also beintergovernmental bodies or regions with special status such as the
Separate Customs Territory of Taiwan, Penghu, Kinmen and Matsu.
In view of the wording of Art. 87(1) which refers to filings "in or for" anystate party to the Paris Convention or member of the WTO, priority may beclaimed of an earlier first filed national application, a previous European
application, a previous application filed under another regional patent treaty
or an international application filed under the PCT. This includes the US"provisional application for patent" (notice from the President of the EPO
dated 26 January 1996, OJ EPO 1996, 81). A list of the countries party to
the Paris Convention is published on WIPO's website and is regularly
published in the Official Journal of the EPO. Likewise a list of the membersof the WTO is published on the website of the WTO, and this list is also
regularly updated.
The decisions G 2/02 and G 3/02 previously excluded the possibility ofclaiming priority from an application filed at the industrial property authorityof members of the WTO which were not also signatory states to the Paris
Convention (Art. 87(1) EPC 1973). This exclusion no longer applies under
the revised Art. 87(1).
6.3 Multiple priorities
The applicant may claim more than one priority based on previous
applications in the same or different states and/or WTO members. Where
multiple priorities are claimed, time limits which are calculated from theArt. 88(2)Part A – Chapter III-10

Guidelines for Examination in the EPO

March 2023

priority date run from the earliest date of priority and, as a result, theEuropean application must be made within twelve months from the earliest
priority date (see, however, A-III, 6.6); this applies if earlier applications
have been filed in any of the industrial property offices mentioned in
A-III, 6.2.
6.4 Examination of the priority document
The Receiving Section need not examine the content of the priority
document. However, where it is obvious, e.g. from the title of the document,that the document relates to subject-matter quite different from that of theapplication, the applicant should be informed that it appears that the
document filed is not the relevant document.

Art. 88(1)Rule 52(1)Rule 41(2)(g)Art. 90(4)6.5 Declaration of priority
An applicant wishing to claim priority must file a declaration of priority
indicating:(i)the date of the previous application,(ii)

the state or WTO member in or for which it was filed and(iii)

its file number.

The declaration of priority shall preferably be made on filing the European
patent application (Rule 52(2)). In such a case the declaration of priority,
indicating at least the date on which and the country for which the earlier
application was filed, should be present in the request for grant form
(Rule 41(2)(g)). However, if a priority claim is added or corrected after therequest for grant form has been filed (see A-III, 6.5.1 and 6.5.2), theapplicant will not be invited by the EPO to file a corrected request for grant.
The time limit for filing the certified copy of the priority document is thesame as the time limit for making the priority claim (see A-III, 6.5.1 and
6.7). Consequently, where:(a)the applicant supplies the certified copy on time, and(b)the date and file number are indicated on the certified copy,

the requirements of Rule 52(1) are met.

Rule 52(2)6.5.1 Filing a new priority claim
The declaration of priority should preferably be made on filing, but can bemade up to 16 months from the earliest priority date claimed. That is to say,items (i)-(iii) mentioned in A-III, 6.5 can be supplied up to 16 months after
the earliest claimed priority date. Where the priority claim is inserted after
the filing date and causes a change in the earliest priority date, this16-month period is calculated from that new earliest priority date inaccordance with Art. 88(2). A priority claim inserted after the filing datecannot be used in support of a request made under Rule 56(3) or 56a(4)(see A-II, 5.4 and A-II, 6.4).

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Part A – Chapter III-11

The applicant cannot request further processing in respect of the time limit
for introducing a new priority claim under Rule 52(2), since it is excluded byRule 135(2).
6.5.2 Correcting an existing priority claim
The applicant may correct the declaration of priority within 16 months fromthe earliest priority date. Where the correction causes a change in theearliest claimed priority date, this time limit is the earlier to expire of:(i)

16 months from the earliest priority date as originally claimed.

(ii)

16 months from the earliest priority date as corrected.

Rule 52(3)However, this time limit cannot expire earlier than four months after thedate of filing. Thus, if the originally claimed priority date is incorrect andprecedes the date of filing by more than twelve months, the applicants will
always have at least four months to correct this date, i.e. the same period
as if they had claimed the correct priority date (and for example got the filenumber wrong) and claimed a full twelve-month priority period.
If the applicant files a request for correction later it may, exceptionally, beallowed if it is apparent on the face of the published application that a
mistake has been made (see A-V, 3 and other sources therein).
6.5.3 Deficiencies in the priority claim and loss of the priority right
Four potential deficiencies exist with regard to the priority claim, namely:(i)failure to indicate a date of the previous application or to indicate thecorrect date(ii)

failure to indicate a state or WTO member in or for which it was filed
or to indicate the correct state or WTO member(iii)

failure to supply a file number(iv)

failure to indicate the correct file number.

Art. 90(4) and(5)

Deficiencies (i) and (ii) can only be corrected in accordance with theprocedures and within the time limit indicated in A-III, 6.5.2. Failure tocorrect either of these deficiencies in time results in the loss of the priority
right in question according to Art. 90(5). Further processing does not apply
to the time limit under Rule 52(3), since it is excluded by Rule 135(2).
However, where applicants have failed to indicate the file number of theprevious application (deficiency (iii)), as required by Rule 52(1), before
expiry of the 16-month time limit laid down in Rule 52(2), they are invited by
the EPO to provide it within a two-month period under Rule 59. This period
can be extended under Rule 132(2) (see E-IX, 2.3.5 for Euro-PCT
applications), but further processing is ruled out by Rule 135(2). Failure to
reply in time to this communication results in the loss of the priority right inquestion according to Art. 90(5).

Art. 90(4) and (5)Rule 59

Part A – Chapter III-12

Guidelines for Examination in the EPO

March 2023

In the event that the applicant has failed to indicate the correct file numberof the priority application (deficiency (iv)), a request for correction under
Rule 139 can be filed (see A-V, 3).

Art. 122
Rule 133
Rule 134
Rule 136

6.6 Priority period
Where the date of a priority claim precedes the date of filing of theEuropean patent application by more than twelve months, the applicant
may be informed by the Receiving Section that there shall be no priority forthe application unless he:(i)indicates a corrected date lying within the twelve-month period
preceding the date of filing and does so within the time limit
according to Rule 52(3) (see A-III, 6.5.2), or(ii)

requests re-establishment of rights in respect of the priority period
and does so within two months of the expiry of the priority period,
and this request is subsequently granted (see paragraph below). This
only applies where the applicant also filed the European application
within the same two-month period.

Where priority is claimed from an application having the same date of filingas the European patent application (see A-III, 6.1), the EPO will inform theapplicant that priority cannot be claimed from this application unless thepriority date can be corrected (see A-III, 6.5.2).
Rules 133 and 134 apply to the priority period under Art. 87(1). In the eventthat the date indicated for the previous application is subsequent to or thesame as the date of filing, the procedure set out in A-III, 6.5.2 also applies(with regard to the possibility of effecting correction of clerical or similarerrors, see A-V, 3).
According to Art. 122 and Rule 136(1) it is possible to obtainre-establishment of rights in respect of the priority period (twelve months
according to Art. 87(1)). The request for re-establishment must be filed
within two months of expiry of the priority period (Rule 136(1)) and theomitted act, i.e. the establishment of a date of filing for the European
application, must also be completed in this period (Rule 136(2)). For moredetails on requesting re-establishment of rights see E-VIII, 3.

Rule 53(1)Art. 88(2)Art. 90(4)6.7 Copy of the previous application (priority document)
A copy of the previous application from which priority is claimed (priority
document) must be filed before the end of the sixteenth month after thedate of priority. Priority documents may be filed in paper form orelectronically using OLF or Online Filing 2.0, provided the latter are in an
accepted document format, have been digitally signed by the issuingauthority and the signature is accepted by the EPO. Such electronic priority
documents are currently being issued by the patent offices of the USA,
Brazil, Portugal, Italy, Austria, France and Poland, with further offices
expected to follow. Web-form filing must not be used for the electronic filingof priority documents (see the decision of the President of the EPO dated
14 May 2021, OJ EPO 2021, A42). A priority document may not be filed by
fax (see the decision of the President of the EPO dated 20 February 2019,

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Part A – Chapter III-13

OJ EPO 2019, A18). Where multiple priorities are claimed, the abovementioned time limit runs from the earliest date of priority.
The copy must be certified as an exact copy of the previous application by
the authority which received the previous application and must also be
certified by that authority as to its date of filing. This certification of the date
may take the form of a separate certificate issued by that authority stating
the date of filing of the previous application (Rule 53(1), second sentence)or may be an integral part of the priority document itself. The certification of
the authenticity of the copy may also be a separate document or an integral
part of the priority document.
It is also possible to file a copy of the previous application (priority
document) on physical media other than paper, e.g. CD-R disc, provided
that:
(a)

the physical medium containing the priority document is prepared by
the authority which received the previous application, such as toguarantee that its content cannot undetectably be alteredsubsequently;(b)

the content of the physical medium is certified by that authority as anexact copy of the previous application or the part contained therein;
and

(c)

the filing date of the previous application is also certified by that
authority.

The certificate(s) may be filed separately in paper form. The submitted
medium must be readable and free of computer viruses and other forms ofmalicious logic.
At the request of the applicant, the EPO will include free of charge in the fileof a European patent application a copy of the previous application fromwhich priority is claimed retrieved via the WIPO Digital Access Service(DAS). DAS supports the automatic electronic exchange of priority
documents within participating patent offices. Applicants may request theoffice of first filing (OFF) to make certified copies of previously filed patentapplications available to the DAS system and then request offices ofsecond filing (OSF) to retrieve the copies via DAS by indicating the DAS
access code(s) corresponding to the previous application(s) (see thedecision of the President of the EPO dated 13 November 2021,
OJ EPO 2021, A83, and the notice from the EPO dated 22 February 2019,
OJ EPO 2019, A27).
If a priority document cannot be retrieved via DAS or if the applicant has
not requested retrieval via DAS, the EPO will include free of charge a copyof the previous application in the file of the European patent application, if
the previous application is:(i)a European patent application;

Rule 53(2)Part A – Chapter III-14

Guidelines for Examination in the EPO

March 2023

(ii)

an international application filed with the EPO as receiving Officeunder the PCT;.

(iii)

a Chinese patent or utility model application(iv)

a Korean patent or utility model application, or(v)

a United States provisional or non-provisional patent application

No request is necessary to this end. In respect of If the previous application
is a Chinese, Korean and or United States application, applications (items(iii) to (v) above), this only applies to European patent applications the EPO
will only include a copy of the previous application free of charge if theEuropean patent application was filed before 1 January 2022 andEuro-PCT applications or, in the case of a Euro-PCT application that hasentered entering the European phase before that date, and for which if therequired priority document can be included in the file of the application by
30 June 2023 (see the notice from the EPO dated 13 November 2021,
OJ EPO 2021, A84). If the language of the previous application was not
one of the official languages of the EPO, it may still be necessary to file thetranslation or declaration under Rule 53(3) (see A-III, 6.8).
Where the applicant has already supplied a copy of the priority document in
the context of a request to base late-filed parts of the description or
drawings on the claimed priority under Rule 56 (see A-II, 5.4(v)), or to basecorrect application documents or parts on the claimed priority under
Rule 56a (see A-II, 6.4(v)), the applicant does not need to file it again.
However, if the copy already provided was not certified as to its content
and/or filing date, the applicant will need to provide the missing certification
within the above time limit.
Art. 90(4) and(5)
Rule 59

If applicants fail to provide a certified copy of the priority document within
the above-mentioned period (Rule 53(1)), the EPO will invite them toprovide it within a two month period under Rule 59. This period can beextended under Rule 132(2) (see E-IX, 2.3.5 for Euro-PCT applications),
but further processing is ruled out by Rule 135(2). If the applicant fails toprovide it within this period, the priority right in question is lost (Art. 90(5)).
If a copy of the previous application cannot be included in the file, it will not
be deemed duly filed under Rule 53(2). The EPO will inform applicants ingood time and give them an opportunity to file the certified copy inaccordance with Rule 53(1) (see the decision of the President of the EPO
dated 13 November 2021, OJ EPO 2021, A83, and the notice from the
EPO dated 13 November 2021, OJ EPO 2021, A84).

Art. 88(1)Rule 53(3)6.8 Translation of the previous application
Where the previous application claimed as priority is not in an official
language of the EPO and the validity of the priority claimed is relevant tothe assessment of the patentability of the invention concerned, the EPO
shall invite the applicant for or proprietor of the European patent to file atranslation into an official language of the EPO within a period specified.

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Part A – Chapter III-15

The duration of this period will vary depending on the stage of proceedings
at which the invitation is sent (see the subsequent subsections).
6.8.1 Invitation to file the translation before examination
Where the search division notes that a translation of the previous
application is required, the invitation to provide it according to Rule 53(3)may be sent at the same time as either item (i) or item (ii) below:(i)the communication according to Rule 69(1) and Rule 70a(1) (where
the applicant does not file the request for examination before thesearch report is transmitted – see A-VI, 2.1).
In this case, the time limit for providing the translation is the same asthat for filing the request for examination, namely six months from thedate of mention of the publication of the European search reportaccording to Rule 70(1).

(ii)

the communication according to Rule 70(2) (where the applicant files
the request for examination before the (supplementary) European
search report is transmitted – see A-VI, 2.3).
In this case the time limit for providing the translation is the same asthat for filing the confirmation of the request for examinationaccording to Rule 70(2):(a)

For applications not filed via the PCT, this is six months fromthe date of mention of the publication of the European search
report (see A-VI, 2.3).

(b)

For Euro-PCT applications subject to the preparation of a
supplementary European search report (see B-II, 4.3.2), this is
six months from the notification of the communicationaccording to Rule 70(2) (see E-IX, 2.5.3).

In practice the invitation according to Rule 53(3) will be sent in a separate
communication to the applicant and, in some cases, might not be
dispatched on exactly the same date as the applicable communication
indicated in (i) or (ii) above. However, this will not affect the date of expiryof the period for providing the translation, since the relevant event used inits calculation (the mention of the publication of the European search reportor the notification of the communication under Rule 70(2)) is not related to
the notification of the invitation according to Rule 53(3). An exception
applies where the communication under Rule 53(3) is notified less than twomonths before expiry of the resulting period; in that case the time limit forfiling the translation will be considered extended until two months after thesaid notification, without prejudice to its possible extension under
Rule 132(2) (see E-VIII, 1.6).
6.8.2 Invitation to file the translation in examination/opposition
The period set under Rule 132(2) for providing the translation in either
examination or opposition proceedings will be four months.

Rule 132(2)Part A – Chapter III-16

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March 2023

If not sent earlier (see A-III, 6.8.1), an invitation according to Rule 53(3)may be sent in examination proceedings either alone or as an annex to acommunication according to Art. 94(3). When sent as an annex to acommunication according to Art. 94(3), the time limit set for reply to that
communication will be the same as that for providing the translation(i.e. four months), even where the issues raised in the communication areminor (see E-VIII, 1.2).
For Euro-PCT applications where the EPO acted as the ISA or the
Supplementary International Searching Authority (SISA, Rule 45bis PCT),
an invitation according to Rule 53(3) may be sent by the examining division
only after the period according to Rule 161(1) has expired (see E-IX, 3.2).
Since the proprietor of a European patent might not have previously been
invited to file a translation (in the examination procedure or earlier as
indicated in A-III, 6.8.1), in cases where the validity of the claimed priority
becomes relevant in the assessment of patentability in opposition
proceedings, the EPO may make the above invitation during the opposition
procedure.
In examination and opposition proceedings, where the applicant or
proprietor has been invited to provide the translation, no summons to oralproceedings will be sent until either the translation is provided or (inexamination proceedings) the period for further processing in respect of thetime limit according to Rule 53(3) has expired, whichever is the earlier.
In practice, the search, examining or opposition division dealing with thepatent application or patent will inform the formalities officer that atranslation of the previous application is required and the formalities officer
will then dispatch the above communication.
6.8.3 Loss of rights and legal remedies
If the applicant for or proprietor of the European patent does not provide thetranslation in time, the right of priority is lost and the applicant or proprietor
is informed accordingly (see A-III, 6.11). This has the effect that theintermediate document(s) will become prior art under Art. 54(2) orArt. 54(3), as applicable, and therefore relevant for the assessment ofpatentability. There is no further invitation to the applicant or proprietor to
file the translation. However, in examination proceedings, further
processing is available in case of failure to file the translation in time(see E-VIII, 2). Where appropriate, the applicant can also request adecision under Rule 112(2) (see E-VIII, 1.9.3).
Where translations of more than one previous application are requested
and not provided in time, one further processing fee is due according toRule 135(1) and Art. 2(1), item 12, RFees for each of these priorities. Thisapplies even where the translations were requested in a single Rule 53(3)invitation.
In the event of failure to file the translation in time in opposition
proceedings, the proprietor can request re-establishment of rights
according to Art. 122 and Rule 136 (see E-VIII, 3). Further processing is notMarch 2023

Guidelines for Examination in the EPO

available to the patent proprietor in opposition proceedings. A decisionaccording to Rule 112(2) may, however, be requested, if applicable(see E-VIII, 1.9.3).
6.8.4 Translation of previous application already filed
Where the applicant has already supplied a translation of the previous
application in the context of a request to base late-filed parts of thedescription or drawings on the claimed priority under Rule 56(see A-II, 5.4(vi)) or to base correct application documents or parts on theclaimed priority under Rule 56a (see A-II, 6.4(vi)), the applicant does notneed to file it again.
6.8.5 Voluntary filing of the translation of the previous application
Applicants for or proprietors of the European patent can file a translation of
the previous application of their own motion at any time during examination
or opposition proceedings before the EPO.
6.8.6 Declaration replacing the translation
Alternatively, a declaration that the European patent application is acomplete translation of the previous application may be submitted withinthose same time limits (see also F-VI, 3.4 and D-VII, 2). The declaration
may already be made by crossing the appropriate box in the request for
grant form (EPO Form 1001). This declaration is only valid if the text of theEuropean application as filed is an exact translation of the text of theprevious application of which priority is claimed, meaning that nothing has
been added or omitted vis-à-vis the text of the previous application. If theEuropean application did not contain claims on the date of filing(see A-II, 4.1), the applicant can file these later (see A-III, 15). In suchcases, for the declaration to be valid, the description of the European
application must be an exact translation of the description of the claimed
priority, regardless of whether the latter contained claims on its filing date.
However, where the European application contains claims on its date offiling and the previous application did not contain claims on its filing date orcontained fewer claims on its filing date, the declaration is not valid.
Furthermore, if the European application contains more or less text than is
contained in the previous application as filed, such a declaration cannot be
accepted. Where the declaration cannot be accepted for any of the above
reasons, in order to comply with the requirement for filing a translation, acomplete translation must be filed within the set time limit. A merely
different arrangement of the various elements (i.e. the claims vs. thedescription) of the application does not affect the validity of such a
declaration (for example, the claims are presented at the end of theapplication, whereas in the previous application they are at the beginning),
nor does a different type of reference sign (e.g. Arabic rather than Roman
numerals). However, a declaration is not acceptable if changes have been
made within the parts of the application (e.g. different order of claims,
added reference signs) or if sections of the application (e.g. listing ofcomponents, section headings and words in the drawings) are not identicalto those in the previous application.
Where a European patent application claims multiple priorities, it will only in
exceptional cases be a translation of the full text of one of the previous

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March 2023

applications. In such cases, a declaration may be filed in respect of theidentical previous application, while a complete translation of the otherprevious application(s) will have to be filed on request.
6.9 Non-entitlement to right to priority
A European patent application has no right to priority if:
Art. 87(1)(i)

the application was not filed within the twelve-month period referred
to in A-III, 6.1(iii) and the applicant has neither:(a)corrected the priority date on time (see A-III, 6.5.2), such thatthe date of filing of the European application no longer
exceeds the twelve-month priority period under Art. 87(1) orthat the priority date is no longer the same as the date of filing(see A-III, 6.6), nor(b)

successfully requested re-establishment of rights in respect ofthe priority claim (see A-III, 6.6)

Art. 87(1)(ii)

the previous application did not seek an industrial property rightgiving rise to a priority right (see A-III, 6.1); or

Art. 87(1) and
(4)

(iii)

the previous application does not give rise to a priority right in respectof the state, WTO member or industrial property authority in or forwhich it was filed (see A-III, 6.1(i) and 6.2).

Art. 90(4) and(5)
Rule 53(3)Rule 112(1)6.10 Loss of right to priority
The right to priority for a European patent application is lost where:(i)the declaration of priority is not filed in due time (see A-III, 6.5.1);(ii)

the declaration of priority is not corrected in due time (see A-III, 6.5.2
and 6.5.3);(iii)

the certified copy of the previous application is not filed in due time(see A-III, 6.7); or(iv)

the translation of the previous application or the declaration referred
to in A-III, 6.8.6 is not filed in due time in response to an invitationaccording to Rule 53(3) (see A-III, 6.8.3).

6.11 Notification
The applicant is notified of any non-entitlement to, or loss of, a priority right.
The computation of time limits that depend on the priority will take this new
situation into account. This also applies where entitlement to a priority rightis surrendered. The termination of a priority right has no effect on a time
limit which has already expired (see also F-VI, 3.4 and E-VIII, 1.5). If thesearch has not yet been carried out, the Receiving Section notifies thesearch division of a loss of, or non-entitlement to, a priority date.

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Guidelines for Examination in the EPO

6.12 Copy of the search results for the priority or priorities
An applicant claiming priority within the meaning of Art. 87 must file a copyof the results of any search carried out by the authority with which theprevious application was filed together with the European patentapplication, in the case of a Euro-PCT application on entry into theEuropean phase, or without delay after such results have been madeavailable to him. This requirement also applies to priority claims which aresubsequently withdrawn or lapse and to priority claims introduced orcorrected after the filing date (see A-III, 6.5.1 and A-III, 6.5.2). The
obligation under Rule 141(1) exists as long as the application is pending
before the EPO. This requirement applies to all European and Euro-PCT
applications filed on or after 1 January 2011 (OJ EPO 2009, 585). In thecase of divisional applications, the relevant date is that on which thedivisional application was received by the EPO (see A-IV, 1.2.1), not thefiling date of the parent application. Where the copy is not provided to the
EPO before the examining division assumes responsibility, the procedure is
as set out in C-II, 5 and C-III, 6.

Part A – Chapter III-19

Rule 141(1)Where multiple priorities are claimed, the copy of the search results
referred to above must be provided for all applications claimed as priority. If
the search results are not drawn up in an official language of the EPO, notranslation is required. The copy of the search results submitted must be a
copy of the official document issued by the office where the previous
application was filed. A simple listing of the prior art drawn up by theapplicant will not suffice. Copies of the cited documents do not have to beprovided (see the notice from the EPO dated 28 July 2010,
OJ EPO 2010, 410).
The copy referred to in Rule 141(1) is deemed to be duly filed if it isavailable to the EPO and is to be included in the file of the European patentapplication under the conditions determined by the President. According to
the decision of the President of the EPO dated 5 October 2010,
OJ EPO 2010, 600, these exceptions relate to cases where a search reportof the following type was drawn up by the EPO on an application whose
priority is claimed:(i)European search report (Art. 92)(ii)

international search report (Art. 15(1) PCT)

(iii)

international-type search report (Art. 15(5) PCT)

(iv)

search report prepared on behalf of a national office on a national
application. As at October 2021, the EPO performs searches for thenational offices of the following countries: Albania, Belgium, Croatia,
Cyprus, France, Greece, Italy, Latvia, Lithuania, Luxembourg, Malta,
Monaco, Netherlands, San Marino, United Kingdom.

Furthermore, the EPO includes in the file of a European patent applicationa copy of the search results referred to in Rule 141(1), thus exempting theapplicant from filing said copy, where, based on an agreement with theRule 141(2)Part A – Chapter III-20

Guidelines for Examination in the EPO

March 2023

national patent offices, the priority of a first filing made in one of thefollowing states is claimed:–

Austria (see the decision of the President of the EPO dated
19 September 2012, OJ EPO 2012, 540)–

People's Republic of China (see the decision of the President of the
EPO dated 8 April 2021, OJ EPO 2021, A38)–

Czech Republic (see the decision of the President of the EPO dated
11 July 2022, OJ EPO 2022, A79)–

Denmark (see the decision of the President of the EPO dated
10 December 2014, OJ EPO 2015, A2)–

Japan (see the decision of the President of the EPO dated
9 December 2010, OJ EPO 2011, 62)–

Republic of Korea (see the decision of the President of the EPO
dated 27 February 2013, OJ EPO 2013, 216)–

Spain (see the decision of the President of the EPO dated
10 February 2016, OJ EPO 2016, A18)–

Sweden (see the decision of the President of the EPO dated
14 May 2021, OJ EPO 2021, A39)–

Switzerland (see the decision of the President of the EPO dated
4 June 2019, OJ EPO 2019, A55)–

United Kingdom (see the decision of the President of the EPO dated
9 December 2010, OJ EPO 2011, 62)–

United States of America (see the decision of the President of the
EPO dated 9 December 2010, OJ EPO 2011, 62)

Furthermore, for divisional applications, where the results of the search on
the claimed priority have already been provided in respect of the parent
application, the applicant need not provide them again in respect of thedivisional application (see the notice from the EPO dated 28 July 2010,
OJ EPO 2010, 410).

March 2023

7.

Guidelines for Examination in the EPO

Part A – Chapter III-21

Title of the invention

7.1 Requirements
The request for grant must contain the title of the invention. A requirementof Rule 41(2)(b) is that the title must clearly and concisely state thetechnical designation of the invention and must exclude all fancy names. In
this regard, the following should be taken into account:(i)

personal names, fancy names, the word "patent" or similar terms of a
non-technical nature which do not serve to identify the invention
should not be used;(ii)

the abbreviation "etc.", being vague, should not be used and should
be replaced by an indication of what it is intended to cover;(iii)

titles such as "Method", "Apparatus", "Chemical Compounds" alone
or similar vague titles do not meet the requirement that the title mustclearly state the technical designation of the invention;(iv)

trade names and trademarks should also not be used; the Receiving
Section, however, need only intervene when names are used which,according to common general knowledge, are trade names ortrademarks.

7.2 Responsibility
The ultimate responsibility for ensuring that the title accords with theprovisions of the Implementing Regulations rests with the examining
division. The search division will nevertheless take action and amend thetitle to avoid, if possible, the publication of applications having titles which
obviously do not comply with the applicable EPC provisions (see also
F-II, 3). In these cases, the EPO will of its own motion change the title, if
this appears necessary (see OJ EPO 1991, 224).

Rule 41(2)(b)Rule 41(2)(b)The applicant is informed of whether the title proposed has been approvedby the search division upon transmission of the European search report.
The wording of the title (in the three official languages of the EPO), asapproved by the search division, is notified by the communication
announcing the forthcoming publication.
The title of the invention will be published and entered in the European
Patent Register (Rule 143(1)(c)) in capital letters.
8.

Prohibited matter

8.1 Morality or "ordre public"
The application must not contain statements or other matter contrary to"ordre public" or morality. Such matter may be omitted when the application
is published, the published application indicating the place and number ofwords or drawings omitted. (Where drawings are omitted regard should be
had to the physical requirements of A-III, 3.2). The Receiving Section may
check the description, claims and drawings to ascertain whether they
contain offending matter. In order not to delay unduly the formalities

Art. 53(a)Rule 48(1)(a) and(2)

Part A – Chapter III-22

Guidelines for Examination in the EPO

March 2023

examination, if carried out, this will entail a cursory examination to ensurethat the application does not contain the following prohibited matter:statements constituting an incitement to riot or to acts contrary to "ordre
public", racial, religious or similar discriminatory propaganda, or criminal
acts and grossly obscene matter. The Receiving Section may also takeaction to prevent the publication of such matter where the search divisiondraws its attention to such matter which it had overlooked. The applicant is
notified of the material omitted. In practice, it will usually be the searchdivision which brings the existence of such material in the application to theattention of the Receiving Section.

Rule 48(1)(b) and(3)

Rule 45(1) to(3)Rule 112(1)Rule 37(2)Art. 2(1), item 15,
RFees

8.2 Disparaging statements
According to Rule 48(1)(b), the application must not contain statements
disparaging the products or processes of any particular person other than
the applicant, or the merit or validity of applications or patents of any such
person. However, mere comparisons with the prior art are not to beconsidered disparaging per se. Statements clearly coming within thiscategory that become evident from the cursory examination referred to in
A-III, 8.1 or to which attention is drawn by the search division, may beomitted by the Receiving Section when publishing the application. In casesof doubt the matter should be left for consideration to the examining
division. The published application must indicate the place and number of
any words omitted and the EPO must furnish, upon request, a copy of thepassage omitted. The applicant is again notified of the material omitted.
(See also treatment of prohibited matter in proceedings before theexamining division, F-II, 7).
9. Claims fee
A European application which contains more than fifteen claims at the timeof filing the claims (see the paragraph below) incurs payment of a claims
fee in respect of each claim over and above that number. For applications
filed and international applications entering the regional phase on or after
1 April 2009, a higher amount is payable for each claim in excess of 50.
The claims' order is their sequence at their time of filing. If an application
contains more than one set of claims, Rule 45 is only applicable for the setof claims containing the highest number of claims. If, as a result of claims
having been deleted owing to non-payment of claims fees, the number ofclaims remaining in the set that originally incurred the fees is reduced withthe result that another set then has the greatest number, the number ofclaims in the latter set has to be reduced to the same number as thatremaining in the set originally incurring the fees (see J 8/84). The claims
fees must be paid within one month after the claims are filed.
Where correct claims are filed under Rule 56a(3) or (4) (see A-II, 6), theclaims fee is calculated on the basis of the set of claims first filed.
The claims may be filed at the following stages:(a)on the European filing date or on the date on which the divisional
application is filed (see A-II, 4.1.5 and A-IV, 1.2.1)

March 2023

Guidelines for Examination in the EPO(b)after the European filing date, in a timely response to acommunication from the EPO indicating their absence under Rule 58(see A-III, 15)(c)after the European filing date, by applicants of their own motion
before the EPO sends a communication according to Rule 58(see A-III, 15)Consequently, the claims fees must be paid within one month of whicheverof the above dates of receipt applies.
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 thetime 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 beabandoned 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). If the claims fees paid are
insufficient to cover all the claims incurring fees (i.e. claim no. 16 onwards),
and if when payment was made no indication was given as to which claims
were covered by the fees paid, then the applicant is requested to specify
which claims incurring fees are covered by the claims fees paid. The
Receiving Section notifies the search division of claims that are deemed
abandoned. Any claims fee duly paid is refunded only in the case referred
to in Rule 37(2) (see A-II, 3.2, last paragraph).
In cases where:(i)the application was filed by reference to a previously filed application(see A-II, 4.1.3.1), and(ii)

the applicant indicates on filing that the claims of this previously filed
application take the place of claims in the application as filed,the claims fees are due within one month of the filing date (since the claimsof the previous application are effectively present on the European filing
date). However, the EPO will not send the applicant a communication
under Rule 45(2) with an invitation to pay any claims fees due, until theapplicant has filed the copy of the previous application, within two monthsof the filing date (Rule 40(3)), since it is only at this point that the EPO willknow how many claims there are and consequently, how many claims fees,
if any, are due.
Features of a claim deemed to have been abandoned pursuant toRule 45(3) and which are not otherwise to be found in the description or
drawings cannot subsequently be reintroduced into the application and, inparticular, into the claims (see J 15/88). However, applicants have thepossibility to pursue by filing a divisional application any (features of a)claim that is deemed abandoned due to non-payment of the claims fee inthe procedure for the grant of a patent for the parent application.

Part A – Chapter III-23

Part A – Chapter III-24

Guidelines for Examination in the EPO

Regarding Euro-PCT applications
see E-IX, 2.1.3 and E-IX, 2.3.8.

entering

March 2023

theEuropeanphase,

10. Abstract

Art. 78(1)(e)Art. 90(3)Rule 57(d)Rule 66

Rule 47(4)10.1 General remark
Every application for a patent must contain an abstract. The effect of
non-compliance with this requirement is dealt with in A-III, 16.
10.2 Content of the abstract
The definitive content of the abstract is the responsibility of the EPO (seeF-II, 2). In practice this responsibility lies with the search division, since thedefinitive content of the abstract must be determined and transmitted to theapplicant along with the search report. Where it is confirmed by the searchdivision that the abstract filed does not relate to the claimed invention, theapplicant is informed that the document filed does not constitute an abstractand is invited to correct the deficiency (see A-III, 16).
10.3 Figure accompanying the abstract
If the application contains drawings, applicants should indicate the figure(or exceptionally figures) of the drawings which they suggest should
accompany the abstract. Where this requirement is not met, the searchdivision decides which figure(s) to publish. For the further procedure
see F-II, 2.4.
11. Designation of contracting states

Art. 79(1)11.1 General remarks
All contracting states party to the EPC at the filing date of the application
shall be deemed to be designated in the request for grant of a European
patent (for a list of the EPC contracting states, see the General Part of the
Guidelines, section 6). Any other state entered on the request for grant
must be disregarded (see for the designation of contracting states on therequest for grant form, A-III, 11.2.2, 11.3.5 and 11.3.6). As indicated in
A-II, 2, when the application is in the name of joint applicants, each may
designate different contracting states; objection is to be raised during thecourse of the examination for formal requirements if there is any ambiguity
as to the states designated by the individual applicants.
11.2 European patent applications filed on or after 1 April 2009

Art. 79(2)Rule 39
Art. 149(1)Art. 2(1), item 3,
RFees

11.2.1 Designation fee; time limits
The designation of contracting states is subject to payment of a designationfee.
For applications filed on or after 1 April 2009 this is a flat designation fee
covering all EPC contracting states. Therefore, for these applications, thesystem of charging designation fees for individual designated states(see A-III, 11.3) no longer applies. For European divisional applications see
also A-IV, 1.3.4 and 1.4.1.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter III-25

For European patent applications, the designation fee must be paid within
six months of the date on which the European Patent Bulletin mentions the
publication of the European search report.

Rule 39

For divisional applications and new applications under Art. 61(1)(b), thedesignation fee must be paid within six months of the date on which theEuropean Patent Bulletin mentions the publication of the European search
report drawn up in respect of the European divisional application or the newEuropean patent application (see A-IV, 1.4.1).

Rule 17(3)Rule 36(4)For Euro-PCT applications entering the European phase on or after
1 April 2009, see A-III, 11.2.5.
11.2.2 Payment of designation fee
The automatic designation of all the contracting states party to the EPC at
the time of filing of the European patent application is effected by the filingof the application, whereas the designation fee may be paid later(see A-III, 11.2.1).

Rule 39(1)Payment of the designation fee covers all the contracting states, except
those states the designation of which has been expressly withdrawn.

Art. 2(1), item 3,
RFees

Such payment simply needs to be marked "designation fee" in order for the
purpose of the payment to be established.

Art. 6(1) RFees

11.2.3 Consequences of non-payment of the designation fee
Where the designation fee has not been paid by expiry of the period
specified in Rule 39(1), the application is deemed to be withdrawn.

Rule 39(2)In this case, the EPO sends the applicant a communication under
Rule 112(1) with notification of this loss of rights. In response to thiscommunication, the applicant can request further processing according toArt. 121 and Rule 135 (see E-VIII, 2).
The loss of rights ensues on expiry of the normal period under Rule 39(1)and not upon expiry of the period for further processing (see G 4/98,
mutatis mutandis).
For Euro-PCT applications entering the European phase on or after
1 April 2009, see A-III, 11.2.5.
11.2.4 Withdrawal of designation
Subject to the final sentence of this paragraph, the designation of one ormore contracting states may be withdrawn by the applicant at any time up
to the grant of the patent. Withdrawal of the designation of all thecontracting states results in the application being deemed to be withdrawn
and the applicant is notified accordingly.

Art. 79(3)Rule 39(2) and(3)

In neither case is a validly paid designation fee refunded (see A-X, 10.1.1).
The designation of a contracting state may not be withdrawn as from thetime when a third party proves to the EPO that they have initiated

Rule 15

Part A – Chapter III-26

Guidelines for Examination in the EPO

March 2023

proceedings concerning entitlement and up to the date on which the EPO
resumes proceedings for grant.
The applicant may withdraw designations when filing the European
application, for example to avoid overlapping prior national rights with thepriority application according to Art. 139(3). Timely payment of thedesignation fee will not cause those designations which have been
withdrawn to be re-activated.
For European divisional applications see A-IV, 1.3.4.

Rule 159(1)(d)Rule 160
Art. 153(2)11.2.5 Euro-PCT applications entering the European phase
For Euro-PCT applications entering the European phase, the designation
fee must be paid within 31 months of the filing or priority date, if the time
limit specified in Rule 39(1) has expired earlier.
According to Rule 160(1), if the designation fee for the Euro-PCT
application entering the European phase is not paid within the basic period
under Rule 159(1)(d), the European patent application (see Art. 153(2)) isdeemed to be withdrawn. If the EPO finds that such deemed withdrawal of
the European patent application has occurred, it notifies the applicant of
this loss of rights according to Rule 112(1). In response to thiscommunication, the applicant can request further processing according toArt. 121 and Rule 135.
For the designation fee in relation to Euro-PCT applications entering theEuropean phase, see also E-IX, 2.1.4 and E-IX, 2.3.11.
11.3 European patent applications filed before 1 April 2009
In this section reference is made to the relevant provisions that were inforce until 31 March 2009, which remain applicable to European patentapplications filed and Euro-PCT applications entering the European phase
before 1 April 2009.

Art. 79(2)Rule 39, in force until
31 March 2009
Art. 149(1)Art. 2(2), item 3 anditem 3a RFees

Rule 17(3),in force until
31 March 2009
Rule 36(4)in force until
31 March 200911.3.1 Designation fee; time limits
The designation of a contracting state is subject to payment of adesignation fee. A single joint designation fee is payable for Switzerlandand Liechtenstein. The designation fees are deemed paid for all contracting
states upon payment of seven times the amount of one designation fee.
For European patent applications, the designation fees must be paid within
six months of the date on which the European Patent Bulletin mentions the
publication of the European search report.
For divisional applications and new applications under Art. 61(1)(b) filed
before 1 April 2009, the designation fees must be paid within six months ofthe date on which the European Patent Bulletin mentions the publication of
the European search report drawn up in respect of the European divisional
application or the new European patent application (see A-IV, 1.4.1).
For Euro-PCT applications
1 April 2009, see A-III, 11.3.9.

enteringtheEuropeanphase

beforeMarch 2023

Part A – Chapter III-27

Guidelines for Examination in the EPO

11.3.2 Consequences of non-payment of designation fees
Where the designation fee has not been paid in due time in respect of any
designated state, the designation of that state shall be deemed to bewithdrawn (see also A-III, 11.3.4).

Rule 39(2),in force until
31 March 2009

If the designation fee for a particular contracting state is not paid in time,the EPO sends the applicant a communication under Rule 112(1) with
notification of the deemed withdrawal of the designation in question
according to Rule 39(2). In response to this communication, the applicant
can request further processing according to Art. 121 and Rule 135 inrespect of this partial loss of rights (see E-VIII, 2). This communication is
not sent if the applicant waives the right to receive it in respect of the statein question, by crossing the appropriate box in the request for grant form.
By crossing this box, the applicant waived the right to further processing inrespect of the designation or designations in question.
For Euro-PCT applications
1 April 2009, see A-III, 11.3.9.

enteringtheEuropeanphase

before11.3.3 Amount paid insufficientIf, during the period for requesting further processing, designation fees arepaid without an additional sum sufficient to cover the amount of the further
processing fee, it is first necessary to establish how many designation fees
including the further processing fee are covered by the total sum paid forthat purpose. The applicant must then be invited, pursuant to Art. 6(2), first
sentence, RFees, to inform the EPO for which contracting states thedesignation fees plus further processing fee are to be used (see J 23/82,
mutatis mutandis). For the subsequent procedure, see A-III, 11.3.7.
11.3.4 Application deemed to be withdrawn
Where no designation fee is validly paid by expiry of the period specified inRule 39(1), the application is deemed to be withdrawn.

Art. 6(2),1st sentence, RFees

Rule 39(3),in force until
31 March 2009

If no designation fees are paid on time leading to a deemed withdrawal of
the application under Rule 39(3), in force until 31 March 2009, the EPO
sends the applicant a communication according to Rule 112(1) with
notification of this loss of rights. In response to this communication, theapplicant can request further processing according to Art. 121 andRule 135 in respect of this total loss of rights (see E-VIII, 2).
Where the application is deemed to have been withdrawn because of
failure to pay the designation fees, the loss of rights ensues on expiry of thenormal period under Rule 39(1). Similarly, the deemed withdrawal of adesignation of a contracting state takes effect upon expiry of the normal
period under Rule 39(1), and not upon expiry of the period for further
processing (see G 4/98, mutatis mutandis). The applicant is notified of theloss of rights and can remedy it by requesting further processing according
to the procedures explained in A-III, 11.3.2.
11.3.5 Request for grant form
The automatic designation of all of the contracting states party to the EPC
at the time of filing of a European patent application is effected by the filingArt. 79(1) and(2)

Part A – Chapter III-28

Guidelines for Examination in the EPO

March 2023of the application, whereas the designation fees payable for an application
filed before 1 April 2009 may be paid later.
Applicants have time – until expiry of the period for paying the designation
fees (Rule 39(1) and Rules 17(3) and 36(4)) – to decide which contracting
states they actually want their patent to cover. This they do by paying thedesignation fees for those states, which may include an additional sum
required to validate a request for further processing.

Art. 2(2), item 3,
RFees
Art. 6(1) RFees

11.3.6 Indication of the contracting states
For European patent applications filed before 1 April 2009, the designation
fees are deemed paid for all contracting states upon payment of seventimes the amount of one designation fee. Such payment simply need bemarked "Designation fees" in order for the purpose of the payment to beestablished.
If, on the other hand, the applicant intended to pay fewer than sevendesignation fees when filing the application, it was for that party to indicate
the relevant contracting states in the appropriate section of the request for
grant form (EPO Form 1001, versions prior to April 2009). This helped toensure that the designation fees paid were properly entered in the books. If
designation fees are not paid within the basic time limit, a communication
under Rule 112(1) is issued.
In response to the communication under Rule 112(1), the applicant may
request further processing in respect of the lost designation(s). However,no Rule 112(1) communication will be sent and no further processing canbe requested with regard to designations in respect of which the applicant
waived these rights by crossing the appropriate box on the request for grant
form or where the designation in question has been withdrawn.
For applicants taking part in the automatic debiting procedure, see also
A-X, 7.2.

Art. 6(2),1st sentence, RFees
Art. 8(2)2nd sentence, RFees,in force until
31 March 2009
Rule 39(2),in force until
31 March 2009
Rule 112(1)11.3.7 Amount payableIf, given the amount payable under the time limit in question, the sum paidfor designation fees during the periods under Rule 39(1) or Rule 135(1)does not cover all the contracting states indicated in the request for grant
form (EPO Form 1001), and the payer failed to indicate for which
contracting states the fees are intended, then the payer is requested toindicate which states are to be designated, within a period stipulated by the
EPO (see also A-III, 11.3.3). If the payer fails to comply in due time, thenArt. 8(2) RFees applies: the fees are deemed to have been paid only for as
many designations as are covered by the amount paid, in the order inwhich the contracting states have been designated (see J 23/82,
mutatis mutandis). The designation of contracting states not covered by thefees are deemed withdrawn, and the applicant is notified of the loss ofrights (see A-III, 11.3.4, paragraph 3, regarding the time at which loss ofrights ensues).

March 2023

Guidelines for Examination in the EPO

11.3.8 Withdrawal of designation
Subject to the final sentence of this paragraph, the designation of acontracting state may be withdrawn by the applicant at any time up to the
grant of the patent. A validly paid designation fee is not refunded when adesignation is withdrawn. Withdrawal of the designation of all thecontracting states results in the application being deemed to be withdrawn
and the applicant is notified accordingly. The designation of a contracting
state may not be withdrawn as from the time when a third party proves tothe EPO that they have initiated proceedings concerning entitlement and up
to the date on which the EPO resumes proceedings for grant.

Part A – Chapter III-29

Art. 79(3)Rule 39(3)in force
until 31 March 2009
and(4),
in force until
31 March 2009
Rule 15

The applicant may withdraw designations when filing the European
application, for example to avoid overlapping prior national rights with thepriority application according to Art. 139(3). Timely payment of designation
fees for designations which have been withdrawn, will not cause those
designations to be re-activated. Furthermore, no Rule 112(1)communication will be sent in respect of a failure to pay designation fees
for any designation which has been withdrawn.
11.3.9 Euro-PCT applications entering the European phase before
1 April 2009
For Euro-PCT applications entering the European phase, a designation fee
with respect to each contracting state designated, up to a maximum ofseven times the amount of one designation fee to designate all contracting
states, must be paid within 31 months of the filing or priority date, if the time
limit specified in Rule 39(1) has expired earlier. The principles laid down in
A-III, 11.3.3, 11.3.6, 11.3.7 and 11.3.8, for European patent applications
filed before 1 April 2009 apply to Euro-PCT applications in accordance with
Art. 153(2), with the individual contracting states being indicated in therequest for entry into the European phase (EPO Form 1200).
Pursuant to Rule 160(2), the designation of any contracting state for which
no designation fee has been paid in time is deemed to be withdrawn.
According to Rule 160(1), if no designation fee for the Euro-PCT applicationentering the European phase is paid at all within the basic period under
Rule 159(1)(d), the European patent application (see Art. 153(2)) isdeemed to be withdrawn. If the EPO finds that such deemed withdrawal of
the European patent application or the designation of a contracting state
has occurred, it notifies the applicant of this loss of rights according toRule 112(1). In response to this communication, the applicant can request
further processing according to Art. 121 and Rule 135.
For designation fees in relation to Euro-PCT applications entering theEuropean phase, see also E-IX, 2.1.3 and E-IX, 2.3.11.
12. Extension and validation of European patent applications andpatents to/in states not party to the EPC
12.1 General remarks
At the applicant's request and on payment of the prescribed fee, European
patent applications (direct or Euro-PCT) and thus patents can be extended
to European states for which an extension agreement with the EPO has

Rule 159(1)(d)Rule 160, in force
until 31 March 2009
Art. 153(2)Part A – Chapter III-30

Guidelines for Examination in the EPO

March 2023

become effective (extension states). The same applies to requests forvalidation in European or non-European states for which a validationagreement has entered into force (validation states).
The states for which such requests may currently be filed are listed below:(i)Extension may be requested for the following European states state:

Bosnia and Herzegovina (BA)
Montenegro (ME)since 1 December 2004
since 1 March 2010

The EPO's extension agreements with the Republic of Slovenia (entry into
force: 1 March 1994), the Republic of Romania (15 October 1996), theRepublic of Lithuania (5 July 1994), the Republic of Latvia(1 May 1995), the Republic of Croatia (1 April 2004), the Republic ofNorth Macedonia (as the former Yugoslav Republic of Macedonia)(1 November 1997), Albania (1 February 1996) and , the Republic of
Serbia (1 November 2004) and Montenegro (1 March 2010) terminatedwhen these countries acceded to the EPC with effect from
1 December 2002,
1 March 2003,
1 December 2004,
1 July 2005,
1 January 2008, 1 January 2009, 1 May 2010 and , 1 October 2010 and
1 October 2022 respectively. However, the extension system continues toapply to all European and international applications filed prior to those
dates, and to all European patents granted in respect of such applications.
(ii)

Validation may be requested for the following states (OJ EPO 2015,
A20, OJ EPO 2015, A85, OJ EPO 2017, A85 and OJ EPO 2018,
A16):

Morocco (MA)
Republic of Moldova (MD)Tunisia (TN)Cambodia (KH)

since 1 March 2015
since 1 November 2015
since 1 December 2017
since 1 March 2018

Extension and validation agreements are bilateral international treaties
concluded between the European Patent Organisation and the state inquestion. Within the territory of the state concerned, the effects of aEuropean patent application for which an extension or validation request
has been filed, or of a European patent which has been validated in an
extension or validation state, are based on national law. The provisions of
the EPC, its Implementing Regulations and the Rules relating to Fees do
not apply to the extension and validation systems, unless and only to theextent that those provisions are referred to by the applicable national law.
Thus, the EPC provisions concerning applicants' legal remedies andappeals do not apply in respect of any action taken by the EPO under theextension or validation procedure (see e.g. J 14/00, J 4/05 and J 22/10),
e.g. where the extension or validation fee has not been paid within theapplicable time limit indicated (A-III, 12.2). Similarly, no different claims,
description or drawings are acceptable in respect of extension or validation
states (see H-III, 4.4), as Rule 138 EPC does not apply to the extension
and validation systems.

March 2023

Guidelines for Examination in the EPO

A request for extension to or validation for the above-mentioned states isdeemed to be made with any European application filed after entry into
force and, as to the former, before the termination of the respective
extension agreements. This applies also to Euro-PCT applications provided
that the EPO has been designated for a European patent and theextension or validation state has been designated for a national patent in
the international application. The request is deemed withdrawn if theextension or validation fee is not paid within the prescribed time limit(see A-III, 12.2). It is by paying the extension or validation fee that theapplicant decides to extend the application to an extension state or validate
it in a validation state. The declaration in the appropriate section of therequest for grant form (EPO Form 1001) or of EPO Form 1200 for entry into
the European phase before the EPO, where the applicant is asked to state
whether the extension or validation fee is intended to be paid, is merely for
information purposes and intended to assist in recording fee payments.
A request for extension or validation in respect of a divisional application(see A-IV, 1) is deemed to be made only if the respective request is still
effective in the parent application when the divisional application is filed.
12.2 Time limit for payment of extension and validation fees
Under the applicable national provisions of the extension and validation
states, the extension or validation fee must be paid(i)for European patent applications, within six months of the date on
which the European Patent Bulletin mentions the publication of theEuropean search report, or(ii)

for Euro-PCT applications, within the period for performing the acts
required for entry of an international application into the European
phase, or within six months of the date of publication of theinternational search report, whichever is the later.

If the fee for an extension or validation state has not been paid within thecorresponding basic period (see items (i) and (ii) above), the applicant canstill pay the extension or validation fee together with a 50% surcharge(a)within a grace period of two months from expiry of the basic period
for payment; or(b)

if the designation fee has not been paid, along with the filing of avalid request for further processing concerning the designation fee,within two months of notification of a communication of loss of rights
with regard to the designation fee (see the notices from the EPO
dated 2 November 2009, OJ EPO 2009, 603, and 5 February 2015,
OJ EPO 2015, A19).

If the applicant fails to pay the extension or validation fee during the basic
and the grace period, the request for extension or validation is deemed to
be withdrawn. No communication of loss of rights is issued.

Part A – Chapter III-31

Part A – Chapter III-32

Guidelines for Examination in the EPO

March 2023

However, a noting of loss of rights related to the failure to pay thedesignation fee pursuant to Rule 39(2) or 159(1)(d) will draw the applicant's
attention to the lack of payment of the extension or validation fee, whereappropriate, triggering the time limit mentioned in item (b) above.
A request for re-establishment of rights according to Art. 122 and Rule 136
is not possible in respect of payment of the extension or validation fee.
12.3 Withdrawal of the extension or validation request
The request for extension or validation may be withdrawn at any time. It will
be deemed withdrawn if the European patent application or the Euro-PCT
application is finally refused, withdrawn or deemed withdrawn. A separate
communication is not issued to the applicant. Validly paid extension orvalidation fees are not refunded.
12.4 Extension and validation deemed requested
Extension and validation are deemed to be requested in respect of all
extension and validation states (see, however, A-III, 12.1, sixth paragraph,regarding Euro-PCT applications), and this is indicated in the publishedapplication, the European Patent Register and the European Patent
Bulletin. Those states for which the extension or validation fees have been
paid are subsequently indicated in the European Patent Register, theEuropean Patent Bulletin and the published patent specification.
12.5 National register
Extension and validation states publish in their national register the relevant
data relating to European patent applications and patents extending to theirterritory.
13. Filing and search fees

Art. 78(2)13.1 Payment of fees
The applicant is required to pay a filing fee and, subject to the exception
mentioned below (see the note to point (iii) below), a search fee. The filingand search fees must be paid within the following periods:

Rule 38(i)where neither (ii) nor (iii) applies, within one month of filing theEuropean application

Rule 36(3)Rule 17(2)(ii)

for European divisional applications or European applications filed
according to Art. 61(1)(b), within one month of filing the divisional orArt. 61(1)(b) application

Rule 159(1)(iii)

for Euro-PCT applications, within 31 months of the filing date or,where applicable, from the earliest claimed priority date*.

*Note that when a supplementary European search report is dispensed withby the EPO (see B-II, 4.3), no search fee is required for the Euro-PCT
application (Rule 159(1)(e)).

March 2023

Guidelines for Examination in the EPO

With regard to applications of types (i) and (ii), the EPO will check thatthese fees have been paid. If either fee is not paid on time, the application
is deemed to be withdrawn. The EPO will notify the applicant of the loss ofrights according to Rule 112(1); the applicant can respond by requesting
further processing according to Art. 121 and Rule 135.

Part A – Chapter III-33

Art. 90(3)Rule 57(e)Art. 78(2)Rule 36(3)Rule 17(2)Pursuant to Art. 2(1) RFees as amended by decision of the Administrative
Council of 13 December 2017 (OJ EPO 2018, A4), the amount of the filingfee depends on the method and format used for filing the European patentapplication or its translation, if applicable. However, where a fee level
relates to a means of electronic communication or a particular electronic
document format, that fee level will only apply when this means or thisformat, as referred to in Article Art. 2(1) RFees, is made available. The dateon which such fee level will apply is to be specified by the President of the
Office (see Art. 2(4) RFees as adopted by decision of the Administrative
Council of 12 December 2018, OJ EPO 2019, A3, and the notice from the
EPO dated 24 January 2019, OJ EPO 2019, A6). At present, for European
patent applications, the fee levels of the filing fee and of the fee for grant
relating to the filing in character-coded format (DOCX) are not applied. The
latest information on the applicable fee levels and amounts can be found on
the EPO website (see also A-X, 1).
With regard to Euro-PCT applications (type (iii)), see E-IX, 2.1.4.
For the reduction of the filing fee under the language arrangements, see
A-X, 9.2.1 and 9.2.2.
13.2 Additional fee (if application documents comprise more than
thirty-five pages)
This section relates only to applications filed and international applications
entering the European phase on or after 1 April 2009 (see also the noticefrom the EPO dated 26 January 2009, OJ EPO 2009, 118, and the
supplement thereto, OJ EPO 2009, 338).
EP-direct applications
An additional fee is payable as part of the filing fee for European patentapplications which are filed on or after 1 April 2009 and comprise more than
thirty-five pages. The amount of the fee is calculated according to thenumber of pages over thirty-five. The language reduction under Rule 6(3)applies if the requirements of Rule 6(4), (6) and (7) have been met(see A-X, 9.2.1 and A-X, 9.2.2). The additional fee is payable within one
month of the filing date of the application or of the date of filing receipt of aEuropean divisional application or a European application according toArt. 61(1)(b). If the application is filed without claims or by reference to apreviously filed application, the additional fee is payable within one monthof filing the first set of claims or one month of filing the certified copy of theapplication referred to in Rule 40(3), whichever expires later. 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 patentapplication need to be corrected, the number of pages complying with theRule 6(3) to (7)Rule 38(2) and(3)
Art. 2(1), item 1a,
Rfees
Rule 46
Rule 49

Part A – Chapter III-34

Guidelines for Examination in the EPO

March 2023

physical requirements (see A-III, 3 and A-IX) is taken as the basis forcalculation. In particular those deficiencies relating to the minimum margins(Rule 46(1), Rule 49(5)), the start on a new sheet of each document
making up the application (Rule 49(4)), line-spacing and character size
(Rule 49(8)) as well as the scale of drawings (Rule 46(2)(c)) potentiallyhave an impact on the number of pages (see the decision of the Presidentof the EPO dated 25 November 2022). Where this is the case, any
additional fee due for the higher number of pages may be paid within twomonths of the invitation pursuant to Rule 58 drawing the applicant's
attention to this requirement.
The pages of the request for grant (EPO Form 1001) and those forming
part of a sequence listing within the meaning of Rule 30(1) are not counted,
provided the sequence listing contained in the description is filed in XML
format, in compliance with WIPO Standard ST.26 (see OJ EPO 2021, A97)
complies with the applicable WIPO standard. If the application is filed byreference to a previously filed application, the pages of the certified copy,
excluding those for the certification and for bibliographic data, are taken as
the basis for the calculation. If the application is filed without claims, theadditional fee takes account of the pages of the first set of claims filed.
Where missing parts are filed under Rule 56 (see A-II, 5) or correct
application documents are filed under Rule 56a (see A-II, 6), the additional
fee is calculated on the basis of the documents present at expiry of the time
limit under Rule 38(3).
Euro-PCT applications
For international (Euro-PCT) applications entering the European phase on
or after 1 April 2009, the additional fee is payable as part of the filing fee
within the 31-month period of Rule 159(1). It is calculated on the basis of
the international application as published (even if published in a non-EPO
language), any amended claims under Art. 19 PCT, which replace theclaims as originally filed unless specified to the contrary (see OJ
EPO 2017, A74), and one page for the abstract. If there is more than one
page of bibliographic data, the further pages are not counted. The pages ofthe latest set of any amended documents (Art. 34 PCT, amendments filed
upon entry) on which European phase processing is to be based(Rule 159(1)(b)) will also be taken into account where available to the EPO
by the date of payment of the additional fee within the thirty-one months.
Any amended pages are added to the calculation of the page fee unlessthe applicant clearly specifies, at the latest by the date of payment, theamended pages which are to replace the corresponding pages of theapplication as published (see also E-IX, 2.1.1). This information should
preferably be given in the relevant section of the form for entry into theEuropean phase, and in particular in the related table (see notes on EPO
Form 1200). If the applicant explicitly states that application documents
filed on entry into the European phase have merely been reformatted (soas to reduce the number of pages subject to payment of an additional fee)rather than substantively amended, the EPO disregards these reformatted
application documents and does not accept them as the basis forcalculation of the additional fee (see the notice from the EPO dated

March 2023

Part A – Chapter III-35

Guidelines for Examination in the EPO

26 January 2009, OJ EPO 2009, 118,OJ EPO 2009, 338).

and

the

supplement

thereto,Any replacement pages must be filed in an official language of the EPO.
Where the international application has not been published in an official
language of the EPO, the additional fee for any amended description or
drawings will be based on the translation of the international application
filed on entry into the European phase (see E-IX, 2.1.4 E-IX, 2.1.3). Where
claims are replaced, they must be submitted as an entire new set of claims.
The additional fee is then calculated on the basis of the amended claims
set in the EPO language (OJ EPO 2009, 338).
EPO Form 1200 is disregarded in the calculation of the additional fee.
The pages of any WIPO Standard ST.25-compliant sequence listing in TXT
format filed as part of the description are disregarded when calculating theadditional fee for Euro-PCT applications with an international filing dateprior to 1 July 2022. If the international filing date is on or after 1 July 2022,
the pages of a WIPO Standard ST.26-compliant sequence listing in XML
format are disregarded.
In application of the general principles described above, for international
applications comprising both erroneously filed application documents andcorrect application documents incorporated by reference (Rule 20.6 PCT in
conjunction with Rule 20.5bis(d) PCT), irrespective of their date of filing(see OJ EPO 2020, A81 and OJ EPO 2022, A71; see also C-III, 1.3), theadditional fee must be paid for all application documents contained in theinternational publication unless any are replaced by amendments filed onentry into the European phase, as specified by the applicant.
For international applications with an international filing date up to andincluding 31 October 2022, corrections that the receiving Office allowed to
be incorporated under Rule 20.6 PCT in conjunction with Rule 20.5bis(d)PCT are not effective in proceedings before the EPO as designated orelected Office (see OJ EPO 2020, A81). Nevertheless, the above generalprinciples for calculating the additional fee apply. However, for applicants
choosing According to the abridged procedure outlined in C-III, 1.3, if,provided that the declaration to renounce the correct application documents
incorporated by reference under Rule 20.5bis(d) PCT is received within the
31-month period for entering the European phase, and before payment of
the additional fee, the applicants declare their intention to renounce thecorrect application documents incorporated by reference under
Rule 20.5bis(d) PCT, this renunciation is, for the calculation of theadditional fee, equal to an amendment of the international application as
published. Accordingly, those pages identified in the publication of theinternational application as "Incorporated by reference (Rule 20.6)" arededucted from the international application as published. The same
principle applies if, within the 31-month period for entering the European
phase, the applicants declare their intention to renounce the erroneously
filed application documents and, thus, the initial date of filing. In that case,the erroneously filed pages are deducted from the international application

Part A – Chapter III-36

Guidelines for Examination in the EPO

March 2023

as published as regards the calculation of when calculating the additional
fee.
Where the international application was published in a non-EPO language,
the general practice described above also applies. Since the applicant's
intention to follow the abridged procedure on entry into the European phaseis considered an amendment of the international application as published,
the additional fee is calculated on the basis of the translation of those
application documents that are maintained for the further proceedings(either the correct application documents incorporated by reference or theerroneously filed ones) and any further amendments replacing (part of)them (see the notice from the EPO dated 14 June 2020,
OJ EPO 2020, A81).
For international applications comprising both erroneously filed and correct
application documents incorporated by reference under Rule 20.5bis(d)PCT, and where the applicants make use of the abridged procedure on
entry into the European phase (see C-III, 1.3), the renunciation of either thecorrect application documents or of the erroneously filed ones within the
31-month period for entering the European phase and before payment of
the additional fee is, for the calculation of the additional fee, equal to anamendment of the international application as published. Therefore,
according to the general principles, the additional fee is based on thetranslation of those application documents that are maintained for thefurther proceedings (either the correct application documents incorporated
by reference or the erroneously filed ones) (see the Notice from the EPO
dated 14 June 2020, OJ EPO 2020, A81).
Example 1:
International application, published in English, containing 100 pages:
Abstract
Description
ClaimsDrawings
claims, Art. 19 PCT

1
50
20
20
9

Total pages

100

Amended claims (EP entry)

10

On entry into European phase, within the 31-month period, 10 pages ofamended claims are filed to replace previous pages of claims, as indicatedby the applicant in EPO Form 1200.
-> number of pages on which calculation is based: 100 – 20 (original
claims) - 9 (Art. 19 PCT) + 10 (amended claims on EP entry) – 35
(fee-exempt)-> number of pages to be paid for: 46

March 2023

Guidelines for Examination in the EPO

Part A – Chapter III-37

Example 2:
International application, published in Chinese, containing 75 pages:
Number ofpages inChinese(ZH)

Number of pages inEnglish (EN),translation filed onentry into theEuropean phase

Abstract
Description
ClaimsDrawings
Total number of pages

1
40
15
19
75

1
50
25
19
95

Amended description of
the translation-3

On entry into the European phase, the translation into English is filed within
the 31-month period. Three pages of the translated description as originally
filed are replaced by three amended pages, as indicated by the applicant in
EPO Form 1200.
-> number of pages on which calculation is based: 35 (abstract, claims anddrawings in ZH) + 47 (EN translation of description – 3) + 3 (amended
description of the translation) – 35 (fee-exempt)-> number of pages to be paid for: 50
Pages of amendments filed after the date of payment of the additional fee,in particular during the Rule 161(1) or Rule 161(2) period (see E-IX, 3), are
not taken into account. Consequently, if amendments are filed at this stage
which reduce the number of pages already paid for, no refund will be made.
If the additional fee is not paid on time, the application is deemed to bewithdrawn. The EPO will notify the applicant of the loss of rights according
to Rule 112(1); the applicant can request further processing according toArt. 121 and Rule 135. The amount of the fee for further processing iscomputed according to the number of pages on file at expiry of the relevant
period for which the additional fee, calculated as set out above, has notbeen paid. The amount of the fee for further processing in respect of theadditional fee does not take into account the basic filing fee according toArt. 2(1), item 1, RFees, where this was paid on time.
13.3 Additional fee for divisional applications
Regarding the additional fee payable as part of the filing fee for divisional
applications of second or subsequent generations filed on or after
1 April 2014, see A-IV, 1.4.1.1 and the notice from the EPO dated
8 January 2014, OJ EPO 2014, A22.

Art. 78(2)Rule 38(4)Art. 2(1), item 1b,
RFees

Part A – Chapter III-38

Art. 14(2)Rule 6(1)Guidelines for Examination in the EPO

March 2023

14. Translation of the application
There are three situations in which a translation of the European application
will be required:(i)the European application was filed according to Art. 14(2) in alanguage which is not an official language of the EPO(ii)

the European application was filed by reference to a previously filed
application which is not in an official language of the EPO(Rule 40(3))(iii)

the European divisional application was filed in the same languageas the earlier (parent) application on which it is based, where thiswas not an official language of the EPO (Rule 36(2) –see A-IV, 1.3.3).

In all cases, a translation of the application must be filed at the EPO: incases (i) and (ii) this must be done within two months of the date of filingaccording to Rule 6(1) (for type (i)) or Rule 40(3) (for type (ii)); in case (iii) it
must be done within two months of the filing of the divisional applicationaccording to Rule 36(2).
Art. 90(3)Rule 57(a)The EPO will check that this requirement has been complied with. If thetranslation has not been filed, the EPO will invite the applicant to rectify thisdeficiency under Rule 58 within a period of two months in accordance withthe procedure explained in A-III, 16.

Rule 58

Failure to file the translation on time in response to the invitation under
Rule 58 results in the application being deemed to be withdrawn according
to Art. 14(2). The EPO will then notify the applicant of this loss of rights
according to Rule 112(1). The above time limits for supplying the translation
under Rule 40(3), Rule 6(1) and Rule 36(2) are all excluded from further
processing by Rule 135(2), as is the time limit for rectification of the failure
to file the translation under Rule 58. Consequently, further processing is notpossible in this case. However, the applicant may request re-establishment
according to Art. 122 and Rule 136 for failure to comply with the time limit
under Rule 58.
For translations in respect of international applications entering theEuropean phase, see E-IX, 2.1.2.

Art. 80
Rule 40(1)Art. 90(3) and(5)
Rule 57(c)Rule 58

15. Late filing of claims
For the purposes of obtaining a date of filing it is not necessary for theEuropean application to contain any claims. The presence of at least one
claim is nonetheless a requirement for a European application according toArt. 78(1)(c), but a set of claims can be provided after the date of filingaccording to the procedure described below.
The EPO will check whether at least one claim is present in the application.
If this is not the case, the EPO will issue an invitation under Rule 58 inviting
the applicant to file one or more claims within a period of two months. If theapplicant fails to do so within this period, the application is refusedMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter III-39

according to Art. 90(5). The applicant is notified of this decision according
to Rule 111. Further processing for failure to observe the time limit under
Rule 58 is excluded by virtue of Rule 135(2). The applicant may, however
request re-establishment according to Art. 122 and Rule 136 or may
appeal.
Where the application documents as originally filed did not include at least
one claim, applicants may also file claims of their own motion after the dateof filing, but before the EPO invites them to do so under Rule 58. In thiscase, no communication under Rule 58 will then be issued.
If the applicant does supply a set of claims in response to the invitation
under Rule 58, the claims so filed must have a basis in the application
documents (description and any drawings) provided on the date of filing(Art. 123(2)). This requirement will first be checked at the search stage(see B-XI, 2.2).
If the application was filed by means of a reference to a previously filed
application in accordance with Rule 40(3) and the applicant indicated on
the date of filing that the claims of the previously filed application were to
take the place of claims in the application as filed (see A-II, 4.1.3.1), then,provided the previously filed application also contained claims on its date offiling, claims were present on the European date of filing and nocommunication under Rule 58 will be sent.
The above procedure also applies to divisional applications (Art. 76(1)) andapplications filed in accordance with Art. 61(1)(b).
16. Correction of deficiencies
16.1 Procedure formalities officer
Where, during the examination for compliance with the requirements set
out in earlier sections of this chapter, it is noted that there are deficiencies
which may be corrected, the formalities officer must give the applicant theopportunity to rectify each such deficiency within a specified period. A
summary of the most common potential deficiencies at this stage of theprocedure and the provisions governing their rectification is given below:
A-III, 2
A-III, 3
A-III, 4
A-III, 5
A-III, 6
A-III, 9
A-III, 10
A-III, 13

Representation
Physical Requirements
Request for grant
Designation of inventor
Claim to priority
Payment of claims fees
Abstract
Filing fee, including any
additional fee, search fee
A-III, 14 Translation of the application
A-III, 15 Late filing of claims
A-IV, 5 Late furnishing of a standardcompliant sequence listing

Rule 58
Rule 58
Rule 58
Rule 60
Rule 52(3), Rule 59
Rule 45
Rule 58
Rule 112(1), Rule 135
Rule 58
Rule 58
Rule 30(3)Art. 90(3)Part A – Chapter III-40

Guidelines for Examination in the EPO

March 2023

The formalities officer should raise all formal objections that become
evident from a first examination of the application in the appropriate
communication, except that, as with the exception of those noted in
A-III, 3.2, the Receiving Section should not draw the attention of theapplicant to deficiencies under Rule 46(2)(i) and (j) or question the inclusionof tables in the claims (Rule 49(9), fourth sentence). It is likely that certain
matters cannot be finally disposed of at this stage, e.g. filing of priority
documents for which the period for filing has not expired, and further
reports may be necessary. If the applicant is required to appoint a
representative but has not done so, the formalities officer should in the firstreport deal only with this deficiency. Any request(s) for correction of otherdeficiencies will not be sent until a representative has been appointed, andwill be sent to that representative.

Rule 58

Art. 90(5)Art. 14(2)16.2 Period allowed for remedying deficiencies
The period for remedying the following deficiencies is two months from acommunication pointing them out according to Rule 58:(i)non-appointment of a representative where the applicant has neither
residence nor principal place of business in a contracting state –see A-III, 2 (regarding failure to file an authorisation where this isnecessary, see A-VIII, 1.5 and the decision of the President of the
EPO dated 12 July 2007, Special edition No. 3, OJ EPO 2007, L.1);(ii)

documents making up the application not complying with physicalrequirements (see A-III, 3);(iii)

request for grant (with the exception of the priority criteria) notsatisfactory (see A-III, 4);(iv)

abstract not filed (see A-III, 10);(v)

where required, translation of the application not filed (see A-III, 14)(vi)

no claims (see A-III, 15).

The period under Rule 58 is not extendable. If the above deficiencies
under (i)-(iv) or (vi) are not rectified in time, the application is refused under
Art. 90(5). If the deficiency under (v) is not rectified in time, the application
is deemed to be withdrawn under Art. 14(2). According to Rule 135(2),further processing is excluded for all of the above losses of rights, which allarise from the failure to observe the time limit of Rule 58.
The following deficiencies are rectified under provisions other than Rule 58:(vii)

non-payment of the claims fees (Rule 45 – see A-III, 9);(viii) priority document or file number of the previous application is missing(Rule 59 – see A-III, 6); and(ix)

non-payment of filing fee, including any additional fee, and searchfee (see A-III, 13).; andMarch 2023

(x)

Guidelines for Examination in the EPO

Part A – Chapter III-41

non-filing of a standard-compliant sequence listing (Rule 30(3) –see A-IV, 5).

According to Rule 45(2), the period for remedying deficiencies with regard
to the payment of claims fees under (vii) is one month from acommunication pointing out their non-payment. Failure to correct thisdeficiency in time leads to the claims in question being deemed to beabandoned under Rule 45(3). Further processing applies to this loss ofrights.

Rule 45

Deficiencies under (viii) are to be corrected within a period of two months
from a communication under Rule 59. This period can be extended under
Rule 132(2) (see E-IX, 2.3.5 for Euro-PCT applications), but further
processing is ruled out by Rule 135(2). Failure to correct this deficiency intime leads to the loss of the priority right.

Art. 90(5)Rule 59

Failure to pay the filing, additional or search fee on time results in thedeemed withdrawal of the application according to Art. 78(2). This loss ofrights ensues directly on expiry of the applicable time limit (see A-III, 13). A
deficiency under (ix) can be corrected by requesting further processing.

Art. 78(2)The deficiency under Rule 30(1) can be corrected within a period of twomonths of a communication under Rule 30(3). This period is not extendable
but further processing is available. Failure to correct this deficiency in timeleads to the refusal of the European patent application (see A-IV, 5).

Rule 30

Where appropriate, the search division is informed of any loss of rights.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter IV-1

Chapter IV – Special provisions
1.

European divisional applications (see also C-IX, 1)

1.1 General remarks
A divisional application may be filed relating to any pending earlier
European patent application. A divisional application filed on the same day
as the parent application is not considered as validly filed. The term "earlier
application" is understood to mean an application filed at least one day
before the divisional application and refers to the immediate application onwhich the divisional application is based ("parent application"). Where theearlier application is a Euro-PCT application, a divisional application can
only be filed upon effective entry of the earlier application into the European
phase (see E-IX, 2.4.1).
The divisional application is accorded the same date of filing as the parent
application and has the benefit of any right of priority of the parent
application in respect of the subject-matter contained in the divisional
application (see A-IV, 1.2.1).
Where the applicant inserts missing parts of the description and/or missing
drawings under Rule 56 (see A-II, 5) or corrects erroneously filed parts
under Rule 56a (see A-II, 6) after the date of receipt of the divisional
application, the requirements of Rule 36(1) may no longer be fulfilled(see A-IV, 1.1.1). If the divisional application claims priority, the date ofreceipt does not change if the missing parts or the correct application
documents are completely contained in the earlier application whose
priority is claimed (Art. 88(1)).
A European patent application may give rise to more than one divisional
application. A divisional application may itself give rise to one or moredivisional applications.
Where a divisional application is deemed not to have been validly filed due
to non-fulfilment of one of the filing conditions (see also A-IV, 1.1.1 and1.1.3), the applicant will be duly informed in a communication pursuant toRule 112(1) stating that the application will not be processed as aEuropean divisional application and providing the opportunity to apply for adecision on the EPO's findings under Rule 112(2) (see E-VIII, 1.9.3). Anyfees paid will be refunded if the loss of rights becomes final.
1.1.1 Pendency of the earlier application
The parent application must be pending when a divisional application is
filed. Reference is made in this regard to the observations made in
decisions G 1/09 and J 18/09 as to what constitutes a pending application.
In the case of an application being filed as a divisional application from anapplication which is itself a divisional application, it is sufficient that thelatter is still pending at the filing date of the second divisional application.
An application is pending up to (but not including) the date that theEuropean Patent Bulletin mentions the grant of the patent(OJ EPO 2002, 112). Rule 134 does not apply in this case. It is not possible

Art. 76
Rule 36(1)Part A – Chapter IV-2

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March 2023

to validly file a divisional application when the parent application has been
finally refused, withdrawn or is deemed to be withdrawn (see also theparagraphs below).
If an application is deemed to be withdrawn due to the non-observance ofa time limit (e.g. following failure to pay the filing fee (Art. 78(2)), to pay arenewal fee (Art. 86(1)), to pay the fee for grant and publishing or theclaims fees, or to file the translation of the claims (Rule 71(7)) in due time),
the application is no longer pending when the non-observed time limit has
expired.
In the event of non-payment of a renewal fee by the due date (Rule 51(1)),
the application is pending up to the last day of the six-month period for
payment of the renewal fee with an additional fee (Rule 51(2), first
sentence), and a divisional application may still be filed during this period –even if the fees are ultimately not paid. Deemed withdrawal of theapplication takes effect on expiry of the six-month period (Rule 51(2),second sentence).
Once the application is deemed to be withdrawn, a divisional application
can only be validly filed if the loss of rights, as communicated pursuant toRule 112(1), is subsequently remedied. In such a case, the application isdeemed to have been pending throughout.
Art. 112a(5)Depending on the non-observed time limit, remedying the loss of rights may
be effected either by means of an allowable request for further processing(see E-VIII, 2) or, where applicable, by a request for re-establishment ofrights (see E-VIII, 3). Furthermore, if the findings in the notice of loss ofrights are considered inaccurate, the applicant may also apply for adecision under Rule 112(2) (see E-VIII, 1.9.3). If the competent EPO bodyshares this opinion or if it gives an unfavourable decision which issubsequently overturned on appeal, no loss of rights has ever occurred andthe application will have been pending throughout (see J 4/11, reasons 22).
The same applies if the appeal decision is set aside by the grant of apetition for review and the appeal proceedings are re-opened under
Art. 112a(5), with the consequence that the decision under Rule 112(2) isoverturned.
If an application has been refused and no appeal has (yet) been filed, theapplication is still pending within the meaning of Rule 36(1) until expiry of
the time limit for filing the notice of appeal (Art. 108), and a divisional
application can be validly filed until expiry of this period (see G 1/09).
Where the applicant does validly file a notice of appeal but fails to submit
the written statement setting out the grounds of appeal, the refused
application is pending until expiry of the time limit for filing the grounds ofappeal under Art. 108 (see J 23/13). If the grounds of appeal are submitted
in due time, the decision to refuse cannot take effect until the appeal
proceedings are over. As the provisions relating to the filing of divisional
applications also apply in appeal proceedings (Rule 100(1)), a divisional
application may then be filed while such appeal proceedings are underway. If the appeal proceedings are re-opened under Art. 112a(5), theapplication will have been pending throughout.

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If the parent application is withdrawn by the applicant, a divisional
application can be filed up to (i.e. including) the date on which thedeclaration of withdrawal is received by the EPO.
While proceedings are stayed in accordance with Rule 14(1)(see A-IV, 2.2), the filing of divisional applications is not possible.
Rule 14(1) constitutes a lex specialis with regard to the right to file adivisional on a pending application provided for in Rule 36(1) (see J 20/05
and G 1/09, reasons 3.2.5).
In respect of a purported divisional application filed when the parent
application is not pending, the EPO will issue a communication pursuant toRule 112(1) (see A-IV, 1.1). The pendency of the earlier application is not aprocedural deadline or time limit, which, in case of non-compliance, would
lead to a loss of rights. Instead, it is a condition of a substantive nature forthe filing of divisional applications (see G 1/09, reasons 3.2.3). Therefore,
the provisions on re-establishment of rights and further processing do not
apply to the filing of divisional applications (see J 10/01, reasons 15).
1.1.2 Sequences of divisional applications
A divisional application can also be an earlier application in the sense ofArt. 76(1) for the purposes of one or more further divisional applications.
The characterising feature of a sequence of divisional applications eachdivided out from its predecessor is that each member of the sequenceclaims as date of filing the date of the root application in which thesubject-matter divided out in sequences of divisional applications was first
disclosed (see G 1/05, G 1/06).
In a sequence of divisional applications, a first-generation divisional
application is a divisional application based on an application which is notitself a divisional application, i.e. the root application. A second-generation
divisional application is a divisional application based on a first-generation
divisional application; and so on.
1.1.3 Persons entitled to file a divisional application
Only the applicant or, in the case of multiple applicants, all applicants onrecord of the earlier application may file a divisional application. In the caseof multiple applicants, a divisional application may only be filed jointly by all
applicants on record. This means that, in the case of a transfer of an
application, a divisional application may only be filed by or on behalf of the
new applicant(s) if the transfer was duly registered and therefore effectivevis-à-vis the EPO (Rule 22) at the filing date of the divisional application. A
purported divisional application that is not (jointly) filed in the name of theapplicant(s) of the parent application will not be processed as a European
divisional application. The EPO will inform applicants by issuing acommunication pursuant to Rule 112(1) (see A-IV, 1.1).
1.2

Date of filing of a divisional application; claiming priority

1.2.1 Date of filing
A European divisional application may be filed in respect of subject-matter
which does not extend beyond the content of the parent application as filed.

Art. 76(1),2nd sentencePart A – Chapter IV-4

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Provided this requirement is met, the divisional application is deemed tohave been filed on the date of filing of the parent application and enjoys
that application's priority (see A-IV, 1.2.2).
Art. 63(1)Art. 80
Rule 40(1)A divisional application filed in due form, i.e. meeting the requirements ofArt. 80 and Rule 40(1) (see A-II, 4.1 et seq.), is accorded the same date offiling as the parent application, being that of the root application in case of asequence of divisional applications. The question of whether it is confined
to subject-matter contained in the parent application is not decided until theexamination procedure (see C-IX, 1.4 et seq.). The term of a patent granted
for a European divisional application is 20 years from its date of filing, i.e.
the date of filing of the root application.
Since Rule 40(1) does not require that a European application contain any
claims on its date of filing, the same applies to a European divisional
application. The applicant can file the claims after the filing of the divisional
application according to the procedures detailed in A-III, 15. This may bedone after the parent application is no longer pending, provided that therequirements of Rule 40(1) were satisfied with regard to the divisional while
the parent application was still pending. If the claims of the parent
application are included in the description of the divisional application,these are to be clearly identified as part of the description (see F-IV, 4.4).

Art. 76(1)Rule 53(2) and(3)

1.2.2 Priority claim of a divisional application
A priority claimed in the parent application also applies to the divisional
application, provided that the parent application's priority claim has notbeen lost or withdrawn by the date the divisional application is filed; it is notnecessary to claim it formally a second time. The priority claim can bewithdrawn in respect of the divisional application (F-VI, 3.5, E-VIII, 8.2 andE-VIII, 8.3). However, this withdrawal will have no effect on the priority
claim of the parent application. Similarly, any withdrawal of the priority claimof the parent application after the filing of the divisional application has noeffect on the priority claim of the divisional application.
The applicant may, if so desired, claim fewer priorities in respect of thedivisional application (where the parent application claims more than one
priority – Art. 88(2)). To do so, the applicant must file a clear andunambiguous withdrawal of the priority claim or claims in question in
respect of the divisional application (see the notice from the EPO dated
12 November 2004, OJ EPO 2004, 591). In the absence of such a
withdrawal, all priorities which have not lapsed in respect of the parent
application when the divisional is filed also remain valid with respect to thedivisional application. Furthermore, in the absence of such a withdrawal, allsuch priority claims remain valid for the divisional, even if the applicant
provides an incorrect or incomplete priority claim when filing the divisional
application.
If a certified copy and a translation of the previous application, if applicable(see A-VII, 3.3), have been filed in respect of the parent application before
the divisional application is filed, it is not necessary to file the priority
document and any translation again in respect of the divisional application.
The EPO makes a copy of these documents and places them in the file ofMarch 2023

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the divisional application (see the decision of the President of the EPO
dated 12 July 2007, Special edition No. 3, OJ EPO 2007, B.2).
If, when the divisional application is filed, a priority document has not been
filed in respect of the parent application, it must be filed in respect of thedivisional application and, if the priority claim of the parent application's
remaining subject-matter is to be retained, in respect of the parent
application also. Applicants can also inform the EPO, within the time limit
set for filing priority documents in the divisional application proceedings,
that they have in the meantime submitted these documents in respect ofthe parent application. If the subject-matter of the divisional application
relates only to some of the priorities claimed in the parent application,priority documents in respect of the divisional application need be filed for
those priorities only.
This applies also as regards indicating the file number of the previous
application. For the time limits for indicating the file number and for filing thepriority documents, see A-III, 6.5, 6.5.3 and 6.7 et seq.
1.3

Rule 52(2)Filing a divisional application

1.3.1 Where and how to file a divisional application?
A divisional application must be filed by delivery by hand, by postal services
or by fax with the EPO in Munich, The Hague or Berlin. It may also be filedusing the EPO Online Filing software, the EPO case management system
Online Filing 2.0 or the EPO Web-Form Filing web-form filing service(see A-II, 1.2.2).

Rule 36(2)Rule 35(1)The filing of a European divisional application with a national authority has
no effect in law; the authority may however, as a service, forward theEuropean divisional application to the EPO. If a competent national
authority chooses to forward the application, it is not deemed received until
the documents have reached the EPO.
The divisional application may be filed by reference to a previously filed
application. The procedures are as provided for in Rule 40(1)(c), (2) and (3)(see A-II, 4.1.3.1). Where the divisional application is filed by reference toan international application which has effectively entered the European
phase (see A-IV, 1.1) and was not filed with the EPO as receiving Office, acertified copy of the international application originally filed with the PCT
receiving Office must be filed (OJ EPO 2009, 486).
1.3.2 Request for grant
The request for grant of a patent must contain a statement that a divisional
application is sought and state the number of the parent application. Itshould also mention which generation of divisional application is being filed(Rule 38(4), Art. 2(1), item 1b, RFees). If the request is deficient, as canarise if there is no indication that the application constitutes a divisional
application, although some of the accompanying documents contain an
indication to that effect, or if the number is missing, the deficiency may becorrected in the manner indicated in A-III, 16.

Rule 41(2)(e)Part A – Chapter IV-6

Rule 36(2)Art. 76(2)Rule 36(4)Guidelines for Examination in the EPO

March 2023

1.3.3 Language requirements
As indicated in A-VII, 1.3, a divisional application must be filed in thelanguage of the proceedings of the parent application. Alternatively, if theearlier (parent) application was filed in a language other than an official
language of the European Patent Office, the divisional application may be
filed in that language. In this case a translation into the language of theproceedings for the earlier application shall then be filed within two monthsof the filing of the divisional application (see A-III, 14).
1.3.4 Designation of contracting states
All contracting states designated in the earlier application at the time offiling a European divisional application are deemed to be designated in thedivisional application (see also G 4/98). If no designations have been
withdrawn in respect of the parent application, then all contracting states
adhering to the EPC at the date of filing of the parent are automaticallydesignated in the divisional application when it is filed. Conversely,
contracting states, the designations of which have been withdrawn inrespect of the parent application at the time of filing the divisional
application, cannot be designated in respect of the divisional application.
If the parent application was filed before 1 April 2009, and the time limit for
payment of the designation fees has not yet expired for the parent
application when the divisional application is filed, and no designations
have been withdrawn in respect of the parent application, then allcontracting states adhering to the EPC at the date of filing of the parent areautomatically designated in the divisional application when it is filed.
Conversely, contracting states, the designations of which have been
withdrawn or deemed to be withdrawn in respect of the parent application
at the time of filing the divisional application, cannot be designated in
respect of the divisional application.
The flat designation fee payable for divisional applications filed on or after
1 April 2009 does not cover contracting states the designations of whichhave been withdrawn or deemed to be withdrawn at the time of filing thedivisional application.
1.3.5 Extension and validation states
All extension and validation states designated in the earlier application at
the time of filing of a European divisional application are deemed to be
designated in the divisional application. For more details regarding thedesignation of these states, see A-III, 12.1.
1.4

Rule 36(3) and(4)
Art. 79(2)Fees

1.4.1 Filing, search and designation fee(s)The filing fee and search fee for the divisional application must be paid
within one month of filing the European patent application (basic time limit).
For the additional fee due for any pages in excess of thirty-five,see A-III, 13.2. For the additional fee due for divisional applications ofsecond or subsequent generations, see A-IV, 1.4.1.1. The designation
fee(s) must be paid within six months of the date on which the European

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Patent Bulletin mentions the publication of the European search reportdrawn up in respect of the divisional application.
The search fee must be paid even if a further search fee has already been
paid under Rule 64(1) in respect of the search report on the parent
application for the part of the application which was lacking in unity andwhich is now the subject of the divisional application (for reimbursement of
the search fee see A-IV, 1.8).
If, within the applicable time limit, the filing, search or designation fees havenot been paid, the application is deemed to be withdrawn. The EPO informs
the applicant of these losses of rights by issuing a communication under
Rule 112(1). The applicant can request further processing according toArt. 121 and Rule 135.

Rule 36(3) and(4)

For divisional applications filed before 1 April 2009, see for the deemed
withdrawal of single designations or of the application and applicable
remedies A-III, 11.3.2 and 11.3.4.
1.4.1.1 Additional fee for divisional applications of second or
subsequent generations
An additional fee is payable as part of the filing fee for divisional
applications of second or subsequent generations filed on or after
1 April 2014 (see the notice from the EPO dated 8 January 2014,
OJ EPO 2014, A22). The amount of the fee varies depending on thegeneration to which the divisional application filed belongs(see A-IV, 1.1.2). First-generation divisional applications are not subject tothe additional fee. From the second to the fifth generation the amount of thefee grows progressively. For the fifth and subsequent generations it
becomes a flat fee (Art. 2(1), item 1b, RFees).
Example:In this example, no additional fee would be due in respect of EP2 and EP3,
as they are first-generation divisional applications. The amount of theadditional fee for second-generation divisional applications would apply to
EP4, and the amount for third-generation divisional applications would
apply to EP5.

Rule 38
Art. 2(1), item 1b,
RFees

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The additional fee is part of the filing fee for divisional applications ofsecond and subsequent generations. Therefore, it must be paid within thesame period as the filing fee, and the same provisions apply in case of
non-payment in due time (see A-IV, 1.4.1). Likewise, the reduction of thefiling fee under the language arrangements applies to this additional fee,
provided that the requirements laid down in Rule 6(4) to (7) are compliedwith (see A-X, 9.2.1 and 9.2.2).

Rule 45(1)Art. 86(1)Art. 76(1)Rule 51(3)Art. 2(1), item 5,
RFees

Rule 51(3)Art. 2(1),item 5, RFees

1.4.2 Claims fees
If, at the time of filing the first set of claims, the divisional application
comprises more than fifteen claims, a claims fee is payable in respect ofeach claim over and above that number (see A-III, 9). Claims fees arepayable even if in the parent application they were paid in respect of claims
relating to the subject-matter now the subject of the divisional application(see A-III, 9).
1.4.3 Renewal fees
For the divisional application, as for any other European patent application,
renewal fees are payable to the EPO. They are due in respect of the thirdyear and each subsequent year, calculated from the date of filing of theearlier (parent) application, being that of the root application in case of asequence of divisional applications. Pursuant to Art. 76(1) in conjunction
with Rule 51(3), the date of filing the parent application is also the date fromwhich the time limits for payment of the renewal fees for the divisional
application (Art. 86(1)) are calculated. If, when the divisional application is
filed, renewal fees for the parent application have already fallen due, theserenewal fees must also be paid for the divisional application and fall due
when the latter is filed (see also A-IV, 1.1.1). The period for payment ofthese fees is four months after the filing of the divisional application. If not
paid in due time, they may still be validly paid within six months of the dateon which the divisional application was filed, provided that at the same time
the additional fee of 50% of the renewal fees paid late is paid.
If, within the four-month period referred to above, a further renewal fee falls
due or a renewal fee falls due for the first time, it may be paid without anadditional fee within that period. It may otherwise still be validly paid within
six months of the due date, provided that at the same time the additional
fee of 50% of the renewal fee paid late is paid. When calculating theadditional period the principles developed by the Legal Board of Appeal
should be applied (see J 4/91).
Further processing for failure to pay renewal fees on time is excluded byvirtue of Rule 135(2). However, re-establishment is possible. In the case of
applications for re-establishment of rights in respect of renewal fees falling
due on filing of the divisional or within the four-month period laid down inRule 51(3), second sentence, the one-year period prescribed byRule 136(1) starts to run only after the six months under Rule 51(2) have
expired.

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Example:25.03.2008:
11.01.2011:31.03.2011:11.05.2011:11.07.2011:
30.09.2011:11.07.2012:01.10.2012:

date of filing of parent application;filing of divisional application and due dateof renewal fee for the third year;
due date of renewal fee for the fourth year;
expiry of four-month period under
Rule 51(3);expiry of six-month period under Rule 51(2)in respect of the renewal fee for the thirdyear;
expiry of six-month period under Rule 51(2)in respect of the renewal fee for the fourthyear;
expiry of one-year period under
Rule 136(1) in respect of the renewal fee
for the third year;
expiry of one-year period under
Rule 136(1) in respect of the renewal fee
for the fourth year (extended under
Rule 134(1)).

For other examples see A-X, 5.2.4.
1.5 Designation of the inventor
The provisions of A-III, 5.4 apply with regard to the designation of theinventor, except that, where the designation of the inventor has not been
provided or is deficient (i.e. it does not comply with Rule 19), the applicant
will be invited to provide or correct it within a two-month period specified by
the EPO (see E-VIII, 1.6). The divisional application requires a separate
designation, independent of the parent application on which it is based.
1.6 Authorisations
The provisions of A-VIII, 1.5 and 1.6 apply with regard to authorisations in
respect of the divisional application. If, according to these provisions, therepresentative has to file an authorisation, they may act on the basis of anindividual authorisation filed in respect of the parent application only if it
expressly empowers them to file divisional applications.
1.7 Other formalities examination
Other than for matters referred to in A-IV, 1.1 to 1.6, the formal examinationof divisional applications is carried out as for other applications. The
provisions of Rule 30 apply with regard to divisional applications relating to
nucleotide or amino acid sequences filed after 1 January 1993
(see A-IV, 5).
1.8 Search, publication and request for examination of divisional
applications
Divisional applications are searched, published and examined in the same
way as other European patent applications.
The search fee is refunded if the conditions of Art. 9(2) of the Rules relating
to Fees are met (see the decision of the President of the EPO dated
14 January 2022 concerning the refund of the search fee under Art. 9(2) ofRule 60(2)Part A – Chapter IV-10

Guidelines for Examination in the EPO

March 2023

the Rules relating to Fees, OJ EPO 2022, A8, 17 November 2017,
OJ EPO 2017, A94, for divisional applications for which the search iscompleted on or after 1 April 2022 1 December 2017).
The divisional application is published in accordance with Art. 93(1). The
filing or priority date taken for calculation of the eighteen-month period for
publication is the date of filing or the earliest priority date claimed(see A-IV, 1.2.1). Since this period has usually already expired when thedivisional application is filed, the technical preparations for publication arecompleted as soon as all formal requirements with respect to the divisional
application have been fulfilled. The applicant is informed of the intended
publication date (see also A-VI, 1.1).
The time limit for filing the request for examination begins to run with thedate on which the European Patent Bulletin mentions the publication of thesearch report concerning the divisional application.
2.

Art. 61(1)Rule 16

Art. 61 applications and stay of proceedings under Rule 14

2.1 General
It may be adjudged by decision of a court or competent authority(hereinafter "court") that a person referred to in Art. 61(1), other than theregistered applicant, is entitled to the grant of a European patent. This third
party may, within three months after the decision has become final,
provided that the European patent has not yet been granted, in respect of
those contracting states designated in the European patent application inwhich the decision has been taken or recognised or has to be recognisedon the basis of the Protocol on Recognition annexed to the European
Patent Convention:

Art. 61(1)(a)(i)

prosecute the application as their own application in place of theapplicant (see A-IV, 2.4 and 2.7);

Art. 61(1)(b)(ii)

file a new European patent application in respect of the same
invention (see A-IV, 2.5 and 2.7); or

Art. 61(1)(c)(iii)

request that the application be refused (see A-IV, 2.6 and 2.7).

In a case where the application is no longer pending due to its having been
withdrawn, refused or being deemed to be withdrawn, the third party canstill file a new European patent application in respect of the same invention,in accordance with Art. 61(1)(b) (see G 3/92).

Rule 14(1)2.2 Stay of proceedings for grantIf a third party provides proof to the EPO that they have opened
proceedings against the applicant for the purpose of seeking a judgementthat they are entitled to the grant of the European patent the EPO will stay
the proceedings for grant unless the third party communicates to the EPO
in writing their consent to the continuation of such proceedings. Thisconsent is irrevocable.

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Proceedings for grant may not be stayed before the publication of theEuropean patent application. In the case of a Euro-PCT application
proceedings may only be stayed after expiry of the time limit for entry into
the European phase.
Furthermore, Rule 14(1) only refers to national entitlement proceedings
which result directly, i.e. generally and automatically, in decisions
mentioned in Art. 61(1) and it does not refer to proceedings initiated before
a court of a non-contracting state (see J 6/03, r.21). Jurisdiction and therecognition of decisions regarding the right to the grant of a European
patent for EPC contracting states are governed by the Protocol on
Recognition, which under Art. 164(1) is an integral part of the EPC.
Arbitration awards may be recognised, provided that they may
automatically be recognised by all designated contracting states,e.g. pursuant to the New York Convention on the Recognition and
Enforcement of Foreign Arbitral Awards of 10 June 1958.
The dates on which proceedings are stayed and resumed will be entered in
the European Patent Register (Rule 143(1)(s)). They will also be
communicated to the parties.
For the stay of opposition proceedings, see D-VII, 4.1.
2.2.1 Responsible department
Sole responsibility for procedures where the applicant is not entitled lies
with the Legal Division of the EPO (see the decision of the President of the
EPO dated 21 November 2013, OJ EPO 2013, 600).
2.2.2 Date of the stay of proceedings
A stay of proceedings under Rule 14(1) takes immediate effect as from thedate the EPO is provided with satisfactory evidence that national
proceedings have been instituted against the applicant seeking a decision
within the meaning of Art. 61(1) (J 9/12).
The requirements for effectively initiating court proceedings are governedby national law (J 7/00).
2.2.3 Legal nature and effects of the stay
The stay of proceedings is a preliminary procedural measure sui generis
which is justified as a preventive measure to preserve the third party's
possible rights to the patent in dispute and which takes immediate effect(J 28/94, J 15/06). In particular, the stay of the grant proceedings is ordered
by a communication of the EPO without having heard the applicant.
However, the applicant may, in view of the said communication, request theissuance of an appealable decision.
Stay of proceedings implies that the legal status quo existing at the time ofthe suspension is maintained, i.e. neither the EPO nor the parties canvalidly perform any legal acts while proceedings are suspended (J 38/92).
In particular, the applicant is not allowed to withdraw either the European
patent application or the designation of any contracting state (Rule 15).

Art. 20

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Likewise, no divisional application can be filed during the stay ofproceedings (J 20/05 and J 9/12).
An automatic debit order ceases to be effective on the day on which a stayof the proceedings under Rule 14 takes effect (see point 11.1(c) AAD,
Point 13.1(e) AAD, Annex A.1 to the ADA, Supplementary publication 5,
OJ EPO 2017 Supplementary publication 3, OJ EPO 2022). Therefore,
after resumption of proceedings a new automatic debit order must be filed
is needed, if the applicant wishes to continue using the automatic debiting
procedure.

Rule 14(4)2.2.4 Interruption of time limits
The time limits in force at the date of stay other than time limits for paymentof renewal fees are interrupted by such stay. The time which has not yet
elapsed begins to run as from the date on which proceedings are resumed.
However, the time still to run after the resumption of the proceedings mustnot be less than two months. As far as renewal fees are concerned, they
continue to fall due during the period of stay. Also, in accordance with
Rule 14(4), the period for the payment of the renewal fee with an additional
fee provided for in Rule 51(2) is not interrupted.
Example: The European Patent Bulletin mentions the publication of theEuropean search report on 15 March 2017. Proceedings are stayed on
Friday, 5 May 2017 and resumed on Friday, 18 August 2017. At theresumption of proceedings, the six-month period from the date of themention of the publication of the search report for payment of theexamination fee (Rule 70(1)) does not begin to run again in its entirety but
only for the days and months not yet elapsed. This time must not be lessthan two months (Rule 14(4)).
The six-month period starts on the day following the publication of thesearch report, in accordance with Rule 131(2), i.e. on 16 March 2017, andends on 15 September 2017. The period that is already running whenproceedings are stayed on 5 May 2017 ends on 4 May 2017.
The period that has elapsed between 15 March 2017 and 4 May 2017 is
one month and 19 days. The remaining period to run after the resumption ismore than two months.
Calculation of the remaining non-elapsed period:
On the day of suspension, 5 May 2017, the first month of the running period
has passed and so have 19 days of the second month. Thus, on that day,11 days and four months remain (from 5 May 2017 to 15 May 2017
inclusive and from 15 May 2017 to 15 September 2017 inclusive). This
non-elapsed period must be added to the date of resumption in order tocalculate the deadline for payment of the examination fee.

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Resumption is on 18 August 2017. All time limits start running again as
from and including this day (Rule 131(2) does not apply):
After adding first the remaining days and then the remaining months, it isnecessary to check whether the last day falls on a day on which the EPO
receives mail according to Rule 134(1): calculating 11 days from andincluding 18 August 2017 results in 28 August 2017. Adding four months tothat gives 28 December 2017 as the end of the time limit for payment of thefee. Since the EPO was closed from Monday, 25 December 2017 to
Monday, 1 January 2018, the period is extended to 2 January 2018 inaccordance with Rule 134(1).
2.2.5 Resumption of the proceedings for grant
The date of resumption of proceedings, as well as the legal basis for the
resumption is to be communicated to the third party and the applicant.
2.2.5.1 Resumption after final decision in entitlement proceedings
Grant proceedings will be resumed where evidence is provided that a final
decision within the meaning of Art. 61(1) has been taken, unless a new
European patent application under Art. 61(1)(b) has been filed for all thedesignated contracting states. If the decision is in favour of the third party,
the proceedings may not be resumed earlier than three months after thedecision has become final, unless the third party requests the resumption.
2.2.5.2 Resumption regardless of the stage of entitlement
proceedings
The Legal Division may also order the resumption of grant proceedings
regardless of the stage reached in the proceedings against the applicant. In
this case, it is at the discretion of the Legal Division to decide whether theproceedings are to be continued. This discretion is to be exercised with due
regard to the interests of the parties. In particular, the outcome of the court
proceedings in the first instance and the duration of the stay of proceedings
before the EPO are to be taken into consideration, as well as an evident
abuse of proceedings, e.g. in the form of delaying tactics.
2.3 Limitation of the option to withdraw the European patentapplication
As from the time when a third party proves to the EPO that they haveinitiated proceedings concerning entitlement (see A-IV, 2.2) and up to thedate on which the EPO resumes the proceedings for grant(see A-IV, 2.2.5), neither the European patent application nor thedesignation of any contracting state may be withdrawn.
2.4 Prosecution of the application by a third party
If any third parties wish to avail themselves of the possibility open to themunder Art. 61(1)(a) (see A-IV, 2.1(i)), they must declare their intention inwriting to the EPO in due time. They then take the place of the erstwhile
applicant. The proceedings for grant are continued from the point reachedwhen they were stayed or when the declaration was filed by the third party(see A-IV, 2.2).

Rule 14(3)Rule 14(2)Rule 14(3)Rule 15

Art. 61(1)(a)Part A – Chapter IV-14

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March 2023

2.5 Filing a new application
A new European patent application under Art. 61(1)(b) must be filed in
paper or electronic form at The Hague, Munich or Berlin offices of the EPO.
It is not possible to file an application according to Art. 61(1)(b) with thecompetent authorities of a contracting state.
The new application is in many other respects treated as a European
divisional application and corresponding provisions apply. In particular, thefollowing
provisions
relating
todivisional
applications
apply
mutatis mutandis:

Art. 61(2)Rule 17(2) and(3)
Rule 45(1)Rule 51(6)(i)

accordance of the date of filing of the earlier application andentitlement to priority date – see A-IV, 1.2;

(ii)

information in the request for grant – see A-IV, 1.3.2;(iii)

filing, search, designation and claims fees – see A-IV, 1.4.1 and1.4.2;(iv)

designation of inventor – see A-IV, 1.5.

(v)

language requirements – see A-IV, 1.3.3.

However, arrangements for renewal fees are different. For the year inwhich the new application is filed and for the years beforehand, no renewal
fees are payable.
In other respects the formal examination is carried out as for otherapplications.
If it is adjudged that a third party is entitled to the grant of a European
patent for only some of the contracting states designated in the earlier
application, and the third party files a new application for these states, forthe remaining states the earlier application continues to be in the name ofthe earlier applicant.

Rule 17(1)Art. 61(1)(c)Rule 18(1)The earlier application is deemed to be withdrawn on the date of filing of
the new application for the contracting states designated therein in which
the decision has been taken or recognised.
2.6 Refusal of the earlier application
If the third party requests under Art. 61(1)(c) that the earlier application be
refused, the EPO must accede to this request. The decision is open to
appeal (Art. 106(1)).
2.7 Partial transfer of right by virtue of a final decision
If by a final decision it is adjudged that a third party is entitled to the grant ofa European patent in respect of only part of the matter disclosed in theEuropean patent application, Art. 61 and Rules 16 and 17 apply to suchpart.

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Guidelines for Examination in the EPO

Part A – Chapter IV-15

Display at an exhibition

3.1 Certificate of exhibition; identification of invention
Where an applicant states when filing an application that the invention
which is the subject of the application has been displayed at an official or
officially recognised international exhibition falling within the terms of theConvention on international exhibitions, that applicant must file a certificate
of exhibition within four months of the filing of the European patentapplication. The exhibitions recognised are published in the Official Journal.
The certificate, must:(a)

have been issued during the exhibition by the authority responsible
for the protection of industrial property at that exhibition;(b)state that the invention was exhibited at the exhibition;(c)state the opening date of the exhibition and the date of the first
disclosure, if different from the opening date of the exhibition;(d)be accompanied by an identification of the invention, duly
authenticated by the above-mentioned authority.

Art. 55(1)(b) and(2)
Rule 25

3.2 Defects in the certificate or the identification
The Receiving Section acknowledges receipt of the certificate andidentification of the invention. The Receiving Section draws the applicant's
attention to any manifest defects in the certificate or the identification incase it is possible to rectify the deficiencies within the four-month period
allowed. The applicant is notified according to Rule 112(1) if the certificate
or identification is not furnished within the time allowed. The applicant may
request further processing in respect of this loss of rights according toArt. 121 and Rule 135.
4.

Applications relating to biological material

4.1 Biological material; deposit thereof
In accordance with Rule 26(3), "biological material" means any material
containing genetic information capable of reproducing itself or being
reproduced in a biological system.

Rule 26(3)Where in relation to an application concerning biological material anapplicant states having deposited in accordance with Rule 31(1)(a) the
biological material with a depositary institution recognised for the purposesof Rules 31 and 34, the applicant must, if such information is not containedin the application as filed, submit the name of the depositary institution andthe accession number of the culture deposit and, where the biologicalmaterial has been deposited by a person other than the applicant, thename and address of the depositor, within whichever of the following
periods is the first to expire:

Rule 31(1)(c) and(d)Rule 31(2)(i)

Rule 31(2)(a)within a period of sixteen months of the date of filing of the European
patent application or the date of priority, this time limit being deemed
to have been met if the information is submitted before completion ofPart A – Chapter IV-16

Guidelines for Examination in the EPO

March 2023

the technical preparations for publication of the European patentapplication;
Rule 31(2)(b)(ii)

if a request for early publication of the application according toArt. 93(1)(b) is submitted, up to the date of such submission; orRule 31(2)(c)(iii)

if it is communicated that a right to inspection of the files pursuant toArt. 128(2) exists, within one month of such communication.

Art. 83

The above time limit according to Rule 31(2) is excluded from further
processing by Rule 135(2). Furthermore, Art. 122 is also not applicable,
because a lack of disclosure cannot be remedied by way ofre-establishment under Art. 122 (see the notice from the EPO dated
7 July 2010, OJ EPO 2010, 498).

Rule 31(1)(d)Moreover, when the depositor and applicant are not identical, the sametime limit applies for submitting a document satisfying the EPO that thedepositor has authorised the applicant to refer to the deposited biologicalmaterial in the application and has given unreserved and irrevocableconsent to the deposited material being made available to the public in
accordance with Rule 33(1) and (2) or Rule 32(1). The depositor's
authorisation for the applicant to refer to the deposit and the consent to thematerial being made available to the public must have existed as from thefiling date of the application in question. For a recommended wording forthis declaration, see paragraph 3.5 of the above-mentioned notice from the
EPO. For Euro-PCT applications, the document referred to above must be
provided to the International Bureau before completion of the technicalpreparations for international publication (see the notice from the EPO
dated 7 July 2010, OJ EPO 2010, 498, points II.7 to II.8).
Note, however, that where the depositor is one of several applicants the
document referred to in Rule 31(1)(d) is not required (see theabove-mentioned notice).

Rule 33(6)The depositary institution must be one appearing on the list of depositary
institutions recognised for the purposes of Rules 31 to 34, as published in
the Official Journal of the EPO. This list includes the depositary institutions,especially the International Depositary Authorities under the Budapest
Treaty. An up-to-date list is regularly published in the Official Journal.
The applicant is strongly recommended to file the deposit receipt issued by
the depositary institution with the EPO since this document indicates inparticular the depositor and shows the information required under
Rule 31(1)(a) and (c). This information enables the EPO to certify any
requests for the issuance of a sample (see A-IV, 4.2 and A-IV, 4.4) and theexamining division to establish whether the application satisfies therequirements under Article Art. 83 (see also F-III, 6.2 and F-III, 6.3). A
deposit receipt must be filed for each sample of biological material
disclosed in the application and deposited under the Budapest Treaty forthe purposes of Rule 31 EPC. The deposit receipt may be filed as long as
proceedings before the EPO are pending.

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Guidelines for Examination in the EPO

4.1.1 New deposit of biological material
If biological material deposited according to Rule 31 ceases to be available
from the recognised depositary institution, an interruption in availability shallbe deemed not to have occurred if:(i)a new deposit of that material is made in accordance with the
Budapest Treaty(ii)

a copy of the receipt of that new deposit issued by the depositary
institution is forwarded to the EPO within four months of the date of
the new deposit, stating the number of the European patentapplication or patent.

The non-availability may occur because, for example:(a)the material has degraded such that it is no longer viable, or(b)

the authority with which the original deposit was made no longer
qualifies for that kind of material, either under the Budapest Treaty or
under bilateral agreements with the EPO.

In either case (a) or (b) above, a new deposit must be made within threemonths of the depositor's being notified of the non-availability of theorganism by the depositary institution (Art. 4(1)(d) Budapest Treaty). This issubject to the exception, where:–

the non-availability of the deposit is for the above reason (b), and–the depositor does not receive the above notification from thedepositary institution within six months after the date on which it ispublished by the International Bureau that the depositary institution is
no longer qualified in respect of the biological material in question.

In this exceptional case, the new deposit must be made within threemonths from the date of the said publication by the International Bureau(Art. 4(1)(e) Budapest Treaty).
If, however, the original deposit was not made under the Budapest Treaty,
but rather at a depositary institution recognised by the EPO by virtue of abilateral agreement, the above-mentioned six-month period is calculated
from the date when the EPO publishes the fact that the depositary
institution in question is no longer qualified to accept deposits of thebiological material in question under that bilateral agreement.
4.1.2 The application was filed by reference to a previously filed
application
Where the application was filed by reference to a previously filed
application in accordance with the procedures described in A-II, 4.1.3.1 andthe previously filed application referred to already satisfied therequirements of Rule 31(1)(b) and (c) on its date of filing, theserequirements will also be satisfied in respect of the European application.

Part A – Chapter IV-17

Rule 34

Part A – Chapter IV-18

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March 2023

If the information on the deposited biological material present in thepreviously filed application as filed does not satisfy Rule 31(1)(c), the EPO
will not know this until the applicant files the certified copy and any required
translation of the previously filed application (at the latest within two monthsof the date of filing – Rule 40(3)). Even where the certified copy and any
translation required are filed up to two months from the date of filing, if therequirements of Rule 31(1)(c) are not satisfied, the time limit for rectificationof this deficiency according to Rule 31(2) is unaffected (see A-IV, 4.2).

Art. 97(2)Rule 31
Art. 83

4.2 Missing information; notification
When the Receiving Section notices that the information required under
Rule 31(1)(c) (indication of the depositary institution and the accession
number of the culture deposit) or the information and the document referred
to in Rule 31(1)(d) (authorisation to refer to the deposit and the consent to it
being made available) is not contained in or has not yet been submittedwith the application, it should notify the applicant of this fact as thisinformation can only be validly submitted within the time limits specified inRule 31(2). In the case of missing information pursuant to Rule 31(1)(c), thedeposit must be identified in the patent application as filed in such a waythat the later submitted accession number can be traced back without
ambiguity. This can normally be done by indicating the identificationreference given by the depositor within the meaning of Rule 6.1(a)(iv) of the
Budapest Treaty (see G 2/93). Where the depositary institution and/or theaccession number is/are missing in the application on the date of filing but
the applicant provides the information within the applicable time limit(Rule 31(2)), the missing information about the depositary institution and/or
the accession number is published on the front page of the published
European patent application (see A-VI, 1.3).
The applicant is also informed when a deposit with a recognised depositary
institution is referred to but no receipt from the depositary institution has
been filed (the applicant is advised to provide this receipt when filing theapplication, if possible – see the notice from the EPO dated 7 July 2010,
OJ EPO 2010, 498). Filing the receipt is an essential requirement, among
other things, for identifying the depositor, whose name needs to beestablished before the EPO may certify a third party's request for theissuance of a sample of the deposited material (see also A-IV, 4.1). Any
further action, i.e. establishing whether the information available satisfies
the requirement of sufficiency of disclosure, is a matter for the examining
division. See also F-III, 6, in particular F-III, 6.3(ii), as regards theexamining division's treatment of applications relating to biological material.
If the examining division is of the opinion that the invention is not sufficiently
disclosed due to a lack of information concerning the biological material
that constitutes the subject of the invention, it may refuse the European
patent application (see F-III, 3). The time limit according to Rule 31(2) for
supplying the information required by Rule 31(1)(c) and (d) is excluded
from further processing by Rule 135(2).

Rule 32(1)4.3 Availability of deposited biological material to expert only
Under Rule 32(1)(a) and (b), until the date on which the technicalpreparations for publication of the application are deemed to have been
completed, the applicant may inform the EPO that, until the publication ofMarch 2023

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Part A – Chapter IV-19

the mention of the grant of the European patent or, where applicable, fortwenty years from the date of filing if the application has been refused orwithdrawn or is deemed to be withdrawn, the availability referred to inRule 33 is to be effected only by the issue of a sample to an independent
expert nominated by the requester.
The above communication must take the form of a written declaration
addressed to the EPO. This declaration may not be contained in thedescription and the claims of the European patent application, but may be
given in the appropriate section of the request for grant form
(EPO Form 1001).
If the declaration is admissible, it is mentioned on the front page when theEuropean patent application is published (see also A-VI, 1.3).
For Euro-PCT applications published in the international phase in an official
language of the EPO, the applicant must request the expert solution to theInternational Bureau before completion of the technical preparations forinternational publication, preferably using Form PCT/RO/134 (see thenotice from the EPO dated 7 July 2010, OJ EPO 2010, 498). For Euro-PCT
applications not published in the international phase in an official languageof the EPO, the applicant may request the expert solution under Rule 32(1)before completion of the technical preparations for publication of thetranslation of the international application required under Rule 159(1)(a)(see the above-mentioned notice from the EPO).
If the applicant duly informs the EPO under Rule 32(1), the biologicalmaterial is issued only to an independent expert nominated by therequester. The requirements and obligations applying to experts are laid
down by the President of the EPO and are deemed to be fulfilled by signing
the relevant declaration on a dedicated form provided by the EPO (see thedecision of the President of the EPO dated 10 July 2017,
OJ EPO 2017, A60, and the notice from the EPO dated 10 July 2017,
OJ EPO 2017, A61). Expert nominations must be accompanied by adeclaration whereby the experts undertake to comply with the pertinent
requirements and obligations and that they know of no circumstances
which might give rise to justified doubts as to their independence or whichmight conflict in any other way with their function as expert.
4.4 Requests for samples of biological material
As from the date of publication of a European patent application relating tobiological material, the biological material deposited in accordance with
Rule 31 will be made available on request to any person having the right toinspect the files (see A-XI, 1). Such availability will be effected by the issue
of a sample to the person making the request or, where the applicant has
so requested, to an expert nominated by the requester (see A-IV, 4.3). The
EPO makes available on its website the forms to be used for obtaining
samples of biological material deposited under the Budapest Treaty which
the EPO is asked to certify under Rule 33(4).
The EPO's certification of the request signals to the depositary institution
that, based on its verification of the status of the application/patent and theRule 32(2)Rule 33

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March 2023

related data in the EPO records, it may issue a sample of the biologicalmaterial to the requester or the expert, as applicable. The EPO is exemptedfrom verifying and assessing the expert's suitability and independence(OJ EPO 2017, A60).
After certification, the EPO will send the request to the depositary institution
and copies to the applicant or proprietor of the European patent and to thecertified party. It is up to the certified party to pay the fees requested by therecognised depositary institution direct to them.

Rule 57(j)Rule 30(1)Rule 30(2)Art. 123(2)5. Applications relating to nucleotide and amino acid sequences
If nucleotide and amino acid sequences within the meaning of Rule 30(1)are disclosed in the European patent application, they are to be
represented in a sequence listing which complies with WIPO
Standard ST.26 conforms to the applicable WIPO standard. Eachnucleotide or amino acid sequence which extends over the minimum length
as defined in the standard and which is disclosed in the application
documents (including drawings) needs to be listed in the sequence listing,even if the sequence is only a fragment of another disclosed sequence.
The sequence listing should, where it is filed together with the application,
be placed at the end of the application. The sequence listing must be filedin electronic form, i.e. in XML format as required under WIPO
Standard ST.26. Where the European patent application is filed online, theelectronic sequence listing in the required format is to be attached. The
sequence listing must not be filed on paper or in PDF format. However, if it
is, the sequence listing on paper or in PDF format must be identical to thatin electronic format. In this case, the applicant or the appointed
representative must submit a statement of identity, even though thesequence listing on paper or in PDF format will be disregarded in thefurther procedure. Nonetheless, if two or more sequence listings are filed
on the filing date, only the standard-compliant sequence listing will be usedas the basis for the search. See the decision of the President of the EPO
dated
28 April 2011,
9 December
2021,
OJ EPO 2021, A96,
OJ EPO 2011, 372, and the notice from the EPO dated 18 October 2013,
9 December 2021, OJ EPO 2021, A97 OJ EPO 2013, 542.
Attention is drawn to new WIPO Standard ST.26 for sequence listings thatwill apply to applications filed on and after 1 July 2022. Detailed informationon the changes in practice required by this new standard will be publishedin the Official Journal of the EPO well in advance.
Where a sequence listing is filed or corrected after the filing date, theapplicant is required to submit a statement that the sequence listing so filed
or corrected does not include matter which goes beyond the content of theapplication as filed. Sequence Standard-compliant sequence listings filed
subsequent to the date of filing, i.e. in reply to the invitation under
Rule 30(3), are not part of the description and, therefore, not published with
the European patent application. Whenever a sequence listing that is partof the description is corrected or amended, a complete new sequencelisting must be filed. The corrected or amended sequence listing mustcomply with the applicable WIPO standard, which depends on theapplication's date of filing. For applications filed on or after 1 July 2022,

March 2023

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Part A – Chapter IV-21

sequence listings must comply with WIPO Standard ST.26. For applications
filed before that date, the sequence listing must comply with WIPO
Standard ST.25.
For applications referring to sequences which belong to the prior art
see F-II, 6.1.
For the purposes of publication and file inspection, standard-compliant
sequence listings submitted on the date of filing in TXT format areconverted by the EPO. If, due to its excessive volume, a sequence listing
cannot be included in the electronic file in converted form, the electronic file
will refer to this technical limitation and to the option of obtaining a copy ofthe sequence listing in electronic form on written request (see the Noticefrom the EPO dated 18 October 2013, OJ EPO 2013, 542, and theDecision of the President of the EPO dated 28 April 2011,
OJ EPO 2011, 372).
The Receiving Section will inform the applicant of any deficiencies as to thesequence listing or as to the necessary statements and issue an invitation
to remedy the deficiencies and pay a late furnishing fee within anon-extendable period of two months. The late furnishing fee compensates
for the administrative efforts of issuing the communication under Rule 30(3)and delaying the transmission of the application to the search division until
after availability of a standard-compliant sequence listing. The latefurnishing fee therefore does not have to be paid if the standard-compliant
sequence listing is filed after the date of filing but before the Receiving
Section has issued the communication under Rule 30(3). If therequirements of Rule 30 in conjunction with the decision of the President of
the EPO dated 28 April 2011 9 December 2021 are not complied with indue time, where appropriate following the invitation to do so from theReceiving Section, which includes the payment of the late furnishing fee,
the application will be refused according to Rule 30(3). This also applies if asequence listing is subsequently filed in the required electronic format but
still contains deficiencies with respect to the Standard. Such deficiencies
will not prompt the EPO to issue another invitation under Rule 30(3),triggering a new period of two months, unless the previous invitation did not
draw the applicant's attention to such remaining deficiencies (see J 7/11).

Art. 90(3)Rule 30(3)The applicant may request further processing of the application (seeE-VIII, 2).

Art. 121
Rule 135

5.1 Sequence information filed under Rule 56
The possibility of filing a sequence listing as a missing part of thedescription is, as a rule, limited to very rare conditions. The principle ofRule 56 is that it must be obvious from the application documents as filedthat part of the description appears to be missing (see A-II, 5.1). Very few
cases fulfil the conditions for parts of the description being missing in theform of a sequence listing. Rule 56, for example, is applicable where thedescription quotes sequence identifier numbers (SEQ ID Nos.) but thesequences are not further disclosed in the description. Although in suchcase the disclosure is missing in the form of a sequence listing, theReceiving Section is not expected to identify such omissions as qualifying

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for Rule 56, and according to Rule 56(1) the applicant may not invoke thenon-issuance of a communication under Rule 56(1) or (2). However,applicants may file the missing parts of the description relating tosequences of their own motion within two months of the date of filingaccording to Rule 56(2) (see A-II, 5.2).
According to Rule 57(j), any late-filed sequence information will be checked
for compliance with Rule 30(1) in conjunction with the rules laid down by
the President of the EPO.
If the late-filed sequence information or sequence listing does not conformto the requirements of Rule 30(1) in conjunction with the rules laid down by
the President of the EPO, then the communication under Rule 30(3) is sent
to the applicant (see A-IV, 5).
If, on the other hand, the late-filed sequence information includes a
standard-compliant sequence listing according to the requirements ofRule 30(1), no Rule 30(3) communication will be sent. In such a case thelate furnishing fee under Rule 30(3) does not fall due.
The above applies regardless of whether or not the late-filed parts of thedescription result in a change of the date of filing (see A-II, 5.3) or if thelate-filed missing parts can be based on the claimed priority, allowing theoriginal date of filing to be maintained (see A-II, 5.4). If, however, thelate-filed parts of the description result in a change of the filing date, any
communication according to Rule 30(3) which might be required will only besent after the one-month period for the withdrawal of the late-filed parts has
expired without the applicant having withdrawn them (see A-II, 5.5).
In the case where the applicant inserts a sequence listing into thedescription as a late-filed part of the description according to Rule 56, thesequence listing so added, whether standard-compliant or not, isconsidered part of the description on the date of filing (regardless ofwhether or not this has changed) and, consequently, is published with theEuropean patent application.
The rare possibility to file a sequence listing as a late-filed missing part
must, however, be clearly differentiated from those cases where theapplication as filed contains:–the complete sequence information in the body of the description, but
no standard-compliant sequence listing;–a sequence listing which does not contain all sequences disclosed in
the application documents;–

a sequence listing that does not comply with the applicable WIPO
standard.

In such cases, Rule 30 applies and the applicant will be invited under
Rule 30(3) to file a standard-compliant sequence listing.

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Guidelines for Examination in the EPO

5.2 Sequence information filed under Rule 56a
Erroneously filed sequence listings may be corrected under Rule 56a(see A-II, 6).
5.3 5.2 Sequence listings of an application filed by reference to apreviously filed application
Where the application is filed by reference to a previously filed application(see A-II, 4.1.3.1), and that previously filed application contained sequencelistings on its date of filing, then those sequence listings form part of theapplication as originally filed. This is subject to the exception that, where
the sequences only appear in the claims and not in the description or
drawings of the previously filed application, and the applicant did notinclude the claims of the previously filed application in the reference, thenthose sequences are not included in the European application as originally
filed and a sequence listing must be filed separately. If in such a case thesequence listing is filed on the date of filing of the European application, it
is published with the European patent application.
A sequence listing complying with the applicable WIPO standard that was
filed in the previously filed application after the date of filing is not part ofthe description (Rule 30(2)) and, therefore, not included in the reference tothe description and any drawings under Rule 40(1)(c). Consequently, theapplicant must file a standard-compliant sequence listing for the European
patent application separately.
Where the previously filed application is not available to the EPO, it will not
be possible to carry out the check according to Rule 57(j) on thecompliance of the sequence listing with Rule 30(1) until the applicant files
the certified copy and any translation required, which must be done within
two months of the date of filing (Rule 40(3)). If, after receipt of the certified
copy and translation, where applicable, the examination by the Receiving
Section reveals that the sequence listing contained therein does not comply
with Rule 30(1) in conjunction with the rules laid down by the President of
the EPO, the European Patent Office will send a communication according
to Rule 30(3) inviting the applicant to correct any deficiencies and pay thelate furnishing fee (see A-IV, 5).
If the previously filed application referred to is a European application or aninternational application filed with the EPO as receiving Office, and thesequence listing contained therein satisfied the requirements of Rule 30 orRule 5.2 PCT on its date of filing then all the requirements of Rule 30(1)are satisfied automatically on the date of filing of the European application
filed by reference to this application. If the sequence listing of the previously
filed application does not comply with WIPO Standard ST.26, for instancebecause it was filed before the entry into force of the new standard, an
invitation will be issued under Rule 30(3) to submit a standard-compliant
sequence listing.
If the previously filed application was filed with any other office, theapplicant will have to ensure that all the requirements of Rule 30(1), in
conjunction with the rules laid down by the President of the EPO, are met.
In particular, the applicant must consider that any electronic

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March 2023

standard-compliant sequence listing filed on the date of filing of thepreviously filed application will in most cases not be part of the certified
copy under Rule 40(3) issued by the filing office. : due to technicallimitations, the certified copy received by the EPO will in most cases
contain a converted sequence listing which is not standard-compliant.
Hence, This means that if the previously filed application referred to is not aEuropean patent application or an international application filed with the
EPO as receiving Office, even where it contains a written sequence listing
conforming to the applicable WIPO standard, the applicant will still have toprovide a standard-compliant sequence listing to the EPO and, whereapplicable, a statement that the information in electronic form is identical to
the written sequence listing, in order to satisfy the requirements ofRule 30(1) in conjunction with the rules laid down by the President of the
EPO. The same applies where the previously filed application was aEuropean application or an international application filed with the EPO as
receiving Office, but where one or more of the elements required to satisfy
the requirements of Rule 30(1) or Rule 5.2 PCT in conjunction with theapplicable WIPO standard Standard ST.26 were not present on the date offiling. If this is not the case, the procedure in A-IV, 5 will be followed (acommunication under Rule 30(3) will be sent).
5.4 5.3 Sequence listings of a divisional application
As an independent European patent application, a divisional applicationmust also satisfy the requirements of Rule 30 in conjunction with thedecision of the President of the EPO dated 9 December 2021 concerning
the filing of sequence listings, OJ EPO 2021, A96 28 April 2011 on the filingof sequence listings, OJ EPO 2011, 372 (see G 1/05, reasons 3.1). Without
prejudice to the requirements of Art. 76(1), second sentence, if a sequencelisting is to form part of the description of the divisional application, it mustbe submitted together with the other documents making up the divisional
application, unless reference is made to a previously filed application
containing a sequence listing as part of the application (Rule 40(1)(c)).
However, an applicant who has filed a standard an ST.26-compliant
sequence listing under Rule 30 with regard to the earlier application (parent
application) is exempted from having to submit said sequence listing if it isintended to be used for search purposes only (i.e. not as part of thedescription) in respect of the divisional application. : the check box insection 38.3 on Form 1001 is preselected. This enables the EPO to add a
copy of the standard-compliant sequence listing filed for the earlier (parent)
application to the dossier of the divisional application in XML format and forsearch purposes only (see OJ EPO 2021, A97, point 18). However, since
the content of the disclosure of the invention is the responsibility of theapplicants, any sequence listing which is to form part of the description
must be filed by the applicant. The sequence listing of the earlier
application is, thus, not automatically added to the dossier of the divisional
application if–

the applicant files an ST.26-compliant sequence listing as part of thedivisional application's description; or if–

the sequence listing available in the earlier application does notcomply with WIPO Standard ST.26.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter IV-25

At the request of the applicant when filing the divisional application(EPO Form 1001, Box 38.3) or in reply to a deficiency communication
pursuant to Rule 30(3), the EPO will add a copy of the standard-compliant
sequence listing filed in conjunction with the earlier application for search
purposes only (i.e. not as part of the application) to the dossier on thedivisional application (OJ EPO 2013, 542, see also A-IV, 5).
6. Conversion into a national application
The central industrial property office of a contracting state must apply theprocedure for the grant of a national patent or another protective rightprovided for by the legislation of this state at the request of the applicant foror the proprietor of the European patent under the circumstances specified
in Art. 135(1). If the request for conversion is not filed within thethree-month period specified in Rule 155(1), the effect referred to in Art. 66
will lapse (i.e. the European application will cease to be equivalent to aregular national filing in the designated contracting states).

Art. 135

The request for conversion is to be made to the EPO, except where theapplication is deemed withdrawn pursuant to Art. 77(3); in this case therequest is filed with the central industrial property office with which theapplication was filed. That office shall, subject to the provisions of national
security, transmit the request directly to the central industrial property
offices of the contracting states specified therein, together with a copy ofthe file relating to the European patent application. If the central industrial
property office with which the application was filed does not transmit therequest before the expiry of twenty months from the filing date, or if
claimed, from the priority date, then Art. 135(4) applies (i.e. the effect ofArt. 66 lapses).

Art. 135(2)Rule 155(2) and(3)

If a request for conversion is filed with the EPO, it must specify thecontracting states in which the application of national procedures is desired
and be accompanied by a conversion fee. In the absence of the fee theapplicant or proprietor is notified that the request will not be deemed to be
filed until the fee is paid. The EPO transmits the request to the central
industrial property offices of the specified contracting states accompanied
by a copy of the files relating to the European application or patent.

Art. 135(3)Rule 155(2)March 2023

Guidelines for Examination in the EPO

Part A – Chapter V-1

Chapter V – Communications concerning formal
deficiencies; amendment of application;correction of errors
1. Communications concerning formal deficiencies
After a formalities examination, the Receiving Section or, whereappropriate, the examining division issues one or more communications to
the applicant if the application is found to be formally defective, identifying
all the particular requirements of the EPC which the application does notsatisfy and, in the case of deficiencies which can be corrected, will invite
the applicant to correct such deficiencies within specified periods(see A-III, 16). For the exceptional case where communications do notdetail all deficiencies, see A-III, 16.1. The applicant will be notified of theconsequences, e.g. application deemed withdrawn, priority right lost, which
result from the deficiencies or failure to take appropriate action within duetime.
In general, depending on the deficiency in question, either:(i)a time limit will be specified by the EPO, subject to Rule 132, formeeting the objection, e.g. an invitation to supply the priority
document or priority file number under Rule 59, or(ii)

a fixed time limit will apply, e.g. two months for correcting
deficiencies under Rule 58.

For further details see E-VIII, 1. If a deficiency is not rectified within duetime, then the legal effects that are envisaged will apply.
2.

Amendment of application

2.1 Filing of amendments
Prior to the receipt of the European search report the applicant may amend
the application only if invited by the Receiving Section to remedy particular
deficiencies, including the case where no claims are present in theapplication as originally filed, wherein the applicant must rectify thisdeficiency by filing a set of claims in response to a communicationaccording to Rule 58 (see A-III, 15). After receipt of the European search
report and before receipt of a first communication from the examining
division, i.e. also during the period in which the application may still be with
the Receiving Section, applicants may of their own volition amend thedescription, claims and drawings (Rule 137(2)). Furthermore, where asearch opinion accompanies the search report under Rule 62(1), theapplicant must respond to it by filing observations and/or amendments(see B-XI, 8 for details and exceptions to this requirement). However, theEuropean patent application may not be amended in such a way that it
contains subject-matter which extends beyond the content of theapplication as filed (regarding the publication of claims thus amended in
response to the European search report under Rule 137(2), see also
A-VI, 1.3).

Rule 58
Rule 137(1) and(2)
Art. 123(1) and(2)
Rule 68(4)Part A – Chapter V-2

Rule 58
Rule 137(1)Guidelines for Examination in the EPO

March 2023

2.2 Examination of amendments as to formalities
The Receiving Section examines amendments, filed before the receipt of
the search report, for formal requirements. Such amendments must remedy
the deficiencies notified by the Receiving Section. The description, claims
and drawings may be amended only to an extent sufficient to remedy thedisclosed deficiencies and this requirement makes it necessary for the
Receiving Section to compare any amended description, claims anddrawings with those originally filed. Where, for example, a fresh description
is filed to replace an earlier description that was objected to on account of
non-compliance with the physical requirements, the Receiving Section must
compare both descriptions and the objection is not met until there is identityof wording. However, identity of wording with the application documents asoriginally filed is not a requirement for amendments rectifying the following
deficiencies:(i)filing at least one claim according to Rule 58, where no claims
existed on filing (see A-III, 15) (these claims must still satisfy therequirements of Art. 123(2), but this check is carried out by thesearch and examining divisions);(ii)

the filing of missing parts of the description, or missing drawings
according to Rule 56 (see A-II, 5).

Amendments which extend beyond the remedying of deficiencies andwhich are filed prior to receipt of the search report may be taken into
consideration in the subsequent procedure provided that, on receipt of thesearch report, the applicants declare that they wish them to be maintained.
Examination as to formalities of amendments filed after the receipt of thesearch report and before the application is transferred to the examining
division is the responsibility of the Receiving Section.
The procedure for effecting amendments is dealt with in H-III, 2.

Rule 139,
1st sentence

3. Correction of errors in documents filed with the EPO
Linguistic errors, errors of transcription and mistakes in any document filedwith the EPO may be corrected on request under Rule 139, first sentence.
Requests for such corrections may be made at any time, provided thatproceedings are pending before the EPO (see J 42/92). However, if theerror to be corrected concerns items which third parties might expect to beable to take at face value, so that their rights would be jeopardised bycorrection, the request for correction must be filed as soon as possible, andat least in time that it could be incorporated in the publication of theEuropean patent application. With regard to correction of priority claims,
specific provisions apply, with a view to protecting the interests of third
parties, which allow the applicant to correct priority claims and lay down atime limit for doing so (see Rule 52(3) and A-III, 6.5.2). This ensures that
corrected priority information is available when the application is published.
The applicant can only correct the priority claim later than this date, inparticular after publication of the application, under certain limited
circumstances, where it is apparent on the face of the published applicationthat a mistake has been made. See J 2/92, J 3/91 and J 6/91 as well asMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter V-3

J 11/92 and J 7/94. Each of these decisions indicated situations under
EPC 1973 in which the correction of priority data too late for a warning tobe published with the application could be allowed. These same situations
apply mutatis mutandis under EPC 2000 to the acceptance of requests tocorrect priority claims after the end of the time limit according to Rule 52(3).
Regarding correction of the date indicated for the previous filing, see also
A-III, 6.6.
After expiry of the two-month time limit for correcting erroneous (parts) of
the application documents under Rule 56a(1) or 56a(3) (see A-II, 6), thecorrection of errors in application documents is governed by Rule 139,
second sentence. The allowability of such corrections under Rule 139 is
subject to strict requirements.

Rule 56a

If the error is in the description, claims or drawings, the correction must be
obvious in the sense that it is immediately evident that nothing else could
have been intended than what is offered as the correction. Such a
correction may be effected only within the limits of what a skilled person
would derive directly and unambiguously, using common generalknowledge, and seen objectively and relative to the date of filing, from thewhole of the documents as filed (see G 3/89 and G 11/91; see also
H-VI, 2.2.1). The documents to be considered in assessing whether or not
the correction is allowable are those of the application as originally filed,including any late-filed missing parts of the description, or missing drawings
filed according to Rule 56, or application documents or parts correctedaccording to Rule 56a, regardless of whether this resulted in a change ofthe date of filing (see A-II, 5 et seq and A-II, 6 et seq). However, claims filed
after the filing date in response to an invitation according to Rule 58(see A-III, 15) cannot be used in assessing the allowability of the request.

Rule 139,
2nd sentence

It is in particular not allowable under Rule 139 to replace the complete
application documents (i.e. description, claims and drawings) by otherdocuments which the applicant had intended to file with the request for
grant (see G 2/95). The examining division decides on the request forcorrection. If a request for correction is pending before termination of thetechnical preparations for publication, a reference to the request is
published on the front page.
In the case of electronic filing of European patent applications, the technicaldocuments (description, claims, abstract and drawings) may be attached intheir original format, provided this format is one listed in the decision of the
President of the EPO dated 14 May 2021, OJ EPO 2021, A42. Pursuant tothis decision, these technical documents may also be attached in a format
other than those listed, provided that the applicant informs the EPO, whenfiling the application, where the EPO can reasonably acquire thecorresponding software. If, on the date of filing, the documents making up
the European patent application are available both in the format provided
by the EPO Online Filing software and in another admissible format inaccordance with the above-mentioned decision, the documents in the latterformat can also be used in order to determine whether a request forcorrection of the description, claims, or drawings is allowable.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter VI-1

Chapter VI – Publication of application; request
for examination and transmissionof the dossier to examining division
1.

Publication of application

1.1 Date of publication
The application is published as soon as possible after the expiry of a periodof eighteen months from the date of filing or, where priority is claimed, fromthe earliest priority date. Upon request from the applicant, the application
may, however, be published before that date, provided that the filing andsearch fees have been validly paid and there are no formal deficiencies in
the application documents (see A-III, 1.1 and 16). If the application is inorder for grant before expiry of the eighteen-month period, see C-IV, 7.1
and C-VI, 3.

Art. 93(1)If the applicant abandons the priority date, then the publication is deferredprovided that the notification of the abandonment is received by the EPO
before the termination of the technical preparations for publication. These
preparations are considered terminated at the end of the day five weeks
before the end of the eighteenth month from the date of priority, if priority isclaimed, or from the date of filing, if the priority is abandoned or if no priority
is claimed (see the decision of the President of the EPO dated
12 July 2007, Special edition No. 3, OJ EPO 2007, D.1). The applicant is
informed about the termination of the technical preparation for publication,
and also of the publication number and intended publication date. Where
the notification of abandonment of the priority is received after that time,
publication, if it has not already taken place, takes place as if the priority
date applied, although a notice as to the abandonment of the priority willappear in the European Patent Bulletin (see F-VI, 3.5). The sameprocedure is followed when the priority right is lost under Art. 90(5)(see A-III, 6.10).
1.2 No publication; preventing publication
The application is not published if it has been finally refused or deemed
withdrawn or withdrawn before the termination of the technical preparations
for publication (see A-VI, 1.1). These preparations are considered
terminated at the end of the day five weeks before expiry of a period ofeighteen months from the date of filing or priority (see the decision of the
President of the EPO dated 12 July 2007, Special edition No. 3,
OJ EPO 2007, D.1). The application is, however, published if, upon
termination of the technical preparations for publication, a request for adecision under Rule 112(2) has been received but no final decision has yet
been taken (see OJ EPO 1990, 455) or if there is a pending request forre-establishment of rights under Art. 122 and Rule 136(1).
If after termination of the technical preparations the application is withdrawn
to avoid publication, non-publication cannot be guaranteed. The However,the EPO will endeavour however try (in accordance with the principles of
J 5/81) to prevent publication on a case-by-case basis if the stage reached

Rule 67(2)Part A – Chapter VI-2

Guidelines for Examination in the EPO

March 2023

in the publication procedure permits this without undue effort (see thenotice from the EPO dated 25 April 2006, OJ EPO 2006, 406).
Rule 15

Rule 68(1), (3)and (4)Rule 20
Rule 32(1)The application may be withdrawn by means of a signed declaration, whichshould be unqualified and unambiguous (see J 11/80). EPO Form 1018,
available for download from epo.org free of charge, ensures that thedeclaration fulfils the requirement to be unambiguous, also in respect ofany conditions for withdrawal. Using this form for withdrawing the European
patent application is therefore highly recommended (see also the noticefrom the EPO dated 12 August 2019, OJ EPO 2019, A79). The applicant isbound by an effective declaration of withdrawal (see C-V, 11), but may
make it subject to the proviso that the content of the application is not madeknown to the public. This takes into account the procedural peculiarity thatthe applicant who makes the declaration of withdrawal later than five weeks
before the date of publication cannot know whether publication can still be
prevented. However, neither the application nor the designation of acontracting state may be withdrawn as from the time a third party provesthat they have initiated proceedings concerning entitlement and up to thedate on which the EPO resumes the proceedings for grant (see also
E-VIII, 8).
1.3 Content of the publication
The publication must contain the description, the claims and any drawings
as filed, including any sequence listing filed on the date of filing, andincluding any late-filed missing parts of the description, or missing drawings
filed according to Rule 56 (see A-II, 5), or correct (parts) of the application
documents according to Rule 56a (see A-II, 6 and the notice from the EPO
dated 23 June 2022, OJ EPO 2022, A71), provided that the latter were notsubsequently withdrawn (see A-II, 5.5), and . Where the procedure under
Rule 56 or 56a is not finalised at the point in time when the technicalpreparations for publication are terminated, a correction of the publication
will be initiated as soon as the date of filing and content of the application
are finally determined. The publication will also specify, where possible, theperson(s) designated as the inventor(s). If the claims were filed after thedate of filing according to the procedures explained in A-III, 15, this will be
indicated when the application is published (Rule 68(4)).
The publication also indicates as designated contracting states all states
party to the EPC on the date the application was filed, unless individualstates have been withdrawn by the applicant before the termination of thetechnical preparations for publication. When a European application filed
before 1 April 2009 is published, the states for which protection is actuallysought may not yet be known, because the time limit under Rule 39(1) for
paying the designation fees is still running. Those definitively designated –through actual payment of designation fees – are announced later in theRegister of European Patents and the European Patent Bulletin (seeInformation from the EPO, OJ EPO 1997, 479). For European divisional
applications, see A-IV, 1.3.4.

Rule 68(2) and(4)
Rule 66

The publication also contains any new or amended claims filed by theapplicant under Rule 137(2), together with the European search report andthe abstract determined by the search division if the latter are available

March 2023

Guidelines for Examination in the EPO

Part A – Chapter VI-3

before termination of the technical preparations for publication. Otherwise
the abstract filed by the applicant is published. The search opinion is not
published with the European search report (Rule 62(2)). It is however open
to file inspection (see A-XI, 2.1). If the EPO has received a communicationfrom the applicant under Rule 32(1) ("expert solution"), this too must be
mentioned (see the notice from the EPO dated 7 July 2010,
OJ EPO 2010, 498). Further data may be included at the discretion of the
President of the EPO.
With the exception of documents which have to be translated, originals of
documents filed are used for publication purposes where these documents
meet the physical requirements referred to in A-VIII, 2; otherwise, theamended or replacement documents meeting these requirements are used.
Application documents that are of such bad quality that any improvement
would result in an extension of the subject-matter as originally filed are
published as filed. Prohibited matter may be omitted from the documents
before publication, the place and number of words or drawings omitted
being indicated (see A-III, 8.1 and A-III, 8.2). Documents incorporated in anelectronic file are deemed to be originals (Rule 147(3)).
If a request for correction under Rule 139 of errors in the documents filedwith the EPO is allowed, it must be incorporated in the publication. If upon
termination of the technical preparations for publication a decision is still
pending on a request for correction of items which third parties might
expect to be able to take at face value, so that their rights would be
jeopardised by correction, this must be mentioned on the front page of the
publication (see the case law in A-V, 3), as must a request for correction oferrors in the description, claims or drawings (see A-V, 3).

Rule 139

The correction of errors occurring in the process of publication of theEuropean patent application can be requested at any time (see H-VI, 3).
Complete republication of the application will take place where appropriate.
1.4 Publication in electronic form only
All European patent applications, European search reports and European
patent specifications are published in electronic form only, on a publication
server (see the decision of the President of the EPO dated 12 July 2007,
Special edition No. 3, OJ EPO 2007, D.3, and OJ EPO 2005, 126) which isaccessible via the EPO website (epo.org).
1.5 Separate publication of the European search report
If not published with the application, the European search report ispublished separately (also electronically).
2. Request for examination and transmission of the dossier to theexamining division
2.1 Communication
The Receiving Section communicates to the applicant the date on which
the European Patent Bulletin mentions the publication of the European
search report and draws attention to the provisions with regard to therequest for examination as set out in Art. 94(1) and (2) and Rule 70(1). In

Rule 69(1) and(2)

Part A – Chapter VI-4

Guidelines for Examination in the EPO

March 2023

the unlikely event that the communication wrongly specifies a later datethan the date of the mention of the publication, the later date is decisive as
regards the time limit for filing the request for examination (see A-VI, 2.2
and C-II, 1) and also for responding to the search opinion (see B-XI, 8 and
A-VI, 3) unless the error is obvious. In the communication, the applicant isalso informed that the designation fee(s) must be paid within six months ofthe date on which the European Patent Bulletin mentions the publication of
the search report (see A-III, 11.2 and 11.3).
Rule 70a(1)Art. 94(1) and(2)
Rule 70(1)Where the time limit under Rule 70(1) is that within which the applicant
must reply to the search opinion (i.e. where Rule 70(2) does not apply), theinvitation under Rule 70a(1) is sent in a combined communication with thecommunication according to Rule 69(1) (see C-II, 3.3).
2.2 Time limit for filing the request for examination
The request for examination may be filed by the applicant up to the end of
six months after the date on which the European Patent Bulletin mentions
the publication of the European search report. The request for examination
is not deemed to have been filed until the examination fee has been paid(see C-II, 1). If the applicant does not file the request for examination,
including the payment of the examination fee, within the above time limit,
then the procedure explained in A-VI, 2.3 applies.

Art. 78(1)(a)Rule 41(1)The mandatory request for grant form (EPO Form 1001) contains a written
request for examination. To confirm the written request, the applicant only
needs to pay the examination fee within the time limit under Rule 70(1).

Art. 11(a) RFees

Applicants may also pay the examination fee as from the date of filing andprior to receipt of the European search report. In that case the Receiving
Section invites them pursuant to Rule 70(2) to indicate within six months
from the date of the mention of the publication of the search report in theEuropean Patent Bulletin whether they desire to proceed further with theirapplication (see C-II, 1.1). If, after receipt of the European search report,
the applicant decides not to pursue the application and does not react tothe invitation pursuant to Rule 70(2), the application will be deemed
withdrawn pursuant to Rule 70(3), and the examination fee will be refunded
in its entirety (see A-VI, 2.5).

Point 6.1(c) AAD
Point 5.1(c) AAD

If the applicant has filed an automatic debit order, the examination fee will
normally be debited at the end of the six-month period. For cases in which
the applicant wishes the application to be transmitted earlier to theexamining division, see the AAD in Annex A.1 of Supplementary
publication 3, OJ EPO 2022. Supplementary publication 5, OJ EPO 2017.

Rule 70(1)The request for examination may not be withdrawn.
Regarding Euro-PCT applications
see E-IX, 2.1.4 and E-IX, 2.5.2.

Art. 94(2)Rule 112(1)enteringtheEuropeanphase,

2.3 Legal remedy
If the request for examination is not validly filed by paying the examination
fee before expiry of the period under Rule 70(1), the application is deemedMarch 2023

Part A – Chapter VI-5

Guidelines for Examination in the EPO

to be withdrawn and the applicant is notified accordingly. In response to thiscommunication concerning loss of rights, the applicant can request further
processing in accordance with Art. 121 and Rule 135 (see E-VIII, 2).
If the applicants have validly filed a request for examination before theEuropean search report has been transmitted to them, the Receiving
Section invites them according to Rule 70(2) to indicate within six months
from the date of the mention of the publication of the search report in theEuropean Patent Bulletin whether they desire to proceed further with theirapplication. If they fail to respond to this request in time, the application isdeemed to be withdrawn and the applicants are notified accordingly. In thiscase, the applicants may also avail themselves of the legal remedy under
Art. 121 and Rule 135 (further processing of the application). Regarding
reimbursement of the examination fee, see A-VI, 2.2 and A-X, 10.2.3.
C-VI, 3 describes the procedure in respect of a categorical request for
examination, as provided for in Rule 10(4), where the applicant waives theright to the communication according to Rule 70(2).
Regarding Euro-PCT applications
see E-IX, 2.1.3 and E-IX 2.5.2.

enteringtheregional

Rule 70(2) and(3)
Rule 112(1)Art. 121

phase,

2.4 Transmission of the dossier to the examining division
If the Receiving Section finds that the request for examination was filed in
due time, or the desire to proceed further with the application was indicatedin due time (Rule 70(2)), it transmits the application to the examining
division. Otherwise, it will notify the applicant of the loss of rights which has
occurred (see Rule 112(1)).
The dossier as transmitted to the examining division contains the following:(i)all documents filed in relation to the application, including priority
documents, translations and any amendments;(ii)

any certificate filed in relation to display at an exhibition (see A-IV, 3)
and any information furnished under Rule 31 when the application
relates to biological material (see A-IV, 4);(iii)

the European search report, if applicable the search opinion, thecontent of the abstract as drawn up by the search division, and theinternal search note, if any;(iv)

copies of documents cited in the search report, and two copies of the
publication document(s);(v)

the applicant's response to the search opinion (see B-XI, 8) or to the
WO-ISA, supplementary international search report or IPER
prepared by the EPO (see E-IX, 3.2 and E-IX, 3.3.4); and(vi)

all relevant correspondence.

The Receiving Section will direct attention to any aspects of the application
which require urgent attention by the examining division, e.g. any letters

Art. 16
Art. 18(1)Rule 10

Part A – Chapter VI-6

Guidelines for Examination in the EPO

March 2023

which have to be answered before the application is examined in its proper
turn.

Art. 11 RFees

2.5 Refund of examination fee
The examination fee is refunded:(i)in full if the European patent application is withdrawn, refused ordeemed to be withdrawn before substantive examination has begun(Art. 11(a) RFees); or(ii)

at a rate of 50% if the European patent application is withdrawn after
substantive examination has begun and–before expiry of the (extended) time limit for replying to the firstinvitation under Art. 94(3) issued by the examining division
proper or,–

if no such invitation has been issued, before the date of thecommunication under Rule 71(3) (Art. 11(b) RFees).

As concerns (i) above, this applies to all European patent applications
which are withdrawn, refused or deemed to be withdrawn on or after
1 July 2016. As concerns (ii) above, this applies to all European patentapplications for which substantive examination began on or after
1 November 2016 (see the decision of the Administrative Council of
29 June 2016, OJ EPO 2016, A48). For all applications for which
substantive examination began before that date, Art. 11 RFees as in force
before 1 November 2016 continues to apply, which means that there will be
no refund if the application is withdrawn, refused or deemed to bewithdrawn at this stage of proceedings.
Communications under Art. 94(3) "issued by the examining division proper"(see also C-III, 4) are all communications indicating that the application
does not meet the requirements of the EPC and referring to deemed
withdrawal under Art. 94(4) in case the deficiencies are not duly remedied.
These include the following: invitations under Rule 137(4), minutes ofconsultations by phone or in person, accompanied by an invitation to
remedy deficiencies, communications relating to the 'completely contained'
criterion pursuant to Rule 56(3), or summons to oral proceedings pursuant
to Rule 115(1) to which a communication complying with the requirementsof Art. 94(3) and Rule 71(1) is annexed. In contrast, communications
addressing purely formal deficiencies and issued by formalities officers aspart of the duties entrusted to them, even if issued on the basis ofArt. 94(3), do not constitute communications under Art. 94(3) "issued by theexamining division proper". Likewise, communications issued by theexamining division itself on some other legal basis, such as Rule 164(2)(a),Rule 53(3) or Art. 124, have no bearing on the period for a withdrawal
qualifying for the 50% refund (see the notice from the EPO dated
30 June 2016, OJ EPO 2016, A49).
An applicant unsure whether substantive examination has begun andwanting to withdraw the application only if sure to receive the 100% refundMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter VI-7

may make withdrawal contingent upon the refund ("conditional"
withdrawal). The date of the start of examination (C-IV, 7.1) is indicated bymeans of EPO Form 2095 in the public part of the dossier and is thus open
to file inspection in the European Patent Register after publication of thepatent application. If EPO Form 2095 is not on file, substantive examination
is deemed to have started on the date on which the first communicationfrom the examining division proper is issued (e.g. a communication under
Art. 94(3), Rule 71(3) or any other legal basis as mentioned above). Before
publication, the EPO will provide the applicant with the relevant information
upon request, or this information can be accessed electronically via the
My Files service. For more details see OJ EPO 2013, 153.
2.6 Reduction in examination fee
Where applicants having their residence or principal place of businesswithin the territory of a contracting state having an official language otherthan English, French or German and nationals of that state who areresident abroad make use of the options provided for under Art. 14(4), theexamination fee is reduced under certain circumstances (Rule 6(3) to (7) inconjunction with Art. 14(1) RFees) (see A-X, 9.2.1 and 9.2.3).
3. Response to the search opinion
The applicant is required to respond to the search opinion within the time
limit under Rule 70(1) or, if a communication under Rule 70(2) is sent
(see C-II, 1.1), within the time limit under Rule 70(2). If the applicant fails to
respond to the search opinion on time, the application is deemed to bewithdrawn (Rule 70a(3)). For more details see B-XI, 8.

Art. 14(4)Rule 6
Art. 14(1) RFees

Rule 70a

March 2023

Guidelines for Examination in the EPO

Part A – Chapter VII-1

Chapter VII – Languages
1.

Admissible languages on filing

1.1 General
European patent applications can be filed in any language. However, if filed
in a language other than an official language of the EPO (English, Frenchor German), a translation into one of the official languages must be filed
within two months of the date of filing (Rule 6(1)). Although filing in any
language is in principle possible, there may be limitations due to theapplicable national law for applications filed at a central industrial property
office or the competent national authority under Art. 75(1)(b).
In the case of applications filed in "an admissible non-EPO language" (seebelow in A-VII, 3.2), a reduction of the filing fee is allowed for certain
categories of applicants (see A-X, 9.2.1 and A-X, 9.2.2).
1.2 Filing by reference
Where the description is filed by reference to a previously filed application(see A-II, 4.1.3.1) and the latter is not in an official language of the EPO,
the applicant must also file a translation into one of those languages within
two months of the date of filing.
1.3 European divisional applications; Art. 61 applications
European divisional applications must be filed in the language of theproceedings of the earlier (parent) application. Alternatively, if the earlier(parent) application was not in an official language of the EPO, thedivisional application may be filed in the language of the earlier (parent)
application. In this case a translation into the language of the proceedingsof the earlier application must be filed within two months of the filing of thedivisional application.
The same applies to the filing of a new European patent application under
Art. 61(1)(b).
1.4 Invitation to file the translation
Where the translation is not filed in time, the EPO will invite the applicant torectify this deficiency within a non-extendable period of two months. Failure
to file the translation in due time in response to this invitation results in theapplication being deemed to be withdrawn under Art. 14(2), and in this casefurther processing is ruled out (see A-III, 14).
2. Language of the proceedings
The official language of the EPO (English, French or German) in which theapplication is filed, or into which it is subsequently translated, constitutes
the "language of the proceedings". Where the EPO invites the applicant tofile the translation (see A-VII, 1.4), the invitation will be sent by default inEnglish with an update to the language of the proceedings on receipt of thetranslation, if applicable.
The language of the proceedings is the only language used by EPO
departments in written proceedings on that application (see G 4/08).

Art. 14(1) andArt. 14(2)Rule 6(1)Rule 6(3) to (7)Rule 40(3)Rule 36(2)Art. 61(2)Art. 90(3)Rules 57 and 58

Art. 14(3)Part A – Chapter VII-2

Rule 3(2)Guidelines for Examination in the EPO

March 2023

Where European patent applications are filed in one of the official
languages of the EPO, or after they have been translated into one of them,the description, claims and drawings can only be amended in that official
language, which is the language of the proceedings.
Any claims filed after the date of filing will need to be filed in the languageof the proceedings.
Example: If an application is filed without claims in Japanese and is thentranslated into English, the claims will need to be filed in English.
Subsequent amendments to the application will also have to the filed in
English.
3. Derogations from the language of the proceedings in written
proceedings

Rule 3(1)Art. 14(3) andArt. 14(4)Rule 6(2)3.1 Parties' written submissions
With the exception of amendments to the European patent application orEuropean patent, any party may use any of the EPO's three official
languages in written proceedings before the EPO.
3.2 Admissible non-EPO languages
Natural or legal persons having their residence or principal place ofbusiness within an EPC contracting state having a language other thanEnglish, French or German as an official language, and nationals of thatstate resident abroad, may file documents which have to be filed within atime limit in an official language of that state ("admissible non-EPO
language"). For example, an Italian or Swiss applicant may file a reply in
Italian to a communication from the examining division issued under
Art. 94(3).
A translation of a document filed in an admissible non-EPO language into
an official language of the EPO must be filed within a non-extendable
period of one month (Rule 6(2)). However, if the document is a notice of
opposition or appeal, or a petition for review (Art. 112a), the period extends
to the end of the opposition or appeal period or the period for petition forreview, if this period expires later. The translation can be into any of the
EPO's official languages, regardless of the language of the proceedings.
3.3 Priority document
Where the certified copy of the previous application Rule 53(3)whose priority is claimed (priority document) is not in
an official language of the EPO, a translation into one of those languages
need only be filed at the invitation of the EPO. This invitation is issued only
where the validity of the priority claim is relevant to determining thepatentability of the invention concerned. The translation may be replaced
by a declaration that the European patent application is a complete
translation of the previous invention.
See A-III, 6.8 for more information on the translation of priority documents.

March 2023

Guidelines for Examination in the EPO

3.4 Documents filed as evidence
Documents which are to be used as evidence may be filed in any language.
This applies to all proceedings before the EPO and, especially, topublications (for instance, an extract from a Russian Korean periodical citedby an opponent to show lack of novelty or lack of inventive step). However,the department dealing with the case may require a translation of the
document or relevant parts thereof in one of the official languages of the
EPO, at the choice of the person filing the document. If the document isfiled by the applicant in pre-grant proceedings, the EPO should require atranslation of the document or relevant parts thereof, unless the examiners
are fully competent in the language concerned. In opposition proceedings
the same principles apply, taking into account the interests of all parties.
The time limit for filing the translation will be specified by the competent
EPO department on a case-by-case basis. It will depend on the particularlanguage concerned and on the length of the document or relevant parts
thereof, taking into account the provisions of Rule 132 (see E-VIII, 1.2). If
the required translation is not filed in due time, the EPO may disregard the
document in question.
3.5 Third-party observations
Third-party observations (E-VI, 3) must be filed in writing and in one of the
EPO's official languages. Supporting documents, e.g. prior-art citations, canbe written in any language.

Part A – Chapter VII-3

Rule 3(3)Rule 114(1)If the third-party observations and/or prior art are not in an official languageof the EPO (Art. 14(1) EPC), the EPO may invite the third party, if
identifiable, to submit a translation of the observations and, whereappropriate, of the cited prior art in an official language within a period
according to Rule 132.
4. Derogations from the language of the proceedings in oralproceedings
This subject is dealt with in E-V.
5. Documents filed in the wrong language
Documents making up the European patent application can only be filed in
the wrong language on the occasion of its amendment, since theapplication can originally be filed in any language (see A-VII, 1.1). In such acase, as well as if any other document is not filed in the prescribedlanguage or any required translation is not filed in due time, the document
is deemed not to have been filed. The person who has filed the document
will be notified accordingly by the EPO. Even though deemed not to havebeen filed, the document concerned will become part of the file andtherefore accessible to the public according to Art. 128(4).
In the event of failure to file a translation of the filed documentary evidence
upon invitation in due time, the documents in question may be disregarded
by the EPO.
Where submissions accompanying the performance of a procedural act
subject to a time limit (e.g. filing the designation of the inventor, filing acertified copy of the earlier application for which priority is claimed or filing

Rule 4Art. 14(1)Rule 3(3)Part A – Chapter VII-4

Guidelines for Examination in the EPO

March 2023

the translation of the priority document under Rule 53(3)) are not filed in an
official language of the EPO, they will be included in the file without notebeing taken of their content.
Rules 79(1)and 114(2)Art. 14(5) and (6)Art. 14(2)Observations by third parties and notices of oppositions will be
communicated to the applicant or the patent proprietor even if they are
deemed not to have been filed.
6. Languages of publication
European patent applications are published only in the language of theproceedings, whereas specifications of European patents are published in
the language of the proceedings together with translations of the claims in
the other two official languages.
7. Correction and certification of the translation
Any error in the translation filed can be corrected at any time during
proceedings before the EPO, i.e. during pre-grant proceedings and also
during opposition proceedings, bringing the translation into conformity withthe application as filed in the original language (e.g. with the originally filed
Japanese-language application). This applies similarly to translations filedfor Euro-PCT applications upon entry into the European phase (seeE-IX, 2.1.2). However, correction of the translation during opposition
proceedings will not be allowed if it contravenes Art. 123(3), i.e. if it implies
an amendment of the claims which extends the protection conferred.

Rule 7Art. 70(2)Unless evidence is provided to the contrary, the EPO will assume, for the
purposes of determining whether the subject-matter of the European patentapplication or European patent extends beyond the content of theapplication as filed (Art. 123(2)), that the translation filed under Art. 14(2) orRule 40(3) is in conformity with the original text of the application (e.g. inJapanese). The text of the application as filed however remains the basis
for determining the allowability of amendments under Art. 123(2) or thecontent of the disclosure for the purposes of Art. 54(3) (see G-IV, 5.1).

Rule 5The EPO has the discretion to require the filing of a certificate that atranslation supplied corresponds to the original text, within a period to be
specified (see E-VIII, 1.2 and E-VIII, 1.6). An invitation to file the certificate
may only be made where the EPO has serious doubts as to the accuracy of
the translation. Failure to file the certificate in due time will lead to the
document being deemed not to have been received unless the EPC
provides otherwise. This partial loss of rights is subject to further
processing under Art. 121 and Rule 135.
Certification is not in principle required in respect of the translations of theclaims into the other two official languages required under Rule 71(3).

Art. 70(1)Art. 14(8)8. Authentic text of the application or patent
The text of an application or patent in the language of the proceedings isthe authentic text. It therefore follows that the translation of the claims of
the patent specification required by Art. 14(6) is for information only.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter VIII-1

Chapter VIII – Common provisions
1.

Representation

1.1 General principles
Subject to the next sentence, no person may be compelled to be
represented by a professional representative in proceedings before the
EPO; this holds for all parties to such proceedings, e.g. applicants,
proprietors, opponents. A party (natural or legal person) who has neither
residence nor principal place of business in a contracting state must be
represented by a professional representative; the party must act through aprofessional representative in all proceedings, other than in filing theapplication (which includes all acts leading to the assignment of a date offiling) or initiating the European phase within the applicable time limit (seeE-IX, 2.3.1). To "be represented" is to be interpreted as meaning due
representation, including not only notice of the appointment of aprofessional representative but also, where applicable, the filing ofauthorisations of the appointed representative (see A-VIII, 1.6).

Art. 133(1) andArt. 133(2)Art. 90(3)Rule 152

Parties having their residence or principal place of business in a contracting
state may also act directly before the EPO, even if they have appointed aprofessional representative (see A-VIII, 1.2), an employee (see A-VIII, 1.3)
or a legal practitioner (see A-VIII, 1.5) to act on their behalf. When
conflicting instructions are received from parties and their representative,
each will be advised of the other's action.
Should opponents who are party to the proceedings and do not have either
residence or principal place of business within the territory of one of thecontracting states fail to meet the requirement set out under Art. 133(2) inthe course of the opposition procedure (e.g. the representative withdraws
from the opposition case or the appointed representative is deleted fromthe list of professional representatives), they are requested to appoint a
new representative. Irrespective of whether they do so, the EPO will
nevertheless inform opponents of the date and location of any oralproceedings and draw to their attention that if they appear only bythemselves they are not entitled to act before the division.
1.2 Representation by a professional representative; list of
professional representatives
Representation of natural or legal persons in proceedings before the EPO
may only be undertaken by professional representatives whose names
appear on a list maintained for this purpose by the EPO. See, however,also A-VIII, 1.5. The Legal Division has sole responsibility for entries in anddeletions from the list of professional representatives (see the decision of
the President of the EPO dated 21 November 2013, OJ EPO 2013, 600). A
group of professional representatives registered with the EPO under thename of an association may be appointed collectively to represent a party
under that name (see OJ EPO 2013, 535). In such a case, each member of
the association may perform procedural acts on behalf of the party, while
correspondence from the EPO, according to Rule 130, is addressed to theassociation rather than one particular member. Parties are recommended

Art. 134(1)Part A – Chapter VIII-2

Guidelines for Examination in the EPO

March 2023

to clearly specify whether they wish to appoint the association or anindividual representative belonging to that association (see also A-VIII, 1.7).

Art. 133(3)Art. 134(1)Rule 152

Art. 133(4)Rule 151(1) and (2)1.3 Representation by an employee
Parties having their residence or principal place of business in a contracting
state are not obliged to be represented by a professional representative inproceedings before the EPO. They may, irrespective of whether they arelegal or natural persons, act through an employee, who need not be aprofessional representative but who must be authorised (see A-VIII, 1.6,
and A-VIII, 1.7).
1.4 Common representative
Joint applicants, joint proprietors of patents and more than one person
giving joint notice of opposition or intervention may act through a common
representative. If the request for the grant of a European patent, the noticeof opposition or the request for intervention does not name a common
representative, the party first named in the relevant document will beconsidered to be the common representative. The common representative
can thus be a legal person. However, if one of the parties is obliged toappoint a professional representative and has done so, this representative
will be considered to be the common representative acting on behalf of allparties. In such a case, no other party can act as common representative.
However, if the first named party in the document has appointed aprofessional representative, that representative will be considered to be
acting on behalf of all parties. If the European patent application or patent istransferred to more than one person, and such persons have not appointed
a common representative, the preceding provisions will apply. If suchapplication is not possible, the EPO will require the parties to appoint a
common representative within a two-month period specified by the EPO(see E-VIII, 1.6). If this request is not complied with, the EPO will appoint
the common representative.
For Rule 151 to apply, each party or their duly authorised representative
must have signed the document (request for grant, notice of opposition,etc.) giving rise to their participation (see also A-III, 4.2.2 and A-VIII, 3.2
and 3.4). Otherwise the party cannot take part in the proceedings, nor
therefore be represented by a common representative.

Art. 134(1) andArt. 134(8)Rule 152

1.5 Representation by a legal practitioner
Representation in proceedings under the EPC may also be undertaken in
the same way as by a professional representative (see A-VIII, 1.2) by any
legal practitioner qualified in one of the contracting states and having theirplace of business within such state, to the extent that they are entitled,
within the said state, to act as a professional representative in patentmatters. Legal practitioners entitled to act as representatives before the
EPO are not entered on the list of professional representatives (seeJ 18/99). However, they are registered in an internal database administeredby the Legal Division (see OJ EPO 2013, 600).
1.6 Signed authorisation
Representatives acting before the EPO must on request file a signed
authorisation (see A-VIII, 3.2) within a two-month period specified by theMarch 2023

Guidelines for Examination in the EPO

EPO (see E-VIII, 1.6). Both individual and general authorisations within themeaning of Rule 152(4) serve the same purpose. For generalauthorisations, the indication of the registration number is equivalent to thefiling of the authorisation itself. The filing of an authorisation is distinct fromthe appointment of a representative for a specific case. If the requirementsof Art. 133(2) are not fulfilled, the same period will be specified for thecommunication of the appointment and, where applicable, for the filing of
the authorisation.
Professional representatives who identify themselves as such will be
required to file a signed authorisation only in certain cases, in particular if
there is a change of representative (see Art. 1(2) of the decision of the
President of the EPO dated 12 July 2007, Special edition No. 3,
OJ EPO 2007, L.1). No authorisation is required where a professional
representative other than the appointed one (and not being a member ofthe same association or law firm) performs a procedural act on behalf of aparty to proceedings, e.g. filing a reply to the communication under
Rule 71(3), provided that it is apparent from the submission that the
professional representative is acting at the request of that party without theintention to take over representation. In case of doubt as to a professional
representative's entitlement to act on behalf of a party, the EPO may
require the filing of an authorisation (see Art. 1(3) of the above-mentioned
decision).
However, a legal practitioner entitled to act as a professional representativein accordance with Art. 134(8) or an employee acting for an applicant inaccordance with Art. 133(3), first sentence, but who is not a professional
representative, must always file a signed authorisation (see Art. 2 andArt. 3 of the above-mentioned decision) to be in a position to validly perform
procedural acts. In Euro-PCT proceedings, persons representing clients inthese capacities are not required to file signed authorisations if they havealready filed an authorisation expressly covering proceedings establishedby the EPC with the EPO as receiving Office, ISA or IPEA. Where arepresentative is appointed to act on behalf of the applicant in several ofthat party's applications, it is not necessary to file an individual authorisationfor each application (see A-VIII, 2.4). A clear indication of the applications
concerned is sufficient; the EPO will make sure that a copy of theauthorisation is included in all of the files concerned.
The authorisation can also be filed by the applicant. This also applies
where the applicant is obliged to be represented, as fulfilling therequirement to be represented is not itself a procedural step under
Art. 133(2) to which the rule of obligatory representation applies.
An association of representatives can be authorised to represent a party
before the EPO within the meaning of Art. 134(1) (Rule 152(11)). A party
appointing several representatives can authorise them collectively as an
association instead of having to authorise each of them individually,
provided that the association in question is registered with the EPO(OJ EPO 2013, 535). Where invited to file an authorisation by way of an
exception, a reference to that registration number in the authorisation will
suffice.

Part A – Chapter VIII-3

Part A – Chapter VIII-4

Guidelines for Examination in the EPO

March 2023

An authorisation remains in force until its termination is communicated to
the EPO. Transfer of representation or termination of authorisation can,subject to certain conditions, be effected electronically by the
representative using the My Files service (see the decision of the Presidentof the EPO dated 26 April 2012, OJ EPO 2012, 352). The authorisation will
not terminate upon the death of the person who gave it unless theauthorisation provides to the contrary (Rule 152(9).

Art. 133(2)Rule 152(2), (4), (7),(8) and (9)1.7 General authorisation
An authorisation may cover more than one application or patent. Also, a
general authorisation enabling a representative to act in respect of all thepatent transactions of the party making the authorisation may be filed. A
corresponding procedure applies to the withdrawal of an authorisation.
However, the filing of a general authorisation is distinct from theappointment of a representative for a specific case. The party granting ageneral authorisation is not bound to appoint one of the representatives
listed therein in any specific procedure before the EPO. Nor does a generalauthorisation allow the EPO to assume, without any additional information,that a person listed therein should be appointed as a representative in a
specific case (see J 17/98). Therefore, in a specific case, a party wishing toappoint the representative(s) listed in a general authorisation must notify
the EPO accordingly by referring to the general authorisation number
already registered.

Rule 152(2) and(6)
Rule 132

1.8 Invitation to file authorisation and legal consequence in case ofnon-compliance
Where the appointment of a legal practitioner entitled to act as professional
representative in accordance with Art. 134(8), or an employee acting for an
applicant in accordance with Art. 133(3), first sentence, but who is not a
professional representative, is communicated to the EPO without an
authorisation being filed, the representative is invited to file theauthorisation within a two-month period specified by the EPO(see E-VIII, 1.6). Where a party having neither residence nor principal placeof business within a contracting state has failed to fulfil the requirements ofArt. 133(2) (see A-VIII, 1.1), the invitation will be sent directly to the party
concerned. The same period will be specified for the communication of theappointment and, where applicable, for the filing of the authorisation. The
period may be extended in accordance with Rule 132 on request by the
representative or party as the case may be (see E-VIII, 1.6). If such
authorisation is not filed in due time, any procedural steps taken by the
representative other than filing a European patent application or initiating
the European phase within the applicable time limit (see E-IX, 2.3.1) will,
without prejudice to any other legal consequences provided for in the EPC,
be deemed not to have been taken. The party is informed accordingly.
2.

Form of documents

2.1 Documents making up the European patent application
The physical requirements which the documents making up the European
patent application, i.e. request, description, claims, drawings and abstract,
must satisfy are set out in Rule 49 Rule 49(2) in conjunction with theMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter VIII-5

decision of the President of the EPO dated 25 November 2022
(OJ EPO 2022, A113) and with regard to drawings in Rule 46. In particular,when amending the application documents, amendments must be typed.
Any submissions containing handwritten amendments to application
documents – unless they involve graphic symbols and characters andchemical and mathematical formulae – are a formal deficiency under
Rules 49(8) (see Art. 2(7) of the decision of the President of the EPO dated
25 November 2022 and 50(1)). The President of the EPO may lay down
further special formal or technical requirements for the filing of documents,
in particular with regard to the filing of documents by means of electronic
communication (Rule 2(1)). Notes on the preparation of OCR-readable
patent applications were published in OJ EPO 1993, 59. In relation to thedrawings, the particular requirements are dealt with in A-IX. The latter
chapter should, however, also be consulted with regard to the otherdocuments mentioned, as the comments therein on the provisions ofRule 49 are of general application. Here, attention need only be drawn toRule 49(7) which states that "the lines of each sheet of the description andof the claims shall preferably be numbered in sets of five, the numbers
appearing on the left side, to the right of the margin".
2.2 Replacement documents and translations
Replacement documents and translations in an official language of
documents filed under the provisions of Art. 14(2) or Rule 40(3) are subject
to the same requirements as the documents making up the application.
2.3 Other documents
Documents other than those referred to in the previous paragraphs should
be typewritten or printed with a margin of about 2.5 cm on the left-hand sideof each page (Art. 3 of the decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113).

Rule 49(1)Rule 50(1)Rule 50(2)2.4 Number of copies
Documents relating to more than one application or patent (e.g. an
individual or a general authorisation), or having to be communicated tomore than one party, only need to be filed in one copy (see also
A-VIII, 1.5). However, letters accompanying submitted documents (inparticular EPO Form 1038) must be filed in one copy for each file to which
the document they accompany relates.
For example, where two different applications share a common priority
claim, the applicant only needs to file one copy of the priority document, but
this must be accompanied by two different letters each relating to one or
the other application (preferably two copies of Form 1038). Each letter (orEPO Form 1038) must be duly signed and indicate one or the other of thetwo application numbers in respect of which the priority document is being
filed (see also A-VIII, 3.1).
2.5 Filing of subsequent documents
After a European patent application has been filed, documents as referred
to in Rule 50 may be filed by delivery by hand, by postal services(see A-II, 1.1) or by means of electronic communication (see A-II, 1.2).
These include filing by fax (see A-II, 1.2.1) and in electronic form by means

Rule 2(1)Part A – Chapter VIII-6

Guidelines for Examination in the EPO

March 2023

of EPO Online Filing, Online Filing 2.0 and the EPO web-form filing service(see A-II, 1.2.2). Authorisations and priority documents are, however,excluded from filing by fax or using the EPO web-form filing service. For themeans of filing accepted for priority documents, see A-III, 6.7.
The EPO web-form filing service must not be used to file any documents in
respect of opposition, limitation and revocation proceedings as well as
appeal proceedings and proceedings for review by the Enlarged Board of
Appeal (see the decision of the President of the EPO dated 14 May 2021,
OJ EPO 2021, A42).
If subsequent documents relating to European patent applications are filed
by fax, written confirmation reproducing the contents of the documents filedby this means and complying with the requirements of the Implementing
Regulations to the EPC must be supplied on invitation from the EPO withina period of two months from notification of that invitation. If the applicant
fails to comply with this request in due time, the fax is deemed not to havebeen received (see the decision of the President of the EPO dated
20 February 2019, OJ EPO 2019, A18).
Written confirmation is requested if the documents communicated by fax
are of inferior quality.
Art. 14(4)Rule 6(2)If in a fax a party avails itself of Art. 14(4), the subsequent copy must be
filed in the same language as the fax, in which case the copy is deemed tohave been received on the date of filing of the fax. The period under
Rule 6(2) for filing the translation under Art. 14(4) begins on the day
following the date of filing of the fax.
Subsequent documents may not be filed on diskette or by email, telegram
or similar means (see also the notice dated 12 September 2000 concerning
correspondence with the Office via email, OJ EPO 2000, 458). However,during telephone consultations and during interviews and oral proceedings
held by videoconference, documents filed subsequently as referred to inRule 50, including authorisations, must be filed by email (for more details
see the decision of the President of the EPO dated 13 May 2020, OJ EPO
2020, A71; see also E-III, 8.5.2).
3.

Rule 50(3)Art. 133

Signature of documents

3.1 Documents filed after filing the European patent application
All documents other than annexes filed after filing the European patentapplication must be signed by the person responsible. The principles ofArt. 133 are that only the applicant or the authorised representative may act
in the European patent grant procedure (see A-VIII, 1.6). Documents filed
after filing the European patent application may therefore be effectively
signed only by these persons.
Documents such as the priority document or the translation thereof must be
accompanied by a cover letter or at least bear a note on the document itself
that it is addressed to the EPO, duly signed by a person authorised to act
before the EPO. This also applies, for example, to the designation ofMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter VIII-7

inventor if this has been signed by an applicant with neither residence nor
principal place of business in one of the contracting states to the EPC. As
regards the authorisation, see A-VIII, 1.6. The signature of the entitledperson confirming performance of a written act of procedure helps to clarify
the state of the proceedings. It shows whether the act of procedure has
been validly performed, and also prevents circumvention of the provisions
relating to representation. EPO Form 1038 (Letter accompanying
subsequently filed items) may also be used as a separate letter. A separate
form must be used for each file (see the notice from the EPO dated
8 November 1990, OJ EPO 1991, 64). The same applies when, instead ofusing EPO Form 1038, the applicant submits an accompanying letter withthe document in question (see also A-VIII, 2.4). In the case of electronic
filing, several documents for a file can be attached on a single Form 1038E.
EPO Form 1037 can be used for the subsequent filing, all at the same time,of items that relate to several applications, but without signature.
EPO Form 1037 is only an acknowledgment. Its use is particularly
recommended for subsequent filing of documents already bearing therequired signature (such as replies to communications).
If the signature is omitted on a document not falling within the meaning of
A-VIII, 3.2, the EPO must invite the party concerned to sign within a fixed
time limit. This also applies if the document in question bears the signatureof an unentitled person (e.g. the secretary of an authorised representative),a deficiency which for the purposes of the time limits under way is treatedas equivalent to omission of the signature of an entitled person. If signed in
due time, the document retains its original date of receipt; otherwise it isdeemed not to have been received. Likewise, documents filed electronicallymust be signed by an entitled person, although they may be transmittedusing a smart card issued to another person. See also A-VIII, 3.2 below.
3.2 Documents forming part of the European patent application
In addition to the documents referred to in A-VIII, 3.1 above, certain
documents forming part of the application must be signed. These
documents include the request for grant, the designation of the inventor
and, where applicable, the authorisation of a representative. In the case ofelectronic filing of a European patent application, a facsimile image of thesigner's handwritten signature, a text-string signature or an enhanced
electronic signature may be used to sign the aforementioned documents(Art. 12 of the decision of the President of the EPO dated 14 May 2021,
OJ EPO 2021, A42).
With the exception of the authorisation of a representative, the documents
may be signed by an authorised representative instead of the applicant.
3.3 Form of signature
A rubber stamp impression of a party's name, whether a natural or legal
person, must be accompanied by a personal signature. Initials or otherabbreviated forms will not be accepted as a signature. Where the party
concerned is a legal person, a document may in general be signed by any
person who purports to sign on behalf of that legal person. The entitlementof a person signing on behalf of a legal person is not checked by the EPO,

Rule 50(3)Part A – Chapter VIII-8

Guidelines for Examination in the EPO

March 2023

except where there is reason to believe that the person signing is not
authorised and in that case evidence of authority to sign should be called
for.
Where a document is filed by fax, the reproduction on the facsimile of thesignature of the person filing the document will be considered sufficient.
The name and position of that person must be clear from the signature(see the decision of the President of the EPO dated 20 February 2019,
OJ EPO 2019, A18).
In the case of electronic filing of documents using EPO Online Filing, thesignature may take the form of a facsimile signature, a text-string signatureor an enhanced electronic signature. Where documents are filed using
Online Filing 2.0 or the EPO web-form filing service, the signature may takethe form of a facsimile signature or a text-string signature. A facsimile
signature is a reproduction of the filing person's signature. A text string
signature is a string of characters, preceded and followed by a forward
slash (/), selected by the signatory to prove their identity and intent to sign.
An enhanced electronic signature is an electronic signature issued or
accepted by the EPO (see OJ EPO 2021, A42).
For accepted signatures on electronically filed assignment documents,
see E-XIV, 3.

Rule 151(1)3.4 Joint applicants
If there is more than one applicant (see A-VIII, 1.3), each applicant or their
appointed representative must sign the request for grant and, whereapplicable, the appointment of the common representative. This also
applies if one of the applicants is considered the common representative
pursuant to Rule 151(1), first sentence. However, the common
representative may sign the designation of inventor and all documents filed
after the filing of the application pursuant to Rule 50(3). Authorisations onbehalf of more than one applicant must be signed by all applicants.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter IX-1

Chapter IX – Drawings
This chapter of the Guidelines deals with the requirements to be met bydrawings contained in the application or patent. Guidance on thepresentation of application documents, including drawings, is provided in
the decision of the President of the EPO dated 25 November 2022
(OJ EPO 2022, A113, Rule 49(2)), which is the legal basis for the practicedescribed in the following sections. However, it should be noted that thecomments on the provisions of Rule 49 apply generally to the documents
making up the European patent application and documents replacing them.
1.

Rule 49
Rule 50Graphic forms of presentation considered as drawings

1.1 Technical drawings
All types of technical drawings are considered drawings within the meaningof the EPC; these include, for instance, perspectives, exploded views,
sections and cross-sections, details on a different scale, etc. Drawings also
cover "flow sheets and diagrams", under which are subsumed functional
diagrams and graphic representations of a given phenomenon which
express the relationship between two or more magnitudes.
There are also other graphic forms of presentation which may be includedin the description, claims or abstract, in which case they are not subject tothe same requirements as drawings (see Art. 2(8) of the decision of the
President of the EPO dated 25 November 2022). The forms concerned arechemical and mathematical formulae and tables. These are dealt with in
A-IX, 11. They may nevertheless be submitted as drawings, in which casethey are subject to the same requirements as drawings.

Rule 46(3)Rule 49(9)1.2 Photographs
The EPC makes no express provision for photographs; they arenevertheless allowed where it is impossible to present in a drawing what is
to be shown and provided that they are directly reproducible and fulfil theapplicable requirements for drawings (e.g. paper size, margins, etc.).
Colour photographs can be submitted but will be scanned, printed andmade available via file inspection only in black and white. If colours arenecessary for discerning details of the photographs submitted, these details
may be lost when the photograph is made available in black and white via
publication and file inspection. See also A-IX, 7.1.
Photographs (or copies thereof) are to be numbered like drawings(Rule 46(2)(h)) and briefly described in the description (Rule 42(1)(d)).
2.

Representation of drawings

2.1 Grouping of drawings
All drawings must be grouped together on the sheets specifically fordrawings and may in no event be included in the description, claims or
abstract, even if these finish at the top of a page or leave sufficient room,and even if there is only one figure.

Rule 49(9)OJ EPO 2022, A113

Part A – Chapter IX-2

Rule 49(2)Guidelines for Examination in the EPO

March 2023

2.2 Reproducibility of drawings
In accordance with Rule 49(2) the The drawings must be so presented as
to admit of electronic as well as of direct reproduction by scanning,
photography, electrostatic processes, photo offset and micro-filming, in an
unlimited number of copies.
2.3 Figure accompanying the abstract
As regards the figure, or exceptionally figures, to accompany the abstract,
where a European patent application contains drawings, reference should
be made to A-III, 10.3 and F-II, 2.3 and 2.4. The figure(s) illustrating theabstract must be the figure(s) most representative of the invention andmust be chosen from the drawings accompanying the application. It istherefore not permissible to draw a special figure for the abstract which
differs from the other figures in the application.

Rule 49(3)OJ EPO 2022, A113

3. Conditions regarding the paper used
In the case of paper filings, drawings must be on sheets of A4 paper(29.7 cm x 21 cm) which must be pliable, strong, white, smooth, matt anddurable (recommended paper weight: 80-120 g/m2, see OJ EPO 1994, 74).

Rule 49(2)All sheets must be free from cracks, creases and folds. Only one side of the
sheet may be used. The use of card is not allowed.

Rule 49(12)Each sheet must be reasonably free from erasures and must be free fromalterations. Non-compliance with this rule may be authorised if theauthenticity of the content is not in question and the requirements for good
reproduction are not in jeopardy.
Any corrections made must be durable and permanent, so that they cannot
give rise to any doubt. Special products for corrections, such as whitemasking fluid, may be used, provided they are indelible and comply with theother requirements of the decision of the President of the EPO dated
25 November 2022 under Rule 49(12).

Rule 49(4)The sheets must be connected in such a way that they can easily be turned
over, separated and joined together again.
Permanent fastenings (for example, crimped eyelets) are not permitted.
Only temporary fastenings (staples, paper clips and grips, etc.), whichleave only slight marks in the margin, may be used.
4.

Rule 46(1)Presentation of the sheets of drawings

4.1 Usable surface area of sheets
On sheets containing drawings, the usable surface area may not exceed
26.2 cm x 17 cm. These sheets may not contain frames round the usable orused surface. The minimum margins are as follows: top side: 2.5 cm;
left side: 2.5 cm; right side: 1.5 cm; bottom 1 cm.

March 2023

Guidelines for Examination in the EPO

4.2 Numbering of sheets of drawings
All the sheets contained in the European patent application must be
numbered in consecutive Arabic numerals. These must be centred at the
top of the sheet, but not in the top margin.

Part A – Chapter IX-3

Rule 49(6)The sheets of drawings must be numbered within the maximum usablesurface area as defined in Art. 1(1) of the decision of the President of the
EPO dated 25 November 2022 Rule 46(1). Instead of numbering the sheet
in the middle, it will, however, be acceptable for it to be numbered towards
the right-hand side if the drawing comes too close to the middle of the edgeof the usable surface. This numbering should be clear, for example innumbers larger than those used for reference numbers.

Rule 46(1)Rule 49(6) requires all All application sheets to must be numberedconsecutively. According to Rule 49(4), the The application consists of all
the following documents: the request, the description, the claims, thedrawings and the abstract. The numbering should preferably be effected byusing three separate series of numbering each beginning with one, the firstseries applying to the request only and being already printed on the form to
be used, the second series commencing with the first sheet of thedescription and continuing through the claims until the last sheet of theabstract, and the third series being applicable only to the sheets of thedrawings and commencing with the first sheet of such drawings.

Rule 49(4)There are no objections to including the description, claims, abstract anddrawings in one series of numbering beginning with one. The series ofnumbering must then commence with the first sheet of the description.
5. General layout of drawings
The various figures on the same sheet of drawings must be laid out
according to certain requirements as to page-setting and numbering, andfigures divided into several parts must comply with particular requirements.
5.1 Page-setting
As far as possible all figures of the drawings should be set out upright on
the sheets. If a figure is broader than it is high, it may be set out so that the
top and bottom of the figure lie along the sides of the sheet with the top of
the figure on the left side of the sheet.

Rule 46(2)(h)In this case, if other figures are drawn on the same sheet, they should be
set out in the same way, so that all the figures on a single sheet lie along
parallel axes.
Where the sheet has to be turned in order to read the figures, thenumbering should appear on the right-hand side of the sheet.
5.2 Numbering of figures
The different figures must be numbered consecutively in Arabic numerals,
independently of the numbering of the sheets.
This numbering should be preceded by the abbreviation "FIG", whatever
the official language of the application. Where a single figure is sufficient toRule 46(2)(h)Rule 46(2)(d)Part A – Chapter IX-4

Guidelines for Examination in the EPO

March 2023

illustrate the invention, it should not be numbered and the abbreviation"FIG" must not appear. Rule 46(2)(d) This also applies to numbers andletters identifying the figures, i.e. they must be simple and clear and may
not be used in association with brackets, circles, or inverted commas. They
should also be larger than the numbers used for reference signs.
An exception to Rule 46(2)(h) referred to the above may be permitted only
as regards partial figures intended to form one whole figure, irrespective ofwhether they appear on one or several sheets. In this case the whole figure
may be identified by the same number followed by a capital letter(e.g. FIG 7A, FIG 7B).

Rule 46(2)(h)5.3 Whole figure
Where figures drawn on two or more sheets are intended to form one whole
figure, the figures on the several sheets shall be so arranged that the whole
figure can be assembled without concealing any part of the partial figures.
Partial figures drawn on separate sheets must always be capable of being
linked edge to edge, that is to say no figure may contain parts of another.
The case may arise where the parts of a whole figure are drawn on a single
sheet following a layout different from that of the whole figure, e.g. a very
long figure divided into several parts placed one above the other and notnext to one another on a sheet. This practice is permitted. However, therelationship between the different figures must be clear and unambiguous.
It is therefore recommended that a scaled-down figure be included showing
the whole formed by the partial figures and indicating the positions of thesections shown.

Rule 48(1) and(2)
Rule 48(1)(c)6. Prohibited matter
The provisions as to the omission of prohibited matter within the meaning ofRule 48(1)(a) (see A-III, 8.1 and F-II, 7.2) also apply to drawings.
Statements or other matter of the type referred to under Rule 48(1)(c)(see F-II, 7.4) which are likely to appear in drawings are in particularvarious kinds of advertising, e.g. where the applicant includes in thedrawing obvious business or departmental markings or a reference to anindustrial design or model, whether registered or not. By doing so, matter
would be introduced which is clearly irrelevant or unnecessary, which isexpressly prohibited by Rule 48.
7.

Rule 46(2)(a)Rule 49(2)Executing of drawings

7.1 Drawings of lines and strokes
Rule 46(2)(a) The decision of the President of the EPO dated
25 November 2022 sets certain standards for lines and strokes in thedrawing, to permit satisfactory reproduction by the various means
described in Art. 2 of the above-mentioned decision Rule 49(2).
The drawings must be executed in black. Colour drawings can besubmitted but will be scanned, printed and made available via fileinspection in black and white only (see also A-IX, 1.2 in respect of colour

March 2023

Guidelines for Examination in the EPO

Part A – Chapter IX-5

photographs). In respect of the content of priority documents issued by the
EPO in such a case, see A-XI, 5.2.
In all cases the thickness of the lines and strokes must take into accountthe scale, nature, execution and perfect legibility of the drawing and of the
reproductions.
All lines must be drawn with the aid of drafting instruments save those forwhich no instrument exists, e.g. irregular diagrams and structures.

Rule 46(2)(e)7.2 Shading
The use of shading in figures is allowed provided this assists in theirunderstanding and is not so extensive as to impede legibility.
7.3

Cross-sections

7.3.1 Sectional diagrams
Where the figure is a cross-section on another figure, the latter should
indicate the position and may indicate the viewing direction.
Each sectional figure should be capable of being quickly identified,
especially where several cross-sections are made on the same figure,e.g. by inscribing the words "Section on AB", or to avoid the use of lettering,by marking each end of the cross-section line on the diagram with a single
Roman numeral. This number will be the same as the (Arabic) numeral
identifying the figure where the section is illustrated. For example:"Figure 22 illustrates a section taken along the line XXII-XXII of Figure 21".
7.3.2 Hatching
A cross-section must be set out and drawn in the same manner as anormal view whose parts in cross-section are hatched with regularly spaced
strokes, the space between strokes being chosen on the basis of the total
area to be hatched.

Rule 46(2)(b)Hatching should not impede the clear reading of the reference signs andleading lines. Consequently, if it is not possible to place references outside
the hatched area, the hatching may be broken off wherever references areinserted. Certain types of hatching may be given a specific meaning.
7.4 Scale of drawings
If the scale of the figure is such that all the essential details would not beclearly distinguished if the figure is reproduced, electronically or
photographically, with a linear reduction in size to two-thirds, then the figuremust be redrawn to a larger scale, and if necessary the figure should be
split up into partial figures so that a linear reduction in size to two-thirds isstill intelligible.
The graphic representation of the scale of drawings in cases where its
inclusion is considered useful must be such that it is still usable when thedrawing is reproduced in reduced format. This excludes indications of size
such as "actual size" or "scale ½", both on the drawings and in thedescription, in favour of graphic representations of the scale.

Rule 46(2)(c)Part A – Chapter IX-6

Rule 46(2)(d)Guidelines for Examination in the EPO

March 2023

7.5 Numbers, letters and reference signs
Numbers, letters and reference signs and any other data given on the
sheets of drawings, such as the numbering of figures, pages of thedrawing, acceptable text matter, graduations on scales, etc., must be
simple and clear, and not used in association with any brackets, invertedcommas, circles or outlines whatsoever. Signs such as 6' and 35" are notregarded as including inverted commas and are therefore permitted.
Numbers, letters and reference signs should preferably all be laid out thesame way up as the diagram so as to avoid having to rotate the page.
7.5.1 Leading lines
Leading lines are lines between reference signs and the details referred to.
Such lines may be straight or curved and should be as short as possible.
They must originate in the immediate proximity of the reference sign andextend at least as far as the features indicated.

Rule 46(2)(a)Leading lines must be executed in the same way as lines in the drawing,
viz. in accordance with Art. 1(2)(a) of the decision of the President of the
EPO dated 25 November 2022 Rule 46(2)(a).
7.5.2 Arrows
Arrows may be used at the end of the leading lines provided that their
meaning is clear. They may indicate a number of points:

Rule 46(2)(g)(i)

a freestanding arrow indicates the entire section towards which it
points;(ii)

an arrow touching a line indicates the surface shown by the line
looking along the direction of the arrow.

7.5.3 Height of the numbers and letters in the drawings
Under Rule 46(2)(g), a A minimum size of 0.32 cm is required for all
numbers and letters used on the drawings so that their reduction in size to
two-thirds remains easily legible.
The Latin alphabet should normally be used for letters. The Greek alphabet
is to be accepted however where it is customarily used, e.g. to indicate
angles, wavelengths, etc.

Rule 46(2)(i)

7.5.4 Consistent use of reference signs as between description,
claims and drawings
Reference signs not mentioned in the description and claims may notappear in the drawing, and vice versa.
Reference signs appearing in the drawing must be given in the description
and the claims taken as a whole. As regards use of these signs in theclaims, reference should be made to F-IV, 4.18 F-IV, 4.19.

Rule 49(12)Features of a drawing should not be designated by a reference in cases
where the feature itself has not been described. This situation may arise asa result of amendments to the description involving the deletion of pages orMarch 2023

Guidelines for Examination in the EPO

Part A – Chapter IX-7

whole paragraphs. One solution would be to strike out on the drawing
reference signs which have been deleted in the description. Suchcorrections must be made in accordance with Art. 2(11) of the decision of
the President of the EPO dated 25 November 2022. Such corrections
would have to be made in accordance with Rule 49(12).
Where for any reason a figure is deleted then of course the applicant or
proprietor ought to delete all reference signs relating solely to that figure
appearing in the description and claims.
In the case of applications dealing with complex subjects and incorporatinga large number of drawings, a reference key may be attached to the end of
the description. This key may take whatever form is appropriate andcontain all the reference signs together with the designation of the features
which they indicate. This method could have the advantage ofstandardising the terminology used in the description.
7.5.5 Consistent use of reference signs as between drawings
The same features, when denoted by reference signs, must, throughout theapplication, be denoted by the same signs.

Rule 46(2)(i)There would be considerable confusion if a single feature were allocateddifferent reference signs in the various drawings. However, where several
variants of an invention are described, each with reference to a particularfigure, and where each variant contains features whose function is thesame or basically the same, the features may, if this is indicated in thedescription, be identified by reference numbers made up of the number ofthe figure to which it relates followed by the number of the feature, which isthe same for all variants, so that a single number is formed, e.g. thecommon feature "15" would be indicated by "115" in Fig. 1 while thecorresponding feature would be indicated by "215" in Fig. 2. This system
has the advantage that an individual feature and the figure on which it is tobe considered can be indicated at the same time. It can also make complex
cases involving many pages of drawings easier to read. Instead of thecommon reference sign being prefixed by the number of a figure, it may,when the individual variants are described with reference to particulargroups of figures, be prefixed by the number of the particular variant towhich it relates; this should be explained in the description.
7.6 Variations in proportions
Elements of the same figure must be in proportion to each other, unless a
difference in proportion is indispensable for the clarity of the figure.
As a preferred alternative to a difference in proportion within one figure forthe purpose of achieving the necessary clarity, a supplementary figure may
be added giving a larger-scale illustration of the element of the initial figure.
In such cases it is recommended that the enlarged element shown in thesecond figure be surrounded by a finely drawn or "dot-dash" circle in thefirst figure pinpointing its location without obscuring the figure.

Rule 46(2)(f)Part A – Chapter IX-8

Rule 46(2)(d) and (g)Guidelines for Examination in the EPO

March 2023

8. Text matter on drawings
It should first be noted that Rule 46(2)(d) and (g) Art. 1(2)(d) and (g) of thedecision of the President of the EPO dated 25 November 2022 also applies
to text matter on the drawings.
For indications of the type "section on AB", see A-IX, 7.3.1.

Rule 46(2)(j)The drawings must not contain text matter, except, when absolutely
indispensable, a single word or a few words. As flow sheets and diagrams
are considered as drawings (see A-IX, 1.1), text must be kept to an theabsolute minimum indispensable for understanding the drawing.
Where text matter is deemed indispensable for understanding the drawing,
only the barest a minimum of words should be used, and a space free of alllines of drawings should be left around them for the translation.
Compared with other types of drawings, flow sheets comprising method
steps may need more than just a bare minimum of words to be understoodsince the essential information may not be adequately conveyed by thegraphical part of the drawing. In such cases, the requirement to keep thetext to an absolute minimum may be relaxed somewhat to allow more thana few words, such as a short sentence, for each method step.
As regards the justification for text matter on drawings, see F-II, 5.1.

Rule 49(10)9. Conventional symbols
Known devices may be illustrated by symbols which have a universally
recognised conventional meaning, provided no further detail is essential forunderstanding the subject-matter of the invention. Other signs and symbols
may be used on condition that they are not likely to be confused withexisting conventional symbols, that they are readily identifiable, i.e. simple,
and providing that they are clearly explained in the text of the description.
Different types of hatching may also have different conventional meanings
as regards the nature of a material seen in cross-section.
10. Amendments to drawings
Amendments of the drawings are permitted, as well as of the otherdocuments. These amendments may be made at the request of the party
concerned or at the request of the EPO. The amendments may concern
either clerical errors or more substantial changes.
Amendments to drawings are, in general, subject to the same rules asapply in respect of amendments to other application documents andtherefore do not require further analysis here. Reference may be made to
A-III, 16, A-V, 2, B-XI, 8, C-III, 2, C-IV, 5, Part H, in particular H-II, 2 and
H-III, 2.

Art. 123(2)The general rule governing the admissibility of amendments, which theexaminer must always bear in mind, is that they must not extend thecontent of the application as filed, i.e. they must not have the effect of
introducing new material.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter IX-9

If drawings which depart substantially from the physical requirements laid
down in the Rules are filed in order to establish a particular date of filing or
retain a priority date, the Receiving Section will permit such drawings to beamended or replaced so as to provide drawings complying with the Rules,
provided that it is clear that no new material is thereby introduced into theapplication. In view of this proviso, applicants should take care that any"informal" drawings which they file clearly show all the features necessary
to illustrate the invention.
11. Graphic forms of presentation not considered as drawings
11.1 Chemical and mathematical formulae
In exceptional cases, chemical or mathematical formulae may be written byhand or drawn if necessary, but it is recommended that appropriate aids
such as stencils or transfers be used. For practical reasons, formulae may
be grouped together on one or more sheets annexed to the description andpaginated with it. It is recommended in such cases that each formula bedesignated by a reference sign and the description should containreferences to these formulae whenever necessary.

Rule 49(8)The chemical or mathematical formulae must employ symbols in generaluse and must be drawn in such a way that they are completely
unambiguous. Figures, letters and signs which are not typed must be
legible and identical in form in the various formulae, irrespective of the
document in which they appear.

Rule 49(11)Chemical or mathematical formulae appearing in the text of the applicationor patent must have symbols, the capital letters of which are at least
0.21 cm high. Where they appear on sheets of drawings, these symbols
must be at least 0.32 cm high.

Rule 49(8)Rule 46(2)(g)

All mathematical symbols used in a formula which appears in a description,in an annex or on sheets of drawings must be explained in the description,
unless their significance is clear from the context. In any case, themathematical symbols used may be collated in a list.
11.2 Tables
11.2.1 Tables in the description
For the sake of convenience, the tables may also be grouped together in
one or more sheets annexed to the description and paginated with it.

Rule 49(9)If two or more tables are necessary, each should be identified by a Roman
number, independently of the pagination of the description or drawings or of
the figure numbering, or by a capital letter, or by a title indicating its
contents, or by some other means.
Each line or column in a table must begin with an entry explaining what it
represents and, if necessary, the units used.
It should be remembered that the characters must satisfy the requirementsof Rule 49(8) and that Rule 49(5) Art. 2(7) and (4) of the decision of theRule 49(5) and (8)Part A – Chapter IX-10

Guidelines for Examination in the EPO

March 2023

President of the EPO dated 25 November 2022 regarding the maximum
usable surface areas of sheets and that the same requirements apply
applies to tables as well.

Rule 49(9)11.2.2 Tables in the claims
The claims may include tables if this is desirable in view of thesubject-matter involved. In this case, the tables must be included in the textof the relevant claim; they may not be annexed to the claims nor may
reference be made to tables contained in or annexed to the description.
Rule 43(6) stipulates that the The claims may refer to other application
documents only where this is absolutely necessary (see F-IV, 4.17). The
mere desire to eliminate the need to prepare further copies does notconstitute absolute necessity.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter X-1

Chapter X – Fees
1. General
Various fees have to be paid for a European patent application, renewing a
European patent and obtaining legal remedies. Fees may also need to be
paid by third parties, as is the case, for example, for the issue of certified
copies of documents or the certified extract from the European Patent
Register (see OJ EPO 2019, A15). Fees may be validly paid by any person.
The amounts of the fees, the ways in which they are to be paid and thedate of payment are determined in the Rules relating to Fees (RFees).
Guidance for the payment of fees, expenses and prices with information
about:–

the current version of the Rules relating to Fees and the schedule of
fees;

–

important implementing rules to the Rules relating to Fees;–

the payment and refund of fees and expenses;–

other notices concerning fees and prices; and–international applications, including Euro-PCT applications entering
the European phase,

as well as the amounts of the principal fees for European and international
applications and an extract from the Rules relating to Fees is published atregular intervals in the Official Journal. lnformation relating to fees andmethods of payment, including the EPO bank account for payments ineuro, can also be found on the EPO website (epo.org) under: Applying for apatent/Fees.
The EPC and the Implementing Regulations thereto lay down the time
limits for paying fees and the legal consequences of non-compliance withthe time limits. The time limits for payment and the legal consequences of
non-payment are dealt with in the chapters of the Guidelines covering therespective stages of the procedure. The methods of payment, the date on
which payment is considered to be made, due dates, particulars concerning
the purpose of payments and reimbursement of fees are all dealt withbelow.
2. Methods of payment
Fees may be paid in the following ways:(i)by payment or transfer to a bank account held by the EPO;(ii)

by debiting a deposit account opened in the records of the EPO in
Munich (see A-X, 4.2 and 4.3);(iii)

by credit card (see A-X, 4.4);(iv)

by requesting re-allocation of a refund (see A-X, 10.4).

Art. 5 RFees

Part A – Chapter X-2

Art. 5 RFees
Point 1 ADA

Guidelines for Examination in the EPO

3. Currencies
The fees due to the EPO shall be paid in euro. A debit order shall be in
euro.
4.

Art. 7(1),(3) and(4) RFees

Date considered as date on which payment is made4.1 Payment or transfer to a bank account held by the European
Patent Organisation
The date on which the amount is actually entered in the European Patent
Organisation's bank account is considered as the date on which payment ismade. It is therefore possible for the day following the payment or transfer
to be considered as the date on which payment is made or an even later
date in the event of delays within the bank. However, payment may still beconsidered to have been made in due time, despite being paid late, if thepayment or transfer has been effected before expiry of the time limit for
payment in a contracting state and if evidence to this effect has been
provided (see A-X, 6). For the steps required for the efficient processing of
payments made by bank transfer, see the notice from the EPO dated
13 July 2021, OJ EPO 2021, A61 19 July 2022, OJ EPO 2022, A81.
4.2

Art. 7(2) RFees

March 2023

Deposit accounts with the EPO

4.2.1 General remarks
The Arrangements for deposit accounts (hereinafter abbreviated to "ADA")
and their annexes are updated on a regular basis, either in their entirety orin part, whenever a change or clarification of the scope of practice isrequired. A consolidated version of the ADA was last published as
Supplementary publication 4, OJ EPO 2019 Supplementary publication 3,
OJ EPO 2022. The ADA can also be found on the EPO website (epo.org)
under: Applying for a patent/Fees.
A distinction must be drawn, in connection with deposit accounts, between:

Point 3 ADA(i)payments to replenish deposit accounts; andPoint 1 ADA(ii)payments of fees in connection with proceedings under the EPC or
the PCT.

Point 3.2 ADA
Point 3.3 ADA

Point 3.4 ADA
Point 4.2 ADA
Point 5.2 ADA

4.2.2 Payments to replenish a deposit accountPayments to replenish a deposit account are to be made in euro to the
EPO bank account. Payments in a different currency will only be accepted
if freely convertible. However, the deposit account will always be credited ineuro (the only currency in which these accounts are kept) after conversion
at the current rate of exchange. Replenishments are credited to the deposit
account on the date on which the payment is actually entered in the EPO
bank account.
Repayments of deposit account balances can only be remitted to thedeposit account holder. For this purpose, the deposit account holder must
submit to the EPO a signed request to the EPO by email attachment sent tosupport@epo.org or by submission together with the completed online

March 2023

Guidelines for Examination in the EPO

Part A – Chapter X-3

contact form available on the EPO website with containing all bank details
necessary for the transfer (point 5.2 ADA).
4.2.3 Debiting the deposit accountDebiting occurs on the basis of an electronic debit order signed by theaccount holder or the authorised representative. The signature may takethe form of a text string signature, a facsimile signature, an enhanced
electronic signature, or authentication with smart card if payment is madevia Online Fee Payment or Central Fee Payment in Online services. The
debit order may be a debit order for individual fees for one or more
applications, i.e. a single or batch debit order, or an automatic debit order
for a specific one or more patent application applications (see A-X, 4.3).
The debit order for European patent applications must be filed in anelectronically processable format (XML) via one of the following:–

EPO Online Filing using EPO Forms 1001E, 1200E, 2300E or
1038E; or–Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E; or–Online Fee Payment in Online services; or–Central Fee Payment in Online services.

Point 5.1.1 ADA
Point 7.1.1 ADA

Point 5.1.2 ADA
Point 5.1.3 ADA
Point 7.1.2 ADA
Point 7.1.3 ADA

See also the decision of the President of the EPO dated 19 July 2022
concerning the revision of the Arrangements for deposit accounts and theirannexes, Supplementary publication 3, OJ EPO 2022 13 July 2021, OJ
EPO 2021, A60, and the notice from the EPO dated 19 July 2022,
OJ EPO 2022, A81 13 July 2021, OJ EPO 2021, A61.
Debit orders submitted in any other way, e.g. on paper, by fax, via theweb-form filing service or using a different format such as a PDF
attachment, are invalid and thus will not be carried out (for an exception,
see A-II, 1.5). This may result in the time limit for paying a fee being
missed. In that case applicants may make use of any of the legal remedies
available.

Point 7.1.3 ADA
Point 10.3 ADA

If any of the accepted means of filing debit orders is unavailable at the EPO
on the last day for paying a particular fee, the payment period will be
extended to the first day thereafter on which all such means as areavailable for the type of application concerned can be accessed again.
Payment periods are also extended in the event of a general unavailabilityof electronic communication services, or other like reasons within themeaning of Rule 134(5) (see the notice from the EPO dated
22 October 2020, OJ EPO 2020, A120).

Rule 134(1) and (5)Point 5.5 ADA
Point 11 ADA

When using the EPO's online filing services, selecting "deposit account" as
the method of payment is a specific requirement when wishing to pay any
selected fees.

Part A – Chapter X-4

Guidelines for Examination in the EPO

March 2023

Point 5.4.1 ADA
Point 7.2.1 ADA
Point 10.2 ADA
Point 4.4 AAD

In general, debit orders will be processed immediately upon their receipt,
provided there are sufficient funds in the deposit account and provided adeferred execution date (see next paragraph) has not been specified.
Automatic debit orders are processed at the end of the day on the decisive
payment date.

Point 10.2 ADA

A debit order may specify that a payment order is to be executed at a later
date than the submission date. In that case, the payment date is deemed tobe the execution date specified. Payment orders with a deferred execution
date may be executed up to 40 days after the submission date.
A debit order must be carried out notwithstanding incorrect information
given in it, if the intention of the person giving the order is clear(see T 152/82). The EPO corrects a debit order of its own motion, forexample, if there is a discrepancy between the type of fee intended to be
paid and the corresponding amount due on the date of receipt of the debit
order (see also A-X, 7.1.2). The party is informed of any such correction bymeans of a communication from the EPO providing a two-month period for
objecting to it in the event of disagreement by the party. In that case, thefee will be debited as indicated in the (erroneous) debit order or, if
applicable, any corrective booking carried out will be reverted. The
principles outlined above, however, do not allow the correction of a debit
order by adding any fee that is not indicated in it, even if, according to thestatus of proceedings, that fee is due on the date of receipt of the debit
order.

Points 6.1, 6.2,
6.3 ADA
Point 13 ADA

A debit order may be revoked in whole or in part by signed written noticefrom the person making the payment, preferably sent by sending a signed
written notice to support@epo.org by email or by completing the online acontact form available on via the EPO website (epo.org) and submitting it
together with the signed written notice. For a notice of revocation of thedebit order to be effective, it must be received by the EPO no later than thedate on which the debit order is received. This also applies in case of adeferred payment date, irrespective of the execution date specified. A debit
order with deferred payment date may be revoked in Central Fee Payment
until one day before the intended execution date or at the latest on theintended execution date by signed written notice sent to the EPO as
indicated above.

Point 5.3 ADA
Point 9 ADA

Payments via deposit account effected in Online Fee Payment and Central
Fee Payment are validated, meaning that the debit order for a fee is
automatically rejected if the fee falls within one of the following categories:–

renewal fees and fees for the transfer of rights made in respect ofpatent applications for which the loss of rights or the refusal has
become final;–

renewal fees for granted European patents;–

renewal fees received before the earliest valid payment dates under
Rule 51(1); andMarch 2023–

Guidelines for Examination in the EPO

Part A – Chapter X-5

double-payments for fees that can be paid only once in theproceedings before the EPO.

See the Decision of the President of the EPO dated 19 February 2019,
OJ EPO 2019, A20, and the Decision of the President of the EPO dated
13 July 2021, OJ EPO 2021, A60.
4.2.4 Date of receipt of the debit order; insufficient funds
Provided that there are sufficient funds in the deposit account on the dateof receipt of the debit order by the EPO or on the execution date, that date
will be considered as the date on which the payment is made.

Point 5.4.1 ADA
Point 5.6.2 ADA
Point 7.2.1 ADA
Point 7.4.1 ADAThis is also applicable where a debit order is filed together with anapplication filed under Art. 75(1)(b) with a competent national authority of acontracting state (see A-II, 1.6). If the debit order is not received at the EPO
until after expiry of the period allowed for payment of fees which can be
paid on filing, that period is deemed to have been observed if evidence isavailable or presented to the EPO to show that the debit order was filedwith the competent authority of the contracting state at the same time as
the application, provided that sufficient funds were available in the accountat the time the period expired.
If, on the date of receipt of the debit order or on the date specified as theexecution date (point 5.4.1 ADApoint 10 ADA), the account does notcontain sufficient funds to fully cover all the fees indicated for an application(shortfall), the fees are booked in ascending order of application number("PCT" before "EP") and fee codes code, according to point 7.3 ADA, as
long as the funds allow. Once a debit order cannot be executed in full due
to insufficient funds, no other debit order is booked until the account is duly
replenished. The outstanding payment is considered to have been made on
the date on which the deposit account is duly replenished. On theapplication of the ten-day fail-safe arrangement safety provision in the caseof late receipt of the replenishment payment at the EPO, see A-X, 6.2.2.
4.3 Automatic debiting procedure
A deposit account may also be debited for one or more European patentapplications on the basis of an automatic debit order, signed by or on
behalf of the account holder (automatic debiting procedure), in accordancewith the Arrangements for the automatic debiting procedure (abbreviated to"AAD"). The AAD plus explanatory notes are published as Annexes A.1
and A.2 to the ADA in Supplementary publication 4, OJ EPO 2019;
Supplementary publication 3, OJ EPO 2022. see also OJ EPO 2020, A77
and OJ EPO 2020, A78. The AAD can also be found on the EPO website(epo.org) under: Applying for a patent/Fees.
An automatic debit order must may be filed on behalf of the applicant or thepatent proprietor or the appointed representative and must be filed in anelectronically processable format (XML) via, using the EPO Online Filing
software or Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E, or
via Online Central Fee Payment in Online services. An automatic debit
order can be revoked via Online Central Fee Payment in Online services
only. It may be revoked only for the proceedings as a whole.

Point 5.2.2 ADA
Point 5.2.3 ADA
Point 7.3 ADA
Point 7.4.1 ADA
Point 7.4.2 ADA
Point 7.5 ADA

Point 7 ADA
Point 14 ADA
Point 1 AAD
Point 12.1 AAD
Point 10 AAD

Part A – Chapter X-6

Guidelines for Examination in the EPO

March 2023

An automatic debit order extends to all types of fees covered by theautomatic debiting procedure and payable in respect of the proceedings
specified in it. As the proceedings progress, each such fee is automaticallydebited and treated as having been paid in due time provided that thedeposit account contains sufficient funds. The automatic debit order may
not be restricted to specific types of fees.
Points 5.2.1 and5.2.3 ADA
Point 4.4 AAD
Point 4.5 AAD
Point 5 AAD

In the case of multiple payments from the same deposit account, the EPO
processes automatic debit orders in ascending order of application number("PCT" before "EP") and fee code (unless otherwise indicated) at the end of
the day on the decisive payment date. It is thus important for the deposit
account to contain sufficient funds at the decisive payment date to cover all
automatic debit orders due. before any other debit orders.
Subject to that, debit orders are booked in ascending order of application
number ("PCT" before "EP"), unless otherwise indicated.

Art. 5 RFees,
Art. 7 RFees

Art. 4(1) RFees
Rule 51(1),
2nd sentence

4.4 Payment by credit card
Credit card as a method of payment is available since 1 December 2017(see OJ EPO 2017, A72). Payment by credit card must be made via
Central Fee Payment in Online services available on the EPO website(epo.org), using a credit card accepted by the EPO (American Express,
Mastercard and Visa). Payment by credit card is deemed to have been
made on the date on which the transaction is approved. The EPO bears
any transaction-related charges. The requirements and arrangements forpayments by credit card are set out in detail in the notice from the EPO
dated 16 February 2022 (see OJ EPO 2022, A18). 23 September 2021
(see OJ EPO 2021, A73).
5.

Due date for fees

5.1

General5.1.1 Due dateIn the EPC, the term "due date" has a special meaning, namely the first day
on which payment of a fee may be validly effected, not the last day of aperiod for such payment (see A-X, 6, "Payment in due time"). The due date
for fees is generally laid down by provisions of the EPC or of the PCT. If nodue date is specified, the fee is due on the date of receipt of the request forthe service incurring the fee concerned.
A fee may not be validly paid before the due date. The only exceptions tothat principle are:(i)renewal fees, which may be validly paid before the due date(see A-X, 5.2.4), and(ii)

voluntary payment of fees in response to the communication under
Rule 71(3) (where amendments are also filed in response to that
communication, see C-V, 4.2).

March 2023

Guidelines for Examination in the EPO

Payments made before the due date which are not valid may be refundedby the EPO. If payment is made shortly before the due date, it is possiblethat the EPO will not return the payment. In this case, however, payment
only takes effect on the due date. This does not apply to payments via
deposit account of renewal fees made before the earliest valid payment
dates under Rule 51(1) EPC, see A-X, 5.2.4.
5.1.2 Amount of the fee
When the fees are generally increased, the date of payment is set as therelevant date for determining the amount of the fees (see Art. 2 of thedecision of the Administrative Council of 5 June 1992, OJ EPO 1992, 344).
Setting the date of payment as the relevant date makes it unnecessary as arule to ascertain the actual due date for determining the amount of the fee.
Fees cannot validly be paid before the due date (apart from the exceptions
mentioned in A-X, 5.1.1(i) and (ii)).
5.2

Due date for specific fees

5.2.1 Filing fee and search fee
The filing and search fees are due on the day the European patentapplication is filed. They must be paid either within one month from thatdate (Rule 38(1), Rule 17(2), Rule 36(3)) or, for Euro-PCT applications,
within 31 months of the filing date or, where applicable, from the earliest
priority claimed (Rule 159(1)(c) and (e)). Where fees are paid before expiryof the 31-month period and early processing is not explicitly requested(see E-IX, 2.8), they will be retained by the EPO on the assumption that theapplicant indeed wishes to pursue the European-phase processing of theapplication on expiry of the 31-month period. See A-III, 13.1. For the
additional fees payable as part of the filing fee, see A-III, 13.2 and
A-IV, 1.4.1.1.
5.2.2 Examination fee and designation fee
The examination fee is due when the request for examination is filed. Since
the latter is contained in the prescribed form for the request for grant(EPO Form 1001), the examination fee may be paid straight away on thedate of filing of the European patent application if the application is filedwith said prescribed EPO Form 1001. It may be paid up to expiry of theperiod laid down in Rule 70(1), namely within six months of the date of themention of the publication of the European search report in the European
Patent Bulletin.
The designation fee falls due upon publication of the mention of theEuropean search report. It may be paid within six months of the mentioned
date of publication (Rules 39(1), 17(3) and 36(4)). Where paid before thedue date, e.g. upon filing of the application, the designation fee will
however be retained by the EPO. These payments will only be consideredvalid as from the due date, provided that the amount paid corresponds tothe amount payable on the due date (see A-X, 5.1.2).
For Euro-PCT applications, see E-IX, 2.1.4 and E-IX, 2.8.

Part A – Chapter X-7

Part A – Chapter X-8

Rule 71(1)Rule 71(4)Rule 51(1)Guidelines for Examination in the EPO

March 2023

5.2.3 Fee for grant and publishing
The fee for grant and publishing falls due on notification of thecommunication under Rule 71(3) requesting that this fee be paid. Under
Rule 71(4), the same applies for claims fees added during the procedure to
those that were , unless they were already paid under Rule 45(1) and (2) orRule 162(1) and (2) (see A-X, 7.3.2).
5.2.4 Renewal fees
Renewal fees for a European patent application in respect of the coming
year are due on the last day of the month containing the anniversary of thedate of filing of the European patent application.
According to Rule 51(1) as amended with effect from 1 April 2018
(OJ EPO 2018, A2), the renewal fee in respect of the third year may be
paid up to six months before it falls due. All other renewal fees may not bevalidly paid more than three months before they fall due.
Example A:
15.11.2016
31.05.2018
30.11.2018
31.08.2019
30.11.2019

Filing date
Earliest date for valid payment of third-year
renewal fee under Rule 51(1)Due date for third-year renewal fee under
Rule 51(1)Earliest date for valid payment offourth-year renewal fee under Rule 51(1)Due date for fourth-year renewal fee under
Rule 51(1)Example B:
15.07.2016
14.07.2017
31.01.2019
15.02.2019
31.07.2019
30.04.2020
31.07.2020

Priority date
Filing date
Earliest date for valid payment of third-year
renewal fee under Rule 51(1)Expiry of 31-month period for the
performance of all acts required under
Rule 159(1)Due date for third-year renewal fee under
Rule 51(1)Earliest date for valid payment offourth-year renewal fee under Rule 51(1)Due date for fourth year renewal fee under
Rule 51(1)Renewal fee payments made before the permissible prepayment periods
are not valid. If a debit order for a renewal fee is received via Online Fee
Payment or Central Fee Payment before the earliest valid payment dates
under Rule 51(1) EPC, it will be rejected at source by the validation
functionality (see A-X, 4.2.3). If a payment is made too early either by filinga valid debit order via OLF and Online Filing 2.0 or by using any otherpayment method (i.e. bank transfer or credit card), the renewal fee will be
refunded by the EPO according to the procedures laid down in A-X, 10.

March 2023

Guidelines for Examination in the EPO

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 theadditional fee is paid within this period. The additional fee can be paid until
the last day of the sixth month following the month containing theanniversary 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 thesix-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 thepossibility under Rule 51(2) and Art. 2(1), item 5, RFees, the omission ofsuch notification may not be invoked (see J 12/84 and J 1/89). For renewal
fees for European divisional applications see A-IV, 1.4.3.

Part A – Chapter X-9

Rule 51(2)Rule 134

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 anotherperiod (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, theprinciples of which apply). For example:
20.04.2016 (Wed)17.10.2016 (Mon)31.10.2018 (Wed)20.11.2018 (Tue)20.05.2019 (Mon)

Priority date
Filing dateDue date for third-year renewal fee under
Rule 51(1)Expiry of 31-month period under
Rule 159(1) = deferred due date forthird-year renewal fee
Last day for payment of the renewal fee(plus additional fee) since the six-month
period under Rule 51(2) expires that day

If the applicant requests entry into the regional phase before the expiry of
the 31-month period (see Art. 23(2) PCT and Art. 40(2) PCT), in order forthe request to become effective the renewal fee in respect of the third year
has to be paid if the fee has fallen due earlier under Rule 51(1). If therenewal fee is not paid on the date early processing is requested, therequest for early processing will be effective only as from the date on which
the renewal fee is paid (and all further requirements necessary on the latterdate have been complied with) (see E-IX, 2.8).
The obligation to pay renewal fees terminates with the payment of therenewal fee due in respect of the (patent) year in which the mention of the
grant of the European patent is published, see Art. 86(2). "Patent years"
are calculated as from the date of filing of the application. The first patentyear (Art. 86(1), Art. 141(1)) starts on the date of filing and ends on thesame date of the following year. For the second and subsequent years, thepatent year starts one day after the anniversary of the date of filing andends on the same day as the date of filing of the following year.

Art. 86(1) andArt. 141(1)Part A – Chapter X-10

Guidelines for Examination in the EPO

March 2023

Example of due date and time limits for payment:
15.12.2016 (Thu)02.07.2017 (Sun)31.01.2019 (Thu)31.07.2019 (Wed)31.01.2020 (Fri)30.04.2020 (Thu)31.07.2020 (Fri)04.11.2020 (Wed)Priority date
Filing date
First day for validly paying third-year renewal fee(amended Rule 51(1); OJ EPO 2018, A2)
Due date for third-year renewal fee under
Rule 51(1)Last day for validly paying renewal fee plus
additional fee (Rule 51(2)); see J 4/91,
reasons 2.7
First day for validly paying fourth-year renewal
fee
Due date for fourth-year renewal fee = lastrenewal fee to be paid to the EPO and last day
for payment of this renewal fee without additional
fee
Mention of grant of the European patent in theEuropean Patent Bulletin

Example 1 of last renewal fee payable to the EPO:
21.01.2017 (Sat)22.01.2019 (Tue)31.01.2019 (Thu)31.10.2019 (Thu)21.01.202015.01.2020(TueWed)22.01.2020 (Wed)31.01.2020 (Fri)Filing date
Start of third patent year
Due date for third-year renewal fee (to be
paid to the EPO)First day for validly paying fourth-year
renewal fee
Mention of grant of the European patent in
the European Patent Bulletin
Start of fourth patent year
Due date for fourth-year renewal fee (nolonger to be paid to the EPO; if alreadypaid, to be refunded, see A-X, 10.1.1)

This means that, for the last renewal fee payable to the EPO, it is not thedue date but the beginning of the respective patent year that is decisive. If
the mention of the grant of the European patent is published on theanniversary of the date of filing, the renewal fee in respect of the next
patent year, which has not yet begun, is no longer payable to the EPO but
to the national authorities.
Example 2 of last renewal fee payable to the EPO:
22.05.2017 (Mon)23.05.2019 (Thu)31.05.2019 (Fri)12.05.2022 (Thu)20.05.2022 (Fri)23.05.2022 (Mon)

Filing date
Start of third patent year
Due date for third-year renewal fee (to be
paid to the EPO)
Date of dispatch of communication under
Rule 71(3)Approval of the text for grant and translationof the claims submitted, fee for grant andpublication and all claims paid
Start of sixth patent year

March 2023

31.05.2022 (Tue)30.11.2022 (Wed)04.01.2023 (Wed)31.05.2023 (Wed)Guidelines for Examination in the EPO

Part A – Chapter X-11

Due date for sixth-year renewal fee, payable
to EPO (Rule 71a(4))
Payment of the sixth renewal fee withadditional fee (Rule 51(2))
Mention of grant of the European patent in
the European Patent Bulletin
Due date for seventh-year renewal fee (nolonger to be paid to the EPO)

This means that, if the renewal fee in respect of the next patent year falls
due after notification of the communication under Rule 71(3) and before thenext possible date for publication of the mention of the grant of theEuropean patent, the renewal fee is payable to the EPO (Rule 71a(4)). In
that case, the mention of the grant will not be published until the renewal
fee has been paid. If the renewal fee or any additional fee (Rule 51(2)) is
not paid in time the application is deemed to be withdrawn.
Special provisions apply with regard to the due date for renewal fees inrespect of cases where there is a successful request for re-establishment ofrights under Art. 122 or a successful petition for review of a decision of theboard of appeal under Art. 112a.
5.2.5 Claims fees
Claims fees are due upon the filing of the first set of claims, which may be
the date of filing or which may occur later (see A-III, 9 and 15).
5.2.6 Fees for limitation/revocation, opposition, appeal, petition forreview
All of these fees are due on the date that the document in question is filed(request for limitation, request for revocation, notice of opposition, notice ofappeal and petition for review).
5.2.7 Fees payable for procedural and other requests
The fees necessary to be paid for procedural requests are due as provided
for in the Implementing Regulations. These requests become effective by
payment of the prescribed fee, which thus falls due on the date of filing of
the request. This is the case, for example, for the fee for further processing(Art. 121, Rule 135(1), see also E-VIII, 2) and the fee for re-establishmentof rights (Art. 122, Rule 136(1), see also E-VIII, 3). Similarly, the fees
payable for other requests, such as the fee for the registration of transfers(Rule 22(2)) and the administrative fees laid down by the President of the
EPO in accordance with Art. 3 RFees, for instance, for issuing a priority
document (Rule 54) or a certificate for a European patent (Rule 74), fall dueon the date of filing of the request.
6.

Payment in due time

6.1 Basic principle
A fee is considered to have been paid in due time if the date of payment(see A-X, 4) fell on or before the last day of the relevant time limit – or thetime limit extended pursuant to Rule 134.

Rule 51(4) and (5)Part A – Chapter X-12

Guidelines for Examination in the EPO

March 2023

6.2 Application of Art. 7(3) RFees and Art. 7(4) RFeesLate paymentof fees – period for payment considered observed

Art. 7(3) and(4) RFees

6.2.1 RequirementsFees paid by bank transfer – application ofArt. 7(3) and (4) RFees
If the a fee paid by bank transfer enters the EPO's bank account after theperiod in which it should have been made, the period for payment of that
fee is considered to be observed if the payer provides evidence to the EPO
that, within the period for payment of a given fee, they took in an EPC
contracting state they fulfilled one of the following steps conditions in an
EPC contracting state within the period for payment of that fee:(i)effecting payment of the fee was effected through a banking
establishment; or(ii)giving an order was duly given to a banking establishment to transfer
the amount of the payment. provided that there is a sufficient amountin the account on the date on which the time limit expires,

then they are considered to have observed the period for payment of thefee, even if the amount paid is received by the EPO after expiry of theperiod mentioned.
The EPO may request the person who made the payment to produce
evidence, within a period to be specified by it, as to the date on which oneof the conditions mentioned above was fulfilled in order for the period for
payment of the fee to be considered observed.
Where the period for payment is considered observed in application ofArt. 7(3) and (4) RFees, any further processing fee paid will be refunded.
See A-X, 6.2.5.

Point 4.1 ADA

Point 7.4.1 ADA
Point 7.5.1 ADA

6.2.2 Safety provision for late Late replenishment of deposit
accounts
The conditions for considering a period for payment to have been observed
even if the amount paid is received by the EPO after expiry of that period
apply mutatis mutandis to payments to replenish deposit accounts. Hence,for the purpose of complying with a time limit for payment, the account is
considered to have been replenished in time if the payer provides evidence
that the steps referred to under A-X, 6.2.1(i) or 6.2.1(ii) to replenish thedeposit account were taken before expiry of the payment period concerned.
Where a payment to replenish the deposit account is considered to havebeen made after expiry of a period in which it should have been made(see A-X, 4.2.4), the EPO will consider the period as having been observed
if evidence is provided that an adequate replenishment of the deposit
account was authorised:(i)at least one day before expiry of the period for paying the fee if using
the SEPA Credit Transfer scheme orMarch 2023

Guidelines for Examination in the EPO(ii)

at the latest on the last day of the period for paying the fee if using
the SEPA Instant Credit Transfer scheme or(iii)

at least three days before expiry of the period for paying the fee if
any other type of order was given to a banking establishment within
an EPC contracting state.

Part A – Chapter X-13

Where the requirements under point 7.5.1 ADA are fulfilled, any further
processing fee paid will be refunded. See A-X, 6.2.5.
6.2.3 Debit orders filed with a competent national authority
For debit orders accompanying applications filed with a competent national
authority, see A-II, 1.5 and A-X, 4.2.4 and A-II, 1.5.
6.2.4
Payment of fee at the normal fee rate
Where a fee can either be paid within a normal period at the normal fee
rate or within the period for further processing with the requisite further
processing fee, if the normal period for payment is considered to have been
observed when applying Art. 7(3) RFees and Art. 7(4) RFees, theabove-mentioned further processing fee need not be paid.
6.2.4 6.2.5 Amount of fee payableAs noted in A-X, 5.1.2, the amount of fee payable is always that applying
on the date of payment (see also the transitional provisions in the
Administrative Council decisions revising fees). Art. 7(3) and (4) RFees
protects the applicant in the event of late payment from the legal
consequences of expiry of the payment period, but not from the obligation
to make up any differences resulting from an increase in the amount of fee
in the meantime. For debit orders accompanying applications filed with acompetent national office (Art. 75(1)(b)), see point 5.6.3 of the ADA
point 12.3 of the ADA (Supplementary publication 4, OJ EPO
2019).Supplementary publication 3, OJ EPO 2022).
6.2.5 6.2.6 Noting of loss of rights
If applicants who have been sent a communication under Rule 112(1)noting non-compliance with a time limit for payment claim that the payment
was made in due time pursuant to Art. 7(1), (3) and (4) RFees, or inaccordance with the safety provision for replenishment of deposit accounts,
they must apply for a decision pursuant to Rule 112(2) and submit therequisite evidence. As an auxiliary request, applicants are advised torequest further processing.
7.

Purpose of payment

7.1

General7.1.1 Conditions for valid payment
There are two conditions for a fee payment to be valid:(i)

it must relate to pending proceedings; andRule 112

Part A – Chapter X-14

Art. 8 RFees

Guidelines for Examination in the EPO(ii)

March 2023

it must be made in due time, i.e. the date of payment (see A-X, 4)
must be on or after the due date (see A-X, 5.1.1). In addition, for atime limit for payment to be deemed to have been observed, the fullamount of the fee must have been paid in due time.

An essential condition for a valid payment to the EPO in the case of
payment or transfer to the bank account held by the European Patent
Organisation is that the amount is entered in that account. The payment isvalid in respect of the amount entered. If an insufficient amount has been
paid by mistake, it is not possible to rectify the error by having the shortfall
paid subsequently deemed to be paid on the original date of payment. The
same applies to payments made via credit card. Payment is a matter of fact
whereby a certain amount is transferred to and put at the disposal of the
EPO. It is not, therefore, a document filed with the EPO or a procedural
declaration which may be corrected pursuant to Rule 139. However, theEPO may, where it is considered justified, overlook any small amounts
lacking without prejudice to the rights of the person making the payment(Art. 8 RFees).
In the case of payment via deposit account the essential condition, in
addition to those specified under points (i)-(ii) above, is that the debit orderclearly specifies the purpose of payment by indicating the fee intended tobe paid, thus authorising the EPO to debit the fee for this particularpurpose. Furthermore, the EPO can only debit the full amount of the fee if
there are sufficient funds in the deposit account. In respect ofunderpayments due to incorrect information given in a debit order, see
A-X, 4.2.3. See also A-X, 7.1.2 concerning corrections of the purpose of
payment.

Art. 6 RFees

7.1.2 Purpose of payment
A distinction must be drawn between these conditions for valid payment(see A-X, 7.1.1) and the indication of the purpose of the payment.
Indication of the purpose of the payment serves to identify the proceedings
for which the fee is intended (e.g. for fee payments, the application number)and the specific type of fee. If the purpose of the payments payment cannot
immediately be established, the person making the payment will be
requested to communicate the purpose in writing within a specified period.
If they comply with this request in due time, the payment and the original
payment date remain valid. This is also the case when the clarification
involves re-assigning the payment to another application. Otherwise thepayment will be considered not to have been made. The boards of appeal
have decided that if the purpose of the payment has evidently been given
incorrectly, this deficiency is not prejudicial if the intended purpose can beestablished without difficulty from the remaining information. The
inadvertent use of a fee by the EPO for a different purpose from that
evidently intended by the person making the payment has no effect on the
purpose intended by that person (see J 16/84). Similarly, a debit order must
be carried out notwithstanding incorrect information given in it if theintention of the person giving the order is clear. Instructions to carry out theorder must be given by the EPO department qualified to recognise what isclearly intended (see T 152/82).

March 2023

Guidelines for Examination in the EPO

Part A – Chapter X-15

In the case of changes to the purpose of payment not arising from
Art. 6(2) RFees, the date of payment is the date of receipt of the request forthe change.
7.2 Indication of the purpose of the payment in the case ofdesignation fees
The following applies only to applications filed before 1 April 2009.
The designation fees are deemed paid for all contracting states upon
payment of seven times the amount of one designation fee. Such payments
simply need to be marked "designation fees" in order for the purpose of thepayment to be established. If fewer than seven designation fees are paid
and the payment agrees with the declaration in the appropriate section of
the request for grant form (EPO Form 1001), payment should once again
simply be marked "designation fees". However, if the payment differs fromthe intended payment as stated in the request form, the contracting states
for which the payment is now intended should be indicated with thepayment.

Art. 2(2), item 3,
RFees
Art. 6(1) RFees

If there is no such indication and the amount paid is insufficient to cover all
the contracting states mentioned in the appropriate section of the request
form, the procedure under A-III, 11.3.7 applies.
If an automatic debit order has been given issued (see the appropriate
sections of EPO Form 1001), applicants must inform the EPO prior to
expiry of the basic period under Rule 39(1) if they wish to pay designation
fees for contracting states other than those indicated in the request form. If
not, an amount equal to seven times the amount of one designation fee orthe designation fees for the contracting states indicated in the request form
is debited.
The same applies where EPO Form 1200 is used for entry into theEuropean phase of a Euro-PCT applications application, if the applicationenters that entered the European regional phase before 1 April 2009.
7.3

Indication of the purpose of payment in the case of claims fees

7.3.1 Claims fees payable on filing the European patent application
If the applicant pays the claims fees for all the claims incurring fees, theindication "claims fees" suffices to identify the purpose of the payment. If
the amount paid is insufficient to cover all the claims fees, the procedure
under A-III, 9 applies.
7.3.2 Claims fees payable before the grant of the European patent
In the communication under Rule 71(3), the applicant may be requested to
pay claims fees due before grant of the European patent. If the applicant
fails to pay the fee for all the claims in due time, the application is deemed
to be withdrawn (Rule 71(7)).
8. No deferred payment of fees, no legal aid, no discretion
The EPC makes no provision for deferring payment of fees (see J 2/78,
reasons 3) or for granting legal aid. An indigent party still has the possibility

Rule 45(1)Rule 71(4)Part A – Chapter X-16

Guidelines for Examination in the EPO

March 2023

of applying for legal aid from the competent national authority. However,
the time limit for payment is not extended in such a case; a party claiming
national legal aid must make the corresponding arrangements as early as
possible so that they are in a position to pay the fee in due time. The EPO
has also no discretion in waiving or refunding, without any legal basis, feesthat have become due (see J 20/87).
9.

Reduction of fees

9.1 General
Where a fee is reduced – in contrast to cases of fee refunds – the reduced
rate may be paid instead of the full fee. The factual conditions for a
reduction of the fee must be met on or before the day the period for
payment expires.
9.2

Art. 14(2)Reduction under the language arrangements

9.2.1 Conditions
European applications can be filed in any language. If filed in a language
other than an official language of the EPO, a translation must be furnished.
Consequently, the languages which can be used for filing European
applications fall into three categories:(a)official languages of the EPO(b)official languages of contracting states which are not official
languages of the EPO, such as Dutch, Italian or Spanish (hereinafter"admissible non-EPO languages"), and(c)all other languages, such as Chinese, Japanese or Korean Russian.

Art. 14(4)Furthermore, documents which have to be filed within a time limit may also
be filed in an "admissible non-EPO language" – if the applicant's residenceor principal place of business is within the territory of a contracting state
having this as an official language or if the applicant is a national of such acontracting state. See A-VII, 1.1 and 1.2.

Rule 6(3)Art. 14(1) RFees

In the case of European patent applications filed on or after 1 April 2014,
and of international applications entering the European phase on or afterthat date, a 30% reduction of the filing- and/or examination fee for certain
categories of applicants is provided for (see the notice from the EPO dated
10 January 2014, OJ EPO 2014, A23). In this regard, it is necessary to filethe documents making up the application "as filed" and/or the request for
examination in an admissible non-EPO language and to file the translation
not earlier than simultaneously (see G 6/91).

Rule 6(4)The categories of applicants eligible for the fee reductions are:–small and medium-sized enterprises (SMEs),–

natural persons,March 2023–

non-profit organisations,organisations,

Part A – Chapter X-17

Guidelines for Examination in the EPO

universities

andpublicresearch

whose residence or principal place of business is in an EPC contracting
state with an official language other than English, French or German, andnationals of such states who are resident abroad.
The definition of SMEs is that contained in European Commission
Recommendation 2003/361/EC of 6 May 2003 as published in the Official
Journal of the European Union. Under the recommendation, an enterpriseis considered to be any entity engaged in an economic activity, irrespectiveof its legal form. The category of micro, small and medium-sizedenterprises is made up of enterprises which employ fewer than
250 persons, which have an annual turnover not exceeding EUR 50 million
and/or an annual balance sheet total not exceeding EUR 43 million and forwhich no more than 25% of the capital is held directly or indirectly byanother company that is not an SME.

Rule 6(5)The eligibility of the further entities listed in Rule 6(4) is subject to thefollowing definitions:(i)"Non-profit organisations" are organisations not allowed by their legal
form or statutes, under the relevant law, to be a source of income,profit or other financial gain to their owners, or – if allowed to make aprofit – there is a legal or statutory obligation to reinvest the profits
made in the interest of the organisation.

(ii)"Universities" are to be understood as "classical" universities,
meaning institutions of higher education and research, under the
relevant law. However, comparable entities, such as secondary or
higher education establishments, will be considered to beuniversities.

(iii)"Public research organisations" are entities such as universities or
research institutes that are organised under public law and,irrespective of how they are financed, have the primary goal of
conducting fundamental research, industrial research or experimental
development and of disseminating the results by way of teaching,publication or technology transfer. All profits must be reinvested incarrying out these activities, in disseminating the results or inteaching.

If there are multiple applicants, each one must be an entity or a natural
person within the meaning of Rule 6(4) for the fee reduction to apply; it ishowever sufficient for only one of them to be entitled to use an admissible
non-EPO language (Art. 14(4), Rule 6(3)).

Rule 6(7)Applicants wishing to benefit from the reduction in the filing or examination
fee under Art. 14(1) RFees must expressly declare that they are an entity or
natural person covered by Rule 6(4) EPC.

Rule 6(6)Part A – Chapter X-18

Guidelines for Examination in the EPO

March 2023

Changes in the status of an entity under Rule 6(4) which occur after filingthe declaration will not have a retroactive effect on fee reductions that were
justified when granted.
The Office will conduct checks to ensure compliance with the eligibility
criteria laid down in Rule 6(3) to (7). If those checks give rise to reasonable
doubt during the course of the grant proceedings as to the veracity of thedeclaration given by the applicant, the EPO may request appropriate
evidence.
Should it become apparent that an incorrect declaration has been filed, thefee would not be validly paid since it was reduced unjustifiably and theapplication may be deemed withdrawn under Art. 78(2) and/or 94(2). The
same applies if no declaration has been filed. Where applicable, the loss ofrights arising from an incorrect or missing declaration may be remedied byfiling a request for further processing under Art. 121 and Rule 135 – subject
to making good the any underpayment and paying the fee for further
processing (see E-VIII, 2) – or by requesting a decision under Rule 112(2)(see E-VIII, 1.9.3).
In respect of European patent applications, oppositions, appeals, petitions
for review or requests for limitation or revocation filed before 1 April 2014,
and international applications having entered the European phase before
that date, the fee reduction in force until then was applied.
9.2.2 Reduction of the filing fee
In the case of the filing of the European application, the presence of a
description is necessary for the accordance of a date of filing(Rule 40(1)(c)), but claims are no longer required for this. According toJ 4/88, only the description and claims needed to be in this language toqualify for the fee reduction (not the request for grant for example).
However, since claims are no longer required for a date of filing, theessential element is now the description.
Consequently, the filing fee is reduced if the European patent application(i.e. at least the description) is filed in an admissible non-EPO language
and the applicant satisfies the eligibility criteria mentioned in A-X, 9.2.1.
Where the application is filed by reference to a previously filed application(see A-II, 4.1.3.1), and the previously filed application referred to is in an
admissible non-EPO language, and the applicant satisfies the eligibility
criteria mentioned in A-X, 9.2.1, then the applicant is also entitled to the
reduction in the filing fee. For the purposes of the reduction, it does notmatter whether or not the applicant requested that the claims of thepreviously filed application take the place of the claims in the application as
filed (see above).
The reduction of the filing fee is also applicable to divisional applications if
the parent application was filed in an admissible non-EPO language(see A-IV, 1.3.3 and A-X, 9.2.1) and the divisional application is filed in thesame admissible non-EPO language as the earlier application (Rule 36(2)March 2023

Guidelines for Examination in the EPO

Part A – Chapter X-19

and Rule 6(3)), provided that the other requirements for the reduction aremet (see above) and a translation is filed in time (see A-X, 9.2.1).
Since the additional fees payable if the application comprises more than
thirty-five pages, or if it is a second- or further generation divisional
application, form part of the filing fee, the reduction applies also to them.
9.2.3 Reduction of the examination fee
Applicants eligible for the fee reduction will be allowed a reduction in theexamination fee if the request for examination is filed in an admissible
non-EPO language. EPO Forms 1001 (Request for grant of a European
patent) and 1200 (Entry into the European phase) contain drop-downmenus/pre-printed boxes where the request for examination in an
admissible non-EPO language and the declaration under Rule 6(6) can beselected/entered. In these cases, the filing of a translation of the request is
not necessary, since the written request for examination in the three EPO
official languages is pre-crossed in the same forms. Wordings for therequest-for-examination in the admissible non-EPO languages are listed on
the EPO website. Where the request for examination in an admissible
non-EPO language is filed subsequent to EPO Form 1001 or EPO Form
1200, a translation of the request for examination in the procedural
languages must be re-filed (see G 6/91). Subsequent documents related to
examination proceedings need not be filed in the admissible non-EPO
language.

Art. 14(4)Rule 6

If the conditions for the reduction of the examination fee where the EPO
has drawn up the international preliminary examination report are also
fulfilled, see A-X, 9.3.2.
9.3

Special reductions

9.3.1 Reduction of the search fee for a supplementary European
searchThe search fee for a supplementary European search report is reduced bya fixed amount for PCT applications for which the Patent Office of Austria,
Finland, Spain, Sweden or Türkiye Turkey, the Nordic Patent Institute or
the Visegrad Patent Institute was the International Searching Authority or
where one of these offices prepared the supplementary international search
report (see the decisions of the Administrative Council of 27 October 2011,
OJ EPO 2011, 616;
of25 October 2012,
OJ EPO 2012, 584;
of
16 December 2015,
OJ EPO 2016, A2;of
28 June 2017,
OJ EPO 2017, A57; and of 12 December 2019, OJ EPO 2020, A3; and of
15 December 2021, OJ EPO 2022, A2).
It is to be noted that where the requirements for fee reduction are fulfilled
the fee reduction is granted only once, i.e. for the supplementary search fee
paid under Rule 159(1)(e). The reduction applies independently of whether
the first invention in the claims was searched by the ISA in the international
phase. The reduction does not apply to any further search fee (to be) paid
under Rule 164(1).

Art. 153(7)Part A – Chapter X-20

Guidelines for Examination in the EPO

March 2023

No reduction of the supplementary search fee applies for PCT applications
for which an International Searching Authority other than the ones
mentioned above was selected. For the latest overview of the amounts
payable, see the notice from the EPO dated 21 March 2022,
OJ EPO 2022, A29 20 March 2020, OJ EPO 2020, A30.

Art. 14(2) RFees

9.3.2 Reduction of the examination fee where the international
preliminary examination report is being drawn up by the EPO
Where the EPO has drawn up the international preliminary examination
report in respect of an international application, the examination fee isreduced by 75% in proceedings before the EPO as elected Office.
Accordingly, the reduction applies to the Euro-PCT application entering theEuropean phase. The reduction of the examination fee does not apply todivisional applications for whose parent application the EPO has drawn up
the international preliminary examination report.
If the conditions for a reduction under the language arrangements(see A-X, 9.2.3) are also fulfilled, the examination fee is first reduced by
75%, then by a further 30%, i.e. the total reduction is 82.5%, or the amountpayable is 17.5% of the full fee.
10. Refund of fees
10.1 General remarks
A fee that has been validly paid (see A-X, 7.1.1) is not refunded. For
instance, a validly paid further processing fee is not refunded if the request
for further processing is rejected due to non-completion of the omitted act,
which is another requirement of Rule 135(1) (see E-VIII, 2). As an
exception to this general principle, a validly paid fee is refunded if there are
special provisions for the refund in either the EPC or the Rules relating toFees (see A-X, 2).
By contrast, any fee which has not been validly paid is to be refunded. See
subsections A-X, 10.1.1 to A-X, 10.1.3 below.
10.1.1 Fee payments lacking a legal basis
If a payment does not relate to a pending European patent application(e.g. it relates to a patent application already deemed to be withdrawn) or topending proceedings, there is no legal basis for the payment. In thesecases, the amount paid must be refunded.
If the payment is made before or on the due date and if, no later than thatdate, the legal basis ceases to exist (e.g. because the patent application isdeemed to be withdrawn or is withdrawn), the amount paid is to berefunded. For the designation fee and renewal fees see A-X, 5.2.2 and5.2.4 respectively. Fees paid after the due date and before expiry of thetime limit for payment are refunded only if there is a particular reason for arefund (see A-X, 10.2).
10.1.2 Late payments
The payment of a fee after expiry of the applicable time limit is not valid andmust be refunded, unless a valid request for further processing has been

March 2023

Guidelines for Examination in the EPO

Part A – Chapter X-21

filed. Examples: filing fee, search fee, designation fee or examination fee
paid as laid down under the provisions relating to further processing(Art. 121 and Rule 135), without the further processing fee required byRule 135(1) and Art. 2(1), item 12, RFees (see E-VIII, 2).
10.1.3 Insignificant amounts
Where the sum paid is larger than the fee, the excess will not be refunded if
the amount is insignificant and the party concerned has not expressly
requested a refund. It has been decided that any amount up to EUR 16
constitutes an insignificant amount (see the decision of the President of the
EPO dated 14 February 2020, OJ EPO 2020, A17).

Art. 12 RFees

10.2 Special refunds
10.2.1 Refund of the search fee
The search fee for a European or supplementary European search isrefunded in cases provided for in Art. 9 RFees and in the decision of the
President of the EPO dated 14 January 2022, OJ EPO 2022, A8,
21 December 2018, OJ EPO 2019, A4, which applies to European patentapplications in respect of which the European or supplementary European
search is completed on or after 1 April 2019 2022. Details on criteria forrefund of search fees are given in the notice from the EPO dated
9 January 2009, OJ EPO 2009, 99, according to which the search division
will determine the level of refund to be applied. In the event ofdisagreement, the applicant may request an appealable decision(Art. 106(2)), the issuing of which falls within the competence of theReceiving Section where the examining division has not yet assumed
responsibility for the application (Rule 10) (see B-XI, 2).

Art. 9 RFees
Rule 10For the purposes of Art. 9(1) RFees, the date of the start of the search isindicated by means of EPO Form 1704 in the public part of the dossier andis thus open to file inspection in the European Patent Register after
publication of the patent application (see also B-IV, 1). Before publication,
the EPO will provide the applicant with the relevant information uponrequest, or this information can be accessed electronically via the My Filesor MyEPO Portfolio service.
10.2.2 Refund of the further search fee
If an applicant, following a communication from the search division under
Rule 64(2), has paid a further search fee but the examining division, at theapplicant's request, has found that there was no justification for charging
the further search fee, the latter will be repaid refunded. The same principle
applies if the applicant has paid a search fee on the basis of an invitation by
the examining division in accordance with Rule 164(2) (seeC-III, 2.3 C-III, 3.1). In such case the examining division will, on request,
review the justification for charging the search fee in its invitation under
Rule 164(2) (see C-III, 3.3 C-III, 3.4).
10.2.3 Refund of the examination fee
The examination fee will be refunded in the situations described inArt. 11 RFees (see A-VI, 2.2, third paragraph, and A-VI, 2.5).

Rule 64(2),164(5)

Art. 11 RFees

Part A – Chapter X-22

Rule 37(2)Rule 71a(6)Guidelines for Examination in the EPO

March 2023

10.2.4 Refund pursuant to Rule 37(2)If a European patent application filed with a competent national authority isdeemed to be withdrawn pursuant to Art. 77(3), all fees, in particular thefiling, search and designation fees and any claims fees paid, will be
refunded.
10.2.5 Refund of the fee for grant and publishing
If the application is refused, withdrawn prior to notification of the decisionon the grant of a European patent or, at that time, deemed to be withdrawn,
the fee for grant and publishing shall be refunded. The date of notificationof the decision is determined as indicated in E-II, 2. Note that this date islater than the date on which the decision is handed over to the EPO internal
postal service (i.e. decision G 12/91 does not apply in this case).
This may happen, for example, where the applicant pays the fee for grantand publishing within the Rule 71(3) period but does not pay the claims
fees which are due and/or neglects to file the translations of the claims,
leading to deemed withdrawal of the application under Rule 71(7)(see C-V, 3).
Where the application is refused, the refund will be effected only after theperiod for filing of an appeal has expired without an appeal having been
filed (see E-XII, 6). Where the application is deemed to be withdrawn, therefund will be effected only after the period for requesting further
processing has expired and this has not been requested by the applicant(see E-VIII, 2).
10.3 Method of refund
Refunds are made either to a deposit account held with the EPO or bytransfer to a bank account (see the notice from the EPO dated
27 February 2019, OJ EPO 2019, A26). Refunds are not made to a credit
card account (see the notice from the EPO dated 16 February 2022,
OJ EPO 2022, A18 23 September 2021, OJ EPO 2021, A73).

Point 8 ADA
Point 15 ADA

10.3.1 Refunds to a deposit accountFees are refunded to any deposit account that the party to the proceedings
before the EPO (e.g. the applicant, the opponent, the appointed
representative, the appellant) applicant, proprietor or opponent/appellant (ifapplicant or proprietor) has indicated in its refund instructions. In mostcases this will be the deposit account of the party to the proceedings itself,
but it may also be the deposit account of a third party. The EPO notifies theparty to the proceedings about the intended refund and the deposit accountto which the amount will be credited in a separate communication.
Refund instructions, i.e. to which deposit account refunds are to be made,are to be filed in an electronically processable format (XML), namely via
OLF EPO Online Filing or Online Filing 2.0, using EPO Form 1001E, 1200E
or 1038E, preferably as early as possible in the proceedings before the
EPO. Refund instructions can be updated at any time, using
EPO Form 1038E.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter X-23

For international applications filed with the EPO as receiving Office or forwhich the EPO acted as an International Authority under the PCT, newrefund instructions are to be filed when entering into the European phase,using EPO Form 1200E.
New refund instructions filed together with a In the case of a request for achange of representative or a transfer of rights, new refund instructions, if
applicable, should be submitted as soon as possible using EPO
Form 1038E, preferably together with the request. The updated refund
instructions will apply only once the EPO has confirmed the recording of thechange. If no new refund instructions are present, a deposit accountrecorded for an applicant or representative who has withdrawn from theproceedings will be deleted ex officio. The same applies to the deposit
account held by a third party indicated in the refund instructions of theformer applicant or representative.
If no refund instructions are on file when a refund becomes due or if they
are ambiguous, the EPO will establish ex officio whether it can make a
refund to a deposit account held by the appointed professional
representative or by the applicant (opponent/or appellant, if
applicant/proprietor). Otherwise it will invite the person who made thepayment to claim the refund online.
In the case of a refund of fees not payable by the applicant, proprietor orappellant (if applicant or proprietor), e.g. the opposition fee, the EPO will
establish ex officio whether the refund can be credited to a deposit account.
Otherwise it will invite the person who made the payment to claim therefund online.
10.3.2 Refunds to a bank accountIf a refund cannot be made to a deposit account, the party to theproceedings is invited to claim the refund online via the EPO website (feepayment.epo.org/refund) using a refund code communicated to it in a
non-public communication. Upon successful registration and login, therefund can be claimed by entering the details of the application, the refund
code and a bank account.
10.4 Re-allocation instead of refund
If a party files a written request, the payment may be re-allocated instead ofbeing refunded. The date of receipt of the re-allocation instructions is thenconsidered to be the date of payment for the new purpose of payment.
11. Crediting of fees under Rule 71a(5)If, in response to an invitation under Rule 71(3), the applicant has alreadypaid the fee for grant and publishing or the claims fees, the amount paid
shall be credited if a further such invitation is issued. This may happen
where:(i)the applicant requests amendments or corrections in response to thefirst Rule 71(3) communication or requests the reversal ofamendments proposed by the examining division in that
communication (see C-V, 4.1) and also voluntarily pays the fee forRule 71a(5)Part A – Chapter X-24

Guidelines for Examination in the EPO

March 2023

grant and publishing and claims fees (even though this is not
required, C-V, 4.2); and the examining division then issues asubsequent Rule 71(3) communication (see C-V, 4.6 and 4.7.2), or(ii)

after the applicant has approved the text for grant in response to thefirst Rule 71(3) communication (which requires payment of the fee for
grant and publishing and any claims fees due – see C-V, 1.1),
examination is resumed (see C-V, 6.1) leading to the issuance of asubsequent Rule 71(3) communication (see C-V, 6.2).

11.1 Crediting of the fee for grant and publishing
The amount of the fee for grant and publishing paid in response to the first
Rule 71(3) communication is credited towards the amount of this same fee
due in response to the second Rule 71(3) communication. If there is anincrease in this fee between the first and second Rule 71(3)communications, the difference must be paid within the period for reply tothe second Rule 71(3) communication.
Art. 2(2),item 7, RFees

For European applications filed before 1 April 2009 or international
applications entering the European phase before that date, the fee for grantand publishing incorporates a fixed component and a component in respectof each page of the application over and above 35 (see C-V, 1.2 and
A-III, 13.2). If the overall fee changes between the first and the second
Rule 71(3) communication, any shortfall must be paid within the second
Rule 71(3) period (e.g. resulting from a fee increase or an increase in thenumber of pages). Any excess will be refunded (for example where theversion of the application on which the second Rule 71(3) communication isbased has fewer pages than the earlier version on which the first
Rule 71(3) communication was based).
11.2 Crediting of claims fees
The amount of the claims fees paid in response to the first Rule 71(3)communication is credited towards the amount of the claims fees due in
response to the second Rule 71(3) communication. In this regard it isimportant to note that, unlike claims fees paid on filing under Rule 45 or on
entry into the European phase under Rule 162, it is not the number ofclaims paid for which is used in the calculation, but rather the amount paid.
If the amount of the claims fees due increases between the first and second
Rule 71(3) communications (e.g. because there is an increase in the fee
per claim or an increase in the number of claims or both), the difference
must be paid within the period for reply to the second Rule 71(3)communication.
In order to calculate the amount of the claims fees due in response to thesecond Rule 71(3) communication, the number of fee-free claims (15) andalso the number of claims fees paid on filing or on entry into the European
phase are deducted from the number of claims on which both the first andsecond Rule 71(3) communications are based. Thereafter, the amount of
the claims fees paid in response to the first Rule 71(3) communication isthen credited towards (and so deducted from) the amount of the claims
fees due in response to the second Rule 71(3) communication (if theMarch 2023

Guidelines for Examination in the EPO

amount of fees due after the second Rule 71(3) communication is smaller
than that voluntarily paid after the first Rule 71(3) communication,
see C-V, 4.2).
11.3 Separate crediting of the fee for grant and publishing and claims
fees
The crediting of claims fees and the fee for grant and publishing is dealt
with separately. Claims fees are not credited towards any increase in thefee for grant and publishing.
11.4 Further processing fee and crediting of fees
Where the applicant has requested further processing in respect of the first
Rule 71(3) communication (see E-VIII, 2), the fee for further processing is
not credited towards any increase in the amount of the fees due in
response to the second Rule 71(3) communication.
Furthermore, the fee for further processing paid in respect of the first
Rule 71(3) communication is also not credited to any subsequent request
for further processing in respect of the second Rule 71(3) communication.

Part A – Chapter X-25

March 2023

Guidelines for Examination in the EPO

Part A – Chapter XI-1

Chapter XI – Inspection of files; communicationof information contained in files;
consultation of the European Patent Register;issuance of certified copies
1. General
After a European patent application has been published, any person may
inspect and obtain information from the files relating to the application andthe resultant European patent. Similarly, anybody may request theissuance of a sample of biological material in accordance with Rule 33 (seeA-IV, 4.4).

Art. 128
Rule 143, Rule 144
Rule 145, Rule 146
Art. 3(1) RFees

The provisions governing inspection of files are contained in Art. 128 andRules 144 and 145 (see A-XI, 2); those governing communication of
information are contained in Rule 146 (see A-XI, 3). For international (PCT)
applications, see E-IX, 2.10.
The European Patent Register, containing the particulars specified inRule 143 and accessible free of charge, can be consulted in order toascertain the state of the proceedings and the legal status of patent rights.
It also provides access to the files of published European patentapplications and patents for inspection (see A-XI, 4). The inspection of
paper files on the premises of the European Patent Office was discontinued
in 2007.
On request, the EPO issues certified copies of documents contained in thefiles or of other documents (see A-XI, 5).
Any fees payable for any of the above services are laid down by the
President pursuant to Art. 3(1) RFees and are regularly published in the
Official Journal. See also the schedule of fees and expenses on the EPO
website (epo.org).
An administrative fee, if any, falls due when the request is received. The
methods of payment and the date on which payment is deemed to havebeen made are dealt with in the Rules relating to Fees (see A-X, 2 and 4).
Where the administrative fee has been duly paid, it will not be refunded(see A-X, 10.1).
2.

Inspection of files

2.1 Documents open to file inspection
All parts of the file compiled when conducting the examination, opposition
and appeal procedure with the parties are open for inspection, subject tothe restrictions mentioned below (see A-XI, 2.3). It also includes informationon the dates of the start of search and examination, any invitations under
Rule 63(1) or Rule 62a(1) and the search opinion if applicable.
As regards application documents corrected under Rule 56a, see A-II, 6
and the notice from the EPO dated 23 July 2022, OJ EPO 2022, A71).

Art. 128
Rule 145(2)Rule 147(2)Part A – Chapter XI-2

Guidelines for Examination in the EPO

March 2023

Observations by third parties (Art. 115) are an integral part of the files andas such are open to inspection in accordance with Art. 128. If a third party
asks that their observations or a part thereof be treated confidentially, thatrequest cannot be granted and the third party will be notified accordingly(see E-VI, 3).
The parts of the file excluded from inspection (see A-XI, 2.3) are kept
separate from those open to inspection.

Rule 145(2)Art. 3(1) RFees

2.2 Conducting file inspections
The President of the EPO determines all file inspection arrangements,
including the circumstances in which an administrative fee is payable (seethe decision of the President of the EPO 20 February 2019,
OJ EPO 2019, A16).
As a rule, published patent applications and granted patents can beinspected free of charge online on the EPO website via the European
Patent Register. In exceptional cases, and only if accompanied by a
substantiated request, uncertified paper copies of files or uncertified
extracts from the European Patent Register are still issued. The
corresponding administrative fees have been abolished (see the noticefrom the EPO dated 20 February 2019, OJ EPO 2019, A15, and thedecision of the President of the EPO dated 20 February 2019,
OJ EPO 2019, A16)
Regarding requests to furnish certified copies of documents from the file ora certified extract from the European Patent Register, see A-XI, 5.
With regard to the inspection of files containing high-volume sequencelistings, see A-IV, 5.

Art. 128(4)Rule 146
Rule 145
Rule 144

2.3 Restrictions to file inspection
Inspection of files is subject to the restrictions laid down in Rule 144.
The parts of the file excluded from inspection are:Rule 144(a)(i)

the documents relating to the exclusion of or objections to membersof the boards of appeal or of the Enlarged Board of Appeal;

Rule 144(b)(ii)

draft decisions and opinions, and all other documents used for the
preparation of decisions and opinions, which are not communicatedto the parties;

Rule 144(c)(iii)

the designation of the inventor if that party has waived the right to bementioned as inventor under Rule 20(1);Rule 144(d)(iv)

any other document excluded from inspection by the President of the
EPO on the ground that such inspection would not serve the purposeof informing the public about the European patent application or the
resulting patent. These include documents relating to file inspection
and requests for accelerated search and accelerated examination

March 2023

Guidelines for Examination in the EPO

Part A – Chapter XI-3

under the "PACE" programme (see the decision of the President of
the
EPO
dated
12 July 2007,
SpecialeditionNo. 3,OJ EPO 2007, J.3);(v)

subject to Rule 94.2 and 94.3 PCT, the files relating to international
preliminary examination for a Euro-PCT application in respect ofwhich the EPO is the International Preliminary Examining Authority
and for which an international preliminary examination report has not
yet been established (see OJ EPO 2003, 382; see also E-IX, 2.10).

Art. 38(1) PCT
Rule 94 PCT

Apart from listing the documents excluded from file inspection by the EPO
of its own motion, the decision of the President referred to under point (iv)above stipulates that (parts of) other documents the inspection of which isclaimed to be prejudicial to the legitimate personal or economic interests ofa natural or legal person may be excluded from file inspection on request.
Any such request needs to be duly substantiated and point out in which
specific way the legitimate personal or economic interests of the party areaffected and what are the consequences thereof rather than merely making
a statement concerning a party's interests in general. Also, it isrecommended to clearly mark any requests for exclusion from fileinspection, allowing them to be immediately identified as such and to beprovisionally excluded from inspection, pending a final decision on therequest.
When a submission is to be excluded from file inspection only partially, only
the parts or passages in question are excluded, while the rest of thesubmission remains public.
If it is decided that certain papers, either marked "confidential" or in view of
the nature of their content, are not to be excluded from file inspection under
Rule 144, they are returned to the sender (see T 516/89).
2.4 Confidentiality of the request
Correspondence from the proceedings relating to the inspection of files
conducted between the EPO and the person requesting the inspection is
included in the non-public part of the file. The EPO does not provide theapplicant with any information about the proceedings relating to theinspection of files (see A-XI, 2.3(iv) but also A-XI, 2.5, third paragraph).
2.5 File inspection before publication of the application
Until the European patent application is published, the files may beinspected only by applicants or with their consent. The online services
service My Files and MyEPO Portfolio allow allows applicants to inspect
online the public part of the files relating to their still unpublishedapplications (see the notice from the EPO dated 13 December 2011,
OJ EPO 2012, 22, and the decision of the President and notice from the
EPO both dated 11 May 2022 concerning the web-based online service
MyEPO Portfolio, OJ EPO 2022, A51 and A52 respectively). If a third party
requests file inspection without at the same time submitting the applicant'sconsent, the EPO will not release the files until the applicant's approval has
been presented.

Art. 128(1)Part A – Chapter XI-4

Art. 128(2)Guidelines for Examination in the EPO

March 2023

However, prior to publication of the European patent application, any
person who can prove that applicants have invoked their rights under theapplication against them may also inspect the files. The rights under aEuropean patent application are also deemed to have been invoked where
rights under a first filing in a contracting state have been invoked and thesubsequent European application is mentioned at the same time(see J 14/91). If such proof is not furnished together with the request, theEPO will invite the requester within a specified period to supply proof. If thatis not done in due time, the request will be refused.
In case of a request for inspection of the files under Art. 128(2), theapplicant is entitled to notification of the identity of the person making therequest. Professional representatives requesting inspection of the files onbehalf of a third party pursuant to Art. 128(2) must accordingly give the third
party's name and address and file an authorisation.
A decision on a request for inspection of the files pursuant to Art. 128(2) isonly taken once the applicant has been heard. If the applicant objects andprovides grounds for the belief that the requirements under Art. 128(2) are
not met within the period set by the EPO, a decision will be delivered. Thisdecision is subject to appeal.

Art. 128(3)Art. 128(5)Rule 146

Prior to publication of a European divisional application the file of thisdivisional application may only be inspected in the cases described inArt. 128(1) and (2). This also applies where the parent application has
already been published. However, where a European divisional application
or a new European patent application filed under Art. 61(1)(b) is published,
the files of the earlier application may be inspected prior to the publicationof that earlier application and without the consent of the relevant applicant.
2.6 Publication of bibliographic data before publication of theapplication
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 waswithdrawn or because the announcement was erroneous. The lists of thesepublication numbers can be found on the European publication server,which is accessible via the EPO website (epo.org).
3. Communication of information contained in the files
Subject to the restrictions provided for in Art. 128(1) to (4) and Rule 144(see A-XI, 2.3), the EPO may, upon request, communicate information
concerning any file of a published European patent application or aEuropean patent. This is subject to the payment of an administrative fee(see A-XI, 1 and OJ EPO 2019, A14 and A15).
However, the EPO may refer to the option to obtain inspection of the fileitself, should it deem this to be appropriate in view of the quantity of
information to be supplied.

March 2023

Guidelines for Examination in the EPO

Part A – Chapter XI-5

Correspondence from the proceedings relating to the communication of
information conducted between the EPO and the person requesting theinformation is filed in the part of the file which is not accessible to the
public. The EPO does not provide the applicant with any information about
the proceedings relating to the communication of information.
4. Consultation of the European Patent Register
The European Patent Register can be accessed free of charge via the EPO
website (epo.org) (see A-XI, 2.2). Entries in the European Patent Registerare made starting from the publication of the European patent application
up to expiry of the period of opposition or the termination of opposition
proceedings. Where applicable, the date and purport of any decision taken
in revocation or limitation proceedings (Art. 105b(2)) and/or on a petition forreview (Art. 112a) are also included (Rule 143(1)(x) and (y)). Since thecorrection of the designation of the inventor may be made at any time(see A-III, 5.5), there is no time restriction for related entries in theEuropean Patent Register.

Art. 127
Rule 143
Rule 21(2)Apart from the data to be entered in the European Patent Register under
Rule 143(1), the Register includes, under Rule 143(2), additional
application and procedural data not published in the European Patent
Bulletin (see the decision of the President of the EPO dated 15 July 2014,
OJ EPO 2014, A86). Register data may also be obtained by telephone from
Customer Services: epo.org/service-support/contact-us.html. In exceptional
cases, an extract from the Register will be provided on receipt of a
substantiated request (see OJ EPO 2019, A15).
5.

Issuance of certified copies

5.1 Certified copies of documents from the files or of otherdocuments
The EPO will issue on request a certified copy of the European patentapplication or European patent specification, or of other documents fromthe files of European applications and patents (e.g. an extract from theEuropean Patent Register), provided that the conditions for file inspection(Art. 128(1) to (4)) are fulfilled and an administrative fee has been paid(see A-XI, 1 and OJ EPO 2019, A14).
A certified copy of the European patent certificate with specification
attached is supplied to the patent proprietor on request (see C-V, 12).
5.2 Priority documents issued by the EPO
Any priority document (i.e. the certified copy of the European patentapplication together with the certificate stating the date of filing thereof) will
only be issued to the (original) applicant or that party's successor in title on
written request. If such request is missing, the EPO will invite the requester
to file it and will supply the certified copy only once this requirement has
been fulfilled. In the case of applications filed in a language other than anofficial language of the EPO (Art. 14(2)), the priority document relates to theapplication as originally filed, not to the translation in one of the official
languages of the EPO.

Rule 74

Rule 54

Part A – Chapter XI-6

Guidelines for Examination in the EPO

March 2023

The President of the EPO determines all necessary arrangements,
including the form of the priority document and the circumstances in which
an administrative fee is payable (see A-XI, 1 and the decision of the
President of the EPO dated 20 February 2019 on the inspection of files,
OJ EPO 2019, A16). The content of priority documents corresponds to theapplication documents as available on the date of filing and as contained in
the electronic file, reproduced in black and white (see A-IX, 1.2 and 7.1 andthe notice from the EPO dated 14 January 2020, OJ EPO 2020, A7).
Where a European patent application claims the priority of a previous
European patent application or an international application filed with the
EPO as receiving Office under the PCT, a certified copy of the previous
application will be included in the file free of charge (see also A-III, 6.7).
Furthermore, if the patent office at which a European priority document is tobe filed participates in the WIPO Digital Access Service (DAS), it is possible
for that office to retrieve the European priority document free of charge via
DAS by providing the access code that the EPO generates for every
European patent application filed with it and every international application
filed with the EPO as receiving Office (see also A-III, 6.7).

Part B
Guidelines for Search

March 2023

Part B – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – Introduction

I-1

1.

Purpose of Part B

I-1

2.

Search division

I-1

2.1

Consultation with other examiners

I-1

2.2
2.2.1

Search division consisting of more than one member
Where claimed unitary subject-matter covers morethan one technical field
Further searches on a non-unitary application in adifferent technical field

I-1

2.2.2

I-2
I-2

Chapter II – General

II-1

1.

Search and substantive examination

II-1

1.1

Contact between the applicant and the searchdivision

II-1

2.

Objective of the search

II-1

3.

Search documentation

II-1

4.

Search report

II-1

4.1

European searches

II-2

4.2

Additional European searches

II-2

4.3
4.3.1

Supplementary European searches
Dispensing with the supplementary European search
reportA supplementary European search report is required
Application documents for the supplementary
European search report

II-2

4.4

International (PCT) searches

II-4

4.5

International-type searches

II-4

4.6

Searches on national applications

II-4

Chapter III – Characteristics of the search

III-1

1.

Opinions of the search division

III-1

1.1

Opinions in relation to the search report

III-1

4.3.2
4.3.3

II-3
II-3
II-4

Part B – Contents b

Guidelines for Examination in the EPO

March 2023

Opinions on matters relating to limitation of thesearchIII-1

2.

Scope of the search

III-1

2.1

Completeness of the search

III-1

2.2

Effectiveness and efficiency of the search

III-2

2.3

Search in analogous fields

III-2

2.4

Search on the internet

III-3

3.

The subject of the search

III-3

3.1

Basis for the search

III-3

3.2
3.2.1

Interpretation of claims
Claims with explicit references to the description or
drawings
Use of the description and/or drawings to identify thetechnical problem
Use of the description and/or drawings to establish
definitions of unclear terms not defined in the claims
Use of the description and/or drawings to establish
definitions of clear terms given a definition different
from their usual meaning
Ascertaining the existence of a fallback position

III-3

1.2

3.2.2
3.2.3
3.2.4

3.2.5
3.3

III-4
III-4
III-5

III-5
III-6

3.3.1
3.3.2

Amended claims or missing parts (Rule 56), missing
parts (Rule 56) or erroneously filed application
documents or parts (Rule 56a)
General considerations
Specific rules applicable to Euro-PCT applications

III-6
III-6
III-6

3.4

Abandonment of claims

III-7

3.5

Anticipation of amendments to claims

III-7

3.6

Broad claims

III-7

3.7

Independent and dependent claims

III-8

3.8

Search on dependent claims

III-9

3.9

Combination of elements in a claim

III-9

3.10

Different categories

III-9

3.11

Subject-matter excluded from search

III-103.12

Lack of unity

III-103.13

Technological backgroundIII-10March 2023

Part B – Contents c

Guidelines for Examination in the EPO

Chapter IV – Search procedure and strategy

IV-1

1.

Procedure prior to searching

IV-1

1.1

Analysis of the application

IV-1

1.2

Formal deficiencies

IV-1

1.3

Documents cited or supplied by the applicant

IV-2

2.

Search strategy

IV-3

2.1

Subject of the search; restrictions

IV-3

2.2

Formulating a search strategy

IV-4

2.3

Carrying out the search; types of documents

IV-4

2.4

Reformulation of the subject of the search

IV-6

2.5

Closest prior art and its effects on the search

IV-6

2.6

End of search

IV-7

3.

Procedure after searching

IV-7

3.1

Preparation of the search report

IV-7

3.2

Documents discovered after completion of the search IV-7

3.3

Errors in the search report

IV-7

Chapter V – Preclassification, IPC and CPC
classification of European patent applications V-1
1.

Definitions

V-1

2.

Preclassification (for file routing and distribution)

V-1

2.1

Incorrect preclassification

V-1

3.

IPC classification of the application

V-2

3.1

IPC classification of late-published search reports

V-2

3.2

IPC classification when the scope of the invention is
not clear (e.g. a partial search)

V-3

IPC classification in cases of a lack of unity of
invention

V-3

3.4

Verification of the IPC classification

V-3

4.

CPC classification of the application

V-3

3.3

Part B – Contents d

Guidelines for Examination in the EPO

March 2023

Chapter VI – The state of the art at the search
stage
VI-1
1.

GeneralVI-1

2.

Oral disclosure, use, exhibition, etc. as state of
the artVI-1

3.

Priority

VI-1

4.

Conflicting applications

VI-1

4.1

Potentially conflicting European and international
applications
Published European applications as "E" documents
Published international applications (WO) as"E" documents

4.1.1
4.1.2

VI-1
VI-2
VI-2

4.2

National earlier prior rights

VI-3

5.

Date of reference for documents cited in the
search report; filing and priority date

VI-3

5.1

Verification of claimed priority date(s)

VI-3

5.2

Intermediate documents

VI-4

5.3

Doubts as to the validity of the priority claim;
extension of the search

VI-4

5.4

Documents published after the filing date

VI-5

5.5

Non-prejudicial disclosures

VI-5

5.6

Matters of doubt in the state of the art

VI-6

6.

Contents of prior-art disclosures

VI-6

6.1

General remark

VI-6

6.2

Citation of documents corresponding to documents
not available or not published in one of the official
EPO languages

VI-7

6.3

Conflict between abstract and source document

VI-7

6.4

Insufficient prior-art disclosures

VI-8

6.5

Incorrect compound records in online databases

VI-8

7.

Internet disclosures - technical journals

VI-8

March 2023

Guidelines for Examination in the EPO

Chapter VII – Unity of invention

VII-1

1.

General remarks

VII-1

1.1

Partial European search report

VII-1

1.2
1.2.1
1.2.2
1.2.3

Invitation to pay further search fees
GeneralCascading non-unity
The applicant has not paid all additional search fees

VII-1
VII-1
VII-2
VII-3

1.3

Documents relevant only to other inventions

VII-3

1.4

Assessment and possible review of the unity
requirement

VII-3

2.

Procedures in cases of lack of unity

VII-4

2.1

Request for refund of further search fee(s)

VII-4

2.2

Complete search despite of lack of unity

VII-4

2.3

Supplementary European search

VII-4

3.

Lack of unity and Rule 62a or Rule 63

VII-4

Chapter VIII – Subject-matter to be excluded
from the search
VIII-1
1.

General remarks

VIII-1

2.

Considerations relating to specific exclusions
from and exceptions to patentability

VIII-1

Methods for treatment of the human or animal bodyby surgery or therapy and diagnostic methods
practised on the human or animal body

VIII-1

2.2.1

Subject-matter excluded from patentability under
Art. 52(2) and (3)Computer-implemented business methods

VIII-2
VIII-3

3.

No meaningful search possible

VIII-3

3.1

Invitation to indicate subject-matter for search

VIII-5

3.2
3.2.1
3.2.2

Reply to the invitation under Rule 63(1)Failure to reply in time or no reply
Reply in time

VIII-5
VIII-5
VIII-6

3.3

The content of the extended European search report(EESR)
VIII-7

2.1

2.2

Part B – Contents e

Part B – Contents f

Guidelines for Examination in the EPO

March 2023

3.4

Applications to which Rule 63 applies which also lackunity
VIII-74.

More than one independent claim per category(Rule 62a)

VIII-8Invitation to indicate which independent claim tosearchVIII-8

4.2
4.2.1
4.2.2

Reply to the invitation under Rule 62a(1)Failure to reply in time
Reply filed in time

VIII-8
VIII-8
VIII-94.3

The content of the extended European search report(EESR)
VIII-94.4

Cases under Rule 62a where claims fees are not
paid

VIII-10

Applications to which Rule 62a applies which alsolack unity

VIII-10

4.6

Treatment of dependent claims under Rule 62a

VIII-115.

Invitation under both Rule 62a(1) and Rule 63(1) VIII-11

6.

Claims contravening Art. 123(2) or Art. 76(1)

4.1

4.5

VIII-12Chapter IX – Search documentation

IX-1

1.

GeneralIX-1

1.1

Organisation and composition of the documentation
available to the search divisions

IX-1

1.2

Systematic access systems

IX-1

2.

Patent documents arranged for systematicaccess

IX-1

2.1

PCT minimum documentation

IX-1

2.2

Unpublished patent applications

IX-1

2.3

Search reports

IX-1

2.4

Patent family system

IX-2

3.

Non-patent literature arranged for systematicaccess

IX-2

Periodicals, records, reports, books, etc.

IX-2

3.1

March 2023

4.

Part B – Contents g

Guidelines for Examination in the EPO

Non-patent literature arranged for library-typeaccess

IX-2

4.1

Composition

IX-2

5.

Access to EPO documentation for the national
patent offices

IX-2

Chapter X – Search report

X-1

1.

GeneralX-1

2.

Different types of search reports drawn up by the
EPO

X-2

3.

Form and language of the search report

X-2

3.1

Form

X-2

3.2

LanguageX-3

3.3

Account of the search

X-3

3.4

Record of search strategy

X-3

4.

Identification of the patent application and type ofsearch report

X-3

5.

Classification of the patent application

X-3

6.

Areas of technology searched

X-4

7.

Title, abstract and figure(s) to be published withthe abstract (as indicated on supplemental
sheet A)

X-4

8.

Restriction of the subject of the search

X-5

9.

Documents noted in the search

X-6

9.1
9.1.1
9.1.2
9.1.3
9.1.4

Identification of documents in the search report
Bibliographic elements"Corresponding documents"
Languages of the documents citedSupplementary European search report

X-6
X-6
X-6
X-9
X-9

9.2
9.2.1
9.2.2

Categories of documents (X, Y, P, A, D, etc.)
Particularly relevant documents
Documents defining the state of the art and notprejudicing novelty or inventive stepDocuments which refer to a non-written disclosure
Intermediate documents

X-10
X-10

9.2.3
9.2.4

X-10
X-11
X-11

Part B – Contents hGuidelines for Examination in the EPO

March 2023

9.2.6
9.2.7
9.2.8

Documents relating to the theory or principle
underlying the invention
Potentially conflicting patent documents
Documents cited in the application
Documents cited for other reasons

X-11
X-11
X-12
X-12

9.3

Relationship between documents and claims

X-12

9.4

Identification of relevant passages in prior-art
documents

X-13

10.

Authentication and dates

X-13

11.

Copies to be attached to made available with thesearch report

X-13

11.1

General remarks

X-13

11.2

Electronic version of document cited

X-14

11.3

Patent family members; the "&" sign

X-14

11.4

Reviews or books

X-14

11.5

Summaries, extracts or abstracts

X-14

11.6

Citation of video and/or audio media fragments
available on the internet

X-15

Transmittal of the search report and search
opinion

X-15

9.2.5

12.

Chapter XI – The search opinion

XI-1

1.

Search opinion is part of the EESR

XI-1

1.1

The search opinion

XI-1

1.2

Position of the examining division

XI-1

2.

Basis of the search opinion

XI-1

2.1

Applications containing missing parts of description
and/or drawings Application documents filed under
Rule 56 EPC, Rule 56a EPC or Rule 20 PCT,
Rule 20.5 PCT or Rule 20.5bis PCT

XI-2

Applications containing claims filed after theaccorded date of filing

XI-3

Analysis of the application and content of thesearch opinion

XI-3

2.2

3.

March 2023

Part B – Contents i

Guidelines for Examination in the EPO

3.1

The search division's dossier

XI-4

3.2
3.2.1
3.2.2

Reasoning
Reasoned objections
Positive statements

XI-4
XI-4
XI-4

3.3

Comments and amendments in response to thesearch opinion

XI-4

Extent of first analysis for generally deficient
applications

XI-4

3.5

Contribution to the known art

XI-5

3.6

EPC requirements

XI-5

3.7

Search division's approach

XI-5

3.8

Making suggestions

XI-5

3.9

Positive opinion

XI-6

4.

Priority claim and the search opinion

XI-6

4.1

Use of "P" and "E" documents in the search opinion

XI-7

5.

Unity in relation to the search opinion

XI-8

6.

The search opinion in cases of a limitation of thesearchXI-8

7.

No search opinion is issued

XI-8

8.

Reaction to the extended European search report(EESR)XI-9

Art. 124 and the utilisation scheme

XI-10

3.4

9.

March 2023

Guidelines for Examination in the EPO

Part B – Chapter I-1

Chapter I – Introduction
1. Purpose of Part B
Part B was drafted for, and applies to, European searches, i.e. searches
performed by the EPO for European applications. In addition to thesesearches the search divisions of the EPO are called upon to carry out othertypes of searches (see B-II, 4.4 to B-II, 4.6). Searches in the context of the
Patent Cooperation Treaty (PCT) are dealt with in the PCT Search andExamination Guidelines and in the Guidelines for Search and Examination
at the EPO as PCT Authority, Part B.
2. Search division
The search division is responsible for drafting extended European search
reports under Art. 92, including a search opinion pursuant to Rule 62(1), as
well as for drafting all of the different types of search report referred to in
B-I, 1 and B-II, 4. The search division is also responsible for issuing a
pre-search invitation under Rule 62a(1) (see also B-VIII, 4) to clarify or
where necessary limit the subject-matter to be searched. The issuing of aninvitation under Rule 63(1) is also within the responsibility of the searchdivision (see B-VIII, 3.1). Furthermore, in the case of lack of unity, it draws
up a partial search report, a provisional opinion on the patentability of theinvention or unitary group of inventions first mentioned in the claims(see F-V, 3.4) and the reasons for non-unity findings, together with aninvitation to pay additional search fees under Rule 64(1) or Rule 164(1)(see B-VII, 1.2 and B-XI, 5). The member of the search division responsible
for the search on a European application is also normally the first memberof the examining division for that application.
2.1 Consultation with other examiners
The search division entrusted with the search may consult other examiners
for advice on any number of issues, for example:(i)online searches in databases with which the search division is notfamiliar;(ii)

understanding aspects of the claimed invention which may lie outside
the area of technical expertise of the search division;(iii)

constructing a search strategy (see also B-I, 2.2);(iv)

interpreting the relevance of a prior-art document for determining thepatentability of claimed subject-matter (see B-X, 9.2).

2.2 Search division consisting of more than one member
Where the invention is of a nature requiring searching in widely dispersed
specialised fields, a special search division consisting of two, or possibly
three, members may be formed, for example, where the "person skilled in
the art" in the technical field of the application consists of more than one
person (see G-VII, 3).
Another case is where there is found to be a lack of unity in subject-matter
between different technical fields.

Art. 17
Art. 18

Part B – Chapter I-2

Guidelines for Examination in the EPO

March 2023

In such cases, the documents found in the different technical fields by the
first and by the other member(s) are included in the same search report.
The search opinion however is prepared by one member only, if necessary
in consultation with the member expert(s) in the other technical field(s).
2.2.1 Where claimed unitary subject-matter covers more than one
technical field
Exceptionally, where the application covers two or more technical fields
which are so diverse that a member trained to carry out searches in one ofthose fields cannot reasonably be expected to carry out a search in all ofthem, the responsibility for preparing the search report may be shared
between a number of members.
The skills required to carry out a search in a particular technical field
consist of two aspects, viz.:(a)the technical knowledge and training required to properly understandthe claimed subject-matter(b)

expertise in search tools required for performing a satisfactory searchin that field.

If the subject-matter of the application extends over different technical fields
it might be appropriate to expand the search division to include a secondand possibly further member(s) specialised in those fields.
In all the above cases, the search report and search opinion (if applicable,
see B-XI, 7) are usually issued by one member only.
2.2.2 Further searches on a non-unitary application in a different
technical field
Another case where the search division consists of more than one member
is where a lack of unity is found to exist between subject-matter in different
technical fields. Such cases are handled as follows:(a)

The search on the invention first mentioned in the claims(see F-V, 3.4) is carried out in one technical field by a first member. A
search opinion (if applicable – see B-XI, 7) is prepared giving thereasons for the lack of unity and an opinion on this first invention.
The applicant is sent a partial search report, along with an invitation
to pay additional search fees (see B-VII, 1.1).

(b)

The applicant pays additional search fees for inventions falling intoanother technical field (see B-VII, 1.2.1).

(c)Those inventions falling into the other different technical field arethen searched by a second member competent for that field.

(d)

The second member then adds an opinion on the additional
inventions which have been searched to the opinion already draftedby the first member relating to unity and the first invention.

March 2023

Guidelines for Examination in the EPO

In very exceptional cases, the search on other inventions will need to be
carried out by more than one further member (second, third and possibly
further members). Here the procedure is analogous to that explained
above.

Part B – Chapter I-3

March 2023

Guidelines for Examination in the EPO

Part B – Chapter II-1

Chapter II – General
1. Search and substantive examination
The procedure through which a European patent application proceeds fromthe filing of the application to the grant of a patent (or the refusal of theapplication) comprises two separated basic stages, i.e. the search andsubstantive examination.

Art. 17
Art. 18

1.1 Contact between the applicant and the search division
Consultations with the search division can only take place after theapplication 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 thetiming of the drawing up of the search report. The search division must notconsent to these earlier (see also B-XI, 8). Applicants must be told that any
issues they refer to will be dealt with in examination. For the procedure at
the examination stage see C-VII, 2.5.
2. Objective of the search
The objective of the search is to discover the state of the art which isrelevant for the purpose of determining whether, and if so to what extent,
the claimed invention for which protection is sought is new and involves aninventive step.

Rule 61(1)The search is thus not usually directed to discovering disclosures which
may be of interest to the applicant. However, under certain circumstances
documents not directly relevant for assessing the patentability of theclaimed invention may be cited in the search report (see B-X, 9.2.2
and 9.2.5).
The examination procedure and the preparation of the search opinion
depend on the search for the knowledge of the state of the art on whichassessment of the patentability of the invention is based. The search must,
therefore, be as complete and effective as possible, within the limitations
necessarily imposed by issues such as unity of invention and otherconsiderations (see B-III, 2, B-VII and B-VIII).
3. Search documentation
The search is carried out in in-house or external collections of documents
or databases, the contents of which are systematically accessible, e.g. bymeans of words, classification symbols or indexing codes. These are
primarily patent documents of various countries, supplemented by anumber of articles from periodicals and other non-patent literature(see B-IX).
4. Search report
A search report is prepared containing the results of the search, inparticular by identifying the documents constituting the relevant state of theart (see B-X, 9).
The search report serves to provide information on the relevant state of theart to the applicant, to the examining divisions of the EPO and, by means of
its publication, to the public.

Art. 92
Rule 61(1)Art. 92
Art. 93(1)Part B – Chapter II-2

Guidelines for Examination in the EPO

March 2023

The search report is accompanied by the search opinion (see B-XI, subject
to the exceptions mentioned in B-XI, 7), which together with the European
search report constitutes the extended European search report (EESR).

Art. 17

4.1 European searches
The task of the search division is primarily to carry out searches and draw
up search reports in relation to European patent applications. In addition tothese usual searches, the search divisions of the EPO may be called uponto perform various other types of search, which are listed in the following
paragraphs.
4.2 Additional European searches
At the examination stage of a European patent application an additional
search may be necessary. The reasons for such an additional search may
be, for example:(i)amendment of claims so that they embrace matter not covered by
the original search (see, however, C-III, 3.1.1 C-III, 3.2.1 and H-II, 7.1
H-II, 6.1 for claims not searched because of lack of unity and H-II, 6.2
H-IV, 4.1.2 for amendments introducing subject-matter from thedescription resulting in claims defining subject-matter which is not
linked by a single general inventive concept to the subject-matter
originally searched);

Rule 63
Art. 17(2) PCT(ii)

removal by amendment or rebuttal, during substantive examination,of the deficiencies which resulted in the issuance of an incomplete
search or a declaration taking the place of a search report under
Rule 63, or a declaration under Art. 17(2)(a) or (b) PCT (see B-VIII
and C-IV, 7.2 C-IV, 7.3);

Rule 64
Rule 62a(iii)

reversal, by the examining division, of an opinion of the searchdivision with respect to novelty or lack of inventive step(see B-III, 1.1) or on other issues (see B-III, 1.2), in particular lack ofunity of invention (see B-VII), exclusions from the search(see B-III, 3.11 and B-VIII) or Rule 62a; and(iv)

limitations or imperfections in the initial search.

The examining division makes use of documents found in such an
additional search, where they are considered relevant to the examination of
the application. Where a new document is used in the examination
procedure, a copy must be communicated to the applicant (Art. 113(1)).
In a similar way, an additional search may become necessary during
examination of oppositions against a European patent (see D-VI, 5).

Art. 153(2),(6) and (7)4.3 Supplementary European searches
An international (PCT) application for which the EPO acts as designatedOffice or elected Office and which has been accorded an international dateof filing is deemed to be a European patent application. Where aninternational (PCT) search report is already available, this will take theplace of the European search report. The search division will draw up aMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter II-3

supplementary European search report or a declaration replacing it
according to Rule 63 unless provided otherwise in decisions of the
Administrative Council.
However, the Administrative Council decides under what conditions and towhat extent the supplementary European search report is to be dispensed
with (see B-II, 4.3.1).
The (S)ISA/IPEA (other than the EPO) will have given opinions on thenovelty, inventive step and industrial applicability of the claimed invention
according to Art. 33(1) PCT and possibly also on unity of invention
according to Art. 34(3) PCT and exclusions from international
search/preliminary examination according to Art. 17(2)/Art. 34(4) PCT. The
search division for the supplementary European search report will consider
these opinions but is free to digress from any or all of them when
performing a supplementary European search and when preparing thesearch opinion (if applicable – see B-XI, 7).
The search division can use the documents cited in the international search
report in support of its findings (e.g. lack of novelty) in the search opinion (ifapplicable – see B-XI, 7).
4.3.1 Dispensing with the supplementary European search report
According to decisions taken by the Administrative Council, no
supplementary European search report is drawn up in respect of aninternational application for which:(i)the EPO was the International Searching Authority or the
Supplementary
International
Searching
Authority(OJ EPO 2009, 594; OJ EPO 2010, 316);(ii)

the Swedish Intellectual Property Office, the Austrian Patent Office or
the Spanish Patent and Trademark Office was the International
Searching Authority and where the international application was filed
before1 July 2005
(OJ EPO 1979, 248;
OJ EPO 1995, 511;
OJ EPO 2012, 212 and 219).

A fee reduction may apply (see A-X, 9.3.1).
4.3.2 A supplementary European search report is required
If a supplementary European search report is not to be dispensed with (seeB-II, 4.3.1), the supplementary European search is carried out in all of the
EPO's search documentation. It is left to the search division's judgement
whether a limitation as to the search documents is chosen. No precise
limits can at present be set to other supplementary European searches
since the documentation and search practices of other International
Searching Authorities have not been fully harmonised in respect of the
EPO.
As a general rule, the EPO tries to avoid any superfluous work andduplication of work and relies on the efficiency and quality of theinternational searches to the largest extent possible. If the international

Art. 153(7)Part B – Chapter II-4

Guidelines for Examination in the EPO

March 2023

search report has not been drawn up upon entry into the European phase,the EPO will wait until it has been drawn up and is available to it before
processing the application further. The EPO as designated Office requests
the International Searching Authority or the Supplementary International
Searching Authority to supply, together with the international search report,
copies of the documents cited therein (Art. 20(3) PCT, see also
Rule 44.3(a) PCT or Rule 45bis.7(c) PCT). When documents are cited thatare not in one of the official languages of the EPO and the search divisionneeds a translation into one of these languages, it provides this itself (e.g. apatent family member in an official language of the EPO or, alternatively, an
abstract of the document in an official language of the EPO, see B-VI, 6.2),
unless it is able to obtain it from any other source, e.g. the applicant or theInternational Searching Authority.

Rule 159(1)(b)Rule 161

4.3.3 Application documents for the supplementary European
search report
The European grant procedure, including the supplementary European
search, is to be based on the application documents as specified by theapplicant when the application enters the European phase (Rule 159(1)(b)).
Alternatively, if, within a non-extendable period of six months as fromnotification of a communication pursuant to Rule 161(2) (see E-IX, 3), theapplicant has amended the application, the application as amended serves
as the basis for the supplementary European search (see also B-XI, 2). Forprocedures relating to Euro-PCT applications where no supplementary
European search report is prepared by the EPO, see E-IX, 3.2, 3.3 and 3.4.
4.4 International (PCT) searches
For the search practice as regards international (PCT) searches, reference
is made to the PCT International Search and Preliminary Examination
Guidelines, as well as to the latest version of the Euro-PCT Guide ("PCT
procedure at the EPO, Guide for applicants").
4.5 International-type searches
Under the PCT, the EPO, as an International Searching Authority, may be
entrusted to carry out "international-type searches" for national patentapplications (Art. 15(5) PCT). These searches are by definition similar tointernational searches, and the same considerations apply, except where
unity of invention is lacking; in the case of a lack of unity in a national
application subject to an international-type search, no reasoned statementon the lack of unity is included in the search report. Furthermore, noinvitation to pay additional fees is issued, but applicants may have thepossibility to pay these fees directly to the national offices. In cases wherea written opinion is established, it is drafted in accordance with EPO
practice under PCT Chapter I, including a reasoned statement in respect ofany potential lack-of-unity objection.

Prot. Centr. I(1)(b)

4.6 Searches on national applications
The search divisions of the EPO also carry out searches on national
applications of certain of its contracting states. These guidelines are notnecessarily fully applicable to these national searches, nor are the ways inwhich these searches differ from European searches specifically pointed

March 2023

Guidelines for Examination in the EPO

out. However, these national searches are to a large extent identical to, or
compatible with, European searches.

Part B – Chapter II-5

March 2023

Guidelines for Examination in the EPO

Part B – Chapter III-1

Chapter III – Characteristics of the search1.

Opinions of the search division

1.1 Opinions in relation to the search report
As stated in B-II, 2, the objective of the search is to discover the relevant
state of the art for the purpose of assessing novelty and inventive step.
Decisions on novelty and inventive step are the province of the examining
divisions. However, in the search opinion (if applicable, see B-XI, 7), thesearch division gives the applicant a reasoned opinion on whether theapplication and the invention to which it relates meet the requirements ofthe EPC, to which the applicant can reply in the examination procedure(Art. 113(1) and B-XI, 8). Opinions on patentability are also implicitly
expressed in the search report by the assignment of document categories
as defined in B-X, 9.2 and are subject to review by the examining divisionat the examination stage (see B-II, 4.2(iii) and B-XI, 1.2), in particular in thelight of the applicant's reply thereto (see B-XI, 8).
The assessment of patentability at the search stage can have a direct
bearing on the execution of the search itself, see: B-III, 3.8 (search for
subject-matter of dependent claims), B-III, 2.3 (search in analogous
technical fields) and B-IV, 2.6 (stopping the search when only trivial matterremains).
1.2 Opinions on matters relating to limitation of the searchOccasionally matters of substantive examination other than novelty or
inventive step have a direct bearing on the execution of the search andmay result in a limitation thereof; here again these opinions are subject toreview by the examining division (see T 178/84 and T 631/97, and
B-II, 4.2(iii) and B-XI, 1.2), in particular in the light of the applicant's reply tothe search opinion (see B-XI, 8).
Examples are to be found in B-VII (Unity of invention) and B-VIII(Subject-matter to be excluded from the search).
2.

Scope of the search

2.1 Completeness of the search
The European search is essentially a thorough, high-quality, all-embracing
search. Nevertheless, it must be realised that in a search of this kind, 100%
completeness cannot always be obtained, because of such factors as theinevitable imperfections of any information retrieval system and its
implementation. The search is carried out in such a manner as to reduce toa minimum the possibility of failing to discover complete anticipations forany claims, or other highly relevant prior art. For less relevant prior art,
which often exists with a fair amount of redundancy amongst the
documents in the search collection, a lower recall ratio can be accepted(see in this context, however, B-III, 2.3). For limitations of thesubject-matter searched by the EPO, see B-VIII.
The scope of the international search is defined in Art. 15(4) PCT
stipulating that the International Searching Authority must endeavour toRule 61(1)Part B – Chapter III-2

Guidelines for Examination in the EPO

March 2023

discover as much of the relevant prior art as its facilities permit and must, inany case, consult the documentation specified in the PCT Regulations(Rule 34 PCT). It follows from this definition ("as its facilities permit") thatthe scope of an international search must be equivalent to a European
search. International and European searches must thus be fully compatible.
In accordance therewith, if the EPO carried out the international search or
the supplementary international search, no supplementary European
search report need be drawn up and the international search report madeby the EPO takes the place of the European search report unconditionally(Art. 153(6) EPC, see OJ EPO 2010, 316, and OJ EPO 2011, 616; see also
B-II, 4.3).
2.2 Effectiveness and efficiency of the search
The effectiveness and efficiency of any search for relevant documents(Rule 61(1)) depend on the degree of order which is available in, or which
can be applied to, the collection of documents to be searched, the order
allowing the search division to determine sections of the documentation to
be consulted. The basic components for creating order in a collection of
documents are words, classification units, indexing codes or bibliographicallinks between documents by commonly cited documents. The order may
have a permanent character, as with indexing words, classification symbols
or indexing codes, or it may be created on demand by a search strategy
judiciously using the above-mentioned basic components, the outcome ofwhich is a section of the documentation which is likely to contain material
pertinent to the invention. The search division for reasons of economy
exercises its judgement, based on its knowledge of the technology inquestion and of the available information retrieval systems, to omit sectionsof the documentation in which the likelihood of finding any documents
relevant to the search is negligible, for example documents falling within aperiod preceding the time when the area of technology in question began todevelop. Similarly, the search division needs only to consult one member ofa patent family unless it has good reason to suppose that, in a particularcase, there are relevant substantial differences in the content of different
members of the same family (see B-IX, 2.4).
2.3 Search in analogous fields
The search is carried out in collections of documents or databases which
may contain material in all those technical fields pertinent to the invention.
The search strategy determines the sections of the documentation to be
consulted covering all directly relevant technical fields, and may then haveto be extended to sections of the documentation covering analogous fields,
but the need for this must be judged by the search division in eachindividual case, taking into account the outcome of the search in thesections of the documentation initially consulted (see B-III, 3.2).
The question of which technical fields are, in any given case, to be
regarded as analogous has to be considered in the light of what appears tobe the essential technical contribution of the invention and not only the
specific functions expressly indicated in the application.
The decision to extend the search to fields not mentioned in the applicationmust be left to the judgement of the search division, which does not put

March 2023

Guidelines for Examination in the EPO

Part B – Chapter III-3

itself in the place of the inventor and does not try to imagine all the kinds ofapplications of the invention possible. The overriding principle indetermining the extension of the search in analogous fields is whether it isprobable that a reasonable objection of lack of inventive step could beestablished on the basis of what is likely to be found by the search in thesefields (see T 176/84, T 195/84 and G-VII, 3).
2.4 Search on the internet
The European search can also cover internet sources, including online
technical
journals,
onlinedatabasesorotherwebsites(see OJ EPO 2009, 456). The extent of such internet searches depends on
the individual case, but in some technical fields a systematic internet
search will regularly be necessary. Especially in fields related to information
or software technology, searches bypassing the internet will often not yield
the most relevant prior art. The search division may therefore use theinternet as necessary also when searching unpublished applications but
must take great care not to disclose confidential information through theinadvertent use of search terms. It is left to the search division to selectkeywords that enable such a search to be performed while respecting theduty of confidentiality regarding unpublished applications. This would entail,for example, choosing only a few keywords which do not disclose theinvention, rather than entering long portions of the text of a claim as asearch term.
Concerning the dating of internet citations, see G-IV, 7.5.
3.

The subject of the search

3.1 Basis for the search
The search is made on the basis of the claims, with due regard to thedescription and drawings (if any) (Art. 92). The claims determine the extent
of the protection which will be conferred by the European patent if granted(Art. 69(1)).
3.2 Interpretation of claims
The search is on the one hand not restricted to the literal wording of theclaims, but on the other hand is not broadened to include everything thatmight be derived by a person skilled in the art from a consideration of thedescription and drawings. The search division may need to consider thecontents of the description and/or drawings when performing the search inorder to:(i)

identify the technical problem and its solution;(ii)

establish definitions of unclear terms not defined in the claims;(iii)

establish definitions of clear terms given a definition different fromtheir usual meaning;(iv)

ascertain the existence of a fallback position.

Art. 92
Art. 69(1)Rule 43(6)Prot. Art. 69
Art. 92

Part B – Chapter III-4

Guidelines for Examination in the EPO

March 2023

The objective of the search is to identify prior art which is relevant tonovelty and/or inventive step (see B-II, 2). The search is directed to what
appear to be the essential features of the invention and take into accountany changes in the (objective) technical problem underlying the invention
which may occur during the search as a result of the retrieved prior art(see B-IV, 2.3 and 2.4 and G-VII, 5.2).
When interpreting claims for the purpose of the search, the search will also
take into consideration prior art incorporating technical features which are
well-known equivalents to the technical features of the claimed invention,
which may undermine inventive step (see G-VII, Annex, 1.1(ii)).
3.2.1 Claims with explicit references to the description or drawings
Although explicit references in the claims to features elucidated in thedescription or in the drawings are only permissible where "absolutely
necessary" (Rule 43(6) – see also B-III, 3.5 and F-IV, 4.17), claims
containing such references are still searched if these technical features areunambiguously defined by specific parts of the description.
However, where the reference does not clearly identify which
subject-matter of the description and/or drawings is to be considered asincluded in the claim, an invitation under Rule 63(1) is issued. In the special
case of "omnibus claims" (e.g. a claim reading "The invention substantiallyas herein described"), no invitation under Rule 63(1) is issued, andsubsequently the search report will be designated as complete. This meansthat subject-matter of the above kind will be dealt with only during
examination.
The procedure above is followed regardless of whether or not the reference
to the drawings and/or the description is allowable according to Rule 43(6).
In either case, the claim will have the same scope: if the reference is notallowable under Rule 43(6), the applicant will be requested to copy thedefinition of the technical feature from the description and/or drawings into
the claim; if the reference is allowable, the claim will stay as it is.
However, where the reference does not appear to be justified, the searchdivision then raises an objection according to Rule 43(6) in the search
opinion (if applicable – see B-XI, 7).
3.2.2 Use of the description and/or drawings to identify the technicalproblemAccording to Rule 42(1)(c) the description must (at least implicitly) mention
the technical problem the application intends to solve (see also F-II, 4.5).
This allows the technical problem underlying the invention to be recognised
despite the fact that it might not be immediately apparent from the claims.
However, if the objective technical problem addressed by the claimed
invention changes in view of the retrieved prior art (see G-VII, 5.3, H-V, 2.4
and T 39/93, OJ EPO 1997, 134), it has to be redefined such that it remains
related to the problem initially (explicitly or implicitly) mentioned in theapplication (see G-VII, 5.2; see also T 184/82, OJ EPO 1984, 261 andT 732/89).

March 2023

Guidelines for Examination in the EPO

3.2.3 Use of the description and/or drawings to establish definitionsof unclear terms not defined in the claims
Some technical features of the claims may be defined by unclear terms sothat the scope of the claims cannot be determined unambiguously. In suchcases, the description and/or drawings is/are used to interpret the meaningof the terms in question (see F-IV, 4.2).
For example:
Claim 1: Pneumatic tyre comprising a wide groove disposed in a tread
portion, characterised in that the wide groove is provided on the groove
bottom with at least one longitudinal rib extending in the longitudinal
direction of the wide groove.
Description: The term "wide", as used in the context of the present
invention, means not less than 20mm wide.
The term "wide" in claim 1 is unclear, since it is a relative term with nowell-defined meaning in this technical field. Consequently the scope of theclaim is unclear (F-IV, 4.6, Art. 84). However, the description gives anunambiguous definition of this term. The definition of "wide" as being "notless than 20mm wide" is taken into account when the search is carried out(subsequently, an objection to the clarity of the term "wide" is raised in the
search opinion according to Art. 84, second sentence). The definition of"wide" in the description is also a fallback position (see B-III, 3.2.5).
3.2.4 Use of the description and/or drawings to establish definitionsof clear terms given a definition different from their usual meaning
In some applications the meaning given to a technical term by thedescription and/or the drawings differs from the commonly recognised
meaning of that term in the technical field of the application. This may leadto the meaning of the term (and so the scope of the claim) becoming
broader (see Example 1) or narrower (see Example 2).
Example 1
Claim 1: Halide salt of compound A
Normally the term "halide salt" means fluoride, chloride, bromide or iodide
salt.
Description: In the context of the present invention the term halide saltmeans fluoride, chloride, bromide, iodide or tosylate salt.
In this example, the claim at first sight appears to be clear, since it makes
use of a technical term ("halide salt") with a clear and well-establishedmeaning in the technical field of the application. However, the description
defines this term in such a way that it has a meaning broader than its
well-established one (here the meaning of this term is extended to include
tosylate salt).

Part B – Chapter III-5

Part B – Chapter III-6

Guidelines for Examination in the EPO

March 2023

Example 2
As Example 1, but the description defines "halide salt" as meaning fluoride,
chloride or bromide salt.
In this example, the meaning of "halide salt" is narrower (it does not coveriodide salt) than in its established definition.
In both cases the search takes into account the definition of the terms as
generally recognised in the technical field of the application as well as theirdefinition as laid down in the application itself.
3.2.5 Ascertaining the existence of a fallback position
A claim may contain undefined, unclear terms for which no clear preferred
embodiments are given in the claims but where clear preferred
embodiments (i.e. a "fallback position", as referred to in B-III, 3.2(iv)) of that
unclear term are expressed in the description and/or drawings(see B-III, 3.2.3). In such a case, the search will be based on the broadesttechnically sensible interpretation of the term. If, however, the meaning of
the term in question is so unclear that no meaningful search can be carriedout, it is justified to limit the scope of the search according to Rule 63.
3.3 Amended claims or missing parts (Rule 56), missing parts(Rule 56) or erroneously filed application documents or parts(Rule 56a)

Rule 56
Rule 56a
Rule 137(1)3.3.1 General considerations
Where a European application does not derive from an earlier international
application, the applicant may not amend the claims before receiving theEuropean search report (Rule 137(1)). Consequently, in these cases, thesearch is directed to the claims as originally filed, in the European
application, or to the set of claims filed according to Rule 57(c) or 58.
If the application documents used for the search contain missing parts ofdescription and/or missing drawings filed under Rule 56(3) or correct
application
documents
or
parts
filed
under
Rule 56a(4)(see H-IV, 2.3.2 H-IV, 2.2.3) and the search division expects the application
to be redated by the examining division at a later stage of the procedure(see C-III, 1), it extends the scope of the search, such as also to cover priorart which will be relevant for assessing the novelty and inventive step of thesubject-matter claimed on the basis of a possible new date of filing of theapplication (see also B-XI, 2.1). The same applies to Euro-PCT applications
when the application contains missing parts of the description, drawings or
claims and/or missing elements filed under Rule 20.6 PCT.

Rule 159(1)(b)Rule 161

3.3.2 Specific rules applicable to Euro-PCT applications
Where a European application derives from an earlier international
application, applicants may have amended the international application in
the international phase, either after receipt of the international search report(Art. 19(1) PCT) or during international preliminary examination(Art. 34(2)(b) PCT). Applicants may then specify that they wish to enter theEuropean phase with these or otherwise amended application documents

March 2023

Guidelines for Examination in the EPO

Part B – Chapter III-7(including claims) according to Rule 159(1)(b). Furthermore, applicants are
given the opportunity by the EPO to amend the application documents(including the claims) within a set time limit (Rule 161(2), see E-IX, 3). The
application as amended serves as the basis for any supplementary
European search which has to be performed pursuant to Art. 153(7)(see B-II, 4.3 and B-XI, 2).
Where the claims of an international application on entry into the European(regional) phase are amended in such a way as to contravene Art. 123(2),the procedure explained in B-VIII, 6 applies.
3.4 Abandonment of claims
For European applications, claims that are deemed to have beenabandoned for non-payment of fees must be excluded from the search. The
claims which have actually been taken into account for the purposes of thesearch are identified in the search report. This applies both to searches tobe carried out in respect of directly-filed European applications and to
supplementary European searches to be carried out in respect of Euro-PCT
applications entering the European phase (see B-II, 4.3).

Rule 45(3)Rule 162(4)3.5 Anticipation of amendments to claims
In principle, and in so far as possible and reasonable, the search covers theentire subject-matter to which the claims are directed or to which they mightreasonably be expected to be directed after they have been amended (see,however, B-VII, 1.3 in the case of lack of unity and H-II, 6 H-IV, 4 for theambit of Rule 137(5)).
ExampleWhere an application relating to an electric circuit contains one or moreclaims only directed to the function and manner of operation, and thedescription and drawings include an example with a detailed non-trivial
transistor circuit, the search includes this circuit.
However, it is not sufficient for the application as filed to contain one broadclaim, with no dependent claims, in order to be entitled to a search to all thefeatures of a large number of embodiments covered by the wording of thatclaim (see T 1679/10).
3.6 Broad claims
No special search effort need be made for searching unduly wide or
speculative claims, beyond the extent to which they relate to matter which
is sufficiently disclosed in the application (Art. 83), and are supported by thedescription (Art. 84).
Example 1
If the claims in an application relating to and describing in detail an
automatic telephone exchange are directed to an automatic communication
switching centre, the search is not extended to automatic telegraphexchanges, data switching centres etc. merely because of the broad
wording of the claim, but only if it is probable that such an extended search

Art. 83
Art. 84

Part B – Chapter III-8

Guidelines for Examination in the EPO

March 2023

could produce a document on the basis of which a reasonable objection as
regards lack of novelty or inventive step could be established.
Example 2
If a claim is directed to a process for manufacturing an "impedance
element" but the description and drawings relate only to the manufacture ofa resistor element, and give no indication as to how other types ofimpedance element could be manufactured by the process of the invention,
extension of the search to embrace, say, manufacture of capacitors would
not normally be justified.
Example 3
If the main claim relates to the chemical treatment of a substrate, whereas
it appears from the description or all the examples that the problem to besolved is solely dependent on the nature of natural leather, the search is
not extended to the fields of plastics, fabrics or glass.
Example 4
If the description and drawings are directed to a lock with a safety cylinder
whereas the claims refer to a device allowing the indexation of the angular
position of a first element with respect to two other rotating elements, thenthe search is limited to locks.
In exceptional cases where the lack of disclosure or support is such as torender a meaningful search over the whole of the scope of the claim(s)impossible, application of the procedure for an incomplete search or adeclaration taking the place of a search report under Rule 63 may beappropriate (see B-VIII, 3).

Rule 43(4)3.7 Independent and dependent claims
The search carried out in sections of the documentation to be consulted forthe independent claim(s) must include all dependent claims (for cases notcomplying with Rule 43(2), see B-VIII, 4). Dependent claims are interpreted
as being restricted by all features of the claim(s) upon which they depend.
Therefore, where the subject-matter of an independent claim is novel, thatof its dependent claims will also be novel (see, however, F-VI, 2.4.3). Whenthe patentability of the subject-matter of the independent claim is notquestioned as a result of the search, there is no need to make a further
search or cite documents in respect of the subject-matter of the dependentclaims as such (see, however, B-II, 4.2(iii) and B-XI, 1.2).
Example 1
In an application relating to cathode ray oscilloscope tubes, in which theindependent claim is directed to specific means along the edge of the frontof the tube for illuminating the screen and a dependent claim is directed toa specific connection between the front and the main part of the tube, thesearch division searches, in the sections of the documentation it consults
for searching the illumination means, also for the connecting means
whether in combination with the illumination means or not. If, after thisMarch 2023

Guidelines for Examination in the EPO

search, the patentability of the illuminating means is not questioned, thesearch division does not extend its search for the connecting means tofurther sections of the documentation which are likely to contain material
pertinent to or specifically provided for these connections.
Example 2
If in an application dealing with a pharmaceutical composition for treating
nail infections the patentability of the subject-matter of the independentclaim relating to specific combinations of the active ingredients is notquestioned as a result of the search, there is no need to continue thesearch for dependent claims dealing with the use of a specific volatileorganic solvent as a carrier in the composition.
3.8 Search on dependent claims
However, where the patentability of the subject-matter of the independentclaim is questioned, it may be necessary for assessing whether the
subject-matter of the dependent claim as such is novel and involves aninventive step to continue the search in other sections of the
documentation, e.g. in one or more additional classification units. No suchspecial search is made for features that seem prima facie trivial or are
generally known in the art. However, if a handbook or other document
showing that a feature is generally known can be found rapidly, it may becited (see G-VII, 6(iii)). When the dependent claim adds a further feature(rather than providing more detail of an element figuring already in the
independent claim), the dependent claim is to be considered in combination
with the features in the independent claim and is dealt with accordingly(see F-IV, 3.4).
3.9 Combination of elements in a claim
For claims characterised by a combination of elements (e.g. A, B and C)
the search is directed towards the combination. However, when searching
sections of the documentation for this purpose, sub-combinations, including
the elements individually (e.g. A and B, A and C, B and C, and also A, B
and C separately) are searched in those sections at the same time. A
search in additional sections of the documentation either for
sub-combinations or for individual elements of the combination is only
performed if this is still necessary for establishing the novelty of the element
in order to assess the inventive step of the combination.
3.10 Different categories
When the application contains claims of different categories, all these must
be included in the search (for cases not complying with Rule 43(2),see B-VIII, 4). However, if a product claim clearly seems to be both newand non-obvious, the search division makes no special effort to searchclaims for a process which inevitably results in the manufacture of that
product or for use of the product (see F-IV, 3.8 and G-VII, 13). When theapplication contains only claims of one category, it may be desirable toinclude other categories in the search. For example, generally, i.e. except
when the application contains indications to the contrary, one may assume
that in a claim directed to a chemical process, the starting products form
part of the state of the art and need not be searched; the intermediate

Part B – Chapter III-9

Part B – Chapter III-10

Guidelines for Examination in the EPO

March 2023

products are only searched when they form the subject of one or moreclaims; but the final products will always have to be searched, except when
they are evidently known.

Rule 63
Rule 62a

Rule 643.11 Subject-matter excluded from search
The search division may exclude certain subject-matter from its search.
These exclusions may result from certain subject-matter not complying withthe provisions of the EPC relating to exclusions from patentability or tosusceptibility to industrial application (see B-VIII, 1 and 2). They may also
arise where the application does not comply with the provisions of the EPC
to such an extent that a meaningful search is impossible for some or all of
the claims, or for a part of a claim, for other reasons (see B-VIII, 3) orwhere the application does not comply with Rule 43(2) (see B-VIII, 4).
3.12 Lack of unity
Also, when the claims of the application do not relate to one invention only,
nor to a group of inventions linked so as to form a single general inventive
concept, the search will normally be restricted to the invention or the linked
group of inventions first mentioned in the claims (see B-VII and F-V, 3.4).
Restriction of the search for the above reasons will be notified to theapplicant in a communication accompanying the partial search report(see B-VII, 1.2).
3.13 Technological backgroundIn certain circumstances it may be desirable to extend the subject-matter ofthe search to include the "technological background" of the invention. This
would include:–

the preamble to the first claim, i.e. the part preceding the expression"characterised by" or "characterised in that";–

the state of the art which in the introduction of the description of theapplication is said to be known, but not identified by specific citations;–the general technological background of the invention (often called"general state of the art").

March 2023

Guidelines for Examination in the EPO

Part B – Chapter IV-1

Chapter IV – Search procedure and strategy
1. Procedure prior to searching
Upon creation of a European search report, a European search opinion or aclarification request under Rule 62a and/or 63(1), a pre-search algorithm
generating a list of documents to be inspected by the search division istriggered. This creates a marker which serves as evidence in the file thatthe search division has started the search. The date of the start of thesearch is relevant for a possible refund of the search fee in case theapplication is withdrawn, refused or deemed to be withdrawn(see A-X, 10.2.1).
1.1 Analysis of the application
When taking up an application to be searched, the search division firstconsiders the application in order to determine the subject of the claimed
invention taking account of the guidance given in B-III, 3. For this purpose it
makes a critical analysis of the claims in the light of the description anddrawings. The search division in particular considers the content of theclaims, description and drawings sufficiently to identify the problem
underlying the invention, the inventive concept leading to its solution, thefeatures essential to the solution as found in the claims and the results andeffects obtained (see, however, B-III, 3.5). Furthermore, where technicalfeatures which are not present in the claims are indicated in the description
as essential for the solution of the stated problem, these features areincluded in the search (see F-IV, 4.3(ii) and T 32/82).
1.2 Formal deficiencies
If the search division notices any formal shortcomings which have been
overlooked by the Receiving Section, it calls these, by means of an internal
communication, to the attention of the Receiving Section (or of theexamining division in the case of an additional search requested by thatdivision) which takes appropriate action. However, the search division does
not repeat the tasks of the Receiving Section and does not undertake any
time-consuming enquiries into these matters. Such deficiencies which thesearch division might notice include:(i)

physical deficiencies of the application (see A-III, 3.2), including:(a)no electronic sequence listing (Rule 30(1), OJ EPO 2011, 372,
OJ EPO 2013, 542);(b)

incorrect sequence and/or positioning of page numbering
and/or failure to use Arabic numerals in page numbering(Rule 49(6)Art. 2(5) of the decision of the President of the EPO
dated 25 November 2022, OJ EPO 2022, A113);(c)presence of drawings in the description and/or claims(Rule 49(9)Art. 2(8) of the decision of the President of the EPO
dated 25 November 2022, OJ EPO 2022, A113);(d)presence of erasures and/or alterations in the application
documents, such that the authenticity of the content and/or theArt. 90
Art. 90(1)Art. 92
Art. 78Art. 53(a)Rules 30 to 34, 40 to
45, 47 to 50 and 55 to58
OJ EPO 2022, A113
Art. 90(3)Rule 57

Part B – Chapter IV-2

Guidelines for Examination in the EPO

March 2023

requirements for good reproduction are jeopardised(Rule 49(12)Art. 2(11) of the decision of the President of the
EPO dated 25 November 2022, OJ EPO 2022, A113);
Art. 53(a)Rule 48(1)(a) and(b)

Rules 31 to 33

Rule 66
Rule 141(ii)

presence of prohibited matter in the application:(a)which is contrary to "ordre public" (see A-III, 8.1, F-II, 7.2 andG-II, 4.1, 4.1.1 and 4.1.2); or(b)

constituting disparaging statements (see A-III, 8.2). Note,however, that fair comment as referred to in F-II, 7.3 ispermitted;(iii)

failure to comply with the provisions relating to the deposition of
biological material (see A-IV, 4), in particular with regard to thecorrect identification in the application of the depositary institution
and accession number of the biological material assigned to thedeposited material by the depositary institution (Rule 31(1)(c),see G 2/93 and A-IV, 4.2).

(iv)

failure to correctly identify the application as a divisional application
within the meaning of Art. 76(1) (see A-IV, 1.3.2, Rule 41(2)(e)).

(v)

presence of text in two different EPO official languages (Art. 14).

1.3 Documents cited or supplied by the applicant
Under the utilisation scheme (see Rule 141(1) and B-XI, 9, as well as
OJ EPO 2010, 410), for applications where a priority is claimed theapplicant is expected to file a copy of the results of any search carried out
by the office of first filing (for more details see A-III, 6.12)
If the prior-art information of the office of first filing is made available before
the search is completed, the search division checks these citations andevaluates their relevance to examination and in the definition of the searchstrategy.
Documents cited in the application under consideration are examined ifthey are cited as the starting point of the invention, as showing the state of
the art, or as giving alternative solutions to the problem concerned, or when
they are necessary for a correct understanding of the content of theapplication. However, when such citations clearly relate only to details notdirectly relevant to the claimed invention, they may be disregarded.
In the exceptional case that the application cites a document that is not
published or otherwise not accessible to the search division, and the
document appears essential to a correct understanding of the claimed
invention to the extent that a meaningful search of at least part of it would
not be possible without knowledge of the content of that document, thesearch division despatches an invitation under Rule 63 (see B-VIII, 3)
containing the following information:(i)which cited document is needed;March 2023

Guidelines for Examination in the EPO(ii)

why the document is needed;(iii)

the consequences of not supplying the document in time (see below).

Part B – Chapter IV-3

In reply to this communication, the applicant can:(a)either submit a copy of the document in question;(b)or argue why the document in question is not essential for carryingout a meaningful search of the claimed invention, and/or indicate apart of the application whose subject-matter can be searched without
knowing the content of the document in question.

If no copy of the document is received within the time limit according toRule 63(1) and the applicant is unable to convince the search division in atimely response to the Rule 63(1) invitation that the document is notessential to facilitate a meaningful search, an incomplete search report or,
where applicable, a declaration replacing the search report under Rule 63
is prepared (see B-VIII, 3.2.1). This incomplete search report or declaration
will be issued giving the following grounds:(1)

the non-availability of the document rendered the claimed invention
insufficiently disclosed within the meaning of Art. 83; and(2)

the insufficient disclosure mentioned in (1) existed to such a degree
that a meaningful search was not possible on at least part of theclaimed invention (see B-VIII, 3).

Where the applicant furnishes the document after the search report and thesearch opinion (if applicable, see B-XI, 7) have been prepared, an
additional search on that subject-matter originally excluded from the search
may be carried out due to the correction of the deficiency which led to theincomplete search (see C-IV, 7.2 C-IV, 7.3).
However, applicants must be aware that information contained in
documents referred to in the application can only be taken into account forsufficiency of disclosure pursuant to Art. 83 under the circumstancesindicated in F-III, 8.
2.

Search strategy

2.1 Subject of the search; restrictions
Having determined the subject of the invention as outlined in B-IV, 1.1, it
may be desirable for the search division to prepare first a search statement,
defining the subject of its search as precisely as possible. In many
instances one or more of the claims may themselves serve this purpose,but they may have to be generalised in order to cover all aspects andembodiments of the invention. At this time, the considerations relating tosubjects excluded from patentability (see B-VIII, 1 and 2) and to lack ofunity of invention (see B-VII, 1.1) is to be borne in mind. The searchdivision may also have to restrict the search because claims are deemed
abandoned (see B-III, 3.4), because the requirements of the EPC are not

Rule 63
Rule 62a

Part B – Chapter IV-4

Guidelines for Examination in the EPO

March 2023

met to such an extent that a meaningful search is impossible (see B-VIII, 3)
or because the application does not comply with Rule 43(2) (see theprocedure defined in B-VIII, 4). Any such restrictions to the search must be
indicated in the search report or declaration taking the place of the search
report under Rule 63. The declaration must indicate the reasons for any
restrictions under Rule 63 (see B-X, 8(iii)). The declaration or theincomplete search report is considered, for the purposes of subsequent
proceedings, as the search report.
2.2 Formulating a search strategy
Next the search division starts the search process by formulating a searchstrategy, i.e. a plan consisting of a series of search statements expressing
the subject of the search, resulting in sections of the documentation to be
consulted for the search. In its initial phase, a search strategy will containone or more combinations of the basic components mentioned in B-III, 2.2.
The search process is interactive and iterative in the sense that the searchdivision reformulates its initial search statement(s) according to theusefulness of the information retrieved (see B-III, 1.1 and B-IV, 2.4 and2.6). When using classification groups, the search division selects theclassification groups to be consulted for the search, both in all directly
relevant fields and in analogous fields.
The search division will, when appropriate, also consult other classification(e.g. FI) or indexing (e.g. F-terms) schemes. Consultation of colleagues in asimilar technical field or in fields possibly related to the content of theapplication is also a possibility (see B-I, 2.1).
When in doubt about the appropriate fields in which to conduct the search,
the search division may request advice from the appropriate classification
expert.
Usually various search strategies are possible, and the search division
exercises its judgement, based on its experience and knowledge of theavailable search tools, to select the search strategy most appropriate to thecase in hand. The search division gives precedence to search strategies
yielding sections of the documentation in which the probability of finding
relevant documents is highest. Usually the main technical field of theapplication will be given precedence, starting with the basic components(see B-III, 2.2) most relevant to the specific example(s) and preferred
embodiments of the claimed invention. In considering whether to extend thesearch to other less relevant sections of the documentation, the searchdivision always takes account of the search results already obtained.
2.3 Carrying out the search; types of documents
The search division then carries out the search, directing its attention to
documents relevant for novelty and inventive step.

March 2023

Part B – Chapter IV-5

Guidelines for Examination in the EPO

It also notes any documents that may be of importance for other reasons,such as:(i)

conflicting documents (see B-VI, 4) which are:(a)published
Europeanapplications(see G-IV, 5.1 and 5.1.1);

underArt. 54(3)(b)

published international applications under Art. 54(3) andArt. 153(3) and (5) (see G-IV, 5.2);(c)published national applications of EPC contracting states
under Art. 139(2) (see G-IV, 6 and H-III, 4.4);(d)

any document published during the priority interval of theapplication which may be relevant under Art. 54(2) in the caseof a non-valid priority date.

When published within the priority interval of the application undersearch, these applications are cited in the search report as"P" documents (see B-X, 9.2.4); when published on or after theEuropean or international filing date, they are cited in the search
report as "E" documents (see B-X, 9.2.6);(ii)

documents putting doubt upon the validity of any priority claimed(see B-VI, 3 and F-VI, 1.4.1), which are cited in the search report as"L" documents (see B-X, 9.2.8(a));(iii)

documents contributing to a better or more correct understanding of
the claimed invention, which are cited in the search report as"T" documents (see B-X, 9.2.5);(iv)

documents illustrating the technological background, which are citedin the search report as "A" documents (see B-X, 9.2.2);(v)

European patent applications having the same filing or priority dateas the application in respect of which the search is carried out, fromthe same applicant and relating to the same invention and therefore
relevant to the issue of double patenting (see G-IV, 5.4), which arecited in the search report as "L" documents (see B-X, 9.2.8 (c));(vi)

documents indicating or establishing the publication date of adocument drawn from the internet (see G-IV, 7.5), which are cited in
the search report as "L" documents (see B-X, 9.2.8 (b)); and(vii)

documents retrieved from the internet which do not have any
publication date but which the search division nonetheless wants tocite to inform the applicant or third parties (see G-IV, 7.5.4), which
are also cited as "L" documents (see B-X, 9.2.8).

However, the search division does not spend a significant amount of time insearching for these documents, nor in the consideration of such matters

Part B – Chapter IV-6

Guidelines for Examination in the EPO

March 2023

unless there is a special reason for doing so in a particular case(see B-VI, 5.3 and B-XI, 4).
2.4 Reformulation of the subject of the search
The search division does continuously evaluate the results of its search,and if necessary reformulates the subject of the search accordingly. For
example, the selection of the classification units to be searched or the orderof searching them may also require alteration during the search as aconsequence of intermediate results obtained. The search division alsouses its judgement, taking into account results obtained, in deciding at any
time during the systematic search whether it needs to approach the searchdocumentation in some different manner, e.g. by consulting:(i)

documents cited in relevant documents produced by the search, forexample cited in the description or search report of a patentdocument; or(ii)

documents citing a relevant document produced by the search,or whether it needs to turn to documentation outside that which is available
to the search divisions in-house (see B-IX). When searching external
document collections for material in relation to unpublished subject-matter
using other than secure connections, like the internet, the search divisionmust be extremely careful when formulating search strategies so as not to
unwittingly reveal confidential material – i.e. any part of the unpublishedpatent application (see B-III, 2.4).
2.5 Closest prior art and its effects on the search
It may happen that the search division does not find any documents
published before the earliest priority date which prejudice the novelty or theinventive step of the claimed invention. In such cases, the search division
cites, whenever possible, in the search report at least that prior art found in
the course of search which discloses a solution to the same problem asthat underlying the claimed invention (wherein this problem may change
depending on the prior art retrieved (G-VII, 5.2) and wherein the known
solution is technically the closest to the claimed solution ("closest prior art").
Such prior art is to be cited as an "A" document in the search report(see B-X, 9.2.2).
If such a document cannot be found, the search division cites as the closest
prior art a document which solves a problem closely related to the problem
underlying the claimed invention and wherein the solution is technicallymost similar to that of the application under search.
Where the search division retrieves documents which are incidentally
prejudicial to the novelty of the claimed invention (to be cited as "X") but
which do not affect the inventive step thereof after appropriate amendmentof the application, and does not retrieve any other documents prejudicing
inventive step, it also proceeds as above.
In the case of a European application derived from an international
application and being subjected to a supplementary European search afterMarch 2023

Guidelines for Examination in the EPO

entering the European phase (Art. 153(7) – see B-II, 4.3), it is possible thatthe search division does not uncover any further relevant prior-art
documents in the search over and above the documents already cited in
the international search report by the International Searching Authority. Insuch cases, it is permissible to have no further relevant documents in the
supplementary European search report (see B-X, 9.1.4).
2.6 End of search
Reasons of efficiency dictate that the search division uses its judgement to
end its search when the probability of discovering further relevant prior art
becomes very low in relation to the effort needed. The search may also be
stopped when documents have been found clearly demonstrating lack ofnovelty in the entire subject-matter of the claimed invention and its
elaborations in the description, apart from features which are trivial orcommon general knowledge in the field under examination, application ofwhich features would not involve inventive step. The search for conflicting
applications (see B-VI, 4) is, however, always completed to the extent thatthese are present in the available documentation.
3.

Procedure after searching

3.1 Preparation of the search report
After completion of the search, the search division selects from the
documents retrieved the ones to be cited in the report. These always
include the most relevant documents (which will be specially characterisedin the report, see B-X, 9.2.1). Less relevant documents are only cited when
they concern aspects or details of the claimed invention not found in the
documents already selected for citation. In cases of doubt or borderline
cases in relation to novelty or inventive step, the search division will citerather more readily in order to give the examining division the opportunity toconsider the matter more fully (see B-III, 1.1).
The search division does not cite more documents than is necessary andtherefore, when there are several documents of equal relevance, thesearch report does not normally cite more than one of them. In any case,the search report is accompanied by an annex drawn up by computer andlisting the patent documents which are available and belong to the same
patent family. In selecting from these documents for citation, the searchdivision pays regard to language convenience, and preferably cite (or atleast note) documents in the language of the application (see B-X, 9.1.2).
3.2 Documents discovered after completion of the search
It may happen occasionally that, after completion of a search report, thesearch division discovers further relevant documents (e.g. in a later search
for a related application). Such documents may be used in examination(see C-IV, 7.4 C-IV, 7.5).
3.3 Errors in the search report
When a material error is found to be present in a search report prior to
publication thereof, a new search report will be drawn up which supersedes
the preceding one. Where the search report has already been sent to theapplicant according to Rule 65, but has not yet been published, the error isPart B – Chapter IV-7

Part B – Chapter IV-8

Guidelines for Examination in the EPO

March 2023

immediately notified to the applicant. When a serious error is noted
following publication of the search report, a corrigendum is published in theEuropean Patent Bulletin, and the applicant and the examining division is
informed accordingly. If the error comprises the transmission making
available of an incorrect document as a citation, the correct document issent made available.

March 2023

Guidelines for Examination in the EPO

Chapter V – Preclassification, IPC and CPC
classification of European patent applications
1. Definitions
By "preclassification" is meant a first stage of classification, for purposes ofinternal application (file) routing and distribution, whereby the subject of theclaimed invention (or the invention first claimed, if there is more than one) is
broadly identified by means of the appropriate classification symbols.
By "IPC classification" is meant the assigning of the appropriateclassification symbols according to the International Patent Classification(IPC), published by WIPO. See the WIPO website for the IPC edition inforce, and the "Guide to the IPC", which sets forth principles and rules ofclassification.
By "CPC classification" is meant the assigning of the appropriateclassification symbols according to the Cooperative Patent Classification(CPC), published by the EPO and the USPTO. See the CPC website for
the CPC edition in force, and the "Guide to the CPC", which complements
the "Guide to the IPC" in that it covers the distinguishing features of the
CPC compared to the IPC.
2. Preclassification (for file routing and distribution)
In order for an application to be allocated correctly, a preclassification must
be made. The level of classification at this stage is as general aspracticable on the basis of a quick and cursory scrutiny of the document(e.g. the abstract and independent claim or claims). On the other hand, thelevel is specific enough to avoid the need for any intermediate stage ofpreclassification before the final allocation.
Classification at this stage is performed using IPC and/or CPC symbols andis indicated on the dossier and in the EPO's in-house electronic tool.
In most cases no further classification is required to enable applications to
be distributed to the relevant search divisions. However, where necessary,
it falls within the authority of the examiner in charge of the field to arrange
for such redistribution in an expedient manner.
2.1 Incorrect preclassificationIf, on reaching the search division, an application has been found to beincorrectly preclassified and thus inappropriately distributed, it isredistributed by the search division receiving it, indicating the appropriate
amendments on the dossier and in the EPO's in-house electronic tool.
Normally this is done by mutual agreement with the search division towhich it is proposed to redistribute it. However, cases arise over which
there is disagreement or uncertainty regarding classification boundaries, orwhere the search division dealing with the case is uncertain as to its correct
preclassification. In such instances the search division having the casedoes not spend time in trying to resolve the matter, but forwards the file toone of a team of appointed specialists in classification matters.

Part B – Chapter V-1

Part B – Chapter V-2

Guidelines for Examination in the EPO

March 2023

3. IPC classification of the application
The IPC classification of the patent application is performed by the searchdivision.
The IPC classification identifies all features relevant to the technical subjectof the claimed invention (or of the subjects of each of the claimed
inventions if there is more than one) as precisely and comprehensively as
the IPC scheme permits.
The IPC classification consists of "invention information" symbols and"additional information" symbols (the latter encompassing the usage of IPC
indexing codes) according to the IPC rules defined in the "Guide to the
IPC". In addition, where it is necessary to assign more than one symbol forthe invention itself, the symbol which in the search division's opinion mostadequately identifies it, or, when this presents difficulties, the symbol which
identifies the invention for which most information is given, is indicated first.
Preferably, this classification is done when the search division has studied
the content of the application in order to carry out the search. However, if
publication of the application is due before the search report is drawn up, it
is necessary for the search division to study the application sufficiently todetermine the IPC classification at this earlier stage (see B-X, 5).
The IPC classification is determined without taking into consideration theprobable content of the application after any amendment, since thisclassification relates to the disclosure in the published application, i.e. theapplication as filed. If, however, the search division's understanding of theinvention, or of the content of the application as filed, alters significantly asa result of the search (e.g. as a result of prior art found or because ofclarification of apparent obscurities), the search division will amend theclassification accordingly, if the preparations for publication have not at thatstage been completed.
3.1 IPC classification of late-published search reports
Where the search report is not available in time for publication of theapplication, and is therefore published separately, and the search divisionfinds it necessary to amend the assigned IPC classification for the reasons
given in B-V, 3, last paragraph, it states the amended classification on the
search report, indicating that it constitutes the IPC classification in place ofthat published on the application (which thus becomes merely the"classification for publication"). Such amendment of the classification is notmade unless the search division is quite certain that it is necessary.
Where a European patent application is classified and published without
the European search report (A2 publication), the European search report is
prepared and published separately after publication of the application(A3 publication). It may happen that a new edition of the IPC is published in
the period between publication of the European application (A2 publication)and the separate publication of the search report (A3 publication). In thiscase, the search division uses for the search report that version of the IPC
which was in force when the application was published.

March 2023

Guidelines for Examination in the EPO

3.2 IPC classification when the scope of the invention is not clear(e.g. a partial search)
When the scope of the invention is not clear, the classification has to be
based on what appears to be the invention in so far as this can beunderstood. It is then necessary to amend it if obscurities are removed by
the search, as discussed in B-V, 3, last paragraph.
3.3 IPC classification in cases of a lack of unity of invention
Where objection of lack of unity of invention arises, all inventions must beclassified, since all will be disclosed in the published application. Eachinvention claimed is to be classified as set out in paragraphs B-V, 3 to 3.2.
3.4 Verification of the IPC classification
As a general rule, applications will not be systematically scrutinised after
leaving the search division in order to verify the correctness of the IPC
classification assigned by the search division. The Office may, however,institute such sampling check procedures as are deemed necessary toensure correctness and uniformity in the application of the IPC. It is, ofcourse, for the line managers to arrange for such checks as they consider
necessary, having regard to the experience of their members, before theapplications leave their units.
4. CPC classification of the application
The search division classifies a patent application under the provisions of
the CPC as well as the IPC. In practice, classification is first performed in
the CPC, and the relevant IPC symbols are then generated from the CPC
allocations by one-to-one concordance (see the CPC to IPC Concordance
List (CICL), published on the CPC website).
The CPC classification allocated is as precise and comprehensive as theclassification system permits. The CPC comprises "invention information"
symbols and "additional information" symbols. Additional information
symbols encompass the use of CPC indexing codes. Where it is necessary
to assign more than one CPC classification symbol for the invention itself,
the symbol which, in the search division's opinion, most adequately
identifies the invention, or, when this presents difficulties, the symbol which
identifies the invention for which most information is given, is indicated first.
As with the IPC, CPC classification preferably takes place when the searchdivision has studied the content of the application in order to carry out the
search.
As for the IPC classification, the CPC classification is determined without
taking into consideration the possible future content of the application after
any amendment, since the classification relates to the disclosure of the
published application, i.e. the application as filed.
However, if the search division's understanding of the invention, or of thecontent of the application as filed, alters significantly as a result of thesearch, the search division amends the CPC classification accordingly,
making use of the appropriate classification tools. Unlike changes to thePart B – Chapter V-3

Part B – Chapter V-4

Guidelines for Examination in the EPO

March 2023

IPC classification (see B-V, 3 above), this amendment can be made evenafter the preparations for publication have been completed.
When the scope of the invention is not clear (e.g. a partial search isnecessary) or in the case of lack of unity of invention, the principles
described in B-V, 3.2 and 3.3 for the IPC classification apply equally to the
CPC classification.

March 2023

Guidelines for Examination in the EPO

Part B – Chapter VI-1

Chapter VI – The state of the art at the search
stage
1. General
The general considerations relating to the state of the art and patentability,
especially with regard to the determination of novelty and inventive step,
are set out in G-IV.
2. Oral disclosure, use, exhibition, etc. as state of the art
According to Art. 54 EPC, a public oral description, use, exhibition, etc. isconsidered as prior art if the facts of the disclosure can be proved. In
particular, a written document confirming the oral disclosure can even be
published after the filing date of the application being searched as it is thedate of the oral disclosure which is decisive under Art. 54(2).
However, the search division, in carrying out a European search, cites anoral description, etc. as prior art only if it has available a written
confirmation or is otherwise convinced that the facts can be proved: thedate of the non-written disclosure is given as the relevant date(see G-VI, 3); the date of the eventual written disclosure must also be
indicated.

Rule 61(4)Such references to oral disclosure, prior public use, disclosure by sale, etc.
are more usually brought up by opponents in opposition proceedings(see G-IV, 7.1 to 7.4).
3. Priority
If the claimed priority dates cannot be verified at this stage, uncertainty will
exist as regards their validity and the search for conflicting applications is
extended so as to cover all published applications with an earliest claimed
priority date up to the filing date (not the claimed priority date(s)) of theapplication under consideration (see B-IV, 2.3 and B-XI, 4).
4.

Conflicting applications

4.1 Potentially conflicting European and international applications
Generally, where the search is concluded less than eighteen months after
the European or international filing date of the application (the filing dateaccording to Art. 80 and not its claimed priority date(s)), it will not be
possible at the time of the search to make a complete search for potentiallyconflicting European and international applications. This search therefore
has to be completed at the examination stage by the examining division(see C-IV, 7.1). If the search division becomes aware of potentiallyconflicting published documents, these documents are cited in the search
report.
Patent documents, regardless of their state or region of origin, which havea filing or valid priority date prior to the filing date of the application being
searched (not the priority date), but which are published on or after thefiling date of the application being searched and contain novelty-destroying

Art. 54(3)Part B – Chapter VI-2

Guidelines for Examination in the EPO

March 2023

subject-matter for at least one independent claim of the application, arereferred to as "E" documents, see B-X, 9.2.6.
"E" documents cited in an EP search report can be other EP or
WO applications with an earlier priority date (Art. 54(3)) which are relevant
because they anticipate the novelty of the subject-matter claimed in theapplication being searched.
In this regard it must be stressed that the "E" document is
novelty-destroying prior art under Art. 54(3) if it discloses the subject-matterin question in any of its parts (i.e. claims, description or drawings).
4.1.1 Published European applications as "E" documents(a)
For European applications filed between 1 July 1997 and12 December 2007, since the designation fees for European
applications are paid after publication of the application(Art. 79(2) EPC 1973), the application is published with all
EPC contracting
statesautomaticallydesignated(OJ EPO 1997, 160). However, the automatic designations made on
publication of a European application are retroactively invalidated
accordingtoRule 23a EPC 1973
forthepurposesofArt. 54(3) and (4) EPC 1973 if the relevant designation fees are notpaid on time.
This means that when a European application is retrieved which ispotentially relevant as an "E" document by virtue of its
novelty-destroying subject-matter and earlier priority rights, and thisdocument is filed after the change in the rule on the designation ofstates (which happened on 1 July 1997) and before the entry into
force of EPC 2000, it is not immediately recognisable from thepublished document which contracting states have been validly
designated. Consequently, this document is always cited as an"E" document (i.e. assuming that it shares validly designated statesin common with the application being searched).
(b)

For
Europeanpatentapplications
filed
on
or
after
13 December 2007, any European patent application having an
earlier filing date and published on or after the date of filing of theapplication under examination is considered to be state of the art forthe purposes of Art. 54(3), regardless of the commonly designatedstates.

4.1.2 Published international applications (WO) as "E" documents(a)According to Art. 158(1) EPC 1973, a conflicting PCT application thatvalidly entered the European phase before 13 December 2007 andwas retrieved as an "E" document in the search for a European
application will constitute prior art within the meaning of Art. 54(3)and (4) EPC 1973 only if:–

the EPO has been designated in the international application,

March 2023

(b)

Part B – Chapter VI-3

Guidelines for Examination in the EPO–

where necessary, the applicant has supplied to the EPO atranslation of the international application into an official EPO
language, and–the applicant has paid the EPO's national basic fee (the sameas the filing fee) according to Rule 107(1)(c) EPC 1973 and
the
EPO's
designationfees
accordingtoRule 107(1)(d) EPC 1973.

A conflicting PCT application that entered the European phase on orafter 13 December 2007 and was retrieved as an "E" document in
the search for a European application will constitute prior art within
the meaning of Art. 54(3) only if according to Rule 165:–

the EPO has been designated in the international application,–

where necessary, the applicant has supplied to the EPO atranslation of the international application into an official EPO
language according to Art. 153(4) and Rule 159(1)(a), and–the applicant has
Rule 159(1)(c).

paid

the

filingfee

accordingto

If it is not possible to verify any of the above based on the publishedinternational (WO) application (in particular because the 31-month time limit
for performing the above acts under Art. 22 PCT and Art. 39 PCT has not
yet expired for the international application at the time of the search), thedocument may become relevant under Art. 54(3) and consequently is citedas an "E" document in the search report (see also B-X, 9.2.6).
4.2 National earlier prior rights
There may also be national applications of one or more states designatedin the European application of which the dates of filing are prior to the filingor priority date of the European application, and which were published asnational applications or patents on or after that date. Although suchapplications are not a bar to the grant of a European patent, but only apotential ground for revocation in the contracting state(s) concerned, they
may be of importance to the applicant (see H-III, 4.4). Therefore, any ofthese which are present in the documentation are noted and mentioned in
the search report for information (see B-X, 9.2.6).

Art. 139(2)5. Date of reference for documents cited in the search report; filingand priority date
5.1 Verification of claimed priority date(s)Where the validity of the priority claim cannot be verified at the search
stage (see B-XI, 4), the basic reference date for the search must be taken
as the date of filing of the European application as accorded by the
Receiving Section. (For the reference date for the search with respect toconflicting applications, see, however, B-VI, 3).

Art. 80
Rule 40
Art. 90(3)Art. 54(2)Part B – Chapter VI-4

Guidelines for Examination in the EPO

March 2023

5.2 Intermediate documents
The search division takes into account documents published between theearliest priority date and the filing date of the application underconsideration, and these documents are identified as such in the search
report (see B-X, 9.2.4). For identifying these documents when an
application has more than one priority date, the oldest date is to be applied.
When deciding which documents to select for citing in the search report,
the search division refers to these dates and chooses preferably any
document published before the date of priority. Thus, for example, where
there are two equally relevant documents, one published before the date ofpriority and the other after that date but before the date of filing, the searchdivision will choose the former (see B-IV, 3.1, second paragraph).
5.3 Doubts as to the validity of the priority claim; extension of thesearchIt is the responsibility of the examining division to check whether and towhat extent the priority claim is justified. However, where intervening stateof the art (see B-VI, 5.2) or potential state of the art according to Art. 54(3)is revealed in the search, the search division checks, if possible, the validityof the priority claim (see B-XI, 4, F-VI, 1.2 to F-VI, 1.5 and F-VI, 2).
Furthermore, if a document showing that a priority claim might not bejustified (e.g. an earlier application or patent from the same applicant
indicating that the application from which priority is claimed may not be thefirst application for the invention concerned) is found during the search, itwill be cited in the search report (see B-X, 9.2.8). However, no special
search effort is normally made for this purpose, except when there is a
special reason to do so, e.g. when the priority application is a"continuation-in-part" of an earlier application from which no priority isclaimed (see B-IV, 2.3 and F-VI, 2.4.4). Sometimes the fact that the countryof residence of the applicant is different from the country of the priority
application may also be an indication that it is not a first filing, justifying acertain extension of the search.
When the search is extended for this purpose, it is directed to:(i)published patent documents filed earlier than the claimed priority
date.
Example 1 (assuming that the applicant is the same for all
applications):
date:

application:

01.03.98
30.05.98
30.05.99

GB1 filed
GB2 filedEP1 filed(claiming priority of GB2)
GB1 published10.09.99

subject-matter:
A
A
A
A

During the search for EP1, the search division retrieved publishedapplication GB1. GB1 may prejudice the priority claim of EP1, since itMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter VI-5

was filed earlier than GB2. Published GB1 is, therefore, cited in the
search report as an "L" document according to B-X, 9.2.8(a); or(ii)

published patent documents which claim priority from an application
filed earlier than the priority date of the application being searched.
Example 2 (assuming that the applicant is the same for all
applications):
date:

application:

01.03.98
30.05.98
01.03.99

GB1 filed
GB2 filed
US1 filed(claiming priority of GB1)
EP1 filed(claiming priority of GB2)
US1 published30.05.99
15.04.00

subject-matter:
A
A
A
A
A

The publication US1 was found during the search for EP1. GB1 may
prejudice the priority of EP1, since it was filed earlier than GB2. US1,
which claims GB1 as priority, is, therefore, cited in the search reportas an "L" document according to B-X, 9.2.8(a).
5.4 Documents published after the filing date
The search does not normally take into consideration documents publishedafter the date of filing of the application as accorded by the Receiving
Section.
However, certain situations may occur in which a document published after
the filing date is relevant; examples are the written confirmation of an oral
disclosures (see B-VI, 2), or a later document containing the principle ortheory underlying the invention, which may be useful for a better
understanding of the invention, or a later document showing that thereasoning or the facts underlying the invention are incorrect(see B-X, 9.2.5). The search is not extended for this purpose, but
documents of this nature known to the search division could be selected forcitation in the report.
If priority is validly claimed (see B-VI, 5.1), the search also does notnormally take into consideration documents published after the earliest
validly claimed priority date as the latter counts under Art. 89 as the date offiling of the application. However, some extension is necessary for specificpurposes, as is apparent from B-VI, 3, B-VI, 4 and B-VI, 5.3.
5.5 Non-prejudicial disclosures
Disclosures of the invention are not taken into consideration if theyoccurred no earlier than six months preceding the filing of the European
patent application (see G 3/98 and G 2/99) and if they were due to anevident abuse in relation to the applicant or the legal predecessor, or due todisplay at an official, or officially recognised, international exhibition. The
search division does, nevertheless, cite in the search report any documents

Art. 55(1)(a) and (b)Rule 25

Part B – Chapter VI-6

Guidelines for Examination in the EPO

March 2023

it has reason to believe come within one of the categories mentioned in
B-X, 9.2.8. In this case, too, the reference date for the search will be thefiling date of the application (see B-VI, 5.1 and B-XI, 4). Since the matter ofabuse will generally only be raised after transmission of the search reportand search opinion (if applicable, see B-XI, 7), and disclosure at an
exhibition involves the question of identity between the displayed andclaimed invention, both matters are investigated by the examining division.
5.6 Matters of doubt in the state of the art
Since decisions with respect to novelty are not the responsibility of thesearch divisions but of the examining divisions (see B-III, 1.1), the searchdivisions does not discard highly relevant documents because of doubt as
regards for example the exact date of publication or public availability(e.g. standards or standard preparatory documents, see G-IV, 7.6), or theexact contents of an oral disclosure, exhibition, etc. to which such
documents may refer. The search division tries to remove any doubt that
may exist but does nevertheless always cite the documents concerned in
the search report and also continues the search as though that document
had not been found. Additional documents providing evidence in thematters in doubt may be cited (see B-X, 9.2.8). The search opinion contains
details explaining the issue.
Any indication in a document of the date of its publication is accepted ascorrect unless sound reasons for contesting this are given, e.g. by thesearch division, showing earlier publication, or in examination proceedings
by the applicant, showing later publication. If the indicated date of
publication is insufficiently precise (e.g. because only a month or year isgiven) to establish whether publication was before the reference date forthe search, the search division endeavours to establish the exact date with
sufficient precision for the purpose. A date of receipt at the EPO stamped
on the document, or a reference in another document, which must then becited (see B-X, 9.2.8), may be of assistance in this respect. In the
preparation of the search opinion and during substantive examination, thepublic availability of a document may be investigated (see C-IV, 1). Where,
despite the endeavours of the search division, the date is not sufficiently
precise to know whether or not the document was published before or after
the priority or filing date, the search division cites the document as though it
had been published on the earliest possible date. For instance, if only themonth and year of publication are known, the search division cites it as
being published on the first day of that month.
6.

Contents of prior-art disclosures

6.1 General remark
As a general rule, the search division selects for citation only documents
which are present in the search documentation or which it has access to insome other manner. In that way, no doubt exists about the contents of the
documents cited, since the search division generally has physicallyinspected each document cited.

March 2023

Guidelines for Examination in the EPO

6.2 Citation of documents corresponding to documents not available
or not published in one of the official EPO languages
Under certain circumstances a document whose contents have not beenverified may be cited, provided there is justification for the assumption that
there is identity of content with another document which the search division
has inspected; both documents are then mentioned in the search report in
the manner indicated at the end of B-X, 9.1.2. For example, instead of the
document published before the filing date in a non-EPO language andselected for citation, the search division may have inspected acorresponding document (e.g. another member of the same patent family,
or a translation of an article) in an official EPO language and possibly
published after the filing date. Also, it may be assumed that, in the absenceof explicit indications to the contrary, the contents of an abstract arecontained in the original document. Further, it is normally assumed that thecontents of a report of an oral presentation are in agreement with that
presentation.
Before citing documents in a language with which it is not familiar, thesearch division must make sure that the document is relevant (e.g. througha machine translation, through translation by a colleague, through acorresponding document or abstract in a familiar language, or through adrawing or chemical formula in the document or by consulting databaseindexes relating to the technical content of that document (see B-X, 9.1.3)).
6.3 Conflict between abstract and source document
Where there is a problem with an abstract, either because it appears toconflict with the source document to which it relates or because it conflicts
with other abstracts of the same source document, the search division willproceed as follows:(i)where the source document is in an accessible language (inparticular a language of an EPC contracting state) and either isdirectly available to the search division or may be ordered, thesearch division cites the source document;(ii)

where the document is in an inaccessible language (for example
Russian, Japanese or Chinese) and/or is difficult to obtain, thesearch division cites the abstract. Where more than one abstract isavailable, the search division will cite the abstract most relevant tothe claimed invention, regardless of any conflicts between that
abstract and other abstracts or the source document.

The source document will be present in the search report as the"&" document of the cited abstract. Where it is available but is in an
inaccessible language such as Japanese, both the source document andthe abstract will be printed and sent made available to the applicant andincluded in the file (see B-X, 9.1.2). The search division must explain in the
search opinion why it considers that there is a conflict.
Where an abstract conflicts with the source document to which it relates, tothe extent that the abstract is incorrect it does not form part of the state of
the art: the source document on which the abstract is based then forms thePart B – Chapter VI-7

Part B – Chapter VI-8

Guidelines for Examination in the EPO

March 2023

state of the art (T 77/87). However, for the purpose of the search report andopinion, an abstract is considered a true representation of the content of
the original document, unless the disparity between the two is evident.
Being provided with With both the abstract and the source document being
made available, the applicant will be able to compare both disclosures andreach conclusions about the technical validity of the abstract. The
opportunity to refute the above assumption remains available inexamination (for example, by providing a translation of the original
document).
6.4 Insufficient prior-art disclosures
In general, the search division assumes that any technical subject-matterpresent in a prior-art document is sufficiently disclosed and consequently ispart of the state of the art. Even in cases of doubt the document is cited in
the search report in the normal way and relied upon for an appropriate
objection in the search opinion. Only in clear cases of insufficient disclosure(see G-IV, 2) will such a document be discarded.
6.5 Incorrect compound records in online databases
If the search division retrieves a compound when interrogating a databasecreated by abstracting source documents (e.g. patents, journal articles orbooks) and deriving the chemical compounds disclosed in those documents
and, on reading the source document, is unable to locate the compound,
this does not automatically mean that an error has been made and that thecompound is not disclosed in the document. For example, disclosed
compounds which are named but whose structures are not drawn are stillpart of the disclosure and will be abstracted. In addition, database providers
use standard nomenclature in their database records, whereas authors oftechnical literature frequently do not. Consequently, the nomenclature used
for the compound in the database record may not be the same as that usedin the source document.
However, in certain cases the search division is really unable to locate thecompound in the source document, and this compound is relevant to theassessment of patentability. In such cases, the search division may write to
the database provider asking why the compound in question was
abstracted from that document and where it is disclosed in it. If the reply
from the database provider is not available when the search report isdrafted, the document is cited in the search report and used in the search
opinion on the assumption that the compound is disclosed in the document.
However, the search division does also continue the search as though thecompound did not exist.
7. Internet disclosures - technical journals
For some technical journals, the publisher's website displays the date(s)when publications occur electronically, in particular if these differ from thepublication dates of paper publications (OJ EPO 2009, 456). A number ofdifferent situations may occur in the case of electronic publication, as
described in G-IV, 7.5.3.1. In all these instances, the search division prints
out the journal web page where the (electronic and paper) publication andpre-publication date(s) of the article or issue are mentioned, which is thencited in the search report as an "L" document. It is best to do so as soon asMarch 2023

Guidelines for Examination in the EPO

the evidence is found and not leave it until later, since the information may
be moved or removed from the website in the time which elapses between
search and substantive examination.

Part B – Chapter VI-9

March 2023

Guidelines for Examination in the EPO

Part B – Chapter VII-1

Chapter VII – Unity of invention
1. General remarks
The requirement of unity of invention serves a regulatory function in theinterest of an efficient procedure up to grant (T 110/82 and F-V, 6). It would
be unfair to regard as having unity of invention those applications which,because of their heterogeneous content, entail a far greater than average
expense to process, especially in respect of search, since this expense
must partly be borne by the fees levied for other applications. A further
aspect is the requirement for ready comprehensibility of the application's
subject-matter, which may be impaired by heterogeneous subject-matter.
On the other hand, the general purpose of dealing with interconnected
substantive issues within a single procedure would not be achieved if
provisions relating to unity of invention were applied too strictly. For thisreason, interconnected matter must not be split up needlessly (see F-V).
1.1 Partial European search report
If the search division considers that the European application does notcomply with the requirement of unity of invention (see F-V, 1), it mustsearch it, and draw up the partial European search report under Rule 64(1),for those parts of the application which relate to the invention (or group of
inventions forming unity) first mentioned in the claims (see F-V, 3.4). The
partial European search report is supplemented with a specification of theseparate inventions.

Rule 64

With regard to the search opinion in cases of a lack of unity of invention,
see B-XI, 5.
1.2 Invitation to pay further search fees
The search division will inform the applicant of the lack of unity of invention
in a communication accompanying the partial search report and will
indicate that a further search fee must be paid for each invention other thanthe one first mentioned in the claims, if the search is to cover theseinventions as well. A provisional opinion on the patentability of the invention
or unitary group of inventions first mentioned in the claims (see F-V, 3.4)
and the reasons for non-unity findings will be provided to the applicant. The
provisional opinion will be sent together with the invitation to pay further
search fees. The provisional opinion will be for information only. A reply
addressing the points raised in the provisional opinion is not required andwill not be taken into account when the extended European search report isissued (see the notice from the EPO dated 3 March 2017,
OJ EPO 2017, A20).
1.2.1 General
The payment of these fees must take place within a period of two months(Rule 64(1)). If the automatic debiting procedure is being used for theapplication, applicants must inform the EPO within this period if they do notwant all or any of the further inventions to be searched. Otherwise all thefurther search fees due will be debited automatically on the last day of theperiod.

Rule 64(1)Point 6.1 AAD

Part B – Chapter VII-2

Guidelines for Examination in the EPO

March 2023

(a)

If the applicant does not pay any further search fees within the time
limit fixed, no further search is effected and the partial search reportbecomes the final search report which is accompanied by the search
opinion. Nevertheless, the final decision on the question of unity of
invention is taken by the examining division or, ultimately, thecompetent board of appeal (B-VII, 1.4 and C-III, 3.2.1 C-III, 3.1.1).

(b)

If the applicant pays further search fees within the time limit fixed, thesearch is completed for all inventions or groups of inventions in
respect of which the further search fees have been paid. The final
search report is then drawn up for all inventions for which (additional)
search fees have been paid. The search opinion addresses any
issue where the application in respect of the inventions for which
additional search fees have been paid does not meet the provisionsof the EPC (for example: Invention 1 was searched and the applicant
paid an additional search fee for invention 3. The subject-matter of
invention 3 lacks novelty. Thus, the search opinion covers invention 1
and raises objections as to lack of novelty for the subject-matter of
invention 3.).

1.2.2 Cascading non-unity
If a lack of unity is raised at the search stage for an EP application, asearch is conducted for the invention first mentioned in the claims(see F-V, 3.4) and the applicant is invited to pay additional search fees.
Furthermore, the applicant is warned that, even if a further lack of unity "aposteriori" arises in the procedure, no further invitation to pay additional
fees will be issued.
If the applicant pays any additional search fee, a search is carried out for
the inventions for which those search fees have been paid.
If the search reveals that one or more of these inventions also lack unity "aposteriori", only the first invention of each of the groups of inventions issearched. No further invitation to pay further additional search fees isissued.
The search opinion is prepared, setting out the reasons for non-unity andgiving an opinion on the patentability of the inventions paid for(see B-XI, 5).
Inventions that have not been searched can be filed as divisional
applications in accordance with C-IX, 1.2.
ExampleA lack of unity objection is raised identifying four different inventions A, B,
C, D. The first invention A is searched and the applicant is invited to pay
further search fees for inventions B, C and D. The warning clausementioned above is used.

March 2023

Guidelines for Examination in the EPO

The applicant pays two further search fees for inventions B and C. During
the additional search, B is found to lack unity "a posteriori" and is divided
into groups of inventions B1, B2 and B3.
In this case only B1 and C are searched. In the ESOP, full reasoning mustbe given as to why the claims of the application were divided into A, B, C
and D and why B was further subdivided into B1, B2 and B3. In the ESOPan opinion on patentability must be given for A, B1 and C.
Examination of the application in the European phase will be based oneither A, B1 or C (see C-III, 3.1.2 C-III, 3.2.2). The claims relating toinventions B2, B3 and D can be filed as divisional applications inaccordance with C-IX, 1.2.
1.2.3 The applicant has not paid all additional search fees
The applicant needs always to make clear for which inventions the
additional search fees have been paid. Hence, in cases where the applicant
pays some, but not all, of the additional requested search fees and fails to
indicate for which inventions payments have been made, the searchdivision will make efforts to find out which inventions are to be covered by(an) additional search/searches.
1.3 Documents relevant only to other inventions
Whilst documents relevant only to other inventions may be retrieved during
the search on the invention first mentioned in the claims, these are notnecessarily included in the partial European search report. Suchdocuments must, however, be cited in the partial search report if they form
the basis for a lack of unity a posteriori (see F-V, 5 and 7).
1.4 Assessment and possible review of the unity requirement
At the search stage, the search division dealing with the question of unity
applies the same criteria as in substantive examination (see F-V). In
particular, it will not raise an objection of lack of unity merely because theinventions claimed are classified in separate classification groups, or
merely for the purpose of restricting the search to certain sections of the
documentation, for example certain classification groups (but see B-V, 3.3).
The assessment of unity cannot be made once and for all. Normally, thesearch division will develop a first view even before it carries out the
search. This first assessment is necessarily made in a prima facie manner,on the basis of general knowledge and the statements of prior art containedin the application. During and after the search the assessment isreconsidered in the light of the documents found. The beginning of
substantive examination is a further procedural step where the previous
findings on unity are reconsidered. Even later in the proceedings the
position adopted previously may be superseded in view of new facts andevidence.
As a general rule, a previous position on unity of invention is maintained
unless strong reasons exist which lead to a situation where the position
must be changed. The final decision on the question of unity of invention istaken by the examining division or, ultimately, the competent board ofPart B – Chapter VII-3

Part B – Chapter VII-4

Guidelines for Examination in the EPO

March 2023

appeal. Therefore, as a matter of principle, any previous finding on unity is
open to review.
2.

Rule 64(2)Rule 164(5)Procedures in cases of lack of unity

2.1 Request for refund of further search fee(s)At the examination stage the applicant may contest the allegation of
non-unity and request a refund of one or more of the further fee(s) paid. If
the examining division finds this to be justified, the fee(s) in question will be
refunded (see, however, B-XI, 1.2).
2.2 Complete search despite of lack of unity
Exceptionally, in cases of lack of unity, especially "a posteriori", the searchdivision is able to make a complete search and prepare a search opinion(where applicable – see B-XI, 7) for all inventions with negligible additional
work and cost, in particular when the inventions are conceptually very
close. In those cases, the search for the further invention(s) is completed
together with that for the invention first mentioned in the claims. All results
are then included in a single search report, which raises the objection oflack of unity and identifies the different inventions. It further indicates thatthe search division did not invite the applicant to pay further search fee(s)because all claims could be searched without effort justifying such a fee.
However, the search opinion (if applicable, see B-XI, 7) still raises the issue
of unity of invention (see B-XI, 5).

Art. 153(7)Rule 164(1)2.3 Supplementary European search
When in a supplementary European search following an international (PCT)
search a problem of unity of invention arises, a partial supplementary
European search report is drawn up on the invention or group of inventions
first mentioned in the claims (see F-V, 3.4) serving as basis for the
supplementary European search (Rule 164(1)(a)), independently of thefindings of the International Searching Authority as regards unity of
invention. Together with this partial search report, the applicant receives aninvitation to pay further search fees for each invention other than the one
first mentioned in the claims (Rule 164(1)(b)), i.e. the same procedure isfollowed as for the non-unity invitation for EP direct applications under
Rule 64(1) (see B-VII, 1.2). A provisional opinion on the patentability of theinvention or unitary group of inventions first mentioned in the claims and thereasons for non-unity findings will also be provided.
3. Lack of unity and Rule 62a or Rule 63
The procedures for dealing with cases which lack unity and where Rule 63
or Rule 62a applies are dealt with in B-VIII, 3.4 and 4.5 respectively.

March 2023

Guidelines for Examination in the EPO

Part B – Chapter VIII-1

Chapter VIII – Subject-matter to be excluded
from the search
1. General remarks
In relation to searches carried out for European patent applications, thesubject-matter listed in Rule 39.1 PCT may be considered under the EPC
either not to be susceptible of industrial application (Art. 57) or, to theextent to which the European patent application relates to that
subject-matter as such, to be excluded from patentability under Art. 52(2)and (3), or to constitute an exception to patentability under Art. 53(b) and(c). The claims are not searched in as far as they relate to such
subject-matter (for the procedure for limiting the search according toRule 63 see B-VIII, 3.1 to 3.4). For the specific case of compositions for use
in methods of treatment of the human or animal body by surgery or therapy,
or diagnostic methods practised on the human or animal body,see B-VIII, 2.1 below.

Art. 52(2) and(3)
Art. 53
Art. 57
Rule 63

While a decision on these matters rests with the examining division,
opinions on these matters are formed by the search division for the purposeof drafting the search opinion (if applicable, see B-XI, 7) and also in
considering possible limitations of the search and therefore whether or not
to
apply
the
procedure
providedfor
under
Rule 63(1)(see B-VIII, 3.1 to 3.4). The search division has thus to consider therequirements for patentability other than novelty and inventive step, as set
out in G-II and G-III.

Art. 52

The above-mentioned situations may also occur for only some of the claims
or for part of a claim. In these cases, this will be indicated in the invitationaccording to Rule 63(1) and in any subsequent incomplete search report or
the declaration taking the place of the search report under Rule 63(2).

Rule 63

2. Considerations relating to specific exclusions from andexceptions to patentability
2.1 Methods for treatment of the human or animal body by surgery
or therapy and diagnostic methods practised on the human or animal
body
Even if a claim is drafted as a method of medical treatment (see G-II, 4.2)
and is for this reason not directed to patentable subject-matter, ameaningful search may be possible if the determining technical feature is
the effect of the substance, which can be searched, and as such theprocedure under Rule 63 (see B-VIII, 3.1 to 3.4) would not be necessary.
For example, such claims may be worded as follows:"A method of treating dementia by administering a compound of formula X
to a patient", or"A method of diagnosis of disease Y practised on the human/animal body,comprising steps A, B and C"

Part B – Chapter VIII-2

Guidelines for Examination in the EPO

March 2023

These method claims are excluded from patentability under Art. 53(c).
However, in most cases it is possible for the applicant to reformulate theminto an allowable form during the examination procedure (see G-II, 4.2).
Consequently, such claims are searched since they are usuallycharacterised by the effect of substance X or by one or more of steps A, B
and C which are not directly practised on the human or animal body or arecharacterised by the use of reagents rather than the act of therapy or
diagnosis on the human/animal body.
If, however, specific method features are present (e.g. a combination ofpharmaceutical with physical treatment), a meaningful search may not be
possible. In cases of doubt the search division issues an invitation under
Rule 63(1) (see B-VIII, 3.1). However, regardless of whether such claims
are searched or not, the applicant's attention will be drawn in the search
opinion (if applicable, see B-XI, 7) to the fact that such subject-matter is
excluded from patentability (see B-XI, 3).
2.2 Subject-matter excluded from patentability under Art. 52(2)and (3)
Subject-matter or activities listed in Art. 52(2), when taken as such
(Art. 52(3)), are considered non-technical (G-II, 1 and 2). In the case of aclaim containing a mix of technical and non-technical features, the searchdivision identifies which features contribute to the technical character of theclaimed subject-matter (see G-VII, 5.4). The search covers all features thatare found to contribute to the technical character.
Features that appear to be non-technical when taken in isolation may
nonetheless contribute to the technical character of a claimed invention if,
in the context of that invention, they contribute to produce a technical effectserving a technical purpose. The mere implementation of effects that are
inherent in the excluded matter (T 1543/06) or result from circumvention of
the technical problem rather than contributing to a technical solution would
not qualify as technical effects (T 258/03). Examples of how to evaluate
contribution to technical character for each of the items listed in Art. 52(2)are provided in G-II, 3.1-3.7.
Claimed features are analysed in the light of the description and drawings
to determine if they produce a technical effect and form part of a technicalsolution to a technical problem (in accordance with B-III, 3.2 and B-IV, 1.1).
In particular, specific embodiments of the application disclosed in its
description and drawings, to which the claims might reasonably be
expected to be limited, are taken into account since they could confer
technical character on the claimed features (B-III, 3.5).
If the search division considers that some claim features do not contributeto the technical character of the claimed invention, this is indicated in the
search opinion. If a lack of inventive step objection is raised and at least
some of the distinguishing features are found not to have a technical effectcontributing to the solution of a technical problem as set out in G-VII, 5.4,
this finding is substantiated.

March 2023

Guidelines for Examination in the EPO

Part B – Chapter VIII-3

2.2.1 Computer-implemented business methods
For claims directed to computer-implemented business methods, if thefeatures contributing to the technical character of the claimed
subject-matter are so well-known that their existence at the relevant datecannot reasonably be disputed (T 1411/08, Reasons 4.1 and 4.2, andT 690/06, Reasons 13), no documentary evidence as to the relevant stateof the art is required in the search report. Such "notorious" knowledge, forwhich no documentary evidence needs to be cited, is not to be confusedwith the skilled person's common general knowledge, which is somethingthat generally can be reasonably questioned (G-VII, 2 and 3.1). In suchexceptional cases, a search report with no documents cited may be issued
under Rule 61 (OJ EPO 2007, 592). This search report under Rule 61 is tobe distinguished from a declaration of no search or a partial search reportunder Rule 63(2).
3. No meaningful search possible
In addition to the reasons discussed in B-VIII, 1, an invitation under
Rule 63(1) and subsequent limitation of the search under Rule 63(2) may
also result from the application not meeting the relevant requirements of the
EPC to such an extent that a meaningful search of the claims, or of some of
the claims, or of part of a claim, is impossible. In such cases, the searchdivision applies the procedure under Rule 63 (see B-VIII, 3.1 to 3.4 andOJ EPO 2009, 533).
Rule 63 relates only to the practicability of the search and not to thepotential relevance of its results in subsequent examination. Even if asearch were not to produce any result that could be used in examination
proceedings, a search cannot be refused by reference to Rule 63(see T 1242/04).
What is or is not "meaningful" is a question of fact for the search division todetermine. Its finding may change in the light of any reply from theapplicant to the invitation under Rule 63(1) (see B-VIII, 3.2). The exercise of
the search division's discretion will depend upon the facts of the case. A
restriction of the search must be carefully considered. There are cases
where a search is rendered de facto impossible by the failure to meet theprescribed requirements of the EPC, for example a fundamental lack ofclarity or the absence of any technical character whatsoever. The word
"meaningful" must be construed reasonably. It is not to be construed insuch a way that Rule 63 is invoked simply because a search is difficult ordoes not provide results that are significant for subsequent examination
proceedings.
As there is no legal provision providing that an applicant must formulate theapplication in such a way as to make an economical search possible,"reasons of economy" cannot be used as a reason, or part of a reason, forissuing an incomplete search report (see also T 1020/98).

Rule 63

Part B – Chapter VIII-4

Guidelines for Examination in the EPO

March 2023

A number of non-limiting examples will illustrate where Rule 63 may findapplication:(i)claims lacking support; insufficient disclosure
One example would be a claim so broadly formulated that its scopeis at least to a certain extent speculative, i.e. not supported by thedisclosure of the application. In this case, the broadness of the claim
is such as to render a meaningful search over the whole of the claim
impossible, and a meaningful search can only be performed on thebasis of the narrower, disclosed invention: in extreme cases this may
mean a search directed only to (one or more of) the specificexamples disclosed in the description. Accordingly, the procedure
under Rule 63(1) may be applied (see B-VIII, 3.1 to B-VIII, 3.4). Here,the requirements underlying the application of Rule 63 would be
those of sufficiency of disclosure and support set out in Art. 83 and84 (see F-III, 1 and 2, and F-IV, 6). The search division needs
however to bear in mind that the requirements under Art. 83 andArt. 84 concerning sufficiency of disclosure and support are to be
seen in relation to the person skilled in the art.

(ii)

claims lacking concisenessAn example would be where there are so many claims, or so many
possibilities within a claim, that it becomes unduly burdensome todetermine the matter for which protection is sought (however, for thecase of multiple independent claims in the same category
see B-VIII, 4). A complete search (or any search at all) may de facto
be impossible. Again, the application of Rule 63 and the issuing of asubsequent incomplete search report (according to the procedures
defined in B-VIII, 3.1 to 3.3) or a declaration of no search may beappropriate, on the grounds that the lack of conciseness of theclaim(s) is such as to render a meaningful search impossible(see Art. 84; F-IV, 5).

(iii)claims lacking clarity
An example would be where the applicant's choice of parameter todefine the invention renders a meaningful comparison with the prior
art impossible, perhaps because the prior art has not employed thesame parameter, or has employed no parameter at all. In such acase, the parameter chosen by the applicant may lack clarity(see Art. 84; F-IV, 4.11). It may be that the lack of clarity of theparameter is such as to render a meaningful search of the claims orof a claim or of a part of a claim impossible, because the choice ofparameter renders a sensible comparison of the claimed invention
with the prior art impossible. If so, the application of Rule 63 and theissuing of a subsequent incomplete search report (or, in exceptional
cases, no search at all) under Rule 63(2) (according to theprocedures defined in B-VIII, 3.1 to 3.3) may be appropriate, thesearch possibly being restricted to the worked examples, as far as
they can be understood, or to the way in which the desired parameterMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter VIII-5

is obtained (any response from the applicant to the invitation under
Rule 63(1) being taken into account in determining the subject-matterto be searched to the extent indicated in B-VIII, 3.2).
(iv)

claims contravening Art. 76 or Art. 123(2)Rule 63 may also find application with regard to claims containing
added subject-matter in the following cases (see B-VIII, 6):–

claims in divisional applications contravening Art. 76;–

applications for which the claims were filed after the filing date
and which contravene Art. 123(2); or–

Euro-PCT applications for which amended claims were filed asa basis for the supplementary European search and which
contravene Art. 123(2).

These examples are not exhaustive (see also B-VIII, 6). The basic principle
is that there needs to be clarity and openness both for the applicant and forthird parties as to what has and what has not been searched.
The treatment of these Rule 63 cases in subsequent examination
proceedings is dealt with in H-II, 5 and 6.1 H-IV, 4.1.1.
3.1 Invitation to indicate subject-matter for search
If the EPO considers that the application does not comply with the EPC tosuch an extent that it is impossible to carry out a meaningful search into thestate of the art on the basis of all or some of the subject-matter claimed(see B-VIII, 1, 2 and 3), it will invite the applicant to file, within a period of
two months, a statement indicating the subject-matter to be searched. The
invitation will also give the reasons behind this finding and may additionallyindicate the claimed subject-matter on which the search division considers
it feasible to base a meaningful search.
In the particular case of medical method claims, a complete search report isissued only when the claims can easily be reformulated to patentablesubject-matter (see B-VIII, 2.1). Conversely, if an incomplete search report(or a declaration of no search) is envisaged, an invitation must be sent
(e.g. in respect of the claims that cannot easily be reformulated).
3.2

Reply to the invitation under Rule 63(1)3.2.1 Failure to reply in time or no reply
If the applicant does not reply in time to the invitation under Rule 63(1), thesearch division will determine what to search. In this case a partial search
report will be drawn up accordingly, or in exceptional cases a declaration
replacing the search report. This limitation of the search has consequencesin examination (see H-II, 5 and 6.1 H-IV, 4.1.1). A late-filed reply is includedin the file for consideration in the examination phase because it may be
useful for reviewing the arguments given by the search division for carryingout an incomplete search.

Rule 63(1), (2)Part B – Chapter VIII-6

Guidelines for Examination in the EPO

March 2023

Given that the search report should be published together with theapplication, the two-month period prescribed under Rule 63 is not open tofurther processing, but it is possible to request re-establishment of rights(see OJ EPO 2009, 533).

Rule 63(2)3.2.2 Reply in time
If applicants reply in time to the invitation under Rule 63(1), indicating the
subject-matter to be searched, and if a meaningful search based on thesubject-matter that they have indicated is deemed possible by the searchdivision, a search will be conducted on that subject-matter.
If applicants reply to the invitation under Rule 63(1) but in their reply
indicate subject-matter which it is still not possible to search in full, thesearch division will determine the subject-matter to search, but will do so ina way which is consistent with the applicant's response, to the extent that
this is possible, or in exceptional cases may determine that no meaningful
search is possible at all.
Statements consisting of reworded claims filed in reply to a communication
pursuant to Rule 63 are not considered as amended claims in view ofRule 137(1) but merely as explanations in respect of the set of originally
filed claims. These claims will then be formally introduced in theproceedings upon receipt by the EPO of a statement to that effect filed by
the applicant within the time limits under Rule 70(1) and (2). Thisconfirmatory statement can be filed either together with the reply to theextended European search report (Rules 70a(1) and (2)), or, whereapplicable, when complying with the requirements under Rule 70(1)and (2). As far as possible the search division will draw up the search
report in the light of these clarifications. Both the search report and thesearch opinion must clearly indicate what has been searched.
If applicants reply in time to the invitation under Rule 63(1), they may,instead of indicating the subject-matter to be searched, simply argue why
they believe that it is possible to carry out a meaningful search on all of thesubject-matter claimed. If the search division is convinced by the applicant's
argumentation, a full search report will be issued and the consequences ofa limitation of the search which apply in examination will not ensue. If thesearch division is not convinced, or is only partially convinced, it will issue apartial search report and will determine which subject-matter to search or,
in exceptional cases, will issue a declaration replacing the search report.
The final responsibility as to whether an invitation under Rule 63 wasappropriate lies with the examining division. An additional search may benecessary in examination after a declaration or a partial search report has
been issued at the search stage following an invitation under Rule 63(1)(see C-IV, 7.2 C-IV, 7.3).
Furthermore, the applicant may, in reply to an invitation under Rule 63, filearguments against the findings in the invitation requesting as a main
request that the claims as filed be completely searched and as an auxiliary
request, in the case that the search division is not convinced, indicate
specific subject-matter to be searched (see also H-III, 3.2).

March 2023

Guidelines for Examination in the EPO

A consultation may take place if the applicant phones the search division toenquire about the course of action after an invitation under Rule 63 hasbeen sent. The consultation is limited to formal issues concerning thecontent of the invitation and the options available to the applicant. The
search division writes minutes of the consultation, which are sent to theapplicant (without time limit) for information only. The time limit set with theinvitation is still applicable for the applicant to file a written reply; theconsultation per se does not constitute a valid reply.
3.3 The content of the extended European search report (EESR)
The two components of the EESR, the search report (or the declaration
replacing it) and the search opinion, will indicate the reasons why it was notconsidered possible to conduct a meaningful search in respect of some or
all of the claimed subject-matter according to Rule 63 and will indicate thesubject-matter which was searched, if any, as determined according to theprocedures given in B-VIII, 3.2. Furthermore, the search opinion will also
invite the applicant to limit the claims to subject-matter which has been
searched (in order to comply with Rule 63(3)). The documents cited in the
search report and referred to in the search opinion will relate only to thissubject-matter. In the event that the subject-matter subject to the searchcomplies with the requirements of the EPC (in particular in that it is novel,
inventive and industrially applicable, but also satisfies the otherrequirements of the EPC such as clarity under Art. 84), the search opinion
will still be negative, because the claims do not comply with therequirements of the EPC in respect of their full scope.
Furthermore, if in response to the invitation under Rule 63(1) the applicant
disputes the finding that a meaningful search is not possible(see B-VIII, 3.2), but the search division is not convinced by the applicant's
argumentation, it will indicate why this is the case in the search opinion, as
appropriate. If necessary, it can refer directly in the search opinion to theapplicant's reply.
3.4 Applications to which Rule 63 applies which also lack unity
Cases will arise where the application does not comply with the EPC tosuch an extent that it is impossible to carry out a meaningful search into thestate of the art on the basis of some of the subject-matter claimed(B-VIII, 1, 2 and 3) and where the application also lacks unity of invention
according to Art. 82 and Rule 44. It may be appropriate to raise only theissue of unity of invention and send an invitation under Rule 64(1)(see B-VII, 1.1 and 1.2), for example where a large number of claims which
results in a severe lack of conciseness is resolved by splitting up the claims
into the different inventions.
It may, however, be necessary to apply the procedures under both
Rule 64(1) (invitation to pay additional search fees for inventions other thanthat first mentioned in the claims) and Rule 63(1). In this case, the EPO will
first send the applicant an invitation according to Rule 63(1), requesting theapplicant to indicate the subject-matter to be searched. In cases where thelack of unity is already apparent before any clarification is received from theapplicant, this invitation would also identify the first invention mentioned in
the claims (see F-V, 3.4) and the claims which relate to this invention,

Part B – Chapter VIII-7

Part B – Chapter VIII-8

Guidelines for Examination in the EPO

March 2023

either in full or in part, and would invite the applicant to clarify what tosearch in respect of this invention first mentioned in the claims.
After expiry of the time limit according to Rule 63(1), the subject-matter, ifany, to be searched in respect of the first invention will be determinedaccording to the procedures specified in B-VIII, 3.2. A partial search report(or exceptionally a declaration replacing it) will then be prepared on theinvention first mentioned in the claims. This will be sent to the applicant
along with an invitation to pay additional search fees under Rule 64(1) in
respect of the other inventions. A provisional opinion on the patentability of
the invention or unitary group of inventions first mentioned in the claims andthe reasons for non-unity findings will also be provided. Where appropriate,
the invitation under Rule 64(1) may also include an invitation according toRule 63(1), inviting the applicant to clarify the subject-matter to be searchedin respect of any additional inventions for which the applicant subsequently
pays additional search fees.
Rule 164

For Euro-PCT supplementary European search reports, where these
exceptional conditions apply, the procedure will be as above, with the
exception that a Rule 164(1) invitation is sent instead of a Rule 64
invitation.

Rule 164

Rule 63 also applies to searches performed under Rule 164(2)(see C-III, 2.3 C-III, 3.1). As for EP direct cases, any Rule 63 objection
relating to an invention for which a search fee is to be paid must be
included in the invitation itself.
4.

Rule 62a(1)More than one independent claim per category (Rule 62a)

4.1 Invitation to indicate which independent claim to search
If the European Patent Office considers that the claims as filed do notcomply with Rule 43(2) (see F-IV, 3.2), it may invite the applicant toindicate, within a period of two months, claims complying with Rule 43(2)on the basis of which the search is to be carried out. Along the lines ofRule 64, the search division has the discretion either to send this invitationor to make a complete search for all claims, raising the objection under
Rule 43(2) only in the written opinion.
4.2

Reply to the invitation under Rule 62a(1)4.2.1 Failure to reply in time
If the applicant fails to provide the above indication in due time, the search
will be carried out on the basis of the first claim in each category. In eithercase a search report will be drawn up accordingly. This limitation of thesearch has consequences in examination (see H-II, 5 and 6.1 H-IV, 4.1.1).
As for the invitation under Rule 63 above, a late-filed reply is included in thefile for consideration at the examination stage.
Since the search report should be available on publication of theapplication, Rule 62a prescribes a response period of two months and rules
out further processing. However, a request for re-establishment of rights
may be granted, provided the relevant conditions are met.

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Guidelines for Examination in the EPO

4.2.2 Reply filed in time
If applicants reply to the invitation under Rule 62a(1), indicating an
independent claim in a particular category which they wish the EPO tosearch, the EPO will conduct the search based on this claim.
In reply to this invitation, the applicant may also indicate more than one
independent claim in the same category for search, where these fall within
the exceptions provided for in Rule 43(2) (see F-IV, 3.2). However, if theapplicant does so, but the EPO finds that the claims indicated do not fallwithin the exceptions provided for in Rule 43(2), only the independent claim
with the lowest number indicated by the applicant will be searched.
ExampleIf an application contains independent product claims 1, 10 and 15, an
invitation under Rule 62a(1) is sent and the applicant contends in the replythat independent product claims 10 and 15 fall within the exceptions
provided for in Rule 43(2) and indicates that these two claims are to be
searched, but the search division does not agree, then only claim 10 will besearched.
Where the applicant attempts to file amendments, the procedure indicatedin B-VIII, 3.2.2 is followed.
In any timely response to the invitation under Rule 62a(1), applicants may,instead of indicating the independent claim or claims to be searched, simply
argue why they believe that the claims comply with Rule 43(2) (i.e. why theplurality of independent claims in the same category fall within one or moreof the exceptions provided for in Rule 43(2)). If the search division isconvinced by the applicant's argumentation, a search report will be issued
on the basis of all the claims, and the consequences of a limitation of thesearch which apply in examination will not ensue. If the search division is
not convinced, it will issue a search report for which the search will be
conducted based on the first independent claim in that category. The final
responsibility as to whether an invitation under Rule 62a was appropriate
lies with the examining division.
Furthermore, the applicant may, in reply to an invitation under Rule 62a, filearguments against the findings in the invitation requesting as a main
request that the claims as filed be completely searched and as an auxiliary
request, in case the search division is not convinced, indicate theindependent claims to be searched (see also H-III, 3.2).
The applicant may phone the search division in order to enquire about thecourse of action after an invitation under Rule 62a has been sent, as
explained above for the invitation under Rule 63 (see B-VIII, 3.2.2).
4.3 The content of the extended European search report (EESR)
The search opinion will invite the applicant to limit the application to claims
which have been searched (Rule 62a(2)). Furthermore, if in response to theinvitation under Rule 62a(1) the applicant disputes the finding under
Rule 43(2) (see B-VIII, 4.2), but the search division is not convinced by thePart B – Chapter VIII-9

Part B – Chapter VIII-10

Guidelines for Examination in the EPO

March 2023

applicant's argumentation, it will indicate why this is the case in the search
opinion, as appropriate.
4.4 Cases under Rule 62a where claims fees are not paid
If an independent claim has been deemed to be abandoned under
Rule 45(3) or Rule 162(4) as a result of the non-payment of claims fees(see A-III, 9), the applicant cannot indicate this claim for search in responseto the invitation under Rule 62a(1), because no search is conducted onsuch a claim (see B-III, 3.4). The indication of such a claim by the applicant
in response to the invitation under Rule 62a(1) will be ignored by the EPO,
which will then apply Rule 62a(1), last sentence, and will search the firstindependent claim in the category in question for which claims fees havebeen paid.
If all independent claims in the category in question have been deemed to
be abandoned for failure to pay claims fees, no invitation under Rule 62a(1)will be sent in respect of these claims and none of them will be subject to asearch.
4.5 Applications to which Rule 62a applies which also lack unity
Cases will arise where the application does not comply with Rule 43(2)(see B-VIII, 4.1 and F-IV, 3.2) and the application also lacks unity of
invention according to Art. 82 and Rule 44. It may be appropriate to raise
only the issue of unity of invention and send an invitation under Rule 64(1)(see B-VII, 1.1 and 1.2).
It may, however, be necessary to apply the procedures under both
Rule 64(1) (invitation to pay additional search fees for inventions other thatthe first mentioned in the claims) and Rule 62a(1). In this case, the EPO will
first send the applicant an invitation according to Rule 62a(1), requesting toindicate the independent claims to be searched.
In cases where the lack of unity is already apparent when the invitation
under Rule 62a(1) is sent, it will also identify the first invention mentioned in
the claims (see F-V, 3.4) and the claims which relate to this invention,either in full or in part, and will invite the applicant to indicate which claims
to search in respect of this invention first mentioned in the claims. After
expiry of the time limit according to Rule 62a(1), the claims to be searchedin respect of the first invention will be determined according to theprocedures specified in B-VIII, 4.2. A partial search report will then be
prepared on the invention first mentioned in the claims. This will be sent tothe applicant along with a provisional opinion on the patentability of theinvention or unitary group of inventions first mentioned in the claims, thereasons for the non-unity findings and an invitation to pay additional searchfees under Rule 64(1) in respect of the other inventions. Where
appropriate, this invitation under Rule 64(1) may also include an invitationaccording to Rule 62a(1), requesting the applicant to clarify the claims to be
searched in respect of any additional inventions for which additional searchfees are subsequently paid.
Conversely, it may also happen that after an invitation is sent according toRule 62a(1) in respect of all claims, the claims which satisfy Rule 43(2) andMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter VIII-11

which are subject to a search (as determined according to the procedures
given in B-VIII, 4.2) are subject to an objection of lack of unity a posteriori.
In such cases, an invitation to pay additional fees under Rule 64(1) will thenbe sent, the invitation being based only on the subject-matter of the claims
determined by the applicant's response (or failure to respond) to theinvitation under Rule 62a(1).
For Euro-PCT supplementary European search reports, where these
exceptional conditions apply, the procedure will be as above, with the
exception that a Rule 164(1) invitation is sent instead of a Rule 64
invitation.

Rule 164

Rule 62a also applies to searches performed under Rule 164(2)(see C-III, 2.3 C-III, 3.1). As for EP direct cases, any Rule 62a objection
relating to an invention for which a search fee is to be paid must be
included in the invitation itself.

Rule 164

4.6 Treatment of dependent claims under Rule 62a
Claims depending either directly or indirectly via other dependent claims on
an independent claim excluded from the search in accordance with
Rule 62a(1) (see B-VIII, 4.2) are likewise excluded from the search.
Conversely, if a dependent claim depends on more than one previous
claim, not all of which were searched, that dependent claim will besearched only in as far as it depends on a claim or claims which weresearched in accordance with Rule 62a(1).
5. Invitation under both Rule 62a(1) and Rule 63(1)In certain cases it may be appropriate to send an invitation according toboth Rule 63 (see B-VIII, 3.1) and Rule 62a(1) (see B-VIII, 4.1). This may
be necessary, for example, in cases where clarifying which claim or claims
to search under Rule 62a will not necessarily help to clarify what
subject-matter to search because the application contains several
independent claims in the same category, none or only some of which canbe subject to a meaningful search in respect of their entire scope. In suchcases invitations under both Rule 62a(1) and Rule 63(1) will be sent in asingle communication. This single communication gives rise to the sametwo-month time limit for reply under both rules. In such cases, applicants
wishing to respond to both invitations should do so simultaneously.
In response to this invitation under Rule 62a(1) and Rule 63(1), theapplicant must not indicate independent claims (in response to theinvitation under Rule 62a(1)) and subject-matter (in response to theinvitation under Rule 63(1)) which are inconsistent with each other. If theapplicant provides inconsistent indications, the search division may,depending on the circumstances, either (i) elect to search the claims
indicated by the applicant according to Rule 62a(1), where necessary
limiting the subject-matter searched in respect of those claims according toRule 63(2) mutatis mutandis or (ii) elect to search the subject-matter
indicated by the applicant according to Rule 63(1) and as defined in the firstindependent claim of a particular category which is consistent with that
subject-matter according to Rule 62a(1), last sentence, mutatis mutandis.

Part B – Chapter VIII-12

Guidelines for Examination in the EPO

March 2023

Although sent in the same communication, the invitations under
Rule 62a(1) and Rule 63(1) are still legally separate. Consequently,
applicants may also reply to only one of the invitations and not to the other.
If they reply only to the Rule 62a(1) invitation, option (i) of the previous
paragraph applies. If they reply only to the Rule 63(1) invitation, option (ii)of the previous paragraph applies.

Art. 123(2)Rule 58

6. Claims contravening Art. 123(2) or Art. 76(1)If the claims on which the search is to be based were filed after the date offiling or under Rule 58, they do not form part of the application documents"as originally filed". Also, for Euro-PCT applications (see B-III, 3.3.1), it may
happen that amended claims form the basis for the supplementary
European search. In either case, before starting the search, the searchdivision checks whether or not these claims introduce subject-matter that
extends beyond the content of the application "as originally filed" (seealso A-III, 15). For Euro-PCT applications, this is the PCT application as
originally filed.
If the claims contravene the requirements of Art. 123(2), the search division
will face one of the following situations:(a)

if there are doubts about the objection (e.g. the amendment relies oncommon general knowledge and the search division is unsure if theintroduced term can be based on this) and/or the amendment does
not significantly change the scope and subject of the search: thesearch division searches the claims as they are.

(b)

if there are certain individual features in the claims that clearly violate
Art. 123(2): the search division performs the search ignoring thesefeatures.

(c)

if there are substantial non-allowable amendments in the claims: thesearch division may need to issue an invitation under Rule 63(1) prior
to starting the search (see B-VIII, 3(iv)). Depending on the reply tothe invitation, an incomplete search report or even a declaration
replacing the search report according to Rule 63 may be issued. In
deciding what to include in the search and what to exclude from it,
the search division refers to how the invention is defined in thedescription.

A similar problem may also occur when a divisional application is filed andthe amended claims do not satisfy the requirements of Art. 76(1): the same
criteria as described in steps (a) to (c) above is then to be applied.
In any case, the search opinion will include an objection under Art. 123(2)or Art. 76(1) indicating the reasons for limiting the scope of the search.

March 2023

Guidelines for Examination in the EPO

Chapter IX – Search documentation
1.

General

1.1 Organisation and composition of the documentation available tothe search divisions
The basic part of the search documentation consists of a collection ofpatent documents systematically accessible in a manner suitable forsearching. Additionally, periodicals and other publications of technicalliterature are put at the disposal of the search division. This non-patent
literature is accessible through in-house or external databases, some ofwhich are arranged in the library in a manner suitable for consultation; parts
thereof, such as particularly relevant articles, are selected and madeavailable for direct access by incorporating these, or copies thereof, into thesystematic documentation. The systematically accessible part of the searchdocumentation includes the minimum documentation required for an
International Searching Authority under Rules 34 and 36.1(ii) PCT and
extends somewhat beyond these minimum requirements.
1.2 Systematic access systems
All members of the search division have at their disposal computer facilities
for searching the search documentation. These allow, amongst otherthings, the use of the Cooperative Patent Classification (CPC), which isbased on the International Patent Classification (IPC) but comprises finerinternal subdivisions. Searches can also be performed using otherclassification systems and/or words.
2.

Patent documents arranged for systematic access

2.1 PCT minimum documentation
The systematically accessible search documentation includes the national
patent documents belonging to the PCT minimum documentation as
specified in Rule 34.1(b)(i) and (c) PCT.
Also included are published international (PCT) and regional(e.g. European) patent applications, patents, and inventors' certificates(Rule 34.1(b)(ii) PCT).
A complete list of the contents of the PCT minimum documentation isavailable on the WIPO website.
2.2 Unpublished patent applications
Since the completion of the search for conflicting applications that are notpublished at the time of the initial search is entrusted to the examining
divisions, the documents which can be cited in the search report do notinclude unpublished patent applications (see B-VI, 4.1).
2.3 Search reports
The official European and international (PCT) search reports are normally
published together with the European and international applications and areincluded in the search files together with these applications. The official
search reports relating to national applications, as well as unofficial searchPart B – Chapter IX-1

Part B – Chapter IX-2

Guidelines for Examination in the EPO

March 2023

reports, are also included in these files to the extent that they are available
to the public. Search reports that are not normally or not yet accessible tothe public in the form of a published document are nevertheless available tothe search division separately from the state-of-the-art documents, andsearching thereof is not compulsory for all applications.
2.4 Patent family system
The EPO keeps a patent family system based on application data andpriority data of the patent documents stored in databases of the EPO.
When viewing patent documents on screen, normally only one
representative document of a patent family is displayed, but links to theother members of its patent family are provided.
3.

Non-patent literature arranged for systematic access

3.1 Periodicals, records, reports, books, etc.
The systematically accessible search documentation includes the relevant
articles from the list of periodicals belonging to the minimum documentation
under the PCT as established by the competent WIPO body and from otherperiodicals where deemed useful by the search division. In principle, copiesof the articles selected as relevant for search purposes are added to the
EPO search databases with a fictitious country code "XP", scanned forinclusion in the electronic "BNS" collection and included in the manual
search files, where appropriate.
The EPO also subscribes to many further periodicals including abstract
journals. Furthermore, records of conference proceedings, reports, books,
standards, etc. covering the three official languages of the EPO and thevarious technically important geographical areas are obtained. Individual
items are selected for inclusion in the online documentation in so far as
they constitute useful additions to the state of the art.
4.

Non-patent literature arranged for library-type access

4.1 Composition
In addition to the non-patent literature mainly serving search purposes(see B-IX, 3), the non-patent literature arranged for library type access also
comprises such literature serving primarily as sources of information andeducation of the search division both as regards general and backgroundtechnical information and as regards new technical developments.
Furthermore, the collection includes many reports, pamphlets, etc.
internet-based document delivery services of publishing companies are
made available to the members of the search division in the form of an
Electronic Virtual Library (EVL), which can be used from the member's
desktop computer.
5. Access to EPO documentation for the national patent offices
The EPO provides the national offices of its member states with access to
its electronic search documentation as described in B-IX, 2.1 to 2.3.
For other documentation of the EPO, if delivered by commercial databaseproviders, access can be limited, depending on the conditions of dataMarch 2023

Guidelines for Examination in the EPO

delivery agreed between the EPO and the data provider. However,separate agreements may exist between national offices and data
providers.

Part B – Chapter IX-3

March 2023

Guidelines for Examination in the EPO

Part B – Chapter X-1

Chapter X – Search report
1. General
The results of the search will be recorded in a search report. A number ofdifferent possible limitations of the scope of the search report exist. These
are:
(i)

where claims are deemed abandoned for non-payment of claims fees
(Rule 45(3), see B-III, 3.4);(ii)

a declaration replacing the search report according to Rule 63(see B-VIII);(iii)

an incomplete search report according to Rule 63 and/or Rule 62a(see B-VIII);(iv)

a partial European search report due to a finding of a lack of unity
according to Rule 64(1); and(v)

a supplementary European search report according to Art. 153(7)may be incomplete for the reasons given in (i) or (iii) or may bereplaced by a declaration according to (ii) (in the case of unpaid
claims fees for a supplementary European search, Rule 162(4)applies).

The search reports of types (i) - iii), (and (v) in so far as only (i) - iii) apply)
are transmitted to the applicant, published and serve as a basis for theexamination by the examining division. A partial search report according toRule 64(1) (case (iv) above) is transmitted to the applicant, but not
published; it can however be inspected by the public as it is part of theelectronic file accessible via the European Patent Register (see A-XI, 2).
Subject to the exceptions mentioned in B-XI, 7, European search reports
and supplementary European search reports are accompanied by a search
opinion, where the search division gives an opinion on whether theapplication and the invention to which it relates seem to satisfy therequirements of the EPC (see B-XI, 1.1). Together, the European search
report or supplementary European search report and the search opinion
constitute the extended European search report (EESR).
The search division is responsible for drawing up the European search
report. It is also responsible for drafting international search reports andsearch reports on behalf of the industrial property offices of certain
contracting states (see B-X, 2 and B-II, 4.4 to 4.6).
This chapter contains the information which is necessary to enable thesearch division to correctly prepare the search report.
A search report must contain no matter, in particular no expressions of
opinion, reasoning, arguments or explanations, other than that required by
the form or referred to in B-III, 1.1 and 1.2 or B-X, 9.2.8. However, this does
not apply to the search opinion (see B-XI, 3).

Rule 62(1)Part B – Chapter X-2

Guidelines for Examination in the EPO

March 2023

2. Different types of search reports drawn up by the EPO
The EPO will draw up the following types of search reports:(i)European search reports (see B-II, 4.1);(ii)

supplementary
European
PCT applications (see B-II, 4.3);(iii)"search results under Rule 164(2)" (see C-III, 2.3 C-III, 3.1);(iv)

international search reports under the PCT (see B-II, 4.4);(v)

international-type search reports (see B-II, 4.5);(vi)search reports drawn up on behalf of national offices (see B-II, 4.6);
and

(vii)

search reports further to special work.

searchreports

concerning

Further, in the examination procedure, accounts containing the results ofadditional searches are drawn up when necessary and are not published(see B-II, 4.2). However, the documents cited therein may be used in theexamination procedure (see C-IV, 7.2 C-IV, 7.3).
This chapter sets out the requirements for search reports of types (i) to (v)only, although it is the intention that all search reports drawn up by the EPO
are as similar as possible.
3.

Form and language of the search report

3.1 Form
The standard search report is prepared by the search division and contains
a main page to be used for all searches for recording the important featuresof the search, such as:(i)the application number;(ii)

the classification of the application;(iii)

the fields searched;(iv)

the relevant documents revealed by the search; and(v)

the name of the member of the search division who executed thesearch,as well as supplemental sheet A and, in certain cases, also supplemental
sheet B.
Supplemental sheet A is to be used for indicating approval or modificationsof the title, the abstract as submitted by the applicant, and the figure to beMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter X-3

published with the abstract and for giving the translation of the title into thetwo other official languages (see B-X, 7).
Supplemental sheet B is to be completed where there are restrictions on
the search, i.e. when claims incurring fees are not searched due tonon-payment of claims fees (see B-III, 3.4), when unity of invention islacking (see B-VII), when a meaningful search is not possible such that the
search report is an incomplete one or is completely replaced by adeclaration according to Rule 63 (see B-VIII, 3) or when the search islimited according to Rule 62a (see B-VIII, 4).
Dates appearing in the report are expressed according to the WIPO
standard ST.2.
3.2 Language
The search report or the declaration accompanying or replacing it
according to Rule 63 are drawn up in the language of the proceedings.

Art. 14(3)Rule 61(5)3.3 Account of the search
For internal quality purposes, at the end of the search the search divisioncompletes an account summarising all the information necessary forauditors to understand what has been searched (see B-III, 3), as well as
where (see B-III, 2) and how (see B-IV, 2) the search was carried out. The
account of the search is not public.
3.4 Record of search strategy
All search reports established at the EPO will be automaticallysupplemented with an information sheet entitled "Information on Search
Strategy" that lists the databases searched, classification symbols used
and the keywords reflecting the subject of the search.
4. Identification of the patent application and type of search report
On the main page and supplemental sheets, the European patentapplication is identified by its application number.
The type of the search report is indicated in the report.
In the case of a joint publication of the application and the search report,
the main page of the report is marked A1 (WIPO Standard ST.16). If
publication of the application is due before the search, the main page ismarked A2 (WIPO Standard ST.16). The subsequent search report isestablished on a new main page which is marked A3 (WIPO
Standard ST.16). Where the search report is a supplementary European
search report in respect of an international application, this search report isestablished on a new main page marked A4 (WIPO Standard ST.16).
5. Classification of the patent application
The main page of the report gives the IPC classification symbol(s) for theEuropean patent application in accordance with B-V, 3.
If the application is to be published before the search report is prepared(A2 publication, see B-X, 4), the search division prepares supplemental

Art. 153(7)Part B – Chapter X-4

Guidelines for Examination in the EPO

March 2023

sheet A before the publication of the application. In such cases,
supplemental sheet A will contain all of the requisite information indicated in
B-X, 7 and also the IPC classification of the application (in cases where theapplication lacks unity, see B-V, 3.3).
When subsequently the search report is established (A3 publication,
see B-X, 4), the IPC classification of the application is repeated on theseparately published search report. Where the search division has modified
the IPC classification (i.e. the IPC classification as given in theA2 published application differs from that given on the later publishedA3 search report – see B-V, 3), it is this amended classification which willappear on the later published A3 search report (see B-V, 3.1).
6. Areas of technology searched
Although the EPC does not require the European search report to identify
the areas of technology searched, this information is included in the reportin the form of a list of IPC symbols up to the sub-class level.
Where the search report is entirely or partly based on a previous search
made for an application relating to a cognate subject, the sections of the
documentation consulted for this previous search are also identified in thereport as having been consulted for the application in question. This is doneby indicating the appropriate IPC symbols.
7. Title, abstract and figure(s) to be published with the abstract (asindicated on supplemental sheet A)
Supplemental sheet A is prepared by the search division before publicationof the application, regardless of whether this is with the search report(A1 publication) or without it (A2 publication). The information contained insupplemental sheet A is needed for the publication of the application.
On supplemental sheet A, the search division indicates:
Rule 47(1)Rule 66(i)

approval or amendment of the text of the abstract, the content of
which is communicated to the applicant according to Rule 66(see A-III, 10). Examination of the abstract does not go beyond
ensuring that it relates to the application concerned and that there isno conflict with the title of the invention or with the classification of
the application. Since the abstract needs to relate to the application
as filed, the search division will consider it and determine its definitive
content before carrying out the search, in order to avoid being
inadvertently influenced by the results of the search.
If the search report is published separately (A3 publication),
information about the abstract is not given in the communication. The
information sent to the applicant includes the title of the invention andthe figure, if any, of the drawings to be published with the abstract.
In exceptional cases, the search division may change the abstract
after the search has been carried out. However, if this is done after
the application has been published A2, supplemental sheet A is notreissued;March 2023

Guidelines for Examination in the EPO

Part B – Chapter X-5(ii)

approval or amendment of the title of the invention (see A-III, 7);

Rule 41(2)(b)(iii)

approval, modification or abolition of the selection of the figure whichis to accompany the abstract (see F-II, 2.3(vi) and 2.4); andRule 47(4)(iv)

the translation of the title of the European application into the twoother official languages.

Art. 14(7)(a)The European Patent Bulletin is published in all three official languages of
the EPO according to Art. 14(7)(a) and contains the entries made in theRegister of European Patents, which, according to Rule 143(1)(c), must
contain the title of the invention. Consequently, the title is required in all
three official languages of the EPC.
The above applies equally to applications published with the search report(A1 publication) and those published without it (A2 publication). In the caseof an A2 publication, supplemental sheet A further contains the IPC
classification of the application (see B-X, 5). In the case of an
A1 publication, the IPC classification appears only on the search report(Rule 61(6)).
Supplemental sheet A also indicates the nature of the publication to which it
relates (A1 or A2).
In the case of a supplementary European search report in respect of aninternational application, supplemental sheet A is marked A4. The searchdivision does not determine the title, abstract or figure to be published withthe abstract, since these have already been determined by the International
Searching Authority according to Rules 37.2, 38.2(a) and 8.2 PCT,
respectively.
8. Restriction of the subject of the search
In the following cases, the search report, the declaration replacing it, or theincomplete or partial search report will indicate whether the subject of thesearch was restricted and which claims have or have not been searched:(i)claims above the number of fifteen for which no additional fee has
been paid (see B-III, 3.4). The claims not searched are identified.
This only applies to European and supplementary European search
reports;

Rule 45(1) and(3)
Rule 162(1) and
(4)

(ii)

lack of unity of invention (see B-VII). The different inventions must be
mentioned by indicating their subject-matter and the claims relating
thereto (in part or in full; see Rule 44(2). For the partial search report(see B-VII, 1.1), an indication is made that it has been established forthe invention first mentioned in the claims. This applies to a priorilack of unity and to a posteriori lack of unity. For the search reportwhich will be drawn up for all those inventions in respect of which
search fees have been paid, the different inventions (andcorresponding claims in full or in part) which have been searched are
indicated in the search report;

Rule 64(1)Part B – Chapter X-6

Rule 63
Art. 52(2)Art. 53

Guidelines for Examination in the EPO(iii)

March 2023

claims in respect of which a meaningful search cannot or only an
incomplete search can be carried out (see B-VIII). A declaration ismade either:(a)that a meaningful search has not been possible on the basis of
all claims (this declaration replaces the search report); or(b)

that a meaningful search has not been possible for one ormore of the claims in part or in full. In this case, the claims
concerned are mentioned in the declaration accompanying theincomplete search report.

In both cases (a) and (b), the reasons for not carrying out or
restricting the search must be indicated (for example: subject-matter
not patentable; insufficiently clear claims). If necessary, full reasoning
is provided in the search opinion; see B-VIII, 3.3 for the content of the
EESR in these cases.
Rule 62a(iv)

claims in respect of which a search was not carried out due tonon-compliance with Rule 43(2) (see B-VIII, 4.2).

9.

Documents noted in the search

9.1

Identification of documents in the search report

9.1.1 Bibliographic elements
All documents cited in the search report must be identified unambiguously
by indicating the necessary bibliographic elements. All citations in the
searchreportnormallycomplywith
WIPO
Standard ST.14(Recommendation for the inclusion of references cited in patentdocuments), WIPO Standard ST.3 (Two-letter codes) and ST.16 (Standard
code for identification of different kinds of patent documents). This does not
exclude deviations in those special cases where strict adherence, whilst notnecessary for the clear and easy identification of a document, would requireconsiderable extra cost and effort.
9.1.2 "Corresponding documents"
The search division will often be confronted by the existence of"corresponding" documents (see B-VI, 6.2), that is to say documents whichhave the same or substantially the same technical content. These usually
fall into one of two groups, namely patent documents from a patent family
and abstracts:(i)Patent documents in the same patent family
These are patent documents from the same country or from different
countries, and which share at least one claimed priority.
If a cited patent document belongs to a patent family, the searchdivision needs not cite all the members of the family which are knownor accessible to it, since these are already mentioned in the annex tothe search report. However, it may mention one or more members inMarch 2023

Part B – Chapter X-7

Guidelines for Examination in the EPO

addition to the one cited (see B-IV, 3.1). Such documents are
identified by the Office of origin, type and number of document, andpreceded by the sign ampersand (&). There are a number of possible
reasons why the search division may wish to draw attention in the
search report to more than one document in the same patent family,
including the following:(a)

One document of the patent family is published before theearliest priority date of the application, but is published in a
non-EPO language, whereas a different member of the same
patent family is published in an EPO language (see Art. 14(1)),
but after the earliest priority date of the application.
ExampleA European application claims a priority of 3 September 1999.
In the search on this application, a relevant document –WO 99 12395 A – is found. This document is published inJapanese on 11 March 1999 – in time to constitute prior art
according to Art. 54(2). There also exists the European family
member published in an English translation according toArt. 153(4) on 1 March 2000 – too late to constitute prior art
according to Art. 54(2), but cited in the search report as an "&"document of the Japanese-language WO publication and sent
made available to the applicant (see B-X, 11.3). It will be usedin examination of the application to interpret the content of theJapanese language WO publication (see G-IV, 4). In the
search report, these documents would be cited as follows (forthe mentioning of the claims to which the cited documents
relate, here claims 1-10, see B-X, 9.3):
X

WO 99 12395 A (SEKI SHUNICHI; KIGUCHIHIROSHI (JP); SEIKO EPOSON CORP (JP))
11 March 1999 (1999-03-11)* figure 1 *& EP 0 982 974 (SEIKO EPSON CORP)
1 March 2000 (2000-03-01)* figure 1 ** claim 1 *

1-10

(b)

Different documents in the same patent family each containing
relevant technical subject-matter not present in the otherfamily members;(c)

Where a family member is cited in the application in a
non-EPO language and there exists another family member in
an EPO language, where these are both published before theearliest priority date.

Part B – Chapter X-8

Guidelines for Examination in the EPO

March 2023

ExampleY

WO9001867 A (WIDEGREN LARS (SE))
8 March 1990 (1990-03-08)* claim 1 *

1-10

D,Y

& SE461824 B (WIDEGREN LARS (SE))
2 April 1990 (1990-04-02)

1-10

The fact that the applicant has already cited the relevant
SE document in the application, which is a family member ofthe relevant WO document, means that the applicant has
already satisfied the requirement that the state of the art bementioned in the description (Rule 42(1)(b)). It is of value tothe examining division that this be made known in the search
report (see F-II, 4.3).
(ii)

Abstracts of documents (see B-VI, 6.2)
These are provided by one of a number of database providers (forexample Chemical Abstracts or Derwent) and may relate to manydifferent types of disclosure such as patent documents, journal
articles, PhD theses, books etc. The abstract provides a summary of
the most important aspects of the technical content of the original
document. Most abstracts cited are in the English language. In allcases where an abstract is cited in the search report, the searchdivision must input the original document to which the abstract
relates after the "&" sign.
ExampleXDATABASE WPI
Week 200961
Thomson Scientific, London, GB;
AN 2009-N01904& WO 2009/104990 A1 (VALEXPHARM CO LTD)
27 August 2009 (2009-08-27)* abstract *1-5

The search division may choose to cite the abstract (in which casethe original document must be cited as an "&" document) rather thancite the original document for one of a number of reasons. These
reasons include: the original document is not easily available to thesearch division (for example, retrieval of PhD theses); or the original
document is in a non-EPO language and no other corresponding
document exists (for example, a journal article in Russian). The
original document is sent made available to the applicant only if it is
so designated by the search division (see B-X, 12).
If the search division wishes to refer to a Japanese or Korean
published patent application (with kind code A), it cites the Japaneseor Korean publication in the search report. If there is an English
abstract available in the EPO databases (Patent Abstracts of Japan

March 2023

Guidelines for Examination in the EPO

or Patent Abstracts of Korea), both the Japanese or Korean
publication and the English abstract are sent made available to theapplicant.
9.1.3 Languages of the documents cited
Frequently, members of the same patent family are published in a numberof different languages. Consequently, the search division has a choice
regarding the language of the document which is cited in the search report.
If the relevant technical content does not differ between the various family
members and they are all published before the earliest priority date of theapplication, then all of the members of the family are of equal relevance tothe application. In such cases, the search division chooses the document tobe cited by virtue of its language of publication and according to thefollowing list, the most preferred language being given first:(1)

an official language of the EPO (i.e. English, French or German(Art. 14(1));(2)

an official language of a contracting state of the EPC according toArt. 14(4) (see A-VII, 1.1). Such documents can usually be read by acolleague if the member of the search division in question is notfamiliar with this language (see B-VI, 6.2);(3)

a language other than any of those of the contracting states of the
EPC.

In cases (2) and (3), the search division might consider citing an abstract inan official language of the EPO, instead of the original document.
If the original document is in a less "accessible" language (e.g. Chinese or
Russian), it is best to cite the abstract. In some cases it is possible to obtainan automated translation of certain patent documents into an official
language of the EPO. If the search division relies on this translation in the
search opinion, the translation will be sent made available to the applicant
by annexing a copy of the automated translation to the search opinion(see B-X, 12 and G-IV, 4).
Alternatively, if only a specific paragraph of the translation is needed, thesearch division may copy the translation of that paragraph into the search
opinion instead of annexing making available the entire translation. Note,however, that where a full translation was available during search, this fulltranslation will normally be sent made available to the applicant.
Non-official translations (i.e. translations having no legal value) of
publications in "less accessible" languages will not be cited in the search
report.
9.1.4 Supplementary European search report
In the case of a supplementary European search report according toArt. 153(7), it is also permissible under certain circumstances to have no
documents at all cited on the supplementary European search report(see B-IV, 2.5). In such cases, the expression "No further relevantPart B – Chapter X-9

Part B – Chapter X-10

Guidelines for Examination in the EPO

March 2023

documents disclosed" will appear in the search report. However, in suchcases, the search opinion (if applicable, see B-XI, 7) will give an opinion on
the patentability of the claimed invention over the state of the art cited in theInternational Search Report (B-XI, 1.1).
If the search division disagrees with the ISA opinion on the relevance of adocument cited in the international search report to the novelty and/or
inventive step of the claimed invention, the document in question isnormally not re-cited in the supplementary European search report with anew, corrected document category. The exception to this is where thesearch division wishes to combine a first document found only in the
supplementary European search as a "Y" category with a second document
already cited in the international search report: in this case the searchdivision may re-cite the second document from the international search
report in the supplementary European search report as a "Y" document in
combination with the first document. Where not all claims are affected bysuch re-qualification of the document category, this is clarified in the
supplementary European search report in order to ensure consistency with
the ESOP.
9.2 Categories of documents (X, Y, P, A, D, etc.)
All documents cited in the search report are identified by placing aparticular letter in the first column of the citation sheets. Where needed,
combinations of different categories are possible. The following letters areused.

Art. 52(1)Art. 54
Art. 56

Art. 52(1)Art. 56

9.2.1 Particularly relevant documents
Where a document cited in the European search report is particularly
relevant, it is indicated by the letter "X" or "Y". Category "X" is applicable
where a document is such that when taken alone, a claimed invention
cannot be considered novel or cannot be considered to involve an inventive
step.
Category "Y" is applicable where a document is such that a claimed
invention cannot be considered to involve an inventive step when the
document is combined with one or more other documents of the same
category, such combination being obvious to a person skilled in the art.
However, if a document (a so-called "primary document") explicitly refers toanother document as providing more detailed information on certain
features (see G-IV, 8) and the combination of these documents is
considered particularly relevant, the primary document is indicated by theletter "X", i.e. not "Y", and the document referred to (the "secondary"document) is indicated as "X" or "L" as appropriate.
9.2.2 Documents defining the state of the art and not prejudicing
novelty or inventive step
Where a document cited in the European search report represents state of
the art not prejudicial to the novelty or inventive step of the claimed
invention, it is indicated by the letter "A" (see, however, B-III, 1.1).

March 2023

Guidelines for Examination in the EPO

9.2.3 Documents which refer to a non-written disclosure
Where a document cited in the search report refers to a non-written
disclosure, the letter "O'' is entered (see B-VI, 2). Examples of suchdisclosures include conference proceedings. In cases where the oral
disclosure took place at an officially recognised exhibition (Art. 55(1)(b)),
see B-VI, 5.5. The document category "O" is always accompanied by asymbol indicating the relevance of the document according to B-X, 9.2.1 or
9.2.2, for example: "O, X"; "O, Y"; or "O, A".
9.2.4 Intermediate documents
Documents published on dates falling between the date of filing of theapplication being examined and the date of priority claimed, or the earliest
priority if there is more than one (see B-VI, 5.2 and B-XI, 4), are denoted by
the letter "P". The letter "P" is also given to a document published on thevery day of the earliest date of priority of the patent application underconsideration. The document category "P" is always accompanied by asymbol indicating the relevance of the document according to B-X, 9.2.1 or
9.2.2, for example: "P, X"; "P, Y"; or "P, A".

Part B – Chapter X-11

Rule 61(4)Rule 61(3)9.2.5 Documents relating to the theory or principle underlying theinvention
Where a document cited in the search report may be useful for a better
understanding of the principle or theory underlying the invention, or is cited
to show that the reasoning or the facts underlying the invention areincorrect, it is indicated by the letter "T".
In the latter case, the "T" document constitutes evidence within themeaning of Art. 117(1)(c), rather than prior art within the meaning ofArt. 54(2). Consequently, it is of no relevance whether a "T" document ispublished before or after the priority or filing date of the application being
searched.
For example, the applicant claims a group of chemical compounds and thedescription gives a generically defined process for their production. The
search division finds a document published after the priority date whichclearly shows that the generically defined process is not able to produce allof the compounds covered by the claims. The search division may use thisdocument to raise the objection that the claims are not supported by thedescription according to Art. 84 (see F-IV, 6.3), and therefore it may cite
this document as a "T" document.
9.2.6 Potentially conflicting patent documents
Any patent document bearing a filing or priority date earlier than the filingdate of the application searched (not the priority date – see B-VI, 3 and
B-XI, 4) but published on or after that date and the content of which would
constitute prior art relevant to novelty (Art. 54(1)) is indicated by the letter"E". Where the patent document and the application searched have thesame date (see G-IV, 5.4), the patent document is also identified by theletter "E". An exception is made for patent documents based on the claimed
priority under consideration; these documents are not cited.

Art. 54(3)Art. 139(2)Part B – Chapter X-12

Rule 42(1)(b)Art. 117(1)(c)Guidelines for Examination in the EPO

March 2023

9.2.7 Documents cited in the application
When the search report cites documents already mentioned in thedescription of the patent application for which the search is carried out,
these are denoted by the letter "D" (see B-IV, 1.3).
9.2.8 Documents cited for other reasons
Where in the search report any document is cited for reasons (in particular
as evidence – see B-VI, 5.6) other than those referred to in the foregoingparagraphs, for example:(a)a document which(see B-VI, 5.3);

may

throw

doubt

(b)

a document which establishes the publication date of another citation(see B-VI, 5.6);(c)a document relevant to the(see B-IV, 2.3(v) and G-IV, 5.4),

issue

on

of

a

priority

doubleclaim

patentingsuch document is indicated by the letter "L". Brief reasons for citing the
document are given. In the specific case where the search divisionconsiders no documentary evidence to be necessary for the claimed
subject-matter, as it is deemed to be notorious (see B-VIII, 2.2), thereasoning behind not citing any prior-art documents is given in the search
opinion.
The citation of "L" documents need not be linked to any of the claims.
However, where the evidence which they provide relates only to certain
claims (for example the "L" document cited in the search report may
invalidate the priority claim in respect of certain claims only), then thecitation of the document is linked to those claims, in the manner indicated in
B-X, 9.3.

Rule 61(2)9.3 Relationship between documents and claims
Each document cited in the search report is accompanied by an indicationof the claims to which it relates, unless the document is indicated bycategory letter "L" (see B-X, 9.2.8). One and the same document may be
indicated by different categories with respect to different claims, whereineach category is associated with particular claims.
ExampleX

WO9001867 A (WIDEGREN LARS (SE))
8 March 1990 (1990-03-08)

1Y* column 3, line 27 – line 43; figure 1 *2-5

A* figure 2 *6-10

March 2023

Guidelines for Examination in the EPO

Part B – Chapter X-13

The above example means that the cited document discloses
subject-matter which prejudices the novelty or inventive step of thesubject-matter of claim 1 and the inventive step of the subject-matter ofclaims 2 to 5, when combined with another document cited in the search
report, and that it represents non-prejudicial state of the art for the
subject-matter of claims 6 to 10. The passages or figures are notnecessarily relevant to the claims and the category indicated on the same
line.
Furthermore, in general, all claims are mentioned in the search report at
least once in relation to at least one document published before the earliest
priority date (unless the claim in question is excluded from the search by
virtue of a restriction of the subject of the search mentioned in B-X, 8)(see B-IV, 2.5).
9.4 Identification of relevant passages in prior-art documents
In the case of long documents, the search division indicates those parts(such as a claim, example, figure, table, or text passage on a particular
page, or a certain time or a time segment in a video and/or audio media
fragment) of a cited document which contain the technical subject-matter
closest to (or coinciding with) the searched invention. This is of particularimportance where the document is relied upon for objections of novelty or
inventive step.

Rule 61(2)Where it relies on a translation of a prior-art document, the search divisionindicates the relevant passages in the original document, wheneverpossible.
Furthermore, it makes sense to cite not only those parts of the document
describing the same or similar technical subject-matter, but also those partsor passages relating to the problem solved by that subject-matter. Thisapproach facilitates the assessment of inventive step in examination andalso gives the applicant a greater indication of how the document may be
used during prosecution.
10. Authentication and dates
The date on which the search report was drawn up is indicated in thereport. This date is that of the drafting of the report by the member of thesearch division who carried out the search.
The name of the member must appear on the search report.
11. Copies to be attached to made available with the search report
11.1 General remarks
The search report is sent to the applicant and transmitted to the examining
division. In both cases, the report must be accompanied by copies of all
documents cited (see also B-IV, 3.3), except those documents appearing inthe search report after the "&" symbol, which are not designated for copying
and communication to the applicant (see B-X, 11.3), are made available tothe applicant.

Rule 65

Part B – Chapter X-14

Guidelines for Examination in the EPO

March 2023

These cited documents are used to assess the patentability of the claimed
invention (see B-XI, 3) both in the search opinion (if applicable, see B-XI, 7)
and in the examination procedure.
11.2 Electronic version of document cited
In the case of a patent document, a complete copy is supplied even if thepatent is bulky made available.
In cases where part or all of the document is published only by electronicmeans (see Rule 68(2) and OJ EPO 2000, 367), an electronic version of atleast those parts of the document not available in paper form will be madeavailable to the applicant. This must be done in such a way that theapplicant is provided with the whole document either in a combination of
paper and electronic forms or in electronic form only.
11.3 Patent family members; the "&" sign
In the case of patent families, only a copy of the member of the family
actually cited is normally supplied made available. The other members are
mentioned in an annex systematically produced by the computer for
information only (see B-X, 9.1.2). However, in certain circumstances one ormore further patent documents in the same patent family may bementioned on the search report after the "&" sign (see B-X, 9.1.2(i)). In
these cases, the search division may designate that a patent document
appearing after the "&" sign is also copied and forwarded made available tothe applicant (this document will then also be included in the examination
file and may be referred to in the search opinion, if applicable).
11.4 Reviews or books
In the case of a review or a book, copies are made of the relevant pages ofthe publication concerned. The relevant bibliographic information has to beclear from the copy of the document.
11.5 Summaries, extracts or abstracts
Where a document cited is a summary, extract or abstract of anotherdocument, published separately, a copy of the summary, extract or abstract
is forwarded made available to the applicant along with the report.
If, however, the search division considers that the entire document isrequired, that document must be cited and a copy must be attached to thereport made available to the applicant (see B-X, 9.1.2(ii)). In the case of areference obtained by an online search for which neither the printed version
from the database (e.g. COMPDX, PAPERCHEM2 and NTIS) nor theoriginal article is available at the EPO at the time of drafting the search
report, the print-out is added to the file in lieu of the original. This may also
be done where the printed form of the abstract is available, but where there
is no difference in the relevant technical content between the abstract
derived from the database print-out and the printed version thereof.

March 2023

Guidelines for Examination in the EPO

Part B – Chapter X-15

11.6 Citation of video and/or audio media fragments available on theinternet
Video and/or audio media fragments available on the internet are converted
into a non-patent literature citation. The bibliographic data contain the URLof the original location on the internet.
If these cited disclosures cease to be available on the internet, a copy will
be made available to the applicant on request (see G-IV, 7.5.6).
12. Transmittal of the search report and search opinion
The EPO forwards the search report, and the search opinion (if applicable,
see B-XI, 7) to the applicant and makes available copies of all cited
documents to the applicant, see B-X, 11.1), including automatedtranslations annexed to the ESOP (when appropriate, see B-X, 9.1.3) andthose documents appearing after the "&" sign and designated to be copiedand sent made available to the applicant (see B-X, 11.3).

Rule 65
Rule 61(1)March 2023

Guidelines for Examination in the EPO

Part B – Chapter XI-1

Chapter XI – The search opinion
1. Search opinion is part of the EESR
The extended European search report (EESR) is made up of two
components:(i)the European search report or the supplementary European search
report (see B-X);(ii)

the search opinion.

Rule 62(1)1.1 The search opinion
For European applications filed as of 1 July 2005 and international
applications filed as of that date entering the European phase, European
search reports and supplementary European search reports will beaccompanied by an opinion on whether the application and the invention towhich it relates seem to meet the requirements of the EPC.
The above applies except in the cases referred to in B-XI, 7.
The findings of the search opinion must be consistent with the document
categories assigned in the search report and must also be consistent withany other issues raised in the search report, such as lack of unity of
invention or limitation of the search.
1.2 Position of the examining division
The examining division will consider both the objections raised in the
search opinion and the applicant's response thereto (see B-XI, 8) when
examining the application further. It may change the position adopted in the
search opinion after receiving arguments, amendments and othersubmissions from the applicant in response to the search opinion orsubsequently in examination proceedings. The position may also alter,
irrespective of the applicant's submissions, where the top-up search could
not be completed when the search was performed and Art. 54(3) state of
the art is found in a top-up search by the examining division or further stateof the art is brought to the attention of the examining division by theapplicant or by means of observations according to Art. 115 (see also
B-IV, 3.2, C-IV, 7.2 C-IV, 7.3 and 7.3 C-IV, 7.4).
The examining division may also reverse the findings of the search opinion
for reasons other than those above (see B-III, 1.1), however, such cases
are exceptional.
2. Basis of the search opinion
Where the application is a European application not derived from aninternational application, applicants cannot amend their application before
the search report has been communicated to them. Consequently, in thesecases, the search opinion will always relate to the application documents asoriginally filed. Furthermore, any reply filed by the applicant in response to
an invitation according to Rule 63(1) (see B-VIII, 3.4) will also be taken into
consideration when drawing up the search opinion.

Art. 123(1)Rule 137(1)Part B – Chapter XI-2

Rule 161(2)Rule 159(1)(b)Art. 19 PCT
Art. 34(2)(b) PCT

Guidelines for Examination in the EPO

March 2023

However, where the application under consideration derives from aninternational application and is subject to a supplementary European
search according to Art. 153(7) (see B-II, 4.3), applicants will have had theopportunity to amend their application both in the international phase andalso upon entry into the European phase. The search opinion will then be
based on the application documents constituting the latest filed requestfrom the applicant (this may involve the cancellation of amendments
previously filed and consequent reversion in part or in full to an earlier set
of application documents). The supplementary European search report isalso based on these application documents (see B-II, 4.3 and B-III, 3.3.2).
Where the search opinion and supplementary European search report are
based on such amendments but Rule 137(4) has not been satisfied(see H-III, 2.1), a communication according to Rule 137(4) (see B-VIII, 6
and H-III, 2.1.1) cannot be sent at this stage (before preparation of thesearch opinion) because the application is not yet under the responsibilityof the examining division (see C-II, 1). However, once the examining
division has assumed responsibility for the application, it may send such a
communication, provided that the amendments in question have not been
withdrawn or superseded (see H-III, 2.1.1) and only where the application isof one of the types mentioned in H-III, 2.1.4.
2.1 Applications containing missing parts of description and/or
drawings Application documents filed under Rule 56 EPC,
Rule 56a EPC or Rule 20 PCT, Rule 20.5 PCT or Rule 20.5bis PCT
If the Receiving Section decided not to redate the application under
Rule 56(2) or (5), but the search division is of the opinion that thesubsequently filed missing parts or correct application documents or parts
are not "completely contained" in the priority document and/or therequirements of Rule 56(3) or Rule 56a(4) are not fulfilled, it carries out the
search also taking into account prior art which might become relevant forassessing novelty and inventive step of the subject-matter claimed if theapplication were redated pursuant to Rule 56(2) or (5) or pursuant toRule 56a(3) or Rule 56a(6). The search opinion must include a warning thatthe application seems not to fulfil the requirements laid down in Rule 56 orRule 56a for maintaining the accorded date of filing, a statement of reasons
as to why this is the case and an indication that a formal decision as towhether to redate the application will be taken at a later stage by theexamining division. If appropriate, the search opinion may also includecomments about the effect of redating on the priority claim and/or the statusof the prior-art documents cited in the search report.
The procedure for a Euro-PCT application is similar to that set out above. If
when carrying out a supplementary European search the search divisionfinds that the subsequently filed missing parts under Rule 20.5(d) PCT or,
for international applications filed on or after 1 November 2022, correct
application documents or parts filed under Rule 20.5bis(d) PCT are not"completely contained" in the priority document, despite the fact that thereceiving Office did not redate the application under Rule 20.5(d) PCT, thesearch opinion must include a warning that the application seems not tocomply with the requirements of Rule 20.6 PCT (Rule 82ter.1(c) PCT), a
statement of reasons as to why this is the case and an indication that aMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter XI-3

formal decision as to whether to redate the application will be taken at alater stage by the examining division.
However, if the application has been redated by the Receiving Section orreceiving Office, but the search division has reasons to believe that theapplication meets the requirements of Rule 56(3) or Rule 56a(4) (orRule 20.6 PCT), it must indicate in the search opinion that decisions givenby the Receiving Section (or the receiving Office) may be reconsidered at alater stage by the examining division, except where the latter is bound by adecision of the board of appeal.
2.2 Applications containing claims filed after the accorded date offilingWhere the application documents contain one or more claims filed after theaccorded date of filing (Rules 40(1), 57(c) and 58), the search division isrequired to examine whether or not the one or more claims fulfil therequirements of Art. 123(2) in the light of the technical content of theapplication documents filed at the accorded date of filing. If the claims do
not meet the requirements of Art. 123(2), the search is carried out inaccordance with B-VIII, 6.
Where the search opinion and search report are based on late-filed claims
but Rule 137(4) has not been satisfied (see H-III, 2.1), a communicationaccording to Rule 137(4) (see H-III, 2.1.1) cannot be sent at this stage(before preparation of the search opinion) because the application is not yet
under the responsibility of the examining division (see C-II, 1). However,once the examining division has assumed responsibility for the application,
it may send such a communication, provided that the late-filed claims havenot been superseded (see H-III, 2.1.1) and only where the application is of
one of the types mentioned in H-III, 2.1.4.
3. Analysis of the application and content of the search opinion
Where it is held that the application and/or the invention to which it relates
does not satisfy the requirements of the EPC, then corresponding
objections are raised in the search opinion.
The search opinion covers, as a general rule, all objections to theapplication (but see B-XI, 3.4). These objections may relate to substantive
matters (e.g. the subject-matter of the application is not patentable) or toformal matters (e.g. failure to comply with one or more of the requirements
specified in Rules 41 to 43, 46 and 48 to 50, see Arts. 1 and 2 of thedecision of the President of the EPO dated 25 November 2022,
OJ EPO 2022, A113) or to both.
Where claims relating to a method of treatment of the human or animal
body or methods of diagnosis practiced on the human or animal body havebeen searched because their reformulation into an allowable format can beenvisaged at the time of the search (see B-VIII, 2), the search opinion will,
nonetheless, object to these claims as relating to subject-matter which is
excluded from patentability.

Art. 53(c)Part B – Chapter XI-4

Rule 62

Guidelines for Examination in the EPO

March 2023

3.1 The search division's dossier
The search division's first step is to study the description, drawings (if any)
and the claims of the application. In carrying out its task, the search division
will have access to the documents making up the European application anda complete history of the proceedings up to the start of search. However,the priority documents together with any translations may not yet beavailable at this stage (see B-XI, 4).
3.2

Reasoning

3.2.1 Reasoned objections
For each objection the search opinion indicates 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 also
gives 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 isrelevant, the particular passage relied upon is 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, 7), the applicant is informed of thissituation (see H-IV, 4.2(i) H-IV, 5.2(i)). Substantive matters are normally set
out first. The search opinion is drafted in such a manner as to facilitate later
examination of the amended application and, in particular, to avoid theneed for extensive rereading (see C-IV, 2).
In general, all claims are referred to, and all documents cited as "X" or "Y"against certain claims are referred to in the search opinion with acorresponding objection. In the case of dependent claims, while detailed
reasoning may not always be necessary in the search opinion, it needs atleast to be apparent what the reason for the objection is.
3.2.2 Positive statements
The search division also makes positive statements on patentability in the
search opinion, where applicable. The level of detail is such as to assist
applicants in their 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.
3.3 Comments and amendments in response to the search opinion
Subject to certain exceptions, the applicant is required to respond to thesearch opinion (see B-XI, 8).
3.4 Extent of first analysis for generally deficient applications
Where the application is found to be generally deficient, the search division
does not carry out a detailed analysis, but sends a search opinion to theapplicants informing them of its opinion, mentioning the major deficiencies
and saying that when the application enters the examination stage, further
examination will be deferred until these have been removed byamendment. There may be other cases in which, although a meaningful
analysis is possible, a fundamental objection arises, e.g. it is clear thatcertain claims lack novelty and that the statement of claim will have to beMarch 2023

Guidelines for Examination in the EPO

Part B – Chapter XI-5

drastically recast, or there are substantial amendments (international
applications entering the European phase – see B-XI, 2) which are notallowable either because they introduce new matter not present in theapplication as filed (Art. 123(2)), or they introduce other deficiencies(e.g. the amendment makes the claims unclear – Art. 84). In such cases, it
may be more appropriate to deal with this objection before making adetailed analysis; if, e.g. the claims need recasting, it may be pointless toraise objections to the clarity of some dependent claims or to a passage inthe description which may have to be amended or even deleted in
examination proceedings as a consequence. However, if there are othermajor objections these are to be dealt with. Generally, the search divisionseeks to make the maximum impact in the search opinion with the broad
aim of facilitating as efficient a decision making process as possible in later
examination proceedings. Concerning positive statements on patentability
in the search opinion, see B-XI, 3.2.2.
3.5 Contribution to the known art
When analysing the application, the search division concentrates on trying
to understand what technical contribution the invention as defined in theclaims adds to the known art. This should normally be sufficiently clear fromthe application as filed. If it is not, an objection is raised in the search
opinion (see F-II, 4.5); but the search division does not raise an objection ofthis kind unless it is convinced it is necessary, since to do so might result in
the applicant introducing additional subject-matter and thus offending
against Art. 123(2) (see H-IV, 2 and H-V).
3.6 EPC requirements
Although the search division must bear in mind all the requirements of the
EPC, the requirements which are most likely to require attention in the
majority of cases are, in particular: sufficiency of disclosure (see F-III);clarity and support in the description, especially of the independent claims(see F-IV, 4 and 6); novelty (see G-VI); and inventive step (see G-VII).
3.7 Search division's approach
The search division does not require or suggest amendments merely
because it thinks they will improve the wording of the description or claims.
A pedantic approach is undesirable; what is important is that the meaningof the description and claims is clear. However, any serious inconsistencies
between the claims and the description as filed are objected to(see F-IV, 4.3).
3.8 Making suggestions
It must be emphasised that it is not part of the duty of the search division torequire the applicant to amend the application in a particular way to meet
an objection, since the drafting of the application is the applicants'
responsibility and they are free to amend in any way they choose provided
that the amendment removes the deficiency and otherwise satisfies therequirements of the EPC. However, it may sometimes be useful if thesearch division suggests at least in general terms an acceptable form ofamendment, but if it does so it has to make it clear that the suggestion ismerely for the assistance of the applicant and that other forms ofamendment will be considered in examination proceedings. Although theRule 42(1)(c)Part B – Chapter XI-6

Guidelines for Examination in the EPO

March 2023

search division is not obliged to do so, it does indicate to the applicant
those amendments which would overcome the objections raised, if there isa clear way out.
When suggesting an acceptable form of amendment to the claims, thesearch division will also invite the applicant to adapt the description to bringit into line with the amended claims (see F-IV, 4.3).
Responsibility for determining the text of the application and in particular for
defining the subject-matter for which protection is sought remains with theapplicant (Art. 113(2) EPC).
3.9 Positive opinion
After the analysis referred to in B-XI, 3.1 to 3.8 has been made, the searchdivision may come to the conclusion that the application and the invention
to which it relates both satisfy the requirements of the EPC. In this case thesearch opinion contains a statement giving a general positive opinion on
the application documents. However, where it is not possible to conclude
the search for all potentially conflicting applications according to Art. 54(3)at the time of the search (see B-VI, 4.1), a top-up search will have to be
carried out in the examination procedure (see C-IV, 7.1) and subsequently
objections according to Art. 54(3) will be raised if appropriate.
Where minor amendments of the application documents would benecessary for the application to proceed to grant, a positive search opinion
can still be issued. Thereafter, subject to no prior art according to Art. 54(3)being found in any subsequent top-up search, the Rule 71(3)communication can then be issued in examination proceedings, with thoseminor amendments being proposed by the examining division according toC-V, 1.1.
In the above cases, the applicant is not required to respond to the search
opinion (see B-XI, 8).
At the search stage, it is not possible to officially designate an examining
division, since responsibility for the application lies with the Receiving
Section (Art. 16). However, the prospective members of the examining
division are already indicated. Thereafter, the search division will consult
the prospective members of the examining division to ensure that theyagree to the issuing of a positive search opinion.
4. Priority claim and the search opinion
When it is not possible to check the validity of the priority claim at the
search stage, because:(i)the search is carried out before the date on which the priority
document must be supplied (up to 16 months from the earliest
claimed priority – Rule 53(1))(ii)

a translation of the priority document is required but not available tothe search division at the time of drafting the search opinion(Rule 53(3), A-III, 6.8 and subsections and F-VI, 3.4)

March 2023

Guidelines for Examination in the EPO

then, for the purposes of drafting the search opinion, the priority claim willusually be assumed to be valid. Where at this stage the only objections
which can be raised against the application depend on the priority being
invalid, and the priority document (or its translation) is not available, thesearch division issues an entirely positive search opinion without
objections. In case (ii) above, a communication according to Rule 53(3)may be issued as specified in A-III, 6.8.1 and the validity of the priority
subsequently reviewed in examination proceedings.
However, if an assessment of the validity of the priority claim is necessary
as a result of intermediate prior art or potential state of the art according toArt. 54(3), and evidence is already available undermining the validity of thepriority claim, then this needs to be brought up in the search opinion. For
example, where the priority document is available at the time of drafting thesearch opinion and technical features of the claims are not present in thepriority document, this may even be possible where a translation isrequired, but the search division is familiar with the language of the priority
document (see also B-VI, 5.3).
4.1 Use of "P" and "E" documents in the search opinion
Where a document relating to potential prior art according to Art. 54(3) isreferred to in the search opinion, two situations may arise, depending onwhether or not the search division can conclusively establish that saidprior-art document has an earlier relevant date than that of the application.
If so, the search division raises an objection under Art. 54(3). If not, it
assumes that any priority which cannot be checked is valid. This leads totwo different scenarios:(i)

The prior-art document is comprised in the state of the art under
Art. 54(3). The search division consequently raises an objection
under Art. 54(3) in the search opinion and indicates which priorities
have been assumed to be valid;(ii)

The prior-art document does not belong to the state of the art under
Art. 54(3). Where the search opinion raises other objections, it willrefer to the document potentially falling under Art. 54(3) (and its
relevant passages) and will explain which priorities have been
assumed valid.

Where there are also "P" documents cited in the search report and these
are not potential Art. 54(3) documents (because they are not international
or European patent applications), these documents may constitute prior art
under Art. 54(2) and thus be relevant for the assessment of novelty andinventive step in so far as the priority of the application is not valid. Where
the priority of the application can be checked, the search division checks
the priority and makes objections in the search opinion based on the"P" documents if the priority is not valid. If the priority of the application
cannot be checked, it is assumed to be valid and no objection is raised in
the search opinion.
The issue of the validity of the priority claim(s) then needs to be reviewed in
examination (see F-VI, 2).

Part B – Chapter XI-7

Part B – Chapter XI-8

Guidelines for Examination in the EPO

March 2023

5. Unity in relation to the search opinion
Where the search division finds that the claimed invention does not meetthe requirement of unity of invention (Art. 82 and Rule 44(1) and (2)), thesearch division sends the applicant an invitation to pay additional searchfees and the partial search report relating to the invention or unitary groupof inventions first mentioned in the claims (see B-VII, 1.1, 1.2 and 1.3 andRule 64(1)). A provisional opinion on the patentability of the invention orunitary group of inventions first mentioned in the claims and the reasons for
non-unity findings is also sent to the applicant (see B-VII, 1.2).
After the time limit for payment of the additional search fees has expired,(Rule 64(1)) the applicant is sent a search report relating to the invention orunitary group of inventions first mentioned in the claims and all otherclaimed inventions or unitary groups of inventions in respect of which
additional search fees have been paid. This is accompanied by a search
opinion containing:(i)the reasoning behind the lack of unity(ii)

an opinion on the first invention or unitary group of inventions
mentioned in the claims(iii)

an opinion on all inventions or unitary groups of inventions in respectof which additional search fees have been paid

For supplementary European search reports on Euro-PCT applications
lacking unity of invention, the same procedure is followed (Rule 164(1) –see B-VII, 2.3).
6. The search opinion in cases of a limitation of the search
Any argumentation and objections presented in the search opinion must be
consistent with limitations of the search and the reasons therefor. Thisapplies to limitations for reasons of non-patentability (e.g. businessmethods – Art. 52(2)(c), see B-VIII, 1), for reasons of severe deficiencies
prejudicing a meaningful search (Rule 63, see B-VIII, 3) or due to acontravention of Rule 43(2) (Rule 62a, see B-VIII, 4). In these cases, thesearch opinion will also contain the information indicated in B-VIII, 3.3 and
4.3.
Where claims are deemed abandoned by reason of non-payment of aclaims fee (Rule 45 or Rule 162) and are consequently not searched, thesearch opinion will draw the applicant's attention to this fact.
7. No search opinion is issued
Where applicants have filed the request for examination according toRule 70(1) before the search report has been communicated to them andthey have waived the right to receive the communication under Rule 70(2)(see C-II, 1(ii)), the despatch of the search report to the applicant causes
the application to enter the competence of the examining division(Art. 18(1) and Rule 10(2)).

March 2023

Guidelines for Examination in the EPO

Part B – Chapter XI-9

In this case, where the application contains deficiencies, the examining
division will issue a communication according to Art. 94(3) in place of thesearch opinion. Failure to respond to this communication results in deemed
withdrawal of the application according to Art. 94(4) (see C-III, 4.2).
If the application is ready for grant, the procedure is as follows:(i)

Where the search for conflicting applications according to Art. 54(3)was complete:
The examining division will issue a communication according toRule 71(3).

(ii)

Where the search for conflicting applications according to Art. 54(3)was not complete:
The applicant is informed that the application is in order for grant, on
condition that no state of the art according to Art. 54(3) is found toexist when the top-up search is completed (see B-XI, 3.9). This ispurely for information and no response from the applicant is required.

8. Reaction to the extended European search report (EESR)
The applicant is required to respond to the search opinion within the time
limit for filing the request for examination provided for under Rule 70(1)(see C-II, 1 and A-VI, 2.1).

Rule 70a(1)If, however, applicants filed the request for examination before the search
report and the search opinion were transmitted to them (according toArt. 94(1) this also requires payment of the examination fee), a
communication according to Rule 70(2) is sent requesting to indicate
whether they wish to proceed further with the application within a period tobe specified (see C-II, 1(i)). In these cases, the applicant must respond to
the search opinion within the time period set under Rule 70(2). This
generally applies to Euro-PCT applications subject to preparation of the
supplementary European search report and search opinion (see B-II, 4.3
and E-IX, 2.5.3), except where the applicant has waived the communicationaccording to Rule 70(2) (see C-II, 1(ii)), in which case the procedure under
B-XI, 7, applies.

Rule 70a(2)Failure to respond to the search opinion within the applicable period resultsin the application being deemed to be withdrawn, and the applicant is
notified accordingly. In response to this communication of a loss of rights,
the applicant can request further processing in accordance with Art. 121
and Rule 135.

Rule 70a(3)Rule 112(1)There is, however, no requirement for the applicant to respond to theEuropean or supplementary European search report where this was drawn
up before 1 April 2010, where it is not accompanied by a search opinion(see B-XI, 1.1 for applications for which a search opinion is prepared) or
where the search opinion was positive (see B-XI, 3.9). However, in thesecases, the applicant may still respond to the search report according toRule 137(2) if so wished. In such cases, the applicant is encouraged toPart B – Chapter XI-10

Guidelines for Examination in the EPO

March 2023

respond to the search report before the application enters the examination
stage (see C-II, 1).
The applicant responds to the search opinion by filing amended application
documents according to Rule 137(2) (see C-II, 3.1) (where amended claims
are filed before publication, see A-VI, 1.3, paragraph 3) and/or by filingobservations on the objections raised in the search opinion, either in
addition to, or in place of, such amendments. Such amendments and/or
observations will only be examined by the examining division if theapplication enters the examination stage.
Procedural requests, such as a request for a consultation or for oralproceedings, or a mere disapproval do not constitute a valid reply wherethese are made without comment on any of the objections raised in the
search opinion. In cases where such a request or disapproval is the only
response to the search opinion on expiry of the applicable time limit, theapplication is deemed to be withdrawn according to Rule 70a(3). The same
applies for a request which, at this stage, cannot be considered(e.g. request according to the state of the file).
For applications for which a search opinion was prepared but where thesearch report was drawn up before 1 April 2010, if the applicant does not
reply to the search opinion and the application enters the examination
stage (see C-II, 1 and 1.1), a communication referring to the search opinion
and setting a time limit for reply will be issued by the examining division as
the first communication under Art. 94(3) (see C-III, 4). Failure to respond to
this communication in due time will result in the application being deemed
withdrawn according to Art. 94(4).
Where the applicant files amendments in response to the search opinion, if
Rule 137(4) is not complied with (see H-III, 2.1), a communicationaccording to Rule 137(4) (see H-III, 2.1.1) may be sent in respect of theseamendments only after the application has passed to the responsibility ofthe examining division (see C-II, 1) and only where the application is of oneof the types mentioned in H-III, 2.1.4.

Art. 124
Rule 141

9. Art. 124 and the utilisation scheme
When drafting the search opinion, the search division takes into
consideration any prior art document provided by the applicant under
Rule 141(1) or by the office of first filing under Rule 141(2)(see OJ EPO 2011, 62,
OJ EPO 2012, 540,
OJ EPO 2013, 216,
OJ EPO 2015, A2,
OJ EPO 2016, A18,
OJ EPO 2019, A55,
OJ EPO 2019, A38, and OJ EPO 2019, A39), if available at the time of
preparing the opinion (see A-III, 6.12 and B-IV, 1.3). Requests for
information on prior art under Rule 141(3) may be made only when theapplication has entered the examination phase (see C-III, 5).

Part C
Guidelines for Procedural
Aspects of Substantive
Examination

March 2023

Part C – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – Introduction

I-1

1.

General remark

I-1

2.

The work of examiners

I-1

3.

Overview

I-1

4.

Purpose of examination

I-1

Chapter II – Formal requirements to be met
before the division starts substantive
examination

II-1

1.

Request for examination

II-1

1.1

Confirmation of the intention to proceed further withthe application

II-1

1.2

Euro-PCT applications

II-2

1.3

Invention to be examined

II-2

2.

Allocation of the application

II-2

3.

Response filed before first communication in
examination

II-3

3.1

Response to the search opinion

II-3

3.2

Response to PCT actions prepared by the EPO

II-4

3.3

The invitation under Rule 70a(1)

II-4

4.

Designation fee(s), extension and validation fees

II-5

5.

Copy of the search results on the priority or
priorities

II-5

Chapter III – The first stage of examination

III-1

1.

Missing parts or elements

III-1

1.1
1.1.1

European applications
Missing drawings or parts of the description filed
under Rule 56Application documents filed under
Rule 56 or Rule 56a
Claims filed after accordance of a date of filing

III-1

1.1.2

III-1
III-3

Part C – Contents b

1.2

1.3

2.

Guidelines for Examination in the EPO

March 2023

Euro-PCT applications – Missing elements and parts
filed under Rule 20.5 and 20.6 PCT

III-3

Euro-PCT applications – Erroneous elements filed
under Rule 20.5bis PCT

III-3

Amendments made by applicants of their own
volition

III-5

2.1

Amendments made in response to the search opinion III-6

2.2
2.3

Amendments made in response to the WO-ISA,
IPER or supplementary international search report
Searches under Rule 164(2)

III-6
III-6

3.

Unity of invention

III-9

3.1

Searches under Rule 164(2)

III-9

3.2

3.1 Relation to unity in search; limitation to searchedinvention
3.1.1 No additional search fees paid
3.1.2 Additional search fees paid
3.1.3 Invitation to pay additional search fees
combined with invitation to restrict the scope of thesearch

3.2.1
3.2.2
3.2.3

3.3

III-13
III-13
III-14

III-14

3.2 Excision of other inventions; filing divisional
applications

III-153.4

3.3 Refund of additional search fees

III-15

3.5

3.4 Changing from one searched invention to another III-16

4.

First communication

III-16

4.1
4.1.1
4.1.2

Reasoning
Reasoned objections
Positive statements/suggestions

III-17
III-17
III-17

4.2

Invitation to file comments and amendments

III-17

5.

Summons to oral proceedings as the first action
in examination

III-17

6.

Requesting information on prior art (not confined
to priority)
III-197.

Evaluation of prior art documents cited in search
report and late priority claim
III-19

March 2023

Part C – Contents c

Guidelines for Examination in the EPO

Chapter IV – Examination of replies andfurther stages of examination

IV-1

1.

General procedure

IV-1

2.

Extent of examination of replies

IV-1

3.

Further action upon examination of replies

IV-2

3.1

Further action where a request for a translation of thepriority application was sent earlier in examination
proceedings
IV-3

4.

Later stages of examination

IV-3

5.

Examination of amendments

IV-3

6.

Admissibility of amendments made by theapplicant

IV-3

7.

Search-related issues in examination

IV-3

7.1

Search for conflicting European applications

IV-3

7.2

National prior rights

IV-4

7.3

7.2 Additional searches during examination

IV-4

7.4

7.3 Search at the examination stage

IV-5

7.5

7.4 Citing documents not mentioned in the search
reportIV-6

New submissions in reply to summons

IV-6

8.

Chapter V – The final stage of examination

V-1

1.

Communication under Rule 71(3)

V-1

1.1

Text for approval

V-1

1.2

Grant and publishing fee

V-3

1.3

Translations of the claims

V-3

1.4

Claims fees due in response to Rule 71(3)communication

V-3

Other information in the communication under
Rule 71(3)V-3Approval of the proposed text – grant of a patent

V-4

1.5

2.

Part C – Contents d

Guidelines for Examination in the EPO

March 2023

3.

No reply in time – application deemed withdrawn

V-5

4.

Request for amendments or corrections in reply
to the Rule 71(3) communication

V-6

4.1

No payment of fees or filing of translations necessary

V-6

4.2

Crediting of fees paid voluntarily

V-7

4.3

Amendments or corrections should be reasoned

V-7

4.4

Admissibility of amendments

V-7

4.5

Adaptation of the description

V-8

4.6

Amendments/corrections admitted and allowable –second Rule 71(3) communication sent
Second Rule 71(3) communication reversing theamendments proposed by the examining division in
first Rule 71(3) communication
Second Rule 71(3) communication based on higherranking request initially rejected in first Rule 71(3)communication
Examining division proposes amendments in second
Rule 71(3) communication

4.6.1

4.6.2

4.6.3

4.7

V-8

V-8

V-8
V-9

4.7.3

Amendments not admitted and/or not allowable,
examination resumed
Communications/oral proceedings after resumption
Higher-ranking request not admissible and/or notallowable
Agreement reached on a text - second Rule 71(3)communication
No agreement reached on a text - refusal

4.8
4.8.1
4.8.2

Fees to be paid within the second Rule 71(3) period
Claims fees
Fee for grant and publishing

V-11
V-11
V-11

4.9

Reply explicitly disapproving the proposed text
without indicating an alternative text

V-12

Amendments/corrections filed in second Rule 71(3)periodV-125.

Further requests for amendment after approval

V-13

6.

The examining division resumes examination
after approval of the text

V-13

When does the examining division resume
examination after approval?

V-13

A further communication under Rule 71(3)

V-14

4.7.1
4.7.1.1
4.7.2

4.10

6.1

6.2

V-9
V-9
V-10
V-11
V-11

March 2023

Part C – Contents e

Guidelines for Examination in the EPO

6.3

Crediting of fees under Rule 71a(5)

V-14

7.

Correction of errors in the decision to grant

V-14

8.

Further processing

V-14

9.

Refund of the fee for grant and publishing

V-14

10.

Publication of the patent specification

V-14

11.

Withdrawal before publication of the patent
specification

V-15

12.

Certificate

V-15

13.

European Patent Bulletin

V-15

14.

RefusalV-16

15.

Decision according to the state of the file

V-17

15.1

The request for a decision according to the state of
the file

V-17

15.2

Decision by means of a standard form

V-17

15.3

Issuing a self-contained decision

V-18

15.4

Issuing a further communication (no refusal)

V-18

Annex

Standard marks for indicating amendments orcorrections by the divisions

V-19

Chapter VI – Time limits and acceleration of
examination

VI-1

1.

Time limits for response to communications fromthe examiner
VI-1

1.1

General considerations

VI-1

1.2

Special circumstances

VI-1

2.

Influencing the speed of examination
proceedings – PACE

VI-1

Further ways to accelerate examination

VI-2

3.

Chapter VII – Other procedures in examination VII-1
1.

General remark

VII-1

Part C – Contents f

Guidelines for Examination in the EPO

March 2023

2.

Consultations

VII-1

2.1

General

VII-1

2.2

Persons participating in the consultation

VII-2

2.3

Informal nature of consultations

VII-3

2.4

Minutes of a consultation

VII-3

2.5

Minutes as the first communication in examination

VII-5

3.

Use of email

VII-5

3.1

Initiation of exchanges by email

VII-6

3.2

Confidentiality

VII-6

3.3

Inclusion in the file of any email exchange

VII-6

4.

Taking of evidence

VII-7

4.1

General remark

VII-7

4.2

Producing evidence

VII-7

4.3

Written evidence

VII-7

5.

Oral proceedings

VII-7

6.

Examination of observations by third parties

VII-8

Chapter VIII – Work within the examining
division

VIII-1

1.

General remarks

VIII-1

2.

Recommendation to grant

VIII-2

3.

Recommendation to refuse

VIII-2

4.

Tasks of the other members of the examining
division

VIII-25.

Further communication with the applicant

VIII-3

6.

Decision

VIII-3

7.

Enlargement of the examining division;
consultation of a legally qualified examiner

VIII-3

March 2023

Part C – Contents g

Guidelines for Examination in the EPO

Chapter IX – Special applications

IX-1

1.

Divisional applications (see also A-IV, 1)

IX-1

1.1

General remarks

IX-1

1.2

Voluntary and mandatory division

IX-1

1.3

Abandonment of subject-matter

IX-1

1.4

Examination of a divisional application

IX-2

1.5

Description and drawings

IX-3

1.6

ClaimsIX-3

2.

Applications resulting from a decision under
Art. 61

IX-3

2.1

General remarks

IX-3

2.2

Original application no longer pending

IX-4

2.3

Partial entitlement

IX-4

2.4

Entitlement for certain designated states only

IX-4

3.

Applications where a reservation has beenentered in accordance with Art. 167(2)(a)EPC 1973

IX-4

International applications (Euro-PCT
applications)

IX-4

4.

March 2023

Guidelines for Examination in the EPO

Part C – Chapter I-1

Chapter I – Introduction
1. General remark
In this Part C of the Guidelines the term "examiner" is used to mean theexaminer entrusted with substantive examination forming part of theexamining division, which is responsible for the final decision.

Art. 18

Chapters C-II to IX set out the general procedure for examination, together
with guidance on particular matters where necessary. They do not provide
detailed instructions on matters of internal administration.
2. The work of examiners
Under the "Early Certainty from Search" (ECfS) scheme, completingexamination files already started is prioritised over beginning work on new
files, and grants are expedited once a positive search opinion has been
issued.
The attitude of examiners is very important. They should always try to beconstructive and helpful. While it would of course be quite wrong for
examiners to overlook any major deficiency in an application, they shouldhave a sense of proportion and not pursue unimportant objections. They
should bear in mind that, subject to the requirements of the EPC, thedrafting of the description and claims of a European application is the
responsibility of applicants or their authorised representatives.
The attention of examiners is particularly directed to the instruction inparagraph 4 of the General Part of the Guidelines. This applies not only in
relation to other departments of the EPO. It also means, for example, thatthe other members of an examining division should not attempt to repeat
the work of the primary examiner (see C-VIII, 4).
3. Overview
Part C of the Guidelines deals with matters of examination procedure(see Chapters C-II to IX).
Matters of substantive law, i.e. the requirements which a European
application must fulfil, are dealt with in Parts F, G and H.
4. Purpose of examination
The purpose of preparing the search opinion (see B-XI) and of thesubsequent examination proceedings is to ensure that the application andthe invention to which it relates meet the requirements set out in therelevant articles of the EPC and the rules of its Implementing Regulations.
The prime task of the examining division is to deal with the substantive
requirements; the criteria by which an examiner judges whether they havebeen met are dealt with in detail, in so far as appears necessary, in Parts F,
G and H. As for the formal requirements (see Part A), these are initially the
responsibility of the Receiving Section.
The examination is to be carried out in accordance with Art. 94(3) and (4),Art. 97, Rule 71(1) to 71(7), Rule 71a(1) to 71a(6) and Rule 72. The
examiner's first step is to study the description, drawings (if any) and theArt. 94(1)Art. 164(1)Rule 62(1)Rule 70(2)Part C – Chapter I-2

Guidelines for Examination in the EPO

March 2023

claims of the application. However, as examiners will normally already havedone this when they carried out the search (see B-XI, 3), they should
concentrate on any amendments and/or comments filed by the applicant inresponse to the search opinion (see B-XI, 8). If amendments were madeand these have not been identified and/or their basis in the application as
filed not indicated by the applicant (see H-III, 2.1) and the application is oneof those mentioned in H-III, 2.1.4, the examining division may send a
communication according to Rule 137(4) requesting the applicant toprovide this information (see H-III, 2.1.1).

March 2023

Guidelines for Examination in the EPO

Part C – Chapter II-1

Chapter II – Formal requirements to be met
before the division starts substantive
examination
1. Request for examination
In order that examination of a European application can begin, applicants
are required to file a request for examination, which, however, is notdeemed to be filed until after the examination fee has been paid. The
request for examination may be filed from the date on which the application
is filed up to the end of six months after the date on which the European
Patent Bulletin mentions the publication of the European search report (seeA-VI, 2.1). If the request for examination is not filed within this period, theapplication is deemed to be withdrawn. However, in such a case, applicants
have the possibility of filing a request for further processing pursuant toArt. 121. The amount of the further processing fee to be paid depends on
how many and which of the actions required for a valid request for
examination have been omitted (see E-VIII, 2). According to Rule 70(1), therequest for examination may not be withdrawn.

Art. 94
Art. 121
Rule 70
Art. 122(4)Rule 136(3)Subject to certain exceptions, applicants must also respond to the search
opinion within the above-mentioned period for filing the request for
examination (see B-XI, 9 and C-II, 3.1), unless the EPO invites them toconfirm an early request for examination according to Rule 70(2), in whichcase they must respond to the search opinion within the period provided forunder Rule 70(2) (see C-II, 1.1).

Rule 70a(1) and (3)Responsibility for examining the application passes from the Receiving
Section to the examining division at the time when a request for
examination is filed. This is subject to two exceptions:

Rule 10
Rule 70(2)(i)

if applicants have filed a request for examination before theEuropean search report has been sent to them, then the examining
division is responsible only from the time when the confirmation of
the request is received by the EPO following an invitation under
Rule 70(2);(ii)

if applicants have filed a request for examination before theEuropean search report has been sent to them and have also waived
the right to receive an invitation to confirm under Rule 70(2)(see C-VI, 3), then the examining division is responsible only fromthe time when the search report is sent to the applicants.

1.1 Confirmation of the intention to proceed further with theapplication
If applicants have filed a request for examination before the search reporthas been transmitted to them, the EPO will invite them to confirm, within asix-month period, that they desire to proceed further with their application.
This six-month period is calculated from the mention of the publication of
the European search report in the European Patent Bulletin. Where
applicants also have to respond to the search opinion, their response isrequired within this same period (see B-XI, 8 and C-II, 3.1). In these cases,

Rule 70(2) and (3)Art. 121
Art. 11 RFees
Rule 70a(2) and (3)Part C – Chapter II-2

Guidelines for Examination in the EPO

March 2023

the applicant's response to the search opinion is interpreted as theconfirmation required by Rule 70(2), even where not explicitly expressed assuch. If applicants fail to confirm their desire to proceed further with theapplication in due time in reply to this invitation, the application will bedeemed to be withdrawn. In this case, however, the means of redressprovided for in Art. 121 (further processing of the application) will apply (seeA-VI, 2.3 and E-VIII, 2). For the conditions applicable to a refund of theexamination fee if the application is withdrawn, refused or deemed to bewithdrawn, see A-VI, 2.5.

Art. 153(4), (6) and(7)
Art. 150(2)Rule 159(1)(f)Art. 121
Rule 136(3)Rule 160(1)1.2 Euro-PCT applications
If the application has proceeded via the PCT (Euro-PCT application), thesix-month period under Rule 70(1) begins with the publication of the PCT
search report or the declaration under Art. 17(2)(a) PCT. However, as islaid down in Art. 150(2), the time limit for requesting examination in aEuro-PCT case does not expire before the time prescribed in Art. 22 PCT
and Art. 39 PCT (i.e. not before the time limit of Rule 159(1)(f)). The time
limit will not be affected by whether a supplementary European searchpursuant to Art. 153(7) needs to be made or whether the international
application is again published by the EPO pursuant to Art. 153(4).
If the request for examination of a Euro-PCT application has not been filed
within the time limit, the application is deemed withdrawn under
Rule 160(1). In such a case, however, applicants have the possibility offiling a request for further processing pursuant to Art. 121 (see E-VIII, 2).
Where the Euro-PCT application is subject to the preparation of a
supplementary European search report (see B-II, 4.3), once this search
report has been despatched to the applicants, a communication according
to Rule 70(2) is sent to them, inviting them to confirm the request for
examination within six months of the notification of that communication(see E-IX, 2.5.3).

Rule 36

1.3 Invention to be examined
It is to be noted that where the search report and the search opinion havebeen drawn up to cover several inventions lacking unity, the applicant isfree to select the invention to be examined in the application underconsideration (see also C-III, 3.2 C-III, 3.1).
The others will be subject to objections of lack of unity and may be divided
out according to Rule 36 (see C-III, 3.3 C-III, 3.2 and C-IX, 1.3).
2. Allocation of the application
The dossier will normally be allocated to an examining division responsible
for the examination of applications in the technical field in which theparticular application has been classified by the search division or ISA
which carried out the search. It is usual for the primary examiner entrustedwith the examination of the application in accordance with Art. 18(2) to be
the same person who prepared the (supplementary) European search
report and search opinion or, where the EPO was the ISA or the authority
specified for the supplementary international search, the international

March 2023

Guidelines for Examination in the EPO

Part C – Chapter II-3

search report and WO-ISA or the supplementary international search
report.
There may, however, be instances where it is appropriate to allocate theapplication to an examining division comprising examiners who are notnormally responsible for the indicated part of the IPC and who might nothave been involved at the search stage. There are a number of possible
reasons for this: e.g. to make it possible, where appropriate, that an original
and a divisional application are dealt with by the same examining division(this could sometimes be more efficient even when the two applications areclassified in different technical fields); or if the classification of the publishedapplication does not correspond to the subject-matter of the application in
the form in which it reaches the substantive examiner (e.g. because theapplication has been amended after receipt of the search report and search
opinion).
3.

Response filed before first communication in examination

3.1 Response to the search opinion
Following receipt of the search report and search opinion, and prior to thefirst communication from the examining division, the applicant must (subject
to certain exceptions) respond to the search opinion, by filing amendments
to the description, claims or drawings and/or filing observations on theobjections raised in the search opinion (see B-XI, 8 for details, in particular
as to the exceptions where no reply is required). In order to avoid delays,
care should be taken to comply with the requirements of Rule 137(4) whenfiling such amendments (see OJ EPO 2009, 533, point 7). Anyamendments filed at this stage are made by applicants of their own volitionin accordance with Rule 137(2) (for more details, see C-III, 2.1).
The applicant's response to the search opinion required by Rule 70a (orfiled voluntarily in response to search opinions not requiring a response)
will be taken into account by the examining division when drafting the firstcommunication. Failure to respond to this communication in due time will
result in the application being deemed withdrawn according to Art. 94(4),although this loss of rights is subject to further processing (see E-VIII, 2).
With regard to what constitutes a valid response, see B-XI, 8.
If applicants accept a search division's suggestion regarding an acceptableform of amendment of the claims to overcome the objections raised (seeB-XI, 3.8), applicants are requested to adapt the description to the claims
on file and delete or amend any statements or expressions which throw
doubt on the scope of protection (see F-IV, 4.3).
In exceptional cases the examining division may decide to issue summons
to oral proceedings as the first action in examination proceedings(see C-III, 5). In such a case, the applicant's response to the search opinion
will be taken into account when drafting the annex to the summons.
If the European search report or supplementary European search report
was accompanied by a search opinion but was drawn up before
1 April 2010 (such that a reply to the search opinion was not mandatory –Rule 137(2)Rule 70(2)Rule 70aArt. 94(3) and (4)Rule 62(1)Part C – Chapter II-4

Guidelines for Examination in the EPO

March 2023

see B-XI, 8) and the applicant did not reply to it, a communication referringto the search opinion and setting a time limit for reply would have been
issued as the first communication under Art. 94(3). Failure to respond to
this communication in due time would have resulted in the application being
deemed withdrawn according to Art. 94(4).
The procedure explained in the above paragraphs also applies toEuro-PCT applications for which the EPO prepares a supplementary
European search report and a search opinion (see B-II, 4.3 and B-XI, 1.1).

Rule 161(1)3.2 Response to PCT actions prepared by the EPO
For Euro-PCT applications where the EPO acted as the International
Searching Authority (ISA) and, where a demand under Art. 31 PCT was
filed, also as the International Preliminary Examining Authority, or as theauthority specified for supplementary international search, the applicant will
already have responded to a negative WO-ISA, IPER or supplementaryinternational search report prepared by the EPO (unless the communication
under Rule 161 was issued before 1 April 2010 – see E-IX, 3.3.3).
This response may comprise amendments and/or observations filed in
response to the communication under Rule 161(1) (or possibly filed earlier– see E-IX, 3.3.1).
If applicants accept the search division's suggestion regarding an
acceptable form of amendment of the claims to overcome the objections
raised (see PCT-EPO Guidelines, B-XI, 3.3), applicants are requested toadapt the description to the claims on file and delete or amend any
statements or expressions which throw doubt on the scope of protection(see F-IV, 4.3).
Any amendments filed at this stage are made by applicants of their own
volition in accordance with Rule 137(2) (for more details see C-III, 2.2). This
response will be taken into account by the examining division when drafting
the first communication according to Art. 94(3) or, in exceptional cases, theannex to the summons to oral proceedings (C-III, 5). For more details,
see E-IX, 4.1, E-IX, 4.2 and E-IX, 4.3.
3.3 The invitation under Rule 70a(1)Under Rule 70a(1) the applicant is invited to respond to the ESOP within
the period referred to in Rule 70(1) or, where applicable, within the period
referred to in Rule 70(2) (see B-XI, 8) unless the applicant has waived thecommunication under Rule 70(2) (see C-VI, 3).
Where the request for examination (including payment of the examinationfee) is filed after the search report has been transmitted to the applicant,the applicant must respond to the ESOP within the period referred to inRule 70(1). In such cases the invitation under Rule 70a(1) is sent in a
combined communication with the communication according to Rule 69(1)(see A-VI, 2.1). This communication under Rule 70a(1) and Rule 69(1) isissued shortly after the mention of the publication of the European search
report in the European Patent Bulletin (in general, this is approximately one
week later).

March 2023

Guidelines for Examination in the EPO

Part C – Chapter II-5

Where the request for examination (including payment of the examinationfee) is filed before the search report has been transmitted to the applicant,the applicant must respond to the ESOP within the period referred to inRule 70(2). In such cases the invitation under Rule 70a(1) is sent in a
combined communication with the communication according to Rule 70(2).
With regard to how the period referred to in Rule 70(2) is calculated forthese cases, see C-II, 1.1 for Euro-direct applications and C-II, 1.2 forEuro-PCT applications for which a supplementary European search reportis prepared.
4. Designation fee(s), extension and validation fees
Under Rule 39(1), the designation fee(s) can be validly paid up to the sametime limit as the examination fee and therefore will be generally paid at thesame time as the examination fee. The examination whether and to what
extent a designation fee has been validly paid has been entrusted to theformalities officer by virtue of Rule 11(3); see the decision of the President
of
the
EPO
dated
12 December 2013,
OJ EPO 2014, A6;
OJ EPO 2015, A104. The same applies to the examination as to whether
extension or validation fees have been paid; see A-III, 12.2.
5. Copy of the search results on the priority or priorities
Where the EPO notes, at the time the examining division assumes
responsibility, that a copy of the results of a search on the claimed priority
or priorities as referred to in Rule 141(1) has not been filed by the applicant
and is not deemed to be duly filed under Rule 141(2) (see A-III, 6.12), it
invites applicants to file, within a period of two months, the copy or astatement that the results of the search referred to in Rule 141(1) are notavailable to them. This requirement applies to European or Euro-PCT
applications filed on or after 1 January 2011 (see OJ EPO 2009, 585). This
communication is also sent in cases where the priority in question has
since been withdrawn or has lapsed.
Failure to reply to this invitation in due time results in the application being
deemed to be withdrawn. Further processing is available for this loss ofrights (see E-VIII, 2).
The search results provided by the applicant will be included in the file andwill be open to file inspection (see A-XI).

Rule 39(1)Art. 90(3)Rule 70b(1)Rule 70b(2)March 2023

Guidelines for Examination in the EPO

Part C – Chapter III-1

Chapter III – The first stage of examination
1.

Missing parts or elements

1.1

European applications

1.1.1 Missing drawings or parts of the description filed under
Rule 56Application documents filed under Rule 56 or Rule 56a
Where the applicant has supplied missing drawings or parts of thedescription after accordance of a filing date (see A-II, 5) under Rule 56, andthe Receiving Section has determined that the missing drawings or parts ofthe description are "completely contained" in the claimed priority
application, the application is not redated to the date on which the missing
drawings or parts of the description were supplied. The same practiceapplies to correct application documents or parts filed after accordance of afiling date (see A-II, 6) under Rule 56a.
The examining division may review the findings of the Receiving Section on
the applicability of Rule 56(3) and Rule 56a unless there has been adecision of the board of appeal.
Normally the review of the findings will have been initiated at the search
stage (see B-III, 3.3.1 and B-XI, 2.1). However, it can still be done for the
first time during substantive examination.
For the criteria for determining whether the "completely contained"
requirement of Rule 56(3) and Rule 56a is satisfied, see A-II, 5.4.2 and
A-II, 6.4.1 respectively.
Should the examining division come to the conclusion that the missing
elements are not "completely contained" in the priority document, contrary
to the original finding of the Receiving Section, it will raise an objection
under Rule 56 or Rule 56a in the first communication under Art. 94(3),presenting detailed arguments as to why the "completely contained"
requirement is not satisfied. The communication will contain a warning of
the possible consequence of redating because of non-compliance with therequirements of Rule 56(3) or Rule 56a(4) as applicable and, if redating
would result in the filing date being more than 12 months after the claimed
priority date, also a warning of the resultant loss of priority right.
Note that if the review was initiated at the search stage and an objection
under Rule 56 or Rule 56a was raised in the EESR, the applicant may
already have submitted a response to the search opinion (required byRule 70a or filed voluntarily in response to a search opinion not requiring a
response). The examining division will treat this response in the samemanner as the reply to the first communication.
If the applicant replies by withdrawing the missing parts or the subsequently
filed correct application documents or parts, the examination will be
continued as normal with the original filing date, but without the missing
parts or without the correct application documents or parts (see also
F-III, 10).

Rule 56
Rule 56a

Part C – Chapter III-2

Guidelines for Examination in the EPO

March 2023

If the applicant replies by arguing convincingly that the "completely
contained" requirement is satisfied, the examination will be continued as
normal with the missing parts or the subsequently filed correct application
documents or parts, as the case may be, and with the original filing date.
If applicants maintain the missing parts or the subsequently filed correct
application documents or parts and their arguments are not convincing, theexamining division will issue a further communication under Art. 94(3)informing them of the impending redating of the application to the date on
which the missing parts or the correct application documents or parts werereceived at the EPO. This communication gives the applicant a further
opportunity to withdraw the subsequently filed missing parts or the correct
application documents or parts within a time limit of two months(Rule 132(2)) so as to restore the original filing date or to request an
appealable decision on the redating. It indicates the reasons why the"completely contained" requirement is not met, and also deals with any
counter-arguments presented by the applicant.
If applicants do not reply in due time to the communication informing themof the impending redating of the application, the application is deemed to
be withdrawn (Art. 94(4)).
If the applicant opts to withdraw the subsequently filed missing parts or thecorrect application documents or parts, the redating of the application will
be deemed not to have been made (see also B-XI, 2.1). The examiner willcontinue the examination procedure as normal with the original filing date,
but without the missing parts and/or without the correct application
documents or parts (see also F-III, 10).
Rule 111

If applicants do not agree with the finding, they may (within two months(Rule 132(2)) request an appealable decision on the matter. In this case,the examining division will issue a reasoned decision, informing theapplicants of the new date of filing, of the reasons for the redating and(where appropriate) of the detrimental effect of the redating on the claimed
priority right. This decision will allow a separate appeal according toArt. 106(2).
Once the period for filing an appeal has expired without an appeal being
filed, the examiner will resume examination on the basis of the new date offiling. Note that the EESR may contain documents which could become
relevant as a result of the redating.
If applicants file an appeal in due time, competence for the file passes tothe board of appeal for reviewing the decision on the accordance of a filingdate. While the case is pending before the board of appeal, the examining
division will not continue substantive examination. Once the board of
appeal has issued a decision, the file will be returned to the examining
division, which will be bound on this point by the decision of the board(Art. 111(2)). It will then resume examination on the basis of the filing datefixed by the board.

March 2023

Guidelines for Examination in the EPO

1.1.2 Claims filed after accordance of a date of filingIf the claims were not present at the date of filing the application, theexamining division must check whether the subsequently filed claims
satisfy the requirements of Art. 123(2). If the basis for these subsequently
filed claims in the application as filed has not been indicated by theapplicant (see H-III, 2.1) and the application is one of those mentioned in
H-III, 2.1.4, the examining division may send a communication according toRule 137(4) requesting the applicant to provide this information(see H-III, 2.1.1).
1.2 Euro-PCT applications – Missing elements and parts filed under
Rule 20.5 and 20.6 PCT
In the case of PCT applications, missing drawings and parts of thedescription, but also missing claims, may have been filed at the receiving
Office for international applications under Rule 20.5 and 20.6 PCT, and its
finding can be reviewed in accordance with Rule 82ter.1 PCT. The
examining division will review this finding in all cases in which the filing date
was retained on the basis of the "completely contained" requirement using
the same criteria as applied when assessing compliance with Rule 56(3)EPC (see A-II, 5.4.2).
If either the EPO acted as the ISA or a supplementary EESR has been
issued, this review will normally have been initiated at the search stage(see B-III, 3.3.1 and B-XI, 2.1). However, it can still be done for the firsttime during substantive examination. The procedure is the same as for
European applications (see C-III, 1.1.1).
1.3 Euro-PCT applications – Erroneous elements filed under
Rule 20.5bis PCTRule 20.5bis PCT allows applicants to correct an erroneously filed element(description or claims) or part of the description, claims or drawings(including all drawings) contained in an international application.
The EPO has notified WIPO that this provision is partially incompatible withthe current legal framework under the EPC and will therefore not be fully
applicable in proceedings before the EPO as receiving anddesignated/elected Office (Rule 20.8(a-bis) and (b-bis) PCT; see the
Official Notice published by the International Bureau in the PCT Gazette of
30 January 2020).
Incorporations by reference by the receiving Office under Rule 20.5bis(d)PCT, i.e. without changing the filing date, are effective before the EPO as
designated or elected Office for international applications filed on or after
1 November 2022. For details, see the notice from the EPO dated 23 June
2022, OJ EPO 2022, A71. On entry into the European phase, the normal
procedures apply on the basis that the correct and erroneously filed parts
are thus part of the application as filed (see E-IX, 2).
For international applications filed between 1 July 2020 and 31 October
2022, the provisions under Rule 20.5bis(d) PCT remain not fully applicable(see the notice from the EPO dated 14 June, OJ EPO 2020, A81). The
EPO adopts the following practice in respect of those applications:

Part C – Chapter III-3

Art. 123(2)Part C – Chapter III-4

Guidelines for Examination in the EPO

March 2023

Corrections corrections accepted by the receiving Office during theinternational phase under either Rule 20.5bis(b) PCT or Rule 20.5bis(c)PCT – i.e. where it accorded the date of receipt of the correct application
documents or a later date as the filing date of the application or shifted theinitial filing date of the application to the date of receipt of the correct
application documents – will be effective in proceedings before the EPO as
designated/elected Office (see OJ EPO 2020, A81).
However, if the receiving Office considered the correct application
documents to be incorporated by reference under Rule 20.5bis(d) PCT, i.e.
without changing the filing date, this incorporation will not be effective inproceedings before the EPO as designated/elected Office. In such cases,
the EPO will, on entry into the European phase, consider the filing date of
the application to be the date on which the correct application documents
were received (Rule 20.8(c) PCT and Rule 20.5bis(b) or (c) PCT).
Furthermore, it will consider the application as filed to include the correct
application documents but not the erroneously filed ones. The EPO will
inform the applicant about this in a communication under Rules 20.8(c)PCT and 82ter.1(c) and (d) PCT, setting a time limit of two months for reply.
(i)If, within the time limit, the applicant requests that the correct
application documents be disregarded under Rule 82ter.1(d) PCT,the EPO will issue an interlocutory decision changing the filing dateto the date initially accorded by the receiving Office and confirmingthat the procedure before the EPO as designated/elected Office will
be based on the application documents as filed on that date.

(ii)

If the applicant files observations with regard to the communication
under Rule 20.8(c) PCT and Rule 82ter.1(c) and (d) PCT within thetime limit set, the EPO will also issue an interlocutory decision taking
into account the observations made.

(iii)

If the applicant does not file observations and does not request thatthe correct application documents be disregarded, an interlocutory
decision will not be issued. In this case, the EPO will stick to its
findings.

Applicants interested in avoiding this procedure, namely the issuance of thecommunication under Rules 20.8(c) PCT and 82ter.1(c) and (d) PCT andthe setting of a time limit of two months for reply, may make use of theabridged procedure. According to it, they may, within the 31-month time
limit under Rule 159(1) EPC, at the time of validly requesting earlyprocessing or, at the latest, before the communication under Rules 20.8(c)and 82ter.1(c) and (d) PCT is issued:(a)request that the EPO disregard the correct application documents. In
that case, no such communication but an interlocutory decision will
be issued. This decision will confirm that the application maintains
the initial filing date and that the correct application documents will be
disregarded in the procedure before the EPO as designated/elected
Office.

March 2023(b)

Guidelines for Examination in the EPO

Part C – Chapter III-5

confirm that they wish to pursue the application with the filing datecorresponding to the date of receipt of the correct application
documents and with those correct application documents. In thatcase, no invitation and no interlocutory decision will be issued. The
EPO will correct the filing date and consider the erroneously filed
application documents not to have been filed. The applicant will be
informed accordingly.

Once the procedure described above has been finalised, a communication
under Rules 161 and 162 EPC will be issued, and the applicant may amend
the application within the scope of the disclosure on the filing date as
determined in this procedure.
As a consequence of the procedure described above, it may happen thatthe application documents as originally filed differ from those that formed
the basis for the search in the international phase. If the EPO acted as
International Searching Authority, the examiner has to check carefully
whether the invention forming the basis for the European phase wascovered by a search in the international phase. If this is not the case, aninvitation under Rule 164(2) EPC will be issued (see C-III, 3.1 C-III, 2.3).
If the subject-matter forming the basis for European phase processing iscovered by the international search report, then examination continues asusual but taking into account that the potential change of the filing datemight have an impact on intermediary documents cited in the international
search report and that the priority might not be valid anymore.
For more details and examples, see OJ EPO 2020, A81.
2. Amendments made by applicants of their own volition
Any amendment, including any made by applicants of their own volition,must satisfy the following conditions:(i)

it must not add subject-matter to the content of the application as
filed (see H-IV, 2.3 and H-V, 1 to 7);(ii)

it must not itself cause the application as amended to be
objectionable under the EPC, e.g. the amendment must not introduce
a lack of clarity into the claims (Art. 84); and(iii)

it must comply with Rule 137(5) (see H-IV, 4,1 H-II, 6).

If the amendments do not meet these conditions, the applicants should be
told that the amended application cannot be allowed. Apart from theamendments referred to in C-III, 2.1 and 2.2, which are admissible under
Rule 137(2), the applicants may correct obvious errors at any time(see H-VI, 2.2.1).
If amendments are made and these are not identified and/or their basis in
the application as filed not indicated by the applicants (see H-III, 2.1) andthe application is one of those mentioned in H-III, 2.1.4, the examining

Art. 123(2)Part C – Chapter III-6

Guidelines for Examination in the EPO

March 2023

division may send a communication according to Rule 137(4) requesting
the applicants to provide this information (see H-III, 2.1.1).
If applicants accept a search division's suggestion regarding an acceptableform of amendment of the claims to overcome the objections raised (seeB-XI, 3.8), applicants are requested to adapt the description to the claims
on file and delete or amend any statements or expressions which throw
doubt on the scope of protection (see F-IV, 4.3).

Rule 137(2) and (3)Rule 137(2)Rule 164(2)2.1 Amendments made in response to the search opinion
The amendments referred to in C-II, 3.1 are made by the applicant "of his
own volition" (applicants are required to respond to the search opinion in
the EESR, but do not necessarily have to respond by filing amendments;
they can also respond by filing observations on the search opinion –see B-XI, 8). This means that the applicant is not restricted toamendment(s) necessary to remedy a defect in the application. Further
amendments may be made only with the consent of the examining division(see H-II, 2.3).
2.2 Amendments made in response to the WO-ISA, IPER or
supplementary international search report
For Euro-PCT applications where the EPO acted as International Searching
Authority (ISA) or as the authority specified for supplementary international
search (SISA), any amendments which applicants file in response to thecommunication under Rule 161(1) (see E-IX, 3.3.4) are made by applicantsof their own volition. This means that they may be submitted to overcome
objections raised in the WO-ISA, IPER or supplementary international
search report or they may be suggested for some other reason, e.g. toremedy some lack of clarity which the applicants themselves have noted in
the original documents. In order to avoid delays, care should be taken tocomply with the requirements of Rule 137(4) when filing such amendments.
Furthermore, the applicant may also file observations in place of or in
addition to amendments.
2.3
Searches under Rule 164(2)For Euro-PCT applications where the EPO acted as ISA or as SISA, theexamining division under Rule 164(2) assesses the application documents
upon expiry of the six-month time limit set in the communication under
Rule 161 and Rule 162. For any claimed invention or group of inventions
within the meaning of Art. 82 which was not searched by the EPO in its
capacity as ISA or SISA, the examining division issues an invitation to pay
search fees.
The application documents as amended may contain claims directed to anon-searched invention in situations other than where the application
documents which are to serve as the basis for examination do not meet therequirement of unity of invention.
For instance, the amended application may contain just one invention, but it
may be an invention that was claimed but not searched by the EPO as(S)ISA in the international phase. In this case, there is no non-unity
objection for this set of claims and the reasoning in the invitation needs onlyMarch 2023

Guidelines for Examination in the EPO

to refer to the non-unity objection in the WO-ISA and to the fact that no
additional fee was paid for this invention during the international phase.
It may well be that an invention in the application documents was not evenclaimed in the application documents that served as the basis for theprocedure in the international phase and has been imported from thedescription (see F-V, 7.1(iv)). In such cases an invitation to pay search fees
under Rule 164(2) for any non-searched invention is to be issued by theexamining division, irrespective of whether lack of unity persists in theclaims. The invitation under Rule 164(2) must state that this is a newinvention not searched in the international phase, and the reasons therefor.
If other inventions are also present in the claims of such a case, which werealso not searched (but were claimed in the PCT phase), in the same
invitation the applicant must also be invited to pay further search fees inrespect of those inventions. In assessing whether or not subject-matterpresent in amended claims constitutes a previously unclaimed invention
imported from the description (for which an invitation under Rule 164(2) is
to be sent), the principles laid down for assessing compliance with Rule137(5) (see in H-II, 6.2) are to be taken into account.
The application documents forming the basis for the European phase may
also cover inventions or groups of inventions which were not searched inthe (supplementary) international search report as a result of the procedure
for erroneously filed elements under Rule 20.5bis PCT (see C-III, 1.3). In
this case too, an invitation to pay search fees under Rule 164(2) EPC is tobe issued by the examining division.
The invitation under Rule 164(2) must be sent before any communicationaccording to Art. 94(3). It is to be noted that for Rule 164(2) to apply, theclaims must be sufficiently clear to allow the identification of anon-searched invention by which the procedure under Rule 164(2) istriggered. If the claims are so unclear that a non-searched invention cannot
be identified, the first action must be issuance of a communication under
Art. 94(3) setting out the objections under Art. 84. Should it turn out later inthe procedure that amended claims are indeed directed to a non-searchedinvention, the applicant must file a divisional application for any such
subject-matter. Recourse to Rule 164(2) is not provided for if, as a result offurther amendments or clarification, (further) non-searched inventions are
identified, since the procedure under Rule 164(2) applies to the application
documents as submitted by the applicant as the basis for examination.
If auxiliary requests are submitted before a search under Rule 164(2) is
performed, only the main request is taken into account for the purpose of
the search (notwithstanding the exceptions relating to Rule 62a or 63 cases
where main and auxiliary requests are both considered at the search stage,see B-VIII, 3.2.2 and 4.2.2).
If any search fee(s) is/are paid in time, the results of the search(es) arecommunicated to the applicant as an annex to a communication under
Art. 94(3) and Rule 71(1) and (2) or under Rule 71(3), as set out in
Rule 164(2)(b). This annex is entitled "Search result according toRule 164(2)".

Part C – Chapter III-7

Part C – Chapter III-8

Guidelines for Examination in the EPO

March 2023

If the applicant pays the search fees in due time under Rule 164(2) and at
the same time files a new set of claims, the search will be carried out andthe written opinion issued for the claims on file upon expiry of the period
under Rule 161 for which the invitation to pay has been sent and therequested fees have been paid. The amended documents may, however,informally be taken into account by the examiner carrying out the search,where this appears appropriate. Applicants will have the opportunity to fileamendments of their own volition after having received the results of thesearch under Rule 164(2) annexed to the communication according to Art.
94(3) (see H-II, 2.3).
If search fees are not paid in due time under Rule 164(2), a communication
under Art. 94(3) and Rule 71(1) and (2) or under Rule 71(3) will be issued
and the examining division will require deletion from the claims of any nonsearched subject-matter that was not searched either because a search fee
under Rule 164(2) was not paid (see H-II, 7) or for a different reason (seeH-II, 6). Before the patent is granted, this subject-matter should be either
deleted from the description and drawings or indicated as not forming partof the claimed invention (see F-IV, 4.3(iii)).
A communication under Rule 164(2)(b) deals with all objections for each of
the inventions searched in accordance with Rule 164(2). For claims relating
to inventions already searched by the EPO in the international phase whichhave been amended but still lack unity, it is sufficient to argue in detail whylack of unity is still present. The communication, where appropriate, further
requests the applicant to limit the application to a single searched invention(see Rule 164(2)(c)).
It follows from Rule 164(2)(b) and (c) that the special procedure under
Rule 164(2) as set out in H-II, 2.3 ends upon expiry of the time limit set in
the communication issued under paragraph (b). This means that theapplicants' right to make amendments of their own volition ends upon
expiry of the time limit set in that communication.
Furthermore, the special procedure as set out in F-V, 7.1(iv), which
exempts amendments from the requirements of Rule 137(5), first sentence,
ends upon expiry of the time limit under Rule 161(1). Such amendments
will result in an invitation under Rule 164(2)(a) and allow the applicant toobtain a search of unsearched subject matter referred to in Rule 137(5).
However, any amendments submitted after expiry of the time limit under
Rule 161(1) are subject to the requirements of Rule 137(5), first sentence(see H-II, 6.2).
The EPO's obligations under Rule 164(2) are fulfilled and the applicant's
rights under this rule are exhausted once a single communication under
Rule 164(2) has been sent. It follows that in cases of cascading non-unityno (further) invitation under Rule 164(2) is sent. The same applies if claims
are added or existing claims amended so that they relate to non-searchedinventions in the course of the examination procedure.

March 2023

Guidelines for Examination in the EPO

Part C – Chapter III-9

Exceptional cases may arise where the following sequence of events has
occurred in the international phase:(i)

The EPO acted as ISA in the international phase.

(ii)

The EPO acting as ISA invited the applicant to pay one or more
additional international search fees in accordance with
Art. 17(3)(a) PCT and Rule 40 PCT (due to a lack of unity according
to Rule 13 PCT).

(iii)

The applicant paid at least one such additional search fee.

(iv)

The additional search(es) led to a further objection as to a lack ofunity a posteriori (a cascading lack of unity), resulting in one of theinventions identified in the invitation under Art. 17(3)(a) PCT andRule 40 PCT being further sub-divided and resulting in
sub-inventions not originally identified in that invitation.

(v)

The EPO did not search all such sub-inventions.

In the above case, the EPO will invite the applicant to pay search fees forany such unsearched sub-inventions in the claims which are to form thebasis for examination on expiry of the six-month period under Rule 161(1),in accordance with Rule 164(2).
Where the EPO was the SISA in accordance with Rule 45bis.9 PCT, it may
make a finding of a lack of unity of the international application according toRule 45bis.6(a) PCT. However, in the procedure before the SISA, theapplicant cannot pay additional supplementary international search fees,
and the supplementary international search report will be directed only tothe invention or unitary group of inventions first mentioned in the claims(Rule 45bis.6(a) PCT). Where such an application contains unsearchedinventions in the claims which are to form the basis for examination on
expiry of the six-month period under Rule 161(1), a communicationaccording to Rule 164(2) is issued, allowing the applicant to have theseinventions searched upon payment of search fees and to pursue one ofthem in the examination proceedings.
Rule 164(2)(b) provides for a right to amend the application in response to
the results of any search under Rule 164(2). This means that applicants
may make amendments of their own volition once in response to thecommunication under Art. 94(3) to which the search results under
Rule 164(2) are annexed (H-II, 2.3).
3.

Unity of invention

3.1 Searches under Rule 164(2)For Euro-PCT applications where the EPO acted as ISA or as SISA, theexamining division under Rule 164(2) assesses the application documents
upon expiry of the six-month time limit set in the communication under
Rule 161 and Rule 162. For any claimed invention or group of inventions
within the meaning of Art. 82 which was not searched by the EPO in its

Rule 164(2)Part C – Chapter III-10

Guidelines for Examination in the EPO

March 2023

capacity as ISA or SISA, the examining division issues an invitation to pay
search fees.
The application documents as amended may contain claims directed to anon-searched invention in situations other than where the application
documents which are to serve as the basis for examination do not meet therequirement of unity of invention.
For instance, the amended application may contain just one invention, but it
may be an invention that was claimed but not searched by the EPO as(S)ISA in the international phase. In this case, there is no non-unity
objection for this set of claims and the reasoning in the invitation needs only
to refer to the non-unity objection in the WO-ISA and to the fact that no
additional fee was paid for this invention during the international phase.
It may well be that an invention in the application documents was not evenclaimed in the application documents that served as the basis for theprocedure in the international phase and has been imported from thedescription (see F-V, 7.1(iv)). In such cases an invitation to pay search fees
under Rule 164(2) for any non-searched invention is to be issued by theexamining division, irrespective of whether lack of unity persists in theclaims. The invitation under Rule 164(2) must state that this is a newinvention not searched in the international phase, and the reasons therefor.
If there are other inventions present in the claims of such a case that werealso not searched (but were claimed in the PCT phase), the applicant mustalso be invited by way of the same invitation to pay further search fees inrespect of those inventions. In assessing whether or not subject-matterpresent in amended claims constitutes a previously unclaimed invention
imported from the description (for which an invitation under Rule 164(2) is
to be sent), the principles laid down for assessing compliance with Rule137(5) (see in H-IV, 4.1.2) are to be taken into account.
The application documents forming the basis for the European phase may
also cover inventions or groups of inventions which were not searched inthe (supplementary) international search report as a result of the procedure
for erroneously filed elements under Rule 20.5bis PCT (see C-III, 1.3). In
this case too, an invitation to pay search fees under Rule 164(2) EPC is tobe issued by the examining division.
The invitation under Rule 164(2) must be sent before any communicationaccording to Art. 94(3). It is to be noted that for Rule 164(2) to apply, theclaims must be sufficiently clear to allow the identification of anon-searched invention by which the procedure under Rule 164(2) istriggered. If the claims are so unclear that a non-searched invention cannot
be identified, the first action must be issuance of a communication under
Art. 94(3) setting out the objections under Art. 84. Should it turn out later inthe procedure that amended claims are indeed directed to a non-searchedinvention, the applicant must file a divisional application for any such
subject-matter. Recourse to Rule 164(2) is not provided for if, as a result offurther amendments or clarification, (further) non-searched inventions are
identified, since the procedure under Rule 164(2) applies to the application
documents as submitted by the applicant as the basis for examination.

March 2023

Guidelines for Examination in the EPO

If auxiliary requests are submitted before a search under Rule 164(2) is
performed, only the main request is taken into account for the purpose of
the search (notwithstanding the exceptions relating to Rule 62a or Rule 63
cases where main and auxiliary requests are both considered at the search
stage, see B-VIII, 3.2.2 and B-VIII, 4.2.2).
If any search fee(s) is/are paid in time, the results of the search(es) arecommunicated to the applicant as an annex to a communication under
Art. 94(3) and Rule 71(1) and Rule 71(2) or under Rule 71(3), as set out in
Rule 164(2)(b). This annex is entitled "Search result according toRule 164(2)".
If the applicant pays the search fees in due time under Rule 164(2) and at
the same time files a new set of claims, the search will be carried out andthe written opinion issued for the claims on file upon expiry of the period
under Rule 161 for which the invitation to pay has been sent and therequested fees have been paid. The amended documents may, however,informally be taken into account by the examiner carrying out the search,where this appears appropriate. Applicants will have the opportunity to fileamendments of their own volition after having received the results of thesearch under Rule 164(2) annexed to the communication according to Art.
94(3) (see H-II, 2.3).
If search fees are not paid in due time under Rule 164(2), a communication
under Art. 94(3) and Rule 71(1) and Rule 71(2) or under Rule 71(3) will be
issued and the examining division will require deletion from the claims ofany non-searched subject-matter that was not searched either because asearch fee under Rule 164(2) was not paid (see H-II, 6) or for a different
reason (see H-IV, 4). Before the patent is granted, this subject-mattershould be either deleted from the description and drawings or indicated as
not forming part of the claimed invention (see F-IV, 4.3(iii)).
A communication under Rule 164(2)(b) deals with all objections for each of
the inventions searched in accordance with Rule 164(2). For claims relating
to inventions already searched by the EPO in the international phase whichhave been amended but still lack unity, it is sufficient to argue in detail whylack of unity is still present. The communication, where appropriate, further
requests the applicant to limit the application to a single searched invention(see Rule 164(2)(c)).
It follows from Rule 164(2)(b) and Rule 164(2)(c) that the special procedure
under Rule 164(2) as set out in H-II, 2.3 ends upon expiry of the time limit
set in the communication issued under paragraph Rule 164(2)(b). Thismeans that the applicants' right to make amendments of their own volitionends upon expiry of the time limit set in that communication.
Furthermore, the special procedure as set out in F-V, 7.1(iv), which
exempts amendments from the requirements of Rule 137(5), first sentence,
ends upon expiry of the time limit under Rule 161(1). Such amendments
will result in an invitation under Rule 164(2)(a) and allow the applicant toobtain a search of unsearched subject-matter referred to in Rule 137(5).
However, any amendments submitted after expiry of the time limit underPart C – Chapter III-11

Part C – Chapter III-12

Guidelines for Examination in the EPO

March 2023

Rule 161(1) are subject to the requirements of Rule 137(5), first sentence(see H-IV, 4.1.2).
The EPO's obligations under Rule 164(2) are fulfilled and the applicant's
rights under this rule are exhausted once a single communication under
Rule 164(2) has been sent. It follows that in cases of cascading non-unityno (further) invitation under Rule 164(2) is sent. The same applies if claims
are added or existing claims amended so that they relate to non-searchedinventions in the course of the examination procedure.
Exceptional cases may arise where the following sequence of events has
occurred in the international phase:(i)

The EPO acted as ISA in the international phase.

(ii)

The EPO acting as ISA invited the applicant to pay one or more
additional international search fees in accordance with
Art. 17(3)(a) PCT and Rule 40 PCT (due to a lack of unity according
to Rule 13 PCT).

(iii)

The applicant paid at least one such additional search fee.

(iv)

The additional search(es) led to a further objection as to a lack ofunity a posteriori (a cascading lack of unity), resulting in one of theinventions identified in the invitation under Art. 17(3)(a) PCT andRule 40 PCT being further subdivided and resulting in sub-inventions
not originally identified in that invitation.

(v)

The EPO did not search all such sub-inventions.

In the above case, the EPO will invite the applicant to pay search fees forany such unsearched sub-inventions in the claims which are to form thebasis for examination on expiry of the six-month period under Rule 161(1),in accordance with Rule 164(2).
Where the EPO was the SISA in accordance with Rule 45bis.9 PCT, it may
make a finding of a lack of unity of the international application according toRule 45bis.6(a) PCT. However, in the procedure before the SISA, theapplicant cannot pay additional supplementary international search fees,
and the supplementary international search report will be directed only tothe invention or unitary group of inventions first mentioned in the claims(Rule 45bis.6(a) PCT). Where such an application contains unsearchedinventions in the claims which are to form the basis for examination on
expiry of the six-month period under Rule 161(1), a communicationaccording to Rule 164(2) is issued, allowing the applicant to have theseinventions searched upon payment of search fees and to pursue one ofthem in the examination proceedings.
Rule 164(2)(b) provides for a right to amend the application in response to
the results of any search under Rule 164(2). This means that applicants
may make amendments of their own volition once in response to theMarch 2023

Guidelines for Examination in the EPO

Part C – Chapter III-13

communication under Art. 94(3) to which the search results under
Rule 164(2) are annexed (H-II, 2.3).
3.2 3.1 Relation to unity in search; limitation to searched invention
An objection of lack of unity of invention, if applicable, should already havebeen raised at the search stage. If such an objection was not raised, but
the examining division nevertheless considers that the requirements ofArt. 82 are clearly not met, the question of lack of unity will be addressed as
early as possible during examination (see F-V, 7.1 and H-II, 6.3 H-II, 7.3).

Art. 82

When raising a finding of lack of unity or upholding an earlier one objected
to by the applicant on the basis of unconvincing reasons, the examining
division will invite the applicant to limit the application to one invention orgroup of inventions. In response to such an invitation, applicants mustclearly indicate which searched invention they wish wishes to prosecute
further. If the response is unclear, the examining division must seek
clarification before continuing with the examination (see T 736/14).
3.2.1 3.1.1 No additional search fees paid
If applicants have not availed themselves of the opportunity to have thesearch results on the other inventions included in the search reportbecause they have paid no additional search fees in response to theinvitation under Rule 64(1) (see B-VII, 1.2) or Rule 164(1) (see B-VII, 2.3),
they will be taken to have elected that the application should proceed on
the basis of the invention which has been searched (see G 2/92). In cases
where a communication according to Rule 164(2) has been sent (seeC-III, 3.1), Rule 164(2)(c) requires the applicant to delete all unsearchedinventions from the claims.
It must be taken into account that the final responsibility for establishingwhether the application meets the requirement of unity of invention
ultimately rests with the examining division (see T 631/97). Whenconsidering the issue of unity, the examining division will consider both thereasons given in the search opinion and the applicant's response thereto(see B-XI, 8, for details of when a response to the search opinion isrequired); for Euro-PCT cases where no supplementary European search
report is prepared, the examining division will consider the reasons given in
the WO-ISA, IPER or supplementary international search report preparedby the EPO and the applicant's response thereto as required byRule 161(1) (see E-IX, 3.2). In the absence of any convincing response
from the applicant to the issue of unity as raised earlier, the examining
division will normally initially uphold the position taken earlier(see B-XI, 1.2) and will then require deletion of all the inventions other thanthat which has been searched. If the examining division is convinced,
e.g. by arguments from the applicant, that the opinion on unity at the search
stage was incorrect, then an additional search is performed for that part ofthe subject-matter which is judged to be unitary with an invention which
was searched (see B-II, 4.2(iii), and C-IV, 7.3 C-IV, 7.2) and theexamination is carried out on those claims which comply with therequirement of unity of invention. The applicant may file a divisional
application for any excised subject-matter (see C-III, 3.3 C-III, 3.2).

Rule 64
Rule 164(1) and (2)Part C – Chapter III-14

Guidelines for Examination in the EPO

March 2023

3.2.2 3.1.2 Additional search fees paid
If applicants have taken the opportunity to have other inventions searched,then they may determine that the application is to proceed on the basis of
any of these, the other(s) being deleted. If the applicant has not yet doneso, the examining division should at the beginning of substantive
examination, if it maintains the objection of lack of unity(see C-III, 3.2 C-III, 3.1.1), invite the applicant to state on which invention
the prosecution of the application should be based and to limit theapplication accordingly by excising those parts belonging to the otherinventions. For the latter inventions, the applicant may file divisional
applications (see C-III, 3.3 C-III, 3.2).
3.2.3 3.1.3 Invitation to pay additional search fees combined withinvitation to restrict the scope of the search
In exceptional cases an invitation to pay additional search fees under
Rule 64(1), Rule 164(1) or Rule 164(2) may be combined with an invitation
to restrict the scope of the search under Rule 62a(1) and/or Rule 63(1).
When the application enters the examination phase or, in the case ofRule 164(2), after the reply to the first communication, the examiner will
check whether the claims on which substantive examination is based meetthe requirement of unity of invention (Art. 82) and cover only subject-matter
which has been searched. If the claims lack unity of invention, the applicant
will be invited to limit the claims to one searched invention and to exclude
all unsearched subject-matter from the scope of the claims. If in reply to theobjection raised by the examiner the applicant fails to respond adequately(either by amending the claims or by submitting convincing arguments) andthe non-unity objection can be maintained, the application may be refused
under Art. 97(2) in conjunction with Art. 82 (see H-II, 6.3 H-II, 7.3 and 6.4
7.4), provided that the right to be heard – which includes the right to oralproceedings if so requested (Art. 116(1)) – has been respected.
If the original set of claims has been amended before entering theexamination phase or, in the case of Rule 164(2), in reply to the firstcommunication such as to meet the requirements of Art. 82, but includes
subject-matter that was excluded from the search following an invitation
under Rule 62a(1) and/or Rule 63(1), the examiner will either (i) invite theapplicant to limit the set of claims to the searched subject-matter under
Rule 62a(2) and/or Rule 63(3), or (ii) raise an objection under Rule 137(5)against the claim(s) concerned (see H-IV, 4.1.2 H-II, 6.2). In Rule 164(2)cases, if the first communication already included the relevant
objections/invitations and the right to be heard has been respected, theapplication may be refused.
If in reply to the invitation under Rule 62a(2) or Rule 63(3) the applicant
fails to respond adequately (either by amending the claims or by submitting
convincing arguments), the application may be refused under Art. 97(2),provided that the right to be heard has been respected (see F-IV, 3.3).

March 2023

Guidelines for Examination in the EPO

3.3 3.2 Excision of other inventions; filing divisional applications
For inventions which the applicant has deleted in accordance with
C-III, 3.2.1 C-III, 3.1.1 or 3.2.2 3.1.2, the applicant may file divisional
applications.

Part C – Chapter III-15

Rule 36

The filing of a divisional application is only possible if the application being
divided is still pending (see A-IV, 1.1.1).
3.4 3.3 Refund of additional search fees
If the applicant has paid further search fees in response to an invitation
under Rule 64(1), 164(1) or (2) and has requested a refund of these, theexamining division is required to review the validity of the finding of lack ofunity (see also F-V, 4 to F-V, 7).
Requests for refunds should be handled promptly. If the examinerconcludes that a request for refund should not be granted, an interlocutory
decision to that effect should be issued at the earliest opportunity, subject
to the requirements of Art. 113(1), and the issuing of the decision should
not normally be left until the final decision on the application. Of course, if
the stage in the procedure at which the examiner is in a position to issue
the decision on the refund coincides with the issuing of either a Rule 71(3)communication or a decision refusing the application, then in the formercase the interlocutory decision can be issued with the Rule 71(3)communication, and in the latter case the decision on the refund can be
included in the decision refusing the application. The examiner ensures that
the An interlocutory decision issued on this matter clearly states that a willallow separate appeal under Art. 106(2) is allowed.
Before an interlocutory decision is issued which refuses the request to
refund additional search fees under Rule 64(2), applicants should be
informed of the examining division's preliminary opinion in a communication
under Art. 94(3). The arguments presented by the applicants in their reply
to the search opinion should be taken into account in this preliminary
opinion. Furthermore, a time limit should be set in order to give theapplicants the possibility to comment on the examining division's
preliminary opinion. At the same time, the applicants can be informed thatthey may request an interlocutory decision on the refund which will allow
separate appeal under Art. 106(2). If these requirements are fulfilled, theapplicant's right to be heard under Art. 113(1) is respected. The sameprocedure applies to the refund of search fees paid under
Rule 164(1) and (2).
Rule 164(5) provides for a refund of any search fee paid under
Rule 164(1) or (2) in line with Rule 64(2) (see A-X, 10.2.2). Where theapplicant pays a search fee in response to the Rule 164(2) invitation and at
the same contests the basis for requiring payment of a search fee andrequests its refund under Rule 164(5), the examining division may deal
directly with this issue in the communication according to Art. 94(3) andRule 71(1) or (2) which accompanies the search results under Rule 164(2).
Such an immediate review of the applicant's request is not possible inRule 64(1) and 164(1) cases until such time as the examining division
assumes responsibility for the application.

Rule 64(2)Rule 164(5)Part C – Chapter III-16

Guidelines for Examination in the EPO

March 2023

Moreover, it is essential to bear in mind that the review under
Rule 64(2) or 164(5) is restricted to a reconsideration of the validity of thatoriginal finding under the circumstances existing at the time theRule 64(1), 164(1) or (2) invitation was sent, taking into account only theprior art which was available at that time. For more details on theassessment of unity of invention, see F-V.
The issue of refunds of additional international search fees paid to the
EPO acting as ISA in response to an invitation under Art. 17(3)(a) PCT,
however, does not arise in the European phase, because these fees were
paid in the international phase, which is closed by this stage of theprocedure. The applicant may contest the payment of additional
international search fees to the EPO acting as ISA by paying these underprotest according to Rule 40.2(c) PCT. However, this must be done in theinternational phase (see also the decision of the President of the EPO
dated 9 June 2015, OJ EPO 2015, A59, and the notice from the EPO dated
24 March 2010, OJ EPO 2010, 322).
3.5 3.4 Changing from one searched invention to anotherOnce the applicant has limited the claims to one searched invention, theexamining division will refuse to admit amendments which involve switching
to a different searched invention (for further information, see H-II, 6.1
H-II, 7.1).

Rule 71(1) and (2)Rule 132
Art. 94(3)4. First communication
If deficiencies persist in the application even after the applicants have filed
their response to the search opinion, the examining division will issue a
communication according to Art. 94(3) and Rule 71(1), (2) in subsequentexamination proceedings and will consider the applicant's reply thereto
before issuing a negative decision or a summons to oral proceedings. For
the exceptional case where summons to oral proceedings are issued as thefirst action in examination proceedings, see C-III, 5.
When drawing up such a communication (or exceptionally the summons tooral proceedings), the examining division will take into account the
documents (if any) cited in the search report and any further documents
found as the result of the search referred to in C-IV, 7.1, as well as any
amendments proposed, or comments made, by the applicant in reply to thesearch opinion (see B-XI, 8) or in reply to the communication under
Rule 161(1) (see E-IX, 3). The examiner should identify in thiscommunication any requirements of the EPC which, in his or her opinion,
the application does not satisfy. The communication will give reasons forany objections raised and will invite the applicants within a specified period
to file their observations or submit amendments. The filed application
documents are not sent back to the applicant although a copy of thedescription and claims may be sent in appropriate cases (see H-III, 2).
When the applicant has replied, the examiner will then re-examine theapplication.
If no search opinion has been issued (see C-VI, 3, F-V, 7.1(ii) and
B-XI, 1.1), the examiner's first communication under Art. 94(3) will, as a
general rule (see B-XI, 3) and by analogy with the search opinion, cover allMarch 2023

Guidelines for Examination in the EPO

Part C – Chapter III-17

objections to the application (see B-XI, 3.4 for exceptional cases where not
all objections are raised). Summons will not be issued as the first officeaction in examination proceedings in such cases.
4.1

Reasoning

4.1.1 Reasoned objections
As with the search opinion, for each objection the communication 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, orby other clear indication; it should also give the reason for any objection
where this is not immediately apparent (for more details see B-XI, 3.2).

Rule 71(2)The burden of proof and the onus of presentation of the relevant facts
about patentability requirements lie initially with the examining division,
which must provide evidence and facts to support its objection (seedecision T 655/13). Accordingly, prior art documents forming the basis fornovelty or inventive step objections must be cited in such a way that these
conclusions can be checked without difficulty (see E-X, 2.6).
4.1.2 Positive statements/suggestions
Where appropriate, the 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, theexaminer should make such statements in particular where the claims forwhich a positive conclusion is reached have not yet been commented on.
Concerning making suggestions on how to overcome objections,
see B-XI, 3.8. When suggesting an acceptable form of amendment to theclaims, the examining division will also invite the applicant to adapt thedescription to bring it into line with the amended claims (see F-IV, 4.3).
4.2 Invitation to file comments and amendments
The communication should include an invitation to the applicant to fileobservations, to correct any deficiencies and, if necessary, to submit
amendments to the description, claims and drawings. It must also state theperiod within which the applicant must reply. Failure to reply in due time willcause the application to be deemed withdrawn (see C-VI, 1 and E-VIII, 1).
Further processing applies to this loss of rights (E-VIII, 2).
5. Summons to oral proceedings as the first action in examination
In exceptional cases, the examining division may issue a summons to oralproceedings as the first action in examination. The division may decide to
do so only if–

in its opinion, there is no prospect of a grant, even taking into
account the applicant's reply to the search opinion;–

the content of the claims on file is not different in substance from thatof the claims which served as a basis for the search, andRule 71(1) and (2)Art. 94(3) and (4)Part C – Chapter III-18

Guidelines for Examination in the EPO–

March 2023

one or more of the objections raised in the search opinion which are
crucial to the outcome of the examination procedure still apply.

In addition, in examination of a divisional application, the examining division
may exceptionally issue a summons to oral proceedings as the first action
if:–

the parent application was refused or withdrawn and there is noprospect of a grant for the divisional application, even taking into
account the applicant's reply to the search opinion;–

the content of the claims on file is substantially the same as or
broader than the subject-matter of claims which were examined forthe refused or withdrawn parent application, or which served as abasis for the search of the divisional application, and–one or more of the objections which are crucial to the outcome of theexamination procedure and which were raised in the search opinion
established for the divisional application, in the refusal of the parent
or in a communication issued for the withdrawn parent still apply.

The annex to the summons issued as the first action in examination must
deal with the applicant's requests in their entirety and be as detailed as acommunication under Art. 94(3) EPC (see, in particular, C-III, 4.1). It must
not include any new objections or cite new documents that were neither
included in the search opinion nor, in the case of a divisional application, in
the refusal of the parent application or in a communication issued for thewithdrawn parent application. All objections to the application must becovered and substantiated by giving the essential legal and factual
reasons. In addition, it must include the reasons why the division decided todirectly summon to oral proceedings as the first action in examination. The
division may inform the applicant in a telephone call if it is considering
issuing a summons to oral proceedings as the first action in examination(C-VII, 2.5).
In order to allow the applicant sufficient time to prepare any submissions
ahead of the oral proceedings, the summons should be issued with at least
six months' notice.
In accordance with the principles applicable to the summons to oralproceedings, applicants may avail themselves of the possibility to submit
any arguments and amendments by expiry of the deadline set under
Rule 116(1) EPC. Requests filed after the date set under Rule 116(1) are
not to be treated as late-filed (H-II, 2.7) in the case of a summons to oralproceedings issued as first action in examination.
Should the applicant's submissions contain a genuine effort to overcome
the examining division's objections, oral proceedings may be cancelled or
postponed. Otherwise, a decision on the substance of the application will in
principle be taken during the oral proceedings, even if the applicant does
not attend them (see E-III, 6 and E-III, 8.3.3.3).

March 2023

Guidelines for Examination in the EPO

6. Requesting information on prior art (not confined to priority)
The EPO may invite the applicant to submit, within a period of two months,
information on prior art which has been taken into consideration in nationalor regional patent proceedings concerning an invention to which theEuropean patent application relates. This in particular encompasses search
results with respect to applications for patents or utility models whose
priority is not being claimed. It also enables the EPO to request, inter alia,
the copy of the results of the search on the priority or priorities referred to inRule 141(1), where the search results were not available to the applicant
when requested under Rule 70b(1) (see the notice from the EPO dated
28 July 2010, OJ EPO 2010, 410). Failure on the part of the applicant tocomply with this invitation results in the application being deemed to bewithdrawn under Art. 124(2). Further processing is available for this loss ofrights (see E-VIII, 2).
In view of the considerable work such invitations may imply for applicants,
further requests under Rule 141(3) will be issued only in individual cases,
where there are cogent reasons to suspect the existence of additional,
relevant prior art.
This invitation is an independent communication, and the above-mentioned
time limit is non-extendable. The invitation can be sent by itself or at thesame time as a communication according to Art. 94(3). If sent at the sametime, the time limits set in both communications are independent of one
another. Any information on prior art provided by the applicant will be
included in the file and will be open to file inspection (see A-XI).
7. Evaluation of prior art documents cited in search report and latepriority claim
As explained in A-III, 6.5.1 and 6.5.2, the applicant has the right to correct
or to introduce a priority claim within 16 months of the earliest priority (witha minimum of four months from the European filing date in the case ofcorrections). When this happens before finalisation of the search report, theexaminer may review the draft search report to take into account thechange in the effective date of the application. In cases where the search
report was issued on the basis of the original priority status (i.e. addition or
correction of a priority claim is effected after the search report is drawn up),the primary examiner at the substantive examination stage should
re-evaluate the relevance of the documents cited in the search report.
Where it appears that the prior art available to the examiner is unlikely toreflect the state of the art in a sufficiently complete way for the purpose of apatentability assessment, the examiner should then conduct an additional
search (see C-IV, 7.3 C-IV, 7.2). No further search report will be issued inthese cases: the applicant will be informed of any newly-found documents
in a communication pursuant to Art. 94(3) (with copies of such documents
annexed to that communication).

Part C – Chapter III-19

Art. 124
Rule 141(3)March 2023

Guidelines for Examination in the EPO

Chapter IV – Examination of replies and further
stages of examination
1. General procedure
Following the applicant's reply to the search opinion (see B-XI, 8), WO-ISA,
IPER or supplementary international search report prepared by the EPO(see E-IX, 3) or to the first communication, the examiner must examine theapplication, taking into account observations or amendments made by theapplicant.
Where the application is one of those mentioned in H-III, 2.1.4, Rule 137(4)requires that any amendments made by the applicant in reply to the search
opinion, WO-ISA, IPER or supplementary international search report be
identified and their basis in the application as filed indicated. Failure tocomply with this requirement may result in the examining division sending acommunication according to Rule 137(4). For more details of theprocedure, see H-III, 2.1.1 and 2.1.2.
In the case of one or more auxiliary request(s) directed to alternative texts
for grant of a patent, every such request qualifies as a text submitted oragreed by the applicant within the meaning of Art. 113(2) and therefore
must be dealt with in the order indicated or agreed to by the applicant, up to
and including the highest-ranking allowable request, if any (see also H-III, 3
and C-V, 1.1). It is also to be noted that, for the types of application
mentioned in H-III, 2.1.4, Rule 137(4) must also be complied with in respectof auxiliary requests, which may also be subject to a communicationaccording to Rule 137(4).
2. Extent of examination of replies
After the first examination stage, provided that the:–search opinion,–

WO-ISA (when prepared by the EPO),–

explanation accompanying the supplementary international search
report under Rule 45bis.7(e) PCT (when prepared by the EPO, see
the notice from the EPO dated 24 March 2010, OJ EPO 2010, 316,
point 6),–

IPER (when prepared by the EPO), or–

first communication (see B-XI, 1.1 and 8)

was comprehensive and clear (see B-XI, 3 and C-III, 4 and 4.1), theexaminer will not normally need to completely reread the application but
rather should concentrate on the amendments themselves, the related
passages, and the deficiencies previously noted.

Part C – Chapter IV-1

Part C – Chapter IV-2

Art. 94(3)Guidelines for Examination in the EPO

March 2023

3. Further action upon examination of replies
Examiners should be guided at this stage by the overriding principle that a
final position (grant or refusal) should be reached in as few actions as
possible, and they should control the procedure with this always in mind.
The EPC provides that the process of communicating with the applicant
described in C-III, 4 is repeated "as often as necessary".
In most cases, the applicant will have tried to deal with all the examiner's
objections. A letter of reply from the applicant does not have to be
substantively complete or cogent in order to qualify as a reply within themeaning of Art. 94(4). For the application not to be deemed withdrawn, it isenough for the applicant to comment on, even incompletely, or to fileamendments in reply to at least one of the objections raised in thecommunication under Art. 94(3). In contrast, purely formal requests, suchas the extension of the time limit under Art. 94(3) or the request for a
consultation, do not qualify as replies under Art. 94(4) (see also B-XI, 8 and
E-VIII, 2). A request for a decision according to the state of the file (seeC-V, 15), however, qualifies as a reply within the meaning of Art. 94(4).
If the only outstanding objection is the need to amend the description, see
C-VI, 1.1.

Art. 113(1)If examination of the applicants' reply shows that despite their submissions
objections persist, and provided that at least one communication has been
sent in examination proceedings (see C-III, 4 and E-IX, 4.1) and theapplicants have been given the right to be heard (Art. 113(1)), i.e. thedecision is based solely on grounds on which they have had an opportunity
to comment, the examiner will consider recommending to the othermembers of the examining division that the application be refused(see T 201/98). However, where there is a reasonable prospect that anadditional invitation to overcome the objection(s) could lead to a grant, theexaminer will send a further written communication or contact theapplicants by telephone. The examiner may also make suggestions on how
to overcome the raised objections (see B-XI, 3.8 and C-III, 4.1.2).
If examination of the applicants' reply shows that they have not dealt withall the main objections in their reply, it may be appropriate to draw the
deficiencies to their attention, e.g. by telephone. But if no positive reaction
is to be expected, the examiner should consider recommending to the othermembers of the examining division that the application be refused
immediately (again provided that at least one communication has been sent
in examination proceedings).
If substantial differences of opinion exist, the issues are generally best dealt
with in writing. If, however, there seems to be confusion about points indispute, e.g. the applicant seems to have misunderstood the examiner's
arguments or the applicant's own arguments are unclear, then aconsultation may be useful. A consultation may also expedite theprocedure, if the matters to be resolved are minor. Consultations do notconstitute oral proceedings (see E-III). They are more fully considered in
C-VII, 2.

March 2023

Guidelines for Examination in the EPO

3.1 Further action where a request for a translation of the priority
application was sent earlier in examination proceedings
In cases where an invitation under Rule 53(3) to file a translation of one ormore priority applications was sent earlier in examination proceedings(either separately or at the same time as a communication under Art. 94(3)– see A-III, 6.8.2), a subsequent communication (under Art. 94(3) orRule 71(3), or a summons to oral proceedings) cannot be sent until thetranslation is filed or the period for further processing has expired (see also
E-III, 5.1). This also applies in cases where the Rule 53(3) invitation was
sent at the same time as a previous communication under Art. 94(3) andthe applicant has already replied to that communication (e.g. by filingamendments), but has not yet provided the translation and the original time
limit or the period for further processing is still running.

Part C – Chapter IV-3

Rule 53(3)4. Later stages of examination
Similar The considerations explained in C-IV, 3 apply as well to later stagesof examination on the understanding that, having regard to the principle
stated in C-IV, 3, the greater the number of actions which have alreadytaken place, the greater is the likelihood that the most appropriate action isto refer the application to the other members of the examining division for adecision. Where this decision is to refuse the application, particular careshould be taken to ensure that the decision does not offend against
Art. 113(1).
5. Examination of amendments
Any amendment must satisfy the conditions listed in C-III, 2. When it was
effected must also be established.
6. Admissibility of amendments made by the applicant
For matters relating to the admissibility of amendments made in
examination proceedings, see H-II, 2.
7.

Search-related issues in examination

7.1 Search for conflicting European applications
The examiner should make a search for any additional conflicting European
applications falling within the area defined by Art. 54(3) unless this was
already covered by the search report.
This is because as a general rule the search files will not be complete inrespect of such material at the time the main search is made. Since priority
dates claimed (if any) may not be accorded to all or part of the application
but may be accorded to the appropriate part of a conflicting application(see F-VI, 2.1), this search should be extended so as to cover all European
applications published up to eighteen months after the filing of theapplication under consideration. On condition that the priority claim is valid
for the whole content of the patent application under examination, the topup search may exceptionally be performed at the earliest 18 months fromthe priority date. If examiners are unable to complete this "topping-up"
search at the time the search opinion or the first communication under
Art. 94(3) is prepared, they should ensure that such search is completed
before the application is reported to be in order for the grant of a patent. In

Rule 137(2) and (3)Part C – Chapter IV-4

Guidelines for Examination in the EPO

March 2023

the rare case in which the application is found to be in order before thissearch can be completed (e.g. due to a request for accelerated prosecutionof an application not claiming priority, "PACE", see the notice from the EPO
dated 4 May 2010, OJ EPO 2010, 352), the grant of a patent should bepostponed until the topping-up search can be completed (T 1849/12).
In addition to retrieving Art. 54(3) documents which were not available atthe time of the original search, the top-up search takes into consideration,inter alia, potentially relevant prior art cited by other patent offices onapplications belonging to the same patent family as the application under
examination at the EPO, and therefore needs to be performed for any file atthe start and end of examination.
In the framework of the refund of examination fees (see A-VI, 2.5), thelaunch of a top-up search is triggered at the start of examination. This
creates a marker which serves as evidence in the file that the examining
division has started its substantive work.
7.2 National prior rights
In view of the importance of national prior rights (see B-VI, 4.2) for
applicants in proceedings before the Unified Patent Court, the examiner
expands the top-up search scope at the grant stage (see C-IV, 7.1) toinclude national applications and patents of the contracting states, in so far
as they are present in the EPO's databases.
The division informs the applicant about the outcome of the top-up search
for national prior rights. Those that are prima facie relevant for theapplication are communicated to the applicant.
7.3 7.2 Additional searches during examination
An additional search will sometimes be required either at the first stage of
amendment or subsequently. This may arise for a number of reasons.
An additional search may be necessary:(i)where a partial search taking the place of the search report under
Rule 63 has been issued at the search stage after an invitation under
Rule 63(1) (see B-VIII, 3, 3.1 and 3.2), and subsequently the
deficiencies which rendered a meaningful search impossible under
Rule 63 have been corrected by amendment complying with
Rule 137(5) (see H-IV, 4.1.1 H-II, 6.1) or successfully refuted by theapplicant;(ii)

where a declaration that a meaningful search was not possible took
the place of the search report under Rule 63, and the applicant
successfully refuted the objections;(iii)

where the applicant successfully argues that a plurality of
independent claims in the same category, which led to a limitation of
the search report in accordance with Rule 62a (see B-VIII, 4.1 and
4.2), is in fact allowable according to the exceptions provided for in
Rule 43(2) (see F-IV, 3.2);

March 2023

Guidelines for Examination in the EPO(iv)

where a particular part of the application has not been searchedbecause of an objection of lack of unity of invention, and thearguments put forward by the applicant have convinced theexamining division that unity is given;(v)

where the claims have been so amended that their scope is nolonger covered by the original search;(vi)

where a search report under Rule 61 was issued containing no priorart documents because the technical features were found to benotorious (see B-VIII, 2.2.1) and the examining division does notshare this opinion;(vii)

where no prior art document was cited for features which wereconsidered to be part of the common general knowledge and theexamining division does not share this opinion or the common
general knowledge is challenged by the applicant (see G-VII, 2 and
3.1);

Part C – Chapter IV-5

(viii) exceptionally, where the applicant states that a mistake was made in
the acknowledgement of prior art (see G-VII, 5.1) or the examiner
believes that material relevant to obviousness might be found intechnical fields not taken into account during the search;(ix)

where the applicant has introduced a new priority claim after the dateof filing (see C-III, 6).

If the application has been filed under the PCT, the search report will be theinternational search report made under the PCT, which will beaccompanied by a supplementary European search report, unless the
Administrative Council has decided that a supplementary report is to bedispensed with (see E-IX, 3.2). Both of these reports will have to beconsidered by the examiner when deciding whether any additional searchis required.
In the case of a Euro-PCT application for which the EPO acting as ISA or
SISA issued an incomplete search report or a declaration of no search (seePCT-EPO Guidelines, B-VIII, 1), an additional search may be necessary if
the deficiencies underlying the limitation of the search have been correctedby amendment or successfully refuted by the applicant (see B-II, 4.2 (ii)).
Otherwise, the examining division will object to claims relating to subjectmatter that was not searched by the EPO acting as ISA, referring to the
EPC provision invoked for the limitation of the search, e.g. Art. 84 EPC.
Rule 137(5), second sentence, cannot be invoked in that context.
For searches under Rule 164(2) see C-III, 3.1 C-III, 2.3.
7.4 7.3 Search at the examination stage
Although in principle all search work (other than for Art. 54(3) material)
should be done at the search stage, in exceptional circumstances
examiners are not barred from looking for a relevant document whose

Art. 153(6) and (7)Part C – Chapter IV-6

Guidelines for Examination in the EPO

March 2023

existence they know of or have reason to suspect, if they can retrieve that
document in a short time.
7.5 7.4 Citing documents not mentioned in the search report
A copy of any document cited by the examiner but not mentioned in the
search report, for example one found in a search under C-IV, 7.1, C-IV, 7.2
or C-IV, 7.3 C-IV, 7.2, should be sent to the applicant and identified in theelectronic dossier (see the decision of the President of the EPO dated
12 July 2007, Special edition No. 3, OJ EPO 2007, J.2).
8. New submissions in reply to summons
New requests filed in reply to a summons to oral proceedings will normallybe discussed at the oral proceedings. As a rule there is no provision for
detailed discussion before the oral proceedings.
However, informal consultation to discuss the new request(s) may beallowed by the first examiner (see C-VII, 2), in particular if there is areasonable prospect that the consultation could lead to an agreed allowableclaim set.
The examining division strives to review newly-filed requests in good time
before oral proceedings so that the proceedings can be cancelled if
necessary, in particular where a newly-filed main request is consideredpatentable.
For cases where the newly-filed main request is not considered patentable
but one of the auxiliary requests is, see E-X, 2.9.

March 2023

Guidelines for Examination in the EPO

Part C – Chapter V-1

Chapter V – The final stage of examination
1.

Communication under Rule 71(3)

1.1 Text for approval
Once the examining division has decided that a patent can be granted it
must inform the applicant of the text on the basis of which it intends to doso. This text may include amendments and corrections made by theexamining division on its own initiative which it can reasonably expect theapplicant to accept. In case of doubt as to whether the applicant would
agree to the amendments proposed by the examining division, theapplicant should be contacted by telephone or an official communication
has to be written. The applicant's agreement to such amendments willusually be recorded in the communication according to Rule 71(3)(see C-VII, 2.4).
Examples of amendments where no such consultation with the applicant isrequired are the following:(a)bringing a statement of invention in the description into conformity
with the claims(b)deletion of vague general statements in the description(see F-IV, 4.4) or of obviously irrelevant matter (see F-II, 7.4)(c)insertion of values in SI units (see F-II, 4.13)(d)insertion of reference numerals in claims unless the applicant is
known to object to this or has previously objected to this(e)introduction of a summary of background art which clearly represents
the prior art closest to the invention (see F-II, 4.3)

(f)amendments which, in spite of the fact that they change the meaningor scope of an independent claim, would very clearly have to be
made, so that it can be assumed that the applicant would not object
to them (see for example G-VI, 7.1.2, G-VI, 7.1.3 and G-VI, 7.1.4)(g)correction of linguistic and other minor errors(h)reformulation of method-of-treatment claims into an allowable format(see G-II, 4.2).

(i)deletion of redundant claims (e.g. omnibus claims and claims which
the applicant has not deleted despite having incorporated theirfeatures into other claims).

Rule 71(3)Part C – Chapter V-2

Guidelines for Examination in the EPO

March 2023

Examples of amendments which may not be proposed without consulting
the applicant are:(i)amendments which significantly change the meaning or scope of theclaims, if there are different ways of amending the claim, so that theexaminer cannot assume to which possibility the applicant will agree.

(ii)

deletion of entire claims, with the exception of so-called "omnibus
claims" (i.e. claims reading "An apparatus substantially as describedherein", or the like)(iii)

combining claims so as to overcome a novelty or inventive step
objection.

With regard to such amendments and corrections made by the division, it isimportant to bear in mind that the above list is designed to avoid changes
which the applicant is more likely to reject, thus helping to avoid delays in
the conclusion of examination proceedings. The standard marks used by
the division for indicating amendments and corrections using the electronic
tool are listed in C-V, Annex.
The text is communicated to the applicant by despatching a communication
under Rule 71(3), in which the applicant is furthermore invited to pay thefee for grant and publishing (see C-V, 1.2) and to file a translation of theclaims in the two official languages of the EPO other than the language ofthe proceedings (see C-V, 1.3) within a period of four months, which is
non-extendable. If the applicants pay the fees and file the translations
within this period (and file or request no corrections or amendments to thetext proposed for grant in the Rule 71(3) communication, see C-V, 4.1),
they will be deemed to have approved the text intended for grant(Rule 71(5)).
If during examination proceedings a main request and auxiliary requests
have been filed (see C-IV, 1 and E-X, 2.9) and one of the requests isallowable, the communication pursuant to Rule 71(3) is to be issued on thebasis of the (first) allowable request and must be accompanied by a shortindication of the essential reasons for the non-allowability of the subjectmatter of the higher-ranking requests or the non-admissibility of theserequests (see also H-III, 3). This short indication should provide sufficient
information about the objections raised by the examining division to enable
the applicant to comment on them.
Handwritten amendments by the applicant to the description, claims andabstract, unless they involve graphic symbols and characters and chemical
or mathematical formulae, are no longer accepted in strict compliance with
Rule 50(1) in conjunction with Rule 49(2) (Art. 2(7) of the decision of the
President of the EPO dated 25 November 2022, OJ EPO 2022, A113)
Rule 49(8) (see OJ EPO 2013, 603, and A-III, 3.2). For the procedure tofollow in oral proceedings, see E-III, 8.7.

March 2023

Guidelines for Examination in the EPO

Part C – Chapter V-3

1.2 Grant and publishing fee
The communication under Rule 71(3) also invites the applicant to pay thefee for grant and publishing within the same non-extendable four-month
period. Note that for European patent applications filed before 1 April 2009and international applications entering the regional phase before that date
the fee for grant and printing may include an element depending on thenumber of pages, but for applications filed or entering the regional phaseon or after that date this additional element is payable as part of the filingfee (see A-III, 13.2).
1.3 Translations of the claims
The communication under Rule 71(3) also invites the applicant to file atranslation of the claims in the two official languages of the EPO other thanthe language of the proceedings within the same non-extendable
four-month period.
If the application contains different sets of claims for particular contracting
states (see H-III, 4), a translation of all the sets of claims must be filed.
Only one copy of the translation needs to be filed.
Examiners should not concern themselves with the quality of the translation
filed.
The translation should meet the requirements pursuant to Rule 50(1).
1.4 Claims fees due in response to Rule 71(3) communication
If the text of the European patent application serving as the basis for grantcontains more than fifteen claims, the examining division requests theapplicants to pay, within the period under Rule 71(3), claims fees in respectof each claim over and above that number unless they have already done
so under Rule 45(1) or Rule 162(1) and (2) (see A-III, 9). Where there ismore than one set of claims, fees are incurred under Rule 45(1),Rule 162(1) and Rule 162(2), or Rule 71(4) only for the set with the highest
number of claims.
If the text on which the Rule 71(3) communication is based contains fewer
claims than the set of claims in respect of which claims fees were paid on
filing under Rule 45 or on entry into the European phase under Rule 162,
no refund of claims fees will be made.
Where the communication under Rule 71(3) is based on an auxiliary
request, it is the number of claims in that auxiliary request which
determines the claims fees which are due in response to thiscommunication. However, if the applicant then replies by requesting a grant
based on a higher-ranking request, no claims fees need to be paid in
response to that Rule 71(3) communication (see C-V, 4.1).
1.5 Other information in the communication under Rule 71(3)An annex to the communication under Rule 71(3) states the contracting
states which have been validly designated as well as the extension andvalidation states for which the corresponding fees have been paid, the title

Rule 50(1)Rule 71(4)Rule 45(1)Rule 162(1) and (2)Part C – Chapter V-4

Guidelines for Examination in the EPO

March 2023of the invention in the three EPO official languages, the international patentclassification, the date of filing of the application, any priorities claimed, thedesignated inventors and the registered name of the applicant.
The communication under Rule 71(3) also states that, where a renewal fee
falls due between the notification of this communication and the proposed
date of publication of the mention of the grant, publication will be effected
only after the renewal fee and any additional fee have been paid(see C-V, 2).
Where the examining division changes its opinion after an earlier negative
communication, it will communicate the reasons for this change unless they
are clear from the applicant's reply, from a communication or from theminutes of a consultation.
During the grant procedure an applicant may submit further technicalinformation, for example:–

comparative tests–

further examples–

statements concerning the effects and/or advantages of theinvention.

Technical information which extends beyond the content of the application
as filed, however, cannot be included in the application by way ofamendment (Art. 123(2), H-IV and H-V). Such information is added to thefile, which is open to inspection (Art. 128(4)). The existence of suchinformation is indicated on the cover page of the patent specification.
All further documents which were neither cited in the application as filed nor
mentioned in the search report but have been cited during the examination
procedure are to be indicated, even if they have not been used in an
objection concerning novelty or inventive step. This also applies todocuments which are cited to show, for instance, a technical prejudice.

Rule 71(5)Art. 97(1)2. Approval of the proposed text – grant of a patent
If applicants pay the fee for grant and publishing and any claims fees due
under Rule 71(4) and file the translation of the claims within the specified
period (and file or request no corrections or amendments to the text
proposed for grant in the Rule 71(3) communication, see C-V, 4.1), they are
deemed to have approved the text intended for grant.
The above also applies where the Rule 71(3) communication was based on
an auxiliary request, provided that the applicant does not reply to theRule 71(3) communication by requesting that a grant be based on a higherranking request. This means that, in the absence of any indication to thecontrary, the above acts imply approval of the text of the auxiliary request
upon which the Rule 71(3) communication was based as well as theabandonment of all higher-ranking requests.

March 2023

Guidelines for Examination in the EPO

Part C – Chapter V-5

The above also applies where the Rule 71(3) communication included
proposals by the examining division for amendments or corrections of thetext intended for grant (see C-V, 1.1). Consequently, provided theapplicants do not reject these proposed amendments or corrections in their
reply, the completion of the above acts constitutes approval of the text
containing the amendments or corrections as proposed by the examining
division.
Once all the requirements set out in C-V, 1.1 to 1.4, are met, the decision to
grant the European patent is issued, provided that renewal fees and any
additional fees already due have been paid.

Rule 71a(1)If a renewal fee becomes due after notification of the Rule 71(3)communication but before the next possible date for publication of themention of the grant of the European patent, the decision to grant is notissued and the mention of the grant is not published until the renewal fee
has been paid. The applicant is informed accordingly. If the renewal fee or
any additional fee is not paid in time, the application is deemed to bewithdrawn (see A-X, 5.2.4).

Rule 71a(4)Art. 86(1)In the rare case that examination was accelerated to such an extent thatthe communication under Rule 71(3) is issued before the designation fee
becomes due, the decision to grant will not be issued and the mention of
the grant of the patent will not be published until the designation fee has
been paid. The applicant is informed accordingly. For European patentapplications filed before 1 April 2009 or international applications entering
the regional phase before that date this publication will not take place until
the designation fees have been paid and the designation of states for which
no designation fees have been paid has been withdrawn (see also
A-III, 11.1 and 11.3).

Rule 71a(3)The decision to grant does not take effect until the date on which the grantis mentioned in the European Patent Bulletin.

Art. 97(3)For details about the possibility of requesting a delay in issuing the decision
to grant a European patent in response to a communication under
Rule 71(3) until the entry into force of the Agreement on a Unified Patent
Court (UPCA), see the decision of the President of the European Patent
Office dated 11 November 2022 as well as the notice from the EPO dated
11 November 2022 (OJ EPO 2022, A102 and A104 respectively).
For information about filing "early requests for unitary effect", see the noticefrom the EPO dated 11 November 2022 (OJ EPO 2022, A105).
3. No reply in time – application deemed withdrawn
If the applicant fails to pay the fee for grant and publishing or the claims
fees or to file the translation within the period under Rule 71(3), theapplication is deemed to be withdrawn unless, within the same period, theapplicant files or requests corrections or amendments to the text proposed
for grant in the Rule 71(3) communication (see C-V, 4.1).

Rule 71(7)Part C – Chapter V-6

Art. 121

Guidelines for Examination in the EPO

If the applicant overruns the time limit set under Rule 71(3), further
processing may be requested under Art. 121 (see E-VIII, 2). In such a case,the omitted act to be completed would be either:
(i)

(ii)

Rule 71(6)March 2023

all of the following acts referred to in Rule 71(3) and Rule 71(4):(a)

payment of the fee for grant and publishing,(b)

payment of any claims fees due, and(c)filing of the translations of the claims; or

one or more of the following acts:(a)filing amendments and/or corrections to the application
documents,(b)rejecting amendments proposed by the examining division in
the communication under Rule 71(3), or(c)requesting the grant to be based on a higher-ranking request
than the auxiliary request on which the Rule 71(3)communication was based.

4. Request for amendments or corrections in reply to the Rule 71(3)communication
If the applicant, within the period under Rule 71(3), requests amendments
or corrections to the communicated text which are reasoned (with regard to
the reasoning required, see C-V, 4.3), the examining division will issue a
new communication under Rule 71(3) if it gives its consent (i.e. if it finds theamendments admissible and allowable; see C-V, 4.6); otherwise it will
resume the examination proceedings (see C-V, 4.7). This also applies in
the following cases:–

if the applicant requests the reversal of amendments proposed by theexamining division in the Rule 71(3) communication (see C-V, 4.6.1);–

if the Rule 71(3) communication was based on an auxiliary request
and the applicant replies by requesting that a grant be based on ahigher-ranking request (see C-V, 4.6.2 and 4.7.1.1).

In this and sections C-V, 4.1 to 4.10, unless otherwise stated, the terms"amendment(s)" and "correction(s)" refer only to amendments orcorrections of the application documents and not of other documents(e.g. bibliographic data, the designation of the inventor, etc.).
4.1 No payment of fees or filing of translations necessary
In the case referred to in C-V, 4, applicants will not be required to pay thefee for grant and publishing or any claims fees in reply to the firstcommunication under Rule 71(3), nor will they be required to file anytranslations of the claims within this period. This applies irrespective ofwhether the examining division subsequently finds these amendments orMarch 2023

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corrections to be admissible and allowable and irrespective of whether theamendments or corrections are reasoned (see C-V, 4.3).
This also applies if the applicant requests the reversal of amendments
proposed by the examining division in the Rule 71(3) communication(see C-V, 1.1). Furthermore, it also applies if the Rule 71(3) communication
was based on an auxiliary request and the applicant replies by requestingthat a grant be based on a higher-ranking request.
4.2 Crediting of fees paid voluntarily
Although the payment of fees in response to the Rule 71(3) communication
is not required where applicants file amendments or corrections in their
response thereto (see C-V, 4.1), they can still pay these fees voluntarily. Ifthey do so, the amount of the fees paid will be credited to the payment of
the same fees in response to a subsequent Rule 71(3) communication(issued either directly or after resumption of examination – see C-V, 4.6
and 4.7.2 respectively).
This crediting will be dealt with according to the procedures explained in
A-X, 11. This is subject to the following: if the amount of the claims fees
due in response to the second Rule 71(3) communication is less than theamount voluntarily paid in response to the first Rule 71(3) communication, arefund will be made of the excess paid, since the higher claims fees were
not due when paid in response to the first Rule 71(3) communication.
If, after such voluntary payment, the application is withdrawn, deemed to bewithdrawn or refused, a refund of the voluntarily paid fee for grant andpublishing will be possible under the conditions explained in A-X, 10.2.5.
Furthermore, since the claims fees were paid when they were not due,these will also be refunded under the same conditions.
4.3 Amendments or corrections should be reasoned
The reasoning accompanying amendments or corrections filed in responseto the Rule 71(3) communication should indicate respectively:–

why the applicant considers that the amended application documentscomply with the EPC, in particular the requirements of patentability,
Art. 123(2) and Art. 84;–

why the applicant considers that the errors and their proposedcorrections are evident according to Rule 139.

If, within the period under Rule 71(3), the applicant files amendments orcorrections which are not reasoned, no payment of the fee for grant andpublishing or claims fees is necessary nor is the filing of translations(see C-V, 4.1). However, the lack of any reasoning means that such
amendments or corrections are more likely to lead to a resumption of theexamination procedure (see C-V, 4.7).
4.4 Admissibility of amendments
The criteria for assessing the admissibility of such amendments are dealt
with in detail in H-II, 2.5 and subsections.

Rule 137(3)Part C – Chapter V-8

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March 2023

By way of exception, in cases where the Rule 71(3) communication was
also the first communication in examination proceedings, amendments filed
in response thereto must be admitted into the proceedings under Rule 137
in cases (i) to (iii) mentioned in H-II, 2.2. However, where a further
Rule 71(3) communication is sent in respect of such cases (see C-V, 4.6
and 4.7.2), any amendments filed in response thereto must be consented
to by the examining division according to Rule 137(3) (see H-II, 2.5).
4.5 Adaptation of the description
If the amendments or corrections filed by the applicant in the Rule 71(3)period concern the claims, the applicant should consider whether thisnecessitates any adaptation of the description. In order to avoid potential
delays in cases where adaptation is necessary, it is preferable for theapplicant to provide an adapted description when filing amended claims in
the Rule 71(3) period.
If no such adapted description is filed, the examining division may carry out
the adaptation itself and propose these amendments to the description in
the second Rule 71(3) communication (see C-V, 4.6.3). Alternatively, it may
resume examination (see C-V, 4.7) and send a communication according toArt. 94(3) requesting the applicant to provide the adapted description
before issuing a second Rule 71(3) communication (see C-V, 4.7.2).

Rule 71(6)4.6 Amendments/corrections admitted and allowable – second
Rule 71(3) communication sent
If the amendments and/or corrections filed within the period under
Rule 71(3) are admitted under Rule 137(3) and also comply with the EPC,
the examining division will send a second communication under Rule 71(3)based thereon.
4.6.1 Second Rule 71(3) communication reversing the amendments
proposed by the examining division in first Rule 71(3) communication
A second communication under Rule 71(3) is also sent if the applicant
requests reversal of amendments proposed by the examining division in thefirst communication under Rule 71(3) and the examining division overturns
its previous opinion, finding that the amendments that it had proposed were
not necessary, possibly as a consequence of argumentation or evidence
provided by the applicant in the reply to the first Rule 71(3) communication(in the absence of such convincing argumentation or evidence, examination
will normally be resumed; see C-V, 4.7).
4.6.2 Second Rule 71(3) communication based on higher-ranking
request initially rejected in first Rule 71(3) communication
In cases where the first Rule 71(3) communication was based on an
auxiliary request (see H-III, 3, in particular H-III, 3.1 and 3.3 andsubsections), the first communication under Rule 71(3) would have beenaccompanied by an indication of why the higher-ranking requests were notconsidered to be admissible or allowable (see C-V, 1.1). If applicants reply
to this first Rule 71(3) communication indicating that they wish a grant to be
based on one of these higher-ranking requests which the examining
division had previously held not to be allowable (see C-V, 1.1), such arequest will normally lead to examination being resumed (see C-V, 4.7 andMarch 2023

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4.7.1.1). The examining division may reverse its opinion, for example due
to convincing argumentation or evidence filed by the applicants with their
reply to the first Rule 71(3) communication. If the applicant is successful inthis regard, the examining division will send a second communication under
Rule 71(3) based on this higher-ranking request.
4.6.3 Examining division proposes amendments in second
Rule 71(3) communication
As with the first communication under Rule 71(3), the examining division
may propose amendments to the applicant's latest request on which thesecond Rule 71(3) communication is based (this request includes
amendments or corrections filed in response to the first Rule 71(3)communication). The types of amendment which may or may not be
proposed by the examining division in the second Rule 71(3)communication are the same as those mentioned in C-V, 1.1. However, inthe second communication under Rule 71(3), the examining division cannot
re-propose amendments which were previously proposed and then rejectedby the applicant. Where the examining division considers that such an
amendment is necessary to overcome an objection, it should consider
resuming examination (see C-V, 4.7).
4.7 Amendments not admitted and/or not allowable, examination
resumedUntil the decision to grant the European patent, the examining division may
resume the examination proceedings at any time. This applies inter alia
when the applicant files non-allowable or inadmissible amendments in
response to the Rule 71(3) communication.
4.7.1 Communications/oral proceedings after resumption
Where the grounds or evidence behind the finding of non-allowability or
inadmissibility of the amendments have not yet been dealt with in
examination proceedings, before issuing a summons to oral proceedings or
a decision to refuse (see C-V, 4.7.3) the examining division will send a
communication according to Art. 94(3) and Rule 71(1) and (2) explaining
this finding.
If one of the following situations applies, the examining division will have toappoint oral proceedings before issuing a decision to refuse(see C-V, 4.7.3):(i)oral proceedings have been requested, but have not yet been held,
or

(ii)

oral proceedings have been held, but:–the subject of the proceedings has changed such that a rightto subsequent oral proceedings arises under Art. 116(1)(e.g. as a result of the amendments filed in response to theRule 71(3) communication), and–the applicant has requested subsequent oral proceedings.

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March 2023

If the grounds and evidence behind the finding of non-allowability or
inadmissibility of the amendments have been dealt with in examination
proceedings, but not yet in oral proceedings, a summons to oralproceedings can be issued directly, provided at least one communication
under Art. 94(3) and Rule 71(1) and (2) has been issued.
Requests for oral proceedings must be allowed as long as proceedings
before the EPO are still pending, i.e. until the decision to grant has been
handed over to the internal post (see G 12/91 and T 556/95, especiallyreasons for the decision 4.4).
Art. 97(2)

If the following criteria are satisfied, the application may be refused directly:(a)the grounds and evidence behind the non-allowance or
non-admittance of the request filed in response to the Rule 71(3)communication have already been dealt with in examination
proceedings (Art. 113(1));(b)

the applicant has received at least one communication according toArt. 94(3) and Rule 71(1) and (2) (see C-III, 4); and(c)the applicant's right to oral proceedings on request has been
respected (Art. 116(1)).

4.7.1.1 Higher-ranking request not admissible and/or not allowable
If applicants reply to the Rule 71(3) communication by requesting that a
grant be based on a higher-ranking request and the examining division is
not convinced by the arguments and evidence filed by the applicants with
their reply, the examining division resumes examination following theprocedure in C-V, 4.7.1. The examining division may also directly refuse
the application providing a full reasoning under the proviso that:–the short indication of the essential reasons given in thecommunication under Rule 71(3) for the non-allowability of thesubject-matter of the higher-ranking requests or the non-admissibilityof these requests (see C-V, 1.1 and C-V, 4.6.2) provides sufficient
information about the objections raised by the examining division to
enable the applicant to comment on them (such that the applicant is
not taken by surprise, in particular where amendments or corrections
have been filed together with the disapproval; see C-V, 4.7.1) and–the applicant's right to oral proceedings on request has been
respected (Art. 116(1)) (see also H-III, 3.3.2).

For the purposes of determining whether the reasons not to grant thehigher-ranking requests given in the communication under Rule 71(3) allow
the division to issue a refusal, a general indication such as "Auxiliary
request 3 is not clear because an essential feature is missing" is not
sufficient. Rather, a more detailed statement is needed to ensure that theapplicant's right to be heard is properly respected. For example, the division
may provide the applicant with an explanation such as: "Auxiliary request 3
is not inventive in view of D1 (see col. 5, lines 25-46; fig. 4) because theMarch 2023

Guidelines for Examination in the EPO

Part C – Chapter V-11

skilled person, wishing to avoid friction between the cable and the carpet,
would make the clip recess deeper than the cable diameter".
4.7.2 Agreement reached on a text - second Rule 71(3)communication
If the resumption of examination described in C-V, 4.7.1 results in anallowable and admissible text being filed or results in the applicant
convincing the examining division that the text already filed in response to
the Rule 71(3) communication is in fact admissible and allowable, a second
Rule 71(3) communication is sent based on this agreed text. Such cases
are dealt with in the same way as described in C-V, 4.6.
4.7.3 No agreement reached on a text - refusal
If, after resumption of examination, no agreement can be reached on a text,
the application is refused (see C-V, 14). For details on conducting theresumed examination proceedings before issuing this decision,see C-V, 4.7.1.

Rule 71(6)Art. 97(2)4.8 Fees to be paid within the second Rule 71(3) period
Where the applicants file amendments or corrections in response to the firstcommunication under Rule 71(3), they do not have to pay either the fee for
grant and publishing or the claims fees (see C-V, 4.1). A second Rule 71(3)communication may then be issued either immediately (where theamended/corrected text is allowable – see C-V, 4.6) or after examination isresumed and an allowable text is agreed on (see C-V, 4.7.2).
4.8.1 Claims fees
In order for the text on which the second Rule 71(3) communication isbased to be deemed approved according to Rule 71(5), it is necessary forthe applicant to pay any claims fees which are due in response to thecommunication, thus also avoiding deemed withdrawal of the application
under Rule 71(7) (for the calculation of claims fees due at this stage,
see C-V, 1.4).
Since no claims fees would normally have been paid in response to the first
Rule 71(3) communication, the number of claims in the text on which thisfirst communication was based plays no role in calculating the amount of
the claims fees due in response to the second Rule 71(3) communication.
However, in cases where the applicant paid the claims fees voluntarily inresponse to the first Rule 71(3) communication, the amount paid is credited
according to Rule 71a(5) (see C-V, 4.2 and A-X, 11.2).
4.8.2 Fee for grant and publishing
In order for the text on which the second Rule 71(3) communication isbased to be deemed approved according to Rule 71(5), it is necessary forthe applicant to pay the fee for grant and publishing in response to thecommunication, thus also avoiding deemed withdrawal of the application
under Rule 71(7).
For European applications filed before 1 April 2009 or international
applications entering the European phase before that date, the fee for grantand publishing incorporates a fee for each page of the application over andArt. 2(2), No 7.2
RFees

Part C – Chapter V-12

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March 2023

above 35 (see C-V, 1.2 and A-III, 13.2). If the number of pages of such an
application changes between the first and the second Rule 71(3)communication, it is the number of pages on which the second Rule 71(3)communication is based which is used to calculate the amount of this fee.
Where the applicant paid the fee voluntarily in response to the first
Rule 71(3) communication, the amount paid will be credited according toRule 71a(5) (see C-V, 4.2 and A-X, 11.1).
4.9 Reply explicitly disapproving the proposed text without
indicating an alternative text
If the applicant replies to the communication under Rule 71(3) by simply
disapproving of the text proposed for grant, not indicating an alternative text
and not paying any fees or filing the translations of the claims, the following
will apply:(1)

If the text proposed for grant was based on the main request
submitted by the applicant (without any amendments or corrections
proposed by the examining division), the application will be refused,provided that at least one communication in examination proceedings
has been sent (see C-III, 4 and E-IX, 4.1), and the applicant's right tooral proceedings is respected (Art. 116(1)). The basis for the refusal
in this case is the lack of an application text agreed to by theapplicant (Art. 113(2)).

(2)

If amendments or corrections were proposed by the division in theRule 71(3) communication, the applicant's disapproval is interpreted
as a rejection of the proposal and the procedure continues as
described in C-V, 4.6.1.

(3)

If the communication under Rule 71(3) was based on an auxiliary
request, the applicant's disapproval is interpreted as a request tobase the grant on a higher-ranking request. The procedure continues
as described in C-V, 4.6.2 and 4.7.1.1. If it is not clear which higherranking request the applicant wishes to pursue, the examining
division must request that the applicant clarify this in resumed
examination proceedings.

If the applicant first files only the disapproval of the text and then (still within
the Rule 71(3) period) files a request for amendment or correction, this isinterpreted as a desire to proceed with the application as amended orcorrected. The procedure in C-V, 4 applies.
4.10 Amendments/corrections filed in second Rule 71(3) period
In cases where a second Rule 71(3) communication is sent (see C-V, 4.6
and 4.7.2) and the applicant replies within this second Rule 71(3) period bydoing one or more of the following, the procedures explained in C-V, 4.1 to
4.9 apply mutatis mutandis:(i)

filing further amendments or corrections,(ii)

rejecting amendments proposed by the examining division in thesecond Rule 71(3) communication, orMarch 2023

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Part C – Chapter V-13

reverting to a higher-ranking request (where the second Rule 71(3)communication is based on an auxiliary request).

In particular, in such cases the applicant will be required neither to pay thefee for grant and publishing or any claims fees, nor to file translations of theclaims within this second period under Rule 71(3). If the examining divisionagrees to a text (either with or without resumption of examination), a third
communication under Rule 71(3) is then sent.
Furthermore, if the applicant replies to the second Rule 71(3)communication by rejecting amendments proposed by the examining
division in the first Rule 71(3) communication (where these have not beensuperseded), the procedures described in C-V, 4.1 to 4.9 likewise apply
mutatis mutandis (no need to pay fees or file translations, etc.).
In respect of repeated requests for amendments in response to the secondor subsequent Rule 71(3) communication, the division may exercise its
discretion under Rule 137(3) not to admit such amendments (H-II, 2.5.1). If
the division intends not to admit the amendments, it will resume theexamination proceedings, e.g. by summoning the applicant to oralproceedings.
5. Further requests for amendment after approval
The criteria for assessing the admissibility of such amendments are dealt
with in detail in H-II, 2.6. The procedure for dealing with such late-filed
amendments is explained in C-V, 6.

Rule 137(3)6. The examining division resumes examination after approval of thetext
6.1 When does the examining division resume examination after
approval?
Subsequent to the applicant's approval in response to the Rule 71(3)communication (see C-V, 2), the examining division may resume theexamination procedure at any time up to the moment the decision to grantis handed over to the EPO's internal postal service for transmittal to theapplicant (see G 12/91). This will seldom occur, but may be necessary ife.g. the applicant files further prior art which necessitates further
substantive examination, if the examining division becomes aware of very
relevant prior art following observations by third parties under Art. 115, if
the applicant files amendments or corrections (having already approved thetext), or if the examining division becomes aware in some other way ofcircumstances which are such as to cause the subject-matter claimed to fail
to comply with the EPC.
The resumption of examination after approval is subject to the sameconsiderations as where examination is resumed due to amendments filed
in the Rule 71(3) period (see C-V, 4.7.1). The next action issued after
resumption of the examination procedure must however indicate the factthat the proceedings have been resumed as well as the substantive
reasons that led to the resumption of examination. In particular, theapplicant's right to comment (Art. 113(1)), the right to at least one

Rule 71a(2)Part C – Chapter V-14

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March 2023

communication under Art. 94(3) and Rule 71(1) and (2) in examination
proceedings (see C-III, 4) and the right to oral proceedings on request(Art. 116(1)) must be respected.
Rule 137(3)Rule 71(6)The criteria applied in assessing the admissibility of amendments orcorrections filed by the applicant after approval are dealt with in H-II, 2.6.
6.2 A further communication under Rule 71(3)A second Rule 71(3) communication is sent out if the resumed examination
results in a text on the basis of which a patent can be granted (substantive
amendments directed to resolving the issues which gave rise to theresumption of examination are possible).
If the translations of the claims have already been filed (see C-V, 1.3) andthe fees have already been paid (see C-V, 1.2 and 1.4) in reply to aprevious communication under Rule 71(3), e.g. in the case of resumption of
examination after approval (see C-V, 6 and Rule 71(6)), the applicant must
express agreement as to the text to be granted (Rule 71a(1)) within the
non-extendable four-month period mentioned in the further Rule 71(3)communication (e.g. by approving the text and verifying the bibliographic
data, by confirming that grant proceedings can continue based on the
documents on file and/or by stating which translations of the claims alreadyon file are to be used). This also applies if a further Rule 71(3)communication was sent.

Rule 71a(5)6.3 Crediting of fees under Rule 71a(5)If, in response to an invitation under Rule 71(3), the applicant has alreadypaid the fee for grant and publishing or the claims fees, the amount paid
shall be credited if a further such invitation is issued. For more details on
this procedure, see A-X, 11.
7. Correction of errors in the decision to grantUnder certain circumstances, a decision to grant a European patent may becorrected. For more details see H-VI, 3.
8. Further processing
If the applicant overruns the time limit set under Rule 71(3), further
processing may be requested under Art. 121 (see E-VIII, 2). The procedure
to follow is explained in C-V, 3.

Rule 71a(6)9. Refund of the fee for grant and publishing
If the application is refused, withdrawn prior to notification of the decisionon the grant of a European patent or, at that time, deemed to be withdrawn,
the fee for grant and publishing will be refunded (for more details
see A-X, 10.2.5).
10. Publication of the patent specification
The decision to grant contains the date of the mention of the grant of theEuropean patent and is sent to the applicant when the technicalpreparations for printing the patent specification have been completed.

March 2023

Guidelines for Examination in the EPO

As soon as possible after the mention of the grant is published in the
Bulletin, the EPO publishes the patent specification containing thedescription, claims (in the three official languages) and any drawings. The
front page of the published specification shows inter alia the contracting
states which are still designated at the time of grant (or the designation ofwhich has been withdrawn after completion of the technical preparations forprinting). With regard to the form in which the publication takes place, see
the decision of the President of the EPO dated 12 July 2007, Special
edition No. 3, OJ EPO 2007, D.3.

Part C – Chapter V-15

Art. 98
Rule 73
Art. 14(6)Mistakes in the specification of a European patent arising in the course of
its production have no effect on the content of the patent granted. For this,
only the text on which the decision to grant the patent is based is decisive(see H-VI, 4). If necessary, the Office may arrange for correction to bemade public as soon as any mistake in a specification is discovered. This isdone by means of a note in the European Patent Bulletin and publication ofa corrigendum, the sole purpose being to bring the specification into linewith the content of the decision to grant (see Rule 143(2) and the decisionof the President of the EPO dated 14 October 2009, OJ EPO 2009, 598,
Art. 1, point 2).
11. Withdrawal before publication of the patent specification
The specification of the European patent is not published if the application
is withdrawn before termination of the technical preparations for publication.
If after termination of the technical preparations the application is withdrawn
to avoid publication, non-publication cannot be guaranteed. The EPO will,
however, try (in accordance with the principles of J 5/81) to prevent
publication on a case-by-case basis if the stage reached in the publication
procedure permits this reasonably easily. The application may be
withdrawn by means of a signed declaration, which should be unqualified
and unambiguous (see J 11/80). The applicant is bound by an effective
declaration of withdrawal (see J 25/03, J 4/97 and J 10/87) (see also
E-VIII, 8).
12. Certificate
As soon as the European patent specification has been published, the EPO
issues the proprietor with a certificate attesting that the European patenthas been granted to the person named in the certificate. Where there ismore than one proprietor, each of them is issued with a certificate.
Proprietors may request that a certified copy of the certificate with thespecification attached be supplied to them upon payment of an
administrative fee. For further details see the decision of the President of
the EPO dated 16 July 2013, OJ EPO 2013, 416 17 December 2021,
OJ EPO 2021, A94 and the notice from the EPO dated 17 December 2021,
OJ EPO 2021, A95.
13. European Patent Bulletin
If no notice of opposition is recorded in the dossier of the European patent
within nine months of publication of the mention of grant, the patent
proprietor is informed and an appropriate entry is published in theEuropean Patent Bulletin (point 1, Art. 1 of the decision of the President of
the EPO dated 14 October 2009, OJ EPO 2009, 598). If, subsequently, it

Rule 73

Rule 74

Art. 129(a)Part C – Chapter V-16

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March 2023

emerges that an opposition was filed in time, the proprietor is again
informed and a correction is published in the Bulletin.
14. Refusal
A decision to refuse the application cannot be issued without a firstcommunication in examination having been sent (see C-III, 4 and E-IX, 4.1)
or oral proceedings having been held (see C-III, 5). Therefore theexamining division may not refuse the application directly after the reply tothe search opinion under Rule 70a(1) or directly after the reply to the
WO-ISA under Rule 161(1), even if the objections raised in the search
opinion or WO-ISA remain the same and there is no pending request fororal proceedings.
Art. 97(2)Art. 113(1)Rule 111
Art. 109
Art. 111(1) andArt. 111(2)If,despitetheapplicant's
submissions,i.e. amendmentsorcounter-arguments, objections persist after the applicant's reply to the firstcommunication under Art. 94(3) in examination, then a refusal can beissued. If there is a pending request for oral proceedings, oral proceedings
must be held and the decision to refuse will, where appropriate, beannounced at the end of the oral proceedings. Similarly, if summons were
issued as the first action in examination, the decision to refuse will, whereappropriate, be announced at the end of the oral proceedings.
In the event that refusal is contemplated, the examiner should bring theapplication before the other members of the examining division, which may
then decide to refuse the application. In any event, at some stage, theprimary examiner will consult the other members of the examining division
with a view to establishing whether the application should be refused or apatent should be granted. If the division intends to refuse the application, awritten reasoned decision is necessary and this will normally be preparedby the primary examiner (see E-X, 2.3 and E-X, 2.6). In preparing thedecision, the examiner must take care to abide by the general principles set
out in Art. 113(1), i.e. the decision must be based on grounds or evidence
on which the applicant has had the opportunity to comment (see E-X, 1.1
and E-X, 1.2).
In addition, the applicant's attention must be directed to the provisions forappeal laid down in Art. 106 to Art. 108. If oral proceedings take place(see E-III), the decision may be given orally but must subsequently be
notified in writing, the time limit for appeal then running from the date ofsuch notification.

Art. 109

If the applicant appeals against the decision and the examining divisionconsiders, in the light of the applicant's statement, that the appeal isadmissible and well-founded, it should rectify its decision accordingly within
three months after receipt of the statement of grounds. Otherwise, theappeal will be considered by a board of appeal. If a decision to refuse apatent is reversed on appeal, the application may be referred back to theexamining division for further examination. In such a case, the further
examination will normally be entrusted to the examiner who performed theoriginal examination. The examining division is bound by the ratio decidendiof the board of appeal, in so far as the facts are the same.

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Guidelines for Examination in the EPO

15. Decision according to the state of the file
A special case is where the applicant does not file comments oramendments in reply to the examiner's communication but requests a
decision "according to the state of the file" or "on the file as it stands",
meaning that the applicant wishes to close the debate and a decision istaken on the basis of the current status of the application and any
supporting arguments. The decision, which may be appealed, may only bebased on grounds and evidence on which the applicant has had an
opportunity to present comments (Art. 113(1)).
15.1 The request for a decision according to the state of the file
An applicant may file a request for a decision according to the state of thefile at any stage during examination proceedings, provided that at least one
communication in examination has been sent (see also C-V, 15.4). The
request should be explicit and unambiguous, preferably using the wording"according to the state of the file" or "on the file as it stands".
If the request is not clear in this respect, the examiner should solve theambiguity with an enquiry to the applicant.
If, at the time the applicant files a request for a decision according to thestate of the file, a request for oral proceedings is pending, the examining
division will interpret the request for a decision according to the state of thefile as equivalent to an implicit withdrawal of the pending request for oralproceedings by the applicant.
15.2 Decision by means of a standard form
If the applicant has filed an explicit and unambiguous request for a decisionaccording to the state of the file (see C-V, 15.1) in their latest reply, In suchcases, the examiner may be in a position to refuse the application using astandard form referring to the previous communication. In order to comply
with the requirement that such a decision be reasoned (Rule 111(2)), a
number of requirements have to be met:(i)this is only possible where the previous communication must properly
identifies identify the application documents on file, is be wellreasoned and complete with respect to the grounds and the reasonsfor the refusal of the current request and addresses address all thearguments raised by the applicant. A further condition is that(ii)

no new arguments or amendments have been submitted by theapplicant since the previous communication.

(iii)

all objections raised in the previous communication referred to muststill apply for the applicant to be in a position to ascertain the reasons
underlying the decision and ensure compliance with Rule 111(2).

If, in its reply to the last communication from the examining division, theapplicant has submitted new arguments which are at least potentiallyrefutative, these arguments cannot be ignored even if, in the same reply,
the applicant has explicitly requested a decision according to the state of
the file. In this case, the division must consider these freshly presented

Part C – Chapter V-17

Part C – Chapter V-18

Guidelines for Examination in the EPO

March 2023

arguments either by issuing a regular reasoned decision (see C-V, 15.3) orby issuing a further communication (see C-V, 15.4).
Minutes of a consultation do not meet the standards of an Art. 94(3)communication. A decision according to the state of the file by means of astandard form cannot therefore be based on such minutes unless they
contain a full exposition of all the legal and factual reasons for refusing theapplication and set a time limit for reply, as in the case of minutes of aconsultation issued as the first communication in examination (seeC-VII, 2.5).
Examining divisions are not to refer either to the minutes of oralproceedings in decisions by means of a standard form.
Although it is possible by way of exception to refer to more than one
communication in the standard form, the examiner should carefully
consider the requirements of Rule 111(2). In particular, if the different
communications deal with different sets of claims, such that it is not clear
which of the reasons given by the examining division in its communications
might be essential to the decision to refuse, a fully reasoned decision
should be issued instead (see C-V, 15.3).
15.3 Issuing a self-contained decision
If the conditions set out in C-V, 15.2 are not met, it is necessary to issue aself-contained decision to refuse in order to comply with Rule 111(2). Thisis necessary, for example, where the numerous objections raised in theprevious communications with respect to different sets of claims renderunclear the grounds and the reasons for the refusal. This also applies if theapplicant has made further submissions (including amendments) since theprevious communication, where these do not cause the subsequentdecision to be based on grounds or evidence on which the applicant has
not had the opportunity to present comments. In all cases, the requirementsof Art. 113(1) should be carefully considered (see also E-X, 1).
15.4 Issuing a further communication (no refusal)
If it appears that the previous communications were insufficiently reasoned
or incomplete, or if the applicant has filed amendments and/or arguments
since the previous communication, the examiner should carefully consider
Art. 113(1) and Rule 111(2) before issuing a refusal (see E-X, 1). A further
communication may have to be issued with sufficient reasoning, unless oralproceedings are to be held (see E-III, 2), in which case the reasoning would
be given in the summons (Rule 116(1)). In the communication or summons
the applicant should be informed that the request for a decision according
to the state of the file could not be followed.

March 2023

Guidelines for Examination in the EPO

AnnexStandard marks for indicating amendments or corrections by thedivisions
1. Insertion of letters and words
Any insertion to the text made using the electronic tool is made in-line. No
marks need to be put separately in the margins, top or bottom of the page.
In the produced PDF of the "working copy" of the "Druckexemplar", the tool
will insert amendment bars to the right of amendments and indicate
amended pages as such. The tool also adds a pair of insertion signs thatmark the beginning and end of each in-line insertion:
Mark

Explanation
Denotes the beginning of text inserted

Denotes the end of text inserted"No break", "line break" or "paragraph break" signs precede and succeed
the signs above to indicate whether the inserted text should be kept in thesame line or a new line or a paragraph should start before or after theinserted text:
Mark

Explanation
No breaks: inserted text is kept on the same line
(this is the default)
Line break: starts a new line (must be set if needed)¶

Paragraph break: starts a new paragraph (must be
set if needed)

In case of inserting an entire newly-filed page, e.g. a page numbered "1a",the construct [insert page 1a] is used.

Part C – Chapter V-19

March 2023

Guidelines for Examination in the EPO

Part C – Chapter VI-1

Chapter VI – Time limits and acceleration of
examination
1.

Time limits for response to communications from the examiner

1.1 General considerations
The general considerations relating to time limits are set out in E-VIII. The
time limit for response to a communication from the examiner should ingeneral be between two and four months in accordance with Rule 132. The
period to be allowed will be determined by the examiner taking all thefactors relevant to the particular application into account. These include thelanguage normally used by the applicants or their representative; thenumber and nature of the objections raised; the length and technicalcomplexity of the application; the proximity of the EPO to the applicants or,if they have one, their representative; and the distance separating
applicants and representatives.
If the only outstanding objection is the need to amend the description, theexaminer may invite the applicant to amend the description by issuing acommunication under Art. 94(3) with a two-month time limit to reply.
Alternatively, the examiner may consult the applicant informally, e.g. bytelephone, explain the objection and set a one-month time limit
documented in the minutes of the consultation referring to this objection(unless a shorter limit is agreed during the consultation).
This time limit can be extended if the applicant so requests before it expires(see E-VIII, 1.6). Failure to respond to a communication according toArt. 94(3) and Rule 71(1) and (2) in time results in the application being
deemed to be withdrawn. This loss of rights is subject to further processing(see E-VIII, 2).
1.2 Special circumstances
In certain special circumstances the examiner may allow up to six months
for the time limit. The six-month period may be appropriate, for instance, if
the applicant resides a long way from the representative and the languageof the proceedings is not one to which the applicant is accustomed; or if thesubject-matter of the application or the objections raised are exceptionallycomplicated (for more information see E-VIII, 1.2).
The search opinion is not a communication under Art. 94(3).
2. Influencing the speed of examination proceedings – PACE
With a request for accelerated examination under the programme foraccelerated prosecution of European patent applications (PACE), theapplicant can speed up the proceedings at the examination stage (see thenotice from the EPO dated 30 November 2015, OJ EPO 2015, A93). For
further information, see E-VIII, 4.2.

Art. 94(1) and (4)Rule 132

Part C – Chapter VI-2

Rule 70(2)Art. 11(b) RFees
Rule 62(1)Guidelines for Examination in the EPO

March 2023

3. Further ways to accelerate examination
Where applicants file a request for examination before the search report istransmitted to them, they may also dispense with the need to comply with
the invitation pursuant to Rule 70(2), and file a categorical request for
examination whatever the result of the search may be, by which theprocedure can also be accelerated (see the notice from the EPO dated
30 November 2015, OJ EPO 2015, A93). In this case, confirmation thatthey desire to proceed further with their application is deemed to be given
when the search report is transmitted to them, so that in accordance with
Rule 62(1) the search report is not accompanied by a search opinion.
Under these circumstances, if the application is not in order for grant, acommunication under Art. 94(3), and Rule 71(1) and Rule 71(2) istransmitted to the applicant. Own-volition amendments under Rule 137(2)may in that case be submitted by the applicant in reply to thiscommunication (see C-III, 2).
If the application is in order for grant, the subsequent procedure will depend
on whether or not it is possible at that time to carry out the search forconflicting European applications according to Art. 54(3) (see C-IV, 7.1 and
B-XI, 7). If that search can be carried out and assuming that it does not
identify any conflicting applications, then the communication under
Rule 71(3) is transmitted to the applicant. If it cannot yet be carried out,
then the communication from the examining division will be postponed until
the said search is completed. If the European patent application issubsequently withdrawn before the substantive examination has begun, theexamination fee will be refunded in full. If substantive examination has
already begun, withdrawal of the application may still result in a refund of
50% of the examination fee in the cases laid down in Art. 11(b) RFees (formore details see A-VI, 2.5 and OJ EPO 2016, A49).
The applicant can also accelerate the processing of Euro-PCT applications
by waiving the right to the communication under Rule 161 and Rule 162(see E-IX, 3.1) or by filing an explicit request for early processing of aninternational application by the EPO as designated/elected Office (seeE-IX, 2.8).

March 2023

Guidelines for Examination in the EPO

Chapter VII – Other procedures in examination
1. General remark
In this Chapter the term "applicant" is intended to mean "representative"
where the applicant has appointed one. In this case, the procedures
described in this Chapter should be conducted with that representative.
2.

Consultations

2.1 General
There are instances where personal consultation with the applicant can be
helpful in advancing the procedure. Such consultation will preferably beheld by videoconference, thereby allowing, where necessary, thepresentation of documents, the participation of other persons and theverification of the identity of the person(s) attending (see C-VII, 2.2).
However, consultations can also be held by telephone at the request of theapplicant, if the situation so requires.
The consultation may take place at the initiative of either the applicant or
the examiner or formalities officer. However, the decision on whether it is tobe held is at the discretion of the formalities officer or examiner. A
consultation request from the applicant should usually be granted unlessthe nature of the issue to be discussed requires formal proceedings or theexaminer believes that no useful purpose would be served by such a
discussion. For example, where substantial differences of opinion exist in
examination, written procedure or oral proceedings are normally more
appropriate.
Typical situations in which applicants may want a consultation are:(i)to enquire about a procedural issue such as how to proceed inparticular circumstances (note however that the examiner is notnormally in charge of formal issues such as extensions of time limits
and payment of fees); for enquiries as to the processing of files, see
E-VIII, 7;(ii)

where there appears to be an error in the communication or in theapplicant's reply which makes it difficult for the applicant or theexaminer to prepare the next reply/communication (e.g. wrong
document cited, communication based on wrong set of claims, newsubmissions referred to but not included).

Typical situations in which examiners may consider it appropriate to consult
the applicant are:(iii)

where it appears that there is confusion about certain points indispute, e.g. the applicant seems to have misunderstood thearguments of the examiner or vice versa, so that the written
procedure does not lead anywhere;(iv)

where the application seems to be ready for grant except that theexaminer needs to clarify some minor issues with the applicant orPart C – Chapter VII-1

Part C – Chapter VII-2

Guidelines for Examination in the EPO

March 2023

would like to discuss a proposal for amendments to overcome theobjections raised;(v)

where amendments or corrections requested by the applicant after
the Rule 71(3) communication have been submitted but the examiner
cannot agree to the request.

With regard to consultations in response to the EESR before the application
has entered the examination phase, see B-XI, 8.
Telephone conversations held for the sole purpose of arranging a date for a
consultation or oral proceedings do not in and of themselves constitute a
consultation within the meaning of this section. Therefore, no minutes need
to be prepared (C-VII, 2.4) unless so required where the applicant agrees
to a notice period of less than two months before oral proceedings (E-III, 6).
2.2 Persons participating in the consultation
The consulted person must be a person entitled to act for the applicant
before the EPO. If the applicant is a natural or legal person having either
residence or place of business in a contracting state, consultations may
only be conducted with:(a)

the applicant (see A-VIII, 1.1),(b)a professional representative (see A-VIII, 1.1) or(c)a duly authorised employee of the applicant (see A-VIII, 1.2) or, tothe extent defined in Art. 134(8), a legal practitioner (see A-VIII, 1.4).

Regarding (c), see also A-VIII, 1.5.
If the applicant is a natural or legal person having neither residence nor
place of business in a contracting state, consultations may only be
conducted with:–a professional representative (see A-VIII, 1.1) or–a legal practitioner (see A-VIII, 1.4 and A-VIII, 1.5).

The person entitled to act before the EPO, i.e. one of the persons listed
above, may be accompanied by other persons, such as the inventor, a
non-European representative or an employee of the applicant. On requestof the person entitled to act, such other persons may be allowed to takepart in the consultation if their participation is relevant to the proceedings.
Where the consultation is held as a videoconference, these persons mayconnect from a different location than the person entitled to act before the
EPO.
If there is any doubt as to the identity of any of the persons participating in
the consultation or if the consulted person so requests, the examiner orformalities officer will check the identity of the person or persons
concerned. This can be done by inviting them to show an official identity

March 2023

Guidelines for Examination in the EPO

document to the camera in the case of a videoconference or to send a copyof the document by email. For data protection reasons, the copy of theidentity document sent by email will not be included in the file (see also
E-III, 8.3.1).
From the examining division, only the examiner dealing with the case will
normally be present. However, there is no objection to one or even both ofthe other members of the examining division participating in the
consultation.
When the inventor or an expert is attending the consultation, it isrecommended that at least the chair of the examining division should also
attend. However, the applicant or representative does not have the right todemand that additional members of the examining division be present. If arequest is made for a consultation with all three members, it will usually beadvisable to appoint oral proceedings instead.
2.3 Informal nature of consultations
A consultation is not a formal procedure (for formal oral proceedings before
the examining division, see E-III), and the character of the minutes of theconsultation depends upon the nature of the matters under discussion. Itshould always be made clear to the applicant that any agreement reachedmust ultimately be subject to the views of the other members of theexamining division. A decision cannot be taken during a consultation.
Oral statements made during a consultation must be confirmed in writing inorder to be procedurally effective. Indeed, such statements are not normallylegally binding. Such a statement cannot, for instance, be effective to meeta time limit (see, however, C-VII, 2.4). For the purpose of the European
grant procedure, except in oral proceedings, only written statements are
effective and only from the date on which they are received by the Office.
Oral statements substantively addressing the objections raised in an earlier
communication may however lead the examiner to cancel any running time
limit (see C-VII, 2.4 (iv)). Furthermore, documents, validly submitted byemail during the consultation (see C-VII, 3) may indeed be effective to meeta running time limit (see C-IV, 3).
If a fresh objection of substance is raised during a consultation and no
amendment to meet it is agreed at the time, the objection must be
confirmed by a communication of the minutes thereof, giving the applicant a
fresh period within which to reply (see C-VII, 2.4(iii)).
2.4 Minutes of a consultation
The minutes of a consultation should list the participants, summarise themain results and state any oral requests. They must be signed by theexaminer. Documents filed by email during a consultation (see C-VII, 3),such as new claims or an amended description, must be attached to theminutes.

Part C – Chapter VII-3

Part C – Chapter VII-4

Guidelines for Examination in the EPO

March 2023

The minutes should always indicate whether the next action is due to comefrom the applicant or the examiner. In this regard, the minutes when
despatched to the applicant may:(i)

be issued for information only, in which case if a time limit is still
pending, it should be observed; if no time limit is pending, no action
is required from the applicant;(ii)

be issued such as to extend a pending time limit, in which case theapplicant must reply within that extended time limit, or(iii)

be issued such as to set a new time limit for response, in which casethe applicant must reply within this new time limit;(iv)

be issued such as to cancel a pending time limit;(v)

be issued such as to reflect the decision to cancel scheduled oralproceedings. This may be the case, for instance, when an agreement
on an allowable set of claims can be reached during the consultation.
Cancellation of the oral proceedings is communicated to theapplicant orally during the consultation and noted in the minutes. No
separate communication regarding the cancellation of the oralproceedings is issued.

Where the consultation is concerned with the clarification of obscurities, theresolution of uncertainties, or putting the application in order by clearing up
a number of minor points, it will usually be sufficient if the examiner makes
a note in the minutes of the matters discussed and the conclusions reachedor amendments agreed unless a time limit is set for reply (see below).
With regard to the discussion of weightier matters, such as questions ofnovelty, inventive step, unity or whether the amendment introduces added
subject-matter, a fuller note of the matters discussed is made in theminutes. In particular, the minutes will specify in concrete terms the topics
discussed, together with any amendments agreed, any opposing views, thereasons for any change of opinion and any conclusions drawn unless these
are clear from other documents in the dossier. In particular, the reasons forany amendments required by the examiner should be clearly indicated.
The use of indefinite, ambiguous or universally applicable statements inminutes should be avoided. For example, statements such as"Amendments to the claims were proposed to take account of the prior art
cited in the search report" are of no assistance to members of the public,
other members of the division, or indeed the primary examiner at laterstages of the procedure. The same applies to conclusions worded in a
generalised manner.
If the minutes are sent as a first communication in examination, see
C-VII, 2.5.
The minutes are placed in the dossier, made available for file inspection(including all documents filed by an applicant or representative during theMarch 2023

Guidelines for Examination in the EPO

consultation) and sent to the applicants or their representative, even where
the consultation merely changes/confirms/cancels the time/date of a
proposed consultation.
However, by way of exception, consultations relating to amendments
agreed immediately preceding completion of the communication according
to Rule 71(3) may be reflected in that communication, provided that there isno uncertainty for the public as to what was agreed. The amendments mustbe identified as exactly as possible.
2.5 Minutes as the first communication in examination
A consultation may be used as the first action in examination provided that:–minutes are issued;–

the minutes present the matters discussed with the same level of
information and structure as an Art. 94(3) communication;–

the minutes are issued with a time limit for reply not shorter than fourmonths unless agreed otherwise with the applicant.

Matters (e.g. objections or reasoning) not discussed during theconversation itself may be included in such minutes. However, it must be
clear in the minutes that they were not discussed during the consultation.
If the above criteria are met, minutes issued as the first action in
examination replace the first communication under Art. 94(3) andRule 71(1), (2) (see C-III, 4).
Furthermore, examiners may inform the representative in a call if theexamining division is considering issuing summons to oral proceedings as
the first action in examination (see C-III, 5). Instead of issuing separate
minutes, a remark regarding the call may be included in the summons. If,
however, the examining division decides not to issue summons at thatstage, minutes must be issued.
3. Use of email
At present, email is an admissible filing means only for the submission ofsubsequently filed documents as referred to in Rule 50 EPC duringconsultations and during oral proceedings held by videoconference (fordetails, in particular on signature and format of attachments, see thedecision of the President of the EPO dated 13 May 2020, OJ EPO 2020,
A71 and E-III, 8.5.2).
Other than in the above-mentioned cases, email has no legal effect inproceedings under the EPC and thus cannot be used to validly perform any
procedural act and, in particular, cannot be used to comply with time limits(see OJ EPO 2000, 458 and A-VIII, 2.5). If, for instance, shortly before oralproceedings, the applicant would like to submit new requests and/or
amended documents, this should be done by electronic filing or fax.
Experience shows that documents submitted via electronic filing arenormally visible in the electronic file on the same day.

Part C – Chapter VII-5

Part C – Chapter VII-6

Guidelines for Examination in the EPO

March 2023

Examples of cases where exchanges by email may be useful are:(i)arranging a date for a consultation(ii)

if during a consultation possible amendments to claims are being
discussed the applicant might want to communicate these
immediately without submitting them formally(iii)

shortly before oral proceedings: sending an electronic copy ofamended claims in addition to the official submission made e.g. byfax; this would ensure that the examining division gets the
documents well in time for preparation of the oral proceedings.

Emails cannot replace an official communication under Art. 94(3).
3.1 Initiation of exchanges by email
Except in cases where it is a valid filing means (see C-VII, 3 andE-III, 8.5.2), neither the examiner nor the applicant should use email
without having previously agreed to this, e.g. during a consultation. There
must be mutual agreement between the examiner and the applicant to such
use if the content of the email goes beyond the mere arranging of a date fora consultation or oral proceedings. Furthermore, the mere fact that an email
address is indicated on a letter head does not mean that the examiner cansimply use such an email address for file-related topics.
If, on the other hand, an examiner receives an email from an applicant
concerning procedural requests or addressing any substantive issues
without previous agreement, such an email cannot simply be ignored but
must be dealt with, ensuring that the content is put in the official file (seealso T 599/06); it is recommended that such an email be replied to with theclear message that email is not an official means of communication andthat any requests should be filed by permitted means (see A-II, 1.1,
A-II, 1.2 and A-II, 1.3).
3.2 Confidentiality
For non-published applications, confidentiality issues should be carefully
considered and substantive matters should not form part of any email
correspondence concerning such applications.
3.3 Inclusion in the file of any email exchange
If email is used, it is essential to ensure that the exchange of emails is
properly documented in the file. This should be done by sending the resultof the consultation to the applicant for information with no time limit. This
ensures that the exchange is included in the public part of the file and thatthe applicant is aware of this.
Submissions filed by email during a consultation or during oral proceedings
held as a videoconference, including all attachments, should be annexed tothe minutes (see E-III, 8.5.2 for details).

March 2023

4.

Guidelines for Examination in the EPO

Taking of evidence

4.1 General remark
The general considerations relating to the taking of evidence are set out in
E-IV. This section deals only with the kind of evidence most likely to arise in
pre-grant proceedings, viz. written evidence.
4.2 Producing evidence
An examining division would not, as a general rule, require evidence to be
produced. The primary function of the examiner in proceedings before grant
is to point out to the applicant any ways in which the application does notmeet the requirements of the EPC. If the applicant does not accept the viewof the examiner, then it is for the applicants to decide whether they wish
wishes to produce evidence in support of their case and, if so, what form
that evidence should take. The examining division should afford theapplicant a reasonable opportunity of producing any evidence which islikely to be relevant.
However, this opportunity should not be given where the examining division
is convinced that no useful purpose would be served by it, or that undue
delay would result.
4.3 Written evidence
Written evidence could include the supply of information, or the productionof a document or of a sworn statement. To take some examples:
To rebut an allegation by the examiner of lack of inventive step, applicantsmight supply information as to the technical advantages of the invention.
Again, they might produce a sworn statement, either from themselves orfrom an independent witness, purporting to show that workers in the art
have been trying for a long time unsuccessfully to solve the problem withwhich the invention is concerned, or that the invention is a completely new
departure in the relevant art.
5. Oral proceedings
If a request for oral proceedings, even conditional, was filed before theexamining division became responsible for the application (see C-II, 1), thedivision must honour the request, even if it was not repeated in
examination.
On dealing with new requests filed in reply to a summons to oralproceedings, see C-IV, 8.
As a rule, oral proceedings in examination proceedings are held byvideoconference unless the direct taking of evidence is required or if there
are other serious reasons for not doing so, e.g. where an impediment
prevents an applicant or representative from participating in oralproceedings held by videoconference. Sweeping objections against thereliability of videoconferencing technology or the non-availability ofvideoconferencing equipment will, as a rule, not qualify as serious reasonsin this regard. Equally, the need to consider written evidence will not qualify
as a serious reason (see E-III, 1.3 E-III, 2.2, OJ EPO 2020, A134 and A40).

Part C – Chapter VII-7

Part C – Chapter VII-8

Guidelines for Examination in the EPO

March 2023

The general considerations relating to oral proceedings are set out in E-III.
6. Examination of observations by third parties
The general considerations relating to observations from third parties are
set out in E-VI, 3.

March 2023

Guidelines for Examination in the EPO

Part C – Chapter VIII-1

Chapter VIII – Work within the examining
division
1. General remarks
An examining division will normally consist of three technical examiners.
However, within the examining division made responsible for theapplication, one member (the primary examiner) will, as a general rule, be
entrusted to carry out all the work up to the point of a decision to grant apatent or refuse the application. This means that this examiner is entrusted
to act on behalf of the examining division in all communications with theapplicant up to that point, but the primary examiner may confer informallywith the other members of the division at any time if a special point of doubt
or difficulty arises. Where reference is made in this Part C of the Guidelines
to the "examiner", this normally means the primary examiner, and it should
be understood that this primary examiner is always acting in the name ofthe examining division. This examiner is normally the examiner who drafted
the search report.
As stated above, the examiner may seek the advice of other members of
the examining division, if necessary, at any stage in the examination.
However, a point will be reached when it becomes appropriate for theexaminer to refer the case formally to the other members of the examining
division. This will arise if the examiner considers the case is in order toproceed to grant or, alternatively, where there seems no possibility ofamendment which would overcome his or her objections or where theapplicant has not overcome these objections, and the examiner considers
the case is in order to proceed to refusal. There are also othercircumstances in which reference to the examining division is appropriate,e.g. oral proceedings may be suggested by the examiner or requested by
the applicant because an impasse has been reached. In considering
whether to refer the application to the division, the examiner should be
guided by the principle stated in C-IV, 3.
Primary examiners should also bear in mind that when they issue a
communication they do so in the name of the division, and applicants areentitled to assume that if the examiner had doubts as to the views of therest of the division he or she would have discussed the matter with them
beforehand.
As soon as the application has passed to the examining division under
Rule 10, that division will have ultimate responsibility, but formal matterswill normally be dealt with by a formalities officer (see the decision of the
President of the EPO dated 12 December 2013, OJ EPO 2014, A6;
OJ EPO 2015, A104). Examiners should not spend time checking the work
done by the Receiving Section or the formalities officer, but if they believe aformalities report is incorrect or incomplete they should refer the application
to the formalities officer for further consideration.
If the specific circumstances (e.g. sickness) so require, an application may
be reallocated to another examiner/examining division. The director is
responsible for deciding whether the dossier is to be fully reallocated to aArt. 18(2)Part C – Chapter VIII-2

Guidelines for Examination in the EPO

March 2023

new examining division or whether a single member of the division is to be
replaced.
2. Recommendation to grantIf examiners considers that the application satisfies the requirements of the
EPC and is thus in order to proceed to grant, they should make a brief
written report (the "votum"). As a general rule, it will be appropriate in thisreport for the examiner to give the reasons why, in their opinion, thesubject-matter as claimed in the application is not obvious having regard to
the state of the art. They should normally comment on the document
reflecting the nearest prior art and the features of the claimed invention
which make it patentable, although there may be exceptional
circumstances where this is not necessary, e.g. where patentability isbased on a surprising effect. They should also indicate how any apparently
obscure but important points have ultimately been clarified, and if there are
any borderline questions which the examiner has resolved in favour of theapplicant, they should draw attention specifically to these.
3. Recommendation to refuse
When referring to the examining division an application which is not in orderfor grant of a patent, the examiner should confer with the other members ofthe division, bringing to their attention the points at issue, summarising thecase history to the extent necessary to enable the other members to obtaina quick grasp of the essential facts, and recommending the action to betaken, e.g. refusal, or grant conditional upon certain further amendments.
As the other members will need to study the case themselves, there is noneed for a detailed exposition. It will be useful, however, to draw attention
to any unusual features or to points not readily apparent from the
documents themselves. If the examiner recommends refusal and the issue
seems clear-cut, he or she may already provide a draft reasoned decision
for issue by the examining division (see C-V, 14); if the issue is notclear-cut, the drafting of the reasoned decision should be deferred until thedivision has discussed the case.

Art. 18(2)4. Tasks of the other members of the examining division
When an application is referred to the other members of the division, they
will first consider the case individually and each will indicate his or her
opinion on the course of action to be taken. If there is complete agreementwith the recommendation of the primary examiner, no further consultationof the division will be necessary. When further action is needed, the primary
examiner will be entrusted with the work. If, however, there is not complete
agreement immediately with the primary examiner, or at least one memberof the division wishes to discuss the case further, further consultation of thedivision will be arranged. In such discussions, the division should try toreach a unanimous opinion, but where this seems unlikely, the difference of
opinion must be resolved by voting. When the division is enlarged to four
members (see C-VIII, 7), the chair has a casting vote should this benecessary.
The other members of the examining division should bear in mind that theirfunction generally is not to perform a complete re-examination of theapplication. If, following a discussion, the conclusions of the examinerMarch 2023

Guidelines for Examination in the EPO

Part C – Chapter VIII-3

entrusted with the examination are generally considered to be reasonable,
the other members should accept them.
5. Further communication with the applicant
If, in the opinion of the examining division, the possibility exists of amending
the application to bring it into a form which meets the requirements of the
EPC, then the primary examiner should be entrusted with the task of
informing the applicant that the examining division is of the opinion that theapplication should be refused on certain grounds unless satisfactoryamendments are submitted within a stated period (see C-VI, 1). If, within
the time limit, satisfactory amendments are made, the examiner will thenreport back to the examining division recommending that the application
should proceed to grant. If not, he or she should report back recommending
refusal.
6. Decision
Any decision is issued by the examining division as a whole and not by anindividual examiner. All members, therefore, sign the written decisionirrespective of whether or not it was a unanimous one. If, exceptionally, one
or more division members cannot sign the decision, one of the othermembers, normally the chair, may sign it on their behalf, subject to theconditions defined in E-X, 2.3. A seal may replace the signature.
7. Enlargement of the examining division; consultation of a legallyqualified examiner
If the examining division considers that the nature of the decision so
requires, it is enlarged by the addition of a legally qualified examiner. The
decision to enlarge or to set aside an enlargement lies within the discretionof the examining division.
The participation of a legally qualified examiner or at least internal
consultation of Directorate Patent Law, the department responsible forproviding legally qualified members for examining and opposition divisions,will be required if a difficult legal question arises which has not yet beensolved by the Guidelines or by jurisprudence.
The applicant is informed of the enlargement in the communication, theannex to the summons or the decision following enlargement, as
appropriate. Once the examining division has been enlarged,
communications or decisions must be signed by all four members of theexamining division.
If the examining division has been enlarged by the addition of a legallyqualified examiner, it consists of four members. In this case, in the event ofparity of votes, the vote of the chair will be decisive. As a rule, thisenlargement of the examining division will be required in cases where
evidence has to be taken according to Rule 117 (including the giving ofevidence by witnesses – see E-IV). The addition of a legally qualified
examiner is to be considered also in the case of oral proceedings. Suchenlargement will also be necessary in cases involving technical opinions(Art. 25 – see E-XIII, 3.1).

Rule 113

Art. 18(2)Part C – Chapter VIII-4

Guidelines for Examination in the EPO

March 2023

Where an examining division has been enlarged pursuant to Art. 18(2) but
the case is nevertheless decided in a three-member composition, there
should be clear evidence on the public file that a decision to set aside
enlargement was taken by the examining division in its four-member
composition prior to the final decision.
Therefore, if the examining division considers that the enlargement is nolonger necessary, it will set aside the enlargement. This decision is notseparately appealable. The applicant is informed about the setting aside ofthe enlargement in the communication, the annex to the summons or thedecision following the setting aside of the enlargement.
Depending on the nature of the problem, as an alternative to theenlargement of the examining division, internal consultation of a legallyqualified examiner in Directorate Patent Law may take place. For instance,
doubts may arise whether an application concerns an invention within themeaning of Art. 52(2) or whether the claimed invention is excluded frompatentability by virtue of Art. 53. Consultation of a legally qualified examiner
may also be appropriate in cases where legal considerations are
predominant in respect to a decision, as in proceedings following a request
for re-establishment of rights according to Art. 122. Formalities officers may
also consult Directorate Patent Law in cases within the scope of the duties
transferred to them according to Rule 11(3) (see the decision of the
President of the EPO dated 12 December 2013, OJ EPO 2014, A6).

March 2023

Guidelines for Examination in the EPO

Part C – Chapter IX-1

Chapter IX – Special applications
1.

Divisional applications (see also A-IV, 1)

1.1 General remarks
Subsequent to the filing of a European application or upon entry into theEuropean phase of a Euro-PCT application, a divisional application may be
filed. The divisional application is accorded the same date of filing as theparent application and has the benefit of any right of priority of the parent
application in respect of the subject-matter contained in the divisional
application. However, the parent application must be pending when adivisional application is filed (A-IV, 1.1.1). A European application may giverise to more than one divisional application. A divisional application may
itself give rise to one or more divisional applications.

Art. 76(1)Divisional applications are to be treated in the same manner as ordinary
applications and subject to the same requirements as these unless specificprovisions of the EPC, in particular Art. 76 or Rule 36, require something
different (G 1/05, G 1/06).
Furthermore, as soon as the requirements set forth in Rule 36 andArt. 76(1) are fulfilled, the proceedings for grant of a divisional application
become separate and independent from the proceedings concerning theparent application (G 4/98). Pending opposition or appeal proceedings
concerning the parent application (or any other member of that family of
applications) are not a reason to adjourn the examination of a divisional
application, neither by the EPO of its own motion nor upon request.
Reasons for a stay or interruption of proceedings are set out in E-VII, 1 to
E-VII, 3.
1.2 Voluntary and mandatory division
Applicants may file a divisional application of their own volition (voluntary
division). The most common reason, however, for filing a divisional
application is to meet an objection under Art. 82 due to lack of unity of
invention (mandatory division). If the examiner raises an objection due tolack of unity, applicants are allowed a period (see C-VI, 1) in which to limit
their application to a single invention. The limitation of the parent
application has to be clear and unconditional. The communication inviting
the applicant to limit the application due to lack of unity should therefore
include a reference to the fact that if the application is not limited within theset time limit the application may be refused.
1.3 Abandonment of subject-matter
The mere deletion of subject-matter in the parent application is notprejudicial to the later filing of a divisional application. When deleting
subject-matter, the applicant should, however, avoid any statements which
could be interpreted as abandonment with substantive effect, thereby
impeding the valid filing of a divisional application for that subject-matter(see also H-III, 2.5, last paragraph).

Art. 82

Part C – Chapter IX-2

Art. 76(1)Guidelines for Examination in the EPO

March 2023

1.4 Examination of a divisional application
The substantive examination of a divisional application should in principle
be carried out as for any other application but the following special points
need to be considered (see also C-III, 5). The claims of a divisional
application need not be limited to subject-matter already claimed in claimsof the parent application. Furthermore, no abuse of the system of divisional
applications can be identified in the mere fact that the claims of theapplication on which the examining division had then to decide had abroader scope than the claims granted in relation with the parent
application (see T 422/07).
However, under Art. 76(1), the subject-matter may not extend beyond thecontent of the parent application as filed. If a divisional application as filed
contains subject-matter additional to that contained in the parent application
as filed, it can be amended later in order that its subject-matter no longer
extends beyond the earlier content, even at a time when the earlier
application is no longer pending (see G 1/05). If the applicant is unwilling to
remedy the defect by removal of that additional subject-matter, thedivisional application must be refused under Art. 97(2) due tonon-compliance with Art. 76(1).
It cannot be converted into an independent application taking its own filingdate. Moreover, a further divisional application for this additional
subject-matter should also be refused under Art. 97(2) due tonon-compliance with Art. 76(1).

Art. 123(2)Amendments made to a divisional application subsequent to its filing mustcomply with the requirements of Art. 123(2), i.e. they may not extend thesubject-matter beyond the content of the divisional application as filed(see G 1/05 and T 873/94). If those amendments have not been identified
and/or their basis in the application as filed not indicated by the applicant(see H-III, 2.1) and the application is one of those mentioned in H-III, 2.1.4,
the examining division may send a communication according toRule 137(4) requesting the applicant to provide this information(see H-III, 2.1.1).
If the subject-matter of a divisional application is restricted to only a part ofthe subject-matter claimed in the parent application, this part of thesubject-matter must be directly and unambiguously derivable from theparent application as being a separate part or entity, i.e. one which caneven be used outside the context of the invention of the parent application(see T 545/92).
In the case of a sequence of applications consisting of a root (originating)application followed by divisional applications, each divided from its
predecessor (see A-IV, 1.1.2), it is a necessary and sufficient condition fora divisional application of that sequence to comply with Art. 76(1), second
sentence, that anything disclosed in that divisional application be directly
and unambiguously derivable from what is disclosed in each of thepreceding applications as filed (see G 1/06).

March 2023

Guidelines for Examination in the EPO

Part C – Chapter IX-3

1.5 Description and drawings
The description and drawings of the parent application and the or eachdivisional application should in principle be confined to matter which isrelevant to the invention claimed in that application. However, amendmentof the description should be required only where it is absolutely necessary.
Thus, the repetition in a divisional application of matter in the parent
application need not be objected to unless it is clearly unrelated to or
inconsistent with the invention claimed in the divisional application. As forthe matter of cross-references, there is no need for the examiner to checkin the description since, under present practice, cross-references arealways made between the parent and divisional applications. These appear
on the front page of the respective application and patent published after
receipt of the divisional application unless the technical preparations for
publication have already been completed.
1.6 Claims
The parent and divisional applications may not claim the same
subject-matter, even in different words (for further information,
see G-IV, 5.4). The difference between the claimed subject-matter of thetwo applications must be clearly distinguishable. As a general rule,
however, one application may claim its own subject-matter in combination
with that of the other application. In other words, if the parent and divisional
applications claim separate and distinct elements A and B respectively
which function in combination, one of the two applications may also include
a claim for A plus B.
2.

Applications resulting from a decision under Art. 61

2.1 General remarks
In certain circumstances, before a patent has been granted on a particularapplication, it may be adjudged as a result of a final decision of a national
court that a person other than the applicant is entitled to the grant of apatent thereon. In this event this third party may either:(i)prosecute the application as their own application in place of theapplicant;Art. 61(1)(a)(ii)

file a new European patent application in respect of the same
invention; orArt. 61(1)(b)(iii)

request that the application be refused.

Art. 61(1)(c)If the first of these options is adopted, the third party becomes the applicant
in place of the former applicant and the prosecution of the application iscontinued from the position at which it was interrupted (see also A-IV, 2).
If, however, the third party files a new application under Art. 61(1)(b), theprovisions of Art. 76(1) apply to this new application mutatis mutandis. Thismeans that the new application is treated as though it were a divisional
application i.e. it takes the date of filing and the benefit of any priority rightof the original application (see also A-IV, 1.2). The examiner must therefore
ensure that the subject-matter content of the new application does not

Art. 61(1) and (2)Rule 17(1)Part C – Chapter IX-4

Guidelines for Examination in the EPO

March 2023

extend beyond the content of the original application as filed. The original
application is deemed to be withdrawn on the date of filing of the new
application for the designated states concerned.
2.2 Original application no longer pending
In cases where the original application has been withdrawn, refused ordeemed to be withdrawn and is thus no longer pending, Art. 61(1)(b) isapplicable, thus allowing the third party to still file a new European patentapplication in respect of the same invention (see G 3/92).

Rule 18(1)Rule 18(2)2.3 Partial entitlement
If, by a final decision, it is adjudged that a third party is entitled to the grantof a European patent in respect of only part of the matter disclosed in theEuropean patent application, then the foregoing considerations apply only
to that part. In such a case, option (i) mentioned in C-IX, 2.1 is not open to
the third party and, regarding option C-IX, 2.1(ii), the new application must
be confined to that part of the original subject-matter to which the third party
has become entitled. Similarly, the original application must, for thedesignated states concerned, be confined to the subject-matter to which
the original applicant remains entitled. The new application and theamended original application will stand in a relationship to each othersimilar to that pertaining between two divisional applications, and they will
each stand in a relationship to the original application similar to that inwhich divisional applications stand in relation to the application from which
they are divided. The guidance set out in C-IX, 1.4, 1.5 and 1.6 is therefore
applicable to this situation.
2.4 Entitlement for certain designated states only
Where the final decision on entitlement applies only to some of thedesignated States, the original application may contain different claims,
description and drawings for those states compared with the others(see H-III, 4.1, last paragraph, and 4.3).
If the sole result of the application of Art. 61(1) is to divide the right to the
grant between the original applicant and the third party so that each may
apply for the entire subject-matter for different designated states, eachapplication should be examined in the normal way without regard to theother, with the proviso that the subject-matter of each application must notextend beyond that of the original application.
3. Applications where a reservation has been entered in accordancewith Art. 167(2)(a) EPC 1973
See H-III, 4.4.
4. International applications (Euro-PCT applications)
For more details on this topic, see E-IX.

Part D
Guidelines for Opposition and
Limitation/Revocation
Procedures

March 2023

Part D – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – General remarks

I-1

1.

The meaning of opposition

I-1

2.

Opposition after surrender or lapse

I-1

3.

Territorial effect of the opposition

I-1

4.

Entitlement to oppose

I-1

5.

Intervention of the assumed infringer

I-2

6.

Parties to opposition proceedings

I-2

7.

Representation

I-3

8.

Information to the public

I-3

Chapter II – The opposition division

II-1

1.

Administrative structure

II-1

2.

Composition

II-1

2.1

Technically qualified examiners

II-1

2.2

Legally qualified examiners

II-1

2.3

Chair

II-1

3.

Allocation of duties and appointment of membersof the opposition division

II-1

4.

Tasks of the opposition divisions

II-1

4.1

Examination of oppositions

II-1

4.2

Decision concerning the awarding of costs by the
opposition division

II-1

4.3

Ancillary proceedings

II-2

5.

Allocation of tasks to members

II-2

6.

Duties and powers of members

II-3

7.

Allocation of individual duties

II-3

Part D – Contents b

Guidelines for Examination in the EPO

March 2023

Chapter III – Opposition

III-1

1.

Time allowed for filing notice of opposition

III-1

2.

Opposition fee

III-1

3.

Submission in writing

III-1

3.1

Form of the opposition

III-1

3.2

Notices of opposition filed electronically

III-1

3.3

Notices of opposition filed by fax

III-1

3.4

Signature of the notice of opposition

III-1

4.

Derogations from language requirements

III-2

5.

Grounds for opposition

III-2

6.

Content of the notice of opposition

III-3

Chapter IV – Procedure up to substantive
examination

IV-1

1.

1.1

1.2
1.2.1
1.2.2
1.2.2.1
1.2.2.2
1.3
1.3.1

1.3.2

1.3.3

Examination for deficiencies in the notice of
opposition and communications from theformalities officer arising from this examination

IV-1

Forwarding of the notice of opposition to theformalities officer

IV-1

Examination for deficiencies in the notice of
opposition
Deficiencies which, if not remedied, lead to the
opposition being deemed not to have been filed
Deficiencies which, if not remedied, lead to the
opposition being rejected as inadmissible
Deficiencies under Rule 77(1)Deficiencies under Rule 77(2)Issue of communications by the formalities officer asa result of examination for deficiencies
Communication in the event of deficiencies as
described in D-IV, 1.2.1 which, if not remedied, willlead to the opposition being deemed not to havebeen filed
Communication in the event of deficiencies as
described in D-IV, 1.2.2 which, if not remedied, willlead to rejection of the opposition as inadmissible
Extent of the formalities officer's obligation to issue
the above communications

IV-1
IV-1
IV-2
IV-2
IV-5

IV-6

IV-6

IV-6
IV-6

March 2023

1.4
1.4.1

1.4.2

1.5

Part D – Contents c

Guidelines for Examination in the EPO

Subsequent procedure in the event of deficiencies
which may no longer be remedied
Deficiencies which may no longer be remedied, as aresult of which the opposition is deemed not to havebeen filed
Deficiencies which may no longer be remedied inaccordance with Rule 77(1) and (2), resulting in the
opposition being rejected as inadmissible

IV-7

IV-7

IV-7

Notifications to and observations by the patent
proprietor

IV-8

1.6

Subsequent procedure

IV-8

2.

Activity of the opposition division

IV-8

3.

Rejection of the opposition as inadmissible by
the opposition division, the patent proprietor not
being a party

IV-8

Termination of opposition proceedings in theevent of inadmissible opposition

IV-9

5.

Preparation of substantive examination

IV-9

5.1

Inadmissibility at a later stage

IV-9

5.2

Invitation to the patent proprietor to submit comments
and communication of opposition to the other parties
concerned by the formalities officer
IV-10

5.3

Filing of amended documents in reply to the notice of
opposition
IV-10

5.4

Communication of observations from one of theparties to the other parties

IV-11

Decision concerning the admissibility of an
opposition, the patent proprietor being a party

IV-11

Examination of the admissibility of an intervention
and preparations in the event of an intervention

IV-12

4.

5.5

5.6

Chapter V – Substantive examination of
opposition

V-1

1.

Beginning of the examination of the opposition

V-1

2.

Extent of the examination

V-1

2.1

Extent to which the patent is opposed

V-1

2.2

Examination of the grounds for opposition

V-1

Part D – Contents d

Guidelines for Examination in the EPO

March 2023

3.

Non-patentability pursuant to Art. 52 to 57

V-3

4.

Insufficient disclosure of the invention

V-3

5.

Clarity of claims

V-3

6.

Subject-matter of the European patent extending
beyond the original disclosure

V-4

6.1

Basis of this ground for opposition

V-4

6.2

Distinction between allowable and unallowable
amendments

V-5

Chapter VI – Procedure for the examination of
the opposition
VI-1
1.

General remarks

VI-1

2.

Adherence to the text of the European patentsubmitted or approved by the patent proprietor

VI-2

2.1

Basis for the examination

VI-2

2.2

Revocation of the patent

VI-2

3.

Invitation to file observations

VI-2

3.1

Opposition division's communications

VI-2

3.2

Summons to oral proceedings

VI-2

4.

Communications from the opposition division to
the patent proprietor

VI-3Communications from the opposition division;
reasoned statement

VI-3

4.2

Invitation to file amended documents

VI-3

5.

Additional search

VI-3

6.

Examination of the opposition during oralproceedings

VI-4

7.

Preparation of the decision

VI-4

7.1

General remarks

VI-4

7.2

Preparation of a decision to maintain a European
patent in amended form
Procedural requirements

VI-4
VI-4

4.1

7.2.1

March 2023

7.2.2
7.2.3

8.

Part D – Contents e

Guidelines for Examination in the EPO

Decision on the documents on the basis of which thepatent is to be maintained
VI-6
Request for publishing fee, translations and aformally compliant version of amended text passages VI-6
Request to adjourn opposition proceedings

VI-7

Chapter VII – Details and special features ofthe proceedings

VII-1

1.

Sequence of proceedings

VII-1

1.1

Basic principle

VII-1

1.2

Exceptions

VII-1

2.

Request for documents

VII-1

3.

Unity of the European patent

VII-2

3.1

Basic principle

VII-2

3.2

Factors affecting the unity of the European patent

VII-2

4.

Procedure where the patent proprietor is notentitled

VII-3

4.1
4.1.1
4.1.2

Stay of proceedings
VII-3
Date of the stay of proceedings
VII-3
Legal character and effect of the stay of proceedings VII-3

4.2
4.2.1
4.2.2

Continuation of proceedings
Continuation after a final decision
Continuation regardless of the stage reached innational proceedings

VII-3
VII-4

4.3

Interruption of time limits

VII-4

4.4

Department responsible

VII-5

5.

Continuation of the opposition proceedings in
the cases covered by Rule 84

VII-5

Continuation in the case of surrender or lapse of thepatentVII-5

Continuation on the death or legal incapacity of the
opponent

VII-6

5.1

5.2

VII-4

5.3

Continuation after the opposition has been withdrawn VII-6

6.

Intervention of the assumed infringer

VII-6

Part D – Contents f

Guidelines for Examination in the EPO

March 2023

7.

Publication of a new specification of the patent

VII-8

8.

Transitional provisions for Art. 54(4) EPC 1973
and Art. 54(5)VII-8Chapter VIII – Decisions of the opposition
division

VIII-1

1.

Final decisions on an admissible opposition

VIII-1

1.1

General remarks

VIII-1

1.2
1.2.1
1.2.2

Revocation of the European patent
Revocation on substantive grounds
Revocation for failure to pay the prescribed fee forpublishing, to file a translation or to file a formallycompliant version of amended text passages
Revocation for failure to notify the appointment of a
new representative
Revocation in the event of requirements not being
met until after expiry of time limits
Revocation of the patent in the event that the patent
proprietor no longer wishes the patent to be
maintained as granted

VIII-1
VIII-1

1.3

Rejection of the opposition

VIII-2

1.4
1.4.1
1.4.2

Maintenance of the European patent as amended
VIII-2
Taking of a final decision
VIII-2
Statement in the decision of the amended form of theEuropean patent
VIII-2

2.

Other decisions

VIII-3

2.1

Decision on the inadmissibility of an opposition orintervention

VIII-3

2.2

Decisions which do not terminate proceedings

VIII-3

2.3

Decision on a notified loss of rights at the request of
the person concerned
VIII-3

2.4

Decision on re-establishment of rights

VIII-3

2.5

Decision on closure of the opposition proceedings

VIII-3

1.2.3
1.2.4
1.2.5

VIII-1
VIII-2
VIII-2

VIII-2

Chapter IX – Costs

IX-1

1.

Charging of costs

IX-1

1.1

General principle

IX-1

1.2

Decisions on the apportionment of costs

IX-1

March 2023

Part D – Contents g

Guidelines for Examination in the EPO

1.3

Costs to be taken into consideration

IX-1

1.4

Principle of equity

IX-2

2.

Procedure for the fixing of costs

IX-3

2.1

Fixing of costs by the opposition division

IX-3

2.2

Appeal against the fixing of costs by the opposition
division

IX-3

Enforcement of the fixing of costs

IX-3

3.

Chapter X – Limitation and revocation
procedure

X-1

1.

Introduction

X-1

2.

Examination for deficiencies in the request

X-1

2.1

Deficiencies which lead to the request being deemed
not to have been filed

X-1

Deficiencies which, if not remedied, lead to therequest being rejected as inadmissible

X-2

3.

Decision on request for revocation

X-2

4.

Substantive examination (limitation)

X-3

4.1

Department responsible

X-3

4.2

Basis for the examination

X-3

4.3

Scope of the examination

X-3

4.4

Further stages of the examination

X-4

4.5

Third-party observations during the examination

X-4

5.

Formal procedure for limitation when the request
is allowable

X-5

6.

Rejection of the request

X-5

7.

Relation to opposition proceedings

X-6

7.1

Precedence of opposition proceedings

X-6

7.2

Filing of opposition after decision on limitation

X-6

8.

Legal status of decisions

X-7

2.2

Part D – Contents hGuidelines for Examination in the EPO

March 2023

9.

Withdrawal of the request

X-7

10.

Different sets of claims

X-7

10.1

Limitation results in the claims becoming different indifferent contracting states

X-7

Limitation is different for different contracting states
because the claims as granted were different fordifferent contracting states

X-7

Multiple requests

X-8

10.2

11.

March 2023

Guidelines for Examination in the EPO

Part D – Chapter I-1

Chapter I – General remarks
1. The meaning of opposition
The public may oppose a granted European patent on the basis of one ormore of the grounds mentioned in Art. 100. The grounds on which the
opposition is based may arise for example from circumstances of which the
EPO was not aware when the patent was granted (e.g. prior use or apublication which was not contained or not found among the material
available to the EPO). Opposition is therefore a means by which any
person (but see D-I, 4) may obtain the limitation or revocation of a wrongly
granted patent.
2. Opposition after surrender or lapse
An opposition may be filed even if the European patent has beensurrendered or has lapsed for all designated states. This is relevant in thatin such cases the rights acquired with the patent remain in existence during
the period up to surrender or lapse and claims arising from such rights may
subsist after that date.
3. Territorial effect of the opposition
The opposition applies to the European patent in all the contracting statesin which that patent has effect. Thus, the opposition has, in principle, to be
in respect of all the designated states. If an opposition is filed in respect of
only some of the designated states it will be treated as if it were in respectof all the designated states.
Nevertheless, the effect of an opposition may differ as between contracting
states. This may arise where the patent contains different claims fordifferent contracting states in accordance with Rule 18(2) (see C-IX, 2.4), or
where the claims must take account of different art under the provisions ofArt. 54(3) and of Art. 54(4) EPC 1973 (see D-VII, 8). Amendments may also
be occasioned by national rights of earlier date within the meaning ofArt. 139(2) and Art. 140 (see H-II, 3.3 and H-III, 4.4). Thus, the patent may
be differently amended in respect of different contracting states and may be
revoked in respect of one or more contracting states and not in respect ofothers.
4. Entitlement to oppose"Any person" may give notice of opposition without specifying any particularinterest. "Any person" is to be construed in line with Art. 58 as meaning any
natural person (private individual, self-employed persons, etc.), any legal
person or any body assimilated to a legal person under the law governing
it. "Any person" does not include the patent proprietor (see G 9/93,
reversing G 1/84).
Notice of opposition may also be filed jointly by more than one of thepersons mentioned above. In order to safeguard the rights of the patent
proprietor and in the interests of procedural efficiency, it has to be clear
throughout the procedure who belongs to the group of common opponents.
If a common opponent (including the common representative) intends towithdraw from the proceedings, the EPO must be notified accordingly by
the common representative or by a new common representative

Rule 75

Art. 99(2)Art. 61
Art. 139(2), Art. 140

Art. 99(1)Part D – Chapter I-2

Guidelines for Examination in the EPO

March 2023

determined under Rule 151(1) in order for the withdrawal to take effect (seealso G 3/99).
Oppositions are not assignable but may be inherited or succeeded to aspart of an overall succession in law, e.g. in the event of the merger of legal
persons (see G 4/88). Acquiring companies may also take over oppositions
filed by acquired companies. However, a legal person who was a
subsidiary of the opponent when the opposition was filed and who carries
on the business to which the opposed patent relates cannot acquire thestatus of opponent if all its shares are assigned to another company(see G 2/04).
The European Patent Office has to examine, ex officio, the validity of any
purported transfer of opponent status to a new party at all stages of theproceedings (see T 1178/04).

Art. 105(1) and (2)Rule 89

Art. 99(3)Art. 105(2)Art. 115

5. Intervention of the assumed infringer
Under certain conditions (see D-VII, 6) third parties who prove thatproceedings for infringement of the opposed patent have been instituted
against them or that the patent proprietor has requested them to cease
alleged infringement of the patent and that they have instituted proceedings
for a court ruling that they are not infringing the patent may, after the
opposition period has expired, intervene in the opposition proceedings. If
the notice of intervention is filed in good time and in due form, theintervention is to be treated as an opposition (see D-IV, 5.6). For
accelerated processing of oppositions on request, see E-VIII, 5.
6. Parties to opposition proceedings
The patent proprietor, the opponent(s) and, where applicable, theintervener(s) will be parties to the opposition proceedings. However, an
opponent who has withdrawn their opposition or whose opposition has
been rejected as inadmissible will remain a party to the proceedings only
until the date of such withdrawal or the date on which the decision on
rejection has become final. The same will apply in the case of interveners.
Third parties who have presented observations concerning the patentabilityof the invention in respect of which an application has been filed are notparties to opposition proceedings (see E-VI, 3).

Art. 118

Where the patent proprietors are not the same in respect of different
designated contracting states, they are to be regarded as joint patent
proprietors for the purposes of opposition proceedings (see D-VII, 3.1
concerning the unity of the European patent).

Art. 99(4)Art. 61(1)(a)Where evidence has been provided that in a contracting state, following a
final decision, a person has been entered in the patent register of that state
instead of the previous patent proprietor, this person is entitled on request
to replace the previous patent proprietor in respect of that state. In thisevent, by derogation from Art. 118, the previous patent proprietor and theperson making the request are not deemed to be joint patent proprietors
unless both so request. The aim of this provision is to afford new patent
proprietors the opportunity of defending themselves against the opposition

March 2023

Guidelines for Examination in the EPO

Part D – Chapter I-3

as they see fit (see D-VII, 3.2 as regards the conduct of the opposition
proceedings in such cases).
The Legal Division is responsible for decisions in respect of entries in theRegister of European Patents (see the decision of the President of the EPO
dated 21 November 2013, OJ EPO 2013, 600).
It is to be noted that a person who files two different notices of opposition to
the same granted patent acquires party status as opponent only once
(T 9/00). Two filings by the same opponent within the opposition period that
individually are not admissible but taken together comply with Art. 99(1)and Rule 76 are considered as one admissible opposition (T 774/05; for a
joint opposition, see D-I, 4).
Multiple oppositions are dealt with in a single set of proceedings (seeE-III, 6). When there are multiple opponents and/or proprietors as parties toa single opposition proceedings, it is normally appropriate to deal with all
relevant issues (including e.g. admissibility of one of the oppositions, see
D-IV, 5.5) when taking the final decision, e.g. during one oral proceedings(also see E-III, 6). The legal framework is defined by the sum of thestatements of the extent to which the patent is opposed and by the grounds
for opposition submitted and substantiated in the notices of opposition
provided by each opponent. If one of the oppositions is admissible, but islater withdrawn, prejudicial grounds put forward in said opposition are
generally examined by the opposition division of its own motion. If one ofthe oppositions is inadmissible, and provided at least one admissible
opposition has been filed, the opposition division will consider of its own
motion any prima facie relevant art cited in the inadmissible opposition (seeD-V, 2.2).
7. Representation
As regards the requirements relating to representation of opponents andpatent proprietors, reference is made to A-VIII, 1. Deficiencies in the
representation of an opponent when filing the opposition and their remedy
are dealt with in D-IV, 1.2.1(ii) and 1.2.2.2(iv).
8. Information to the public
As soon as an opposition has been received, the date of filing of the
opposition is entered in the Register of European Patents and published in
the European Patent Bulletin. The same applies to the date on which
opposition proceedings are concluded and to the outcome of theproceedings (see also A-XI, 4).

Art. 20(1)March 2023

Guidelines for Examination in the EPO

Part D – Chapter II-1

Chapter II – The opposition division
1. Administrative structure
Each opposition division is assigned to an EPO directorate dedicated to
conducting opposition proceedings.
2.

Rule 11(1)Composition

2.1 Technically qualified examiners
An opposition division consists of three technically qualified examiners, atleast two of whom must not have taken part in the proceedings for grant of
the patent to which the opposition relates.
2.2 Legally qualified examiners
If the opposition division considers that the nature of the decision so
requires, it is enlarged by the addition of a legally qualified examiner who
has not taken part in the proceedings for grant.

Art. 19(2)Art. 19(2)The principles established for inclusion of a legally qualified member andfor consultation of the Directorate Patent Law, the department responsible
for providing legally qualified members for examining and opposition
divisions, by the examining division apply mutatis mutandis to the
opposition division (see C-VIII, 7). Difficult legal questions may also arise
during the examination as to whether an opposition is to be rejected as
inadmissible. In addition, consultation of a legally qualified member is to beenvisaged in cases where it is questionable whether or not a disclosure bymeans other than a document was made available to the public.
2.3 Chair
The chair must be a technically qualified examiner who has not taken partin the grant proceedings.
3. Allocation of duties and appointment of members of the
opposition division
C-II, 2 applies mutatis mutandis.
4.

Rule 11(1)Tasks of the opposition divisions

4.1 Examination of oppositions
The opposition divisions are responsible for the examination of oppositions
against European patents.

Art. 19(1)The examination of newly submitted documents for compliance withphysical requirements will essentially be the task of the competentformalities officers (see D-II, 7, A-I, 2, A-III, 3.2 and C-VIII, 1).
4.2 Decision concerning the awarding of costs by the opposition
division
The opposition division will decide on requests to have the costs fixed by
the formalities officer reviewed (see D-II, 7 and D-IX, 2.1).

Art. 104(2)Rule 88(3) and (4)Part D – Chapter II-2

Art. 122(2)Rule 136(4)Rule 112(2)Rule 144

Guidelines for Examination in the EPO

March 2023

4.3 Ancillary proceedings
It will be incumbent upon the opposition division to conduct ancillary
proceedings arising in the course of opposition proceedings. Such ancillary
proceedings may for example concern a request for re-establishment ofrights in respect of a time limit which was not observed vis-à-vis the EPO
during the opposition proceedings, a request for a decision concerning afinding arrived at by the formalities officer that a right has been lost or arequest for exclusion from file inspection. Additional tasks may be entrusted
to the opposition divisions by the President of the EPO in accordance with
Rule 11(2).
As regards exclusion from file inspection pursuant to Rule 144 inconjunction with the decision of the President of the EPO dated
12 July 2007, Special edition No. 3, OJ EPO 2007, J.3, reference is madeto A-XI, 2.1. Documents having a substantive and/or procedural bearing on
opposition proceedings can only exceptionally be excluded from fileinspection (T 1691/15). Communications dealing with a request for
exclusion from file inspection are excluded from file inspection and areissued separately from communications dealing with other issues.
Depending on its content, a document (provisionally) excluded from fileinspection and any communication concerning a request for its exclusionfrom file inspection may be forwarded to the other party or parties(Rule 81(2)). As the public must be informed of the grounds prejudicing or
supporting the maintenance of an opposed patent, only documents, orparts thereof, not (provisionally) excluded from file inspection can be usedas evidence to prove or to refute a ground for opposition.
If a party requests that the EPO excludes an otherwise public nonpatent
literature document from file inspection for reasons of copyright, theopposition division will interpret this as a request not to make the document
available to third parties in the public part of the file. This request, in theabove interpretation, is normally granted if the copyright of the document inquestion is not owned by a party to the proceedings and the document inquestion is relatively easily retrievable including against payment. For
example, a scientific article is usually easily retrievable, and its copyright is
assigned to the editor. In contrast, a third-party company brochure is noteasily retrievable. If the copyright of such company brochure is owned by aparty to the proceedings, the request is refused by the opposition divisionand the document is made available via file inspection.
Where the request not to make a document available via file inspection forreasons of copyright is acceded to by the opposition division, the page(s)carrying the bibliographic details of the non-patent literature document(normally the cover page) will nonetheless be made available via fileinspection in order to ensure that members of the public are in a position to
retrieve the entire document. The nonpatent literature document is notconsidered as being excluded from file inspection within the meaning ofRule 144 and can be used as evidence in the opposition proceedings.

Art. 19(2)Rule 119(1)5. Allocation of tasks to members
An opposition division will normally entrust one of its members with theexamination of the opposition, but not with the conduct of oral proceedings,

March 2023

Guidelines for Examination in the EPO

Part D – Chapter II-3

up to the time of the final decision on the opposition (see also D-IV, 2). If
need be, the same member may also be entrusted with the examination of
the evidence adduced (see E-IV, 1.3). This member will be referred to as
the primary examiner.
6. Duties and powers of members
The primary examiner will conduct the examination of the opposition. If oralproceedings have been requested, they are normally arranged as firstaction, possibly in conjunction with the taking of evidence (see E-III, 1
to E-III, 4 and E-IV, 1.6.1). The primary examiner will prepare thecommunication accompanying the summons to oral proceedings andsubmit it to the other members. If the primary examiner considers that
communications to the parties preceding the summons for oral proceedings
are necessary, these communications will be submitted to the opposition
division before despatch.
If there are differences of opinion within the opposition division, the primary
examiner will confer with the other members to discuss the points at issue.
The chair will preside at the meeting and, following a discussion, will take avote on the decision or the further course of the procedure.
Voting will be on the basis of a simple majority. In the event of parity of
votes, the vote of the chair of the division is decisive.

Art. 19(2)Any further measures necessary will as a rule be entrusted to the primary
examiner. If no further measures are necessary, the primary examiner willdraft a decision on the opposition and will distribute the draft to the othermembers of the opposition division for examination and signature. If any
changes are proposed by a member and there are differences of opinion onsuch changes, the chair must arrange a meeting.
Where reference is made hereinafter to the opposition division, this is to betaken to mean the primary examiner where such a member has been
appointed and in so far as the EPC entitles an opposition division member
to act alone.
7. Allocation of individual duties
The President of the EPO may entrust to employees who are nottechnically or legally qualified examiners the execution of individual duties
falling to the examining divisions or to the opposition divisions and involving
no technical or legal difficulties. In so far as such duties affect the public,
their allocation will be notified in the Official Journal of the EPO (seedecisions of the President of the EPO dated 12 December 2013,
OJ EPO 2014, A6, and 23 November 2015, OJ EPO 2015, A104).
The formalities officers entrusted with these duties are also in charge offixing the amount of the costs (see D-IX, 2.1).

Rule 11(3)March 2023

Guidelines for Examination in the EPO

Part D – Chapter III-1

Chapter III – Opposition
1. Time allowed for filing notice of opposition
Within nine months from the publication of the mention of the grant of theEuropean patent, notice of opposition has to be given to the EPO in
Munich, The Hague or Berlin.

Art. 99(1)For expiry of the time limit see E-VIII, 1.4. Re-establishment of rights in
respect of unobserved time limits for opposition is not possible in the caseof an opponent (see, however, E-VIII, 3.1.2).
2. Opposition fee
The amount of the opposition fee specified in the Rules relating to Fees
under the EPC must be paid before expiry of the time limit for opposition.

Art. 99(1)An opposition filed in common by two or more persons, which otherwise
meets the requirements of Art. 99 and Rules 3 and 76, is admissible on
payment of only one opposition fee (see G 3/99).
As regards the legal consequences and the procedure where the fee is not
paid in good time, see D-IV, 1.2.1(i) and 1.4.1.
3.

Submission in writing

3.1 Form of the opposition
The notice of opposition must be filed in writing and must be typewritten or
printed, with a margin of about 2.5 cm on the left-hand side of each page. It
would be appropriate if the notice of opposition also satisfied therequirements laid down in Rule 49(3) Rule 49(2) in conjunction with thedecision of the President of the EPO dated 25 November 2022
(OJ EPO 2022, A113).

Rule 86
Rule 50(2)Rule 49(3)Rule 49(2)Rule 76(1)3.2 Notices of opposition filed electronically
Notice of opposition may, without prejudice to other means of filing, be filedin electronic form using EPO Online Filing (OLF) or Online Filing 2.0 .
However, it may not be filed using the EPO webform filing service(OJ EPO 2021, A42).
3.3 Notices of opposition filed by fax
Notice of opposition may also be filed by fax (see the decision of the
President of the EPO dated 20 February 2019, OJ EPO 2019, A18). At theinvitation of the EPO, written confirmation reproducing the contents of the
fax and complying with the requirements of the Implementing Regulations –in particular properly signed – must be supplied. If the opponent fails tocomply with this invitation in due time, the fax is deemed not to have been
received (see A-VIII, 2.5). The opposition fee must in any case be paid
within the opposition period.
3.4 Signature of the notice of opposition
The notice of opposition must be signed by the person responsible, i.e. by
the opponent or, where appropriate, by the representative (see also
D-IV, 1.2.1(ii), and A-VIII, 1).

Rule 2Rule 50(3)Rule 2

Part D – Chapter III-2

Guidelines for Examination in the EPO

March 2023

Initials or other abbreviated forms will not be accepted as a signature.
Where the notice of opposition is filed in electronic form, the signature may
take the form of a facsimile signature or a text string signature. Where EPO
Online Filing is used, the signature may also take the form of an enhanced
electronic signature (see OJ EPO 2021, A42).
Where the notice of opposition is filed by fax, the reproduction on thefacsimile of the signature of the person filing the notice of opposition will beconsidered sufficient.
If the signature is omitted, the formalities officer must request the party, or
where appropriate the representative, to affix their signature within a time
limit to be laid down by the formalities officer. If signed in due time, thedocument retains its original date of receipt; otherwise, it is deemed not tohave been received (see D-IV, 1.2.1(ii) and 1.4.1).
4. Derogations from language requirements
Derogations from language requirements for written opposition proceedings
are dealt with in A-VII, 3 (for documents filed as evidence, see A-VII, 3.4)
and for oral opposition proceedings in E-V.

Art. 99(1)Rule 76(1)5. Grounds for opposition
A written reasoned statement of the grounds for opposition must be filed
within the opposition period.

Art. 100

Opposition may only be filed on the grounds that:

Art. 100(a)(i)

the subject-matter of the European patent is not patentable under
Art. 52 to 57, because it–

is not new (Art. 52(1), 54, 55),–

does not involve an inventive step (Art. 52(1), 56),–

is not susceptible of industrial application (Art. 52(1), 57),–

is not regarded as an invention under Art. 52(1) to (3), or–

is not patentable under Art. 53;

Art. 100(b)(ii)

the European patent does not disclose the invention in a manner
sufficiently clear and complete for it to be carried out by a person
skilled in the art (see Art. 83);

Art. 100(c)(iii)

the subject-matter of the European patent extends beyond thecontent of the application as filed (see Art. 123(2)) or, if the patent
was granted on a divisional application or on a new application filed
under Art. 61 (new application in respect of the invention by the
person adjudged in a final decision to be entitled to the grant of aEuropean patent), beyond the content of the earlier application as
filed (see Art. 76(1)).

March 2023

Guidelines for Examination in the EPO

Part D – Chapter III-3(See also D-V, 3, 4 and 6 and C-IV).
Note that each single condition mentioned above forms an individual legal
basis for objection to the maintenance of the patent. Consequently, eachsuch condition is to be regarded as a separate ground for opposition(see G 1/95 and G 7/95).
The following allegations, for example, do not constitute grounds for
opposition: that national rights of earlier date exist which put thepatentability of the invention in question (see, however, H-III, 4.4), that thepatent proprietor is not entitled to the European patent, that the
subject-matter of the patent lacks unity, that the claims are not supportedby the description (unless it is also argued that the claims are so broadly
worded that the description in the specification does not sufficiently disclose
the subject-matter within the meaning of Art. 100(b)), that the form andcontent of the description or drawings of the patent do not comply with theprovisions as to formal requirements as set forth in Rules 42 and 46 49(2)in conjunction with the decision of the President of the EPO dated
25 November 2022 (OJ EPO 2022, A113), or that the designation of theinventor is incorrect. Nor does the simple allegation that priority has been
wrongly claimed constitute a ground for opposition. However, the matter ofpriority must be subjected to a substantial examination in the course of
opposition proceedings if prior art is invoked in connection with a ground for
opposition under Art. 100(a) in relation to which the priority date is ofdecisive importance (see G-IV, 3 and F-VI, 2).
6. Content of the notice of opposition
The notice of opposition, filed in a written reasoned statement, must
contain:(i)the name, address and nationality of the opponent and the state inwhich the opponent's residence or principal place of business islocated. Names of natural persons must be indicated by the person'sfamily name and given name(s), the family name being indicatedbefore the given name(s). Names of legal entities, as well ascompanies considered to be legal entities by reason of the legislation
to which they are subject, must be indicated by their official
designations. Addresses must be indicated in such a way as tosatisfy the customary requirements for prompt postal delivery at theindicated address. They must comprise all the relevant administrative
units, including the house number, if any. Opponents (whether
natural or legal persons) whose residence or principal place ofbusiness is in an EPC contracting state and who act without aprofessional representative can use an address for correspondence
other than their residence. The address for correspondence must be
the opponent's own address. Post cannot be sent to a different(natural or legal) person, since that requires a valid form ofrepresentation under Art. 133 and 134. It is recommended that the
telephone and fax numbers be indicated (see D-IV, 1.2.2.2(i)and 1.4.2);

Rule 76(2)(a)Rule 41(2)(c)Part D – Chapter III-4

Guidelines for Examination in the EPO

March 2023

Rule 76(2)(b)(ii)

the number of the European patent against which opposition is filed,the name of the patent proprietor and the title of the invention(see D-IV, 1.2.2.2(ii) and 1.4.2);

Rule 76(1)Rule 76(2)(c)(iii)

a statement of the extent to which the European patent is opposed
and of the grounds on which the opposition is based as well as anindication of the facts and evidence presented in support of thesegrounds(see
D-IV, 1.2.2.1(iii) to 1.2.2.1(v)and 1.4.2).
The
requirement under Rule 76(1) that notice of opposition must be filed
in a written reasoned statement also implies presenting arguments.
However, in order to streamline opposition procedure, it isrecommended that a single copy of any written evidence besubmitted as soon as possible and ideally with the notice of
opposition (see D-IV, 1.2.2.1(v), last two paragraphs);

Rule 76(2)(d)(iv)

if the opponent has appointed a representative, the representative'sname and address of place of business in accordance with theprovisions of subparagraph (i) as set out above (see D-IV, 1.2.2.2(iii)
and 1.4.2).

D-IV, 1 sets out further details and explains how to deal with the opposition
if one of these requirements is not fulfilled.

March 2023

Guidelines for Examination in the EPO

Part D – Chapter IV-1

Chapter IV – Procedure up to substantive
examination
1. Examination for deficiencies in the notice of opposition andcommunications from the formalities officer arising from thisexamination
1.1 Forwarding of the notice of opposition to the formalities officer
The notice of opposition must be forwarded directly to the formalities
officer, who then places it in the electronic file of the European patentconcerned in accordance with the relevant administrative instructions andcommunicates it without delay to the patent proprietor for information. If a
notice of opposition is received prior to the publication of the mention of the
grant of the European patent, the formalities officer informs the senders
that their document cannot be treated as an opposition. This document
becomes part of the file and, as such, is also available for inspection under
Art. 128(4), and is brought to the attention of the applicant or the patent
proprietor as an observation by a third party in accordance with Art. 115 (fordetails, see E-VI, 3). If an opposition fee has been paid, it will in this casebe refunded.
Examinations, observations, communications and, where appropriate,invitations to the parties will be the responsibility of the formalities officer
who has been entrusted with this task of the opposition division(see D-II, 7).
1.2 Examination for deficiencies in the notice of opposition
After notice of opposition has been given, the formalities officer examines
whether any deficiencies exist.
1.2.1 Deficiencies which, if not remedied, lead to the opposition
being deemed not to have been filed
The following deficiencies fall into this category:(i)the opposition fee or a sufficient amount of the fee has not been paid
within the opposition period (Art. 99(1); see also G 1/18). However, if
the opposition fee, apart from a small amount (e.g. deducted as bankcharges), has been paid within the opposition period, the formalities
officer examines whether the amount lacking can be overlooked
where this is justified. If the formalities officer concludes that theamount lacking can be overlooked, the opposition fee is deemed tohave been paid and there is no deficiency in the present sense;(ii)

the document giving notice of opposition is not signed and this is not
rectified within the period set by the formalities officer, which is fixed
at two months as a rule (see E-VIII, 1.2) (Rule 50(3)).
It is noted that for cases covered by Art. 133(2) (see also
D-IV, 1.2.2.2(iv)) a professional representative first has to beappointed within the prescribed time limit. The above applies if theArt. 7 RFees
Art. 8 RFees

Part D – Chapter IV-2

Guidelines for Examination in the EPO

March 2023

appointed representative then fails to remedy such deficiency either
by signing the notice or by approving it in writing;(iii)

where a notice of opposition is filed by fax and written confirmation
reproducing the contents of the fax, if requested by the formalities
officer, is not supplied in due time (Rule 2(1) and decision of the
President of the EPO dated 20 February 2019, OJ EPO 2019, A18);(iv)

where a notice of opposition is filed by the representative or
employee of an opponent, and the authorisation, if any is required(see A-VIII, 1.5 and the decision of the President of the EPO dated
12 July 2007, Special edition No. 3, OJ EPO 2007, L.1), is not
supplied in due time (Rule 152(1) to (3) and (6)); and(v)

the opposition is submitted within the opposition period but not in an
official language of the EPO, as specified in Rule 3(1), or if Art. 14(4)applies to the opponent, the translation of the elements referred to inRule 76(2)(c) is not submitted within the opposition period (see also
A-VII, 2, G 6/91 and T 193/87). This period is extended where theone-month period as required under Rule 6(2) expires later. This
deficiency is present if the opposition is not filed in English, French or
German or if, for example, an opponent from Belgium files an
opposition in time in Dutch but fails to file the translation of theessential elements into English, French or German within theabovementioned time limits.

For oppositions which, upon submission, are deemed not to have been filed
because of deficiencies as described above, see the further procedure as
described in D-IV, 1.3.1, 1.3.3 and 1.4.1.
1.2.2 Deficiencies which, if not remedied, lead to the opposition
being rejected as inadmissible
Only such oppositions as are deemed to have been filed will be examinedfor deficiencies under Rule 77(1) and (2).
If the formalities officers are not sure whether the opposition in question
contains a deficiency under Rule 76(2)(c), they will submit the file to the
opposition division for checking. They will do this in particular if the
opposition alleges non-patentability under Art. 52, 54 or 56 and the relevant
prior art has been made available to the public by means other than by
written description, or if taking of evidence has been requested inaccordance with Rule 117.
In this connection the opposition division will also examine the extent towhich it is necessary for the formalities officer to request the opponent tosubmit evidence (see D-IV, 1.2.2.1(v)).
1.2.2.1 Deficiencies under Rule 77(1)The following deficiencies fall into this category:(i)the notice of opposition is not filed in writing with the EPO in Munich
or its branch at The Hague or its suboffice in Berlin within the nine-March 2023

Guidelines for Examination in the EPO

Part D – Chapter IV-3

month opposition period, calculated from the date of publication of
the mention of the grant of the European patent in the European
Patent Bulletin (Art. 99(1));
Accordingly, the opposition is deficient if, for example, notice of
opposition is submitted to the EPO belatedly, i.e. after expiry of thenine-month period, or where the opposition is notified within the
opposition period but only verbally in a telephone call officially notedin the files. This category of deficiency also includes oppositions
which, notwithstanding Art. 99(1), are filed with the central industrial
property office of a contracting state or an authority thereunder and
not forwarded by these offices either at all or in time for them to bereceived by the EPO before the expiry of the opposition period.
There is no legal obligation upon these offices or authorities toforward oppositions to the EPO.
(ii)

the notice of opposition does not provide sufficient identification of
the European patent against which opposition is filed;
Such a deficiency exists if the EPO is unable to identify the relevant
patent on the basis of the particulars in the notice of opposition; forexample, if only the proprietor of the contested patent and perhaps
the title of the invention for which the patent was granted are
mentioned in the notice of opposition. Such particulars alone are notan adequate description of the contested European patent, unlessthe patent proprietor who alone is named possesses only one patentor possesses several patents, the subject-matter of only one of whichfits the title of the invention given in the notice of opposition, being
clearly distinct from the subject-matter of the other patents which thisproprietor holds. A mere indication of the number of the contested
European patent in the notice of opposition constitutes sufficient
identification of the patent concerned, provided that no conflicting
information is given, e.g. an inconsistent name for the patent
proprietor, and the conflict cannot be resolved from the information
given.

(iii)

the notice of opposition contains no statement of the extent to which
the European patent is opposed;

Rule 76(2)(c)Such a deficiency is present if it is not clear from the requisitestatement whether the opposition is directed against the entire
subject-matter of the patent or only a part of it, i.e. whether it isdirected against all the claims or only against one or a part of one
claim, such as an alternative or embodiment;(iv)

the notice of opposition contains no statement of the grounds onwhich the opposition is based;
A notice of opposition contains such a deficiency if it does not
mention at least one of the grounds for opposition referred to in
Art. 100 (see D-III, 5). If non-patentability is given as a ground for
opposition, the statement of grounds must at least implicitly indicate

Rule 76(2)(c)Part D – Chapter IV-4

Guidelines for Examination in the EPO

March 2023

which conditions for patentability (Art. 52 to 57) are considered not tohave been fulfilled.
Art. 99(1)Rule 76(2)(c)(v)

the notice of opposition is not adequately substantiated;
According to Rule 76(2)(c), a notice of opposition has to contain astatement of the extent to which the European patent is opposed, thegrounds on which the opposition is based, as well as an indication of
the facts and evidence presented in support of these grounds for
opposition.
The wording of Rule 76(2)(c) clearly indicates that there is adifference between the grounds for opposition, i.e. the legal basis forrevocation of the patent (e.g. Art. 100(a)), and the facts and evidence
presented in support of these grounds. Where the facts and evidence
are entirely absent or so vague as not to allow a proper
understanding of the case, the opposition is considered to contain
only a mere allegation, which is not sufficient to render the opposition
admissible.
Therefore, the opponent has to substantiate the grounds for
opposition by adducing facts, evidence and arguments for at least
one of those grounds. The opponent has to establish the legal andfactual framework on which the opposition rests to pave the way for a
substantive assessment. As a consequence, the division and thepatent proprietor need to be able to understand, without further
investigation of their own, the issues that need to be decided. It is notnecessary for the admissibility of the opposition that a final decision
can be taken without further investigation. In other words, it is not aquestion of admissibility but of substantive examination whether thefacts on which the opponent relies in comprehensibly explaining aground for opposition are or can be proven. Where the grounds
comprise an allegation of a prior use or an oral disclosure prior to thedate of filing or the priority date, the opposition division must be
supplied with an indication of the facts, evidence and arguments
necessary to determine(a)the date on which the alleged use occurred ("when"),(b)what was used ("what"),(c)and the circumstances relating to the use ("where, how, bywhom") (G-IV, 7.2 and 7.3).

Where there are multiple grounds for opposition, if the facts,
evidence and arguments for one ground are sufficiently indicated, theopposition is admissible even if the facts, evidence and arguments insupport of the other grounds are submitted belatedly. Such belated
facts, evidence and arguments are in that event dealt with inaccordance with E-VI, 2. Owing to the length of the opposition period(nine months), however, in order to expedite the opposition
proceedings, it is recommended that a single copy of any writtenMarch 2023

Guidelines for Examination in the EPO

Part D – Chapter IV-5

evidence indicated in the notice of opposition be submitted as soon
as possible and ideally with the notice of opposition.
Otherwise, if the opposition is admissible, the opponent will be invited
to supply such evidence as soon as possible and as a rule within twomonths. If the documents thus requested are neither enclosed nor
filed within the time limit set, the opposition division may decide not
to take into account any arguments based on them. (As regards facts
or evidence not submitted in due time and arguments presented at alate stage see E-VI, 2).

Rule 76(2)(c)Rule 83

As far as the admissibility of an opposition is concerned, it isimmaterial whether and to what extent the facts, evidence andarguments submitted in due time actually warrant revocation of thecontested European patent or its maintenance in amended form. On
the one hand, an unconvincing ground for opposition may have been
substantiated (making the opposition admissible), whereas on theother hand a deficient submission may have been rejected as
inadmissible even though, if properly drafted, it could havesucceeded (see also T 222/85).
The substantiation of the grounds for opposition thus has to beclearly distinguished from the actual assessment of the evidence,
which is part of the process of ascertaining whether the opposition iswell-founded in substance, i.e. proven. Subject to the admissibility ofthe opposition, this has to be established by the opposition division in
the light of the applicable standard of proof (G-IV, 7.5.2).
(vi)

the opposition does not indicate beyond any doubt the identity of theperson filing the opposition (Art. 99(1) and Rule 76(2)(a)).

Art. 99(1)Rule 76(2)(a)1.2.2.2 Deficiencies under Rule 77(2)The following deficiencies fall within this category:(i)the notice of opposition does not specify the name, address andnationality of the opponent and the state in which the opponent's
residence or principal place of business is located in the prescribedmanner (see D-III, 6(i));

Rule 76(2)(a)(ii)

the number of the European patent against which the opposition is
filed or the name of the patent proprietor or the title of the invention is
not indicated;

Rule 76(2)(b)Each of the particulars listed in (ii) above must be supplied within thetime limit set by the formalities officer (see D-IV, 1.3.2), even if thecontested European patent may be identified by means of one ofthese or other particulars within the opposition period(see D-IV, 1.2.2.1(ii)). If the name of the patent proprietor as
indicated by the opponent is not the same as that recorded in theRegister, the formalities officer will inform the opponent of the patent
proprietor's correct name.

Part D – Chapter IV-6

Rule 76(2)(d)Rule 86

Art. 14(4)Rule 2(1)Rule 3(1)Rule 6(2)Rule 50(3)Rule 77(1) and (2)Rule 152(1) to (3)Guidelines for Examination in the EPO

March 2023

(iii)

where the opponent has appointed a representative, the name or theaddress of the place of business of such representative is notindicated in the notice of opposition in the prescribed manner(see D-III, 6(iv));(iv)

the opponent has neither residence nor principal place of business in
one of the contracting states (Art. 133(2)) and has not communicatedthe appointment of a professional representative (Art. 134). In thecommunication requesting remedy of such deficiency the opponent
must also be asked to arrange for the signature or approval of thenotice of opposition by the representative to be appointed; and(v)

the notice of opposition fails to satisfy further formal requirements
other than those mentioned in Rule 77(1). For instance, it may fail tocomply with the provisions of Rule 50(2) without due justification.

1.3 Issue of communications by the formalities officer as a result of
examination for deficiencies
If, in the course of the examination as described in D-IV, 1.2, formalities
officers note deficiencies which may still be remedied, and if there are no
deficiencies which may no longer be remedied (in the case of deficiencies
which may no longer be remedied see D-IV, 1.4), they will issue thecommunications described in D-IV, 1.3.1 and/or 1.3.2 to the opponent, if
possible in a single communication.

1.3.1 Communication in the event of deficiencies as described in
D-IV, 1.2.1 which, if not remedied, will lead to the opposition being
deemed not to have been filed
The communication will indicate the deficiencies noted in accordancewith D-IV, 1.2.1 and will state that the opposition will be deemed not tohave been filed unless the deficiency or deficiencies are remedied within
the time limits indicated in D-IV, 1.2.1.
1.3.2 Communication in the event of deficiencies as described in
D-IV, 1.2.2 which, if not remedied, will lead to rejection of the
opposition as inadmissible
The communication will indicate the deficiencies noted in accordancewith D-IV, 1.2.2.1 or 1.2.2.2 and will state that the opposition will berejected as inadmissible unless the deficiencies as describedin D-IV, 1.2.2.1 are remedied within the opposition period and unless the
deficiencies as described in D-IV, 1.2.2.2 are remedied within the period
stipulated by the formalities officer.
1.3.3 Extent of the formalities officer's obligation to issue the above
communications
Although formalities officers are not obliged to do so, they may notify the
opponent of deficiencies as described in D-IV, 1.2.1(i) and D-IV, 1.2.2.1 ingood time before the expiry of the time limits within which it is still possible
to remedy the deficiencies. However, the opponent can seek no legal
remedy against failure to issue these communications, which is to be
regarded merely as a service afforded the opponent by the EPO so as

March 2023

Guidelines for Examination in the EPO

Part D – Chapter IV-7

largely to obviate any adverse legal consequences. Deficiencies as
described in D-IV, 1.2.1(ii) and 1.2.2.2 must in any event be officiallynotified to the opponent, since this is a statutory requirement. Should thiscommunication inadvertently be omitted notwithstanding deficiencies of thistype in the notice of opposition, opponents may submit the missing
particulars on their own initiative at any time, even after the expiry of the
opposition period without suffering adverse legal consequences.
1.4 Subsequent procedure in the event of deficiencies which may nolonger be remedied
1.4.1 Deficiencies which may no longer be remedied, as a result of
which the opposition is deemed not to have been filed
If formalities officers establish that the deficiencies referred to in D-IV, 1.2.1
have not been remedied within the time limits laid down in the EPC or by
the EPO, they will inform the opponent in accordance with Art. 119 that thenotice of opposition is deemed not to have been filed and that a decision
may be applied for under Rule 112(2) (see E-VIII, 1.9.3). If no suchapplication is made within the prescribed period of two months after
notification of this communication, and if there is no other valid opposition
pending, the proceedings are closed and the parties informed accordingly.
Any opposition fees which have been paid are refunded.
Documents submitted with a notice of opposition which is deemed not tohave been filed will form part of the file and will thus be available forinspection in accordance with Art. 128(4). They will be regarded as
observations by third parties under Art. 115 (see in this connection D-V, 2.2
and E-VI, 3). If a further admissible opposition is pending, the proceedings
are continued in respect of it.
1.4.2 Deficiencies which may no longer be remedied in accordancewith Rule 77(1) and (2), resulting in the opposition being rejected as
inadmissible
If there are no deficiencies of the type referred to in D-IV, 1.4.1 but a noticeof opposition which is deemed to have been filed reveals deficiencies under
Rule 77(1) (see D-IV, 1.2.2.1) which may no longer be remedied and whichhave not been communicated to the opponent(s) in accordancewith D-IV, 1.3.2 (because the opposition period has already expired), theformalities officer must, by virtue of Art. 113(1), notify the opponent(s) ofthese deficiencies, allowing them time in which to submit comments(normally two months), and point out to them that the notice of opposition is
likely to be rejected as inadmissible.
If the opponent does not refute the opinion expressed by the formalities
officer on the existence of deficiencies which may no longer be corrected orhave failed to remedy in good time deficiencies which may be corrected(Rule 77(2)) and which were communicated to them pursuant
to D-IV, 1.3.2, the formalities officer will reject the notice of opposition as
inadmissible, except in the case mentioned in D-IV, 1.2.2.1(v) (for which the
opposition division is competent to decide, see the decisions of the
President of the EPO dated 12 December 2013 and 23 November 2015
concerning the entrustment to non-examining staff of certain duties

Rule 112(1)Part D – Chapter IV-8

Guidelines for Examination in the EPO

March 2023

incumbent on the examining or opposition divisions, OJ EPO 2014, A6, andOJ EPO 2015, A104). As regards the form of the decision, see E-X, 2.3 andE-X, 2.6.
In all other cases the formalities officer will submit the opposition
documents to the directorate responsible for the European patent in suit(for designation of an opposition division, see D-IV, 2).
The decision declaring the opposition inadmissible under Rule 77(1) or (2)can be taken without the participation of the patent proprietor in accordancewith Rule 77(3). However, for reasons of procedural economy, thesubstantive examination is in fact initiated if at least one further admissible
opposition is pending. The patent proprietor may also comment on theadmissibility of the former opposition in the course of that examination.
When the decision declaring the opposition inadmissible has become final
the opponent concerned is no longer a party to the proceedings.
1.5 Notifications to and observations by the patent proprietor
Communications and decisions in the course of the examination as towhether the opposition is deemed to have been filed and is admissible arealso notified to the patent proprietors for information. If they They may fileobservations on their own initiative concerning such a communication,these observations may be taken into account in the decision.
1.6 Subsequent procedure
For the subsequent procedure in the event of one or more oppositions withno deficiencies see D-IV, 5.2.

Art. 19(2)2. Activity of the opposition division
Formalities officers submit the file to the opposition division in question on
despatch of the invitation to the proprietor to submit comments in the cases
referred to in D-IV, 5.2; in all other cases (see D-IV, 1.4.2) they submit it
immediately.
The director responsible will then designate the three technical members of
the competent opposition division. The opposition division will decide
whether one of its members – and if so, which – is to be entrusted with theexamination of the opposition up to the taking of a decision (see D-II, 5).
The technical members of the division will not be designated if the
opposition is rejected as inadmissible by the formalities officer and nofurther admissible opposition has been filed (see D-IV, 1.4.2).
3. Rejection of the opposition as inadmissible by the opposition
division, the patent proprietor not being a party(For rejection of the opposition as inadmissible at a later stage, the patent
proprietor being a party, see D-IV, 5.1 and 5.5).

March 2023

Guidelines for Examination in the EPO

In cases of insufficient substantiation, where the formalities officer is notcompetent to decide on the inadmissibility (see D-IV, 1.2.2.1(v)), theopposition division will either:(i)issue the decision rejecting the opposition as inadmissible (when theformalities officer has already informed the opponent of thisdeficiency pursuant to D-IV, 1.3.2); or(ii)

consider the opposition admissible and continue with examination of
the opposition (see D-V); or(iii)

communicate its findings to the opponent(s) in question and at thesame time request them to submit observations.

If the opponent does not refute the opinion expressed by the opposition
division on the existence of these deficiencies which may no longer becorrected, the opposition division will reject the notice of opposition as
inadmissible, possibly after having held oral proceedings. As regards theform of the decision, see E-X, 2.3 and E-X, 2.6.
The decision will be communicated to the other parties. An inadmissible
opposition or documents produced in support of an inadmissible opposition
will be placed in the file and will therefore be available for inspection inaccordance with Art. 128(4). As regards the possibility of taking them into
consideration as observations by third parties, see D-V, 2.2 and E-VI, 3. If
there are further admissible oppositions, for reasons of procedural
economy this decision to reject the opposition as inadmissible will normallybe taken at the end of the procedure together with the decision on theadmissible oppositions.
For the possibility of appeal by the opponent and other possible means ofredress, see E-XII, 1 and E-XII, 7.
4. Termination of opposition proceedings in the event of
inadmissible opposition
Under Art. 101(1) and Rule 79(1), the examination as to whether theEuropean patent can be maintained can only be performed if at least one
admissible opposition has been filed. This means that the opposition
division has to refrain from commenting on the substantive merits of the
opposition when expressing an opinion on its inadmissibility if there is nofurther admissible opposition (see T 925/91). Opposition proceedings are
terminated if all notices of opposition filed against a European patent havebeen rejected as inadmissible and the last decision in this respect has
become final. This will be communicated to the parties.
5.

Preparation of substantive examination

5.1 Inadmissibility at a later stage
Since the admissibility of an opposition is always open to question by thepatent proprietor, no separate communication that the opposition isadmissible will be sent to the opponent or the patent proprietor. Where
deficiencies on the basis of which the notice of opposition is likely to be

Part D – Chapter IV-9

Part D – Chapter IV-10

Guidelines for Examination in the EPO

March 2023

regarded as inadmissible, but of which the opponent has not been informedby the formalities officer, come to the attention of the opposition division in
the opposition documents submitted to it or because the patent proprietor
has raised the issue during the proceedings, it will inform the parties about
its reservations in a communication and at the same time request the
opponent in question to submit observations. If deficiencies within themeaning of Rule 77(2) are involved, it is sufficient to specify a period for the
opponent to remedy such deficiencies.
If the opponent does not refute the opinion expressed by the opposition
division on the existence of these deficiencies which may no longer becorrected or fails to remedy in good time deficiencies which may becorrected, the opposition division will reject the notice of opposition as
inadmissible, possibly after having held oral proceedings. As regards theform of the decision, see E-X, 2.3 and E-X, 2.6. For subsequent procedure,see the last two paragraphs of D-IV, 3.

Rule 79(1) and (2)5.2 Invitation to the patent proprietor to submit comments andcommunication of opposition to the other parties concerned by theformalities officer
If formalities officers consider that no further ex-officio objection to theadmissibility of each or the only opposition remains, they will invite thepatent proprietor, immediately after expiry of the opposition period or theperiod laid down by the formalities officer for the remedying of the
deficiencies in accordance with Rule 77(2) (see D-IV, 1.2.2.2), or for thepresentation of evidence (see D-IV, 1.2.2.1(v)), to file observations
concerning the oppositions communicated earlier and to file amendments,
where appropriate, to the description, claims and drawings within a fourmonth period. Extension of the time limit will only be granted in exceptional
cases on the basis of a duly substantiated request (see E-VIII, 1.6, and thenotice from the EPO dated 31 May 2016, OJ EPO 2016, A42). The above
procedure also applies to oppositions where a decision to the effect thatthey are deemed not to have been filed or are inadmissible has not yet
been taken or has not yet become final.
If several notices of opposition have been filed, the formalities officer willcommunicate them to the other opponent(s) at the same time as thecommunication provided for in the previous paragraph. This will not be
combined with an invitation to file observations or the setting of a time limit.
However, copies of documents supporting the parties' submissions which
are available for inspection in the Register will no longer be transmitted(see A-XI, 2 and the notice from the EPO dated 28 August 2020,
OJ EPO 2020, A106).
5.3 Filing of amended documents in reply to the notice of opposition
Amended documents must, provided that it is not irrelevant at the stage
reached in the procedure, be as complete as possible and drawn up insuch a way as to allow the European patent, where appropriate, to be
maintained without further delay in the amended version.

March 2023

Guidelines for Examination in the EPO

Part D – Chapter IV-11

These considerations apply also to auxiliary requests in which the patent
proprietor proposes amendments for consideration by the opposition
division only if the division is unable to grant the main request, for example
that the opposition is to be rejected. In both cases, however, it will be moreconvenient in certain circumstances to determine first the form of theclaims, leaving purely consequential amendments in the description to be
dealt with later.
Care must be taken to ensure that any amendments do not offend against
Art. 123(2) and (3) (see D-V, 6, H-IV, 4.3 H-IV, 5.3 and H-V, 2 and 3). It
must also be checked that the patent, by the amendments themselves,
does not contravene the requirements of the EPC (with the exception ofArt. 82, see D-V, 2.2). For the form of amended documents, see H-III, 2.2
to 2.4.
Proprietors' observations, and any amendments they make, arecommunicated to the opponent(s) by the formalities officer without delay for
information. No time limit for reply is set.
5.4 Communication of observations from one of the parties to theother 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 opposition division considers that observations are called for in thecourse of the further procedure, a separate invitation is issued and a period
is fixed (normally four months), with or without a communication stating the
grounds.
5.5 Decision concerning the admissibility of an opposition, thepatent proprietor being a party
If the patent proprietor, when replying to the notice of opposition, contends
that the opposition is inadmissible pursuant to Rule 77(1) and (2) becauseof deficiencies specified by the patent proprietor himself, the opponent
concerned must be given the opportunity to submit comments within aperiod fixed by the formalities officer (normally two months).
If the opposition division concludes that the opposition is inadmissible, it
must as a rule first take a reasoned decision, possibly after having held oralproceedings. This decision is appealable. If, on the other hand, on the basisof another – admissible – opposition, an immediate decision can be takenon the rejection of the opposition or oppositions or on the revocation of thepatent, the decision on admissibility is to be taken together with this final
decision.
If, despite the observations of the patent proprietor, the opposition divisionconcludes that the opposition is admissible, the decision on admissibility isnormally to be taken together with the final decision, especially where atleast one other admissible opposition exists (see D-I, 6). If the opposition
division is of the opinion that all oppositions are inadmissible, a reasoned
decision is to be taken, which is appealable.

Rule 79(3)Rule 81(2)Part D – Chapter IV-12

Guidelines for Examination in the EPO

March 2023

An opponent whose opposition has been finally rejected as inadmissible is
no longer a party to the subsequent proceedings once this decision
becomes final.

Rule 79(4)Rule 86

5.6 Examination of the admissibility of an intervention andpreparations in the event of an intervention
When examining whether an intervention is admissible, the formalities
officer and the opposition division will proceed as for the examination as toadmissibility of an opposition (see D-IV, 1, 3 and 5.5) but on the basis of
the requirements for intervention under Art. 105 and Rule 89.
Paragraphs D-IV, 5.2 and 5.4, may, however, be disregarded in the case of
an intervention in opposition proceedings.
Accordingly, particularly in the case of proceedings which are at anadvanced stage, the formalities officer will inform third parties who haveintervened of the progress of the proceedings and request them to indicate
within one month whether they will also require the documents received
from the parties in accordance with Rule 79(1) to (3), together with thecommunications from the opposition division and the observations of theparties under Rule 81(2), for the preceding period. If this is the case, theformalities officer will send them with the relevant communications from the
opposition division or the formalities officer to the intervening third party.

March 2023

Guidelines for Examination in the EPO

Part D – Chapter V-1

Chapter V – Substantive examination of
opposition
1. Beginning of the examination of the opposition
Once the preparations for the examination of the opposition have been
completed pursuant to Rule 79, the opposition division examines whether
the grounds for opposition (see D-III, 5) laid down in Art. 100 prejudice themaintenance of the European patent. The examination may also begin if asingle admissible opposition has been withdrawn in the interim(see D-VII, 5.3). If the opponent has died or is legally incapacitated, theexamination may begin even without the participation of the heirs or legal
representatives (see D-VII, 5.2).
2.

Art. 101(1)Extent of the examination

2.1 Extent to which the patent is opposed
In the unusual case where an opposition is limited to only a certain part ofthe patent, the opposition division has to limit its examination to the partopposed. However, if the opposition is directed only to an independentclaim, the dependent claims are considered to be implicitly covered by theextent of the opposition and may be examined by the opposition division,
provided their validity is prima facie in doubt on the basis of the information
already available (see G 9/91). Similarly, if only a process claim is opposed,a product-by-process claim making reference to the same process is
considered to be implicitly covered by the extent of opposition and may be
examined under the same conditions as above (see T 525/96).
2.2 Examination of the grounds for opposition
Opposition proceedings are not a continuation of examination proceedings.
Hence as a general rule the opposition division will confine its examination
to those grounds for opposition brought forward by the opponent. If, forexample, the opposition is filed only on the grounds that the subject-matterof the European patent is not sufficiently disclosed or that it extends beyond
the content of the patent application as filed, the opposition division will
examine the patentability of the subject-matter of the European patentpursuant to Art. 52 to 57 only if facts have come to its notice which, prima
facie, wholly or partially prejudice the maintenance of the patent(see G 10/91).
A document indicated in the patent specification as the closest or importantprior art for the purposes of elucidating the technical problem set out in thedescription forms part of the opposition proceedings even if not expressly
cited within the opposition period. The same applies to any relevant
documents cited in the patent specification which do not constitute theclosest prior art but whose contents are nevertheless important forunderstanding the problem underlying the invention within the meaning ofRule 42(1)(c) EPC (T 536/88, in particular point 2.1).
Once proceedings for examining the opposition(s) have been initiatedbecause an admissible opposition has been filed (although it may havebeen withdrawn in the interim), there may be reason to believe that other

Rule 81(1)Art. 114

Part D – Chapter V-2

Guidelines for Examination in the EPO

March 2023

grounds exist which, prima facie, in whole or in part prejudice themaintenance of the European patent. If that is the case, these grounds will
generally be examined by the opposition division of its own motion pursuant
to Rule 81(1). Such other grounds may result from facts emerging from thesearch report or the examination procedure, the examiner's personal
knowledge or observations presented by third parties pursuant to Art. 115(see also E-VI, 3). Such grounds may also have been put forward inanother opposition which has been rejected as inadmissible, or in anotheropposition deemed not to have been filed. They may also be any grounds
submitted belatedly (see E-VI, 1.1 and E-VI, 2). Under Art. 114(1), suchprejudicial grounds put forward in an opposition which has been withdrawn
will also generally be examined by the opposition division of its own motion.
In carrying out such examination the opposition division will, however, takethe interests of procedural expediency into account (see E-VI, 1.2). If thedecision is to be based on grounds to be taken into account pursuant toArt. 114(1) or Rule 81(1), the parties must be given the opportunity tocomment (see E-X, 1).
If during examination of the opposition an allegation about a relevant fact
seems plausible, it may be taken into account without further evidence if it
is not challenged by the other party.
If a fact is contested or not plausible, the party making the allegation must
prove it. If the parties to opposition proceedings make contrary assertions
which they cannot substantiate and the opposition division is unable toestablish the facts of its own motion, the patent proprietor is given thebenefit of the doubt (see T 219/83, Headnote I).
For example, if the opponent raises an objection under Art. 100(b) andprovides experimental evidence that e.g. the claimed process cannot berealised, and the patent proprietor replies that the process can be carriedout without undue burden by the skilled person taking common generalknowledge also into consideration (T 281/86, OJ EPO 1989, 202;
reasons 6), the patent proprietor has to provide proof of what was common
general knowledge at the filing date (or the date of the earliest priority ifpriority has been claimed).
Pursuant to Art. 100, the absence of unity of invention is not a ground for
opposition (see D-III, 5).
Art. 82

Since unity of invention under Art. 82 is only required for the European
patent application, the unity of the subject-matter of the European patent
may not be examined by the opposition division, even of its own motion. In
particular, where the facts, evidence and arguments which come to light in
the opposition proceedings lead to the maintenance of the European patentin amended form, there will be no further examination as to whether theremaining subject-matter of the patent contains a single invention or morethan one. Any lack of unity must be accepted (see G 1/91).
The grounds for opposition laid down in Art. 100 are examined in greater
detail below.

March 2023

Guidelines for Examination in the EPO

3. Non-patentability pursuant to Art. 52 to 57
The same substantive requirements apply in the opposition procedureregarding patentability pursuant to Art. 52 to 57 as in the examination
procedure. G-I to VII will therefore also be applied in opposition
proceedings. However, it will be more common in opposition proceedings
than in examination procedure for the examination as to patentability to be
based on the state of the art as made available to the public not by written
description but "by means of an oral description, by use, or in any otherway" (see Art. 54(2) and G-IV, 7).

Part D – Chapter V-3

Art. 100(a)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 3.
The principles set out there will also apply mutatis mutandis to the
opposition procedure. The overriding consideration in this context is thedisclosed content of the European patent specification, that is to say what aperson skilled in the art is able to derive directly and unambiguously fromthe explicit and implicit disclosure in the patent claims, description anddrawings, if any, without using inventiveness. Pursuant to Art. 100(b), thepatent has to disclose the invention in a manner sufficiently clear andcomplete 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.

Art. 100(b)The skilled person wishing to implement the claimed invention reads theclaims in a technically sensible manner. An objection of insufficient
disclosure of the invention is therefore not to be based on embodimentsthat are meaningless and not consistent with the teaching of the application
as a whole (see T 521/12).
There is normally no deficiency under Art. 100(b) if a feature which isessential for performance of the invention is missing from the claim but isdisclosed in the description and/or drawings. However, unduly broad claims
may be objected to under Art. 56 (see T 939/92).
5. Clarity of claims
Clarity is not a ground for opposition. Opposition proceedings are notdesigned as a procedure for generally amending (or revoking) patents that
contain any kind of defect, and therefore opposition proceedings are not tobe regarded as a continuation of examination proceedings. As a generalrule this means that a granted claim has to be lived with even if new facts(e.g. new prior art) demonstrate that the claim is unclear (G 3/14).
In considering whether, for the purpose of Art. 101(3), a patent as amended
meets the requirements of the EPC, the claims of the patent may be
examined for compliance with the requirements of Art. 84 only when, andArt. 100

Art. 101(3)Part D – Chapter V-4

Guidelines for Examination in the EPO

March 2023

then only to the extent that, an amendment introduces non-compliance with
Art. 84 (G 3/14, confirming the jurisprudence as exemplified by T 301/87).
A lack of compliance with Art. 84 cannot be seen as having been
introduced by an amendment if a clarity problem already present in theclaims as granted is only brought into notice, highlighted or made visible by
the amendment.
According to G 3/14, the amendment of one claim or part of a patent cannot
lead to a re-examination of other parts of the patent which have not been
amended. Thus, the deletion of an independent claim with its dependentclaims or the deletion of a dependent claim leaving the independent claims
and other dependent claims intact does not permit examination of theremaining claims for compliance with Art. 84.
A claim amended during opposition proceedings is not subject toexamination for compliance with Art. 84 if it results from(i)

inserting a complete dependent claim as granted into an independentclaim;(ii)

combining one of several alternative embodiments of the dependentclaim as granted with the independent claim as granted;(iii)

deleting wording from a granted claim (whether independent or
dependent), whereby its scope is narrowed but a pre-existing lack ofcompliance with Art. 84 is left intact (as exemplified by T 301/87); or(iv)

deleting optional features from a granted claim (whether independent
or dependent).

However, an amended claim is to be examined for compliance with Art. 84:(v)

if features are taken from the description and inserted into a granted
claim by way of amendment; or(vi)

if a feature from a dependent claim as granted is introduced into anindependent claim as granted and this feature was previously
connected with other features of that dependent claim and an alleged
lack of compliance with Art. 84 is introduced by the amendment.

6. Subject-matter of the European patent extending beyond theoriginal disclosure

Art. 100(c)6.1 Basis of this ground for opposition
This ground for opposition under Art. 100(c) refers back to Art. 123(2) andstipulates that the subject-matter of a European patent may not extend
beyond the content of the application as filed. In the case of a patent
granted on the basis of a European divisional application (Art. 76(1)), twocriteria apply: the subject-matter must not extend beyond the content of theearlier application as filed (Art. 76(1)), and it must not extend beyond thecontent of the divisional application as filed (Art. 123(2)) (see T 873/94).
Similar considerations apply to applications filed under Art. 61. In the case

March 2023

Guidelines for Examination in the EPO

of a patent granted on an application filed in a language other than anofficial language of the EPO either in accordance with Art. 14(2) or inaccordance with Rule 40 (see Rule 40(3)), the original text will, as provided
for in Art. 70(2), constitute the basis for determining whether the
subject-matter of the European patent extends beyond the content of theapplication as filed. However, unless, for example, the opponent adduces
proof to the contrary the opposition division may, under Rule 7, assume
that the translation referred to in Art. 14(2) or Rule 40(3) is in conformity
with the original text of the application.
6.2 Distinction between allowable and unallowable amendments
The distinction between allowable amendments to the content of aEuropean patent application and amendments which are at variance with
Art. 123(2) or Art. 76(1) is set forth in H-IV, 2, and C-IX, 1.4. These
guidelines will be applied mutatis mutandis in the course of opposition
proceedings to determine whether the subject-matter of the European
patent as granted or as amended during the opposition proceedings
extends beyond the content of the application as filed.

Part D – Chapter V-5

March 2023

Guidelines for Examination in the EPO

Part D – Chapter VI-1

Chapter VI – Procedure for the examination of
the opposition(Oral proceedings: see E-III; taking and conservation of evidence:see E-IV).
1. General remarks
The opposition division will first of all endeavour to reach a decision in
written proceedings. Taking account of the investigations usually conducted
beforehand by the primary examiner (see D-II, 5 and 6), the opposition
division will base its decision on the written submissions of the parties and,
where appropriate, on other written evidence obtained, in particular,
through the production of documents, requests for information and sworn
statements in writing.
The parties in inter partes cases are subject to a particular duty to facilitate
due and swift conduct of the proceedings, in particular by submitting all
relevant facts, evidence, arguments and requests as early and completely
as possible (see D-IV, 1.2.2.1 and E-IV, 1.2). Furthermore, any ground, fact
and evidence filed by the opponent(s) after the expiry of the opposition
period are considered as late-filed unless they are due to a change in thesubject of the proceedings; see E-VI, 2 and subsections for more details.
Admissibility of amendments by the proprietor is treated in detail in H-II, 3
to H-II, 3.5, E-VI, 2.2.2 and E-VI, 2.2.3.

Art. 114(2)Rule 76(2)(c)Rule 80

If the opposition division considers it expedient, or if any party requests oralproceedings, oral proceedings in accordance with Art. 116(1) will be held
before the opposition division after suitable preparation (see D-VI, 3.2). In
the oral proceedings, the parties may state their cases and makesubmissions in order to clarify outstanding questions. Members of the
opposition division may put questions to the parties.

Art. 116

In special, less common cases it will occasionally prove necessary in
opposition proceedings for oral evidence to be taken by the opposition
division as part of oral proceedings or for the conservation of evidence, orby the primary examiner outside the oral proceedings. The opposition
division is not obliged to take oral evidence if it does not consider it
necessary, even if a party has so requested. Oral evidence may be taken,
where appropriate under oath, before the competent court in the country ofresidence of the person to be heard. A member of the opposition divisionmay, at the request of the opposition division, attend such court hearings(see E-IV, 1.3).

Rules 117 to 120

The principal means of taking oral evidence will be the hearing of witnesses
and parties (see E-IV, 1.6).
Only in exceptional cases will evidence be obtained at the initiative of the
opposition division by means of oral and/or written reports by experts(see E-IV, 1.8.1) or by carrying out an inspection (see E-IV, 1.2, lastparagraph). In view of the specialised knowledge of the members of thePart D – Chapter VI-2

Guidelines for Examination in the EPO

March 2023

opposition division – and of the costs involved – such means will be used
only as a last resort.
2. Adherence to the text of the European patent submitted orapproved by the patent proprietor

Art. 113(2)2.1 Basis for the examination
If the patent proprietors submit amendments to the description, claims ordrawings after the notice of opposition has been communicated to them(see H-II, 3), the opposition division must take as a basis for its examination
the text of the European patent submitted by the patent proprietors. This
principle, that the opposition division must concern itself solely with the text
most recently "submitted or agreed by the patent proprietor", also applies tothe rest of the opposition procedure. (As regards the possibility ofamending texts, see H-IV, 3.1, second paragraph).
2.2 Revocation of the patent
Where it is stated that the patent proprietor no longer approves the text inwhich the patent was granted and no amended text is submitted, the patentmust be revoked. This also applies when the patent proprietor requests thatthe patent be revoked.
3.

Art. 101(1)Rule 81(2)Rule 81(2)Art. 116(1)Rule 115(1)Rule 116(1)Invitation to file observations

3.1 Opposition division's communications
In examining the opposition, the opposition division will invite the parties, as
often as is necessary, to clarify the substance of the case, to fileobservations on communications from another party or issued by itself(see E-II, 1) and, where appropriate, to adduce evidence in respect ofmatters under dispute. Rule 81(2) does not require the opposition division
to set a period for replying to this invitation. Such a period will, however, be
set whenever the opposition division considers this expedient. As regards
the length of the period see E-VIII, 1.2, as regards the extension of a period
see E-VIII, 1.6, and as regards late submission of observations
see E-VIII, 1.7 and E-VIII, 1.8, as well as Art. 114(2).
Communications from the opposition division and all replies thereto must
be communicated to all parties.
3.2 Summons to oral proceedings
If oral proceedings have to be arranged, the parties must be summoned tothem as quickly as possible at reasonable notice (see E-III, 6). If the firstaction of the opposition division is to summon the parties, the first
substantive communication of the opposition division under Art. 101(1) isannexed to the summons to oral proceedings. For the form of oralproceedings, see E-III, 5 and E-III, 1.3 E-III, 11.
Together with the summons, the opposition division will draw attention toand in the annexed communication explain the points which in its opinion
need to be discussed for the purposes of the decision to be taken; where
this has already been done sufficiently in a prior communication, it isappropriate to refer to that communication. Normally, the annexedMarch 2023

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Part D – Chapter VI-3

communication will also contain the provisional and nonbinding opinion of
the opposition division on the positions adopted by the parties and inparticular on amendments filed by the patent proprietor. At the same time, adate will be fixed up to which written submissions may be made oramendments may be filed. Normally this date will be two months before thedate of the oral proceedings. As this date is not a time limit, Rule 132 does
not apply and the parties cannot request to postpone it.
The summons to oral proceedings and the annexed communication do notconstitute decisions within the meaning of Art. 106(1) and can thus only beappealed together with the final decision (see T 1954/14) unless either ofthem allows a separate appeal to be filed (see E-X, 3).
4. Communications from the opposition division to the patent
proprietor
4.1 Communications from the opposition division; reasonedstatement
Where necessary, any communication to the patent proprietor must containa reasoned statement. This also applies to any communication to otherparties which is communicated to the proprietor of the patent for information
only. A reasoned statement will usually not be required if thecommunication concerns only matters relating to form or if it contains nomore than self-explanatory proposals. Where appropriate, all the grounds
against the maintenance of the European patent are to be given in thecommunication.
4.2 Invitation to file amended documents
If the opposition division considers that the European patent cannot be
maintained in an unamended form, it must inform the patent proprietors
accordingly, stating the grounds, and give them the opportunity to amend,in appropriate cases, the description, claims and drawings. As regards thetime limit here, see E-VIII, 1.2. Where necessary, the description adjusted
in line with the new claims will also deal with the state of the art as set out
in the opposition proceedings, the technical purpose and the advantages of
the invention as it will then stand. However, if the patent proprietor has
neither requested oral proceedings nor filed amendments (including any
auxiliary requests), the patent can be revoked directly on the basis of thegrounds, evidence and arguments on file (see also E-X, 1.1).
Proposals for amendment filed at a late stage in the proceedings may bedisregarded (see T 406/86).
For amended documents, see H-III, 2.
5. Additional search
In exceptional cases, the opposition division, like the examining division,
may on its own initiative cite new material relating to the state of the art andtake it into account in its subsequent decision (see C-IV, 7.4 C-IV, 7.3). In
the normal course of events, however, since the grant of the patent will
have been preceded by a search into the subject-matter of the applicationby the search division, by the examining division and generally by theRule 81(3)Rule 81(2) and (3)Part D – Chapter VI-4

Guidelines for Examination in the EPO

March 2023

opponent(s), no additional search will be made. Only in exceptional cases
will an additional search by the opposition division be set in train. Such acase might arise, for example, if in the opposition the main subject coveredby the patent shifts to elements of a dependent claim which were originallyof subsidiary importance, to elements which were previously not set out inthe claims, but only in the description, to individual features of a
combination, or to sub-combinations, and there are grounds for believingthat the original search did not extend to such elements or features and if
no relevant document can be found quickly in the circumstances set out in
C-IV, 7.4 C-IV, 7.3.
6. Examination of the opposition during oral proceedings
For details regarding the examination shortly before and during oralproceedings and the conduct thereof, see E-III, 8.
7.

Art. 116(1)Rule 117

Preparation of the decision

7.1 General remarks
If the opposition division does not consider it expedient to arrange for oralproceedings of its own motion (see E-III, 4 and below) or for the taking ofevidence even where the latter is requested (see E-IV), and if noadmissible request for oral proceedings has been received from a party(see E-III, 2), the decision must be reached on the basis of written
proceedings. In this case there is no obligation to arrange for oralproceedings before a decision is reached.
If the case is decided on the basis of written proceedings, submissions filed
after the decision has been handed over to the EPO internal postal service
for remittal to the parties can no longer be considered, as from that moment
the division cannot amend the decision (see G 12/91), except to the limited
extent provided for in Rule 140 (see H-VI, 3.1).
The decision, whether or not preceded by oral proceedings or the taking ofevidence, may be to revoke the patent (see D-VIII, 1.2), to reject the
opposition (see D-VIII, 1.3) or to maintain the patent as amended(see D-VIII, 1.4).
7.2 Preparation of a decision to maintain a European patent inamended form

Art. 113

7.2.1 Procedural requirements
A decision to maintain the patent in amended form may be delivered only
when the patent proprietor has approved the new text on the basis of which
the opposition division intends to maintain the patent and the opponent has
had sufficient opportunity to comment on the proposed new text.
Both prerequisites can be fulfilled during oral proceedings at which the
opposition division establishes the text including the amended description
and, if necessary, the amended figures. In written proceedings, thenecessary opportunity to comment on the new text on the basis of which
the opposition division intends to maintain the patent is given to the
opponent when a communication is issued to the parties. Once theseMarch 2023

Guidelines for Examination in the EPO

Part D – Chapter VI-5

requirements have been met, a separate communication under Rule 82(1)is neither necessary nor appropriate (see G 1/88).
If the patent can be maintained in the amended form, the opposition
division tries to obtain the patent proprietor's approval of the text in which
the patent can be maintained and gives the opponent an opportunity tocomment on it. An interlocutory decision can then be delivered.
If these requirements have still not been met and no oral proceedings arebeing held, a communication under Art. 101(1) must be issued. This also
applies when it has been established in principle that the patent can be
maintained in a particular form but a complete text expressly approved by
the patent proprietor is not yet available.
The patent proprietor's approval of an amended version of the patent neednot be given in a separate, express declaration; it may also be apparent
from the circumstances, in particular from the fact that an amended version
was filed or requested. This applies equally to versions which have been
filed as an auxiliary request. (For the wording of documents in oralproceedings, see E-III, 8.11 and E-III, 8.11.1).
The patent proprietor's approval can also be obtained through acommunication under Rule 82(1) in which the opposition division informs
the parties that it "intends to maintain the patent as amended" and invites
them to "state their observations within a period of two months if they
disapprove of the text in which it is intended to maintain the patent". If noobjections are filed to the text thus notified, the patent proprietor isconsidered to approve of it.
A communication under Rule 82(1) can also be sent if the opposition
division considers that the complete document expressly approved by thepatent proprietor, on which the opponent has been able to comment, stillrequires amendments. However, these must not go beyond such editorialchanges to the wording as appear absolutely necessary by comparison
with the text most recently submitted or approved by the patent proprietor.
The opposition division will draw attention to such amendments and state
why they are required if they are not self-explanatory.
If within the period specified in the communication, or in a communication
under Rule 82(1), the patent proprietor objects to the text in which thepatent is to be maintained, the proceedings are continued. The European
patent can be revoked in the subsequent proceedings if the patent
proprietor objects to the text and fails to submit new, properly amended
documents despite having been requested to do so.
If any opponent objects to the text communicated to them in which it isintended to maintain the patent, the opposition division will continue
examining the opposition if it considers that the EPC prejudices themaintenance of the patent in the text initially envisaged.

Rule 82(1)Part D – Chapter VI-6

Guidelines for Examination in the EPO

March 2023

7.2.2 Decision on the documents on the basis of which the patent is
to be maintained
If the opposition division considers that the patent can be maintained on thebasis of the text submitted or approved by the patent proprietor, and theopponent has had sufficient opportunity to comment on this text – either inwriting or during oral proceedings – as well as on the reasons decisive tothe patent's maintenance, the opposition division will issue an interlocutory
decision to the effect that the patent and the invention to which it relates
meet the requirements of the EPC following the amendments made by thepatent proprietor during the opposition proceedings.
If the patent can only be maintained on the basis of an auxiliary request,
the decision has to contain a reasoned statement why the version of themain request (and any higher-ranking auxiliary request) does not meet therequirements of the EPC (see T 234/86).
A separate appeal under Art. 106(2) is allowed against this decision, whichmust be reasoned having regard to the grounds for opposition maintainedby the opponent or taken up by the opposition division. The decision isdelivered in all cases where a European patent is maintained in amended
form, even if the opponent has approved of the text communicated by the
opposition division or has not commented on it. In the former case, thedecision is fairly brief, merely noting that in the light of the amended text the
opponent no longer maintains the original grounds for opposition. If thisdecision is not contested, the ruling enshrined in it becomes final and as aresult the documents can no longer be amended.
This interlocutory decision is intended to save the patent proprietor
unnecessary translation costs arising from an amendment to the text inappeal proceedings. It nevertheless qualifies as a grant decision in thesense of G 1/10 and corrections can only be requested in the narrow ambit
provided for in Rule 140 (see H-VI, 3.1).

Rule 82(2)7.2.3 Request for publishing fee, translations and a formallycompliant version of amended text passages
Once the interlocutory decision becomes final or the amended text in which
the patent is to be maintained has been drawn up in opposition appeal
proceedings, the formalities officer requests the patent proprietor–

to pay, within three months, the fee for publishing a new specificationof the European patent;–

to file translations of any amended claims in the two official
languages of the EPO other than the language of the proceedings;
and–to file a formally compliant verbatim version of amended text
passages if in oral opposition proceedings the interlocutory decisionof the opposition division under Art. 101(3)(a) and 106(2) or theboard of appeal decision under Art. 111(2) has been based on
documents not complying with Rule 49(8) Rule 50(1) (see E-III, 8.7).

March 2023

Guidelines for Examination in the EPO

Part D – Chapter VI-7

If the European patent in the amended form contains different claims fordifferent contracting states, a translation of all sets of claims – in the text
communicated to the patent proprietor – into all official languages otherthan the language of the proceedings must be filed.
If the request under the first paragraph above is not complied with "in duetime", the acts may still be validly performed within two months of
notification of a communication pointing out the failure to observe the time
limit, provided that within this two-month period the prescribed surcharge ispaid. If any of the acts is not performed within the period of grace, theformalities officer will issue a decision for revocation of the patent inaccordance with Rule 82(3).
8. Request to adjourn opposition proceedings
If a party requests adjournment of opposition proceedings for the sole
reason of pending appeal or opposition proceedings of a patent family
member (e.g. a parent application), the request will not be granted. The
party will receive a communication from the opposition division indicating
the reasons for its intention not to grant the request. This communication
does not constitute an appealable decision under Art. 106(1) or Art. 106(2).
If oral proceedings take place and the request is maintained, the opposition
division will address it at oral proceedings, giving the parties an opportunity
to comment. After the oral discussion on adjournment, the opposition
division will take a decision on the request.

Rule 82(2) and(3)
Art. 2(1), item 9,
RFees

March 2023

Guidelines for Examination in the EPO

Part D – Chapter VII-1

Chapter VII – Details and special features of theproceedings
1.

Sequence of proceedings

1.1 Basic principle
Examination of the admissibility of the opposition and preparation of theexamination of the opposition will be commenced immediately after thenotice of opposition has been received by the formalities officer or the
opposition division (see D-IV, 1 and 3 and D-V, 1 and 2).
If during the rest of the proceedings the opposition division, on account of
the amount of work in hand, is unable to process immediately all the
oppositions submitted, the reference date for the sequence of tasks will, in
principle, be the date on which the last observations in respect of which atime limit had been laid down were submitted by any of the parties, but may
not be later than the date on which the time limit expired. Documents
received unsolicited or not subject to a previously stipulated official time
limit, in connection with official communications setting a time limit, will notaffect the sequence of tasks unless they require a further early notification
setting a time limit.
1.2 Exceptions
Notwithstanding D-VII, 1.1 above, oppositions are to be given priority:(i)

if the earlier examination proceedings were of considerably longer
duration than usual;(ii)

if the opposition proceedings have already extended over aconsiderably longer period than usual;(iii)

if a party to the proceedings has submitted a reasoned request for
accelerated processing in a case where an infringement action in
respect of the European patent is pending before a national court ofa contracting state, or if the EPO is informed by a national court orcompetent authority of a contracting state that infringement actions
are pending (see the notice from the EPO dated 17 March 2008,
OJ EPO 2008, 221);(iv)

if other matters to be dealt with, e.g. divisional applications, hinge
upon the final decision concerning the opposition; or(v)

if the next procedural step can be dealt with relatively quickly.

2. Request for documents
Documents referred to by a party to opposition proceedings must be filed
together with the notice of opposition or the written submissions. A single
copy of these documents is sufficient. If such documents are neither
enclosed nor filed in due time upon invitation by the formalities officer, theopposition division may decide not to take any arguments based on theminto account.

Rule 83

Part D – Chapter VII-2

Guidelines for Examination in the EPO

March 2023

In implementing this provision, the desired aim of speeding up theprocedure will be borne in mind as much as the common interest in taking
obviously relevant submissions into account.
Rule 53(3)

If during the opposition proceedings it becomes apparent that the previous
application from which the opposed patent claims priority is not in an official
language of the European Patent Office and the validity of the priority claim
is relevant to the determination of the patentability of the subject-matter ofthe patent concerned, the opposition division will invite the patent proprietor
to file a translation of that application into one of the official languages
within a period to be specified. Alternatively, a declaration may besubmitted that the European patent application on the basis of which the
opposed patent was granted is a complete translation of the previous
application. For the procedure for inviting the patent proprietor to file such atranslation or declaration see A-III, 6.8, and F-VI, 3.4. Such an invitation is
not to be issued if the translation of the previous application or thedeclaration was available to the European Patent Office and is to be
included in the file of the European patent application under Rule 53(2).
Failure by the patent proprietor to supply a required translation or
declaration in due time will lead to the priority right being lost. This will havethe effect that the intermediate document(s) will become prior art under
Art. 54(2) or Art. 54(3), as applicable, and therefore relevant for theassessment of patentability (see A-III, 6.8.3). The patent proprietor will be
notified of this loss of rights (see A-III, 6.11). As a means of redress, thepatent proprietor may request either re-establishment of rights under
Art. 122 and Rule 136 (see E-VIII, 3) or a decision under Rule 112(2)(see E-VIII, 1.9.3).
3.

Art. 118

Unity of the European patent

3.1 Basic principle
If the patent proprietors are not the same for different designatedcontracting states, the unity of the European patent in opposition
proceedings will not be affected, since such persons are to be regarded as
joint proprietors (see D-I, 6, second and third paragraphs).
In particular, the text of the European patent will be uniform for all
designated contracting states unless otherwise provided for in the EPC(see D-VII, 3.2 and H-III, 4).
3.2 Factors affecting the unity of the European patent
The unity of the European patent in opposition proceedings will be affected
if the previous patent proprietor and the person replacing them pursuant toArt. 99(4) in respect of a particular contracting state are not deemed to be
joint patent proprietors (see D-I, 6). In this event, the opposition
proceedings involving the different patent proprietors must be conducted
separately. Since different requests may be submitted by the two patent
proprietors (e.g. as regards amendments to the claims), the two sets of
opposition proceedings may lead to different conclusions, e.g. as regards
the text of the European patent or the scope of protection.

March 2023

4.

Guidelines for Examination in the EPO

Part D – Chapter VII-3

Procedure where the patent proprietor is not entitled

4.1 Stay of proceedings
If third parties provide proof, e.g. a certificate from the court concerned, tothe EPO during opposition proceedings or during the opposition period thatthey have opened proceedings against the patent proprietor for the purposeof obtaining a decision within the meaning of Art. 61(1), opposition
proceedings are stayed by the Legal Division in accordance with Rule 14(1)EPC unless the third parties consent to their continuation. Such consent
must be communicated in writing to the EPO and is irrevocable. However,the proceedings will be stayed only if the opposition division has deemedthe opposition admissible.
If proceedings within the meaning of Art. 61(1) are instituted during the
opposition period, a stay of proceedings will be possible only if a notice of
opposition has been filed. Accordingly, the third party might have to file an
opposition itself in order to benefit from a stay of proceedings under
Rule 78.
The dates of stay and resumption of proceedings will be entered in theEuropean Patent Register. The parties to the opposition proceedings are to
be informed of the order staying the proceedings.
4.1.1 Date of the stay of proceedings
The proceedings are stayed on the date on which the EPO receives
evidence that proceedings against the patent proprietor have been
instituted. The requirements for valid institution of relevant proceedings are
determined by national law (J 7/00).
4.1.2 Legal character and effect of the stay of proceedings
Stay of proceedings is a preliminary procedural measure sui generis whichtakes immediate effect as a preventive measure to preserve the third
party's possible rights (J 28/94; J 15/06).
The patent proprietor will not be heard but may file a request for an
appealable decision on the stay of proceedings.
Stay of proceedings means that the legal status quo existing at the time ofordering is maintained, i.e. neither the EPO nor the parties may validly
perform any legal acts (J 38/92).
An automatic debit order ceases to be effective on the day on which a stayof the proceedings takes effect (see Point 11.1(c) AAD, Annex A.1 to the
ADA,
Supplementary publication 3,
OJ EPO 2022,
page 35
Supplementary publication 4, OJ EPO 2019, page 30). If the automatic
debiting procedure is to be used again after resumption of the proceedings,
a new automatic debit order is to be filed.
4.2 Continuation of proceedings
The date of the continuation of the proceedings and the legal basis for theircontinuation are to be communicated to the parties to the opposition
proceedings.

Rule 78(1)Part D – Chapter VII-4

Rule 14(2)Rule 78(1)Rule 14(3)Rule 78(1)Guidelines for Examination in the EPO

March 2023

4.2.1 Continuation after a final decision
Proceedings are resumed when evidence is provided that a final decision
within the meaning of Art. 61(1) has been taken. If the decision is in favourof the third party, the proceedings may not be resumed earlier than threemonths after the decision has become final, unless the third-party requests
resumption.
4.2.2 Continuation regardless of the stage reached in national
proceedings
When giving a decision on the stay of proceedings or thereafter, the Legal
Division may set a date on which it intends to continue the proceedings,
regardless of the stage reached in the national proceedings.
Unlike the decision on staying the proceedings, it is at the discretion of theLegal Division to decide whether proceedings are to be resumed. In
exercising this discretion, the Legal Division has to take into account the
impact of a further suspension or the continuation of the proceedings oneach of the parties (J 33/03). Some aspects to be taken into account when
exercising this discretion are the duration of the stay and the outcome offirst instance proceedings before national courts. Likewise, it will beconsidered whether delaying tactics are being employed by the third party.

Rule 14(4)Rule 78(1)4.3 Interruption of time limits
The time limits in force at the date of stay are interrupted by the stay ofproceedings. The time which has not yet elapsed begins to run as from thedate on which proceedings are resumed; however, the time still to run after
the resumption of the proceedings must not be less than two months.
Example:A communication under Rule 82(2) maintaining the patent in amended form
is despatched by the EPO on 24.01.2018. Under Rule 126(2) andRule 131(2), this communication is deemed delivered on 03.02.2018. The
three-month period to pay the publication fee and file the translation of any
amended claim starts on the day following delivery of the communication,i.e. on 04.02.2018, and it ends on 03.05.2018. Attention is drawn toamended Rules 126, 127 and 131 entering into force on 1 November 2023
and under which computation of periods will change. Detailed informationon the changes in practice will be published in the Official Journal of the
EPO well in advance.
If proceedings are stayed under Rule 14(1) by the Legal Division on
23.02.2018, the three-month period has elapsed from 04.02.2018 to
22.02.2018 before the event of the staying of the proceedings, i.e. 19 days
have already passed and the period remaining is 9 days and 2 months.
Since the remaining period is longer than two months, under Rule 14(4) itwill run after the resumption of the proceedings.

March 2023

Guidelines for Examination in the EPO

Part D – Chapter VII-5

Hence, if the proceedings are resumed by the Legal Division on
07.06.2018, the period for paying the publication fee and filing thetranslation of the claims runs until 16.08.2018 for the following reasons:(i)the day of resumption of the proceedings by the Legal Division(07.06.2018) is the first day on which the remaining period starts
running again (Rule 131(2) does not apply).

(ii)

The remaining days are added first and then the remaining months:
in the example, 9 days from and including 07.06.2018 results in
15.06.2018, and the addition of another 2 months results in theremaining period expiring on 15.08.2018.

(iii)

Since Rule 134(1) applies also to the remaining period and since on
the 15.08.2018 no mail is delivered in Munich (public holiday), thetime limit is extended until 16.08.2018.

4.4 Department responsible
The Legal Division is responsible for the procedure where the patent
proprietor is not entitled (see the decision of the President of the EPO
dated 21 November 2013, OJ EPO 2013, 600).

Art. 20

5. Continuation of the opposition proceedings in the cases coveredby Rule 84
5.1 Continuation in the case of surrender or lapse of the patent
If the European patent has been surrendered or has lapsed for all thedesignated states, the opposition proceedings must be continued at therequest of the opponent filed within two months after the date on which the
opposition division informed the opponent of the surrender or lapse.
Evidence of the lapse must generally be provided by submitting extracts
from the Patent Registers of the designated contracting states.
Surrender or lapse has immediate nonretroactive effect (i.e. patent
protection ceases on the date of surrender or lapse), whereas a revokedpatent is deemed to have had no effect from the outset (Art. 68). So the
opponent may still have an interest in the revocation of a lapsed or
surrendered patent.
If, in the case of a request for continuation of the proceedings, the patent
proprietor has renounced before the competent authorities in thedesignated states all rights conferred by the patent with ab initio anduniversal effect, or if no request for continuation has been received within
the time limit, the opposition proceedings will be closed. The decision toclose the proceedings will be communicated to the parties.
A statement by the patent proprietors making it unambiguously clear thatthey no longer wish their patent to be maintained is considered to be arequest for its revocation, irrespective of the wording used (T 237/86). For
details of the procedure to be followed, see D-VIII, 1.2.5.

Rule 84(1)Part D – Chapter VII-6

Rule 84(2)Guidelines for Examination in the EPO

March 2023

5.2 Continuation on the death or legal incapacity of the opponent
In the event of the death or legal incapacity of an opponent, the opposition
proceedings may be continued by the opposition division of its own motion,even without the participation of the heirs or legal representatives, forexample if the legal proceedings in connection with the will or theappointment of a new legal representative would inordinately prolong the
opposition proceedings. This provision will apply not only where only one
opposition has been filed: it will also apply in cases where not all those whohave filed opposition are deceased or legally incapacitated.
The opposition division will continue the proceedings if, for instance, thepatent proprietor has submitted amendments to the patent in response to
the notice of opposition (see T 560/90). The opposition division will also
continue the proceedings if it considers that the stage reached in the
opposition proceedings is such that they are likely to result in a limitation or
revocation of the European patent without further assistance from the
opponent(s) concerned and without the opposition division itself having toundertake extensive investigations (see T 197/88).
The patent proprietor and any other parties are to be informed that theproceedings will be continued. Otherwise the proceedings are closed andthe decision to close the proceedings is communicated to the parties.

Rule 84(2)Art. 105
Rule 89

5.3 Continuation after the opposition has been withdrawn
The opposition proceedings can be continued even if every opposition has
been withdrawn. The principles set forth in D-VII, 5.2 apply mutatis
mutandis in deciding whether the proceedings are to be continued orclosed.
6. Intervention of the assumed infringer
Assumed infringers of a patent (see D-I, 5) may file notice of intervention in
the opposition proceedings within three months of the date on which
infringement proceedings were instituted against them or on which they
instituted proceedings for a court ruling that they are not infringing thepatent. Notice of intervention must be filed in a written reasoned statement.
It is not deemed to have been filed until the opposition fee has been paid in
the amount prescribed in the Rules relating to Fees under the EPC.
Intervention is permissible as long as opposition or appeal proceedings are
pending. A third party can become a party to the proceedings during theperiod for filing an appeal only if a party to the proceedings in which thedecision was given files an appeal pursuant to Art. 107; otherwise thedecision of the opposition division will become final on expiry of the appeal
period (see G 4/91 and G 1/94).
A properly filed and admissible intervention is treated as an opposition,
which may be based on any ground for opposition under Art. 100(see G 1/94). This means that, when intervening at any stage offirst-instance proceedings, the intervener enjoys essentially the same rights
as any other party to the proceedings. If the intervener introduces new facts
and evidence which appear to be crucial, the proceedings may need to be
prolonged to enable them to be adequately considered. In all other cases

March 2023

Guidelines for Examination in the EPO

Part D – Chapter VII-7

the opposition division must ensure that the intervention does not delay theproceedings.
If the notice of intervention is filed at a late stage of the proceedings, forexample when oral proceedings have already been scheduled, theopposition division may dispense with issuing communications under
Rule 79(1) to Rule 79(3). The introduction of a new ground for opposition atsuch a late stage may lead to a postponement of the date set for oralproceedings.

Rule 79(4)For accelerated processing of oppositions and accelerated processing
before the boards of appeal on request, see E-VIII, 5 and E-VIII, 6.
The notice of intervention, filed in a written reasoned statement, must
contain:Rule 89(2)(i)

a statement of the grounds for intervention and corresponding
evidence. The proceedings providing the grounds for intervention
must be directed towards establishing an infringement (or its
absence) as a final legal result. Proceedings directed at thepreservation of evidence to enable a party to initiate separate
infringement proceedings are not sufficient in this regard(see T 439/17).

Art. 105(1)(ii)

the name, address and nationality of the assumed infringer and thestate in which the assumed infringer's residence or principal place ofbusiness is located. Names of natural persons must be indicated by
the person's family name and given name(s), the family name being
indicated before the given name(s). Names of legal entities, as wellas companies considered to be legal entities by reason of thelegislation to which they are subject, must be indicated by theirofficial designations. Addresses must be indicated in such a way as
to satisfy the customary requirements for prompt postal delivery at
the indicated address. They must comprise all the relevant
administrative units, including the house number, if any. Assumed
infringers (whether natural or legal persons) whose residence or
principal place of business is in an EPC contracting state and who
act without a professional representative can use an address forcorrespondence other than their residence. The address forcorrespondence must be the assumed infringer's own address. Post
cannot be sent to a different (natural or legal) person, since that
requires a valid form of representation under Art. 133 and 134. It is
recommended that the telephone and fax number be indicated(see D-IV, 1.2.2.2(i) and 1.4.2);

Rule 76(2)(a)Rule 41(2)(c)(iii)

the number of the European patent at issue in the opposition
proceedings in which intervention is made, the name of the patent
proprietor and the title of the invention (see D-IV, 1.2.2.2(ii)and 1.4.2);

Rule 76(2)(b)(iv)

a statement of the extent to which the European patent at issue is
opposed by way of intervention and of the grounds on which theRule 76(1)Rule 76(2)(c)Part D – Chapter VII-8

Guidelines for Examination in the EPO

March 2023

opposition by way of intervention is based, as well as an indication of
the facts and evidence presented in support of these grounds,
togetherwithastatementofreasons,i.e. arguments(see D-IV, 1.2.2.1(iii) to 1.2.2.1(v) and 1.4.2);
Rule 76(2)(d)(v)

Rule 77(1)D-IV, 1 sets out further details and explains how to deal with theintervention if one of these requirements is not fulfilled.

Art. 103

Rule 87

if the assumed infringer has appointed a representative, therepresentative's name and address of place of business inaccordance with subparagraph (ii) as set out above(see D-IV, 1.2.2.2(iii) and 1.4.2).

7. Publication of a new specification of the patent
If a European patent is maintained in an amended form, the EPO must, assoon as possible after it publishes the mention of the opposition decision,
publish a new specification of the European patent containing thedescription, the claims and any drawings, in the amended form.
Rule 74 applies mutatis mutandis to the new specification of the European
patent.
8. Transitional provisions for Art. 54(4) EPC 1973 and Art. 54(5)Art. 54(4) EPC 1973 and Rule 23a EPC 1973 continue to apply to patents
granted in respect of patent applications filed before 13 December 2007.
Consequently, in such cases, the designated countries need to be taken
into consideration when assessing the novelty of documents according toArt. 54(3) (see H-III, 4.2).
Art. 54(5) applies only to patents for which the date of the decision to grant
the patent under consideration was taken on or after 13 December 2007
(Special edition No. 1, OJ EPO 2007, 197). If the decision to grant was
taken before that date (the date of entry into force of EPC 2000), only
"Swiss type" claims are allowed for any second or further medical use(provided these claims meet with all the other requirements of theConvention).
Where the subject-matter of a claim is rendered novel only by a new
therapeutic use of a medicament, that claim may no longer take the form of
Swiss-type claim for European or international patent applications having afiling date or earliest priority date of 29 January 2011 or later (see G 2/08,
OJ EPO 2010, 514 and G-VI, 7.1).
Examples:Date of entry into force of EPC 2000: 13.12.2007.
The decision to grant for patent EP1 mentions the date of 13.12.2007 in the
top box and the date of 07.12.2007 in the bottom line.
EP1 has three claims.

March 2023

Guidelines for Examination in the EPO

Claim 1: Product X.
Claim 2: Product X for use in medicine.
Claim 3: Product X for use in the treatment of asthma.
Notice of opposition is duly filed in 2008 citing prior-art document D1 under
Art. 54(2) EPC which reveals product X and its therapeutic use in thetreatment of pain and more specifically headache.
The situation is as follows:
According to G 12/91 and J 7/96, published in OJ EPO 1999, 443, the datewhen the decision to grant the patent was taken is the date the decision to
grant was handed over to the EPO postal service, that is 07.12.2007.
This means that, as regards medical use-related claims, EP1 is treatedunder the system applicable before EPC 2000's entry into force on
13.12.2007. Thus, Art. 54(5) EPC does not apply to EP1.
Therefore, in the opposition proceedings for EP1, claims 1-3 are no longer
acceptable. Claims 1 and 2 are not novel and claim 3 is not in the required"Swiss-type" format for a second medical use (G 5/83). The proprietor ofpatent EP1 would then need to abandon claims 1 and 2 and reformulate
claim 3 as: "Use of product X for the manufacture of a medicament for thetreatment of asthma".
It is to be noted that if the date of handing the decision to grant over to the
EPO postal service had been 13.12.2007 or later, then Art. 54(5) EPC
would have been applicable and in the current example claim 3 of EP1
could have been maintained as granted.
Example of conflicting prior art:
The mention of grant for a patent EP1 filed on 10.12.2007, designating FR,
DE, GB, IT and ES and claiming no priority, is published in the Bulletin in
May 2012 and nine months later notice of opposition is filed. One of thenovelty objections is raised under Art. 54(3) EPC with regard to a European
patent application EP2 published on 18.12.2007, having a valid priority dateof 16.06.2006 and validly designating FR, DE and GB. Oral proceedings inthis case are held during 2013.
The situation is as follows:
EP1 was granted in respect of a patent application filed before the date of
EPC 2000's entry into force (i.e. 10.12.2007). Consequently, as regards
Art. 54(3) EPC, the provisions in force before that date apply. So in thiscase, Art. 54(4) and Rule 23a EPC 1973 still apply (in 2013). Therefore,
EP2 is relevant for novelty only for the designations FR, DE and GB but notfor the designations IT and ES.

Part D – Chapter VII-9

Part D – Chapter VII-10

Guidelines for Examination in the EPO

March 2023

Note that if EP1 had in this case been filed on 13.12.2007, Art. 54(4) andRule 23a EPC 1973 would no longer be applicable when assessing novelty
under Art. 54(3) EPC. Consequently, EP2 would be prior art against thenovelty of EP1 as a whole, regardless of any common designations.

March 2023

Guidelines for Examination in the EPO

Part D – Chapter VIII-1

Chapter VIII – Decisions of the opposition
division
General remarks on decisions appear in E-X.
1.

Final decisions on an admissible opposition

1.1 General remarks
The opposition division has to take a final decision on the opposition, by
revoking the European patent or rejecting the opposition or ruling that theEuropean patent is to be maintained as amended. If the only admissible
opposition or all the admissible oppositions are withdrawn and the
opposition division takes the view that as the case stands there is no
reason for the Office to continue the proceedings of its own motion, theproceedings are closed by means of a formal decision (Rule 84(2), second
sentence).
1.2

Revocation of the European patent

1.2.1 Revocation on substantive grounds
If the opposition division is of the opinion that at least one ground for
opposition as set out in Art. 100 prejudices the maintenance of theEuropean patent, it will revoke the patent under Art. 101(2), first sentence.
Analogously, if the opposition division is of the opinion that the patent as
amended during the course of the opposition proceedings does not meetthe requirements of the Convention, it will revoke the patent under
Art. 101(3)(b).

Art. 101(2)Art. 101(3)(b)

For revocation because the patent proprietor has not agreed to the text,
see D-VI, 2.2 and D-VIII, 1.2.5.
1.2.2 Revocation for failure to pay the prescribed fee for publishing,
to file a translation or to file a formally compliant version of amended
text passages
Under Rule 82(2) in conjunction with (3), if the patent proprietor fails in duetime to:(i)

pay the prescribed fee for the printing of a new specification of theEuropean patent,(ii)

file a translation of the amended claims in the two official languagesof the EPO other than the language of the proceedings(see D-VI, 7.2.3), or(iii)

file a formally compliant verbatim version of the amended text
passages (see E-III, 8.7.3),

the European patent will be revoked.

Rule 82(3)Part D – Chapter VIII-2

Rule 142(3)(a)Guidelines for Examination in the EPO

March 2023

1.2.3 Revocation for failure to notify the appointment of a new
representative
If opposition proceedings are interrupted according to Rule 142(1)(c) andthe patent proprietor, who is not resident in one of the contracting states,
does not forward a notification of the appointment of a new representative
within the two-month period laid down in Rule 142(3)(a) (see E-VII, 1.4(i)),
the European patent will be revoked.
1.2.4 Revocation in the event of requirements not being met until
after expiry of time limits
In the cases referred to in D-VIII, 1.2.2 and 1.2.3, the European patent will
be revoked even if the omitted acts have been completed during the period
between expiry of the time limit and the taking of a final decision, unless arequest for re-establishment of rights has been filed, in which case adecision must first be given on the request.
1.2.5 Revocation of the patent in the event that the patent proprietor
no longer wishes the patent to be maintained as granted
If patent proprietors state that they no longer approve the text in which thepatent was granted and do not submit an amended text, the patent must be
revoked pursuant to Art. 101 (see T 203/14 and T 2405/12). This also
applies when the patent proprietor requests the patent to be revoked.
If patent proprietors unambiguously declare to the EPO the surrender (orabandonment or renunciation) of the patent, this is interpreted as
equivalent to a request that the patent be revoked (see T 237/86). If therequest of the patent proprietors is not unambiguous, they are given theopportunity to request that the patent be revoked or to declare that they nolonger approve of the patent being maintained as granted. This results inthe patent being revoked.

Art. 101(2)1.3 Rejection of the opposition
If the opposition division is of the opinion that the grounds for opposition
mentioned in Art. 100 do not prejudice the maintenance of the European
patent unamended, it will reject the opposition.
1.4

Art. 101(3)(a)Rule 82(1) and (2)Maintenance of the European patent as amended

1.4.1 Taking of a final decision
If the opposition division is of the opinion that, taking into consideration theamendments made by the patent proprietor during the opposition
proceedings, the patent and the invention to which it relates meet therequirements of the EPC, it will issue an interlocutory decision to maintainthe European patent as amended.
The procedure specified in D-VI, 7.2.1 to 7.2.3 will precede the final
decision.

Rule 82(4)1.4.2 Statement in the decision of the amended form of the European
patent
The decision must state which text of the European patent forms the basis
for maintaining it.

March 2023

2.

Guidelines for Examination in the EPO

Part D – Chapter VIII-3

Other decisions

2.1 Decision on the inadmissibility of an opposition or intervention
See D-IV, 3 and 5.5 with reference to the notice of opposition and D-IV, 5.6
and D-VII, 6 for the intervention of an assumed infringer.
2.2 Decisions which do not terminate proceedings
Such decisions are dealt with in E-X, 3.
See D-VI, 7.2.2 with reference to the maintenance of a patent with
amended documents.
2.3 Decision on a notified loss of rights at the request of the person
concerned
This decision is dealt with in E-VIII, 1.9.3.
2.4 Decision on re-establishment of rights
This decision is dealt with in E-VIII, 3.3.
2.5 Decision on closure of the opposition proceedings
This decision is dealt with in D-VII, 5 and D-VIII, 1.1.

Rule 112(2)March 2023

Guidelines for Examination in the EPO

Part D – Chapter IX-1

Chapter IX – Costs
1.

Charging of costs

1.1 General principle
Each party to the proceedings must bear the costs it has incurred.
However, an opposition division may, for reasons of equity, order a different
apportionment of such costs, which may have been incurred during thetaking of evidence, in oral proceedings or under other circumstances.

Art. 104(1)Rule 88

The phrase "taking of evidence" refers generally to the receiving ofevidence by an opposition division, whatever the form of such evidence. It
includes among other things the production of documents and sworn
statements in writing as well as hearing witnesses (see T 117/86).
1.2 Decisions on the apportionment of costs
Apportionment of costs must be dealt with in the decision on the opposition.
This apportionment will form part of the main decision and will beincorporated in the operative part of the decision.

Rule 88(1)The decision will deal only with the obligation on the party or parties
concerned to bear costs. The actual amounts to be paid by one party toanother must be dealt with in the decision on the fixing of costs(see D-IX, 2).
A statement that the parties will bear their own costs may be incorporated
in the grounds for the decision on the opposition and must be included incases where one of the parties to the proceedings has submitted a request
for a decision on the apportionment of costs which the opposition division
does not consider justified.
A decision to apportion costs may be made by the opposition division of its
own motion, even if no application for the apportionment of costs has beenmade.
In the absence of an express decision on the apportionment of costs, eachof the parties concerned must bear its own costs.
1.3 Costs to be taken into consideration
Apportionment of costs may relate only to those expenses necessary toassure proper protection of the rights involved.

Rule 88(1)Examples of such expenses are:Art. 104(1)(i)

expenditure incurred in respect of witnesses and experts, together
with other costs arising in connection with the taking of evidence;(ii)

remuneration of the representatives of the parties in respect of oralproceedings or the taking of evidence;Part D – Chapter IX-2

Guidelines for Examination in the EPO

March 2023

(iii)

remuneration of the representatives of the parties in respect of undue
delaying of the procedure by one of the parties or in respect of thelate filing of documents; and(iv)

expenditure incurred directly by the parties, i.e. their travel expenses
in coming to oral proceedings or the taking of evidence.

Costs incurred in respect of superfluous or irrelevant evidence, etc., cannot
be apportioned.
In the order of apportionment as part of its decision, the opposition division
will state the kind of costs to be differently apportioned and reimbursed to
the receiving party as clearly and precisely as possible.
1.4 Principle of equity
Reasons of equity will require an opposition division to decide on issuing anorder to apportion costs when the costs arise in whole or in part as a resultof conduct of one party which is not in keeping with the care required toassure proper protection of the rights involved, in other words when thecosts are culpably incurred as a result of irresponsible or even malicious
actions. Parties may of course defend their rights or interests (e.g. theproprietors defend their patent) by any legally admissible means within theframework of the opposition proceedings; they may, for example, request
oral proceedings or the taking of evidence.
Accordingly, costs incurred as a result of default or of inappropriate legalmeans used by either party may be charged to the party responsible, even
if that party has been successful in the opposition proceedings. Situations
resulting from "force majeure" (such as absence at oral proceedings due toa sudden serious illness) do in general not lead to the apportionment ofcosts.
The following are examples where the principle of equity may be applied:
The costs incurred by the opponent in preparing oral proceedings whichhave been appointed may be charged to patent proprietors if the lattersurrender the patent just before the date appointed for the oralproceedings, although it was clear when the proceedings were being
arranged, from a document put forward by the opponent, that the patent
proprietors had no case and that they alone were therefore liable for theirirresponsible conduct.
If an aspect of the state of the art is adduced as an argument at a latestage and it can be shown, or it is evident, that the party concerned knew of
it earlier, e.g. in that the party in question had made prior use of it, theadditional costs of further oral proceedings unnecessarily incurred by theother parties may be charged to the party which caused them by submitting
this argument at such a late stage.
If relevant facts or evidence are submitted by a party only at a late stage ofthe proceedings without any good reason and if, as a consequence,March 2023

Guidelines for Examination in the EPO

Part D – Chapter IX-3

unnecessary costs are incurred by another party, the opposition division
may decide on the apportionment of costs.
2.

Procedure for the fixing of costs

2.1 Fixing of costs by the opposition division
The formalities officer is entrusted with fixing the amount of the costs to be
paid to the beneficiary at the request of at least one party. The request froma party to the proceedings to fix the costs is admissible only if the decisionin which the apportionment of costs was ordered has become final.

Art. 104(2)Rule 88(2)A list of costs, with supporting evidence in respect of each amount involved,
must be attached to the request. Costs may be fixed once their credibility isestablished.

Rule 88(2)The parties will be notified of the costs as fixed by the formalities officer
acting for the opposition division.

Art. 119For an explanation of the duties entrusted to the formalities officers,
see D-II, 7.
2.2 Appeal against the fixing of costs by the opposition division
The communication in which the formalities officer has fixed the costs may
be reviewed if requested by one of the parties to the proceedings. The
opposition division will then issue an appealable decision.
The request for such a decision, stating the reasons on which it is based,must be filed with the EPO in writing within one month after the date of
notification of the communication in which the costs have been fixed. This
request is not deemed to be filed until the fee for the request of a decision
to be issued by the opposition division on the costs as fixed has been paid
at the rate prescribed in the Rules relating to Fees under the EPC.

Rule 88(3)The opposition division will take a decision on the request without oralproceedings.

Rule 88(4)This final decision by the opposition division can be appealed by each party
adversely affected. The appeal will only be admissible if the amount fixed
exceeds the appeal fee.

Rule 97(2)3. Enforcement of the fixing of costs
Any final decision of the EPO fixing the amount of costs must be dealt with,for the purpose of enforcement in the contracting states, in the same way
as a final decision given by a civil court of the state in the territory of which
enforcement is to be carried out. Verification of any such decision must be
limited to its authenticity.
"Decision" as referred to above also covers the final fixing of costs by the
opposition division.

Art. 104(3)March 2023

Guidelines for Examination in the EPO

Part D – Chapter X-1

Chapter X – Limitation and revocation
procedure
1. Introduction
The limitation and revocation procedures are centralised ex parteprocedures at the level of the EPO which allow the patent proprietor either
to have the claims of the granted patent limited or to have the whole patent
revoked for all the designated states. More particularly, the limitation
procedure offers an opportunity to obtain a limitation of a European patentin a short and straightforward procedure.
Unlike in the opposition procedure, there is no restriction on the period
between the grant of the patent and the filing of the request. Accordingly,
the request can be filed at any time after grant, after opposition
proceedings, or even after expiry of the patent.
The examining division is competent to decide on requests for limitation
and revocation. However, certain aspects of this procedure are entrusted toformalities officers (see decisions of the President of the EPO dated
12 December 2013,
OJ EPO 2014, A6,
and
23 November 2015,
OJ EPO 2015, A104).
2.

Rule 91

Examination for deficiencies in the request

2.1 Deficiencies which lead to the request being deemed not to havebeen filed
On receipt of a request for revocation or limitation of a patent, theformalities examiner will examine whether:(i)the request is filed with the EPO (Art. 105a(1))(ii)

opposition proceedings in respect of the patent are not pending at
the time of filing the request (Art. 105a(2) and Rule 93(1))(iii)

the relevant fee is paid (Art. 105a(1) and Art. 2(1), item 10a, RFees)(iv)

where the request is filed in a language according to Art. 14(4), thetranslation has been filed in due time (Rule 6(2))(v)

where the requester is required by Art. 133(2) to appoint a
representative, this was done in due time (Rule 152 (3) and (6)).

If any of these requirements are not met, the request is deemed not to havebeen filed. This finding is notified to the requester (Art. 119), and the fee isrefunded.
Otherwise, the request is considered to have been filed, and thelimitation/revocation procedure commences.

Art. 105a

Part D – Chapter X-2

Rule 92

Guidelines for Examination in the EPO

March 2023

2.2 Deficiencies which, if not remedied, lead to the request being
rejected as inadmissible
The formalities officer will furthermore examine whether:(i)the request is filed in writing (Rule 92(1))(ii)

the request includes the particulars of the requester required byRule 92(2)(a), referring to Rule 41(2)(c)(iii)

the request indicates in which contracting states the requester is thepatent proprietor (Rule 92(2)(a))(iv)

the request indicates the number of the patent to be limited or
revoked (Rule 92(2)(b))(v)

the request indicates in which contracting states the patent has taken
effect, even if in the meantime it has lapsed in one or more of thosecontracting states (Rule 92(2)(b))(vi)

in cases (iii) and (v), and if the requester is not the patent proprietor
for all these contracting states, the requester provides the names andaddresses of the other patent proprietors, and evidence ofentitlement to act on their behalf (Rule 92(2)(c)); due to theretroactive effect of a limitation/revocation (Art. 68), such evidence isrequired also in the case where the patent has lapsed in one or moreof the contracting states referred to under (v) in the meantime. Notethat in the case of joint patent proprietors, whether for the same ordifferent contracting states, the requirements of Rule 151 forappointment of a common representative also apply in the limitation
or revocation procedure (see A-VIII, 1.3)

(vii)

where limitation is sought, the request includes the complete versionof the amended claims (and of the description and drawings whereapplicable) (Rule 92(2)(d))(viii) if the requester has appointed a representative, the particulars
according to Rule 41(2)(d) (Rule 92(2)(e)) have been filed.
Rule 94

If any of the above requirements are not met, the requester is invited tocorrect the deficiencies within a period to be specified.
If the deficiencies are not corrected within this period, the request is to be
rejected as inadmissible. This decision is notified to the requester(Art. 119). Re-establishment of rights under Art. 122 is, however, available.
The decision rejecting the request is open to appeal (Art. 106(1)).
Otherwise, the request is deemed admissible.

Art. 105b(2)Rule 95

3. Decision on request for revocation
If the request is for revocation, and is admissible, the examining division will
revoke the patent and communicate this to the requester (Art. 105b(2) andRule 95(1)). The decision takes effect on the date on which it is publishedMarch 2023

Guidelines for Examination in the EPO

Part D – Chapter X-3

in the Bulletin (Art. 105b(3)). In accordance with Art. 68, the effect of thedecision is that the patent is revoked ab initio, conferring no rights under
Art. 64 or 67. As stated in Art. 105b(3), the decision applies to allcontracting states in respect of which the patent was granted. It is notpossible for the patent to be revoked only for some contracting states, andnot for others.
4.

Substantive examination (limitation)

4.1 Department responsible
If a request for limitation is deemed to be admissible, then the file will be
forwarded to the examining division, as the department responsible for theexamination of the request.
4.2 Basis for the examination
The basis for the examination is the patent as granted or amended in
opposition or limitation proceedings (Rule 90). In cases in which there havealready been both opposition and limitation procedures, or more than one
limitation procedure, the basis for the examination is the patent as
amended in the most recent of those procedures.

Rule 91

Rule 90

The requester has the option of providing information (with the request, or
later in the procedure) as to why the request is allowable, and/or as to the
purpose behind the request, but there is no obligation to do so. The
purpose underlying the request is, however, of no relevance to the question
whether it is allowable.
4.3 Scope of the examination
The scope of the examination is limited by Rule 95(2). The examining
division is required to decide only whether the amended claims of therequest constitute a limitation with respect to the claims as granted oramended (i.e. those referred to in D-X, 4.2), and whether the amended
claims comply with the requirements of Art. 84 and Art. 123(2) and (3).
The term "limitation" is to be interpreted as meaning a reduction in theextent of protection conferred by the claims. Mere clarifications or changes
made to protect a different subject ("aliud") are not to be considered aslimitations.
More particularly, the limitation of a dependent claim only, without any
independent claim being limited, is acceptable. However, it is not
permissible to introduce non-limiting amendments in the description or in
the claims that are not a consequence of the limitation of the claims (forexample tidying up unclear claims, making amendments to improve thepatent or cosmetic changes). Likewise, adding dependent claims inlimitation is not permissible if not directly caused by the limitation
introduced in the claims.
Amendments in a claim leading to a scope of protection which is smaller
but falls partly outside the extent of protection conferred by the claim
previously on file must be dealt with cautiously. Even if the amendment
constitutes a limitation, such a claim would generally contravene Art. 123(3)Rule 95(2)Part D – Chapter X-4

Guidelines for Examination in the EPO

March 2023

(see also H-V, 7, for Art. 123(3) in the case of a change of category of aclaim).
Art. 69(1)For interpretation of Art. 84 and Art. 123(2), see F-IV, 4 and H-IV, 4.4
H-IV, 5.4. The description and drawings are used to interpret the claims inaccordance with Art. 69(1) and its Protocol on Interpretation. Amendments
made to these parts might therefore introduce matter contrary to Art. 123(3)(see H-IV, 3.1 and 3.3).

Rule 139

For the admissibility of a request for correction under Rule 139 of the
documents making up the patent, see H-VI, 2.1.1.
The filing of auxiliary requests together with a main request is possible(see H-III, 3).
4.4 Further stages of the examination
If the examination under D-X, 4.3 above leads to the conclusion that therequest is allowable, then the next stage of the procedure – theestablishment of the formal requirements for limitation as described under
D-X, 5 can begin. Otherwise, in accordance with Rule 95(2), a
communication must be sent to the requester identifying the deficiencies
and giving the opportunity to correct them within a period to be specified.
The normal period is two months (Rule 132(2)). It is, in principle,
extendable, but only under exceptional circumstances.
The division may not adapt the description of its own motion (see D-X, 5).
In the case of discrepancy between the claims and the description, an
objection will always be raised.
If the requester responds in due time in a manner such that no objections
remain, then the procedure continues as in D-X, 5.
Rule 95(2) provides for only one opportunity to make amendments during
limitation. However, if the response to the communication under Rule 95(2)overcomes the objections raised in that communication, but gives rise to
new objections, the fundamental principle of the right to be heard under
Art. 113(1) will normally make a further communication necessary in order
to communicate the new objections to the requester before the decision to
reject the request for limitation is issued (see D-X, 6). Normally, no further
amendments may be made in reply to that communication.
Rule 95(2) specifies that the examining division must give the requester
one opportunity to correct the deficiencies. However, any request for oralproceedings according to Art. 116 will be granted if the division does notconsider the request for limitation to be allowable. No further amendments
may be submitted during oral proceedings if the opportunity to makeamendments has already been taken.

Art. 115
Rule 114

4.5 Third-party observations during the examination
Art. 115 explicitly covers all proceedings before the EPO, not just pre-grant
proceedings. Accordingly, its provisions also apply in principle to revocationand limitation proceedings. Patentability under Art. 115 is to be interpretedMarch 2023

Guidelines for Examination in the EPO

Part D – Chapter X-5

in a broader sense, so that issues relating to Art. 84 and Art. 123(2) may
also be taken into consideration. Requesters could, when responding to an
invitation under Rule 95(2), introduce further restrictions intended toaddress such observations. If they wish to do this, and no invitation under
Rule 95(2) is issued, their only option is to file a further request forlimitation.
5. Formal procedure for limitation when the request is allowable
If the request for limitation is allowable, then according to Rule 95(3) theexamining division must communicate this to the requesters and invite
them to pay the prescribed fee and file translations of the amended claims
into the other two official languages within a period of three months.

Rule 95(3)Art. 2(1), item 8 anditem 9, RFees

The nature of the communication under Rule 95(3) inviting the requester to
pay the prescribed fee and file translations of the claims is different fromthe communication of the intention to grant during examination proceedings
under Rule 71(3). During limitation, the text filed by the requester isdeemed to be approved, whereas at this stage in examination the text is aversion proposed to the applicants and subject to their approval.
Once the communication under Rule 95(3) is received, the requester can
only pay the fee and file the translations or have the request rejected for
failure to do so. Therefore, the examining division may not, with thecommunication under Rule 95(3), make amendments of its own motion to
the claims of a request for limitation in order to render them allowable oradapt the description of its own motion to the limited claim(s). The
provisions of Art. 113 would not be met, since the requester does not havean opportunity to contest or comment on the amendments made.
As in opposition proceedings, the requester benefits from a two-month
period of grace for reply with payment of a surcharge (Art. 2(1),item 9, RFees). Reestablishment of rights is available.
If the requester pays the fee and files the required translations in due time,the examining division will decide to limit the patent (Art. 105b(2) andRule 95(3), last sentence). This takes effect on the date on which themention of the decision is published in the Bulletin.

Art. 105b(2) and (3)As soon as possible after this, the amended specification will be publishedby the EPO. The form of publication of the amended patent specification isdefined in Rule 96, Rule 73(2) and (3) and Rule 74. The procedure for thisis the same as in opposition proceedings.

Art. 105c

As for revocation (see D-X, 3), the effect of the decision to limit the patent isthat the patent is limited ab initio.

Art. 68

6.
If:
(i)

Rejection of the request

the requester does not respond in due time to the invitation under
Rule 95(2) (see D-X, 4.4 above); orPart D – Chapter X-6

Guidelines for Examination in the EPO

March 2023(ii)

the requester responds in due time, but the request is still notallowable; or(iii)

the requester fails to pay the fee(s) and file the translation according
to Rule 95(3) (see D-X, 5 above),then the examining division will reject the request (Art. 105b(2), lastsentence and Rule 95(4)), provided the requirements of Art. 113(1) are met(see D-X, 4.4).
The decision to reject the request will be notified in accordance with
Art. 119 to the requester.
Rule 111(2)Art. 106(1)

In case (ii), the decision is a reasoned decision taken by the examining
division and is subject to appeal.
7.

Rule 93(1)Rule 93(2)Relation to opposition proceedings

7.1 Precedence of opposition proceedings
The case in which opposition proceedings are already pending when therequest for revocation or limitation is filed has been mentioned in D-X, 2.1.
In the opposite case, i.e. where an opposition is filed while revocation orlimitation proceedings are pending, the procedure depends on whether thepending proceedings relate to a request for revocation or for limitation.
According to Rule 93(2), if the pending proceedings relate to a request forlimitation, the examining division will terminate those proceedings and order
the reimbursement of the limitation fee. The limitation procedure is
terminated on the day the decision on the limitation procedure is handed
over to the internal EPO postal service. If the requester has already paid
the fee referred to in Rule 95(3) (see D-X, 5), this fee will also be refunded.
The opposition procedure will then continue in the normal manner.
The decision to terminate the limitation proceedings is notified to therequester (Art. 119).
Rule 93(2) is restricted to limitation proceedings. Therefore, in the case of
revocation proceedings, there is no precedence of opposition. Revocation
proceedings continue after an opposition is filed, and the case proceeds toopposition only if the request for revocation is deemed not to have been
filed, is rejected as inadmissible or is withdrawn. Otherwise, if the patent isrevoked, the opponent(s) will be informed of this situation and the
opposition proceedings will be terminated.
7.2 Filing of opposition after decision on limitation
On rare occasions it may happen that the limitation procedure is finished
before an opposition is filed within the nine-month period and the decision
to limit has already been published in the European Patent Bulletin. In suchcases the opponent does not benefit from a new nine-month period, since
the opposition period runs only once from publication of the mention of the
grant of the patent. Accordingly, the opponent will not have a full ninemonth period to formulate the opposition for the patent as limited.

March 2023

Guidelines for Examination in the EPO

8. Legal status of decisions
The decisions rejecting the request for limitation or revocation as either
inadmissible or not allowable (see D-X, 2 and 6) are open to appeal, as
they are decisions of the examining division terminating a procedure.
Accordingly, they are decisions listed as such in Art. 21(3)(a).

Part D – Chapter X-7

Art. 106(1)9. Withdrawal of the request
In the absence of any provision to the contrary and in accordance withnormal legal principles, the requester may withdraw the request forlimitation or revocation at any time, provided that the request is still
pending. In this case, however, the limitation or revocation fee will not be
refunded.
10. Different sets of claims
Art. 105b(3) specifies that the decision to limit or revoke will apply to thepatent in all contracting states for which it has been granted. There is thus
a single decision, covering all contracting states, but this decision may
include different sets of claims for different contracting states, or determinethat the limitation is in other ways different for different contracting states.
Such situations could arise in two different sets of circumstances.

Art. 105b(3)10.1 Limitation results in the claims becoming different in different
contracting states
The limitation could result in the claims becoming different in different
contracting states if the requester wishes to restrict the claims with respect
to one or more, but not all, contracting states in order to avoid conflict withnational prior rights. Such different sets of claims can be allowed, provided
that the substantive requirements are met for all sets for which therequester is seeking an amendment.
It follows from Rule 138 that a prerequisite for the introduction of different
claims for different contracting states during the limitation procedure is thatrequesters inform the EPO of the existence of the national prior rights whenfiling the different sets of claims. If they file different sets of claims without
informing the EPO of the national prior rights, then the request is to berefused under Art. 105b(3) and Rule 138.

Rule 138

For applications filed on or after 13.12.2007, different sets of claims can nolonger be justified on the basis of prior art under Art. 54(3) (for transitional
provisions, however, see D-VII, 8).

Art. 54(3)10.2 Limitation is different for different contracting states because theclaims as granted were different for different contracting states
The limitation is different in different contracting states because the claims
forming the basis of the limitation procedure were different in different
contracting states. This situation would occur where the patent has different
claims for different contracting states, e.g. because of national prior rights
or prior art under Art. 54(3) (for patents granted before 13.12.2007 or forpatents granted in respect of European patent applications pending at thattime), or where under Art. 61 a partial transfer of rights has taken place(Rule 18(2)).

Part D – Chapter X-8

Guidelines for Examination in the EPO

March 2023

The requester might wish to apply a limitation already introduced for one ormore contracting states to the other contracting states, or to bring theclaims into line with each other for a different reason. If this results in asingle set of claims for all contracting states, and the substantive
requirements are met separately for each different set of original claims,
then the request would be allowable.
Note that it would also be possible that the circumstances of this paragraphand paragraph D-X, 10.1 coexist in a single request.

Rule 90

11. Multiple requests
Rule 90 defines that the basis for the request can be the claims as
amended in limitation proceedings, thus providing for multiple subsequent
requests, i.e. a request for limitation or revocation following one or more
earlier requests for limitation.

Part E
Guidelines on General
Procedural Matters

March 2023

Part E – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – Introduction

I-1

Chapter II – Communications and notifications II-1
1.

Communications

II-1

1.1

General remarks

II-1

1.2

Number of communications

II-1

1.3

Form of decisions, communications and notices

II-1

2.

Notification

II-1

2.1

General remarks

II-1

2.2

Method of notification

II-2

2.3

Notification by postal services

II-2

2.4

Electronic notification

II-3

2.5

Notification to representatives

II-4

2.6

Irregularities in the notification

II-4

Chapter III – Oral proceedings

III-1

1.

General

III-1

1.1

Introduction

III-1

1.2

Format of oral proceedings

III-1

1.3

Request for oral proceedings to be held on EPO
premisesIII-2

Request to hold on-site oral proceedings at aparticular site

III-2

2.

Oral proceedings at the request of a party

III-2

2.1

Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or isdeemed not to have been filed
III-3
Request for oral proceedings in examination to beheld on EPO premises
III-3

1.4

2.2

3.

Request for further oral proceedings

III-4

Part E – Contents b

Guidelines for Examination in the EPO

March 2023

4.

Oral proceedings at the instance of the EPO

III-4

5.

Preparation of oral proceedings

III-4

5.1

When can summons to oral proceedings be issued in
substantive examination?

III-5

6.

Summons to oral proceedings

III-5

7.

Change of date, cancellation or maintenance oforal proceedings

III-7

7.1
7.1.1
7.1.2

Changing the date of oral proceedings
Requests to change the date of oral proceedings
Change of date of oral proceedings at the instigationof the division
Change of date of oral proceedings – defined notice
period

III-7
III-7

7.2
7.2.1
7.2.2

Cancellation or maintenance of oral proceedings
GeneralWithdrawal of the request for oral proceedings

III-9
III-9
III-9

8.

Conduct of oral proceedings

III-9

8.1

Admission of the public to proceedings

III-9

8.2
8.2.1

Conduct of oral proceedings
III-10Oral proceedings on the EPO premises – use of
laptops or other electronic devices during either
ex parte or inter partes oral proceedings
III-10Oral proceedings by videoconference before
examining divisions
III-118.2.2.1 Participation of parties and theirrepresentatives from different locationsRemoteconnection of applicants and their representatives
III-118.2.2.2 Participation of members of the division fromdifferent locationsRemote connection of members of
the examining division
III-11
Technical problems
III-11
RecordingIII-12

7.1.3

8.2.2
8.2.1

8.2.2

8.2.3
8.2.4
8.3

8.3.2
8.3.3
8.3.3.1
8.3.3.2
8.3.3.3

Opening of oral proceedings; non-appearance of a
party
Checking the identity and authorisations ofparticipants at oral proceedings
Opening the oral proceedings
Late arrival, non-appearance and failure to connect
GeneralProcedure in opposition proceedings
Procedure in examination proceedings

8.4

Opening of the substantive part of the proceedings

8.3.1

III-8
III-8

III-12
III-12
III-14
III-14
III-14
III-15
III-16
III-16

March 2023

8.5
8.5.1
8.5.1.1
8.5.1.2
8.5.2

8.6

Part E – Contents c

Guidelines for Examination in the EPO

Submissions by the parties
Use of computer-generated slideshows in oralproceedings
Opposition proceedings (inter partes)
Examination proceedings (ex parte)
Written submissions during oral proceedings byvideoconference

III-16
III-18
III-18
III-19
III-19Facts, evidence or amendments introduced at a latestage

III-20

8.7
8.7.1
8.7.2
8.7.3

Handwritten amendments in oral proceedings
General principles
Procedure in examination proceedings
Procedure in opposition proceedings

III-20
III-20
III-21
III-228.8

Use of Rule 137(4) for amendments filed during oralproceedings in examination

III-23

8.9

Discussion of the facts and of the legal position

III-24

8.10

Right of the other members of the division to put
questionsIII-248.11
8.11.1
8.11.2

Closure of oral proceedings
Requesting postponement during oral proceedings
Adjournment of oral proceedings due to lack of timeIII-24
III-25
III-259.

Delivery of the decision

III-25

10.

Minutes of oral proceedings

III-26

10.1

Formal requirements

III-26

10.2

Language

III-27

10.3

Subject-matter of minutes

III-28

10.4
11.

Request for correction of minutes
Oral proceedings held by videoconferencetechnical aspects
Equipment and technology
Videoconference rooms at the EPO
Document camera
Preparations for the videoconference
Technical problems
Recording

11.1
11.1.111.1.2
11.2
11.3
11.4

Chapter IV – Taking and conservation ofevidence
1.

Taking of evidence by the departments of the
EPO

III-29–III-30
III-30
III-30
III-30
III-30
III-31
III-31

IV-1
IV-1

Part E – Contents d

Guidelines for Examination in the EPO

March 2023

1.1

General remarks

IV-1

1.2

Means of evidence

IV-1

1.3

Taking of evidence

IV-3

1.4

Order to take evidence

IV-3

1.5

Summoning of parties, witnesses and experts

IV-4

1.6
1.6.1
1.6.2
1.6.3
1.6.4
1.6.5
1.6.6
1.6.7
1.6.8

Hearing of parties, witnesses and experts
General remarks
Witnesses and experts not summoned
Guidance to persons heard
Separate hearings
Examination as to personal particulars
Examination as to res gestae
Entitlement of parties to put questions at hearings
Hearing of a witness no longer necessary

IV-4
IV-4
IV-5
IV-5
IV-5
IV-5
IV-5
IV-6
IV-6

1.7

Minutes of taking of evidence

IV-6

1.8
1.8.1
1.8.2
1.8.3

Commissioning of experts
Decision on the form of the opinion
Objection to an expert
Terms of reference of the expert

IV-7
IV-7
IV-7
IV-7

1.9

Costs arising from oral proceedings or taking ofevidence

IV-7

1.10
1.10.1
1.10.2
1.10.3

Entitlements of witnesses and experts
Expenses for travel and subsistence
Loss of earnings, fees
Details of the entitlements of witnesses and experts

IV-8
IV-8
IV-8
IV-8

1.11
1.11.1
1.11.2
1.11.3ModelsWhen may models be submitted?
Procedure
Keeping the model

IV-9
IV-9
IV-9
IV-9

1.12

Video recordings

IV-10

2.

Conservation of evidence

IV-10

2.1

Requirements

IV-10

2.2

Request for the conservation of evidence

IV-10

2.3

Competence

IV-10

2.4

Decision on the request and the taking of evidence

IV-11

3.

Taking of evidence by courts or authorities of thecontracting states
IV-11

March 2023

Part E – Contents e

Guidelines for Examination in the EPO

3.1

Legal co-operation

IV-11

3.2
3.2.1
3.2.2

Means of giving or taking evidence
Taking of evidence on oath
Evidence taken by a competent court

IV-11
IV-11
IV-11

3.3

Letters rogatory

IV-12

3.4

Procedures before the competent authority

IV-12

3.5

Costs of taking evidence

IV-12

3.6

Taking of evidence by an appointed person

IV-12

4.

Evaluation of evidence

IV-13

4.1

General remarks

IV-13

4.2

Types of evidence

IV-13

4.3

Examination of evidence

IV-13

4.4

Asking for evidence

IV-14

4.5

Evaluation of the testimony of a witness

IV-14

4.6

Evaluation of the testimony of parties

IV-15

4.7

Evaluation of an expert opinion

IV-15

4.8

Evaluation of an inspection

IV-16

Chapter V – Derogations from the language ofthe proceedings in oral proceedings
V-1
1.

Use of an official language

V-1

2.

Language of a contracting state or otherlanguage

V-1

3.

Exceptions from sections 1 and 2

V-1

4.

Language used in the taking of evidence

V-2

5.

Language used by employees of the EPO

V-2

6.

Language used in the minutes

V-2

Part E – Contents f

Guidelines for Examination in the EPO

March 2023

Chapter VI – Examination by the EPO of its
own motion; facts, evidence or grounds
not submitted in due time; observations by
third parties

VI-1

1.

Examination by the EPO of its own motion

VI-1

1.1

General remarks

VI-1

1.2

Limits on the obligation to undertake examination

VI-1

2.

Late-filed submissions

VI-1

2.1

General principles in opposition proceedings

VI-2

2.2

2.2.3
2.2.4
2.2.5

Submissions filed in preparation for or during oralproceedings
New facts and evidence
Amendments filed in preparation for or during oralproceedings
Principles relating to the exercise of discretion
Right to be heard
Costs

3.

Observations by third parties

VI-7

4.

External complaints

VI-9

2.2.1
2.2.2

VI-3
VI-3
VI-4
VI-5
VI-6
VI-7

Chapter VII – Interruption, stay andconsolidation of the proceedings

VII-1

1.

Interruption

VII-1

1.1

Cases in which the proceedings may be interrupted

VII-1

1.2

Responsible department

VII-1

1.3

Date of interruption

VII-1

1.4

Resumption of proceedings

VII-1

1.5

Resumption of time limits

VII-2

2.

Stay of proceedings under Rule 14 due topending national entitlement proceedings

VII-3

Stay of proceedings when a referral to theEnlarged Board of Appeal is pending

VII-3

Consolidation of proceedings

VII-4

3.

4.

March 2023

Guidelines for Examination in the EPO

Chapter VIII – Time limits, loss of rights,
further and accelerated processing andre-establishment of rights
1.

VIII-1Time limits and loss of rights resulting fromfailure to respond within a time limit

VIII-1

1.1

Determination of time limits

VIII-1

1.2

Duration of the periods to be specified by the EPO on
the basis of EPC provisions
VIII-1

1.3

Time limits which may be freely determined

VIII-2

1.4

Calculation of time limits

VIII-2

1.5

Effect of change in priority date

VIII-2

1.6
1.6.1

VIII-3

1.6.2.3

Extension of a time limit
Extension of time limits set by the EPO under Rule132
Extension of periods under Rule 134
Extension of periods under Rule 134(1)Extension of periods under Rule 134(2) andRule 134(5)
Scope of application of Rule 134

1.7

Late receipt of documents

VIII-6

1.8

Failure to respond within a time limit

VIII-7

1.9
1.9.1
1.9.2
1.9.3

Loss of rights
Cases of loss of rights
Noting and communication of loss of rights
Decision on loss of rights

VIII-7
VIII-7
VIII-7
VIII-72.

Further processing

VIII-83.

Re-establishment of rights

VIII-10

3.1
3.1.1
3.1.2
3.1.3
3.1.4

Admissibility of the request
Time limits covered
Entitlement to file the request
Form of the request and applicable time limit
Substantiation of the request

VIII-10
VIII-10
VIII-11
VIII-11
VIII-13

3.2

Merit of the request

VIII-14

3.3

Decision on re-establishment of rights

VIII-15

4.

Accelerated prosecution of European patentapplications

VIII-16

Accelerated search

VIII-17

1.6.2
1.6.2.1
1.6.2.2

4.1

VIII-3
VIII-4
VIII-4
VIII-5
VIII-5

Part E – Contents g

Part E – Contents hGuidelines for Examination in the EPO

March 2023

4.2

Accelerated examination

VIII-18

4.3

Patent Prosecution Highway (PPH)

VIII-18

5.

Accelerated processing of oppositions

VIII-19

6.

Accelerated processing before the boards ofappealVIII-19

7.

Enquiries

VIII-19

8.

Renunciation of rights

VIII-20

8.1

Withdrawal of application or designation

VIII-20

8.2

Withdrawal of priority claim

VIII-21

8.3

Statement of withdrawal

VIII-21

8.4

Surrender of patent

VIII-21

Chapter IX – Applications under the Patent
Cooperation Treaty (PCT)

IX-1

1.

General remarks

IX-1

2.

EPO as designated or elected Office

IX-2

2.1
2.1.1
2.1.2

Entry into the European phase
Requirements for entry into the European phase
Initial processing and formal examination; copy of theinternational application
Translation of the international application
Filing fee, designation fee, request for examinationand search fee

IX-2
IX-2

2.1.3
2.1.4

2.2

2.3
2.3.1
2.3.2
2.3.3
2.3.4
2.3.5
2.3.5.1
2.3.5.2
2.3.5.3
2.3.6
2.3.7
2.3.8
2.3.9

IX-4
IX-4
IX-7

Instructions in Chapter A-II ("Filing of applications
and examination on filing")

IX-7

Instructions in Chapter A-III ("Examination of formal
requirements")
Representation, address for correspondence
Physical requirements
Request for grant
Designation of inventor
Claim to priority
Priority document
Information on prior art
Restoration of priority
Title of the invention
Prohibited matter
Claims fee
Drawings

IX-8
IX-8
IX-10
IX-10
IX-10
IX-10
IX-10
IX-11
IX-11
IX-13
IX-13
IX-13
IX-14

March 2023

Guidelines for Examination in the EPO

2.3.102.3.11
2.3.12

Abstract
Designation fee
Renewal fees

IX-14
IX-14
IX-14

2.4
2.4.1
2.4.2
2.4.3
2.4.4

Instructions in Chapter A-IV ("Special provisions")
Divisional applications
Sequence listings
Certificate of exhibition
Biological material

IX-15
IX-15
IX-15
IX-16
IX-16

2.5

Instructions in Chapter A-VI ("Publication of
application; request for examination and transmissionof the dossier to examining division")
IX-16
Publication of the international application
IX-16
Request for examination
IX-18
Supplementary European search
IX-18

2.5.1
2.5.2
2.5.3
2.6

Reduction and refunds of fees in respect ofinternational (PCT) applications

IX-18

2.7

Communication to the EPO as a designated Office

IX-18

2.8

Early processing

IX-18

2.9

Review by the EPO as a designated/elected Office
and rectification of errors made by the receiving
Office or the International Bureau
IX-21
Review by the EPO under Art. 25 PCT
IX-21
Review by the EPO under Art. 24 PCT and excuse ofdelays under Art. 48(2) PCT
IX-21
Rectification of errors made by the receiving Office or
the International Bureau
IX-22
Determination of filing date in the case of erroneously
filed elements or parts of the international application IX-22

2.9.1
2.9.2
2.9.3
2.9.4

2.10

Inspection of files

IX-23

3.

The communication according to Rule 161

IX-23

3.1

Applications for which a supplementary European
search report is prepared

IX-23

Applications for which no supplementary European
search report is prepared

IX-24

3.2

3.3
3.3.1
3.3.2
3.3.3
3.3.4

Exceptions where a reply to the Rule 161(1) invitation
is not required
IX-25
Earlier filed amendments or comments
IX-25
Positive WO-ISA, SISR or IPER
IX-26
Rule 161 communication issued before 1 April 2010 IX-26
Voluntary reply to Rule 161(1) communication
IX-26

3.4

Rule 137(4) applies

IX-27

Part E – Contents i

Part E – Contents j

Guidelines for Examination in the EPO

March 2023

4.

Examination procedure

IX-27

4.1

At least one communication in examination

IX-27

4.2

No examination of multiple inventions in EP phase

IX-27

4.3

Substantive examination of a Euro-PCT applicationaccompanied by an IPER
Comparative test results
Basis for substantive examination
Consideration of the contents of the IPER

IX-28
IX-28
IX-28
IX-29

4.3.1
4.3.2
4.3.3

Chapter X – Decisions

X-1

1.

Basic principles of decisions

X-1

1.1

General remarks

X-1

1.2

Consideration of time limits

X-1

1.3
1.3.1
1.3.2
1.3.3

Form and content
Order
Facts and submissions
Reasoning

X-1
X-2
X-2
X-2

2.

Decisions taken by the examining or opposition
divisions

X-3

2.1

ExamplesRight to be heard

X-3

2.2

Authoritative text of documents

X-4

2.3

Requirements as to form

X-5

2.4

Facts and submissions

X-5

2.5

Decision on the file as it stands

X-6

2.6

Reasoning of decisions

X-6

2.7

Content

X-7

2.8

Analysing the parties' arguments

X-7

2.9

Main and auxiliary requests

X-8

2.10

Late-filed submissions

X-8

2.11

Refusal to admit amendments under Rule 137(3)

X-9

3.

Decisions which do not terminate proceedings –interlocutory decisions

X-9

Binding nature of decisions on appeals

X-9

4.

March 2023

Guidelines for Examination in the EPO

5.

Information as to means of redress

X-10

6.

Notification

X-10

Chapter XI – Impartiality of the examining or
opposition division

XI-1

Chapter XII – Appeals

XII-1

1.

Suspensive effect

XII-1

2.

Appeals after surrender or lapse of the patent

XII-1

3.

Appeals against the apportionment of costs

XII-1

4.

Appeals against the decision of the opposition
division on the fixing of costs

XII-1

Persons entitled to appeal and to be parties toappeal proceedings

XII-1

6.

Time limit and form of appeal

XII-1

7.

Interlocutory revision

XII-2

7.1

General remarks

XII-2

7.2

Remittal to the board of appeal

XII-3

7.3

Reimbursement of appeal fees

XII-3

7.4
7.4.1
7.4.2
7.4.3
7.4.4

ExamplesNo amended claims filed with the appeal
Amended main/single request filed with the appeal
Main and auxiliary requests filed with the appeal
Response to communication pursuant to Rule 58
filed with the appeal

XII-3
XII-3
XII-4
XII-5

8.

Rules of Procedure of the Boards of Appeal

XII-6

9.

Remittal to the division after appeal

XII-6

9.1
9.2

Orders on remittal
Consequences for the division

XII-6
XII-7

5.

XII-6

Chapter XIII – Request from a national court
for a technical opinion concerning a European
patent
XIII-1
1.

General

XIII-1

Part E – Contents k

Part E – Contents l

Guidelines for Examination in the EPO

March 2023

2.

Scope of the technical opinion

XIII-1

3.

Composition and duties of the examining division XIII-2

3.1

Composition

XIII-2

3.2

Duties

XIII-2

4.

Language to be used

XIII-25.

Procedure

XIII-2

5.1

Formalities check

XIII-3

5.2

Preliminary examination

XIII-3

5.3

Withdrawal of the request

XIII-3

5.4

Establishment and issue of the technical opinion

XIII-35.5

File inspection

XIII-3

5.6

Appearance before the national court

XIII-4

Chapter XIV – Registration of changes ofname, transfers, licences and other rights

XIV-1

1.

GeneralXIV-1

2.

Responsible department

XIV-1

3.

Transfer of the European patent application

XIV-1

4.

Transfer of the European patent

XIV-2

5.

Changes of name

XIV-2

6.

Licences and other rights

XIV-3

6.1

Registration

XIV-3

6.2

Cancellation of the registration

XIV-3

March 2023

Guidelines for Examination in the EPO

Chapter I – Introduction
Part E contains guidelines for those procedural steps in respect of theexamination of European patent applications and patents which withoutmajor variations may, in so far as the EPC permits, occur at a number ofstages in the procedure. Attention is also drawn to Art. 125, which states:"In the absence of procedural provisions in this Convention, the EPO shalltake into account the principles of procedural law generally recognised in
the Contracting States".

Part E – Chapter I-1

March 2023

Guidelines for Examination in the EPO

Part E – Chapter II-1

Chapter II – Communications and notifications
1.

Communications

1.1 General remarks
Communications are sent, inter alia:(i)

if a party has to be informed of deficiencies, together, whereappropriate, with a request to remedy those deficiencies, e.g. inaccordance with Rule 55, 58, 59, 62a, 63, 64(1), 71(1), 77(2), 95(2)or 108(2);(ii)

if a party is to be invited to file observations on particular questions or
to submit documents, evidence, etc., to clarify the issues involved;(iii)

if, in the opinion of the examining or opposition division, the patentcannot be granted or maintained in the text requested by theapplicant or proprietor of the patent, but could possibly be granted or
maintained in an amended text of more limited scope;(iv)

if information necessary to the conduct of the proceedings has to becommunicated to the parties, e.g. in accordance with Rule 14(2) and(3), 35(4) or 142(2) and (3);(v)

for preparing oral proceedings, (see E-III, 5); or(vi)

if a decision is to be based on grounds on which the parties have not
yet had an opportunity to comment (see E-X, 1).

1.2 Number of communications
Since each communication issued may entail prolonging the proceedings,
the proceedings are conducted in such a way as to manage with as few
communications as possible. If a communication has to be issued, it will
cover all the points which are necessary, or likely to be of importance, forthe particular stage of the proceedings, e.g. the preparation of oralproceedings or of a decision.
1.3 Form of decisions, communications and notices
Any decision, communication or notice from the EPO is to be signed by andto state the name of the employee responsible. Where these documents
are produced by the employee responsible using a computer, a seal may
replace the signature. Where the documents are produced automatically by
a computer the employee's name may also be dispensed with. The same
applies to pre-printed notices and communications.
2.

Rule 113(1) and (2)Notification

2.1 General remarks
The EPO as a matter of course notifies those concerned of decisions andsummonses, and of any notice or other communication from which a time
limit is reckoned, or of which those concerned must be notified under otherprovisions of the EPC, or of which notification has been ordered by theArt. 119
Rule 125
Rule 126
Rule 127

Part E – Chapter II-2

Guidelines for Examination in the EPO

March 2023

President of the EPO; other communications are not subject to formal
notification.
Notifications may, where exceptional circumstances so require, be given
through the intermediary of the central industrial property offices of thecontracting states.
In proceedings before the EPO, any notification to be made must take theform of the original document, or a copy thereof certified by or bearing theseal of the EPO, or a computer print-out bearing such seal, or an electronic
document containing such seal or otherwise certified. Copies of documents
emanating from the parties themselves do not require such certification.

Rule 125(2) and (3)Rule 126

2.2 Method of notification
Notification is to be made by postal services, by delivery on the premises of
the EPO, by public notice or, if so agreed by the addressee, by means ofelectronic communication as determined by the President of the EPO andunder the conditions laid down by him governing their use. Further details
concerning notifications are given in Rules 126 to 129. Notification throughthe central industrial property office of a contracting state competent to deal
with the addressee must be made in accordance with the provisions
applicable to that office in national proceedings.
2.3 Notification by postal services
All notifications by postal services must be by registered letter (see also
OJ EPO 2019, A57). The President of the EPO has, so far, not named anyother documents to be notified by registered letter with advice of delivery or
equivalent.
Under Rule 126(2) as in force until 31 October 2023, the The letter isdeemed to be delivered to the addressee on the tenth day following its
handover to the postal service provider, unless the letter has failed to reachthe addressee or has reached him at a later date; in the event of any
dispute, it is incumbent on the EPO to establish that the letter has reached
its destination or to establish the date on which the letter was delivered tothe addressee, as the case may be.
With effect from 1 November 2023, Rule 126(2) is amended to read as
follows: "Where notification is effected in accordance with paragraph 1, thedocument shall be deemed to be delivered to the addressee on the date itbears, unless it has failed to reach the addressee. In the event of any
dispute concerning the delivery of the document, it shall be incumbent on
the EPO to establish that the document has reached its destination and toestablish the date on which the document was delivered to the addressee.
If the EPO establishes that the document was delivered to the addressee
more than seven days after the date it bears, a period for which thedeemed receipt of that document is the relevant event under Rule 131,
paragraph 2, shall expire later by the number of days by which the sevendays were exceeded." (see the decision of the Administrative Council of
13 October 2022, OJ EPO 2022, A101, and the notice from the EPO dated
25 November 2022, OJ EPO 2022, A114).

March 2023

Guidelines for Examination in the EPO

Part E – Chapter II-3

Notification is deemed to have been effected even if acceptance of theletter has been refused.
The law of the state on the territory of which the notification is made applies
to other matters concerning notification, e.g. the question whether delivery
to a person other than the addressee constitutes an effective notification to
the latter.
2.4 Electronic notification
Under Rule 127(2) as in force until 31 October 2023, where Where a user
has agreed to receive communications electronically, the electronic
document is deemed to be delivered to the addressee on the tenth day
after its transmission unless it has failed to reach its destination or has
reached it at a later date.
With effect from 1 November 2023, Rule 127(2) is amended to read as
follows: "Where notification is effected by means of electronic
communication, the electronic document shall be deemed to be delivered tothe addressee on the date it bears, unless it has failed to reach its
destination. In the event of any dispute concerning the delivery of theelectronic document, it shall be incumbent on the EPO to establish that the
document has reached its destination and to establish the date on which itreached its destination. If the EPO establishes that the electronic document
has reached its destination more than seven days after the date it bears, aperiod for which the deemed receipt of that document is the relevant event
under Rule 131, paragraph 2, shall expire later by the number of days bywhich the seven days were exceeded." (see the decision of the
Administrative Council of 13 October 2022, OJ EPO 2022, A101, and thenotice from the EPO dated 25 November 2022, OJ EPO 2022, A114).
Currently, notification may occur in electronic form to an activated Mailbox.
Electronic notification comprises the decisions, summonses, notices andcommunications contained in a list published on the EPO website. For the
Mailbox service, the date of transmission is the date indicated on the
document, provided that the addressee has access to it in the Mailbox bythat date. For further details, see the decision of the President of the EPO
dated 11 March 2015 concerning the pilot project to introduce new meansof electronic communication in EPO proceedings (OJ EPO 2015, A28) andthe notice from the EPO dated 30 March 2015 (OJ EPO 2015, A36).
The Mailbox may also be accessed through MyEPO Portfolio. For further
details, see the decision of the President of the EPO dated 11 May 2022
concerningthe
web-based
onlineservice
MyEPO Portfolio(OJ EPO 2022, A51) and the notice from the EPO dated 11 May 2022,(OJ EPO 2022, A52).
In the event that further means are introduced for electronic notification, theconditions and details will follow from the decisions governing the use ofsuch means.

Rule 127

Part E – Chapter II-4

Rule 130

Rule 125(4)Guidelines for Examination in the EPO

March 2023

2.5 Notification to representatives
If a representative has been appointed, notifications must be addressed tohim. If several such representatives have been appointed for a single
interested party, notification to any one of them is sufficient. If several
persons are joint applicants for or proprietors of a patent or have acted incommon in filing notice of opposition or intervention and have not appointed
a common representative, notification of one person, viz. the personreferred to in Rule 151, will again be sufficient. If several interested parties
have a common representative, notification of a single document to thecommon representative is sufficient.
2.6 Irregularities in the notification
Where a document has reached the addressee, if the EPO is unable toprove that it has been duly notified, or if provisions relating to its notification
have not been observed, the document is deemed to have been notified on
the date established by the EPO as the date of receipt. In cases where the
EPO is not able to prove the actual date of notification, a letter, for instance,
sent by the addressees themselves and indicating the date of receipt, is
accepted as proof. If it is evident from a reply from the addressees that they
have received the document, although they do not mention the date of its
notification, the date on which that reply was written is to be regarded as
the date of notification.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter III-1

Chapter III – Oral proceedings
1.

General1.1 Introduction
By "oral proceedings" is meant formal proceedings within the meaning ofArt. 116. The term does not include consultations such as occur in
examination
proceedings
andlimitation/revocation
proceedings(see C-VII, 2). In view of Rule 81(2), such consultations are not allowed in
opposition proceedings in which more than one party is involved unless theconsultations concern matters which do not affect the interests of otherparties. An example is proceedings for examining the admissibility of
opposition, provided this involves only the EPO and the opponent
concerned.
Oral proceedings will take place before the competent body, e.g. within the
Receiving Section before the appointed officer and during the examinationand opposition procedure before the whole division. In matters lying within
its competence, oral proceedings can be held before the Legal Division.
The right to oral proceedings forms a substantial part of the right to beheard under Art. 113.
1.2 Format of oral proceedings
Oral proceedings can be held on the premises of the EPO or are held byvideoconference. In exceptional circumstances, where so permitted. Oralproceedings by videoconference are equivalent to oral proceedings held on
the premises of the European Patent Office (OJ EPO 2020, A134, Article
1(3); OJ EPO 2020, A121, Article 2(3)). Oral proceedings before examining
divisions, the Receiving Section and the Legal Division are generally heldby videoconference, either at the request of the applicant or at theinstigation of the competent department unless there are serious reasons
against holding the oral proceedings by videoconference, they may be heldon the premises of the EPO (OJ EPO 2020, A134, Article 1(2);OJ EPO 2021, A49,
Article1(2);OJ EPO 2021, A50,
Article1(2)OJ EPO 2022, A103). Examples of serious reasons are, in particular,
reasons relating to a participant to the oral proceedings as an individual(e.g. a proven visual impairment that prevents a representative fromfollowing oral proceedings on screen) and reasons related to the natureand subject-matter of the proceedings (e.g. where they involve thedemonstration or inspection of an object where the haptic features are
essential, to the extent that this is possible in accordance with theapplicable provisions). Sweeping objections against the reliability ofvideoconferencing technology or the non-availability of videoconferencing
equipment will, as a rule, not qualify as serious reasons in this regard.
Participants must ensure that their videoconferencing equipment meets thetechnical requirements specified. They are encouraged to perform a test
call well before the oral proceedings take place.
In addition to the summons, participants will receive an email confirming thedate, time and the videoconference contact details to be used to establish
the connection (in the form of a link or by other suitable means) andArt. 18(2)Art. 19(2)Art. 113

Part E – Chapter III-2

Guidelines for Examination in the EPO

March 2023

containing any further appropriate information, including on the organisationof the videoconference.
1.3 Request for oral proceedings to be held on EPO premises
A request that oral proceedings be held by way of exception on thepremises of the EPO needs to be filed as early as possible, preferably
together with the request for oral proceedings. The granting of a request fororal proceedings to be held on the premises of the EPO will be at thediscretion of the competent division.
If the request for oral proceedings on the premises of the EPO cannot beallowed and is received after the summons to oral proceedings, the division
will inform the parties that the oral proceedings will take place byvideoconference as set out in the summons and include a brief reasoning
as to why the request cannot be granted. If the request is received before
the summons has been issued, the reasons for the refusal will be given in
the annex to the summons. In either case, a refusal of this type is notseparately appealable.
If a request for oral proceedings on the premises of the EPO is allowable
and is received after the summons to oral proceedings by videoconference
has been issued, the parties will be informed that oral proceedings will beheld on the premises of the EPO as requested; where possible, the date of
the oral proceedings will remain unchanged.
1.4 Request to hold on-site oral proceedings at a particular site
A request to hold oral proceedings at a particular EPO site is notadmissible; a refusal by the competent department to accept such arequest is not subject to appeal (see T 1142/12).

Art. 116(1)2. Oral proceedings at the request of a party
If, in the course of proceedings, a party requests oral proceedings, thecompetent department must grant this request as further explained in thissection. The EPO will not inform any party concerned of this right but will
expect them – if they do not obtain satisfaction from the competentdepartment – to request oral proceedings (if they so wish) before a decision
is reached.
Under Art. 116(1), parties can request oral proceedings at any time,
provided a decision has not yet been issued. In particular, a request for oralproceedings made before the decision to grant or to limit has been handed
over to the internal post has to be allowed (see T 556/95 and G 12/91).

Art. 116(2)Oral proceedings will take place before the Receiving Section at therequest of the applicant only where the Receiving Section considers this to
be expedient or where it envisages refusing the European patentapplication. Where the Receiving Section does not consider it necessary to
hold oral proceedings, it must inform the applicant accordingly(see J 16/02).

March 2023

Guidelines for Examination in the EPO

The competent department will decide on the most appropriate date for theoral proceedings, which will only be held after the issues to be determined
are sufficiently clear (see E-III, 5).
With a conditional request for oral proceedings, i.e. if any party concerned
has indicated that the request for oral proceedings has been made solely
as a precaution to cover the eventuality that the case they have put forward
is not accepted, oral proceedings will be held only if a negative decision
against the party concerned is envisaged.
With an unconditional request for oral proceedings, if the competentdepartment considers that a decision on the matter may be reached on thebasis of the written evidence on file and intends to take a decision (e.g. inaccordance with Art. 97, 101 or 105b) which fully concurs with the case put
forward by the party or parties having unconditionally requested the oralproceedings, and providing there is no valid request for oral proceedings
from a party adversely affected by the decision envisaged, the decision
may be issued in writing without oral proceedings being held (T 1050/09).
A request to hold oral proceedings at a particular EPO site is notadmissible; a refusal by the competent department to accept such arequest is not subject to appeal (see T 1142/12).
2.1 Request for oral proceedings by an opponent whose opposition
is to be rejected as inadmissible or is deemed not to have been filed
Under Art. 116(1), oral proceedings may be requested only by a party topending proceedings. If the opposition division notes deficiencies in thenotice of opposition under Rule 77(1), any opponent still remains a party tothe proceedings until such time as their opposition is rejected as
inadmissible. This also applies when deficiencies lead to the opposition
being deemed not to have been filed (see D-IV, 1.4.1).
2.2

Request for oral proceedings in examination to be held on
EPO premises
A request that oral proceedings before the examining division be held by
way of exception on the premises of the EPO (see E-III, 1) needs to be filed
as early as possible, preferably together with the request for oralproceedings. The granting of a request for oral proceedings to be held on
the premises of the EPO will be at the discretion of the competent division.
If the request for oral proceedings on the premises of the EPO cannot beallowed and is received after the summons to oral proceedings, the division
will inform the parties that the oral proceedings will take place byvideoconference as set out in the summons and include a brief reasoning
as to why the request cannot be granted. If the request is received before
the summons has been issued, the reasons for the refusal will be given in
the annex to the summons. In either case, a refusal of this type is notseparately appealable (OJ EPO 2020, A134, Article 1(2)).
If a request for oral proceedings on the premises of the EPO is allowable
and is received after the summons to oral proceedings by videoconference
has been issued, the parties will be informed that oral proceedings will bePart E – Chapter III-3

Part E – Chapter III-4

Guidelines for Examination in the EPO

March 2023

held on the premises of the EPO as requested; where possible, the date of
the oral proceedings will remain unchanged.

Art. 116(1)3. Request for further oral proceedings
The EPO may reject a request for further oral proceedings before the samedepartment where the parties and the subject of the proceedings are thesame, irrespective of the form in which the oral proceedings were held.
Oral proceedings, particularly in opposition proceedings, are held to givethe opportunity to finally discuss all matters raised and are normallyterminated with a decision announced orally. The division is bound by thatdecision, once announced, and it cannot reopen the proceedings to allow
further submissions to be filed or to take into account new facts (see thelast two paragraphs of E-VI, 2). Only if the division, in the oral proceedings,
has not announced a decision, but has decided to continue the proceedings
in writing, can further submissions be examined. Such may be the casee.g. when the examining division indicates that it intends to grant a patent(or to limit a granted patent in limitation proceedings) on the basis of the
documents filed during the oral proceedings.
Thus, as a rule, in examination, limitation or opposition proceedings there
will be no justification for further oral proceedings, for example where oneof the parties wishes to re-examine from a different viewpoint a subject
already discussed in the course of the proceedings, either before or during
the original oral proceedings. However, if the oral proceedings are notterminated with a decision and after the oral proceedings the subject of theproceedings changes, for example where fresh evidence is admitted into
the proceedings after the original oral proceedings, then further oralproceedings will generally have to be held if requested (see T 194/96).

Art. 116(1)4. Oral proceedings at the instance of the EPO
The competent department of the EPO may arrange for oral proceedings totake place without a request from a party if it considers this to be expedient.
Oral proceedings will normally only be expedient if after an attempt at
written clarification there are still questions or doubts which have a crucial
bearing on the decision to be reached and which may be more efficiently orsurely settled by oral discussion with the party or parties, or if it isnecessary to take evidence as part of oral proceedings(see E-IV, 1.3 and 1.6.1). The competent department will also bear in mind
the need for economy in such procedures, since oral proceedings give rise
to costs for both the EPO and the party or parties.
5. Preparation of oral proceedings
The purpose of oral proceedings is to settle as far as possible all
outstanding questions relevant to the decision. To this end proceedings will
be carefully prepared after examination of all the written matter submitted
and with this in mind the most appropriate date for conducting oralproceedings is chosen.
When preparing oral proceedings, particularly in opposition, the divisionconsiders carefully whether complex legal issues are likely to arise, and itMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter III-5

may therefore decide to enlarge the division by adding a legally qualified
member (Art. 18(2) and 19(2)).
In so far as certain questions relevant to the decision are considered by the
EPO to require discussion, it will in many cases be expedient to inform theparty or parties in a notice and possibly also to invite one or more of theparties to submit written observations or to produce evidence, whereappropriate. Parties may produce evidence in support of their arguments on
their own initiative. Where, however, the evidence is such that it shouldhave been put forward at an earlier stage, e.g. in opposition proceedings
pursuant to D-IV, 1.2.2.1(v) and 5.4, it is for the competent body to consider
whether the evidence not filed in due time is to be admitted (see E-VI, 2).
Any observations should be received in time for them to be communicatedto the other parties at the latest one month before the oral proceedings.
The time limit for submission of observations is fixed accordingly,
particularly where the invitation to file observations is issued at the sametime as the summons to oral proceedings.
5.1 When can summons to oral proceedings be issued in
substantive examination?
At the beginning of substantive examination, if the examining division is of
the opinion that the application cannot be granted directly, at least one
substantive communication within the meaning of Art. 94(3) will generally
be sent before the division issues a summons to oral proceedings(see C-III, 4).
In particular, neither the search opinion of an EESR or a supplementary
search (ESOP) nor an opinion or report from the PCT procedure (WO-ISA,
SISR, IPRP or IPER) is a communication under Art. 94(3), so that even if
the applicant has replied thereto, it is in general not appropriate to send asummons as a first communication in European substantive examination.
Nor are the following communications/requests considered as substantive
communications from the examining division for this purpose: invitation
under Rule 62a or Rule 63, communication under Rule 137(4), request
under Rule 53(3), request under Art. 124 and Rule 141, invitation under
Rule 164(2)(a).
Exceptionally, summons to oral proceedings may be issued as the firstaction in examination proceedings, provided that the criteria set out in
C-III, 5 are met.
In examination proceedings, where the applicant has been invited toprovide a translation of the priority according to Rule 53(3) (see A-III, 6.8.2
and F-VI, 3.4), no summons to oral proceedings will be issued until either
the translation is provided or the period for further processing in respect of
the time limit according to Rule 53(3) has expired.
6. Summons to oral proceedings
All parties must be duly summoned to oral proceedings by notification. The
summons must state the subject, the date and time and the form of the oralproceedings.

Rule 115(1)Art. 119

Part E – Chapter III-6

Guidelines for Examination in the EPO

March 2023

The division sets a single date for the oral proceedings, i.e. one day or, inparticular cases, more than one consecutive day. No pre-announcement of
the date will be made. Oral proceedings may be set for any working day on
which the EPO is open at the relevant site.
Rule 116(1)The summons will be accompanied by a note drawing attention to thepoints which need to be discussed, normally containing the provisional andnon-binding opinion of the division. New documents may be cited in theannex to the summons (T 120/12), together with an explanation of theirsignificance. However, examiners must carefully consider on acase-by-case basis whether citing a new document would introduce a newline of argument. At an early stage in the procedure, they must consider
sending a further communication before issuing any summons if a new
document needs to be cited. For the additional requirements of theaccompanying note if the summons is issued as the first action in
examination, see C-III, 5. The summons as well as the annexed
communication can only be appealed together with the final decision unlessa separate appeal is allowed (see E-X, 3).
The summons will also fix a date up to which written submissions may be
filed or amendments which meet the requirements of the EPC may besubmitted (see also D-VI, 3.2).

Rule 115(1)Rule 115(1) stipulates that at least two months' notice of the summonsmust be given unless the parties agree to a shorter period. Such agreement
must be present in the public part of the file.
Harmonised with the standards applied in the written procedure(E-VIII, 1.2), the practice outlined below is followed in setting the date of theoral proceedings to allow the parties sufficient time for preparing and filingsubmissions:(i)

Any time limit (even shorter than two months) may be set provided
that prior agreement has been reached with the parties.

(ii)

Normally, the summons is issued at least four months ahead of the
day of the oral proceedings in examination and at least six months
ahead of the day of the oral proceedings in opposition.

(iii)

Between two and four months' notice can be given without
preliminary agreement only in specific circumstances, since theparties would have very limited time for filing submissions before thedate fixed in the summons. Examples are where, in examination, thesummons follows an extensive exchange between the first examiner
and the applicant, where oral proceedings have been adjourned due
to a lack of time, or where the date of the oral proceedings ischanged to a later date (see also E-III, 7.2 E-III, 7.1.3).

(iv)

Where the summons is issued as the first action in examination,
six months are foreseen between the despatch of the summons andthe date of the oral proceedings (see C-III, 5).

March 2023

Guidelines for Examination in the EPO

The summons must state that if parties duly summoned do not appear as
summoned or fail to connect to the oral proceeding by videoconference, as
the case may be, the proceedings may continue without them.
In opposition proceedings, where multiple oppositions have been filed, as arule, a single hearing in oral proceedings is scheduled, even if the
oppositions are based on different grounds (see D-I, 6). This means that all
the parties must be summoned to attend them and may present commentson all grounds raised.
7.

Change of date, cancellation or maintenance of oral proceedings

7.1

Changing the date of oral proceedings

7.1.1 Requests to change the date of oral proceedings
A request to change the date of oral proceedings is allowable only if theparty concerned can advance serious reasons which justify the fixing of a
new date (see T 1080/99, T 300/04, J 4/03 and T 178/03). The request to
fix another date must be filed as soon as possible after the grounds
preventing the party concerned from attending the oral proceedings havearisen. It must be accompanied by a sufficiently substantiated written
statement indicating these reasons (see OJ EPO 2009, 68; see also
T 178/03) and appropriate evidence, where necessary.
Serious reasons to request a change of the date for oral proceedings may
be, for instance:–a previously notified summons to oral proceedings of the same party
in other proceedings before the EPO, the Unified Patent Court or anational court or patent office–for the same date or–for the preceding or following day or–for at least one of the two preceding or two following days
where participation in the other oral proceedings requires
travelling to or from are to take place on the premises of the
EPO at a geographically distant location,–

serious illness,–a death within the family,–

the marriage of a person whose attendance in oral proceedings isrelevant,–

military service or other obligatory performance of civic duties,–business trips which have been firmly booked before notification of
the summons to oral proceedings,

Part E – Chapter III-7

Part E – Chapter III-8

Guidelines for Examination in the EPO–

March 2023

holidays which have already been firmly booked before notification of
the summons to oral proceedings. In the case of holidays scheduled
but not yet booked, the representative must indicate thecircumstances (e.g. school holidays) which prevent the holidays frombeing rescheduled.

If the grounds for changing the date of the oral proceedings submitted by aparty do not meet the above criteria, the division will inform the parties thatthe oral proceedings will take place as set out in the summons and annex abrief reasoning as to why in its view the criteria are not met.
The reasons that can be invoked to change the date only apply to thoseparticipants whose presence is essential to the oral proceedings, e.g. therepresentative or a witness.
If during the procedure substantive submissions were made by several
representatives of a firm, an indication must be given why none of those
who previously made such submissions can present the case at the oralproceedings, i.e. why the representative who cannot attend is essential or
why the others are also unable to attend.
In opposition proceedings, in particular if more than one opponent isinvolved, a more strict approach may be applied to prevent a series ofchanges of date (see T 1102/03).
Grounds which, as a rule, are not acceptable are, for instance:–a summons to oral proceedings before the EPO or a national court
notified after the summons in the relevant proceedings,–

excessive work pressure.

As Mondays and Fridays are normal working days, oral proceedings will bescheduled for these days, too. The fact that this may necessitate travel atweekends is not a sufficient reason to change the date of the oralproceedings. The departments of first instance will however, circumstances
permitting, try to be flexible where there is a request to change the startingtime in order to enable the party to travel on the same day.
7.1.2 Change of date of oral proceedings at the instigation of thedivision
In exceptional cases the division might have to instigate the change of dateof oral proceedings for reasons similar to those mentioned above. The dateof the oral proceedings will, however, be changed only if a suitablereplacement cannot be found.
7.1.3 Change of date of oral proceedings – defined notice period
The notice period defined in Rule 115(1), i.e. at least two months, is valid
also in the case of a change of date unless the parties have agreed on ashorter period (see also E-III, 6(iii) and E-III, 8.11.1).

March 2023

7.2

Guidelines for Examination in the EPO

Part E – Chapter III-9

Cancellation or maintenance of oral proceedings

7.2.1 General
In response to submissions made by a party in reply to the summons tooral proceedings, the division may also decide to cancel the oralproceedings and continue the procedure in writing. If it takes such a
decision, it notifies the parties accordingly. In the absence of such
notification, the parties must be aware that oral proceedings will be held.
However, as an additional service in examination proceedings, if oralproceedings are not cancelled following such submissions, the division
informs the applicant that the date and time set for the oral proceedings aremaintained.
7.2.2 Withdrawal of the request for oral proceedings
If the request for oral proceedings is explicitly withdrawn, or if a written
statement is to be interpreted as equivalent to a withdrawal of the request
for oral proceedings (because the party has indicated that it will not attend– see T 3/90, T 696/02 and T 1027/03 – or has requested a decisionaccording to the state of the file – see OJ EPO 2020, A124), it is within thediscretion of the division to decide whether the scheduled oral proceedings
are to be maintained or to be cancelled.
If the division decides that oral proceedings are nevertheless to be
conducted, this means that there are objections still outstanding that need
to be discussed at the oral proceedings. Consequently the applicant and/or
patentee can expect that problems relating to the requests filed in reply tothe summons to oral proceedings will be dealt with at the oral proceedings.
If any applicant or patentee decides not to attend the oral proceedings, they
are thereby choosing not to make use of the opportunity to comment at theoral proceedings on any of the objections, but to rely on the arguments as
set out in the written submissions. The decision may be given orally in theirabsence. The procedural principles require that the party to theproceedings is not taken by surprise by the decision (see also E-III, 8.3.3).
8.

Conduct of oral proceedings

8.1 Admission of the public to proceedings
Oral proceedings before the Receiving Section, the examining divisions
and the Legal Division are not public.
Oral proceedings, including delivery of the decision (see E-III, 9), are public
before the opposition divisions in so far as the opposition division does notdecide otherwise in cases where admission of the public could haveserious and unjustified disadvantages, in particular for a party to theproceedings. This could, for example, be the case if any of the parties
wishes to give information about sales figures or other commercial secrets
in support of their case. Generally, the public will only be excluded whilst
such information is being given. The public is also excluded during
discussions about a request for exclusion of a document from fileinspection (see D-II, 4.3) and when a decision on the matter is pronounced.
The parties other than the requester(s), as well as their representatives,Art. 116(3)Art. 116(4)Part E – Chapter III-10

Guidelines for Examination in the EPO

March 2023

may also be excluded as being part of the public (e.g. in the case of arequest for exclusion of a medical certificate from file inspection).
8.2 Conduct of oral proceedings
Before the Receiving Section oral proceedings will be conducted by theappointed officer and before the examining or opposition divisions by thechair of the division concerned. Before the Legal Division, oral proceedings
will be conducted by one legally qualified member of the Legal Division.
The responsibilities of the person conducting the proceedings will include
keeping order and conducting the proceedings as regards their formal andsubstantive aspects.
The person conducting the proceedings must in particular ensure that,
where necessary, a list is prepared of all disputed or unclear points relevantto the decision to be reached, that these are discussed and that the party or
parties have the opportunity of commenting on them. In the case of oralproceedings by videoconference, the person conducting them must
ascertain that no technical problems have prevented the oral proceedings
from being conducted in accordance with the right to be heard and the rightto oral proceedings (see E-III, 8.2.3).
On the other hand, the oral proceedings are to be conducted strictly andefficiently, so that the submissions of the party or parties and thediscussions are not unnecessarily digressive and do not deal with points
which are of no relevance to the decision to be reached. Repetition is to be
avoided as far as possible. In particular, written material submitted at theappropriate time to the competent department and to the party or parties
which has already been the subject of proceedings need not be read out
in extenso. A simple reference to such written material may suffice.
Oral proceedings on the EPO premises – use of laptops orother electronic devices during either ex parte or inter partes
oral proceedings
As a general rule, the use of laptops or other electronic devices during oralproceedings on the EPO premises is allowed provided they do not cause
disturbance to the participants and are not used for sound recording (seethe Notice of the Vice-Presidents Directorates-General 2 and 3 dated
25 February 1986, OJ EPO 1986, 63).
8.2.1

Only in exceptional circumstances, where oral proceedings are held on thepremises of the EPO and where, for example, the use of an electronic
device disturbs the oral proceedings and despite warning of the division the
disturbance is not remedied, can the division decide not to admit the use of
the incriminated device. It will be taken into consideration that it is normal
for representatives to rely on electronically stored documents to present
their case and they may be put in a difficult position if the division denies
them the right to use their laptop.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter III-11

8.2.2

Oral proceedings by videoconference before examining
divisions
Oral proceedings before examining divisions are to be held byvideoconference unless there are serious reasons against it.
8.2.1 8.2.2.1 Participation of parties and their representatives fromdifferent locationsRemote connection of applicants and theirrepresentatives
Upon request, applicants and their representatives may connect to the oralproceedings by videoconference from different locations.
A party, its representative and any persons accompanying the parties orrepresentatives, as well as witnesses and experts, may connect to thevideoconference from different locations.
8.2.2 8.2.2.2 Participation of members of the division from different
locationsRemote connection of members of the examining division
The members of the examining and opposition divisions may equallyconnect to the oral proceedings by videoconference from different
locations. In such cases, the members of the division will deliberate andvote among themselves via a separate communication channel. The venueof oral proceedings will be deemed to be the location where the examining
division is set up.
The applicant or representative will be informed of the remote participationof the members of the examining division at the beginning of the oralproceedings, after the connection has been established and before they areformally opened.
8.2.3 Technical problems
Where technical problems occur such that the oral proceedings held byvideoconference cannot be conducted openly and fairly, for example due toa total or partial breakdown in communication, the right to be heard might
possibly be violated (Art. 113(1)). The parties, due to the technicalproblems, might be taken by surprise by the grounds mentioned in an
adverse decision on which they have not had an opportunity to comment.
If the sound or image transmission of any of the participants taking part in
the oral proceedings is lost, the chair will stop the proceedings until thetransmission is re-established.
If a participant is disconnected for more than a few minutes, a member ofthe division will contact that party to see if they are having technicalproblems. Any relevant information will be shared with all parties.
If a party reconnects after a temporary connection failure, the chair will
make sure that no information has been missed. Some arguments might
have to be repeated.
If, despite all efforts of the participants, technical problems prevent the oralproceedings by videoconference from being conducted in accordance withthe parties' rights under Art. 113 and Art. 116, the videoconference will be

OJ EPO 2022, A103

Part E – Chapter III-12

Guidelines for Examination in the EPO

March 2023

terminated. A new summons to oral proceedings will be issued. As a rule,
new oral proceedings will be held by videoconference unless there areserious reasons for not doing so (E-III, 1.2).
8.2.4 Recording
The recording of oral proceedings by the parties is not permitted (seeE-III, 10.1). At the beginning of the videoconference, the chair will therefore
remind all participants that recording of the videoconference is prohibited.
8.3

Opening of oral proceedings; non-appearance of a party

8.3.1 Checking the identity and authorisations of participants at oralproceedings
If the parties or their representatives are not personally known to at least
one member of the division, it is necessary to check their identity before thestart of the oral proceedings. During a videoconference, this can be doneby requesting the representative to show their EPO badge or ID card to thecamera. An ID card may be shown solely in a private session unless there
is only one representative or party connected to the videoconference;
where necessary, a separate session is established for that purpose.
In the case of oral proceedings held by videoconference, copies of identity
documents can also be filed via the EPO online filing options no later than
two days prior to the oral proceedings or via email to the address provided
to the parties at the beginning of the oral proceedings. For data protection
reasons, copies of identity documents sent via email are deleted and are
not included in the file. Copies submitted via EPO online filing options are
put in the non-public part of the file.
The division will check the ID document of one representative or authorised
employee of each party unless this person is personally known. For otherrepresentatives, authorised employees and accompanying persons(including those who will be making oral submissions, see E-III, 8.5)
present for a given party, it is sufficient that their identity is confirmed orally
by the person whose ID documents were checked or who is personallyknown to at least one member of the division. This applies independently ofwhether a representative is a professional representative or a legal
practitioner. Equally, if a party is not represented but personally present
together with an accompanying person, it is sufficient to check the ID
document of that party.
However, the division checks the ID documents of all parties, witnesses
and experts summoned to give evidence before the EPO. Moreover, thedivision may check ID documents of other attendees where this isconsidered necessary, e.g. because the identity of an accompanying
person is challenged by another party or where the division has serious
doubts about the identity of the person.

March 2023

Guidelines for Examination in the EPO

The identity document may be presented in one of following ways:–

If the identity document is an EPO badge, by showing it to thecamera at the beginning of the videoconference in the public meeting
room.

–

If the identity document is a national ID card or passport, by showing
it to a member of the division in a separate non-public meeting room.

–

By sending a copy to the email address provided to the parties at the
beginning of the oral proceedings.

–

By using the EPO online filing options up to two days prior to the oralproceedings.

For data protection reasons, copies of identification documents sent by
email are deleted and not included in the file; copies submitted via the EPO
online filing options are placed in the non-public part of the file.
In order for the division to be able to confirm the identity of the person
concerned, the full name (first name and surname) and the picture of the ID
should be visible. All the other information on the identity document can be
kept hidden if so wished, as long as it is possible to recognise that it is an
official identity document.
For accompanying persons, including those who will be making oral
submissions (see E-III, 8.5), it is sufficient that their identity is confirmed by
the relevant representative.
Professional representatives need to file authorisations only in exceptional
cases (see the decision of the President of the EPO dated 12 July 2007,
Special edition No. 3, OJ EPO 2007, L.1).
Authorisations need be checked only if a party is represented by a person
whose authorisation is not apparent from the file. If it is established that theperson is either(i)a professional representative acting under a sub-authorisation(ii)

a professional representative from the same agency as therepresentative acting in the case, or(iii)

a natural person (e.g. executive director) authorised by law in theparty's country of business to act on behalf of that party

then no further check is required.
If however the person is:(a)a professional representative who is neither from the same agency
nor acting under a sub-authorisation, and his/her attendance at theoral proceedings is his/her first appearance in the procedure, orPart E – Chapter III-13

Part E – Chapter III-14

Guidelines for Examination in the EPO(b)March 2023

a legal practitioner or a party's employee who is not an authorised
professional representative

then the procedure is as follows:In case (a), the division will check the file to see whether the previous
representative's authorisation has lapsed. A change in representative or thetermination of the authorisation of a previous representative may have beeneffected via an electronic notification through the My Files service(see OJ EPO 2012, 352). If the previous representative's authorisation has
lapsed, no further action is required. If not, the representative concerned
will be requested to provide a reference to a registered generalauthorisation or to file an individual authorisation.
In case (b), the division will request the person concerned to provide areference to a registered general authorisation or to file – by email in thecase of oral proceedings by videoconference (OJ EPO 2020, A71) – anindividual authorisation.
Any person without an authorisation will be requested to submit one without
delay. If they are unable to do so straight away, a time limit of two months
will be set for its submission. The fact that the authorisation was missing,and the time limit set for submitting it, must be recorded in the minutes. The
proceedings then continue in the normal way, except that no decision canbe pronounced at the end. Instead, the decision is issued in writing oncethe missing authorisation has been filed. At the end of the proceedings, theparty concerned must be reminded to file the authorisation.
8.3.2 Opening the oral proceedings
After opening the oral proceedings any person conducting them will
introduce the parties present. They will have the particulars of the persons
taking part in the proceedings recorded and will establish in what capacity
they are present. Details of these steps and any consequences thereof will
be recorded in the minutes (see E-III, 10).
8.3.3

Late arrival, non-appearance and failure to connect

8.3.3.1 General
If an absent party was not duly summoned, this is noted in the minutes andthe oral proceedings are closed. A new date must be fixed for further oralproceedings.
Rule 115(2)If any party who has been duly summoned to oral proceedings does notappear as summoned or fails to connect to the oral proceedings byvideoconference, as the case may be, the oral proceedings may be
conducted without them, since a party should not be able to delay issuanceof a decision by failing to appear or connect.
It is to be noted that if any party appears or connects before the end of theoral proceedings, they have the right to be heard.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter III-15

If the party appears or connects only after the proceedings have beenclosed, the division may reopen them at its discretion, subject to two
conditions:(a)the division has not pronounced a decision under Art. 97(1) or (2) orArt. 101(2) or an interlocutory decision under Art. 106(2) maintaining
the patent in amended form according to Art. 101(3) (see also
D-VI, 7.2.2) or a decision to reject the request for limitation under
Rule 95(4).

(b)

all parties to the proceedings agree to the reopening.

If, however, an allowable request for a change of date of oral proceedings
has been filed (see E-III, 7 E-III, 7.1.1), the proceedings are postponed anda new date fixed. If the filing of the request was delayed due to thecarelessness of the party concerned, the proceedings may, depending on
the circumstances, still be postponed; if this happens in opposition
proceedings, a decision on the apportionment of costs may have to betaken (see D-IX, 1.4).
8.3.3.2 Procedure in opposition proceedings
If new facts or evidence are submitted during inter partes oral proceedings
which a party, although duly summoned, fails to attend, it must first be
examined whether these submissions may be disregarded (Art. 114(2); seealso E-VI, 2).
Following G 4/92, if new facts are taken into consideration, then at the endof the oral proceedings a decision based on these facts cannot be taken
against the absent party. Further, new evidence can only be used against
the absent party if it has been previously notified and merely supports theprevious assertions of the party who submits it. However, new arguments
may be used at any time, in so far as they do not change the grounds onwhich the decision is based.
In other words, what the Enlarged Board of Appeal ruled out in G 4/92 was
the possibility of taking decisions against the absent party on the basis of asurprising course of events at the oral proceedings, which changes thelegal and factual framework of the case in an unforeseeable way(see T 414/94).
An absent party cannot be considered taken by surprise if during oralproceedings the other side attempts to overcome objections raised before
the oral proceedings. In particular, a submission during oral proceedings ofa more restricted and/or formally amended set of claims with a view toovercoming the objections of the opponent is not considered a "new fact"(see T 133/92 and T 202/92). Nor is it unexpected that amended claims are
examined for formal admissibility and for compliance with Art. 123(2) and(3) (see T 341/92).
In the particular case of an absent opponent, if new prior art is submitted forthe first time during oral proceedings which may be an obstacle to themaintenance of the opposed patent, this new prior art can be taken into

Art. 104(1)Part E – Chapter III-16

Guidelines for Examination in the EPO

March 2023

consideration despite the opponent's absence because it is in the
opponent's favour (see T 1049/93).
8.3.3.3 Procedure in examination proceedings
Oral proceedings give applicants an opportunity to exercise their rights
under Art. 113(1). In examination proceedings, when applicants fileamended claims before oral proceedings which they subsequently do notattend, they may expect a decision based on objections which might arise
against such claims in their absence. A decision can be taken based on
facts and arguments presented earlier in the proceedings and/or based on
newarguments
which
may
be
expectedtoberaised(see OJ EPO 2008, 471).
In examination proceedings, the annex to the summons to oral proceedings
must include all the objections that are likely to be discussed during oralproceedings and indicate that amended claims in response to thecommunication will have to be examined at the oral proceedings forcompliance with the EPC. This ensures that the applicant's right to beheard (Art. 113(1)) is respected and that the proceedings are not delayed
unnecessarily if an applicant does not attend oral proceedings.
Where auxiliary requests are filed before the summons to oral proceedings
is issued, these requests must be commented on in terms of both
admissibility and allowability. However, the reasoning given in the
preliminary opinion is to focus on the main request; only a brief indication of
the essential reasons for the non-allowability of the subject-matter or the
non-admissibility of the auxiliary requests is to be provided. It is to be notedthat this brief indication of the essential reasons for not allowing or not
admitting the auxiliary requests has to be thorough enough to ensure thatthe applicant has been informed of the objections raised by the examining
division and has thus been given the opportunity to comment on them(see C-V, 1.1 and C-V, 4.9 C-V, 4.7.1.1).
8.4 Opening of the substantive part of the proceedings
In so far as necessary, the person conducting the proceedings will outline
the stage reached in the proceedings and will indicate the most importantmatters in dispute according to the file. In examination or opposition
proceedings this may also be done by the primary examiner.
8.5 Submissions by the parties
After the introduction referred to above, the party or parties will be allowed
the floor in order to put their cases and to make applications on procedural
matters and state the grounds thereof. In the normal course of events eachparty will have only one opportunity of making a comprehensive statement.
In opposition proceedings the opponents will generally speak first and thepatent proprietor afterwards. Where there are a number of opponents, it
may be expedient to grant the patent proprietor an opportunity of replying
directly after the statement of each individual opponent. The opponents andthe patent proprietor will be given the opportunity of making a final reply.

March 2023

Guidelines for Examination in the EPO

The submissions of the party or parties may be prepared in writing,although they are expected to be made extemporaneously as far as
possible. Passages from documents already introduced into theproceedings which are referred to again may only be read out where theirprecise wording is relevant.
Submissions by a person who is not qualified under Art. 133 and 134 torepresent parties to proceedings before the EPO may be admitted at oralproceedings when this person accompanies a professional representative
representing that party. Such submissions, however, cannot be made as amatter of right, but only with the permission and at the discretion of theexamining or opposition division or the Legal Division. In opposition
proceedings the division will consider in exercising its discretion whether(see G 4/95):(i)the party on behalf of which the person is to speak has filed arequest to this effect;(ii)

the party making the request has indicated the name of the person,
the subject-matter of the submission and the person's qualification to
speak on this matter;(iii)

the request has been filed sufficiently in advance of the oralproceedings;(iv)

in the case of a late-filed request, either there are exceptional
circumstances justifying the admission of the submission or all theother parties agree to the making of the submission; and(v)

the submissions are made under the continuing responsibility andcontrol of the professional representative.

If neither of the alternative conditions mentioned under (iv) are met, alate-filed request will be refused. The time limit to be applied when deciding
whether a request was late-filed is that fixed in the summons under
Rule 116.
If a party is represented by an authorised employee rather than aprofessional representative, the same considerations apply in respect of aperson accompanying the authorised employee. As no other party isaffected, examining divisions can adopt a more liberal approach than
opposition divisions.
Parties are not to be considered as accompanying persons in the sense of
G 4/95 (see T 621/98). They have the right to make submissions in oralproceedings by virtue of their status as party to the proceedings.
If written submissions are made during oral proceedings, the division will
make sure that requirements such as typed-form, signature and dating of
the submissions are met (T 733/99). See also E-III, 8.7 andOJ EPO 2020, A71.

Part E – Chapter III-17

Part E – Chapter III-18

Guidelines for Examination in the EPO

March 2023

8.5.1 Use of computer-generated slideshows in oral proceedings
In oral proceedings a computer-generated slideshow cannot be used as amatter of right, but only with the permission of and at the discretion of theexamining or opposition division or the Legal Division (T 1556/06), and,provided that – in the case of oral proceedings on the EPO premises, if –the necessary equipment is available in the room in which the oralproceedings are held. Generally, screens are available in most meetingrooms; however, requests to provide further equipment such as projectors
will be refused.
Care must be taken that presentations of computer-generated slideshows
do not negatively impact the efficient conduct of oral proceedings(e.g. interruptions for the technical preparations for the presentation).
Similar considerations apply to the use of other visual aids (e.g. flipcharts,
pictures, screensharing).
8.5.1.1 Opposition proceedings (inter partes)
As a prerequisite, copies of the material to be presented must be provided
in good time before the oral proceedings, i.e. Rule 116 applies. These
copies are treated like any other submission made in writing.
The opposition division will decide whether the presentation of acomputer-generated slideshow would facilitate the proceedings, after
having heard the parties and taking into account whether allowing or
refusing the use of the presentation would be detrimental to any participant.
A balance must be found between the presenter's interest in defending thecase in the most appropriate manner and the other party's need to fully
understand the submissions made and to have a true opportunity torespond.
The presentation of computer-generated slideshows in oral proceedings willbe allowed if in the absence of this visual aid it would be much more difficult
to follow the party's submissions. For example, slides showing:(a)the structure or functioning of a product which is complex, or(b)complicated reaction schemes,(c)complex formulae, or(d)the operation of a complex apparatus

might be considered by the opposition division to facilitate the discussion.
If copies of the material to be presented have not been filed in good time, orif the slides contain new matter, the presentation may be disregarded under
Art. 114(2) and Rule 116. In this case the opposition division will apply thesame criteria for admissibility as are used for other late-filed facts orevidence (see E-VI, 2).

March 2023

Guidelines for Examination in the EPO

Part E – Chapter III-19

The same considerations apply to oral proceedings before the Legal
Division where they constitute inter partes proceedings.
8.5.1.2 Examination proceedings (ex parte)
As no other party is affected, examining divisions may adopt a more liberalapproach than opposition divisions. Therefore, examining divisions willconsider allowing the presentation of a computer-generated slideshow even
if the slides are not communicated in advance of the oral proceedings,
provided that:(a)the examining division feels able to deal with this late-filed material
without unduly lengthening the proceedings. The sameconsiderations as for other late-filed facts and evidence apply(see E-VI, 2);(b)

the submissions contribute to the resolution of the questions at issue.

The same considerations apply to oral proceedings before the Legal
Division where they constitute ex parte proceedings.
8.5.2 Written submissions during oral proceedings byvideoconference
Where oral proceedings are held as a videoconference, documents filed
subsequently as referred to in Rule 50 must be filed by email(OJ EPO 2020, A71, Art. 1(1)). This also applies to authorisations.
Where filed documents require signature, this signature may be applied tothe attached document or to the text of the accompanying email. The
signature must take the form of a string of characters (such as an email
signature with the sender's name and position) or a facsimile signature.

OJ EPO 2020, A71,
Art. 2The documents are to be sent to the email address indicated during thevideoconference by the competent department.

OJ EPO 2020, A71,
Art. 3Any emails and attached documents filed by a party during oralproceedings with more than one party will be forwarded by the division tothe other parties present at the proceedings unless the party in question
has already sent them direct to the email address indicated by the otherparties. Therefore, each party must communicate to the chair and, where
possible, to the other parties at the beginning of the oral proceedings theemail address it wishes to use for receiving copies of such documents.
Parties and representatives must ensure that they can immediately takenote of any document sent to the email address indicated by them.

OJ EPO 2022, A106

Amended application documents are to be filed as attachments.
Attachments containing these amended application documents must be in
PDF format and must comply with the WIPO Standard for Filing andProcessing in Electronic Form (Annex F of the Administrative Instructions
under the PCT). Where an attachment containing these amended
application documents is not in PDF format or does not comply with the
WIPO Standard or is illegible or incomplete, the party must be promptly
informed during the videoconference. Where the deficiencies cannot be

OJ EPO 2020, A71,
Art. 4

Part E – Chapter III-20

Guidelines for Examination in the EPO

March 2023

remedied during the videoconference or within the time limit set, that
document (or that part of the document which is illegible or incomplete) isdeemed not to have been received.
Other attachments may be sent in any format which can be opened by thedivision or (in the case of consultations) the examiner and which can be
reproduced in a legible form. Otherwise they are deemed not to have been
filed.
If an attachment is infected with a computer virus or contains othermalicious software, it will be deemed to be illegible. The EPO is not obliged
to receive, open or process any such attachment.
OJ EPO 2020, A71,
Art. 5

No paper documents need be filed to confirm documents filed by email.

OJ EPO 2020, A71,
Art. 6All submissions made by email during a videoconference must be annexedto the minutes unless the exceptions under Rule 144 and the decision of
the President of the EPO dated 12 July 2007 concerning documents
excluded from file inspection apply (see A-XI, 2.3 and Special edition No. 3,
OJ EPO 2007, J.3). A confidentiality note which is routinely included inemails is not to be regarded as a request to exclude these submissions
from the public file.

OJ EPO 2022, A106

If the division consents, a party may present its screen for illustrative
purposes. An item displayed in that way will not be considered as a
document submitted by that party.
8.6 Facts, evidence or amendments introduced at a late stage
With respect to facts, evidence or amendments not submitted in due time orarguments presented at a late stage in the proceedings, including during
oral proceedings, see E-VI, 2.
8.7

Rules 50(1) and 86
Rule 49(2)OJ EPO 2022, A113

Handwritten amendments in oral proceedings

8.7.1 General principles
The requirement of Art. 2(7) of the decision of the President of the EPO
dated 25 November 2022 Rule 49(8) that the description, claims andabstract, as well as the request for grant, must be typed or printed inprinciple extends to documents replacing application documents and toamended patent specification documents (see also A-III, 3.2).
Responsibility for formally correct submissions and, in particular, forcompliance with these requirements Rule 49(8) lies with theapplicant/proprietor.
It is to be noted that deletions, correction of the numbering of the figures
and insertion of reference numbers and associated arrows in drawings are
considered as typewritten amendments.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter III-21

If the document to be amended contains numbered paragraphs, amended
replacement paragraphs may be submitted. In such cases it is notnecessary to supply entire amended pages.
In order to assist the parties, including parties using their own laptops orother electronic devices during oral proceedings on the premises of the
EPO, the EPO provides technical facilities that allow for compliance withthe formal requirements, in particular computers equipped with a word
processor and a printer, network printers and copiers enabling documents
to be printed from a USB stick, and internet access in public areas via apublic wireless network (see OJ EPO 2013, 603).
Parties are recommended to prepare electronic copies of documents likely
to be amended. Published patent applications and specifications areavailable via the European publication server.
In examination proceedings, the formal requirement of Rule 49(8) applies todocuments submitted during oral proceedings as well. Documents
containing handwritten amendments will normally be accepted by thedivision as a basis for discussion during oral proceedings until agreement isreached on the final text of the patent. However, a final decision granting apatent may be taken only on the basis of documents which are formallycompliant. See E-III, 8.7.2 for the procedure to be followed.
For opposition oral proceedings, Rule 82(2), third sentence, provides for
one exception to the principle that a decision determining the final text ofthe patent may be based only on formally compliant documents. Pursuant
to this provision, in oral opposition proceedings, the patent proprietor is by
way of exception not required to file documents compliant with Rule 49(8)prior to the interlocutory decision on the documents on the basis of which
the patent is to be maintained. The proprietor may choose to submit aformally compliant version of the amended text only within the time limit
under Rule 82(2) (OJ EPO 2016, A22). The parties will nevertheless be
encouraged to file documents compliant with Rule 49(8) during oral
opposition proceedings. See E-III, 8.7.3 for the procedure to be followed.
In contrast, in written opposition proceedings, an interlocutory decision tomaintain the patent as amended may be issued only on the basis offormally compliant documents since the invitation in Rule 82(2) applies only
to documents filed during oral proceedings (see H-IV, 4.3).
For the procedures in examination and opposition oral proceedings, see
E-III, 8.7.2 and 8.7.3 respectively.
8.7.2 Procedure in examination proceedings
In examination proceedings, the formal requirements of Rules 46 and49(2)-(9) and (12) prescribed by the President under Rule 49(2) apply
equally to application documents submitted during oral proceedings byemail or by hand (OJ EPO 2020, A71).
Documents containing handwritten amendments will normally be acceptedby the division as a basis for discussion during oral proceedings until

OJ EPO 2022, A113

Part E – Chapter III-22

Guidelines for Examination in the EPO

March 2023

agreement is reached on the final text of the patent. However, a final
decision granting a patent may be taken only on the basis of documents
which are formally compliant.
If the applicant is unable to provide formally correct amended application
documents during oral proceedings, the following applies:(a)

If a decision to refuse a patent application is imminent and formally
non-compliant documents making up the application are on file, toavoid prolonging the proceedings the examining division will goahead and issue the decision, based on substantive arguments. It
may however mention this formal deficiency in the decision.

(b)

If there is agreed patentable subject-matter, the examining divisionannounces the following:–

the amended application fulfils the requirements of the EPC
except for certain formal requirements, e.g. the ones under
Rule 49(8) regarding handwritten amendments; and–the procedure will be continued in writing.

After the closure of the oral proceedings, the formalities officer onbehalf of the examining division (see A-III, 3.2) will invite theapplicant to file formally correct documents within two months. Where
the amendments submitted in reply to this invitation differ from thepatentable subject-matter established at the oral proceedings, theprocedure described in C-V, 4.7 is to be applied.
8.7.3 Procedure in opposition proceedings
The preferred way to amend the description during oral proceedings in
opposition is by submitting amended paragraphs replacing specificnumbered paragraphs of the B-publication of the patent. This allows the
opposition division and the opponents to verify the amendments efficiently.
It is not necessary to supply entire amended pages.
Rule 82(2), third sentence, provides for one exception to the principle that adecision determining the final text of the patent may be based only on
formally compliant documents. Pursuant to this provision, in oral opposition
proceedings, the patent proprietor is by way of exception not required to file
documents compliant with the requirements of Art. 2(7) of the decision of
the President of the EPO dated 25 November 2022 (OJ EPO 2022, A113)
prior to the interlocutory decision on the documents on the basis of which
the patent is to be maintained. The proprietor may choose to submit aformally compliant version of the amended text only within the time limit
under Rule 82(2) (OJ EPO 2016, A22). The parties will nevertheless be
encouraged to file compliant documents during oral opposition
proceedings.
In contrast, in written opposition proceedings, an interlocutory decision tomaintain the patent as amended may be issued only on the basis ofMarch 2023

Guidelines for Examination in the EPO

formally compliant documents since the invitation in Rule 82(2) applies only
to documents filed during oral proceedings (see H-IV, 5.3).
If, in oral proceedings, the interlocutory decision of the opposition division
was based on documents which do not comply with Art. 2(7) of the decisionof the President of the EPO dated 25 November 2022 Rule 49(8), i.e. whichcontain handwritten amendments, the opposition division will invite the
proprietor in the communication under Rule 82(2) to file a formallycompliant version of the amended text. The invitation will specify theformally deficient amended paragraphs and/or claims for which
replacement paragraphs and/or claims need to be filed. The same applies
where a decision of the boards of appeal remits the case to the departmentof first instance with the order to maintain the patent on the basis ofamended documents with handwritten amendments.
In reply to the invitation of the opposition division under Rule 82(2) the
proprietor will have to submit replacement paragraphs and/or claims whichcontain a formally compliant verbatim reproduction of the text as
determined by the interlocutory decision (or the decision of the board of
appeal). Any divergence between the text matter of the formally deficientparagraphs (and/or claims) specified in the invitation under Rule 82(2) andthe text of the replacement paragraphs (and/or claims) will trigger acommunication under Rule 82(3). A communication under Rule 82(3) will
also be sent, if the proprietor does not reply at all or not in time, if thereplacement paragraphs and/or claims are incomplete or if the replacement
paragraphs and/or claims are again formally deficient.
If a formally compliant version of the verbatim text of the specified amended
paragraphs (and/or claims) is not submitted within two months from thenotification of the communication under Rule 82(3), the patent will be
revoked.
8.8 Use of Rule 137(4) for amendments filed during oral proceedings
in examination
A communication under Rule 137(4) will not be sent in respect ofamendments filed during oral proceedings (see H-III, 2.1.3), since thiswould unduly delay the procedure. Making a request under Rule 137(4)during oral proceedings would have the consequence of staying theproceedings for one month, while waiting for the applicant's answer.
The examining division therefore requests the applicants to provide a basis
for any amendments submitted during oral proceedings before any new
amendments can be admitted into the proceedings.
In special cases, e.g. where there are many auxiliary requests which are
difficult to check for compliance with the requirements of Art. 123(2) and therequests do not comply with Rule 137(4), the examining division may
exercise its discretion by not admitting these requests under Rule 137(3)rather than raising an objection under Rule 137(4) (see H-II, 2.3 andH-III, 3.3.2.1).

Part E – Chapter III-23

Part E – Chapter III-24

Guidelines for Examination in the EPO

March 2023

8.9 Discussion of the facts and of the legal position
A discussion will be conducted with the party or parties concerning thosetechnical or legal questions which are relevant to the decision and which,after the parties have made their submissions, do not appear to have been
sufficiently clarified or discussed or are seemingly contradictory. Where
necessary, it must be ensured that the party or parties file requests which
are to the point and that the applicant or proprietor formulates the claims
appropriately.
If the examining division finds that some patentable subject-matter resultsfrom an amendment of the claims, it informs the applicant of the fact andallows him an opportunity to submit amended claims based thereon.
If the competent department intends to depart from a previous legal
assessment of the situation with which the parties are acquainted or from aprevailing legal opinion, or if facts or evidence already introduced into theproceedings are seen in a different light – e.g. during the deliberations of
the examining or opposition division (see E-III, 8.11) – so that the casetakes a significant turn, the parties must be informed thereof.
8.10 Right of the other members of the division to put questions
The chair must allow any member of the examining or opposition division
who so requests to put questions. They may determine at which point in theproceedings such questions may be put.
In oral proceedings, questions may be put to the parties in connection with
their statements or the discussion of the facts or of the legal position. Whenevidence is taken as part of oral proceedings questions may also be put tothe witnesses, parties and experts called. As regards the right of the parties
to put questions, see E-IV, 1.6.7.
8.11 Closure of oral proceedings
If the competent department considers that the matter has been sufficiently
thoroughly discussed, it must decide on the subsequent procedure to befollowed. Where the department consists of a number of members – as in
the case of the examining or opposition divisions – they must, if necessary,deliberate on the matter in the absence of the parties. Where oralproceedings are held by videoconferences and the members connect to theoral proceedings from different locations (see E-III, 8.2.2.2 E-III, 8.2.2), themembers will deliberate and vote among themselves via a separate
communication channel. If new aspects emerge during the discussion andrequire further questions to be put to the parties, the proceedings may berestarted. Any person conducting the proceedings may thereafter give thedecision of the department. Otherwise they inform the party or parties of thesubsequent procedure and then close the oral proceedings.
While the department is bound by the decision it issues on substantive
matters (see E-III, 9), it is free, as a result of further reflection, to inform theparties that it intends to depart from the procedure which it has announced.
The subsequent procedure may, for example, consist in the department
issuing a further communication, imposing certain requirements on one ofMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter III-25

the parties, or informing the parties that it intends to grant or maintain thepatent in an amended form. As regards the delivery of a decision in the lastcase, see E-III, 9.
If the patent is to be granted or maintained in an amended form, it is theaim to reach an agreement upon the final text in the oral proceedings. If,
however, by way of exception the examining or opposition division indicates
during the oral proceedings that it would be willing to grant or maintain aEuropean patent provided that certain amendments are made which could
not reasonably have been foreseen from the earlier procedure, theapplicant or patent proprietor will be given a time limit of normally two
to four months in which to submit such amendments. If the applicant or
patent proprietor fails to do so, the application will be refused or the patent
will be revoked.
8.11.1 Requesting postponement during oral proceedings
Oral proceedings in examination, limitation or opposition are intended tobring the proceedings to a close, and parties are expected to prepare
themselves fully.
The division will therefore normally refuse any request from a party that theproceedings be postponed or continued in writing.
Even if the description needs to be revised to bring it into conformity with
amended claims, the applicant or proprietor is expected to make thenecessary changes either in the oral proceedings or during a break.
8.11.2 Adjournment of oral proceedings due to lack of timeContinuing oral proceedings on a day other than the one set out in thesummons requires a new summons according to Rule 115(1) to be issued
unless all parties can agree to a shorter period of notice. See E-III, 6 for thegeneral practice adopted for setting the date of oral proceedings. The
explicit agreement of all parties is necessary and must be recorded in theminutes.
The new summons must indicate the points that still need to be discussed
during the upcoming oral proceedings (Rule 116(1)). It is at the discretion of
the division whether to indicate the points that are closed or to provide a
provisional opinion on the points that are still open.
If the agreed date is too close for the parties to be able to receive the newsummons in time (e.g. the next day or a day in the same week), it isnecessary that the parties waive their right to receive new summons. The
respective statements of the parties must also be recorded in the minutes.
9. Delivery of the decision
The delivery of the decision will follow a statement by the person
conducting the proceedings announcing the operative part of the decision(see also E-III, 8.11 and E-X, 2.3).

Rule 111(1) and (2)Part E – Chapter III-26

Guidelines for Examination in the EPO

March 2023

The operative part may, for example, read as follows:"The patent application ... is refused." or"The opposition to the patent ... is rejected." or"The patent ... is revoked." or"Taking account of the amendments made by the proprietor in the
opposition proceedings, the patent and the invention to which it relates
satisfy the requirements of the Convention." or"The request for limitation of the patent .... is allowable." or"The request for limitation of the patent .... is rejected." or"Patent grant proceedings relating to European patent application No. ...
are interrupted/resumed as from ..."
Once a decision has been pronounced, submissions of the party or parties
cannot be considered any longer and the decision stands, subject to thecorrection of errors in accordance with Rule 140. It may only be amended
by appeal (see E-XII, 1, E-XII, 7 and E-XII, 8).
No pronouncement need be made at this point as to the reasons for thedecision or the possibility of appeal. However, the examining or opposition
division may give a short explanation of the reasons for the decision.
Subsequently the decision in writing (see E-X) containing the reasoning
and information as to right of appeal must be notified to the parties without
undue delay. The period for appeal will only begin to run from the date of
notification of the written decision.
Generally speaking it will not be possible to give a decision granting a
European patent or maintaining it in amended or limited form in oralproceedings since, in the case of the grant of a patent, the requirements
laid down in Rule 71(3) to (7), and in the case of a patent being maintainedin amended or limited form, the requirements of Rule 82(1) and (2) orRule 95(3) must be fulfilled.
The division further ensures that the result of oral proceedings in opposition
is made available to the public online immediately after the hearing. If thepatent is maintained on the basis of amendments filed during oralproceedings, these amendments are made public as well.
10. Minutes of oral proceedings
As regards the minutes of taking of evidence, see E-IV, 1.7.

Rule 124(1)10.1 Formal requirements
Minutes of oral proceedings must be drawn up.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter III-27

The person conducting the proceedings must ensure that during the wholeproceedings an employee is available to keep minutes. If necessary, during
oral proceedings different employees may carry out the task ofminute-writing in sequence. In this case it must be made clear in theminutes which section was drawn up by which employee. The employees
are normally members of the competent department, e.g. the examining or
opposition division. Following the proceedings, the minutes are formatted.
The minutes must be authenticated by the employee responsible fordrawing them up and by the employee who conducted the oralproceedings, either by signature or by other appropriate means. If
exceptionally the employee responsible cannot sign the minutes, one of theother members of the division may sign them on the employee's behalf
subject to the conditions defined in E-X, 2.3. They are not signed by theparties. The parties must be provided with a copy of the minutes. Copies
must be notified to them as soon as possible after the oral proceedings.
Provided the parties have been informed, the EPO may make soundrecordings of the oral proceedings. However, no person other than an EPO
employee is allowed to make any recording or retransmit any part of theoral proceedings, whether image or sound or both (see OJ EPO 1986, 63,
OJ EPO 2020, A122 OJ EPO 2022, A106).
Sound recordings are made only in specific exceptional circumstances, forexample if the division expects(a)witness testimony(b)complex proceedings (e.g. because of the subject-matter or numberof parties)(c)requests for amendments to the minutes because of the importanceof the case.

The recording is kept until the end of any possible proceedings. Copies of
the recording will not be provided to the parties.
The minutes must first include the date of the proceedings, the names ofthe members of the department, e.g. the opposition division, present andthe name or names of the minute-writer or writers. Minutes must also
include the details referred to in E-III, 10.3.
10.2 Language
The minutes are normally written in the language of the proceedings under
Art. 14(3), i.e. the EPO official language in which the application was filed
or into which it was translated. The exceptions are set out in Rule 4(6).
Amendments to the text of the description or claims of the application or
patent must be recorded in the minutes in the language of the proceedings
under Art. 14(3).

Rule 124(3) and (4)Part E – Chapter III-28

Guidelines for Examination in the EPO

March 2023

Where the exact wording is important, or if the parties so insist, the minutes
must record the following, word for word, in the EPO official language
actually used or into which the statements were translated, as provided forin Rule 4(6):(a)

requests of the parties(b)

legally relevant statements by parties, witnesses, experts anddivision members, and(c)order of the decision.

For derogations from the language of proceedings see E-V, 6.

Art. 113(1)Rule 124(1)10.3 Subject-matter of minutes
Minutes have an important function as evidence of respect for the right tobe heard (Art. 113(1)). They must contain the essentials of the oralproceedings and the relevant statements made by the parties, together witharguments relevant to the decision and not contained in the parties' written
submissions. Details of the arguments raised by the parties, however, aredeveloped in the decision, and therefore are only briefly reported in theminutes.
Relevant statements are, for example, new or amended procedural
submissions or the withdrawal thereof, the fresh submission or amendment
or withdrawal of application documents, such as claims, description anddrawings, and statements of surrender.
The essentials of the oral proceedings include new statements by the partyor parties and by the member or members of the department concerning
the subject-matter of the proceedings. In examination and opposition
proceedings, the essentials are principally new statements arguing thepresence or lack of novelty, inventive step and other patentability criteria.
The minutes are not, however, expected to be an exhaustive recollection of
everything that was said during the oral proceedings. Rather, they are
limited to the essentials and are as brief and concise as possible.
Vague or general statements are to be avoided. Also, care must be taken
to ensure that statements crucial to the decision are correctly recorded.
Although this is normally not necessary, in case of doubt the record of suchstatements is read out to the parties concerned before the decision is taken
and announced.
If new facts or evidence are submitted during the oral proceedings, theminutes must make clear that the division has examined them under
Art. 114(1). They must also indicate whether or not the division, after
having heard the parties, subsequently disregarded them under Art. 114(2).

March 2023

Guidelines for Examination in the EPO

The minutes briefly summarise the following elements, where present:(a)arguments relevant for the decision as submitted by the parties,
which, if they are already known from the written procedure, can bereferred to as such,(b)

the substance of any new requests by the parties, preferably in theform of a brief statement referring to documents containing theserequests, which must be attached to the minutes, and(c)objections, arguments and/or requests to the parties voiced by amember of the division, focusing on the points relevant for thedecision which are developed in the grounds for the decision.

The minutes conclude by indicating the decision taken by the division or, if
no final decision is taken, the outcome of the proceedings. This part ispreceded by a record of the parties' final requests as indicated in point (b)above.
The minutes must also contain procedural information, such as how theproceedings are to be continued after closure of the oral proceedings orwhether the public was excluded for the whole or part of the oralproceedings.
The structure of the minutes mirrors the course of oral proceedings (seeE-III, 8 and sub-points).
If a decision is given (see E-III, 9), it must be reproduced in the minutes.
The minutes with the result reached during the proceedings arecommunicated to the parties as soon as possible.
10.4 Request for correction of minutes
If a party to oral proceedings considers the minutes thereof not to fulfil therequirements of Rule 124, it may file a request to that effect, with aproposed correction, as soon as possible after receipt of the minutes inquestion.
The examining/opposition division is competent to decide upon the request(T 1198/97, T 68/02 and T 231/99). In response to a request for correction
the division will either issue corrected minutes of the oral proceedings ordespatch a communication stating that the minutes already contain theessentials of the oral proceedings and the relevant statements of theparties and give reasoning thereto (see T 819/96). The communication fromthe division cannot on its own be subject to an appeal. If the request forcorrection is filed within the period for filing the grounds for appeal, thedivision will make every effort to deal with it promptly to the extent possible
so that the party can refer to the communication in the appeal.
It is at the discretion of the writer of the minutes (and of the chair who
authenticates them) to decide what is considered essential and relevant in
the meaning of Rule 124(1) (T 212/97). The minutes are corrected whenPart E – Chapter III-29

Part E – Chapter III-30

Guidelines for Examination in the EPO

March 2023

they show deficiencies with regard to the aspects mentioned, for example if
essential submissions or similarly important procedural statements are
missing, or if they are incorrectly reflected in the minutes (T 231/99,
T 642/97 and T 819/96).
11.

Oral proceedings held by videoconference – technicalaspects

11.1
Equipment and technology
Videoconferences will be conducted using IP technology: detailed
information on the technology and tools used by the EPO and on theminimum technical requirements is available on the EPO website and will
be communicated to the parties; such information may be updated fromtime to time.
11.1.1 Videoconference rooms at the EPO
Rooms equipped for videoconferences are available at all locations. Where
necessary, the formalities officer will take care of the room reservation.
The EPO videoconference studios are for internal use only and therefore
not available for applicants' or representatives' own use. In particular, any
requests from parties wishing to use the EPO videoconference facilities toattend proceedings at other EPO premises (e.g. when the applicant is in
Munich and the proceedings are to be held in The Hague) are refused withreference to OJ EPO 2020, A122, point 23.
For oral proceedings, the videoconference rooms will be reserved for atleast half a day.
11.1.2 Document camera
A document camera can be made available in each videoconference room.
With this device a live image of a paper document can be transmitted to theparties. It is, however, preferable to share documents via email.
11.2
Preparations for the videoconference
In addition to the summons, participants will receive an email confirming thedate, time and the videoconference contact details to be used to establish
the connection (in the form of a link or by other suitable means) andcontaining any further appropriate information, including on the organisationof the videoconference.
Participants are responsible and bear the costs for their own connection to
the internet and any technical facilities at their end. They must ensure that
their videoconferencing equipment meets the technical requirements
specified in the communication containing the technical instructions.
Participants are encouraged to perform a test call well before the oralproceedings take place.
Further information on the technology, procedure and etiquette for
conducting oral proceedings by videoconference is available on the EPO
website.

March 2023

Guidelines for Examination in the EPO

11.3
Technical problems
Where technical problems occur such that the oral proceedings held byvideoconference cannot be conducted openly and fairly, for example due toa total or partial breakdown in communication, the right to be heard might
possibly be violated (Art. 113(1)). The parties, due to the technicalproblems, might be taken by surprise by the grounds mentioned in an
adverse decision on which they have not had an opportunity to comment. In
such cases, the videoconference is terminated and new summons to oralproceedings are issued. The EPO will not attempt to re-establish the line incase of technical problems, but the applicant may be contacted by phone
and asked to do so.
As a rule, new oral proceedings will be held by videoconference unlessthere are serious reasons for not doing so (OJ 2020, A122, point 22).
11.4
Recording
The recording of oral proceedings by the parties is not permitted (seeE-III, 10.1). At the beginning of the videoconference the chair therefore
reminds all participants that recording of the videoconference is prohibited.

Part E – Chapter III-31

OJ 2020, A134, Art. 4

March 2023

Guidelines for Examination in the EPO

Part E – Chapter IV-1

Chapter IV – Taking and conservation ofevidence
1.

Taking of evidence by the departments of the EPO

1.1 General remarks
Formal taking of evidence in accordance with Rule 117 will occur mainly in
opposition proceedings and hardly ever before the examining division. The
following sections of this chapter are therefore based primarily on
opposition proceedings. However, they also apply mutatis mutandis toother proceedings and particularly to substantive examination.
1.2 Means of evidence
The party or parties may at any time during proceedings submit evidence insupport of alleged facts (see E-III, 5, E-X, 1.2, D-IV, 5.3, D-IV, 5.4 and
D-VI, 3). This must be done at the earliest opportunity. When such
evidence is such as could have been put forward at an earlier stage it is forthe competent department to consider whether it is expedient (see E-VI, 2)
to allow the new evidence to be introduced.
It is generally desirable for parties to produce evidence in respect of all thefacts alleged in support of their case, in order, for example, to showwhether a particular technique was generally known to industry or whether
there was any prejudice against a particular technique.
Facts adduced by a party will, however, normally be deemed true, even
without supporting evidence, if it is clear that no doubts exist concerningthem, if they do not contradict one another or if no objection is raised. Insuch cases the facts need not be supported by evidence.
There will however be occasions, particularly in opposition proceedings, inwhich the arguments of the party or parties must be supported by evidence.
This will for example be the case where reference is made to prior art, forinstance in the form of an oral description, a use or perhaps a company
publication and there is some doubt as to whether, and if so when, suchprior art was made available to the public.
The means of evidence which are admissible in proceedings before the
EPO are (non-exhaustively) listed in Art. 117(1):–production of documents;–

hearing the parties;–

hearing witnesses;–

sworn statements in writing;–requests for information, for instance from a publisher concerning thedate of publication of a book

Art. 117
Rule 117

Art. 117(1)Part E – Chapter IV-2

Guidelines for Examination in the EPO–

opinions by experts (see E-IV, 1.8.1); and–inspection.

March 2023

The most appropriate way of obtaining evidence in the individual casedepends on the facts which have to be proven and on the availability of theevidence. To prove prior use in an opposition, the opponents usually offer
as evidence the production of documents, the hearing of witnesses orparties, or they present sworn statements in writing. It is at the opposition
division's discretion to evaluate this evidence, there being no fixed rules as
to how any category of evidence is to be judged (for the evaluation ofevidence, see E-IV, 4).
If the documents produced (e.g. patent documents) leave no doubt as totheir contents and date of availability to the public and are more relevant forthe patent in suit than other evidence offered, reasons of procedural
efficiency may lead the opposition division to not pursue the other evidence
at first.
If the testimony of a witness is offered, the opposition division may decideto hear this person in order to verify the facts for which this witness isbrought forward, e.g. the prior use of the claimed product in an undertaking
or the existence of an obligation to secrecy. For adequate substantiation
the notice of opposition must make clear these facts, as witnesses aremeant to serve for corroboration of facts brought forward, not for supplying
these facts in place of the opponent. The above applies likewise to hearing
the parties (see also E-IV, 1.6).
The "sworn statements in writing" referred to in Art. 117(1)(g) are unknown
in some national legal systems, which instead have their own instruments(see T 558/95).
Whether a written statement ("affidavit") is made under oath or not is only
one of the criteria applied by the opposition division in its evaluation of theevidence adduced. Apart from its relevance for the case, other criteria are
the relationship between the person making the statement and the parties
to the proceedings, the personal interest of that person, the context inwhich the statement was made, etc. Such a statement does not go beyond
its literal content and does not allow the opposition division to assess theassociated or background factors. If the alleged facts are contested by theother party, the opposition division does not generally base its decision onsuch a statement, but summons the person making the statement as awitness, if so offered by the party. The ensuing hearing of the witness
allows the opposition division and the parties to put questions to thewitness and thus enables the opposition division to establish the facts on
the basis of that person's testimony. If that person is not offered as awitness, the opposition division will not pursue this evidence further.
Inspection will enable direct observations to be made and direct
impressions to be formed of the object or process concerned. It may, forexample, involve the demonstration of a product or process requested by
the applicant or proprietor of the patent to substantiate the method ofMarch 2023

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Part E – Chapter IV-3

operation of the subject-matter of the patent where this is disputed by theexamining or opposition division.
Evidence in the form of documents normally stays on the file. Only
exceptionally and on reasoned request can documents filed as evidence be
returned unconsidered, e.g. if they were third-party statements filed inbreach of a confidentiality agreement and the other parties agree to therequest (see T 760/89).
1.3 Taking of evidence
The department responsible for the taking of evidence in the form of ahearing of witnesses, parties and experts will, in substantive examinationand opposition proceedings, be the division before which the taking ofevidence as part of oral proceedings would normally take place. If evidence
is to be taken, the examining or opposition division will normally have beenenlarged to include a legally qualified member. The division may
commission one of its members to examine the evidence adduced.
Generally, this will be the primary examiner under Art. 18(2) or 19(2).
A member may, for example, be commissioned pursuant to Rule 119(1), forthe purposes of an inspection, such as in the form of a demonstration of aprocess or the investigation of an object, particularly in undertakings
located far away.

Art. 117(2)Rules 118 to 120

A member may also be commissioned to attend a court hearing pursuant toRule 120(3), and put questions to the witnesses, parties and experts.
The language for taking evidence and writing the minutes is governed byArt. 14(3) (language of the proceedings) and Rule 4 (derogations from theprovisions concerning the language of the proceedings in oralproceedings); see also E-III, 10.2 and E-V.
Evidence can be taken on the premises of the EPO or by videoconference.
For details regarding the taking of evidence by videoconference see
OJ EPO 2020, A135.
1.4 Order to take evidence
Where the competent department of the EPO considers it necessary tohear the oral evidence of parties, witnesses or experts or to carry out aninspection, it must make a decision to this end (order to take evidence),setting out the investigation which it intends to carry out, relevant facts tobe proved, the date, time and place of the investigation and whether it will
be conducted by videoconference. If oral evidence of witnesses andexperts is requested by a party but the witnesses and experts are notsimultaneously named, the party is requested, either prior to the issue ofthe order to take evidence or in the order itself, to make known within a
specified time limit the names and addresses of the witnesses and experts
whom it wishes to be heard. The time limit to be computed in accordancewith Rule 132(2) will be not less than two months and not more thanfour months, since any party concerned will normally know beforehand
whom they wish to be heard as a witness or expert.

Rule 117

Part E – Chapter IV-4

Art. 119Art. 119
Rule 118(1) and (2)Guidelines for Examination in the EPO

March 2023

The order to take evidence must be notified to the parties. It may be
appealed only together with the final decision, unless it allows separate
appeal (see E-X, 3).
1.5 Summoning of parties, witnesses and experts
The parties, witnesses and experts to be heard must be invited to appear togive evidence on the date fixed. The summons must be notified. At least
two months' notice of a summons issued to a party, witness or expert togive evidence must be given, unless they agree to a shorter period. The
summons must contain:

Rule 118(2)(a)(i)

an extract from the order to take evidence, indicating in particular thedate, time and place of the investigation ordered, whether it will be
conducted by videoconference and stating the facts regarding which
parties, witnesses and experts are to be heard;

Rule 118(2)(b)(ii)

the names of the parties to the proceedings and particulars of therights which the witnesses or experts may invoke (see E-IV, 1.10);

Rule 118(2)(c)(iii)

an indication that a party, witness or expert who has beensummoned to appear before the European Patent Office on its
premises may, at their request, be heard by videoconference; andRule 118(2)(d)(iv)

an indication that any party, witness or expert may request to beheard by the competent court of their country of residence and arequirement that they inform the EPO within a time limit to be fixed by
the EPO whether they are prepared to appear before it(see E-IV, 3.2.2 (iii) and (iv)).

Rule 119(3)Even if evidence is not taken in oral proceedings, all parties to theproceedings may attend an investigation. Parties not summoned are
informed thereof within the period laid down in Rule 118(2), together with astatement that they may attend.
1.6

Hearing of parties, witnesses and experts

1.6.1 General remarks
Where the examining or opposition division holds hearings for the purposeof taking evidence (see E-IV, 1.3) or if the case in question is expected togive rise to particular legal issues, it is advisable that the division beenlarged by the addition of a legally qualified examiner, if this is not alreadythe case (see D-II, 2.2).
The evidence of witnesses is normally taken at oral proceedings either on
the premises of the EPO or by videoconference. A party, witness or expert
can even be heard by videoconference if the oral proceedings areotherwise conducted on the premises of the EPO. For details see OJ EPO
2020, A135.
The hearing will be either public or non-public, depending on the oralproceedings themselves (Art. 116(3) and (4)).

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Part E – Chapter IV-5

Where a hearing is held in connection with oral proceedings, theconsiderations set out in E-III, 8.2, E-III, 8.3, E-III, 8.9 and E-III, 8.10 are
directly applicable, and where this is not the case they apply mutatis
mutandis.
The hearing of an "expert" in the sense of Rule 117 requires as aprecondition a decision to take evidence (see E-IV, 1.4). This is different
from hearing oral submissions by a person accompanying therepresentative during oral proceedings, which can be allowed at thediscretion of the division (see G 4/95 and E-III, 8.5).
1.6.2 Witnesses and experts not summoned
After opening the proceedings for the taking of evidence, the official in
charge of the taking of evidence, i.e. in substantive examination andopposition proceedings the chair of the division concerned or the member
commissioned for the taking of evidence, will determine whether any party
requests that any other person present but not summoned is heard. If any
party makes such a request they must briefly state why and to what
purpose the person concerned should give testimony. The department inquestion will then decide on whether or not to grant the request (for theadmission of facts or evidence not filed in due time see E-VI, 2).
1.6.3 Guidance to persons heard
Before any party, witness or expert may be heard, they must be informedthat the EPO may request the competent court in the country of residenceof the person concerned to re-examine their evidence on oath or in an
equally binding form.
1.6.4 Separate hearings
Normally each witness must be heard separately, i.e. any other witnesses
to be heard subsequently must not be present. This Rule does not apply toexperts and to the parties. Witnesses whose statements conflict may be
confronted with one another, i.e. each heard in turn in the presence of theother. The same applies to experts.
1.6.5 Examination as to personal particulars
The hearing will begin by the persons giving evidence being asked theirgiven names, family name, age, occupation and address. Witnesses andexperts must also be asked whether they are related by blood or marriage
with any of the parties and whether they have a material interest in aparticular party being successful in the proceedings.
1.6.6 Examination as to res gestae
The examination as to personal particulars will be followed by theexamination as to res gestae. Any person testifying is to be instructed togive a full and logical account of what they know concerning the
subject-matter of the hearing. Further questions may have to be put toclarify and supplement statements and to establish on what the knowledgeof the person testifying is based. Such questions may be put by themember commissioned for the taking of evidence, where applicable, thechair or any other member of the department concerned. As regards theentitlement of other members of the division to put questions,

Rule 119(2)Part E – Chapter IV-6

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March 2023

see E-III, 8.10. When formulating questions the same considerations apply
as for the parties (see E-IV, 1.6.7).

Rule 119(3)1.6.7 Entitlement of parties to put questions at hearings
The parties may put relevant questions to the testifying parties, witnesses
and experts including, e.g. in opposition proceedings, witnesses andexperts testifying on behalf of other parties. The official in charge of thetaking of evidence will determine at what point in the proceedings suchquestions may be put.
Any doubts on the part of the competent department, e.g. the opposition
division, or a party as to the admissibility of a question must be settled by
the competent department. "Leading questions", i.e. questions which
already contain the statement which one would like to hear from thewitness, practically only requiring him to answer by "yes" or "no", must be
avoided, because they do not allow to properly establish the witness' own
recollection of the facts. Questions may further not be directed to facts
which require no further discussion, which are in no way relevant to thesubject-matter for which the taking of evidence has been ordered, or if they
aim at establishing facts in respect of which no evidence has been offered.
A decision to reject a question cannot be challenged. As regards theentitlement of other members of the division to put questions,
see E-III, 8.10.
1.6.8 Hearing of a witness no longer necessary
The testimony of a witness summoned to oral proceedings is heard if thefacts which the testimony is supposed to corroborate are relevant to thedecision (see E-IV, 1.2). Therefore, the witness is not heard if the facts tobe proved are no longer relevant due to developments before or during oralproceedings before the witness is heard. This may be the case for example
if the public availability of the relevant prior art has been proven by anothermeans of evidence or if the patent is to be revoked on another ground for
opposition and the patent proprietor submits no admissible auxiliary
requests for the assessment of which the testimony would be relevant.

Rule 124(1)1.7 Minutes of taking of evidence
Minutes of the taking of evidence must be drawn up as described in
E-III, 10, subject to the following qualifications:
The minutes of the taking of evidence must, in addition to the essentials of
the taking of evidence, also record as comprehensively as possible (almost
verbatim as far as the essential points are concerned) the testimony of theparties, witnesses or experts.

Rule 124(2)The minutes will normally be taken down by a member of the competentdepartment carrying out the taking of evidence. The most efficient way ofnoting testimony is by way of dictation on to a dictating machine, in theprocess of which the person hearing the evidence will summarise thetestimony in small sections, taking into account any objections raised by the
persons being heard, and dictate it in this form on to a dictating machine. If
the dictated passage does not correspond in full to their testimony, thepersons being heard must raise any objections immediately. This is pointed

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Guidelines for Examination in the EPO

Part E – Chapter IV-7

out to them at the beginning of their testimony. At the end of their
testimony, they will be asked to approve the dictated minutes, which they
will have listened to as they were dictated. Their approval or any objections
are to be included in the dictated text. The dictated minutes are typed out
and the parties are provided with a copy as soon as possible. It is notnecessary to play back the minutes or to obtain approval of them if thetestimony has been recorded verbatim and directly, using technical means.
Where the taking of evidence includes an inspection, the minutes mustrecord, in addition to the essentials of the proceedings, the results of theinspection.
In addition, the taking of evidence as well as oral proceedings(see E-III, 10.1) may be recorded on sound recording apparatus.
1.8

Commissioning of experts

1.8.1 Decision on the form of the opinion
If the competent department decides of its own motion to obtain an expert
opinion (D-VI, 1, sixth paragraph), it will have to decide in what form it issubmitted by the expert whom it appoints. The opinion is drawn up in
written form only in cases where the competent department considers that
this form is adequate in view of the content of the opinion and provided thatthe parties agree to this arrangement. As a rule, in addition to submitting awritten opinion and introducing it orally, the expert will also be heard(see E-IV, 1.6).
A copy of the opinion must be submitted to the parties. The copy will be
produced by the EPO.
1.8.2 Objection to an expert
The parties may object to an expert. Therefore, before commissioning anexpert to make an opinion, the competent department informs the parties ofthe expert whom it intends to ask to draw up an opinion and of thesubject-matter of the opinion. The communication to the parties states atime limit within which objections to the expert may be made. If the parties
do object to an expert, the competent department will decide on theobjection.
1.8.3 Terms of reference of the expert
The terms of reference of any expert must include: a precise description of
their task, the period laid down for the submission of their opinion, thenames of the parties to the proceedings and particulars of the rights which
they may invoke under the provisions of Rule 122(2) to (4) (regarding traveland subsistence expenses and fees, see E-IV, 1.10).
1.9 Costs arising from oral proceedings or taking of evidence
As a rule, the parties to proceedings before the EPO meet the costs they
have incurred. This principle notwithstanding, the competent body in the
opposition proceedings may for reasons of equity (see D-IX, 1.4) decide toapportion in some other way the costs arising for the parties in respect oforal proceedings or taking of evidence (see D-IX, 1) and the costs arising

Rule 121(1)Rule 121(3)Rule 121(4)Rule 121(2)(a)(d)Art. 104(1) and (2)Rule 122(1) and (2)Part E – Chapter IV-8

Guidelines for Examination in the EPO

March 2023

for the EPO in respect of witnesses and experts (see E-IV, 1.10). The
competent body may make the taking of evidence conditional upon depositwith the EPO by the party who requested the evidence to be taken of a sum
the amount of which is to be fixed by reference to an estimate of the costs.
This procedure is applied where at the request of a party to grant or
opposition proceedings evidence is to be taken by hearing witnesses orseeking an expert opinion unless no costs will arise because the witnesses
or experts have waived their right to indemnification. If the party requesting
evidence to be taken does not comply with the requirement of making sucha deposit, the evidence need not be taken. In opposition proceedings theparty requesting the evidence bears the costs of indemnifying witnesses orexperts, unless for reasons of equity in individual cases other arrangements
are made for the apportionment of costs under Art. 104(1) in conjunction
with Rule 88. Any shortfall between the deposit lodged and the amounts
payable by the EPO under Rule 122(4), second sentence, is fixed by the
EPO of its own motion. Any unused amount of the deposit lodged isrefunded. The EPO's internal costs arising through oral proceedings or
taking of evidence, e.g. any associated staff travel and subsistence costs,
are to be met by the EPO itself.
1.10 Entitlements of witnesses and experts

Rule 122(2)1.10.1 Expenses for travel and subsistence
Witnesses and experts who are summoned by and appear before the EPO
are entitled to appropriate reimbursement, by the EPO, of expenses fortravel and subsistence (see E-IV, 1.10.3). This applies equally to witnesses
and experts who are summoned by and appear before the EPO in thecourse of oral proceedings held by videoconference for travel to the place
where they make themselves available to appear before the EPO byvideoconference (e.g. a videoconference facility provided by one of theparties or a venue with a sufficiently stable internet connection).
This applies even if the witnesses or experts are not heard, e.g. where
evidence is to be produced concerning an alleged prior use and shortly
before the taking of evidence such prior use is substantiated by a document
already published. Witnesses and experts may be granted an advance on
their expenses for travel and subsistence. Witnesses and experts who
appear before the EPO without being summoned by it but are heard as
witnesses or experts will also be entitled to appropriate reimbursement ofexpenses for travel and subsistence.

Rule 122(3)Rule 122(4)1.10.2 Loss of earnings, fees
Witnesses entitled to reimbursement of travel and subsistence expenses
are also entitled to appropriate compensation, by the EPO, for loss ofearnings, and experts to fees from the EPO for their work(see E-IV, 1.10.3). These payments must be made to the witnesses andexperts after they have fulfilled their duties or tasks.
1.10.3 Details of the entitlements of witnesses and experts
For the details governing the entitlements of witnesses and experts set out
under E-IV, 1.10.1 and E-IV, 1.10.2, see OJ EPO 1983, 100. Payment ofamounts due must be made by the EPO.

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Guidelines for Examination in the EPO

1.11 Models
1.11.1 When may models be submitted?
The EPC makes no express provision for the submission of models, butthere is nothing to stop a party from submitting one himself. Models are notpart of the application or patent, and therefore cannot be used to disclose
the invention (Art. 83).
Models may be useful in EPO proceedings if they serve to substantiate thepatentability of an invention, e.g. by showing that a given device actuallyworks or does so particularly advantageously. Models may also be filed,e.g. in opposition proceedings, to illustrate the state of the art, especiallyprior use under Art. 54(2). Models as items for inspection therefore
constitute evidence under Art. 117(1)(f).
1.11.2 Procedure
It is for the competent division to decide whether to take evidence by way ofinspection of a model. If it considers this to be necessary, it must take adecision in the form of an order to take evidence (see E-IV, 1.4), setting out
the relevant facts to be proved as well as the date, time and place of theinspection.
Where possible, the inspection is to be carried out on the premises of the
EPO. However, if in view of the characteristics of the model (e.g. form, size,
material) or due to security constraints an inspection cannot be carried out
on EPO premises (see also the notice from the EPO dated
20 December 2016, OJ EPO 2017, A6), the model may be inspected at adifferent location. In particular if such undertakings are located far away,
the division may commission one of its members to carry out the inspection
on its behalf (see E-IV, 1.3).
In general, any object which can be made available for inspection on thepremises of the EPO can also be inspected during oral proceedings byvideoconference unless such inspection would result in a disadvantage fora party where, e.g. the haptic feel, texture or handling experience of theobject is of relevance.
In accordance with Rule 124(1), minutes must be taken, including theessential aspects and the result of the inspection.
1.11.3 Keeping the model
Even if the division does inspect the model, the EPO is not obliged to keep
it. It is for the division to decide whether a model is to be kept by the EPO.
However, as a general rule, models which would require special
precautions or security measures if kept in the EPO are returned to theparty.
The formalities officer is responsible for implementing the decision to keepor return the model. If the model is to be kept, the formalities officer notes
this on a label on the file. If it is to be returned, the formalities officer
informs the submitter that the model should be preserved in view ofPart E – Chapter IV-9

Part E – Chapter IV-10

Guidelines for Examination in the EPO

March 2023

possible opposition or appeal proceedings and notes the date of return on
the label.
1.12 Video recordings
A party to the proceedings may request that a video recording be shown at
the oral proceedings. Such a request must include the recording as such aswell as specifying the type of equipment needed.
If video recordings are submitted, the division decides whether showing
them will assist the proceedings. Video data carriers are always kept if thedivision has looked at them.
2.

Rule 123(1)Conservation of evidence

2.1 Requirements
On request, the EPO may, without delay, hear oral evidence or conduct
inspections, with a view to conserving evidence of facts liable to affect a
decision, where there is reason to fear that it might subsequently become
more difficult or even impossible to take evidence. This could for example
be the case where an important witness is about to emigrate to a distantcountry or where perishable matter, e.g. a food-stuff, is adduced as
involving a use made accessible to the public.

Rule 123(2)2.2 Request for the conservation of evidence
The request for the conservation of evidence must contain:

Rule 123(2)(a)(i)

the name, address and nationality of the persons filing the request
and the state in which their residence or principal place of business islocated, in accordance with the provisions of Rule 41(2)(c);

Rule 123(2)(b)(ii)

sufficient identification of the European patent application orEuropean patent in question;

Rule 123(2)(c)(iii)

the designation of the facts in respect of which evidence is to betaken;

Rule 123(2)(d)(iv)

particulars of the way in which evidence is to be taken; andRule 123(2)(e)(v)

a statement establishing a prima facie case for fearing that it might
subsequently become more difficult or impossible to take evidence.

Rule 123(3)The request is not deemed to have been filed until the fee for conservationof evidence has been paid.

Rule 123(4)2.3 Competence
The decision on the request and any resulting taking of evidence areincumbent upon the department of the EPO required to take the decision
liable to be affected by the facts to be established.

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Part E – Chapter IV-11

Responsibility for the decision and the taking of evidence will therefore
normally rest with:(i)the examining division, from the date of filing until the date of thedecision on the granting of the patent;(ii)

the opposition division, from the latter date until expiry of the timeallowed for filing notice of opposition and during opposition
proceedings; and(iii)

the board of appeal, from the date of a final decision by the
opposition division until it becomes legally binding or while appeal
proceedings are pending.

2.4 Decision on the request and the taking of evidence
The competent department must decide upon the request without delay. If it
grants the request, it must also immediately make a decision on the takingof evidence.

Rule 123(1)Rule 117The provisions with regard to the taking of evidence in proceedings before
the EPO are applicable.

Rule 123(4)The date on which the measures are to be taken must therefore becommunicated to the applicant for or proprietor of the patent and the otherparties in sufficient time to allow them to attend. They may ask relevant
questions.

Rule 123(1)Rule 118(2)Rule 119(3)3. Taking of evidence by courts or authorities of the contracting
states
3.1 Legal co-operation
Upon receipt of letters rogatory from the EPO, the courts or othercompetent authorities of contracting states will undertake, on behalf of the
EPO and within the limits of their jurisdiction, any necessary enquiries.
3.2

Means of giving or taking evidence

3.2.1 Taking of evidence on oath
The principal case where evidence is taken by a competent court will be thehearing of parties, witnesses or experts. In such instances the competentdepartment may request the competent court to take the evidence on oathor in an equally binding form.
3.2.2 Evidence taken by a competent court
The competent department will, if necessary, request a competent court totake evidence, where appropriate under oath, where:(i)Art. 131(2)the taking of evidence by that department would entail
disproportionately high travelling costs or the taking of evidence by
the competent court appears to be appropriate on other grounds;

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Rule 120(2)(ii)

the competent department considers it advisable for the evidence ofa party, witness or expert it has heard to be re-examined under oathor in an equally binding form (see E-IV, 3.2.1);

Rule 120(1)(iii)

there has been no reply to the summons by the expiry of a period
fixed by the competent department in the summons(see E-IV, 1.5(iii)); or

Rule 120(1)Rule 150(3)(iv)

any party, witness or expert who has been summoned before thatdepartment requests the latter in accordance with E-IV, 1.5(iii) toallow their evidence to be heard by a competent court in their countryof residence. If the party, witness or expert simply refuses to beheard by the responsible division, they are notified that thecompetent national court will have the relevant national legal
possibilities to oblige them to appear and to testify.

Rule 150(2)Rule 150(1)Rule 150(5)Rule 120(3)Rule 150(6)Rule 150(7)Rule 150(8)3.3 Letters rogatory
The EPO must draw up letters rogatory in the language of the competentauthority or must attach to such letters rogatory a translation into thelanguage of that authority.
Letters rogatory must be addressed to the central authority designated by
the contracting state.
3.4 Procedures before the competent authority
The EPO must be informed of the time when, and the place where, theenquiry is to take place and must inform the parties, witnesses and experts
concerned.
If so requested by the EPO, the competent authority shall permit theattendance of members of the department concerned and allow them toquestion any person giving evidence either directly or through thecompetent authority. Whether the parties may put questions or not will
depend on the laws of the contracting states concerned.
3.5 Costs of taking evidence
The execution of letters rogatory does not give rise to any reimbursementof fees or costs of any nature. Nevertheless, the state in which lettersrogatory are executed has the right to require the European Patent
Organisation to reimburse any fees paid to experts and interpreters and thecosts incurred as a result of the attendance of members of the competentdepartment when evidence is taken.
3.6 Taking of evidence by an appointed person
If the law applied by the competent authority obliges the parties to secure
evidence and the authority is not able itself to execute the letters rogatory,
that authority may, with the consent of the competent department, appoint a
suitable person to do so. When seeking the consent of the department
concerned, the competent authority must indicate the approximate costs
which would result from this procedure. If the competent department gives
its consent, the European Patent Organisation must reimburse any costs
incurred; without such consent, the Organisation is not liable for such costs.

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4.

Guidelines for Examination in the EPO

Evaluation of evidence

4.1 General remarks
The competent department must examine whether the conclusions drawn
by the parties from the evidence and facts are correct and give grounds forthe conclusions it itself freely arrives at on the basis of the situation as awhole.
The state of the art to be taken into consideration in individual cases for the
purposes of Art. 54 is that laid down in G-IV, 1 to 5 and 7 and G-V.
The competent department is not obliged to take into consideration any
facts or evidence not presented by the parties in due time, except within thelimits specified in E-VI, 2.
4.2 Types of evidence
When evaluating submissions made, the difference between facts,
evidence and arguments must be observed.
Example:The opponent asserts that the preamble to claim 1 is described in
document A, the characterising portion in document B (facts). To prove this,documents are submitted (evidence). The opponent then contends that themethod claimed does not involve an inventive step, because the skilled
person, on the basis of common general knowledge, would have combined
the submitted documents in such a way as to arrive at the subject-matter ofclaim 1 (argument).
Evidence admissible in EPO proceedings is not confined to that listed inArt. 117(1). "Taking of evidence" within the meaning of Art. 117 comprises
the submission or gathering of evidence of any kind, particularly the filing of
documents.
Pure arguments are not evidence (see T 642/92).
4.3 Examination of evidence
When evidence is submitted, the first thing to establish is what fact is being
asserted, and then whether that fact is relevant to the decision. If not, theassertion is no longer considered and the evidence is not examined further.
If the alleged fact is relevant, the next point is whether it is proven by theevidence submitted.
When evidence is examined, since the EPC says nothing about how theoutcome of taking of evidence must be assessed, the principle of unfetteredconsideration applies. This means that its content and its significance forthe proceedings are assessed in the light of the particular circumstances ofeach individual case (e.g. time, place, type of evidence, position of witness
in firm, etc.). The principle of unfettered consideration also means that EPO
departments are empowered to evaluate evidence submitted by the parties
in any appropriate manner, or indeed to disregard it as unimportant orPart E – Chapter IV-13

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irrelevant. In particular it has to be decided on a case-by-case basis when aparticular piece of evidence is sufficient.
When deciding whether an alleged fact is accepted, the division may use
the criterion of the "balance of probabilities", which means that it is satisfied
that one set of facts is more likely to be true than the other. Furthermore,
the more serious the issue, the more convincing must be the evidence tosupport it (see T 750/94). For example, if a decision might result inrevocation of the patent in a case concerning alleged prior use, theavailable evidence has to be very critically and strictly examined. In
particular, in the case of alleged prior use for which little if any evidence
would be available to the patentee to establish that no prior use had takenplace, the division has to cede to the stricter criterion close to absoluteconviction, i.e. beyond any reasonable doubt (see T 97/94).
When parties make conflicting assertions, the division must decide whichevidence is the most convincing. If it cannot establish which allegation isright on the basis of the evidence put forward, it must decide on the basis of
the burden of proof, i.e. against the party bearing that burden but unable toprove its point convincingly.
4.4 Asking for evidence
When pointing out that it cannot accept a line of argument because certain
facts have not been proven, the division must do so as neutrally andobjectively as possible. In particular, it may neither(a)require a specific kind of evidence (see T 474/04), nor(b)prescribe the content of the evidence (e.g. the wording of a sworn
statement in writing (see T 804/92).

The taking of evidence in each of the forms listed in Art. 117 is done at thediscretion of the EPO department in question, i.e. only if that department
considers it necessary. This will be the case, for example, if a fact relevantto the decision needs to be proven.
4.5 Evaluation of the testimony of a witness
After the witnesses have been heard, the party or parties must be given an
opportunity of making observations. The observations may be made either
in oral proceedings following the taking of evidence or exceptionally in
writing after transmission of the minutes of the taking of evidence. The
decision on this matter will rest with the competent department. The parties
may file requests accordingly.
Only when this has been done may the competent department proceed toevaluate the evidence. Where a witness's testimony which is crucial to thedecision has been challenged by a party but the department regards it ascredible, or where a witness's oral or written testimony is disregarded in its
decision as being not credible, the department concerned must state thegrounds for its view in its decision.

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Guidelines for Examination in the EPO

In evaluating a witness's oral or written testimony, special attention is to be
paid to the following:(i)what is important is what witnesses can relate concerning the points
at issue on the basis of their own knowledge or views, and whether
they have practical experience in the field in question. Second-handassertions based on something heard from third parties are for themost part worthless on their own. It is also important from the point ofview of the evaluation whether the witness was involved in the event
himself or only knows of it as an observer or listener;(ii)

in the event of long intervals of time (several years) between theevent in question and the testimony, it is to be borne in mind thatmost people's power of recall is limited without the support of
documentary evidence;(iii)

where testimony appears to conflict, the texts of the statements
concerned are closely compared with one another.
Apparent contradiction in the testimony of witnesses may sometimes
be resolved in this way. For example, a close examination of
apparently contradictory statements by witnesses as to whether asubstance X was commonly used for a particular purpose may showthat there is in fact no contradiction at all, in that while one witness
was saying specifically that substance X was not used for thatparticular purpose, the other witness was saying no more than that
substances like X, or a certain class of substances to which X
belonged, were commonly used for this particular purpose without
intending to make any statement regarding substance X itself;(iv)

an employee of a party to the proceedings can be heard as a witness(see T 482/89). The possible partiality of a witness determines how
the evidence is assessed, not whether it is admissible(see T 443/93).

4.6 Evaluation of the testimony of parties
Oral or written evidence given by parties or their refusal to give evidence
are evaluated in the light of their special interest in the matter. Because of
their special interest, the testimony of parties possibly should not be
evaluated on the same level as that of neutral witnesses. This applies
above all where parties have been present when witnesses have been
heard and have ascertained the attitude of the competent department. The
considerations set out in E-IV, 4.5 (Evaluation of the testimony of a witness)
apply mutatis mutandis.
4.7 Evaluation of an expert opinion
The competent department must examine whether the grounds on which
an expert opinion is based are convincing. Notwithstanding its discretion in
the evaluation of evidence, it may not disregard an expert opinion in theabsence of grounds based on adequate specialist knowledge of its own orof another expert, irrespective of whether the latter expert is an

Part E – Chapter IV-15

Part E – Chapter IV-16

Guidelines for Examination in the EPO

March 2023

independent expert commissioned under Rule 121 or an expert who
testifies at the request of one of the parties.
4.8 Evaluation of an inspection
In the case of a demonstration, a specific test programme under specificconditions is agreed in advance. During the demonstration itself care must
be taken to ensure that the characteristics or conditions of operation
claimed for the invention are complied with. Where an invention iscompared under test with an item forming part of the state of the art, as far
as possible the same or comparable test conditions must be applied toboth.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter V-1

Chapter V – Derogations from the language ofthe proceedings in oral proceedings
1. Use of an official language
Any party to oral proceedings before the EPO may, in lieu of the languageof the proceedings, use one of the other official languages of the EPO, on
condition that such party either gives notice to the EPO at least one month
before the date laid down for such oral proceedings or makes provision forinterpreting into the language of the proceedings. In the former case, it is
the responsibility of the EPO to provide for interpretation at its own
expense.

Rule 4(1) and (5)A party must be clear as to which official language it wishes to use. It thenhas a right to both speak and hear that language, as long as the conditionsof Rule 4 have been fulfilled. The party does not, however, have a right tohave one language in which it will speak and a different language in which
it will hear (see T 774/05).
The language of the proceedings as defined in Art. 14(3) cannot bechanged. This means that any amendments to the application or patent
have to be filed in the language of the proceedings (Rule 3(2)).
If all parties have indicated that they will use another official language, thedivision may depart from the language of the proceedings so as to manage
without or with fewer interpreters (this question normally arises only in
opposition proceedings). The parties' summonses are therefore
accompanied by information which encourages them to agree how this canbe achieved.
It may be possible to agree to limit the interpreting to "one-way", i.e. fromone language into another but not the other way round. If a comment madein one language has clearly been misunderstood, the division may clarify itin another. Under no circumstances however can its members officially act
as interpreters.
2. Language of a contracting state or other language
Any party may likewise use one of the official languages of the contracting
states, other than English, French or German, on condition that they makeprovision for interpreting into the language of the proceedings. However, if
the parties and the EPO agree, any language may be used in oralproceedings without interpreting or prior notice.
3. Exceptions from sections 1 and 2
Derogations from the provisions of Rule 4(1) are permitted, and these areat the discretion of the EPO. Clearly such permission must depend on thecircumstances of the individual case. It may, for example, be envisaged
that parties are unable to give one month's notice through no fault of theirown, and, although they have made arrangements for an interpreter, thelatter is unable (e.g. through illness) to attend. If, in such circumstances, theEPO is unable to provide for interpreting, it postpones the oral proceedings
if they occur at the examination stage. However, in opposition proceedings,

Rule 4(1) and (4)Rule 4(1)Part E – Chapter V-2

Guidelines for Examination in the EPO

March 2023

the oral proceedings continue if the parties agree and the employees of the
EPO involved in the proceedings can cope with the language. In othercases, the EPO postpones the oral proceedings and any costs incurred by
the innocent party as a result of the postponement are a matter forapportionment under Art. 104.

Rule 4(3)Rule 4(2)4. Language used in the taking of evidence
When the evidence is being taken, a party, witness or expert who is unable
to express himself adequately in English, French or German or in any otherofficial language of the contracting states is permitted to use anotherlanguage. The EPO is responsible for interpreting into the language of theproceedings, assuming that this is necessary, if the evidence is taken at therequest of the EPO itself. However, if the taking of evidence follows arequest by a party to the proceedings, the use of a language other thanEnglish, French or German is allowed only if that party provides forinterpreting into the language of the proceedings or, at the discretion of the
EPO, into any one of English, French or German. This discretion is
exercised in opposition proceedings only if the other parties agree.
5. Language used by employees of the EPO
Employees of the EPO may use in oral proceedings an official language of
the EPO other than the language of proceedings. The parties must be
informed accordingly prior to the oral proceedings, unless it can bereasonably assumed that they would not object to this, e.g. because they
have equally requested to use that different official language.
However, employees may not depart from the language of the proceedings
without good reason. Unless the parties are competent in the language
used, the EPO provides for interpreting into the language of theproceedings at its own expense.
6. Language used in the minutes
Where the official language actually employed in oral proceedings is not thelanguage of the proceedings as defined in Art. 14(3), if the examining or
opposition division or the Legal Division considers it appropriate andsubject to explicit agreement of all parties concerned, the minutes may berecorded in the language actually employed in the oral proceedings.
Prior to the agreement of the parties, their attention is drawn to the fact that
the EPO will not provide translations of the minutes into the language of theproceedings as defined in Art. 14(3). This condition, as well as thedeclaration of agreement of the party or parties, is recorded in the minutes.
Statements made in English, French or German are entered in the minutesof the proceedings in the language employed.
Statements made in any other language must be entered in the official
language into which they are translated. Amendments to the text of thedescription or claims of a European patent application or European patent
made during oral proceedings must be entered in the minutes in thelanguage of the proceedings. If the proceedings are conducted in alanguage other than English, French or German and no interpretation isMarch 2023

Guidelines for Examination in the EPO

effected, statements are entered in the minutes in the language employed
and the EPO subsequently provides in the minutes a translation into thelanguage of the proceedings.

Part E – Chapter V-3

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VI-1

Chapter VI – Examination by the EPO of its own
motion; facts, evidence or grounds
not submitted in due time; observations by third
parties1.

Examination by the EPO of its own motion

1.1 General remarks
In proceedings before it, the EPO examines the facts of its own motion; it is
not restricted in this examination to the facts, evidence and arguments
provided by the parties and the relief sought. This principle of examinationby the EPO of its own motion must be complied with by the competentdepartment during all proceedings pending before it. Thus, once
proceedings have been initiated, e.g. once a valid request for examination
has been filed or an admissible notice of opposition has been filed(although it may subsequently be withdrawn), if there is reason to believe,
e.g. from personal knowledge or from observations presented by third
parties, that there are facts and evidence not yet considered in theproceedings which in whole or in part prejudice the granting ormaintenance of the European patent, such facts and evidence must be
included in those examined by the EPO of its own motion pursuant toArt. 114(1). See D-V, 2 for the extent of substantive examination of thefacts and evidence in opposition proceedings.

Art. 114(1)1.2 Limits on the obligation to undertake examination
However, the obligation to undertake such examination must be kept within
limits in the interests of procedural expediency. For example, in opposition
proceedings, an offer to prove that an alleged public prior use took place
will not be taken up if the opponent making such an allegation has ceased
to participate in the proceedings and the necessary evidence cannot beeasily obtained at a reasonable cost.
The unity of the subject-matter of the European patent is not to be
examined in opposition proceedings (G 1/91, see D-V, 2.2).
2. Late-filed submissions
The EPO may disregard facts or evidence (e.g. publications) which are notsubmitted in due time by the parties concerned.
This also applies to grounds for opposition not submitted in due time,
together with supporting facts and evidence in opposition proceedings(see D-V, 2.2). Note in this respect that according to G 1/95 and G 7/95,
Art. 100(a) does not constitute one single ground for opposition, but has tobe considered a collection of individual grounds for opposition,i.e. individual legal bases for objection to the maintenance of a patent.
This applies not only to distinctly different objections, such as
subject-matter which is not patentable (Art. 52(2)) as compared tosubject-matter which is not capable of industrial application (Art. 57), butalso to an objection for lack of novelty as opposed to an objection for lackof inventive step.

Art. 114(2)Part E – Chapter VI-2

Guidelines for Examination in the EPO

March 2023

New arguments based on facts, evidence and grounds constituting thelegal and factual framework of the opposition cannot be disregarded.
In deciding whether to admit facts, evidence or grounds for opposition not
filed in due time, their relevance to the decision, the state of the procedureand the reasons for belated submission are to be considered. If
examination of late-filed grounds for opposition, late-filed facts or late-filed
evidence reveals without any further investigation (i.e. prima facie) thatthey are relevant, i.e. that the basis of the envisaged decision would bechanged, then the competent department has to take such grounds, facts
or evidence into consideration no matter what stage the procedure hasreached and whatever the reasons for belated submission. In that case, theprinciple of examination by the EPO of its own motion under Art. 114(1)takes precedence over the possibility of disregarding facts or evidence
under Art. 114(2) (see T 156/84). Note, however, the limits on the obligation
to undertake further examinations as set out in E-VI, 1.2. Otherwise, thedepartment informs the party concerned in the decision, with due regard toArt. 113(1) (see T 281/00), that the facts, evidence and/or grounds for
opposition were not submitted in due time and, since they are not relevantto the decision, will be disregarded pursuant to Art. 114(2). On theapportionment of any costs arising from the late filing of facts and evidence,
see D-IX, 1.4.
The latest date up to which submissions can be considered at all is the dateon which the decision is handed over to the EPO's internal postal service
for transmittal to the parties (see G 12/91).
The above applies in written proceedings; in oral proceedings submissions
can only be considered up to the pronouncement of the decision(see E-III, 9).
2.1 General principles in opposition proceedings
As far as the assessment of late filing in opposition proceedings isconcerned, the rulings of the Enlarged Board of Appeal in G 9/91 andG 10/91 apply. According to these decisions, in principle, the opposition is
to be examined to the extent and on the grounds submitted during theperiod for opposition. Under Art. 114(1) the opposition division may go
beyond this framework if prima facie maintenance of the patent isprejudiced. The principles developed by the Enlarged Board with respect to
new grounds also apply to late-filed facts and evidence (see T 1002/92).
Therefore late-filed facts and evidence are to be admitted into theproceedings only if they are prima facie relevant, i.e. if they would change
the envisaged decision, see E-VI, 2.
If a patent proprietor replies to a notice of opposition by amending thepatent, such a request for amendment cannot be considered as late-filed
and has to be admitted into the proceedings (Rule 79(1)).
Thus, if the proprietor limits the patent to the subject-matter of a dependentclaim as granted, new facts and evidence submitted by the opponent in
reply to this amendment are as a general rule to be treated as late-filed andonly to be admitted under Art. 114(1) if they are prima facie relevantMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter VI-3

because the opponent must be prepared for this type of amendment andmust have provided material during the nine-month opposition period.
If the new facts and submissions are not prima facie relevant, they are to
be disregarded under Art. 114(2). An exception to this rule is where thepatent specification as granted contained a large number of dependentclaims and the opponent could not reasonably have been expected to deal
with all of them in the notice of opposition.
If, however, the proprietor amends the patent at an early stage of theproceedings in a manner not foreseeable by the opponent, e.g. by taking
up features disclosed in the description, the opponent will have theopportunity to provide new facts and evidence, i.e. possibly even to submit
a new ground for opposition and new documents. Such a submission has
to be admitted into the proceedings because the subject of the proceedings
has changed. At a late stage in the proceedings such unforeseeable
amendments are subject to the criterion of "clear allowability"(see H-II, 2.7.1).
2.2 Submissions filed in preparation for or during oral proceedings
If oral proceedings are arranged, the division issues a summons together
with an annex drawing attention to the points to be discussed (Rule 116(1))
and normally containing the division's provisional and non-binding opinion(see E-III, 6 and D-VI, 3.2).
2.2.1 New facts and evidence
Rule 116(1), being an implementation of Art. 114(2) as a further
development on the existing jurisprudence regarding facts or evidence not
filed in due time, makes it clear that the examining or opposition division
has a discretion to disregard new facts or evidence for the reason that they
have been filed after the date indicated in the summons under Rule 116
unless they have to be admitted because the subject of the proceedings
has changed.
For instance, if the opposition division states in the annex to the summonsthat the patent is likely to be revoked, and a timely filed request foramendment is admitted but relates to subject-matter not covered by theclaims as granted, the subject of the proceedings has changed.
Consequently, new facts and evidence submitted by the opponent inresponse to these requests will be admitted into the proceedings, even if
they arrive after the final date set under Rule 116.
However, if the proprietor's requests relate to amendments based only on
claims as granted, new facts and evidence submitted by the opponent willbe treated as late-filed even if submitted before the final date, i.e. they will
be admitted only if they are prima facie relevant unless there are otheraspects militating in favour of admitting them, such as a large number of
dependent claims in the patent as granted (E-VI, 2.1).
Similarly, if in the provisional and non-binding opinion the opposition
division reaches the conclusion that maintenance of the patent is notprejudiced by the facts and evidence submitted so far by the opponent, thisRule 116(1)Part E – Chapter VI-4

Guidelines for Examination in the EPO

March 2023

fact per se does not give the opponent the right to have new facts andevidence admitted into the proceedings, even if submitted before the final
date fixed under Rule 116(1).

Rule 116(2)2.2.2 Amendments filed in preparation for or during oral proceedings
Rule 116(2) imposes the same obligations on the applicant or patent
proprietor when submitting new documents which meet the requirements ofthe EPC (i.e. new amendments to the description, claims and drawings) as
Rule 116(1) imposes on the parties in submitting new facts and evidence.
Here the The examining or opposition division also has the discretion todisregard amendments because they are filed too late before the oralproceedings filed after the date set under Rule 116(1) as being late-filed
unless they have to be admitted because the subject of the proceedings
has changed. Amendments submitted before the date set under
Rule 116(1) cannot, as a rule, be considered as being late-filed.
The following are examples of what would normally constitute a change ofsubject of the proceedings:–

the opposition division admits under Art. 114(1) new facts andevidence or a new ground of opposition because they are prima facie
relevant;–

the examining division cites a further relevant document for the firsttime (H-II, 2.7);–

the examining or opposition division departs from a previously
notified opinion: for example, contrary to its preliminary opinion set
out in the annex to the summons, the opposition division concludes
during oral proceedings that an objection prejudices the maintenanceof the patent.

In these examples, a request from the applicant or proprietor for acorresponding amendment cannot be rejected as being late-filed even if
submitted after the date set under Rule 116(1). If, however, after a changeof opinion by the division, the applicant or proprietor files a new request thatreintroduces subject-matter against which the division has already raised
an objection, the division has discretion to disregard the new request due toit being prima facie not allowable.
On receipt of amendments filed after the final date set under Rule 116(1),the division therefore first analyses whether the amendments were filed indue course in response to a change of the subject of the proceedings. Only
if this is not the case does the division have the discretion to disregard theamendments. This discretion is to be exercised according to the principles
set out in E-VI, 2.2.3. The mere fact that amendments are filed after a given
date is not on its own a legal basis for not admitting them.
For example, if new facts and evidence or a new ground of opposition are
admitted under Art. 114(1) because they are prima facie relevant, a requestof the proprietor for corresponding amendment would have to be admitted

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VI-5

even if submitted after the above final date because the subject of theproceedings has changed. The same applies if the examining division cites
a further relevant document for the first time (H-II, 2.7).
Equally, amendments that are submitted by the applicant or proprietor indue course in response to objections raised by the division which departfrom a previously notified opinion may not be rejected as late-filed.
For instance, if the opposition division departs from its provisional opinion
set out in the annex to the summons and – contrary to that opinion –concludes during oral proceedings that an objection prejudices themaintenance of the patent, a request of the proprietor for (further)amendment will normally be admitted into the proceedings.
2.2.3 Principles relating to the exercise of discretion
In exercising its discretion under Art. 114(2) and Rule 116(1) and (2), thedivision must assess all relevant factors of the case.
The division will in the first place have to consider the relevance of thelate-filed facts or evidence (see E-VI, 2) or the allowability of the late-filed
amendments on a prima facie basis. If these facts or evidence are notprima facie relevant, i.e. if they do not appear to affect the outcome of theproceedings (T 320/15), or if these amendments are not clearly notallowable (see H-II, 2.7.1), they will not be admitted.
For instance, if the opposition division states in the annex to the summonsthat the patent is likely to be revoked and the proprietor in response
submits amendments after the final date set under Rule 116(1), possibly
not until the oral proceedings, the division could, in principle, treat such
requests as late-filed and apply the criterion of "clear allowability"(see H-II, 2.7.1) in judging whether they can be admitted into theproceedings. However, the division will consider admitting such requests
into the proceedings if they relate to the subject-matter of dependent claims
as granted.
Convergence of requests is another of the relevant factors that the division
may consider when exercising its discretion (for a definition of
convergence, see H-III, 3.3.2.2).
For the purpose of admissibility, a late-filed document's relevance isnormally decided relative to the amended claims against which it is cited.
Documents that have limited relevance to an initial set of claims may
acquire new relevance as a result of subsequent amendments to thoseclaims (T 366/11).
Before admitting these submissions, the division will next consider
procedural expediency, the possibility of abuse of the procedure (e.g. oneof the parties is obviously protracting the proceedings) and the question
whether the parties can reasonably be expected to familiarise themselvesin the time available with the new facts or evidence or the proposed
amendments.

Art. 114(2),Rule 116(1) andRule 116(2)Part E – Chapter VI-6

Guidelines for Examination in the EPO

March 2023

As regards procedural expediency, where the late-filed facts or evidence
are relevant but their introduction would cause a prolonged adjournment of
the proceedings, the division may decide not to admit these facts orevidence in the proceedings. An example would be where the witness still
has to be found or lengthy tests are still necessary. The division may,
however, also postpone the proceedings and in doing so may have toconsider the apportionment of costs in opposition proceedings (Art. 104).
Similarly, if late-filed requests are based on subject-matter not previously
covered by the claims, they will normally not be admitted into theproceedings also for reasons of procedural efficiency. Admission of such
requests could give rise to a postponement of oral proceedings and to adecision on apportionment of costs.
Examples of possible abuse of the proceedings would be:–

The patent proprietor introduces at short notice a proliferation of
auxiliary requests which are not a reaction to the course of theproceedings.

–

The opponent knowingly abstains from raising an assertion of publicprior use based on its own activities until late in the proceedings,
even though the evidence in its support had become fully available
earlier (see T 534/89).

–

The applicant or patent proprietor presents a large number ofrequests or incomplete variants of requests and invites the division tochoose, shifting the responsibility for determining the content of theapplication or patent to the division. It is the duty of any party toproceedings to make its own case and to formulate its own requests(see T 446/00).

Concerning the question of whether the parties can reasonably be
expected to familiarise themselves in the time available with the new facts
or evidence or the proposed amendments:

Art. 113(1)–It may only become apparent in the oral proceedings that thepending request submitted to overcome grounds for opposition is notallowable under the EPC. The opponent must always expect to haveto discuss subject-matter based on dependent claims as granted ifthey are reasonable in number.

–

The proprietor is in principle free to withdraw previously submitted
amendments and defend the patent as granted unless this would
constitute an abuse of the proceedings.

2.2.4 Right to be heard
Generally, the parties must be heard before the division decides onwhether or not to admit late-filed submissions.
For instance, if the opponent introduces a new ground for opposition during
oral proceedings, they must always be granted the right to be heard, even
where the arguments concern a late-filed ground for opposition and newMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter VI-7

arguments and evidence related to it. This means that the division must
give the parties the opportunity to put forward arguments and duly consider
them before deciding on the admissibility of the new ground. Similarly,
where the opponent files pertinent new material, the patent proprietor mustbe given a chance to present comments and submit amendments. If the
opposition division approves the introduction of new facts or evidence and if
the other parties have not had sufficient time to study them, it grants, where
easily comprehensible subject-matter is involved, the parties an opportunity
to familiarise themselves with it, possibly by briefly interrupting the oralproceedings. If this is not feasible, the other parties must, upon request, begiven the opportunity to comment in the proceedings subsequent to the oralproceedings, where appropriate in a further set of oral proceedings. Where
possible, however, oral proceedings will not be adjourned.
Where possible, legal commentaries, decisions (of a board of appeal, forexample) and reports on legal decisions which are to be referred to in oralproceedings must be notified to the opposition division and the other parties
in good time before the proceedings. They may, however, be quoted or
submitted for the first time in the oral proceedings themselves if the
opposition division agrees after consulting the parties.
The reasons for the decision on the admissibility of late-filed facts, evidence
and requests have to be provided in the written decision and must notcome as a surprise. A mere reference to the division's discretionary power
is not sufficient (E-X, 2.10). In examination proceedings, reasons only need
to be provided if the late-filed facts, evidence or requests are not admitted.
2.2.5 Costs
In opposition, relevant facts and evidence submitted at a late stage of theproceedings, possibly not until the oral proceedings for example, could giverise to a decision on apportionment of costs, see D-IX, 1.2, if so requested.
As regards the costs which may be incurred for late submissions, see also
D-IX, 1.4.
3. Observations by third parties
Following publication of the European patent application under Art. 93, any
person may present observations concerning the patentability of theinvention. Although lack of novelty and/or inventive step are the mostcommon observations, third-party observations may also be directed toclarity (Art. 84), sufficiency of disclosure (Art. 83), patentability(Art. 52(2) and (3), 53 or 57) and unallowable amendments (Art. 76(1),123(2) and 123(3)).

Art. 115
Rule 114(1)Such observations must be filed in writing in English, French or German
and must include a statement of the grounds on which they are based. The
person filing them may not be a party to the proceedings before the EPO.
The web interface provided by the EPO is the preferred means of filingsuch observations (see OJ EPO 2017, A86). Observations may be filed
anonymously.
Documentary evidence and, in particular, publications submitted in supportof the arguments may be filed in any language. However, the EPO may

Rule 3(3)Part E – Chapter VI-8

Guidelines for Examination in the EPO

March 2023

request that a translation into one of its official languages be filed within aperiod to be specified; otherwise the evidence will be disregarded.
Although third parties are sent acknowledgment of the receipt of theirobservations (if these were not filed anonymously), the EPO does not
specifically inform them of any further action it takes in response to them.
However, the outcome of the evaluation by the competent division will
briefly be indicated in the respective office action from the EPO (e.g. in acommunication or in the intention to grant) and will thus be visible to the
public.
The EPO will make every effort to issue the next office action within threemonths of receipt of third-party observations under Art. 115 by theexamining division, provided the observations are substantiated and havenot been filed anonymously. Where the observations are received at a time
when a reply from the applicant to a communication is outstanding, thisperiod starts from receipt of the reply at the EPO.
Rule 114(2)The observations, including those filed anonymously, become part of the
file. They are communicated without delay to applicants or proprietors
without delay and they , who may comment on them. If they call into
question the patentability of the invention in whole or in part, the examining
or opposition division will take them into account in the next office action.
they must be taken into account in any proceedings pending before adepartment of the EPO until such proceedings have been terminated. If theobservations relate to alleged prior art available other than from adocument, e.g. from use, this is taken into account only if the alleged facts
either are not disputed by the applicant or proprietor or are establishedbeyond reasonable doubt.
Observations by third parties received in examination after dispatch of aRule 71(3) communication but before the decision to grant (EPO Form
2006A) has been handed over to the EPO postal service will be consideredby the examining division. If they are relevant, the examining division will
resume examination. Otherwise, brief substantive feedback will be provided
in the file.
Observations by third parties received after the decision to grant/refuse theapplication has been pronounced in oral proceedings (e.g. in the case of arefusal or in opposition) or issued in written proceedings and handed overto the EPO postal service (e.g. in the case of a grant decision or if, in
opposition, no oral proceedings were held), (see G 12/91) will be includedin the file without taking note of their content.
Observations by third parties received once proceedings are no longer
pending (e.g. after publication of the mention of the grant) will be neither
taken into account nor made available for file inspection. They will however
be made available for file inspection and considered if the proceedings
before the EPO become pending again, e.g. upon the start of any
opposition or limitation proceedings.

March 2023

Guidelines for Examination in the EPO

The EPO will make every effort to issue the next office action within threemonths of receipt of third-party observations under Art. 115 by theexamining division, provided the observations are substantiated and havenot been filed anonymously. Where the observations are received at a time
when a reply from the applicant to a communication is outstanding, thisperiod starts from receipt of the reply at the EPO.
The EPO will generally apply the practice regarding third-party observations
filed in the Euro-direct procedure mutatis mutandis to third-party
observations filed during the international phase upon entry of theEuro-PCT application into the European phase.
Where a third-party observation was filed during the international phase,the EPO as designated/elected Office will consider its content upon entry
into the European phase once this becomes available to it. The examining
division will make every effort to issue the next office action within threemonths after expiry of the period under Rule 161 EPC, but only on
condition that the third party has clearly expressed its wish to achieve
expedited treatment in the European phase, that the observation was filed
non-anonymously and that it was substantiated. A third party wishing toachieve such a result in the European phase must, therefore, make thisclear in the observation or file the observation with the EPO as
designated/elected Office.
4. External complaints
External complaints can concern any service or product delivered by the
EPO and can be submitted by any person, including parties to proceedings
before the EPO (for enquiries as to the processing of files, see E-VIII, 7).
Complaints can be submitted using the online form available at
epo.org/complaint.
Complaints are forwarded to a dedicated EPO department responsible for(i)ensuring that the complaint is dealt with fairly and efficiently and thatsuitable measures are taken to address it; and(ii)

providing a comprehensive reply to the complaint.

The complaint handling procedure does not replace the procedures laid
down by the EPC; nor does the department responsible for handlingcomplaints take decisions on procedural requests. Hence, the relevant
department competent for the respective proceedings decides on:(a)complaints relating to procedural and/or substantive aspects ofspecific pending proceedings which are submitted by a party to those
proceedings. All parties to the proceedings will be informed
accordingly.

(b)complaints relating to substantive issues which are submitted by athird party while proceedings are pending before the EPO. Such a
submission will be treated as a third-party observation (see E-VI, 3).

Part E – Chapter VI-9

Part E – Chapter VI-10

Guidelines for Examination in the EPO

March 2023

The department responsible for handling complaints promptly forwards any
complaint relating to appeal proceedings to the EPO Boards of Appeal Unit.
Art. 128(4)Rule 144(d)Complaints having a substantive and/or procedural bearing on proceedings
before the EPO, as well as replies thereto by the department responsible
for handling complaints, will only exceptionally be excluded from fileinspection (see D-II, 4.3; decision of the President of the EPO concerning
documents excluded from file inspection, OJ EPO 2007, Special edition
No. 3, J.3).

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VII-1

Chapter VII – Interruption, stay andconsolidation of the proceedings
1.

Interruption

1.1 Cases in which the proceedings may be interrupted
Pursuant to Rule 142(1), proceedings before the EPO are interrupted in
one of the following events:

Rule 142(1)(i)

in the event of the death or legal incapacity of the applicant for or
proprietor of a European patent or of the person authorised bynational law to act on their behalf. To the extent that the above
events do not affect the authorisation of a representative appointed
under Art. 134, proceedings will be interrupted only on application bysuch representative;

Rule 142(1)(a)(ii)

in the event of the applicant for or proprietor of a European patent, asa result of some action taken against their property, being prevented
by legal reasons from continuing the proceedings before the EPO; orRule 142(1)(b)(iii)

in the event of the death or legal incapacity of the representative ofan applicant for or proprietor of a European patent or of their being
prevented for legal reasons resulting from action taken against theirproperty from continuing the proceedings before the EPO.

Rule 142(1)(c)

In principle, the EPO interrupts proceedings pursuant to Rule 142 ex officio.
In the case of Rule 142(1)(a) last sentence, however, proceedings areinterrupted on request only.
1.2 Responsible department
The Legal Division of the EPO bears sole responsibility for the interruption
and resumption of proceedings under Rule 142 (see the decision of the
President of the EPO dated 21 November 2013, OJ EPO 2013, 600).

Art. 20

1.3 Date of interruption
An interruption is registered (in general retroactively) with legal effect fromthe date of the occurrence of the event. In cases where proceedings areinterrupted on request, the interruption is effected as from the date ofreceipt of the request at the EPO.
The parties are informed of the interruption of proceedings and the reasonsfor it. The date of interruption as well as the date of resumption ofproceedings are recorded in the European Patent Register.
1.4 Resumption of proceedings
When, in the cases referred to in Rule 142(1)(a) or (b), the EPO has been
informed of the identity of the person authorised to continue theproceedings before the EPO, it notifies that person and, where applicable,
any third party, that the proceedings will be resumed as from a specified
date. The date is set in such a manner as to allow this person to familiarise
himself with the matter.

Rule 143(1)(t)Rule 142(2)Part E – Chapter VII-2

Guidelines for Examination in the EPO

March 2023

If, three years after the publication of the date of interruption in theEuropean Patent Bulletin, the EPO has not been informed of the identity ofthe person authorised to continue the proceedings, it may set a date on
which it intends to resume the proceedings of its own motion.
This date may be postponed upon reasoned request and submission of
relevant documentary evidence in the case of a claim of succession in title
in respect of the European patent application/European patent concerned.
As a consequence of the ex officio resumption, the proceedings willcontinue with the applicant/proprietor registered in the European Patent
Register, and procedural actions may become necessary and/or fees due(see also the notice from the EPO dated 29 May 2020, OJ EPO 2020,
A76).
Communications and decisions of the EPO which have been notified during
the interruption period are to be regarded as null and void and will be
notified anew after resumption of proceedings by the responsible
department.
Rule 142(3)In the case referred to in Rule 142(1)(c), the proceedings will be resumed
when the EPO has been informed of the appointment of a new
representative of the applicant or when the EPO has notified to the otherparties the communication of the appointment of a new representative of
the proprietor of the patent. If, the EPO has not been informed of theappointment of a new representative within a period of three months after
the beginning of the interruption of the proceedings, it communicates to theapplicant for or proprietor of the patent:

Rule 142(3)(a)(i)

where Art. 133(2) (mandatory appointment of a representative) is
applicable, that the European patent application will be deemed to bewithdrawn or the European patent will be revoked if the information is
not submitted within two months after this communication is notified;orRule 142(3)(b)(ii)

where Art. 133(2) is not applicable, that the proceedings will beresumed with the applicant for or proprietor of the patent as from thedate on which this communication is notified.

A copy of the communication will be forwarded to the other parties.

Rule 142(4)1.5 Resumption of time limits
Time limits in force on the date of interruption of the proceedings begin
again, in their original length, as from the day on which the proceedings are
resumed, with the exception of the time limits for requesting examinationand for paying renewal fees.
If the time limit for filing the request for examination is in force on the dateof interruption of the proceedings, it is suspended (J 7/83; see also
E-VIII, 1.4). Thereafter it resumes for the time it still has to run, or for atleast the two months prescribed by Rule 142(4), second sentence.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VII-3

Concerning renewal fees falling due during the period of interruption,
Rule 142(4) has to be interpreted as deferring the due date for their
payment until the date the proceedings are resumed (J 902/87). Thus, such
renewal fees may be paid without additional fee at the date of resumption
and in the amounts applicable on that date. They may also be paid within
six months of said date, provided that an additional fee is also paid within
said period (Rule 51(2)).
If the time limit for paying renewal fees with the additional fee referred to inRule 51(2) is in force on the date of interruption of the proceedings, it issuspended and begins to run again for the remaining period on the date ofresumption.
2. Stay of proceedings under Rule 14 due to pending national
entitlement proceedings
If third parties provide evidence that they have instituted proceedings
against the applicant seeking a decision within the meaning of Art. 61(1),the proceedings for grant are stayed unless the third parties communicate
to the EPO in writing their consent to the continuation of proceedings. Thisconsent is irrevocable. For further details see A-IV, 2.2 and subsections,and D-VII, 4.1.
3. Stay of proceedings when a referral to the Enlarged Board of
Appeal is pending
Where a referral to the Enlarged Board of Appeal is pending and theoutcome of examination or opposition proceedings depends entirely on theanswer to the questions referred to the Enlarged Board of Appeal, theproceedings may be stayed by the examining or opposition division on its
own initiative or on request of a party or the parties.
The party/ies will be informed of the intention to stay the proceedings. If no
reply is received from the party/ies with regard to the intention to stay, or if
the party/ies explicitly agree(s), the proceedings will be stayed and theparty/ies will be informed thereof. If the party/ies do(es) not agree in writing
with the intention to stay, and if the examining or opposition division
maintains its opinion, a decision to stay will be despatched. A decision tostay the proceedings or refusing a request to stay is not separately
appealable; it can only be appealed together with the final decision on theapplication/patent (see E-X, 3).
During the stay of proceedings, a PACE request will have no effect. After
their resumption, proceedings are again accelerated. Where theproceedings are not stayed, they will be decided according to existing
practice.
A stay of proceedings due to dependency on a referral to the Enlarged
Board of Appeal is to be distinguished from a stay of proceedings pursuant
to Rule 14 (see E-VII, 2).

Rule 14(1)Part E – Chapter VII-4

Guidelines for Examination in the EPO

March 2023

4. Consolidation of proceedings
The examining or opposition division or the Legal Division may consolidate
proceedings if this is considered useful in order to expedite proceedings in
the specific circumstances of the case (see J 17/92).
Consolidation is considered inter alia if the parties and the underlying factsof the proceedings are identical. It is for the responsible division to decide
whether proceedings are to be consolidated in the interest of procedural
efficiency and with a view to expediting proceedings and, if so, for what
purpose. Consolidation may concern the entire procedure or only individual
procedural steps such as the taking of evidence or the conduct of oralproceedings.
The parties are to be informed of consolidation. This information includes astatement about the purpose of consolidation. Where proceedings areconsolidated for the taking of evidence, this is to be notified in the order totake evidence and in the annex to the summons to oral proceedings. These
must be sent to all parties to the consolidated proceedings. Likewise,
submissions from the parties filed in respect of only one of the proceedings
which are relevant to the consolidated parts of the proceedings must be
included in all the files concerned.
Upon fulfilment of its purpose, consolidation is to be set aside and theproceedings are to be continued separately. Again, the parties must be
informed accordingly.
A decision to consolidate proceedings is not subject to a separate appeal
but may be appealed only together with the final decision, unless thedecision allows a separate appeal (see E-X, 3). The same applies
mutatis mutandis to a decision setting aside consolidation.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VIII-1

Chapter VIII – Time limits, loss of rights, further
and accelerated processing andre-establishment of rights
1. Time limits and loss of rights resulting from failure to respondwithin a time limit
1.1 Determination of time limits
The EPC imposes time limits upon parties to proceedings. In the EPC, a"time limit" is a period of time of defined duration, calculated in full years,
months, weeks or days, by reference to a relevant event (J 18/04), within
which an act vis-à-vis the EPO has to be completed.
Some of these are fixed by the articles of the EPC, e.g. Art. 87(1) (priority
period) and Art. 99(1) (opposition). Others are fixed in the Implementing
Regulations, e.g. in Rule 30(3) (payment of late-furnishing fee), Rule 38(payment of filing and search fee), Rule 39(1) (payment of designationfees), Rule 58 (correction of deficiencies in application documents),
Rule 70(1) (request for examination), Rule 71(3) (filing translations of theclaims and payment of fees for grant and publishing) and Rule 112(2)(applying for a decision after notification of loss of rights).
Others take the form of a stipulated range, the precise period within thisrange being at the EPO's discretion.
In other cases, e.g. those dealt with in Rule 3(3) (filing translation of
documentary evidence), or Rule 70(2) (invitation to applicants to indicate
whether they desire to proceed further with the European patentapplication), a period, but not its duration, is provided for in the EPC. The
duration must be specified by the EPO in accordance with Rule 132(see E-VIII, 1.2).
1.2 Duration of the periods to be specified by the EPO on the basisof EPC provisions
The length of such periods is based, in principle, on the amount of work
which is likely to be required to perform the operation in question (minimumof two months, maximum of four months, exceptionally six months).
However, in order to facilitate the work of parties and the EPO it has been
decided, as a general rule, to adopt a uniform practice with respect to time
limits. This practice is at present as follows:(i)

if deficiencies to be corrected are merely formal or merely of a minor
character; if simple acts only are requested, e.g. under Rule 83 thesubsequent filing of documents referred to by a party; or if
observations are required on amendments which are merely of aminor character – two months;(ii)

communications from an examining or opposition division raising
matters of substance – four months;(iii)

communications from the Legal Division – two months.

Art. 120
Rule 131

Part E – Chapter VIII-2

Guidelines for Examination in the EPO

March 2023

Where a communication according to Art. 94(3) in examination isaccompanied by a request for a translation of a priority document(Rule 53(3)), the period set for reply to that communication and forproviding the translation is the same and is at least four months, regardlessof the severity of the objections raised in the communication according toArt. 94(3) (see also A-III, 6.8.2).
Rule 70(2)A longer time limit of up to six months is set only in the exceptional cases
where it is clear that in the circumstances a four-month time limit cannot be
adhered to. Each case must be judged on its individual merits and it isdifficult to give general guidance, but a six-month time limit might bejustified if for example the subject-matter of the application or patent or theobjections raised are exceptionally complicated. Note that in this case an
extension of the time limit (i.e. beyond six months) will be allowed only in
exceptional cases (E-VIII, 1.6). Where the applicant is invited to submit theindication provided for in Rule 70(2), a six-month time limit running from thepublication of the search report is appropriate.
1.3 Time limits which may be freely determined
Time limits for operations in respect of which the setting of a time limit is not
explicitly provided for in the EPC are not subject to the restrictions as to theduration of time limits laid down in Rule 132. They may be fixed by the EPO
at its own discretion.

Rule 131
Rule 134

Rule 142

Art. 88(2)1.4 Calculation of time limits
Although Rule 131 allows other possibilities, any period fixed by the EPO
will usually be specified in full months which will be calculated from the dateof notification (see E-II, 2). Rule 131 gives precise details for thedetermination of the day of expiry of the period, whilst Rule 134 contains
provisions covering certain contingencies (see E-VIII, 1.6).
When proceedings have been interrupted because of the death of theapplicant or proprietor or for any of the other reasons specified in Rule 142(see E-VII, 1.1), time limits are subject to the provisions of Rule 142(4). The
time limits for the payment of the examination fee and the renewal fees are
suspended (see E-VII, 1.5). The time limits in force at the date of the stay ofproceedings under Rule 14 due to national entitlement proceedings, withthe exception of those for payment of the renewal fees, are interrupted.
Rule 14(4) applies to the calculation of time limits after the resumption ofproceedings (see A-IV, 2.2.4).
1.5 Effect of change in priority date
Certain time limits run from the date of priority, or in the case of multiple
priorities, from the earliest date of priority. Where this date no longer
applies (e.g. the right of priority is lost in accordance with the provisions ofArt. 90(5)), any such time limits become determinable from the amended
date of priority. This does not restore any loss of rights resulting from a time
limit having already expired before the loss of priority date. Part A of the
Guidelines deals with the procedure to be followed (see A-III, 6.9 to 6.11).

March 2023

1.6

Guidelines for Examination in the EPO

Part E – Chapter VIII-3

Extension of a time limit

1.6.1 Extension of time limits set by the EPO under Rule 132
Other than in cases in respect of which the EPC specifies a fixed period
which may not be extended, the duration of time limits may be extended onrequest. The request must be submitted in writing before expiry of theperiod that has been set. The extended period is to be calculated from thestart of the original period.

Rule 132

In opposition proceedings, requests to extend time limits over and above
the normal period of four months, both for communications from an
opposition division raising matters of substance and communications
issued by the formalities officer, or two months for communications
requesting an act of a merely formal or minor character (E-VIII, 1.2), will
only be granted in exceptional, duly substantiated cases. For acommunication under Art. 101(1) and Rule 79 or Rule 81(2) andRule 81(3), all parties to the proceedings can request an extension
irrespective of whether they were invited in the communication to reply: if
the extension is, exceptionally, granted to one of the parties, it
automatically applies to all other parties.
In other proceedings, a request for extension, even if filed without reasons,is normally allowed if it is for not more than two months and the total period
set does not thereby exceed six months. A request for a longer extension,
especially if the total period set exceeds six months, is allowed only
exceptionally, when the reasons given are sufficient to show convincinglythat a reply in the period previously set will not be possible. Such
exceptional circumstances might be e.g. the fact that representatives orclients are so seriously ill that they cannot deal with the case in time; or theneed to perform extensive biological experiments or tests. On the other
hand, foreseeable or avoidable circumstances (e.g. leave, pressure of otherwork) are not accepted as a sufficiently exceptional circumstance (seeNotice of the Vice-President of Directorate-General 2 of the EPO,OJ EPO 1989, 180).
If the request for an extension is granted, the parties are informed of the
new time limit. Otherwise, they are told that the relevant sanction has taken
effect or will take effect.
An application will be removed from the PACE programme (see E-VIII, 4) if
the applicant has requested an extension of a time limit(OJ EPO 2015, A93, point A.4).
In examination proceedings, failure to respond to a communicationaccording to Art. 94(3) results in deemed withdrawal of the application(see E-VIII, 1.8 and E-VIII, 1.9.2).
If the request for extension of a time limit filed in good time has been
rejected and any applicant considers this unjust, they can only overcome
the ensuing loss of rights by requesting a decision under Rule 112(2)and/or further processing under Art. 121(1) and Rule 135(1) (see E-VIII, 2),
as applicable. Where the reimbursement of the fee for further processing is

Art. 106(2)Part E – Chapter VIII-4

Guidelines for Examination in the EPO

March 2023

requested and this is rejected, such decision is open to appeal, either
together with the final decision or separately, as the case may be(see J 37/89).
The failure of a party to reply to a communication from the opposition
division within the period set does not lead directly to any legal
consequence. Rather, the opposition proceedings will proceed to the nextstage, and this could be a decision under Art. 101(2) or (3).
1.6.2

Rule 134(1)Extension of periods under Rule 134

1.6.2.1 Extension of periods under Rule 134(1)Periods that expire on a day on which at least one of the filing offices of theEuropean Patent Office (i.e. Munich, The Hague or Berlin) is not open forreceipt of documents (e.g. because a public holiday is observed at thelocation of the EPO's filing office) or on which mail is not delivered for otherreasons (with the exception of a general dislocation in the transmission ordelivery of mail, which is subject to the provision of Rule 134(2) – see
E-VIII, 1.6.2.3) are extended to the first day thereafter on which all the filingoffices are open again for receipt of documents and on which mail isdelivered.
An extension pursuant to Rule 134(1) also applies in the event that any oneof the means of electronic filing provided by the EPO under Rule 2(1) is notavailable, regardless of any restrictions on the documents which may be
filed by the means of electronic filing that suffered the outage.
–

If a means of electronic filing is unavailable for four hours or morebecause of scheduled maintenance, Rule 134(1), second sentence,
applies. If the unavailability of a means of electronic filing lasts lessthan four hours and is announced at least two working days inadvance, Rule 134(1), second sentence, does not apply.

–

In the case of unplanned outages, users who are unable to file adocument should contact the EPO's Customer Services. If it isconfirmed that the unavailability of the service is attributable to the
EPO, said users will not suffer any adverse consequences; they may
also request that the EPO declare under Rule 134(1), second
sentence, that the missed period is extended to the date on which
the document was filed.

–

If a payment period expires on a day on which one of the acceptedmeans of making payment to the EPO for a Euro-direct or Euro-PCT
application is unavailable, the payment period is extended to the firstworking day thereafter on which all such means of making payment
are available unless the outage lasts less than four hours and isannounced at least two working days in advance.

For further details see OJ EPO 2020, A120.

March 2023

Guidelines for Examination in the EPO

1.6.2.2 Extension of periods under Rule 134(2) and Rule 134(5)Where there is a general dislocation in the delivery or transmission of mailin a contracting state, any period expiring during such dislocation isextended for parties who are resident in the state concerned or haveappointed a representative with a place if business in that state. Where thestate concerned is the state in which the EPO is located, the extension
applies to all parties and representatives, irrespective of their residence.
The beginning and the end of the period of such general dislocation is
published in the Official Journal.
Equally, where an individual party can provide evidence of a dislocation of
the delivery or transmission of mail due to an exceptional occurrence insideor outside EPC contracting states (such as, in particular, a natural disaster,war, civil disorder or a general breakdown of any of the means of electronic
communication accepted by the EPO for the filing of documents), a latesubmission or payment will be deemed to be received in due time, provided
that–the dislocation affected the locality where that party or theirrepresentative resides or has their principal place of business,–the dislocation existed on any of the last ten days of the period at
issue, and–the transmission or payment is effected within five days from the endof the dislocation, together with–a formal request of the party concerned under Rule 134(5),accompanied by appropriate evidence.

1.6.2.3 Scope of application of Rule 134
An extension under Rule 134 applies to all periods under the EPC (seeE-VIII, 1.1), including, in particular:–

the time limits for the filing of submissions, e.g. replies to EPO
communications;–the time limit under Rule 37(2) for the onward transmission to the
EPO of applications filed with the central industrial property office ofa contracting state (see A-II, 1.6);–

the priority period under Art. 87(1) (see A-III, 6.6);–

the opposition period under Art. 99(1);–the period for entry into the European phase under Rule 159(1);–the periods for the payment of fees (see A-X, 6.1), including, mutatis
mutandis, the expiry of the period to pay renewal fees with anadditional fee in accordance with Rule 51(2) and the expiry of theperiods under Rule 51(3) and (4) (see A-X, 5.2.4).

Part E – Chapter VIII-5

Rule 134(2) and (4)Rule 134(5)Part E – Chapter VIII-6

Guidelines for Examination in the EPO

March 2023

By contrast, an extension under Rule 134 does not affect:–

the pendency of the earlier application when filing a divisional
application (see A-IV, 1.1.1);–

the beginning of the six-month period for the payment of a renewal
fee with an additional fee under Rule 51(2) unless the due date forthe renewal fee is deferred to the expiry of a period, for instance inthe case of Rule 159(1)(g) (see A-X, 5.2.4);–

the due date for the renewal fees for a divisional application and the
beginning of the four-month period under Rule 51(3) (seeA-IV, 1.4.3);–

the date of the start of the search, which is relevant for theentitlement to a refund of the search fee (see A-X, 10.2.1);–

the date of the start of substantive examination, which is relevant forfiling a PPH request (see E-VIII, 4.3) or the entitlement to a refund of
the examination fee (see A-VI, 2.5);–

the date on which a request under Rule 22 (registration of transfers)
or Rule 54 (certified priority document) is deemed to be filed, where
the payment date is decisive, because these requests are deemed tohave been filed only when the corresponding administrative fee has
been paid.

The extension equally does not affect the final date for making written
submissions in preparation for oral proceedings under Rule 116, strictly
speaking. However, a general dislocation in the delivery of mail or otherexceptional occurrence under Rule 134(5) will be taken into account by an
examining or opposition division in exercising its discretion whether toadmit submissions filed after the date set under Rule 116 (see E-III, 8.5,
sub-item (iv)). Given that the date fixed under Rule 116 is meant to ensure
adequate preparation of the oral proceedings, a party making submissions
after that date must show that it has taken reasonable efforts to do so as
early as reasonably possible.

Rule 133(1)1.7 Late receipt of documents
If a document received late was delivered to a recognised postal service
provider at least five days before expiry of the time limit and was received
no later than three months after expiry of the time limit, it will be deemed tohave been received in due time under Rule 133. The five days are calendar
days, not working days. This legal fiction applies to all time limits to beobserved vis-à-vis the EPO and/or the national authorities, including thepriority period laid down in Art. 87(1). Despite this legal fiction that the time
limit has been observed, the filing date of the document remains the day on
which it was actually received.
Recognised postal service providers are the designated operators within
the meaning of Article 1 of the Universal Postal Convention as well as
Chronopost, DHL, Federal Express, flexpress, TNT, SkyNet, UPS andMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter VIII-7

Transworld (see the decision of the President of the EPO dated
11 March 2015, OJ EPO 2015, A29). The document must have been sent
as a registered letter or equivalent and, if posted outside Europe, by
airmail. At the request of the EPO, confirmation of receipt by the postal
service provider must be provided as evidence that the document wasdelivered in due time.
1.8 Failure to respond within a time limit
If a party has not acted within a time limit, various sanctions may be applied
depending on the circumstances. For instance, under Art. 90(2) andRule 55 the application will not be proceeded with; under Art. 90(5) theapplication will be refused or a right of priority lost; under Rule 5 adocument may be deemed not to have been received. If the request for
examination has not been filed in time, the application is deemed to bewithdrawn (Art. 94(2)), and this sanction may also apply in those cases
where the applicant fails to meet a time limit set by the EPO (e.g. the time
limit for replying to an invitation to amend under Art. 94(3)).
If a particular time limit is not complied with and, in contrast to cases where
mandatory legal sanctions are laid down (e.g. revocation of the European
patent if the publishing fee is not paid in due time (Rule 82(3)), no specificlegal sanction is laid down in the EPC, submissions and requests from theparties made after expiry of the time limit but before a decision is handed
over to the EPO's internal postal service for transmittal to the parties are to
be regarded in the rest of the proceedings as if they had been received intime (see G 12/91); any facts or evidence are, however, to be treated as
not filed in due time (Art. 114(2), see also E-VI, 1.2).
1.9

Loss of rights

1.9.1 Cases of loss of rights
If a party to the proceedings or a third party fails to comply with a time limit
laid down in the EPC or fixed by the EPO, this will result in a loss of rights
in certain cases specified in the EPC, without any decision concerning therefusal of the European patent application or the grant, revocation or
maintenance of the European patent, or the taking of evidence.
1.9.2 Noting and communication of loss of rights
If there has been a loss of any right as described in E-VIII, 1.9.1, aformalities officer will note such loss of rights and communicate this to theperson concerned. The communication will be notified to the person
concerned as a matter of course (see also D-IV, 1.4.1).
1.9.3 Decision on loss of rights
If the party concerned considers that the finding of the EPO is inaccurate,they may, within two months after notification of the communication, apply
for a decision on the matter by the EPO.
The competent department of the EPO will give such a decision only if it
does not share the opinion of the person requesting it; otherwise it will
inform the person requesting the decision and then continue with theproceedings. Since such decisions are subject to appeal, the reasons on

Rule 112

Art. 119
Rule 112(1)Rule 112(2)Part E – Chapter VIII-8

Guidelines for Examination in the EPO

March 2023

which they are based must be stated. Only the person affected by the lossof rights noted will be party to the proceedings.
The request under Rule 112(2) for a review of the accuracy of thecommunication under Rule 112(1) exists in parallel to the legal remedies
against the loss of rights. It is advisable to apply for the appropriate legal
remedy as an auxiliary request to that under Rule 112(2) in order toobserve the relevant time limit for that request (see E-VIII, 2 andE-VIII, 3.1.3). The competent department will deal with the request under
Rule 112(2) first. If it is allowable, all other requests are redundant and any
related fees paid will be refunded. If it is not allowable, one decision willdeal with the various requests in the order in which they were filed. If
applicants fail to observe the time limit for requesting a decision under
Rule 112(2), they may still apply for re-establishment of rights under
Art. 122(1) and Rule 136(1) in respect of that time limit.

Art. 121(1) and (2)Rule 135(1) and (3)Art. 2(1),item 12, RFees

2. Further processing
If the European patent application is to be refused or is refused or deemed
to be withdrawn following failure to reply within a time limit vis-à-vis the
EPO, the application is allowed to proceed if the applicant makes a request
for further processing of the application within two months of thecommunication concerning either the failure to observe a time limit or a lossof rights. Further processing must be requested by payment of theprescribed fee. The omitted act must be completed within the period formaking the request. The request is not deemed to have been filed until therespective fee for further processing has been paid. If the fee for further
processing has been paid in due time but the omitted act has not been
completed within the period for making the request, the request is
inadmissible.
If several acts have the same legal basis, they form a unitary procedural act
and are subject to a unitary time limit (see J 26/95). Further processing inrespect of such a time limit is subject to the payment of a single fee forfurther processing. The amount of the single fee depends on the number
and character of the omitted acts forming the unitary procedural act.
The following examples serve to illustrate this:–Requesting examination under Art. 94(1) in conjunction with
Rule 70(1) requires filing a written request for examination andpaying the examination fee. As both actions have the same legal
basis, they form a unitary procedural act subject to a unitary time
limit. If both actions were omitted, the single fee for further
processing amounts to the sum of the flat fee and 50% of theexamination fee (Art. 2(1), item 12, first and third indents, RFees). If
only the examination fee was not paid in due time, the fee for further
processing amounts to 50% of the examination fee (Art. 2(1),item 12, first indent, RFees). If only the written request for
examination was omitted, the fee for further processing amounts tothe flat fee (Art. 2(1), item 12, third indent, RFees).

March 2023–

Guidelines for Examination in the EPO

The filing fee and the additional fee due if the application comprises
more than 35 pages must be paid within the time limit set by
Rule 38(1) and (2). As the additional fee is part of the filing fee, thepayment of these two fees forms a unitary procedural act subject to aunitary time limit. Hence, one fee for further processing is due. If both
fees were not paid in due time, the single fee for further processing
comprises 50% of the filing fee and 50% of the additional fee (seeArt. 2(1), item 12, first indent, RFees). If only one fee was not paid indue time, the single fee for further processing amounts to 50% of thatomitted fee (see Art. 2(1), item 12, first indent, RFees).

An exception to the above principle concerns Rule 71(3):–Approval of the text communicated under Rule 71(3) requires paying
the fee for grant and publishing and, where applicable, claims fees
(Rule 71(4)) and filing the translations of the claims within afour-month period (Rule 71(5)). As these actions have the same legal
basis, they form a unitary procedural act subject to a unitary time
limit. By way of exception to the principle that the single fee forfurther processing is computed on the basis of the number of omitted
acts, Art. 2(1), item 12, second indent, RFees stipulates that only one
flat fee for further processing is due in the event of late performanceof any or all of the acts required under Rule 71(3), i.e. paying the fee
for grant and publishing and filing the translations of the claims. If in
addition claims fees were not paid in due time, the single fee forfurther processing amounts to the sum of the flat fee and 50% of theclaims fees (see Art. 2(1), item 12, second and first indent, RFees). If
only the claims fees were not paid in due time, the single fee forfurther processing amounts to 50% of the claims fees (Art. 2(1),item 12, first indent, RFees). For European patent applications filed
before 1 April 2009 and international applications entering theEuropean phase before that date, any page fees under Art. 2(2),item 7.2, RFees are part of the fee for grant and printing. Therefore, if
only page fees were not paid in due time, the fee for further
processing amounts to the flat fee (Art. 2(1), item 12, second indent,
RFees).

Actions not forming a unitary procedural act are subject to time limits
expiring independently of one another, each resulting in the application
being deemed withdrawn. If such time limits expire on the same date, themissing of each independent time limit results in the application being
deemed withdrawn (see J 26/95). This applies regardless of whether theapplicant is informed of the non-performance of procedural acts in one
communication or in several communications. In such cases, a fee forfurther processing is due in respect of each unobserved time limit. For an
example, see E-VIII, 3.1.3.
A request for further processing may also be filed between expiry of theunobserved time limit and notification of the communication concerning
either the failure to observe a time limit or a loss of rights.

Part E – Chapter VIII-9

Part E – Chapter VIII-10

Guidelines for Examination in the EPO

March 2023

The department competent to decide on the omitted act also decides on therequest for further processing.
Where the omitted act is a substantive response (e.g. to the extended
European search report or to a communication under Art. 94(3)), a mere
procedural request (e.g. a request for oral proceedings) does not qualify ascompletion of the omitted act and therefore cannot lead to further
processing being granted (see B-XI, 8 and C-IV, 3).
Rule 135(2)Art. 122(1)As a general rule, further processing is the legal remedy for failure toobserve a time limit during proceedings before grant, even where theconsequence is a partial loss of rights (e.g. loss of priority right). However,the possibility of requesting further processing is ruled out for the periods
referred to in Art. 121(4) and Rules 6(1), 16(1)(a), 31(2), 36(2), 40(3), 51(2)to (5), 52(2) and (3), 55, 56, 56a(1) and (3) to (7), 58, 59, 62a, 63, 64,
112(2) and 164(1) and (2).
3. Re-establishment of rights
An applicant for or proprietor of a European patent who, despite taking all
due care required by the circumstances, was unable to observe a time limit
vis-à-vis the EPO may apply to have their rights re-established.
3.1

Art. 122(1)Admissibility of the request

3.1.1 Time limits covered
Failure to observe the time limit must have the direct consequence of
causing the refusal of the European patent application or of a request, or
the deeming of the European patent application to have been withdrawn, or
the revocation of the European patent, or the loss of any other right ormeans of redress. This means, for example, that in opposition proceedings
there can be no re-establishment of rights in respect of the time limits forthe patent proprietor's submission of observations on the written statementsof the other parties to the proceedings or on communications from the
opposition division. Likewise, there can be no re-establishment of rights incase of failure to observe the time limit for the payment of the renewal fees
under Rule 51(1) as valid payment is still possible under Rule 51(2).

Art. 122(4)Rule 136(3)Re-establishment of rights is ruled out in respect of all periods for whichfurther processing is available and in respect of the period for requesting
re-establishment of rights. This means that re-establishment of rights
comes into play where further processing is excluded in respect of a
specific period or where the time limit for requesting further processing has
expired. In the latter case, re-establishment of rights in respect of the time
limit for requesting further processing is to be requested (see E-VIII, 2), andnot in respect of the originally missed time limit.

Rule 131(1)A "time limit" is taken to mean a specific period of time within which an act
vis-à-vis the EPO must be completed (see E-VIII, 1.1). Re-establishment ofrights is therefore not admissible e.g. in respect of failure to be present on
the date of appointed oral proceedings.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VIII-11

The following are examples of cases where re-establishment of rights may
be requested. They concern the time limits for:–payment of a renewal fee plus additional fee;

Rule 51(2)–requesting further processing in respect of the time limit for replying
to a communication from the examining division under Art. 94(3);Rule 135(1)–filing the translation of any amended claims in opposition
proceedings;

Rule 82(2)–filing the request for a decision by the opposition division on theawarding of costs;

Rule 88(3)–filing notice of appeal; andArt. 108–

filing a petition for review by the Enlarged Board of Appeal.

Art. 112a(4)3.1.2 Entitlement to file the request
The wording of Art. 122(1) implies that re-establishment of rights isavailable only to applicants and proprietors. Therefore, opponents are inprinciple not entitled to request re-establishment of rights, e.g. in respect of
the time limit for filing an appeal (see T 210/89). However, an opponent
who has filed an appeal can request re-establishment of rights in respect of
the time limit for submitting the grounds for appeal (see G 1/86).
Where re-establishment of rights is requested by the patent proprietor in
respect of a time limit connected with the opposition procedure, theopponents are party to the re-establishment proceedings (see T 552/02 andT 1561/05).
In the case of transfer of an application or patent, the request forre-establishment of rights may only be filed by the registered applicant(E-XIV, 3).
3.1.3 Form of the request and applicable time limit
As a rule, the request for re-establishment of rights must be filed in writing
within two months from the removal of the cause of non-compliance withthe time limit, but at the latest within one year of expiry of the unobserved
time limit. The omitted act must be completed within this period.
Where the "cause of non-compliance with the time limit" involved someerror in the carrying out of the party's intention to comply with the time limit,
the removal of the cause of non-compliance occurs on the date on which
the person responsible for the application is made aware of the fact that atime limit has not been observed or ought to have noticed the error if all due
care had been taken. The removal of the cause of non-compliance is amatter of fact which has to be determined in the circumstances of eachindividual case. In the absence of circumstances to the contrary, where acommunication under Rule 112(1) has been duly sent, it may be assumed
that the removal was effected by receipt of this communication(see J 27/90).

Rule 22(3)Rule 136(1), (2)Part E – Chapter VIII-12

Guidelines for Examination in the EPO

March 2023

Unlike the time limit for other cases as described above, a request forre-establishment in respect of the priority period (Art. 87(1)) or the period
for filing a petition for review by the Enlarged Board of Appeal (Art. 112a(4))
must be filed within two months of expiry of the relevant period.
A request for re-establishment is not deemed to be filed until after the fee
for the re-establishment of rights has been paid.
The principles regarding unitary and independent procedural acts describedin E-VIII, 2 apply mutatis mutandis to establishing the number of requests
for re-establishment of rights, in particular for establishing the relevant feesto be paid. Where one unitary procedural act is omitted by not performing
one or more actions forming that act, only one fee for re-establishment isdue. Where several independent procedural acts are omitted, eachresulting in the application being deemed withdrawn, a fee forre-establishment is due for each omitted act.
These principles also apply to cases where re-establishment of rights must
be requested in respect of the time limit(s) for requesting further processing(see Rule 136(3)). In such cases, the number of unobserved time limits,
each resulting in the application being deemed withdrawn and requiring arequest for further processing, determines the number of requests forre-establishment and the corresponding number of fees forre-establishment.
Example:An international application comprises more than 35 pages and was
published in a language other than an official language of the EPO. The
acts required for entry into the European phase upon expiry of the
31-month period under Rule 159(1) were omitted. Due to their different
legal nature, the individual acts required under Rule 159(1) do not form aunitary procedural step but are legally independent and subject toindependent time limits. The table below provides a schematic illustration
regarding further processing and re-establishment of rights (for informationon the remedies available for non-observance of the time limits under
Rule 159(1), see the individual sections under E-IX, 2).
Box I of the table lists the number of independent unobserved time limits.
Box II indicates the fee for further processing corresponding to each
unobserved time limit. Box III provides the fee for re-establishment
corresponding to each unobserved time limit.
In the example, for a request for further processing to be allowed,
completion of the omitted acts (i.e. all acts that were to be performed within
the 31-month period) and payment of five fees for further processing (two of
which comprise two fees) are required within the two-month period under
Rule 135(1). If that period is missed, the applicant may request
re-establishment of rights in respect of the period. The request requires
completion of the omitted acts and payment of the corresponding numberof fees for re-establishment of rights within the period under Rule 136(1).
The omitted acts are those that were to be performed within theMarch 2023

Guidelines for Examination in the EPO

31-month period and payment of the corresponding five fees for further
processing. Payment of five fees for re-establishment of rights corresponds
to the number of five independent fees for further processing.
Omitted acts

Time limits
missed(box I)

Number of fees
for further
processing(box II)

Number offees for reestablishment(box III)

Filing of the translation

1

1

1

Payment of the filingfee

1 (unitary)

1 (comprising
50% of the filingfee and 50% of
the additionalfee)

1Payment of thedesignation fee

1

1

1

Payment of the search
fee

1

1

1

Filing of the request for
examination

1 (unitary)

1 (comprising aflat fee and 50%of theexamination fee)1

5 nonobserved
time limits

5 fees for further
processing, 2 ofthem comprising
2 fees5 fees for reestablishment

Payment of theadditional fee for an
application comprisingmore than 35 pages

Payment of theexamination fee
Resulting number offees to be paid

3.1.4 Substantiation of the request
The request must state the grounds on which it is based, and must set out
the facts on which it relies. Thus, it must set forth the precise cause ofnon-compliance with the time limit concerned (i.e. the fact or obstacle
preventing the required action within the time limit), specify at what timeand under which circumstances the cause occurred and was removed, andpresent the core facts making it possible to consider whether all due carerequired by the circumstances had been taken in order to comply with thetime limit concerned (see J 15/10). General statements with no indication of
the concrete facts or events that caused the time limit to be missed do notsatisfy the requirement for a duly substantiated request under Rule 136(2).

Part E – Chapter VIII-13

Part E – Chapter VIII-14

Guidelines for Examination in the EPO

March 2023

Once the time limit for filing the request for re-establishment has expired,
the requester may clarify or supplement the alleged facts and, whereappropriate, submit further evidence. However, the requester cannot alter
the factual basis on which the original request for re-establishment had
been based (see J 5/94). Any new facts introduced at this stage are notadmissible and are, therefore, not taken into consideration by the deciding
instance.

Art. 122(1)3.2 Merit of the request
Applicants can have their rights re-established only if they show that they
were unable to observe a time limit vis-à-vis the EPO in spite of all due carerequired by the circumstances having been taken. The obligation to
exercise due care must be considered in the light of the situation as it stood
before the missed time limit expired. "All due care" means all reasonablecare, i.e. the standard of care that the notional reasonably competentpatentee, applicant or representative would employ in all the relevant
circumstances (see T 30/90).
For cases where the cause of non-compliance with a time limit involves
some error in the carrying out of the party's intention to comply with thetime limit, all due care is considered to have been taken if non-compliancewith the time limit results either from exceptional circumstances or from an
isolated mistake within a normally satisfactory monitoring system.
A finding of exceptional circumstances justifying the re-establishment ofrights is dependent on the individual facts of the case. Examples include
inter alia organisational upheavals and sudden serious illnesses. In suchcases, the requesters must show not only the existence of thosecircumstances, but also that they took all due care, e.g. by carefully
preparing the reorganisation or by having an effective staff substitution
system.
Where an isolated mistake within a normally satisfactory monitoring system
is alleged, the relevant party must show that the monitoring system
normally works well. Such a system must include an independent, effective
cross-check mechanism. However, this requirement does not apply torelatively small entities/patent departments (see T 166/87 and J 11/03).
The duty to exercise all due care applies first and foremost to the applicants
and then, by virtue of delegation, to the representative duly entrusted by theapplicant to act on their behalf in prosecuting the application (see J 3/93).
The obligations of the applicant and those of their representative are clearly
distinct and depend on the relationship between them (see T 112/89 andJ 19/04). In this regard, the scope of the mandate and any express
instructions given to the representative are taken into account.
Applicants are entitled to rely on their representative. To the extent thatapplicants are on notice that instructions are required in order to meet atime limit, they have however a duty to take all due care in thecircumstances to meet the time limit (see T 381/93). The fact that the
professional representative has acted correctly does not exempt applicantsfrom suffering the consequences of their own mistakes or negligence.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VIII-15

European representatives are responsible in the procedure before the EPO
and must be presumed to be supervising their own work continuously (seeT 1095/06). When professional representatives have been instructed bytheir client to perform a particular procedural action and do not receive indue time the necessary additional instructions or required means, theymust in principle take all necessary measures to try to obtain these
instructions from their client and ascertain their true wishes (see T 112/89
and J 19/04).
Professional representatives can delegate routine tasks, such as typing,
posting letters, noting time limits or checking due dates, to assistants. In
those cases, the same strict standard of care is not expected of theassistant as is demanded of the representative himself. The representative
must however show that the assistants have been carefully selected, duly
instructed and periodically supervised (see J 5/80 and T 439/06).
If the applicants entrust a further party with taking care of their application
matters, e.g. a non-European representative or a fee payment agency, it
has to be established that such a party has taken the due care required ofan applicant for or proprietor of a European patent (see J 3/88). In
particular, a non-European representative must also show that a reliable
system for the monitoring of time limits was in place when the time limit was
missed (see J 4/07).
3.3 Decision on re-establishment of rights
The department competent to decide on the omitted act is also competentto decide on the request for re-establishment of rights. The grounds for thedecision need only be stated if the request is not granted, except in
opposition proceedings, as opponents are party to the re-establishment
proceedings (see E-VIII, 3.1.2).

Rule 136(4)The department which took the contested decision will have to consider
re-establishment of rights in respect of an unobserved time limit for appeal
when the conditions for granting interlocutory revision are fulfilled(see E-XII, 7). It can, however, only decide to allow re-establishment if it
can do so within the three-month time limit of Art. 109(2) and the conditions
for re-establishment (see E-VIII, 3.1.1 to E-VIII, 3.1.4) are fulfilled. In allother cases, the appeal, together with the application for there-establishment of rights, must be submitted to the competent board of
appeal.
If the request is granted, the legal consequences of the failure to observe
the time limit will be deemed not to have ensued. Any renewal fees which
may have fallen due between the expiry of the missed time limit and thenotification of the decision to grant the request for re-establishment will be
due on that latter date. Valid payment will still be possible within fourmonths of that date. If a renewal fee was already due when the loss ofrights occurred but could still be paid under Rule 51(2), it may still be paid
within six months of the date of notification of the decision re-establishing
the rights, provided that the additional fee is also paid within that period.

Art. 122(3)Rule 51(4)Part E – Chapter VIII-16

Guidelines for Examination in the EPO

March 2023

If other time limits the non-observance of which would also lead to a loss ofrights were already running when the loss of rights occurred, on granting
the request for re-establishment the EPO will send the applicant a
communication triggering those time limits anew.
4. Accelerated prosecution of European patent applications
Applicants requiring faster search or examination can ask to have theirapplications processed under the programme for accelerated prosecutionof European patent applications (PACE) (see the notice from the EPO
dated 30 November 2015, OJ EPO 2015, A93; for PACE requests filed
before 1 January 2016 see also OJ EPO 2010, 352). For information
regarding additional ways to expedite the European grant procedure see
OJ EPO 2015, A94).
Requests for participation in the PACE programme (PACE requests) mustbe filed online using the dedicated request form (EPO Form 1005). The
EPO will issue an acknowledgement of receipt promptly. Requests filed
informally, i.e. without using the dedicated form, and/or on paper will not beprocessed by the EPO.
A PACE request may be filed only once during each stage of theprocedure, i.e. search and examination, and for one application at a time. A
PACE request filed during search will not trigger accelerated examination. If
the applicant wishes to have the application examined in an accelerated
manner, a PACE request may be filed, once the application has entered theexamination phase.
The EPO does not publish requests for accelerated search and/or
examination and, by decision of the President dated 12 July 2007 (Special
edition No. 3, OJ EPO 2007, J.3), they are excluded from file inspection.
An application will be taken out of the PACE programme if:–

the PACE request has been withdrawn,–

the applicant has requested an extension of time limits,–

the application has been refused,–

the application has been withdrawn,–

the application is deemed to be withdrawn.

This applies regardless of the legal remedies available under the EPC. In
such cases it will not be possible to restore the application to the PACE
programme, i.e. a second request for that application during the samestage of the procedure will not be processed.
Additionally, accelerated prosecution will be suspended in the event of
failure to pay renewal fees by the due date stipulated in Rule 51(1).

March 2023

Guidelines for Examination in the EPO

Accelerated prosecution under the PACE programme can be provided only
where practically feasible and subject to the workload of the search andexamining divisions. In certain technical fields there may be constraints dueto the numbers of incoming PACE requests. Applicants requesting
accelerated prosecution for all or most of their applications will, as a rule,
be required by the EPO to limit the number of their PACE requests bymaking a selection.
4.1 Accelerated search
For European patent applications filed on or after 1 July 2014 (including
PCT applications entering the European phase where the EPO did not act
as (S)ISA) the EPO strives to issue the extended/partial European search
report within six months from the filing date or from expiry of the period
under Rule 161(2). Hence, no PACE request is needed.
For European patent applications (including PCT applications entering theEuropean phase where the EPO did not act as (S)ISA) which were filed
before 1 July 2014 and which do claim priority (second filings), on receipt of
a PACE request the EPO makes every effort to issue the extended/partial
European search report within six months from receipt of the request.
Without prejudice to the above an accelerated search can only start:(i)after receipt of the applicant's response to a communication under
Rule 62a or 63, or expiry of the respective time limit;(ii)

in all cases: when the application documents on filing are completeenough for the extended search report to be drawn up. That means,in particular, that the accelerated search can only start once theclaims, the description, the translations required and, whereapplicable, the drawings and a sequence listing conforming to therules for the standardised representation of nucleotide or amino acidsequences have been filed;(iii)

for PCT applications entering the European phase where the EPO
did not act as (S)ISA: after expiry of the six-month period under
Rule 161(2), even if acceleration has been requested under the
PACE programme. In order for the supplementary European search
to start immediately, on entry into the European phase the applicant
must explicitly waive the right to communications pursuant toRules 161(2) and 162(2) and pay any claims fees due (see the noticefrom the EPO dated 30 November 2015, OJ EPO 2015, A93).

If the EPO has invited the applicant to pay further search fee(s) under
Rule 64(1), second sentence, or 164(1)(b), the final search report under
Rule 64(1), last sentence, or 164(1)(c) cannot be drawn up until theapplicant's response to the invitation to pay further search fee(s) has been
received or until the respective time limit has expired.

Part E – Chapter VIII-17

Part E – Chapter VIII-18

Guidelines for Examination in the EPO

March 2023

4.2 Accelerated examination
Accelerated examination can, in principle, be requested at any time after
the examining division has assumed responsibility for the application(Rule 10(2), (3)).
For PCT applications entering the European phase where the EPO also
acted as (S)ISA, accelerated examination can, in principle, be requested at
any time, for example–

on entry into the European phase before the EPO, or–together with any response to the WO-ISA, IPER or SISR required
under Rule 161(1).

When accelerated examination is requested, the EPO makes every effort toissue the next office action within three months of receipt by the examining
division of the application, the applicant's response under Rule 70a or theend of the period under Rule 161(1), or the request for accelerated
examination (whichever is later).
In particular for PCT applications entering the European phase where the
EPO acted as (S)ISA, accelerated examination can only start after expiry of
the six-month period under Rule 161(1), even if acceleration has beenrequested under the PACE programme. In order for examination to start
immediately, on entry into the European phase the applicant must explicitly
waive the right to the communication pursuant to Rule 161(1) andRule 162(2) and fulfil all corresponding requirements (see the notice fromthe EPO dated 30 November 2015, OJ EPO 2015, A94).
The EPO strives to produce subsequent examination communications
within three months of receipt of the applicant's reply, provided that theapplication is still being processed under the PACE programme(see E-VIII, 4).
4.3 Patent Prosecution Highway (PPH)The Patent Prosecution Highway (PPH) enables an applicant whose claims
have been determined to be allowable to have a corresponding application
which has been filed with a PPH partner office processed in an accelerated
manner while at the same time allowing the offices involved to exploit
available work results. A request before the EPO must be filed before
substantive examination has begun.
A PPH request can be based on:(i)the latest PCT work product (WO-ISA or IPRP/IPER) established by
one of the PPH partner offices as ISA or IPEA (PPH based on PCT
work products); or(ii)

any national work product (office action indicating allowable claims)
established during the processing of a national application or of a
PCT application that has entered the national phase before one of
the PPH partner offices (PPH based on national work products).

March 2023

Guidelines for Examination in the EPO

Currently, the EPO's PPH partner offices are: JPO (Japan), KIPO (South
Korea), CNIPA (China), USPTO (USA), ILPO (Israel), CIPO (Canada), IMPI
(Mexico), IPOS (Singapore), IPA (Australia), SIC (Colombia), ROSPATENT(Russian Federation), MyIPO (Malaysia), IPOPHL (Philippines), EAPO
(Eurasia), INPI (Brazil) and , INDECOPI (Peru) and SAIP (Saudi Arabia).
The PPH programmes with ROSPATENT (Russian Federation) and EAPO
(Eurasia) have been suspended.
5. Accelerated processing of oppositions
In cases where an infringement action in respect of a European patent ispending before the Unified Patent Court or a national court of a contracting
state, a party to the opposition proceedings may request accelerated
processing. The request may be filed at any time. It must be filed in written
reasoned form. In addition, the EPO will also accelerate the processing of
the opposition if it is informed by the Unified Patent Court, the national courtor the competent authority of a contracting state that infringement actions
are pending (see the Notice of the EPO dated 17 March 2008,
OJ EPO 2008, 221).
6. Accelerated processing before the boards of appeal
Parties with a legitimate interest may ask the boards of appeal to deal with
their appeals rapidly. This option is also available to the courts andcompetent authorities of the contracting states (see Art. 10 Rules ofProcedure of the Boards of Appeal, OJ EPO 2019, A63, as amended by
OJ EPO 2021, A19).
7. Enquiries
In specific cases, parties to proceedings before the EPO may have aninterest in enquiring about the progress of the file and thus obtaining
information on when the next Office action is to be expected. A specificprocedure for enquiries is available to all parties to proceedings before the
EPO's departments of first instance, and applies to enquiries filed on orafter 1 November 2016 (see the notice from the EPO dated 2 August 2016,
OJ EPO 2016, A66).
Under this procedure, an enquiry is processed and replied to only if it isfiled online using EPO Form 1012. It may be submitted for only one
application or patent at a time. The EPO will promptly issue an
acknowledgement of receipt. Both the enquiries and the replies from the
EPO form integral parts of the file and, as such, are open to file inspection.
Specific parameters may have an impact on the handling time for enquiries.
For example, the non-payment of the renewal fee by the due date under
Rule 51(1) may delay the EPO's handling of an enquiry.
In general, the EPO will reply to enquiries by indicating the period within
which the next Office action may be expected, taking into account theworkload in the technical area concerned and the internal deadline for thecompletion of the pending action.

Part E – Chapter VIII-19

OJ EPO 2022, A44
OJ EPO 2022, A45
OJ EPO 2022, A58
OJ EPO 2022, A59

Part E – Chapter VIII-20

Guidelines for Examination in the EPO

March 2023

Nevertheless, in the following cases an enquiry will automatically cause the
EPO to issue the next action within one month from receipt of the enquiry:–

where the extended/partial European search report in respect ofEuropean patent applications filed on or after 1 June 2014 (includinginternational applications entering the European phase where theEPO did not act as (S)ISA) has not been issued within six months
from the filing date or from expiry of the period under Rule 161(2); or–

where an Office action in respect of an application which is being
processed under the PACE programme or for which a previous
enquiry has been made has not been performed within thecommitted period;

and within six months from receipt of the enquiry:–

where the extended/partial European search report in respect ofEuropean patent applications (including PCT applications entering
the European phase where the EPO did not act as (S)ISA) filed
before 1 June 2014 and which do claim priority (second filings) has
not been issued.

Unlike the PACE programme, the filing of enquiries does not imply ageneral acceleration of the prosecution of European patent applications.
Prosecution of the application can be accelerated by separately requesting
application of the PACE programme (see E-VIII, 4).
8.

Rule 15

Renunciation of rights

8.1 Withdrawal of application or designation
Applicants may withdraw their application at any time as long as theapplication is pending, provided that no third parties have proven to the
EPO that they have initiated proceedings concerning entitlement to theapplication pursuant to Rule 14. With regard to the pendency of an
application, see A-IV, 1.1.1.

Art. 79(3)Rule 39(2) and(3)

The same applies to the withdrawal of a designation (see also A-III, 11.3.8).
If all designations are withdrawn, the application is deemed to bewithdrawn.

Art. 87(4)Withdrawal of the application in due time before the eighteen-monthpublication has the advantage that the contents of the application do not
become known to the public (see A-VI, 1.2). If, furthermore, no rights havebeen left outstanding and the application has not served as a basis forclaiming a right of priority, a subsequent application for the same invention
can be considered as the first application for the purposes of determining
priority (see F-VI, 1.4.1). If the examination fee has been paid, it will be
refunded in full or in part (see A-VI, 2.5).
Where a patent application has been refused, proceedings are still pending
until expiry of the period for filing an appeal. On the day after, proceedings
are no longer pending if no appeal is filed. Therefore, an application which

March 2023

Guidelines for Examination in the EPO

Part E – Chapter VIII-21

is refused either in written or oral proceedings can still be withdrawn in thisperiod.
8.2 Withdrawal of priority claim
The priority claim may also be withdrawn (see F-VI, 3.5). If this is done
before the technical preparations for publication of the application arecompleted, the publication will be deferred until eighteen months after thedate of filing of the European application or, where multiple priorities areclaimed, the earliest priority date remaining (see A-VI, 1.1 and A-III, 6.3).
8.3 Statement of withdrawal
Any statement of withdrawal must be unqualified and unambiguous. It may,
however, be conditional upon, e.g. avoidance of publication or refund of theexamination fee. An unqualified and unambiguous withdrawal becomes
effective the day it has been received by the EPO.
If such a statement of withdrawal is made orally during oral proceedings,
then either a (handwritten) signed confirmation is to be submitted during theproceedings or the division has to confirm the withdrawal in the minutes
and read out the corresponding passage for confirmation in the oralproceedings. The withdrawal has effect from the date of the oralproceedings.
8.4 Surrender of patent
A patent may not be surrendered in opposition proceedings by the
proprietor filing a declaration of surrender with the EPO. Such a surrendermust be declared before the competent authorities in the designated statesin question (see D-VII, 5.1). Nevertheless, if a proprietor unambiguously
declares to the EPO the surrender (or abandonment or renunciation) of thepatent, this is deemed equivalent to a request that the patent be revoked(see also D-VIII, 1.2.5).

Rule 84(1)March 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-1

Chapter IX – Applications under the Patent
Cooperation Treaty (PCT)
1. General remarks
The EPO may be a "designated Office" or an "elected Office" for aninternational application filed under the Patent Cooperation Treaty (PCT)
designating "EP" (Euro-PCT application). If an applicant enters theEuropean phase without having requested international preliminary
examination under PCT Chapter II, the EPO will act as a "designatedOffice". If before entering the European phase the application wasprocessed under PCT Chapter II, the EPO will act in the European phaseas an ''elected Office''. Pursuant to Art. 153(2), an international application
for which the EPO is a designated or elected Office is deemed to be aEuropean patent application.
In addition to being a designated and, where appropriate, elected Office,the EPO may act as a receiving Office under the PCT within the terms set
out in Art. 151. It may also act as an International Searching Authority(ISA), as an International Preliminary Examining Authority (IPEA) under theterms of Art. 152 and/or as an International Searching Authority specified
for Supplementary International Search (SISA) under the PCT (see also the
EPO-WIPO Agreement, OJ EPO 2017, A115, OJ EPO 2018, A24, andOJ EPO 2018, A35). There are thus the following possibilities for aEuropean application filed under the provisions of the PCT:(i)the filing of the application and the international search take place atan office or offices other than the EPO (e.g. the Japan Patent Office).
The EPO is a designated Office;(ii)

the application is filed at another office (e.g. the United Kingdom
Patent Office) but the EPO performs the international search. The
EPO acts as International Searching Authority and is a designatedOffice;(iii)

the application is filed at the EPO, which also performs theinternational search. The EPO acts as receiving Office, International
Searching Authority and designated Office;(iv)

in the cases mentioned under (i) - (iii), the applicant files, in addition,
a demand for international preliminary examination with an IPEA
other than the EPO. The EPO is an "elected Office";(v)

in the cases mentioned under (i) - (iii), the applicant files, in addition,
a demand for international preliminary examination with the EPO as
International Preliminary Examining Authority. The EPO may carryout this function irrespective of whether it was the receiving Office. It
can, however, only act as an IPEA if the international search was
carried out by the EPO, the Austrian, Spanish, Swedish, Finnish or
Turkish Patent Office, the Nordic Patent Institute or the Visegrad
Patent Institute. The EPO thus acts as IPEA and is also an elected
Office;Art. 153(1)(a) and(b)
Art. 153(2)Art. 150(2)Art. 151
Art. 152
Rule 157
Rule 158

Part E – Chapter IX-2

Guidelines for Examination in the EPO(vi)March 2023

if the international search has been carried out by an office otherthan the EPO, the applicant may still request the EPO to perform asupplementary international search (SIS) in its capacity as SISA.

In case (i), there will be an international search report drawn up by anotheroffice. In cases (ii) and (iii), the international search report and the "written
opinionoftheInternational
Searching
Authority"(WO-ISA)(Rule 43bis PCT) will have been prepared by the search division of the
EPO.
For further details on the procedure before the EPO as RO, ISA, IPEA or
SISA, see the Guidelines for search and examination at the EPO as PCT
authority (GL/PCT-EPO) and the Guide for applicants: "'Euro-PCT Guide':
PCT procedure at the EPO".

Art. 150(2)Art. 27(1) PCT

2. EPO as designated or elected Office
In proceedings before the EPO relating to international applications, theprovisions of the PCT apply, supplemented by the provisions of the EPC. In
case of conflict, the provisions of the PCT prevail. The EPO cannot requirecompliance with requirements relating to form or contents of theinternational application different from or additional to those which areprovided for in the PCT.
As a result of the prevalence of the PCT provisions and the requirements ofArt. 150 and Art. 153 relating to international applications under the PCT in
the European phase, the instructions in the earlier chapters of these
Guidelines do not always apply to the procedure before the EPO as
designated or elected Office.
This section deals with the specific aspects of the procedure before the
EPO as designated or elected Office. It addresses, in subsections E-IX, 2.2
to 2.5 and 2.10, the formalities examination of international applications
upon entry into the European phase in so far as it differs from thatapplicable to European direct applications, by reference to the instructionsin the appropriate sections of Part A.
2.1

Rule 159

Entry into the European phase

2.1.1 Requirements for entry into the European phase"Entry into the European phase" is not an act in itself but a series of acts tobe performed. In order to initiate the European phase, the applicant must
perform the following acts within 31 months from the filing date or, if priority
has been claimed, from the earliest priority date:–

supply the translation if the Euro-PCT application was not publishedin one of the EPO's official languages (see E-IX, 2.1.3),–

specify the application documents on which the European grant
procedure is to be based,–

pay the filing fee provided for in Art. 78(2), including the additional
page fee for applications with more than 35 pages (see E-IX, 2.1.4),

March 2023

Part E – Chapter IX-3

Guidelines for Examination in the EPO–

pay the designation fee (and any extension or validation fees) if theperiod under Rule 39 has expired earlier (see E-IX, 2.3.11),–

pay the search fee if a supplementary European search report is tobe drawn up (see E-IX, 2.1.4 and E-IX, 2.5.3),–

file the request for examination and pay the examination fee if theperiod under Rule 70(1) has expired earlier (see E-IX, 2.1.4),–

pay the renewal fee for the third year if the period under Rule 51(1)has expired earlier (see E-IX, 2.3.12),–

where applicable, file the certificate of exhibition mentioned inArt. 55(2) (see E-IX, 2.4.3).

Depending on the circumstances of the particular application, the applicant
may additionally have to complete one or more of the following acts within
the 31-month time limit:–

pay any claims fees due (see E-IX, 2.3.8),–

file the designation of the inventor (see E-IX, 2.3.4),–

furnish the file number or the certified copy of the application(s) ofwhich priority is claimed (see E-IX, 2.3.5),–

furnish a sequence(see E-IX, 2.4.2),–

furnish the indications on the applicant mentioned in Rule 163(4) inrespect of any applicant (see E-IX, 2.3.1),–

appoint a professional representative (see E-IX, 2.3.1),–

furnish a copy of the results of any search carried out by or on behalfof the authority with which the priority application was filed(see A-III, 6.12).

listingcomplying

with

the

standard

Applicants are strongly recommended to use the most recent edition ofForm 1200 available as editable electronic document from the EPO website(epo.org), as part of the Online Filing software or as part of the new online
filing (CMS). For further details on the available filing methods see
A-VIII, 2.5. The form and any other documents must be filed with the EPO,
they may not be sent to the IB or to an authority of an EPC contracting
state.
The documents on which the proceedings in the European phase are to be
based can best be indicated in section 6 of Form 1200; further details may
be provided on an additional sheet. The applicant must make sure that theindications in section 6 and/or on the additional sheet correspond to any
indications given in the table for section 6 provided for the calculation of theadditional (page) fee to be paid for applications comprising more thanRule 159(1)(b)Part E – Chapter IX-4

Guidelines for Examination in the EPO

March 2023

35 pages (see A-III, 13.2). If the applicant has filed test reports(e.g. comparative examples in support of inventive step) with the EPO as
IPEA, it is assumed that the EPO may also use them in the European grant
proceedings.
If the applicant does not specify the application documents on which theEuropean grant procedure is to be based, the international application as
published as well as any amendments made in the international phase areconsidered to form part of the procedure. The additional fee to be paid for
an application comprising more than thirty-five pages will be calculated on
the basis of the international application as published; any amendment
pages not specified as replacing the corresponding pages of theinternational publication will be taken as additional pages (see A-III, 13.2).

Art. 23 PCT
Art. 40 PCT
Rule 49.1(a bis) PCT
Art. 24(1)(iii) PCT
Rule 159(1)Rule 160
Art. 121
Art. 2(1), item 12,
RFees

Art. 14(2) and (3),
153(4)
Rule 159(1)(a)2.1.2 Initial processing and formal examination; copy of theinternational application
The initial processing and formal examination of international applications
are carried out in the international phase by PCT authorities under the PCT.
Unless there is a specific request for early processing (see E-IX, 2.8), theEPO acting as a designated or elected Office may not process or examine
an international application prior to the expiry of 31 months from the date offiling of the application or, if priority has been claimed, from the earliest
priority date (31-month time limit). The EPO will, however, prior to the
expiry of the 31-month time limit, perform any purely administrative tasks
such as adding documents relating to the European phase to the file andrecording the professional European representative appointed to act onbehalf of the applicant in the European phase, to ensure the correct
notification of correspondence once the ban on processing has been lifted.
Since the EPO has not exercised the waiver referred to in
Art. 20(1)(a) PCT, a copy of the international application will be furnishedby the International Bureau. The EPO does not require the applicant tofurnish a copy of the international application under Art. 22 or 39 PCT, even
if the International Bureau has not yet communicated a copy under
Art. 20 PCT at the time the application enters the European phase(see PCT Gazette 14/1986, 2367).
2.1.3 Translation of the international application
Where the international application was not published in an official
language of the EPO, the applicant is required, in accordance with Art. 22
or 39 PCT and Rule 159(1)(a), to furnish a translation of the publishedapplication within a period of 31 months from the date of filing or, if priority
has been claimed, from the earliest priority date (31-month time limit). The
language of the translation determines the language of the proceedings
before the EPO.
The translation must include:

Rule 49.5(a) and (k)
PCT

(i)

the description (as originally filed; the title as established by the ISA
under Rule 37.2 PCT, if applicable),

Rule 49.5(a) PCT(ii)

the claims (as originally filed),March 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-5

(iii)

any text matter in the drawings except for the expression "Fig." (asoriginally filed),

NB:

In relation to items (i) to (iii) above, in the case of a correction oferroneously filed elements or parts under Rule 20.5bis(d) PCT by thereceiving Office (see C-III, 1.3), the translation must include both theerroneously filed application documents and the correct application
documents with an indication as to which pages relate to the correct
and which to the erroneously filed application documents,(iv)

the abstract (as published),(v)

any published request for rectification under Rule 91.3(d) PCT;(vi)

any text matter contained in the sequence listing, unless the text inthe sequence listing is available to the EPO in English; the translation
is to be furnished in the form of a copy of the complete sequencelisting complying with the applicable WIPO standard including atranslation of the text matter;

Rules 12.1(d) and49.5(a-bis) PCT(vii)

any references to deposited biological material furnished separately,

Rule 49.3 and 49.5(h)PCT(viii) if the EPO acts as designated Office, and the applicant wishes theamended claims under Art. 19 PCT to form the basis of further
proceedings,

Art. 19 PCT
Rule 49.3, 49.5(a)(ii)and (c-bis) PCT
Rules 3 and 137(4)

(ix)

–

the amendments under Art. 19 PCT in the form of a translationof the complete set of claims furnished under that provisionand the statement under Art. 19(1) PCT, if submitted to the IB,and,–the accompanying letter, indicating the basis for theamendments in the application as filed (Rule 46.5(b) PCT), so
as to allow the examiner to understand and take theamendments into account (see also E-IX, 3.4),

if the EPO acts as elected Office,–all annexes to the international preliminary examination report(IPER), i.e. any replacement sheets and accompanying lettersreferred to in Rule 70.16 PCT that allow the examiner tounderstand the amendments, regardless of whether protection
is sought for the same version of the application documents as
was the subject of the IPER,–

any amendments made to the claims under Art. 19 PCT (cf.
item (viii) above) if the applicant wishes these amendments toform the basis of further proceedings and they are notannexed to the IPER (for instance because they wereconsidered reversed by an amendment under Art. 34 PCT).

Rule 49.5(a), (d) andRule 49.5(f) PCT

Rule 49.5(a) PCT

Art. 39(1), 36(2)(b)and (3)(b) PCT
Rules 70.16
and 74.1(a) PCT

Rule 76.5(iv) PCT

Part E – Chapter IX-6

Guidelines for Examination in the EPO

March 2023

Art. 24(1)(iii) or 39(2)PCT
Rule 160(1)If the applicant does not furnish the translation of any of the items (i) or (ii)above within the 31-month period, the application is deemed to bewithdrawn under Rule 160(1).

Rule 49.5(c-bis), (g),(h) PCT

If the applicant does not furnish the translation of any of the items (iii) to (ix)above within the 31-month period, the EPO will invite him to furnish thetranslation within a two-month period from notification of the respective
communication under Rule 159(1)(a). The same applies if, in the case of acorrection of erroneously filed elements or parts under Rule 20.5bis(d) PCT
by the receiving Office (see C-III, 1.3), translations of the erroneously filed
application documents (in relation to items (i) to (iii) above) have not been
filed. If the applicant does not comply with this invitation

Art. 24(1)(iii) or 39(2)
PCT; Rule 160(1)–as regards items (iii) to (vii) above, the application is deemed to bewithdrawn;–

as regards translations of erroneously filed application documents (inrelation to items (i) to (iii) above) in the case of a correction oferroneously filed elements or parts under Rule 20.5bis(d) PCT by thereceiving Office, the application is deemed to be withdrawn;

Art. 39(2) PCT;
Rule 160(1)–as regards the replacement sheets referred to in item (ix) above, theapplication is deemed to be withdrawn;

Rule 49.5(c-bis) PCT;
Rule 3(2)–as regards the replacement sheets referred to in item (viii) above, theEPO will disregard the amendments under Art. 19 PCT;

Rule 49.5(c) PCT;
Rule 3(1)–as regards the accompanying letter and the statement referred to initem (viii) above, the EPO will disregard that letter and that statement
and may proceed under Rule 137(4) where applicable(see E-IX, 3.4);

Rule 49.5(c) PCT;
Rule 3(1)–as regards the accompanying letters referred to item (ix) above, theEPO will disregard those letters and may proceed under Rule 137(4)where applicable (see E-IX, 3.4).

Where the application is deemed to be withdrawn under Rule 160(1),Rule 112(2) applies mutatis mutandis. The loss of rights is deemed not tohave occurred if, within two months as from notification of thecommunication, the translation and a valid request for further processing(including the payment of the requisite fee) are filed (Art. 121 andRule 135(1), see E-VIII, 2).
Where an international application was filed and published in theinternational phase in an official language of the EPO, it is not possible tochange the language of the proceedings on entry into the European phaseby filing a translation of that application into either of the other two official
languages of the EPO (see G 4/08). In such cases, the language of theproceedings within the meaning of Art. 14(3) remains the language in which
the application was published by WIPO's International Bureau.

March 2023

Guidelines for Examination in the EPO

A translation, whether filed on entry into the European phase under
Art. 153(4) or in the international phase under Rule 12.3 or 12.4 PCT, may
always be brought into conformity with the application as filed. The
conditions set out in A-VII, 7 apply.
2.1.4 Filing fee, designation fee, request for examination and searchfee
Under Rule 159(1)(c), applicants must pay the filing fee, including any
additional fee for pages in excess of thirty-five (see A-III, 13.2), within aperiod of 31 months from the date of filing or, if priority has been claimed,from the earliest priority date. Further, under Rule 159(1)(d), they must pay
the designation fee within this period, if the time limit specified in Rule 39(1)has expired earlier. Under Rule 159(1)(f), the request for examination mustalso be filed within this period, if the time limit specified in Rule 70(1) has
expired earlier (see also E-IX, 2.5.2). Where a supplementary European
search report needs to be drawn up, a search fee must also be paid to the
EPO within this period (see also E-IX, 2.5.3). Failure to pay in due time thefiling fee, the additional fee, the search fee, the designation fee or theexamination fee, or to file the request for examination, means that theapplication is deemed to be withdrawn.

Part E – Chapter IX-7

Art. 153(4)Art. 14(2)Rule 159(1)Rule 160
Art. 2(1), item 12,
RFees

If the EPO finds that the application is deemed to be withdrawn for thisreason, it communicates this to the applicant (Rule 160(2)).
The communication under Rule 160(2) and the communication according toRule 112(1) are sent together in one and the same communication. In
response to this notification of a loss of rights, the applicant can request
further processing (see E-VIII, 2).
2.2 Instructions in Chapter A-II ("Filing of applications andexamination on filing")
The instructions in A-II, 1 ("Where and how applications may be filed") do
not apply to international applications, except where explicit reference ismade to international applications, including Euro-PCT applications.
The PCT requirements corresponding to those of A-II, 2 ("Persons entitled
to file an application") are more restrictive, as in general the applicant must
be a resident or national of a PCT contracting state and therefore no further
examination as regards entitlement is necessary.
The instructions in A-II, 3 ("Procedure on filing") do not apply.
The provisions for late filing of missing parts (Rule 56) or correction oferroneously filed application documents or parts (Rule 56a) completely
contained in the priority document (Rule 56) apply if the EPO is
designated/elected Office. A similar option exists Similar options exist
under the PCT in relation to the receiving Office (Rule 20.5 to 20.8 PCT).
Both These sets of provisions apply in parallel. For a request under Rule 56
or Rule 56a to be allowed by the EPO as designated/elected Office, it musthave been filed, together with the documents required under Rule 56(3) orRule 56a(4) respectively, within two months from the date of filing or from acommunication of the receiving Office under Rule 20.5(a) PCT or

Rule 56
Rule 56a
Rule 20 PCT

Part E – Chapter IX-8

Guidelines for Examination in the EPO

March 2023

Rule 20.5bis(a) PCT, as the case may be (see Rule 56(2) and Rule56a(3)), and the applicant must have effectively requested "earlyprocessing" under Art. 23(2) PCT (see E-IX, 2.8) before expiry of thetwo-month period under Rule 56(2) or Rule 56a(3).
Incorporations by reference by the receiving Office under Rule 20.5bis(d)PCT, i.e. without changing the filing date, will be effective before the EPO
as designated or elected Office for international applications filed on or after
1 November 2022 (see C-III, 1.3). For details see the notice from the EPO
dated 23 June 2022, OJ EPO 2022, A71. On entry into the European
phase, the normal procedures apply on the basis that the correct anderroneously filed parts are thus considered part of the application as filed.
Art. 24, 25, 26,
27 and 48 PCTRule 82bis and82ter PCT
Rule 139

In addition, Art. 26, 27 and 48 PCT, Rules 82bis and 82ter PCT andRule 139 EPC apply.
The date of filing (see A-II, 4 ("Examination on filing")) of a Euro-PCT
application is that accorded under the PCT by the PCT authority which
acted as the receiving Office, unless correction as a consequence of review
by the EPO as designated/elected Office under Art. 24 or 25 PCT or
Rule 82ter PCT applies (see E-IX, 2.9). In respect of the procedure forestablishing the date of filing in the case of elements or parts erroneously
filed under Rule 20.5bis(d) PCT, see C-III, 1.3. The formalities examination
upon entry into the European phase encompasses all checks required toverify that the requirements of Rules 159 and 163 have been met.
If the application is not deemed to be withdrawn, a copy of the application isreferred to the search division for drawing up any supplementary European
search report, if necessary (see E-IX, 3.1).
2.3 Instructions in Chapter A-III ("Examination of formal
requirements")
2.3.1 Representation, address for correspondence
The instructions in A-III, 2 ("Representation") apply to international
applications whether furnished in an official language or in translation. An
agent having a right to practise before the PCT International Authorities is
not necessarily authorised to act before the EPO (see Art. 27(7) PCT).
If the agents acting in the international phase are professional
representatives entitled to practise before the EPO, such representatives
are not automatically considered appointed for the European phase. If any
applicant has mandated them to act on their behalf also in the European
phase, the representatives need to identify themselves accordingly to the
EPO as designated/elected Office. The only case in which professional
representatives acting in the international phase are automaticallyconsidered appointed for the European phase is if they were validly
appointed in the procedure before the EPO as receiving Office, ISA or IPEA
and it is clear from the respective file that the appointment extends torepresentation in the European phase. The same principles apply whereapplicants having their residence or principal place of business in an EPC

March 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-9

contracting state are represented by an authorised employee (seeA-VIII, 1.3).
Applicants, in particular those not resident in an EPC contracting state, arerecommended to appoint a professional representative before the EPO ingood time, i.e. before initiating proceedings before the EPO as
designated/elected Office (see also E-IX, 2.1.2).
However, up to expiry of the 31-month time limit under Rule 159, applicants
having neither a residence nor their principal place of business within the
territory of one of the contracting states may either comply with any
requirement themselves or act through a professional representative
entitled to practise before the EPO. This means that applicants having
neither a residence nor the principal place of business within the territory of
one of the contracting states may themselves , within the 31-month time
limit, for example sign and file EPO Form 1200, submit amendments, file atranslation of the application, file a request for early processing, etc.
Applicants having neither a residence nor their principal place of businesswithin the territory of one of the contracting states who do not themselves
take the required steps for entry into the European phase within the
31-month time limit may, after expiry of that time limit, perform these andthe other procedural steps (e.g. filing a request for re-establishment ofrights) only through a professional representative entitled to practise before
the EPO.
In case of failure to appoint a professional representative where this isrequired, the EPO invites the applicant to do so within a time limit of twomonths. Until the EPO is informed of a (valid) appointment, any procedural
step taken by the applicant will be deemed not to have been taken. If the
deficiency is not corrected in due time, the application will be refused; theapplicant may request further processing (see E-VIII, 2).

Rule 163(5) - (6)If there is more than one applicant and the following information was notprovided for one or more of those applicants in the international phase andis still missing at the expiry of the 31-month time limit under Rule 159(1):Rule 163(4) - (6)(i)

address(ii)

nationality(iii)

state of residence or principal place of businessthe EPO will invite the applicant to furnish these indications within
two months. Failure to do so will lead to refusal of the application.
The same applies if the requirements for representation are not met at theend of the 31-month time limit, with the same consequence for failure tocorrect the deficiency in time. If the applicants fail to reply in time to theabove-mentioned invitation, they may request further processing.
Applicants (whether natural or legal persons) whose residence or principal
place of business is in an EPC contracting state and who act without aPart E – Chapter IX-10

Guidelines for Examination in the EPO

March 2023

professional representative may make use of an address forcorrespondence which is different from their address of residence.
See A-III, 4.2.1.
2.3.2 Physical requirements
Although compliance of an international application with the PCT
requirements as to form and content is, as a rule, ascertained during theinternational phase, the EPO may check Euro-PCT applications entering
the European phase for compliance with Rule 11 PCT. If the application
documents do not comply with this provision, the EPO will issue a
communication indicating any deficiencies and invite the applicant tocorrect them within a time limit of two months under Rule 58.
Since the translation filed under Rule 159(1)(a) is filed for the procedure
before the EPO as designated or elected Office, the translation mustcomply with the physical requirements as set out in A-III, 3 ("Physicalrequirements"). The requirements are in general identical with thecorresponding requirements of the PCT.
2.3.3 Request for grant
The PCT request corresponds in general to the EPO request for grant form
(EPO Form 1001) and provides for the entry of the information listed inRule 41(2), with the exception of the items referred to in
sub-paragraphs (e) and (f) thereof.

Rule 163(1)Rule 17.1 and17.2 PCT

2.3.4 Designation of inventor
The requirement, as set out in A-III, 5 ("Designation of inventor"), that thedesignation of inventor is filed in a separate document where the applicant
is not the inventor or the sole inventor has to be complied with irrespectiveof the language of the international application, unless the inventor has
already been named in the PCT request. Where an inventor has been
named in the PCT request, the latter cannot waive their right to bementioned in the published application. If the inventor has not been namedin the international application at the expiry of the period of 31 months fromthe date of filing, or, in the case of priority, from the earliest date of priority
claimed (31-month time limit), the EPO invites the applicant to file thedesignation of inventor within a period of two months. Failure to rectify thisdeficiency in time, leads to refusal of the application according toRule 163(6). Applicants will be notified of this decision according toRule 111. They may request further processing (see E-VIII, 2).
2.3.5 Claim to priority
The claim to priority (see A-III, 6 ("Claim to priority")) for an international
application refers to the date, or dates, claimed under the PCT.
2.3.5.1 Priority document
Normally, the copy of the previous application, referred to in A-III, 6.7,
i.e. the priority document, is furnished to the EPO as designated Office by
the International Bureau and not by the applicant. In accordance with
Rule 17.2 PCT, the International Bureau will be requested by the EPO tofurnish it with a copy as standard practice promptly, but not earlier thaninternational publication, or, where the applicant has requested earlyMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-11

processing (in accordance with Art. 23(2) PCT), not earlier than the date of
the request. Where the applicant has complied with Rule 17.1(a), (b) or(b-bis) PCT, the EPO may not ask the applicant himself to furnish a copy.
Where the file number or the copy of the previous application has not yet
been submitted at the expiry of the 31-month time limit, the EPO invites theapplicant to furnish the number or the copy within two months. However,Rule 53(2) and the decision of the President of the EPO dated
18 October 2018, OJ EPO 2018, A78, providing an exception to therequirement that a copy of the previous application be furnished(see A-III, 6.7), also apply to international applications entering theEuropean phase. Furthermore, where the applicant has complied with
Rule 17.1(a), (b) or (b-bis) PCT the EPO as a designated Office may not
ask the applicant himself to furnish it with a copy of the priority document(Rule 17.2(a) PCT, second sentence).

Rule 163(2)If the priority document is not on file, substantive examination may
nevertheless be started, provided that neither intermediate documents(published in the priority period) nor Art. 54(3) documents exist which cause
the patentability of the subject-matter claimed to depend on the validity ofthe priority right. However, no European patent may be granted until suchtime as the priority document is on file. In such a case, the applicant is
informed that the decision to grant will not be taken as long as the priority
document is missing.
On the other hand, the application may be refused without the priority
document being on file, provided that the relevant prior art is neither anintermediate document nor an Art. 54(3) document, the relevance of which
depends on the validity of the priority right. For more details on treatment ofsuch cases in examination see F-VI, 3.4.
Where a translation of the previous application into one of the official
languages of the EPO is required, it must be filed on request from the EPO
in accordance with Rule 53(3) (see A-III, 6.8 and subsections and 6.10).
2.3.5.2 Information on prior art
The applicant must, on entry into the European phase, file the results ofany search carried out by or on behalf of the office of first filing for eachapplication whose priority is claimed (see A-III, 6.12).
2.3.5.3 Restoration of priority
The provisions for restoration of priority right (see A-III, 6.6) also exist under
the PCT (Rules 26bis.3 and 49ter PCT). Under the PCT, restoration of theright of priority can be made either in the international phase before thereceiving Office (Rule 26bis.3 PCT) or upon entry into the European phase
before the EPO as designated or elected Office (Rule 49ter.2(b)(i) PCT).
The EPO only applies the "due care" criterion in accordance with its
practice under Art. 122 (Rules 26bis.3(a)(i) and 49ter.2(a)(i) PCT; see also
E-VIII, 3.2 and the notice from the EPO dated 7 November 2007,
OJ EPO 2007, 692). As a consequence, any request for restoration ofpriority rights granted by a receiving Office under the "unintentional"

Art. 88(1)Rule 53(3)Part E – Chapter IX-12

Guidelines for Examination in the EPO

March 2023

criterion does not have any effect before the EPO as designated/elected
Office (Rule 49ter.1(b) PCT).
Rule 49ter PCT
Art. 122
PCT Newsletter
9/2015, 10

As set out hereafter, if the applicant has already filed a request for
restoration of priority with the receiving Office, a (new) request need notalways be filed upon entry into the European phase.
If the priority right was restored by the receiving Office under the "due care
criterion", no new request need be filed with the EPO as designated/elected
Office, since the EPO will, in principle, recognise the decision of thereceiving Office. If, however, the EPO has reasonable doubt that therequirements for grant were met, it will notify the applicant accordingly. In
this communication the reasons for such doubt will be indicated and a time
limit will be set within which the applicant may submit comments.
Consequently, if the applicant wants the priority claim to be valid in theprocedure before the EPO as designated/elected Office, a request for
restoration must always be filed if, in the procedure before the receiving
Office:–no request for restoration of priority right was filed;–a request for restoration of priority right was rejected;–

a request for restoration of priority right was granted under the"unintentional criterion".

The EPO as designated/elected Office will grant a request for restoration ofpriority right only if the following requirements are met:(i)the filing date is within two months of the date of expiry of the priority
period;(ii)

the failure to claim the right of priority within the priority period
occurred in spite of due care required by the circumstances having
been taken;(iii)

a request for restoration of priority is filed within one month from thedate on which the 31-month time limit for entry into the European
phase expired or from the effective date of early entry into theEuropean phase (see E-IX, 2.8); where the application is deemed
withdrawn under Rule 160(1) for failure to comply with a requirement
under Rule 159(1), the request for restoration of priority may still be
filed together with a timely request for further processing in respect of
the 31-month time limit under Rule 159(1) or, failing this, with a timely
request for re-establishment of rights in respect of the period forrequesting further processing;(iv)

the fee for restoration of priority (Art. 2(1), item 13, RFees) is duly
paid within the time limit mentioned under point (iii); the further
considerations made under point (iii) also apply to this fee;March 2023

(v)

Guidelines for Examination in the EPO

Part E – Chapter IX-13

the request is accompanied by a statement of reasons for the failure
to file the international application within the priority period and ispreferably accompanied by any declaration or other evidence insupport of the statement of reasons.

2.3.6 Title of the invention
In relation to A-III, 7 ("Title of the invention"), the title need only meet theless demanding requirements of Rule 4.3 PCT rather than those set out in
A-III, 7.1 and 7.2.
2.3.7 Prohibited matter
As prohibited statements or matter may not necessarily be omitted under
Art. 21(6) PCT, the application must be examined to ensure that the
instructions in A-III, 8 ("Prohibited matter") are complied with. Where the
EPO is informed by the International Bureau that statements or matter wereomitted from the published PCT application, the Receiving Section has toensure that the corresponding material is excluded from the translation as
furnished by the applicant (see E-IX, 2.1.3).
2.3.8 Claims fee
The time limit for paying the claims fee referred to in A-III, 9 is 31 months
from the date of filing or, if priority has been claimed, from the earliest
priority date (Rule 162(1)).
If they have not been paid by then, under Rule 162(2), they may still be
paid within the six-month period under Rule 161(1) and (2). Rule 162(2)distinguishes between two situations in which the applicant must ensure
payment of claims fees before expiry of the six-month period:
Rule 162(2), first sentence, covers the situation in which the applicant does
not file amendments after expiry of the 31-month period and before expiryof the six-month period under Rule 161. In this case, the applicant mustensure that any claims fees not yet paid for the set of claims filed within the
31-month period are paid before expiry of the six-month period under
Rule 161.
Example:A Euro-PCT application X contains 27 claims on expiry of the 31-month
period. The applicants pay five claims fees within the 31-month period.
They must ensure that seven claims fees are paid before expiry of thesix-month period under Rule 161.
Rule 162(2), second sentence, covers the situation in which the applicants
file an amended set of claims after expiry of the 31-month period andbefore expiry of the six-month period under Rule 161. In this case, theymust compute the number of claims fees due on the basis of the claims on
file on expiry of the six-month period under Rule 161. Before expiry of thisperiod, they must ensure that any claims fees are paid for the number ofclaims on file on expiry of this period which exceeds the number of claims
for which claims fees were paid within the 31-month period.

Rule 162(2)Part E – Chapter IX-14

Guidelines for Examination in the EPO

March 2023

Example:A Euro-PCT application Y contains 27 claims on expiry of the 31-month
period. The applicants pay five claims fees within the 31-month period.
After expiry of the 31-month period and before expiry of the six-month
period under Rule 161, they file an amended set of 32 claims. The
applicants must compute the number of claims fees on the basis of theclaims on file on expiry of the six-month period, i.e. 32 - 15 = 17. Since they
have already paid five claims fees, they must pay 12 claims fees (17 - 5 =12) before expiry of the six-month period under Rule 161.
If there are more than 15 claims on file on expiry of the six-month period
under Rule 161, any of the sixteenth and each subsequent claim for which
no claims fee has been paid is deemed to be abandoned under Rule 162(4)(see also the notice from the EPO dated 16 December 2016,
OJ EPO 2016, A103).
Where a claims fee is not paid in due time, the claim concerned shall bedeemed to be abandoned. The loss of rights may be remedied by a request
for further processing (see E-VIII, 2). Features of a claim deemed to havebeen abandoned pursuant to Rule 162(4) and which are not otherwise tobe found in the description or drawings cannot subsequently bereintroduced into the application and, in particular, into the claims.
2.3.9 Drawings
The provisions of the EPC concerning the filing of drawings (see A-II, 5 and
A-III, 3.2) are identical with the corresponding provisions of the PCT and
therefore no supplementary examination is necessary, provided that theprovisions of Rule 11 PCT have been complied with (see also E-IX, 2.3.2).
2.3.10 Abstract
The abstract (see A-III, 10 ("Abstract")) is included in the copy of theinternational application supplied to the EPO.
2.3.11 Designation fee
The time limit for paying the designation fee is 31 months from the date offiling or, if priority has been claimed, from the earliest priority date(31-month time limit), if the time limit specified in Rule 39(1) has expiredearlier (Rule 159(1)(d)) (see A-III, 11.2.5 for further details). If, subsequent
to the receipt of the international application by the EPO and prior to thedate on which processing or examination may start, the regional
designation of all contracting states of the EPC is withdrawn, the Euro-PCT
application, in so far as it is deemed to be a European application pursuant
to Art. 153(2) and Art. 11(3) PCT, is deemed to be withdrawn.
For information on the requirements for extension or validation of aEuro-PCT application to states for which an Extension Agreement or a
Validation Agreement with the EPO has become effective, see A-III, 12.

Rule 159(1)(g)2.3.12 Renewal fees
The renewal fees for a Euro-PCT application are due in respect of the thirdand each subsequent year, calculated from the date of filing of theMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-15

Euro-PCT application as accorded by the receiving Office. If, according toRule 51(1), the renewal fee for the third year fell due within the 31-monthtime limit for entry into the European phase, the due date is deferred andthe fee may be paid without surcharge up to expiry of the 31-month time
limit (see A-X, 5.2.4).
2.4

Instructions in Chapter A-IV ("Special provisions")

2.4.1 Divisional applications
In relation to A-IV, 1 ("European divisional applications") there is noprovision in the PCT for filing divisional applications. One or more
European divisional applications may be filed in respect of subject-matter
contained in a pending Euro-PCT application, but not before the latter
application has entered the European phase (see A-IV, 1.1), i.e. not before
the time limit under Rule 159(1) (in conjunction with Art. 22(1) PCT and
Art. 22(3) PCT) has expired (see G 1/09, Reasons 3.2.5), and on condition
that any requirement of Art. 22(1) PCT which must be fulfilled within thattime limit for the application concerned is met (see J 18/09). Furthermore,divisional applications may be filed as from the date the applicant has filed
an effective request for early processing (see J 18/09, Reasons 9, andE-IX, 2.8).
The requirements of Rule 36 for filing divisionals must be complied with(see A-IV, 1). The divisional application must be filed in the language
specified in Rule 36(2) (see A-IV, 1.3.3). In order to avoid that theEuro-PCT application is deemed withdrawn at the time a divisional
application is filed, the respective requirements of Rule 159(1) must be
fulfilled within the relevant time limits (see also E-IX, 2.1.2, E-IX, 2.1.3 and
E-IX, 2.1.4).
2.4.2 Sequence listings
In relation to A-IV, 5 ("Applications relating to nucleotide and amino acidsequences"), where the Euro-PCT application discloses nucleotide oramino acid sequences, a sequence listing in electronic form (i.e. in
TXT format) drawn up in compliance with the applicable WIPO standard
must be available to the EPO as designated/elected Office on expiry of the
31-month time limit. As a rule, it will be available to the EPO if it was
contained in the international application under Rule 5.2 PCT or filed under
Rule 13ter PCT with the EPO acting as ISA/SISA or IPEA. It will also beaccessible to the EPO if it is made available by WIPO on PATENTSCOPE
and can be downloaded in a usable form.
If such a sequence listing is not available to the EPO and has not been filedby the applicant, at the expiry of the 31-month time limit, the applicant will
be invited to furnish the sequence listing in electronic form, i.e. in text
format (TXT), in accordance with the applicable WIPO standard and pay alate-furnishing fee within a period of two months (see Rule 163(3)and 30(3)). The sequence listing does not need to may not be filed
additionally on paper or in PDF format (see Art. 1 and Art. 5 of the decisionof the President of the EPO dated 9 December 2021 (OJ EPO 2021, A96)
28 April 2011, OJ EPO 2011, 372, and point 6 of the notice from the EPO

Rule 163(3)Part E – Chapter IX-16

Guidelines for Examination in the EPO

dated 9 December
OJ EPO 2013, 542).

2021(OJ EPO 2021,

March 2023

A97)

18 October 2013,

If the required sequence listing is not filed within the time limit set, theapplication is refused. The refusal may be remedied by a request for further
processing (see E-VIII, 2).

Rule 159(1)(h)Rule 312.4.3 Certificate of exhibition
As regards the requirements described in A-IV, 3 ("Display at an
exhibition"), for Euro-PCT applications the certificate of exhibition, where
relevant, is to be filed within the 31-month time limit for entry into theEuropean phase. If the document is not filed in due time, the applicant is
informed of this in a communication under Rule 112(1). The omission may
be remedied by a request for further processing, which will be granted if
within two months from notification of the communication the certificate is
furnished and the fee for further processing is paid (see E-VIII, 2).
2.4.4 Biological materialWith respect to A-IV, 4 ("Applications relating to biological material"), noremedy is available before the EPO as designated/elected Office uponentry into the European phase if the specific requirements for the sufficient
disclosure of the invention have not been met in the international phase. If,
however, on filing the international application a reference to the deposit of
biological material complying with Rule 31 was made but no proof of thedeposit in the form of a copy of the deposit receipt issued by the depositary
institution was submitted, the applicant is strongly advised to do so uponentry into the European phase. See also F-III, 6.5.
If the Euro-PCT application was not published by the IB in an official
language of the EPO, the biological material referred to in the application isavailable upon request to any person (only) from the date of publication of
the translation by the EPO (see E-IX, 2.5.1). In this case, if the applicant
files the statement under Rule 32(1) before the technical preparations for
publication of the translation by the EPO are completed, the biologicalmaterial concerned will be made available only by the issue of a sample toan independent expert nominated by the requester (see A-IV, 4.3).
2.5 Instructions in Chapter A-VI ("Publication of application; request
for examination and transmission of the dossier to examining
division")

Art. 153(3) and(4)
Rule 159
Art. 67

2.5.1 Publication of the international application
The international publication of a Euro-PCT application in an official
language of the European Patent Office takes the place of publication of
the European patent application and will be mentioned in the European
Patent Bulletin. If the international publication of the Euro-PCT application
is in another language, a translation into one of the official languages mustbe filed with the EPO within 31 months of the priority date (Art. 22(1) PCT
and Rule 159(1)(a)), see E-IX, 2.1.3. The EPO will publish the translation of
the application submitted by the applicant upon entry into the European
phase. In that case the provisional protection is, subject to Art. 67(2) andMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-17(3), only effective as from the date of publication of the translation by the
EPO.
The translation of the international application is published together with thebibliographic data as an A document and includes all documents that werepart of the international publication as originally published:–

the description as originally filed;–the claims as originally filed;–

any claims amended under Art. 19 PCT, including any related
statement of which a translation has been filed (see E-IX, 2.1.3,
items (viii) and (ix));–

any drawings as originally filed;–

the sequence listing forming part of the description;–

the abstract;–

any appendices to the application;–

any certificate(s) of the deposit of biological material;–

the translation of the international search report (Rule 44bis.3 PCT).

The mandatory translation of the annexes to the IPER and any
amendments to the application documents filed on or after entry into theEuropean phase are not published.
If Rule 20.5bis(d) PCT applies (see C-III, 1.3), the publication will comprisethe translation of both the erroneously filed application documents and thecorrect application documents. The front page of the publication will makereference to the fact that the notification of incompatibility under
Rule 20.5bis(d) PCT applies to the application if the application was filed
between 1 July 2020 and 31 October 2022. The notification ofincompatibility was withdrawn with effect from 1 November 2022 and is nolonger indicated for applications filed on or after that date.
Pursuant to Art. 153(6), the international search report takes the place of
the European search report. Once the supplementary European search
report has been drawn up, this will be mentioned in the European Patent
Bulletin. The supplementary search report itself is not published but isavailable via file inspection (see A-XI, 2.2).
If the translation is not supplied, the application is to be deemed withdrawn(see E-IX, 2.1.3). Furthermore, in this case, the application which has been
published under the PCT is not considered as comprised in the state of theart in accordance with Art. 54(3) pursuant to Rule 165 (see G-IV, 5.2).

Rule 160(1)Rule 165

Part E – Chapter IX-18

Art. 153(6)Art. 150(2)Rule 159(1)(f)Guidelines for Examination in the EPO

March 2023

2.5.2 Request for examination
The time limit under Rule 70(1) for filing the request for examinationreferred to in A-VI, 2 runs from the date of publication under Art. 21 PCT of
the international search report. However, this time limit will not expire
before the time prescribed by Rule 159(1)(f) (31-month time limit). See also
E-IX, 2.1.4.
European substantive examination must normally not begin before expiry of
the 31st month from the earliest priority date (Art. 23(1), 40(1) PCT). The
only circumstance in which examination may begin earlier is if the applicant
has expressly so requested (see E-IX, 2.8) and if any required
supplementary European search report is available.

Rule 70(2)2.5.3 Supplementary European search
If a supplementary European search report has to be drawn up in respectof an international application which is deemed to be a European patentapplication, the applicant is entitled to receive the invitation provided for in
Rule 70(2) (see A-VI, 2.2, third paragraph, and J 8/83). A time limit ofsix months from the notification of this communication is set for filing theconfirmation required under Rule 70(2) and for response to the search
opinion accompanying the supplementary European search report(Rule 70a(2) and the notice from the EPO dated 15 October 2009,OJ EPO 2009, 533). Applicants making use of Form 1200 for entry into theEuropean phase may waive the right to be asked whether they wish toproceed further by ticking a check box in section 12.2 (see the notice fromthe EPO dated 7 July 2017, OJ EPO 2017, A74).
2.6 Reduction and refunds of fees in respect of international (PCT)
applications
See A-X, 9.3 and 10.2.

Art. 20(1)(a) PCT
Rule 44bis.2 PCT

2.7 Communication to the EPO as a designated Office
A copy of the application together with the international search report or adeclaration in accordance with Art. 17(2)(a) PCT is communicated by theInternational Bureau to the EPO as a designated Office in accordance with
Art. 20(1)(a) PCT; the EPO does not require the applicant to furnish a copyof the international application (Rule 49.1(a-bis) PCT). The EPO as adesignated Office will then examine the application for compliance with therequirements of the EPC (see in particular E-IX, 2.2 and 2.3).
The International Bureau shall communicate the International Preliminary
Report on Patentability (Chapter I of the PCT) and any informal comments
received from the applicant to the EPO as designated Office at 30 months
from the priority date.

Art. 23 PCT
Rule 44bis.2 PCT

2.8 Early processing
When acting as a designated Office, the EPO must not process or examine
an international application before expiry of the period applicable under
Art. 22 PCT (Art. 23(1) PCT). However, the EPO may, on the express
request of the applicant, process or examine an international application at
any time (Art. 23(2) PCT). If the International Bureau (IB) has not yet
transmitted to the EPO a copy of the international application, the ISR andMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-19

the WO-ISA, the applicant may but does not have to file with the IB arequest to do so. If necessary, the EPO will take care of this itself.
A request for early processing under Art. 23(2) or 40(2) PCT may be filedwith the EPO at any time before expiry of the 31-month time limit(Art. 22(3) PCT and Rule 159(1)). The request does not require a specificwording, but applicants must clearly express that they wish the processingof their application before the EPO as designated/elected Office tocommence early. Applicants using EPO Form 1200 may file a request byticking a check box in section 12.1 (see the notice from the EPO dated
7 July 2017, OJ EPO 2017, A74).

Art. 23(2) and40(2) PCTFor the request to be effective, applicants must comply with therequirements stipulated in Rule 159(1) as if the 31-month time limit expiredon the date they request early processing, i.e.: payment of the filing fee(including any additional fee under Art. 2(1), item 1a, RFees if theapplication comprises more than 35 pages), filing of a translation (if atranslation is required under Art. 153(4)), specification of the application
documents, and payment of the search fee (where a supplementary
European search report has to be drawn up under Art. 153(7)). Whichfurther requirements stipulated in Rule 159(1) must be complied withdepends on the date on which early processing is requested, since the(regular) time limits for paying the designation fee (Rule 39(1)) and therenewal fee (Rule 51(1)) and for filing the request for examination andpaying the examination fee (Rule 70(1)) may not have expired on the date
the request for early processing is filed. Therefore, if any of these time
limits is still running on that date (or, in the case of the renewal fee, if thedue date according to Rule 51(1) is later than that date), the request forearly processing will be effective without the requirement(s) concerned
having been complied with (Art. 153(2), Art. 11(3) PCT).

Rule 159(1)If applicants wish not only the processing of the application before the EPO
as designated/elected Office but also the examination of the application tostart, they must have filed a valid request for examination (including
payment of the examination fee), even if the time limit under Rule 70(1) has
not yet expired at the date of effective entry into the European phase, since
examination will be taken up only if a request for examination has beenvalidly filed (see E-IX, 2.5.2). Furthermore, if a request for examination is
filed before the EPO has, where applicable, sent the supplementary
European search report to the applicants, examination will start only uponreceipt of an indication from them that they wish to proceed further with theapplication and, if required, a response to the extended European search
report (see E-IX, 2.5.3).
For international applications filed between 1 July 2020 and 31 October
2022, In the case of a correction of erroneously filed elements or parts
under Rule 20.5bis(d) PCT by the receiving Office, which is not effective inproceedings before the EPO as designated/elected Office in accordancewith the EPO's declaration of incompatibility (Rule 20.8 PCT),. Thus,
applicants who want to make use of the abridged procedure (by requestingthat the correct application documents be disregarded or by indicating thatthey wish to pursue the application containing the correct application

Rule 20.5bis PCT
OJ EPO 2022, A3

Part E – Chapter IX-20

Guidelines for Examination in the EPO

March 2023

documents with the date of receipt of those application documents as thefiling date – see C-III, 1.3) must inform the EPO accordingly at the time therequest for early processing is validly filed or at the latest before thecommunication under Rules 20.8(c) and 82ter.1(c) and (d) PCT is issued.
As from 1 November 2017, the The automatic debiting procedure may be
used for effecting payment of the fees falling due on filing the request(see Annex A.1 and Annex A.2 to the ADA, Supplementary publication 3,
OJ EPO 2022 Supplementary publication 5, OJ EPO 2017). However,automatic debiting can only be performed if the EPO can establish whether
or not a page fee needs to be included as part of the filing fee (seeA-III, 13.2). This is only possible if the EPO has access to the documents
referred to in Art. 20 PCT, i.e. if:–

the international application has already been published at the time
the request for early processing is received,–

the EPO is the receiving Office, or–

the EPO is acting as (S)ISA or IPEA.

If none of the above documents is available to the EPO on the day therequest for early processing is filed, applicants are advised to choose
another means of payment. Otherwise the fees due will be debited on thedate of receipt of the documents referred to in Art. 20 PCT from theInternational Bureau (Rule 47.4 PCT) and the date on which the request forearly processing takes effect will be postponed to that date.
If pursuant to Rule 159(1)(h) a certificate of exhibition must be filed and thisrequirement is not met, this will not prevent the request for early processing
from being effective, but it will affect the prior art that the EPO takes into
account in the European phase.
If on the date the request for early processing is filed any necessary
requirement is not complied with, the request will be effective only as fromthe date on which all necessary requirements have been complied with.
If on the date the request for early processing is filed all necessary
requirements for entry into the European phase are complied with, therequest is effective and the Euro-PCT application will as from that date beprocessed in the same way as a Euro-PCT application which has entered
the European phase by fulfilling the necessary requirements of Rule 159(1)within the 31-month time limit and without a request for early processing
having been filed. On that date the international phase is thus terminated in
respect of the EPO as designated/elected Office (J 18/09, Reasons 13).
Moreover, since by filing an effective request for early processing theprocessing ban is lifted, as from that date it is no longer possible to claim
the 31-month time limit under Rule 159(1). For details see the notice fromthe EPO dated 21 February 2013, OJ EPO 2013, 156.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-21

2.9 Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or the International
Bureau2.9.1 Review by the EPO under Art. 25 PCT
The EPO may decide, in accordance with Art. 25 PCT, to allow aninternational application deemed to be withdrawn, or not accorded a filing
date, to proceed as a European application.

Art. 25 PCT, Rules 51
and 82ter PCT
Rule 159(2)

To obtain such a review by the EPO as designated Office, applicants musttake the following steps within the two-month time limit under
Rule 51.1 PCT:–

request the IB to send copies of documents in the files promptly to
the EPO as designated Office,–pay the filing fee under Rule 159(1)(c) and, where required,–

furnish a translation of the Euro-PCT application.

Applicants are recommended to undertake the remaining steps for entry
into the European phase under Rule 159(1) at the same time, possibly
together with a request for early processing (see E-IX, 2.8).
The formalities officer acting on behalf of the examining division iscompetent to take decisions in relation to these applications (see thedecision of the President of the EPO dated 12 December 2013,
OJ EPO 2014, A6), and the Receiving Section transfers copies of any
documents received from the International Bureau under the circumstancesof Art. 25(1)(a) PCT to the examining division. Where it is decided that theapplication can proceed as a European application, the search andexamination is carried out as for other applications, taking into account as
the date of filing of the application the date it was originally filed with the
PCT receiving Office and claiming the priority date of the international
application, as applicable.
2.9.2 Review by the EPO under Art. 24 PCT and excuse of delays
under Art. 48(2) PCT
Pursuant to Art. 24(2) PCT, the EPO as designated/elected Office may
maintain the application as a European application even if this is not
required by virtue of Art. 25(2) PCT (see also OJ EPO 1984, 565,
Reasons 4). The filing of a request under Art. 24(2) PCT is governed by thesame requirements as a request for review under Art. 25(2) PCT(see E-IX, 2.9.1), with the exception that the two-month time limit under
Rule 51 PCT does not apply (see J 19/16, Reasons 6). Such requests may
have to be combined with a request for re-establishment of rights under
Art. 122 or further processing under Art. 121 (see E-VIII, 2 and E-VIII, 3) as
the appropriate means of remedying the non-observance of a time limit
under the EPC.

Art. 24(2), 48(2),Rule 82bis PCTArt. 122, 121

Part E – Chapter IX-22

Rule 82ter.1(a) PCT

Guidelines for Examination in the EPO

March 2023

2.9.3 Rectification of errors made by the receiving Office or theInternational Bureau
If the applicant proves to the satisfaction of the EPO that the international
filing date is incorrect owing to an error made by the receiving Office or thatthe priority claim has been erroneously considered not to have been made,and if the error is such that, had it been made by the EPO itself, the EPO
would rectify it under the EPC, the EPO must rectify the error on theapplicant's request and treat the international application as if it had been
accorded the rectified international filing date or as if the priority claim had
not been considered not to have been made (see also E-IX, 2.9.1).

Art. 11(1)(iii)(d), (e),Rule 4.18, Rule20.5bis PCT, 20.6,
82ter.1(b) PCT

Further, if a receiving Office accords the international filing date on thebasis of incorporation by reference of missing parts under Rule 20.5 PCT,the EPO as designated/elected Office will review of its own motion whether
the requirements of Rule 82ter.1(b)(i)-(iii) PCT have been complied with. In
particular, the EPO will consider whether the element or part incorporated
by reference was indeed missing. For instance, where the international
application contained a description and a claim or claims on theinternational filing date, it is not possible to replace these elements withelements from a priority application. It is also not possible to add elementsfrom a priority application if this would result in the international application
having, for instance, two (or more) descriptions or two (or more) sets ofclaims. As of 1 July 2020, such cases may however be handled by thereceiving Office under Rule 20.5bis PCT (see E-IX, 2.9.4 for thedetermination of the filing date in such a case).

Rule 82ter.1(c), (d)PCT

If the EPO does not agree with the finding of the receiving Office, it will
notify the applicant that it intends to consider the (later) date on which themissing element or part was furnished as the international filing date in theEuropean patent grant procedure, giving the applicant the opportunity tocomment in accordance with Art. 113(1). In the case of missing parts, theapplicant may also request that the missing part concerned be disregardedin the European patent grant procedure. In that case, the missing part will
be considered not to have been furnished and the EPO will not treat theinternational application as if the international filing date had beencorrected.

Rule 20.5bis, 20.8(bbis) PCT

2.9.4 Determination of filing date in the case of erroneously filed
elements or parts of the international application
Rule 20.5bis PCT, which entered into force on 1 July 2020, allows
applicants to correct an erroneously filed element (description or claims) orpart of the description, claims or drawings (including all drawings)
contained in an international application. Following the entry into force of
new Rule 56a on 1 November 2022, the notification of incompatibility under
Rule 20.8(b-bis) PCT of this provision with the EPC legal framework has
been withdrawn. As a consequence, incorporation by reference by thereceiving Office under Rule 20.5bis(d) PCT, i.e. without changing the filing
date, will be effective before the EPO as designated or elected Office forinternational applications filed on or after 1 November 2022.
For international applications filed between 1 July 2020 and 31 October
2022, the limitation under the procedure described in E-IX, 2.2 andMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-23

C-III, 1.3 remains unchanged. As a result of the EPO's notification ofincompatibility under Rule 20.8(b-bis) PCT, if If the receiving Officeconsidered the correct application documents to be incorporated byreference under Rule 20.5bis(d) PCT, i.e. without changing the filing date,
this incorporation will not be effective in proceedings before the EPO as
designated/elected Office. For the procedure applied for establishing thefiling date and the application documents forming the basis of proceedings,
see C-III, 1.3.
2.10 Inspection of files
In its capacity as a designated Office, the EPO also allows access to its
files pertaining to the international phase of applications, provided thatinternational publication has taken place. The above applies
mutatis mutandis to the communication of information from the files.
In its capacity as elected Office the EPO allows access to its files (including
the entire PCT Chapter II file) relating to the international phase of
applications filed on or after 1 July 1998, provided international publication
has taken place and, as far as the PCT Chapter II file is concerned, theIPER has been completed.

Art. 30(2) PCT
Rule 94.2bis PCTRule 94.3 PCT

The above applies mutatis mutandis to the communication of informationfrom the files (see A-XI, 2 and A-XI, 3).
3.

The communication according to Rule 161

3.1 Applications for which a supplementary European search reportis prepared
Where the EPO has not drawn up an international search report (as ISA) ora supplementary international search report (as the authority charged withthe supplementary international search (SISA)), the application is subject toa supplementary European search under Art. 153(7) (see B-II, 4.3.2); a
supplementary European search report and search opinion are issued
accordingly (see B-XI, 1 and 2). The first communication is then issued asin C-III, 4.
In such cases, promptly after entry into the European phase, the applicant
is invited to amend the application within a period of six months (see thenotice from the EPO dated 29 June 2010, OJ EPO 2010, 406, and thenotice from the EPO dated 15 October 2009, OJ EPO 2009, 533). All
amendments and comments filed within this period will be taken into
account in drawing up the supplementary European search report and thesearch opinion. The supplementary European search will be based on thelast set of claims filed up to expiry of this period for which any claims fee
due is paid.
The applicant may, but is not required to, reply to the WO-ISA, IPER or
SISR drawn up by an authority other than the EPO, normally in the form ofamendments and/or comments filed with Form 1200 or in response to acommunication under Rule 161(2). If the applicant does reply to the
WO-ISA, IPER or SISR, the supplementary search report and the search

Rule 161(2)Part E – Chapter IX-24

Guidelines for Examination in the EPO

March 2023

opinion will be drawn up taking this reply into account (see B-II, 4.3 and
B-XI, 2).
For proceeding directly to supplementary European search without having
to wait until the six-month time limit under Rule 161(2) expires, applicants
may explicitly waive their right to a communication pursuant to Rules 161(2)and 162. No communication under Rule 161(2) or 162 is issued if, inaddition to the waiver, the applicant has already paid any claims fees due(see the notice from the EPO dated 5 April 2011, OJ EPO 2011, 354). If
not, the communication will be issued and the application will be processed
only after expiry of the six-month period, even if a request under the PACE
programme has been filed (see E-VIII, 4).
When preparing the first communication in examination for such cases, theexaminer may have to consider the international search report (with thecorresponding International Preliminary Report on Patentability (IPRP) or
the International Preliminary Examination Report (IPER)), any
supplementary international search report (SISR), any supplementary
European search report (with the corresponding search opinion) preparedby the EPO (see B-II, 4.3) and any reply filed in response thereto(see C-II, 3.1).

Rule 161(1)3.2 Applications for which no supplementary European search
report is prepared
Where the EPO has drawn up an international search report (ISR) or a
supplementary international search report (SISR), no supplementary
European search report is prepared (see the decision of the Administrative
Council of 28 October 2009, OJ EPO 2009, 594, and B-II, 4.3.1, B-II, 4.3.2).
In these cases, a written opinion of the ISA (WO-ISA) or a supplementaryinternational search report (SISR) with explanations under Rule
45bis.7(e) PCT and – if the EPO was also IPEA – an international
preliminary examination report (IPER) will already have been transmitted tothe applicant during the international phase.
The applicant is required to respond to the WO-ISA or SISR prepared by
the EPO or, where applicable, to the IPER prepared by the EPO as IPEA.
This does not apply where amendments or observations have already been
filed which can be considered to be a reply (subject to certain requirements,
see E-IX, 3.3.1). The time limit for response is six months from theinvitation according to Rule 161(1) and is not extendable.
The communication under Rule 161(1) is issued promptly after expiry of thetime limit for entry into the European phase and is combined with thecommunication under Rule 162(2) inviting the applicant to pay any claims
fees due (see E-IX, 2.3.8).
Failure to respond to the WO-ISA, SISR or IPER within this period (by filingamendments and/or comments) leads to the application being deemed to
be withdrawn according to Rule 161(1), unless one of the exceptions
described in E-IX, 3.3 applies. Further processing is available for this lossof rights (see E-VIII, 2). In all cases, the latest filed request on file after
expiry of the time limit according to Rule 161(1) will then be taken intoMarch 2023

Guidelines for Examination in the EPO

account when drafting the first communication (see E-IX, 4.3.2) or whenissuing the invitation under Rule 164(2) (see C-III, 3.1 C-III, 2.3), provided
that the application is not deemed to be withdrawn.
In order to proceed with the examination of the application without having to
wait until the expiry of the six-month time limit for response, applicants may
explicitly waive their right to a communication pursuant to Rule 161(1) andRule 162. Provided that, on entry into the European phase, they have also
already responded, where required, to the WO-ISA, the IPER or the SISR
and paid the claims fees, no communication under Rules 161 and Rule 162
will be issued (see the notice from the EPO dated 5 April 2011,
OJ EPO 2011, 354). If this is not the case, the communication will be
issued and the application will be processed only after expiry of thesix-month period, even in the presence of a request under the PACE
programme (see E-VIII, 4).
Where the EPO is an elected Office, the international preliminary
examination report and the documents attached to it must be considered inaccordance with E-IX, 4.3.
Where a translation of the priority document is required (see A-III, 6.8 and
F-VI, 3.4), an invitation to file it according to Rule 53(3) may be sent by theexamining division only after the period according to Rule 161(1) has
expired (see A-III, 6.8.2).
3.3 Exceptions where a reply to the Rule 161(1) invitation is not
required
In certain cases, even though the EPO was the ISA or the SISA, theapplicant is not required to respond to the communication under
Rule 161(1).
3.3.1 Earlier filed amendments or comments
A reply to the communication under Rule 161(1) may not be necessary
where amendments or observations have already been filed that can beconsidered to be a valid reply. This is the case in the following situations:
(i)

(ii)

If the applicant has filed new amendments and/or comments uponentry into the regional phase before the EPO, provided that–the applicant has indicated on entry into the European phasethat such amendments and/or comments are to form the basis
for further prosecution of the application (see E-IX, 2.1.1), and–they constitute a valid response (see B-XI, 8).

If the applicant filed amendments according to Art. 19 and/or 34 PCT
in the international phase, and if the EPO prepared the WO-ISA or
SISR but no IPER (either because the applicant did not demand PCT
Chapter II or because the IPEA was an office other than the EPO),
then these amendments are considered to constitute a response to
the WO-ISA or SISR, provided that the applicant

Part E – Chapter IX-25

Part E – Chapter IX-26

Guidelines for Examination in the EPO

March 2023–

has indicated on entry into the European phase that theseamendments are maintained,–

has provided a copy of the amendments under Art. 34 PCT,
filed with the IPEA other than the EPO, as well as any
necessary translations in the language of the proceedings.

If amendments have been filed under Art. 19 or 34 PCT and have beentaken into consideration in the drawing up of an IPER by the EPO acting as
IPEA, these are not considered to constitute a response to the IPER as
required by Rule 161(1); in these cases, the applicant is required torespond to the IPER within the six-month period according to Rule 161(1).
If the requirements of Rule 137(4) were not fulfilled for amendments
already filed, the required indications are to be made in reply to theRule 161(1) communication (see E-IX, 3.4).
In cases (i) and (ii) above, no communication under Rule 161(1) and 162 isissued if applicants have explicitly waived their right to these and havealready paid any claims fees due (see E-IX, 3.2).
3.3.2 Positive WO-ISA, SISR or IPER
Where the WO-ISA, any supplementary international search report (SISR)
or, where applicable, the subsequent IPER prepared by the EPO was
positive (according to the same principles explained for European search
opinions in B-XI, 3.9), the applicant is still sent a communication according
to Rule 161(1), but is not required to respond to it.
No communication under Rule 161(1) and 162 is issued if applicants have
explicitly waived their right to these and have already paid any claims feesdue (see E-IX, 3.2).
3.3.3 Rule 161 communication issued before 1 April 2010
In cases where the Rule 161 communication was already issued before
1 April 2010, there is no requirement to respond to the WO-ISA preparedby the EPO or to the IPER prepared by the EPO as IPEA; if the applicant
has not filed any amendments or comments upon entry into the regional
phase before the EPO, the first communication will essentially be based on
the content of said WO-ISA or IPER prepared by the EPO.
3.3.4 Voluntary reply to Rule 161(1) communication
In cases (i) and (ii) mentioned in E-IX, 3.3.1 and the case mentioned in
E-IX, 3.3.2 where the applicants are not required to respond to the
WO-ISA, SISR or IPER prepared by the EPO (in response to the invitation
under Rule 161(1)), they may still do so by filing further amendments
and/or comments if they so wish. Once again it is advisable that therequirements of Rule 137(4) are fulfilled for any such amendments when
they are filed, thus avoiding a further communication according toRule 137(4).

March 2023

Guidelines for Examination in the EPO

3.4 Rule 137(4) applies
In the case of Euro-PCT applications for which an international search
report or supplementary European search report has been drawn up by the
EPO since 1 April 2010, if amendments which are to form the basis forfurther examination were filed either during the Rule 161(1) time limit or
earlier, the requirements of Rule 137(4) must be complied with (theamendments must be identified and the basis for them in the application as
filed indicated). If the applicant has not yet complied with theserequirements on expiry of the time limit according to Rule 161(1), theexamining division may request him to provide this information within aperiod of one month, by issuing a communication according to Rule 137(4).
Failure to respond to this communication in time will lead to the application
being deemed to be withdrawn (see H-III, 2.1 and H-III, 2.1.1). The
examining division may send a Rule 137(4) communication before sending
a communication according to Art. 94(3) and Rule 71(1), (2) or (3).
Corresponding requirements exist for amendments made in theinternational phase (Rules 46.5, 66.8 and 70.2 PCT).
4.

Part E – Chapter IX-27

Rule 137(4)Examination procedure

4.1 At least one communication in examination
If deficiencies persist in the application even after applicants have filed their
response to the WO-ISA, supplementary international search report or
IPER (as required by Rule 161(1)), the examining division will in generalissue at least one communication according to Art. 94(3) and Rule 71(1)and (2) in subsequent examination proceedings and will consider theapplicant's reply thereto before issuing a decision or a summons to oralproceedings. This applies regardless of whether a communicationaccording to Rule 164(2)(a) has been issued. In exceptional cases,
summons to oral proceedings may be issued as the first action in
examination proceedings (see C-III, 5).
4.2 No examination of multiple inventions in EP phase
Although under PCT Chapter II, where the EPO is the IPEA, the applicant
can have multiple inventions examined in one IPER if further examination
fees have been paid (or if the examiner has chosen not to invite theapplicant to pay further fees), in the European procedure only one invention
will be examined.
In cases where protection is sought for an invention not covered by the(supplementary) international search report, by the supplementary
European search report or by a search carried out under Rule 164(2)because the search fee due was not paid, the examining division must
invite the applicant to limit the application to one invention covered by oneof these searches. The procedure under Rule 164(2) is set out in detail in
C-III, 3.1 C-III, 2.3.

Rule 164(2)If after receipt of the (supplementary) European search report or, whereapplicable, after a communication under Rule 164(2)(b) the applicant files
amended claims relating to an invention which differs from any of theoriginally claimed inventions and which does not combine with theseRule 137(5)Part E – Chapter IX-28

Guidelines for Examination in the EPO

March 2023

inventions to form a single inventive concept, an objection under
Rule 137(5) is raised (see also F-V, 7 and H-IV, 4 H-II, 6).
4.3 Substantive examination of a Euro-PCT application accompanied
by an IPER
The substantive examination is conducted in the same way as with anyother European applications. Where the EPO was the International
Preliminary Examining Authority, the international preliminary examination
will normally have been carried out by the examiner responsible for
examining the related Euro-PCT application.
Art. 14(1)The application to be examined will be accompanied by an international
preliminary examination report drawn up in one of the official languages of
the EPO. New documents in the original language may be attached inannex to the report (Art. 36(3)(a) PCT and Rule 70.16 PCT). The
application will also be accompanied by a translation of the annexes,
transmitted by the applicant, in the same language into which theinternational
preliminary
examination
reportwastranslated(Art. 36(3)(b) PCT).

Art. 41 and 42 PCT

The examination must be conducted in accordance with Art. 41 and
42 PCT, which stipulate that:

Rule 159(1)(b)Rule 161(i)the applicant must be given the opportunity to amend the claims, thedescription and the drawings within a time limit prescribed pursuant
to Rule 78.1(b) or 78.2 PCT (see also Rules 159(1)(b) and 161); and(ii)

the EPO cannot require that the applicant furnish copies, orinformation on the contents, of any papers connected with theexamination relating to the same application in any other elected
Office.

4.3.1 Comparative test results
Where the EPO has established the IPER and refers therein to thesubmission of test reports, applicants are taken to agree to the use of thesereports as the basis for proceedings before the EPO when they use thestandard form for entry into the European phase before the EPO as elected
Office, i.e. Form 1200. If the latter is not used or the IPER – referring to thetest reports – was established by another International Preliminary
Examination Authority, the applicant is invited to submit these reports for
the European application.
4.3.2 Basis for substantive examination
Normally, the documents which are indicated in the international
preliminary examination report as forming the basis for that report will also
form the basis for the substantive examination in the EPO as an elected
Office in the European phase. New documents (claims, description,
drawings) submitted during the international preliminary examination andreplacing the earlier filed documents will be attached to the international
preliminary examination report. If the documents attached to theinternational preliminary examination report are in a language other thanthe language of the proceedings of the European application in theMarch 2023

Guidelines for Examination in the EPO

Part E – Chapter IX-29

European phase, the applicant must be requested to file the documents inthe language of the proceedings within a fixed period.
The applicant may also request that the examination be based on the
documents in the international application as published or on amendments
made on entry into the European phase. If the declarations of the applicant
are unclear in this respect, the examiner will have to clarify the situation.
4.3.3 Consideration of the contents of the IPER
If the international preliminary examination report has been drawn up by the
EPO, it is to be regarded as an opinion for purposes of examination, andgenerally the first communication will be based on the opinion expressed in
the IPER and the applicant's response to it filed in accordance with
Rule 161(1) (if applicable, see E-IX, 3). Such an opinion may be departed
from if new facts relevant to assessing patentability are in evidence (e.g. if
further prior-art documents are to be cited or if evidence is produced of
unexpected effects), where the substantive patentability requirements
under the PCT and the EPC are different, where applicants provide
convincing
arguments,
appropriate
amendmentsorrelevant
counter-evidence in their response to the IPER according to Rule 161(1), or
conversely where the applicant provides amendments in response to the
IPER which introduce further deficiencies.
Examination reports drawn up by other International Preliminary Examining
Authorities must be examined carefully. If the reasons put forward in theinternational preliminary examination report are sound, they must not bedisregarded.

Rule 161(1)Rule 159

March 2023

Guidelines for Examination in the EPO

Part E – Chapter X-1

Chapter X – Decisions
1.

Basic principles of decisions

1.1 General remarks
Decisions subject to appeal are taken by the Receiving Section, theexamining divisions, the opposition divisions and the Legal Division. Unlessotherwise specified, the principles described in this chapter apply to allsuch decisions. They also apply to decisions taken by formalities officers towhom this work is entrusted (see the decisions of the President of the EPO
dated 12 December 2013, OJ EPO 2014, A6, and 23 November 2015,
OJ EPO 2015, A104).
According to Art. 113(1) EPC, decisions of the EPO may only be based on
grounds or evidence on which the parties concerned have had an
opportunity to present their comments.
This provision is intended to ensure that no party can be taken by surpriseby grounds for a decision against their application on which they did nothave an opportunity to present their comments.
1.2 Consideration of time limits
A decision may not be given until any time limit set has expired, unless all
the parties affected by the time limit expressly agree that it need no longer
be observed or have submitted their final opinions before it expires. The
decision to grant a patent may, however, be given once the applicant isdeemed to have approved the text submitted to him under Rule 71(5) andhas fulfilled all other formal requirements, even if the time limit set in theRule 71(3) communication has not yet expired.
Moreover, as a rule, decisions will not be given until an internal EPO time
limit (e.g. 20 days) following upon the official time limit (but from which theparties may derive no rights) has expired, so as to ensure that documents
received at the end of the period officially allowed have actually beenentered in the files when the decision is being taken and can be taken into
account in the decision.
With reference to submissions and applications received after expiry of atime limit, see E-VIII, 1.8.
1.3 Form and content
Decisions are to be produced in writing. The same applies to decisionsdelivered at the end of oral proceedings (see E-III, 9).
No complete rules can be laid down about the form and content ofdecisions, which will depend on the requirements of each particular case.
The written decision will contain:–

the names of the parties to the proceedings (applicant, proprietor,
opponents) and, if applicable, their representatives;Art. 106(1)Art. 113(1)Part E – Chapter X-2

Rule 113(1)Guidelines for Examination in the EPO

March 2023–

the order (operative part), and, if necessary;–

the facts and submissions;–the reasoning;–

the communication of the possibility of appeal (Rule 111(2)); and–the signature(s) and the name(s) of the employee(s) responsible.

Even in those cases in which the decision contains no communication of
the means of redress, an appeal can be filed if the decision is incorrect,
e.g. if the grant was not made on the basis of the documents that theapplicant had approved.
If the decision is produced by the employee responsible using a computer,the EPO seal may replace the signature. If it is produced automatically by acomputer the employee's name may also be dispensed with (Rule 113(2)).
1.3.1 Order
The order (or "operative part") of the decision, must clearly state therequest of the parties and the extent to which this request is complied with(T 756/14). It may be, for example, as follows:"The European patent application ... is hereby refused pursuant toArt. 97(2) EPC.";"The opposition to the European patent ... is hereby rejected."; or"The request for re-establishment of rights is hereby rejected".
1.3.2 Facts and submissions
Facts and submissions have to be given in so far as they are significant forthe decision.
Under facts, a brief description of the case and a summary of the main
reasons on which the decision is based and of the most important replies ofthe parties is given. These points, however, are to be covered in detail inthe subsequent reasoning.
1.3.3 Reasoning
The statement of grounds must first set out and substantiate the reasonsfor the decision, citing the individual EPC articles and rules involved.
For decisions taken by the examining or opposition division, see E-X, 2.6.
The deciding instance will draft the decision based on one or more grounds
forming the basis of the decision, as appropriate. It is essential that theparties have been given an opportunity to comment on all the grounds onwhich the decision is based.

March 2023

Guidelines for Examination in the EPO

When several grounds are used in the decision, it is imperative to link themin a logical way, in particular avoiding having a subsequent groundcontradict an earlier one. Furthermore, the chain of grounds must be
structured so that it starts with the main ground.
All significant arguments advanced by a party to the proceedings arecarefully examined and comprehensively discussed in the decision.
In individual cases, consideration may also be given to the reasoning of
those decisions which merely meet the requests of the parties. If, forexample, a number of reasons are invoked for a request forre-establishment, of which only one justifies re-establishment, a reasoned
decision on re-establishment may be appropriate, in order to clarify theofficial action.
2. Decisions taken by the examining or opposition divisions
In substantive examination, applicants must have an opportunity ofpresenting their comments on all the grounds invoked against theirapplication.
Before an application is refused by the examining division, the searchunder Art. 54(3) is completed (see also C-IV, 7.1).
In opposition proceedings, if the patent is to be revoked, it must be ensured
that the proprietor of the patent in particular is given sufficient opportunity to
defend himself and, similarly, if the oppositions are to be rejected or if,
despite the claims of the opponents, the patent is to be maintained inamended form, the opponents in particular must be given the same
opportunity. A decision may be based on grounds indicated in a documentfrom one of the parties, provided the document has been sent to the otherparties so that they have had an opportunity to comment.
If more than two months have elapsed between despatch of the document"only for information" and the issue of the decision, this generally meansthat parties have had sufficient opportunity to comment and their right to beheard has therefore not been infringed (T 263/93).
If the patent is to be maintained in amended form, there must be a text ofthe claims and description which has been approved by the patent
proprietor (D-VI, 2), and the opponent(s) must have had an opportunity tocomment on it.
2.1 ExamplesRight to be heard
The right to be heard is a right not just to present comments but also tohave those comments duly considered. Amendments and arguments
submitted by a party need to be considered, and the party must be given an
opportunity to comment on the grounds and evidence brought forward by
the examining division (see T 1123/04 and T 852/07). A document may not
be cited for the first time in a decision (see T 635/04) unless it has been
introduced during oral proceedings. The use of fresh arguments in adecision still based on grounds and evidence communicated beforehand is
not precluded (see T 268/00 and T 1557/07).

Part E – Chapter X-3

Part E – Chapter X-4

Guidelines for Examination in the EPO

March 2023

If a case is remitted from the boards of appeal for further prosecution, theexamining 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). If the facts and grounds
essential to a decision have been submitted by one party and if the party
whose case is to be rejected has been afforded sufficient time to comment,
the principle concerning the right to be heard set out in Art. 113(1) will havebeen respected. If the decision in opposition proceedings is to be based on
grounds which were raised in the examination proceedings but not in thenotice of opposition, the observations by the parties or the communicationsof the opposition division, these must be introduced (i.e. raised for
discussion) by the opposition division in the opposition proceedings before
the decision is given so as to afford the parties an opportunity to comment.
If the opposition is based on lack of inventive step, the proprietor of thepatent must expect that the prior art newly designated in the opposition
proceedings will be considered in conjunction with the prior art described in
the introductory part of an independent claim. However, if new facts andgrounds are introduced during the proceedings or if the facts and grounds
on which the envisaged decision is to be based were not stated so
unambiguously and clearly in the written submissions of the parties as togive a party occasion to comment, the party concerned must be given an
opportunity to submit an opinion and to produce evidence before thedecision is given.
A patent proprietor's right to be heard has not however been violated if, by
making only minor amendments to the claims in response to acommunication from the opposition division setting out the material
arguments against maintaining the patent as it stands, the result is that the
grounds for revoking the patent remain essentially unchanged, provided the
proprietor's comments have been duly considered.
In such a case, where the obstacles to maintenance have already been put
to the proprietor and continue to apply, the patent may be revoked
immediately, without any need to communicate again the full arguments on
which the decision would be based.

Art. 113(2)2.2 Authoritative text of documents
The EPO must decide upon the European patent application or theEuropean patent only in the text submitted to it, or agreed, by the applicant
or proprietor and last used as a basis for the proceedings. Consequently,
for example, an amended version proposed by the examining or opposition
division (see C-V, 1.1, D-VI, 4.2 and 7.2.1) may only be adopted as a basis
for the decision if it has been approved by the applicant or proprietor.
In the case of one or more auxiliary requests directed to alternative texts for
grant or maintenance of a patent, every such request qualifies as a text
submitted or agreed by the applicant or proprietor within the meaning ofArt. 113(2) (see T 234/86), and therefore must be dealt with in the orderindicated or agreed to by the applicant or proprietor, up to and including thehighest-ranking allowable request, if any.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter X-5

When considering such requests it is essential that they are treated in thecorrect order. Thus, for instance, if the only allowable request is an auxiliary
request, but is accompanied by a higher auxiliary request for oralproceedings (e.g. a request that oral proceedings be held if the main
request cannot be granted) then a communication under Rule 71(3) could
not be issued on the basis of the allowable request, but instead oralproceedings in accordance with the higher request would have to beappointed, or a further communication under Rule 71(1) issued(see E-X, 2.9). If the order of the requests is not clear from the applicant's
submissions, then it would be necessary to contact the applicant to clarify
the situation before proceeding.
2.3 Requirements as to form
Decisions taken by the examining or opposition divisions have to adhere to
the principles laid down in E-X, 1. Where a decision is produced by meansof a computer, the file copy contains the names and the actual signature(s)of the employee(s) responsible.
If, exceptionally, one or more division members cannot sign the decision,e.g. owing to extended illness, only a division member who was present at
the oral proceedings (preferably the chair) may sign it on their behalf(see T 243/87). However, in such a situation, a brief written explanation as
to why one member is signing on behalf of another must be provided(T 2348/19). A written decision signed by someone who did not take part in
the oral proceedings at which the decision was pronounced is not legallyvalid (see T 390/86).
The presentation of the facts and the submissions, the reasoning and thecommunication of the means of redress are generally omitted when adecision merely meets the requests of all the parties concerned; thisapplies in particular to the decision to grant, which is based on the
documents that the applicant has approved (Rule 71(5)). The same applies
when the patent is maintained in an amended form, because this ispreceded by a final interlocutory decision pursuant to Art. 106(2)concerning the documents on which the maintenance of the patent is to be
based (see D-VI, 7.2.2).
The decision must be drafted using only the language of proceedings inorder to meet the requirements of Rule 111(2). Arguments of parties inanother official language must be summarised in the language ofproceedings. Deviation is possible in exceptional cases only, such aswhere necessary to address questions of fact, evidence or law, for example
in relation to witness statements.
2.4 Facts and submissions
For general aspects relating to facts and submissions, see E-X, 1.3.2.
Facts and submissions which are irrelevant to the decision, e.g. requests
for amendment which are not maintained, are to be omitted. It must be
ensured that the facts and submissions are consistent with the contents ofthe minutes of oral proceedings (also see E-III, 10.3).

Rule 111(1)Part E – Chapter X-6

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March 2023

The facts and submissions must clearly indicate what is the subject of theapplication and show on which documents the decision is based. In
examination, this requirement is achieved by including a detailed reference
to the application documents which are subject to the decision, including, inparticular, any amendments to the claims or to the description as well as
maintained auxiliary requests. In addition, the examining division may cite
the text of any important claim(s) or passages of the description in thedecision. In opposition, the text of the independent claim(s) and otherespecially important claims or passages of the description on which thedecision is based must be cited verbatim in the language of theproceedings (Rule 3(2)) either by copying the text into the decision orannexing a copy of the claims. As regards the dependent claims, it may besufficient to refer to the file content.
2.5 Decision on the file as it stands
Applicants may request a decision "on the file as it stands" or "according to
the state of the file", e.g. when all arguments have been sufficiently put
forward in the proceedings and the applicant is interested in a speedy
appealable decision. C-V, 15 and subsections, describes the procedure to
be followed in case of such a request.
2.6 Reasoning of decisions
If the division is of the opinion that no patent can be granted, it will
substantiate this in a decision citing the individual EPC articles and rules
involved. For important general aspects relating to the reasoning ofdecisions, see the example below and E-X, 1.3.3.
Example:Often an application lacking an inventive step also lacks clarity. The
decision must clearly set whether the application is refused because thesubject-matter of the claims is unclear and would also lack inventive step
once clarified or whether it is refused because the subject-matter of theclaims lacks inventive step and would have to be clarified once theinventive step objection is overcome.
Art. 113(1)Rule 111(2)The reasoning for each of the grounds on which the decision is based must
contain, in logical sequence, those arguments which justify the order. It
must be complete and independently comprehensible, i.e. generally without
references. If, however, a question has already been raised in detail in aparticular communication contained in the file, the reasoning of the decision
may be summarised accordingly and reference may be made to therelevant communication for the details.
The conclusions drawn from the facts and evidence, e.g. publications, must
be made clear. In particular, there must be consistency between thereasons and the facts as set out in the decision and in the minutes (alsosee E-X, 2.4). The parts of a publication which are important for thedecision must be cited in such a way that those conclusions can bechecked without difficulty. Therefore, reference is made to each particularpassage in the publication. It is not sufficient, for example, merely to assert

March 2023

Guidelines for Examination in the EPO

that the cited publications show that the subject of a claim is known orobvious, or, conversely, do not cast doubt on its patentability.
The arguments put forward by the examiner during the proceedings formthe "skeleton" for the decision and already define a complete and unbroken
chain of reasoning leading to refusal. The decision may be based only on
reasons already communicated to the applicant (Art. 113(1)). The
applicant's arguments must be dealt with either point by point at theappropriate juncture in the chain of reasoning or en bloc at the end. The
latter approach is often preferable as it makes clear that the final result isbased solely on reasons already communicated to the applicant incompliance with Art. 113(1). In the part refuting the applicant's arguments,
the decision must make clear why none of those arguments persuaded theexamining division to depart from the final result.
It is particularly important that special attention be paid to important facts
and arguments which may speak against the decision made. If not, theimpression might be given that such points have been overlooked.
Documents which cover the same facts or arguments may be treated insummary form, in order to avoid unnecessarily long reasoning.
The need for complete and detailed reasoning is especially great when
dealing with contentious points which are important for the decision; on theother hand, no unnecessary details or additional reasons need to be given
which are intended to provide further proof of what has already been
proven.
The decision is a standalone document and must include the statement thatthe application is refused. This serves to indicate that, in case of several
grounds, all of them form the basis for the refusal.
The decisions will not contain any matter on which the parties have not had
an opportunity to comment.
2.7 Content
The decision normally deals with all independent claims of the valid
request(s) that were discussed during the proceedings. A single ground isenough to refuse an application, so it is not always necessary to deal withall the dependent claims. If however a particular dependent claim has been
discussed, the decision includes the relevant arguments.
Any additional requests still outstanding must be dealt with in the refusal
decision. If, for example, new oral proceedings were requested incircumstances where Art. 116(1), second sentence, applies, the decisionmust give the reasons for rejecting that request.
Formulations implying doubt or uncertainty, such as "seems" or"apparently", must be avoided in decisions.
2.8 Analysing the parties' arguments
All significant arguments advanced by a losing party to the proceedings arecarefully examined and comprehensively refuted in the decision. The

Part E – Chapter X-7

Part E – Chapter X-8

Guidelines for Examination in the EPO

March 2023

decision must substantiate the division's view that none of the submitted
arguments overcome the objections it has raised.
However, facts not in dispute need be mentioned only briefly. Arguments by
the parties which are clearly irrelevant to the issues involved do not need tobe discussed.
2.9 Main and auxiliary requests
If during examination proceedings a main and auxiliary requests havebeen filed (see E-X, 2.2) and none of these is allowable, the reasons for thedecision to refuse the application pursuant to Art. 97(2) must not be limited
to the main request, but must also comprise the reasons for the
non-allowability of each auxiliary request. If one of the requests isallowable, the communication pursuant to Rule 71(3) is to be issued on thebasis of the (first) allowable request and must be accompanied by a brief
indication of the essential reasons why the higher-ranking requests are notallowable or not admissible (see C-V, 1.1). If the applicant, in response to
the communication pursuant to Rule 71(3), maintains higher-ranking
requests which are not allowable or not admissible, a decision to refuse theapplication
pursuant
toArt. 97(2)willnormallybeissued(see C-V, 4.7 and 4.6.2); the reasons must set out the grounds for the
non-allowability or non-admissibility of each request which ranks higher
than the allowable request. In respect of the allowable request, the decision
to refuse must mention that applicants have failed to give their approval toit.
Similarly, if in opposition proceedings the proprietor has submitted inaddition to the main request one or more auxiliary requests, none of whichis allowable, the patent must be revoked and the decision must set out, inrespect of each request submitted and maintained by the proprietor, thereasons for not allowing it. Where one of the proprietor's requests directedto the maintenance of the patent in amended form is allowable, aninterlocutory decision is to be issued on the basis of the (first) allowable
request; it has to set out the reasons why this request meets therequirements of the EPC and, additionally, the reasons why thehigher-ranking requests do not.
In so far as a decision includes the rejection of any of the multiple requests,
such decision may not be taken until the applicant or proprietor has been
informed, with respect to each of these requests, of the reasons for notallowing them, so that the applicant or proprietor is not deprived of theopportunity to present comments (Art. 113(1) – right to be heard). Similarly,
an opportunity to comment must be granted to the opponent(s) with respect
to an auxiliary request before it is held allowable by an interlocutory
decision (see D-VI, 7.2).
Practical considerations will determine at which point in the decision theauxiliary request is dealt with.

Art. 114(2)Rule 116

2.10 Late-filed submissions
If an examining or opposition division has exercised its discretion under
Art. 114(2) or Rule 116 to refuse late-filed facts, evidence or requests, its

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Guidelines for Examination in the EPO

Part E – Chapter X-9

decision must give the reasons for its refusal. A mere reference to thediscretionary power given under Art. 114(2) or Rule 116 is not sufficient(see T 755/96). For details on how to exercise this discretion, see E-VI, 2
and H-II, 2.7.
2.11 Refusal to admit amendments under Rule 137(3)When, in exercising its discretion under Rule 137(3), the examining divisionrefuses to admit amended claims, it must give reasons for so doing. For
details on how to exercise this discretion, see H-II, 2.3 and H-II, 2.7.

Rule 137(3)

If no other requests are on file, then there is no text agreed by the applicant
and the application is to be refused under Art. 113(2).
3. Decisions which do not terminate proceedings – interlocutory
decisions
A decision that does not terminate the proceedings as regards one of theparties is termed an interlocutory decision. An interlocutory decision can
only be appealed together with the final decision, unless it allows separate
appeal.

Art. 106(2)The competent department will use its discretion as to the need for aninterlocutory decision (see, however, D-VI, 7.2.2 with respect to theinterlocutory decision for maintenance of a patent in amended form in
opposition proceedings). To avoid fragmentation of the proceedings, suchdecisions will be the exception rather than the rule and will be given only if
the duration or cost of the proceedings as a whole is thereby reduced. Theinterests of the parties will also be borne in mind as appropriate.
In the normal course, an interlocutory decision will be contemplated only forthe purpose of ruling that separate appeal may be made, as only in thisway can a decision be obtained on a preliminary point before the final
decision terminating the proceedings is reached. (The proceedings must be
suspended until the decision has become final.) It is especially important toallow separate appeal where the continuation of the proceedings depends
on a preliminary ruling on a fundamental point of law, e.g. where different
boards of appeal have given different rulings or conflicting decisions havebeen given by different examining or opposition divisions and no decision
on appeal has been given in the matter.
Interlocutory decisions must state the reasons on which they are taken(see E-X, 1.3.3).
If it is decided not to allow separate appeal, the reasons for this ruling may
be given in the final decision instead.
A ruling to allow a separate appeal must be part of the order of the decision(E-X, 1.3.1) (T 756/14).
4. Binding nature of decisions on appeals
If a department has to give a decision in a case which has already been
remitted by the board of appeal for further prosecution to that department, it
is bound by the ratio decidendi of the board of appeal, in so far as the facts,

Art. 111(2)Part E – Chapter X-10

Guidelines for Examination in the EPO

March 2023

e.g. the subject-matter of the patent and the relevant state of the art, arethe same.
An opposition division is not bound by a decision of a board of appeal on
appeal against a decision from an examining division (see T 167/93). The
exclusive phrasing of the last sentence of Art. 111(2), only mentioning theexamining division being bound by the decision on appeal against adecision of the Receiving Section, makes this clear. Opposition
proceedings are entirely separate from the examination proceedings, andthe opposition division is entitled to examine the facts, evidence andarguments anew, particularly since another party (the opponent) is now
involved. It, however, takes due notice of the assessment of these facts,
evidence and arguments as contained in the reasons of the decision of theboard of appeal.

Rule 111(2)Art. 119

5. Information as to means of redress
Decisions of the EPO which are open to appeal must be accompanied by awritten communication of the possibility of appeal. The communication mustalso draw the attention of the parties to the provisions laid down in Art. 106
to 108 and Rules 97 and 98, the text of which must be attached. The
parties may not invoke the omission of the communication.
6. Notification
Decisions must be notified as a matter of course (see E-II, 2).

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Guidelines for Examination in the EPO

Chapter XI – Impartiality of the examining or
opposition division
Members of the competent divisions may not take part in the decision on a
case:
(i)

in which they may have any personal interest (partiality for subjective
reasons) or(ii)

in respect of which the party may have good reasons to suspectpartiality (partiality for objective reasons).

For the objection to be admissible it must be raised immediately after theparty has become aware of the reason for it. The request must also be
accompanied by a reasoned statement of grounds setting out the facts andarguments in support of the objection and, where appropriate, anyevidence. Unsubstantiated and merely general statements, e.g. based on
the nationality of the examiner(s) concerned, are not admissible.
Any challenge to impartiality must be submitted to the competent division,
which will forward it to the responsible superior of the members of thedivision along with the statement of the member(s) concerned on the facts
and circumstances put forward by the party. The responsible superior will
decide on the challenge and issue a reasoned decision in writing.
If the challenge to impartiality has been raised in written proceedings andhas been considered allowable, the concerned member(s) of the division
is/are replaced. If the challenge has been considered either inadmissible or
not allowable, the proceedings will continue. In either case, the superior's
decision will be communicated to the parties as an annex to acommunication from the division or to the division's decision, and will bereferred to in the facts and submissions part of division's decision. reasons
are issued in writing. These reasons are part of the final decision and will
be appealable with it.
If the challenge to impartiality is raised in oral proceedings, the proceedings
are interrupted in order for the responsible superior to assess thechallenge. On the same day, the oral proceedings are resumed and theparties are informed on the outcome of the assessment. If the superiorconsiders the challenge is found allowable, the oral proceedings are thenadjourned. Proceedings will be continued by a division in which theconcerned member(s) is/are replaced. If the responsible superior holds thatthe challenge to impartiality is considered either inadmissible or notallowable, the division will inform the parties accordingly and the oralproceedings will continue. The parties will be informed of the reasons
during oral proceedings. These reasons become part of the final decision
and are appealable with it. In either case, the superior's decision will be
communicated to the parties, normally as an annex to the division's
decision, and will be referred to in the facts and submissions part of thatdecision.

Part E – Chapter XI-1

March 2023

Guidelines for Examination in the EPO

Part E – Chapter XII-1

Chapter XII – Appeals
1. Suspensive effectThis chapter deals in detail only with those questions which are relevant forinterlocutory revision. At this stage of the proceedings the department of
first instance is still competent.
Appeals shall lie from decisions of the Receiving Section, Examining
Divisions, Opposition Divisions and the Legal Division.

Art. 23(3)Art. 109

Art. 106(1)An appeal has suspensive effect. This means that decisions may not yet
become final and their effects are suspended. As the decision may not thenbe enforced, the following do not take place: entry in the Register ofEuropean Patents, mention in the European Patent Bulletin and, whereappropriate, publication of a new specification of the European patent.
2. Appeals after surrender or lapse of the patent
An appeal may be filed against the decision of the opposition division even
if the European patent has been surrendered or has lapsed for all thedesignated states.
3. Appeals against the apportionment of costs
The apportionment of costs of opposition proceedings cannot be the solesubject of an appeal. Parties to the proceedings who feel that they havebeen adversely affected by the apportionment of costs may therefore only
file an appeal against the decision on costs if they also lodge an appeal
against the decision on the opposition on other admissible grounds.
4. Appeals against the decision of the opposition division on the
fixing of costs
In accordance with Rule 97(2), the decision of the opposition division fixing
the amount of costs of opposition proceedings may be appealed if theamount is in excess of the fee for appeal.

Rule 98

Rule 97(1)Rule 97(2)Art. 13 RFees

5. Persons entitled to appeal and to be parties to appeal
proceedings
Any party to proceedings adversely affected by a decision may appeal. Anyother parties to the proceedings are parties to the appeal proceedings as ofright.

Art. 107

6. Time limit and form of appeal
Notice of appeal must be filed with the EPO within two months of the dateof notification of the decision appealed from. It must contain the name andthe address of the appellant as provided in Rule 41(2)(c), an indication of
the decision impugned and a request defining the subject of the appeal.

Art. 108Rule 6(4), (5)Rule 99(1)The notice is not deemed to have been filed until after the fee for appeal
has been paid in the amount laid down in the Rules relating to Fees under
the EPC. For appeals filed on or after 1 April 2018 by natural persons andentities referred to in Rule 6(4) and (5), i.e. small and medium-sizedenterprises, non-profit organisations, universities and public researchorganisations, a reduced fee for appeal is payable, provided that a

Rule 6(4), (5)Part E – Chapter XII-2

Guidelines for Examination in the EPO

March 2023

declaration of entitlement is filed at the latest by the time of payment of the
reduced fee (see the notice from the EPO dated 18 December 2017,
OJ EPO 2018, A5).
Rule 99(2)Within four months after the date of notification of the decision, a written
statement setting out the grounds of appeal must be filed. In the statementof grounds of appeal, the appellant must indicate the reasons for setting
aside the impugned decision or the extent to which it is to be amended andthe facts and evidence on which the appeal is based.
7.

Art. 109(1)Interlocutory revision

7.1 General remarks
If the department whose decision is contested considers the appeal to beadmissible and well founded, it must rectify its decision. This does not apply
where the appellant is opposed by another party to the proceedings.
The obligation or possibility of rectification may thus arise in connection
with a decision by the Receiving Section, the Legal Division, an examining
division or exceptionally an opposition division if all oppositions werewithdrawn and the proprietor has filed an appeal.

Art. 109(2)After receipt of the statement of grounds, only three months are available
for rectification of the decision by the department of the first instance. That
department must therefore consider the appeal with the highest priority andstart the examination on admissibility immediately, and if the appeal isconsidered admissible in the form in which it has been filed, the competentdepartment will start its examination on allowability immediately.
The department concerned will rectify its decision if convinced in the light of
the grounds of appeal that the appeal is admissible and well founded. This
could arise, for example, because:(i)the department failed to take due account of some of the material
available to it at the time the decision was made;(ii)

the department did not receive material filed at the EPO in due time
before the issue of the decision, owing to an office error; or(iii)

the decision of the department concerned does not appear to beincorrect, but the applicant presents new information or evidence orfiles amendments to the application, which overcome the objectionsof the decision under appeal (see T 139/87).

For the advantages of a decision covering more than one objection,
see E-X, 2.6.
In either case, whether the appealed decision is rectified or the appeal isremitted to the board, a decision issued by the examining or opposition
division may be signed only by the examiners belonging to the division at
the time of signature. If an examiner is absent for a long period or has left
the department, a new member must be appointed to the division.

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Guidelines for Examination in the EPO

7.2 Remittal to the board of appeal
If the appeal is not allowed within three months after receipt of thestatement of grounds, it must be remitted to the competent board of appeal
without delay, and without comment as to its merit. This means that the
department of first instance does not address any comments of substanceto the board. Internal notes made by division members about the merits of
the appeal are kept in the non-public part of the dossier and are not sent tothe board of appeal.

Part E – Chapter XII-3

Art. 109(2)The receipt of the statement of grounds of appeal is a prerequisite for theexamining division when deciding whether the appeal is well-founded. Suchstatements can be filed at any time within four months from the notificationof the decision (Art. 108). Therefore, the examining division will wait until all
the grounds are received before deciding whether to allow interlocutory
revision or to remit the appeal to the board to ensure that the full content of
the statement of grounds has been received.
7.3 Reimbursement of appeal fees
In the event of interlocutory revision, reimbursement of appeal fees will beordered by the department whose decision has been impugned if such
reimbursement is equitable by reason of a substantial procedural violation.
This is particularly the case when essential facts or evidence were nottaken into consideration in arriving at a decision, e.g. where a document
filed at the EPO in good time by the party concerned is not placed in the file
before a decision is reached or where the decision is based on facts orevidence on which the parties concerned had no opportunity of presenting
their comments. The appeal fee is to be reimbursed, even if this was not
explicitly requested by the appellant (see G 3/03).
If the decision is rectified by an interlocutory revision not because of any
substantial procedural violation but e.g. because the party concerned
submits amendments at the time of filing the appeal, there will be no
reimbursement of appeal fees.
If the department whose decision is contested considers the requirementsof Art. 109 for interlocutory revision to be fulfilled, but not the requirementsof Rule 103(1)(a) for reimbursement of the appeal fee, it must rectify its
decision and remit the request for reimbursement of the appeal fee to theboard of appeal for a decision (see J 32/95).
The request for reimbursement of the appeal fee will be remitted to theboard of appeal only if it was filed together with the appeal (see G 3/03 andT 21/02).
7.4

Examples7.4.1 No amended claims filed with the appeal
If the applicant has filed an appeal but no amended claims, the divisionchecks whether the decision was correct in substance. Interlocutory
revision is only allowed if the decision was not correct in substance. A
refund of the appeal fee is to be ordered if a substantial procedural violation
has occurred (see E-XII, 7.3). If interlocutory revision is made and newRule 103(1)(a)Art. 109

Part E – Chapter XII-4

Guidelines for Examination in the EPO

March 2023

objections arise, the division communicates these objections to theapplicant as often as necessary to reach a final decision on the file; this
could include holding oral proceedings (again) and/or a second refusal.
Example:The applicant points out in the letter of appeal that the examining division
has overlooked a request for oral proceedings.
The examining division looks at the file and notes that this was indeed thecase: interlocutory revision must be made, even if it results in a further
refusal after oral proceedings have been held. The appeal fee must be
refunded.
7.4.2 Amended main/single request filed with the appeal
If amendments clearly overcome the grounds for refusal, interlocutory
revision is granted even if further new objections arise. This is because theapplicant has the right to examination in two instances (see T 219/93).
Important criteria are (see T 47/90):
1.

the text is no longer the same2.

substantial amendments have been made.

"Substantial" amendments overcome grounds for refusal vis-à-vis the
documents already cited in the decision (e.g. example (d) below).
The examiner has the discretion to decide whether, in each particular case,the amendments to the claims are such that examination has to becontinued on a new basis, e.g. where a completely new line ofinventive-step argumentation would be necessary.
In arriving at this decision, the examiner takes into account all the grounds
mentioned in the original decision, including the main or supporting
arguments already raised in previous objections to patentability to which
the applicant has had an opportunity to respond and to which reference ismade in the grounds of refusal (e.g. objections mentioned in previous
communications, during personal consultation or at oral proceedings). This
is in the interest of procedural efficiency and to the benefit of the applicant(no second appeal fee necessary, see T 2445/11).
If amendments made to the independent claims clearly do not meet therequirements of Art. 123(2), interlocutory revision is not granted, but thedivision sends the file to the boards of appeal. If there are doubts as towhether the amendments meet the requirements of Art. 123(2) or theamendments clearly meet the requirements of Art. 123(2), the divisionchecks whether the amended claims overcome the ground(s) for refusal as
indicated above.

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Guidelines for Examination in the EPO

Examples:(a)

The applicant has included a wording that has already beensuggested by the examiner, the new claims are ready for grant but
the description needs to be adapted: interlocutory revision must be
granted since the grounds for the refusal have been overcome.

(b)

Refusal for lack of novelty only. New claims are clearly novel but
not inventive. The question of inventive step had not been raised in
the decision or in the previous procedure: there must be aninterlocutory revision.

(c)

Refusal for lack of novelty. New claim 1 filed which includes afeature from dependent claim 3. This claim had already been
discussed in the decision and was considered not to be inventive: nointerlocutory revision.

(d)Refusal for lack of novelty over D1. New claim 1 filed which
includes a feature from the description. This feature had not beenpreviously discussed per se; however, it is clearly disclosed in D1: nointerlocutory revision since the ground for refusal – lack of novelty
over D1 – has not been overcome.

(e)Refusal for lack of inventive step vis-à-vis D1 and D2. New
claims filed which include a feature from the description. This feature
had not been previously discussed, but is clearly disclosed in D1,
and therefore there is no change in the argumentation given: no
interlocutory revision since the ground for refusal – lack of inventive
step vis-à-vis D1 and D2 – has not been overcome.

(f)Refusal for lack of inventive step vis-à-vis D1 and D2. New claim
filed which includes five new features from the description. Thesefeatures have not been previously discussed. The examiner notesthat although these features are disclosed in D2, thelack-of-inventive-step argumentation would have to be revised:interlocutory revision is allowed, since (i) the applicant has madesubstantial amendments to overcome the objections raised in thedecision and (ii) the line of argumentation has to be revised.

(g)

Refusal for novelty vis-à-vis D1. New claims filed which clearly
relate to unsearched subject-matter and which do not combine withthe original searched claims to form a single general inventive
concept: no interlocutory revision because said claims cannot beallowed in the proceedings.

7.4.3 Main and auxiliary requests filed with the appeal
Interlocutory revision is never possible on the basis of an auxiliary request,
even if an auxiliary request would overcome the grounds for the decision(T 919/95).

Part E – Chapter XII-5

Part E – Chapter XII-6

Guidelines for Examination in the EPO

March 2023

Example:The main request is the same as the one refused (i.e. not amended).
However, the auxiliary request corresponds to a suggestion made by theexamining division and would thus be allowable. There can be nointerlocutory revision since the applicant has the right to have the main
request examined by the boards of appeal.
7.4.4 Response to communication pursuant to Rule 58 filed with theappealIf, in response to the Receiving Section's refusal of the application pursuant
to Art. 90(5), the related deficiencies are fully rectified so as to overcome
the grounds for refusal, interlocutory revision is granted by the Receiving
Section.
Example:On the date of filing, the application documents drawings did not comply
with the requirements set by the President under Rule 49(2) of Rule 46.
The application was subsequently refused (Art. 90(5)) since the applicant
filed the same poor-quality drawings in reply to the communication under
Rule 58. When filing an appeal complying with the requirements of Art. 108,
the applicant also files drawings of sufficient quality, thereby correcting the
deficiency on which the refusal was based. Since the underlying ground forthe refusal has been overcome and the reasoning in the decision underappeal no longer applies, the Receiving Section grants interlocutory
revision and does not refer the case to the boards of appeal.
8. Rules of Procedure of the Boards of Appeal
Details of the procedure before the boards of appeal, including on theacceleration of appeal proceedings, can be found in the Rules of Procedureof the Boards of Appeal (see OJ EPO 2019, A63, as amended by
OJ EPO 2021, A19). The Enlarged Board of Appeal has also adopted
Rules of Procedure (see OJ EPO 2015, A35).
9.

Remittal to the division after appeal

9.1
Orders on remittal
If a decision by an examining or opposition division is appealed, the boardof appeal may remit the case to the division under Art. 111(1). In suchcases, the exact wording of the orders must be complied with. Various
situations may arise:(a)

The case is remitted for grant or maintenance in amended or limited
form on the basis of a complete text which has been finally decided
by the board.

(b)

The case is remitted for the description to be brought into line withclaims whose wording has been finally decided by the board.

(c)

The case is remitted for further prosecution.

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Guidelines for Examination in the EPO

9.2
Consequences for the division
In situation (a) above, grant or maintenance is handled by the formalities
officer, and the dossier goes back to the division merely for checking theclassification and title and adding any references to supplementary
technical information (STIN) or newly cited documents (CDOC).
If the applicant requests further amendments under Rule 71(6), theapplication will be deemed withdrawn under Rule 71(7) as the procedure
under Rule 71(6) cannot be applied in view of Art. 111(2).
Where the case is remitted with the order to grant, or maintain, the patenton the basis of documents with handwritten amendments, the formalities
officer on behalf of the competent division invites the applicant, or
proprietor, to file a formally compliant version of the amended text under
Art. 94(3) or Rule 82(2), as the case may be (see E-III, 8.7.2 andE-III, 8.7.3, respectively).
In situation (b) above, the board has taken a final decision on the wordingof the claims which ends the matter. The division can no longer amend theclaims or allow the applicant or proprietor to do so, even if new facts(e.g. new relevant citations) come to light (see T 113/92, Headnote No. 2,
and T 1063/92, Headnote, second paragraph). Corrections under Rule 139,
however, may still be allowable.
Applicants and proprietors should exercise all possible procedural economy
when bringing the description into line with the claims' wording as decided
by the board of appeal. Normally, therefore, completely retyped texts will
not be accepted (see T 113/92, Headnote No. 1).
In situation (c) above, the division whose decision was appealed is boundby the board's ratio decidendi, in so far as the facts are the same
(Art. 111(2)). However, new relevant documents or facts which come tolight must be taken into account. In particular:–(a) the parties must be given the opportunity to submit further
requests, and–(b) the division must check whether requests from examination or
opposition proceedings prior to the appeal (e.g. for oral proceedings)
are still outstanding – see T 892/92, Headnote.

Part E – Chapter XII-7

March 2023

Guidelines for Examination in the EPO

Part E – Chapter XIII-1

Chapter XIII – Request from a national court fora technical opinion concerning a European
patent1. General
At the request of the competent national court trying an infringement or
revocation action, the EPO is obliged, against payment of an appropriatefee, to give a technical opinion concerning the European patent which is the
subject of the action. The examining divisions are responsible for the issueof such opinions.
Only requests from a national court in a contracting state will be acceptedby the EPO. It is not, however, up to the EPO to check whether therequesting court is "competent" to deal with the action or not. The
examining division, however, checks whether a European patent is the"subject of the action".
The examining division responsible for the technical opinion gives theparties an opportunity to submit arguments in writing if the court so permits.
However, the parties have no right to be heard before the EPO.
Nevertheless, where the examining division considers it necessary, it may
invite the parties, via the court and provided that the court so permits, either
to be heard before the examining division or to submit supplementary
observations on specific points identified by the examining division. If theparties are heard, such a hearing is not considered to constitute oralproceedings within the meaning of Art. 116.
The technical opinion is not a decision of the EPO. The parties to thenational proceedings therefore have no right of appeal before the EPO
against an unfavourable opinion.
2. Scope of the technical opinion
The examining division is obliged to give a "technical opinion" uponrequest. This means that the division is bound to give an opinion only in so
far as the questions put are of a technical character. However, theexamining division may not be too restrictive in this regard but will attempt
to assist the national court as much as is reasonably possible, while
remembering that the actual decision on infringement or revocation is
exclusively a matter for the national court.
Generally speaking, the examining division attempts to give a technicalopinion on any question which is similar to those normally dealt with inEuropean substantive examination work, even when the question has alegal, as well as a technical, aspect. On the other hand, the examining
division will decline to make any specific statement on whether a patent isvalid or on whether it is infringed. It also does not give any opinion on theextent of protection (Art. 69 and the accompanying Protocol).
A request from a national court is to be expected to be clearly and precisely
formulated, so that the examining division will be in no doubt as to thequestions on which the court wishes to have an opinion. Since the court isArt. 25

Part E – Chapter XIII-2

Guidelines for Examination in the EPO

March 2023

responsible for deciding the issues of law involved in the questions andsince most questions include a mixture of legal and technical aspects, thecourt is expected where possible to separate clearly the legal aspects fromthe technical aspects upon which it seeks the opinion of the EPO.
3.

Composition and duties of the examining division

3.1 Composition
The composition of the examining division to which the request is referred
must be as defined in Art. 18(2). This means that the division must include
three technical examiners; normally a legally qualified examiner will also be
included. The main responsibility for dealing with the request up to the timeof formulating the opinion is entrusted to one technical examiner,
hereinafter referred to as the "primary examiner".
In order to guarantee that the opinion given is not influenced by earlier
proceedings within the EPO on the application/patent in question,
examiners who have taken part in such earlier proceedings as members ofan examining or opposition division will be excluded from the examining
division set up under Art. 25. Where this is not practicable, the national
court and the parties are informed of the proposed members of theexamining division under Art. 25 and of which among these members
participated in European examination or opposition proceedings on thecase. The court will be asked to state whether, in the circumstances, therequest for a technical opinion is maintained.
3.2 Duties
The primary examiner will act on behalf of the examining division and will
normally be responsible for issuing communications to the court. The
primary examiner also drafts the written opinion and circulates the draft tothe other members of the examining division for consideration. If any
changes are proposed in the draft and there are differences of view onsuch changes, the chair arranges a meeting to resolve the matter. The final
opinion is signed by all members of the division.
4. Language to be used
In principle the language to be used is the language of the proceedings ofthe European patent; however, if the court so requests, another official
language of the EPO may be used. At least the request itself, any
submissions from the parties, and any amendments to the patent must bein that language or translated into that language. The opinion is also
produced in that language. However, where appropriate, the examining
division will pay regard to the provisions of Art. 70(2) to (4).
Regarding documents to be used as evidence, the provisions of Rule 3(3)apply (see A-VII, 3).
The court or the parties are responsible for providing any translations which
may be required to satisfy the above conditions.
5. Procedure
It is envisaged that the procedure will normally involve the following stages.

March 2023

Guidelines for Examination in the EPO

5.1 Formalities check
The formalities officer will check whether the fee has been paid andwhether there are any obvious deficiencies as to the language
requirements. If there are any deficiencies in these respects, the formalities
officer will write to the national court informing it that no substantive work on
the opinion will begin until the deficiencies have been remedied. However,no time limit can be imposed on the court.

Part E – Chapter XIII-3

Art. 2(1),item 20, RFees

If the file indicates that the court permits the parties to submit written
arguments to the EPO and such arguments are not already on the file, theformalities officer will write via the court to the parties giving them a time
limit (say two months) for submitting such arguments.
5.2 Preliminary examination
When the formal requirements have been met, and, where appropriate, thearguments of the parties are on file, the case will be referred to thedirectorate responsible for the technical field of the patent in order for theexamining division to be established. Assuming that an examining divisionconsisting entirely of new members can be formed or, where this is notpossible, that the court maintains its request for a technical opinion(see E-XII, 3 E-XIII, 3.1), the primary examiner will perform a preliminary
examination to determine whether:(i)the questions put by the national court are such as the examining
division is competent to answer, at least in part; and(ii)

the papers filed are sufficiently complete and the necessarytranslations have also been filed.

If there are any deficiencies in these respects, the primary examiner will
write to the national court accordingly.
5.3 Withdrawal of the request
If the request for a technical opinion is withdrawn before the examining
division starts any substantive work on the opinion, 75% of the fee will be
refunded.
5.4 Establishment and issue of the technical opinion
After any deficiencies as referred to in E-XIII, 5.1 or E-XIII, 5.2, above havebeen met, the examining division establishes the technical opinion as soon
as possible.
The opinion is sent to the national court. Any papers received from thecourt which belong to the national proceedings are sent back with theopinion.
5.5 File inspection
The file of a request for a technical opinion is not a file within the meaningof Art. 128 and is not available for file inspection.

Art. 10 RFees

Part E – Chapter XIII-4

Guidelines for Examination in the EPO

March 2023

5.6 Appearance before the national court
If, after the opinion is issued, the national court asks the examining division
to appear before it, the court is informed that the EPO is willing to send one
member of the division provided that costs are paid and on theunderstanding that this member will be required only to answer questions
on the technical opinion given and will not be required to give an opinion on
additional matters unless notice in writing of these additional matters isgiven to the examining division at least one month before the appearance
before the court.

March 2023

Guidelines for Examination in the EPO

Part E – Chapter XIV-1

Chapter XIV – Registration of changes of name,transfers, licences and other rights
1. General
Pursuant to Rules 22 to 24 and 85 in conjunction with Rule 143(1)(w),
rights and transfer of such rights relating to an application or a European
patent are registered in the European Patent Register.
Transfers and changes of name are recorded as particulars of the applicant
in accordance with Rule 143(1)(f).
2. Responsible department
The Legal Division of the EPO bears the sole responsibility for theseregistrations (see the decision of the President of the EPO dated
21 November 2013, OJ EPO 2013, 600).

Art. 20

The Legal Division may entrust specific duties which do not require legal
expertise to formalities officers (see the decision of the President of the
EPO dated 21 November 2013, OJ EPO 2013, 601).
3. Transfer of the European patent application
A European patent application may be transferred for one or more of thedesignated contracting states.
Art. 72 is an autonomous provision which exclusively governs the formal
requirements of such transfers. The EPO registers a transfer of rights in
respect of a pending European patent application (see A-IV, 1.1.1 andJ 10/93) in the European Patent Register on request, upon fulfilment of theprerequisites of Rule 22. The request is not deemed to have been filed until
an administrative fee has been paid. The amount of the fee is determinedby the latest schedule of fees and expenses of the EPO (see epo.org).
Where the request relates to multiple applications, a separate fee has to be
paid for each application.
Rule 22 furthermore requires the production of documents providing
evidence of such a transfer. Any kind of written evidence suitable forproving the transfer is admissible. This includes formal documentary proof
such as the instrument of transfer itself (the original or a copy thereof) orother official documents or extracts thereof, provided that they immediately
verify the transfer (J 12/00). Art. 72 requires that, for an assignment, thesignatures of the parties appear on the documents submitted as evidenceof the transfer. Assignment documents filed electronically (see A-II, 1.2.2)
may, instead of handwritten signatures, bear qualified electronic signatures(see notice from the EPO dated 22 October 2021; OJ EPO 2021, A86).
Where a document is signed on behalf of a legal person, only such persons
as are entitled to sign by law, by the legal person's articles of association orequivalent or by a special mandate may do so. National law applies in that
respect. In all cases, an indication of the signatory's entitlement to sign,
e.g. his/her position within the legal entity where the entitlement to sign

Art. 71

Art. 72
Rule 22(1) and(2)

Part E – Chapter XIV-2

Guidelines for Examination in the EPO

March 2023

results directly from such a position, is to be given. The EPO reserves theright to request documentary proof of the signatory's authority to sign if thecircumstances of a particular case necessitate this. Where the entitlement
results from a special authorisation, this authorisation (a copy thereof,
which need not be certified) has to be submitted in every case. The EPO
will in particular examine whether the signatory is empowered to enter intoa legally binding contract on behalf of the legal entity. As a general rule, theauthorisation to represent a party in proceedings before the EPO within themeaning of Rule 152 EPC, be it an individual or a general authorisation, is
not as such considered to empower the representative to enter into such acontract.
If the evidence presented is found to be unsatisfactory, the EPO informs
the party requesting the transfer accordingly, and invites it to remedy thestated deficiencies within a given time limit.
If the request complies with the requirements of Rule 22(1), the transfer isregistered with the date on which the request, the required evidence or thefee has been received by the EPO, whichever is the latest. In case of aminor deficiency, i.e. if all requirements were present but not fulfilled
completely (e.g. the request was signed but the name and/or position of theperson signing were missing), once rectified the effective date is the date ofreceipt of the original request for registration.
Rule 22(3)On the above date, the transfer becomes effective vis-à-vis the EPO,
i.e. from that date the newly registered applicant is entitled to exercise theright to the European patent application in proceedings before the EPO(Art. 60(3)). If the transfer was for certain designated states only, Art. 118
applies.

Art. 20Once a transfer has been duly entered in the European Patent Register,
the registration cannot be undone, even if it appears that one or more
requirements were actually not fulfilled for reasons not apparent at the time
when the transfer was registered by the EPO, e.g. where doubts arise lateras to the entitlement of the person signing on behalf of one of the parties toenter such a transfer agreement (see decisions J 16/14 to J 22/14). The
original status quo is no longer restored until the valid legal situation has
been established. In the meantime, proceedings may have to be stayed
under Rule 14 or 78 until it is clear who the legitimate applicant/proprietor
is.

Rule 85

4. Transfer of the European patent
Rule 22 applies mutatis mutandis to the registration of a transfer of theEuropean patent during the opposition period or during opposition
proceedings.
5. Changes of nameMere changes of name, i.e. changes that do not involve a modification of
the legal identity of the applicant, can be entered in the European Patent
Register upon request and production of relevant documentary evidence aslong as the application (cf. A-IV, 1.1.1) or the proceedings before the EPO
are pending. Such registration is free of charge.

March 2023

6.

Guidelines for Examination in the EPO

Part E – Chapter XIV-3

Licences and other rights

6.1 Registration
A European patent application may give rise to rights in rem, may belicensed and may be the subject of legal means of execution. This includes
contractual licences only (Art. 73). Licences and other rights may begeographically limited to parts of the territories of the designatedcontracting states only.

Art. 71
Art. 73
Rule 23(1)Rule 24(a) and(b)

In the case of co-applicants, the registration of licences requires theconsent of each of the co-applicants.
Rule 22(1) and (2) apply mutatis mutandis to the registration of the grant,
establishment or transfer of such rights (see E-XIV, 3).
A licence will be recorded in the European Patent Register as an exclusive
licence if the applicant and the licensee so require. A licence will berecorded as a sub-licence where it is granted by a licensee whose licenceis recorded in the European Patent Register.
6.2 Cancellation of the registration
A registration of licences or other rights is cancelled upon request,
supported by documents providing evidence that the right has lapsed or by
the written consent of the proprietor of the right to the cancellation of thatright. Rule 22(2) applies mutatis mutandis, i.e. the cancellation is subject tothe payment of an administrative fee. Cancellation is only possible until
publication of the mention of the grant.

Rule 22(2)Rule 23(2)Part F
The European Patent Application

March 2023

Part F – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – Introduction

I-1

Chapter II – Content of a European patentapplication (other than claims)

II-1

1.

GeneralII-1

2.

Abstract

II-1

2.1

Purpose of the abstract

II-1

2.2

Definitive content

II-1

2.3

Content of the abstract

II-1

2.4

Figure accompanying the abstract

II-2

2.5

Checklist

II-2

2.6

Transmittal of the abstract to the applicant

II-2

2.7

Abstract in examination

II-2

3.

Request for grant – the title

II-3

4.

Description (formal requirements)

II-3

4.1

General remarks

II-3

4.2

Technical field

II-4

4.3
4.3.1
4.3.1.1
4.3.1.2

Background art
Format of background art citations
Examples of quotation for non-patent literature
Examples of quotation for patent literature

II-4
II-5
II-6
II-6

4.4

Irrelevant matter

II-6

4.5

Technical problem and its solution

II-7

4.6

Rule 42(1)(c) vs. Art. 52(1)

II-7

4.7

Reference in the description to drawings

II-8

4.8

Reference signs

II-8

4.9

Industrial application

II-8

4.10

Manner and order of presentation

II-8

Part F – Contents b

Guidelines for Examination in the EPO

March 2023

4.11

Terminology

II-9

4.12

Computer programs

II-9

4.13

Physical values, units

II-9

4.14

Registered trade marks

II-10

5.

Drawings

II-10

5.1

Form and content

II-10

5.2

Printing quality

II-10

5.3

Photographs

II-10

6.

Sequence listings

II-10

6.1

Reference to sequences disclosed in a database

II-11

6.2

6.2.3
6.2.4

Sequences that need to be itemised in the sequencelisting
Requirements relating to sequence length andenumeration of residues
Sequences comprising residues that are notspecifically defined (n or X)
Variants
The qualifier "mol_type"7.

Prohibited matter

II-15

7.1

Categories

II-15

7.2

Matter contrary to "ordre public" or morality

II-15

7.3

Disparaging statements

II-15

7.4

Irrelevant or unnecessary matter

II-15

7.5

Omission of matter from publication

II-16

Annex 1 Checklist for considering the abstract (seeF-II, 2.5)

II-17

6.2.1
6.2.2

II-11
II-11
II-12
II-13
II-14

Annex 2 Units recognised in international practice as
determined by the President under Rule 49(2) andcomplying with Rule 49(10) (see F-II, 4.13)
II-18
1.

SI units and their decimal multiples and submultiples

II-18

2.

Units which are defined on the basis of SI units but
are not decimal multiples or submultiples thereof

II-21

March 2023

3.

4.

5.

Part F – Contents c

Guidelines for Examination in the EPO

Units used with the SI, and whose values in SI are
obtained experimentally

II-21

Units and names of units permitted in specialised
fields only

II-22

Compound units

II-22

Chapter III – Sufficiency of disclosure

III-1

1.

Sufficiency of disclosure

III-1

2.

Art. 83 vs. Art. 123(2)

III-2

3.

Insufficient disclosure

III-2

4.

Burden of proof as regards the possibility of
performing and repeating the invention

III-3

5.

Cases of partially insufficient disclosure

III-3

5.1

Only variants of the invention are incapable of being
performed

III-3

5.2

Absence of well-known details

III-3

5.3

Difficulties in performing the invention

III-4

6.

Inventions relating to biological material

III-4

6.1

Biological material

III-4

6.2

Public availability of biological material

III-4

6.3

Deposit of biological material

III-5

6.4

Priority claim

III-7

6.5

Euro-PCT cases

III-7

7.

Proper names, trade marks and trade names

III-8

8.

Reference documents

III-8

9.

"Reach-through" claims

III-9

10.

Sufficiency of disclosure and Rule Rules 56 and
56aIII-1011.

Sufficiency of disclosure and clarity

III-1012.

Sufficiency of disclosure and inventive step

III-11

Part F – Contents d

Guidelines for Examination in the EPO

March 2023

Chapter IV – Claims (Art. 84 and formal
requirements)

IV-1

1.

GeneralIV-1

2.

Form and content of claims

IV-1

2.1

Technical features

IV-1

2.2

Two-part form

IV-1

2.3
2.3.1
2.3.2

Two-part form unsuitable
No two-part form
Two-part form "wherever appropriate"

IV-2
IV-3
IV-3

2.4

Formulae and tables

IV-3

3.

Kinds of claim

IV-3

3.1

Categories

IV-3

3.2

Number of independent claims

IV-4

3.3

Objection under Rule 43(2) or Rule 137(5)

IV-6

3.4

Independent and dependent claims

IV-7

3.5

Arrangement of claims

IV-8

3.6

Subject-matter of a dependent claim

IV-8

3.7

Alternatives in a claim

IV-8

3.8

Independent claims containing a reference to anotherclaim or to features from a claim of another category IV-8

3.9
3.9.1

Claims directed to computer-implemented inventions IV-9
Cases where all method steps can be fully
implemented by generic data processing means
IV-10
Cases where method steps define additional devices
and/or specific data processing means
IV-12
Cases where the invention is realised in a distributed
computing environment
IV-14

3.9.2
3.9.3

4.

Clarity and interpretation of claims

IV-16

4.1

Clarity

IV-16

4.2

Interpretation

IV-16

4.3

Inconsistencies

IV-17

4.4

General statements, "spirit of the invention",
claim-like clauses

IV-20

March 2023

Guidelines for Examination in the EPO

4.5
4.5.1
4.5.2
4.5.3
4.5.4
4.5.5

Essential features
Objections arising from missing essential features
Definition of essential features
Generalisation of essential features
Implicit features
Examples

IV-21
IV-21
IV-21
IV-22
IV-22
IV-22

4.6
4.6.1
4.6.2

Relative terms
Clarity objections
Interpretation of relative terms

IV-22
IV-22
IV-23

4.7

4.7.2

Terms such as "about", "approximately" or"substantially"
Interpretation of terms such as "about","approximately" or "substantially"
Clarity objections

4.8

Trade marks

IV-24

4.9

Optional features

IV-25

4.10

Result to be achieved

IV-25

4.11
4.11.1

Parameters
Unusual parameters

IV-26
IV-27

4.12
4.12.1

Product-by-process claim
Product claim with process features

IV-28
IV-29

4.13
4.13.1

Interpretation of expressions stating a purpose
IV-29
Interpretation of expressions such as "Apparatus for...", "Product for ... "IV-29
Interpretation of means-plus-function features("means for ... ")IV-29
Interpretation of expressions such as "Method for ..." IV-31

4.7.1

4.13.24.13.34.14
4.14.14.14.2

IV-23
IV-23
IV-24

Definition by reference to (use with) another entity
Clarity objections
Dimensions and/or shape defined by reference toanother entity

IV-32
IV-32

4.15

The expression "in"

IV-33

4.16

Use claims

IV-34

4.17

References to the description or drawings

IV-35

4.18

Reference signs

IV-35

4.19

Negative limitations (e.g. disclaimers)

IV-36

4.20

"Comprising" vs. "consisting of"

IV-36

4.21

Functional definition of a pathological condition

IV-37

IV-32

Part F – Contents e

Part F – Contents f

Guidelines for Examination in the EPO

March 2023

4.22

Broad claims

IV-37

4.23

Order of claims

IV-37

4.24

Interpretation of terms such as identity and similarity
in relation to amino or nucleic acid sequences
IV-38

5.

Conciseness, number of claims

IV-38

6.

Support in description

IV-39

6.1

General remarks

IV-39

6.2

Extent of generalisation

IV-39

6.3

Objection of lack of support

IV-39

6.4

Lack of support vs. insufficient disclosure

IV-40

6.5

Definition in terms of function

IV-41

6.6

Support for dependent claims

IV-41

Annex

Examples concerning essential features

IV-43

Chapter V – Unity of invention

V-1

1.

Introduction

V-1

2.

Requirement of unity of invention

V-1

2.1

Insufficient grounds for lack of unity

V-2

2.2

Division's approach

V-3

3.

Assessment of unity

V-3

3.1
3.1.1
3.1.2

Non-unity and prior art under Art. 54(3)Non-unity and prior art under Art. 54(3)Non-unity and prior art under Art. 54(2)

V-7
V-7
V-7

3.2
3.2.1
3.2.2
3.2.3
3.2.4
3.2.5
3.2.6
3.2.7

Grouping of inventions
V-7
Plurality of independent claims in the same category
V-7
Plurality of independent claims in different categories V-8
Dependent claims
V-8
Common dependent claims
V-9
Markush grouping (alternatives in a single claim)
V-11
Claims for a known substance for a number ofdistinct medical uses
V-13
Intermediate and final products
V-13

3.3
3.3.1

Reasoning for a lack of unity objection
Minimum requirements for reasoning of lack of unity

V-14
V-14

March 2023

3.4

Part F – Contents g

Guidelines for Examination in the EPO

Determination of the invention first mentioned in theclaims

V-15

Procedure in the case of lack of unity during
search

V-15

Provisional opinion accompanying the partial search
results

V-16

4.2

Consequences for the applicant

V-17

5.

Procedure in the case of lack of unity during
substantive examination

V-17

5.1

General principles

V-17

5.2

Objections to unsearched inventions

V-17

5.3

Review of non-unity findings

V-18

6.

Amended claims

V-18

7.

Euro-PCT applications

V-18

7.1

International applications without supplementary
search

V-18

4.

4.1

7.2

International applications with supplementary search V-19

7.3

International preliminary examination report (IPER)

V-19

7.4

Restricted IPER

V-19

Chapter VI – Priority

VI-1

1.

The right to priority

VI-1

1.1

Filing date as effective date

VI-1

1.2

Priority date as effective date

VI-1

1.3

Validly claiming priority

VI-1

1.4
1.4.1

First application
Subsequent application considered as first
application

VI-2

1.5

Multiple priorities and partial priorities

VI-3

2.

Determining priority dates

VI-5

2.1

Examining the validity of a right to priority

VI-5

2.2

The same invention

VI-6

VI-2

Part F – Contents hGuidelines for Examination in the EPO

March 2023

2.3

Priority claim not valid

VI-7

2.4
2.4.1

Some examples of determining priority dates
Intermediate publication of the contents of the priority
application
Intermediate publication of another European
application
Multiple priorities claimed for different inventions in
the application with an intermediate publication of
one of the inventions
A situation in which it has to be checked whether theapplication from which priority is actually claimed isthe "first application" within the meaning of Art. 87(1)

VI-7

3.

Claiming priority

VI-8

3.1

General remarks

VI-8

3.2

Declaration of priority

VI-9

3.3

Certified copy of the previous application (priority
document)

VI-9

3.4

Translation of the previous application

VI-9

3.5

Withdrawal of priority claim

VI-10

3.6

Re-establishment of rights in respect of the priority
period

VI-11

2.4.2
2.4.3

2.4.4

VI-7
VI-7

VI-8

VI-8

March 2023

Guidelines for Examination in the EPO

Chapter I – Introduction
Apart from the requirements of patentability (novelty, inventive step,industrial application and exclusions from patentability), a European patentapplication must also satisfy a number of other requirements. These
include substantive requirements such as sufficiency of disclosure (Art. 83),
clarity of the claims (Art. 84) and unity of invention (Art. 82) as well as
requirements of a more formal nature such as the numbering of the claims(Rule 43(5)) and the form of the drawings (as determined by the President
under Rule 49(2)) (Rule 46). These requirements are dealt with in thepresent Part F.
Part F also deals with the requirements relating to the right to priority. Thisis because, despite the fact that this issue is usually assessed only when it
has a potential bearing on a question of patentability (see G-IV, 3), it isnonetheless assessed independently of any issues of patentability.

Part F – Chapter I-1

March 2023

Guidelines for Examination in the EPO

Part F – Chapter II-1

Chapter II – Content of a European patentapplication (other than claims)
1. General
The requirements for a European patent application are set out in Art. 78.
The application must contain:

Art. 78(i)a request for the grant of a European patent;

Art. 78(1)(a)(ii)

a description of the invention;

Art. 78(1)(b)(iii)

one or more claims;

Art. 78(1)(c)(iv)

any drawings referred to in the description or the claims; andArt. 78(1)(d)(v)

an abstract.

Art. 78(1)(e)This Chapter deals with all these requirements, in so far as they are theconcern of the search or examining division, with the exception of item (iii)
which is the subject of Chapter F-IV. Item (v) is dealt with first.
2.

Abstract

2.1 Purpose of the abstract
The application must contain an abstract. The purpose of the abstract is to
give brief technical information about the disclosure as contained in thedescription, claims and any drawings. The abstract is merely for use as
technical information and in particular cannot be used for the purpose ofinterpreting the scope of the protection sought. The abstract needs to be
drafted so that it constitutes an efficient instrument for searching in theparticular technical field and for evaluating if it is worth considering thewhole content of the application.
2.2 Definitive content
The abstract is initially supplied by the applicant. The search division has
the task of determining its definitive content, which will normally be
published with the application. In doing this, it considers the abstract inrelation to the application as filed (see B-X, 7(i)). If the search report ispublished later than the application, the abstract, published with theapplication will be the one resulting from the examination referred to in
B-X, 7(i), third sentence.
In determining the definitive content, the search division takes into
consideration the purpose of the abstract (see F-II, 2.1).

Rule 57(d)Rule 47(5)Rule 66
Rule 68

Art. 85
Rule 47(5)2.3 Content of the abstract
The abstract must:(i)

indicate the title of the invention

Rule 47(1)(ii)

indicate the technical field to which the invention pertains;

Rule 47(2)Part F – Chapter II-2

Guidelines for Examination in the EPO

March 2023

Rule 47(2)(iii)

contain a concise summary of the disclosure as contained in thedescription, the claims and any drawings, which must be so drafted
as to allow a clear understanding of the technical problem, the gist of
the solution of that problem through the invention and the principal
use or uses of the invention and, where applicable, it should containthe chemical formula which, among those contained in theapplication, best characterises the invention;

Rule 47(2)(iv)

not contain statements on the alleged merits or value of the invention
or its speculative application;

Rule 47(3)(v)

preferably not contain more than one hundred and fifty words; andRule 47(4)(vi)

if the application contains drawings, be accompanied by an indicationof the figure or exceptionally more than one figure of the drawings
which should accompany the abstract. Each main feature mentioned
in the abstract and illustrated by a drawing needs to be followed by areference sign in parenthesis.

Rule 47(4)2.4 Figure accompanying the abstract
The search division considers not only the text of the abstract but also theselection of the figures for publication with it. It alters the text to the extent
that this may be necessary in order to meet the requirements set out in
F-II, 2.3. The search division will select a different figure, or figures, of thedrawings if it considers that they better characterise the invention.
The search division may prevent the publication of any drawing with theabstract, where none of the drawings present in the application is useful forthe understanding of the abstract. This can be done even when theapplicant has requested that a particular drawing or drawings be publishedwith the abstract according to Rule 47(4).
In determining the content of the abstract, the search division concentrates
on conciseness and clarity, and refrains from introducing alterations merely
for the purpose of embellishing the language (see B-X, 7).
2.5 Checklist
In considering the abstract, the search division checks it against theGeneral Guidelines for the Preparation of Abstracts of Patent Documents,using the checklist contained in WIPO Standard ST.12, the relevant parts ofwhich are annexed to this Chapter (F-II, Annex 1).

Rule 66

Art. 98

2.6 Transmittal of the abstract to the applicant
The content of the abstract is transmitted to the applicant together with thesearch report (see B-X, 7(i)).
2.7 Abstract in examination
The general considerations relating to the abstract are set out in F-II, 2.1 to
F-II, 2.6. The abstract relates to the application as filed and published andits final form for publication is determined by the search division. It is notnecessary to bring it into conformity with the content of the published patenteven if this should differ in substance from that of the application, since theMarch 2023

Guidelines for Examination in the EPO

Part F – Chapter II-3

patent specification does not contain an abstract. The examining division
therefore does not seek any amendment of the abstract.
The abstract has no legal effect on the application containing it; forinstance, it cannot be used to interpret the scope of protection or to justify
the addition to the description of new subject-matter.

Art. 85

3. Request for grant – the title
The items making up this request are dealt with in A-III, 4. They do notnormally concern the search division or the examining division, with the
exception of the title.
The title should clearly and concisely state the technical designation of theinvention and should exclude all fancy names (see A-III, 7.1). While any
obvious failures to meet these requirements are likely to be noted during
the formalities examination (and possibly during the search, see B-X, 7(ii)),
the search division or the examining division reviews the title in the light of
its reading of the description and claims and any amendments thereto, tomake sure that the title is concise and gives a clear and adequate
indication of the subject of the invention. Thus, if amendments are madewhich change the categories of claims, the examining division checks
whether a corresponding amendment is needed in the title.
4.

Description (formal requirements)

4.1 General remarks
The application must disclose the invention in a manner sufficiently clear
and complete for it to be carried out by a person skilled in the art.
The "person skilled in the art" for this purpose is considered to be theskilled practitioner in the relevant field aware not only of the teaching of theapplication itself and the references therein, but also of what was common
general knowledge in the art at the date of filing (date of priority) of theapplication. She is They are assumed to have at her their disposal themeans and the capacity for routine work and experimentation, which arenormal for the technical field in question. As "common general knowledge"
can generally be considered the information contained in basic handbooks,
monographs and textbooks on the subject in question (see T 171/84). As
an exception, it can also be the information contained in patent
specifications or scientific publications, if the invention lies in a field of
research which is so new that the relevant technical knowledge is not yet
available from textbooks (see T 51/87). Sufficiency of disclosure must be
assessed on the basis of the application as a whole, including thedescription, claims and drawings, if any. The provisions relating to thecontent of the description are set out in Rule 42. The purpose of theprovisions of Art. 83 and Rule 42 is:(i)

Rule 41(2)(b)to ensure that the application contains sufficient technical information
to enable a skilled person to put the invention as claimed into
practice; andArt. 83
Rule 42

Part F – Chapter II-4

Guidelines for Examination in the EPO(ii)

Rule 42(1)(a)March 2023

to enable the skilled person to understand the contribution to the art
which the invention as claimed has made.

4.2 Technical field
The invention should be placed in its setting by specifying the technical field
to which it relates, for example by reproducing the first ("prior art") portionof the independent claims in full or in substance or by simply referring to it.
If claims are amended, the "field of the invention" and "summary of theinvention" may also need to be amended to correspond to the claims. If
appropriate, it is possible to use statements like "the invention is set out inthe appended set of claims" instead of repeating the claims verbatim.

Rule 42(1)(b)Art. 123(2)4.3 Background art
The description should also mention any background art of which theapplicant is aware, and which can be regarded as useful for understanding
the invention and its relationship to the prior art; identification of documents
reflecting such art, especially patent specifications, should preferably be
included. This applies in particular to the background art corresponding to
the first ("prior art") portion of the independent claim or claims(see F-IV, 2.2).
In principle, when filing an application the applicant should cite in thedescription the closest prior art known to them. It may happen that the priorart cited by the applicant is not the closest existing for the claimed
invention. Therefore, the documents cited in the application as filed do notnecessarily describe the known innovations closest to the claimed
invention, but may in fact constitute more distantly related prior art.
The insertion into the statement of prior art of references to documents
identified during examination may be necessary to put the invention into
proper perspective (see T 11/82). For instance, while the originally filed
description of prior art may give the impression that the inventor has
developed the invention from a certain point, the cited documents may
show that certain stages in, or aspects of, this alleged development werealready known. In such a case the examining division requires a reference
to these documents and a brief summary of the relevant contents. The
subsequent inclusion of such a summary in the description does notcontravene Art. 123(2). The latter merely lays down that, if the application isamended, for example by limiting it in the light of additional information on
the background art, its subject-matter must not extend beyond the content
of the application as filed. But the subject-matter of the European patentapplication within the meaning of Art. 123(2) is to be understood – starting
off from the prior art – as comprising those features which, in the frameworkof the disclosure required by Art. 83, relate to the invention (see also
H-IV, 2.1). In addition, relevant prior-art documents not cited in the original
application may be subsequently acknowledged in the description even if
these were known to the applicant at the time of filing (T 2321/08 andH-IV, 2.2.6 H-IV, 2.2.7).

March 2023

Guidelines for Examination in the EPO

Part F – Chapter II-5

References to the prior art introduced after filing must be purely factual.
Any alleged advantages of the invention must be adjusted if necessary, inthe light of the prior art.
New statements of advantage are permissible provided that they do not
introduce into the description matter which extends beyond the content of
the application as filed (see H-V, 2.2).
The applicant may cite documents in the application which relate tostandard technical knowledge (background art neither addressing the same
technical problem nor necessary to complete the disclosure of the claimed
invention). Such citations typically relate to well-known tests for measuringcertain parameters mentioned in the description or to the definitions ofterms of established meaning that are used in the application. Usually they
are not relevant for assessing the patentability of the claimed invention,
unless for example they contain relevant information which the applicant
does not mention in the description.
Acknowledgment of prior art relevant to the dependent claims only is
generally not required. If the applicant indicates that subject-matter initiallycited as prior art is only "in-house state of the art", such prior art may not be
used in the assessment of novelty and inventive step (seeT 654/92, Reasons 4, and T 1001/98, Reasons 3). However, it may beallowed to remain in the description, provided the fact that it is only
"in-house state of the art" is made clear.
If the relevant prior art consists of another European patent application
falling within the terms of Art. 54(3), this relevant prior document belongs to
the state of the art for all contracting states. This is the case even if the two
applications do not share any commonly designated state, or thedesignation of commonly designated states has been dropped(see G-IV, 6). The fact that this document falls under Art. 54(3) must be
explicitly acknowledged. Thus the public is informed that the document is
not relevant to the question of inventive step (see G-VII, 2). According toRule 165, the above also applies to international applications designatingEP, for which the filing fee pursuant to Rule 159(1)(c) has been validly paid
and, where applicable, the translation into one of the official languages has
been filed (Art. 153(3) and (4)) (see G-IV, 5.2).

Art. 54(3)For transitional provisions concerning the applicability of Art. 54(4)EPC 1973, see H-III, 4.2.

Art. 54(4) EPC 1973

4.3.1 Format of background art citations
In citing documents or inserting references, applicants and examining
divisions alike must use codes that allow the references to be retrieved
without difficulty. This can be best achieved through consistent use of the
WIPO standards format:(i)for non-patent literature, WIPO Standard ST.14 (Recommendation
for the Inclusion of References Cited in Patent Documents);

Part F – Chapter II-6

Guidelines for Examination in the EPO(ii)

March 2023

for patent literature (applications, granted patents and utility models):
for the two-letter country code, WIPO Standard ST.3 (Recommended
Standard on Two-Letter Codes for the Representation of States,
Other Entities and Intergovernmental Organizations); for symbols
indicating the type of document, WIPO Standard ST.16(Recommended Standard Code for the Identification of Different
Kinds of Patent Documents).

WIPO standards:
ST.14 (http://www.wipo.int/export/sites/www/standards/en/pdf/03-14-01.pdf)
ST.3 (http://www.wipo.int/export/sites/www/standards/en/pdf/03-03-01.pdf)
ST.16 (http://www.wipo.int/export/sites/www/standards/en/pdf/03-16-01.pdf)
These can be found on the WIPO website.
However, in the case of deviation from these standards there is no need tocorrect the codes used, as long as straightforward retrieval of the citation(s)is possible.
4.3.1.1 Examples of quotation for non-patent literature(i)
For a monograph:
WALTON Herrmann, Microwave Quantum Theory. London: Sweet
and Maxwell, 1973, Vol. 2, pages 138 to 192.
(ii)

For an article in a periodical:
DROP, J.G. Integrated Circuit Personalization at the Module Level.
IBM tech. dis. bull. October 1974, Vol. 17, No. 5, pages 1344 and
1345.

(iii)

For a separately published abstract:
Chem. abstr., Vol. 75, No. 20, 15 November 1971 (Columbus, Ohio,USA), page 16, column 1, abstract No. 120718k, SHETULOV, D.I.
"Surface Effects During Metal Fatigue," Fiz.-Him. Meh. Mater. 1971,
7(29), 7-11 (Russ.).
Patent Abstracts of Japan, Vol. 15, No. 105 (M-1092), 13 March
1991, JP 30 02404 A (FUDO).

4.3.1.2 Examples of quotation for patent literature(i)
JP 50-14535 B (NCR CORP.) 28 May 1975 (28.05.75), column 4,lines 3 to 27.
(ii)

Rule 48(1)(c)

DE 3744403 A1 (A. JOSEK) 29.08.1991, page 1, abstract.

4.4 Irrelevant matter
Since the skilled person is presumed to have the general technicalbackground knowledge appropriate to the art, the examining division does
not require the applicant to insert anything in the nature of a treatise orMarch 2023

Guidelines for Examination in the EPO

Part F – Chapter II-7

research report or explanatory matter which is obtainable from textbooks or
is otherwise well-known. Likewise the examining division does not require a
detailed description of the content of cited prior documents. It is sufficientthat the reason for the inclusion of the reference is indicated, unless in aparticular case a more detailed description is necessary for a fullunderstanding of the invention of the application (see also F-III, 8 and
F-IV, 2.3.1).
A list of several reference documents relating to the same feature or aspectof the prior art is not required; only the most appropriate need be referred
to. On the other hand, the examining division does not insist upon theexcision of any such unnecessary matter, except when it is very extensive(see F-II, 7.4).
4.5 Technical problem and its solution
The invention as claimed should be disclosed in such a way that thetechnical problem, or problems, with which it deals can be appreciated andthe solution can be understood. To meet this requirement, only such details
should be included as are necessary for elucidating the invention.

Rule 42(1)(c)Rule 48(1)(b)As an example, to elucidate the nature of the solution according to the
independent claims, either the characterising portion of the independentclaims could be repeated or referred to, or the substance of the features ofthe solution according to the relevant claims could be reproduced (seeF-II, 4.2).
In cases where the subject-matter of a dependent claim can be understoodeither by the wording of the claim itself or by the description of a way of
performing the invention, no additional explanation of this subject-matter
will be necessary. A mention in the description that a particular embodimentof the invention is set out in the dependent claim will then be sufficient.
When there is doubt, however, as to whether certain details are necessary,the examining division does not insist on their excision. It is not necessary,
moreover, that the invention be presented explicitly in problem-solution
form. Any advantageous effects which the applicant considers the invention
to have in relation to the prior art should be stated, but this should not bedone in such a way as to disparage any particular prior product or process.
Furthermore, neither the prior art nor the applicant's invention should bereferred to in a manner likely to mislead. This might be done e.g. by an
ambiguous presentation which gives the impression that the prior art had
solved less of the problem than was actually the case. Fair comment as
referred to in F-II, 7.3 is, however, permitted. Regarding amendment to, or
addition of, a statement of problem, see H-V, 2.4.
4.6 Rule 42(1)(c) vs. Art. 52(1)
If it is decided that an independent claim defines a patentable invention
within the meaning of Art. 52(1), it must be possible to derive a technicalproblem from the application. In this case the requirement of Rule 42(1)(c)is fulfilled (see T 26/81).

Rule 42(1)(c)Part F – Chapter II-8

Rule 42(1)(d)Rule 46(2)(i)OJ EPO 2022, A113

Rule 42(1)(f)Art. 52(1)Art. 57

Rule 29(3)Rule 42(2)Guidelines for Examination in the EPO

March 2023

4.7 Reference in the description to drawings
If drawings are included they should first be briefly described, in a mannersuch as: "Figure 1 is a plan view of the transformer housing; Figure 2 is aside elevation of the housing; Figure 3 is an end elevation looking in the
direction of the arrow X of Figure 2; Figure 4 is a cross-section taken
through AA of Figure 1." When it is necessary to refer in the description toelements of the drawings, the name of the element should be referred to as
well as its number, i.e. the reference should not be in the form: "3 isconnected to 5 via 4" but, "resistor 3 is connected to capacitor 5 via
switch 4".
4.8 Reference signs
The description and drawings need to be consistent with one another,
especially in the matter of reference numbers and other signs, and eachnumber or sign must be explained. However, where as a result of
amendments to the description whole passages are deleted, it may betedious to delete all superfluous references from the drawings and in sucha case the examining division does not pursue an objection under
Rule 46(2)(i), under Art. 1(2)(i) of the decision of the President of the EPO
dated 25 November 2022 (OJ EPO 2022, A113) as to consistency, too
rigorously. The reverse situation should never occur, i.e. all reference
numbers or signs used in the description or claims must also appear on thedrawings.
4.9 Industrial application
The description should indicate explicitly the way in which the invention iscapable of exploitation in industry, if this is not obvious from the description
or from the nature of the invention. The expression "capable of exploitation
in industry" means the same as "susceptible of industrial application", andindeed identical expressions are used in the French and German texts ofthe EPC. In view of the broad meaning given to the latter expression by
Art. 57 (see G-III, 1), it is to be expected that, in most cases, the way inwhich the invention can be exploited in industry will be self-evident, so thatno more explicit description on this point will be required; but there may be
a few instances, e.g. in relation to methods of testing, where the manner ofindustrial exploitation is not apparent and must therefore be explicitly
indicated.
Also, in relation to certain biotechnological inventions, i.e. sequences andpartial sequences of genes, the industrial application is not self-evident.
The industrial application of such sequences must be disclosed in thepatent application (see G-III, 4).
4.10 Manner and order of presentation
The manner and order of presentation of the description should be thatspecified in Rule 42(1), i.e. as set out above, unless, because of the natureof the invention, a different manner or a different order would afford a better
understanding. Since the responsibility for clearly and completely
describing the invention lies with the applicant, the examining division does
not object to the presentation unless satisfied that such an objection would
be a proper exercise of its discretion.

March 2023

Guidelines for Examination in the EPO

Part F – Chapter II-9

Some departure from the requirements of Rule 42(1) is acceptable,
provided the description is clear and orderly and all the requisite
information is present. For example, the requirements of Rule 42(1)(c) may
be waived where the invention is based on a fortuitous discovery, thepractical application of which is recognised as being useful, or where theinvention breaks entirely new ground. Also, certain technically simple
inventions may be fully comprehensible with the minimum of description
and only slight reference to prior art.
4.11 Terminology
Although the description needs to be clear and straightforward withavoidance of unnecessary technical jargon, the use of recognised terms ofart is acceptable, and will often be desirable. Little-known or
specially-formulated technical terms may be allowed provided that they areadequately defined and that there is no generally recognised equivalent.
This discretion may be extended to foreign terms when there is noequivalent in the language of the proceedings. Terms already having anestablished meaning are not allowed to be used to mean something
different if this is likely to cause confusion. There may, however, becircumstances where a term may legitimately be borrowed from ananalogous art. Terminology and signs must be consistent throughout theapplication.

Rule 49(11)4.12 Computer programs
In the particular case of inventions in the computer field, program listings inprogramming languages cannot be relied on as the sole disclosure of theinvention. The description, as in other technical fields, should be written
substantially in normal language, possibly accompanied by flow diagrams
or other aids to understanding, so that the invention may be understood bya person skilled in the art who is deemed not to be a specialist in any
specific programming language, but does have general programming skills.
Short excerpts from programs written in commonly used programming
languages can be accepted if they serve to illustrate an embodiment of theinvention.
4.13 Physical values, units
When the properties of a material are referred to, the relevant units need to
be specified if quantitative considerations are involved. If this is done byreference to a published standard (e.g. a standard of sieve sizes) and suchstandard is referred to by a set of initials or similar abbreviation, it needs tobe adequately identified in the description.
Physical values must be expressed in the units recognised in international
practice, which is generally in the metric system, using SI units and theother units referred to in Chapter I of the Annex to EEC Directive
80/181/EEC of 20 December 1979, as amended by EEC Directives
85/1/EEC of 18 December 1984, 89/617/EEC of 27 November 1989,
1999/103/EC of 24 January 2000, 2009/3/EC of 11 March 2009 andCommission Directive (EU) 2019/1258 of 23 July 2019 (see F-II, Annex 2).
Any values not meeting this requirement must also be expressed in theunits recognised in international practice. Values expressed in the systemof imperial units (e.g. inches/pounds) or in units having local character

Rule 49(10)Part F – Chapter II-10

Guidelines for Examination in the EPO

March 2023

(e.g. pint), in general, do not meet the criterion "recognised in international
practice".
As Rule 49(10) indicates, As determined by the President under Rule 49(2),for mathematical formulae the symbols in general use must be employed.
For chemical formulae, the symbols, atomic weights and molecular
formulae in general use must be employed.
In general, use should be made of the technical terms, signs and symbols
generally accepted in the field in question.
4.14 Registered trade marks
It is the applicant's responsibility to ensure that registered trade marks are
acknowledged as such in the description. For the assessment of the clarityof claims referring to a trade mark (Art. 84), see F-IV, 4.8. With regard to
the effect of references to trade marks on sufficiency of disclosure (Art. 83),
see F-III, 7.
5.

Rule 46
Rule 46(2)(j)Drawings

5.1 Form and content
The Most of the requirements relating to the form and content of drawings
are set down in Rule 46. Most of these are formal (see A-IX), but theexamining division may sometimes need to consider the requirements asdetermined by the President under Rule 49(2) of Rule 46(2)(f), (h), (i) and(j). Of these, the only question likely to cause difficulty is whether the
textual matter included on the drawings is absolutely indispensable. In thecase of circuit diagrams, block schematics and flow sheets, identifying
catchwords for functional integers of complex systems (e.g. "magnetic core
store", "speed integrator") may be regarded as indispensable from apractical point of view if they are necessary to enable a diagram to beinterpreted rapidly and clearly.
5.2 Printing quality
The examining division has also to check whether the drawings in theprinting copy ("Druckexemplar") are suitable for printing. If necessary, acopy of the original drawings must be prepared as the printing copy. If,
however, the quality of the original drawings is also insufficient, then theexamining division must request the applicant to present drawings ofsufficient quality for printing. It needs to, however, beware of any extensionof subject-matter (Art. 123(2)).
5.3 Photographs
For the presentation of photographs, see A-IX, 1.2. In the case ofphotographs of insufficient original quality for printing, the examining
division does not request filing of better photographs, as the risk of
infringing Art. 123(2) is obvious. In that case, the insufficient quality is
accepted for reproduction.
6. Sequence listings
For the presentation of sequence listings in general, see A-IV, 5.

March 2023

Guidelines for Examination in the EPO

6.1 Reference to sequences disclosed in a database
The application may refer to a biological sequence belonging to the state of
the art by merely providing the sequence's accession number and its
version or release number in a publicly available database, without
presenting the sequence itself either in a sequence listing complying withthe applicable WIPO standard or in any other format.
Since in this case the sequence is already publicly available, the applicant
does not need to supply a sequence listing. This applies even if reference
is made to these sequences in one or more claims or if the sequences are
essential features of the invention or necessary for the prior-art search(see J 8/11). If the European patent application discloses nucleotide oramino acid sequences that are fragments or variants of a prior-art
sequence, a sequence listing complying with the applicable WIPO standard
has to be filed for these sequence fragments or variants (see the noticefrom the EPO dated 18 October 2013, OJ EPO 2013, 542, I.1.5
9 December 2021, OJ EPO 2021, A97, p. 7). If the database and/or thesequences in question is/are not completely and unambiguously identified,
the sequences are not sufficiently disclosed according to Art. 83 and cannot
be added to the application to complete the disclosure without contravening
Art. 123(2) (see F-III, 2).
If such insufficiently disclosed sequences are not essential features of theclaimed invention, normally no objection is raised. On the other hand,where these sequences are essential features of at least a part of theclaimed subject-matter, this results in problems relating to the sufficiency ofthe original disclosure according to Art. 83, because the nature of thesequences cannot be unambiguously derived from the incomplete or
ambiguous reference to the database.
Examples where a biological sequence is considered an essential featureof the invention would be a diagnostic method using a particular nucleic
acid sequence or a product made by a biochemical process using an
enzyme with a particular amino acid sequence. An example of ambiguous
identification would be the citation of an accession number of a certain
protein in the database of the European Molecular Biology Laboratory
EMBL with no indication of which version number or database release
number is meant when there are several such numbers referring to different
sequences of the protein.
6.2

Sequences that need to be itemised in the sequence listing

6.2.1 Requirements relating to sequence length and enumeration ofresidues
As defined in paragraph 7 of the WIPO Standard ST.26, a sequence must
be included in the sequence listing if:
1.

it is disclosed anywhere in the application by enumeration of its
residues, i.e. by listing, in order, each residue of the sequence as
defined in paragraph 3(c) of WIPO Standard ST.26 (e.g.
aagtgttcctagtg), andPart F – Chapter II-11

Part F – Chapter II-12

Guidelines for Examination in the EPO

2.

March 2023

it contains 10 or more specifically defined nucleotides or four or more
specifically defined amino acids.

According to ST.26, "specifically defined" residues are any nucleotide otherthan those represented by the symbol "n" and any amino acid other thanthose represented by the symbol "X", listed in Annex I (see paragraph 3(k)of WIPO Standard ST.26).
Degenerate symbols representing a subgroup of residues are consideredas specifically defined. For example, the degenerate nucleotide symbol "s"(used to represent "c" or "g" as defined in Annex I, Table 1 of ST.26) is
specifically defined.
Sequences containing fewer than ten specifically defined nucleotides, or
fewer than four specifically defined amino acids must not be included in thesequence listing (WIPO Standard ST.26, paragraph 8).
If a sequence is only disclosed in prose, i.e. a text describing the sequence,but the sequence is not enumerated, then the sequence does not have to
be included, but may be included if the applicant wishes so.
For instance, if the application refers to a partial sequence as follows:"nucleotides 90-179 of SEQ ID NO. 1", the partial sequence is described inprose only and, therefore, does not have to be entered as a separate
SEQ ID in the sequence listing.
However, if the partial sequence was described by enumerating only theresidues between positions 90 and 179, then paragraph 7 of WIPO
Standard ST.26 would apply and the partial sequence would have to be
included in the sequence listing.
6.2.2 Sequences comprising residues that are not specificallydefined (n or X)
If an enumerated sequence comprises regions of specifically definedresidues separated by one or more gaps of n or X, i.e. residues that are notspecifically defined, the representation of this sequence in the sequencelisting depends on whether the exact number of n or X residues is known(see WIPO Standard ST.26, paragraph 36) or unknown (see WIPO
Standard ST.26, paragraph 37).
For example, considering that the following sequence is enumerated in theapplication:
a10nxt12
if the number of "n" residues is known, e.g. x=2, the sequence should be
represented as a single SEQ ID (if it also meets the minimal length
requirement as defined in paragraph 7 or ST.26 and in F-II, 6.2.1) as
follows:
aaaaaaaaaanntttttttttttt

March 2023

Guidelines for Examination in the EPO

If the number of "n" residues is unknown, each region of specifically definedresidues that meets the minimal length requirement in paragraph 7 of
WIPO Standard ST.26 must be included in the sequence listing as aseparate SEQ ID.
For example, for the sequence: a10nxt12
the sequence listing must have two entries
SEQ ID No. 1: aaaaaaaaaa
SEQ ID No. 2: tttttttttttt
The sequences should be annotated to indicate that they are part of thesame molecule and separated by an undefined number of "n" residues (seeexample 37-2 of Annex VI of WIPO Standard ST.26).
If a range is disclosed, e.g. x= 5-10 nucleotides, the sequence should be
represented as a single SEQ ID comprising 5 n or 10 n (see example 36-3
of Annex VI of WIPO Standard ST.26).
In the above example, the sequence must either comprise 5 n or 10 n. In
both cases, the SEQ ID must be annotated with a "note" qualifier. In cases
where the sequence comprises 5 n, the note should indicate that up to 5 n
can be added. In cases where the sequence comprises 10 n, the noteshould indicate that up to 5 n can be deleted. The appropriate feature key
must be associated with the "note" qualifier describing the variant. Seeparagraph 96 of WIPO Standard ST.26 and F-II, 6.2.3 for information on
selecting the correct feature key.
Alternatively, if a range is disclosed, e.g. x= 5-10 nucleotides, all possible
variants may be represented independently, i.e. as separate SEQ IDs.
6.2.3 Variants
If the application describes variants of a sequence, e.g. "nucleotides 90-179
of SEQ ID No. 1 are deleted or substituted by another sequence", thenparagraph 95 of WIPO Standard ST.26 applies. This paragraph defines thatthese variants should be described by annotation of the primary sequence.
It is a recommendation but it is not compulsory as long as the specificvariant sequence is not enumerated as such in the application.
If the applicant chooses to enter this information in the sequence listing, thefollowing rules as defined in paragraph 95 of ST.26 should be followed:(a)the variant may be represented by annotation of the primary
sequence, where it contains variation(s) at a single location or
multiple distinct locations and the occurrences of those variations are
independent,(b)

the variant should be represented as a separate sequence andassigned its own sequence identification number, where it contains

Part F – Chapter II-13

Part F – Chapter II-14

Guidelines for Examination in the EPO

March 2023

variations at multiple distinct locations and the occurrences of thosevariations are interdependent, and(c)must be represented as a separate sequence and assigned its own
sequence identification number, where it contains an inserted or
substituted sequence that contains in excess of 1 000 residues.

The following table indicates which feature key and qualifier should be used
to annotate the variants according to the type of sequence and the type ofvariation (see paragraph 96 of WIPO Standard ST.26).
Type ofsequence
Nucleic acidFeature key

Qualifier

Use

Variation

replace or
note

Nucleic acid

misc_difference

replace ornote

Amino acid

VAR_SEQ

note

Amino acid

VARIANTnote

Naturally occurring
mutations andpolymorphisms, e.g.
alleles, RFLPs.
Variability introduced
artificially, e.g. by
genetic manipulation or
by chemical synthesis.
Variant produced byalternative splicing,alternative promoter
usage, alternative
initiation and ribosomal
frameshifting.
Any type of variant for
which VAR_SEQ is notapplicable.

6.2.4 The qualifier "mol_type"The feature key "source" is mandatory for every sequence, in addition to
the qualifiers "organism" and "mol_type" (paragraph 75 of WIPO Standard
ST.26).
The value of the "mol_type" qualifier has to be selected from a list of
predetermined terms as defined in Annex I of WIPO Standard ST.26(section 6, qualifier mol_type 6.39; section 8, qualifier mol_type 8.1) andshown in the following table:DNA
genomic DNA
other DNA
unassigned DNA

RNAgenomic RNA
mRNA
tRNA
rRNA
transcribed RNA
viral cRNA
other RNA
unassigned RNA

AA
proteinMarch 2023

Guidelines for Examination in the EPO

Part F – Chapter II-15

The value "genomic DNA" does not imply that the molecule is nuclear (e.g.
organelle and plasmid DNA must be described using "genomic DNA").
Ribosomal RNA genes must be described using "genomic DNA".
The value "rRNA" must only be used if the ribosomal RNA molecule itself
has been sequenced.
The values "other RNA" and "other DNA" must be applied to synthetic
molecules, i.e. molecules that have been artificially created.
The values "unassigned DNA" and "unassigned RNA", on the other hand,must be used for molecules that have been isolated from an organism but
their nature is not known or not disclosed and they cannot be assigned toany more precise qualifier value (e.g. it is not known whether the sequenceis a tRNA or an mRNA or another type of natural RNA).
7.

Prohibited matter

7.1 Categories
There are three categories of specifically prohibited matter, these being
defined in sub-paragraphs (a) to (c) of Rule 48(1) (see also G-II, 4).
7.2 Matter contrary to "ordre public" or morality
The omission, from the publication of the application, is mandatory for the
first category (Rule 48(1)(a)). Examples of the kind of matter coming within
this category are: incitement to riot or to acts of disorder; incitement tocriminal acts; racial, religious or similar discriminatory propaganda; andgrossly obscene matter.

Rule 48

Rule 48(1)(a)With regard to patentability issues with such matter, see G-II, 4.1 andsubsections.
7.3 Disparaging statements
It is necessary to discriminate in the second category between libellous orsimilarly disparaging statements, which are not allowed, and fair comment,
e.g. in relation to obvious or generally recognised disadvantages, ordisadvantages stated to have been found and substantiated by theapplicant, which, if relevant, is permitted.
7.4 Irrelevant or unnecessary matter
The third category is irrelevant or unnecessary matter: such matter is
specifically prohibited under Rule 48(1)(c) only if it is "obviously irrelevant or
unnecessary", for instance, if it has no bearing on the subject-matter of theinvention or its background of relevant prior art (see also F-II, 4.4). The
matter to be removed may already be obviously irrelevant or unnecessary
in the original description. It may, however, be matter which has become
obviously irrelevant or unnecessary only in the course of the examination
proceedings, e.g. owing to a limitation of the claims of the patent to one oforiginally several alternatives. When matter is removed from thedescription, it must not be incorporated into the patent specification by

Rule 48(1)(b)Rule 48(1)(c)Part F – Chapter II-16

Guidelines for Examination in the EPO

March 2023

reference to the corresponding matter in the published application or in any
other document (see also F-III, 8).

Rule 48(2) and(3)

7.5 Omission of matter from publication
Generally, the Receiving Section will deal with matter falling undercategory 1(a) and may have dealt with matter obviously falling within
category 1(b), but if any such matter has not been so recognised and has
therefore not been omitted from the publication of the application, it isrequired to be removed during examination of the application together withany other prohibited matter. The applicant is informed of the category underwhich matter is required to be removed.

March 2023

Guidelines for Examination in the EPO

Annex 1
Checklist for considering the abstract (see F-II, 2.5)
In the following checklist, the abstractor should, after having studied thedisclosure to be abstracted, place a check in the second column after theapplicable terms listed in the first column. The requirements listed in thethird column corresponding to the checked items of the first column should
be borne in mind by the abstractor when preparing the abstract. Finally, theabstractor may compare the finished abstract with the checked
requirements and place a corresponding checkmark in the fourth column ifsatisfied that the requirements have been met.
If theinvention isa(n)ArticleCheck The abstract should deal with:here

If so,
checkhere

its identity, use;
construction, organisation, method of
manufacture
Chemical
its identity (structure if appropriate);compoundmethod of preparation, properties, uses
Mixtureits nature, properties, use;
essential ingredients (identity, function);
proportion of ingredients, if significant;preparation
Machine,its nature, use; construction,
apparatus,organisation;systemoperation
Process or
its nature and characterising features;operationmaterial and conditions employed;
product, if significant;nature of and relationship between thesteps, if more than one
If thethe abstract should deal with thedisclosure
preferred alternative and identify the
involves
others if this can be done succinctly;
alternatives
if this cannot be done, it should mention
that they exist and whether they differ
substantially from the preferredalternative
Total number of words less than 250: ….......
in range 50-150: ……....
Ref: Standards – ST.12/A, April 1994
Original: Handbook on Industrial Property Information and Documentation, Publication N° 208(E), 1998,
WIPO, Geneva (CH).

Part F – Chapter II-17

Part F – Chapter II-18

Guidelines for Examination in the EPO

March 2023

Annex 2
Units recognised in international practice as determined by the
President under Rule 49(2) and complying with Rule 49(10)(see F-II, 4.13)*
1.

SI units and their decimal multiples and submultiples

1.1 SI base units
Quantity
LengthMass
Time
Electric current
Thermodynamic temperature
Amount of substanceLuminous intensity

Unit
Name
metre
kilogram
secondamperekelvinmole
candelaSymbol
m
kg
s
A
K
mol
cd

Definitions of SI base units:– Unit of time
The second, symbol s, is the SI unit of time. It is defined by taking the fixed
numerical value of the caesium frequency ΔνCs, the unperturbed
ground-state hyperfine transition frequency of the caesium 133 atom, to be
9 192 631 770 when expressed in the unit Hz, which is equal to s–1.
– Unit of length
The metre, symbol m, is the SI unit of length. It is defined by taking the
fixed numerical value of the speed of light in vacuum c to be 299 792 458
when expressed in the unit m/s, where the second is defined in terms ofΔνCs.
– Unit of mass
The kilogram, symbol kg, is the SI unit of mass. It is defined by taking the
fixed numerical value of the Planck constant h to be 6.626 070 15 × 10–34
when expressed in the unit J s, which is equal to kg m2 s–1, where the metre
and the second are defined in terms of c and ΔνCs.
– Unit of electric current
The ampere, symbol A, is the SI unit of electric current. It is defined bytaking the fixed numerical value of the elementary charge e to be
1.602 176 634 × 10–19 when expressed in the unit C, which is equal to A s,
where the second is defined in terms of ΔνCs.
– Unit of thermodynamic temperature
The kelvin, symbol K, is the SI unit of thermodynamic temperature. It isdefined by taking the fixed numerical value of the Boltzmann constant k to
be 1.380 649 × 10–23 when expressed in the unit J K–1, which is equal to kg*

Mainly based on Chapter I of the Annex to EEC Directive 80/181/EEC of 20.12.1979, as amended
by EEC Directives 85/1/EEC of 18.12.1984, 89/617/EEC of 27.11.1989, 1999/103/EC of
24.01.2000, 2009/3/EC of 11.03.2009 and Commission Directive (EU) 2019/1258 of 23.07.2019.

March 2023

Guidelines for Examination in the EPO

m2 s–2 K–1, where the kilogram, metre and second are defined in terms of h,c and ΔνCs.
– Unit of amount of substance
The mole, symbol mol, is the SI unit of amount of substance. One molecontains exactly 6.022 140 76 × 1023 elementary entities. This number isthe fixed numerical value of the Avogadro constant, NA, when expressed in
the unit mol–1 and is called the Avogadro number.
The amount of substance, symbol n, of a system is a measure of thenumber of specified elementary entities. An elementary entity may be an
atom, a molecule, an ion, an electron, any other particle or specified groupof particles.
– Unit of luminous intensity
The candela, symbol cd, is the SI unit of luminous intensity in a given
direction. It is defined by taking the fixed numerical value of the luminous
efficacy of monochromatic radiation of frequency 540 × 1012 Hz, Kcd, to be
683 when expressed in the unit lm W–1, which is equal to cd sr W–1, or cd sr
kg–1 m–2 s3, where the kilogram, metre and second are defined in terms ofh, c and ΔνCs.
1.1.1 Special name and symbol of the SI derived unit of temperaturefor expressing Celsius temperature
Quantity
Unit
Name
SymbolCelsius temperature
degree Celsius°C
Celsius temperature t is defined as the difference t = T-T0 between the twothermodynamic temperatures T and T0 where T0 = 273.15 K. An interval ofor difference in temperature may be expressed either in kelvins or indegrees Celsius. The unit of "degree Celsius" is equal to the unit "kelvin".
1.2

SI derived units

1.2.1 General rule for SI derived units
Units derived coherently from SI base units are given as algebraic
expressions in the form of products of powers of the SI base units with anumerical factor equal to 1.
1.2.2 SI derived units with special names and symbols
Quantity
Unit
Expression
Name
Symbol In other SI In terms of SI
units
base units
Plane angle
radianradm·m-1
Solid angle
steradian sr
m2·m-2Frequency
hertz
Hz
s-1
Force
newtonNm·kg·s-2
Pressure, stresspascalPa
N·m-2
m-1·kg·s-2
Energy, work; quantity of
joule
J
N·m
m2·kg·s-2
heatPower(1), radiant flux
watt
W
J·s-1
m2·kg·s-3

Part F – Chapter II-19

Part F – Chapter II-20

Guidelines for Examination in the EPO

Quantity

Unit
Name

Quantity of electricity,
coulombelectric charge
Electric potential,
potential difference,
volt
electromotive force
Electric resistanceohm
Conductancesiemens
Capacitance
farad
Magnetic flux
weber
Magnetic flux density
tesla
Inductancehenry
Luminous flux
lumen
Illuminancelux
Activity (of abecquerel
radionuclide)
Absorbed dose, specificenergy imparted, kerma, grayabsorbed dose index
Dose equivalentsievertCatalytic activity
katal
(1)

SymbolMarch 2023

Expression
In other SI In terms of SI
units
base units

C

s·A

V

W·A-1

m2·kg·s-3·A-1

Ω
S
F
Wb
T
H
lm
lx

V·A-1
A·V-1
C·V-1
V·s
Wb·m-2
Wb·A-1
cd·sr
lm·m-2

m2·kg·s-3·A-2
m-2·kg-1·s3·A2
m-2·kg-1·s4·A2
m2·kg·s-2·A-1
kg·s-2·A-1
m2·kg·s-2·A-2
cd
m-2·cds-1

Bq
Gy

J·kg-1m2·s-2Sv
kat

J·kg-1m2·s-2mol·s-1

Special names for the unit of power: the name volt-ampere (symbol "VA") is used to express theapparent power of alternating electric current, and var (symbol "var") is used to express reactive
electric power.

Units derived from SI base units may be expressed in terms of the units
listed in this annex.
In particular, derived SI units may be expressed by the special names andsymbols given in the above table. For example, the SI unit of dynamic
viscosity may be expressed as m-1.kg.s-1 or N.s.m-2 or Pa.s.
1.3 Prefixes and their symbols used to designate certain decimal
multiples and submultiples
FactorPrefixSymbolFactorPrefixSymbol
1024
yotta
Y
10-1
deci
d
1021
zetta
Z
10-2
centi
c
1018
exa
E
10-3
milli
m
1015
peta
P
10-6
micro
µ
1012
tera
T
10-9
nano
n
9
-12
10
giga
G
10
pico
p
106
mega
M
10-15
femto
f
103
kilo
k
10-18
atto
a
102
hecto
h
10-21
zepto
z
101
deca
da
10-24
yocto
y
The names and symbols of the decimal multiples and submultiples of theunit of mass are formed by attaching prefixes to the word "gram" and theirsymbols to the symbol "g".

March 2023

Guidelines for Examination in the EPO

Where a derived unit is expressed as a fraction, its decimal multiples andsubmultiples may be designated by attaching a prefix to units in the
numerator or the denominator, or in both these parts.
Compound prefixes, that is to say prefixes formed by the juxtaposition ofseveral of the above prefixes, may not be used.
1.4 Special authorised names and symbols of decimal multiples andsubmultiples of SI units
Quantity
Unit
Name
SymbolValue
Volumelitre
l or L(1)1 l = 1 dm3 = 10-3 m3
Mass
tonne
t
1 t = 1 Mg = 103 kg
Pressure, stressbar
bar
1 bar = 105 Pa
LengthÅngströmÅ
1 Å = 10-10 m(1)

The two symbols "l" and "L" may be used for the litre unit.

The prefixes and their symbols listed in F-II, Annex 2, 1.3 may be used inconjunction with the units and symbols contained in this table.
2. Units which are defined on the basis of SI units but are notdecimal multiples or submultiples thereof
Quantity
Plane angle

Time

Unit
Name
revolution(a)grade or gon
degreeminute of angle
second of angle
MinuteHour
Day

Symbol
gon
°
'
"
min
h
d

Value
1 revolution = 2 π rad
1 gon = π / 200 rad
1° = π / 180 rad
1' = π / 10 800 rad
1" = π / 648 000 rad
1 min = 60 s
1 h = 3 600 s
1 d = 86 400 s(a) No international symbol exists

The prefixes listed in F-II, Annex 2, 1.3 may only be used in conjunction
with the names "grade" or "gon" and the symbols only with the symbol"gon".
3. Units used with the SI, and whose values in SI are obtained
experimentally
The unified atomic mass unit is 1/12 of the mass of an atom of thenuclide 12C.
The electronvolt is the kinetic energy acquired by an electron passing
through a potential difference of 1 volt in a vacuum.
Quantity
Mass
EnergyUnit
Nameunified atomic
mass unit
Electronvolt

SymboluValue
1 u ≈ 1,6605655 x 10-27 kgeV

1eV ≈ 1,6021892 x 10-19 J

Part F – Chapter II-21

Part F – Chapter II-22

Guidelines for Examination in the EPO

March 2023

The value of these units, expressed in SI units, is not known exactly.
The prefixes and their symbols listed in F-II, Annex 2, 1.3 may be used inconjunction with these two units and with their symbols.
4.

Units and names of units permitted in specialised fields only

Quantity
Vergency of
optical systems
Mass of precious
stonesArea of farmland
and building land
Mass per unit
length of textile
yarns and threads
Blood pressure
and pressure ofother body fluids
Pressure in thefields of plasma
physics andsemiconductors
Effective crosssectional area

Unit
Name
dioptreSymbolValue
1 dioptre = 1 m-1
1 metric carat = 2 x 10-4 kg

metric
carat
are

a

1 a = 102 m2

tex

tex

1 tex = 10-6 kg.m-1

millimetreof mercurymm Hg

1 mm Hg = 133.322 Pa

millimetreof mercurymm Hg

1 mm Hg = 133.322387 Pa

Torr
Barn

Torr
b

1 Torr = 133.322368 Pa
1b = 10-28 m2

The prefixes and their symbols listed in F-II, Annex 2, 1.3 may be used inconjunction with the above units and symbols, with the exception of themillimetre of mercury and its symbol. The multiple of 102 a is, however,called a "hectare".
5.

Compound units

Combinations of the units listed in this annex form compound units.

March 2023

Guidelines for Examination in the EPO

Part F – Chapter III-1

Chapter III – Sufficiency of disclosure
1. Sufficiency of disclosure
A detailed description of at least one way of carrying out the invention mustbe given. Since the application is addressed to the person skilled in the art,
it is neither necessary nor desirable that details of well-known ancillaryfeatures are given, but the description must disclose any feature essential
for carrying out the invention in sufficient detail to render it apparent to theskilled person how to put the invention into practice. A single example may
suffice, but where the claims cover a broad field, the application is not
usually regarded as satisfying the requirements of Art. 83 unless thedescription gives a number of examples or describes alternative
embodiments or variations extending over the area protected by the claims.
However, regard must be had to the facts and evidence of the particularcase. There are some instances where even a very broad field is
sufficiently exemplified by a limited number of examples or even one
example (see also F-IV, 6.3). In these latter cases the application must
contain, in addition to the examples, sufficient information to allow theperson skilled in the art, using common general knowledge, to perform theinvention over the whole area claimed without undue burden and without
needing inventive skill (see T 727/95). In this context, the "whole areaclaimed" is to be understood as substantially any embodiment falling within
the ambit of a claim, even though a limited amount of trial and error may bepermissible, e.g. in an unexplored field or when there are many technicaldifficulties (see T 226/85 and T 409/91).

Rule 42(1)(e)Art. 83

However when assessing sufficiency of disclosure, the intrinsic limitations
that a sensible reading imposes on the subject-matter of the independentclaims must be taken into consideration; in other words the person skilled in
the art wishing to implement the claimed invention will exclude any
embodiment that is meaningless and not consistent with the teaching of theapplication (see T 521/12).
With regard to Art. 83, an objection of lack of sufficient disclosure
presupposes that there are serious doubts, substantiated by verifiable facts(see T 409/91 and T 694/92). If the examining division is able, under theparticular circumstances, to make out a reasoned case that the application
lacks sufficient disclosure, the onus of establishing that the invention may
be performed and repeated over substantially the whole of the claimed
range lies with the applicant (see F-III, 4).
For the requirements of Art. 83 and of Rule 42(1)(c) and Rule 42(1)(e) to be
fully satisfied, it is necessary that the invention is described not only interms of its structure but also in terms of its function, unless the functions of
the various parts are immediately apparent. Indeed, in some technical fields(e.g. computers), a clear description of function may be much more
appropriate than an over-detailed description of structure.

Art. 83
Rule 42(1)(c) and(e)

In cases where it is found that an application is sufficiently disclosed
according to Art. 83 only in respect of a part of the claimed subject-matter,
this may have led to the issuing of a partial European or supplementary
European search report according to Rule 63 (see B-VIII, 3.1 andRule 63

Part F – Chapter III-2

Guidelines for Examination in the EPO

March 2023

B-VIII, 3.2). In such cases, in the absence of appropriate amendment, anobjection under Rule 63(3) will also arise (see H-II, 5 and H-II, 6.1
H-IV, 4.1.1).

Art. 83
Art. 123(2)Art. 83

2. Art. 83 vs. Art. 123(2)It is the responsibility of the applicants to ensure that they supply on filingtheir application, a sufficient disclosure, i.e. one that meets therequirements of Art. 83 in respect of the invention as claimed in all of theclaims. If the claims define the invention, or a feature thereof, in terms ofparameters, the application as filed must include a clear description of themethods used to determine the parameter values, unless a person skilledin the art would know what method to use or unless all methods would yield
the same result (see F-IV, 4.11). If the disclosure is seriously insufficient,such a deficiency cannot be cured subsequently by adding further
examples or features without offending against Art. 123(2), which requiresthat amendments may not result in the introduction of subject-matter which
extends beyond the content of the application as filed (see H-IV, 2.1; seealso H-V, 2.2). Therefore, in such circumstances, the application mustnormally be refused. If, however, the deficiency arises only in respect ofsome embodiments of the invention and not others, it could be remedied by
restricting the claims to correspond to the sufficiently describedembodiments only, the description of the remaining embodiments being
deleted.
3. Insufficient disclosure
Occasionally applications are filed in which there is a fundamental
insufficiency in the invention in the sense that it cannot be carried out by aperson skilled in the art; there is then a failure to satisfy the requirements ofArt. 83 which is essentially irreparable. Two instances deserve special
mention. The first is where the successful performance of the invention isdependent on chance. That is to say, the skilled person, in following the
instructions for carrying out the invention, finds either that the alleged
results of the invention are unrepeatable or that success in obtaining theseresults is achieved in a totally unreliable way. Sufficiency of disclosure
cannot be acknowledged if the skilled person has to carry out a research
programme based on trial and error to reproduce the results of theinvention, with limited chances of success (T 38/11, Reasons 2.6). An
example where this may arise is a microbiological process involving
mutations. Such a case is to be distinguished from one where repeatedsuccess is assured even though accompanied by a proportion of failures,
as can arise e.g. in the manufacture of small magnetic cores or electronic
components. In this latter case, provided the satisfactory parts can bereadily sorted by a non-destructive testing procedure, no objection arises
under Art. 83. The second instance is where successful performance of theinvention is inherently impossible because it would be contrary to
well-established physical laws – this applies e.g. to a perpetual motion
machine. If the claims for such a machine are directed to its function, andnot merely to its structure, an objection arises not only under Art. 83 but
also under Art. 52(1) in that the invention is not "susceptible of industrial
application" (see G-III, 1).

March 2023

Guidelines for Examination in the EPO

4. Burden of proof as regards the possibility of performing andrepeating the invention
Although the burden of proof in the framework of sufficiency of disclosure
as a rule lies with the party raising the objection, this principle does not
apply to cases where the application as filed does not provide a single
example or other technical information from which it is plausible that theclaimed invention can be carried out (see e.g. T 1329/11).
Furthermore, if there are serious doubts as regards the possibility of
performing the invention and repeating it as described, the burden of proof
as regards this possibility, or at least a demonstration that success iscredible, rests with the applicant or the proprietor of the patent. In
opposition, this may be the case where, for example, experiments carriedout by the opponent suggest that the subject-matter of the patent does notachieve the desired technical result. As regards the possibility of performing
and repeating the invention, see also F-III, 3.
5.

Cases of partially insufficient disclosure

5.1 Only variants of the invention are incapable of being performed
The fact that only variants of the invention, e.g. one of a number of
embodiments of it, are not capable of being performed does not
immediately give rise to the conclusion that the subject-matter of theinvention as a whole is incapable of being performed, i.e. is incapable ofresolving the problem involved and therefore of achieving the desired
technical result.
Those parts of the description relating to the variants of the invention which
are incapable of being performed and the relevant claims must, however,then be deleted or marked background information that is not part of theinvention (see F-IV, 4.3(iii)) at the request of the division if the deficiency is
not remedied. The specification must then be so worded that the remaining
claims are supported by the description and do not relate to embodiments
which have proved to be incapable of being performed.
In some particular cases (for example claims relating to a combination ofranges or Markush claims), the scope of the claim might encompass alarge number of alternatives, some of which correspond to non-working
embodiments. In such cases, the presence of non-working embodiments inthe claim is of no harm, provided that the specification contains sufficient
information on the relevant criteria to identify the working embodiments
within the claimed alternatives (G 1/03). See also G-VII, 5.2.
5.2 Absence of well-known details
For the purposes of sufficient disclosure the specification does not need todescribe all the details of the operations to be carried out by the person
skilled in the art on the basis of the instructions given, if these details are
well-known and clear from the definition of the class of the claims or on thebasis of common general knowledge (see also F-III, 1 and F-IV, 4.5).

Part F – Chapter III-3

Part F – Chapter III-4

Guidelines for Examination in the EPO

March 2023

5.3 Difficulties in performing the invention
An invention is not immediately regarded as incapable of being performedon account of a reasonable degree of difficulty experienced in its
performance ("teething troubles", for example).
1st example: The difficulties which could, for example, arise from the factthat an artificial hip joint could be fitted to the human body only by asurgeon of great experience and above-average ability would not prevent
manufacturers of orthopaedic devices from deriving complete informationfrom the description with the result that they could reproduce the invention
with a view to making an artificial hip joint.
2nd example: A switchable semiconductor which, according to theinvention, is used for switching electrical circuits on and off without using
contacts, thereby making for smoother operation, suffers from teethingtroubles in that a residual current continues to flow in the circuit whenswitched off. However, this residual current adversely affects the use of theelectrical switch in certain fields only, and can otherwise be reduced tonegligible proportions by routine further development of the semiconductor.
6.

Rule 26(3)Rule 31(1)Rule 26(1)Inventions relating to biological material

6.1 Biological material
Applications relating to biological material are subject to the special
provisions set out in Rule 31. In accordance with Rule 26(3), the term
"biological material" means any material containing genetic information andcapable of reproducing itself or being reproduced in a biological system. If
an invention involves the use of or concerns biological material which is notavailable to the public and which cannot be described in the European
patent application in such a manner as to enable the invention to be carriedout by a person skilled in the art, the disclosure is not considered to havesatisfied the requirements of Art. 83 unless the requirements ofRule 31(1), (2), first and second sentences, and 33(1), first sentence, havebeen met.
For inventions based on biological material of plant or animal origin or using
such material, it is recommended that the application, where appropriate,includes information on the geographical origin of such material, if known.
However, this is without prejudice to the examination of European patentapplications and European patents (EU Dir 98/44/EC, rec. 27).
6.2 Public availability of biological material
The division must form an opinion as to whether or not the biologicalmaterial is available to the public. There are several possibilities. The
biological material may be known to be readily available to those skilled in
the art, e.g. baker's yeast or Bacillus natto, which is commercially available,
it may be a standard preserved strain, or other biological material which thedivision knows to have been preserved in a recognised depositary
institution and to be available to the public without restriction (see noticefrom the European Patent Office dated 7 July 2010, OJ EPO 2010, 498).
Alternatively, the applicant may have given in the description sufficient
information as to the identifying characteristics of the biological material

March 2023

Guidelines for Examination in the EPO

Part F – Chapter III-5

and as to the prior availability to the public without restriction in a depositary
institution recognised for the purposes of Rule 33(6) to satisfy the division(see the notice from the European Patent Office dated 7 July 2010,
OJ EPO 2010, 498). In any of these cases no further action is called for. If,
however, the applicant has given no or insufficient information on publicavailability and the biological material is a particular strain not falling within
the known categories such as those already mentioned, then the divisionmust assume that the biological material is not available to the public. It
must also examine whether the biological material could be described in
the European patent application in such a manner as to enable theinvention to be carried out by a person skilled in the art (see, in particular,
F-III, 3 and G-II, 5.5).
6.3 Deposit of biological material
If the biological material is not available to the public and if it cannot be
described in the application in such a manner as to enable the invention to
be carried out by a person skilled in the art, the division must check:(i)whether the application as filed gives such relevant information as isavailable to the applicant on the characteristics of the biologicalmaterial. The relevant information under this provision concerns theclassification of the biological material and significant differencesfrom known biological material. For this purpose, the applicant must,
to the extent available, indicate morphological and biochemical
characteristics and the proposed taxonomic description.
The information on the biological material in question which is
generally known to the skilled person on the date of filing is as a rulepresumed to be available to the applicant, who must therefore
provide it. If necessary, it has to be provided through experiments inaccordance with the relevant standard literature.
For characterising bacteria, for example, the relevant standard work
would be R.E. Buchanan, N.E. Gibbons: Bergey's Manual of
Determinative Bacteriology.
Against this background, information needs to then be given on every
further specific morphological or physiological characteristic relevant
for recognition and propagation of the biological material,e.g. suitable media (composition of ingredients), in particular where
the latter are modified.
Abbreviations for biological material or media are often less wellknown than the applicant assumes and are therefore to be avoided
or written in full at least once.
If biological material is deposited that cannot replicate itself but must
be replicated in a biological system (e.g. viruses, bacteriophages,
plasmids, vectors or free DNA or RNA), the above-mentioned
information is also required for such biological system. If, forexample, other biological material is required, such as host cells or
helper viruses, that cannot be sufficiently described or is not

Rule 31(1) and(2)

Part F – Chapter III-6

Guidelines for Examination in the EPO

March 2023

available to the public, this material must also be deposited andcharacterised accordingly. In addition, the process for producing thebiological material within this biological system must be indicated.
In many cases the above required information will already have been
given to the depositary institution (see Rule 6.1(a)(iii) and 6.1(b) of
the Regulation under the Budapest Treaty) and need only beincorporated into the application;(ii)

whether the name of the depositary institution and the accession
number of the deposit were supplied at the date of filing. If the nameof the depositary institution and the accession number of the deposit
were submitted later, it is checked whether they were filed within therelevant period under Rule 31(2). If that is the case, it is then further
checked whether on the filing date any reference was supplied whichenables the deposit to be related to the later filed accession number.
Normally the identification reference which the depositor gave to thedeposit is used in the application documents. The relevant document
for later filing the data pursuant to Rule 31(1)(c) could be a lettercontaining the name of the depositary institution, the accession
number and the above-mentioned identification reference or,alternatively, the deposit receipt, which contains all these data (seealso G 2/93 and A-IV, 4.2); and(iii)

whether the deposit was made by a person other than the applicant
and, if so, whether the name and the address of the depositor arestated in the application or were supplied within the relevant period
under Rule 31(2). In such a case, the division must also check
whether the document fulfilling the requirements mentioned inRule 31(1)(d) was submitted to the EPO within the same time limit(see A-IV, 4.1 for details of when this document referred to inRule 31(1)(d) is required).

The division, in addition to the checks referred to under (i) to (iii) above,asks for the deposit receipt issued by the depositary institution(see Rule 7.1 of the Regulation under the Budapest Treaty) or forequivalent proof of the deposit of a biological material if such proof has notbeen filed before (see (ii) above and A-IV, 4.2). This is to provide evidence
for the indications made by the applicant pursuant to Rule 31(1)(c).
If this deposit receipt has already been filed within the relevant time period
according to Rule 31(2), this document on its own is regarded assubmission of the information according to Rule 31(1)(c).
Rule 33(6)In addition, the depositary institution named must be one of the recognised
institutions listed in the Official Journal of the EPO. An up-to-date list isregularly published in the Official Journal.
Where a deposit was originally not made under the Budapest Treaty, it
must be converted to a deposit made within the purview of the Budapest
Treaty no later than the date of filing of the European patent application inorder to fulfil the requirement of Rule 31(1)(a).

March 2023

Guidelines for Examination in the EPO

Part F – Chapter III-7

If any of these requirements is not satisfied, the biological material inquestion cannot be considered as having been disclosed pursuant toArt. 83 by way of reference to the deposit.
Moreover, there are two situations in which the applicant can fileinformation concerning the deposit which is required under Rule 31(1)(c),and where applicable also under Rule 31(1)(d), in a document filed after theaccorded filing date and within the relevant time limit for filing that
document, but after the expiry of one of the time limits under
Rule 31(2)(a) to Rule 31(2)(c). As in the preceding paragraph, theconsequence of the information being filed after the relevant time limit
under Rule 31(2) is that the biological material is deemed not to have been
disclosed pursuant to Art. 83 by way of reference to the deposit. Thesesituations are those in which the information concerning the deposit iscontained in either:(a)a previously filed application to which reference is made under
Rule 40(1)(c), the copy of that application being filed within either thetwo-month period under Rule 40(3) or that under Rule 55; or(b)missing parts of the description filed later, within the two-month
period under Rule 56(2), when the requirements of Rule 56(3) aresatisfied, or correct application documents or parts filed later, within
the two-month period under Rule 56a(3), when the requirements ofRule 56a(4) are satisfied, so that the application is not redated.

6.4 Priority claim
An application may claim the priority of a previous application with regard tounavailable biological material mentioned in F-III, 6.1. In this case, theinvention is considered disclosed in the previous application for the purposeof the priority claim under Art. 87(1) only if the deposit of the biologicalmaterial was made no later than the date of filing of the previous applicationand in accordance with the requirements of the country in which it was filed.
Also, the reference to the deposit in the previous application must be madein a manner enabling it to be identified. Where the deposit of the biologicalmaterial referred to in the European patent application is not the same as
the deposit referred to in the priority, it is up to the applicant, if the EPO
considers it necessary, to provide evidence that the biological material isidentical (see also the notice from the EPO dated 7 July 2010,
OJ EPO 2010, 498).
6.5 Euro-PCT cases
International applications relating to the aforementioned unavailable
biological material and designating or electing the EPO must comply with
Rule 13bis PCT in conjunction with Rule 31. That means that for sufficient
disclosure of the material the deposit with a recognised depositary
institution must be made not later than the international filing date, relevant
information must be given in the application and the necessary indications
must be furnished as required during the international phase (see also thenotice from the EPO dated 7 July 2010, OJ EPO 2010, 498).

Rule 31
Rule 40(1)(c)Rule 56(2) and(3)
Rule 56a(3) andRule 56a(4)Part F – Chapter III-8

Guidelines for Examination in the EPO

March 2023

7. Proper names, trade marks and trade names
The use of proper names, trade marks or trade names or similar words torefer to materials or articles is undesirable in so far as such words merely
denote origin or where they may relate to a range of different products. If
such a word is used, then, where it is necessary in order to satisfy therequirements of Art. 83, the product must be sufficiently identified, without
reliance upon the word, to enable the invention to be carried out by theskilled person at the date of filing. However, where such words havebecome internationally accepted as standard descriptive terms and haveacquired a precise meaning (e.g. "Bowden" cable, "Belleville" washer,"Panhard" rod, "caterpillar" belt) they may be allowed without further
identification of the product to which they relate. For the assessment of theclarity of claims referring to a trade mark (Art. 84), see F-IV, 4.8.
8. Reference documents
References in European patent applications to other documents may relate
either to the background art or to part of the disclosure of the invention.
Where the reference document relates to the background art, it may be in
the application as originally filed or introduced at a later date(see F-II, 4.3 and 4.4 and H-IV, 2.2.6 H-IV, 2.2.7).
Where the reference document relates directly to the disclosure of theinvention (e.g. details of one of the components of a claimed apparatus),then the examining division first considers whether knowing what is in thereference document is in fact essential for carrying out the invention as
meant by Art. 83.
If not essential, the usual expression "which is hereby incorporated byreference", or any expression of the same kind, needs to be deleted fromthe description.
Art. 65

If matter in the document referred to is essential to satisfy the requirementsof Art. 83, the examining division requires the deletion of theabove-mentioned expression and that, instead, the matter is expressly
incorporated into the description, because the patent specification must,
regarding the essential features of the invention, be self-contained,
i.e. capable of being understood without reference to any other document.
Furthermore, documents are not part of the text to be translated pursuant toArt. 65 (T 276/99).
Such incorporation of essential matter or essential features is, however,subject to the restrictions set out in H-IV, 2.2.1. It may be that the searchdivision has requested the applicant to furnish the document referred to, inorder to be able to carry out a meaningful search (see B-IV, 1.3).
If, for the disclosure of the invention, a document is referred to in an
application as originally filed, the relevant content of the reference
document is to be considered as forming part of the content of theapplication for the purpose of citing the application under Art. 54(3) against
later applications. For reference documents not available to the public

March 2023

Guidelines for Examination in the EPO

before the filing date of the application this applies only if the conditions set
out hereto in H-IV, 2.2.1 are fulfilled.
Because of this effect under Art. 54(3), it is very important that, where areference is directed only to a particular part of the document referred to,that part needs to be clearly identified in the reference.
9. "Reach-through" claims
In certain technical areas (e.g. biotechnology, pharmacy) cases occur
where:(i)(ii)

one of the following and its use in a screening method have been
defined as the only contribution to the art–

a polypeptide–

a protein–a receptor–

an enzyme, etc., ora new mechanism of action of such molecule has been defined.

It may happen that such applications contain so-called "reach-through"claims, i.e. claims directed to a chemical compound (or the use of thatcompound) defined only in functional terms with regard to the technicaleffect it exerts on one of the above molecules.
Typical examples of such claims would be: "An agonist/antagonist topolypeptide X [optionally as identified by the screening method ofclaim A]."; "An agonist/antagonist to polypeptide X [optionally as identified
by the screening method of claim A], for use in therapy."; "Anagonist/antagonist to polypeptide X [optionally as identified by thescreening method of claim A], for use in the treatment of disease Y.", where
the description indicates that polypeptide X is involved in disease Y.
According to Art. 83 and Rule 42(1)(c), the claim must contain sufficienttechnical disclosure of the solution to the problem. A functional definition ofa chemical compound ("reach-through" claim) covers all compounds
possessing the activity or effect specified in the claim. It would be an undue
burden to isolate and characterise all potential compounds(e.g. agonists/antagonists), without any effective pointer to their identity(see F-III, 1), or to test every known compound and every conceivable
future compound for this activity to see if it falls within the scope of theclaim. In effect, the applicant is attempting to patent what has not yet been
invented, and the fact that the applicant can test for the effect used todefine the compounds does not necessarily confer sufficiency on the claim;in fact it constitutes an invitation for the skilled person to perform a research
programme (see T 435/91 (Reasons 2.2.1), followed by T 1063/06(Headnote II)).

Part F – Chapter III-9

Part F – Chapter III-10

Guidelines for Examination in the EPO

March 2023

In general, claims directed to merely functionally defined chemicalcompounds that are to be found by means of a new kind of research tool(e.g. using a new screening method based on a newly discovered molecule
or a new mechanism of action) are directed to future inventions, for whichpatent protection under the EPC is not designed. In the case of such"reach-through" claims, it is both reasonable and imperative to limit the
subject-matter of the claims to the actual contribution to the art(see T 1063/06 (Headnote I)).
10. Sufficiency of disclosure and Rule Rules 56 and 56a
Missing parts under Under Rule 56, and correct application documents orparts under Rule 56a missing parts may be withdrawn in order to maintainthe original filing date, and these parts are then deemed to be no longer
part of the application (see also A-II, 5.4.2 and 5.5, A-II, 6.5, C-III, 1, andH-IV, 2.2.2 and H-IV, 2.2.3).
In this case, the division must carefully evaluate whether the invention isstill sufficiently disclosed without relying on the technical information
contained in the withdrawn missing parts. If the division reaches theconclusion that the requirements of Art. 83 are not satisfied, acorresponding objection is raised. Ultimately, the application may berefused for lack of sufficient disclosure (see F-III, 3 to 5).
11. Sufficiency of disclosure and clarity
An ambiguity in the claims may lead to an insufficiency objection. However,ambiguity also relates to the scope of the claims, i.e. Art. 84 (see F-IV, 4).
Normally, therefore, an ambiguity in a claim will lead to an objection under
Art. 83 only if the whole scope of the claim is affected, in the sense that it is
impossible to carry out at all the invention defined therein. Otherwise an
objection under Art. 84 is appropriate (see T 608/07, T 1811/13).
In particular (see T 593/09), where a claim contains an ill-defined("unclear", "ambiguous") parameter (see also F-IV, 4.11) and where, as aconsequence, a person skilled in the art would not know whether they were
working within or outside of the scope of the claim, this, by itself, is not areason to deny sufficiency of disclosure as required by Art. 83. Nor is sucha lack of clear definition necessarily a matter for objection under Art. 84
only. What is decisive for establishing insufficiency within the meaning ofArt. 83 is whether the parameter, in the specific case, is so ill-defined that aperson skilled in the art is not able, on the basis of the disclosure as awhole and using common general knowledge, to identify (without undue
burden) the technical measures necessary to solve the problem underlying
the application at issue, e.g. see T 61/14.
There is a delicate balance between Art. 83 and Art. 84, which has to beassessed on the merits of each individual case. Care has therefore to betaken in opposition that an insufficiency objection is not merely a hidden
objection under Art. 84, especially in the case of ambiguities in the claims(T 608/07). On the other hand, even though lack of support/clarity is not a
ground for opposition (see also F-IV, 6.4), a problem related to it may infact be of concern under Art. 83.

March 2023

Guidelines for Examination in the EPO

12. Sufficiency of disclosure and inventive step
If the claimed invention lacks reproducibility, this may become relevant
under the requirements of sufficiency of disclosure or inventive step. The
technical effect achieved by the invention solves the problem which
underlies the application. If an invention lacks reproducibility because its
desired technical effect as expressed in the claim is not achieved, thisresults in a lack of sufficient disclosure, which has to be objected to under
Art. 83. Otherwise, i.e. if the effect is not expressed in the claim but is partof the problem to be solved, there is a problem of inventive step (seeG 1/03, Reasons 2.5.2, T 1079/08, T 1319/10, T 5/06 and T 380/05).
See F-III, 3 for cases where successful performance of the invention isinherently impossible because it would be contrary to the well-establishedlaws of physics.

Part F – Chapter III-11

March 2023

Guidelines for Examination in the EPO

Part F – Chapter IV-1

Chapter IV – Claims (Art. 84 and formal
requirements)
1. General
The application must contain "one or more claims".

Art. 78(1)(c)These must:

Art. 84(i)"define the matter for which protection is sought";(ii)"be clear and concise"; and(iii)"be supported by the description".

Since the extent of the protection conferred by a European patent orapplication is determined by the claims (interpreted with the help of thedescription and the drawings), clarity of the claims is of the utmost
importance (see also F-IV, 4).
2.

Art. 69(1)Form and content of claims

2.1 Technical features
The claims must be drafted in terms of the "technical features of theinvention". This means that claims must not contain any statements
relating, for example, to commercial advantages or other matters not
related to "carrying out" the invention, but statements of purpose areallowed if they assist in defining the invention.

Rule 43(1)It is not necessary that every feature is expressed in terms of a structurallimitation. Functional features may be included provided that a skilled
person would have no difficulty in providing some means of performing thisfunction without exercising inventive skill (see F-IV, 6.5). For the specificcase of a functional definition of a pathological condition,
see F-IV, 4.21 F-IV, 4.22.
Claims to the use of the invention, in the sense of the technical application
thereof, are allowable.
2.2 Two-part form
Rule 43(1)(a) and (b) define the two-part form which a claim must have"wherever appropriate".
The first part or "preamble" needs to contain a statement indicating "thedesignation of the subject-matter of the invention", i.e. the general technicalclass of apparatus, process, etc. to which the invention relates, followed bya statement of "those technical features which are necessary for thedefinition of the claimed subject-matter but which, in combination, are partof the prior art". This requirement to state prior-art features in the first partof the claim is applicable only to independent claims and not to dependentclaims (see F-IV, 3.4). It is clear from the wording of Rule 43 that it isnecessary only to refer to those prior-art features which are relevant to theRule 43(1)Part F – Chapter IV-2

Guidelines for Examination in the EPO

March 2023

invention. For example, if the invention relates to a photographic camera
but the inventive step relates entirely to the shutter, it would be sufficient for
the first part of the claim to read: "A photographic camera including a focal
plane shutter" and there is no need to refer also to the other known featuresof a camera such as the lens and view-finder.
The second part or "characterising portion" needs to state the features
which the invention adds to the prior art, i.e. the technical features forwhich, in combination with the features stated in the first part, protection issought.
If a single document in the state of the art according to Art. 54(2), e.g. citedin the search report, reveals that one or more features in the second part ofthe claim were already known in combination with all the features in the firstpart of the claim and in that combination have the same effect as they havein the full combination according to the invention, the division will requirethat such feature or features be transferred to the first part.
Where, however, a claim relates to a novel combination, and where thedivision of the features of the claim between the preamble and thecharacterising part could be made in more than one way without
inaccuracy, applicants must not be pressed, unless there are very
substantial reasons, to adopt a different division of the features from thatwhich they have chosen, if their version is not incorrect. If the applicant
insists on including more features in the preamble than can be derived fromthe closest available prior art, this is accepted.
If no other prior art is available, this first part of the claim could be used toraise an objection on the ground of lack of inventive step (see G-VII, 5.1,
last paragraph).
2.3 Two-part form unsuitable
Subject to what is stated in F-IV, 2.3.2, final sentence, applicants are
required to follow the above two-part formulation in their independent claim
or claims, where, for example, it is clear that their invention resides in a
distinct improvement in an old combination of parts or steps. However, as isindicated by Rule 43, this form need be used only in appropriate cases. The
nature of the invention may be such that this form of claim is unsuitable,
e.g. because it would give a distorted or misleading picture of the invention
or the prior art. Examples of the kind of invention which may require adifferent presentation are:(i)the combination of known integers of equal status, the inventive step
lying solely in the combination;(ii)

the modification of, as distinct from addition to, a known chemical
process e.g. by omitting one substance or substituting one substancefor another; and(iii)

a complex system of functionally interrelated parts, the inventive step
concerning changes in several of these or in their interrelationships.

March 2023

Guidelines for Examination in the EPO

Part F – Chapter IV-3

In examples (i) and (ii), the Rule 43 form of claim may be artificial andinappropriate, whilst in example (iii) it might lead to an inordinately lengthy
and involved claim. Another example in which the Rule 43 form of claim
may be inappropriate is where the invention is a new chemical compoundor group of compounds. It is likely also that other cases will arise in which
the applicant is able to adduce convincing reasons for formulating the claim
in a different form.
2.3.1 No two-part form
There is a special instance in which the Rule 43 form of claim is avoided.
This is when the only relevant prior art is another European patentapplication falling within the terms of Art. 54(3). Such prior art musthowever be clearly acknowledged in the description (see F-II, 4.3,
penultimate paragraph, and F-II, 4.4).

Art. 54(3)2.3.2 Two-part form "wherever appropriate"
When examining whether or not a claim is to be put in the form provided forin Rule 43(1), second sentence, it is important to assess whether this formis "appropriate". In this respect the purpose of the two-part form is to allow
the skilled person to see clearly which features necessary for the definitionof the claimed subject-matter are, in combination, part of the prior art. If thisis sufficiently clear from the indication of prior art made in the description, tomeet the requirement of Rule 42(1)(b), the two-part form is not insisted
upon.
2.4 Formulae and tables
The claims, as well as the description, may contain chemical ormathematical formulae but not drawings (see the decision of the President
dated 25 November 2022, OJ EPO 2022, A113, Art. 2(8)). The claims may
contain tables but "only if their subject-matter makes the use of tables
desirable". In view of the use of the word "desirable" in this decision rule,the division does not object to the use of tables in claims where this form isconvenient.
3.

Rule 49(9)Kinds of claim

3.1 Categories
The EPC refers to different "categories" of claim ("products, process,apparatus or use"). For many inventions, claims in more than one category
are needed for full protection. In fact, there are only two basic kinds ofclaim, viz. claims to a physical entity (product, apparatus) and claims to an
activity (process, use). The first basic kind of claim ("product claim")
includes a substance or compositions (e.g. chemical compound or a
mixture of compounds) as well as any physical entity (e.g. object, article,
apparatus, machine, or system of co-operating apparatus) which is
produced by a person's technical skill. Examples are: "a steering
mechanism incorporating an automatic feed-back circuit ..."; "a woven
garment comprising ..."; "an insecticide consisting of X, Y, Z"; or "acommunication system comprising a plurality of transmitting and receiving
stations". The second basic kind of claim ("process claim") is applicable to
all kinds of activities in which the use of some material product for effecting
the process is implied; the activity may be exercised upon material

Rule 43(2)Part F – Chapter IV-4

Guidelines for Examination in the EPO

March 2023

products, upon energy, upon other processes (as in control processes) or
upon living things (see, however, G-II, 4.2 and G-II, 5.4).
Rule 43(2) in combination with Rule 44(1) should be construed aspermitting the inclusion of any one of the following combinations of claimsof different categories in the same application:(i)in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the
manufacture of said product and an independent claim for a use of
said product; or(ii)

in addition to an independent claim for a given process, an
independent claim for an apparatus or means specifically designed
for carrying out said process; or(iii)

in addition to an independent claim for a given product, an
independent claim for a process specially adapted for the
manufacture of said product and an independent claim for anapparatus or means specifically designed for carrying out said
process.

Art. 82

However, while a single set of independent claims according to any one of
the combinations (i), (ii) or (iii) above is always permissible, a plurality ofsuch sets of independent claims in one European patent application can
only be allowed if the specific circumstances defined in Rule 43(2)(a) to
Rule 43(2)(c) apply and the requirements of Art. 82 and Art. 84 are met.
The proliferation of independent claims arising out of a combined effect of
this kind may therefore be allowed only by way of an exception.

Art. 64(2)If the subject-matter of a European patent is a process, the protection
conferred by the patent extends to the products directly obtained by such a
process.

Rule 43(2)3.2 Number of independent claims
According to Rule 43(2), as applicable to all European patent applications
in respect of which a communication under Rule 51(4) EPC 1973
(corresponding to Rule 71(3) EPC 2000) was not issued by
2 January 2002, the number of independent claims is limited to one
independent claim in each category.
Exceptions from this rule can only be admitted in the specific circumstances
defined in sub-paragraphs (a), (b) or (c) of this rule, provided therequirement of Art. 82 with regard to unity is met (see F-V).
The following are examples of typical situations falling within the scope ofthe exceptions from the principle of one independent claim per category:(i)

Examples of a plurality of interrelated products (Rule 43(2)(a))–

plug and socket

March 2023

Part F – Chapter IV-5

Guidelines for Examination in the EPO–

transmitter – receiver–intermediate(s) and final chemical product–gene – gene construct – host – protein – medicament

For the purpose of Rule 43(2)(a), the term "interrelated" is interpreted
to mean "different objects that complement each other or work
together". In addition, Rule 43(2)(a) can be interpreted as covering
apparatus claims, since the term "products" is considered to include
apparatuses. Likewise, it may include systems, sub-systems andsub-units of such systems, as long as these entities are interrelated.
Interrelated methods claims may also fall under the exception ofRule 43(2)(a).
(ii)

(iii)

(iv)

Examples of a plurality of different inventive uses of a product orapparatus (Rule 43(2)(b))–

claims directed to further medical uses when a first medical
use is known (see G-II, 4.2)–

claims directed to the use of compound X for multiple
purposes, e.g. for cosmetically fortifying hair and for promoting
hair growth

Examples of alternative(Rule 43(2)(c))

solutionstoaparticular

problem–a group of chemical compounds–

two or more processes for the manufacture of suchcompounds

Examples of allowable claim types–

Claims directed to multiple methods involving a novel andinventive polypeptide P, e.g. an enzyme that controls a
specific step in the synthesis of a compound:a method for manufacturing the polypeptide P,
a method for manufacturing the compound by using either theisolated polypeptide or host cells expressing said polypeptide,a method for selecting a host cell based on whether or not it
expresses the polypeptide of the invention.

–

A data sending method for sending a data packet between aplurality of devices coupled to a bus;
a data receiving method for receiving a data packet between aplurality of devices coupled to a bus.

Part F – Chapter IV-6

Guidelines for Examination in the EPO–

March 2023

Methods of operating a data-processing system comprising
steps A, B, … – a data-processing apparatus/systemcomprising means for carrying out said method – a computer
program [product] adapted to perform said method – acomputer-readable storage medium/data carrier comprisingsaid program;

Note however that when several independent claims are directed toequivalent embodiments that are not sufficiently different (e.g. computer
program adapted to perform said method, optionally carried on an electriccarrier signal – computer program comprising software code adapted toperform method steps A, B …), the exceptions under Rule 43(2) usually do
not apply.
For the purpose of Rule 43(2)(c), the term "alternative solutions" can beinterpreted as "different or mutually exclusive possibilities". Moreover, if it ispossible to cover alternative solutions by a single claim, the applicant
should do so. For example, overlaps and similarities in the features of the
independent claims of the same category are an indication that it would beappropriate to replace such claims with a single independent claim, e.g. byselecting a common wording for the essential features (see F-IV, 4.5).
3.3 Objection under Rule 43(2) or Rule 137(5)Where an unjustified plurality of independent claims in the same category
persists after the search (see B-VIII, 4.1 and B-VIII, 4.2) in the application
under examination, an objection is raised under Rule 43(2). If noRule 62a(1) invitation was sent at the search stage, the examining division
can still raise an objection under Rule 43(2). If the application is aEuro-PCT application not subject to the preparation of a supplementary
European search report (see B-II, 4.3.1), an objection under Rule 43(2)may also arise in examination.
Rule 43(2)When an objection under Rule 43(2) arises, the applicant is invited toamend the claims appropriately. If the search was restricted in accordancewith Rule 62a, and the examining division upholds the objection under
Rule 43(2) despite possible counter-arguments provided by the applicant inresponse to the invitation under Rule 62a(1) (see B-VIII, 4.2.2) or to thesearch opinion under Rule 70a (see B-X, 8), the claims must be amended
in such a way as to result in the removal of all subject-matter excluded fromthe search (Rule 62a(2)) and the description amended accordingly(see H-II, 5).
If in reply to the reasoned objection (raised or confirmed in acommunication from the examining division) the additional independentclaims are maintained and no convincing arguments are presented that oneof the situations referred to in sub-paragraphs (a) to (c) of Rule 43(2)applies, the application may be refused under Art. 97(2).
If the application is amended to provide a set of claims complying with
Rule 43(2), but containing one or more claims directed to subject-matterexcluded from the search in accordance with Rule 62a(1), an objection
under Rule 137(5) arises and such amendments may not be admitted (seeMarch 2023

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Part F – Chapter IV-7

also H-II, 6 H-IV, 4 and H-II, 6.1 H-IV, 4.1.1). However, before such a
decision can be taken, it will be necessary to allow the applicant tocomment according to Art. 113(1) on the underlying issue of whether or not
the claims in respect of which the invitation under Rule 62a(1) was sent did
in fact comply with Rule 43(2).
The burden of proof concerning an objection under Rule 43(2) is initiallyshifted onto the applicant, i.e. it is up to the applicant to argue convincingly
why additional independent claims can be maintained. For example, themere statement that the number of claims is the minimum necessary toprovide the overall scope of protection which the applicant seeks is not aconvincing argument (see T 56/01, Reasons 5).
Where the application also lacks unity of invention, the division may raise
an objection under either Rule 43(2) or Art. 82 or under both. The applicant
cannot contest which of these objections has priority.
3.4 Independent and dependent claims
All applications will contain one or more "independent" claims directed tothe essential features of the invention. Any such claim may be followed by
one or more claims concerning "particular embodiments" of that invention.
It is evident that any claim relating to a particular embodiment must
effectively include also the essential features of the invention, and hencemust include all the features of at least one independent claim. The term"particular embodiment" is construed broadly as meaning any more specificdisclosure of the invention than that set out in the independent claim or
claims.
Any claim which includes all the features of any other claim is termed a"dependent claim". Such a claim must contain, if possible at the beginning,a reference to the other claim, all features of which it includes (see,however, F-IV, 3.8 for claims in different categories). Since a dependentclaim does not by itself define all the characterising features of thesubject-matter which it claims, expressions such as "characterised in that"or "characterised by" are not necessary in such a claim but arenevertheless permissible. A claim defining further particulars of an invention
may include all the features of another dependent claim by referring back tothat claim. Also, in some cases, a dependent claim may define a particularfeature or features which may appropriately be added to more than one
previous claim (independent or dependent). It follows that there are several
possibilities: a dependent claim may refer back to one or more independentclaims, to one or more dependent claims, or to both independent anddependent claims.

Rule 43(3) and(4)

Rule 43(4)It sometimes occurs that an independent claim refers explicitly toalternative solutions and that these alternatives are also claimed separately
in dependent claims. Such claims may seem redundant, but may be
important for applicants in some national procedures if they wish to restrict
their claims.
The division objects to such claims only if they detract from the clarity of theclaims as a whole.

Art. 84

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A dependent claim referring explicitly to independent claims in two
categories as alternatives cannot be objected to on this ground alone. For
example, if the invention relates to both a composition and a use of thatcomposition, it is possible for a claim specifying further features of thecomposition to be made dependent on both the independent claim for thecomposition and the independent claim for its use.
Art. 84

Rule 43(4)Objections are, however, raised to this type of claim dependency if it leads
to a lack of clarity.
3.5 Arrangement of claims
All dependent claims referring back to a single previous claim and thosereferring back to several previous claims must be grouped together to theextent and in the most appropriate way possible. The arrangement must
therefore be one which enables the association of related claims to bereadily determined and their meaning in association to be readily
construed. The division objects if the arrangement of claims is such as tocreate obscurity in the definition of the subject-matter to be protected. In
general, however, when the corresponding independent claim is allowable,
the division does not concern itself unduly with the subject-matter of
dependent claims, provided it is satisfied that they are truly dependent andthus in no way extend the scope of protection of the invention defined in thecorresponding independent claim (see also F-IV, 3.8).
3.6 Subject-matter of a dependent claim
If the two-part form is used for the independent claim(s), dependent claims
may relate to further details of features not only of the characterising
portion but also of the preamble.

Art. 84
Art. 82

3.7 Alternatives in a claim
A claim, whether independent or dependent, may refer to alternatives,
provided that the number and presentation of alternatives in a single claim
does not make the claim obscure or difficult to construe and provided thatthe claim meets the requirements of unity (see also F-V, 3.2.1 and 3.2). In
the case of a claim defining (chemical or non-chemical) alternatives, i.e. a
so-called "Markush grouping", unity of invention is considered to be present
if the alternatives are of a similar nature and can fairly be substituted for
one another (see F-V, 3.2.5).
3.8 Independent claims containing a reference to another claim or tofeatures from a claim of another category
A claim containing a reference to another claim is not necessarily adependent claim as defined in Rule 43(4). One example of this is a claim
referring to a claim of a different category (e.g. "Apparatus for carrying out
the process of claim 1 ...", or "Process for the manufacture of the product ofclaim 1 ..."). Similarly, in a situation like the plug and socket example of
F-IV, 3.2(i), a claim to the one part referring to the other co-operating part(e.g. "plug for co-operation with the socket of claim 1 ...") is not adependent claim. In all these examples, the division carefully considers theextent to which the claim containing the reference necessarily involves thefeatures of the claim referred to and the extent to which it does not. Indeed,
objections on the grounds of lack of clarity and failure to state the technicalMarch 2023

Guidelines for Examination in the EPO

features (Rule 43(1)) apply to a claim which simply says "Apparatus forcarrying out the process of claim 1". Since the change of category alreadymakes the claim independent, the applicant is required to set out clearly inthe claim the essential features of the apparatus.
The same is true for a claim which says "Method for using an apparatus
according to claim 1". The method claim, formulated as a use claim, lacks
the steps that are carried out in order to use the apparatus (see F-IV, 4.16)
and is therefore not clear.
For claims directed to computer-implemented inventions, in which
independent claims often comprise references to other independent claims,
see F-IV, 3.9.
The subject-matter of a claim in one category may also to some extent be
defined in terms of features from another category; therefore an apparatus
may be defined in terms of functions it is able to perform, provided thestructure is made sufficiently clear; or a process may be defined in terms ofessential structural features of the apparatus for carrying it out; or anelement of an apparatus may be defined in terms of how it is made.
However, in the wording of these claims and in the assessment of theclaimed subject-matter, a clear distinction must be maintained between
product claims (for a device, apparatus or system) and process claims (fora process, activity or use). For example, a claim for an apparatus cannot
normally be limited only by the manner in which the apparatus is used; forthis reason, a claim which simply reads "Apparatus Z, when used forcarrying out process Y" is also objected to on the grounds of lack of clarityand failure to state the technical features (Rule 43(1)).
No separate examination for the novelty and inventive step of a process
claim for producing a product is necessary, provided that:–

all features of the product as defined in the product claim inevitably(see also G-VII, 14) result from the claimed process (see F-IV, 4.5
and T 169/88), and–the product claim is patentable.

This also applies in the case of a claim for the use of a product, when the
product is patentable and is used with its features as claimed(see T 642/94). In all other instances, the patentability of the claim referred
to does not necessarily imply the patentability of the independent claim
containing the reference. If the process, product and/or use claims havedifferent effective dates (see F-VI, 1 and 2), a separate examination may
still be necessary in view of intermediate documents (see also G-VII, 14).
3.9 Claims directed to computer-implemented inventions
The expression "computer-implemented inventions" (CII) covers claims
which involve computers, computer networks or other programmableapparatus, whereby at least one feature is realised by means of a program.

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Claims directed to CII should define all the features which are essential forthe technical effect of the process which the computer program is intended
to carry out when it is run (see F-IV, 4.5.2, last sentence). An objection
under Art. 84 may arise if the claims contain program listings. Short
excerpts from programs may be accepted in the description (see F-II, 4.12).
In the following three sections, a distinction is made between threesituations. The practice defined in F-IV, 3.9.1 is confined to inventions inwhich all the method steps can be carried out by generic data processingmeans. F-IV, 3.9.2, on the other hand, relates to inventions in which at least
one method step defines the use of specific data processing means orother technical devices. Inventions that are realised in a distributed
computing environment are discussed in F-IV, 3.9.3.
3.9.1 Cases where all method steps can be fully implemented bygeneric data processing means
A common type of CII relates to subject-matter where all the method steps
can fully be carried out by computer program instructions running on means
which, in the context of the invention, provide generic data processing
functions. Such means can, for example, be embedded in a personal
computer, smartphone, printer etc. In such inventions, although different
claim structures are possible, the set of claims usually starts with a method
claim. Further claims in other categories with subject-matter corresponding
to that of the method may be included to obtain complete protection of theinvention. If the invention concerns software which can be loaded intomemory, transmitted over a network or distributed on a data carrier, a claim
to a computer program [product] may also be present in addition to acomputer-implemented method. The category of a computer program[product] claim is distinguished from that of a corresponding
computer-implemented method (T 424/03 and G 3/08). The following
non-exhaustive list comprises examples of acceptable claim formulations(T 410/96, T 1173/97 and T 2140/08) in such a set of claims:
(i)

(ii)

Method claim (claim 1)–

A computer-implemented method comprising steps A, B, ...

–A method carried out by a computer comprising steps A, B, ...

Apparatus/device/system claim (claim 2)–

A data processing apparatus/device/system comprising meansfor carrying out [the steps of] the method of claim 1.

–

A data processing apparatus/device/system comprising meansfor carrying out step A, means for carrying out step B, ...

–A data processing apparatus/device/system comprising aprocessor adapted to/configured to perform [the steps of] themethod of claim 1.

March 2023

(iii)

(iv)

Guidelines for Examination in the EPO

Computer program [product] claim (claim 3)–

A computer program [product] comprising instructions which,when the program is executed by a computer, cause thecomputer to carry out [the steps of] the method of claim 1.

–

A computer program [product] comprising instructions which,when the program is executed by a computer, cause thecomputer to carry out steps A, B, ....

Computer-readable [storage] medium/data carrier claim (claim 4)–

A computer-readable [storage] medium comprising instructions
which, when executed by a computer, cause the computer tocarry out [the steps of] the method of claim 1.

–

A computer-readable [storage] medium comprising instructions
which, when executed by a computer, cause the computer tocarry out steps A, B, ...

–A computer-readable data carrier having stored thereon thecomputer program [product] of claim 3.

–

A data carrier signal carrying the computer program [product]of claim 3.

In formulation (ii) above, apparatus features of the means-plus-function
type ("means for ...") are interpreted as means adapted to carry out therespective steps/functions, rather than merely means suitable for carrying
them out (T 410/96). There is no particular preference of wording among"comprising means for", "adapted to", "configured to" or equivalents. In thisway, novelty is conferred over an unprogrammed data processing
apparatus or a data processing apparatus programmed to perform adifferent function.
An objection under Rule 43(2) is not raised if the claim set comprises one
claim from each of the above formulations (i)-(iv). In these cases, aninvitation under Rule 62a(1) is therefore not sent at the search stage since
the requirements of Rule 43(2) are fulfilled.
However, an objection under Rule 43(2) may be raised if more than one
claim is present from a heading (i)-(iv), for example if there are two or morecomputer program [product] claims which cannot be considered as fallingunder one of the exceptions of Rule 43(2) (F-IV, 3.2).
When assessing the novelty and inventive step of a set of claims as defined
above (formulations (i)-(iv)), the division usually starts with the method
claim. If the subject-matter of the method claim is considered novel andinventive, the subject-matter of the other claims in a set formulated inaccordance with the headings above will normally be novel and inventive
as well, provided they comprise the features corresponding to all thosewhich assure the patentability of the method.

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Claims related to CII which are formulated differently to those in theformulations (i)-(iv) defined above are assessed on a case-by-case basis inview of the requirements of clarity, novelty and inventive step (see also
F-IV, 3.9.2).
For example, when the invention is realised in a distributed computing
environment or involves interrelated products, it may be necessary to referto the specific features of the different entities and to define how theyinteract to ensure the presence of all essential features, rather than making
a mere reference to another claim as in the above formulations (ii)-(iv). In
such cases, further independent claims to interrelated products and theircorresponding methods may also be allowable under Rule 43(2)(a)(F-IV, 3.2 and F-IV, 3.9.3).
Similarly, if user interaction is required, an objection under Art. 84 mayarise if it is not possible to determine from the claim which steps are carriedout by the user.
Furthermore, a claim to a computer-implemented data structure in addition
to formulations (i)-(iv) may be allowable under Rule 43(2) if it is defined byits own technical features, e.g. by a well-defined structure as in T 858/02,
possibly with references to the corresponding method or system in which it
is used. However, a computer-implemented data structure does notnecessarily comprise features of the process by which it is generated. It is
not necessarily restricted by a method in which it is used, either. Therefore,a claim to a computer-implemented data structure usually cannot be
defined merely by reference to a method or as an outcome of a process.
For further information on data structures, see G-II, 3.6.3.
For the assessment of inventive step for claims comprising features related
to exclusions under Art. 52(2), as is often the case with CII, see G-VII, 5.4.
3.9.2 Cases where method steps define additional devices and/or
specific data processing means
Where a method claim includes steps defined as being carried out by
devices other than generic data processing means, a corresponding device
and/or computer program claim may need more than a mere reference tothe method claim as in formulations (i)-(iv) in F-IV, 3.9.1 to fulfil therequirements of Art. 84 (see also F-IV, 3.8). Furthermore, if not all thefeatures of the method claim are reflected in claims in other categories
referring to the method, said claims in other categories have to beconstrued and examined separately with respect to novelty and inventive
step.
In particular in applied fields such as medical devices, measuring, optics,
electro-mechanics or industrial production processes, method claims
frequently involve steps of manipulating or interacting with technicalphysical entities by using computer control. These method steps may notalways be fully performed by the computer and the method claim mayrecite specific technical means for carrying out some of the steps. In such acase, defining a computer program claim as in F-IV, 3.9.1(iii) will normallylead to an objection under Art. 84 if the step carried out by the specificMarch 2023

Guidelines for Examination in the EPO

technical means cannot be carried out by a generic data processing means(see Example 1 below). An objection under Art. 84 may also arise if theclaims do not define which steps are carried out by the data processor orby the additional devices involved, as well as their interactions. The same
applies if specific data processing means (e.g. a particular parallel
computer architecture) are required as opposed to the generic dataprocessing means described in F-IV, 3.9.1.
On the other hand, if the method claim defines the further processing, by
generic computational means, of data received from specific technicalmeans, such as sensors, it is not necessary that the computer or computer
program claims referring to the method comprise those specific technicalmeans. In this case the specific technical means recited in the method are
not required for carrying out the method steps and formulations as in
F-IV, 3.9.1 may be appropriate (see Example 2 below).
Finally, as is the case for any essential feature, if the specific technicalmeans are essential for defining the invention, they have to be present in all
the independent claims. Whether or not a feature is essential is decided
according to the principles defined in F-IV, 4.5 and subsections, taking due
account of implicit features (F-IV, 4.5.4).
Example 1
1.

A method of determining oxygen saturation in blood in a pulse
oximeter, comprising:–receiving in an electromagnetic detector first and second
electromagnetic radiation signals from a blood-perfused tissue
portion corresponding to two different wavelengths of light;–

normalising said electromagnetic signals according to steps A,
B and C to provide normalised electromagnetic signals;–

determining oxygen saturation based on said normalised
electromagnetic signals according to steps D and E.

2.

A pulse oximeter having an electromagnetic detector and means
adapted to execute the steps of the method of claim 1.

3.

A computer program [product] comprising instructions to cause thedevice of claim 2 to execute the steps of the method of claim 1.

4.

A computer-readable medium having stored thereon the computer
program of claim 3.

Remarks: In this example, the method claim comprises a step which isdefined as being executed by specific technical means (the electromagnetic
detector in a pulse oximeter). A computer program claim making reference
only to the method would lack clarity because such a program could not be
executed e.g. on a general-purpose computer which does not have a pulse
oximeter with an electromagnetic detector. Therefore, the computerPart F – Chapter IV-13

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program claim should be defined as being executed on the pulse oximeterwith an electromagnetic detector (by referring to the device of claim 2)
rather than only referring to the method claim 1.
Example 2
1.

A computer-implemented method of determining oxygen saturation inblood, comprising:–receiving data representing first and second electromagnetic
radiation signals acquired by an electromagnetic detector froma blood-perfused tissue portion corresponding to two different
wavelengths of light;–

normalising the data representing said electromagnetic signals
according to steps A, B and C to provide normalised data;–

determining oxygen saturation based on said normalised dataaccording to steps D and E.

2.

A data processing apparatus comprising means for carrying out themethod of claim 1.

3.

A computer program [product] comprising instructions which, when
the program is executed by a computer, cause the computer to carryout the method of claim 1.

4.

A computer-readable medium having stored thereon the computer
program [product] of claim 3.

Remarks: In this example the invention lies in the further processing ofacquired data for determining the oxygen saturation in blood. The data canbe received for example from a data file storing data previously acquired by
the electromagnetic detector. Such a method can therefore be carried out
by generic data processing means, for example in the form of a desktop
computer. It does not specify the electromagnetic detector as a requiredfeature for receiving the input data. Hence, the device claim defined byreference to the method claim does not need to include the pulse oximeteror an electromagnetic detector either. Furthermore, the computer programclaim can be executed on a general-purpose computer and not on a
specific device in contrast to the case in Example 1. As a result, theformulations as in F-IV, 3.9.1 are appropriate for claims 2-4 of Example 2.
3.9.3 Cases where the invention is realised in a distributed
computing environment
Another common type of CII is realised in a distributed computing
environment. Examples are a networked client (e.g. a smartphone) andserver system, accessing storage or processing resources of a computer
cloud, devices in a peer-to-peer network performing file sharing, anaugmented reality environment with head mounted displays, autonomousvehicles interacting over an ad hoc network or maintaining a distributed
ledger using a blockchain.

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Guidelines for Examination in the EPO

For such distributed CIIs, the claim set may comprise claims directed toeach entity of the distributed system and/or to the overall system and thecorresponding methods. Such a claim set may be allowable under
Rule 43(2)(a) (F-IV, 3.2). Each independent claim must nevertheless fulfil
the requirements for patentability, in particular the requirements of Art. 54,
Art. 56 and Art. 84. For example, if the invention lies in the implementationof a computer cloud using virtual machines enabling adaptation to workloadchanges by allocating resources in an automatic manner, a client device
accessing the resources of the cloud may already be known in the art. The
claim set must also fulfil the requirements of unity.
It may be necessary to refer to the specific features of the different entities
and to define how they interact to ensure the presence of all essential
features. When referring to the interaction between the different entities,
particular care must be taken that the claim is clear. In some situations, it
may be necessary to limit the claim to the combination of the entities(see F-IV, 4.14). If the distribution of the steps of a method across theinvolved entities is essential to the invention, it will be necessary to define
which method step is carried out by which entity in order to fulfil therequirements of Art. 84. Otherwise, this may be left undefined in generic CII
claims (see F-IV, 3.9.1).
Some considerations relating to these requirements are illustrated with thehelp of the following examples. Other formulations (F-IV, 3.9.1) than theones given in the examples can also be part of the claim set but have been
omitted for reasons of brevity.
Example1.

A transmitter device comprising means for encoding data by
performing steps A and B and means to transmit the encoded data toa receiver device.

2.

A receiver device comprising means for receiving encoded data froma transmitter device and means for decoding the data by performing
steps C and D.

3.

A system comprising a transmitter device according to claim 1 and a
receiver device according to claim 2.

4.

A computer program [product] comprising instructions which, when
the program is executed by a first computer, cause the first computer
to encode data by performing steps A and B and to transmit theencoded data to a second computer.

5.

A computer program [product] comprising instructions which, when
the program is executed by a second computer, cause the second
computer to receive encoded data from a first computer and decode
the received data by performing steps C and D.

Remarks: The problem addressed by the invention is the transmission ofdata over a network. The transmitter device encodes the data using anPart F – Chapter IV-15

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algorithm comprising steps A and B and the receiver device performs thecomplementary function of decoding the data using an algorithm
comprising steps C and D. The requirements of Rule 43(2) are fulfilled
since the devices of claims 1 and 2 are interrelated in that they interact toperform the invention and solve the stated problem. Novelty and inventive
step have to be assessed for each independent claim individually. For
example, if encoding according to steps A and B enables encoding to a
known coding format in a more efficient way, and decoding according tosteps C and D is conventional, it may be that only claims 1 and 3 are new
and inventive.
4.

Art. 84

Clarity and interpretation of claims

4.1 Clarity
The requirement that the claims must be clear applies to individual claims,
i.e. to independent and dependent claims alike, and also to the claims as awhole. The clarity of the claims is of the utmost importance in view of theirfunction in defining the matter for which protection is sought. Therefore, themeaning of the terms of a claim must, as far as possible, be clear for the
person skilled in the art from the wording of the claim alone (see also
F-IV, 4.2). In view of the differences in the scope of protection which may
be attached to the various categories of claims, the division must ensurethat the wording of a claim leaves no doubt as to its category.
Where it is found that the claims lack clarity under Art. 84, this may have
led to the issuing of a partial European or supplementary European search
report under Rule 63 (see B-VIII, 3.1 and 3.2). In such cases, in theabsence of appropriate amendment and/or convincing arguments from theapplicant as to why the invitation under Rule 63(1) was not justified, anobjection under Rule 63(3) will also arise (see H-II, 5).
4.2 Interpretation
Each claim must be read giving the words the meaning and scope which
they normally have in the relevant art, unless in particular cases thedescription gives the words a special meaning, by explicit definition orotherwise. Moreover, if such a special meaning applies, the division will, so
far as possible, require the claim to be amended whereby the meaning isclear from the wording of the claim alone. This is important because it is
only the claims of the European patent, not the description, which will be
published in all the official languages of the EPO. The claim must also beread with an attempt to make technical sense out of it. Such a reading may
involve a departure from the strict literal meaning of the wording of theclaims. Art. 69 and its Protocol do not provide a basis for excluding what isliterally covered by the terms of the claims (see T 223/05).

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Guidelines for Examination in the EPO

4.3 Inconsistencies
Any inconsistency between the description and the claims must be avoided
if it could throw doubt on the subject-matter for which protection is sought
and therefore render the claim unclear or unsupported under Art. 84,
second sentence, or, alternatively, render the claim objectionable under
Art. 84, first sentence. Such inconsistency can be of the following kinds:(i)

Simple verbal inconsistency
For example, there is a statement in the description which suggeststhat the invention is limited to a particular feature but the claims are
not thus limited; also, the description places no particular emphasison this feature and there is no reason for believing that the feature isessential for the performance of the invention. In such a case, theinconsistency can be removed either by broadening the description
or by limiting the claims. Similarly, if the claims are more limited thanthe description, the claims may be broadened or the description may
be limited. See also paragraph (iii) below.

(ii)

Inconsistency regarding apparently essential features
For example, it may appear, either from general technical knowledge
or from what is stated or implied in the description, that a certain
described technical feature not mentioned in an independent claim isessential to the performance of the invention, or, in other words, isnecessary for the solution of the problem to which the invention
relates. In such a case, the claim does not meet the requirements ofArt. 84, because Art. 84, first sentence, when read in conjunction with
Rule 43(1) and (3), has to be interpreted as meaning not only that an
independent claim must be comprehensible from a technical point ofview but also that it must clearly define the subject-matter of theinvention, that is to say indicate all the essential features thereof(see T 32/82). If, in response to this objection, the applicants show
convincingly, e.g. by means of additional documents or otherevidence, that the feature is in fact not essential, they may beallowed to retain the unamended claim and, where necessary, toamend the description instead. The opposite situation in which an
independent claim includes features which do not seem essential forthe performance of the invention is not objectionable. This is a matterof the applicant's choice. The division therefore does not suggest thata claim be broadened by the omission of apparently inessential
features;(iii)

Part of the description and/or drawings is inconsistent with thesubject-matter for which protection is sought
According to Art. 84, second sentence, the claims must be supportedby the description. This means that there must not be inconsistency
between the claims and the description. Parts of the description thatgive the skilled person the impression that they disclose ways tocarry out the invention but are not encompassed by the wording of
the claims are inconsistent (or contradictory) with the claims. Such

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inconsistencies may be present in the application as originally filed or
may result from amending the claims to such an extent that they are
no longer consistent with the description or drawings.
For example, an inconsistency may exist due to the presence of analternative feature which has a broader or different meaning than afeature of the independent claim. Further, an inconsistency arises if
the embodiment comprises a feature which is demonstrablyincompatible with an independent claim.
Examples:–the independent claim defines a feature as being made of"purely substance X", whereas the description defines it as
being made of a blend of substances "X and Y";–

the independent claim defines the feature of an article
comprising nicotine-free liquid material, whereas thedescription states that the liquid material may contain nicotine.

However, it is not an inconsistency when an embodiment comprises
further features which are not claimed as dependent claims as longas the combination of the features in the embodiment isencompassed by the subject-matter of an independent claim.
Similarly, it is not an inconsistency when an embodiment fails to
explicitly mention one or more features of an independent claim as
long as they are present by reference to another embodiment or
implicit.
Example: Where the claim comprises features A, B and C taken in
combination, the passages dealing individually with how each of A, B
and C are realised are normally understood as describing therefinements of the combination defined in the claim unless there areindications to the contrary. The passages which describe only therealisation of feature A, for example by introducing features A1-A3
and discussing their advantages, but which can be interpreted as
meant for being combined with the other features of the claim, would
not need an amendment caused by the limitation of the claim from B
to B2 unless one of A1-A3 is incompatible with B2. On the other
hand, any passage explicitly referring to a sub-combination of theclaimed features (e.g. only A or A+B) as being the invention isinconsistent with the claim.
For borderline cases where there is doubt as to whether an
embodiment is consistent with the claims, the benefit of the doubt isgiven to the applicant.
The applicant must remove any inconsistencies by amending thedescription either by deleting the inconsistent embodiments ormarking appropriately so that it is clear that they do them as not fall
falling within the subject-matter for which protection is sought. See

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paragraph (i) above for the case where an inconsistency can beremoved by broadening the claims.
Example: Independent claim defines a vehicle with a broad feature ofa "motor", together with other features. The description and thedrawings comprise Embodiment 1, in which the vehicle has anelectric motor, and Embodiment 2, in which the vehicle has a
combustion engine. During the prosecution, in order to fulfil therequirements of inventive step, the independent claim is amended to
specify a vehicle employing an electric motor since the combinationof claimed features using a combustion engine was anticipated by
the prior art. Embodiment 2 is no longer consistent with theindependent claim, unless it can be inferred from this embodimentthat the combustion engine is used in combination with the electricmotor. This inconsistency can must be rectified either by removing
Embodiment 2 from the description and drawings or by marking
Embodiment 2 as not being covered by the claimed subject-matter(e.g. "Embodiment 2 is not covered by the subject-matter of theclaims" or similar wording).
An inconsistency between the description and the claims cannot be
removed by introducing at the beginning of the description a genericstatement such as "embodiments not falling under the scope of theappended claims are to be considered merely as examples suitablefor understanding the invention" without indicating which parts of thedescription are no longer covered. To remove the inconsistency,such a statement has to refer to specific embodiments (e.g.
"Embodiments X and Y are not encompassed by the wording of theclaims but are considered as useful for understanding the invention").
The terms "disclosure", "example", "aspect" or similar, on their own,
do not necessarily imply that what follows is not encompassed by anindependent claim. Unambiguous expressions have to be adopted tomark an inconsistent embodiment (e.g. by adding "not encompassedby the wording of the claims", "not according to the claimed
invention" or "outside the subject-matter of the claims") instead of
merely replacing the terms "embodiment" or "invention" by one of theaforementioned terms.
As long as the resulting text of the description does not present
conflicting information to the reader, an inconsistent embodiment
may also be remedied by ensuring that it is not referred to as being"according to the invention" throughout the description and bycomplementing the reference to it with an explicit statement to theeffect that it is retained due to being useful for understanding theinvention (e.g. "embodiment useful for understanding the invention","comparative example from background art".
Subject-matter in the description regarded as an exception topatentability under Art. 53 Art. 53(c) needs to be excised, reworded
such that it does not fall under the exceptions to patentability or
prominently marked as not being according to the claimed invention.

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For the latter case, the description may be amended by adding an
indication as follows: "The references to the methods of treatment by
therapy or surgery or in vivo diagnosis methods in examples X, Y
and Z of this description are to be interpreted as references tocompounds, pharmaceutical compositions and medicaments of thepresent invention for use in those methods". (see G-II, 4.2 foradaptation of the description for methods of treatment of the humanand animal body, G-II, 5.3 for adaptation of the description for theuse of human embryonic stem cells and G-II, 5.4 for adaptation of thedescription for plant and animals).
Moreover, features required by the independent claims may not be
described in the description as being optional using wording such as"preferably", "may" or "optionally". The description must be amended
to remove such terms if they make a mandatory feature of an
independent claim appear as being optional.
When inviting the applicant to amend the description, the division
provides examples of embodiments inconsistent with theindependent claims and brief reasons why. If the inconsistency
concerns describing a mandatory feature of an independent claim as
optional, the division provides an example passage.
See also H-V, 2 for the allowability of amendments to the description.
An inconsistency between the description/drawings and the claims may
frequently occur when, after a limitation of the claims following an invitation
under Rule 62a(1) or Rule 63(1), the subject-matter excluded from thesearch is still present in the description. Unless the initial objection was notjustified, such subject-matter is objected to under Art. 84 (inconsistency
between the claims and the description).
Furthermore, an inconsistency between the description/drawings and theclaims will occur when, after a non-unity objection (Rule 64 or Rule 164),the claims have been limited to only one of the originally claimed
inventions: the embodiments and/or examples of the non-claimed
inventions must be either deleted or clearly indicated as not being coveredby the claims.
4.4 General statements, "spirit of the invention", claim-like clauses
General statements in the description which imply that the extent ofprotection may be expanded in some vague and not precisely defined way
are not allowed. In particular, any statement which refers to the extent ofprotection being expanded to cover the "spirit of the invention" or "allequivalents" of the claims must be deleted.
Statements that refer to the extent of protection covering the "scope of theclaims" or the invention being "defined in the claims" are allowed. This does
not preclude the removal of inconsistencies (F-IV, 4.3).
Analogously, in the case where the claims are directed to a combination offeatures, any statement that seems to imply that protection is neverthelessMarch 2023

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Part F – Chapter IV-21

sought not only for the combination as a whole but also for individualfeatures or sub-combinations thereof must be deleted.
Finally, claim-like clauses must also be deleted or amended to avoid
claim-like language prior to grant since they otherwise may lead to unclarity
on the subject-matter for which protection is sought.
"Claim-like" clauses are clauses present in the description which despite
not being identified as a claim, appear as such and usually comprise an
independent clause followed by a number of clauses referring to previous
clauses. These claim-like clauses are usually found at the end of thedescription and/or in the form of numbered paragraphs, particularly indivisional or Euro-PCT applications, where the original set of claims fromthe parent or PCT application is appended to the description.
4.5

Essential features

4.5.1 Objections arising from missing essential features
The claims, which define the matter for which protection is sought, must be
clear, meaning not only that a claim must be comprehensible from atechnical point of view, but also that it must define clearly all the essential
features of the invention (see T 32/82). Furthermore, the requirement ofArt. 84 that the claims be supported by the description applies to features
which are explicitly presented in the description as being essential forcarrying out the invention (see T 1055/92). A lack of essential features in
the independent claim(s) is therefore to be dealt with under the clarity andsupport requirements.
4.5.2 Definition of essential features
Essential features of a claim are those necessary for achieving a technicaleffect underlying the solution of the technical problem with which theapplication is concerned (the problem usually being derived from thedescription). The independent claim(s) must therefore contain all features
explicitly described in the description as being necessary to carry out theinvention. Any features which, even if consistently mentioned in the context
of the invention throughout the application, do not actually contribute to thesolution of the problem are not essential features.
As a general rule, the technical effect or result produced by the feature will
provide the key to answering the question of whether or not the feature
contributes to solving the problem (see also G-VII, 5.2).
If a claim is to a process for producing the product of the invention, then theprocess as claimed must be one which, when carried out in a manner
which would seem reasonable to a person skilled in the art, necessarily has
as its end result that particular product; otherwise there is an internal
inconsistency and therefore lack of clarity in the claim.
In particular, where patentability depends on a technical effect, the claims
must be so drafted as to include all the technical features of the invention
which are essential for the technical effect (see T 32/82).

Art. 84
Rule 43(1) and(3)

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Claims towards plants or animals which are not exclusively produced by anessentially biological process comprising a functionally defined phenotypic
trait and which are worded as product-by-process claims (i.e. obtainable bycrossing a plant with a plant grown from deposited seed having accession
number XXX and selecting for a progeny plant comprising the phenotypic
trait) must fulfil the clarity requirement of Art. 84, as must any other type ofclaim. In particular, the claimed subject-matter must be defined so that the
public is left in no doubt about what the subject-matter for which protection
is sought actually is. If the process through which the claimed plant or
animal is defined does not impart identifiable and unambiguous technicalfeatures to the plant or animal, e.g. the genetic information present in the
genome, the claim directed to a plant or animal lacks clarity.
4.5.3 Generalisation of essential features
In deciding how specific the essential features must be, the provisions ofArt. 83 must be borne in mind: it is sufficient if the application as a wholedescribes the necessary characteristics of an invention in a degree of detailsuch that a person skilled in the art can perform the invention (see F-III, 3).
It is not necessary to include all details of the invention in the independentclaim. Thus a certain degree of generalisation of the claimed features may
be permitted, provided that the claimed generalised features as a whole
allow the problem to be solved. In this case a more specific definition of thefeatures is not required. This principle applies equally to structural andfunctional features.
4.5.4 Implicit features
As detailed above, an independent claim must specify explicitly all of theessential features needed to define the invention. This applies except in so
far as such features are implied by the generic terms used, e.g. a claim to a"bicycle" does not need to mention the presence of wheels.
In the case of a product claim, if the product is of a well-known kind and theinvention lies in modifying it in certain respects, it is sufficient that the claim
clearly identifies the product and specifies what is modified and in whatway. Similar considerations apply to claims for an apparatus.
4.5.5 Examples
Examples illustrating essential features can be found in the Annex to F-IV.
4.6

Relative terms

4.6.1 Clarity objections
Relative or similar terms such as "thin", "wide" or "strong" constitute a
potentially unclear element due to the fact that their meaning may change
depending on the context. For these terms to be allowed, their meaning
must be clear in the context of the whole disclosure of the application or
patent.
However, if a relative or similar term is used by the applicant as the only
feature to distinguish the subject-matter of a claim from the prior art, theuse of this term is objected to under Art. 84 unless the term has aMarch 2023

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well-recognised meaning in the particular art, e.g. "high-frequency" in
relation to an amplifier, and this is the meaning intended.
Where the relative term has no well-recognised meaning the division invites
the applicant to replace it, if possible, by a more precise wording foundelsewhere in the disclosure as originally filed. Where there is no basis in
the disclosure for a clear definition and the term is no longer the only
distinguishing feature, it may be retained in the claim, because excising it
would generally lead to an extension of the subject-matter beyond thecontent of the application as filed – in contravention of Art. 123(2).
4.6.2 Interpretation of relative terms
When the use of a relative term is allowed in a claim, this term isinterpreted by the division in the least restrictive possible way when
determining the extension of the subject-matter of the claim. As aconsequence, in many cases, a relative term is not limiting the extension of
the subject-matter of a claim.
For example, the expression "a thin metal plate" does not limit the feature"metal plate" against the prior art: a metal plate is "thin" only whencompared to another one, but it does not define an objective andmeasurable thickness. So a metal plate three millimetres thick is thin whencompared to a plate five millimetres thick, but thick when compared to aplate one millimetre thick.
As another example, when considering "an element mounted near the endof a truck", is this element mounted 1 mm from the end of the truck, 10 cm
or 2 m? The only limitation of such an expression is that the element must
be nearer to the end of the truck than to its middle, i.e. the element can bemounted anywhere in the quarter of the truck next to the end.
Also, unless otherwise clear from the context, the term "elastic" does not
limit the type of material, because elasticity is an intrinsic property of any
solid material measured by Young's modulus. In other words, taken outside
any context an elastic material can be anything from rubber to diamond.
4.7

Terms such as "about", "approximately" or "substantially"

4.7.1 Interpretation of terms such as "about", "approximately" or"substantially"
Where terms such as "about" or "approximately" are applied to a particularvalue (e.g. "about 200°C" or "approximately 200°C") or to a range(e.g. "about x to approximately y"), the value or range is interpreted as
being as accurate as the method used to measure it. If no error margins are
specified in the application, the same principles described in G-VI, 8.1
apply, i.e. the expression "about 200°C" is interpreted as having the sameround-off as "200°C". If error margins are specified in the application, theymust be used in the claims in place of the expression containing "about" orsimilar terms.
When terms such as "substantially" or "approximately" qualify a structuralunit of an apparatus (e.g. "a tray plate with a substantially circularPart F – Chapter IV-23

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circumference" or "a tray plate with an approximately curved base"), theexpression containing the term "substantially" or "approximately" will beinterpreted as a technical feature being produced within the technicaltolerance of the method used to manufacture it (e.g. cutting a metal is much
more accurate than cutting a plastic; or cutting with a CNC machine is moreaccurate than cutting by hand) unless the application suggests otherwise.
In other words, in the absence of any indication to the contrary in theapplication, the expression "a tray plate with a substantially circular
circumference" is interpreted as claiming the same technical feature as "atray plate with a circular circumference"; in turn both expressions are
considered as claiming any tray whose base the skilled person in the
manufacturing field would consider as being circular.
The same applies when the expression containing "substantially" or"approximately" implies that a certain effect or result can be obtained withina certain tolerance and the skilled person knows how to obtain thattolerance. For example, "a substantially vertical seat back" is interpreted asallowing for a certain +/- variation around 90° where the skilled person canrecognise that a functionality for supporting the sitting person's back ispresent.
4.7.2 Clarity objections
If the application suggests that the use of terms such as "about","approximately" or "substantially" extends either the interval claimed by avalue and/or range outside the error margins of the measurement systemor the structural unit beyond the manufacturing tolerances or any othertolerance that the skilled person would take into consideration in thetechnical field concerned, then the wording of the claims becomes vague
and undefined. This leads to an objection under Art. 84 because thepresence of this wording prevents the subject-matter of the claims frombeing unambiguously distinguished from the prior art with respect to novelty
and inventive step.
For example, if the application suggests that an icosagon (20-sided
polygon) is also a "substantially circular circumference" for a metal tray
realised by a CNC waterjet cutting machine, this renders the scope of theclaims unclear because:(i)the tolerance indicated by the application is outside the tolerance ofthe manufacturing method (a CNC waterjet cutting machine
approximates a circular circumference by using a polygon withhundreds of sides); and(ii)

if an icosagon is also a "substantially circular circumference", what
about an enneadecagon (19-sided polygon) or an octadecagon(18-sided polygon)? When does a polygon stop being a "substantiallycircular circumference"? How can this be assessed objectively by the
person skilled in the art?

4.8 Trade marks
The use of trade marks and similar expressions in claims is not allowed as
it does not guarantee that the product or feature referred to is not modified

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while maintaining its name during the term of the patent. They may beallowed exceptionally if their use is unavoidable and they are generally
recognised as having a precise meaning.
With regard to the need to acknowledge trade marks as such in thedescription, see F-II, 4.14. With regard to the effect of references to trade
marks on sufficiency of disclosure (Art. 83), see F-III, 7.
4.9 Optional features
Optional features, i.e. features preceded by expressions such as"preferably", "for example", "such as" or "more particularly" are allowed ifthey do not introduce ambiguity. In such a case, they are to be regarded as
entirely optional.
These expressions introduce ambiguity and render the scope of the claim
unclear if they do not lead to a restriction of the subject-matter of the claim.
For example, the wording "a method to manufacture an artificial stone, suchas a clay brick" does not fulfil the requirements of Art. 84, because a clay
brick will never be an artificial stone. Hence it is unclear if either an artificial
stone or a clay brick is manufactured by the method of the claim.
Analogously, the wording "the solution is heated up to between 65 and
85°C, particularly to 90°C" does not fulfil the requirements of Art. 84
because the temperature after the term "particularly" contradicts the range
before it.
4.10 Result to be achieved
The area defined by the claims must be as precise as the invention allows.
As a general rule, claims which attempt to define the invention by a result
to be achieved are not allowed, in particular if they only amount to claiming
the underlying technical problem. However, they may be allowed if theinvention either can only be defined in such terms or cannot otherwise be
defined more precisely without unduly restricting the scope of the claims
and if the result is one which can be directly and positively verified by tests
or procedures adequately specified in the description or known to theperson skilled in the art and which do not require undue experimentation(see T 68/85). For example, the invention may relate to an ashtray in which
a smouldering cigarette end will be automatically extinguished due to theshape and relative dimensions of the ashtray. The latter may varyconsiderably in a manner difficult to define whilst still providing the desired
effect. So long as the claim specifies the construction and shape of theashtray as clearly as possible, it may define the relative dimensions byreference to the result to be achieved, provided that the specification
includes adequate directions to enable the skilled person to determine therequired dimensions by routine test procedures (see F-III, 1 to F-III, 3).
However, these cases have to be distinguished from those in which the
product is defined by the result to be achieved and the result amounts inessence to the problem underlying the application. It is established caselaw that an independent claim must indicate all the essential features of theobject of the invention in order to comply with the requirements of Art. 84

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(see G 2/88, Reasons 2.5, and G 1/04, Reasons 6.2). Art. 84 also reflects
the general legal principle that the extent of monopoly conferred by apatent, as defined in the claims, must correspond to the technicalcontribution to the art. It must not extend to subject-matter which, after
reading the description, would still not be at the disposal of the person
skilled in the art (T 409/91, Reasons 3.3). The technical contribution of apatent resides in the combination of features which solve the problem
underlying the application. Therefore, if the independent claim defines the
product by a result to be achieved and the result amounts in essence to the
problem underlying the application, that claim must state the essential
features necessary to achieve the result claimed (T 809/12,
Reasons 2.6-2.9.2), see also F-IV, 4.5.
The above-mentioned requirements for allowing a definition ofsubject-matter in terms of a result to be achieved differ from those forallowing a definition of subject-matter in terms of functional features (seeF-IV, 4.22 and F-IV, 6.5).
4.11 Parameters
Parameters are characteristic values, which may be values of directly
measurable properties (e.g. the melting point of a substance, the flexuralstrength of a steel, the resistance of an electrical conductor) or may be
defined as more or less complicated mathematical combinations of several
variables in the form of formulae.
The characteristics of a product may be specified by parameters related tothe physical structure of the product, provided that those parameters can
be clearly and reliably determined by objective procedures which are usualin the art. Where the characteristics of the product are defined by amathematical relation between parameters, each parameter needs to beclearly and reliably determined.
The same applies to process-related features defined by parameters.
The requirements of Art. 84 with regard to the characterisation of a productby parameters can be summarised as follows (see T 849/11):(i)the claims must be clear in themselves when read by the skilled
person (not including knowledge derived from the description);(ii)

the method for measuring a parameter (or at least a reference
thereto) must appear completely in the claim itself; and(iii)

an applicant who chooses to define the scope of the claim byparameters needs to ensure that the skilled person can easily andunambiguously verify whether they are working inside or outside thescope of the claim.

If the description of the method for measuring a parameter is so long thatits inclusion makes the claim unclear through lack of conciseness or difficult
to understand, the requirement under point (ii) can be met by including in
the claim a reference to the description, in accordance with Rule 43(6).

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Furthermore the requirement under point (ii) can still be met if it can beconvincingly shown that (see T 849/11):(a)the measurement method to be employed belongs to the skilled
person's common general knowledge, e.g. because there is only one
method, or because a particular method is commonly used; or(b)

all the measurement methodologies known in the relevant technicalfield for determining this parameter yield the same result within theappropriate limit of measurement accuracy.

For further issues relating to lack of support and sufficiency of disclosure
regarding parameters, see F-III, 11 and F-IV, 6.4.
4.11.1 Unusual parameters
Unusual parameters are parameters not commonly used in the field of theinvention. Two main situations can present themselves:(i)

The unusual parameter measures a property of the product/process
for which another generally recognised parameter is used in the fieldof the invention.

(ii)

The unusual parameter measures a property of the product/processthat was not measured before in the field of the invention.

In addition to the requirements contained in F-IV, 4.11:–

Cases in which an unusual parameter of type (i) is employed and no
straightforward conversion from the unusual parameter to theparameter generally recognised in the art is possible, or a
non-accessible apparatus for measuring the unusual parameter isused are prima facie objectionable on grounds of lack of clarity, as no
meaningful comparison with the prior art can be made. Such cases
might also disguise lack of novelty (see G-VI, 6).

–

Use of unusual parameters of type (ii) is allowable if it is evident fromthe application that the skilled person would face no difficulty incarrying out the presented tests and would thereby be able toestablish the exact meaning of the parameter and to make ameaningful comparison with the prior art. In addition, the onus of
proof that an unusual parameter is a genuine distinctive featurevis-à-vis the prior art lies with the applicant. No benefit of doubt canbe accorded in this respect (see G-VI, 6).

Example of an allowable unusual parameter of type (ii)
The application explains that the abrasive action of sandpaper of very finegrade is improved if strips with abrasive grain are alternated with strips
without abrasive grain. Claim 1 contains an unusual parameter of type (ii)that measures the relationship between the widths of the abrasive strips
and the non-abrasive strips within a certain length of the sandpaper.

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The skilled person has no problem in establishing the exact meaning of theparameter, measuring it and determining its genuine distinctive feature
against the prior art.

Art. 53(b)Rule 28(2)Art. 64(2)4.12 Product-by-process claim
A claim defining a product in terms of a process is to be construed as aclaim to the product as such. The technical content of the invention lies notin the process per se, but rather in the technical properties imparted to the
product by the process. Claims defining plants or animals produced by amethod including a technical step which imparts a technical feature to a
product constitute an exception in so far as the requirements of Art. 53(b)as interpreted by Rule 28(2) are concerned. The exclusion under Rule28(2) regarding plants and animals exclusively obtained by means of an
essentially biological process does not apply to patents granted before
1 July 2017 nor to pending patent applications with a filing date and/or apriority date before 1 July 2017 (see G 3/19, OJ EPO 2020, A119).
If a technical feature of a claimed plant or animal, e.g. a single nucleotide
exchange in the genome, can be the result of both a technical intervention(e.g. directed mutagenesis) and an essentially biological process (a naturalallele), a disclaimer is necessary to delimit the claimed subject-matter to thetechnically produced product (see examples in G-II, 5.4.2.1 and G-II, 5.4).
If, on the other hand, the feature in question can unambiguously beobtained by technical intervention only, e.g. a transgene, no disclaimer isnecessary. For the general principles governing disclaimers see H-V, 4.1
and H-V, 4.2.
If the process through which the claimed plant or animal is defined does not
impart identifiable and unambiguous technical features to the plant or
animal, e.g. the genetic information present in the genome, the claim
directed to a plant or animal lacks clarity.
Claims for products defined in terms of a process of manufacture areallowable only if the products as such fulfil the requirements forpatentability, i.e. inter alia that they are new and inventive, and it is
impossible to define the claimed product other than in terms of a process ofmanufacture. A product is not rendered novel merely by the fact that it isproduced by means of a new process. The claim may for instance take theform "Product X obtainable by process Y". Irrespective of whether the term
"obtainable", "obtained", "directly obtained" or an equivalent wording isused in the product-by-process claim, it is still directed to the product per seand confers absolute protection upon the product.
As regards novelty, when a product is defined by its method of
manufacture, the question to be answered is whether the product underconsideration is identical to known products. The burden of proof for an
allegedly distinguishing "product-by-process" feature lies with the applicant,
who has to provide evidence that the modification of the processparameters results in another product, for example by showing that distinct
differences exist in the properties of the products. Nevertheless, thedivision needs to furnish reasoned argumentation to support the allegedMarch 2023

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lack of novelty of a product-by-process claim, especially if this objection iscontested by the applicant (see G 1/98, T 828/08).
Similarly, examination of product or product-by-process claims in respect of
their patentability under the EPC is unaffected by the extent of theprotection conferred by the patent or the patent application (see G 2/12 andG 2/13, Reasons VIII(2)(6)(b)).
4.12.1 Product claim with process features
Provided that they are allowable, the process features in a product claim
comprising both product features and process features can establish thenovelty of the claimed product only if they cause the claimed product tohave different properties from the products known from the prior art. As in
the case of product-by-process claims (see F-IV, 4.12), the burden of proof
for an allegedly distinguishing "product-by-process" feature lies with theapplicant.
4.13 Interpretation of expressions stating a purpose
4.13.1 Interpretation of expressions such as "Apparatus for ...","Product for ... "If a claim commences with such words as "Apparatus for carrying out theprocess ...", this must be construed as meaning merely apparatus suitablefor carrying out the process. An apparatus which otherwise possesses all of
the features specified in the claims but which is unsuitable for the statedpurpose or requires modifications to enable it to be so used for said
purpose, is normally not considered as anticipating the claim.
Similar considerations apply to a claim for a product for a particular use.
For example, if a claim refers to a "mould for molten steel", this implies
certain limitations for the mould. Therefore, a plastic ice cube tray with amelting point much lower than that of steel does not come within the claim.
Similarly, a claim to a substance or composition for a particular use isconstrued as meaning a substance or composition which is in fact suitable
for the stated use; a known product which prima facie is the same as thesubstance or composition defined in the claim, but which is in a form which
renders it unsuitable for the stated use, does not deprive the claim ofnovelty. However, if the known product is in a form in which it is in fact
suitable for the stated use, though it has never been described for that use,
it deprives the claim of novelty.
An exception to this general principle of interpretation is where the claim is
to a known substance or composition for use in a surgical, therapeutic or
diagnostic method (see G-II, 4.2 and G-VI, 7.1).
4.13.2 Interpretation of means-plus-function features ("means for ... ")Means-plus-function features ("means for ...") are a type of functionalfeature and hence do not contravene the requirements of Art. 84.
Any prior art feature suitable for carrying out the function of ameans-plus-function feature will anticipate the latter. For example, theArt. 69

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feature "means for opening a door" is anticipated by both the door key anda crowbar.
An exception to this general principle of interpretation is where the functionof the means-plus-function feature is carried out by a computer or similar
apparatus. In this case the means-plus-function features are interpreted asmeans adapted to carry out the relevant steps/functions, rather than merelymeans suitable for carrying them out.
Example:"1.

An eyeglass lens grinding machine for processing a lens such thatthe lens is fitted in an eyeglass frame, said machine comprising:at least a grinding wheel for bevelling the lens;means for receiving frame configurational data on the eyeglass frameand layout data to be used in providing a layout of the lens relative tothe eyeglass frame;means for detecting an edge position of the lens on the basis of thereceived frame data and layout data;means for determining a first bevel path by calculation based on the
result of detection by said edge position detecting means;means for determining a second bevel path obtained by tilting saidfirst bevel path such that said second bevel path passes through adesired position on a lens edge; andmeans for controlling the grinding wheel during the bevelling of thelens on the basis of said second bevel path.""1.

An eyeglass lens grinding machine for processing a lens such thatthe lens is fitted in an eyeglass frame, said machine comprisingat least a grinding wheel for bevelling the lens;a computer adapted to:–receive frame configurational data on the eyeglass frame andlayout data to be used in providing a layout of the lens relative
to the eyeglass frame;–

detect an edge position of the lens on the basis of the received
frame data and layout data;–

determine a first bevel path by calculation based on the resultof detection by said edge position detecting means;March 2023

Guidelines for Examination in the EPO–

determine a second bevel path that is obtained by tilting saidfirst bevel path such that said second bevel path passes
through a desired position on a lens edge; and–control the grinding wheel during the bevelling of the lens on
the basis of said second bevel path."

Each of these two claims is new over a prior art disclosing an eyeglass lens
grinding machine comprising a grinding wheel and a computer forcontrolling the grinding wheel if the specific processing steps are notdisclosed in the prior art. When "means for" refers to computer means, theprocessing steps being defined as "means for + function" (first claim) and"computer adapted to + function" (second claim) are to be interpreted aslimiting. Therefore, a prior-art document disclosing an eyeglass lens
grinding machine comprising at least a grinding wheel for bevelling the lensand a computer only anticipates these claims if the prior-art document also
discloses that the computer is programmed to carry out the claimed steps.
For further information on claim formulations commonly used incomputer-implemented inventions, see F-IV, 3.9.
4.13.3 Interpretation of expressions such as "Method for ..."In the context of a method, two different types of stated purpose arepossible, namely those that define the application or use of a method, andthose that define an effect arising from the steps of the method and are
implicit therein (see T 1931/14).
Where the stated purpose defines the specific application of the method,
this purpose requires additional steps which are not implied by or inherent
in the other remaining steps defined in the claim, and without which theclaimed process would not achieve the stated purpose. Hence a method
claim that defines a working method which, for example, commences withsuch words as "Method for remelting galvanic layers", the part "forremelting ..." is not to be understood as meaning that the process is merely
suitable for remelting galvanic layers, but rather as a functional feature
concerning the remelting of galvanic layers and, hence, defining one of themethod steps of the claimed working method (see T 1931/14 andT 848/93).
Analogously, in the case of a "method of manufacture", i.e. a claim directed
to a method for manufacturing a product, the fact that the method results inthe product is to be treated as an integral method step (see T 268/13).
On the other hand, where the purpose merely states a technical effectwhich inevitably arises when carrying out the other remaining steps of theclaimed method and is thus inherent in those steps, this technical effect has
no limiting effect on the subject-matter of the claim. For example, a method
claim concerning the application of a particular surface active agent to a
specified absorbent product and defining its purpose as "for reducing
malodor" in terms of an intended technical effect is anticipated by a prior-art
document describing a method having such suitability "for reducing

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malodor" although not mentioning the specific use (see T 1931/14 andT 304/08).
4.14 Definition by reference to (use with) another entity
A claim in respect of a physical entity (product, apparatus) may seek todefine the invention by reference to features relating to another entity that is
not part of the claimed first entity but that is related to it through use. An
example of such a claim is "a cylinder head for an engine", where theformer is defined by features of its location in the latter.
Since the first entity (the cylinder head) can often be produced andmarketed independently of the other entity (the engine), the applicant isnormally entitled to independent protection of the first entity per se.
Therefore, in first instance, such a claim is always interpreted as notincluding the other entity or its features: these limit the subject-matter of theclaim only in so far as the first entity's features are suitable to be used withthe second entity's features. In the above example, the cylinder head mustbe suitable to be mounted in the engine described in the claim, but thefeatures of the engine do not limit the subject-matter of the claim per se.
Only if the claim is directed without any doubt to a combination of the firstand second entities, the features of the other entity are limiting for the
subject-matter of the claim. In the above example, the claim should be
written as an "engine with a cylinder head" or an "engine comprising acylinder head" for the features of the engine to be considered as limiting the
subject-matter of the claim.
For the assessment of claims directed to computer-implemented
inventions, where a claim to a computer program refers to a computer (aseparate entity), see F-IV, 3.9.
4.14.1 Clarity objections
Once it has been established if a claim is directed to either one entity or to
a combination of entities, the wording of the claim must be adapted
appropriately to reflect it; otherwise the claim is objected to under Art. 84.
For example, in the case of a claim directed to a single entity, the first entity
is "connectable" to the second entity; in the case of a claim directed to a
combination of entities the first entity is "connected" to the second entity.
4.14.2 Dimensions and/or shape defined by reference to anotherentityIt may be allowable to define the dimensions and/or shape of a first entity in
an independent claim by general reference to the dimensions and/or
corresponding shape of a second entity which is not part of the claimed first
entity but is related to it through use. This particularly applies where thesize of the second entity is in some way standardised (for example, in thecase of a mounting bracket for a vehicle number-plate, where the bracket
frame and fixing elements are defined in relation to the outer shape of thenumber-plate).

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Furthermore, references to second entities which cannot be seen as
subject to standardisation may also be sufficiently clear in cases where theskilled person would have little difficulty in inferring the resultant restrictionof the scope of protection for the first entity (for example, in the case of acovering sheet for an agricultural round bale, where the length and breadthof the covering sheet and how it is folded are defined by reference to thebale's circumference, width and diameter, see T 455/92). It is neither
necessary for such claims to contain the exact dimensions of the second
entity, nor do they have to refer to a combination of the first and second
entities. Specifying the length, width and/or height of the first entity without
reference to the second would lead to an unwarranted restriction of thescope of protection.
4.15 The expression "in"To avoid ambiguity, particular care is exercised when assessing claims
which employ the word "in" to define a relationship between different
physical entities (product, apparatus), or between entities and activities(process, use), or between different activities. Examples of claims wordedin this way include the following:(i)

Cylinder head in a four-stroke engine;(ii)

In a telephone apparatus with an automatic dialler, dial tone detector
and feature controller, the dial tone detector comprising ...;

(iii)

In a process using an electrode feeding means of an arc-welding
apparatus, a method for controlling the arc welding current andvoltage comprising the following steps: ...; and(iv)

In a process/system/apparatus etc. ... the improvement consistingof...

In examples (i) to (iii) the emphasis is on the fully functioning sub-units(cylinder head, dial tone detector, method for controlling the arc welding
current and voltage) rather than the complete unit within which the sub-unit
is contained (four-stroke engine, telephone, process). This can make it
unclear whether the protection sought is limited to the sub-unit per se, orwhether the unit as a whole is to be protected. For the sake of clarity,
claims of this kind must be directed either to "a unit with (or comprising) a
sub-unit" (e.g. "four-stroke engine with a cylinder head"), or to the sub-unit
per se, specifying its purpose (for example, "cylinder head for a four-stroke
engine"). The latter course may be followed only at the applicant's express
wish and only if there is a basis for it in the application as filed, in
accordance with Art. 123(2).
With claims of the type indicated by example (iv), the use of the word "in"sometimes makes it unclear whether protection is sought for the
improvement only or for all the features defined in the claim. Here, too, it isessential to ensure that the wording is clear.

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However, claims such as "use of a substance ... as an anticorrosive
ingredient in a paint or lacquer composition" are acceptable on the basis ofsecond non-medical use (see G-VI, 7.2, second paragraph).
4.16 Use claims
For the purposes of examination, a "use" claim in a form such as "the useof substance X as an insecticide" is regarded as equivalent to a "process"claim of the form "a process of killing insects using substance X". Thus, aclaim in the form indicated is not to be interpreted as directed to thesubstance X recognisable (e.g. by further additives) as intended for use as
an insecticide. Similarly, a claim for "the use of a transistor in an amplifying
circuit" is equivalent to a process claim for the process of amplifying using acircuit containing the transistor and is not to be interpreted as being
directed to "an amplifying circuit in which the transistor is used", nor to "theprocess of using the transistor in building such a circuit". However, a claim
directed to the use of a process for a particular purpose is equivalent to aclaim directed to that very same process (see T 684/02).
Care is to be taken when a claim relates to a two-step process which
combines a use step with a product production step. This may be the casee.g. when a polypeptide and its use in a screening method have been
defined as the only contribution to the art. An example of such a claim
would then be:"A method comprising:(a)contacting polypeptide X with a compound to be screened and(b)determining whether the compound affects the activity of said
polypeptide, and subsequently transforming any active compound
into a pharmaceutical composition."

Many variations of such a claim are conceivable, but in essence they
combine (a) a screening step (i.e. using a specified test material to select acompound having a given property) with (b) further production steps(i.e. further transforming the selected compound for instance into thedesired composition).
According to decision G 2/88 there are two different types of process claim,(i) the use of an entity to achieve a technical effect and (ii) a process for the
production of a product. G 2/88 makes clear that Art. 64(2) applies only toprocesses of type (ii). The above claim and its analogues thus represent a
combination of two different and irreconcilable types of process claim.
Step (a) of the claim relates to a process of type (i), step (b) to a process oftype (ii). Step (b) builds on the "effect" achieved by step (a), rather thanstep (a) feeding into step (b) a specific starting material and resulting in a
specific product. Thus, the claim is made up partly of a use claim and partlyof a process for producing a product. This renders the claim unclear
according to Art. 84.

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4.17 References to the description or drawings
As indicated in Rule 43(6), the claims must not, in respect of the technicalfeatures of the invention, rely on references to the description or drawings"except where absolutely necessary". In particular they must not normally
rely on such references as "as described in part ... of the description", or"as illustrated in Figure 2 of the drawings".

Part F – Chapter IV-35

Rule 43(6)The emphatic wording of the excepting clause is to be noted. The onus isupon the applicant to show that it is "absolutely necessary" to rely onreference to the description or drawings in appropriate cases(see T 150/82).
An example of an allowable exception is an invention involving somepeculiar shape, illustrated in the drawings, but which cannot be readily
defined either in words or by a simple mathematical formula. Anotherspecial case is that in which the invention relates to chemical products
some of whose features can be defined only by means of graphs ordiagrams.
4.18 Reference signs
If the application contains drawings, and the comprehension of the claims is
improved by establishing the connection between the features mentioned in
the claims and the corresponding reference signs in the drawings, thenappropriate reference signs need to be placed in parentheses after thefeatures mentioned in the claims. If there are a large number of different
embodiments, only the reference signs of the most important embodiments
need be incorporated in the independent claim(s). Where claims are draftedin the two-part form set out in Rule 43(1), the reference signs need to beinserted not only in the characterising part but also in the preamble of theclaims.
Reference signs are not however to be construed as limiting the extent of
the matter protected by the claims; their sole function is to make claimseasier to understand. A comment to that effect in the description is
acceptable (see T 237/84).
If text is added to reference signs in parentheses in the claims, lack ofclarity can arise (Art. 84). Expressions such as "securing means (screw 13,
nail 14)" or "valve assembly (valve seat 23, valve element 27, valve
seat 28)" are not reference signs within the meaning of Rule 43(7) but are
special features, to which the last sentence of Rule 43(7) is not applicable.
Consequently, it is unclear whether the features added to the reference
signs are limiting or not. Accordingly, such bracketed features are generally
not permissible. However, additional references to those figures whereparticular reference signs are to be found, such as "(13 – Figure 3; 14 –Figure 4)" are unobjectionable.
A lack of clarity can also arise with bracketed expressions that do notinclude reference signs, e.g. the expression "(concrete) moulded brick" isunclear because it cannot be determined if the feature moulded brick islimited or not by the word concrete. In contrast, bracketed expressions witha generally accepted meaning are allowable, e.g. "(meth)acrylate" which is

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known as an abbreviation for "acrylate and methacrylate". The use ofbrackets in chemical or mathematical formulae is also unobjectionable, as
is their use when correcting physical values not complying with therequirements as determined by the President under Rule 49(2) ofRule 49(10).
4.19 Negative limitations (e.g. disclaimers)
A claim's subject-matter is normally defined in terms of positive featuresindicating that certain technical elements are present. Exceptionally,
however, the subject-matter may be restricted using a negative limitation
expressly stating that particular features are absent. This may be donee.g. if the absence of a feature can be deduced from the application as filed(see T 278/88).
Negative limitations such as disclaimers may be used only if adding
positive features to the claim either would not define more clearly andconcisely the subject-matter still protectable (see G 1/03 and T 4/80) or
would unduly limit the scope of the claim (see T 1050/93). It has to be clear
what is excluded by means of the disclaimer (see T 286/06). A claim
containing one or more disclaimers must also fully comply with the clarity
and conciseness requirements of Art. 84 (see G 1/03, Reasons 3).
Moreover, in the interests of the patent's transparency, the excluded prior
art needs to be indicated in the description in accordance with
Rule 42(1)(b), and the relation between the prior art and the disclaimer
needs to be shown.
For the allowability of disclaimers excluding embodiments that weredisclosed in the original application as being part of the invention, see
H-V, 4.2.2. With respect to the allowability of disclaimers not disclosed in
the application as originally filed (so-called undisclosed disclaimers),
see H-V, 4.2.1.
4.20 "Comprising" vs. "consisting of"This section outlines how the terms "comprising" and "consisting of" are to
be interpreted when construing a claim.
A claim directed to an apparatus/method/product "comprising" certain
features is interpreted as meaning that it includes those features, but that it
does not exclude the presence of other features, as long as they do notrender the claim unworkable.
On the other hand, if the wording "consist of" is used, then no further
features are present in the apparatus/method/product apart from the ones
following said wording. In particular, if a claim for a chemical compoundrefers to it as "consisting of components A, B and C" by their proportions
expressed in percentages, the presence of any additional component is
excluded and therefore the percentages must add up to 100%(see T 711/90).
In the case of chemical compounds or compositions, the use of "consisting
essentially of" or "comprising substantially" means that specific further
components can be present, namely those not materially affecting theMarch 2023

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Part F – Chapter IV-37

essential characteristics of the compound or composition. For any otherapparatus/method/product these terms have the same meaning as"comprising".
Regarding Art. 123(2), "comprising" does not provide per se an implicit
basis for either "consisting of" or "consisting essentially of" (T 759/10).
4.21 Functional definition of a pathological condition
When a claim is directed to a further therapeutic application of a
medicament and the condition to be treated is defined in functional terms,
e.g. "any condition susceptible of being improved or prevented by selective
occupation of a specific receptor", the claim can be regarded as clear only if
instructions, in the form of experimental tests or testable criteria, areavailable from the patent documents or from the common generalknowledge allowing the skilled person to recognise which conditions fallwithin the functional definition and accordingly within the scope of the claim(see T 241/95; see also G-II, 4.2).
4.22 Broad claims
The Convention does not explicitly mention overly broad claims. However,
objections to such claims may arise for various reasons.
Where there are discrepancies between the claims and the description, theclaims are not sufficiently supported by the description (Art. 84) and also, inmost cases, the invention is not sufficiently disclosed (Art. 83)(see T 409/91, F-IV, 6.1 and F-IV, 6.4).

Art. 84 and Art. 83

Sometimes an objection of lack of novelty arises, for example if the claim isformulated in such broad terms that it also covers known subject-matterfrom other technical fields. Broad claims may also cover embodiments forwhich a purported effect has not been achieved. On raising an objection oflack of inventive step in such cases, see G-VII, 5.2.

Art. 54 and Art. 56

For broad claims in opposition proceedings, see also D-V, 4 and 5.
4.23 Order of claims
There is no legal requirement that the first claim must be the broadest.
However, Art. 84 requires that the claims must be clear not only individually
but also as a whole. Therefore, where there are a large number of claims,
they need to be arranged with the broadest claim first. If the broadest of alarge number of claims is a long way down, so that it could easily beoverlooked, the applicant is required either to rearrange the claims in amore logical way or to direct attention to the broadest claim in the
introductory part or in the summary of the description.
Furthermore, if the broadest claim is not the first one, the later broader
claim must also be an independent claim. Consequently, where these
independent claims are of the same category, an objection may also arise
under Rule 43(2) (see F-IV, 3.2 and 3.3).

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4.24 Interpretation of terms such as identity and similarity in relation
to amino or nucleic acid sequences
Amino acid or nucleic acid sequences can be defined by a percentage ofidentity. The percentage of identity determines the number of identicalresidues over a defined length in a given alignment. If no algorithm or
calculation method for determining the percentage of identity is defined, thebroadest interpretation will be applied using any reasonable algorithm or
calculation method known at the relevant filing date.
Amino acid sequences can be defined by a degree of similarity (expressed
as a percentage of similarity). The term similarity is broader than the term
identity because it allows conservative substitutions of amino acid residues
having similar physicochemical properties over a defined length of a givenalignment. The percentage of similarity is determinable only if asimilarity-scoring matrix is defined. If no similarity-scoring matrix is defined,a claim referring to a sequence displaying a percentage of similarity to arecited sequence is considered to cover any sequence fulfilling thesimilarity requirement as determined with any reasonable similarity-scoring
matrix known at the relevant filing date.
For amino acid sequences, if a percentage of homology is used by theapplicant as the only feature to distinguish the subject-matter of a claim
from the prior art, its use is objected to under Art. 84 (cf. F-IV, 4.6.1) unlessthe determination or calculation of the percentage of homology is clearly
defined in the application as filed. For nucleic acid sequences, homology
percentage and identity percentage are usually considered to have thesame meaning.

Art. 84
Rule 43(5)5. Conciseness, number of claims
The requirement that the claims must be concise refers to the claims intheir entirety as well as to the individual claims. The number of claims must
be considered in relation to the nature of the invention the applicant seeks
to protect. Undue repetition of wording, e.g. between one claim andanother, is to be avoided by the use of the dependent form. Regarding
independent claims in the same category, see F-IV, 3.2 and 3.3. The
conciseness requirement also applies to dependent claims in respect ofboth their number and their content. For example, the repetition ofsubject-matter that has already been claimed is unnecessary andnegatively affects the conciseness of the claims. Similarly, the number of
dependent claims should be reasonable. What is or what is not areasonable number of claims depends on the facts and circumstances ofeach particular case. The interests of the relevant public must also beborne in mind. The presentation of the claims must not make it unduly
burdensome to determine the matter for which protection is sought (T 79/91
and T 246/91). Objection may also arise where there is a multiplicity ofalternatives within a single claim, if this renders it unduly burdensome todetermine the matter for which protection is sought.
Where it is found that the claims lack conciseness under Art. 84, this maylead to the issuing of a partial European or partial supplementary European
search report under Rule 63 (see B-VIII, 3.1 and 3.2). In such cases, in theabsence of appropriate amendment and/or convincing arguments from theMarch 2023

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Part F – Chapter IV-39

applicant as to why the invitation under Rule 63(1) was not justified, anobjection under Rule 63(3) will also arise (see H-II, 5).
6.

Support in description

6.1 General remarks
The claims must be supported by the description. This means that there
must be a basis in the description for the subject-matter of every claim andthat the scope of the claims must not be broader than is justified by theextent of the description and drawings and also the contribution to the art(see T 409/91). Regarding the support of dependent claims by thedescription, see F-IV, 6.6.
6.2 Extent of generalisation
Most claims are generalisations from one or more particular examples. The
extent of generalisation permissible is a matter which the division mustjudge in each particular case in the light of the relevant prior art. Thus aninvention which opens up a whole new field is entitled to more generality inthe claims than one which is concerned with advances in a known
technology. A fair statement of claim is one which is not so broad that itgoes beyond the invention nor yet so narrow as to deprive the applicant ofa just reward for the disclosure of his invention. The applicants are allowed
to cover all obvious modifications of, equivalents to and uses of that which
they have described. In particular, if it is reasonable to predict that all thevariants covered by the claims have the properties or uses the applicants
ascribe to them in the description, they are allowed to draw the claims
accordingly. After the date of filing, however, the applicants are allowed to
do so only if this does not contravene Art. 123(2).
6.3 Objection of lack of support
As a general rule, a claim is regarded as supported by the description
unless there are well-founded reasons for believing that the skilled person
would be unable, on the basis of the information given in the application as
filed, to extend the particular teaching of the description to the whole of the
field claimed by using routine methods of experimentation or analysis.
Support must, however, be of a technical character; vague statements orassertions having no technical content provide no basis.
The division raises an objection of lack of support only if it has well-foundedreasons. Once the division has set out a reasoned case that, for example, abroad claim is not supported over the whole of its breadth, the onus ofdemonstrating that the claim is fully supported lies with the applicant(see F-IV, 4). Where an objection is raised, the reasons are, where
possible, to be supported specifically by a published document.
A claim in generic form, i.e. relating to a whole class, e.g. of materials or
machines, may be acceptable even if of broad scope, if there is fair support
in the description and there is no reason to suppose that the invention
cannot be worked through the whole of the field claimed. Where theinformation given appears insufficient to enable a person skilled in the art toextend the teaching of the description to parts of the field claimed but not
explicitly described by using routine methods of experimentation orArt. 84

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analysis, the division raises a reasoned objection, and invites the applicant
to establish, by suitable response, that the invention can in fact be readily
applied on the basis of the information given over the whole field claimedor, failing this, to restrict the claim accordingly.
The question of support is illustrated by the following examples:(i)a claim relates to a process for treating all kinds of "plant seedlings"
by subjecting them to a controlled cold shock so as to produce
specified results, whereas the description discloses the processapplied to one kind of plant only. Since it is well-known that plants
vary widely in their properties, there are well-founded reasons forbelieving that the process is not applicable to all plant seedlings.
Unless the applicants can provide convincing evidence that theprocess is nevertheless generally applicable, they must restrict theirclaim to the particular kind of plant referred to in the description. A
mere assertion that the process is applicable to all plant seedlings is
not sufficient;(ii)

a claim relates to a specified method of treating "synthetic resin
mouldings" to obtain certain changes in physical characteristics. All
the examples described relate to thermoplastic resins and themethod is such as to appear inappropriate to thermosetting resins.
Unless the applicants can provide evidence that the method isnevertheless applicable to thermosetting resins, they must restrict
their claim to thermoplastic resins;(iii)

a claim relates to improved fuel oil compositions which have a given
desired property. The description provides support for one way ofobtaining fuel oils having this property, which is by the presence ofdefined amounts of a certain additive. No other ways of obtaining fueloils having the desired property are disclosed. The claim makes nomention of the additive. The claim is not supported over the whole ofits breadth and objection arises.

Where it is found that the claims lack support in the description under
Art. 84, this may lead to the issuing of a partial European or supplementary
European search report under Rule 63 (see B-VIII, 3.1 and 3.2). In suchcases, in the absence of appropriate amendment and/or convincing
arguments provided by the applicant in his response to the invitation under
Rule 63(1) (see B-VIII, 3.2) or to the search opinion under Rule 70a(see B-XI, 8), an objection under Rule 63(3) will also arise (see H-II, 5).

Art. 83
Art. 84

6.4 Lack of support vs. insufficient disclosure
Although an objection of lack of support is an objection under Art. 84, it canoften, as in the above examples, also be considered as an objection of
insufficient disclosure of the invention under Art. 83 (see F-III, 1 to 3), theobjection being that the disclosure is insufficient to enable the skilled
person to carry out the "invention" over the whole of the broad field claimed(although sufficient in respect of a narrow "invention"). Both requirements
are designed to reflect the principle that the terms of a claim must becommensurate with, or be justified by, the invention's technical contribution

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to the art. Therefore, the extent to which an invention is sufficiently
disclosed is also highly relevant to the issue of support. The reasons for
failure to meet the requirements of Art. 83 may in effect be the same as
those that lead to the infringement of Art. 84 as well, namely that theinvention, over the whole range claimed, extends to technicalsubject-matter not made available to the person skilled in the art by theapplication as filed (see T 409/91, Reasons 2 and 3.3 to 3.5).
For example, where a technical feature is described and highlighted in thedescription as being an essential feature of the invention, to comply with
Art. 84 this feature must also be part of the independent claim(s) defining
the invention (see F-IV, 4.5.1). By the same token, if the (essential)
technical feature in question is absent from the claims, and no information
is given on how to perform the claimed invention successfully without theuse of said feature, the description does not disclose the invention definedin the claim(s) in the manner prescribed by Art. 83.
An objection under both Art. 84 and Art. 83 may also be justified. An
example would be a claim relating to a known class of chemicalcompounds defined by measurable parameters, when the description does
not disclose a technical teaching allowing the skilled person to manufacture
those compounds complying with the parametric definition, and this is nototherwise feasible by the application of common general knowledge orroutine experimentation. Such a claim would be both technically notsupported and not sufficiently disclosed, regardless of whether theparametric definition meets the clarity requirement of Art. 84.
Whether the objection is raised as lack of support or as insufficiency is notimportant in examination proceedings; but it is important in opposition
proceedings since there only the latter ground is available (see D-III, 5).
6.5 Definition in terms of function
A claim may broadly define a feature in terms of its function, i.e. as afunctional feature, even where only one example of the feature has been
given in the description, if the skilled person would appreciate that othermeans could be used for the same function (see also F-IV, 2.1 and 4.10).
For example, "terminal position detecting means" in a claim might besupported by a single example comprising a limit switch, it being evident tothe skilled person that e.g. a photoelectric cell or a strain gauge could be
used instead. In general, however, if the entire contents of the application
are such as to convey the impression that a function is to be carried out in aparticular way, with no intimation that alternative means are envisaged, anda claim is formulated in such a way as to embrace other means, or allmeans, of performing the function, then objection arises. Furthermore, it
may not be sufficient if the description merely states in vague terms that
other means may be adopted, if it is not reasonably clear what they might
be or how they might be used.
6.6 Support for dependent claims
Where certain subject-matter is clearly disclosed in a claim of theapplication as filed, but is not mentioned anywhere in the description, it ispermissible to amend the description so that it includes this subject-matter.

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Where the claim is dependent, it may suffice if it is mentioned in thedescription that the claim sets out a particular embodiment of the invention(see F-II, 4.5).

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Annex
Examples concerning essential features
Example 1
Claim 1 relates to a method for storing gel-coated seeds having a gel coatcomprising an aqueous gel having been made water-insoluble by a metal
ion. The method is characterised by storing the gel-coated seeds in an
aqueous solution containing said metal ion. In the description the object of
the invention is defined as providing a method for storing gel-coated seeds
easily without causing reduction in yield and handling properties. It wasemphasised in the description that it is necessary to confine the metal ion
concentration to a specific range in order to achieve the goals of theinvention. A metal ion concentration outside the specific range waspresented as negatively influencing yield and handling properties. The
subject-matter of claim 1 – which does not indicate the specific range –therefore does not solve the problem stated in the description.
Example 2
The invention relates to an apparatus for concave shaping of a metal strip.
In the closest prior art, the metal strip is passed transversely to its length
through a shaping set of rollers at which the concave shape is applied tothe strip. According to the description, the problem is that the rollers areunable to subject the lateral ends of the strip to a curve-creating force andso the lateral ends normally end up planar. The distinguishing feature of the
independent claim specifies that a flexible belt or web-like member isprovided to support the strip in its passage through the shaping set ofrollers. This feature is sufficient to solve the problem. Further features,
e.g. the details of the mechanism for advancing the strip into the shaping
set of rollers or the provision of at least three rollers, are not necessary tosolve the problem: such additional features would unduly restrict the claim(see T 1069/01).
Example 3
Claim 1 is directed to an apparatus for coding television signals comprising,amongst other features, a parameter generating means which ensures thatthe error between the pixel data of the predicted and actual current fields is
minimised. The description describes only one example for minimising theerror, namely a method of least squares. What is important is that theskilled person would be able to realise how the error minimising function
can be implemented: it is not relevant in this context whether the method ofleast squares is the only method applicable. It is therefore not necessary tofurther restrict the claimed parameter generating means in the sense that it
uses a method of least squares (see T 41/91).
Example 4
The description states that a compound C is obtained by reacting a mixtureof A and B for at least 10 minutes at 100°C. It is emphasised that A and B
must be reacted for this minimum amount of time, as otherwise the reaction
will be incomplete and C will not be formed. Claim 1 is directed to a process

Part F – Chapter IV-43

Part F – Chapter IV-44

Guidelines for Examination in the EPO

March 2023

for the production of compound C, characterised by reacting a mixture of A
and B for 5 to 15 minutes at 100°C. The claim does not contain all theessential features of the invention, as the description clearly states that for
the reaction to be complete, it is necessary to react A and B for at least
10 minutes.
Example 5
The description identifies the problem to be solved as providing aerosol
compositions wherein the percentage of undesirable volatile organic
compounds (VOCs) required as propellant is dramatically decreased,
resulting in less VOC release to the atmosphere. Claim 1 specifies theminimum amount of at least 15 weight% of propellant (which is a VOC) in
the aerosol, but is completely silent about any maximum amount thereof.
The problem underlying the application of releasing less VOCs into theenvironment is solved only when the propellant does not exceed aparticular maximum amount in the aerosol composition: this maximum
value is therefore an essential feature of the invention. Claim 1 covers
aerosols comprising any amount of propellant greater than or equal to
15 weight%, thereby covering the deficient high percentage of propellant
present in conventional aerosols. The percentage of undesirable VOCs in
the claimed aerosol compositions is therefore not "dramatically decreased",and so the stated aim of the present invention is not achieved (seeT 586/97).
Example 6
As regards diagnostic methods, in G 1/04 it is indicated that if the deductive
medical or veterinary decision phase is unambiguously derivable from theapplication or patent as a whole, it is to be included as an essential featurein the independent claim. In other words, if the inevitable outcome of thefirst three phases of such a method (see G-II, 4.2.1.3) is a specificdiagnosis for curative purposes allowing the deviation to be attributed to aparticular clinical picture, the decision phase must be included in the
independent claim in order to fulfil the requirements of Art. 84. However,this may cause a claim to be excluded from patentability under Art. 53(c)(see also G-II, 4.2.1.3). The requirement that the final decision phase be
included in the independent claim as an essential feature is to be applied
only if it is clear from the application/patent as a whole that the inevitable
result of the findings leads unambiguously to a particular diagnosis: this will
have to be decided by the division on a case-by-case basis.

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Guidelines for Examination in the EPO

Part F – Chapter V-1

Chapter V – Unity of invention
1. Introduction
The basic principle behind the requirement of unity is that a patent isgranted for each invention separately, i.e. in order to proceed to grant, aEuropean patent application is required to contain claims relating to one
invention only (G 2/92, Reasons 2).
This requirement of unity is further justified by the principle of equal
treatment of applicants: any applicant is entitled to the same renderedservice against the paid fees, i.e. one search/examination against one
search/examination fee.
Therefore at the search stage, if an application as filed is considered by thesearch division to relate to more than one invention, a search fee may be
paid for each such invention, and the search report will be drawn up only inrespect of inventions for which search fees have been paid. At theexamination stage the applicant can select only one searched invention ineach application to be examined for conformity with the patentability andother requirements of the EPC (see G 2/92, Reasons 2).

Rule 64

Art. 82 and Rule 44 govern the application of the requirement of unity toEuropean patent applications. This requirement is not applicable in
opposition proceedings (G 1/91).
This chapter deals with the substantive aspects of the assessment of unityof invention (F-V, 2 and F-V, 3), as well as some procedural aspects
relating to lack of unity during search (F-V, 4) and lack of unity during
substantive examination (F-V, 5). Aspects of unity of invention in the caseof amended claims and Euro-PCT applications are dealt with in F-V, 6 and
F-V, 7 respectively. Further aspects related to the procedural
implementation of unity of invention in search and examination are to befound in chapters B-VII and C-III respectively.
Given the harmonisation of the definitions concerning unity of invention in
Rules 13(1) PCT and Rule 13(2) PCT versus Art. 82 and Rule 44(1)respectively, the criteria for unity in both systems are the same. Hence,
unity of invention is examined in search and substantive examination inboth European and PCT procedures according to the same principles. This
does not apply to the respective procedures themselves, where significant
differences exist.

Art. 150(2)Consequently, decisions of the boards of appeal rendered according to theformer PCT protest procedures continue to be of interest for theconsideration of unity in European applications.
2. Requirement of unity of invention
A European patent application must relate to one invention only or relate toa group of inventions which must be so linked as to form a single generalinventive concept (see also B-VII, 1).

Art. 82

Part F – Chapter V-2

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March 2023

The requirement of unity of invention needs to be assessed only if a groupof inventions is claimed. A group of inventions may be formed, for example,
by a plurality of independent claims in the same or in different categories, aplurality of alternative inventions defined within a single independent claim(see also F-IV, 3.7) or a plurality of dependent claims where theindependent claim is either not novel or not inventive.
Rule 44(1)If a group of inventions is claimed, the requirement that the inventions inthis group are so linked as to form a single general concept (Art. 82) isfulfilled only if there is a technical relationship among the claimed
inventions involving one or more of the same or corresponding special
technical features.
The term "special" means that the features in question define thecontribution that the invention considered as a whole makes over the "priorart at hand" in terms of novelty and inventive step. The "prior art at hand",i.e. the prior art relied upon in the non-unity assessment, may varydepending on the stage of proceedings (see F-V, 3).
The term "same" means that the special technical features are identical or
define an identical chemical structure.
The term "corresponding" means that the special technical features achieve
the same technical effect or solve the same technical problem.
Correspondence may be found for example in alternative solutions, orinterrelated features, e.g. the interaction between a plug and a socket
causing a releasable electrical connection, or in a causal relationship suchas a step in a manufacturing process that causes a certain structuralfeature in a product. For example, an application might include two sets ofclaims, one comprising a metal spring, and another comprising a block ofrubber. The metal spring and block of rubber may be considered to becorresponding technical features as they both achieve the same technicaleffect of resilience.
In contrast, features that are not shared, i.e. features that only appear insome but not in other claims, cannot be part of the single general inventive
concept.

Art. 84

2.1 Insufficient grounds for lack of unity
When determining unity of invention, a finding of lack of clarity of the claims
is on its own not sufficient grounds for a finding of lack of unity.
Normally, too, the sequence of the claims has no impact on thedetermination of unity of invention. However, it will have an impact on whichinvention is to be considered the first invention mentioned in the claims(see F-V, 3.4).
Moreover, the fact that the claimed separate inventions belong to different
groups of the classification is not in itself a reason for a finding of lack ofunity.

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Guidelines for Examination in the EPO

If an application contains claims of different categories or several
independent claims of the same category, this is not in itself a reason for an
objection of lack of unity of invention (the relationship between Rule 43(2)and Art. 82 is explained in more detail in F-V, 3.2.1).
Lack of unity does not arise because of one claim containing a number ofindividual features, where these features do not present a technicalinterrelationship (i.e. a combination), but merely a juxtaposition(see G-VII, 7).
By definition, no lack of unity can be present between an independent claim
and its dependent claims, even if the features of the dependent claims arejuxtaposed with the features of the independent claim (see F-V, 3.2.3).
2.2 Division's approach
Lack of unity is not a ground of revocation in later proceedings. Therefore,
although the objection is certainly made and amendment insisted upon inclear cases, it is neither raised nor insisted upon on the basis of a narrow,
literal or academic approach. This is particularly so during search when thepossible lack of unity does not necessitate a further search.
When a lack of unity is established, the claimed subject-matter is divided
into separate inventions and/or inventions grouped together in view of theirtechnical relationships (see F-V, 3.2), i.e. according to any common mattercomprising same or corresponding potential special technical features. In
this context, an invention must have technical character and be concernedwith a technical problem within the meaning of Art. 52(1) (see G-I, 1 and 2),
but it does not necessarily need to meet other requirements forpatentability, such as novelty and inventive step (see G-VI and G-VII).
Lack of unity may be evident a priori, i.e. prior to carrying out a prior-art
search, or may become apparent a posteriori, i.e. after taking into accountthe prior art revealed by the search in terms of novelty and inventive step.
3. Assessment of unity
The assessment of unity of invention serves to determine if thesubject-matter of the claims have anything in common that represents asingle general inventive concept (Art. 82). If any of the claims contain one
or more alternatives, each of the alternatives is considered as if it were aseparate claim for the purpose of assessing lack of unity.
A substantive assessment of unity of invention requires(i)determining, in the light of the application as a whole, the common
matter, if any, between the claims of the different claimed inventions
that the examiner provisionally identifies (see F-V, 2.2, 3.2 and 3.4);(ii)

comparing the common matter with the "prior art at hand" to examine
whether the common matter makes a contribution over that prior art,
namely whether it comprises "special" technical features within themeaning of Rule 44(1);Part F – Chapter V-3

Rule 43(2)Part F – Chapter V-4

Guidelines for Examination in the EPO(iii)

March 2023

if the common matter does not comprise special technical features,
analysing any remaining technical features which are not part of theidentified common matter to determine if there is a unifying technicalrelationship among some of the claims.

For example, lack of unity may arise among the dependent claims if the
independent claim upon which they depend does not comprise any features
making a technical contribution over the prior art at hand. In such a case,the independent claim would not provide a unifying technical relationshipamong the dependent claims as required by Rule 44(1) as it would notcontain any "special technical features".
(i)

Determining the common matter

Common matter represents a potential single general inventive concept
among the claims. It may be present in features which are the same orcorresponding (see F-V, 2), namely in features that are either identical toeach other or that provide alone or in combination a common technicaleffect or a solution to a common technical problem.
The technical problem in the non-unity assessment may be different fromthat in a patentability assessment since the overall object is to find out what
the claims have in common.
When analysing the technical problem in a non-unity assessment, thestarting point is usually what is considered by the applicant in thedescription as having been achieved. In this regard, the applicant must
disclose the invention in such terms that the technical problem and its
solution can be understood, and state any advantageous effects of theinvention with reference to the background art (Rule 42(1)(c)). This
technical problem defines in the first instance the common matter of theclaims.
However, for the purpose of considering unity of invention, the division is
not restricted to the general concept of what the applicant subjectively
claims to be his invention (G 1/89 and G 2/89).
The technical problem put forward by the applicant in the description may,on closer examination, reveal itself as unsuitable as a means of linking the
subject-matter of the claims in such a way that they form a single generalinventive concept. This may happen either where, in view of the information
contained in the description and the common general knowledge of theskilled person, it is evident that different claims solve different problems (apriori assessment of lack of unity) or where the search reveals prior art
which discloses or renders obvious a solution of the unifying technicalproblem stated by the applicant in the description (a posteriori assessmentof lack of unity). In the latter case, the technical problem stated by theapplicant may no longer constitute the single general inventive concept
required by Art. 82 since it cannot be regarded as inventive.
For example, a prior-art document under Art. 54(2) disclosing all thefeatures of an independent claim also discloses, at least implicitly, theMarch 2023

Guidelines for Examination in the EPO

technical problem stated by the applicant since by definition this problem
must be solved by the features of said independent claim.
The division will then proceed to analyse if any other common matter ispresent among the claims, i.e. identify, in the light of the application as awhole, any technical features of the claims that are the same orcorresponding. When determining whether technical features arecorresponding, it is important that the technical problems solved, which areassociated with the technical effects, are not formulated too narrowly or too
generally. If the technical problems are too narrow when they could havebeen more general, they may have nothing in common leading to thepossibly wrong conclusion that technical features are not corresponding. Ifthey are too general when they could have been narrower, the common
aspects of the problem may be known, also leading to the possibly wrong
conclusion that there is a lack of unity.
For example, a membrane and a diaphragm may achieve the technicaleffect of "providing resilience" and hence may be corresponding features.
Common matter may not only be found in features of claims in the same
category but may also be embodied in features of claims of different
categories. For example, in the case of a product, a process specially
adapted for the manufacture of said product and the use of said product,
the product may represent the common matter which is present in the use
and in the process as the effect or result of the process.
Common matter may also be embodied in interrelated product features(e.g. a plug and a socket). Although corresponding features in interrelated
products may be formulated quite differently, if in their interaction they
contribute to the same technical effect or to the solution of the same
technical problem, they may be part of the common matter.
There may be cases where no common matter at all can be identified. Thenthe application lacks unity because neither a technical relationship within
the meaning of Rule 44(1) is present between the independent claims, nordoes the application entail a single general inventive concept within themeaning of Art. 82.
(ii)

Comparison of the common matter with the prior art at hand

If common matter, namely subject-matter involving the same orcorresponding technical features, is identified in the claims, it must becompared with the prior art at hand. If the common matter defines a
non-obvious contribution over that prior art, it will involve "special technicalfeatures", and the inventions concerned will be so linked as to form a single
general inventive concept. Otherwise, if the common matter is known orobvious from the prior art at hand, then the application lacks unity. This
assessment is to be done on the basis of an assessment of novelty andinventive step vis-à-vis the prior art at hand. The obviousness is to beassessed, whenever appropriate, using the problem-solution approach.

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Part F – Chapter V-6

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March 2023

The common matter may involve features defining technical alternatives. If
the common technical effect to be achieved by these technical alternatives
is already known, or may be recognised as generally desirable (a mere
desideratum), or is obvious, these alternative features cannot be
considered as defining a technical relationship within the meaning of Rule44(1) because there is no inventive merit in formulating the problem.
The "prior art at hand", i.e. the prior art relied upon in the non-unity
assessment, may vary depending on the stage of proceedings. For
example, where the assessment is carried out before the search ("a prioriassessment"), the only "prior art at hand" may be the background art
provided by the applicant in the description and any common generalknowledge. During the search, other prior art may be revealed and may
form the basis for the "a posteriori assessment". Therefore, the "prior art athand" may change during the course of the proceedings. For this reason
the assessment of unity is iterative.
(iii)

Analysis of the remaining technical features

If the comparison of the common matter under (ii) leads to the finding of alack of unity, as a next step, the groups of potential different inventions
present in the claims need to be confirmed or refined (see F-V, 3.2).
In order to determine these groups of potential inventions, the remaining
technical features not forming part of the identified common matter need to
be analysed. In most cases, each group will comprise several claims. This
grouping is performed on the basis of the technical problems associatedwith the remaining technical features of each of the claims. Those claims
comprising remaining technical features associated with the same technicalproblem are combined into a single group. However, if the technicalproblem has been successfully solved in the prior art, claims associatedwith the same technical problem may be placed into different groups (seeF-V, 3.3.1(iii)(c)).
The technical problems associated with the claims must be formulated withcare. It may not be sufficient to analyse the remaining technical features ofeach claim in isolation, but rather to analyse their effect when read in thecontext of the individual claim as a whole and in the light of the description.
When formulating the technical problems of the various potential inventions
in a unity assessment, a very narrow approach should be avoided since theaim of the exercise is to see whether any commonality may be establishedbetween the inventions. It is therefore often necessary to redefine the very
specific problems associated with each of the claims to arrive at a moregeneral problem, while bearing in mind the context in which the relevant
features are disclosed.
For the grouping, it is irrelevant whether or not the subject-matter of theclaims or of the remaining technical features of the claims are novel orinventive over the prior art at hand. However, it is relevant for assessing
whether or not the applicant is to be invited to pay an additional search fee
for a group (see F-V, 4).

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Part F – Chapter V-7

If the problem(s) associated with the different groups is (are) either known
from the prior art at hand or is (are) different from each other, then thefinding of step (ii) that there exists a lack of unity is confirmed.
3.1

Non-unity and prior art under Art. 54(3)3.1.1 Non-unity and prior art under Art. 54(3)Documents cited under Art. 54(3) should be disregarded in the evaluationof unity of invention since they cannot anticipate the inventive concept of
the application under examination.
3.1.2 Non-unity and prior art under Art. 54(2)Documents cited under Art. 54(2) as accidental anticipation should bedisregarded in the evaluation of unity of invention since they cannot
anticipate the inventive concept of the application under examination (seeH-V, 4.2.1, G 1/03 and G 1/16).
3.2 Grouping of inventions
As a general rule, after the initial identification of subject-matter lacking
unity, the claims and alternatives contained in claims are assigned to theidentified groups of inventions. This step comprises the assessment of
which of the remaining claims or alternatives in claims could potentiallyrelate to the same technical problem. By doing so, groups of inventions are
identified wherein each group of inventions relates to unitary subject-matterin view of the prior art at hand. If, in the course of grouping, the same
special technical feature, which provides a contribution over the prior art, isidentified in two groups of inventions, both groups of inventions need to be
combined into one single group. Conversely, if, within one initial single
group of inventions, claims or alternatives in claims are identified that are
not linked by a potentially special technical feature, which provides acontribution over the prior art at hand, they will normally be separated into
different groups of inventions. See also F-V, 3(iii) for analysing features intheir context rather than in isolation. The initial grouping of claims andalternatives in claims into different inventions may require re-evaluation
during the course of assessment of unity of invention.
Typically, different groups of inventions are based on different independentclaims of the same category, on alternatives defined in one independentclaim (see F-V, 3.2.1) or on dependent claims defining alternative
embodiments, provided that the independent claim is either not novel or notinventive. However, different groups of inventions may also be based on
independent claims in different categories if lack of unity is present between
these claims.
3.2.1 Plurality of independent claims in the same category
Rule 43(2) defines in sub-paragraphs (a), (b) and (c) the situations where,
without prejudice to the requirements of Art. 82, an application is allowed tocomprise a plurality of independent claims in the same category (seeF-IV, 3.2 and 3.3). The express reference to Art. 82 in Rule 43(2) makes
clear that the requirement for unity of invention must still be met. Where theapplication both lacks unity of invention and fails to comply with theRule 43(2)Part F – Chapter V-8

Guidelines for Examination in the EPO

March 2023

requirements of Rule 43(2), it is at the discretion of the division to raise an
objection under Rule 43(2) or Art. 82, or both.
A plurality of inventions in the same category may constitute a group of
inventions so linked as to form a single general inventive concept.
Examples of inventions in the same category are alternative forms of an
invention or interrelated inventions.
Rule 44(2)Alternative forms of an invention may be claimed either in a plurality of
independent claims or in a single independent claim (see also F-IV, 3.7). In
the latter case, the presence of the two alternatives as independent forms
may not be immediately apparent. In either case, the same criteria areapplied in deciding whether or not there is unity of invention, and lack ofunity of invention may therefore also exist within a single claim.
Several independent claims in the same category directed to interrelated
subject-matter may meet the requirement of unity even if it appears that theclaimed subject-matter is quite different, provided that technical features
making a contribution over the prior art at hand are the same orcorresponding. Examples of such situations include a transmitter and thecorresponding receiver or a plug and the corresponding socket (see also
F-IV, 3.2).
Thus, special technical features relating to the single general inventive
concept must be either implicitly or explicitly present in each of the
independent claims.
3.2.2 Plurality of independent claims in different categories
A plurality of independent claims in different categories (see F-IV, 3.1) may
constitute a group of inventions so linked as to form a single generalinventive concept as defined in Rule 44(2).
However, it is essential that a single general inventive concept link theclaims in the various categories. The presence in each claim of expressions
such as "specially adapted" or "specifically designed" does not necessarily
imply that a single general inventive concept is present.
3.2.3 Dependent claims
A dependent claim and the higher-ranking claim on which it depends
cannot be grouped into two different groups of inventions (see F-V, 2.1).
If, however, the higher-ranking claim appears not to be patentable, then thequestion of whether there is still an inventive link between all the claims
dependent on that higher-ranking claim needs to be carefully considered.
In this context it is important to verify that a claim that is drafted as adependent claim is in fact a true dependent claim comprising all thefeatures of the corresponding independent claim, see F-IV 3.7. For adefinition of a dependent claim, see F-IV, 3.4 and 3.8.

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Guidelines for Examination in the EPO

3.2.4 Common dependent claims
While an independent claim is always part of the common matter among its
dependent claims, the opposite is not true: a claim dependent on several
independent claims is never part of the common matter between these
independent claims.
Unity is assessed firstly between the independent claims. If a dependentclaim comprises technical features common to several inventions, then it ispart of all of these inventions at the same time.
Example 1
An application contains two independent claims and one dependent claim:
1.

A device comprising feature A.

2.

A device comprising feature B.

3.

A device comprising features A and B.

In this example, independent claims 1 and 2 are not linked by a single
general inventive concept; features A and B are neither the same nor
corresponding special technical features. A lack of unity is present between
claims 1 and 2, each of them being directed to a different invention. The
content of dependent claim 3 has no bearing on this analysis.
If dependent claims comprise features of two or more groups of inventions,then they belong to each of these group of inventions. In example 1, thesubject-matter of claim 3 contains features of each of the two inventions(claim 1, claim 2), thus belonging to both inventions at the same time.
Therefore, the search for the first invention mentioned in the claims should,
in this example, cover the subject-matter of claim 1 and claim 3.
The examiner also assesses if a further search fee should be paid for thesecond invention (see F-V, 2.2, F-V, 3.4, B-VII, B-III, 3.8).
Example 2
An application comprises the following claims:
1.

A device comprising feature A.

2.

A device according to claim 1, further comprising feature B.

3.

A device according to any of the previous claims, further comprisingfeature C.

Claim 3 is thus directed to the following subject-matter:3.

A device that is either:(a)a device comprising features A and C; orPart F – Chapter V-9

Part F – Chapter V-10

Guidelines for Examination in the EPO(b)March 2023

a device comprising features A, B and C.

In this example, feature A is not a special technical feature (i.e. the subjectmatter of claim 1 is either not new or not inventive).
–

If both features B and C are special technical features (new andinventive) and they are corresponding (that is, they have a technicalrelationship with each other), then the claimed devices A+B and A+C
are the same invention. Consequently, the device A+B+C is part ofthe same invention as well. There is unity of invention.

–

If features B and C are different and are not corresponding (that is,they have no technical relationship with each other), then there is alack of unity. There are two inventions: the device having the features
A+B (claim 1 partially and claim 2 entirely) and the device having thefeatures A+C (claim 1 partially and claim 3(a) entirely). The subjectmatter of claim 3(b) has all the features of the first invention (A+B)
and all the features of the second invention (A+C). Therefore it
belongs entirely to both inventions at the same time. Therefore thesearch for the first invention mentioned in the claims should, in thisexample, cover not only claim 2 (A+B), but also the subject-matter ofclaim 3(b) (A+B+C).

The examiner also assesses if a further search fee should be paid for thesecond invention (see F-V, 2.2, F-V, 3.4, B-VII, B-III, 3.8).
Example 1
An application contains three independent claims, A, B and C, and several
claims combining the content of the independent claims, i.e. claims A+B,
A+C, B+C and A+B+C.
Independently of the order and the manner in which the claims arepresented, the application in question contains three sets of claims:(1)

independent claim A with dependent claims A+B, A+C and A+B+C;(2)

independent claim B with dependent claims A+B, B+C and A+B+C;(3)

independent claim C with dependent claims A+C, B+C and A+B+C.

Unity or lack of unity is assessed firstly between the independent claims A,
B and C: if these claims are not linked by a single general inventive concept
and they do not contain any same or corresponding special technicalfeatures, a lack of unity is present. The content of any of the dependentclaims, e.g. of claim A+B+C, has no bearing on this analysis. Dependentclaims comprising features of two or more groups of inventions, i.e.
dependent claim A+B+C in the above examples, belong to all of the two or
more groups of inventions.

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Example 2
An application comprises the following claims:
1. A device comprising feature A.
2. A device according to claim 1 comprising feature B.
3. A device according to any of the previous claims comprising feature C.
In this case, claim 3 defines two different embodiments. Firstly, an
embodiment in which claim 3 depends only on claim 1 and thus comprises
only the features A + C (= claim 3a) and, secondly, an embodiment inwhich claim 3 depends on claim 2, in which case it comprises the features
A + B + C (= claim 3b).
If claim 1 (feature A) is anticipated by prior art and lack of unity exists
between the feature combinations A + B (claim 2) and A + C (claim 3a) due
to B and C not being same or corresponding special technical features,
then claim 1 is shared by and belongs to both groups of inventions.
Claim 3b is similarly shared by both groups of inventions. Consequently, asearch (or examination) restricted to the first invention must include claim 3
in as far as it depends on claim 2 (= claim 3b). The unsearched or
unexamined second invention thus includes claim 3 only in as far as it
depends on claim 1 directly, i.e. claim 3a.
Moreover, as outlined in F-V, 2.1, no lack of unity can be present between
an independent claim and its dependent claims. For this reason alone,claim 3 must belong to both groups of inventions. Similar considerations
apply to claim 1, which is shared by both groups of inventions but only tothe extent that it relates to the subject-matter of the respective groups ofinventions.
As a result, Group I comprises claim 1 in as far as it relates to thesubject-matter of Group I and claims 2 and 3b completely, and Group II
comprises claim 1 in as far as it relates to the subject-matter of Group II
and claims 3a and 3b completely.
A search related to Group I will cover claim 2 entirely and claim 3 only
when depending on claim 2 (= claim 3b) but will not cover claim 3 when
depending directly on claim 1 (= claim 3a). Conversely, a search related toGroup II will also cover claim 3 when depending directly on claim 1 (= claim3a) but will not cover claim 2 alone.
The examiner also assesses if a further search fee should be paid forGroup II (see F-V, 2.2, F-V, 3.4, B-VII, B-III, 3.8).
3.2.5 Markush grouping (alternatives in a single claim)
Where a single claim defines several (chemical or non-chemical)
alternatives, e.g. it contains a so called "Markush grouping", therequirement of Rule 44(1) for same or corresponding special technicalPart F – Chapter V-11

Part F – Chapter V-12

Guidelines for Examination in the EPO

March 2023

features is considered met if the alternatives are of a similar nature (seeF-IV, 3.7).
When the Markush grouping is for alternatives of chemical compounds,
they should be regarded as being of a similar nature where:(i)all alternatives have a common property or activity, and(ii)

a common structure is present, i.e. a significant structural element isshared by all of the alternatives, or all alternatives belong to arecognised class of chemical compounds in the art to which theinvention pertains.

Thus, common matter is provided for a Markush grouping by the common
property or activity of the alternatives (see (i) above) and the common
structure defined by (ii) above.
A "significant structural element is shared by all of the alternatives" if thecompounds share a common chemical structure that occupies a large
portion of their structures, or, if the compounds have in common only asmall portion of their structures, the commonly shared structure constitutes
a structurally distinctive portion and this structure or portion leads to atechnical contribution in view of existing prior art at hand. The structuralelement may be a single component or a combination of individualcomponents linked together.
There is no need for a significant structural element to be novel in absoluteterms (i.e. novel per se). Rather, the term "significant" means that inrelation to the common property or activity, there must be a common part ofthe chemical structure that distinguishes the claimed compounds from any
known compounds having the same property or activity.
In other words, the significant structural element defines the technicalcontribution which the claimed invention, considered as a whole, makes
over the prior art at hand.
The alternatives belong to a "recognised class of chemical compounds" ifthere is an expectation from the knowledge in the art that members of theclass will behave in the same way in the context of the claimed invention,i.e. that each member could be substituted one for the other, with the
expectation that the same intended result would be achieved.
However, if it can be shown that at least one Markush alternative is notnovel, unity of invention must be reconsidered. In particular, if the structureof at least one of the compounds covered by a Markush claim is known,
together with the property or technical effect under consideration, this is anindication of lack of unity of the remaining compounds (alternatives).
This is because the Markush alternatives comprise no same (c.f. common
structure) or corresponding (c.f. same property or technical effect) technicalfeatures that are "special".

March 2023

Guidelines for Examination in the EPO

Claims covering different alternative nucleic acids or proteins defined bydifferent sequences are equally considered to represent a Markush
grouping and are also analysed according to the foregoing principles.
3.2.6 Claims for a known substance for a number of distinct medical
uses
For the particular case of claims for a known substance for a number ofdistinct medical uses, see G-VI, 7.1.
3.2.7 Intermediate and final products
In the present context of intermediate and final products, the term
"intermediate" is intended to mean intermediate or starting products. Suchproducts are made available with a view to obtaining end products througha physical or chemical change in which the intermediate product loses its
identity.
The requirement for the same or corresponding special technical features(Rule 44(1)) is considered to be met in the context of intermediate and final
products where:(i)

the intermediate and final products have the same essential
structural element, i.e. their basic chemical structures are the sameor their chemical structures are technically closely interrelated, theintermediate incorporating an essential structural element into thefinal product, and(ii)

the intermediate and final products are technically interrelated,
i.e. the final product is manufactured directly from the intermediate oris separated from it by a small number of intermediates all containing
the same essential structural element.

An essential structural element is a chemical structure that defines thetechnical contribution that the claimed inventions, considered as a whole,
make over the prior art. Typically, the above-mentioned conditions are met
in the case of a precursor compound yielding the final product directly uponreaction.
Unity of invention may also be present between intermediate and final
products of which the structures are not known – for example, as between
an intermediate having a known structure and a final product with unknown
structure or as between an intermediate of unknown structure and a final
product of unknown structure. In such cases, there should be sufficientevidence to lead one to conclude that the intermediate and final products
are technically closely interrelated as, for example, when the intermediatecontains the same essential element as the final product or incorporates anessential element into the final product.
Different intermediate products used in different processes for the
preparation of the final product may be claimed provided that they have thesame essential structural element. The intermediate and final products
should not be separated, in the process leading from one to the other, by
an intermediate which is not new. Where different intermediates forPart F – Chapter V-13

Part F – Chapter V-14

Guidelines for Examination in the EPO

March 2023

different structural parts of the final product are claimed, unity should not be
regarded as being present between the intermediates. If the intermediate
and final products are families of compounds, each intermediate compoundshould correspond to a compound claimed in the family of the final
products. However, some of the final products may have no corresponding
compound in the family of the intermediate products, so the two families
need not be absolutely congruent.
The mere fact that, besides the ability to be used to produce final products,
the intermediates also exhibit other possible effects or activities should notprejudice unity of invention.
3.3 Reasoning for a lack of unity objection
An objection of lack of unity must consist of logically presented, technicalreasoning containing the basic considerations behind the finding of lack ofunity. If necessary, it must comprise considerations relating to the number
and grouping of the claimed separate inventions.
3.3.1 Minimum requirements for reasoning of lack of unity
When raising a non-unity objection, the division must back it up with aminimum reasoning outlining at least the following elements:(i)the common matter, if any, between the groups of inventions. The
common matter is based on the same or corresponding technicalfeatures. It is not confined to individual features but also includes
synergistic effects being the result of a combination of features, see
G-VII, 7;(ii)

the reasons why this common matter cannot provide a single generalinventive concept based on the same or corresponding special
technical features. This includes prior art or general knowledge or theteaching of the application itself which anticipates or renders obvious
the common matter (and the general problem if applicable). If prior
art is relied upon, it must be identified, indicating any relevant
passages and the reasons why they are considered relevant;(iii)

the reasons why there is no technical relationship between theremaining technical features of the different groups of claims,
including:(a)an identification of any remaining technical features of thedifferent groups and the respective claims of each group, withan explicit statement that these technical features are different;(b)for each group, an identification, in the light of the description,of the objective technical problem(s) solved by theseremaining technical features;(c)

why the problem(s) solved are either known from the prior art
or are different so that the different technical features cannot
be considered to be "corresponding special technicalfeatures";March 2023

Guidelines for Examination in the EPO(iv)

in all cases, the minimum reasoning comprises a concluding
statement that, because neither the same nor corresponding special
technical features are present in the claims, there is no single
general inventive concept and the requirements for unity of invention
are not met;(v)

in special cases, point iii, parts (a) to (c), which prove that there is notechnical relationship involving the same or corresponding special
technical features, will be automatically covered if it is explained:(1)

why grouped alternatives of chemical compounds are not of asimilar nature;(2)

in case of lack of unity between intermediate and final
products, why the intermediate and final products do not havethe same essential structural elements and are not technicallyclosely interrelated;(3)

why a process is not specially adapted to the production of a
product;(4)

why a product itself does not provide a single general inventive
concept linking different uses as defined in the claims;(5)

why a use in itself does not provide a single general inventive
concept linking the subject-matter of the claims.

3.4 Determination of the invention first mentioned in the claims
When lack of unity is established, the sequence of the claimed (groups of)inventions will normally start with the invention first mentioned in the claims("first invention"); see also B-VII, 1.1 and 2.3. In other words, as a generalrule the division of subject-matter follows the order of appearance of thedifferent inventions in the claims. The content of the dependent claims will
be taken into account when determining the first invention. Trivial claims
relating exclusively to features that seem unimportant in the light of theinvention or that are generally known in the technical field of the invention
are disregarded (see B-III, 3.8 for the search phase).

Part F – Chapter V-15

Rule 64(1)Rule 164(1)However, if the filed claims do not fulfil the requirements of Rule 43(4), i.e.
if the dependency of the claims is not correct, the claims will be re-orderedaccordingly before assessing the fulfilment of the requirements of unity.
4. Procedure in the case of lack of unity during search
The search division may neither refuse the application for lack of unity nor
require limitation of the claims, but must inform the applicant that, if thesearch report is to be drawn up to cover those inventions present otherthan the first mentioned, then further search fees must be paid within twomonths. This applies even if the search reveals prior art that renders theentire subject-matter of the first invention not novel.
When lack of unity is raised a posteriori, the assessment of the searchdivision is provisional (G 2/89) and is based on the prior art at hand when

Rule 64(1)Rule 64(2)Part F – Chapter V-16

Guidelines for Examination in the EPO

March 2023

the assessment is done. In view of the fact that such novelty and inventive
step considerations are being made without the applicant having had an
opportunity to comment, the search division will exercise restraint in thisassessment and in borderline cases, will preferably refrain from considering
an application as not complying with the requirement of unity of invention.
Before issuing an invitation to pay additional fees based on an a posterioriassessment (see B-VII, 1.2), the search division will assess the technicalproblem underlying a claimed group of inventions in the light of both thedisclosure of the application as a whole and the relevant prior art at handrevealed by the search (see W 6/97, W 6/91).
The consideration of the requirement of unity of invention is always madewith a view to giving the applicant fair treatment and the invitation to pay
additional fees is made only in clear cases.
The applicant is never invited to pay an additional search fee for claimed
inventions that are either not novel or do not possess an inventive step overthe prior art at hand. Nevertheless, the search division may still raise an
objection of lack of unity for such alleged "sub-inventions" in view ofpotential amendments that could be reasonably expected in the light of thedescription and any drawings.
However, if the inventions concern non-obvious alternatives to thedisclosure of the prior art at hand or technical details of different
apparatuses/methods/products that require a complete new search for an
enabling disclosure, the search division may invite the applicant to pay
additional fees for all the inventions.
Example:The independent claim is directed to a new method to dope a molecule so
as to enhance its ability to bind to a cellular membrane's receptor. A
dependent claim claims that the molecule can be doped to bind to several
different receptors of the membrane. The search reveals that the method of
the independent claim, applied to one receptor listed in the dependentclaim, has already been disclosed in the prior art. If the search division is of
the opinion that the application of the by now known method to thealternative receptor is an invention in view of the prior art at hand, it invites
the applicant to pay additional fees for all the remaining alternatives since acomplete search needs to be carried out in order to try to retrieve an
enabling disclosure for each of them.
4.1 Provisional opinion accompanying the partial search results
As from 1 April 2017, the EPO provides applicants with a provisional
opinion on the patentability of the invention (or unitary group of inventions)first mentioned in the claims (see OJ EPO 2017, A20). This provisional
opinion is sent together with the invitation to pay further/additional searchfees and the partial search results. It also includes the reasons for the
non-unity findings.

March 2023

Guidelines for Examination in the EPO

Part F – Chapter V-17

The provisional opinion is sent for information only. A reply addressing thepoints raised in the provisional opinion is not required and will not be taken
into account when the extended European search report (EESR) is issued.
Only the EESR requires a response under Rule 70a.
The provisional opinion accompanying the partial search results is available
to the public via online file inspection.
4.2 Consequences for the applicant
There is no obligation for applicants to pay any additional fee.
However, subject-matter that has not been searched will not be examinedby the examining division (G 2/92). Hence, it cannot be prosecuted in an
independent claim.
If the lack of unity persists also in examination after the claims have been
amended, the excision of the non-searched subject-matter from theapplication may be necessary (see C-III, 3.2 C-III, 3.3 and F-IV, 4.3).
Non-searched subject-matter can always be prosecuted in a divisional
application.
5. Procedure in the case of lack of unity during substantive
examination
5.1 General principles
The final responsibility for establishing whether the application meets therequirement of unity of invention ultimately rests with the examining division(see T 631/97; see also C-III, 3.1 C-III, 3.2). For Euro-PCT applications
which have entered the European phase, see F-V, 7.
Whether or not the question of unity of invention has been raised by thesearch division, it must always be considered by the examining division.
The conclusion reached may change, e.g. when further prior art becomes
available at a later stage of the proceedings. When lack of unity of invention
arises only during substantive examination, the examining division shouldraise an objection only in clear cases, particularly if substantive
examination is at an advanced stage (see also H-II, 7.3 H-II, 6.3).
Whenever unity is found to be lacking, the applicants should be required tolimit their claims in such a way as to overcome the objection (see C-III, 3.1
and 3.2 C-III, 3.2 and C-III, 3.3), which means restricting them to a single
searched invention (see H-II, 7.1 H-II, 6.1). Excision or amendment of partsof the description may also be necessary (see C-III, 3.2 C-III, 3.3). One ormore divisional applications, covering matter removed to meet thisobjection, may be filed (see C-IX, 1), provided that the parent application ispending (A-IV, 1.1.1).
5.2 Objections to unsearched inventions
See H-II, 7.2 and 7.3 H-II, 6.2 and H-II, 6.3.

Rule 36(1)Part F – Chapter V-18

Guidelines for Examination in the EPO

March 2023

5.3 Review of non-unity findings
The reviewing of non-unity findings and the refund of additional search fees
are dealt with in C-III, 3.3 C-III, 3.4.
In so far as the examining division finds that unity of invention is given, if
the applicant has paid the further search fee(s) and requested a full or
partial refund thereof, the examining division will order refund of therelevant further search fee(s).

Rule 137(5)6. Amended claims
For the situation where the applicant submits new claims directed tosubject-matter which has not been searched e.g. because it was only
contained in the description and at the search stage it was not found to beappropriate to extend the search to this subject-matter, see H-II, 6.2 H-IV,
4.1.2 and B-III, 3.5.
7.

Art. 153(7)Rule 164(2)Euro-PCT applications

7.1 International applications without supplementary search
As indicated in B-II, 4.3.1, for certain international applications entering theEuropean phase with an international search report, no supplementary
European search is carried out. The following situations may then be
distinguished during substantive examination:(i)If, during the international search, an objection of lack of unity has
been raised and the applicant has not taken the opportunity to havethe other invention(s) searched by paying additional search fees forthem, but has taken the opportunity to amend the claims after receiptof the international search report (see E-IX, 3.3.1) so that they are
limited to the invention searched and has indicated that examination
is to be carried out on these amended claims, the examining division
proceeds on the basis of these claims.

(ii)

If, during the international search, an objection of lack of unity has
been raised and the applicant has neither taken the opportunity tohave the other invention(s) searched by paying additional searchfees for them, nor amended the claims so that they are limited to theinvention searched, and the examining division agrees with theobjection of the ISA (taking into account any comments on the issue
of unity submitted by the applicant in the response to the WO-ISA or
IPER, see E-IX, 3.3.1), the examining division will then proceed toissue an invitation under Rule 164(2) to pay search fees for any
claimed invention in the application documents for which no
additional search fee has been paid to the EPO, where it has acted
as the ISA.

(iii)

If additional search fees have been paid during the international
phase, the applicant may determine that the application is to proceedon the basis of any of the searched inventions, the other(s) being
deleted, if the examining division agrees with the objection of the
ISA. Where the applicants have not yet taken that decision, theMarch 2023

Guidelines for Examination in the EPO

Part F – Chapter V-19

examining division will, at the beginning of substantive examination,
invite them to do so.
(iv)

If the claims to be examined relate to an invention which differs fromany of the originally claimed inventions, the examining division willproceed to issue an invitation under Rule 164(2) to pay search fees
for any claimed invention in the application documents not coveredby the international search report or supplementary international
search report, if any (see C-III, 2.3 C-III, 3.1).

(v)

If the applicant has not paid additional search fees during theinternational phase and the examining division does not agree withthe objection of the ISA (for example, because the applicant has
convincingly argued in response to the WO-ISA or IPER,
see E-IX, 3.3.1, that the requirement of unity of invention is satisfied),an additional search will be performed (see B-II, 4.2(iii)) and theexamination will be carried out on all claims.

In cases (i) to (iv), the applicant may file divisional applications for theinventions deleted to meet the objection of non-unity (see C-IX, 1 and
A-IV, 1), provided that, when a divisional application is filed, the application
being divided is still pending (see A-IV, 1.1.1).
7.2 International applications with supplementary search
For international applications entering the European phase with aninternational search report established by an ISA other than the EPO, asupplementary European search is carried out by the search division in thecases listed in B-II, 4.3.2. If the search division, during the supplementary
European search, notes a lack of unity, B-VII, 2.3 applies.

Rule 36(1)Art. 153(7)Rule 164(1)The procedure before the examining division in such cases is described in
E-IX, 4.2. In brief, the examining division will proceed with the examinationof that invention (or group of inventions) covered by the supplementary
European search report which has been chosen by the applicant inresponse to the ESOP.
7.3 International preliminary examination report (IPER)
For international applications entering the European phase with aninternational preliminary examination report, the examining division shouldcarefully take into account the position taken in that IPER before deviatingfrom it. This may be necessary where the claims have been changed, theapplicant successfully refutes the objection (either of which may happen in
response to the IPER, see E-IX, 3.3.1) or the interpretation of the rules
regarding unity of invention was erroneous; see further F-V, 7.1 and
F-V, 7.2 above.
7.4 Restricted IPER
If the EPO has established an IPER on the application and the applicant
wishes to obtain protection pertaining to claims which were not the subjectof this IPER because they were not searched during the international phasein consequence of an objection of lack of unity, the applicant can decide tohave such claims searched in response to the invitation to pay additional

Art. 76
Rule 164(2)Part F – Chapter V-20

Guidelines for Examination in the EPO

March 2023

search fees under Rule 164(2) and choose them for further prosecution.
Alternatively, the applicant can decide to file one or more divisional
applications for the inventions not searched, provided that, when adivisional application is filed, the application being divided is still pending(see A-IV, 1.1.1).

March 2023

Guidelines for Examination in the EPO

Part F – Chapter VI-1

Chapter VI – Priority
1. The right to priority
In this respect see also A-III, 6.
1.1 Filing date as effective date
According to Art. 80, a European application is accorded as its date of filingthe date on which it satisfies the requirements of Rule 40, or, if filed under
the PCT, the date on which it satisfies Art. 11 PCT. This date remains
unchanged except in the special circumstances of late-filed drawings orparts of the description provided for in Rule 56 EPC and Art. 14(2) PCT.
and late-filed correct application documents or parts filed under Rule 56a.

Rule 40

The date of filing may be the only effective date of the application. It will beof importance for fixing the expiry of certain time limits (e.g. the date bywhich the designation of the inventor must be filed under Rule 60), fordetermining the state of the art relevant to the novelty or obviousness of thesubject-matter of the application, and for determining, in accordance with
Art. 60(2), which of two or more European applications from separate
persons for the same invention is to proceed to grant.
1.2 Priority date as effective date
However, in many cases, a European application will claim the right ofpriority of the date of filing of a previous application. In such cases, it is thepriority date (i.e. the date of filing of the previous application) whichbecomes the effective date for the purposes mentioned in the preceding
paragraph.
1.3 Validly claiming priority
For a valid claim to priority, the following conditions must be satisfied:(i)the previous application was filed in or for a state or WTO member
recognised as giving rise to a priority right in accordance with theprovisions of the EPC (see also A-III, 6.2);(ii)

the applicant for the European patent was the applicant, or is the
successor in title to the applicant, who made the previous application(see also A-III, 6.1 and, for transfer of partial priority, F-VI, 1.5);(iii)

the European application is made during a period of twelve months
from the date of filing of the previous application (subject to certain
exceptions, see A-III, 6.6); and(iv)

the European application is in respect of the same invention as theinvention disclosed in the previous application, which must be the"first application" (see F-VI, 1.4 and 1.4.1).

The words "in or for" any member state of the Paris Convention or memberof the WTO, referred to in A-III, 6.2, mean that priority may be claimed in
respect of a previous national application, a previous European application,a previous application filed under another regional patent treaty or aprevious PCT application. If the previous application was filed in or for an

Art. 89

Art. 87(1), (2) and(5)

Art. 87(2) and(3)

Part F – Chapter VI-2

Guidelines for Examination in the EPO

March 2023

EPC contracting state, this state may also be designated in the European
application. The previous application may be for a patent or for theregistration of a utility model or for a utility certificate. However, a priority
right based on the deposit of an industrial design is not recognised(see J 15/80). So long as the contents of the application were sufficient toestablish a filing date, it can be used to create a priority date, no matter
what the outcome of the application may be; for example, it may
subsequently be abandoned or refused (see A-III, 6.2).
Art. 87(1)Art. 87(1)The expression "the same invention" in Art. 87(1) means that the
subject-matter of a claim in a European application may enjoy the priority ofa previous application only if the skilled person can derive thesubject-matter of the claim directly and unambiguously, using common
general knowledge, from the previous application as a whole. This meansthat the specific combination of features present in the claim must at least
implicitly be disclosed in the previous application (see F-VI, 2.2 andG 2/98).
1.4 First application
The filing date of the "first application" must be claimed as a priority, i.e. theapplication disclosing for the first time any or all of the subject-matter of theEuropean application. If it is found that the application to which the priority
claim is directed is in fact not the first application in this sense, but some or
all of the subject-matter was disclosed in a still earlier application filed by
the same applicant or a predecessor in title, the priority claim is invalid in so
far as the subject-matter was already disclosed in the still earlier application(see F-VI, 1.4.1).
To the extent the priority claim is invalid, the effective date of the European
application is the date of its filing. The previously disclosed subject-matterof the European application is not novel if the still earlier applicationreferred to above was published prior to the effective date of the European
application (Art. 54(2)) or if the still earlier application is also a European
application which was published on or after the effective date of theEuropean application in question (Art. 54(3)).

Art. 87(4)1.4.1 Subsequent application considered as first application
A subsequent application for the same subject-matter and filed in or for thesame state or member of the WTO is considered as the "first application"
for priority purposes if, at the date this subsequent application was filed, thestill earlier application had been withdrawn, abandoned or refused, without
being open to public inspection and without leaving any rights outstanding,and had not served as a basis for claiming priority. The EPO will notconsider this question unless there is evidence of the existence of a still
earlier application as, for example, in the case of a United States
continuation-in-part application. Where it is clear that a still earlier
application for the same subject-matter exists, and where the priority right isimportant because of intervening prior art (see F-VI, 2.1), the applicant isrequired to establish by evidence from an appropriate authority (normally anational patent office) that there were no rights outstanding in the still
earlier application in respect of the subject-matter of the application being
examined.

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Guidelines for Examination in the EPO

Part F – Chapter VI-3

Examples of applications that cannot be recognised as a "first application"
within the meaning of Art. 87(4) are:(i)

US applications which are a "continuation" of a previous application("con");(ii)

US applications which are a "continuation in part" of a previous
application ("cip"), in so far as the subject-matter in question was
already disclosed in the original US application;(iii)

national applications claiming priority from a previous national
application or national utility model.

In the case of US con or cip applications, the first sentence of thedescription reads as follows: "This application is a continuation in part(continuation) of Serial Number .... filed .....". The following information isfound on the title page under the heading "CONTINUING DATA******":"VERIFIED THIS APPLICATION IS A CIP (or CON) OF ........" A form
headed "Declaration for Patent Application" must also be attached to theend of the application (in this case the priority document), listing earlier
foreign or US applications under the heading "foreign priority benefits under
Title 35, United States Code, 119" or "benefit under Title 35, U.S.C., 120 of
any United States application(s)".
Applications may be filed by reference to a previously filed application (seeA-II, 4.1.3.1). If no priority is claimed from this previously filed application,
the filing by reference itself does not generate outstanding rights according
to Art. 87(4).

Rule 40(1)(c)

For example, in the case of national applications GB1 (filed on 1 February
2002, without claiming priority) and GB2 (filed on 2 January 2008, without
claiming priority), pertaining to the same subject-matter, a European
application EP1 (filed on 2 January 2009) claims priority of GB2 but refers
to GB1 for its content according to Rule 40(1)(c). If GB1 is withdrawn,
abandoned or refused, without being open to public inspection and without
having served as a basis for claiming a right of priority, the mere reference
to it under Rule 40(1)(c) does not amount to an outstanding right within themeaning of Art. 87(4). Consequently, in this case the priority claim to GB2
has to be considered valid for EP1.
1.5 Multiple priorities and partial priorities"Multiple priorities may be claimed" – i.e. a European application may claim
rights of priority based on more than one previous application (G 2/98).
"Partial priority" refers to a situation in which only a part of thesubject-matter encompassed by a generic "OR" claim is entitled to thepriority date of a previous application (G 1/15).
The previous application may have been filed in or for the same or different
states or members of the WTO, but in all cases the earliest applicationmust have been filed not more than 12 months before the date of filing of
the European application. Subject-matter of a European application will be

Art. 88(2) and(3)

Part F – Chapter VI-4

Guidelines for Examination in the EPO

March 2023

accorded the priority date of the earliest priority application which discloses
it.
If, for instance, the European application describes and claims two
embodiments (A and B) of an invention, A being disclosed in a French
application and B in a German application, both filed within the preceding
12 months, the priority dates of both the French and German applications
may be claimed for the appropriate parts of the European application;
embodiment A will have the French priority date and embodiment B theGerman priority date as effective dates. If embodiments A and B areclaimed as alternatives in one claim, these alternatives will likewise havethe different priority dates as effective dates.
If, on the other hand, a European application is based on one previous
application disclosing a feature C and a second previous application
disclosing a feature D, neither disclosing the combination of C and D, aclaim to that combination will be entitled only to the date of filing of theEuropean application itself. In other words, it is not permitted to "mosaic"
priority documents. An exception might arise where one priority document
contains a reference to the other and explicitly states that features from thetwo documents can be combined in a particular manner.
According to G 1/15, entitlement to partial priority may not be refused for aclaim encompassing alternative subject-matter by virtue of one or moregeneric expressions or otherwise (generic "OR" claim) provided that said
alternative subject-matter has been disclosed for the first time, directly, orat least implicitly, unambiguously and in an enabling manner in the priority
document. No other substantive conditions or limitations apply in thisrespect.
In assessing whether subject-matter within a generic "OR" claim may enjoy
partial priority, the first step is to determine the subject-matter disclosed in
the priority document that is relevant, i.e. relevant in respect of prior art
disclosed in the priority interval. This is to be done in accordance with thedisclosure test laid down in the conclusion of G 2/98 and on the basis ofexplanations put forward by the applicant or patent proprietor to support theclaim to priority, in order to show what the skilled person would have beenable to derive from the priority document. The next step is to examine
whether this subject-matter is encompassed by the claim of the applicationor patent claiming said priority. If the answer is yes, the claim is de facto
conceptually divided into two parts, the first corresponding to the invention
disclosed directly and unambiguously in the priority document, the second
being the remaining part of the subsequent generic "OR" claim not enjoying
this priority but itself giving rise to a right to priority as laid down in
Art. 88(3).

March 2023

Guidelines for Examination in the EPO

For example, if the priority document discloses the use of a specificcomposition whereas the application claims the use of a composition
defined in more generic terms, two alternative groups of subject-matters
are identified as being encompassed by the claim, even if the claim does
not expressly spell them out:–

alternative (a), concerning the use of a specific composition (e.g.
calcium salt of the active ingredient and tribasic phosphate salt inwhich the cation was multivalent) and–alternative (b), concerning the use of a composition defined in moregeneric terms (e.g. acid form or acceptable salt thereof as the active,
inorganic salt in which the cation was multivalent, wherein active
ingredient and inorganic salt were other than calcium salt of the acidand tribasic phosphate salt in combination).

Alternative (a) is the subject-matter disclosed in the priority document, notdefined as such in the claim but encompassed by it. Alternative (b) is theremaining subject-matter of the claim, which was not disclosed in thepriority document. In such a situation, the subject-matter of alternative (a)enjoys priority whereas that of alternative (b) does not.
The rationale of decision G 1/15 also applies in the context of deciding
whether an application from which priority is claimed is the first application
within the meaning of Art. 87(1). Just as a priority application and a patentclaiming priority from it may partially relate to the same invention, thepriority application and an earlier application filed by the same applicant
may also partially relate to the same invention. In that case, the priority
application would be the first application in respect of only that part of theinvention which is not the same as in the earlier application (T 282/12).
Partial priority may also be transferable separately. This, however, hasconsequences for the remaining priority right because the assignor is left
with a limited right and may no longer keep claiming that partial priority (anapplicant can only claim a right which they own). The transfer agreement of
the partial priority gives a respective partial priority right to the assignor andthe assignee corresponding to two clearly distinct and precisely definedalternatives.
2.

Determining priority dates

2.1 Examining the validity of a right to priority
As a general rule, the division does not make any investigation as to thevalidity of a right to priority. However, the priority right assumes importance
if prior art has to be taken into account which has been made available tothe public within the meaning of Art. 54(2) on or after the priority dateclaimed and before the date of filing (e.g. an intermediate document,
see G-IV, 3) or if the content of the European patent application is totally or
partially identical with the content of another European application within
the meaning of Art. 54(3), such other application claiming a priority datewithin that period. In such cases (i.e. cases where the art in question would
be relevant if of earlier date), the division must investigate whether thePart F – Chapter VI-5

Part F – Chapter VI-6

Guidelines for Examination in the EPO

March 2023

priority date(s) claimed may be accorded to the appropriate parts of theapplication it is examining and informs the applicant of the outcome andwhether, in consequence, the particular prior art under consideration,e.g. the intermediate document, or the other European application forms
part of the state of the art within the meaning of Art. 54. Also, in the case of
possible conflict with another European application under Art. 54(3), it may
be necessary in addition to allocate effective dates to the appropriate partsof that other application and to communicate this to the applicant
analogously (see also G-IV, 3). When the division needs to consider thequestion of priority date, it has to bear in mind all the matters which are
mentioned in F-VI, 1.3 to 1.5 above.
If in the case of a Euro-PCT application, where the EPO is acting as adesignated or elected Office, the priority document is not on file,
substantive examination may nevertheless be started. In such a case,without the priority document being on file, the application may even, whereappropriate, be refused because the claimed subject-matter lacks novelty
or inventive step, provided that the relevant state of the art is neither anintermediate document nor an Art. 54(3) application. However, no
European patent may be granted until such time as the priority document is
on file. In such a case, the applicant is informed that the decision to grant
will not be taken as long as the priority document is missing.
If intermediate documents or Art. 54(3) applications exist and thepatentability of the subject-matter claimed depends on the validity of thepriority right, substantive examination cannot be finalised as long as thepriority document is missing. Where the applicants have complied with
Rule 17.1(a), (b) or (b-bis) PCT, they may not be requested to file thepriority document. The proceedings have to be stayed and the applicant is
informed that, since the patentability of the subject-matter claimed depends
on the validity of the priority right, substantive examination cannot be
finalised as long as the priority document is not on file.
2.2 The same invention
The basic test to determine whether a claim is entitled to the date of apriority document is, as far as the requirement of "the same invention" isconcerned (see F-VI, 1.3(iv)), the same as the test for determining whether
or not an amendment to an application satisfies the requirement ofArt. 123(2) (see H-IV, 2). That is to say, for the priority date to be valid inthis respect the subject-matter of the claim must be directly andunambiguously derivable from the disclosure of the invention in the priority
document, also taking into account any features implicit to a person skilledin the art in what is expressly mentioned in the document (see G 2/98). As
an example of an implicit disclosure, a claim to an apparatus including"releasable fastening means" would be entitled to the priority date of adisclosure of that apparatus in which different embodiments of releasable
fastening elements such as a nut and bolt, a spring catch and a
toggle-operated latch are shown.
Art. 88(4)It is not necessary that the subject-matter for which priority is claimed befound among any claims in the previous application. It is sufficient that the
documents of the previous application taken as a whole "specificallyMarch 2023

Guidelines for Examination in the EPO

disclose" such subject-matter. The description and any claims or drawingsof the previous application are, therefore, to be considered as a whole indeciding this question, except that account is not taken of subject-matterfound solely in that part of the description referring to prior art, or in an
explicit disclaimer.
The requirement that the disclosure must be specific means that it is not
sufficient if the subject-matter in question is merely referred to in broad andgeneral terms. A claim to a detailed embodiment of a certain feature would
not be entitled to priority on the basis of a mere general reference to thatfeature in a priority document. Exact literal correspondence is not required,however. It is enough that, on a reasonable assessment, there is in
substance a disclosure of the same subject-matter of the claim.
A disclaimer which is allowable under Art. 123(2) (see H-V, 4.2.1 and 4.2.2)
does not change the identity of the invention within the meaning ofArt. 87(1). Therefore, such a disclaimer could be introduced when draftingand filing a successive European patent application, without affecting theright to priority from the first application not containing the disclaimer(see G 1/03, G 2/03 and G 2/10).
2.3 Priority claim not valid
If the tests set out in F-VI, 2.2 are not satisfied in relation to a particularprevious application, then the effective date of the subject-matter of theclaim in question will either be the filing date of the earliest application
which does provide the required disclosure and of which the priority isvalidly claimed (see G 3/93) or, in the absence of such, will be the date offiling of the European application itself (or the new date of filing if theapplication has been redated under Rule 56 or Rule 56a).
2.4 Some examples of determining priority dates
Note: the dates used are merely illustrative; they do not take account of thefact that the filing offices of the EPO are closed on weekends and certain
public holidays.
2.4.1 Intermediate publication of the contents of the priority
application
P is the application from which priority is claimed by EP, D is the disclosureof the subject-matter of P.
1.1.90FilingP

1.5.90Publication
D

1.6.90FilingEP

D is state of the art under Art. 54(2) if the priority claim of P is not valid.

Part F – Chapter VI-7

Part F – Chapter VI-8

Guidelines for Examination in the EPO

March 2023

2.4.2 Intermediate publication of another European application
P1 is the application from which priority is claimed by EP1, P2 the one fromwhich EP2 claims priority. EP1 and EP2 are filed by different applicants.
1.2.89FilingP1
A+B

1.1.90FilingP2
A+B

1.2.90FilingEP1
A+B

1.8.90Publication
EP1
A+B

1.1.91FilingEP2
A+B

EP1 is state of the art under Art. 54(3) if the respective priority claims of P1
and P2 are valid. This does not change if the publication of EP1 takes place
after the filing date of EP2. The publication of EP1 is state of the art under
Art. 54(2) if the priority claim of P2 is not valid.
2.4.3 Multiple priorities claimed for different inventions in theapplication with an intermediate publication of one of the inventions
EP claims priority of P1 and P2, D is the disclosure of A+B.
1.1.90FilingP1
A+B

1.2.90Publication
D
A+B

1.3.90FilingP2
A+B+C

1.6.90FilingEPclaim 1: A + B
claim 2: A + B + C

Claim 1 has a valid priority of P1 for its subject-matter, thus publication D is
not state of the art under Art. 54(2) against this claim. Claim 2 cannot
benefit from the priority of P1, as it does not concern the same
subject-matter. Thus publication D is state of the art under Art. 54(2) for thisclaim (see G 3/93). It is immaterial whether claim 2 is in the form of adependent or an independent claim.
2.4.4 A situation in which it has to be checked whether theapplication from which priority is actually claimed is the "first
application" within the meaning of Art. 87(1)P1 is the earliest application of the same applicant containing the invention.
EP claims the priority of the later US application P2, which is a"continuation-in-part" of P1. D is a public disclosure of A+B.
1.7.89FilingP1
A+B

1.1.90FilingP2 (cip)
A+B
A+B+C

1.6.90Publication
D
A+B

1.12.90
FilingEPclaim 1: A + B
claim 2: A + B + C

The priority claim of P2 for claim 1 is not valid as P2 is not the "first
application" for this subject-matter within the meaning of Art. 87(1), but P1
is, which has "left rights outstanding" in that P2 is a "continuation-in-part"
thereof. Therefore Art. 87(4) does not apply and this is not altered by anabandonment, withdrawal, refusal or non-publication of P1. D is prior art
pursuant to Art. 54(2) against claim 1, but not against claim 2, as the latterclaim has the earlier priority of P2.

March 2023

3.

Guidelines for Examination in the EPO

Part F – Chapter VI-9

Claiming priority

3.1 General remarks
An applicant who wishes to claim priority must file a declaration of priority
giving particulars of the previous filing, as specified in Rule 52(1), together
with a certified copy of the previous application and, if necessary for theassessment of patentability, a translation of it into one of the EPO official
languages (see A-III, 6.7 and A-III, 6.8).
3.2 Declaration of priority
A declaration of priority from an earlier filing should preferably be made at
the time of filing the European application, although this can be done at any
time within 16 months from the earliest priority date claimed(see A-III, 6.5.1). The declaration of priority must indicate the date of thepriority application, the relevant state party to the Paris Convention ormember of the WTO, and the file number.
A declaration of priority may be corrected within 16 months from the earliest
priority date. This time limit cannot expire earlier than four months after thefiling date (see A-III, 6.5.2).
3.3 Certified copy of the previous application (priority document)
The certified copy of the previous application, i.e. the priority document,
must be filed within 16 months of the priority date (see A-III, 6.7; forEuro-PCT cases see, however, E-IX, 2.3.5), unless such a copy is alreadyon file because it has been supplied in the context of Rule 40(3), see
A-II, 4.1.3.1, or of a request pursuant to Rule 56 or Rule 56a, see A-II, 5.4.3
and A-II, 6.4.2.
Moreover, in accordance with Rule 53(2) and the decision of the Presidentof the EPO dated 9 August 2012, OJ EPO 2012, 492, the EPO will include
a copy of the previous application in the file of the European patentapplication without charging a fee in the cases indicated in A-III, 6.7.

Art. 88(1)Rule 52(1)Rule 53(1) andRule 53(3)Rule 52(1) andRule 52(2)Rule 52(3)Rule 53(1)Rule 53(2)As soon as the EPO has included in the file of the European patentapplication a copy of the previous application, it informs the applicant
accordingly.
3.4 Translation of the previous application
A translation of the previous application into one of the official languages of
the EPO is required only if it is needed for determining the validity of thepriority claim, where this is of relevance to the patentability of theunderlying invention. The translation must be filed within the time limit set
by the EPO. For more details on the procedure, see A-III, 6.8 andsubsections.
Alternatively, under Rule 53(3), a declaration that the European patentapplication is a complete translation of the previous application may besubmitted within that same time limit. This declaration must be
unambiguous, stating that the translation is "complete" or, for example,"identical" or "literal". Declarations in diluted or modified form (stating, forexample, that the translation is "practically complete" or that the contents

Art. 88(1)Rule 53(3)Part F – Chapter VI-10

Guidelines for Examination in the EPO

March 2023

"are essentially the same") cannot be accepted. The same applies to cases
where the declaration is obviously incorrect (e.g. if several priorities areclaimed for a single European application or if the European application
contains more or less text than is contained in the previous application as
filed). In all these cases a complete translation must be filed. Where theEuropean application contains claims on its date of filing and the priority
application did not contain claims on its filing date or contained fewer
claims on its filing date than the subsequent European application, thedeclaration cannot be accepted. A merely different arrangement of thevarious elements of the application (e.g. presenting the claims before thedescription, or vice versa) does not affect the validity of such a declaration.
See also A-III, 6.8.6.
The translation or declaration under Rule 53(3) must also be filed in thosecases where the EPO adds a copy of the previous application to the file(see the notice from the EPO, OJ EPO 2002, 192).
Rule 56 and Rule 56a

If the applicant has already provided the EPO with a translation of thepriority document as part of a request under Rule 56 (see A-II, 5.4(vi)) tobase missing parts of the description or drawings on the priority application
itself, or under Rule 56a to base correct application documents or parts on
it (see A-II, 6.4.3), then there is no need for the applicant to file thetranslation a second time.
The request for translation cannot be made by telephone (regardless ofwhether this is mentioned in the minutes). Because of the time limit and its
possible legal consequences, the request must always be made in writing.
In examination proceedings it may be issued alone or may accompany acommunication under Art. 94(3). The translation of the priority document
may become necessary only at later stages of the examination procedure,
when documents are retrieved by carrying out a "topping-up" search forconflicting applications under Art. 54(3) (see C-IV, 7.1 and A-III, 6.8.2). This
may also happen during opposition proceedings where the applicant was
not requested to file the translation before grant and the opponent raises
patentability issues which require examination of the validity of the priority.
If the required translation or declaration is not filed within the time limit, theright of priority is lost and the applicant or proprietor is informed accordingly(see A-III, 6.11). This has the effect that the intermediate document(s) will
become prior art under Art. 54(2) or Art. 54(3), as applicable, and therefore
relevant for the assessment of patentability (see A-III, 6.8.3). However, forreasons of legal certainty the right of priority remains effective fordetermining the state of the art for the purposes of Art. 54(3)(see F-VI, 2.1 and 3.5) in respect of any other European patent application.
In that respect it is immaterial whether the translation or declaration has
been filed, as changes taking effect after the date of publication do notaffect the application of Art. 54(3).
If the required translation or declaration is filed within the time limit, ideallywith accompanying observations, the extent of the validity of the priority
and the co-dependent substantive issues will be examined.

March 2023

Guidelines for Examination in the EPO

Part F – Chapter VI-11

3.5 Withdrawal of priority claim
Applicants may voluntarily withdraw a claimed priority at any time. If they doso before the technical preparations for publication have been completed,then the priority date is not effective and the publication is deferred until
18 months after the filing date. If it is withdrawn after the technicalpreparations for publication have been completed, then the application isstill published 18 months after the priority date originally claimed(see A-VI, 1.1 and G-IV, 5.1.1).
3.6 Re-establishment of rights in respect of the priority period
Applicants may file a request for re-establishment of rights in respect of thepriority period under Art. 122 (see A-III, 6.6). Any request forre-establishment of rights in respect of the period specified in Art. 87(1)must be filed within two months of expiry of that period, according toRule 136(1), second sentence. Where a request for re-establishment inrespect of the priority period has been allowed, the examining division
carefully reviews the relevance of prior-art documents cited previously inthe search report or communications.

Art. 122
Rule 136(1)Part G
Patentability

March 2023

Part G – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – Patentability

I-1

1.

Patentability requirements

I-1

2.

Further requirements of an invention

I-1

2.

3. Technical progress, advantageous effect

I-1

Chapter II – Inventions

II-1

1.

General remarks

II-1

2.

Examination practice

II-1

3.

List of exclusions

II-2

3.1

Discoveries

II-2

3.2

Scientific theories

II-2

3.3
3.3.1
3.3.2

Mathematical methods
Artificial intelligence and machine learning
Simulation, design or modelling

II-2
II-5
II-6

3.4

Aesthetic creations

II-8

3.5

Schemes, rules and methods for performing mental
acts, playing games or doing business
Schemes, rules and methods for performing mental
acts
Schemes, rules and methods for playing games
Schemes, rules and methods for doing business

3.5.1
3.5.2
3.5.3
3.6
3.6.1
3.6.2

II-9
II-9
II-10
II-13

Programs for computers
Examples of further technical effects
Information modelling, activity of programming andprogramming languages
Data retrieval, formats and structures
Database management systems and information
retrieval

II-15
II-17

3.7
3.7.1

Presentations of information
User interfaces

II-22
II-26

4.

Exceptions to patentability

II-27

4.1
4.1.1
4.1.2

Matter contrary to "ordre public" or morality
Prohibited matter
Offensive and non-offensive use

II-27
II-28
II-28

3.6.3
3.6.4

II-17
II-19
II-20

Part G – Contents b

Guidelines for Examination in the EPO

March 2023

4.1.3

Economic effects

II-28

4.2
4.2.1
4.2.1.1
4.2.1.2
4.2.1.3
4.2.2

Surgery, therapy and diagnostic methods
Limitations of exception under Art. 53(c)Surgery
Therapy
Diagnostic methods
Methods for screening potential medicaments andclinical trials

II-29
II-30
II-31
II-32
II-33

5.

II-35

Exclusions and exceptions for biotechnologicalinventions

II-35

5.1

General remarks and definitions

II-35

5.2

Patentable biotechnological inventions

II-35

5.3

List of exceptions (Rule 28)

II-37

5.4

5.4.2.1

Plant and animal varieties or essentially biologicalprocesses for the production of plants or animals
Plant varieties
Essentially biological processes for the production ofplants or animals
Examples

5.5
5.5.1
5.5.2

Microbiological processes
General remarks
Repeatability of results of microbiological processes

II-46
II-46
II-47

5.6
5.6.1
5.6.1.1
5.6.1.2
5.6.1.3

Antibodies
General remarks
Definition by structure of the antibody
Definition by reference to the target antigen
Definition by target antigen and further functionalfeaturesDefinition by functional and structural features
Definition by production process
Definition by the epitope
Definition by hybridoma
Inventive step of antibodies

II-47
II-47
II-47
II-48

5.4.1
5.4.2

5.6.1.4
5.6.1.5
5.6.1.6
5.6.1.7
5.6.2

II-40
II-42
II-43
II-44

II-49
II-49
II-49
II-49
II-50
II-50

Chapter III – Industrial application

III-1

1.

General remarks

III-1

2.

Method of testing

III-1

3.

Industrial application vs. exclusion under
Art. 52(2)

III-1

Sequences and partial sequences of genes

III-1

4.

March 2023

Part G – Contents c

Guidelines for Examination in the EPO

Chapter IV – State of the art

IV-1

1.

General remarks and definition

IV-1

2.

Enabling disclosure

IV-2

3.

Date of filing or priority date as effective date

IV-2

4.

Documents in a non-official language

IV-3

4.1

Machine translations

IV-4

5.

Conflict with other European applications

IV-4

5.1
5.1.1
5.1.2

State of the art pursuant to Art. 54(3)Requirements
Accorded date of filing and content of the application
still subject to review

IV-4
IV-5

5.2

Euro-PCT applications

IV-6

5.3

Commonly designated states

IV-6

5.4

Double patenting

IV-6

6.

Conflict with national rights of earlier date

IV-7

7.

State of the art made available to the public "bymeans of a written or oral description, by use, orin any other way"

IV-7

Types of use and instances of state of the art madeavailable in any other way

IV-7

Matters to be determined by the division as regards
prior use
General principles
Agreement on secrecy
Use on non-public property
Example of the accessibility of objects used
Example of the inaccessibility of a process

IV-8
IV-8
IV-9
IV-10
IV-10
IV-10

7.1

7.2
7.2.1
7.2.2
7.2.3
7.2.4
7.2.5
7.3
7.3.1
7.3.2
7.3.3
7.3.4

State of the art made available by means of oral
description
Cases of oral description
Non-prejudicial oral description
Matters to be determined by the division in cases oforal description
Standard of proof

IV-5

IV-11
IV-11
IV-11
IV-11
IV-11

7.4

State of the art made available to the public in writing
and/or by any other means
IV-11

7.5

Internet disclosures

IV-12

Part G – Contents d

Guidelines for Examination in the EPO

March 2023

7.5.1
7.5.2
7.5.3
7.5.3.1
7.5.3.2
7.5.3.3
7.5.4
7.5.5
7.5.6

Establishing the publication date
IV-12
Standard of proof
IV-13
Burden of proof
IV-13
Technical journals
IV-14
Other "print equivalent" publications
IV-14
Non-traditional publications
IV-15
Disclosures which have no date or an unreliable date IV-15
Problematic cases
IV-16
Technical details and general remarks
IV-17

7.6

Standards and standard preparatory documents

IV-18

8.

Cross-references between prior-art documents

IV-19

9.

Errors in prior-art documents

IV-19

Chapter V – Non-prejudicial disclosures

V-1

1.

GeneralV-12.

Time limit

V-1

3.

Evident abuse

V-1

4.

International exhibition

V-1

Chapter VI – Novelty

VI-1

1.

State of the art pursuant to Art. 54(2)

VI-1

2.

Implicit features or well-known equivalents

VI-1

3.

Relevant date of a prior-art document

VI-1

4.

Enabling disclosure of a prior-art document

VI-1

5.

Generic disclosure and specific examples

VI-2

6.

Implicit disclosure and parameters

VI-2

7.

Examination of novelty

VI-2

7.1
7.1.1

VI-3

7.1.2
7.1.3
7.1.4
7.1.5

First or further medical use of known products
Products that may be claimed for a further medical
use
Therapeutic uses pursuant to Art. 54(5)Diagnostic uses pursuant to Art. 54(5)Surgical uses pursuant to Art. 54(5)Dependent claims pursuant to Art. 54(5)

VI-5
VI-5
VI-9
VI-10
VI-10

7.2

Second non-medical use

VI-11

March 2023

Guidelines for Examination in the EPO

8.

Selection inventions

VI-11

8.1

Error margins in numerical values

VI-14

9.

Novelty of "reach-through" claims

VI-14

Chapter VII – Inventive step

VII-1

1.

GeneralVII-12.

State of the art; date of filing

VII-1

3.

Person skilled in the art

VII-1

3.1

Common general knowledge of the skilled person

VII-1

4.

Obviousness

VII-2

5.

Problem-solution approach

VII-2

5.1

Determination of the closest prior art

VII-3

5.2

Formulation of the objective technical problem

VII-4

5.3

Could-would approach

VII-5

5.4

5.4.2
5.4.2.1
5.4.2.2
5.4.2.3
5.4.2.4
5.4.2.5

Claims comprising technical and non-technicalfeatures
Formulation of the objective technical problem for
claims comprising technical and non-technicalfeatures
Examples of applying the COMVIK approach
Example 1
Example 2
Example 3
Example 4
Example 5

VII-8
VII-9
VII-9
VII-11
VII-13VII-15VII-18

6.

Combining pieces of prior art

VII-20

7.

Combination vs. juxtaposition or aggregation

VII-21

8.

"Ex post facto" analysis

VII-22

9.

Origin of an invention

VII-22

10.

Secondary indicators

VII-23

10.1

Predictable disadvantage; non-functional
modification; arbitrary choiceVII-23Unexpected technical effect; bonus effectVII-23

5.4.1

10.2

VII-6

Part G – Contents e

Part G – Contents f

Guidelines for Examination in the EPO

March 2023

10.3

Long-felt need; commercial success

VII-23

11.

Arguments and evidence submitted by theapplicantVII-24

12.

Selection inventions

VII-2413.

Inventive step assessment in the field ofbiotechnology

VII-2514.

Dependent claims; claims in different categories VII-25

15.

ExamplesAnnex

Examples relating to the requirement of inventive
step – indicators
VII-27

1.

Application of known measures?

VII-272.

Obvious combination of features?

VII-283.

Obvious selection?

VII-294.

Overcoming a technical prejudice?

VII-31

VII-26

March 2023

Guidelines for Examination in the EPO

Part G – Chapter I-1

Chapter I – Patentability
1. Patentability requirements
There are four basic requirements for patentability:(i)there must be an "invention", belonging to any field of technology(see G-II);(ii)

the invention must be "susceptible of industrial application"(see G-III);(iii)

the invention must be "new" (see G-IV to VI); and(iv)

the invention must involve an "inventive step" (see G-VII).

Art. 52(1)2.
Further requirements of an invention
In addition to these four requirements, an invention must fulfil the following:
A technical character is an implicit requisite for the presence of an"invention" within the meaning of Art. 52(1) (requirement (i) above, see G-II,
1 and 2 for further details).
Furthermore,–(i) the invention must be such that it can be carried out by a person
skilled in the art (after proper instruction by the application); thisfollows from Art. 83. Instances where the invention fails to satisfy thisrequirement are given in F-III, 3; andArt. 83–(ii) the invention must be of "technical character" to the extent that it
must relate to a technical field (Rule 42(1)(a) – see F-II, 4.2), must beconcerned with a technical problem (Rule 42(1)(c) – see F-II, 4.5)
and must have technical features in terms of which the matter forwhich protection is sought can be defined in the claim (Rule 43(1) –see F-IV, 2.1).

Rule 42(1)(a) andRule 42(1)(c)Rule 43(1)2. 3. Technical progress, advantageous effect
The EPC does not require explicitly or implicitly that an invention, to bepatentable, must entail some technical progress or even any useful effect.
Nevertheless, an advantageous effect, if any, with respect to the state of
the art should be stated in the description (Rule 42(1)(c)), as any such
effect is often important in determining "inventive step" (see G-VII, 5).

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Part G – Chapter II-1

Chapter II – Inventions
1. General remarks
The EPC does not define what is meant by "invention", but Art. 52(2)contains a non-exhaustive list of "non-inventions", i.e. subject-matter which
is not to be regarded as an invention within the meaning of Art. 52(1). The
items on this list are all either abstract (e.g. discoveries or scientifictheories) and/or non-technical (e.g. aesthetic creations or presentations of
information). In contrast to this, an "invention" within the meaning ofArt. 52(1) must have a technical character (see G-I, 1) (see G-I, 2(ii)). It
may be in any field of technology.
2. Examination practice
The question of whether there is an invention within the meaning ofArt. 52(1) is separate and distinct from the questions of whether it issusceptible of industrial application, is new and involves an inventive step.
The exclusions from patentability under Art. 52(2) play a role in assessing
both patent eligibility and inventive step because patent protection isreserved for inventions involving a "technical teaching", i.e. an instruction
addressed to a skilled person as to how to solve a particular technicalproblem using particular technical means. This twofold assessment isreferred to as the "two-hurdle approach" (G 1/19).
The first hurdle, also referred to as the patent eligibility hurdle, requires thatthe claimed subject-matter as a whole must not fall under the"non-inventions" defined in Art. 52(2) and (3). The exclusion frompatentability of the subject-matters and activities referred to in Art. 52(2) islimited by Art. 52(3) to such subject-matters or activities that are claimed"as such". This limitation is a bar to a broad interpretation of the
non-inventions. It implies that one technical feature is sufficient for
eligibility: If the claimed subject-matter is directed to or uses technicalmeans, it is an invention within the meaning of Art. 52(1). This assessment
is made without reference to the prior art.
The second hurdle is where inventive step is assessed. In addition totechnical features, claims may also comprise non-technical features. In thiscontext, the term "non-technical features" refers to features which, on theirown, would be considered "non-inventions" under Art. 52(2). Inventive stepof claims comprising such a mix of technical and non-technical features isassessed using the COMVIK approach (G-VII, 5.4). This approach is a
special application of the problem-solution approach that involves
establishing which features of the invention contribute to its technicalcharacter (i.e. contribute to the technical solution of a technical problem byproviding a technical effect). A feature may support the presence of an
inventive step if and to the extent that it contributes to the technicalcharacter of the invention. Whether any feature contributes to the technicalcharacter of the invention has to be assessed in the context of the invention
as a whole.

Art. 52(2) and (3)Part G – Chapter II-2

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March 2023

3. List of exclusions
The items on the list in Art. 52(2) will now be dealt with in turn, and further
examples will be given in order better to clarify the distinction between what
is patentable in the sense of not being excluded from patentability under
Art. 52(2) and (3) and what is not.

Art. 52(2)(a)3.1 Discoveries
If a new property of a known material or article is found, that is mere
discovery and unpatentable because discovery as such has no technicaleffect and is therefore not an invention within the meaning of Art. 52(1). If,
however, that property is put to practical use, then this constitutes aninvention which may be patentable. For example, the discovery that a
particular known material is able to withstand mechanical shock would not
be patentable, but a railway sleeper made from that material could well bepatentable. To find a previously unrecognised substance occurring in
nature is also mere discovery and therefore unpatentable. However, if asubstance found in nature can be shown to produce a technical effect, it
may be patentable. An example of such a case is that of a substanceoccurring in nature which is found to have an antibiotic effect. In addition, if
a microorganism is discovered to exist in nature and to produce anantibiotic, the microorganism itself may also be patentable as one aspect of
the invention. Similarly, a gene which is discovered to exist in nature may
be patentable if a technical effect is revealed, e.g. its use in making acertain polypeptide or in gene therapy.
For further specific issues concerning
see G-II, 5, 5.3 to 5.5, and G-III, 4.

Art. 52(2)(a)Art. 52(2)(a)biotechnologicalinventions

3.2 Scientific theories
These are a more generalised form of discoveries, and the same principle
as set out in G-II, 3.1 applies. For example, the physical theory ofsemiconductivity would not be patentable. However, new semiconductor
devices and processes for manufacturing these may be patentable.
3.3 Mathematical methods
Mathematical methods play an important role in the solution of technicalproblems in all fields of technology. However, they are excluded frompatentability under Art. 52(2)(a) when claimed as such (Art. 52(3)).
The exclusion applies if a claim is directed to a purely abstract
mathematical method and the claim does not require any technical means.
For instance, a method for performing a Fast Fourier Transform on
abstract data which does not specify the use of any technical means is amathematical method as such. A purely abstract mathematical object orconcept, e.g. a particular type of geometric object or of graph with nodes
and edges, is not a method but is nevertheless not an invention within themeaning of Art. 52(1) because it lacks a technical character.
If a claim is directed either to a method involving the use of technicalmeans (e.g. a computer) or to a device, its subject-matter has a technicalcharacter as a whole and is thus not excluded from patentability under
Art. 52(2) and (3).

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Guidelines for Examination in the EPO

Merely specifying the technical nature of the data or parameters of themathematical method may not be sufficient on its own to define aninvention within the meaning of Art. 52(1). Even if the resulting method
would not be considered a purely abstract mathematical method as suchwithin the meaning of Art. 52(2)(a) and (3), it may still fall under the
excluded category of methods for performing mental acts as such if no useof technical means is implied (Art. 52(2)(c) and (3); see G-II, 3.5.1).
Once it is established that the claimed subject-matter as a whole is not
excluded from patentability under Art. 52(2) and (3) and is thus an invention
within the meaning of Art. 52(1), it is examined in respect of the otherrequirements of patentability, in particular novelty and inventive step
(G-I, 1).
For the assessment of inventive step, all features which contribute to thetechnical character of the invention must be taken into account (G-VII, 5.4).
When the claimed invention is based on a mathematical method, it isassessed whether the mathematical method contributes to the technicalcharacter of the invention.
A mathematical method may contribute to the technical character of an
invention, i.e. contribute to producing a technical effect that serves atechnical purpose, by its application to a field of technology and/or by being
adapted to a specific technical implementation (T 2330/13). The criteria forassessing these two situations are explained below.
Technical applications
When assessing the contribution made by a mathematical method to thetechnical character of an invention, it must be taken into account whether
the method, in the context of the invention, produces a technical effectserving a technical purpose.
Examples of technical contributions of a mathematical method are:–controlling a specific technical system or process, e.g. an X-ray
apparatus or a steel cooling process;–determining from measurements a required number of passes of acompaction machine to achieve a desired material density;–

digital audio, image or video enhancement or analysis,e.g. de-noising, detecting persons in a digital image, estimating thequality of a transmitted digital audio signal;–

separation of sources in speech signals; speech recognition,e.g. mapping a speech input to a text output;–

encoding data for reliable and/or efficient transmission or storage(and corresponding decoding), e.g. error-correction coding of data fortransmission over a noisy channel, compression of audio, image,
video or sensor data;

Part G – Chapter II-3

Part G – Chapter II-4

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March 2023–

encrypting/decrypting or signing electronic
generating keys in an RSA cryptographic system;–

optimising load distribution in a computer network;–

determining the energy expenditure of a subject by processing dataobtained from physiological sensors; deriving the body temperatureof a subject from data obtained from an ear temperature detector;–

providing a genotype estimate based on an analysis of DNA
samples, as well as providing a confidence interval for this estimate
so as to quantify its reliability;–

providing a medical diagnosis by an automated system processing
physiological measurements.

communications;

A generic purpose such as "controlling a technical system" is not sufficient
to confer a technical character to the mathematical method. The technicalpurpose must be a specific one.
Furthermore, the mere fact that a mathematical method may serve atechnical purpose is not sufficient, either. The claim is to be functionallylimited to the technical purpose, either explicitly or implicitly. This can beachieved by establishing a sufficient link between the technical purpose
and the mathematical method steps, for example, by specifying how the
input and the output of the sequence of mathematical steps relate to thetechnical purpose so that the mathematical method is causally linked to atechnical effect.
Defining the nature of the data input to a mathematical method does notnecessarily imply that the mathematical method contributes to the technicalcharacter of the invention (T 2035/11, T 1029/06, T 1161/04).
If steps of a mathematical method are used to derive or predict the physicalstate of an existing real object from measurements of physical properties,
as in the case of indirect measurements, those steps make a technicalcontribution regardless of what use is made of the results.
Technical implementations
A mathematical method may also contribute to the technical character ofthe invention independently of any technical application when the claim is
directed to a specific technical implementation of the mathematicalmethod and the mathematical method is particularly adapted for that
implementation in that its design is motivated by technical considerations of
the internal functioning of the computer system or network (T 1358/09,
G 1/19). This may happen if the mathematical method is designed to exploit
particular technical properties of the technical system on which it is
implemented to bring about a technical effect such as efficient use ofcomputer storage capacity or network bandwidth. For instance, theadaptation of a polynomial reduction algorithm to exploit wordsize shifts
matched to the word size of the computer hardware is based on suchMarch 2023

Guidelines for Examination in the EPO

technical considerations and can contribute to producing the technicaleffect of an efficient hardware implementation of said algorithm. Anotherexample is assigning the execution of data-intensive training steps of amachine-learning algorithm to a graphical processing unit (GPU) andpreparatory steps to a standard central processing unit (CPU) to takeadvantage of the parallel architecture of the computing platform. The claim
should be directed to the implementation of the steps on the GPU and CPU
for this mathematical method to contribute to the technical character.
Computational efficiency
If the mathematical method does not serve a technical purpose and theclaimed technical implementation does not go beyond a generic technicalimplementation, the mathematical method does not contribute to thetechnical character of the invention. In such a case, it is not sufficient thatthe mathematical method is algorithmically more efficient than prior-art
mathematical methods to establish a technical effect (see also G-II, 3.6).
However, if it is established that the mathematical method produces atechnical effect due to having been applied to a field of technology and/or
adapted to a specific technical implementation, the computational efficiencyof the steps affecting that established technical effect is to be taken into
account when assessing inventive step. See G-II, 3.6.4 for examples wherean improvement in computational efficiency qualifies as a technical effect.
3.3.1 Artificial intelligence and machine learning
Artificial intelligence and machine learning are based on computationalmodels and algorithms for classification, clustering, regression anddimensionality reduction, such as neural networks, genetic algorithms,
support vector machines, k-means, kernel regression and discriminant
analysis. Such computational models and algorithms are per se of an
abstract mathematical nature, irrespective of whether they can be "trained"
based on training data. Hence, the guidance provided in G-II, 3.3 generally
applies also to such computational models and algorithms.
Terms such as "support vector machine", "reasoning engine" or "neuralnetwork" may, depending on the context, merely refer to abstract models or
algorithms and thus do not, on their own, necessarily imply the use of atechnical means. This has to be taken into account when examining
whether the claimed subject-matter has a technical character as a whole(Art. 52(1), (2) and (3)).
Artificial intelligence and machine learning find applications in various fieldsof technology. For example, the use of a neural network in a heart
monitoring apparatus for the purpose of identifying irregular heartbeats
makes a technical contribution. The classification of digital images, videos,
audio or speech signals based on low-level features (e.g. edges or pixel
attributes for images) are further typical technical applications ofclassification algorithms. Further examples of technical purposes for which
artificial intelligence and machine learning could be used may be found in
the list under G-II, 3.3.

Part G – Chapter II-5

Part G – Chapter II-6

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March 2023

Classifying text documents solely in respect of their textual content ishowever not regarded to be per se a technical purpose but a linguistic one(T 1358/09). Classifying abstract data records or even "telecommunication
network data records" without any indication of a technical use being madeof the resulting classification is also not per se a technical purpose, even if
the classification algorithm may be considered to have valuable
mathematical properties such as robustness (T 1784/06).
Where a classification method serves a technical purpose, the steps ofgenerating the training set and training the classifier may also contribute to
the technical character of the invention if they support achieving thattechnical purpose.
3.3.2 Simulation, design or modelling
Claims directed to methods of simulation, design or modelling typicallycomprise features which fall under the category of mathematical methods
or of methods for performing mental acts. Hence, the claimed
subject-matter as a whole may fall under the exclusions from patentability
mentioned under Art. 52(2)(a)(c) and (3) (see G-II, 3.3 and 3.5.1).
The methods considered in this section, however, are at least partiallycomputer-implemented so that the claimed subject-matter as a whole is not
excluded from patentability.
Computer-implemented methods of simulating, designing or modellingshould be examined according to the same criteria as any other computerimplemented inventions (G-VII, 5.4, G 1/19).
For establishing the presence of a technical effect, it is not decisive whether
the simulated system or process is technical or whether the simulationreflects technical principles underlying the simulated system and how
accurately it does so.
Simulations interacting with the external physical reality
Computer-implemented simulations that comprise features representing aninteraction with an external physical reality at the level of their input or
output may provide a technical effect related to this interaction. A computerimplemented simulation that uses measurements as input may form part ofan indirect measurement method that calculates or predicts the physicalstate of an existing real object and thus make a technical contribution
regardless of what use is made of the results.
Purely numerical simulations
A computer-implemented simulation without an input or output having a
direct link with physical reality may still solve a technical problem. In such a"purely numerical" simulation, the underlying models and algorithms may
contribute to the technical character of the invention by their adaptation to a
specific technical implementation or by an intended technical use of
the data resulting from the simulation.

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Models and algorithms that do not make a contribution to the technicalcharacter of the invention form constraints that may be included in theformulation of the objective technical problem when following the COMVIK
approach outlined in G-VII, 5.4.
Specific technical implementation of a numerical simulation
The technical contribution that may be made by a model or algorithm
because of their adaptation to the internal functioning of the computer
system or network on which they are implemented is assessed in the samemanner as adaptations of mathematical methods to specific technicalimplementations, see G-II, 3.3.
Intended technical use of the calculated numerical output data of anumerical simulation
Calculated numerical data reflecting the physical state or behaviour of asystem or process existing only as a model in a computer usually cannot
contribute to the technical character of the invention, even if it reflects the
behaviour of the real system or process adequately.
Calculated numerical data may have a "potential technical effect", whichis the technical effect that will would be produced when the data is usedaccording to an intended technical use. Such a potential technical effectmay only be considered in the assessment of inventive step relied on for
the formulation of the objective technical problem if the intended technicaluse is either explicitly or implicitly specified in the claim.
If the data resulting from a numerical simulation is specifically adapted for
an intended technical use, e.g. it is control data for a technical device, apotential technical effect of the data can be considered "implied" by theclaim. The specific adaptation implies that the claim does not encompass
other non-technical uses because the intended technical use is theninherent to the claimed subject-matter over substantially the whole scope ofthe claim (see also G-II, 3.6.3). On the other hand, if the claim also
encompasses non-technical uses of the simulation results (such as gaining
scientific knowledge about a technical or natural system), the potential
technical effect is not achieved over substantially the whole scope of theclaim and therefore cannot be relied on in the assessment of inventive step.
Accuracy
Whether a simulation contributes to the technical character of the claimed
subject-matter does not depend on the quality of the underlying model orthe degree to which the simulation represents reality.
However, the accuracy of a simulation is a factor that may have an
influence on an already established technical effect going beyond the mere
implementation of the simulation on a computer. It may be that an alleged
improvement is not achieved if the simulation is not accurate enough for its
intended technical use. This may be taken into account in the formulation of
the objective technical problem (Art. 56) or in the assessment of sufficiency
of disclosure (Art. 83), see F-III, 12. Conversely, a technical effect may still

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Part G – Chapter II-8

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March 2023

be achieved by a method where certain simulation parameters areinaccurate but sufficient for its intended technical use.
Design processes
The aforementioned principles apply equally if a computer-implemented
simulation is claimed as part of a design process.
If a computer-implemented method results merely in an abstract model of a
product, system or process, e.g. a set of equations, this per se is notconsidered to be a technical effect, even if the modelled product, system orprocess is technical (T 49/99, T 42/09). For example, a logical data model
for a family of product configurations has no inherent technical character,and a method merely specifying how to proceed to arrive at such a logical
data model would not make a technical contribution beyond its
computer-implementation. Likewise, a method merely specifying how to
describe a multi-processor system in a graphical modelling environment
does
not
make
a
technical
contribution
beyondits
computer-implementation. Reference is made to G-II, 3.6.2 related to
information modelling as an intellectual activity.

Art. 52(2)(b)

3.4 Aesthetic creations
Subject-matter relating to aesthetic creations will usually have bothtechnical aspects, e.g. a "substrate" such as a canvas or a cloth, andaesthetic aspects, the appreciation of which is essentially subjective,e.g. the form of the image on the canvas or the pattern on the cloth. Iftechnical aspects are present in such an aesthetic creation, it is not an
aesthetic creation "as such" and it is not excluded from patentability.
A feature which might not reveal a technical aspect when taken by itself
could have a technical character if it brings about a technical effect. For
example, the pattern of a tyre tread may actually be a further technicalfeature of the tyre if, for example, it provides improved channelling of water.
On the contrary, this would not be the case when a particular colour of the
sidewall of the tyre serves only an aesthetic purpose.
The aesthetic effect itself is not patentable, neither in a product nor in aprocess claim.
For example, features relating solely to the aesthetic or artistic effect of theinformation content of a book, or to its layout or letter font, would not be
considered as technical features. Nor would features such as the aesthetic
effect of the subject of a painting or the arrangement of its colours or its
artistic (e.g. Impressionist) style be technical. Nevertheless, if an aesthetic
effect is obtained by a technical structure or other technical means,
although the aesthetic effect itself is not of a technical character, the meansof obtaining it may be. For example, a fabric may be provided with an
attractive appearance by means of a layered structure not previously used
for this purpose, in which case a fabric incorporating such structure might
be patentable.

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Part G – Chapter II-9

Similarly, a book defined by a technical feature of the binding or pasting of
the back is not excluded from patentability under Art. 52(2) and (3), eventhough it has an aesthetic effect too. A painting defined by the kind of cloth,or by the dyes or binders used, is likewise not excluded.
A technical process, even if it is used to produce an aesthetic creation(such as a cut diamond), is nevertheless a technical process which is not
excluded from patentability. Similarly, a printing technique for a bookresulting in a particular layout with aesthetic effect is not excluded, and noris the book as a product of that process. Again, a substance or composition
defined by technical features serving to produce a special effect with regard
to scent or flavour, e.g. to maintain a scent or flavour for a prolonged period
or to accentuate it, is not excluded.
3.5 Schemes, rules and methods for performing mental acts, playing
games or doing business3.5.1 Schemes, rules and methods for performing mental acts
The exclusion from patentability of schemes, rules and methods for
performing mental acts under Art. 52(2)(c) concerns instructions to thehuman mind on how to conduct cognitive, conceptual or intellectual
processes, for instance how to learn a language. The exclusion applies
only when such schemes, rules and methods are claimed as such
(Art. 52(3)).
If a method claim encompasses a purely mental realisation of all method
steps, it falls under the category of methods for performing mental acts assuch (Art. 52(2)(c) and (3)). This applies regardless of whether the claim
encompasses also technical embodiments and of whether the method isbased on technical considerations (T 914/02, T 471/05, G 3/08).
An example is a claim defining a method for designing an arrangement for
loading nuclear reactor fuel bundles into a reactor core in order to maximise
the amount of energy that is generated before the reactor fuel needs to berefreshed. The method involves determining optimal values for specifictechnical parameters of the arrangement by starting with initial values,
performing simulations based on these values, and iteratively changing thevalues based on simulation results until a stopping criterion is met. Such amethod is based on technical considerations related to the technical field of
nuclear reactors. However, as long as the claim does not exclude that all
method steps may be carried out mentally, the claimed subject-matter is
excluded from patentability. This objection also applies when the simulation
involves real world values obtained by a technical measurement, if theclaim does not include either a step of carrying out the technicalmeasurement or a step of receiving the measured real world values using
technical means.
In general, the complexity of a method cannot disqualify it as a method for
performing mental acts as such. If technical means (e.g. a computer) arenecessary to carry out the method, they are included in the claim as an
essential feature (Art. 84, F-IV, 4.5). See also G-II, 3.3 for aspects related
to algorithmic efficiency.

Art. 52(2)(c)Part G – Chapter II-10

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A claimed method is not a method for performing mental acts as such if it
requires the use of technical means (e.g. a computer, a measuring device,etc.) to carry out at least one of its steps or if it provides a physical entity as
the resulting product (e.g. if it is a method of manufacturing a productcomprising steps of designing the product and a step of manufacturing the
product so designed).
Once it is established that the claimed method as a whole is not excluded
from patentability under Art. 52(2) and (3), it is examined in respect of theother requirements of patentability, in particular novelty and inventive step
(G-I, 1).
Where a claim defining a method for performing mental acts as such islimited by specifying that the method is carried out by a computer, not only
the use of a computer but also the steps carried out by the computerthemselves may make a technical contribution if they then contribute to atechnical effect. The presence of technical considerations, such as thoserelated to the technical field of nuclear reactors in the example above, is notin itself sufficient to acknowledge the presence of a technical effect(G 1/19).
A method comprising steps which involve the use of technical means may
also specify steps which are to be carried out mentally by the user of themethod. These mental steps contribute to the technical character of themethod only if, in the context of the invention, they contribute to producing
a technical effect serving a technical purpose.
For example, a method may specify steps which result in the selection of a
product among a family of products based on various criteria, as well as astep of manufacturing the selected product. If said selection steps arecarried out mentally, they contribute to the technical character of themethod only to the extent that a technical effect can be derived from thefeatures characterising the sub-family of selected products over the genericfamily of suitable products (T 619/02). If the selection steps rely on purely
aesthetic criteria, they result in a non-technical selection and thus do notcontribute to the technical character of the method. As another example, ina method of affixing a driver to a Coriolis mass flowmeter, steps specifying
how to select the position of the driver so as to maximise the performanceof the flowmeter make a technical contribution to the extent that they definethat particular position (T 1063/05).
For additional information about methods of simulation, design andmodelling, see G-II, 3.3.2. For methods of information modelling and theactivity of programming a computer, see G-II, 3.6.2.

Art. 52(2)(c)3.5.2 Schemes, rules and methods for playing games
Under Art. 52(2)(c) and (3), schemes, rules and methods for playing games
are excluded from patentability, if claimed as such. The exclusion applies torules for traditional games such as card or board games, as well as togame rules that underlie contemporary forms of gameplay such as ingambling machines or video games.

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Guidelines for Examination in the EPO

Game rules define a conceptual framework of conventions and conditions
that govern player conduct and how a game evolves in response todecisions and actions by the players. They comprise the setup of the game,
options that arise as gameplay unfolds, as well as goals defining progressin the game. They are normally perceived (or even agreed to) by theplayers as rules serving the explicit purpose of playing the game. Game
rules are hence of an abstract, purely mental nature and are meaningful
only in the gaming context (T 336/07). For example, a condition requiring
two randomly drawn numbers to match for winning is a game rule.
Contemporary games, and in particular video games, are often
characterised by complex interactive and narrative elements of a virtual
game world. Such game elements govern how the game proceeds of its
own accord (e.g. evolving characters and storylines) as well as how itproceeds in interaction with the player(s) (e.g. tapping along with the gamesoundtrack to make your character dance if rhythms match). Given thatthese elements are conceptual in nature, they qualify, in a wider sense, as
rules for playing games according to Art. 52(2)(c) (T 12/08). This holds trueirrespective of the fact that they might be untold or revealed only while
playing.
If the claimed subject-matter specifies technical means for implementing
game rules, it has a technical character. For example, when implementing
the aforementioned condition of matching random numbers, the use of acomputer calculating a pseudo-random sequence or of mechanical means
such as cubic dice or uniformly sectored reels is sufficient to overcome an
objection under Art. 52(2)(c) and (3).
Inventive step of a claim comprising a mix of game rules and technicalfeatures is examined in accordance with the problem-solution approach formixed-type inventions as set out under G-VII, 5.4. As a principle, inventive
step cannot be established by the game rules themselves, irrespective of
how original they may be, or by their mere automation. It must rather bebased on further technical effects of a technical implementation of thegame, i.e. technical effects that go beyond those already inherent to therules. For example, a networked implementation of a game of chance likebingo, in which numbers physically drawn by an operator undergo arandom mapping prior to transmission to remote players, makes a technicalcontribution since the scrambling of results has the technical effect of
securing a data transmission, analogous to encryption, while having no
bearing on the actual playing of the game. In contrast, a reduction ofmemory, network, or computational resources achieved by limiting thecomplexity of a game does not overcome a technical constraint by atechnical solution. Rather than solving the technical problem of improving
the efficiency of an implementation, such a limitation would at best
circumvent it (G-VII, 5.4.1). Similarly, the commercial success of a gameproduct resulting from simplified rules is an incidental effect without a directtechnical cause.
Inventive step of an implementation is to be assessed from the point ofview of the skilled person, typically an engineer or a game programmer,
who is tasked with implementing game rules as set by a game designer.

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Part G – Chapter II-12

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March 2023

Mere claim drafting exercises such as paraphrasing non-technical gameelements ("win computation means" for monitoring the number of gametokens) or abstracting them ("objects" instead of "game tokens") using
terms that are technical only on the surface have no bearing on inventive
step.
Game rules often are designed to entertain and keep the interest of players
by way of psychological effects such as amusement, suspense, or surprise.
Such effects do not qualify as technical effects. Similarly, giving rise to abalanced, fair or otherwise rewarding gameplay are psychological effects,
not technical ones. Hence, rules and corresponding computations which
determine a game score or a skill rating for players, even if computationallycomplex, are usually considered non-technical.
Highly interactive gameplay such as in video games involves technicalmeans for sensing user input, updating the game state and outputting
visual, audio or haptic information. Features defining such presentations of
information and user interfaces are assessed according to G-II, 3.7 and3.7.1. Cognitive content that informs the player about the current gamestate at a non-technical level, e.g. about a game score, the arrangement
and suits of playing cards, the state and attributes of a game character isregarded as non-technical information. This equally holds for instructions
presented on game boards or cards such as "go back to square one". An
example of a technical context in which the manner of presenting
information can make a technical contribution is the interactive control ofreal-time manoeuvres in a game world, the display of which is subject toconflicting technical requirements (T 928/03).
Aside from rules, the state of a game world may also evolve in accordancewith numerical data and equations that model physical principles or
pseudo-physical behaviour, especially in video games. The systematic
calculation of updates to such game states amounts to a computerimplemented simulation based on these models (G 1/19). For the purposeof assessing inventive step in this context, the models are to be understoodas defining a given constraint for a corresponding implementation on acomputer (G-VII, 5.4). In contrast to effects that reside within the virtual
game world or are otherwise inherent to the model already, a specificimplementation of a simulation, if adapted to the internal functioning of acomputer system, produces a technical effect. For instance, merely
predicting the virtual trajectory of a billiard ball shot by the player, even if
highly accurate, fails to solve a technical problem beyond its
implementation. In contrast, adjusting the step sizes used in the distributed
simulation of bullets fired in a multi-player online game based on current
network latencies produces a technical effect.
Features which specify how to provide user input normally make a technicalcontribution (G-II, 3.7.1). However, a mapping of parameters obtained fromknown input mechanisms to parameters of a computer game qualifies as agame rule in a wider sense if it reflects the choice of the game designer, set
for the purpose of defining the game or making it more interesting or
challenging (e.g. a condition specifying that a slide gesture on atouchscreen determines both the power and the spin of a virtual golf shot).

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3.5.3 Schemes, rules and methods for doing business
Subject-matter or activities which are of a financial, commercial,administrative or organisational nature fall within the scope of schemes,
rules and methods for doing business, which are as such excluded frompatentability under Art. 52(2)(c) and (3). In the rest of this section, any such
subject-matter or activities will be subsumed under the term "businessmethod".
Financial activities typically include banking, billing or accounting.
Marketing, advertising, licensing, management of rights and contractual
agreements, as well as activities involving legal considerations, are of acommercial or administrative nature. Personnel management, designing aworkflow for a business process or communicating postings to a target user
community based on location information are examples of organisationalrules. Other activities typical of doing business concern operational
research, planning, forecasting and optimisations in businessenvironments, including logistics and scheduling of tasks. These activities
involve collecting information, setting goals, and using mathematical andstatistical methods to evaluate the information for the purpose of facilitating
managerial decision-making.
If the claimed subject-matter specifies technical means, such as computers,
computer networks or other programmable apparatus, for executing at least
some steps of a business method, it is not limited to excluded
subject-matter as such and thus not excluded from patentability under
Art. 52(2)(c) and (3).
However, the mere possibility of using technical means is not sufficient toavoid exclusion, even if the description discloses a technical embodiment(T 388/04, T 306/04, T 619/02). Terms like "system" or "means" are to belooked at carefully, because a "system" might e.g. refer to a financialorganisation and "means" to organisational units if it cannot be inferredfrom the context that these terms refer exclusively to technical entities(T 154/04).
Once it is established that the claimed subject-matter as a whole is not
excluded from patentability under Art. 52(2) and (3), it is examined withrespect to novelty and inventive step (G-I, 1). The examination of inventive
step requires an assessment of which features contribute to the technicalcharacter of the invention (G-VII, 5.4).
Where the claim specifies a technical implementation of a businessmethod, the features which contribute to the technical character of theclaim are in most cases limited to those specifying the particular technicalimplementation.
Features which are the result of technical implementation choices and notpart of the business method contribute to the technical character and thus
have to be duly taken into account. This is illustrated with the following
example: The claim defines a computerised networked system whichallows customers to obtain audio-visual content about selected products
using computers installed at each sales outlet of a company, all connected

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to a central server with a central database storing the audio-visual content
as electronic files. The distribution of the electronic files from the central
server to the sales outlets could be technically implemented either byenabling download of individual files directly from the central database to
the computer on request of a customer or, alternatively, by transferring aplurality of selected electronic files to each sales outlet, storing these files ina local database of the sales outlet and retrieving the corresponding filefrom the local database when audio-visual content is requested by acustomer at the sales outlet. Choosing one implementation among these
two options lies within the competence of a technically skilled person, suchas a software engineer, as opposed to, for example, specifying that the setof audio-visual contents offered is different for each sales outlet, which
would typically be within the competence of a business expert. Features of
the claim specifying any of these two possible technical implementations
contribute to the technical character of the invention, whereas features
specifying the business method do not.
In the case of claims directed to a technical implementation of a businessmethod, a modification to the underlying business method aimed atcircumventing a technical problem, rather than addressing this problem in
an inherently technical way, is not considered to make a technicalcontribution over the prior art. In the context of an automation of a businessmethod, effects which are inherent in the business method do not qualify astechnical effects (G-VII, 5.4.1).
For instance, an automated accounting method that avoids redundant
bookkeeping may be considered to require fewer computer resources interms of computer workload and storage requirements. These advantages,
in so far as they result from a reduction of the number of operations to be
performed and the amount of data to be considered due to the businessspecification of the accounting method, are inherent to the accounting
method itself and hence do not qualify as technical effects.
Another example is based on an electronic auction that is performed bysuccessively lowering the price until the price is fixed by the remoteparticipant who first transmits a message. Since messages may bereceived out of order due to possible transmission delays, each message
contains timestamp information. Changing the auction rules to obviate theneed for timestamp information amounts to circumventing the technicalproblem of transmission delays rather than solving it with technical means(T 258/03). As a further example, in a method for carrying out electronic
financial transactions with credit cards at a point of sale, the administrativedecision to dispense with the need to obtain the name or address of thebuyer to authorise the transaction may result in saving time and reducing
data traffic. However, this measure, on its own, is not a technical solution to
the technical problem of the bandwidth bottleneck of communication lines
and the limited capacity of server computers, but an administrative
measure which does not contribute to the technical character of the claimed
subject-matter.
The mere fact that the input to a business method is real-world data is not
sufficient for the business method to contribute to the technical character ofMarch 2023

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Part G – Chapter II-15

the claimed subject-matter, even if the data relate to physical parameters(e.g. geographic distances between sales outlets) (T 154/04, T 1147/05,
T 1029/06). See also G-II, 3.3.
In a computer-implemented method for facilitating managerial
decision-making, automatically selecting from a set of business plans themost cost-effective one which also enables meeting certain technicalconstraints (e.g. to achieve a targeted reduction in environmental impact) is
not considered to make a technical contribution beyond thecomputer-implementation.
The mere possibility of serving a technical purpose is not enough for amethod to contribute to the technical character of the invention. For
example, a claim to a "method of resource allocation in an industrial
process" encompasses pure business processes and services in finance,
administration, or management, without limiting the method to any specifictechnical process due to the breadth of meaning of the term "industry".
The result of a business method may be useful, practical or saleable butthat does not qualify as a technical effect.
Business method features, e.g. administrative features, can be found indifferent contexts. For example, a medical support system may be
configured to deliver information to the clinician on the basis of dataobtained from patient sensors, and only if such data is not available, on thebasis of data provided by the patient. The prioritisation of the sensor dataover the data provided by the patient is an administrative rule. Establishingit lies within the competence of an administrator, e.g. the head of the clinic,
rather than within that of an engineer. As an administrative rule with notechnical effect, it does not contribute to the technical character of theclaimed subject-matter and may be used in the formulation of the objective
technical problem as a constraint that has to be met when assessing
inventive step (G-VII, 5.4). For further examples of applying the
problem-solution approach to assess inventive step for subject-mattercomprising business-method features, see G-VII, 5.4.2.1-5.4.2.3.
3.6 Programs for computers
Computer programs are excluded from patentability under Art. 52(2)(c) and(3) if claimed as such. However, following the generally applicable criteria
for Art. 52(2) and (3) (G-II, 2), the exclusion does not apply to computer
programs having a technical character.
In order to have a technical character, and thus not be excluded frompatentability, a computer program must produce a "further technicaleffect" when run on a computer. A "further technical effect" is a technicaleffect going beyond the "normal" physical interactions between the program(software) and the computer (hardware) on which it is run. The normal
physical effects of the execution of a program, e.g. the circulation ofelectrical currents in the computer, are not in themselves sufficient to confer
technical character to a computer program (T 1173/97 and G 3/08).

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Examples of further technical effects which confer technical character to acomputer program are the control of a technical process or of the internalfunctioning of the computer itself or its interfaces (see G-II, 3.6.1).
The presence of a further technical effect is assessed without reference tothe prior art. It follows that the mere fact that a computer program serving a
non-technical purpose requires less computing time than a prior-art
program serving the same non-technical purpose does not on its own
establish the presence of a further technical effect (T 1370/11). Likewise,comparing a computer program with how a human being would perform thesame task is not a suitable basis for assessing if the computer program has
a technical character (T 1358/09).
If a further technical effect of the computer program has already been
established, the computational efficiency of an algorithm affecting theestablished technical effect contributes to the technical character of theinvention and thus to inventive step (e.g. where the design of the algorithm
is motivated by technical considerations of the internal functioning of thecomputer; see also G-II, 3.3).
A computer program cannot derive a technical character from the mere factthat it has been designed such that it can be automatically performed by acomputer. "Further technical considerations", typically related to thetechnical considerations of the internal functioning of the computer, going
beyond merely finding a computer algorithm to perform a task are needed.
They have to be reflected in claimed features that cause a further technicaleffect (G 3/08).
If a claim is directed to a computer program which does not have atechnical character, it is objected to under Art. 52(2)(c) and (3). If it passes
the test for having technical character, the examiner then proceeds to thequestions of novelty and inventive step (see G-VI and G-VII, in particular
G-VII, 5.4).
Computer-implemented inventions"Computer-implemented invention" is an expression intended to coverclaims which involve computers, computer networks or other programmableapparatus wherein at least one feature is realised by means of a computer
program. Claims directed to computer-implemented inventions may takethe forms described in F-IV, 3.9 and subsections.
A computer program and a corresponding computer-implemented method
are distinct from each other. The former refers to a sequence ofcomputer-executable instructions specifying a method while the latter refers
to a method being actually performed on a computer.
Claims directed to a computer-implemented method, a computer-readable
storage medium or a device cannot be objected to under Art. 52(2) and (3)as any method involving the use of technical means (e.g. a computer) andany technical means itself (e.g. a computer or a computer-readable storage

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medium) have technical character and thus represent inventions within themeaning of Art. 52(1) (T 258/03, T 424/03, G 3/08).
3.6.1 Examples of further technical effects
If a method has a technical character over and above the mere fact that it iscomputer-implemented, a corresponding computer program specifying thatmethod produces a further technical effect when run on a computer. For
example, a computer program which specifies a method of controlling ananti-lock braking system in a car, determining emissions by an X-ray
device, compressing video, restoring a distorted digital image, or encrypting
electronic communications brings about a further technical effect when it is
run on a computer (see G-II, 3.3).
Furthermore, if a computer program is designed based on specific technicalconsiderations of the internal functioning of the computer on which it is to
be executed, such as by being adapted to the specific architecture of thecomputer, it may be considered to produce a further technical effect. For
example, computer programs implementing security measures forprotecting boot integrity or countermeasures against power analysis attacks
have a technical character since they rely on a technical understanding of
the internal functioning of the computer.
Similarly, computer programs controlling the internal functioning or
operation of a computer, such as processor load balancing or memory
allocation, normally produce a further technical effect (see, however,
G-VII, 5.4.2.3 for an example of a case where the controlling is based on a
non-technical scheme).
Programs for processing code at low level, such as builders or compilers,
may well have a technical character. For example, when building runtime
objects from development objects, regenerating only those runtime objects
resulting from modified development objects contributes to producing thefurther technical effect of limiting the resources needed for a particularbuild.
3.6.2 Information modelling, activity of programming andprogramming languages
Information modelling is an intellectual activity devoid of technicalcharacter and typically carried out by a systems analyst in a first stage ofsoftware development, to provide a formal description of a real-world
system or process. Consequently, specifications of a modelling language,
the structure of an information modelling process (e.g. use of a template) or
the maintenance of models likewise have no technical character (T 354/07).
Similarly, properties inherent to information models, like re-usability,
platform-independence or convenience for documentation, are notregarded as technical effects (T 1171/06).
If an information model is purposively used in the context of an invention tosolve a specific technical problem by providing a technical effect, it cancontribute to the technical character of the invention (see also G-II, 3.3.2
and 3.5.1).

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Features specifying how the model is actually stored (e.g. using relational
database technology) can also make a technical contribution.
Conceptual methods describing the process of software development(meta-methods) normally have no technical character. For example, in acomputer-implemented method for generating program code for a control
task, a feature specifying that a platform-independent model is converted toa platform-dependent model, from which program code adapted to thetarget platform is derived, makes no technical contribution in so far as theperformance of the control task itself is not affected.
The activity of programming, in the sense of writing code, is anintellectual, non-technical activity, to the extent that it is not used in thecontext of a concrete application or environment to contribute in a causal
manner to the production of a technical effect (G 3/08, T 1539/09).
For example, reading a data type parameter from a file as input to acomputer program, rather than defining the data type in the program itself,is merely a programming option when writing code, which has per se notechnical character. The same applies to naming conventions for object
names for facilitating the intelligibility and the management of program
code.
Defining and providing a programming language or a programming
paradigm such as object-oriented programming does not per se solve atechnical problem, even if its particular syntax and semantics enable theprogrammer to develop a program with greater ease. Easing the intellectual
effort of the programmer is per se not a technical effect.
When assessing an invention relating to a programming environment, thefeatures pertaining to the programming language do not normally contributeto its technical character. For example, in a visual programming
environment, the provision of specific graphical building blocks is part of the
programming language and makes no technical contribution if the only
effect is easing the intellectual effort of the programmer. The provision ofparticular programming constructs may enable a programmer to write
shorter programs, but that does not qualify as a technical effect since any
resulting reduction of program length ultimately depends on how the
programming constructs are used by a human programmer. In contrast,
automatically processing machine code by dividing it into an instruction
chain and an operand chain and replacing repeating instruction sets bymacro-instructions so as to generate optimised code of reduced memory
size makes a technical contribution. In this case, the effect does notdepend on how a human programmer makes use of the macro-instructions.
Features of a programming environment that relate to its graphical userinterface, e.g. visualisations and data input mechanisms, are to beassessed as indicated in G-II, 3.7 and 3.7.1.

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3.6.3 Data retrieval, formats and structures
A computer-implemented data structure or data format embodied on a
medium or as an electromagnetic carrier wave has technical character as awhole and thus is an invention within the meaning of Art. 52(1).
A data structure or format contributes to the technical character of theinvention if it has an intended technical use and it causes a technical effectwhen used according to this intended technical use. Such a potential
technical effect related to an implied technical use is to be taken into
account in assessing inventive step (G 1/19). This may happen if the data
structure or format is functional data, i.e. if it has a technical function in atechnical system, such as controlling the operation of the device processing
the data. Functional data inherently comprise, or map to, the corresponding
technical features of the device (T 1194/97). Cognitive data, on the other
hand, are those data whose content and meaning are only relevant tohuman users and do not contribute to producing a technical effect (seehowever, G-II, 3.7 for presentation of information to a user in a continued
and/or guided human-machine interaction process).
For example, a record carrier for use in a picture retrieval system stores
coded pictures together with a data structure defined in terms of line
numbers and addresses which instruct the system how to decode andaccess the picture from the record carrier. This data structure is defined interms which inherently comprise the technical features of the picture
retrieval system, namely the record carrier and a reading device for
retrieving pictures therefrom in which the record carrier is operative. It thus
contributes to the technical character of the record carrier, whereas the
cognitive content of the stored pictures (e.g. photograph of a person orlandscape) does not.
Similarly, an index structure used for searching a record in a databaseproduces a technical effect since it controls the way the computer performs
the search operation (T 1351/04).
Another example is an electronic message with a header and a content
section. Information in the header comprises instructions which areautomatically recognised and processed by the receiving message system.
This processing in turn determines how the content elements are to beassembled and presented to its final recipient. The provision of such
instructions in the header contributes to the technical character of theelectronic message, whereas the information in the content section,
representing cognitive data, does not (T 858/02).
A data structure or a data format may have features which may not becharacterised as cognitive data (i.e. not for conveying information to a user)
but which nevertheless do not make a technical contribution. For example,
the structure of a computer program may merely aim at facilitating the taskof the programmer, which is not a technical effect serving a technicalpurpose. Furthermore, data models and other information models at an
abstract logical level have per se no technical character (see G-II, 3.6.2).

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Digital data is used to control devices in additive manufacturing (AM), whichis the general term for technologies manufacturing physical objects by
successive addition of material based on a digital representation of thegeometry of the object. If the data defines the instructions for operating the
AM device, it makes a technical contribution as illustrated in the following
example:ExampleA computer-readable medium storing data which defines both a digital
representation of the product of claim 1 and operating instructions adapted
to control an AM device to fabricate the product using the digital
representation of the product when said data is relayed to the AM device.
Remarks
A computer-readable medium is a technical object, so no objection under
Art. 52(2) and (3) arises.
Since the data comprises both a digital description of the (physical) productof claim 1 and associated operating instructions adapted to control an AM
device, it is intended to be used to control an AM device to fabricate theproduct. This technical use of the data is implied across substantially thewhole scope of the claim. Construing the present claim to encompass a
non-technical use of merely visualising the data would be artificial. The
technical effect of fabricating the physical product defined in claim 1 that isachieved when the data is used according to its intended use is thus apotential technical effect that is to be taken into account when assessing
inventive step. The digital representation of the product makes a technicalcontribution to the extent that it defines technical features of the fabricatedphysical product.
However, if such a technical use of the data were not implied by the claim,
the potential technical effect of the data of fabricating the physical productcould not be taken into account when assessing inventive step as it would
not be implied across substantially the whole scope of the claim. This would
be the case, for instance, if the data defined only a digital description or 3Dmodel of the product that is not adapted to additive manufacturing of the
product and could be used to merely visualise the product in a CAD
software tool. Abstract descriptions or models are not considered technicaleven if the described entities are technical (see G-II, 3.3.2). In such a case,the stored non-technical data would not make a technical contribution.
3.6.4 Database management systems and information retrieval
Database management systems are technical systems implemented oncomputers to perform the technical tasks of storing and retrieving datausing various data structures for efficient management of data. A method
performed in a database management system is thus a method which uses
technical means and is therefore not excluded from patentability under
Art. 52(2) and Art. 52(3).

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Features specifying the internal functioning of a database management
system are normally based on technical considerations. Therefore, they
contribute to the technical character of the invention and are taken into
account for the assessment of inventive step. For instance, technicalconsiderations are involved in improving system throughput and query
response times by automatically managing data using various data storeswith different technical properties such as different levels of consistency or
performance (T 1924/17, T 697/17).
Database management systems execute structured queries, which formallyand precisely describe the data to be retrieved. Optimising the execution ofsuch structured queries with respect to the computer resources needed(such as CPU, main memory or hard disk) contributes to the technicalcharacter of the invention since it involves technical considerations
concerning the efficient exploitation of the computer system.
However, not all features implemented in a database management system
necessarily make a technical contribution by virtue of this fact alone. For
example, a feature of a database management system for accounting costs
related to the use of the system by different users may be regarded as not
making a technical contribution.
Data structures, such as an index, hash table or a query tree, used indatabase management systems to facilitate access to data or for the
execution of structured queries contribute to the technical character of theinvention. Such data structures are functional since they purposively control
the operation of the database management system to perform said
technical tasks. Conversely, data structures defined solely by the cognitive
information they store are not considered to contribute to the technicalcharacter of the invention beyond the mere storage of data (see also
G-II, 3.6.3).
A distinction is made between executing structured queries by a databasemanagement system and information retrieval. The latter includes
searching for information in a document, searching for documents
themselves, and also searching for metadata that describe data such as
texts, images or sounds. The query may be formulated by the user in needof information, typically informally using natural language without a precise
format: the user may enter search terms as a query in web search engines
to find relevant documents or submit an exemplary document to find similar
documents. If the method of estimating relevance or similarity relies solely
on non-technical considerations, such as the cognitive content of the items
to be retrieved, purely linguistic rules or other subjective criteria (e.g. items
found relevant by friends in social networks), it does not make a technicalcontribution.
The translation of linguistic considerations into a mathematical model withthe aim of enabling the linguistic analysis to be done automatically by acomputer can be seen as involving, at least implicitly, technicalconsiderations. However, this is not enough to guarantee the technicalcharacter of the mathematical model. Further technical considerations such

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as those relating to the internal functioning of the computer system areneeded.
For example, a mathematical model for calculating the probability that agiven term is similar in meaning to another term by analysing theco-occurrence frequency of the two terms in a collection of documents does
not make a technical contribution per se since it is based on considerationsof a purely linguistic nature (i.e. based on the assumption that terms which
are related are more likely than unrelated terms to occur in the same
documents). The search results produced using this method of similarity
calculation would differ from prior art that adopts another mathematicalmodel only in that information with different cognitive content would be
retrieved. This is a non-technical distinction and does not qualify as atechnical effect. In this context of retrieval based on similarity of meaning ofterms, the concept of "better search" is subjective (T 598/14). In contrast,
optimising the execution time of structured queries in a databasemanagement system as discussed above is a technical effect.
See also G-II, 3.3.1, for artificial intelligence and machine learningalgorithms.

Art. 52(2)(d)3.7 Presentations of information
Presentations of information within the meaning of Art. 52(2)(d) are
understood as the conveying of information to a user. It concerns both thecognitive content of the information presented and the manner of its
presentation (T 1143/06, T 1741/08). It is not limited to visual information,
but also covers other presentation modalities, e.g. audio or haptic
information. However, it does not extend to the technical means used forgenerating such presentations of information.
Furthermore, conveying information to a user is to be distinguished fromtechnical representations of information directed to a technical system
which will process, store or transmit that information. Features of data
encoding schemes, data structures and electronic communication protocols
which represent functional data as opposed to cognitive data are notregarded as presentations of information within the meaning of Art. 52(2)(d)(T 1194/97).
When assessing exclusion from patentability under Art. 52(2) and (3), theclaimed subject-matter has to be considered as a whole (G-II, 2). In
particular, a claim directed to or specifying the use of any technical meansfor presenting information (e.g. a computer display) has, as a whole,technical character and is thus not excluded from patentability. As anotherexample, a claim directed to a kit comprising a product (e.g. a bleachingcomposition) and further features such as instructions for use of the productor reference information for evaluating the results obtained, wherein said
further features have no technical effect on the product, is not excluded
since the claim has a technical feature: a product comprising a compositionof matter.
Once it is established that the claimed subject-matter as a whole is not
excluded from patentability under Art. 52(2) and (3), it is examined inMarch 2023

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respect of the other requirements of patentability, in particular novelty andinventive step (G-I, 1).
During the assessment of inventive step, features related to thepresentation of information are analysed to determine if, in the context of
the invention, they contribute to producing a technical effect serving atechnical purpose. If not, they make no technical contribution and cannot
support the presence of an inventive step (G-VII, 5.4). To determine
whether a technical effect is produced, the examiner assesses the context
of the invention, the task the user carries out and the actual purpose servedby the particular presentation of information.
A feature defining a presentation of information produces a technical effectif it credibly assists the user in performing a technical task by means of acontinued and/or guided human-machine interaction process (T 336/14 andT 1802/13). Such a technical effect is considered credibly achieved if theassistance to the user in performing the technical task is objectively,
reliably and causally linked to the feature. This would not be the case if thealleged effect depends on subjective interests or preferences of the user.
For example, for some users it is easier to understand data when it isdisplayed as numerical values, whereas others might prefer a colour-coded
display. The choice of the one or other manner of displaying the data is
thus not considered to have a technical effect (T 1567/05). Similarly,
whether or not it is easier to understand audio information conveyed as amusical scale instead of spoken words is a matter concerned only with thecognitive abilities of the user. As another example, allowing the user to set
parameters determining the information to be presented or to select themanner of its presentation does not make a technical contribution if it
merely accommodates subjective user preferences.
Determining the extent to which a particular presentation of information
may be considered to credibly support the user in performing a technicaltask may be difficult. It may be simplified during the assessment of
inventive step by comparing the invention with the prior art, thus allowing
the analysis to be limited to the distinguishing features (G-VII, 5.4,
paragraph 5). This comparison may reveal that the potential support for the
performance of the technical task is already achieved in the prior art, withthe consequence that the distinguishing features make no technicalcontribution (e.g. relate only to non-technical subjective user preferences).
A feature relating to the presentation of information may commonly beconsidered to specify:(i)the cognitive content of the information presented, i.e. defining "what"
is presented; or(ii)

the manner in which the information is presented, i.e. defining "how"the information is presented.

This categorisation is adopted to allow for a more detailed discussion oftechnical effects in the rest of this section. It is noted that these categories
are not meant to be exhaustive. Also, there are cases in which a featurePart G – Chapter II-23

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falls into both categories. For example, a step of "displaying the surname ofa customer in capital letters" in a claimed method defines both the cognitive
content of the presented information (surname of a customer) and themanner of its presentation (in capital letters). Such a feature may beconsidered to consist in fact of two features: the displayed text is thesurname of a customer (falling into the first category) and the displayed text
is shown in capital letters (falling into the second category). The manner ofpresentation itself might additionally convey cognitive information. For
example, the capitalised part of a name may, as a matter of convention,
indicate which part is the surname.
(1)

What (which information) is presented?

If the cognitive content of the information presented to the user relates toan internal state prevailing in a technical system and enables the user toproperly operate this technical system, it has a technical effect. An internal
state prevailing in a technical system is an operating mode, a technicalcondition or an event which is related to the internal functioning of thesystem, may dynamically change and is automatically detected. Itspresentation typically prompts the user to interact with the system, forexample to avoid technical malfunctions (T 528/07).
Static or predetermined information about technical properties or potential
states of a machine, specifications of a device or operating instructions do
not qualify as an internal state prevailing in the device. If the presentation of
static or predetermined information merely has the effect of helping theuser with the non-technical tasks preceding the technical task, it does notmake a technical contribution. For example, the effect that the user is not
required to know or memorise a sequence of buttons to be operated prior toconfiguring a device is not a technical effect.
Non-technical information such as the state of a casino game, a businessprocess or an abstract simulation model is exclusively aimed at the user for
subjective evaluation or non-technical decision-making. It is not directly
linked to a technical task. Therefore, such information does not qualify as
an internal state prevailing in a technical system.
(2)

How is the information presented?

A feature in this category typically specifies the form or arrangement inwhich, or the timing at which, information is conveyed to the user (e.g. on ascreen). One example is a diagram designed solely for conveying
information. Specific technical features related to, for example, the way
audio signals or images are generated are not regarded as a manner inwhich information is presented.
Features defining a visualisation of information in a particular diagram orlayout are normally not considered to make a technical contribution, even if
the diagram or layout arguably conveys information in a way which a viewer
may intuitively regard as particularly appealing, lucid or logical.

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Guidelines for Examination in the EPO

For instance, dealing with limited available screen space is part ofdesigning presentations of information for human viewing and therefore not
an indication of technicality per se. The general idea of giving an overview
of a plurality of images in a limited display area by displaying a single
image and sequentially replacing it with other images is not based ontechnical considerations, but is a matter of layout design. Similarly,
arranging objects within available screen space by eliminating "whitespace" between window panes follows the same layout principles as would
apply to the layout of a magazine cover and does not involve technicalconsiderations.
On the other hand, if the manner of presentation credibly assists the user inperforming a technical task by means of a continued and/or guided
human-machine interaction process, it produces a technical effect(T 1143/06, T 1741/08, T 1802/13). For example, displaying several images
side by side in low resolution and allowing selection and display of animage at higher resolution conveys information to the user in the form of atechnical tool that enables the user to perform the technical task ofinteractively searching and retrieving stored images more efficiently.
Storing digital images at different resolutions gives rise to the technicaleffect of allowing the simultaneous overview display of several images(T 643/00). As another example, in a video soccer game, the particularmanner of conveying to the user the location of the nearest teammate bydynamically displaying a guide mark on the edge of the screen when the
teammate is off-screen produces the technical effect of facilitating acontinued human-machine interaction by resolving conflicting technicalrequirements: displaying an enlarged portion of an image and maintaining
an overview of a zone of interest which is larger than the display area
(T 928/03). As a further example, in the context of a visual aid for asurgeon, if, in the course of surgery, the current orientation of a medical balljoint implant is displayed in a manner which credibly assists the surgeon tocorrect the position of the implant in a more precise manner, this isconsidered to provide a technical effect.
Effects relying on human physiology
When a manner of presenting information produces in the mind of the user
an effect which does not depend on psychological or other subjective
factors but on physical parameters which are based on human physiology
and can be precisely defined, that effect may qualify as a technical effect.
The manner of presenting information then makes a technical contribution
to the extent that it contributes to this technical effect. For example,
displaying a notification on one of a plurality of computer screens near theuser's current visual focus of attention has the technical effect that it ismore or less guaranteed to be seen immediately (compared e.g. with anarbitrary placement on one of the screens). In contrast, the decision toshow only urgent notifications (compared e.g. to all notifications) is based
only on psychological factors and thus makes no technical contribution.
Minimising information overload and distraction is not considered to qualify
per se as a technical effect (T 862/10). As another example, displaying a
stream of images in which the parameters for delay and change in thecontent between successive images are computed on the basis of physicalPart G – Chapter II-25

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properties of human visual perception in order to achieve a smoothtransition is considered to make a technical contribution (T 509/07).
If information (e.g. a visual or audio stimulus) is presented to a person forthe purpose of producing in that person a physiological reaction(e.g. involuntary eye gaze) which can be measured in the context ofassessing a medical condition (e.g. eyesight, hearing impairment or brain
damage), that presentation of information may be considered to produce atechnical effect.
Effects relying on mental activities of the user
Where the claimed subject-matter comprises a feature of presenting
information to a user, be it of category (i) or (ii), an evaluation by the user isinvolved. Although such an evaluation per se is a mental act (Art. 52(2)(c)),
the mere fact that mental activities are involved does not necessarily qualify
subject-matter as non-technical. For example, in T 643/00 discussed
above, the user makes an evaluation based on an overview of
low-resolution images in order to locate and objectively recognise a desired
image. This mental evaluation may be considered to be an intermediatestep steering the image search and retrieval process and thus forms an
integral part of a solution to a technical problem. Such a solution relies
neither on facilitating the human tasks of understanding, learning, readingor memorising nor on influencing the user's decision as to which image is tobe searched. It provides a mechanism for inputting a selection which would
not be possible if the images were not displayed in that specificarrangement.
On the other hand, if the choice or layout of information presented aims
exclusively at the human mind, in particular to help the user to take a
non-technical decision (e.g. which product to buy based on a diagram
showing properties of products), no technical contribution is made.
3.7.1 User interfaces
User interfaces, in particular graphical user interfaces (GUIs), comprisefeatures of presenting information and receiving input in response as part ofhuman-computer interaction. Features defining user input are more likely tohave a technical character than those solely concerning data output anddisplay, because input requires compatibility with the predetermined
protocol of a machine, whereas output may be largely dictated by the
subjective preferences of a user. Features concerning the graphic design ofa menu (such as its look and feel) which are determined by aesthetic
considerations, subjective user preferences or administrative rules do notcontribute to the technical character of a menu-based user interface.
Evaluation of features related to output of data is addressed in G-II, 3.6.3.
The present section focuses on evaluating features relating to how a user
can provide input.
Features which specify a mechanism enabling user input, such as entering
text, making a selection or submitting a command, are normally considered
to make a technical contribution. For example, providing in a GUI an
alternative graphical shortcut allowing the user to directly set differentMarch 2023

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Part G – Chapter II-27

processing conditions, such as initiating a printing process and setting thenumber of copies to be printed by dragging and reciprocated movement ofa document icon onto a printer icon, makes a technical contribution. On theother hand, supporting user input by providing information facilitating only
the user's mental decision-making process during this task (e.g. helping theuser in deciding what to input) is not considered as making a technicalcontribution (T 1741/08).
Assisting a user in entering text in a computer system by providing a
predictive input mechanism is a technical function. However, generating
word variants to be displayed for the predictive input mechanism is, in itself,a non-technical problem. The linguistic model used to solve thisnon-technical problem does not, on its own, make a technical contribution.
If technical considerations are involved to implement the linguistic model on
a computer, such as those relating to the internal functioning of a computer,then a technical effect may arise.
Where the actual achievement of effects like simplifying the user's actions
or providing more user-convenient input functions depends exclusively on
subjective user abilities or preferences, such effects may not form the basisof an objective technical problem to be solved. For example, a reduction of
the number of interactions required to perform the same input is notcredibly achieved if it materialises only for some usage patterns that occur
depending on the user's level of expertise or subjective preferences.
Manners of providing input, such as gestures or keystrokes, that merelyreflect subjective user preferences, conventions or game rules and fromwhich a physical ergonomic advantage cannot be objectively established,
do not make a technical contribution. However, performance-oriented
improvements to the detection of input, such as allowing faster or moreaccurate gesture recognition or reducing the processing load of the device
when performing recognition, do make a technical contribution.
4.

Exceptions to patentability

4.1 Matter contrary to "ordre public" or morality
Any invention the commercial exploitation of which would be contrary to"ordre public" or morality is specifically excluded from patentability. The
purpose of this is to deny protection to inventions likely to induce riot or
public disorder, or to lead to criminal or other generally offensive behaviour(see also F-II, 7.2). Antipersonnel mines are an obvious example.
Examples in the area of biotechnological inventions as laid down in Rule 28
are listed in G-II, 5.3. G 1/03 explains that practical examples under
Art. 53(a) arise from the fact that not everything can be done to humanbeings that can be done to other living beings. For example, the avoidanceof offspring that are unwanted because of certain properties (sex, colour,
health) and for economic reasons may be quite legitimate for domestic
animals but when applied to human beings it would be contrary to "ordre
public" or morality.
This provision is likely to be invoked only in rare and extreme cases. A fairtest to apply is to consider whether it is probable that the public in general

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March 2023

would regard the invention as so abhorrent that the grant of patent rights
would be inconceivable. If it is clear that this is the case, an objection israised under Art. 53(a); otherwise not. The mere possibility of abuse of an
invention is not sufficient to deny patent protection pursuant to Art. 53(a)EPC if the invention can also be exploited in a way which does not andwould not infringe "ordre public" and morality (see T 866/01). If difficult legal
questions arise in this context, then refer to C-VIII, 7.
Where it is found that the claims relate in part to such excluded
subject-matter, this may have led to the issuing of a partial European or
supplementary European search report under Rule 63 (see B-VIII, 1, 3.1
and 3.2). In such cases, in the absence of appropriate amendment and/or
convincing arguments provided by the applicant in response to theinvitation under Rule 63(1) (see B-VIII, 3.2) or to the search opinion under
Rule 70a (see B-XI, 8), an objection under Rule 63(3) will also arise(see H-II, 5).

Art. 53(a)4.1.1 Prohibited matter
Exploitation is not to be deemed to be contrary to "ordre public" or morality
merely because it is prohibited by law or regulation in some or all of thecontracting states. One reason for this is that a product could still be
manufactured under a European patent for export to states in which its use
is not prohibited.
4.1.2 Offensive and non-offensive use
Special attention must be paid to applications in which the invention has
both an offensive and a non-offensive use, e.g. a process for breaking open
locked safes, where use by a burglar is offensive and use by a locksmith inan emergency non-offensive. In such a case, no objection arises under
Art. 53(a). Similarly, if a claimed invention defines a copying machine withfeatures resulting in an improved precision of reproduction and anembodiment of this apparatus could comprise further features (not claimed
but apparent to the skilled person) the only purpose of which would be thatit also allows reproduction of security strips in banknotes strikingly similar to
those in genuine banknotes, the claimed apparatus would cover an
embodiment for producing counterfeit money which could be considered tofall under Art. 53(a). There is, however, no reason to consider the copying
machine as claimed to be excluded from patentability, since its improved
properties could be used for many acceptable purposes (see G 1/98,
Reasons 3.3.3). However, if the application contains an explicit reference toa use which is contrary to "ordre public" or morality, deletion of thisreference is required under the terms of Rule 48(1)(a).
4.1.3 Economic effects
The EPO has not been vested with the task of taking into account theeconomic effects of the grant of patents in specific areas of technology andof restricting the field of patentable subject-matter accordingly (see G 1/98
Reasons 3.9, and T 1213/05). The standard to apply for an exception under
Art. 53(a) is whether the commercial exploitation of the invention is contrary
to "ordre public" or morality.

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Guidelines for Examination in the EPO

4.2 Surgery, therapy and diagnostic methods
European patents are not to be granted in respect of "methods fortreatment of the human or animal body by surgery or therapy anddiagnostic methods practised on the human or animal body; this provision
shall not apply to products, in particular substances or compositions, foruse in any of these methods." Hence, patents may be obtained for surgical,
therapeutic or diagnostic instruments or apparatuses for use in suchmethods. The manufacture of prostheses or artificial limbs could be
patentable. For instance, a method of manufacturing insoles in order tocorrect the posture or a method of manufacturing an artificial limb ispatentable. In both cases, taking the imprint of the footplate or a mouldingof the stump on which an artificial limb is fitted is clearly not of a surgicalnature. Furthermore, the insoles as well as the artificial limb are
manufactured outside the body. However, a method of manufacturing an
endoprosthesis outside the body, but requiring a surgical step to be carriedout for taking measurements, would be excluded from patentability under
Art. 53(c) (see T 1005/98).

Part G – Chapter II-29

Art. 53(c)The exception under Art. 53(c) does not extend to new products,
particularly substances or compositions, for use in these methods oftreatment or diagnosis.
Where a substance or composition is already known, (notional) novelty canbe derived from a new medical use in accordance with Art. 54(4) and (5).
Pursuant to Art. 54(4), a known substance or composition may still bepatented for use in a method referred to in Art. 53(c) if the known
substance or composition has not previously been disclosed for use for any
such method ("first medical use"). A claim to a known substance orcomposition for the first use in surgical, therapeutic and/or diagnostic
methods must be in a form such as: "Substance or composition X" followedby the indication of the use, for instance "... for use as a medicament" or "...
for use in therapy/in vivo diagnostics/surgery" (see G-VI, 7.1).

Art. 54(4)Furthermore, if the known substance or composition was previously
disclosed for use in surgery, therapy or diagnostic methods practised on
the human or animal body, a patent may still be obtained according toArt. 54(5) for any second or further use of the substance in these methods
provided that said use is novel and inventive ("further medical use"). A
claim to a further medical use of a known substance must be in the form:"Substance or composition X" followed by the indication of the specifictherapeutical/in vivo diagnostic/surgical use, for instance, "... for use intreating disease Y" (see G-VI, 7.1).

Art. 54(5)Subject-matter in the description regarded as an exception to patentability
needs to be excised, reworded such that it does not fall under the
exceptions to patentability or prominently marked as not being according to
the claimed invention (see F-IV, 4.3). For the latter case, in accordancewith Art. 53(c), the description may for example be amended by adding an
indication as follows: "The references to the methods of treatment by
therapy or surgery or in vivo diagnosis methods in examples X, Y and Z ofthis description are to be interpreted as references to compounds,

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March 2023

pharmaceutical compositions and medicaments of the present invention foruse in those methods".

Art. 53(c)4.2.1 Limitations of exception under Art. 53(c)Exceptions under Art. 53(c) are confined to methods for treatment of thehuman or animal body by surgery or therapy and diagnostic methods
practised on the human or animal body. It follows that other methods oftreatment of living human beings or animals (e.g. treatment of a sheep inorder to promote growth, to improve the quality of mutton or to increase theyield of wool) or other methods of measuring or recording characteristics ofthe human or animal body are patentable, provided that such methods areof a technical and not essentially biological character (see G-II, 5.4.2). For
example, an application containing claims directed to the purely cosmetic
treatment of a human by administration of a chemical product is considered
as being patentable (see T 144/83). A cosmetic treatment involving surgery
or therapy would, however, not be patentable (see below).
To be excluded from patentability, a treatment or diagnostic method must
actually be carried out on the living human or animal body (G 1/04). A
treatment of or diagnostic method practised on a dead human or animal
body would therefore not be excluded from patentability by virtue ofArt. 53(c). Treatment of body tissues or fluids after they have been
removed from the human or animal body, or diagnostic methods applied
thereon, are not excluded from patentability as long as these tissues or
fluids are not returned to the same body. Thus the treatment of blood forstorage in a blood bank or diagnostic testing of blood samples is not
excluded, whereas a treatment of blood by dialysis with the blood being
returned to the same body would be excluded.
Regarding methods which are carried out on or in relation to the living
human or animal body, it must be borne in mind that the intention ofArt. 53(c) is only to free from restraint non-commercial and non-industrial
medical and veterinary activities. Interpretation of the provision must avoid
the exceptions from going beyond their proper limits (see G 5/83, G 1/04,
and G 1/07).
Whether or not a method is excluded from patentability under Art. 53(c)cannot depend on the person carrying it out (see G 1/04 and G 1/07,
Reasons 3.4.1).
However, in contrast to the subject-matter referred to in Art. 52(2) and (3)which is only excluded from patentability if claimed as such, a method claim
is not allowable under Art. 53(c) if it includes at least one feature defining aphysical activity or action that constitutes a method step for treatment of thehuman or animal body by surgery or therapy. In that case, whether or not
the claim includes or consists of features directed to a technical operation
performed on a technical object is legally irrelevant to the application ofArt. 53(c) (see G 1/07, Reasons 3.2.5).
Claims to medical devices, computer programs and storage media which
comprise subject-matter corresponding to that of a method for treatment of
the human or animal body by surgery or therapy or to that of a diagnostic

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method practised on the human or animal body are not to be objected tounder Art. 53(c), because only method claims may fall under the exceptionof Art. 53(c).
4.2.1.1 Surgery
The meaning of the term "treatment by surgery" is not to be interpreted as
being confined to surgical methods pursuing a therapeutic purpose (seeG 1/07, Reasons 3.3.10). Accordingly, the term "surgery" defines the natureof the treatment rather than its purpose. Thus, for example, a method oftreatment by surgery for cosmetic purposes or for embryo transfer is
excluded from patentability, as well as surgical treatment for therapeutic
purposes. The term "treatments by surgery" further covers interventions
performed on the structure of an organism by conservative ("closed,
non-invasive") procedures such as repositioning or by operative (invasive)procedures using instruments.
Whether a claimed method is to be considered as surgical treatment fallingunder the exception of Art. 53(c) should be assessed on a case-by-casebasis, taking the individual merits of each case into account. The reason for
the exception is to allow medical and veterinary practitioners to use theirskills and knowledge of the best available treatments to achieve the utmost
benefit for their patients uninhibited by any worry that some treatment might
be covered by a patent (see G 1/07, Reasons 3.3.6).
Thus, any definition of the term "treatment by surgery" must cover the kindof interventions which constitute the core of the medical profession's
activities i.e. the kind of interventions for which their members are
specifically trained and for which they assume a particular responsibility(G 1/07, Reasons 3.4.2.3).
The exclusion applies to substantial physical interventions on the bodywhich require professional medical expertise to be carried out and which
entail a substantial health risk even when carried out with the required
professional care and expertise. The health risk must be associated withthe mode of administration and not solely with the agent as such (G 1/07,
Reasons 3.4.2.3). Examples of excluded treatments by surgery are theinjection of a contrast agent into the heart, catheterisation and endoscopy.
Invasive techniques of a routine character which are performed on
uncritical body parts and generally carried out in a non-medical, commercial
environment are not excluded from patentability. They include
e.g. tattooing, piercing, hair removal by optical radiation and micro-abrasionof the skin.
Similar considerations apply to routine interventions in the medical field.
Thus, uncritical methods involving only a minor intervention and no
substantial health risks, when carried out with the required care and skill,
do not fall under the scope of Art. 53(c). This narrower understanding of the
exclusion still protects the medical profession from the concerns indicatedabove. An example is a method for retraction of the sulcus of a tooth usinga paste and a cap to prepare an impression of the tooth to manufacture adental crown: the possible damage is limited to the superficial epithelium,

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the only risks are the superficial bleeding and inflammation which rapidly
heal and the specific training needed to perform the method is minimal.
The required medical expertise and the health risk involved may however
not be the only criteria which may be used to determine that a claimed
method actually constitutes "treatment by surgery" within the meaning ofArt. 53(c). Other criteria, such as the degree of invasiveness or thecomplexity of the operation performed, could also determine that a physicalintervention on the human or animal body constitutes such treatment(see G 1/07, Reasons 3.4.2.4).
The exclusion under Art. 53(c) applies to multi-step methods which
comprise or encompass at least one surgical step, as defined in theprevious paragraph. The non-patentable subject-matter must be removed
from the scope of the claim. This may be done either by means of adisclaimer or by omitting the surgical step from the wording of the claim(G 1/07, Reasons 4.2.2). For the general principles governing disclaimers,see H-V, 4. The overall patentability of the amended claim will however
depend on its compliance with the other requirements of the EPC, which
are assessed on a case-by-case basis.
If a surgical method claim is open to objection under Art. 53(c), this also
applies to a corresponding claim directed to a computer-assisted surgicalmethod. In other words, surgical methods for which European patents
cannot be granted according to Art. 53(c) do not avoid exclusion merely
through computer assistance.
Finally, when interpreting the scope of the exclusion under Art. 53(c), no
distinction is to be made between human beings and animals.
4.2.1.2 Therapy
Therapy implies the curing of a disease or malfunction of the body andcovers prophylactic treatment, e.g. immunisation against a certain disease(see T 19/86) or the removal of plaque (see T 290/86). It is concerned withbringing the body from a pathological state back into its normal, healthy
state or preventing a pathological state. Where a method is directed to thetreatment of a human or animal body that is in a normal, healthy state and,even if subject to some discomfort, not likely to develop a pathological state
due to the discomfort, providing relief from the discomfort is not necessarilya therapy. For example, cooling an animal subject to hot weather conditions
does not cure or lessen the symptoms of any disorder or malfunction of theanimal's body, nor does it reduce the possibility of contracting any disorderor malfunction, since no such disorder or malfunction would normally occur
if the animal were not cooled (T 385/09).
A method for therapeutic purposes concerning the functioning of anapparatus associated with a living human or animal body is not excluded
from patentability if no functional relationship exists between the steps
related to the apparatus and the therapeutic effect of the apparatus on the
body (see T 245/87).

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As clinical trials have a therapeutic aspect for the human subjects
undergoing them, an objection under Art. 53(c) is raised if a claim includes
a step relating to a method of treatment of the human body by therapy(see G-II, 4.2.2).
The exclusion under Art. 53(c) applies to multi-step methods which
comprise or encompass at least one therapeutic step. The non-patentablesubject-matter must be removed from the scope of the claim. This may bedone either by means of a disclaimer or by omitting the step of treatment by
therapy from the wording of the claim (G 1/07). For the general principles
governing disclaimers, see H-V, 4. The overall patentability of the amended
claim will however depend on its compliance with the other requirements ofthe EPC, which are assessed on a case-by-case basis.
If a method claim directed to therapy is open to objection under Art. 53(c),this also applies to a corresponding claim directed to acomputer-implemented therapeutic method (T 1680/08). In this respect, thesame observations as in G-II, 4.2.1.1, for computer-implemented surgicalmethods apply.
4.2.1.3 Diagnostic methods
Diagnostic methods likewise do not cover all methods related to diagnosis.
To determine whether a claim is directed to a diagnostic method within themeaning of Art. 53(c) and thus excluded from patentability, it must first be
established whether all of the necessary phases are included in the claim(G 1/04).
The claim must include method steps relating to all of the following phases:(i)the examination phase, involving the collection of data,(ii)

the comparison of these data with standard values,(iii)

the finding of any significant deviation, i.e. a symptom, during thecomparison,(iv)

the attribution of the deviation to a particular clinical picture, i.e. thedeductive medical or veterinary decision phase (diagnosis for
curative purposes stricto sensu).

If features pertaining to any of these phases are missing and are essential
for the definition of the invention, those features are to be included in the
independent claim (see Example 6 in the Annex to F-IV). Due account must
be taken of steps which may be considered to be implicit: for example,
steps relating to the comparison of data with standard values (phase (ii))
may imply the finding of a significant deviation (phase (iii) – see T 1197/02).
The deductive medical or veterinary decision phase (iv), i.e. the "diagnosis
for curative purposes stricto sensu", is the determination of the nature of a
medical or veterinary medicinal condition intended to identify or uncover apathology; the identification of the underlying disease is not required(see T 125/02).

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Additionally, a method is only regarded as a diagnostic method within themeaning of Art. 53(c), and thus excluded from patentability, if all method
steps of a technical nature belonging to the preceding steps which areconstitutive for making the diagnosis, i.e. phases (i)-(iii), satisfy the criterion"practised on the human or animal body". However, the steps of phases (ii)and (iii) which consist in comparing the data collected in the examination
phase with standard values and in finding a significant deviation resulting
from the comparison are not subject to this criterion, because these
activities are predominantly of a non-technical nature and are normally notpractised on the human or animal body. Therefore, in most cases only
phase (i), which relates to the examination phase and involves thecollection of data, can actually be of a technical nature within the meaningof G 1/04 and therefore concerned with the criterion "practised on thehuman or animal body" (see T 1197/02, T 143/04, T 1016/10).
It is noted that only the steps strictly describing phases (i)-(iv) have to betaken into account in determining the diagnostic character of the claimed
method. Additional, preparatory or intermediate steps which may beintroduced into the claimed method are irrelevant for this question (seeT 1197/02, T 143/04, T 1016/10). For example, preparatory steps which
concern the adjustment or preparation of the apparatus with which thecollection of data will be performed may be comprised in a method claim.
However, these additional features are not part of any of phases (i)-(iii),
which are constitutive for making the diagnosis. Likewise, data processing
using an automated apparatus is not actually part of the examination phasewhich involves the collection of data, but it results from a subsequent step,
intermediate between data collection and the comparison of the collected
data with standard values. The issue of whether or not such additional
steps are of a technical nature and practised on the human or animal bodyis, therefore, irrelevant for the assessment of whether a claimed method isa diagnostic method falling under the exception clause of Art. 53(c).
In order to determine whether a method step of a technical nature fulfils thecriterion "practised on the human or animal body" it must be ascertained
whether an interaction with the human or animal body takes place. The
type or intensity of the interaction is not decisive: this criterion is fulfilled if
the performance of the method step in question necessitates the presenceof the body. Direct physical contact with the body is not required.
It is noted that a medical or veterinary practitioner does not have to be
involved, either by being present or by bearing the overall responsibility, inthe procedure.
If all of the above criteria are satisfied, then the claim defines a diagnostic
method practised on the human or animal body, and an objection will beraised under Art. 53(c).
Accordingly, methods for merely obtaining information (data, physicalquantities) from the living human or animal body (e.g. X-ray investigations,
MRI studies, and blood pressure measurements) are not excluded frompatentability under Art. 53(c).

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4.2.2 Methods for screening potential medicaments and clinical
trialsAlthough in general a medical claim directed to tests carried out on"animals" must exclude from its scope the use of human beings as "testanimals" (e.g. by means of a disclaimer), in some infrequent cases, a claim
may, in the light of the description, be interpreted as exclusively relating toa clinical trial of an experimental medicament carried out on human beings.
It is assumed that unless there is evidence to the contrary, such trials are
performed under strictly controlled conditions and with the informed
consent of the patient concerned. In such cases, no objection under
Art. 53(a) is raised (see however G-II, 4.2.1.2).
5.

Part G – Chapter II-35

Art. 53(a)Exclusions and exceptions for biotechnological inventions

5.1 General remarks and definitions"Biotechnological inventions" are inventions which concern a productconsisting of or containing biological material or a process by means ofwhich biological material is produced, processed or used. "Biologicalmaterial" means any material containing genetic information and capable ofreproducing itself or being reproduced in a biological system.
5.2 Patentable biotechnological inventions
In principle, biotechnological inventions are patentable under the EPC. For
European patent applications and patents concerning biotechnologicalinventions, the relevant provisions of the EPC are to be applied andinterpreted in accordance with the provisions of Rules 26 to 29. European
Union Directive 98/44/EC of 6 July 1998 on the legal protection of
biotechnological inventions (OJ EPO 1999, 101) is to be used as asupplementary means of interpretation. In particular the recitals(abbreviated as rec.) preceding the provisions of the Directive are also to
be taken into account. Judgments of the Court of Justice of the European
Union on the interpretation of EU Directive 98/44/EC are not binding on the
EPO. Still, they may be considered as being persuasive (T 2221/10 and
T 1441/13).

Rule 26(2) and (3)Rule 27
Rule 26(1)Biotechnological inventions are also patentable if they concern an item on
the following non-exhaustive list:(i)

Biological material which is isolated from its natural environment or
produced by means of a technical process even if it previously
occurred in nature

Rule 27(a)Hence, biological material may be considered patentable even if italready occurs in nature (see also G-II, 3.1).
Although the human body, at the various stages of its formation anddevelopment, and the simple discovery of one of its elements,
including the sequence or partial sequence of a gene, cannot
constitute patentable inventions (see G-II, 5.3), an element isolated
from the human body or otherwise produced by means of a technicalprocess, which is susceptible of industrial application, including thesequence or partial sequence of a gene, may constitute a patentable

Rule 29(1) and (2)Part G – Chapter II-36

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invention, even if the structure of that element is identical to that of anatural element. Such an element is not a priori excluded frompatentability since it is, for example, the result of technical processes
used to identify, purify and classify it and to produce it outside thehuman body, techniques which human beings alone are capable ofputting into practice and which nature is incapable of accomplishingitself (EU Dir. 98/44/EC, rec. 21).
The examination of a patent application or a patent for genesequences or partial sequences is subject to the same criteria ofpatentability as in all other areas of technology (EU Dir. 98/44/EC,
rec. 22). The industrial application of a sequence or partial sequencemust be disclosed in the patent application as filed (see G-III, 4).

Rule 29(3)Rule 27(b)Rule 28(2)(ii)

Plants or animals if the technical feasibility of the invention is notconfined to a particular plant or animal variety and if said plants oranimals are not exclusively obtained by means of an essentiallybiological process
Inventions which concern plants or animals are patentable provided
that the application of the invention is not technically confined to asingle plant or animal variety (EU Dir. 98/44/EC, rec. 29). However,said plants or animals must not be exclusively obtained by means ofan essentially biological process (see G-II, 5.4).
The exclusion regarding plants and animals exclusively obtained bymeans of an essentially biological process applies to patentapplications with a filing date and/or a priority date after 1 July 2017.
It does not apply to patents granted before that date or to pending
patent applications with a filing date and/or a priority date before
1 July 2017 (see G 3/19, OJ EPO 2020, A119).
If a technical feature of a claimed plant or animal, e.g. a single
nucleotide exchange in the genome, can be the result of both atechnical intervention (e.g. directed mutagenesis) and an essentiallybiological process (a natural allele), a disclaimer is necessary todelimit the claimed subject-matter to the technically produced product(see examples in G-II, 5.4.2.1 and G-II, 5.4). Such a disclaimer will
only be necessary for patent applications with a filing date and/or apriority date after 1 July 2017. A disclaimer will not be required forpatents granted before that date or for pending patent applications
with a filing date and/or a priority date before 1 July 2017 (seeG 3/19, OJ EPO 2020, A119). If, on the other hand, the feature inquestion can be obtained by technical intervention only, e.g. atransgene, no disclaimer is necessary. For the general principles
governing disclaimers, see H-V, 4.
The subject-matter of a claim covering but not identifying plantvarieties is not a claim to a variety or varieties (see G 1/98,
Reasons 3.8). In the absence of the identification of a specific plantvariety in a product claim, the subject-matter of the claimed invention
is neither limited nor directed to a variety or varieties within theMarch 2023

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Part G – Chapter II-37

meaning of Art. 53(b) (G 1/98, Reasons 3.1 and 3.10) and therefore
is not excluded from patentability. More detailed instructions on the
exclusions on plant varieties can be found in G-II, 5.4.1.
(iii)

A microbiological or other technical process, or a product obtained bymeans of such a process other than a plant or animal variety

Rule 27(c)"Microbiological process" means any process involving or performed
upon or resulting in microbiological material.

Rule 26(6)5.3 List of exceptions (Rule 28)
In the area of biotechnological inventions, the following list of exceptions topatentability under Art. 53(a) and Art. 53(b) is laid down in Rule 28. Under
Art. 53(a) the list is illustrative and non-exhaustive and is to be seen as
giving concrete form to the concept of "ordre public" and "morality" in thistechnical field. A possible immoral use is only to be taken into account if itis specifically considered or at least suggested in the application and canthus be found to constitute an avowed use (G-II, 4.1 and T 866/01).
According to Rule 28(2), plants and animals exclusively obtained by meansof an essentially biological process are excluded from patentability. This
exclusion regarding plants and animals exclusively obtained by means ofan essentially biological process applies to patent applications with a filingdate and/or a priority date after 1 July 2017. It does not apply to patents
granted before that date or to pending patent applications with a filing date
and/or a priority date before 1 July 2017 (see G 3/19, OJ EPO 2020, A119).
Under Art. 53(a), in conjunction with Rule 28(1), European patents are not
to be granted in respect of biotechnological inventions which concern:

Rule 28(1)(i)

Rule 28(1)(a)Processes for cloning human beings
For the purpose of this exception, a process for the cloning of humanbeings may be defined as any process, including techniques ofembryo splitting, designed to create a human being with the same
nuclear genetic information as another living or deceased humanbeing (EU Dir. 98/44/EC, rec. 41).

(ii)

Processes for modifying the germ line genetic identity of humanbeingsRule 28(1)(b)(iii)

Uses of human embryos for industrial or commercial purposesRule 28(1)(c)A claim directed to a product which at the filing date of the application
could be exclusively obtained by a method which necessarily
involved the destruction of human embryos from which the said
product is derived is excluded from patentability under Rule 28(1)(c),even if said method is not part of the claim (see G 2/06). The point intime at which such destruction takes place is irrelevant (T 2221/10).

Part G – Chapter II-38

Guidelines for Examination in the EPO

March 2023

When examining subject-matter relating to human embryonic stem
cells under Art. 53(a) and Rule 28(1)(c), the following has to be taken
into account:(a)the entire teaching of the application, not only the claim
category and wording, and(b)

the relevant disclosure in the description in order toestablish whether products such as stem cell cultures are
obtained exclusively by the use, involving the destruction, of ahuman embryo or not. For this purpose, the disclosure of thedescription has to be considered in view of the state of the art
at the date of filing.

An application pertaining to human pluripotent stem cells, including
human embryonic stem cells, uses thereof or products derived
therefrom cannot be regarded as excluded from patentability under
Art. 53(a) and Rule 28(1)(c) (T 0385/14) if (i) the application has aneffective date (i.e. a valid priority date or, if no priority is claimed or
the priority is not valid, a filing date) on or after 5 June 2003, and (ii)
its technical teaching can be put into practice using humanembryonic stem cells derived from parthenogenetically activatedhuman oocytes. In such cases, any disclosure, embodiment,
example or similar encompassing the use of human embryonic stem
cells excluded from patentability under Art. 53(a) must be excisedfrom the description or prominently marked as not being according to
the claimed invention (e.g. by using the term "reference humanembryonic stem cell") (see F-IV, 4.3).
Foetal and post-natal human cells are in principle not excluded frompatentability.
Culture media, supports and apparatuses "suitable for" use withhuman embryonic cells, or even "specifically designed" for thispurpose, are not per se excluded from patentability. Their production
normally does not require the use of human embryos as basematerial.
The exclusion of the use of human embryos for industrial orcommercial purposes does not affect inventions for therapeutic or
diagnostic purposes which are applied to the human embryo and areuseful to it (EU Dir. 98/44/EC, rec. 42).
Rule 28(1)(d)(iv)

Processes for modifying the genetic identity of animals which are
likely to cause them suffering without any substantial medical benefit
to man or animal, and also animals resulting from such processes
A claim directed to genetically modified animals or to processes forgenetically modifying animals needs to meet the requirements ofRule 28(1)(d) and Art. 53(a) (see T 315/03 and T 19/90).

March 2023

Guidelines for Examination in the EPO

Part G – Chapter II-39

To fulfil the requirements of Rule 28(1)(d), the following needs to beestablished:(a)that the subject-matter in question concerns a process formodifying the genetic identity of animals or animals resulting
from that process,(b)

the likelihood of animal suffering,(c)the likelihood of substantial medical benefit and(d)the necessary correspondence between suffering andsubstantial medical benefit in terms of the animals claimed.

The level or standard of proof for establishing animal suffering andsubstantial medical benefit is likelihood. The correspondence has tobe established according to the balance-of-probabilities approach(E-IV, 4.3).
For Art. 53(a), a careful weighing-up of the suffering of animals andpossible risks to the environment, on the one hand, and theinvention's usefulness to mankind, on the other hand, are used to theextent that those two aspects are supported by evidence (seeT 19/90 and T 315/03).
The substantial medical benefit referred to above includes any
benefit in terms of research, prevention, diagnosis or therapy (EUDir. 98/44/EC, rec. 45).
The above must be applied to the whole scope of the claim.
For applications relating to non-genetically modified animals, in allcases where animal suffering or possible risks to the environment isinvolved, the provisions of Art. 53(a) have to be assessed byconsidering the invention's usefulness to mankind (T 1553/15).
In addition, the human body, at the various stages of its formation anddevelopment, and the simple discovery of one of its elements, including thesequence or partial sequence of a gene, cannot constitute patentable
inventions (see, however, G-II, 5.2). Such stages in the formation ordevelopment of the human body include germ cells (EU Dir. 98/44/EC,
rec. 16).
A parthenote is neither a human body at a stage of its formation anddevelopment nor one of its elements (i.e. human germ cell); thus aparthenote or cells derived therefrom are in principle not excluded frompatentability under Rule 29(1).
Also excluded from patentability under Art. 53(a) are processes to produce
chimeras from germ cells or totipotent cells of humans and animals(EU Dir. 98/44/EC, rec. 38).

Rule 29(1)Part G – Chapter II-40

Art. 53(b)Rule 28(2)Guidelines for Examination in the EPO

March 2023

5.4 Plant and animal varieties or essentially biological processes forthe production of plants or animals
The list of exceptions to patentability under Art. 53(b) also includes "plant or
animal varieties or essentially biological processes for the production ofplants or animals".
Rule 28(2) excludes products (plants/animals and plant/animal parts)
exclusively obtained by non-technical, i.e. essentially biological, processes.
This exclusion regarding plants and animals exclusively obtained by meansof an essentially biological process applies to patent applications with afiling date and/or a priority date after 1 July 2017. It does not apply topatents granted before that date or to pending patent applications with afiling date and/or a priority date before 1 July 2017 (see G 3/19, OJ EPO
2020, A119).
The exclusion extends to plants and animals exclusively obtained bymeans of an essentially biological process where no direct technicalintervention in the genome of the plants or animals takes place, as therelevant parental plants or animals are merely crossed and the desired
offspring is selected for. This is the case even if technical means areprovided serving to enable or assist the performance of the essentiallybiological steps. In contrast, plants or animals produced by a technicalprocess which modifies the genetic characteristics of the plant or animal
are patentable.
The term exclusively is used here to mean that a plant or animal
originating from a technical process or characterised by a technicalintervention in the genome is not covered by the exclusion frompatentability even if in addition a non-technical method (crossing andselection) is applied in its production.
Determining whether a plant or animal is obtained by exclusively biologicalmeans entails examining whether there is a change in a heritablecharacteristic of the claimed organism which is the result of a technicalprocess exceeding mere crossing and selection, i.e. not merely serving toenable or assist the performance of the essentially biological process steps.
Thus transgenic plants and technically induced mutants are patentable,
while the products of conventional breeding are not.
Both targeted mutation, e.g. with CRISPR/Cas, and random mutagenesis
such as UV-induced mutation are such technical processes. When looking
at the offspring of transgenic organisms or mutants, if the mutation ortransgene is present in said offspring it is not produced exclusively by anessentially biological method and is thus patentable.
Furthermore, for living matter to be patentable, it must be possible toreproduce it in a way that has exactly the same technical features.
Reproducibility can be assured for example:(1)

By a deposit of the living matter (seeds, microbiological strains). The
deposited material must be publicly available and such that theMarch 2023

Guidelines for Examination in the EPO

invention can actually be reproduced starting from it. If, for example,
a novel and inventive trait is due to a single transgene, a skilled
person can reproduce the invention from a living sample. If, instead,the claimed trait is dependent on a large number of structurally
undefined loci in the genome, these will segregate in subsequent
generations and it will be an undue burden to reproduce the invention
from the deposited sample (T 1957/14).
(2)

By disclosing in the application as filed the gene sequence
responsible for the claimed trait together with instructions on how to
reproducibly introduce by technical means such an altered sequencein a target organism (e.g. by CRISPR-Cas).

If a technical feature of a claimed plant or animal, e.g. a single nucleotide
exchange in the genome, might be the result of either a technicalintervention (e.g. directed mutagenesis) or an essentially biological process(a natural allele), a disclaimer is necessary to delimit the claimed
subject-matter to the technically produced product in order to comply withthe requirements of Art. 53(b) and Rule 28(2). Otherwise the subject-matteris directed to excluded subject-matter and is to be refused on the basis ofArt. 53(b) in conjunction with Rule 28(2). A disclaimer is required in allcases and, in particular, even if the description only mentions a technicalmethod of production and is silent on the use of an essentially biologicalprocess. If, on the other hand, the feature in question can unambiguously
be obtained by technical intervention only, e.g. a transgene, no disclaimer
is necessary.
This should apply also if such a disclaimer relates to subject-matter thatwas not disclosed in the application as filed. In such a case the disclaimer
fulfils the requirements laid down in G 1/03, G 2/03 and G 1/16 because it
is introduced to exclude subject-matter not eligible for patent protection (forthe general principles governing disclaimers see also H-V, 4).
Such a disclaimer will only be necessary for patent applications with a filingdate and/or a priority date after 1 July 2017. A disclaimer will not be
required for patents granted before that date or for pending patentapplications with a filing date and/or a priority date before 1 July 2017 (seeG 3/19, OJ EPO 2020, A119).
The technicality of a claimed plant or animal product may lie in a
non-heritable physical feature imparted directly to the claimed organism,
e.g. a seed coated with a beneficial chemical.
The technical method of production of the plant or animal may be includedin the claims, in the form of product-by-process claims (see F-IV, 4.12).
Plant products that are not propagation material, such as flour, sugars or
fatty acids, have to be considered on the basis of their chemical properties
only. Thus provided the general patentability requirements are fulfilled, it
will not be relevant whether the subject-matter (e.g. a sugar molecule) isisolated from a product (e.g. a living plant) of an essentially biologicalprocess or is produced in a laboratory.

Part G – Chapter II-41

Part G – Chapter II-42

Guidelines for Examination in the EPO

March 2023

Examples are provided below under G-II, 5.4.2.1.
This exclusion regarding plants and animals exclusively obtained by meansof an essentially biological process does not apply to patents granted
before 1 July 2017 or to pending patent applications with a filing date
and/or a priority date before 1 July 2017 (see G 3/19, OJ EPO 2020, A119).
For these applications and these granted patents, the exclusion frompatentability of essentially biological processes for the production of plants
does not have a negative effect on the allowability of a product claim
directed to plants or plant material such as seeds or other plant propagationmaterial. This applies even if the only method available at the filing date forgenerating the claimed plants or plant material is an essentially biologicalprocess for the production of plants, and also if the claimed product isdefined in terms of such a process (product-by-process claim, see
F-IV, 4.12). In this context it is of no relevance that the protection conferredby the product claim encompasses the generation of the claimed productby means of an essentially biological process for the production of plants(see G 2/12 and G 2/13). The same principle applies mutatis mutandis withregard to animals produced by means of essentially biological processes(see also F-IV, 4.12).
For patent applications with a filing date and/or a priority date on or after
1 July 2017, if the technical characteristics of a claimed plant or animal are
due to a technical step, the description must not contain any references toessentially biological methods (such as screening wild populations orconventional breeding) as an alternative method to obtain the claimed plantor animal. If such references are made, they must be deleted because they
are not commensurate with the scope of the claim. Adapting the description
is necessary – in addition to the disclaimer in the claims – to bring it intoline with the claims (see F-IV, 4.3) but there is no need for an additional
disclaimer in the description. In contrast, any mention of essentiallybiological processes to multiply or transfer a feature obtained with technicalmeans, e.g. mutagenesis, may remain in the description, even though theycannot be claimed.

Rule 26(4)Rule 27(b)Rule 28(2)5.4.1 Plant varieties
The term "plant variety" is defined in Rule 26(4). A patent is not to be
granted if the claimed subject-matter is directed to a specific plant variety or
specific plant varieties. The method for the plant's production, be it byrecombinant gene technology or by a classical plant breeding process, isirrelevant for considering this issue (see T 1854/07). Therefore, plantvarieties containing genes introduced into an ancestral plant byrecombinant gene technology are excluded from patentability (G 1/98).
However, if the invention concerns plants or animals, which are notexclusively obtained by means of an essentially biological process (seeG-II, 5.4, above and G 3/19), and if the technical feasibility of the invention
is not confined to a particular plant or animal variety, the invention ispatentable (see G-II, 5.2).
A claimed plant grouping is not excluded from patentability under Art. 53(b)if it does not meet the definition of a plant variety set out in Rule 26(4).

March 2023

Guidelines for Examination in the EPO

Part G – Chapter II-43

When a claim to a process for the production of a plant variety is examined,
Art. 64(2) is not to be taken into consideration (see G 1/98). Hence, a
process claim for the production of a plant variety (or plant varieties), which
is not exclusively essentially biological, is not a priori excluded frompatentability merely because the resulting product constitutes or may
constitute a plant variety.
Controlled hybrids with inbred parents are excluded from patentability
under Art. 53(b), as they define either a seed or a plant which necessarily
belongs to a particular plant grouping within the meaning of plant variety
pursuant to Rule 26(4).
A claim cannot escape the exclusion of plant varieties under Art. 53(b) byconsisting of a large number of varieties, not even if there are hundreds ofthem. Only if the subject-matter of the claim comprises at least one
embodiment which does not constitute a variety is the claim allowable
under Art. 53(b) (see T 1208/12). For instance, a claim directed to a hybridof a specific deposited Brassica variety with any high-yielding Brassica
variety results in a Brassica hybrid variety, which is not patentable.
5.4.2 Essentially biological processes for the production of plants oranimals
A process for the production of plants or animals which is based on thesexual crossing of whole genomes and on the subsequent selection ofplants or animals is excluded from patentability as being essentiallybiological. This applies even if the process comprises human intervention,
including the provision of technical means, serving to enable or assist theperformance of the process steps or if other technical steps relating to the
preparation of the plant or animal or its further treatment are present in theclaim before or after the crossing and selection steps (see G 1/08 andG 2/07).
To take some examples, a method of crossing, interbreeding, or selectively
breeding, say, horses involving merely selecting for breeding and bringing
together those animals (or their gametes) having certain characteristics
would be essentially biological and therefore excluded from patentability.
Also selfing of a transgenic plant is excluded from patentability, as selfing,
like crossing, is the mixing of entire genomes. These methods remain
essentially biological and thus excluded from patentability even if they
contain an additional feature of a technical nature, for example the use ofgenetic molecular markers to select either parent or progeny. Patent
protection is available for any such additional technical steps per se which
are performed either before or after the process of crossing and selection.
However, such steps are ignored when determining whether or not theprocess as a whole is excluded from patentability under Art. 53(b) EPC(see G 1/08, G 2/07).
However, if a process of sexual crossing and selection includes within it anadditional step of a technical nature, which step by itself introduces a trait
into the genome or modifies a trait in the genome of the plant produced, sothat the introduction or modification of that trait is not the result of themixing of the genes of the plants chosen for sexual crossing, then such a

Rule 26(5)Part G – Chapter II-44

Guidelines for Examination in the EPO

March 2023

process is not excluded from patentability under Art. 53(b) but qualifies as apotentially patentable technical teaching (see G 1/08, G 2/07).
Genetic engineering techniques applied to plants which techniques differ
profoundly from conventional breeding techniques as they work primarily
through the purposeful insertion and/or modification of one or more genes
in a plant are patentable (see T 356/93). However, in such cases the claims
must not, explicitly or implicitly, include the sexual crossing and selection
process.
Processes for selecting plants or animals using genetic molecular markers
without crossing the plants or animals are not excluded from patentability.
Technical means, such as genetic molecular markers, used in suchprocesses are not excluded, either.
A process for producing triploid seedless melon fruit which involves thepollination of sterile female flowers of a triploid plant, unable to carry out
successful meiosis, with pollen of the diploid polliniser plant and which
therefore does not concern sexually crossing two whole genomes of plants(implying meiosis and fertilisation) and the subsequent selection of plants is
not an essentially biological process and is hence not excluded frompatentability (T 1729/06).
A process of treating a plant or animal to improve its properties or yield or
to promote or suppress its growth, e.g. a method of pruning a tree, would
not be an essentially biological process for the production of plants oranimals since it is not based on the sexual crossing of whole genomes andsubsequent selection of plants or animals; the same applies to a method oftreating a plant characterised by the application of a growth-stimulating
substance or radiation. The treatment of soil by technical means tosuppress or promote the growth of plants is also not excluded frompatentability (see also G-II, 4.2.1).
Claims to breeding methods leaving out an explicit reference to either acrossing or selection step, but where such a step is an essential feature,lack clarity and support (Art. 84).
The abbreviation NBT stands for "new breeding techniques". This is not atechnical term, but a general one which is used for a variety of methods,
some clearly technical but others either comprising or consisting ofessentially biological processes. Therefore it is not suitable to differentiate
whether claimed subject-matter is allowable under Art. 53(b) and has no
relevance in terms of patentability.
5.4.2.1 Examples
The following subject-matter relates to essentially biological processes
excluded from patentability:–

Method for the production of plants having trait X comprising crossing
plants A and B and selecting progeny having marker X.

March 2023

Guidelines for Examination in the EPO–

Use of a (transgenic) plant for generating further plants by crossing
and selection.

–

Use of a (transgenic) animal for breeding.

–Introgression of a (transgenic) gene X into a plant, i.e. introducing it
into the genome by crossing and selection.

–

Methods for plant breeding by crossing of whole genomes andselection of plants comprising the step of embryo rescue.

The following subject-matter relates to products exclusively obtained bymeans of an essentially biological process excluded from patentability andhaving a filing date or priority date after 1 July 2017 (see G 3/19):–

A plant produced by introgression of gene A, i.e. by introducing it into
the genome by crossing and selection.

–

A plant produced exclusively by crossing and selection, whereinmolecular markers are used to assist the selection process.

–A plant part obtained exclusively by means of an essentiallybiological process which is propagation material, e.g. a seed or plant
embryo.

–A cultivated pepper plant expressing a mutant AHAS enzyme

The following subject-matter is not excluded from patentability under
Art. 53(b):–Method of producing a (transgenic) plant having trait X comprising
introducing by transformation a vector comprising the sequence of
SEQ ID NO: 1.

–

Method for selecting animals having phenotype Y by screening forthe presence of a marker having the sequence shown in
SEQ ID NO: 1.

–

Use of the nucleic acid of SEQ ID NO: 1 to select a plant having
trait X.

–

A mutant of a plant carrying a heritable exchange in a nucleotide
sequence effected by technical means, e.g. UV mutagenesis or
CRISPR/Cas with the proviso that the plant is not exclusively
obtained by means of an essentially biological process (EBP).

–

A transgenic plant carrying transgene X.

–

Progeny of a mutant (wherein the mutant is not exclusively produced
by EBP) or a transgenic plant which carries the mutation/thetransgene.

Part G – Chapter II-45

Part G – Chapter II-46

Art. 53(b)Rule 26(6)Guidelines for Examination in the EPO

March 2023–

A seed of a wild-type plant covered with a chemical which inhibits
fungal growth.

–

Flour or oil produced from plant X (even if it is apparent from thedescription that said plant was exclusively obtained by means of an
essentially biological method).

5.5

Microbiological processes

5.5.1 General remarks
As expressly stated in Art. 53(b), second half-sentence, the exception
referred to in the first half-sentence does not apply to microbiologicalprocesses or the products thereof.
"Microbiological process" means any process involving or performed uponor resulting in microbiological material. Hence, the term "microbiologicalprocess" is to be interpreted as covering not only processes performed
upon microbiological material or resulting in such, e.g. by genetic
engineering, but also processes which as claimed include both
microbiological and non-microbiological steps.

Rule 27(c)The product of a microbiological process may also be patentable per se(product claim). Propagation of the microorganism itself is to be construed
as a microbiological process for the purposes of Art. 53(b). Consequently,
the microorganism can be protected per se as it is a product obtained by amicrobiological process (see G-II, 3.1). The term "microorganism" includes
bacteria and other generally unicellular organisms with dimensions beneaththe limits of vision which can be propagated and manipulated in alaboratory (see T 356/93), including plasmids and viruses and unicellularfungi (including yeasts), algae, protozoa and, moreover, human, animal andplant cells. Isolated plant or animal cells or in vitro plant or animal cell
cultures are treated as microorganisms, since cells are comparable tounicellular organisms (G 1/98, 5.2).
On the other hand, product claims for plant or animal varieties cannot beallowed even if the variety is produced by means of a microbiologicalprocess (Rule 27(c)). The exception to patentability in Art. 53(b), firsthalf-sentence, applies to plant varieties irrespective of the way in which
they are produced.
However, plant cells or tissues are usually totipotent and are able toregenerate the full plant. Therefore, even if plant cells or cell cultures may
be regarded as the product of a microbiological process, plant material
which is able to propagate the full plant is excluded from patentability if theplant from which the material originates has been exclusively produced byan essentially biological process (G 3/19) (for the meaning of the term
"exclusively" in relation, for example, to offspring of transgenic organisms
or mutants, see G-II, 5.4). Said exclusion does not apply to patents granted
before 1 July 2017 nor to pending patent applications with a filing date
and/or a priority date before 1 July 2017 (see G 3/19, XXIX).

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Guidelines for Examination in the EPO

5.5.2 Repeatability of results of microbiological processes
In the case of microbiological processes, particular regard has to be had tothe requirement of repeatability referred to in F-III, 3. As for biologicalmaterial deposited under the terms of Rule 31, repeatability is assured by
the possibility of taking samples (Rule 33(1)), and there is thus no need toindicate another process for the production of the biological material.
5.6

Antibodies

5.6.1 General remarks
Antibodies exist in a number of different formats. The most frequently used
format is an immunoglobulin G (IgG), which is a large, Y-shaped protein
composed of two identical light chains and two identical heavy chains, bothcontaining variable and constant domains. Antibodies bind specifically toantigen targets via the antigen binding region which contains
complementarity-determining regions (CDRs). In the case of an IgG, theantigen binding region consists of a heavy and light chain variable domain,each variable domain having three CDRs.
Other immunoglobulin structures are also known, such as heavy-chain-only
antibodies that consist of only two identical heavy chains (with variable andconstant domains) and the antigen-binding region consists of a single
variable domain with only three CDRs.
Furthermore, knowledge of the structure-function relationships of parts of
the antibody has allowed for the creation of antibody derivatives for a
multitude of applications. These include antibody fragments, bispecific or
multispecific antibodies and antibody fusion products.
In general, antibodies can be defined by (but are not limited to):(a)their own structure (amino acid sequences);(b)

nucleic acid sequences encoding the antibody;(c)reference to the target antigen;(d)target antigen and further functional features;(e)functional and structural features;(f)the production process;(g)the epitope;(h)the hybridoma producing the antibody.

5.6.1.1 Definition by structure of the antibody
In order to fulfil the requirements of Art. 84, the structural definition of an
antibody must contain at least the sequence of each of the CDRs requiredfor binding to the antigen, which, in the case of an IgG, is CDRs 1-3 of eachof the variable domains.

Part G – Chapter II-47

Rule 33(1)Part G – Chapter II-48

Guidelines for Examination in the EPO

March 2023

Hence, if an IgG is defined by fewer than its six CDRs, the claim will beobjected to under Art. 84 because it lacks essential technical features
unless it is experimentally shown that one or more of the six CDRs do notinteract with the antigen.
If CDRs are not defined by their specific sequence, but by reference to alarger heavy or light chain sequence, the numbering scheme, for example
Kabat, Chothia or IMGT, must also be indicated.
Since the three CDRs of each of the variable domains of the light andheavy chains of an IgG are normally responsible for binding to the antigen,the IgG, in order to be uniquely defined by its structure only and have its
characteristic binding specificity, needs to be defined by the number of
CDRs required for its binding to fulfil the requirements of Art. 84.
CDRs when not defined by their specific sequence must be definedaccording to a numbering scheme, for example, chosen from that of Kabat,
Chothia or IMGT.
If an IgG is defined by fewer than the six sequences of its CDRs, the claim
will be objected to under Art. 84 because it lacks an essential technicalfeature unless it is experimentally shown that one or more of the six CDRs
do not interact with the target epitope or if it concerns a specific antibody
format allowing for epitope recognition by fewer CDRs.
5.6.1.2 Definition by reference to the target antigen
An antibody can be functionally defined by the antigen it binds to, as longas the antigen is clearly defined in the claims. If the antigen is defined by aprotein sequence, no sequence variability and no open language (e.g. anantigen comprising …) can be used in the definition of the antigen.
Otherwise the subject-matter of the claim will be considered to lack novelty
over any known antibody because existing antibodies will bind to theundefined region of the target antigen.
Examples of accepted antigen-defined antibody claim wording are:–antibody binding to X;–

anti-X antibody;–

antibody reacting with X;–

antibody specific for antigen X or–

antibody binding to antigen X consisting of the sequence defined by
SEQ. ID. NO: y.

An antibody can also be defined by its ability to bind to a well-defined
antigen in combination with a negative feature as for example: "Antibody
binding to antigen X and not binding to antigen Y".

March 2023

Guidelines for Examination in the EPO

5.6.1.3 Definition by target antigen and further functional features
In addition to the functional definition by the antigen it binds to, claims
directed to antibodies can be further characterised by functional features
defining further properties of the antibodies; for example, the binding
affinity, neutralising properties, induction of apoptosis, internalisation ofreceptors, inhibition or activation of receptors (c.f. e.g. T 299/86,
Reasons 3 - 6, and T 1300/05, Reasons 4 - 7).
If an antibody is claimed exclusively by functional features and the prior art
discloses in an enabling manner an antibody directed to the same antigen
using an immunisation and screening protocol that arrives at antibodies
having the claimed properties, it has to be assumed that the prior-art
antibody inherently displays the same functional properties as the claimed
antibody, which thus lacks novelty (cf. G-VI, 6). On the other hand, if theantibody is defined by unusual parameters, care has to be taken that these
do not disguise a lack of novelty (F-IV, 4.11.1). In both these cases theburden of proof of novelty resides with the applicant.
If an antibody is defined exclusively by functional properties, it has to becarefully assessed whether the application provides an enabling disclosure
across the whole scope claimed and whether the functional definition
allows the skilled person to clearly determine the limits of the claim.
5.6.1.4 Definition by functional and structural features
Antibodies can also be defined by both functional properties and structuralfeatures. It is possible to claim an antibody characterised by the sequencesof both variable domains or CDRs with less than 100% sequence identity
when combined with a clear functional feature.
5.6.1.5 Definition by production process
Antibodies can be defined by the process of their production, i.e. either by
the immunisation protocol of a non-human animal with a well-characterised
antigen or by the specific cell line used to produce them; for more details
see F-IV, 4.12.
However, such a product-by-process definition, based on the immunisation
by an antigen comprising a sequence less than 100% identical to a definedsequence does not fulfil the requirements of Art. 84 because the use ofvariants renders the scope of the antibodies obtained by the immunisation
process unclear.
5.6.1.6 Definition by the epitope
An antibody may be defined also by its epitope, i.e. the set of specificamino acids of the antigen which are specifically recognised and bound by
the antibody.
However, since an antibody defined in this way cannot be easily comparedwith known antibodies binding to the same antigen, the same principles as
for the functional features apply (see G-II, 5.6.1.3).

Part G – Chapter II-49

Part G – Chapter II-50

Guidelines for Examination in the EPO

March 2023

If the epitope is a "linear epitope" (i.e. the antibody interacts with
continuous amino acids on the antigen), it needs to be defined as a clearly
limited fragment using closed wording (e.g. epitope consisting of).
If the epitope is "non-linear" or "discontinuous" (i.e. the antibody interacts
with multiple, distinct segments from the primary amino-acid sequence of
the antigen), the specific amino acid residues of the epitope need to beclearly identified.
The method for determining this discontinuous epitope must also be
indicated in the claim and the application must provide an enabling
disclosure allowing the skilled person to determine whether further
antibodies bind this epitope. The application must also enable theproduction without undue burden of additional antibodies binding to thesame epitope.
5.6.1.7 Definition by hybridoma
Antibodies may also be defined through a deposited hybridoma cell
producing the antibodies. The general requirements for deposited biologicalmaterials apply, see F-III, 6.3.
5.6.2 Inventive step of antibodies
The subject-matter of a claim defining a novel, further antibody binding to a
known antigen does not involve an inventive step unless a surprisingtechnical effect is shown by the application or unless there was no
reasonable expectation of success of obtaining antibodies having therequired properties (see also G-VII, 13). Examples of surprising technicaleffects when compared to known and enabled antibodies are, for example,
an improved affinity, an improved therapeutic activity, a reduced toxicity or
immunogenicity, an unexpected species cross-reactivity or a new type ofantibody format with proven binding activity.
If inventive step of a functionally defined antibody relies on an improved
property versus the enabled antibodies of the prior art, the main
characteristics of the method for determining the property must also be
indicated in the claim or indicated by reference to the description(F-IV, 4.11.1).
If the surprising technical effect involves the binding affinity, the structuralrequirements for conventional antibodies inherently reflecting this affinity
must comprise the required CDRs and the framework regions because theframework regions also can influence the affinity (T 1628/16).
If a novel antibody binds to the same antigen as known antibodies,
inventive step is not acknowledged solely on the basis that the novel
antibody is structurally different from the known antibodies. Arriving at
alternative antibodies exclusively by applying techniques known in the art isconsidered to be obvious to the skilled person. The fact that the structure of
the thus obtained alternative antibodies, i.e. their amino acid sequences, is
not predictable is not a reason for considering these antibodies as
non-obvious (see T 605/14, section 24; T 187/04, section 11).

March 2023

Guidelines for Examination in the EPO

Nevertheless, antibodies can be inventive if the application overcomes
technical difficulties in generating or manufacturing the claimed antibodies.

Part G – Chapter II-51

March 2023

Guidelines for Examination in the EPO

Part G – Chapter III-1

Chapter III – Industrial application
1. General remarks"An invention shall be considered as susceptible of industrial application if it
can be made or used in any kind of industry, including agriculture".
"Industry" is understood in its broad sense as including any physical activityof "technical character" (see G-I, 1) (see G-I, 2), i.e. an activity which
belongs to the useful or practical arts as distinct from the aesthetic arts; itdoes not necessarily imply the use of a machine or the manufacture of anarticle and could cover e.g. a process for dispersing fog or for converting
energy from one form to another. Thus, Art. 57 excludes from patentability
very few "inventions" which are not already excluded by the list in Art. 52(2)(see F-II, 1). One further class of "invention" which would be excluded,
however, would be articles or processes alleged to operate in a manner
clearly contrary to well-established physical laws, e.g. a perpetual motion
machine. An objection could arise under Art. 57 only in so far as the claim
specifies the intended function or purpose of the invention, but if, say, aperpetual motion machine is claimed merely as an article having aparticular specified construction, then an objection is made under Art. 83(see F-III, 3).

Art. 57

2. Method of testing
Methods of testing generally are regarded as inventions susceptible ofindustrial application and therefore patentable if the test is applicable to theimprovement or control of a product, apparatus or process which is itself
susceptible of industrial application. In particular, the utilisation of test
animals for test purposes in industry, e.g. for testing industrial products (forexample for ascertaining the absence of pyrogenetic or allergic effects) or
phenomena (for example for determining water or air pollution) would be
patentable.
3. Industrial application vs. exclusion under Art. 52(2)"Susceptibility of industrial application" is not a requirement that overrides
the restriction of Art. 52(2), e.g. an administrative method of stock control is
not patentable, having regard to Art. 52(2)(c), even though it could beapplied to the factory storeroom for spare parts. On the other hand,
although an invention must be "susceptible of industrial application" and thedescription must indicate, where this is not apparent, the way in which theinvention is thus susceptible (see F-II, 4.9), the claims need not necessarily
be restricted to the industrial application(s).
4. Sequences and partial sequences of genes
In general it is required that the description of a European patentapplication must, where this is not self-evident, indicate the way in which
the invention is capable of exploitation in industry. The invention claimed
must have such a sound and concrete technical basis that the skilled
person can recognise that its contribution to the art could lead to practical
exploitation in industry (see T 898/05). In relation to sequences and partial
sequences of genes, this general requirement is given specific form in thatthe industrial application of a sequence or a partial sequence of a genemust be disclosed in the patent application. A mere nucleic acid sequence
without indication of a function is not a patentable invention

Rule 42(1)(f)Rule 29(3)Part G – Chapter III-2

Guidelines for Examination in the EPO

March 2023

(EU Dir. 98/44/EC, rec. 23). In cases where a sequence or partial sequenceof a gene is used to produce a protein or a part of a protein, it is necessary
to specify which protein or part of a protein is produced and what function
this protein or part of a protein performs. Alternatively, when a nucleotide
sequence is not used to produce a protein or part of a protein, the function
to be indicated could e.g. be that the sequence exhibits a certaintranscription promoter activity.

March 2023

Guidelines for Examination in the EPO

Part G – Chapter IV-1

Chapter IV – State of the art
1. General remarks and definition
An invention is "considered to be new if it does not form part of the state of
the art". The "state of the art" is defined as "everything made available tothe public by means of a written or oral description, by use, or in any otherway, before the date of filing of the European patent application". The widthof this definition is to be noted. There are no restrictions whatever as to thegeographical location where or the language or manner in which therelevant information was made available to the public; also no age limit isstipulated for the documents or other sources of the information. There are,however, certain specific exclusions (see G-V). However, since the "state of
the art" available to the examiner will mainly consist of the documents listed
in the search report, G-IV, 3 to 6, deals with the question of publicavailability only in relation to written description (either alone or in
combination with an earlier oral description or use).

Art. 54(1) and (2)The principles to be applied in determining whether other kinds of prior art(which could be introduced into the proceedings e.g. by a third party under
Art. 115) have been made available to the public are set out in
G-IV, 7.1 to 7.4.
For the examination of the novelty of claimed subject-matter, see G-VI.
A written description, i.e. a document, is regarded as made available to the
public if, at the relevant date, it was possible for members of the public togain knowledge of the content of the document and there was no bar of
confidentiality restricting the use or dissemination of such knowledge. For
instance, German utility models ("Gebrauchsmuster") are already publicly
available as of their date of entry in the Register of utility models("Eintragungstag"), which precedes the date of announcement in the Patent
Bulletin ("Bekanntmachung im Patentblatt"). The search report also cites
documents in which doubts with regard to the fact of public availability (for"in-house state of the art", see F-II, 4.3) and doubts concerning the precise
date of publication (see B-VI, 5.6 and G-IV, 7.5) of a document have not, or
not fully, been removed (see B-VI, 5.6 and G-IV, 7.5).
If the applicant contests the public availability or assumed date of
publication of the cited document, the examiner needs to consider whether
to investigate the matter further. If the applicant shows sound reasons for
doubting whether the document forms part of the "state of the art" inrelation to the application and any further investigation does not produce
evidence sufficient to remove that doubt, the examiner does not pursue thematter further. The only other problem likely to arise for the examiner iswhere:(i)a document reproduces an oral description (e.g. a public lecture) or
gives an account of a prior use (e.g. display at a public exhibition);andArt. 52(1)Part G – Chapter IV-2

Guidelines for Examination in the EPO(ii)

March 2023

only the oral description or lecture was publicly available before the"date of filing" of the European application, the document itself being
published on or after this date.

In such cases, the examiner starts with the assumption that the document
gives a true account of the earlier lecture, display or other event andtherefore regards the earlier event as forming part of the "state of the art".
If, however, the applicant gives sound reasons for contesting the truth of
the account given in the document then again the examiner does not
pursue the matter further.
2. Enabling disclosure
Subject-matter can only be regarded as having been made available to the
public, and therefore as comprised in the state of the art pursuant toArt. 54(1), if the information given is sufficient to enable the skilled person,at the relevant date (see G-VI, 3) and taking into account the common
general knowledge in the field at that time, to practise the technicalteaching which is the subject of the disclosure (see T 26/85, T 206/83 andT 491/99).
Where a prior-art document discloses subject-matter which is relevant to
the novelty and/or inventive step of the claimed invention, the disclosure ofthat document must be such that the skilled person can reproduce that
subject-matter using common general knowledge (see G-VII, 3.1).
Subject-matter does not necessarily belong to the common generalknowledge simply because it has been disclosed in the state of the art: inparticular, if the information can only be obtained after a comprehensive
search, it cannot be considered to belong to the common generalknowledge and cannot be used to complete the disclosure (see T 206/83).
For example, a document discloses a chemical compound (identified byname or by structural formula), indicating that the compound may be
produced by a process defined in the document itself. The document,
however, does not indicate how to obtain the starting materials and/or
reagents used in the process. If the skilled person moreover cannot obtainthese starting materials or reagents on the basis of common generalknowledge (e.g. from text books), the document is insufficiently disclosedwith respect to that compound. Hence, it is not considered to belong to thestate of the art according to Art. 54(2) (at least in as far as it relates to thatcompound) and consequently it does not prejudice the patentability of theclaimed invention.
If, on the other hand, the skilled person knows how to obtain the starting
materials and reagents (e.g. they are commercially available, or are
well-known and appear in reference text books), the document issufficiently disclosed with respect to the compound and therefore belongs
to the state of the art according to Art. 54(2). The examiner can then validly
rely upon this document to raise objections against the claimed invention.

Art. 89

3. Date of filing or priority date as effective date
For the purposes of Art. 54(2) and (3), the date of priority counts as thedate of filing for both the European application being examined andMarch 2023

Guidelines for Examination in the EPO

Part G – Chapter IV-3

conflicting European applications under Art. 54(3), on condition that therespective priority is valid (Art. 89). The "date of filing" in Art. 54(2) and (3)is to be interpreted as meaning the date of priority in appropriate cases(see F-VI, 1.2). Different claims, or alternative subject-matters claimed in
one claim, may have different effective dates, i.e. the date of filing or (oneof) the claimed priority date(s). The question of novelty must be consideredagainst each claim (or part of a claim). The state of the art in relation to one
claim or one part of a claim may include matter, e.g. an intermediate
document (see B-X, 9.2.4), which cannot be cited against another claim or
another alternative subject-matter encompassed by the same claim
because it has an earlier effective date.
The priority right of the application being examined or the patent being
opposed may also be lost as a result of failure to provide a translation of
the priority document when requested in accordance with Rule 53(3)(see A-III, 6.8 and subsections).
Of course, if all the matter in the state of the art was made available to the
public before the date of the earliest priority document, the examiner neednot (and must not) be concerned with the allocation of effective dates.
If the applicant files missing parts of the description, or drawings(see A-II, 5.1), late under Rule 56, the accorded date of the application isthe date of filing of these missing elements under Rule 56(2) (see A-II, 5.3)
unless they are completely contained in the priority document and therequirements given in Rule 56(3) are satisfied (see A-II, 5.4), in which casethe original filing date is maintained. The date of the application as a wholeis thus either the date of filing of the missing elements or the original filingdate. In the case of erroneously filed documents, the same applies if theapplicant files a correct description, claims or drawings, or parts thereof,
under Rule 56a (see A-II, 6).

Rule 56
Rule 56a

Claims filed in response to a communication under Rule 58 do not result ina change in the filing date of the application (see A-III, 15), as they are
consideredasamendments
totheapplicationasfiled(see H-IV, 2.2.4 H-IV, 2.2.3).

Rule 58

4. Documents in a non-official language
If the applicant(i)disputes the relevance of a document in a non-official language citedin the search report (for procedure at the search stage,see B-X, 9.1.2 and 9.1.3), and(ii)gives specific reasons,the examiner needs to consider whether, in the light of these reasons andof the other prior art available, it is justified to pursue the matter. If so, theexaminer must obtain a translation of the document (or merely the relevant
part of it if that can be easily identified). If, after the translation, thedocument remains relevant, the examiner sends a copy of the translation to
the applicant with the next official communication.

Part G – Chapter IV-4

Guidelines for Examination in the EPO

March 2023

The requirement to provide a translation of a document in a non-official
language also applies if the applicant is proficient in the language
concerned. The translation enables the boards of appeal to examine
whether the examining division's decision was justified (T 655/13).
4.1 Machine translations
In order to overcome the language barrier constituted by a document in an
unfamiliar non-official language, it might be appropriate for the examiner torely on a machine translation of said document (see T 991/01), which issent to the applicant (see B-X, 9.1.3). If only part of the translated
document is relevant, the particular passage relied upon must be identified(see B-XI, 3.2). A translation has to serve the purpose of rendering themeaning of the text in a familiar language (see B-X, 9.1.3). Therefore meregrammatical or syntactical errors which have no impact on the possibility ofunderstanding the content do not hinder its qualification as a translation(see T 287/98).
A general statement that machine translations as such cannot be trusted is
not sufficient to invalidate the probatory value of the translation. If a party
objects to the use of a specific machine translation, that party bears theburden of adducing evidence (in the form of, for instance, an improved
translation of the whole or salient parts of the document) showing theextent to which the quality of the machine translation is defective andshould therefore not be relied upon.
When the party provides substantiated reasoning for questioning theobjections raised based on the translated text, the examiner must takethese reasons into account, similarly to when the publication date isquestioned (see G-IV, 7.5.3).
5.

Art. 54(3)Art. 56
Art. 85
Art. 89

Conflict with other European applications

5.1 State of the art pursuant to Art. 54(3)The state of the art also comprises the content of other European
applications filed or validly claiming a priority date earlier than – butpublished under Art. 93 on or after – the date of filing or valid date of priorityof the application being examined. The date of priority counts as the date offiling for both the European application being examined and conflicting
European applications under Art. 54(3), on condition that the respective
priority is valid (Art. 89). Such earlier applications are part of the state of theart only when considering novelty and not when considering inventive step.
The "date of filing" referred to in Art. 54(2) and (3) is thus to be interpreted
as meaning the date of priority in appropriate cases (see F-VI, 1.2). By the"content" of a European application is meant the whole disclosure, i.e. thedescription, drawings and claims, including:(i)any matter explicitly disclaimed (with the exception of disclaimers forunworkable embodiments);(ii)

any matter for which an allowable reference (see F-III, 8, penultimate
paragraph) to other documents is made; andMarch 2023

(iii)

Guidelines for Examination in the EPO

prior art in so far as explicitly described.

However, the "content" does not include any priority document (the purposeof such document being merely to determine to what extent the priority dateis valid for the disclosure of the European application (see F-VI, 1.2)) nor, inview of Art. 85, the abstract (see F-II, 2).
It is important to note that it is the content of the earlier application as filed
which is to be considered when applying Art. 54(3). Where an application is
filed in a non-official language as permitted by Art. 14(2) (see A-VII, 1.1), it
may happen that matter is erroneously omitted from the translation in thelanguage of the proceedings and not published under Art. 93 in that
language. Even in this case, it is the content of the original text which isrelevant for the purposes of Art. 54(3).
5.1.1 Requirements
Whether a published European application can be a conflicting application
under Art. 54(3) is determined firstly by its filing date and the date of its
publication; the former must be before the filing or valid priority date of theapplication under examination, the latter must be on or after that date. If the
published European application validly claims priority, the priority datereplaces the filing date (Art. 89) for that subject-matter in the application
which corresponds to the priority application. If a priority claim wasabandoned or otherwise lost with effect from a date prior to publication, thefiling date and not the priority date is relevant, irrespective of whether or not
the priority claim might have conferred a valid priority right.
Further it is required that the conflicting application was still pending at its
publication date (see J 5/81). If the application was withdrawn or otherwise
lost before the date of publication, but published because the preparations
for publication had been completed, the publication has no effect under
Art. 54(3), but only under Art. 54(2). Art. 54(3) must be interpreted as
referring to the publication of a "valid" application, i.e. a European patentapplication in existence at its publication date.
Changes taking effect after the date of publication (e.g. withdrawal of adesignation or withdrawal of the priority claim or loss of the priority right forother reasons) do not affect the application of Art. 54(3) (see H-III, 4.2 fortransitional
provisions
concerning
Art. 54(4)EPC 1973
and
A-III, 11.1 and 11.3 for transitional arrangements concerning non-payment
of designation fees for applications filed before 1 April 2009).
5.1.2 Accorded date of filing and content of the application still
subject to review
The prior art considered by the examiner might comprise documents(European or international patent applications) for which the accorded dateof filing and the content of the application on the filing date may still be
under review before the EPO. This might be the case, for instance, when:(i)a European patent application contains parts of the description
and/or drawings filed under Rule 56 or (parts of) claims, description
and/or drawings filed under Rule 56a, orPart G – Chapter IV-5

Part G – Chapter IV-6

Guidelines for Examination in the EPO(ii)

March 2023

an international patent application contains elements or parts of thedescription, drawings or claims filed under Rule 20.5, 20.5bis or
20.6 PCT.

The examiner checks whether a final decision on the accorded date of filingand on the content of the application on the filing date has already beentaken before considering the documents as being state of the art under
Art. 54(3). The content of the application determined according to Rules 56
or 56a EPC or Rules 20.5, 20.5bis or 20.6 PCT is considered as thecontent of the application as filed within the meaning of Art. 54(3) EPC.
Note that under Rule 56a(4) EPC and Rule 20.5bis(d) PCT, the erroneously
filed application documents or parts remain in the application (see A-II, 6.4
and PCT-EPO Guidelines A-II, 6.2).
If the date of filing and/or the content of the disclosure have/has not yet
finally been determined established, the examiner temporarily deals withthe documents (if relevant for assessing the patentability of the claimed
subject-matter) as if all application documents and parts thereof had been
filed on the date of filing initially accorded to the application their accorded
date of filing were correct, revisiting the issue at a later point in time.

Art. 153
Rule 165

5.2 Euro-PCT applications
The above principles also apply to PCT applications designating EP, butwith an important difference. Art. 153(5), in conjunction with Rule 165,
makes it clear that a PCT application is included in the state of the art forthe purposes of Art. 54(3) if the PCT applicant has paid the required filingfee under Rule 159(1)(c) and has supplied the PCT application to the EPO
in English, French or German (this means that a translation is required
where the PCT application was published in Japanese, Chinese, Spanish,
Russian, Korean, Portuguese or Arabic).
Therefore, it is not required that all conditions for entry into the European
phase be fulfilled for a Euro-PCT application to be considered a conflicting
European application under Art. 54(3) EPC.
5.3 Commonly designated states
See H-III, 4.2 for the transitional applicability of Art. 54(4) EPC 1973 toapplications which were pending on 13 December 2007 and patents which
had already been granted on that date.
5.4 Double patenting
As acknowledged by the Enlarged Board, the prohibition on double
patenting is applicable under Art. 125 (G 4/19). It is a principle ofprocedural law generally recognised in the contracting states that two
patents cannot be granted to the same applicant with claims directed to forthe same subject-matter.
The prohibition of double patenting applies to three types of combinationsof European applications by the same applicant: two applications filed on
the same day, parent and divisional applications, or an application and its
priority application.

March 2023

Guidelines for Examination in the EPO

Part G – Chapter IV-7

It is permissible to allow an applicant to proceed with two applications
having the same description which do not claim the same subject-matter(see also T 2461/10).In cases where there are two or more European
applications from the same applicant designating the same state or states
and the claims of those applications have the same filing or priority dateand relate to the same invention, the applicant should be required toperform one of the following: amend one or more of the applications in sucha manner that the subject-matter of the claims of the applications is not
identical, or withdraw overlapping designations, or choose which one ofthose applications is to proceed to grant. If the applicant does not do so,
once one of the applications is granted, the other(s) will be refused under
Art. 97(2) in conjunction with Art. 125 (G 4/19). If the claims of those
applications are merely partially overlapping, no objection should be raised(see T 877/06). Should two applications of the same effective date bereceived from two different applicants, each must be allowed to proceed as
though the other did not exist.
6. Conflict with national rights of earlier date
Where a national right of an earlier date exists in a contracting state
designated in the application, there are several possibilities of amendment
open to the applicant. First, that designation may be withdrawn from theapplication for the contracting state of the national right of earlier date.
Second, for such state, the applicant may file claims which are different
from the claims for the other designated states (see H-II, 3.3 and H-III, 4.4).
Third, the applicant can limit the existing set of claims in such a mannerthat the national right of earlier date is no longer relevant.
In opposition or limitation proceedings, the proprietor may file claims which
are different from the claims for the other contracting states or limit theexisting set of claims in such a manner that the national right of earlier dateis no longer relevant (see H-III, 4.4 and D-X, 10.1).
In opposition proceedings, the proprietor may also request the revocation of
the patent for the contracting state of the national right of earlier date (seeD-I, 3; D-VIII, 1.2.5; E-VIII, 8.4). However, this is not possible in limitation or
revocation proceedings (see D-X, 3).
Amendment of the application to take account of prior national rights isneither required nor suggested (see also H-III, 4.4). However, if the claims
have been amended, then amendment of the description and drawings isrequired if necessary to avoid confusion.
7. State of the art made available to the public "by means of awritten or oral description, by use, or in any other way"
7.1 Types of use and instances of state of the art made available inany other way
Use may be constituted by producing, offering, marketing or otherwise
exploiting a product, or by offering or marketing a process or its application
or by applying the process. Marketing may be effected, for example, bysale or exchange.

Rule 138

Part G – Chapter IV-8

Guidelines for Examination in the EPO

March 2023

The state of the art may also be made available to the public in other ways,
as for example by demonstrating an object or process in specialist training
courses or on online media platforms.
Availability to the public in any other way also includes all possibilities
which technological progress may subsequently offer of making available
the aspect of the state of the art concerned.
Instances of public prior use or availability in any other way will typically beraised in opposition proceedings. They may rarely arise in examination
proceedings.
7.2 Matters to be determined by the division as regards prior use
When dealing with an allegation that an object or process has been used insuch a way that it is comprised in the state of the art (prior use), the division
will have to determine the following details:(i)the date on which the alleged use occurred, i.e. whether there wasany instance of use before the relevant date (prior use);(ii)

what has been used, in order to determine the degree of similarity
between the object used and the subject-matter of the European
patent; and(iii)

all the circumstances relating to the use, in order to determine
whether and to what extent it was made available to the public, as forexample the place of use and the form of use. These factors areimportant in that, for example, the details of a demonstration of amanufacturing process in a factory or of the delivery and sale of a
product may well provide information as regards the possibility of thesubject-matter having become available to the public.

On the basis of the submissions and the evidence already available, e.g.
documents confirming sale, or affidavits related to the prior use, the division
will first establish the relevance of the alleged prior use. If on the basis of
this assessment it is of the opinion that the prior use is sufficiently
substantiated and relevant, and if the prior use is not contested, the division
may take a decision using the submissions and the evidence alreadyavailable. If the prior use or certain circumstances relating to it arecontested, the division will need to take further evidence (e.g. hearing
witnesses or performing an inspection) for those facts which are relevant tothe case and which cannot yet be considered proven on the basis of theevidence already submitted. According to the circumstances of a particularcase, such further evidence might have to be submitted by the party(ies).
Evidence is always taken under participation of the party(ies), normally inoral proceedings. For details concerning means of evidence see E-IV, 1.2.
7.2.1 General principles
Subject-matter is regarded as made available to the public by use or in any
other way if, at the relevant date, it was possible for members of the public
to gain knowledge of the subject-matter and there was no bar of
confidentiality restricting the use or dissemination of such knowledge (seeMarch 2023

Guidelines for Examination in the EPO

also G-IV, 1 with reference to written descriptions). This may, for example,
arise if an object is unconditionally sold to a member of the public, since thebuyer thereby acquires unlimited possession of any knowledge which may
be obtained from the object. Even where in such cases the specific featuresof the object may not be ascertained from an external examination, but only
by further analysis, those features are nevertheless to be considered ashaving been made available to the public. This is irrespective of whether or
not particular reasons can be identified for analysing the composition orinternal structure of the object. These specific features only relate to theintrinsic features. Extrinsic characteristics, which are only revealed when
the product is exposed to interaction with specifically chosen outside
conditions, e.g. reactants or the like, in order to provide a particular effect or
result or to discover potential results or capabilities, therefore point beyond
the product per se as they are dependent on deliberate choices being
made. Typical examples are the first or further application as apharmaceutical product of a known substance or composition(see Art. 54(4) and (5)) and the use of a known compound for a particularpurpose, based on a new technical effect (see G 2/88). Thus, suchcharacteristics cannot be considered as already having been madeavailable to the public (see G 1/92). T 1833/14 contains an example wherea commercially available product was found by the board not to have been
made available to the public as the skilled person was not able toreproduce it without undue burden, i.e. the alleged public prior use did notamount to an enabling disclosure.
If, on the other hand, an object could be seen in a given place (a factory, forexample) to which members of the public not bound to secrecy, including
persons with sufficient technical knowledge to ascertain the specificfeatures of the object, had access, all knowledge which an expert was able
to gain from a purely external examination is to be regarded as having been
made available to the public. In such cases, however, all concealedfeatures which could be ascertained only by dismantling or destroying theobject will not be deemed to have been made available to the public.
7.2.2 Agreement on secrecy
The basic principle to be adopted is that subject-matter has not been madeavailable to the public by use or in any other way if there is an express ortacit agreement on secrecy which has not been broken.
In order to establish whether there is a tacit agreement, the division must
consider the particular circumstances of the case especially whether one ormore parties involved in the prior use had an objectively recognisableinterest in maintaining secrecy. If only some of the parties had such aninterest, it must be established if the other parties implicitly accepted to act
accordingly. For example, this is the case when the other parties could be
expected to maintain secrecy in accordance with the usual businesspractice in the relevant industry. For establishing a tacit agreement
important aspects to be considered are, inter alia, the commercial
relationship between the parties and the exact object of the prior use. The
following may be indicators of a tacit secrecy agreement: A parent
company – subsidiary relationship, a relationship of good faith and trust, ajoint venture, the delivery of test specimens. The following may bePart G – Chapter IV-9

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March 2023

indicators of the absence of such an agreement: An ordinary commercial
transaction, the sale of parts for serial production.
As a rule, the general standard "balance of probabilities" applies. However,
if practically all evidence lies within the power of the party bearing theburden of proof, the facts must be proven beyond reasonable doubt. For
example, an opponent alleging that subject-matter was made available
without any express or tacit agreement on secrecy must substantiate and, if
contested, convincingly prove the circumstances from which publicavailability can be derived (e.g. ordinary sale to a customer, parts supplied
for serial production). The proprietor can challenge this by demonstrating
inconsistencies and gaps in the chain of proof or by substantiating facts
from which secrecy can be derived (e.g. joint development, samples for test
purposes). If these elements lead to reasonable doubts as to publicavailability, public prior use has not been established.
Art. 55(1)(a)For the particular case of a non-prejudicial disclosure arising from anevident abuse in relation to the applicant, see G-IV, 7.3.2 and G-V.
7.2.3 Use on non-public property
As a general rule, use on non-public property, for example in factories andbarracks, is not considered as use made available to the public, because
company employees and soldiers are usually bound to secrecy, save incases where the objects or processes used are exhibited, explained or
shown to the public in such places, or where specialists not bound tosecrecy are able to recognise their essential features from the outside.
Clearly the above-mentioned "non-public property" does not refer to thepremises of a third party to whom the object in question was unconditionallysold or the place where the public could see the object in question or
ascertain features of it (see the examples in G-IV, 7.2.1 above).
7.2.4 Example of the accessibility of objects used
A press for producing light building (hard fibre) boards was installed in afactory shed. Although the door bore the notice "Unauthorised persons not
admitted", customers (in particular dealers in building materials and clients
who were interested in purchasing light building boards) were given theopportunity of seeing the press although no form of demonstration or
explanation was given. An obligation to secrecy was not imposed as,
according to witnesses, the company did not consider such visitors as apossible source of competition. These visitors were not genuine specialists,
i.e. they did not manufacture such boards or presses, but were not entirely
laymen either. In view of the simple construction of the press, the essential
features of the invention concerned were bound to be evident to anyone
observing it. There was therefore a possibility that these customers, and inparticular the dealers in building materials, would recognise these essential
features of the press and, as they were not bound to secrecy, they would
be free to communicate this information to others.
7.2.5 Example of the inaccessibility of a process
The subject of the patent concerns a process for the manufacture of a
product. As proof that this process had been made available to the public
by use, a similar already known product was asserted to have been

March 2023

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Part G – Chapter IV-11

produced by the process claimed. However, it could not be clearly
ascertained, even after an exhaustive examination, by which process it had
been produced.
7.3

State of the art made available by means of oral description

7.3.1 Cases of oral description
The state of the art is made available to the public by oral description whenfacts are unconditionally brought to the knowledge of members of the
public, such as in the course of a conversation or a lecture or by means of
television, podcast or sound reproduction equipment.
7.3.2 Non-prejudicial oral description
The state of the art will not be affected by oral descriptions made by and to
persons who were bound to, and preserved, secrecy, nor by an oral
disclosure which was made no earlier than six months before the filing of
the European patent application and which derives directly or indirectlyfrom an evident abuse in relation to the applicant or that party's legal
predecessor. In determining whether evident abuse has occurred,note G-V, 3.
7.3.3 Matters to be determined by the division in cases of oral
description
Once again, in such cases the following details will have to be determined:(i)when the oral description took place;(ii)

what was described orally; and(iii)

whether the oral description was made available to the public; thiswill also depend on the type of oral description (conversation, lecture)and on the place at which the description was given (public meeting,factory hall; see also G-IV, 7.2(iii)).

7.3.4 Standard of proof
Unlike a written document, the contents of which are fixed and can be readagain and again, an oral presentation is ephemeral. Therefore, thestandard of proof for ascertaining the content of an oral disclosure is high.
Whether the amount of evidence provided is sufficient to establish thecontent of the oral disclosure based on this standard of proof has to beevaluated on a case-by-case basis and depends on the quality of theevidence in each case. However, evidence from the lecturer alone usually
does not provide a sufficient basis for determining the content of the oral
disclosure.
7.4 State of the art made available to the public in writing and/or by
any other means
For this state of the art, details equivalent to those defined in G-IV, 7.3.3
have to be determined if they are not clear from the written or otherdisclosure itself or if they are contested by a party.

Art. 54(2)Art. 55(1)(a)Part G – Chapter IV-12

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March 2023

If information is made available by means of a written description and use
or by means of a written and oral description, but only the use or the oral
description is made available before the relevant date, then in accordancewith G-IV, 1, the subsequently published written description may bedeemed to give a true account of that oral description or use unless the
proprietor of the patent can give good reason why this is not the case. In
this case, the opponent must adduce proof to the contrary in respect of thereasons given by the proprietor of the patent. Caution must be exercisedwhen considering the type of evidence presented to substantiate thecontent of an oral description. For example, a report of a lecture written by
the actual person who delivered the talk may not be an accurate account ofwhat was in fact conveyed to the public. Similarly, a script from which thelecturer purportedly read may not actually have been completely andcomprehensibly read (see T 1212/97).
In opposition, if the publication date of a document originating from the
opponent is in dispute, the opponent must prove that date beyond
reasonable doubt. However, if the document is a brochure for advertising, it
must be taken into account that such brochures are not normally kept
secret for long after printing (T 2451/13, T 804/05, T 743/89).
7.5 Internet disclosures
As a matter of principle, disclosures on the internet form part of the state of
the art according to Art. 54(2). Information disclosed on the internet or in
online databases is considered to be publicly available as of the date theinformation was publicly posted. Internet websites often contain highly
relevant technical information. Certain information may even be available
only on the internet from such websites. This includes, for example, online
manuals and tutorials for software products (such as video games) or otherproducts with a short life cycle. Hence for the sake of a valid patent it isoften crucial to cite publications only obtainable from such internet
websites.
7.5.1 Establishing the publication date
Establishing a publication date has two aspects. It must be assessed
separately whether a given date is indicated correctly and whether thecontent in question was indeed made available to the public as of that date.
The nature of the internet can make it difficult to establish the actual dateon which information was made available to the public: for instance, not all
web pages mention when they were published. Also, websites are easily
updated, yet most do not provide any archive of previously displayedmaterial, nor do they display records which enable members of the public –including examiners – to establish precisely what was published and when.
Neither restricting access to a limited circle of people (e.g. by password
protection) nor requiring payment for access (analogous to purchasing abook or subscribing to a journal) prevent a web page from forming part ofthe state of the art. It is sufficient if the web page is in principle available
without any bar of confidentiality.

March 2023

Guidelines for Examination in the EPO

Finally, it is theoretically possible to manipulate the date and content of aninternet disclosure (as it is with traditional documents). However, in view ofthe sheer size and redundancy of the content available on the internet, it isconsidered very unlikely that an internet disclosure discovered by an
examiner has been manipulated. Consequently, unless there are specificindications to the contrary, the date can be accepted as being correct.
7.5.2 Standard of proof
When an internet document is cited against an application or patent, thesame facts are to be established as for any other piece of evidence,
including standard paper publications (see G-IV, 1). This evaluation ismade according to the principle of "free evaluation of evidence" (seeT 482/89 and T 750/94). That means that each piece of evidence is given
an appropriate weight according to its probative value, which is evaluated inview of the particular circumstances of each case. The standard forassessing these circumstances is the balance of probabilities. According tothis standard, it is not sufficient that the alleged fact (e.g. the publicationdate) is merely probable; the examining division must be convinced that it iscorrect. It does mean, however, that proof beyond reasonable doubt ("up to
the hilt") of the alleged fact is not required.
The publication dates of internet disclosures submitted by a party to
opposition proceedings are assessed according to the same principles as
are applied in examination proceedings, i.e. they are assessed in view ofthe specific circumstances of the case. In particular, the timing of thesubmission as well as the interests of the party submitting the disclosure
are to be taken into account.
In many cases, internet disclosures contain an explicit publication date
which is generally considered reliable. Such dates are accepted at facevalue, and the burden of proof will be on the applicant to show otherwise.
Circumstantial evidence may be required to establish or confirm thepublication date (see G-IV, 7.5.4). If the examiner comes to the conclusionthat – on the balance of probabilities – it has been established that a
particular document was available to the public at a particular date, thisdate is used as publication date for the purpose of examination.
7.5.3 Burden of proof
It is a general principle that, when raising objections, the burden of proof
lies initially with the examiner. This means that objections must be
reasoned and substantiated, and must show that, on the balance of
probabilities, the objection is well-founded. If this is done, it is then up to theapplicant to prove otherwise – the burden of proof shifts to the applicant.
If an applicant provides reasons for questioning the alleged publication dateof an internet disclosure, the examiner will have to take these reasons into
account. If the examiner is no longer convinced that the disclosure forms
part of the state of the art, this disclosure will not be used further as prior art
against the application unless the examiner is able to present further
evidence to maintain the disputed publication date.

Part G – Chapter IV-13

Part G – Chapter IV-14

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March 2023

The later the examiner sets out to obtain such evidence, the more difficult it
may become. The examiner has to judge whether it is worth spending ashort amount of time at the search stage to find further evidence in supportof the publication date.
If an applicant refutes the publication date of an internet disclosure with noreasoning or merely with generic statements about the reliability of internet
disclosures, this argument will be given minimal weight and is therefore
unlikely to sway the examiner's opinion.
While the dates and content of internet disclosures can be taken at facevalue, there are of course differing degrees of reliability. The more reliablea disclosure, the harder it will be for the applicant to prove that it isincorrect. The following sections look at the reliability of various popular
types of internet disclosure.
7.5.3.1 Technical journals
Of particular importance for examiners are online technical journals fromscientific publishers (e.g. IEEE, Springer, Derwent). The reliability of thesejournals is the same as that of traditional paper journals, i.e. very high.
It should be noted that the internet publication of a particular issue of ajournal may be earlier than the date of publication of the corresponding
paper version. Furthermore, some journals pre-publish on the internet
manuscripts which have been submitted to them, but which have not yet
been published, and in some cases before they have even been approvedfor paper publication (for example, the "Geophysics" journal). If the journal
then does not approve the manuscript for publication, this pre-publication of
the manuscript may be the only disclosure of its content. Examiners mustalso remember that the pre-published manuscript may differ from the final,
published version.
Where the given publication date of an online journal publication is toovague (e.g. only the month and year is known), and the most pessimistic
possibility (the last day of the month) is too late, the examiner may request
the exact publication date. Such a request may be made directly through acontact form that the publisher may offer on the internet, or via the EPO
library.
7.5.3.2 Other "print equivalent" publications
Many sources other than scientific publishers are generally deemed toprovide reliable publication dates. These include for example publishers ofnewspapers or periodicals, or television or radio stations. Academic
institutions (such as academic societies or universities), internationalorganisations (such as the European Space Agency ESA), publicorganisations (such as ministries or public research agencies) or
standardisation bodies also typically fall into this category.
Some universities host so-called eprint archives to which authors submit
reports on research results in electronic form before they are submitted or
accepted for publication by a conference or journal. In fact, some of thesereports are never published anywhere else. The most prominent suchMarch 2023

Guidelines for Examination in the EPO

archive is known as arXiv.org (arxiv.org, hosted by the Cornell University
Library), but several others exist, e.g. the Cryptology eprint archive(eprint.iacr.org, hosted by the International Association for Cryptology
Research). Some such archives crawl the internet to automatically retrieve
publications which are publicly available from researchers' web pages, suchas
CiteseerXor
ChemXseer(citeseerx.ist.psu.edu
andchemxseer.ist.psu.edu, both hosted by Pennsylvania State University).
Companies, organisations or individuals use the internet to publish
documents that had previously been published on paper. These include
manuals for software products such as video games, handbooks for
products such as mobile phones, product catalogues or price lists andwhite papers on products or product families. Evidently, most of these
documents address the public – e.g. actual or potential customers – andare thus meant for publication. Hence the date given can be taken as adate of publication.
7.5.3.3 Non-traditional publications
The internet is also used to exchange and publish information in ways
which did not exist before, via, for example, Usenet discussion groups,
blogs, email archives of mailing lists or wiki pages. Documents obtained
from such sources also constitute prior art, although it may be more
involved to establish their publication date, and their reliability may vary.
The content of a transmitted email cannot be considered to be public
merely for the reason that it could have been intercepted (T 2/09).
Computer-generated timestamps (usually seen, for example, on blogs,
Usenet or the version history available from wiki pages) can be considered
as reliable publication dates. While such dates could have been generated
by an imprecise computer clock, this should be weighed against the factthat in general many internet services rely on accurate timing and will often
stop functioning if time and date are incorrect. In the absence of indications
to the contrary, the frequently used "last modified" date can be treated as
the publication date.
7.5.4 Disclosures which have no date or an unreliable date
Where an internet disclosure is relevant for examination but does not giveany explicit indication of the publication date in the text of the disclosure, or
if an applicant has shown that a given date is unreliable, the examiner may
try to obtain further evidence to establish or confirm the publication date.
Specifically, the examiner may consider using the following information:(a)Information relating to a web page available from an internetarchiving service. The most prominent such service is the Internet
Archive accessible through the so-called "Wayback Machine"(www.archive.org). The fact that the Internet Archive is incomplete
does not detract from the credibility of the data it does archive. It isalso noted that legal disclaimers relating to the accuracy of any
supplied information are routinely used on websites (even respectedsources of information such as Espacenet or IEEE), and thesePart G – Chapter IV-15

Part G – Chapter IV-16

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March 2023

disclaimers are not to be taken to reflect negatively on the websites'
actual accuracy.
(b)Timestamp information relating to the history of modifications applied
to a file or web page (for example, as available for wiki pages suchas Wikipedia and in version control systems as used for distributed
software development).

(c)Computer-generated timestamp information as available from file
directories or other repositories, or as automatically appended tocontent (e.g. forum messages and blogs).

(d)Indexing dates given to the web page by search engines (see also
T 1961/13). These will be later than the actual publication date of thedisclosure, since the search engines take some time to index a new
website.

(e)Information relating to the publication date embedded in the internet
disclosure itself. Date information is sometimes hidden in the
programming used to create the website but is not visible in the web
page as it appears in the browser. Examiners may, for example,
consider the use of computer forensic tools to retrieve such dates. In
order to allow a fair evaluation of the accuracy of the date by both theapplicant and the examiner, these dates can be used only if theexaminer knows how they were obtained and can communicate thisto the applicant.

(f)Information about replication of the disclosure at several sites (mirror
sites) or in several versions.

It may also be possible to make enquiries with the owner or the author of
the website when trying to establish the publication date to a sufficientdegree of certainty. The probative value of statements so obtained will haveto be assessed separately.
If no date can be obtained (other than the date of retrieval by the examiner,
which will be too late for the application in question), the disclosure cannot
be used as prior art during examination. If a publication, although undated,
is highly relevant to the invention and can therefore be considered to be ofinterest to the applicant or third parties, it may be cited in the search reportas an "L" document. The search report and the written opinion must explain
why this document was cited. Citing the disclosure will also make it citableagainst future applications, using the date of retrieval as the date of
publication.
7.5.5 Problematic cases
Web pages are sometimes divided into frames the content of which isdrawn from different sources. Each of these frames may have its own
publication date which may have to be checked. In an archiving system, forinstance, it may happen that one frame contains the archived information
with an old publishing date whereas other frames contain commercials
generated at the time of retrieval. The examiner must ensure that the rightMarch 2023

Guidelines for Examination in the EPO

publication date is used, i.e. that the cited publication date refers to theintended content.
When a document retrieved from the Internet Archive contains links, there
is no guarantee that the links point to documents archived on the samedate. It may even happen that the link does not point to an archived page atall but to the current version of the web page. This may in particular be thecase for linked images, which are often not archived. It may also happen
that archived links do not work at all.
Some internet addresses (URLs) are not persistent, i.e. they are designed
to work only during a single session. Long URLs with seemingly random
numbers and letters are indicative of these. The presence of such a URL
does not prevent the disclosure being used as prior art, but it does meanthat the URL will not work for other people (e.g. for the applicant at the timeof receipt of the search report). For non-persistent URLs, or if, for otherreasons, it is considered prudent, the examiner indicates how that specific
URL is arrived at from the main home page of the respective website(i.e. which links were followed, or which search terms were used).
7.5.6 Technical details and general remarks
When printing a web page, care must be taken that the complete URL isclearly legible. The same applies to the relevant publication date on a web
page.
It has to be borne in mind that publication dates may be given in different
formats, especially in either the European format dd/mm/yyyy, the US
format mm/dd/yyyy or the ISO format yyyy/mm/dd. Unless the format is
explicitly indicated, it will be impossible to distinguish between theEuropean format and the US format for days 1-12 of each month.
If a publication date is close to the relevant priority date, the time zone of
publication may be crucial to interpret a publication date.
The examiner must always indicate the date on which the web page was
retrieved. When citing internet disclosures, the examiner must explain theprior-art status of the document, e.g.:(i)how and where the publication date was obtained (for example, thatthe eight digits in the URL represent the date of archiving in theformat yyyymmdd), and(ii)

any other relevant information (for example, where two or more
related documents are cited, how they are related, indicating for
instance that following link "xyz" on the first document leads to thesecond document).

When citing a multimedia disclosure found on the internet, such as a video
or podcast, the division will request capture and storage of electronic
evidence suitable to prove its content and availability to the public. If thedisclosure later ceases to be available on the internet, such evidence will

Part G – Chapter IV-17

Part G – Chapter IV-18

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be made available to the parties to the proceedings concerned on request(see also B-X, 11.6).
7.6 Standards and standard preparatory documents
Standards define sets of characteristics or qualities for products,
processes, services or materials (e.g. the properties of an interface) andare usually developed by Standards Development Organisations (SDOs) byconsensus amongst the relevant economic stakeholders.
Final standards themselves in principle form part of the state of the art
under Art. 54(2), although there are important exceptions. One of these
relates to private standards consortia (e.g. in the field of CD-ROM, DVD
and Blu-ray discs), which do not publish the final standards but make themavailable to the interested circles subject to acceptance of a non-disclosureagreement (categorically forbidding the recipients of the documents todisclose their content).
Before an SDO reaches agreement on the establishment or further
development of a standard, various types of preparatory documents are
submitted and discussed. These preparatory documents are treated likeany other written or oral disclosures, i.e. in order to qualify as prior art theymust have been made available to the public prior to the filing or priority
date without any bar of confidentiality. Thus if a standard preparatory
document is cited against an application during search or examination, thesame facts are to be established as for any other piece of evidence(see G-IV, 1 and T 738/04).
The existence of an explicit confidentiality obligation must be determinedcase by case on the basis of the documents allegedly setting forth thisobligation (see T 273/02 and T 738/04). These may be general guidelines,
directives or principles of the SDO concerned, licensing terms or a
Memorandum of Understanding resulting from interaction between the
SDOs and their members. In case of a general confidentiality clause,
i.e. one that is not indicated on or in the relevant preparatory document
itself, it must be established that the general confidentiality obligation
actually extended to the document in question until the relevant point intime. This does not however require the document itself to be explicitly
marked as confidential (see T 273/02).
If the preparatory documents are available in the EPO's in-house
databases or at freely accessible sources (for example, on the internet), theexaminer is allowed to cite them in the search report and to refer to themduring the procedure. The public availability of the documents, if at allnecessary, may be further investigated during examination and oppositionin accordance with the principles set out above.
While documents in the EPO's in-house databases are regarded as being
available to the public, no general indication can be given for documents
obtained from other sources.
Norms and standards are comparable with trade marks in that their content
can vary with time. Therefore, they have to be identified properly by theirMarch 2023

Guidelines for Examination in the EPO

version number and publication date (see also F-III, 7, F-IV, 4.8 andH-IV, 2.2.9 H-IV, 2.2.8).
8. Cross-references between prior-art documents
If a document (the "primary" document) refers explicitly to anotherdocument (the "secondary" document) as providing more detailed
information on certain features, the teaching of the latter is to be regarded
as incorporated into the primary document if the document was available tothe public on the publication date of the primary document (see T 153/85)(for the state of the art pursuant to Art. 54(3), see G-IV, 5.1 and F-III, 8,
penultimate paragraph). The relevant date for novelty purposes, however,is always the date of the primary document (see G-IV, 3).
9. Errors in prior-art documents
Errors may exist in prior-art documents.
When a potential error is detected, three situations may arise depending onwhether the skilled person, using general knowledge,(i)can directly and unambiguously derive from the prior art documentthat it contains an error and what the only possible correction should
be;

(ii)

can directly and unambiguously derive from the prior art documentthat it contains an error, but is able to identify more than one possible
correction; or(iii)cannot directly and unambiguously derive from the prior art
document that an error has occurred.

When assessing the relevance of a document to patentability,
in case (i), the disclosure is considered to contain the correction;in case (ii), the disclosure of the passage containing the error is not taken
into account;in case (iii), the literal disclosure is taken into account as is.
For possible errors concerning compound records in online databases,
see B-VI, 6.5. For non-enabling disclosures, see G-IV, 2.

Part G – Chapter IV-19

March 2023

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Part G – Chapter V-1

Chapter V – Non-prejudicial disclosures
1. General
There are two specific instances (and these are the only two) in which aprior disclosure of the invention is not taken into consideration as part of thestate of the art, viz. where the disclosure was due to, or in consequence of:Art. 55(1)(i)

an evident abuse in relation to the applicant or that party's legal
predecessor – e.g. the invention was derived from the applicant orthat party's legal predecessor and disclosed against their wish; orArt. 55(1)(a)(ii)

the display of the invention by the applicant or that party's legal
predecessor at an officially recognised international exhibition as
defined in Art. 55(1)(b).

Art. 55(1)(b)

2. Time limit
An essential condition, in both instances G-V, 1(i) and (ii), is that thedisclosure in point must have taken place not earlier than six months
preceding the filing of the application. For calculating the six-month period
the relevant date is that of the actual filing date of the European patentapplication, not the priority date (G 3/98 and G 2/99).
3. Evident abuse
Regarding instance G-V, 1(i), the disclosure might be made in a publisheddocument or in any other way. As a particular instance, the disclosure
might be made in a European application of earlier priority date. Thus, forexample, a person B who has been told of A's invention in confidence,might apply for a patent for this invention. If so, the disclosure resulting
from the publication of B's application will not prejudice A's rights provided
that A has already made an application, or applies within six months ofsuch publication. In any event, having regard to Art. 61, B may not be
entitled to proceed with the application (see G-VI, 2).
For "evident abuse" to be established, there must be, on the part of theperson disclosing the invention, either actual intent to cause harm or actual
or constructive knowledge that harm would or could ensue from thisdisclosure (see T 585/92). This must be proven on the balance of
probabilities (see T 436/92).
4. International exhibition
In instance G-V, 1(ii), the application must be filed within six months of thedisclosure of the invention at the exhibition if the display is not to prejudice
the application. Furthermore, the applicant must state, at the time of filingthe application, that the invention has been so displayed, and must also filea supporting certificate within four months, giving the particulars required byRule 25 (see A-IV, 3). The exhibitions recognised are published in the
Official Journal.

Art. 55(2)Rule 25

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Guidelines for Examination in the EPO

Chapter VI – Novelty
1. State of the art pursuant to Art. 54(2)An invention is considered to be new if it does not form part of the state of
the art. For a definition of "state of the art", see G-IV, 1. It is to be noted thatin considering novelty (as distinct from inventive step; see G-VII, 6), it is not
permissible to combine separate items of prior art together. It is also not
permissible to combine separate items belonging to different embodiments
described in one and the same document unless such combination has
specifically been suggested (see T 305/87). For the specific case of
selection inventions see G-VI, 8.
Furthermore, any matter explicitly disclaimed (with the exception of
disclaimers which exclude unworkable embodiments) and prior art
acknowledged in a document, in so far as explicitly described therein, areto be regarded as incorporated in the document.
It is further permissible to use a dictionary or similar document of reference
in order to interpret a special term used in a document.
An unclear term cannot be used to distinguish the invention from the priorart and is not allowable under Art. 84 (see F-IV, 4.6.1).
2. Implicit features or well-known equivalents
A document takes away the novelty of any claimed subject-matter derivabledirectly and unambiguously from that document including any features
implicit to a person skilled in the art in what is expressly mentioned in the
document, e.g. a disclosure of the use of rubber in circumstances whereclearly its elastic properties are used even if this is not explicitly statedtakes away the novelty of the use of an elastic material. The limitation tosubject-matter "derivable directly and unambiguously" from the document isimportant. Thus, when considering novelty, it is not correct to interpret theteaching of a document as embracing well-known equivalents which are notdisclosed in the documents; this is a matter of obviousness.
3. Relevant date of a prior-art document
In determining novelty, a prior-art document is to be read as it would havebeen read by a person skilled in the art on its the relevant date of the
document. By "relevant" date is meant the publication date of the prior-art
document in the case of a previously published document and the date offiling (or priority date, where applicable appropriate) in the case of adocument according to Art. 54(3) (see G-IV, 5.1).
4. Enabling disclosure of a prior-art document
Subject-matter described in a document can only be regarded as having
been made available to the public, and therefore as comprised in the stateof the art pursuant to Art. 54(1), if the information given therein is sufficient
to enable the skilled person, at the relevant date of the document(see G-VI, 3), to practise the technical teaching which is the subject of the
document, taking into account also the general knowledge at that time in
the field (see T 26/85, T 206/83 and T 491/99).

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March 2023

Similarly, it is to be noted that a chemical compound, the name or formulaof which is mentioned in a prior-art document, is not thereby considered asknown unless the information in the document, together, where appropriate,with knowledge generally available on the relevant date of the document,
enables it to be prepared and separated or, for instance in the case of a
product of nature, only to be separated.
5. Generic disclosure and specific examples
In considering novelty, it is to be borne in mind that a generic disclosure
does not usually take away the novelty of any specific example fallingwithin the terms of that disclosure, but that a specific disclosure does takeaway the novelty of a generic claim embracing that disclosure, e.g. a
disclosure of copper takes away the novelty of metal as a generic concept,
but not the novelty of any metal other than copper, and one of rivets takes
away the novelty of fastening means as a generic concept, but not thenovelty of any fastening other than rivets.
6. Implicit disclosure and parameters
In the case of a prior-art document, the lack of novelty may be apparent
from what is explicitly stated in the document itself. Alternatively, it may be
implicit in the sense that, in carrying out the teaching of the prior-art
document, the skilled person would inevitably arrive at a result falling within
the terms of the claim. An objection of lack of novelty of this kind is raisedby the examiner only where there can be no reasonable doubt as to thepractical effect of the prior teaching (for a second non-medical use,
however, see G-VI, 7).
Situations of this kind may also occur when the claims define the invention,
or a feature thereof, by parameters (see F-IV, 4.11). It may happen that in
the relevant prior art a different parameter, or no parameter at all, ismentioned. If the known and the claimed products are identical in all otherrespects (which is to be expected if, for example, the starting products andthe manufacturing processes are identical), then in the first place an
objection of lack of novelty arises. The burden of proof for an alleged
distinguishing feature lies with the applicant. No benefit of doubt can beaccorded if the applicant does not provide evidence in support of theallegations (see T 1764/06). If, on the other hand, the applicant is able toshow, e.g. by appropriate comparison tests, that differences do exist withrespect to the parameters, it is questionable whether the application
discloses all the features essential to manufacture products having theparameters specified in the claims (Art. 83).
7. Examination of novelty
In determining novelty of the subject-matter of claims, the examiner musthave regard to the guidance given in F-IV, 4.5 to 4.21. Particularly for
claims directed to a physical entity, non-distinctive characteristics of aparticular intended use are to be disregarded (see F-IV, 4.13.1). For
example, a claim to a substance X for use as a catalyst would not be
considered to be novel over the same substance known as a dye unlessthe use referred to implies a particular form of the substance (e.g. thepresence of certain additives) which distinguishes it from the known form of
the substance. That is to say, characteristics not explicitly stated, butMarch 2023

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Part G – Chapter VI-3

implied by the particular use, are to be taken into account (see the example
of a "mold for molten steel" in F-IV, 4.13.1). For claims to a first medicaluse, see G-II, 4.2.
A claim defining a compound as having a certain purity lacks novelty over a
prior-art disclosure describing the same compound only if the prior art
discloses the claimed purity at least implicitly, for example by way of amethod for preparing said compound, the method inevitably resulting in thepurity as claimed. Such a claim, however, does not lack novelty if thedisclosure of the prior art needs to be supplemented, for example bysuitable (further) purification methods allowing the skilled person to arrive at
the claimed purity.A known compound is not rendered novel merely
because it is available with a different degree of purity if the purity can beachieved by conventional means (see T 360/07).
7.1 First or further medical use of known products
Where a substance or composition is already known, it may still bepatentable under Art. 54(4) if the known substance or composition was notpreviously disclosed for use in a method referred to in Art. 53(c).
Where a substance or composition is already known to have been used ina "first medical use", it may still be patentable under Art. 54(5) for any
second or further use in a method according to Art. 53(c), provided thatsaid use is novel and inventive.
Art. 54(4) and (5) thus provide for an exception from the general principlethat product claims can only be obtained for novel products. However, thisdoes not mean that product claims for the first and further medical uses
need not fulfil all other requirements of patentability, especially that ofinventive step (see T 128/82).
A claim in the form "Use of substance or composition X for the treatment ofdisease Y..." will be regarded as relating to a method for treatment explicitly
excluded from patentability under Art. 53(c) and therefore will not be
accepted. A claim in the form "Substance X for use as a medicament" isacceptable, even if X is a known substance, but its use in medicine is notknown. Likewise, it is acceptable to have a claim in the form "Substance X
for use in the treatment of disease Y", provided that such a claim involves
an inventive step over any prior art disclosing the use of X as a
medicament.
If an application discloses for the first time a number of distinct surgical,
therapeutic or diagnostic uses for a known substance or composition,
normally independent claims each directed to the substance or composition
for one of the various uses are allowed; i.e. an a priori objection of lack ofunity of invention is not, as a general rule, raised (see F-V, 7).
Where the subject-matter of a claim is rendered novel only by a new
therapeutic use of a medicament, the claim may no longer have the format
of a so-called "Swiss-type" claim as instituted by decision G 5/83 ("Use of a
substance or composition X for the manufacture of a medicament fortherapeutic application Z") if the application has a filing or earliest priority

Art. 82

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March 2023

date of 29 January 2011 or later (see the notice from the EPO dated
20 September 2010, OJ EPO 2010, 514).
The effect of the different claim formulations on patentability is summarisedin the table below:
Examples#Claim

Patentable?

ArticleA

Use of product X forthe treatment ofasthma

No

53(c)

B

1. Product X for use asa medicament[X known ase.g. herbicide]
2. Product according toclaim 1 for use in thetreatment of asthma

Yes(even if X is a known
product, but its use in
medicine is not known)
Yes

54(4)

C

Product X for use in
the treatment ofcancer*Yes(even if case B is priorart, provided that such aclaim is inventive over B
and any other prior art)

54(5)

D

Product X for use in
the treatment ofleukaemia*

Yes(even if cases B and C
are prior art, provided
that D is inventive over B
and C and any otherprior art because
leukaemia is a specific
type of cancer)

54(5)* Note: The corresponding Swiss-type claims for cases C and D (required
under EPC 1973) would be "The use of Product X for the manufacture of a
medicament for the treatment of cancer/leukaemia".
In cases where an applicant simultaneously discloses more than one"subsequent" therapeutic use, claims of the above type directed to thesedifferent uses are allowable in the one application, but only if they form asingle general inventive concept (Art. 82). Regarding use claims of theabove type, it is also to be noted that a mere pharmaceutical effect does
not necessarily imply a therapeutic application. For instance, the selective
occupation of a specific receptor by a given substance cannot be
considered in itself as a therapeutic application; indeed, the discovery thata substance selectively binds a receptor, even if representing an importantpiece of scientific knowledge, still needs to find an application in the form ofa defined, real treatment of a pathological condition in order to make atechnical contribution to the art and to be considered as an invention

March 2023

Guidelines for Examination in the EPO

eligible for patent protection (see T 241/95). See also F-IV, 4.22 for thefunctional definition of a pathological condition.
A claim in the format of a Swiss-type claim is a purpose-related process
claim, whereas a claim drafted in accordance with Art. 54(5) is a
purpose-related product claim. Therefore, such claims have different
categories. This has the following consequences:(i)

If a parent application has been granted with a Swiss-type claim,
granting a patent on the basis of the purpose-related product claim inits divisional application would not lead to double patenting (T 13/14;
see also G-IV, 5.4).

(ii)

Since a claim to a particular physical activity (e.g. method, process,use) confers less protection than a claim to the physical entity per se(G 2/88, Reasons 5.1), a Swiss-type claim confers less protection
than a claim formulated according to Art. 54(5). Therefore a change
from a Swiss-type claim to a claim drafted in accordance with
Art. 54(5) contravenes Art. 123(3) (T 1673/11; see also H-IV, 3.4).

7.1.1 Products that may be claimed for a further medical use
The scope of protection of use-related product claims under Art. 54(5) islimited to the substance or composition in the context of its medical use
which confers novelty and non-obviousness, if any, on the claimed product.
This principle applies only to substances and compositions and cannot be
extended to other products. A claim directed to a device for an intended
medical use (e.g. pacemaker or implantable chemical sensor for use in ...)
must be construed as claiming a device which is suitable for that medicaluse (F-IV, 4.13).
A product qualifies as a "substance or composition" in the sense ofArt. 54(5) if it is the active agent or ingredient in the specific medical use
and if the therapeutic effect can be ascribed to its chemical properties (seeG 5/83 and T 1758/15). For example, consider a filler material which is
injected between a first tissue targeted for radiation treatment and a second
sensitive tissue which is desired to be protected from radiation. If theshielding effect of the filler material is achieved by a mere mechanicaldisplacement of the sensitive tissue relative to the target tissue, due to thevolume it occupies between the two tissues, the filler material qualifies as adevice rather than a substance or composition. On the other hand, if thefiller material produced a radiation-reducing effect on the sensitive tissue
which could be attributed to its chemical properties, it would be considered
as a "substance or composition" in the sense of Art. 54(5).
7.1.2 Therapeutic uses pursuant to Art. 54(5)The treatment of a disease with a substance or composition which isalready known to be used for treating said disease, where the only
difference from the known treatment is in the dosage regime, is a specificfurther medical use within the meaning of Art. 54(5) (see G 2/08). Thus,
therapeutic uses of a substance/composition may be based not only on thetreatment of a different disease but also on the treatment of the same

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Guidelines for Examination in the EPO

March 2023

disease by a different therapeutic method differing for example in the
dosage, administration regime, group of subjects or route of administration(G 2/08).
A claim directed to the further therapeutic use of a substance/composition
must indicate the illness/disease to be treated, the nature of the therapeutic
compound used for that purpose and, if relevant for establishing novelty
and inventive step, the subject to be treated. If the further therapeutic use
relates to a different therapy of the same disease using the same
substance/composition, the claim must also define all technical features of
the therapy giving rise to the desired technical effect (G 2/08).
An independent claim directed to a further therapeutic use of a
substance/composition which is based on the use of said product in thetreatment of a different disease must be formulated as follows:
Substance X
orComposition
comprising X

for usein a method for the treatment of Y, orin the therapy of Y, orin a method of treating Y, orin a method of therapy of Y, or
as a medicament defined by its function,(e.g. as an anti-inflammatory medicament)

The presence of the term "for use" is mandatory, to closely adhere to thewording of Art. 54(5).
If the independent claim is directed to a composition, the definition of thecomposition may be inserted before or after the term "for use". For
example: "Composition comprising X for use in the therapy of Y" or"Composition for use in the therapy of Y comprising X".
If the further therapeutic use is based on the use of the same product in adifferent treatment of the same disease, the independent claim must be
formulated as follows:
Substance X
for useorComposition
comprising X
for usein a method for thetreatment of Y, orin the therapy of Y, orin a method oftreating Y, orin a method oftherapy of Y, or
as a medicament
defined by its function(e.g. as ananti-inflammatory
medicament)characterisedin that/whereinother features(e.g. thesubstance/composition isadministeredtopically, threetimes daily...)Purpose-related product claims which do not define exclusively (seeclaim 4 in the table below) a medical use excluded from patentability under
Art. 53(c) are construed as claims directed to a product per se which issuitable for the claimed use.

March 2023

Guidelines for Examination in the EPO

The table below shows some examples of claims which do not define afurther medical use within the meaning of Art. 53(c).
... because ...
1. Substance X or
Composition
comprising X in/fora method for thetreatment of Y, or
the therapy of Y, ora method of treatingY, ora method of therapyof Y, or the (topical)
treatment of Y, orthe (topical) therapyof Y

without the term "for use"
it is not evident if theclaim is directed to the
product suitable for the
specified use or if theclaim is limited by the
medical use

2. (Anti-inflammatory)
for topical treatment
medicament, or
Pharmaceuticalcomprising substance X,
or Composition
comprising X

the claim indicatesneither a therapeutic role
nor a therapeutic
application of the claimed
product. Moreover,without the term "for use"
it is not evident if theclaim is directed to the
product suitable for the
specified use or if theclaim is limited by the
medical use

3. Substance X or
Composition
comprising X

as ananti-inflammatory
agent

without the term "for use"
it is not evident if theclaim is directed to the
product suitable for the
specified use or if theclaim is limited by the
medical use

4. Substance X or
Composition
comprising X

for use as an
antifungal/antibacterial agent

the claim does not definea specific medical use of
the claimed product. It
encompasses
non-medical uses,
because antifungal/
antibacterial agents arealso used in e.g.
agriculture for treating
plantsIf the prior art discloses either the product per se in a form which could beconsidered suitable for the claimed use, or its first medical application,
claims 1 to 4 would lack novelty. The novelty objection could be overcome
by reformulating the claim as described above (first table of G-VI, 7.1.2).
These amendments may be proposed by the examining division in theRule 71(3) communication without the need to consult the applicant
beforehand (see C-V, 1.1, point (f)).

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The following are examples of claims which would not be considered novel:
Example 1
Composition comprising X for use by topical treatment/application
It is assumed that a composition comprising X is already known in the prior
art.
Reasons for objection: Since the claim fails to identify the specifictherapeutic indication for X, the feature "for topical treatment/application"
remains de facto purely illustrative and does not limit the scope of the claim
to that specific application.
Furthermore, the term "topical treatment/application" does not necessarily
relate to use in a method referred to in Art. 53(c) since it could refer to acosmetic treatment. Consequently, the subject-matter of the claimed
composition would be anticipated if said composition comprising X isalready known in the prior art.
Example 2
Composition comprising X for use in therapy by topical administration
It is assumed that a composition comprising X is already known in the priorart for a medical use.
Reasons for objection: The mode of administration may be a critical factor
in a medical treatment and has been considered as a limiting feature, but
only in relation to a further (specific) medical indication (T 51/93). "Topicaladministration" specifies only the mode of delivery, but does not relate to
any therapeutic effect obtained thereby. Consequently, since the claim fails
to identify the specific therapeutic indication, the feature "by topicaladministration" is merely illustrative and not a restrictive technical featurecapable of establishing novelty. The subject-matter of the claimed
composition would thus be anticipated if said composition comprising X isalready known in the prior art for any medical use.
Example 3
Product X for use in a method of contraception
Reasons for objection: Such a claim would not be considered novel overthe disclosure of product X per se because pregnancy is not a disease.
This claim can usually be reformulated as a method of contraception using
product X. Reformulation may not be possible in so far as the contraception
method involves the personal and private sphere, i.e. it does not fulfil therequirement of industrial application (T 74/93).

March 2023

Guidelines for Examination in the EPO

7.1.3 Diagnostic uses pursuant to Art. 54(5)A suitable formulation of a diagnostic claim according to Art. 54(5) may
read:
Substance X
orComposition
comprising X

for use in amethod ofdiagnosis"in vivo"of disease Y

The wording "in vivo" limits the scope of the claim to diagnostic methods
which are excluded from patentability pursuant to Art. 53(c).
If the independent claim is directed to a composition, the definition of thecomposition may be inserted before or after the term "for use".
Purpose-related product claims which do not define a diagnostic use
excluded from patentability under Art. 53(c) are construed as claims
directed to a product per se which is suitable for the claimed use.
The following table shows some examples of claims which do not define adiagnostic use within the meaning of Art. 53(c):1. Substance X or Composition
comprising X

for use in the diagnosis of disease Y,or for use in the "in vitro"/"ex vivo"
diagnosis of disease Y

2. Substance X or Composition
comprising X

for use as a contrast agent for imaging
blood flow

Claims 1 and 2 would lack novelty over prior art disclosing either the
product per se in a form which could be considered suitable for the claimed
use, or its first medical application.
Claim 1 could be reformulated as "Use of [...] in the "in vitro/ex vivo"
diagnosis of disease Y". If the application as filed discloses, either explicitly
or implicitly, that the claimed diagnostic methods are to be carried out"in vivo", the wording of claim 1 could also be limited to encompass only"in vivo" methods, as described above.
Claim 2 could be reformulated as "Use of [...] as contrast agent for imaging
blood flow".
Claims 1 and 2 could also be reformulated as method claims, e.g. "Amethod for in vitro/ex vivo diagnosing disease Y using substance X [...]" or "A method for diagnosing disease Y in a sample by using substance X [...]"or "A method of imaging blood flow using substance X [...]".
These amendments may be proposed by the examining division in theRule 71(3) communication without the need to consult the applicant
beforehand (see C-V, 1.1, point (f)).

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March 2023

7.1.4 Surgical uses pursuant to Art. 54(5)A claim defining a second surgical use may read "Substance X/
Composition comprising X for use in a method of intracardiac
catheterisation as a protector of blood vessel walls".
If the independent claim is directed to a composition, the definition of thecomposition may be inserted before or after the term "for use".
Purpose-related product claims which do not define a surgical use excluded
from patentability under Art. 53(c) are construed as claims directed to a
product per se which is suitable for the claimed use.
The following table shows an example of a claim which does not define asurgical use within the meaning of Art. 53(c):1. Substance X or
Composition comprising X

for use in a method for hair removal bylaser radiation

The claim would lack novelty over prior art disclosing either the productper se in a form which could be considered suitable for the claimed use, or
its first medical application.
The claim could be reformulated as "Use of [...] for hair removal by laser
radiation" or as "Method for removing hair by laser radiation by using
substance X [...]".
This amendment may be proposed by the examining division in theRule 71(3) communication without the need to consult the applicant
beforehand (see C-V, 1.1, point (f)).
7.1.5 Dependent claims pursuant to Art. 54(5)The wording of the dependent claims must clearly reflect their dependency
on the independent claim (T 2106/10). A suitable formulation may read:
Substance (X)orComposition(comprising X)(according toclaim #)

for use in the therapy whereinof disease Y
according to claim #orfor use according toclaim #

other features(e.g. it isprovided aswater-soluble
granulates)

In the following example, the dependent claim is not correctly formulated
according to Art. 54(5).
Claim 1: Composition comprising X for use in the treatment of Y.
Claim 2: Composition according to claim 1, comprising 5 mg X.
The category of claim 2 is unclear and the dependency is doubtful. The
claim appears to depend on a claim directed to a product per se.

March 2023

Guidelines for Examination in the EPO

The claim would also lack novelty over prior art disclosing a composition
comprising 5 mg X, or a first medical application thereof.
The claim must be reformulated as indicated above by inserting "for use"
between "Composition" and "according". This amendment may be
proposed by the examining division in the Rule 71(3) communication
without the need to consult the applicant beforehand (see C-V, 1.1,
point (f)).
7.2 Second non-medical use
A claim to the use of a known compound for a particular purpose (second
non-medical use) which is based on a technical effect is interpreted asincluding that technical effect as a functional technical feature. Accordingly,
said claim is not open to objection under Art. 54(1), provided that suchtechnical feature has not previously been made available to the public(G 2/88, and G 6/88). The novelty of the use of the known compound forthe known production of a known product cannot be deduced from a newproperty of the produced product. In such a case, the use of a compound
for the production of a product has to be interpreted as a process for
production of the product with the compound. It can be regarded as novel
only if the process of production as such is novel (see T 1855/06). For
claims to a second or further medical use, see G-II, 4.2.
However, a feature of a step in a chemical process which merely serves to
explain the technical effect obtained is not a functional technical feature
which could render a claim novel over prior art which discloses the sameprocess with the same step which provides the same effect, even if it does
not comprise a corresponding indication of technical effect. It is rather
considered to be a discovery (T 151/13).
8. Selection inventions
Selection inventions deal with the selection of individual elements, subsets,or sub-ranges, which have not been explicitly mentioned, within or
overlapping with a larger known set or range.
For determining novelty, it has to be decided which subject-matter has
been made available to the public by a prior-art disclosure and thus forms
part of the state of the art. In this context, it is not only examples, but thewhole content of the prior-art document which has to be taken into
consideration. Matter that is "hidden" in a prior-art document, in the senseof being reconditely submerged rather than deliberately concealed, is notconsidered to have been made available to the public (see T 666/89).

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Guidelines for Examination in the EPO

(i)

(ii)

March 2023

In determining the novelty of a selection, it has to be decided whether
the selected elements are disclosed in an individualised (concrete)
form in the prior art (see T 12/81). A selection from a single list of
specifically disclosed elements does not confer novelty. However, if a
selection from two or more lists of a certain length has to be made inorder to arrive at a specific combination of features then the resulting
combination of features, not specifically disclosed in the prior art,
confers novelty (the "two-lists principle"). Examples of suchselections from two or more lists are the selection of:(a)

individual chemical compounds from a known generic formulawhereby the compound selected results from the selection of
specific substituents from two or more "lists" of substituents
given in the known generic formula. The same applies tospecific mixtures resulting from the selection of individualcomponents from lists of components making up the prior art
mixture;(b)

starting materials for the manufacture of a final product;(c)

sub-ranges of several parameters from corresponding known
ranges.

A sub-range selected from a broader numerical range of the prior art
is considered novel if both of the following two criteria are satisfied(see T 261/15 and T 279/89):(a)the selected sub-range is narrow compared to the known
range;(b)

the selected sub-range is sufficiently far removed from any
specific examples disclosed in the prior art and from theend-points of the known range.

The meaning of "narrow" and "sufficiently far removed" has to be
decided on a case by case basis.
In this context, it must be assessed whether the skilled person, in thelight of the teaching of the prior art, would seriously contemplateworking in the selected sub-range. If it can be fairly assumed that theskilled person would do so, the selected sub-range is not novel.
Novelty is also destroyed by explicitly mentioned intermediate values
or a specific example of the prior art in the selected sub-range.
Further, it is not sufficient to exclude specific novelty-destroying
values known from the prior-art range to establish novelty.
The concept of "seriously contemplating" is fundamentally different
from the concept used for assessing inventive step, namely whether
the skilled person "would have tried, with reasonable expectation of
success", to bridge the technical gap between a particular piece ofprior art and a claim whose inventiveness is in question (seeMarch 2023

Guidelines for Examination in the EPO

G-VII, 5.3), because in order to establish anticipation, there cannot
be such a gap.
For example, in T 1571/15, regarding an alloy defined by its
composition, it was held that the skilled person would not seriously
contemplate working in the selected sub-range, despite it falling in
the centre region of a range disclosed in the prior-art document,
since said prior-art document contained a pointer to another region.
(iii)

In the case of overlapping numerical ranges (e.g. numerical ranges,
chemical formulae) of between claimed subject-matter and the priorart, the same principles apply for the assessment of novelty as in thecases discussed in (i) and (ii) above. It has to be decided which
subject-matter has been made available to the public by a prior-art
disclosure and thus forms part of the state of the art. In this context, it
is not only examples, but the whole content of the prior-art document
which has to be taken into consideration. Matter that is "hidden" in aprior-art document, in the sense of being reconditely submergedrather than deliberately concealed, is not considered to have been
made available to the public (see T 666/89).
As to overlapping ranges or numerical ranges of physicalparameters, novelty Novelty is destroyed by an explicitly mentioned
end-point of the known range, explicitly mentioned intermediate
values or a specific example of the prior art in the overlap. As withthe selection of a sub-range, it It is not sufficient to exclude specificnovelty-destroying values known from the prior-art range, it must also
be considered whether the skilled person, in the light of the technicalfacts and taking into account the general knowledge in the field,
would seriously contemplate applying the technical teaching of theprior-art document in the range of overlap. If it can be fairly assumed
that the skilled person would do so, it must be concluded that no
novelty exists. In T 1571/15, regarding an alloy defined by its
composition, the skilled person would not seriously contemplateworking in the area of overlap, despite it falling in the centre region of
the ranges disclosed in the prior-art document, since said prior-art
document contained a pointer to another region.

(iv)

These principles also apply to As far as overlapping chemical
formulae. are concerned, novelty Novelty is acknowledged if theclaimed subject-matter is distinguished from the prior art in the rangeof overlap by a new technical teaching, see T 12/90, point 2.6 of theReasons. There is a new technical teaching if certain technicalelements are new in comparison to the prior-art disclosure. An
example of a new technical element is a specifically selectedchemical residue which is covered in general terms by the prior art in
the overlapping area, but which is not individualised in the prior art
document. If this is not the case, then it must be considered whether
the skilled person would seriously contemplate working in the rangeof overlap and/or would accept that the area of overlap is directly andunambiguously disclosed in an implicit manner in the prior art (seefor example T 536/95). If the answer is yes, then novelty is lacking.

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March 2023

The concept of "seriously contemplating" is fundamentally different
from the concept used for assessing inventive step, namely whether
the skilled person "would have tried, with reasonable expectation of
success", to bridge the technical gap between a particular piece ofprior art and a claim whose inventiveness is in question (seeG-VII, 5.3), because in order to establish anticipation, there cannot
be such a gap (T 666/89).
Analogous considerations apply if the claimed chemical formuladefines a sub-range of a chemical formula known from the prior art.
8.1 Error margins in numerical values
The skilled person knows that numerical values relating to measurements
are subject to measurement errors which place limits on their accuracy. For
this reason, the general convention in the scientific and technical literature
is applied: the last decimal place of a numerical value indicates its degreeof accuracy. Where no other error margins are given, the maximum margin
is ascertained by applying the rounding-off convention to the last decimal
place (see T 175/97), e.g. for a measurement of 3.5 cm, the error margin is
3.45-3.54. When interpreting ranges of values in patent specifications, theskilled person proceeds on the same basis.
9. Novelty of "reach-through" claims"Reach-through" claims are defined as claims attempting to obtainprotection for a chemical product (and also uses thereof, compositions
thereof, etc.) by defining that product functionally in terms of its action(e.g. agonist, antagonist) on a biological target such as an enzyme or
receptor (see F-III, 9). In many such cases, the applicant functionallydefines chemical compounds in this way by reference to a newly identified
biological target. However, compounds which bind to and exercise thisaction on that biological target are not necessarily novel compounds simply
because the biological target which they act on is new. Indeed in manycases, the applicants themselves provide test results in the applications,whereby known compounds are shown to exert this action on the new
biological target, thus demonstrating that compounds falling within thefunctional definition of the "reach-through" claim are known in the state of
the art and so establishing that a reach-through claim relating tocompounds defined in this way lacks novelty.

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Guidelines for Examination in the EPO

Part G – Chapter VII-1

Chapter VII – Inventive step
1. General
An invention is considered as involving an inventive step if, having regard
to the state of the art, it is not obvious to a person skilled in the Art. Novelty(see G-VI) and inventive step are different criteria. The question – "is there
inventive step?" – only arises if the invention is novel.
2. State of the art; date of filing
The "state of the art" for the purposes of considering inventive step is as
defined in Art. 54(2) (see G-IV, 1). It is to be understood as concerning
such kind of information as is relevant to some field of technology. It does
not include later published European applications referred to in Art. 54(3).
As mentioned in G-IV, 3, the date of priority counts as the date of filing for
the European application being examined on condition that the priority isvalid (Art. 89). "date of filing" in Art. 54(2) means date of priority whereappropriate (see F-VI). The state of the art may reside in the relevant
common general knowledge, which need not necessarily be in writing andneeds substantiation only if challenged (see T 939/92).
3. Person skilled in the art
The "person skilled in the art" is presumed to be a skilled practitioner in therelevant field of technology who is possessed of average knowledge andability (average skilled person). The person skilled in the art is aware ofwhat was common general knowledge in the art at the relevant date(see T 4/98, T 143/94 and T 426/88). The skilled person is also presumed
to have had access to everything in the "state of the art", in particular the
documents cited in the search report, and to have been in possession of
the means and capacity for routine work and experimentation which arenormal for the field of technology in question. If the problem prompts the
person skilled in the art to seek its solution in another technical field, thespecialist in that field is the person qualified to solve the problem. The
skilled person is involved in constant development in the relevant technicalfield (see T 774/89 and T 817/95). The skilled person may be expected tolook for suggestions in neighbouring and general technical fields (seeT 176/84 and T 195/84) or even in remote technical fields, if prompted to doso (see T 560/89). Assessment of whether the solution involves aninventive step must therefore be based on that specialist's knowledge andability (see T 32/81). There may be instances where it is more appropriate
to think in terms of a group of persons, e.g. a research or production team,rather than a single person (see T 164/92 and T 986/96). It is to be borne inmind that the skilled person has the same level of skill for assessing
inventive step and sufficient disclosure (see T 60/89, T 694/92 andT 373/94).
3.1 Common general knowledge of the skilled person
Common general knowledge can come from various sources and does notnecessarily depend on the publication of a specific document on a specificdate. An assertion that something is common general knowledge need only
be backed by documentary evidence (for example, a textbook) if this iscontested (see G-IV, 2).

Art. 56

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A single publication (e.g. a patent document, but also the content of atechnical journal) cannot normally be considered as common generalknowledge (see T 475/88). In special cases, articles in technical journals
can be representative of common general knowledge (see T 595/90). Thisapplies in particular to articles providing a broad review or survey of a topic(see T 309/88). For the skilled person addressing the problem of bringing
together certain starting materials, the conclusions of research on thesematerials carried out by only a very few manufacturers form part of therelevant general technical knowledge, even if the studies in question have
only been published in technical journals (see T 676/94). Another exception
is that it can also be the information contained in patent specifications orscientific publications, if the invention lies in a field of research which is so
new that the relevant technical knowledge is not yet available fromtextbooks (see T 51/87).
Basic textbooks and monographs can be considered as representing
common general knowledge (see T 171/84); if they contain references
which direct the reader to further articles dealing with specific problems,
these articles too may be counted as part of such knowledge(see T 206/83). Information does not become common general knowledge
because it has been published in a particular textbook, reference work, etc.;
on the contrary, it appears in books of this kind because it is alreadycommon general knowledge (see T 766/91). This means that the
information in such a publication must have already become part ofcommon general knowledge some time before the date of publication.
4. Obviousness
Thus the question to consider, in relation to any claim defining theinvention, is whether before the filing or priority date valid for that claim,
having regard to the art known at the time, it would have been obvious to
the person skilled in the art to arrive at something falling within the terms ofthe claim. If so, the claim is not allowable for lack of inventive step. The
term "obvious" means that which does not go beyond the normal progressof technology but merely follows plainly or logically from the prior art,i.e. something which does not involve the exercise of any skill or ability
beyond that to be expected of the person skilled in the art. In considering
inventive step, as distinct from novelty (see G-VI, 3), it is fair to construe
any published document in the light of knowledge up to and including the
day before the filing or priority date valid for the claimed invention and tohave regard to all the knowledge generally available to the person skilled in
the art up to and including that day.
5. Problem-solution approach
In order to assess inventive step in an objective and predictable manner,
the so-called "problem-solution approach" is applied.
In the problem-solution approach, there are three main stages:(i)determining the "closest prior art",(ii)

establishing the "objective technical problem" to be solved, andMarch 2023

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Guidelines for Examination in the EPO

considering whether or not the claimed invention, starting from theclosest prior art and the objective technical problem, would havebeen obvious to the skilled person.

5.1 Determination of the closest prior art
The closest prior art is that which in one single reference discloses the
combination of features which constitutes the most promising starting point
for a development leading to the invention. In selecting the closest prior art,
the first consideration is that it must be directed to a similar purpose oreffect as the invention or at least belong to the same or a closely related
technical field as the claimed invention. In practice, the closest prior art isgenerally that which corresponds to a similar use and requires the minimumof structural and functional modifications to arrive at the claimed invention(see T 606/89).
In some cases there are several equally valid starting points for theassessment of inventive step, e.g. if the skilled person has a choice ofseveral workable solutions, i.e. solutions starting from different documents,
which might lead to the invention. If a patent is to be granted, it may benecessary to apply the problem-solution approach to each of these starting
points in turn, i.e. in respect of all these workable solutions.
However, applying the problem-solution approach from different starting
points, e.g. from different prior-art documents, is only required if it has been
convincingly shown that these documents are equally valid springboards. In
particular in opposition proceedings the structure of the problem-solution
approach is not that of a forum where the opponent can freely develop as
many inventive step attacks as desired in the hope that one of said attacks
has the chance of succeeding (T 320/15, Reasons 1.1.2).
In the event of refusal or revocation, it is sufficient to show on the basis of
one relevant piece of prior art that the claimed subject-matter lacks aninventive step: there is no need to discuss which document is "closest" tothe invention; the only relevant question is whether the document used is afeasible starting point for assessing inventive step (see T 967/97, T 558/00,
T 21/08, T 308/09 and T 1289/09). This is valid even if the problem
identified in a problem-solution reasoning may be different from the one
identified by the applicant/patentee.
As a consequence the applicant or proprietor cannot refute the argumentthat the claimed subject-matter lacks inventive step by submitting that amore promising springboard is available: a piece of prior art on the basis ofwhich the claimed invention is considered non-obvious cannot be "closer"
than a document on the basis of which the claimed invention appears
obvious, because it is evident in this situation that the former does not
represent the most promising springboard from which to arrive at theinvention (T 1742/12, Reasons 6.5; T 824/05, Reasons 6.2).
The closest prior art must be assessed from the skilled person's point ofview on the day before the filing or priority date valid for the claimed
invention. The examiner must not make an artificial interpretation of thePart G – Chapter VII-3

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closest prior art based on prior knowledge of the application (see also
G-VII, 8).
In identifying the closest prior art, account is taken of what the applicant
acknowledges in the description and claims to be known. Any suchacknowledgement of known art is regarded by the examiner as being
correct unless the applicant states that a mistake was made(see C-IV, 7.3(vii) C-IV, 7.2(vii)).
5.2 Formulation of the objective technical problem
In the second stage, one establishes in an objective way the technicalproblem to be solved. To do this one studies the application (or thepatent), the closest prior art and the difference (also called "thedistinguishing feature(s)" of the claimed invention) in terms of features(either structural or functional) between the claimed invention and theclosest prior art, identifies the technical effect resulting from thedistinguishing features, and then formulates the technical problem.
Features which cannot be seen to make any contribution, either
independently or in combination with other features, to the technicalcharacter of an invention cannot support the presence of an inventive step(see T 641/00). Such a situation can occur for instance if a feature only
contributes to the solution of a non-technical problem, for instance a
problem in a field excluded from patentability. For the treatment of claims
comprising technical and non-technical features, see G-VII, 5.4. The criteria
for determining whether a feature, even if non-technical in isolation,
contributes to producing a technical effect in the context of the invention are
explained in G-II, 3 and subsections, for different types of subject-matter
listed under Art. 52(2).
In the context of the problem-solution approach, the technical problem
means the aim and task of modifying or adapting the closest prior art toprovide the technical effects that the invention provides over the closest
prior art. The technical problem thus defined is often referred to as the"objective technical problem".
The objective technical problem derived in this way may not be what theapplicant presented as "the problem" in the application. The latter may
require reformulation, since the objective technical problem is based on
objectively established facts, in particular appearing in the prior art revealedin the course of the proceedings, which may be different from the prior artof which the applicant was actually aware at the time the application was
filed. In particular, the prior art cited in the search report may put theinvention in an entirely different perspective from that apparent fromreading the application only. Reformulation might lead to the objective
technical problem being less ambitious than originally envisaged by theapplication. An example of such a case would be where the originallystated problem is the provision of a product, process or method
demonstrating some improvement, but where there is no evidence that theclaimed subject-matter is thereby improved over the closest prior art
uncovered in the search; rather, there is only evidence with respect to moredistantly related prior art (or possibly none at all). In this case, the problem

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Guidelines for Examination in the EPO

has to be reformulated as the provision of an alternative product, process
or method. The obviousness of the claimed solution to that reformulated
problem must then be assessed in the light of the cited prior art(see T 87/08).
The extent to which such reformulation of the technical problem is possible
has to be assessed on the merits of each particular case. As a matter ofprinciple any effect provided by the invention may be used as a basis forthe reformulation of the technical problem, as long as said effect isderivable from the application as filed (see T 386/89). It is also possible torely on new effects submitted subsequently during the proceedings by theapplicant, provided that the skilled person would recognise these effects as
implied by or related to the technical problem initially suggested(see G-VII, 11 and T 184/82).
It is noted that the objective technical problem must be so formulated as not
to contain pointers to the technical solution, since including part of atechnical solution offered by an invention in the statement of the problem
must, when the state of the art is assessed in terms of that problem,
necessarily result in an ex post facto view being taken of inventive activity(see T 229/85). Where the claim refers to an aim to be achieved in a
non-technical field, however, this aim may legitimately appear in theformulation of the problem as part of the framework of the technicalproblem to be solved, in particular as a constraint that has to be met(see G-VII, 5.4 and G-VII, 5.4.1).
The expression "technical problem" is interpreted broadly; it does notnecessarily imply that the technical solution is an improvement to the priorart. Thus the problem could be simply to seek an alternative to a known
device or process which provides the same or similar effects or is morecost-effective. A technical problem may be regarded as being solved only if
it is credible that substantially all claimed embodiments exhibit the technicaleffects upon which the invention is based. Criteria for deciding whether lackof reproducibility of the claimed invention is to be treated under Art. 56 or
83 are explained in F-III, 12.
Sometimes, the objective technical problem must be regarded as anaggregation of a plurality of "partial problems". This is the case where
there is no technical effect achieved by all the distinguishing features taken
in combination, but rather a plurality of partial problems is independently
solved by different sets of distinguishing features (see G-VII, 6 andT 389/86).
5.3 Could-would approach
In the third stage the question to be answered is whether there is any
teaching in the prior art as a whole that would (not simply could, but would)
have prompted the skilled person, faced with the objective technicalproblem, to modify or adapt the closest prior art while taking account of thatteaching, thereby arriving at something falling within the terms of theclaims, and thus achieving what the invention achieves (see G-VII, 4).

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In other words, the point is not whether the skilled person could havearrived at the invention by adapting or modifying the closest prior art but
whether the skilled person would have done so because the prior art
provided motivation to do so in the expectation of some improvement oradvantage (see T 2/83). Even an implicit prompting or implicitly
recognisable incentive is sufficient to show that the skilled person would
have combined the elements from the prior art (see T 257/98 and T 35/04).
This must have been the case for the skilled person before the filing or
priority date valid for the claim under examination.
When an invention requires various steps to arrive at the complete solutionof the technical problem, it is nevertheless regarded as obvious if thetechnical problem to be solved leads the skilled person to the solution in a
step-by-step manner and each individual step is obvious in the light of what
has already been accomplished and of the residual task still to be solved(see T 623/97 and T 558/00).
5.4 Claims comprising technical and non-technical features
It is legitimate to have a mix of technical and non-technical featuresappearing in a claim, as is often the case with computer-implemented
inventions. The non-technical features may even form a major part of theclaimed subject-matter. However, in the light of Art. 52(1), (2) and (3), thepresence of an inventive step under Art. 56 requires a non-obvious
technical solution to a technical problem (T 641/00, T 1784/06).
When assessing the inventive step of such a mixed-type invention, all thosefeatures which contribute to the technical character of the invention aretaken into account. These also include the features which, when taken in
isolation, are non-technical, but do, in the context of the invention,
contribute to producing a technical effect serving a technical purpose,
thereby contributing to the technical character of the invention. However,features which do not contribute to the technical character of the invention
cannot support the presence of an inventive step ("COMVIK approach",
T 641/00, G 1/19). Such a situation may arise, for instance, if a feature
contributes only to the solution of a non-technical problem, e.g. a problem
in a field excluded from patentability (see G-II, 3 and subsections).
The problem-solution approach is applied to mixed-type inventions in sucha way as to ensure that inventive step is not acknowledged on the basis offeatures not contributing to the technical character of the invention, while all
those features which do contribute are properly identified and taken into
account in the assessment. To this end, where the claim refers to an aim tobe achieved in a non-technical field, this aim may legitimately appear in theformulation of the objective technical problem as part of the framework of
the technical problem that is to be solved, in particular as a constraint thathas to be met (T 641/00; see step (iii)(c) below and G-VII, 5.4.1).

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The steps below outline the application of the problem-solution approach tomixed-type inventions following the COMVIK approach:(i)

The features which contribute to the technical character of theinvention are determined on the basis of the technical effects
achieved in the context of the invention (see G-II, 3.1 to 3.7).

(ii)

A suitable starting point in the prior art is selected as the closest priorart with a focus on the features contributing to the technical characterof the invention identified in step (i) (see G-VII, 5.1).

(iii)

The differences from the closest prior art are identified. The technicaleffect(s) of these differences, in the context of the claim as a whole,is(are) determined in order to identify from these differences thefeatures which make a technical contribution and those which do not.
(a)

If there are no differences (not even a non-technicaldifference), an objection under Art. 54 is raised.

(b)

If the differences do not make any technical contribution, an
objection under Art. 56 is raised. The reasoning for theobjection is that the subject-matter of a claim cannot beinventive if there is no technical contribution to the prior art.

(c)

If the differences include features making a technicalcontribution, the following applies:–

The objective technical problem is formulated on thebasis of the technical effect(s) achieved by thesefeatures. In addition, if the differences include features
making no technical contribution, these features, or any
non-technical effect achieved by the invention, may be
used in the formulation of the objective technicalproblem as part of what is "given" to the skilled person,in particular as a constraint that has to be met(see G-VII, 5.4.1).

–

If the claimed technical solution to the objective
technical problem is obvious to the person skilled in theart, an objection under Art. 56 is raised.

Determination of the features contributing to the technical character of theinvention should be performed for all claim features in step (i) (T 172/03,
T 154/04). However, in practice, due to the complexity of this task, theexaminer can normally perform the determination in step (i) on afirst-glance basis only and perform the analysis at the beginning of step (iii)
in a more detailed manner. In step (iii), the technical effects achieved by thedifferences over the selected closest prior art are determined. The extent towhich the differences contribute to the technical character of the invention
is analysed in relation to these technical effects. This analysis, limited to thedifferences, can be performed in a more detailed manner and on a more
concrete basis than the one performed at step (i). It may therefore reveal

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that some features considered in step (i) at first glance as not contributing
to the technical character of the invention do, on closer inspection, makesuch a contribution. The reverse situation is also possible. In such cases,
the selection of the closest prior art in step (ii) might need to be revised.
When performing the analysis in steps (i) and (iii) above, care must be
taken to avoid missing any features that might contribute to the technicalcharacter of the claimed subject-matter, in particular if the examiners
reproduce their understanding of the subject-matter of the claim in theirown words during the analysis (T 756/06).
The examples in G-VII, 5.4.2.1 to 5.4.2.4 illustrate the application of the
COMVIK approach.
5.4.1 Formulation of the objective technical problem for claims
comprising technical and non-technical features
The objective technical problem must be a technical problem which theskilled person in the particular technical field might have been asked tosolve at the relevant date. It must not be formulated in such a way as torefer to matters of which the skilled person would only have become aware
by knowledge of the solution claimed (G-VII, 5.2). In other words, theobjective technical problem must be so formulated as not to containpointers to the technical solution. However, this principle only applies tothose features of the subject-matter claimed which contribute to thetechnical character of the invention and hence are part of the technicalsolution. Merely because some feature appears in the claim does not
automatically exclude it from appearing in the formulation of the problem. In
particular, where the claim refers to an aim to be achieved in a
non-technical field, this aim may legitimately appear in the formulation of
the problem as part of the framework of the technical problem that is to besolved, in particular as a constraint that has to be met (T 641/00).
In other words, the formulation of the objective technical problem may referto features which do not make a technical contribution, or to any
non-technical effect achieved by the invention, as a given framework within
which the technical problem is posed, for example in the form of arequirements specification provided to the person skilled in a technical field.
The aim of formulating the technical problem according to these principles
is to ensure that inventive step is acknowledged only on the basis offeatures which contribute to the technical character of the invention. The
technical effects used for formulating the objective technical problem haveto be derivable from the application as filed when considered in the light ofthe closest prior art. They must be achieved over the whole scope of theclaim. A claim must therefore be limited in such a way that substantially all
embodiments encompassed by the claim show these effects (G 1/19,
G-VII, 5.2).
For technical effects which are not directly achieved by the claimed
invention but are only "potential technical effects", see G-II, 3.3.2.

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Regarding technical effects arising from specific technical implementations
where the design of algorithms is motivated by technical considerations of
the internal functioning of the computer, see G-II, 3.3.
In the case of claims directed to a technical implementation of a
non-technical method or scheme, in particular of a business method orgame rules, a modification to the underlying non-technical method orscheme aimed at circumventing a technical problem, rather thanaddressing this problem in an inherently technical way, is not considered tomake a technical contribution over the prior art (T 258/03, T 414/12).
Rather, such a solution constitutes a modification to the constraints given to
the technically skilled person tasked with the implementation of the given
non-technical method or scheme.
In such cases, consideration must be given to any further technicaladvantages or effects associated with the specific features of the technicalimplementation over and above the effects and advantages inherent in theunderlying non-technical method or scheme. The latter are at best to be
regarded as incidental to that implementation (T 1543/06). They do not
qualify as technical effects for the purpose of defining the objective
technical problem.
ExampleIn a game played online over a distributed computer system, the effect of
reduction in network traffic obtained by reducing the maximum number ofplayers cannot form the basis for formulating the objective technicalproblem. It is rather a direct consequence of changing the rules of thegame, which is inherent in the non-technical scheme. The problem of
network traffic reduction is not addressed by a technical solution but
circumvented by the non-technical gaming solution offered. The featuredefining the maximum number of players thus constitutes a given constraint
which forms part of the non-technical scheme that the skilled person, e.g. asoftware engineer, would be tasked to implement. Whether the claimed
specific technical implementation would have been obvious to the skilled
person would still have to be assessed.
5.4.2 Examples of applying the COMVIK approach
The following examples aim at illustrating the application of the COMVIK
approach using the steps listed in G-VII, 5.4 in various scenarios. The
scenarios are adapted from case law. The claims are greatly simplified forillustrative purposes.
5.4.2.1

Example 1

Claim 1:
Method of facilitating shopping on a mobile device wherein:(a)the user selects two or more products to be purchased;

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the mobile device transmits the selected products data and thedevice location to a server;(c)

the server accesses a database of vendors to identify vendors
offering at least one of the selected products;(d)the server determines, on the basis of the device location and theidentified vendors, an optimal shopping tour for purchasing theselected products by accessing a cache memory in which optimal
shopping tours determined for previous requests are stored; and(e)the server transmits the optimal shopping tour to the mobile devicefor displaying.

Application of the steps of the problem-solution approach according to
G-VII, 5.4:
Step (i): The features contributing to the technical character are at firstglance identified as a distributed system comprising a mobile device
connected to a server computer which has a cache memory and isconnected to a database.
Step (ii): Document D1, which discloses a method for facilitating shopping
on a mobile device wherein the user selects a single product and the server
determines from a database the vendor selling the selected product nearest
to the user and transmits this information to the mobile device, is selected
as the closest prior art.
Step (iii): The differences between the subject-matter of claim 1 and D1
are:
(1)

The user can select two or more products to purchase (instead of asingle product only).

(2)

An "optimal shopping tour" for purchasing the two or more products
is provided to the user.

(3)

The optimal shopping tour is determined by the server by accessing
a cache memory in which optimal shopping tours determined forprevious requests are stored.

Differences (1) and (2) represent modifications of the underlying businessconcept, since they define producing an ordered list of shops to visit whichsell these products. No technical purpose is served, and no technicaleffects can be identified from these differences. Hence, these features
make no technical contribution over D1. On the other hand, difference (3)makes a technical contribution as it relates to the technical implementationof differences (1) and (2) and has the technical effect of enabling rapid
determination of the optimal shopping tour by accessing previous requests
which are stored in a cache memory.

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Step (iii)(c): The objective technical problem is to be formulated from theperspective of the person skilled in the art as an expert in a technical field(G-VII, 3). Such a person is not deemed to have any expertise inbusiness-related matters. In the present case, the skilled person can be
defined as an expert in information technology who gains knowledge of thebusiness-related features (1) and (2) as part of the formulation of thetechnical problem to be solved, as would be the case in a realistic situationin the form of a requirement specification. The objective technical problem
is thus formulated as how to modify the method of D1 to implement in atechnically efficient manner the non-technical business concept defined by
the differences (1) and (2), which is given as a constraint to be met.
Obviousness: Following requirement (1), it would have been a matter ofroutine for the skilled person to adapt the mobile device used in D1 so as toenable the user to select two or more products instead of a single one. It
would also have been obvious to assign the task of determining the optimal
shopping tour (arising from requirement (2)) to the server, by analogy withthe server likewise determining the nearest vendor in D1. Since theobjective technical problem further requires a technically efficient
implementation, the skilled person would have looked for efficient technicalimplementations of the determination of a tour. A second document D2
discloses a travel planning system for determining travel trips, listing a setof places to visit, and addresses this technical problem: the system of D2
accesses for this purpose a cache memory storing results of previous
queries. The skilled person would thus have considered the teaching of D2
and adapted the server in D1 to access and use a cache memory as
suggested in D2 so as to provide a technically efficient implementation of
the determination of the optimal shopping tour, i.e. difference (3). Hence,no inventive step is involved within the meaning of Art. 52(1) and 56.
Remarks: The example shows a typical application of the approachdeveloped in T 641/00 (COMVIK). The analysis of technical effects is
performed in detail at step (iii) to see if the differences from the closest priorart comprise features making a technical contribution. This analysis refines
the initial finding of step (i) by identifying the feature of accessing the cachememory for results of previous requests in the step of determining the tour
as a technical feature. Note that in this case step (i) would not need to be
indicated explicitly in the reasoning. In step (iii)(c), the non-technicalmodifications to the business concept are given to the skilled person as aconstraint to be met. Whether or not the new business concept isinnovative is here irrelevant for the assessment of inventive step, which has
to be based on the features of its technical implementation.
5.4.2.2

Example 2

Claim 1:
A computer-implemented method for brokering offers and demands in thefield of transporting freight, comprising the following steps:(a)receiving transportation offers/demands fromlocation and time data;

users, includingPart G – Chapter VII-11

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receiving current location information of the users from GPS
terminals with which the users are equipped;(c)after receiving a new offer/demand request, verifying if there areprevious offers/demands not yet satisfied that can respond to the
new request;(d)

if so, selecting the one for which the current locations of both users
are closest; and(e)otherwise storing the new request.

Application of the steps of the problem-solution approach according to
G-VII, 5.4:
Step (i): Underlying the claimed method is the following business method:A method for brokering offers and demands in the field of freighttransportation, comprising:–receiving transportation offers/demands from users, including
location and time data;–

receiving information regarding the current location of the users;–

after receiving a new offer/demand request, verifying if there areprevious offers/demands not yet satisfied that can respond to the
new request;–

if so, selecting the one for which the current locations of both users
are closest; and–otherwise storing the new request.

Such a business method is per se non-technical and excluded under
Art. 52(2)(c) and (3). Brokering offers and demands is a typical businessactivity. Using the geographical location of users is the kind of criterion
which a transportation broker could specify as part of a business method
based on non-technical, business considerations only. This businessmethod does not serve any technical purpose in the context of the invention
and thus does not contribute to its technical character.
Therefore, only the features related to the technical implementation of thisbusiness method can be identified as the features contributing to thetechnical character of the invention:–

The business method steps are carried out by a computer.

–

The current location information is received from GPS terminals.

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Step (ii): As a suitable starting point, document D1, which discloses amethod of order management in which a server computer receives location
information from GPS terminals, is selected as the closest prior art.
Step (iii): The difference between the subject-matter of claim 1 and D1 isthus the computer implementation of the steps of the business method
defined above.
The technical effect of this difference is merely the automation of thebusiness method underlying claim 1. The conclusion reached in step (i)holds, since the only distinguishing feature making a technical contribution
is the technical implementation of this business method.
Step (iii)(c): The objective technical problem is formulated as how to adapt
the method of D1 so as to implement the business method of brokeringoffers and demands according to the user's current location. The person
skilled in the art is considered to be a software project team and is given
the knowledge of the business method in the form of a requirement
specification.
Obviousness: Adapting the method of D1 to execute the business method
steps is straightforward and requires routine programming only. Therefore,
no inventive step is involved within the meaning of Art. 52(1) and Art. 56.
Remarks: In this example, it was clear from the initial analysis at step (i)that underlying the claimed method was a method for brokering offers anddemands, which as such is a business method. The features defining thebusiness method were easily separable from the technical features of its
computer implementation. Therefore, this example illustrates a line ofargument in which it was possible in step (i) to determine all the features
which contribute to the technical character of the invention and all thosewhich do not. This line of argument pertains more to the field ofcomputer-implemented business methods and might be less suitable inother fields.
5.4.2.3 Example 3This example illustrates the two-level technicality analysis set forth insection G-VII, 5.4.
Claim 1:A system for the transmission of a broadcast media channel to a remoteclient over a data connection, said system including:(a)means for storing an identifier of the remote client and an indicationof an available data rate of the data connection to the remote client,said available data rate being lower than the maximum data rate forthe data connection to the remote client;(b)means for determining a rate at which data is to be transmitted basedon the indication of the available data rate of the data connection;
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means for transmitting data at the determined rate to said remoteclient.

Application of the steps of the problem-solution approach according to
G-VII, 5.4:
Step (i): At first glance, all features appear to contribute to the technicalcharacter of the invention.
Step (ii): Document D1, which discloses a system for broadcasting video
over an xDSL connection to the set-top boxes of subscribers, is selected as
the closest prior art. The system comprises a database storing identifiers ofsubscribers' computers and, in association with them, an indication of the
maximum data rate for the data connection to each subscriber's computer.
The system further comprises means for transmitting the video to a
subscriber's computer at the maximum data rate stored for said computer.
Step (iii): The differences between the subject-matter of claim 1 and D1
are:
(1)

Storing an indication of an available data rate of the data connection
to the remote client, said available data rate being lower than the
maximum data rate for the data connection to the remote client.

(2)

Using said available data rate to determine the rate at which the datais transmitted to the remote client (instead of transmitting the data at
the maximum data rate stored for said remote client as in D1).

The purpose served by using an "available data rate" which is lower than amaximum data rate for the data connection to the remote client is notapparent from the claim. Therefore, the relevant disclosure in thedescription is taken into account. In the description, it is explained that a
pricing model is provided which allows a customer to choose from several
service levels, each service level corresponding to an available data-rate
option having a different price. A user may select an available data rate
lower than the maximum data rate possible with the connection in order topay less. Hence, using an available data rate which is lower than the
maximum data rate for the connection to the remote client addresses theaim of allowing a customer to choose a data-rate service level according tothat pricing model. This is not a technical aim, but an aim of a financial,administrative or commercial nature and thus falls under the exclusion ofschemes, rules and methods for doing business in Art. 52(2)(c). It may thus
be included in the formulation of the objective technical problem as aconstraint to be met.
The features of storing the available data rate and of using it to determine
the rate at which the data is transmitted have the technical effect of
implementing this non-technical aim.
Step (iii)(c): The objective technical problem is therefore formulated as how
to implement in the system of D1 a pricing model which allows thecustomer to choose a data-rate service level.

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Obviousness: Given the task of implementing this choice of data-rateservice level in accordance with the pricing model, it would be obvious to
the skilled person that the data rate purchased by a subscriber (i.e. the"available data rate" of claim 1), which can only be lower or equal to the
maximum data rate of the data connection to the subscriber's computer(i.e. the "remote client" of claim 1), would have to be stored for each
subscriber and used by the system to determine the rate at which data is tobe transmitted to a subscriber. Therefore, no inventive step is involved
within the meaning of Art. 52(1) and Art. 56.
Remarks: This example illustrates a claim which involves a complex mix oftechnical and non-technical features. On a first-glance basis in step (i), allfeatures appeared to contribute to the technical character of the invention.
After comparison with D1, a detailed analysis of the technical character ofthe contribution made by the invention over D1 was possible at step (iii).
This detailed analysis revealed that the differentiating features addressed a
non-technical aim. This non-technical aim could thus be incorporated into
the formulation of the objective technical problem (T 641/00).
5.4.2.4

Example 4

Claim 1:
A computer-implemented method of determining areas in which there is anincreased risk of condensation for a surface in a building comprising thesteps of:(a)controlling an infrared (IR) camera to capture an image of thetemperature distribution of the surface;(b)receiving mean values for the air temperature and the relative air
humidity measured inside the building over the last 24 hours;(c)calculating, based on said mean air temperature and mean relative
air humidity, a condensation temperature at which there is a risk ofcondensation on the surface;(d)comparing the temperature at each point on the image to said
calculated condensation temperature;(e)identifying the image points having a temperature lower than thecalculated condensation temperature as areas at increased risk ofcondensation on the surface; and(f)modifying the image by colouring the image points identified in step(e) in a particular colour to indicate the areas at increased risk ofcondensation to a user.

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Application of the steps of the problem-solution approach according to
G-VII, 5.4:
Step (i): The control of an IR camera in step (a) clearly makes a technicalcontribution. The question is whether steps (b) to (f) also contribute to thetechnical character of the claimed subject-matter.
Considered in isolation, steps (b) to (e) relate to algorithmic/mathematicalsteps and step (f) defines a presentation of information. However, the claim
is not directed to a mental act, a mathematical method or presentation of
information as such (which would be excluded from patentability under
Art. 52(2)(a), (c), (d) and (3)) because the claimed subject-matter involves
technical means such as a computer.
Therefore, it has to be assessed whether the algorithmic and mathematicalsteps as well as the step related to presentation of information do, in thecontext of the invention, contribute to producing a technical effect, thereby
contributing to the technical character of the invention.
Since the above-mentioned algorithmic and mathematical steps (b) to (e)are used to predict the physical state (condensation) of an existing real
object (surface) from measurements of physical properties (IR image,measured air temperature and relative air humidity over time), they
contribute to a technical effect serving a technical purpose. This applies
regardless of what use is made of the output information about the risk ofcondensation on the surface (see G-II, 3.3, in particular subsection"Technical applications"). Thus, steps (b) to (e) contribute also to thetechnical character of the invention.
A decision on whether step (f) makes a technical contribution is deferred tostep (iii) below.
Step (ii): Document D1 discloses a method for monitoring a surface todetermine the risk of condensation forming on it. The risk of condensation
is determined based on the difference of the temperature reading obtained
via an IR pyrometer for a single point on the surface and the condensation
temperature calculated based on the actual ambient air temperature andthe relative air humidity. The numerical value of the difference is thenshown to a user as an indication of the likelihood of condensation at said
point. This document is taken as the closest prior art.
Step (iii): The differences between the subject-matter of claim 1 and D1
are:
(1)

an IR camera is used (instead of the IR pyrometer of D1, which only
captures the temperature at a single point of the surface);(2)mean values for air temperature and relative air humidity measured
inside the building over the last 24 hours are received;

March 2023

Guidelines for Examination in the EPO(3)the condensation temperature is calculated on the basis of the mean
air temperature and mean relative air humidity and compared to thetemperature at each point on the IR image of the surface;(4)

image points having a temperature lower than the calculatedcondensation temperature are identified as areas at increased risk ofcondensation on the surface;(5)

colours are used to indicate areas at increased risk of condensation.

As mentioned above, distinguishing features (1)-(4) contribute to thetechnical character of the claimed subject-matter and must be taken into
consideration for the formulation of the technical problem. These features
produce the technical effect of a more precise and reliable prediction of therisk of condensation as a result of considering all surface areas (asopposed to a single point) and accounting for temperature variations during
a day.
Distinguishing feature (5) defines a particular manner of presenting
information to a user (Art. 52(2)(d)) which does not produce a technicaleffect since any effect of the choice of displaying data using colours rather
than numerical values depends on subjective preferences of the user:
some users may prefer the former and other the latter (see G-II, 3.7). Thisfeature thus does not make a technical contribution. It cannot support thepresence of an inventive step and is not discussed further in the analysis
since it has no bearing on the other distinguishing features.
Step (iii)(c): The objective technical problem is therefore formulated as how
to determine the risk of condensation on a surface in a more precise andreliable manner.
Obviousness: The use of an IR camera for obtaining temperature readings
on a surface can be considered a normal technical development in the fieldof thermography without exercising any inventive activity: IR cameras were
well known at the effective date of the application. Using an IR camera is astraightforward alternative to measuring the temperature at several points
on the monitored surface using an IR pyrometer for the skilled person toarrive at a temperature distribution of the surface.
However, D1 does not suggest considering a temperature distribution on asurface (as opposed to at a single point) and calculating mean values for
air temperature and taking relative air humidity measured inside thebuilding over the last 24 hours into consideration. Neither does it suggest
taking into account different conditions which may realistically occur inside
the building over time for predicting the risk of condensation.
Assuming that no other prior art suggests the technical solution of theobjective technical problem defined by distinguishing features (1)-(4), thesubject-matter of claim 1 involves an inventive step.
Remarks: This example illustrates the situation addressed in G-VII, 5.4,
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non-technical but do, in the context of the claimed invention, contribute toproducing a technical effect serving a technical purpose (features (b) to (e),which are algorithmic/mathematical steps). Since said features contribute to
the technical character of the invention, they may support the presence ofan inventive step.
5.4.2.5

Example 5

Claim 1:
A method for coating a workpiece using a thermal spray coating process,the method comprising:(a)applying, using a spray jet, a material to the workpiece by thermal
spray coating;(b)monitoring the thermal spray coating process in real time bydetecting properties of particles in the spray jet and supplying theproperties as actual values;(c)comparing the actual values with target values;

and, in the event that the actual values deviate from the target values,(d)adjusting process parameters for the thermal spray coating process
automatically by a controller on the basis of a neural network, said
controller being a neuro-fuzzy controller which combines a neuralnetwork and fuzzy logic rules and thereby maps statistical
relationships between input variables and output variables of theneuro-fuzzy controller.

Background: The invention relates to the control of an industrial process,i.e. thermal spray coating of a workpiece. The material used for the coatingis injected with the help of a carrier gas into the high-temperature jet, where
it is accelerated and/or molten. The properties of the resulting coatings are
subject to great fluctuations, even with seemingly constant parameters of
the coating operation. The spray jet is monitored visually with a CCD
camera. The image picked up by the camera is sent to an image
processing system, from which the properties of particles in the spray jet(e.g. velocity, temperature, size, etc) can be derived. A neuro-fuzzycontroller is a mathematical algorithm which combines a neural networkwith fuzzy-logic rules.
Application of the steps of the problem-solution approach according to
COMVIK:
Step (i): The method is directed at thermal spray coating, i.e. a specifictechnical process, comprising various concrete technical features, e.g.
particles, workpiece, a spray coating device (implicit).
Step (ii): Document D1 discloses a method for the control of a thermal
spray coating process by applying material to a workpiece using a spray jet,March 2023

Guidelines for Examination in the EPO

detecting deviations in the properties of the particles in said spray jet andadjusting process parameters automatically on the basis of the outcome ofa neural network analysis. This document represents the closest prior art.
Step (iii): The difference between the method of claim 1 and D1 concerns
the use of a neuro-fuzzy controller combining a neural network and fuzzy
logic rules as specified in the second part of step (d).
Computational models and algorithms related to artificial intelligence are,on their own, of an abstract mathematical nature (G-II, 3.3.1). The featureof combining results of a neural network analysis and fuzzy logic defines amathematical method when taken on its own. However, together with thefeature of adjusting the process parameters, it contributes to the control of
the coating process. Hence, the output of the mathematical method is
directly used in the control of a specific technical process.
Control of a specific technical process is a technical application, see
G-II, 3.3 (subsection "Technical applications"). In conclusion, thedifferentiating feature contributes to producing a technical effect serving atechnical purpose and thereby contributes to the technical character of theinvention. Therefore, it is taken into account in the assessment of inventive
step.
Step (iii)(c): The objective technical problem must be derived from technicaleffects that are based on objectively established facts and that are directly
and causally related to the technical features of the claim.
In the present case, the mere fact that the parameters are calculated using
a combination of results of a neural network analysis and fuzzy logic –without any details on specific adaptation to the thermal spray coatingprocess – cannot credibly ensure any technical effect beyond a different
adjustment of the process parameters. In particular, no evidence can befound to acknowledge any increase in the quality of coating properties or of
the thermal spraying method that would result from the combination offeatures of claim 1. In the absence of such evidence, the objective technicalproblem is to provide an alternative solution to the problem of adjusting theprocess parameters which control the thermal spray coating process whichis already solved in D1.
Obviousness: Starting from the teaching of D1 and tasked with the above
objective technical problem, the person skilled in the field of control
engineering (G-VII, 3) would look for an alternative solution to determine
the control parameters of the process.
A second prior-art document D2 discloses a combination of a neuralnetwork and fuzzy logic rules providing a neuro-fuzzy controller in thetechnical field of control engineering. From this prior art, it has become
apparent that at the date of filing of the application, neuro-fuzzy controllers
were well known and applied in the field of control engineering. The present
solution is therefore considered to be an obvious alternative, rendering the
subject-matter of claim 1 not inventive.

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Remarks: This example illustrates the case where a mathematical feature
which, when taken in isolation, is non-technical but contributes to producing
a technical effect serving a technical purpose in the context of the claim.
The feature of using a combination of neural network results and fuzzy logic
for adjusting process parameters for controlling thermal spraying
contributes to the technical character of the invention and may therefore
support the presence of an inventive step.
However, in the present case, claim 1 does not contain any information
about the coating properties to be achieved. The availability of the generalteaching of using neuro-fuzzy controllers in the field of control engineeringresulted in the objection that the controller of claim 1 was an obvious
alternative. This particular objection could have been avoided if the claim
had recited further features of the fuzzy control method linked to sometechnical properties of the spray coating process. For example, if thedesirable coating properties resulted from specific The input and output
variables of the neuro-fuzzy controller, how the controller is trained or how
the output is used in the regulation of the process parameters, thesefeatures would have had to be recited in the claim. The description andfigures as filed could have provided evidence that the desirable coating
properties are indeed achieved. are not defined. No features of the neurofuzzy controller are linked to any technical properties of the spray coating.
The As currently claimed, the neuro-fuzzy controller is therefore notadapted for the specific application of thermal spray coating. There is noevidence of any particular technical effect which is credibly achieved over
the whole claimed scope other than that of providing different processparameters as input to the controller.
6. Combining pieces of prior art
In the context of the problem-solution approach, it is permissible to combine
the disclosure of one or more documents, parts of documents or otherpieces of prior art (e.g. a public prior use or unwritten general technicalknowledge) with the closest prior art. However, the fact that more than one
disclosure must be combined with the closest prior art in order to arrive at a
combination of features may be an indication of the presence of an
inventive step, e.g. if the claimed invention is not a mere aggregation offeatures (see G-VII, 7).
A different situation occurs where the invention is a solution to a plurality of
independent "partial problems" (see G-VII, 7 and 5.2). Indeed, in such acase it is necessary to separately assess, for each partial problem, whether
the combination of features solving the partial problem is obviously
derivable from the prior art. Hence, a different document can be combinedwith the closest prior art for each partial problem (see T 389/86). For the
subject-matter of the claim to be inventive, it suffices however that one ofthese combinations of features involves an inventive step.
In determining whether it would be obvious to combine two or more distinct
disclosures, the examiner also has regard in particular to the following:(i)whether the content of the disclosures (e.g. documents) is such as tomake it likely or unlikely that the person skilled in the art, when faced

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with the problem solved by the invention, would combine them – forexample, if two disclosures considered as a whole could not inpractice be readily combined because of inherent incompatibility indisclosed features essential to the invention, the combining of these
disclosures is not normally regarded as obvious;(ii)

whether the disclosures, e.g. documents, come from similar,
neighbouring or remote technical fields (see G-VII, 3);(iii)

the combining of two or more parts of the same disclosure would be
obvious if there is a reasonable basis for the skilled person toassociate these parts with one another. It would normally be obvious
to combine with a prior-art document a well-known textbook or
standard dictionary; this is only a special case of the general
proposition that it is obvious to combine the teaching of one or more
documents with the common general knowledge in the art. It
would, generally speaking, also be obvious to combine two
documents one of which contains a clear and unmistakable reference
to the other (for references which are considered an integral part ofthe disclosure, see G-IV, 5.1 and G-VI, 1). In determining whether itis permissible to combine a document with an item of prior art madepublic in some other way, e.g. by use, similar considerations apply.

7. Combination vs. juxtaposition or aggregation
The invention claimed must normally be considered as a whole. When aclaim consists of a "combination of features", it is not correct to argue thatthe separate features of the combination taken by themselves are known orobvious and that "therefore" the whole subject-matter claimed is obvious.
However, where the claim is merely an "aggregation or juxtaposition offeatures" and not a true combination, it is enough to show that theindividual features are obvious to prove that the aggregation of features
does not involve an inventive step (see G-VII, 5.2, last paragraph). A set oftechnical features is regarded as a combination of features if the functional
interaction between the features achieves a combined technical effectwhich is different from, e.g. greater than, the sum of the technical effects of
the individual features. In other words, the interactions of the individualfeatures must produce a synergistic effect. If no such synergistic effectexists, there is no more than a mere aggregation of features (see T 389/86
and T 204/06).
For example, the technical effect of an individual transistor is essentiallythat of an electronic switch. However, transistors interconnected to form a
microprocessor synergically interact to achieve technical effects, such asdata processing, which are over and above the sum of their respective
individual technical effects (see also G-VII, Annex, 2).
According to T 9/81, patentability has been accepted for a preparation in
the form of a "kit-of-parts" in which the individual active compounds,
representing known therapeutic agents, are physically separated, provided
that the use of those compounds, either simultaneously, separately orsequentially, produces a new and unexpected joint therapeutic effect whichcannot be attained by the compounds independently of each other.

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8. "Ex post facto" analysis
An invention which at first sight appears obvious might in fact involve an
inventive step. Once a new idea has been formulated, it can often be
shown theoretically how it might be arrived at, starting from something
known, by a series of apparently easy steps. The examiner must be wary of
ex post facto analysis of this kind. When combining documents cited in the
search report, it always has to be borne in mind that the documents
produced in the search have, of necessity, been obtained withforeknowledge of what matter constitutes the alleged invention. In all cases
the examiner must attempt to visualise the overall state of the art
confronting the skilled person before the applicant's contribution, and mustseek to make a "real-life" assessment of this and other relevant factors.
The examiner has to take into account all that is known concerning thebackground of the invention and give fair weight to relevant arguments orevidence submitted by the applicant. If, for example, an invention is shown
to be of considerable technical value, and particularly if it provides atechnical advantage which is new and surprising and which is not merely
achieved as a bonus effect in a "one-way street" situation (see G-VII, 10.2),
and this technical advantage can convincingly be related to one or more of
the features included in the claim defining the invention, the examiner has
to be hesitant in pursuing an objection that such a claim lacks inventive
step.
9. Origin of an invention
While the claim must in each case be directed to technical features (andnot, for example, merely to an idea), in order to assess whether aninventive step is present it is important for the examiner to bear in mind thatan invention may, for example, be based on the following:(i)the devising of a solution to a known problem;
Example: the problem of permanently marking farm animals such as
cows without causing pain to the animals or damage to the hide has
existed since farming began. The solution ("freeze-branding")
consists in applying the discovery that the hide can be permanently
depigmented by freezing.

(ii)

the arrival at an insight into the cause of an observed phenomenon(the practical use of this phenomenon then being obvious);
Example: the agreeable flavour of butter is found to be caused byminute quantities of a particular compound. As soon as this insighthas been arrived at, the technical application comprising adding thiscompound to margarine is immediately obvious.

Many inventions are of course based on a combination of the above
possibilities – e.g. the arrival at an insight and the technical application ofthat insight may both involve the use of the inventive faculty.

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10. Secondary indicators
10.1 Predictable disadvantage; non-functional modification; arbitrarychoiceIf an invention is the result of a foreseeable disadvantageous modificationof the closest prior art, which the skilled person could clearly predict andcorrectly assess, and if this predictable disadvantage is not accompanied
by an unexpected technical advantage, then the claimed invention does not
involve an inventive step (see T 119/82 and T 155/85). In other words, amere foreseeable worsening of the prior art does not involve an inventive
step. However, if this worsening is accompanied by an unexpected
technical advantage, an inventive step might be present. Similar
considerations apply to the case where an invention is merely the result ofan arbitrary non-functional modification of a prior-art device or of a mere
arbitrary choice from a host of possible solutions (see T 72/95 andT 939/92).
10.2 Unexpected technical effect; bonus effect
An unexpected technical effect may be regarded as an indication of
inventive step. It must, however, derive from the subject-matter as claimed,
not merely from some additional features which are mentioned only in thedescription. The unexpected effect must be based on the characterisingfeatures of the invention, in combination with the known features of theclaim. It cannot be based merely on features which are, in combination,
already comprised in the prior art.
However, if, having regard to the state of the art, it would already havebeen obvious for a skilled person to arrive at something falling within theterms of a claim, for example due to a lack of alternatives thereby creatinga "one-way street" situation, the unexpected effect is merely a bonus effectwhich does not confer inventiveness on the claimed subject-matter(see T 231/97 and T 192/82). If the skilled person would have to choose
from a range of possibilities, there is no one-way street situation and theunexpected effect may very well lead to the recognition of an inventive
step.
The unexpected property or effect must be described in precise terms. A
vague statement such as "The new compounds have shown unexpectedly
good pharmaceutical properties" cannot support the presence of an
inventive step.
However, the product or process does not have to be "better" than known
products or processes. It is sufficient that the property or effect would nothave been expected.
10.3 Long-felt need; commercial success
Where the invention solves a technical problem which workers in the art
have been attempting to solve for a long time, or otherwise fulfils a long-felt
need, this may be regarded as an indication of inventive step.
Commercial success alone is not to be regarded as indicative of inventive
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evidence of a long-felt want is of relevance provided the examiner issatisfied that the success derives from the technical features of theinvention and not from other influences (e.g. selling techniques oradvertising).
11. Arguments and evidence submitted by the applicant
The relevant arguments and evidence to be considered by the examiner forassessing inventive step may be either taken from the originally-filed patentapplication or submitted by the applicant during the subsequent
proceedings (see G-VII, 5.2 and H-V, 2.2 and 2.4).
Care must be taken, however, whenever new effects in support of inventive
step are referred to. Such new effects can only be taken into account if they
are implied by or at least related to a the technical problem initiallysuggested in the originally filed application (see also G-VII, 5.2, T 386/89
and T 184/82).
Example of such a new effect:
The invention as filed relates to a pharmaceutical composition having a
specific activity. At first sight, having regard to the relevant prior art, it would
appear that there is a lack of inventive step. Subsequently, the applicant
submits new evidence which shows that the claimed composition exhibits
an unexpected advantage in terms of low toxicity. In this case, it isallowable to reformulate the technical problem by including the aspect of
toxicity, since pharmaceutical activity and toxicity are related in the sensethat the skilled person would always contemplate the two aspects together.
The reformulation of the technical problem may or may not give rise toamendment or insertion of the statement of the technical problem in thedescription. Any such amendment is only allowable if it satisfies theconditions listed in H-V, 2.4. In the above example of a pharmaceuticalcomposition, neither the reformulated problem nor the information on
toxicity could be introduced into the description without infringing
Art. 123(2).
12. Selection inventions
The subject-matter of selection inventions differs from the closest prior art
in that it represents selected subsets or sub-ranges. If this selection isconnected to a particular technical effect, and if no hints exist leading theskilled person to the selection, then an inventive step is accepted (thistechnical effect occurring within the selected range may also be the same
effect as attained with the broader known range, but to an unexpected
degree). The criterion of "seriously contemplating" mentioned in connection
with the test for novelty of overlapping ranges must not be confused withthe assessment of inventive step. For inventive step, it has to beconsidered whether the skilled person would have made the selection or
would have chosen the overlapping range in the expectation of some
improvement or advantage. If the answer is negative, then the claimed
matter involves an inventive step.

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The unexpected technical effect must apply to the entire range as claimed.
If it occurs in only part of the claimed range, the claimed subject-matterdoes not solve the specific problem to which the effect relates, but only themore general problem of obtaining, for example, "a further product X" or "afurther process Y" (see T 939/92).
Decision T 261/15 confirmed that the requirement for a sub-range torepresent a purposive selection is a matter of inventive step and notnecessary for establishing novelty (see also G-VI, 8).
13. Inventive step assessment in the field of biotechnology
In the field of biotechnology, obviousness is considered at hand not only
when results are clearly predictable, but also when there is a reasonable
expectation of success. In order to render a solution obvious, it is sufficientto establish that the skilled person would have followed the teaching of theprior art with a reasonable expectation of success. Likewise, a mere "tryand see" attitude in light of the closest prior art does not necessarily render
the solution inventive.
On the other hand, a "reasonable expectation of success" is not to be
confused with the "hope to succeed". If researchers are aware whenembarking on their research that, in order to reach a technical solution, they
will need not only technical skill but also the ability to make the rightnon-trivial decisions along the way, this cannot be regarded as a"reasonable expectation of success".
For the assessment of inventive step of antibodies, see G-II, 5.6.2.
14. Dependent claims; claims in different categories
If the subject-matter of an independent claim is new and non-obvious, there
is no need to investigate the novelty and non-obviousness of thesubject-matter of any claims dependent thereon, except in situations where
the subject-matter of a dependent claim has a later effective date than the
independent claim and intermediate documents are to be considered(see F-VI, 2.4.3).
Similarly, if the subject-matter of a claim to a product is new andnon-obvious there is no need to investigate the novelty andnon-obviousness of the subject-matter of any claims for a process which
inevitably results in the manufacture of that product or of any claims for ause of that product. In particular, analogy processes, i.e. processes whichthemselves would otherwise not involve an inventive step, are neverthelesspatentable in so far as they provide a novel and inventive product(see T 119/82). However, in cases where the product, process and use
claims have different effective dates, a separate examination as to novelty
and inventive step may still be necessary in view of intermediate
documents.

Part G – Chapter VII-25

Part G – Chapter VII-26

Guidelines for Examination in the EPO

March 2023

15. Examples
The annex to this chapter gives examples of circumstances where an
invention may be regarded as obvious or where it may involve an inventive
step. It is to be stressed that these examples are only for illustrative
purposes and that the applicable principle in each case is "was it obvious toa person skilled in the art?" (see G-VII, 5). Examiners must avoid attempts
to fit a particular case into one of these examples if it is not clearly
applicable. Also, the list is not exhaustive.

March 2023

Guidelines for Examination in the EPO

Annex
Examples relating to the requirement of inventive step – indicators
1.

Application of known measures?

1.1 Inventions involving the application of known measures in an obvious
way and in respect of which an inventive step is therefore to be ruled out:(i)

The teaching of a prior-art document is incomplete and at least oneof the possible ways of "filling the gap" which would naturally or
readily occur to the skilled person results in the invention.
Example: The invention relates to a building structure made fromaluminium. A prior-art document discloses the same structure andsays that it is of light-weight material but fails to mention the use ofaluminium.

(ii)

The invention differs from the known art merely in the use ofwell-known equivalents (mechanical, electrical or chemical).
Example: The invention relates to a pump which differs from a known
pump solely in that its motive power is provided by a hydraulic motor
instead of an electric motor.

(iii)

The invention consists merely in a new use of a well-known material
employing the known properties of that material.
Example: Washing composition containing as detergent a known
compound having the known property of lowering the surface tensionof water, this property being known to be an essential one fordetergents.

(iv)

The invention consists in the substitution in a known device of a
recently developed material whose properties make it plainly suitable
for that use ("analogous substitution").
Example: An electric cable comprises a polyethylene sheath bonded
to a metallic shield by an adhesive. The invention lies in the use of aparticular newly developed adhesive known to be suitable forpolymer-metal bonding.

(v)

The invention consists merely in the use of a known technique in aclosely analogous situation ("analogous use").
Example: The invention resides in the application of a pulse control
technique to the electric motor driving the auxiliary mechanisms of anindustrial truck, such as a fork-lift truck, the use of this technique tocontrol the electric propulsion motor of the truck being alreadyknown.

Part G – Chapter VII-27

Part G – Chapter VII-28

Guidelines for Examination in the EPO

March 2023

1.2 Inventions involving the application of known measures in a
non-obvious way and in respect of which an inventive step is therefore to
be recognised:(i)A known working method or means when used for a different
purpose involves a new, surprising effect.
Example: It is known that high-frequency power can be used in
inductive butt welding. It should therefore be obvious thathigh-frequency power could also be used in conductive butt welding
with similar effect. However, if high-frequency power were used forthe continuous conductive butt welding of coiled strip but without
removing scale (such scale removal normally being necessary duringconductive welding in order to avoid arcing between the welding
contact and the strip), there is the unexpected additional effect thatscale removal is found to be unnecessary because at high frequency
the current is supplied in a predominantly capacitive manner via thescale which forms a dielectric. In that case, an inventive step would
exist.

(ii)

A new use of a known device or material involves overcoming
technical difficulties not resolvable by routine techniques.
Example: The invention relates to a device for supporting andcontrolling the rise and fall of gas holders, enabling the previously
employed external guiding framework to be dispensed with. A similar
device was known for supporting floating docks or pontoons but
practical difficulties not encountered in the known applications
needed to be overcome in applying the device to a gas holder.

2.

Obvious combination of features?

2.1 Obvious and consequently non-inventive combination of features:
The invention consists merely in the juxtaposition or association of known
devices or processes functioning in their normal way and not producing any
non-obvious working interrelationship.
Example: Machine for producing sausages consists of a known mincing
machine and a known filling machine disposed side by side.
2.2 Not obvious and consequently inventive combination of features:
The combined features mutually support each other in their effects to suchan extent that a new technical result is achieved. It is irrelevant whether
each individual feature is fully or partly known by itself. However, if the
combination of features is a bonus effect, e.g. as the result of a "one-way
street" situation, the combination might lack an inventive step.
Example: A mixture of medicines consists of a painkiller (analgesic) and a
tranquilliser (sedative). It was found that through the addition of thetranquilliser, which intrinsically appeared to have no painkilling effect, theMarch 2023

Guidelines for Examination in the EPO

analgesic effect of the painkiller was intensified in a way which could nothave been predicted from the known properties of the active substances.
3.

Obvious selection?

3.1 Obvious and consequently non-inventive selection among a numberof known possibilities:(i)

The invention consists merely in choosing from a number of equally
likely alternatives.
Example: The invention relates to a known chemical process inwhich it is known to supply heat electrically to the reaction mixture.
There are a number of well-known alternative ways of so supplying
the heat, and the invention resides merely in the choice of one
alternative.

(ii)

The invention resides in the choice of particular dimensions,temperature ranges or other parameters from a limited range ofpossibilities, and it is clear that these parameters could be arrived atby routine trial and error or by the application of normal design
procedures.
Example: The invention relates to a process for carrying out a known
reaction and is characterised by a specified rate of flow of an inert
gas. The prescribed rates are merely those which would necessarily
be arrived at by the skilled practitioner.

(iii)

The invention can be arrived at merely by a simple extrapolation ina straightforward way from the known art.
Example: The invention is characterised by the use of a specified
minimum content of a substance X in a preparation Y in order toimprove its thermal stability, and this characterising feature can bederived merely by extrapolation on a straight-line graph, obtainablefrom the known art, relating thermal stability to the content of
substance X.

(iv)

The invention consists merely in selecting particular chemicalcompounds or compositions (including alloys) from a broad field.
Example: The prior art includes disclosure of a chemical compoundcharacterised by a specified structure including a substituent group
designated "R". This substituent "R" is defined so as to embraceentire ranges of broadly-defined radical groups such as all alkyl or
aryl radicals either unsubstituted or substituted by halogen and/orhydroxy, although for practical reasons only a very small number of
specific examples are given. The invention consists in the selectionof a particular radical or particular group of radicals from amongst
those referred to as the substituent "R" (the selected radical or groupof radicals not being specifically disclosed in the prior-art document

Part G – Chapter VII-29

Part G – Chapter VII-30

Guidelines for Examination in the EPO

March 2023

since the question would then be one of lack of novelty rather thanobviousness). The resulting compounds:

(v)

(a)

are neither described as having nor shown to possess any
advantageous properties not possessed by the prior-art
examples; or(b)

are described as possessing advantageous properties
compared with the compounds specifically referred to in theprior art, but these properties are ones which the persons
skilled in the art would expect such compounds to possess, sothat they are likely to be led to make this selection.

The invention follows inevitably from developments in the prior art, insuch a way that there was no choice between several possibilities(the "one-way street" situation).
Example: From the prior art it is known that when you reach aparticular compound in a series of known chemical compounds,
expressed in terms of the number of carbon atoms, there is aconsistently increasing insecticidal effect as you move up the series.
With regard to insecticidal effect, the next member of the series after
the member previously known then lies in a "one-way street". If thismember of the series, in addition to exhibiting the expectedenhanced insecticidal effect, proves also to have the unexpected
effect of being selective, i.e. of killing some insects but not others, itnevertheless remains obvious.

3.2 Not obvious and consequently inventive selection among a number ofknown possibilities:(i)

The invention involves special selection in a process of particular
operating conditions (e.g. temperature and pressure) within a known
range, such selection producing unexpected effects in the operationof the process or the properties of the resulting product.
Example: In a process where substance A and substance B aretransformed at high temperature into substance C, it was known that
there is in general a constantly increased yield of substance C as thetemperature increases in the range between 50 and 130°C. It is now
found that in the temperature range from 63 to 65°C, which
previously had not been explored, the yield of substance C wasconsiderably higher than expected.

(ii)

The invention consists in selecting particular chemical compounds
or compositions (including alloys) from a broad field, suchcompounds or compositions having unexpected advantages.
Example: In the example of a substituted chemical compound given
at G-VII, Annex, 3.1(iv) above, the invention again resides in theselection of the substituent radical "R" from the total field of
possibilities defined in the prior disclosure. In this case, however, notMarch 2023

Guidelines for Examination in the EPO

only does the selection embrace a particular area of the possible
field, and result in compounds that can be shown to possess
advantageous properties (see G-VII, 10 and H-V, 2.2) but there are
no indications which would lead the person skilled in the art to thisparticular selection rather than any other in order to achieve theadvantageous properties.
4.

Overcoming a technical prejudice?

As a general rule, there is an inventive step if the prior art leads the person
skilled in the art away from the procedure proposed by the invention. Thisapplies in particular when the skilled person would not even consider
carrying out experiments to determine whether these were alternatives to
the known way of overcoming a real or imagined technical obstacle.
Example: Drinks containing carbon dioxide are, after being sterilised,bottled while hot in sterilised bottles. The general opinion is that
immediately after withdrawal of the bottle from the filling device the bottled
drink must be automatically shielded from the outside air so as to preventthe bottled drink from spurting out. A process involving the same steps butin which no precautions are taken to shield the drink from the outside air(because none are in fact necessary) would therefore be inventive.

Part G – Chapter VII-31

Part H
Amendments and Corrections

March 2023

Part H – Contents a

Guidelines for Examination in the EPO

Contents
Chapter I – The right to amend

I-1

Chapter II – Admissibility of amendments –general rules

II-1

1.

Introduction

II-1

2.

Admissibility in the during examination
procedure

II-1

2.1

Before receipt of the search report – Rule 137(1)

II-1

2.2

After receipt of the search report – Rule 137(2)

II-1

2.3
2.3.1

II-2

2.3.1.4

After receipt of the first communication – Rule 137(3)Examples of the exercise of discretion under
Rule 137(3)Rule 137(3) in conjunction with Art. 83
Rule 137(3) in conjunction with Art. 123(2)Rule 137(3) in conjunction with Art. 84 – missing
essential feature
Rule 137(3) in conjunction with auxiliary requests

2.4

At an advanced stage of the proceedings

II-4

2.5

2.5.4

Amendments filed in reply to a Rule 71(3)communication
Criteria for admitting such amendments
Further course of proceedings
Exceptional case where amendments must be
admitted
Rule 137(4) applies to amendments filed at this stage

2.6

Further requests for amendment after approval

II-6

2.7
2.7.1

Late-filed requests after summons to oralproceedings in examination
Concept of "clear allowability"

II-7
II-7

3.

Admissibility in opposition procedure

II-8

3.1

Amendments in reply to the notice of opposition

II-8

3.2

Amendments not related to the grounds for
opposition

II-9

3.3

Amendments occasioned by national rights

II-9

3.4

Insistence on unallowable amendments

II-9

2.3.1.1
2.3.1.2
2.3.1.3

2.5.1
2.5.2
2.5.3

II-3
II-3
II-4
II-4
II-4

II-4
II-5
II-5
II-6
II-6

Part H – Contents b

Guidelines for Examination in the EPO

March 2023

3.5

Late-filed requests in opposition proceedings

II-10

4.

Amendments in limitation procedure

II-10

5.

Amendments required by a limitation of thesearch under Rule 62a and/or Rule 63

II-10

6.

–

6.1
6.2

Amendments relating to unsearched matter
Rule 137(5)Rule 62a and/or Rule 63 cases
Subject-matter taken from the description

6.

7. Amendments in the case of non-unity

II-12

6.1

7.1 Restriction to a single, searched invention

II-12

6.2

7.2 Restriction to an unsearched invention

II-13

6.3

7.3 No restriction to a single invention searched

II-14

6.4

7.4 Further procedural aspects concerning Euro-PCT
applications
II-14
7.4.1 Where the EPO does not perform asupplementary search
II-14
7.4.2 Where the EPO performs a supplementary
search
II-15

6.4.1
6.4.2

II-10
II-11
II-11

Chapter III – Admissibility of amendments –other procedural matters

III-1

1.

Introduction

III-1

2.

Procedure for amendments to documents

III-1

2.1

Indication of amendments and their basis under
Rule 137(4)Rule 137(4) communication and response thereto
Amendments withdrawn or superseded in theRule 137(4) period
Rule 137(4) and oral proceedings
Transitional provisions relating to Rule 137(4)

2.1.1
2.1.2
2.1.3
2.1.4
2.2

III-1
III-2
III-2
III-4
III-4

Amendment by submitting missing documents or by
filing replacement pages

III-4

2.3

Amendments using copies

III-5

2.4

Amendments made by the EPO at the request of a
party

III-5

Withdrawal of amendments/abandonment of subject
matter

III-6

2.5

March 2023

Part H – Contents c

Guidelines for Examination in the EPO

3.

Auxiliary requests

III-6

3.1
3.1.1
3.1.2
3.1.3

General principles
Sequence of requests
Obligation to give reasons
Neither main nor auxiliary requests allowable

III-6
III-7
III-7
III-7

3.2

In the search phase

III-7

3.3
3.3.1

In examination proceedings
Indication of the amendments made in the requests
and of their basis
Admissibility of auxiliary requests
Criteria for admissibility of auxiliary requests
Timeliness and structure of auxiliary requests
Preparing the decision
Complete text for auxiliary request not yet available
Complete text for auxiliary request available
Applicant does not approve the text proposed for
grant

III-7
III-7
III-8
III-8
III-8
III-8
III-9
III-10

3.4
3.4.1
3.4.2

In opposition proceedings
Written procedure
Oral proceedings

III-10
III-10
III-10

3.5
3.5.1
3.5.2
3.5.3

In limitation proceedings
General principles
Written procedure
Oral proceedings

III-11
III-11
III-12
III-12

4.

Different texts in respect of different contracting
states

III-13

4.1

Dealing with different texts in examination

III-13

4.2

Different text in respect of the state of the art
according to Art. 54(3) EPC and Art. 54(4) EPC 1973 III-13

4.3

Different text where a transfer of right takes placepursuant to Art. 61 or Rule 78 in respect of certain
designated states
III-14
Different text where a transfer of right takes placepursuant to Art. 61 in examination proceedings
III-14
Different texts where a transfer of the patent inrespect of certain designated states takes place in
opposition proceedings
III-14
Opposition cases with different texts where a transfer
of rights by virtue of a final decision pursuant toArt. 61 takes place in examination proceedings
III-14

3.3.2
3.3.2.1
3.3.2.2
3.3.3
3.3.4
3.3.5
3.3.6

4.3.1
4.3.2

4.3.3

4.4

Different texts where national rights of earlier dateexist

III-10

III-14

Part H – Contents d

Guidelines for Examination in the EPO

March 2023

4.5

Opposition proceedings where the claims as granted
are different for different contracting states
III-155.

Calculation of claims fees

III-15Chapter IV – Allowability of amendments –Art. 123(2) and (3)

IV-1

1.

Introduction

IV-1

2.

Allowability of amendments under Art. 123(2)

IV-1

2.1

Basic principle

IV-1

2.2

Content of the application as "originally" filed –general rules
Features described in a document cross-referenced
in the description
Missing parts of the description or missing drawings
filed under Rule 56 after the date of filing
Erroneously filed application documents or parts
under Rule 56a
2.2.3 Claims filed after the date of filing2.2.4 Sequence listings filed after the date of filing2.2.5 Priority documents
2.2.6 Citation of prior art in the description after thefiling date
2.2.7 Clarifications
2.2.8 Trade marks

2.2.1
2.2.2
2.2.3
2.2.4
2.2.5
2.2.6
2.2.7
2.2.8
2.2.9

IV-1
IV-2
IV-3
IV-3
IV-4
IV-4
IV-4
IV-5
IV-5
IV-5

2.3.2
2.3.3
2.3.4

Content of the application as "originally" filed –special applications
Applications filed by reference to an earlier
application
Divisional applications
Applications resulting from a decision under Art. 61
International applications

2.4

Assessment of "added subject-matter" – examples

IV-6

3.

Allowability of amendments under Art. 123(3)

IV-6

3.1

Basic principles

IV-6

3.2

Protection conferred by the patent as granted

IV-7

3.3

Version of the granted patent to be considered

IV-7

3.4

Assessment of impermissible extension of theprotection conferred

IV-7

Conflicts between Art. 123(2) and Art. 123(3)

IV-8

2.3
2.3.1

3.5

IV-5
IV-5
IV-5
IV-6
IV-6

March 2023

Part H – Contents e

Guidelines for Examination in the EPO

3.6

Conflicts between Art. 123(3) and other requirementsof the EPC
IV-9

4.

Amendments relating to unsearched matter

IV-9

4.1
4.1.1
4.1.2

Rule 137(5)Rule 62a and/or Rule 63 cases
Subject-matter taken from the description

IV-9
IV-9
IV-10

4.2

Euro-PCT applications

IV-11

5.

4. Compliance of amendments with other EPC
requirements

IV-11

5.1

4.1 General principles

IV-11

5.2

4.2 In examination proceedings

IV-11

5.3

4.3 In opposition proceedings

IV-11

5.4
5.4.1
5.4.2
5.4.3

4.4 In limitation proceedings
IV-12
4.4.1 Art. 84
IV-12
4.4.2 Examination of the description and/or drawings IV-12
4.4.3 Points to be disregarded
IV-12

Chapter V – Allowability of amendments –examplesV-1

1.

Introduction

V-1

2.

Amendments in the description

V-1

2.1

Clarification of a technical effect

V-1

2.2

Introduction of further examples and new effects

V-1

2.3

Supplementary technical information

V-1

2.4

Revision of stated technical problem

V-2

2.5

Reference document

V-2

2.6

Alteration, excision or addition of text in thedescription

V-2

Bringing the description into line with amended
claimsV-2

3.

Amendments in claims

V-2

3.1

Replacement or removal of features from a claim

V-3

3.2
3.2.1

Inclusion of additional features
Intermediate generalisations

V-3
V-4

2.7

Part H – Contents f

Guidelines for Examination in the EPO

March 2023

3.3

Deletion of part of the claimed subject-matter

V-6

3.4

Further cases of broadening of claims

V-7

4.

Disclaimers

V-8

4.1

Disclaimer disclosed in the application as originally
filed

V-8

4.2
4.2.1

4.2.2

Disclaimers not disclosed in the application as
originally filed
V-8
The subject-matter to be excluded is not disclosed in
the application as originally filed (so-called
undisclosed disclaimers)
V-8
The subject-matter to be excluded is disclosed in theapplication as originally filed
V-10

5.

Amendments to drawings

V-10

6.

Amendments derived from drawings

V-11

7.

Changes in claim category in opposition

V-11

7.1

Product claim to use claim

V-12

7.2

Product claim to method claim

V-12

7.3

Method claim to product claim

V-12

7.4

Method claim to use claim

V-12

8.

Changes in the title

V-12

Chapter VI – Correction of errors

VI-1

1.

Introduction

VI-1

2.

Corrections of errors in documents filed with the
EPO

VI-1

2.1
2.1.1
2.1.1.1

Admissibility
Admissibility in opposition and limitation proceedings
Errors in the description, claims and drawings

VI-1
VI-2
VI-2

2.2
2.2.1
2.2.2

Allowability
Correction of description, claims and drawings
Missing parts of description and , missing drawings
or correction of erroneously filed application
documents filed as corrections under Rule 139

VI-3
VI-3

3.

Correction of errors in decisions

VI-4

3.1

Admissibility

VI-5

VI-4

March 2023

Part H – Contents g

Guidelines for Examination in the EPO

3.2

Allowability of the correction of bibliographic data

VI-6

3.3

Correction of the decision to grant errors under
Rule 140 while opposition proceedings are pending –procedural aspects
VI-6

4.

Correction of formatting/editing errors

VI-6

5.

Correction of the translations of the claims

VI-8

6.

Errors in publication

VI-8

March 2023

Guidelines for Examination in the EPO

Chapter I – The right to amend
A European patent application or European patent may be amended in
examination, opposition and limitation proceedings. With regard toamendments filed in such proceedings, there are a number of important
aspects to consider. Firstly, amendments must be admissible, i.e. theymust meet the requirements for being admitted into the proceedings (seeH-II, H-III).
Secondly, amendments must be allowable, which means, in particular, thatthey must not:(i)

add to the application or patent subject-matter which was notdisclosed in the application as originally filed (Art. 123(2))(ii)

introduce other deficiencies (such as lack of clarity in the claims –Art. 84)(iii)

extend the protection conferred by a granted patent (Art. 123(3)).

Chapters H-II and H-III deal with the admissibility of amendments, while
Chapters H-IV and H-V deal with their allowability. Chapter H-VI isdedicated to the correction of errors.

Part H – Chapter I-1

March 2023

Guidelines for Examination in the EPO

Part H – Chapter II-1

Chapter II – Admissibility of amendments –general rules
1. Introduction
How the admissibility of amendments is assessed will depend on the typeof procedure (examination, opposition or limitation) and on the stage of theproceedings, as detailed in the following sections.
2.

Admissibility in the during examination procedure

2.1 Before receipt of the search report – Rule 137(1)In the case of a European patent application filed directly at the EPO (notvia the PCT), it is not possible for the applicant to amend the application
before receiving the European search report (Rule 137(1)).

Rule 137(1)In the case of a Euro-PCT application requiring a supplementary European
search according to Art. 153(7), the applicant may amend the originally filed
claims, description and/or drawings before the application is subject to the
supplementary search either by maintaining amendments filed in theinternational phase under Art. 19 PCT and/or Art. 34(2)(b) PCT or by filingamendments on and/or after entry into the European phase under
Rule 159(1)(b) and/or Rule 161(2) respectively (see also E-IX, 3 and
B-III, 3.3.2).
For replies to an invitation under Rule 62a or 63, see H-II, 5.
2.2 After receipt of the search report – Rule 137(2)After receiving the European search report and the search opinion,
applicants must respond to the search opinion (see B-XI, 8) and may
amend the description, claims and drawings of their own volition, provided
that the amendment and their reply are filed within the time limit for
responding to the search opinion (see C-II, 1, C-II, 3.1 and C-III, 2.1).
Likewise, for applications for which no supplementary European search
report is prepared (see B-II, 4.3) when entering the European phase fromthe PCT, the applicant is required to respond to the WO-ISA, IPER or SISR
where the ISA and, if applicable, the IPEA or SISA was the EPO (seeE-IX, 3.1 and 3.2). This response to the WO-ISA, IPER or SISR may
include amendments made by the applicant of their own volition to thedescription, claims and drawings. After expiry of the relevant time limit for
the reply (or, if the applicant waives the remainder of the reply period, after
the reply), the applicant may amend the application only with the consent of
the examining division.
For applications:(i)for which no search opinion is prepared (see B-XI, 1.1 and B-XI, 7),(ii)

for which a search opinion was prepared, but where the search
report was drawn up before 1 April 2010 (in which case Rule 70adoes not apply and the applicant is not required to respond to thesearch opinion), or

Rule 137(2)Rule 71(1)Part H – Chapter II-2

Guidelines for Examination in the EPO(iii)

March 2023

which enter the European phase from the PCT, where the EPO was
the ISA, IPEA or SISA and prepared a written opinion, but for which a
communication under Rule 161 was already issued before
1 April 2010,

it is after receipt of the first communication from the examining division in
examination proceedings that applicants may "of their own volition, amend
once the description, claims and drawings", provided that the amendment
and the reply are filed within the time limit for replying to that
communication.
2.3 After receipt of the first communication – Rule 137(3)Subsequent to the applicable event mentioned in H-II, 2.2, the prosecutionof further amendments proposed by the applicant is within the discretion of
the examining division. Giving the examining division this discretion isintended to ensure that the examination procedure is brought to aconclusion in as few actions as possible (see C-IV, 3). In exercising its
discretion the examining division must consider all relevant factors; inparticular, it must balance the applicant's interest in obtaining a patent
which is legally valid and the EPO's interest in bringing the examination
procedure to a close in an effective way (in accordance with the principles
set out in G 7/93).
Furthermore, the exercise of discretion to refuse amendments under
Rule 137(3) must be reasoned (see T 755/96). The examining division also
cannot refuse to admit amendments in advance (T 1105/96; T 246/08).
As an exception to Rule 137(3), paragraph (b) of Rule 164(2) provides for aright to amend the application in response to the results of any searchunder Rule 164(2). This means that applicants may make amendments of
their own volition once in response to the communication under Art. 94(3)to which the search results under Rule 164(2) are annexed (see also
H-II, 7.4.1 H-II, 6.4.1).
If an amendment is admitted, subsequent proceedings are based on thedescription, claims and drawings as amended. Admitting an amendment
does not necessarily imply that the application as amended is allowable,
i.e. free from any objection under the EPC.
In exercising its discretion under Rule 137(3), the examining division willtake into account the circumstances of each individual case and the stageof the proceedings which the application has reached to date. A further
important element is whether the applicant has already had sufficient
opportunity to make amendments. In particular, amendments reintroducing
deficiencies previously pointed out by the examining division and removedby the applicant are not admitted (see T 1326/11 and T 1064/04).
The applicant has to bear in mind that it is easier to secure an amendment
at an earlier rather than at a later stage: the later amendments are filed, themore important the aspect of procedural economy becomes in balancing
the interest of the applicant in obtaining a patent and the EPO's interest in
bringing the examination procedure to a close (see T 951/97 and G 7/93).

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Part H – Chapter II-3

On the other hand, amendments limiting a claim which is alreadyconsidered allowable are normally admitted. The same applies toamendments improving the clarity of the description or claims in a clearly
desirable manner (see T 1929/13).
If amendments clearly remedy a deficiency in response to the preceding
communication, they are always admitted, provided they do not give rise tosome new deficiency.

Art. 94(3)A further factor is the amount of alteration to the application documents
involved. Extensive reworking of the description or claims may be a proper
response to highly relevant further prior art of which the applicant has only
just become aware (e.g. either through further citation by the examining
division or through knowledge obtained from another source). Regarding
less extensive amendments, the examining division will adopt a reasonableapproach, trying to balance fairness to the applicant against the need to
avoid unnecessary delay and excessive and unjustified additional work for
the EPO.
Additional reasons for not admitting amendments according to Rule 137(3)include the non-admittance of:–auxiliary requests in certain circumstances (see H-III, 3.3.2.1), and–a request filed in, or in preparation for, oral proceedings, where
Rule 137(4) is not complied with in respect of the request in question(see H-III, 2.1.3),

for reasons of procedural economy (taking into account the applicant's rightto comment according to Art. 113(1)).
Additional limitations on possible amendments of the application may apply
if the European or supplementary European search report was a partial one
due to Rule 63 or restricted in accordance with Rule 62a (see H-II, 6, andsubparagraphs).
Further limitations may apply after a remittal by a board of appeal under
Art. 111(2).
2.3.1

Examples of the exercise of discretion under Rule 137(3)2.3.1.1 Rule 137(3) in conjunction with Art. 83
The examining division has raised an objection under Art. 83 that the entire
application, i.e. claims, description and drawings, does not disclose to aperson skilled in the art how to carry out the invention without using
inventive skill.
The examining division will not admit any (further) amendment under
Rule 137(3) unless the applicant is able to demonstrate to the satisfactionof the examining division that the application contains enough information
to enable the person skilled in the art to carry out the invention; for example

Rule 62a, 63, 137(5)Part H – Chapter II-4

Guidelines for Examination in the EPO

March 2023

the applicant could demonstrate that an embodiment in the description is
sufficiently disclosed for the person skilled in the art to put it into practice.
If the applicant cannot demonstrate the above, then the objection under
Art. 83 EPC can only be overcome by adding information to the application
as filed, which usually infringes Art. 123(2) EPC.
2.3.1.2 Rule 137(3) in conjunction with Art. 123(2)The examining division has raised an objection under Art. 123(2) indicatingthat a certain feature introduced into the claims extends the subject-matterof the application as filed.
Unless the applicant is able to demonstrate to the satisfaction of theexamining division that the application as filed disclosed this feature directly
and unambiguously, the examining division will normally not admit under
Rule 137(3) any further set of claims containing the feature in question.
2.3.1.3 Rule 137(3) in conjunction with Art. 84 – missing essential
featureThe examining division has raised an objection under Art. 84 that theclaims are missing an essential feature (see F-IV, 4.5).
Unless the applicant is able to demonstrate to the satisfaction of theexamining division that the indicated feature is not essential for carrying out
the invention, the examining division will normally not admit under
Rule 137(3) any further set of claims not containing the feature in question.
2.3.1.4 Rule 137(3) in conjunction with auxiliary requests
See H-III, 3.3.2.1.

Rule 137(3)Rule 71(6)2.4 At an advanced stage of the proceedings
When the Any request by an applicant files an extensively revised request
to replace the text of the application on the basis of which a patent could be
granted by a text that has been extensively revised is refused unless theapplicant gives, they must provide good reasons for proposing the changes
only at this stage in the proceedings. This applies particularly in cases
where the examining division has indicated that a version of the claims
proposed by the applicant is grantable and that the applicant has only tobring the description into line with that version. Normally only thoseamendments which do not appreciably delay the preparations for grant of
the patent will be admitted under Rule 137(3). To this end, the examining
division carries out a prima facie analysis of the amendments to determine
the amount of time their examination might require. It is this amount of timethat determines whether the amendments are extensive. If the examining
division comes to the conclusion that a request is prima facie not allowable,
for example, because it introduces new deficiencies, they refuse therequest under Rule 137(3).
2.5 Amendments filed in reply to a Rule 71(3) communicationIf, in reply to the communication under Rule 71(3) and within the period
specified in Rule 71(6), the applicant files a request for amendments and/ora correction of errors, the procedure is as defined in C-V, 4. This applies

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Part H – Chapter II-5

regardless of whether the request is an explicit request for amendment or isdrafted as an approval which is conditional on the filed amendments and/or
corrections.
2.5.1 Criteria for admitting such amendments
Decision G 7/93 dealt with the criteria to be applied when examining theadmissibility of late-filed amendments in examination. The particular caseto which that decision relates arose when the rules were differently
formulated, and in a situation where the applicant had already consented to
the version proposed by the examining division. However, what was said by
the Enlarged Board in that case can be considered generally applicable to
new requests put forward at a late stage of the proceedings, i.e. when theapplicant has already had at least one opportunity to amend the applicationand the examining division has already completed substantive examinationof the application (see T 1064/04).
In particular, applying the principles of G 7/93 to amendments filed in
response to the communication under Rule 71(3) (see C-V, 1 to C-V, 3)
means that this communication does not constitute an opportunity for theapplicant to call into question the outcome of the earlier procedure. In
deciding whether to admit such amendments, a balance must be struck
between the applicant's interest in obtaining a patent which is valid in all of
the designated states and the EPO's interest in bringing the examination
procedure to a close by the issue of a decision to grant the patent. At thisstage of the proceedings, the substantive examination has already been
completed and the applicant has had the opportunity to amend theapplication and therefore. Therefore normally only those amendments
which do not appreciably delay the preparations for grant of the patent will
be admitted under Rule 137(3).

Rule 71(3)Rule 137(3)It is, however, appropriate to admit separate sets of claims for one or moredesignated states for which prior national rights exist (see H-III, 4.4).
The rejection of amendments proposed by the examining division in a
Rule 71(3) communication which have been introduced without priorconsultation and agreement of the applicant (C-V, 1.1) does not amount toa request for amendment to which discretion under Rule 137(3) applies.
2.5.2 Further course of proceedings
If the examining division gives its consent under Rule 137(3) to theseamendments and/or the correction and considers them allowable without
issuing a further communication under Art. 94(3), it issues a second
communication under Rule 71(3) based on the amended/corrected text
(see C-V, 4.6), after which it then proceeds to the grant of the patentpursuant to Art. 97(1).
Where amendments or corrections are not admitted, or where they areadmitted but not considered allowable, examination will be resumed (seeC-V, 4.7).

Rule 71(6)Rule 71a(2)Part H – Chapter II-6

Rule 137(3)Guidelines for Examination in the EPO

March 2023

2.5.3 Exceptional case where amendments must be admitted
If the application was one of the exceptional cases (i), (ii) or (iii) mentionedin H-II, 2.2 and no communication under Art. 94(3) has preceded thecommunication under Rule 71(3), the applicant may amend the description,
claims and drawings of their own volition (see C-III, 2; see also C-II, 3.1)
within the time limit for replying to the communication under Rule 71(3). If
the examining division finds that these amendments are allowable, asecond communication according to Rule 71(3) is issued based on the text
as amended (see C-V, 4.6).
However, if the examining division is of the opinion that the amendments
are not allowable (a finding of inadmissibility with regard to theseamendments not being possible), the examination procedure is normallyresumed in accordance with C-V, 4.7.
2.5.4 Rule 137(4) applies to amendments filed at this stage
Amendments filed in reply to the communication under Rule 71(3) mustsatisfy the requirements of Rule 137(4) by identifying the amendments andindicating the basis for them in the application as filed (see H-III, 2.1 and inparticular the transitional provisions in H-III, 2.1.4). If these requirements
are not met:(i)

if the application is of one of the types mentioned in H-III, 2.1.4, theexamining division may send a Rule 137(4) communication before
proceeding further, as provided for in H-III, 2.1.1;(ii)

otherwise, if the basis for any amendments is not apparent, theexamining division objects to these amendments under Art. 123(2).

In case (i), if the applicant replies to the communication under Rule 137(4)in time, the examining division will then decide if it consents to theamendments and will proceed accordingly as indicated in C-V, 4.

Rule 71(5)Rule 137(3)2.6 Further requests for amendment after approval
Once the applicant has approved the text communicated to him pursuant toRule 71(3), by paying the fees and filing the translation of the claims,
further requests for amendment will only exceptionally be admitted under
the discretionary power of the examining division given by Rule 137(3). A
clear example of an admissible request is where the applicant files
separate sets of claims for designated states for which prior national rights
exist (see H-III, 4.4). Similarly, it is appropriate to admit minor amendments
which do not require re-opening of the substantive examination and which
do not appreciably delay the issue of the decision to grant (see G 7/93).
If amendments are filed and do not comply with the requirements ofRule 137(4), the examining division may send a communication under
Rule 137(4) (see H-III, 2.1.1).
When exercising its discretion under Rule 137(3) an examining divisionmust consider and balance the applicant's interest in obtaining a patent
which is legally valid in all of the designated states and the EPO's interestin bringing the examination procedure to a close by the issue of a decisionMarch 2023

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Part H – Chapter II-7

to grant the patent. The criteria for exercising its discretion under
Rule 137(3) at this late stage are whether the request can be decided on ina reasonable period of time, and whether the amendments are allowable. If
either of these criteria is not satisfied, the request for amendments isrefused by the division in the exercise of its discretion according toRule 137(3).
Refusal of amendments must be reasoned, and both Art. 113(1) andArt. 116(1) must be observed (see C-V, 4.7.1). It must be shown that theconditions defined in G 7/93 are not met. This means that arguments mustbe given as to why the amendments are not minor in nature but in factnecessitate resuming substantive examination while considerably delaying
the issue of a decision to grant the patent.
However, once the decision to grant is handed over to the EPO's internal
postal service for transmittal to the applicant, the examining division isbound by it (see G 12/91) and can only amend it to the limited extent
provided for in Rule 140 (see H-VI, 3.1). In examination procedure, thiscorresponds to the date on which the centrally generated Form 2006,"Decision to grant a European patent pursuant to Art. 97(1) EPC", isforwarded to the postal service. This date is shown at the bottom right-handcorner of Form 2006. The examining division is no longer competent todecide on a request for amendments or corrections under Rule 139 if thefiling of the request and the completion of the proceedings occur on thesame date (T 798/95).
2.7 Late-filed requests after summons to oral proceedings in
examination
If requests are filed after the final date set in accordance with Rule 116(2),they are usually treated as late-filed unless a summons to oral proceedings
was issued as the first action of the examining division. Another exception
is a request filed in response to a change of the subject of the proceedings,
e.g. when a further relevant document is cited for the first time during theoral proceedings. In such a case, the request has to be admitted under
Rule 116(2) (T 951/97).
The examining division will first consider the requests before deciding on
their admissibility. The mere fact that they are filed late is not per se areason for not admitting them. This issue will normally be dealt with during
oral proceedings.
In exercising its discretion under Rule 137(3) (see G 7/93), the examining
division needs to take into account whether the applicant has good reasonsfor filing the request late. In the absence of such reasons, and if theapplicant has already had sufficient opportunity to address the reasoned
objections, when balancing the relevant interests the examining division
may give more weight to bringing the examination procedure to a close.
In such cases, late-filed requests will be subject to the "clear allowability"
criterion (see H-II, 2.7.1) in addition to the criteria indicated in H-II, 2.3.

Rule 140

Part H – Chapter II-8

Guidelines for Examination in the EPO

March 2023

2.7.1 Concept of "clear allowability"
The examining division will apply the criterion of "clear allowability" inexercising its discretion under Rule 137(3) for treating requests filed after
the final date set in accordance with Rule 116(2) without proper justification(T 153/85).
These late-filed claims will only be admitted into the proceedings if they areclearly allowable. This means that it must be immediately apparent to theexamining division that the amendments successfully overcome theobjections without giving rise to new ones (prima facie assessment).
For example, late-filed requests will not be admitted if they do not clearlymeet the requirements under Art. 123(2) or Art. 84. Likewise, late-filed
requests may be rejected if the newly defined subject-matter does notconstitute a convergent development of the subject-matter which has been
the subject of examination (for a definition of convergence, see
H-III, 3.3.2.2).
For ascertaining whether or not the claims are clearly allowable, theexamining division must take into account the reasons given by theapplicant which explain why the amendments have been made and how
they are intended to overcome the objections raised.
If, after discussions, the examining division comes to the conclusion thatthe late-filed requests are not clearly allowable, it rejects them under
Rule 116(2) and Rule 137(3) on the grounds that they do not contain
subject-matter which is clearly allowable, i.e. because the subject-matterdoes not clearly meet the requirements of the EPC (for cases where theapplicant does not attend the oral proceedings, see H-III, 3.3.3 andE-III, 8.3.3). In the decision, reasoning is also to be given as to why the
specific requirement(s) for allowability is (are) not met.
The "clear allowability" criterion is generally also applied to patent
proprietors' late-filed requests in opposition proceedings (see E-VI, 2.1, andE-VI, 2.2; see also T 98/96 with regard to opposition appeal proceedings).
3.

Rule 80

Admissibility in opposition procedure

3.1 Amendments in reply to the notice of opposition
Any amendments made in opposition proceedings must be occasioned by
the grounds for opposition specified in Art. 100. That is to say, amendments
are admissible only if they represent a genuine attempt to overcome are
required in order to meet a ground for opposition. However, the ground for
opposition does not actually have to have been invoked by the opponent.
For example, in opposition proceedings admissibly opened on grounds of
non-patentability, the patent proprietor can also submit amendments toremove added subject-matter. Opposition proceedings cannot be usedmerely to tidy up and improve the disclosure in the patent specification(see T 127/85). The mere addition of new claims to the claims as granted is
inadmissible because such amendments cannot be said to meet a groundfor opposition. However, the replacement of one independent claim as
granted by multiple, e.g. two, independent claims each directed to aMarch 2023

Guidelines for Examination in the EPO

respective specific embodiment covered by the independent claim as
granted is admissible if such a replacement is occasioned by a ground for
opposition specified in Art. 100 (see T 223/97).
3.2 Amendments not related to the grounds for opposition
If the proprietor proposes amendments to the patent in reply to the grounds
for opposition and the opposition division intends to maintain the patent inamended form pursuant to those grounds, other amendments not related to
the grounds for opposition (e.g. clarifications), or corrections (H-VI, 3.1),
may be allowed provided that the patent thus amended still fulfils therequirements of the EPC and that the amendments are considerednecessary and appropriate. In particular, if one part of a claim has been
amended, it may be necessary or appropriate to amend other parts of theclaim as well.
Moreover, where a "clarification" can be considered as a limitation of theclaim, it would be admissible under Rule 80 and could form the basis formaintaining the patent in amended form, provided the other requirements ofthe EPC are also met by the amended text (with the exception of unity of
invention – G 1/91). If the division is of the opinion that such a limiting
clarification is not necessary, it needs to consider that the practice ofinterpreting a claim in a contracting state may be quite different from that of
the EPO, and hence the patentee may see a need for such a limiting
clarification.
Such amendments, however, are not proposed by the opposition divisionand they can only be taken into consideration up to the pronouncement of
the decision (in oral proceedings) or until the date the decision is handed
over to the EPO's internal postal service for transmittal to the parties (inwritten proceedings) (see G 12/91).
If an otherwise allowable request for maintenance of the opposed patent
either as granted or in amended form has been submitted, the following
amendments are not allowed:(a)filing of further claims (see T 829/93);(b)comprehensive redrafting of the dependent claims;(c)comprehensive redrafting of the description.

In the absence of any amendments submitted by the patent proprietor witha view to meeting the grounds for opposition, there is no possibility to makeany other amendments (see for example T 223/97). Publication errors andexceptionally formatting/editing errors may however be corrected(see H-VI, 4).
3.3 Amendments occasioned by national rights
Apart from the above (H-II, 3.1 and H-II, 3.2), amendments occasioned bynational rights of earlier date are admissible pursuant to Rule 138 (see also
G-IV, 6, H-III, 4.4 and H-III, 4.5).

Part H – Chapter II-9

Part H – Chapter II-10

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March 2023

3.4 Insistence on unallowable amendments
If the patent proprietors request amendments going beyond thosepermissible under Rule 80 (see H-II, 3.1 and H-II, 3.2), they are invited towithdraw them. If they then maintain their request, it is not admitted (for thereasoning see for example T 127/85, Headnote, and T 406/86,
Headnote 1).
If, in addition to requests containing unnecessary amendments, there is an
auxiliary request which meets the requirements of the Convention and inparticular does not comprise amendments not complying with Rule 80, thedecision must include the grounds for not admitting the higher-ranking
requests.
It may occur that there is only one request which would be allowable, but
for amendments which clearly do not comply with Rule 80. If theamendments cannot be admitted, the opposition division explains to thepatentee that revocation of the patent is to be expected solely for reasonsof the request's non-compliance with Rule 80.
3.5 Late-filed requests in opposition proceedings
With respect to how late-filed requests are dealt with in opposition
proceedings, reference is made to E-VI, 2.1 (general examples) and
E-VI, 2.2 (examples concerning oral proceedings).
4. Amendments in limitation procedure
For admissibility of amendments in the limitation procedure, reference ismade to D-X, 4 and D-X, 10.

Rule 63(3)Rule 62a(2)5. Amendments required by a limitation of the search under Rule 62a
and/or Rule 63
Where the search was limited to certain subject-matter by application ofRule 63 (see B-VIII, 3.1 and 3.2), the claims must be amended in such a
way as to remove the unsearched subject-matter and the description
adapted accordingly.
Where the search was limited to certain claims by application of Rule 62a(see B-VIII, 4.1 and 4.2), the claims must be amended in such a way as toremove the unsearched independent claims and the description adapted
accordingly. To this end, the claims may be amended, for example, by
deleting an unsearched independent claim or, where this complies with
Art. 123(2) and Art. 84, by making an unsearched independent claim
dependent on another independent claim of the same category which has
been searched.
In both of these cases, a specific amendment is necessary unless theexamining division finds that the limitation of the search under Rule 62a
and/or Rule 63 or the declaration of no search under Rule 63 was notjustified, e.g. in view of arguments provided by the applicant.
Such amendments may, however, be made only in examination
proceedings or, preferably, in reply to the search opinion (see F-IV, 3.3).
Since the applicant may not amend the claims before receipt of the searchMarch 2023

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Part H – Chapter II-11

report (Rule 137(1)), any claims filed in reply to an invitation under
Rule 62a or Rule 63 will be taken only as an indication of what the applicant
wants the EPO to search and dealt with accordingly (see B-VIII, 3.2 andB-VIII, 4.2). The applicant will then have to confirm maintenance of theseamendments formally on entry into the examination phase (see A-V, 2.2).
6.
Amendments relating to unsearched matter – Rule 137(5)Rule 137(5) sets out two further conditions for amendments to claims,
namely that amended claims may not relate to (i) unsearched subjectmatter which does not combine with the originally claimed invention orgroup of inventions to form a single general inventive concept and (ii)subject-matter not searched in accordance with Rule 62a and Rule 63 (see,however, H-II, 5).
6.1
Rule 62a and/or Rule 63 cases
Amended claims may not relate to subject-matter not searched inaccordance with Rule 62a or Rule 63 (see, however, H-II, 5).
Consequently, the presence of this subject-matter in the description cannot
be used as a basis for its re-introduction into the claims (see also
B-VIII, 3.2.2 and B-VIII, 4.2.2).

Rule 137(5),second sentence

However, the examining division does not raise an objection under
Rule 137(5), second sentence, if the applicant only further limits a searchedclaim by introducing subject-matter taken from the description unless thissubject-matter was explicitly declared as not searched under Rule 62a
and/or Rule 63.
When assessing the allowability of an amendment under Rule 137(5),second sentence, the examining division also evaluates if the limitation of
the search under Rule 62a and/or Rule 63 or the declaration of no search
was justified (see B-VIII, 3.2.2, B-VIII, 4.2.2, H-II, 5). If the invitation was not
appropriate or the limitation not justified, an additional search may benecessary (see C-IV, 7.2).
6.2
Subject-matter taken from the description
Within the framework of Art. 123(2) and Art. 82, Rule 137(5), first sentence,
should be construed as permitting any limitation of searched subject-matter
which is unitary with the originally claimed subject-matter, irrespective ofwhether the technical feature(s) used for the limitation has/have been
searched.
Thus, the addition to a claim of a technical feature which further defines anelement that was already a feature of the original main claim or makes acontribution to the effect(s) of the features of the originally claimed
invention(s) and which was expressly not searched but was disclosed in thecontext of the invention in the application as filed (usually in the description)
will not result in an amended claim lacking a single general inventive
concept with respect to the originally claimed invention(s). Consequently no
objection under Rule 137(5), first sentence, should be raised in thesecircumstances, even though an additional search may be required(see C-IV, 7.2).

Rule 137(5),first sentencePart H – Chapter II-12

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If amended claims are directed to subject-matter which has not been
searched because it only appeared in the description (and the searchdivision did not find it appropriate to extend the search to thissubject-matter; see B-III, 3.5) and which does not combine with theoriginally claimed and searched invention or group of inventions to form asingle general inventive concept, such amendments are not allowable.
In other words, in order to assess whether or not amended claims fulfil therequirements of Rule 137(5), first sentence, the examining division needs toestablish first whether or not the subject-matter to which they relate has orshould have been searched (see B-III, 3.5) and second whether or not an
objection of lack of unity would have been raised if the amended claims had
been present in the set of claims on file at the time of the search.
As a consequence, an objection under Rule 137(5), first sentence, will
normally arise if the applicant attempts to replace a technical feature
contained in a claim with a different technical feature taken from thedescription.
Similarly, an objection under Rule 137(5), first sentence, would also arise if
a technical feature taken from the description which has an effect unrelated
to the effect(s) of the features of the originally claimed invention(s) wereadded to a claim.
If an objection under Rule 137(5), first sentence is raised, applicants are
informed that they may continue to pursue such subject-matter only in theform of a divisional application under Art. 76.
The situation described above is different from amendments corresponding
to an invention originally claimed but not searched under Rule 64, orRule 164(1) or (2), which are dealt with in H-II, 7.2.
Rule 137(3)Applicants should bear in mind that the examination procedure should be
brought to a conclusion in as few actions as possible. In this case,therefore, the examining division may exercise its right not to admit further
amendments under Rule 137(3) (see H-II, 2.3).
For Euro-PCT applications where the EPO acted as ISA or as SISA, theexamining division has to issue an invitation under Rule 164(2) for any now
claimed but unsearched invention contained in the originally filed
application documents (description, claims and drawings, if any) which are
to serve as the basis for examination upon expiry of the six-month time limit
set in the communication under Rule 161 or Rule 162 (see C-III, 2.3).
6.

7. Amendments in the case of non-unity

6.1 7.1 Restriction to a single, searched invention
In reply to an objection of lack of unity, the applicant must restrict the claims
to a single invention which has been searched unless the applicant canconvince the examining division that the objection was not justified.

March 2023

Guidelines for Examination in the EPO

If the claims have been restricted to a single searched invention, theexamination can be continued as for a unitary application but limited to thatinvention (see C-III, 3). If the objection is withdrawn in view of thearguments put forward by the applicant, an additional search may benecessary (see C-IV, 7.2 C-IV, 7.3) in order for the examination of theclaimed invention to be continued.
However, if in response to a negative opinion concerning that invention theapplicant later amends the claims to switch to a different searchedinvention, the division will exercise its discretion under Rule 137(3) andrefuse to admit the amendments since only one invention in eachapplication can be examined for conformity with the requirements of the
EPC (see G 2/92 and T 158/12).
6.2 7.2 Restriction to an unsearched invention
If not all of the claimed inventions have been searched, in accordance with
G 2/92 the applicant must restrict the claims to one of the searchedinventions. Thus, if in reply to the search opinion the applicant then restricts
the claims to one of the originally claimed inventions which has not been
searched, the examining division will write a first communication repeating
the lack-of-unity objection raised in the search opinion. Any arguments of
the applicant must be duly considered and dealt with in the communication.
If the application is restricted to an unsearched but originally claimed
invention, it can be refused under Rule 64 in line with G 2/92 (subject to theapplicant's rights under Art. 113(1) and Art. 116(1)).
Rule 137(5) cannot be invoked. It does not apply when the applicant has
not paid the search fee in respect of a non-unitary invention relating to theoriginally filed claims.
If the application is a Euro-PCT application (see also H-II, 7.4 H-II, 6.4) theexamining division, depending on the case:–either objects under Rule 164(2)(c) to the restriction of the claims toan invention searched neither (on grounds of lack of unity) by the
EPO as (Supplementary) International Searching Authority nor as
part of a search under Rule 164(2)(a),–or objects under Rule 164(1) in line with G 2/92 in the context of a
supplementary search in the European phase (see B-II, 4.3.2,
B-VII, 2.3 and E-IX, 4.2).

In both cases, if the applicant declines to limit the claims to a searchedinvention, the application is refused under Rule 164 in accordance with
G 2/92 (subject to the applicant's rights under Art. 113(1) and Art. 116(1)).
The objection under Rule 164(2)(c) mentioned above is drafted in thecommunication sent under Rule 164(2)(b) issuing the results of any
additional search. If the applicant does not reply to the invitation to pay
additional search fees under Rule 164(2)(a), they do not receive acommunication under Rule 164(2)(b). In this case, the examining divisionPart H – Chapter II-13

Part H – Chapter II-14

Guidelines for Examination in the EPO

March 2023

issues a communication under Art. 94(3) and Rule 71(1) and (2) inviting theapplicant to limit the application under Rule 164(2)(c) before the application
can be refused.
Concerning the application of G 2/92, it is to be kept in mind that theprohibition on pursuing an application for subject-matter for which nosearch fees have been paid applies to inventions; it does not apply tofeatures which were originally claimed with a different invention and had notbeen searched, but which were originally disclosed in combination with thesearched invention or group of inventions (see T 998/14).
6.3 7.3 No restriction to a single invention searched
If in response to the search opinion the applicant does not restrict theapplication to a single invention searched, the objection of lack of unity
raised at the search stage will be reviewed and if the examining divisionconsiders that it remains valid, a first communication repeating thelack-of-unity objection raised in the search opinion will be issued.
In Rule 164(2) cases, a lack of unity objection is addressed in thecommunication under Rule 164(2)(b) (see also H-II, 7.4.1 H-II, 6.4.1).
If the applicant does not restrict the application at all, or does restrict it, but
still maintains two or more inventions, the application can be refused under
Art. 82 (subject to the applicant's rights under Art. 113(1) and 116(1)).
If the claims still cover an unsearched invention, an objection under Rule 64
would also apply, in line with decision G 2/92 as discussed in H-II, 7.2
H-II, 6.2.
If the claims have not been simply restricted, but have instead, or
additionally, been amended, such amendments can often result in thepreviously raised lack-of-unity objection no longer being valid, or in thearguments on which the objection was based no longer being complete.
Such amendments would thus result in the objection having to be either
withdrawn or at least newly argued.
Sometimes lack of unity of invention arises only during substantive
examination, for example following an amendment of one or more claims
so as to overcome an objection of lack of inventive step. In such situations
the examining division may raise an objection, but only in very clear cases.
6.4 7.4 Further procedural aspects concerning Euro-PCT
applications
6.4.1 7.4.1 Where the EPO does not perform a supplementary search
Where the EPO does not perform a supplementary search, the applicationmust be limited to an invention searched either in the international phase by
the EPO or in the European phase in a search under Rule 164(2)(a). The
above principles (H-II, 7.1 to H-II, 7.3H-II, 6.1 to H-II, 6.3) then apply
mutatis mutandis (see also E-IX, 4.2).

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Guidelines for Examination in the EPO

In Rule 164(2) cases, a further communication according to Art. 94(3) andRules 71(1) and (2) repeating a lack of unity objection is not necessary, as
a communication according to Art. 94(3) and Rule 71(1) and Rule 71(2)addressing (also) unity of invention has already been issued under
Rule 164(2)(b) (see also H-II, 2.3 and 7.2 6.2).
6.4.2 7.4.2 Where the EPO performs a supplementary search
Where the EPO performs a supplementary search on an application whichis considered to lack unity, the applicant will be invited to pay additionalfees, and the supplementary search report will be established for thoseinventions for which a search fee has been paid. The application must thenbe limited to one of the inventions searched in the supplementary search.
The above principles (H-II, 7.1 to 7.3H-II, 6.1 to H-II, 6.3) then apply mutatis
mutandis (see also E-IX, 4.2).

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Guidelines for Examination in the EPO

Part H – Chapter III-1

Chapter III – Admissibility of amendments –other procedural matters
1. Introduction
This chapter deals with procedural matters and formal requirements
relating to the admissibility of amendments. An important requirement dealt
with is the applicant's obligation to identify amendments and indicate thebasis for them in the application as filed (Rule 137(4); for transitional
provisions, see H-III, 2.1.4). The chapter also deals with the format of andprocedure for making amendments, as well as issues relating to auxiliary
requests and how to deal with different texts for different contracting states.
2.

Procedure for amendments to documents

2.1 Indication of amendments and their basis under Rule 137(4)When filing amendments, the applicant must identify them and indicate thebasis for them in order to enable the division to assess compliance of theamendments with the provisions of Art. 123(2). To this end, the division
may request that amendments have to be indicated either with respect tothe immediate previous amendments in the sequence or with respect to theapplication as filed. The requirement to indicate amendments is to beunderstood as an opportunity for the applicant to provide convincing
arguments to the division as to why the amendment(s) is/are directly andunambiguously derivable from the application as filed. These arguments
are particularly important for the outcome of the division's assessment ofArt. 123(2) where literal support for the amendment(s) is not present in theapplication as filed.

Rule 137(4)The requirement that the basis for amendments be indicated is met if, on
consulting those parts of the application indicated, it is not necessary tolook further in order to assess the amendment's compliance with
Art. 123(2). Non-specific indications such as "see the description as filed"or "see the claims as filed" or "see the examples as filed" are generally notconsidered sufficient. This requirement also applies in cases where theapplicant requests the examining division to amend the application (seeH-III, 2.4).
Whether the requirements of Rule 137(4) are met is assessedindependently of whether the amendments in question comply with
Art. 123(2). For example, the applicant may indicate that a particularamendment is based on a technical feature disclosed only in a schematic
drawing. If the feature supposedly forming the basis for the amendment is
indeed disclosed in the drawing indicated by the applicant, therequirements of Rule 137(4) are met, irrespective of whether theamendment based on that technical feature is allowable according toArt. 123(2) (see H-IV, 2.4).
Where the application was not filed in an official language of the EPO, in
the absence of evidence to the contrary, for the purpose of assessing
compliance with Art. 123(2) the EPO assumes that any translation of theapplication as filed is accurate. Consequently, in order to comply with

Rule 7

Part H – Chapter III-2

Guidelines for Examination in the EPO

March 2023

Rule 137(4) it is sufficient to indicate the basis of an amendment in thetranslation of the application as filed.

Rule 137(4)2.1.1 Rule 137(4) communication and response thereto
If the amendments and/or their basis cannot be properly identified such thatcompliance with Art. 123(2) cannot be assessed, the examining divisionnotes a failure to meet either requirement of Rule 137(4). It consequently
issues a communication requesting the correction of this deficiency within aperiod of one month. The amendments in respect of which such a
communication may be sent include, inter alia:(i)claims filed after the date of filing under Rule 58 (see A-III, 15)(ii)amendments filed before entry into the European phase from thePCT under Art. 19 PCT and/or Art. 34 PCT, if maintained on entry(see E-IX, 3)(iii)amendments filed on entry into the European phase from the PCT
under Art. 28 PCT or Art. 41 PCT (see E-IX, 3)(iv)

amendments filed after entry into the European phase from the PCT
under Rule 161(1) or Rule 161(2) (see E-IX, 3)(v)amendments filed in response to the search opinion (see B-XI, 8)(vi)

amendments filed during the examination procedure (see, however,
H-III, 2.1.3), including those filed after the communication according
to Rule 71(3).

Such a communication can only be sent in respect of amendments which
are part of a current request. It cannot relate to amendments which havesince been withdrawn or superseded. A communication under Rule 137(4)can only be issued by the examining division (see B-XI, 2).
Art. 94(4)If the applicant fails to comply with either requirement of Rule 137(4) within
the above-mentioned period of one month, the application is deemed to bewithdrawn, because the applicant is considered not to have replied to thecommunication from the examining division. The applicant may request
further processing for failure to observe this time limit (see E-VIII, 2).
If the amendments are filed in response to a communication according toRule 71(3) and the requirements of Rule 137(4) are not satisfied in respectof them, the examining division may send a Rule 137(4) communication.
Thereafter, if the applicant replies in time, the examining division will thendecide whether to admit the amendments (see H-II, 2.5.4).
Regarding the application of Rule 137(4) to auxiliary requests, see
H-III, 3.3.1.

March 2023

Guidelines for Examination in the EPO

2.1.2 Amendments withdrawn or superseded in the Rule 137(4)periodIf the applicant replies in time to the Rule 137(4) communication bywithdrawing the amendments in respect of which the communication was
sent but without identifying those amendments or indicating their basis in
the application as filed, then no loss of rights will occur according toRule 137(4). However, where the withdrawal results in the re-introduction ofsubject-matter that has already been objected to, the amendment
introducing this subject-matter may be deemed to be inadmissible
according to Rule 137(3) (see H-II, 2.3).
No further Rule 137(4) communication will be sent in respect of further
amendments filed in a timely response to the Rule 137(4) communication.
By the expiry of the one-month period, the applicant must have identified
and indicated the basis of:(i)amendments in respect of which the Rule 137(4) communication was
sent and which are not superseded by further amendments filed
during the one-month period under Rule 137(4), and(ii)amendments filed during that one-month period.

The applicant does not need to comply with Rule 137(4) in respect ofamendments which are superseded by further amendments filed in the
one-month period. For example:
03.06.2010

Application filed: 10 claims

25.03.2011

Extended European search report drawn up

21.08.2013

Amended claims 1-10 filed in examination
proceedings, no basis indicated

03.09.2013

Examining division sends a Rule 137(4)communication in respect of amended claims 1-10
filed on 21.08.2013

07.10.2013

Amended claims 6-10 filed

14.10.2013(Monday)

One-month period under Rule 137(4) expires

In the above example, the applicant must, by expiry of the one-month
period according to Rule 137(4) on 14.10.2013, indicate the basis foramended claims 1-5 as filed on 21.08.2013 and for amended claims 6-10
as filed on 07.10.2013, and failure to do so results in the application being
deemed to be withdrawn according to Art. 94(4). It is not necessary for theapplicant to indicate the basis for the superseded amendments toclaims 6-10 filed on 21.08.2013. Note in particular that, where the basis forthe amendments to claims 6-10 filed on 07.10.2013 is not indicatedby 14.10.2013, then no further Rule 137(4) communication is sent inrespect of these amendments and the application is deemed to bewithdrawn on expiry of the one-month period on 14.10.2013.

Part H – Chapter III-3

Part H – Chapter III-4

Guidelines for Examination in the EPO

March 2023

Attention is drawn to amended Rules 126 and 127 that will enter into force
on 1 November 2023. Detailed information on the changes in practicerequired by these amended rules will be published in the Official Journal of
the EPO well in advance.
2.1.3 Rule 137(4) and oral proceedings
A Rule 137(4) communication will not be sent where the amendments inquestion are filed during oral proceedings. Nonetheless, it is a requirementof Rule 137(4) that amendments and their basis be identified. If theapplicant fails to fulfil this requirement in respect of amendments filed
during oral proceedings, the amendments may, for reasons of procedural
economy and taking into account the applicant's right to be heard inaccordance with Art. 113(1), be rejected as inadmissible by the examining
division, exercising its discretion under Rule 137(3).
Amendments filed in preparation for oral proceedings in response to theinvitation according to Rule 116(2) will be dealt with in those oralproceedings as indicated above. However, if the oral proceedings arecancelled or applicants do not attend and the procedure is continued inwriting after the oral proceedings are held in their absence, a Rule 137(4)communication may be sent by the examining division in respect of thoseamendments.
2.1.4 Transitional provisions relating to Rule 137(4)The procedure described in H-III, 2.1.1 to H-III, 2.1.3 applies to thefollowing applications (see Art. 2(2) of the decision of the Administrative
Council of 25 March 2009, OJ EPO 2009, 299):(i)European applications for which the search report is drawn up on orafter 1 April 2010,(ii)

Euro-PCT applications for which the supplementary European search
report is drawn up on or after 1 April 2010, and(iii)

Euro-PCT applications for which the international search report isdrawn up by the EPO acting as International Searching Authority on
or after 1 April 2010 (Art. 153(6); see also E-IX, 3.4).

2.2 Amendment by submitting missing documents or by filingreplacement pages
The content of a European patent application or patent may be amended
within the limits laid down in Art. 123(2) and (3). (For the conditions
governing amendments, see also A-V, 2, H-II, H-IV, H-V and D-V, 6.) This
will normally be done by submitting missing documents or by filingreplacement pages. Where replacement pages are filed, the applicant or
patent proprietor is advised, in the interests of procedural efficiency, toidentify clearly all amendments made, and indicate on which passages ofthe original application these amendments are based. Where wholeparagraphs have been added or deleted, it is not necessary to renumber
the paragraphs throughout the entire application or patent.

March 2023

Guidelines for Examination in the EPO

If handwritten amendments are filed during oral proceedings in opposition,
the proprietor is invited in a Rule 82(2) communication to submit
replacement paragraphs and/or claims only, and not replacement pages(see E-III, 8.7.3, and OJ EPO 2016, A22, points 8 to 14).
Amendments should preferably be identified using functions available in atext editor to clearly indicate deletions and insertions in the amended text.
Pages with such indications should be submitted in addition to clean
copies. Alternatively, handwritten form is appropriate to fulfil therequirements of Rule 137(4), provided that clean copies are free fromhandwritten amendments.
The basis for amendments should preferably be indicated by including in
the letter of reply a list of the amendments made and the precise basis foramendments in the application as filed (see H-III, 2.1). Where the basis is
not explicit, e.g. where a different wording is used or features are taken
only from drawings or generalised from a specific embodiment, it isadvisable to give a short explanation of why Art. 123(2) is fulfilled.
2.3 Amendments using copies
Amendments, particularly to the description or claims, may be made byusing copies in accordance with the following procedure:
If deemed expedient, the examining division or formalities officer may, on a
copy of one or more pages of the documents to be amended, put forward
suggestions as to how amendments should be made in such a way as totake account of the objections raised. The annotated copies (not theworking documents which are to remain in the dossier) will then be
forwarded to the applicant or, in opposition proceedings, to the proprietor of
the patent and the other parties, in the communication setting out theobjections. In this communication, the applicant or proprietor will not only
be informed of the deficiencies recorded and invited to adopt a position or
submit amendments within a fixed time limit, but will also be invited
simultaneously to resubmit the said copy and – as an alternative tosubmitting replacement pages – to indicate on this copy, separately fromthe comments of the examining division (typewritten and in such a way as
to be well legible after photocopying), any amendments to be made to thepages concerned. Opponents may also be invited to submit their commentsin the same way.
The parties may also submit copies of one or more amended pages on
their own initiative. The filing of completely retyped documents is normallyobjected to, for reasons of procedural economy, as these documents will
have to be checked for correspondence with the original documents(see T 113/92). Requests to this effect will, therefore, normally not be
admitted under Rule 137(3). Only where the amendments are so extensive
as to affect the legibility of the copies, replacement pages must be filed. In
this case such pages may also be requested by the examining division on
its own initiative.

Part H – Chapter III-5

Part H – Chapter III-6

Guidelines for Examination in the EPO

March 2023

2.4 Amendments made by the EPO at the request of a party
Where necessary, deficient documents may also be amended at therequest of a party by the competent department of the EPO. This could be
the procedure for minor amendments, e.g. where it is necessary to insert
details which were omitted in the request for grant, and the number of
amendments involved is reasonable, or where whole pages or paragraphs
are to be deleted. The party concerned is advised to submit a list
summarising the amendments to be undertaken by the EPO. It is, however,at the discretion of the examining division to decide whether the number ofchanges requested is in fact unreasonable and would take a considerable
amount of time to deal with. If so, the examining division will require that the
party makes the amendments and submits amended pages. This
procedure could also be followed for minor amendments to drawings,
e.g. for amending a reference number or deleting one or more whole
figures (as regards the removal of references following an amendment to
the description, see F-II, 4.8). In the case of complicated amendments to
drawings, where it is not immediately clear how the changes are to be
made, the party concerned, who as a rule is the applicant or proprietor,
must submit replacement pages.
2.5 Withdrawal of amendments/abandonment of subject matter
Any subsequent request to withdraw an amendment is itself a request for
further amendment; thus, if this subsequent request occurs after reply tothe first communication from the examining division, the corresponding
amendment will be admitted only if the examining division consents.
In deleting subject-matter from an application, the applicant should avoid
any statement which could be interpreted as abandonment of that
subject-matter. Otherwise the subject-matter cannot be reinstated(see J 15/85, confirmed in G 1/05 and G 1/06).
3. Auxiliary requests
In examination, opposition and limitation proceedings, parties may submit amain request followed by one or more auxiliary requests (see also
D-IV, 5.3).
Example 1:"We request grant of a patent as per the documents originally filed or,alternatively, as per the amended documents now enclosed."
Example 2:"We request that the opposition be rejected or, alternatively, that the patent
be maintained in amended form as per the enclosed documents."
Such further (auxiliary) requests are made in case the examining or
opposition division cannot allow the main (first) request.
If in examination proceedings applicants file text labelled as an auxiliary
request, but also indicate that they are not yet willing to restrict themselvesto that request, the text is not to be considered as a true auxiliary request

March 2023

Guidelines for Examination in the EPO

within the meaning of this chapter, such that it is not possible to proceed
directly to the issue of a communication under Rule 71(3) based on this text
(see C-V, 1.1). In such circumstances it is appropriate to contact applicantsby telephone to establish whether they are prepared to proceed to grant on
the basis of that text. The applicant's agreement or non-agreement that a
Rule 71(3) communication can be based on such an auxiliary request must
be mentioned in the minutes of the telephone conversation or, in the caseof agreement, in the Rule 71(3) communication (see C-VII, 2.5).
3.1 General principles
If the main request is allowable, the division will ignore any auxiliary
requests.
If the main request is not allowable, the division will consider the auxiliary
requests, in the sequence chosen by the requester.
If an auxiliary request is allowable, the division will ignore all subsequent
requests.
3.1.1 Sequence of requests
When a group of auxiliary requests is filed, these requests must be filed ina clear order and must not be worded such that they leave it for theexamining division to identify and speculate on the intended text of theclaims (R 14/10). Furthermore, all auxiliary requests must relate to one
invention: the examining division will exercise its discretion under
Rule 137(3) and will refuse to admit auxiliary requests which involve
switching from the searched invention chosen for examination to anotherinvention (see C-III, 3.4 and H-II, 7 C-III, 3.5 and H-II, 6).
Under Art. 113(2), the EPO decides upon European patent applications orpatents only in the text submitted to it, or agreed, by applicants or
proprietors. These parties must therefore clearly indicate the text they areproposing or, if they are submitting more than one text, the sequence inwhich they want the EPO to consider them. Otherwise the division does notknow which version to base its decision on and would ultimately have torefuse the application, revoke the patent or reject the request for limitation
for lack of any clear request.
3.1.2 Obligation to give reasons
In examination, opposition and limitation proceedings, whenever a request
by any of the parties is refused, reasons must always be given.
3.1.3 Neither main nor auxiliary requests allowable
If the examining or opposition division cannot allow the main request or anyof the auxiliary requests, it must issue a decision to that effect, taking
Art. 113(1) and 116 into account. The decision must include the reasons forrejecting/refusing the main request and each of the auxiliary requests,
except where the requests in question have been withdrawn.
3.2 In the search phase
In the search phase, under Rule 137(1) amendments to the claims are notadmissible before the applicant receives the European search report, andPart H – Chapter III-7

Part H – Chapter III-8

Guidelines for Examination in the EPO

March 2023

therefore no auxiliary requests can be submitted. If auxiliary requests are
submitted before the establishment of a supplementary European search
report (see H-II, 2.1), only the main request will be taken into account in the
search (see, however, B-VIII, 3.2.2 and B-VIII, 4.2.2).
3.3

In examination proceedings

3.3.1 Indication of the amendments made in the requests and of theirbasis
Where requests (main and/or auxiliary) are filed in examination
proceedings and the applicant does not identify the amendments and/or
does not indicate the basis for them in the application as filed, acommunication according to Rule 137(4) may also be sent in respect of one
or more of the newly filed main and/or auxiliary requests.
For requests filed in preparation for oral proceedings, late filed requests orrequests filed during oral proceedings, see H-III, 2.1.3.
3.3.2

Admissibility of auxiliary requests

3.3.2.1 Criteria for admissibility of auxiliary requests
As a matter of principle, the examining division must, when exercising its
discretion under Rule 137(3) not to admit one or more auxiliary requests,
balance the interests of the applicant and procedural efficiency (see also
H-II, 2.3, H-II, 2.5.1, H-II, 2.6 and H-II, 2.7).
Thus, an auxiliary request which contains minor deficiencies but otherwise
complies with the requirements of the EPC is normally admitted into theprocedure.
When deciding on the admissibility of auxiliary requests the principles set
out in H-II are considered for each of the requests, since each request is infact a set of amended claims.
Auxiliary requests reintroducing subject-matter which has already been
considered unallowable and has been removed by the applicant will not be
admitted (see also H-II, 2.3). The same may apply to auxiliary requests
introducing new deficiencies.
3.3.2.2 Timeliness and structure of auxiliary requests
If auxiliary requests are filed after the final date set in accordance with
Rule 116(2), they are usually treated as late-filed unless a summons to oralproceedings was issued as the first action.
For late-filed requests, in addition to the criteria set out in H-III, 3.3.2.1, thesubject-matter of the new claims must not diverge considerably from theclaims already filed. The requests normally need to represent a convergent
development, i.e. the subject-matter of the auxiliary requests constitutes asequential limitation in the direction of an intended invention and does notmake use of different characteristics in order to branch out in different
directions (T 1273/04). In particular, the applicant cannot shift to theexamining division the responsibility for defining the subject-matter of theMarch 2023

Guidelines for Examination in the EPO

application by filing a large number of unstructured requests or requests
involving different variants (R 14/10): this leads to the requests not being
admitted.
3.3.3 Preparing the decision
If the examining division is able to allow an auxiliary request (but not themain request or any higher-ranking auxiliary requests), it will inform theapplicant accordingly in a communication under Rule 71(2) or in an annex
to the communication according to Rule 71(3), giving a brief indication of
the essential reasons for refusing the main and higher-ranking auxiliary
requests (see C-V, 1.1).
Where an auxiliary request appears to comprise subject-matter that offers agood starting point for an allowable request, but it is considered expedientto issue a communication under Art. 94(3), a brief indication is given of theessential reasons for the non-allowability or non-admissibility of the subjectmatter of the higher-ranking requests, and a suggestion is provided as tothe most promising request (see C-III, 4.1.2).
Care needs to be taken where oral proceedings have been specificallyrequested in cases where the examining division has not allowed the main
request: the applicant must be summoned to oral proceedings even if theexamining division considers one of the auxiliary requests to be patentable.
In such cases it may be appropriate to ask applicants in a telephone callwhether, in view of the examining division's intention to issue a
communication under Rule 71(3) for the allowable auxiliary request, theywould be prepared either to withdraw the request for oral proceedings forthe main request or to replace the main request with the allowable auxiliary
request.
During oral proceedings, the division addresses the main request anddecides on the admissibility of the auxiliary requests, if any, filed in reply tothe summons to oral proceedings (see H-II, 2.3 and H-III, 2.1.3). Moreover,it may be appropriate to ask applicants whether, in view of an allowable
request, they would be prepared to withdraw the unallowable higherranking request(s). However, the applicant is not obliged to do so.
The summons to oral proceedings must indicate the essential reasons that
led the examining division not to allow or not to admit the auxiliary requests
already filed so that the applicant is not taken by surprise by the refusal of
the application in case the applicant decides not to attend the oralproceedings (C-V, 1.1 and C-V, 4.9). This applies regardless of whether
oral proceedings are held in the absence of the applicant or are cancelled.
In deciding on the admissibility of the auxiliary requests, the examining
division will apply the criteria set out in:(i)

H-III, 3.3.2.1 if auxiliary requests are submitted by the date set
according to Rule 116(1);(ii)

H-III, 3.3.2.1 and H-III, 3.3.2.2 if auxiliary requests are submitted after
the date set according to Rule 116(1).

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Part H – Chapter III-10

Guidelines for Examination in the EPO

March 2023

The examining division may then exercise its discretion under Rule 137(3)not to admit one or more of the requests (see H-II, 2.3, H-II, 2.7, H-II, 2.7.1
and H-III, 3.3.1), and it may do so in the absence of theapplicant/representative. A decision to refuse the application in thesecircumstances must not take the applicant by surprise (E-III, 8.3.3.1, andE-III, 8.3.3.3).
3.3.4 Complete text for auxiliary request not yet available
If a complete text corresponding to the allowable auxiliary request does not
yet exist, the applicant must be asked to make the necessary amendments.
In oral proceedings, the division does always try to have the description
brought into line with the version of the claims it considers allowable. If
necessary, the oral proceedings are interrupted for this purpose.
3.3.5 Complete text for auxiliary request available
If a complete text of the application according to the allowable auxiliary
request already exists, a communication under Rule 71(3) is issued. In an
annex to this communication the division must give a brief indication of thereasons on which the refusal of the higher-ranking requests is based (seealso C-V, 1.1). Where appropriate, this may be done by reference to earlier
communications. If applicants approve this proposed text, then inaccordance with Rule 71(3) they indicate this by filing the translations of theclaims and paying the fees for grant and publishing without filing any
request for amendment or correction of the proposed text (if such a request
is filed, the procedure is as indicated in C-V, 4). If they do so, theapplication proceeds to grant on the basis of the text of the auxiliary
request as proposed in the communication under Rule 71(3) (see C-V, 2).
3.3.6 Applicant does not approve the text proposed for grant
If the applicant does not approve the text according to the auxiliary request
as proposed in the communication under Rule 71(3), the procedure is as
set out in C-V, 4 (see in particular C-V, 4.7 and C-V, 4.6.2).
3.4 In opposition proceedings
In opposition proceedings, if an auxiliary request by the proprietor for
maintenance of the patent in amended form is allowable, the division
cannot revoke the patent (see T 234/86).
3.4.1 Written procedure
If the opposition division, after examining the parties' submissions,considers it can maintain the patent only in amended form as per an
auxiliary request from the proprietor, it must first ensure that the parties
have been allowed to comment under Art. 113(1) on the grounds andevidence behind the non-allowance of the higher-ranking request(s) and on
the grounds and evidence behind the allowance of the lower-ranking
request (where oral proceedings have been requested, see also
H-III, 3.5.2).
If, despite the existence of an allowable request, the proprietor continues tomaintain one or more unallowable higher-ranking requests, an interlocutory
decision is issued. This decision must include the finding that the patentMarch 2023

Guidelines for Examination in the EPO

and the invention to which it relates, as amended in accordance with theallowable auxiliary request, meet the requirements of the EPC. It must also
set out the reasons, based on grounds and evidence alreadycommunicated to the parties, for refusing the higher-ranking requests andfor allowing the lower-ranking request.
3.4.2 Oral proceedings
If the opposition division is able to allow an auxiliary request but not themain or higher-ranking auxiliary requests, the chair informs the parties(possibly after interrupting the proceedings) which request is allowable andthat the higher-ranking request(s) is/are not allowable (and on which
grounds they are not allowable), ensuring beforehand that the parties havealready had the opportunity to comment on all grounds and evidence
underlying this finding. The chair will then normally ask proprietors if they
are prepared to convert the allowable auxiliary request into a main request(by abandoning all higher-ranking unallowable requests). The division
cannot, however, insist on the proprietor making such a declaration.
If, despite the existence of an allowable auxiliary request, the proprietor
continues to maintain higher-ranking unallowable requests, the division
issues an interlocutory decision to the effect that:(a)the main request and possibly one or more auxiliary requests is/arenot allowable(b)in respect of the allowable auxiliary request, the amended patent andthe invention to which it relates satisfy the requirements of the EPC.

If, on the other hand, the proprietor withdraws the higher-ranking requests
such that the allowable auxiliary request becomes the main request, thedivision will issue an interlocutory decision to the effect that this request
satisfies the EPC.
The division tries as far as possible to ensure that, if it allows an auxiliary
request at oral proceedings, the complete final text is available at the end of
the proceedings.
3.5

In limitation proceedings

3.5.1 General principles
The filing of auxiliary requests (e.g. claim versions) together with a main
request is possible in limitation proceedings, just as in examination
proceedings. However, there are restrictions with regard to the possibility offiling amendments in limitation proceedings (see D-X, 4.3 and D-X, 4.5).

Part H – Chapter III-11

Part H – Chapter III-12

Guidelines for Examination in the EPO

March 2023

The procedure to be applied, subject to any request for oral proceedings, isslightly different to that applicable in pre-grant proceedings under
Rule 71(3), especially in view of the requirements of Art. 113(1) and (2). In
particular, in a case where an auxiliary request is allowable and the main
request is not, if this were communicated under Rule 95(3), this would nolonger leave the requester the option of having the main request rejectedwith an appealable decision. Thus, the following applies:(a)if the main request is allowable, the invitation under Rule 95(3) to file
the translations and pay the fees will be issued on that basis;(b)

if an auxiliary request is allowable, but not the main request (andpossibly other higher-ranking requests), proprietors will be informedof the reasons in a communication under Rule 95(2) and invited toabandon the non-allowable request(s); if they do not do so, therequest will be rejected as in (c) below;(c)

if none of the requests is allowable, initially a communication under
Rule 95(2) setting out the reasons and indicating a possible remedy
is sent to the requester; if no remedy is undertaken, a decision
rejecting the request is issued, and the annex prepared by theexamining division will need to set out the reasons why none of therequests are allowable.

In cases (b) and (c), the decision may be appealed by the requester.
3.5.2 Written procedure
If the examining division, after examining the request for limitation,
considers that the patent can be limited only on the basis of an auxiliary
request, it informs the requester accordingly in a communication under
Rule 95(2), giving reasons why the main request and any higher-ranking
auxiliary requests are not allowable and informing the requester which
auxiliary request is considered allowable. Where appropriate, the divisionalso informs the requester what amendments must be made to the patent
specification documents to bring them into line (Art. 105b(1) andRule 95(2)).
If in response to the communication under Rule 95(2) the requester
withdraws the unallowable request(s) and (where applicable) makes any
amendments still outstanding, the examining division will issue a
communication under Rule 95(3) inviting him to pay the prescribed fee andto file the translation of the limited claims of the allowable request(see D-X, 5).
If the requesters insist on maintaining an unallowable request, and fail tocomply with the examining division's request that they file documents
corresponding to the allowable auxiliary request, the request for limitationmust be rejected (Art. 105b(2) and Rule 95(4)). The decision must give thereasons for not allowing the higher-ranking request(s) and must point out,
as regards the allowable auxiliary request, that the requester failed tocomply with the division's request to submit a text enabling the patent to belimited on the basis of the allowable request.

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Guidelines for Examination in the EPO

3.5.3 Oral proceedings
If the examining division is able to allow an auxiliary request but not themain or higher-ranking requests, the chair informs the requesters (possibly
after interrupting the proceedings) which request is allowable and why thehigher-ranking request(s) is/are not. The requesters will then normally be
asked if they are prepared to convert the allowable auxiliary request into amain request. The division cannot however insist on the requester making
such a declaration.
If, despite the existence of an allowable text, the requester continues tomaintain an unallowable higher-ranking request, the request for limitation
shall be rejected (Rule 95(4)). The division will issue a decision giving thereasons for not allowing the higher-preference requests and pointing out
that, as regards the allowable auxiliary request, the requester failed tocomply with its request to submit a text enabling the patent to be limited on
the basis of the allowable request.
4. Different texts in respect of different contracting states
In the cases discussed in H-III, 4.2 to H-III, 4.4, an application or a patent
may contain a different set of claims (and descriptions) for different
contracting states (also see G-IV, 6). For examination and opposition
proceedings, see H-III, 4.1 to H-III, 4.4; for limitation proceedings, see
D-X, 10.
It is not possible to have different text in respect of extension or validation
states, as the relevant provisions allowing an exception to the principle ofunity of the European patent application/patent relate only to EPC
contracting states. However, where there are different text versions for thecontracting states, the applicant may determine which one applies to therespective extension/validation state.
4.1 Dealing with different texts in examination
If the examining or opposition division considers that the description anddrawings are so inconsistent with any set of claims as to create confusion,
it will require the applicant or proprietor to amend the description anddrawings to remedy this. If the applicant or proprietor voluntarily proposessuch an amendment the examining or opposition division will admit it only if
it considers this necessary. In particular, different descriptions anddrawings will be required only if it is not possible to set out clearly in acommon description which subject-matter is to be protected in the different
contracting states. For adaptation of the description in the case of nationalrights of earlier date, see H-III, 4.4.
Hence this type of application or patent will, after amendment, either
consist of two or more distinct sets of claims each supported by the samedescription and drawings, or two or more sets of claims each supported bydifferent descriptions and drawings.
For the application of Rules 80 and 138 in opposition proceedings,
see H-III, 4.2, H-III, 4.4 and H-III, 4.5.

Part H – Chapter III-13

Part H – Chapter III-14

Guidelines for Examination in the EPO

March 2023

4.2 Different text in respect of the state of the art according toArt. 54(3) EPC and Art. 54(4) EPC 1973
If the EPO notes that in respect of one or more of the designatedcontracting states the content of an earlier European patent application
forms part of the state of the art pursuant to Art. 54(3), two situations canarise:(i)the application under examination was pending at the date of entry
into force of the EPC 2000 (13 December 2007), or the patent under
examination had already been granted at that date. Art. 54(4)EPC 1973 is still transitionally applicable (see Art. 1 of the decision of
the Administrative Council of 28 June 2001, OJ EPO 2003 Special
edition No. 1, 202), with Rule 23a EPC 1973 and the first part ofRule 87 EPC 1973 as implementing regulations thereto. Here, if
conflicting prior art gives rise to different texts of the claims fordifferent contracting states and if the relevant designation fee(s) forthe earlier European patent application has/have been paid, different
sets of claims for the contracting states concerned may be filed, if
required to establish novelty over that prior art. In opposition
proceedings, Rule 80 also applies to amendments occasioned by thestate of the art according to Art. 54(4) EPC 1973.

(ii)

the application or patent under examination is not one of those
covered under (i). As Art. 54(4) EPC 1973 has been deleted, theconflicting prior art belongs to the state of the art for all contracting
states, irrespective of the effected designations (see also F-II, 4.3).
Likewise, it is irrelevant if the designation fee(s) for the earlier
European patent application has/have been paid, since there is noprovision in the EPC 2000 corresponding to Rule 23a EPC 1973.
Consequently, the possibility of having different texts for different
contracting states on the basis of Art. 54(3) no longer exists.

4.3 Different text where a transfer of right takes place pursuant toArt. 61 or Rule 78 in respect of certain designated states

Art. 61(1)(b)Rule 17
Rule 18(1) and (2)Rule 78(2)4.3.1 Different text where a transfer of right takes place pursuant toArt. 61 in examination proceedings
If by a final decision pursuant to Art. 61 it is adjudged that a third party isentitled to the grant of a European patent, the original European patentapplication must contain, "where appropriate", for the designatedcontracting states in which the decision was taken or recognised or must berecognised on the basis of the Protocol on Recognition, claims, adescription and drawings which are different from those for the otherdesignated contracting states (see also H-III, 4.1 and C-IX, 2).
4.3.2 Different texts where a transfer of the patent in respect ofcertain designated states takes place in opposition proceedings
Where a third party has, in accordance with Art. 99(4), replaced theprevious proprietor for one or some of the designated contracting states(see D-I, 6, third paragraph), the patent as maintained in opposition
proceedings may for those states contain claims, a description anddrawings which are different from those for the other designated contracting

March 2023

Guidelines for Examination in the EPO

Part H – Chapter III-15

states (see also D-VII, 3.2). However, Rule 80 applies to amendments byeach of the proprietors.
4.3.3 Opposition cases with different texts where a transfer of rights
by virtue of a final decision pursuant to Art. 61 takes place inexamination proceedings
The substance of H-III, 4.3.2 applies mutatis mutandis (see also D-I, 6,
third paragraph and D-VII, 3.2).
4.4 Different texts where national rights of earlier date exist
National rights of earlier date are not comprised in the state of the art(Art. 54) for the purposes of the EPO examination for patentability.
However, under Art. 139(2), national rights of earlier date can be invoked,
after the grant of the European patent, in national proceedings as a groundfor revocation. These rights represent exceptions to the uniformity ofEuropean substantive patent law. Where national rights exist, therefore, theapplicant or proprietor has a legitimate interest in submitting different claims
to ensure that the patent granted will not be partly revoked in some
contracting states (see Rule 80 and Rule 138). The filing of different claims
is, however, neither required nor suggested.
If an applicant or proprietor produces evidence in examination/opposition
proceedings of the existence of pertinent national rights of earlier date in aparticular (designated) contracting state, it is appropriate to admit separate
claims for the contracting state in question. The evidence must be in theform of a specification or, where applicable, a copy of the utility model orutility certificate or of the application for it (see Art. 140); this is necessary to
prevent unjustified deviation from the unity of the European patent.
In opposition proceedings, a national right of earlier date is neither a groundfor opposition nor a ground for revocation. Hence, it is not admissible for an
opponent to introduce a national right of earlier date into opposition
proceedings to support a novelty attack.
The effect of the national right of earlier date is determined by the relevant
national provisions. The examining or opposition division does not decide
whether the applicant or proprietor has limited the scope of theapplication/patent to the extent required to overcome the effect of thenational right (see G-IV, 6). That is the responsibility of the applicant or
proprietor.
The examining or opposition division must check that the separate claims
do not contravene Art. 123(2) and Art. 123(3), and that they meet the otherrequirements of the EPC. The same applies to a separate description(see H-III, 4.1).

Art. 139(2)Part H – Chapter III-16

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March 2023

Moreover, in general, there is no justification for a separate description.
However, at a suitable point in the preamble to the description, preferably ina separate paragraph following the information pursuant to Rule 42(1)(a), a
reference to this situation must be made, for example along the following
lines:"With reference to ... (e.g. earlier application No. ... in ...), the applicant has
voluntarily limited the scope of the application /patent for... (contracting
state) by submitting separate claims for this (these) state(s)."4.5 Opposition proceedings where the claims as granted are
different for different contracting states
Where a patent has been granted with different sets of claims for thereasons set out in H-III, 4.2 to H-III, 4.4, the proprietor might wish to bringthe claims into line either by applying a limitation already introduced for one
or more contracting states to the other contracting states or by filing a new
single set of claims for all contracting states.
In such a case, the amendments to each different set of claims as granted
must separately fulfil the requirements of Rule 80 and Art. 123(3) (andRule 138, if applicable).
5. Calculation of claims fees
The claims fees are calculated in accordance with A-X, 11.2, C-V, 1.4,
C-V, 4.2 and C-V, 4.8.1.

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Guidelines for Examination in the EPO

Chapter IV – Allowability of amendments –Art. 123(2) and (3)1. Introduction
Chapters H-II and H-III deal with the admissibility of amendments, i.e.
whether the competent department of the EPO will admit amended
application documents or an amended patent specification into theprocedure. After an amendment has been admitted into the procedure, thecompetent department must then decide whether the amendment isallowable, i.e. whether it satisfies the requirements of the EPC. It is
important to note that an admissible amendment is not automaticallyallowable.
2.

Allowability of amendments under Art. 123(2)2.1 Basic principle
The question of allowability of amendments is legally a question of whether
the application as so amended is allowable. An amended application mustof course satisfy all the requirements of the EPC including, in particular,
inventive step and the other matters listed in B-XI, 3.6 (see also C-III, 2).
If, however, the applicant seeks to amend the description (other thanreferences to the prior art, see H-IV, 2.2.6 H-IV, 2.2.7), the drawings or theclaims in such a way that subject-matter which extends beyond the content
of the application as filed is thereby introduced, the application as so
amended cannot be allowed.
The underlying idea of Art. 123(2) is that applicants are not allowed to
improve their position by adding subject-matter not disclosed in theapplication as filed, which would give him an unwarranted advantage andcould be damaging to the legal security of third parties relying on thecontent of the original application (see G 1/93).
An amendment is regarded as introducing subject-matter which extends
beyond the content of the application as filed, and therefore unallowable, if
the overall change in the content of the application (whether by way of
addition, alteration or excision) results in the skilled person being presented
with information which is not directly and unambiguously derivable from that
previously presented by the application, even when account is taken ofmatter which is implicit to a person skilled in the art (see G 2/10).
2.2 Content of the application as "originally" filed – general rules
Under Art. 123(2), it is impermissible to add to a European application
subject-matter which the skilled person cannot derive directly andunambiguously, using common general knowledge and also taking into
account any features implicit to a person skilled in the art in what isexpressly mentioned in the document, from the disclosure of the application
as filed. Literal support is, however, not required by the wording ofArt. 123(2) (see T 667/08).

Part H – Chapter IV-1

Part H – Chapter IV-2

Guidelines for Examination in the EPO

March 2023

The term "implicit disclosure" means no more than the clear andunambiguous consequence of what is explicitly mentioned in theapplication as filed. Thus, the common general knowledge must be taken
into account in deciding what is clearly and unambiguously implied by the
explicit disclosure of a document. However, the question of what may berendered obvious by that disclosure in the light of common generalknowledge is not relevant to the assessment of what is implicitly disclosedby that document (T 823/96, T 1125/07).
When assessing the conformity of the amended claims with therequirements of Art. 123(2), the focus is placed on what is really disclosed
to the skilled person by the documents as filed as directed to a technicalaudience. In particular, the examining division needs to avoid
disproportionally focusing on the structure of the claims as filed to thedetriment of the subject-matter that the skilled person would directly andunambiguously derive from the application as a whole.
Furthermore, the assessment of the requirements of Art. 123(2) is madefrom the standpoint of the skilled person on a technical and reasonablebasis, avoiding artificial and semantic constructions (T 99/13).
2.2.1 Features described in a document cross-referenced in thedescription
Features which are not disclosed in the description of the invention as
originally filed but which are only described in a cross-referenced document
which is identified in such description are prima facie not within "the content
of the application as filed" for the purpose of Art. 123(2). It is only underparticular conditions that such features can be introduced by way ofamendment into the claims of an application.
Such an amendment would not contravene Art. 123(2) if the description of
the invention as originally filed leaves no doubt to a skilled reader(see T 689/90) that:(i)protection is or may be sought for such features;(ii)

such features contribute to solving the technical problem underlying
the invention;(iii)

such features at least implicitly clearly belong to the description of theinvention contained in the application as filed (Art. 78(1)(b)) and thus
to the content of the application as filed (Art. 123(2)); and(iv)such features are precisely defined and identifiable within thedisclosure of the reference document.

Moreover, documents not available to the public on the date of filing of theapplication can only be considered if (see T 737/90):(a)a copy of the document was available to the EPO, or to the receiving
Office if the application is a Euro-PCT application which was not filed

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Guidelines for Examination in the EPO

Part H – Chapter IV-3

at the EPO as the receiving Office, on or before the date of filing of
the application; and(b)the document was made available to the public no later than on thedate of publication of the application under Art. 93 (e.g. by being
present in the application dossier and therefore made public under
Art. 128(4)).

2.2.2 Missing parts of the description or missing drawings filed
under Rule 56 after the date of filing
The procedure under Rule 56 allows the applicant to file missing drawings
or parts of the description subsequently, and to rely on the priority
document in order to avoid redating of the application to the date of filing of
the missing parts. Under Rule 56(3), redating is only avoided where themissing parts were "completely contained" in the priority document(see C-III, 1 and A-II, 5). The provisions of Rule 56(3) apply applies only toat the filing stage of the application., without further implications: inparticular, At later stages of the procedure it is not permissible at laterstages of the procedure to rely on the priority documents to correct oramend the application as filed (in keeping with G 3/89 and G 11/91). For
Euro-PCT applications a similar provision exists under Rule 20.6 PCT,
whereby a review by the EPO as elected or designated Office is possible
under Rule 82ter PCT.

Rule 56

Missing parts of the description and/or missing drawings allowed under
Rule 56(3) are always considered to be part of the application documents"as originally filed".
2.2.3 Erroneously filed application documents or parts under
Rule 56a
Rule 56a allows the applicant to file correct application documents or parts
if wrong application documents or parts have been filed erroneously. Under
Rule 56a(4) the applicant can rely on the priority document to avoid
redating the application to the date of filing of the correct application
documents or parts.
If applicants realise on the filing date (or earlier if the filing date cannot yet
be accorded) that they erroneously filed incorrect application documents,
they can file correct application documents under Rule 56a(2) on or before
the filing date, without changing the filing date (A-II, 6.6).
If correct application documents or parts are filed later than the date offiling, under Rule 56a(4), redating is avoided if the correct documents orparts were "completely contained" in the priority document (see C-III, 1 and
A-II, 6).
Rule 56a(4) applies only at the filing stage of the application. It is not
permissible to rely on the priority documents to correct or amend theapplication as filed at later stages of the procedure (in keeping with G 3/89
and G 11/91). For Euro-PCT applications a similar provision exists under
Rule 20.5bis(d) PCT and Rule 20.6 PCT, whereby a review by the EPO aselected or designated Office is possible under Rule 82ter PCT.

Rule 56a

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Guidelines for Examination in the EPO

March 2023

Correct application documents or parts allowed under Rule 56a(2) andRule 56a(4) are always considered to be part of the application documents"as originally filed" (see A-II, 6.3 and A-II, 6.4).

Rule 58

2.2.4 2.2.3 Claims filed after the date of filing
Claims filed after the date of filing under Rule 58 are never considered tobe part of the application documents "as originally filed" and must therefore
comply with the requirements of Art. 123(2) (see A-III, 15). For this reason,
the examining division has to check that the claims satisfy the requirementsof Art. 123(2), according to the same practice and standards as establishedin examination for amendments filed in other phases of the procedure(see H-V).
2.2.5 2.2.4 Sequence listings filed after the date of filing
A standardised sequence listing filed after the date of filing does not form
part of the description (Rule 30(2)). Such a standardised sequence listing is
not published either as an annex to the application or together with thespecification (see the notice from the EPO dated 9 December 2021,
OJ EPO 2021, A97, point 15 18 October 2013, OJ EPO 2013, 542, IV.2).
Pages and electronic files disclosing sequences or constituting a nonstandardised sequence listing which were filed at the date of filing are an
integral part of the application as originally filed and are treated like anyother parts of the description.
A subsequently filed standardised sequence listing may contain only thesequence information – in a standardised form – already contained in theoriginal application, and in particular the number of sequences and their
numbering needs to be the same as in the original description (see thenotice from the EPO dated 18 October 2013, OJ EPO 2013, 542, I.2.4
9 December 2021, OJ EPO 2021, A97). To this end the applicant must filea statement confirming that the subsequently filed standardised sequencelisting does not include matter which goes beyond the content of theapplication as originally filed (Art. 2(2) of the decision of the President dated
28 April 2011, OJ EPO 2011, 372 9 December 2021, OJ EPO 2021, A96).
In line with this, a subsequently filed standardised sequence listing cannot
be used to determine the originally disclosed content of the application, but
only for search purposes (see the notice from the EPO dated 9 December
2021, OJ EPO 2021, A97 18 October 2013, OJ EPO 2013, 542, I.2.5).
A subsequently filed standardised sequence listing is not to be examinedfor compliance with the requirements of Art. 123(2), as it is not part of thedescription.
Without prejudice to Rule 30, a sequence listing forming part of thedescription may be corrected or amended in accordance with Rule 139
and/or Art. 123(2). In this case a complete new sequence listing in TXT
format containing the corrections or amendments is to be filed (see thenotice from the EPO dated 9 December 2021, OJ EPO 2021, A97, point 10
18 October 2013, OJ EPO 2013, 542, I.2.6).

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Part H – Chapter IV-5

2.2.6 2.2.5 Priority documents
Under Art. 123(2) it is impermissible to add to a European application
matter present only in the priority document for that application(see T 260/85) unless this is done under the provisions of Rule 56(3) (H-IV,
2.2.2) or Rule 56a(4) (H-IV, 2.2.3H-IV, 2.3.2). For correction of errors,see H-VI, 4.
2.2.7 2.2.6 Citation of prior art in the description after the filing date
There is normally no objection to an applicant introducing, by amendment,
further information regarding prior art which is relevant; indeed this may berequired by the examining division (see F-II, 4.3 and F-III, 8).
2.2.8 2.2.7 Clarifications
The removal of a lack of clarity will normally not be objected to, provided
that the change does not extend beyond the disclosure of the application as
originally filed (Art. 123(2)).
2.2.9 2.2.8 Trade marks
If an amendment is made in order to clarify the meaning of a trade mark or
to replace a registered trade mark with a corresponding technical term, theexamining division needs to be particularly careful to ascertain that theamendment does not conflict with Art. 123(2). The composition of a trademarked product may have changed over time.
2.3 Content of the application as "originally" filed – special
applications
2.3.1 Applications filed by reference to an earlier application
According to Rule 40(1)(c), the applicant may file a European application byreference to a previously filed application (A-II, 4.1.3.1). Since claims are
no longer required in order for a date of filing to be accorded, the applicant
has three options:(i)when filing the European application, indicate that the reference tothe previously filed application includes the claims(ii)

at the time of filing, file a new set of claims together with an indicationthat the description and any drawings are filed by reference to apreviously filed application(iii)

when filing the European application, indicate the reference to apreviously filed application and file the claims after the date of filing(Rule 58).

In cases (i) and (ii) the claims will form part of the application as originally
filed, whereas in case (iii) the claims filed after the date of filing will not and
will
thus
have
to
fulfiltherequirementsofArt. 123(2)(see H-IV, 2.2.3 H-IV, 2.2.4).
2.3.2 Divisional applications
Under Art. 76(1), the subject-matter of a divisional application may notextend beyond the content of the parent application as originally filed.

Art. 123(2)Part H – Chapter IV-6

Guidelines for Examination in the EPO

March 2023

Furthermore, amendments made to the divisional application subsequent to
its filing may not extend beyond the content of the divisional application as
originally filed (Art. 123(2); for more details see C-IX, 1.4).
2.3.3 Applications resulting from a decision under Art. 61
If, as a result of a final decision, it is adjudged that a person other than theapplicant is entitled to the grant of a patent, that person may file a new
European patent application under Art. 61(1)(b). In this case, the provisionsof Art. 76(1) apply mutatis mutandis to the new application filed under
Art. 61(1)(b).
This means that the new application must not contain any subject-matterextending beyond the content of the earlier (unentitled) application as
originally filed. Furthermore, Art. 123(2) means that this new application
may not be amended in such a way as to extend its subject-matter beyond
its content as originally filed, even where the subject-matter in question iscontained in the earlier application (for more details see C-IX, 2.1).
2.3.4 International applications
For the purposes of Art. 123(2), the documents as originally filed are thoseoriginally filed in the PCT phase (normally published as a WO publication),a copy of which can always be obtained from the International Bureau.
Therefore amendments made during the PCT phase (including amended,
substitute or rectified sheets, even if attached to the WO publication) or
upon entry into the regional phase before the EPO must, if maintained in
the European phase, fulfil the requirements of Art. 123(2), and all such
amendments must be carefully considered.
2.4 Assessment of "added subject-matter" – examples
If an application relates to a rubber composition comprising several
ingredients and the applicant seeks to introduce the information that afurther ingredient may be added, then this amendment is normally objected
to as infringing Art. 123(2).
In the case of a disclosure of both a general and a preferred range, acombination of the preferred disclosed narrower range and one of the partranges lying within the disclosed overall range on either side of thenarrower range may be derivable from the original disclosure of theapplication.
In an application which describes and claims an apparatus "mounted on
resilient supports", without disclosing any particular kind of resilient support,
an objection is raised if the applicant seeks to add the specific informationthat the supports are, or could be, e.g. helical springs.
If, however, the applicant were able to demonstrate that the drawings, asinterpreted by the skilled person, show helical springs, the specific mentionof helical springs would be allowable, at least in the context of the specificembodiment where it is disclosed (see also H-V, 3.2.1).

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3.

Guidelines for Examination in the EPO

Part H – Chapter IV-7

Allowability of amendments under Art. 123(3)3.1 Basic principles
The European patent as granted or as amended in opposition, limitation or
revocation proceedings determines retroactively the protection conferred by
the European patent application.

Art. 69(2)Opposition proceedings will frequently give rise to amendments to theclaims, following from grounds for opposition raised under Art. 100.
Reasoned requests filed independently by proprietors of the patent for anamendment to the claims, e.g. for limitation of the patent in view of an
aspect of the state of the art which has come to their knowledge, may also
result in amendments to the claims after examination by the opposition
division.
In such cases the claims of the European patent may not be amended insuch a way as to extend the protection conferred by the patent.

Art. 123(3)Art. 123(3) is directly aimed at protecting the interests of third parties byprohibiting any broadening of the claims of a granted patent, even if there isa basis for such broadening in the application as filed (see G 1/93,
Reasons 9).
3.2 Protection conferred by the patent as granted
The extent of protection conferred by a European patent is determined by
the claims. Nevertheless, the description and drawings are to be used tointerpret the claims.
The Protocol on the Interpretation of Art. 69, which is, pursuant toArt. 164(1), an integral part of the EPC, specifies how Art. 69 is to beinterpreted.
Since, pursuant to Art. 69(1), amendments to the description and drawings
will also influence the interpretation of the claims, and may therefore extend
the protection conferred, any such amendments extending protection in thisway are not allowable (see G 1/93).
3.3 Version of the granted patent to be considered
In order to verify the criteria of Art. 123(3) the examining or opposition
division needs to compare the text of the amended claims with the claims of
the patent as granted or as amended in opposition or earlier limitation
proceedings, whichever claims are the most recent in force.
3.4 Assessment of impermissible extension of the protection
conferred
In view of the above considerations, all amendments made to claims andany connected amendments to the description and drawings in the courseof opposition proceedings, such as a change in the technical features of theinvention, must be examined to determine whether such amendments
could result in the extension of the subject-matter beyond the content of theapplication as originally filed (Art. 123(2)) or in the extension of theprotection conferred (Art. 123(3)).

Art. 69(1)Part H – Chapter IV-8

Guidelines for Examination in the EPO

March 2023

If, in view of Art. 84, the application documents have been adapted toamended claims before grant, thereby deleting part of the subject-matter
originally disclosed in order to avoid inconsistencies in the patent
specification, as a rule, subject-matter deleted for this reason cannot bereinserted either into the patent specification or into the claims as granted
without infringing Art. 123(3) (the cut-off effect). An analogous finding
applies to subject-matter retained in the patent specification during such
adaptation for reasons of comprehensibility, but indicated as not relating to
the claimed invention (see T 1149/97).
The requirements of Art. 123(2) and Art. 123(3) have to be dealt withseparately:(a)Examination for compliance with Art. 123(2) is conducted in the same
way as in examination proceedings.

(b)

Examination for compliance with Art. 123(3), on the other hand, isbased on the claims as granted, or as amended in opposition or
earlier limitation proceedings, where necessary using the description
and drawings to interpret the claims (Art. 69 and the Protocol on theInterpretation of Art. 69).

A composition which is specified in a claim as comprising a component in
an amount which is defined by a numerical range of values is subject to an
implicit proviso excluding the presence of that component in an amountoutside of that range. An amendment restricting the breadth of thatcomponent, for instance by narrowing down a generic class or a list ofchemical compounds defining that component, has the consequence oflimiting the scope of this implicit proviso. However, a composition which isdefined as comprising the components indicated in the claim is open to thepresence of any further components unless otherwise specified. Therefore
in a claim directed to such an openly defined composition, the restriction of
the breadth of a component present therein may have the effect ofbroadening the scope of protection of that claim, with the consequence thatin opposition/appeal proceedings such amended claim may extend theprotection conferred by the granted patent (Art. 123(3)) (see T 2017/07 andT 287/11). Restricting the breadth of the component means that certain
materials are no longer explicitly limited by the claim and therefore can bepresent in amounts which were excluded from the granted claim.
3.5 Conflicts between Art. 123(2) and Art. 123(3)A possible conflict between the requirements of Art. 123(2) and (3) may
occur where, in the procedure before grant, a feature was added to theapplication which is considered unallowable under Art. 123(2) in opposition
proceedings. In that case, Art. 123(2) would require deletion of such a
feature whereas Art. 123(3) would not allow deletion, as this would extend
the protection conferred by the patent as granted. In such a case the patent
will have to be revoked under Art. 100(c). However, where this feature canbe replaced by a feature for which there is a basis in the application as
filed and which does not extend the protection conferred by the patent as
granted, maintenance in this amended form can be allowed. If the added
feature, without providing a technical contribution to theMarch 2023

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Part H – Chapter IV-9

subject-matter of the claimed invention, merely limits the protection
conferred by the patent as granted by excluding protection for part of thesubject-matter of the claimed invention as covered by the application as
filed, this feature may be maintained (see G 1/93). The technicalsignificance of a feature in a claim is governed by its contribution to thetechnical definition of the claimed subject-matter, and that contribution is tobe assessed by the skilled person in the light of the original disclosure(see T 518/99).
3.6 Conflicts between Art. 123(3) and other requirements of the EPC
Other requirements of the EPC may also interact with Art. 123(3) after
grant. For instance, if a patent as granted only contains claims that in factdefine a "method for treatment of the human or animal body by therapy orsurgery practised on the human or animal body" or contain such a method
step, and such a patent is opposed under Art. 53(c), then Art. 53(c) and123(3) may operate in combination so that the patent must inevitably be
revoked, in that:–the patent cannot be maintained as granted because its claims
define subject-matter which is excluded from patentability under
Art. 53(c); and–the patent cannot be maintained in amended form because
amendment of the claims as granted by deletion of such "methodfeatures" would be contrary to Art. 123(3) (see T 82/93).

4.

Art. 123(3)Amendments relating to unsearched matter

4.1 Rule 137(5)Rule 137(5) relates to a matter of substantive law rather than to procedural
law. It sets out two further conditions for the allowability of amended claims,
namely they may not relate to (i) unsearched subject-matter which does not
combine with the originally claimed invention or group of inventions to forma single general inventive concept and (ii) subject-matter not searched inaccordance with Rule 62a and Rule 63 (see, however, H-II, 5).
Thus Rule 137(5), as opposed to Rule 137(3), does not provide a legal
basis for the exercise of discretion by the division not to admit amended
claims. The examination of the compliance of amended claims with
Rule 137(5) therefore requires an in-depth assessment, not just a
prima facie analysis.
4.1.1 Rule 62a and/or Rule 63 cases
Amended claims may not relate to subject-matter not searched inaccordance with Rule 62a or Rule 63 (see, however, H-II, 5).
Consequently, the presence of this subject-matter in the description cannot
be used as a basis for its reintroduction into the claims (see also
B-VIII, 3.2.2 and B-VIII, 4.2.2).
However, the examining division does not raise an objection under
Rule 137(5), second sentence, if the applicant only further limits a searchedclaim by introducing subject-matter taken from the description unless thisRule 137(5),second sentencePart H – Chapter IV-10

Guidelines for Examination in the EPO

March 2023

subject-matter was explicitly declared as not searched under Rule 62a
and/or Rule 63.
When assessing the allowability of an amendment under Rule 137(5),second sentence, the examining division also evaluates if the limitation of
the search under Rule 62a and/or Rule 63 or the declaration of no search
was justified (see B-VIII, 3.2.2, B-VIII, 4.2.2, H-II, 5). If the invitation was not
appropriate or the limitation not justified, an additional search may benecessary (see C-IV, 7.3).

Rule 137(5),first sentence

4.1.2 Subject-matter taken from the description
Within the framework of Art. 123(2) and Art. 82, Rule 137(5), first sentence,
should be construed as permitting any limitation of searched subject-matter
which is unitary with the originally claimed subject-matter, irrespective ofwhether the technical feature(s) used for the limitation has/have been
searched.
Thus, the addition to a claim of a technical feature which further defines anelement that was already a feature of the original main claim or makes acontribution to the effect(s) of the features of the originally claimed
invention(s) and which was expressly not searched but was disclosed in thecontext of the invention in the application as filed (usually in the description)
will not result in an amended claim lacking a single general inventive
concept with respect to the originally claimed invention(s). Consequently no
objection under Rule 137(5), first sentence, should be raised in thesecircumstances, even though an additional search may be required(see C-IV, 7.3).
If amended claims are directed to subject-matter which has not been
searched because it only appeared in the description (and the searchdivision did not find it appropriate to extend the search to thissubject-matter; see B-III, 3.5) and which does not combine with theoriginally claimed and searched invention or group of inventions to form asingle general inventive concept, such amendments are not allowable.
In other words, in order to assess whether or not amended claims fulfil therequirements of Rule 137(5), first sentence, the examining division needs toestablish first whether or not the subject-matter to which they relate has orshould have been searched (see B-III, 3.5) and second whether or not an
objection of lack of unity would have been raised if the amended claims had
been present in the set of claims on file at the time of the search.
As a consequence, an objection under Rule 137(5), first sentence, will
normally arise if the applicant attempts to replace a technical feature
contained in a claim with a technical feature taken from the description andhaving an effect unrelated to the effect(s) of the features of the originallyclaimed invention(s).
If an objection under Rule 137(5), first sentence, is raised, applicants are
informed that they may continue to pursue such subject-matter only in theform of a divisional application under Art. 76.

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Part H – Chapter IV-11

The situation described above is different from amendments corresponding
to an invention originally claimed but not searched under Rule 64, orRule 164(1) or Rule 164(2), which are dealt with in H-II, 6.2.
Applicants should bear in mind that the examination procedure should be
brought to a conclusion in as few actions as possible. Therefore, theexamining division may exercise its right not to admit further amendments
under Rule 137(3) (see H-II, 2.3).
4.2 Euro-PCT applications
For Euro-PCT applications where the EPO acted as ISA or SISA, theexamining division has to issue an invitation under Rule 164(2) for any now
claimed but unsearched invention contained in the originally filed
application documents (description, claims and drawings, if any) which are
to serve as the basis for examination upon expiry of the six-month time limit
set in the communication under Rule 161 or Rule 162 (see C-III, 3.1).
5.

4. Compliance of amendments with other EPC requirements

5.1 4.1 General principles
The other EPC requirements with which amendments have to comply will
depend on whether the amendments are filed in examination, opposition orlimitation proceedings (see below).
5.2 4.2 In examination proceedings
The question of allowability of amendments is legally a question of whether
the application as so amended is allowable. An amended application mustof course satisfy all the requirements of the EPC including, in particular,
inventive step and the other matters listed in B-XI, 3.6 (see also C-III, 2).
Also, however, especially when the claims have been substantially limited,the examining division needs to bear in mind that the following questions
may require special consideration at the amendment stage.
(i)

Unity of invention
Do the amended claims still satisfy the requirements of Art. 82? If thesearch report seems to reveal lack of novelty or inventive step in theconcept common to all the claims, but the amended claims do notnecessitate further search, the examining division will consider
carefully whether an objection of lack of unity is justified at this stageof the proceedings (see F-V, 6). If, however, the claims lack acommon inventive concept and a further search is necessary, thenan objection is raised.

(ii)

Agreement of description and claims
If the claims have been amended, will the description require
corresponding amendment to remove serious inconsistency between
them? For example, is every embodiment of the invention describedstill within the scope of one or more claims? (see F-IV, 4.3 and
H-V, 2.7). Conversely, are all of the amended claims supported by
the description? (see F-IV, 6). Also, if the categories of claims have

Rule 137(3)Part H – Chapter IV-12

Guidelines for Examination in the EPO

March 2023

been altered, will the title require corresponding amendment(see H-V, 8)?
5.3 4.3 In opposition proceedings
The proprietors of the patent generally have to indicate the basis in theoriginal application documents or claims of the granted patent from which
the amendments may be derived (Art. 100(c) and Art. 123(2)). In addition,
they should file observations as regards the patentability of thesubject-matter of the patent as amended (with reference toArt. 100(a) and (b)), taking into account the state of the art and objections
raised in the opposition notice together, where appropriate, with theevidence presented in support.
Opposition is not an opportunity to re-examine the whole patent; it is theamendments introduced into the patent which must be examined as towhether they comply with the EPC as a whole (see G 3/14, T 227/88 and
T 301/87). Therefore the opposition division will check that the patent, by
the amendments themselves, does not contravene the requirements of the
EPC (with the exception of Art. 82, see G 1/91 and D-V, 2). With respect toArt. 84, see D-V, 5. For the form of amended documents, see H-III, 2.2 to
H-III, 2.4. The formal requirements, in particular those specified by
Rules 30 to 34, and Rules 42, 43, 46, 48 and 50, and the decision of the
President of the EPO dated 25 November 2022, OJ EPO 2022, A113, mustalso be satisfied (see Rule 86).
5.4 4.4 In limitation proceedings
Limitation is not an opportunity to re-examine the whole patent; only theamended claims are to be examined with regard to Art. 84 and Art. 123(2)and (3), i.e. what needs to be considered is whether the requested
amendments introduce a deficiency within the meaning of those provisions.
Claims as granted or as maintained are not examined anew.
5.4.1 4.4.1 Art. 84
It is also to be verified that the amended claims are in conformity with
Art. 84. For the interpretation of clarity under Art. 84 in limitation
proceedings, the usual standards apply (see F-IV, 4, 5 and 6). Note in thisrespect that mere clarifications made to the claims, in particular todependent claims, cannot be allowed unless they are necessitated by thelimitation(s) introduced elsewhere in the claims.
5.4.2 4.4.2 Examination of the description and/or drawings
Rule 95(2) requires only the amended claims to be examined in limitation
proceedings. Nonetheless, if the applicant has not filed amendments to thedescription, the examining division checks whether the amended claims arestill supported by the description. If this is not the case, in accordance with
Rule 95(2) the proprietor is requested to amend either the description or theclaims, in order to comply with Art. 84. In this context it is pointed out thatthe examining division may not adapt the description of its own motion.
If, however, for the purpose of limitation an amended description and/or
drawings are presented together with the claims, these are to be checked,
but only for compliance with the requirements of Art. 123(2) and (3) andMarch 2023

Guidelines for Examination in the EPO

Art. 84. Note that in this respect amendments made to the description
solely in order to improve the patent, or cosmetic changes which are notnecessitated by the limited claims, cannot be allowed.
5.4.3 4.4.3 Points to be disregarded
In limitation proceedings there is no examination as to why a request forlimitation was filed or whether the goal of the limitation has been achieved,for example if the amended and limited claims are truly novel vis-à-vis aparticular prior art document.
In general there is no need to verify whether the limited claims contravene
any of Art. 52 to 57. It may however happen that limitation results inprima facie non-compliance with the patentability criteria, e.g. Art. 53, in
which case the examining division will communicate this non-compliance tothe requester.
Examples:A granted claim directed to a generic plant is limited to a specific plantvariety. As the amended claim then relates to a plant variety per se it is
excluded from patentability under Art. 53(b) (G 1/98).
A claim granted to a device comprising a controlled explosion system islimited to a claim reciting an anti-personnel mine comprising the controlled
explosion system, which would be contrary to Art. 53(a).

Part H – Chapter IV-13

March 2023

Guidelines for Examination in the EPO

Part H – Chapter V-1

Chapter V – Allowability of amendments –examples
1. Introduction
Chapter H-V provides additional guidance and examples relating to anumber of typical situations where compliance with Art. 123(2) and/orArt. 123(3) is an issue. However, it must be borne in mind that theallowability of a specific amendment is ultimately to be decided on a caseby-case basis.
2.

Amendments in the description

2.1 Clarification of a technical effect
Where a technical feature was clearly disclosed in the original application
but its effect was not mentioned or not mentioned fully, yet it can be
deduced without difficulty by a person skilled in the art from the application
as filed, subsequent clarification of that effect in the description does notcontravene Art. 123(2).
2.2 Introduction of further examples and new effects
Amendment by the introduction of further examples always needs to belooked at very carefully in the light of the general considerations outlined in
H-IV, 2. The same applies to the introduction of statements of new(i.e. previously not mentioned) effects of the invention such as newtechnical advantages. For example, if the invention as originally presented
related to a process for cleaning woollen clothing consisting of treating theclothing with a particular fluid, the applicant is not allowed to introduce later
into the description a statement that the process also has the advantage ofprotecting the clothing against moth damage.
Under certain circumstances, however, later filed examples or new effects,
even if not allowed into the application, may nevertheless be taken into
account by the examining division as evidence in support of thepatentability of the claimed invention. For instance, an additional example
may be accepted as evidence that the invention can be readily applied, on
the basis of the information given in the originally filed application, over thewhole field claimed (see F-IV, 6.3). Similarly a new effect may beconsidered as evidence in support of inventive step, provided that this new
effect is implied by or at least related to an effect disclosed in the originally
filed application (see G-VII, 10).
2.3 Supplementary technical information
Any supplementary technical information submitted after the filing date of
the application will be added to the part of the file which is open to public
inspection unless excluded from public inspection pursuant to Rule 144(d).
From the date on which the information is added to the open part of the file,
it forms part of the state of the art within the meaning of Art. 54(2). In order
to notify the public of the existence of such information submitted after theapplication was filed and not included in the specification, an appropriate
mention will be printed on the cover page of the patent specification.

Art. 123(2)Art. 123(2)Part H – Chapter V-2

Guidelines for Examination in the EPO

March 2023

2.4 Revision of stated technical problem
Care must also be taken to ensure that any amendment to, or subsequent
insertion of, a statement of the technical problem solved by the invention
meets Art. 123(2). For example it may happen that following restriction of
the claims to meet an objection of lack of inventive step, it is desired torevise the stated problem to emphasise an effect attainable by the thus
restricted invention but not by the prior art.
It must be remembered that such revision is only permissible if the effectemphasised is one deducible by a person skilled in the art without difficultyfrom the application as filed (see H-V, 2.1 and 2.2 above).
If the suggested amendment would contravene Art. 123(2), it will benecessary to amend the description in some other way, e.g. by defining the
problem in more general terms or by omitting any express statement of the
problem altogether.
2.5 Reference document
Features from a cross-referenced document can, under particularconditions be introduced by way of amendment into the claims of an
application (see H-IV, 2.2.1).
2.6 Alteration, excision or addition of text in the description
Alteration or excision of the text, as well as the addition of further text, may
introduce fresh subject-matter. For instance, suppose an invention related
to a multi-layer laminated panel, and the description included several
examples of different layered arrangements, one of these having an outerlayer of polyethylene; amendment of this example either to alter the outerlayer to polypropylene or to omit this layer altogether would not normally beallowable. In each case, the panel disclosed by the amendment example
would be quite different from that originally disclosed and, hence, theamendment would introduce fresh subject-matter and therefore beunallowable.
2.7 Bringing the description into line with amended claims
The description must be brought into line with amended claims by
amending it as needed to meet the requirements set out in F-II, 4.2,
F-IV, 4.3(iii) and F-IV, 4.4.
If the applicant does not amend the description as required despite being
asked to do so, the examining division's next action may be to issue a
summons to oral proceedings; for the time limit, E-III, 6(iii) applies.
3. Amendments in claims
Replacement or removal of features from a claim, as well as the addition offurther features, may introduce fresh subject-matter not only in the claim
itself, but also in the claims when considered as a whole. In fact, such
amendments could result in a combination of features not disclosed in theapplication as filed when the amended claim is considered together with its
dependent claims and/or the claims on which it depends.

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Guidelines for Examination in the EPO

3.1 Replacement or removal of features from a claim
The requirements of Art. 123(2) are only met if the replacement or removalof a feature lies within the limits of what a skilled person would derive
directly and unambiguously, using common general knowledge and seen
objectively and relative to the date of filing (or the date of priority according
to Art. 89), from the whole of the application documents (G 3/89, G 11/91
and G 2/10).

Part H – Chapter V-3

Art. 123(2)If the amendment by replacing or removing a feature from a claim fails topass the following test by at least one criterion, it necessarily contravenes
the requirements of Art. 123(2):(i)

the replaced or removed feature was not explained as essential in
the originally filed disclosure;(ii)

the skilled person would directly and unambiguously recognise thatthe feature is not, as such, indispensable for the function of theinvention in the light of the technical problem the invention serves tosolve (in this context special care needs to be taken in cases where
the technical problem is reformulated during the proceedings, see
H-V, 2.4 and G-VII, 11); and(iii)

the skilled person would recognise that the replacement or removal
requires no modification of one or more features to compensate forthe change (it does not in itself alter the invention).

However, even if the above criteria are met, the division must still ensurethat the amendment by replacing or removing a feature from a claim
satisfies the requirements of Art. 123(2) as they also have been set out in
G 3/89 and G 11/91, referred to in G 2/10 as "the gold standard".
If several features are deleted from an independent claim, so that for
example it is restricted to only part of the originally claimed subject-matter,
the subject-matter of the amended claim must be directly andunambiguously derivable from the application as filed as being an invention
per se, i.e. it must solve a technical problem and be able to work in theabsence of any of the particular features being deleted.
The removal of a limiting feature from an independent granted claim is
likely to result in broadening the scope of protection afforded and could
therefore contravene Art. 123(3). Likewise, if a feature in a granted claim is
replaced, compliance with Art. 123(3) has to be carefully checked.
3.2 Inclusion of additional features
A claim may be limited by the inclusion of additional features, provided theresulting combination was directly and unambiguously disclosed in theapplication as originally filed in an explicit or implicit manner (see H-IV, 2.1)
and does not relate to an invention which was not searched (see H-II, 6 and7.2 H-IV, 4 and H-II, 6.2). If the resulting combination is novel over theapplication as originally filed (see the test for novelty given in G-VI, 2), theamended claim does not fulfil the requirements of Art. 123(2).

Art. 123(3)Art. 123(2)Part H – Chapter V-4

Guidelines for Examination in the EPO

March 2023

The fact that the resulting combination can be seen as:–"not inconsistent" with the description (T 495/06) or–"reasonably plausible" (T 824/06) or–"obvious" in view of the application (T 329/99)

is not sufficient for an amendment to be allowable under Art. 123(2), since
its direct and unambiguous disclosure is required.
A claim may be limited by inclusion of additional features, for example:(a)from dependent claims, which were dependent on the claim to belimited;(b)from the description (see also H-V, 3.2.1);(c)from drawings (see H-V, 6);(d)arising from the conversion of an independent claim to a dependentclaim;

provided the above requirements are fulfilled.

Art. 123(2)3.2.1 Intermediate generalisations
Extracting a specific feature in isolation from an originally disclosed
combination of features and using it to delimit claimed subject-matter may
be allowed only if there is no structural and functional relationship between
the features.
When evaluating whether the limitation of a claim by a feature extracted
from a combination of features fulfils the requirements of Art. 123(2), thecontent of the application as filed must not be considered to be a reservoir
from which individual features pertaining to separate embodiments can be
combined in order to artificially create a particular combination.
When a feature is taken from a particular embodiment and added to theclaim, it has to be established that:–the feature is not related or inextricably linked to the other features ofthat embodiment and–the overall disclosure justifies the generalising isolation of the featureand its introduction into the claim.

These conditions are to be understood as an aid to assessing, in theparticular case of an intermediate generalisation, if the amendment fulfils
the requirements of Art. 123(2). In any case it has to be ensured that theskilled person is not presented with information which is not directly andunambiguously derivable from the originally filed application, even when

March 2023

Guidelines for Examination in the EPO

account is taken of matter which is implicit to a person skilled in the art
using the common general knowledge.
Example 1
The amended claim relates to a heddle for the harness of a loom. The
original claim was limited by introducing features that were disclosed only inconnection with a specific embodiment in which the eyelet of the heddle
had the shape of a spindle. This shape was not included in the amended
claim. In the general part of the description it was also mentioned that theeyelet could also have other shapes such as an elliptic shape. Therefore
the board concluded that the amendment was allowable under Art. 123(2)(T 300/06).
Example 2
Claim 1 relates to a water dispersible and flushable absorbent article.
Amended claim 1 specifies that each of the first and second fibrousassemblies is a wet laid tissue. The application as filed referred, inconnection with the first fibrous assembly, to a wet laid tissue incombination with other features (tissue is apertured; tissue is provided withfibrils or sufficient inherent porosity).
Since the first fibrous assembly is disclosed in the application as filed as
being a wet laid tissue only in combination with other features which are notpresent in claim 1, the amendments made constitute a generalisation of theoriginally disclosed technical information and thereby introduce subjectmatter extending beyond the content of the application as filed (T 1164/04).
Example 3
Original claim 1 relates to a coating composition comprising at least one
rosin compound, at least one polymer and an antifoulant.
After amendment a new claim was introduced relating to a method for
preparing a coating composition comprising the mixing of at least one rosincompound, at least one polymer and an antifoulant. The only basis for the
method is the examples. The board observed that for some solutions theamount of added rosin was extremely low whereas for others it was
extremely high. The subject-matter of the amended claim was considered
to be an unallowable generalisation of the examples, since nothing in thedescription indicated to the person skilled in the art that the observed
variations were not essential to make a coating composition (T 200/04).
Example 4
Original claim 1 relates to a multi-processing system comprising a sharedmemory, a directory and a serialisation point. The serialisation point isdefined in functional terms. Claim 1 was amended by adding features thatwere addressed in the description as part of the cache coherence strategy.
The board held that the incorporated features, albeit disclosed as such, hadbeen isolated in an arbitrary manner from the overall disclosure of thecache coherent memory access architecture. At least one feature had been

Part H – Chapter V-5

Part H – Chapter V-6

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March 2023

omitted although its function was presented as being essential to achieving
cache coherence. Therefore amended claim 1 was not directly andunambiguously derivable from the original application (T 166/04).

Art. 123(2)3.3 Deletion of part of the claimed subject-matter
It is permissible to delete parts of the claimed subject-matter if thecorresponding embodiments were originally described, e.g. as alternatives
in the claim or as embodiments explicitly set out in the description.
Example:Original application:"A polymer blend XY ... containing, as a filler,
graphite, talc, asbestos or silica"

Prior art:

"A polymer blend XY ... containing asbestos".

Limited claim:"A polymer blend XY ... containing, as a filler,
graphite, talc or silica".

The deletion of alternatives from more than one list is only allowable if thisdoes not result in the creation of new technical information that is notdirectly and unambiguously derivable from the application as originally filed.
In particular, limitations that do not result in the singling out of a particular
combination of specific features but maintain the remaining subject-matteras a generic group which differs from the original group only by its smaller
size will normally fulfil the requirements of Art. 123(2) EPC.
Deletion of part of the claimed subject-matter resulting in a combination of
specific features may be allowable if the application as filed provides apointer towards that particular combination, e.g. by reference to particularembodiments.
These principles also apply to the combination of features resulting fromdependent claims.

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Part H – Chapter V-7

ExampleOriginal claim 1"A composition for therapeutic use comprising atherapeutic agent and a glass-forming
carbohydrate."

Original claim 22"A composition according to claim 1 wherein thetherapeutic agent is selected from the groupenzymes, biopharmaceuticals, growth hormones,
growth factors, insulin, monoclonal antibodies,interferons, interleukins and cytokines."

Original disclosure

In the description, inhalation is listed as one ofseveral ways of administration.
In the description, insulin is listed as one ofseveral therapeutic agents.

Limited claim 1"A composition for therapeutic use suitable foradministration by inhalation comprising atherapeutic agent and a glass-forming
carbohydrate".

Dependent claim 10"A composition according to claim 1 wherein thetherapeutic agent is insulin"

The limitation to inhalation in claim 1 results from a choice from one list andhas a basis in the application as originally filed.
The combination of the subject-matter of dependent claim 10 with thesubject-matter of claim 1 results from a selection from multiple lists which is
not disclosed directly and unambiguously in the application as originally
filed.
The number of amendments held to have been combined to arrive at theamended claimed subject-matter is not decisive in order to assess whether
the claimed subject-matter extends beyond the content of the application as
filed. What is required is an analysis of whether the claimed subject-matteris explicitly or implicitly, but directly and unambiguously, disclosed in theapplication as filed.
Wherever possible, the claim should be limited by a positive indication ofwhat subject-matter remains instead of stating what is being deleted fromthe subject-matter (as a disclaimer would do).
Example:–"... a polyether of molecular weight from 600 to 10 000" restricted to"... above 1 500 to 10 000" (T 433/86).

3.4 Further cases of broadening of claims
The deletion of a statement regarding use or intended purpose in an
independent product claim fulfils the requirements of Art. 123(2) only if theapplication as filed offers a basis for the assumption that the product can

Art. 123(2)Part H – Chapter V-8

Guidelines for Examination in the EPO

March 2023

also be used in some other way (and if the statement of purpose does notamount to a functional limitation).
The broadening of a claim by exchanging a particular feature for a moregeneral feature cannot be based on an indication that it would be obvious
for a skilled person (see also H-V, 3.2.1).
Art. 123(3)Moreover, the deletion of a particular feature or its replacement by a moregeneral feature usually leads to a broadening of the claim. Therefore, therequirements of Art. 123(3) are not fulfilled.
4.

Disclaimers

4.1 Disclaimer disclosed in the application as originally filed
In this case, the original application already indicates that specific subjectmatter is not part of the invention.
Art. 123(2)Negative features help to define the claimed invention in the same way as
positive ones, and must be examined on the same basis. In other words,
they may confer novelty and, like positive features, are assessed as to theirrelevance to inventive step. They must also fulfil the requirements of Art. 84(clarity, conciseness and support), and their inclusion in the claims must not
infringe Art. 123(2) (T 170/87, T 365/88).
Examples:–"... said delivery means does not comprise a capacitor element";–"... with the proviso that blends having a melt index of lower than
0.05 are excluded".

Negative features, like positive ones, may be structural or functional, andmay relate to either a physical entity or an activity.
4.2

Disclaimers not disclosed in the application as originally filed

4.2.1 The subject-matter to be excluded is not disclosed in theapplication as originally filed (so-called undisclosed disclaimers)
Limiting the scope of a claim by using a "disclaimer" to exclude a technicalfeature not disclosed in the application as filed may be allowable under
Art. 123(2) in the following cases (see G 1/03 and G 1/16 and F-IV, 4.20):(i)restoring novelty over a disclosure under Art. 54(3);(ii)

restoring novelty over an accidental anticipation under Art. 54(2).
"An anticipation is accidental if it is so unrelated to and remote fromthe claimed invention that the person skilled in the art would never
have taken it into consideration when making the invention". The
status of "accidental" is to be ascertained without looking at theavailable further state of the art. A related document does not
become an accidental anticipation merely because there are otherdisclosures even more closely related. The fact that a document isMarch 2023

Guidelines for Examination in the EPO

not considered to be the closest prior art is insufficient for achieving
the status of "accidental". An accidental disclosure has nothing to dowith the teaching of the claimed invention, since it is not relevant for
examining inventive step. For example, this is the case when thesame compounds serve as starting materials in entirely different
reactions yielding different end products (see T 298/01). A prior art,
the teaching of which leads away from the invention, however, does
not constitute an accidental anticipation; the fact that the novelty
destroying disclosure is a comparative example is also insufficient forachieving the status of "accidental" (see T 14/01 and T 1146/01);(iii)

removing subject-matter which, under Art. 52 to Art. 57, is excluded
from patentability for non-technical reasons. For example, theinsertion of "non-human" in order to satisfy the requirements ofArt. 53(a) is allowable.

These criteria notwithstanding the introduction of the undisclosed
disclaimer may not provide a technical contribution to the subject-matter
disclosed in the application as filed. The undisclosed disclaimer (which
inevitably quantitatively reduces the original technical teaching) may not
qualitatively change the original technical teaching in the sense that theapplicant's or patent proprietor's position with regard to other requirementsfor patentability is improved. In particular, it may not be or become relevant
for the assessment of inventive step or for the question of sufficiency of
disclosure. Hence, the evaluation of inventive step has to be carried out
disregarding the undisclosed disclaimer (see G 1/16).
The disclaimer may not remove more than necessary either to restore
novelty (cases (i) and (ii) above) or to disclaim subject-matter excluded
from patentability for non-technical reasons (case (iii) above).
An undisclosed disclaimer is, in particular, not allowable if:(i)

it is made in order to exclude non-working embodiments or remedy
insufficient disclosure;(ii)

it makes a technical contribution.

(iii)

the limitation is relevant for assessing inventive step;(iv)

the disclaimer, which would otherwise be allowable on the basis of aconflicting application alone (Art. 54(3)), renders the invention novel
or inventive over a separate prior art document under Art. 54(2),which is a not accidental anticipation of the claimed invention;(v)

the disclaimer based on a conflicting application also serves anotherpurpose, e.g. it removes a deficiency under Art. 83.

Art. 84 applies equally to the claim per se and to the disclaimer itself (seeT 2130/11).

Part H – Chapter V-9

Part H – Chapter V-10

Guidelines for Examination in the EPO

March 2023

In the interest of the patent's transparency, the excluded prior art must be
indicated in the description in accordance with Rule 42(1)(b) and therelation between the prior art and the disclaimer must be shown.
4.2.2 The subject-matter to be excluded is disclosed in theapplication as originally filed
The test to be applied is whether the subject-matter remaining in the claim
after the introduction of the disclaimer is, be it explicitly or implicitly, directly
and unambiguously disclosed in the application as filed to the skilled
person using its common general knowledge at the date of filing (or thedate of priority according to Art. 89), see G 2/10, Headnote 1a.
This test is the same as that applied when the allowability of a limitation ofa claim by a positively defined feature is to be determined (see H-V, 3.2).
When it comes to determining whether, after the introduction of thedisclaimer, the claim infringes Art. 123(2) or whether it is in conformity withit, this cannot be decided solely by establishing that the disclaimed subjectmatter is disclosed in the application as filed.
Whether the skilled person is presented with new information depends on
how he or she would understand the amended claim, i.e. the subject-matterremaining in the amended claim and on whether, using common generalknowledge, he or she would regard that subject-matter as at least implicitly
disclosed in the application as filed.
What is required is an assessment of the overall technical circumstances of
the individual case under consideration, taking into account the nature andextent of the disclosure in the application as filed, the nature and extent of
the disclaimed subject-matter and its relationship with the subject-matterremaining in the claim after the amendment.
In this respect it has to be established whether the disclaiming of subjectmatter leads for example to the singling out of compounds or sub-classesof compounds or other so-called intermediate generalisations not
specifically mentioned or implicitly disclosed in the application as filed(see G 2/10).
Whether the invention works for the claimed subject-matter and what
problem is credibly solved by it are questions which are not relevant forassessing whether this subject-matter extends beyond the content of theapplication as filed (see T 2130/11).
5. Amendments to drawings
It sometimes occurs that the drawings used for publication of theapplication are not those originally filed but are subsequently filed drawings,
because the latter are more suitable for reproduction (for drawings filed
under Rule 56, see A-II, 5 and subsections and for drawings filed under
Rule 56a, see A-II, 6 and subsections). In this case, the formalities officer inthe Receiving Section will check that the subsequently filed drawings are
identical to the originals.

March 2023

Guidelines for Examination in the EPO

Part H – Chapter V-11

However, the ultimate responsibility for ensuring that the subsequently filed
drawings do not contain new technical information, which would conflictwith Art. 123(2), rests with the examining division.
If the examining division considers that these drawings conflict with
Art. 123(2), it requires the applicant to submit other drawings whichcorrespond exactly in substance to the drawings originally filed.
It is not normally possible under Art. 123(2) to add completely new
drawings to an application, since in most cases a new drawing cannot be
unambiguously derivable from the mere text of the description. For thesame reasons, amendments to drawings are carefully checked forcompliance with Art. 123(2).
6. Amendments derived from drawings
Care needs to be taken when amendments are based on details which may
only be derived from the schematic drawings of the original application (seealso H-IV, 2.4).
In particular, a figure which serves only to give a schematic explanation of
the principle of the subject-matter of the invention and not to represent it inevery detail does not allow the conclusion that the disclosed teaching
purposively excluded a feature not represented (T 170/87).
The manner in which a particular feature is depicted in the drawings may
be accidental. The skilled person must be able to clearly and unmistakably
recognise from the drawings, in the context of the whole description, thatthe added feature is the deliberate result of the technical considerations
directed to the solution of the technical problem involved.
For example, in an application relating to a vehicle where neither the claims
nor the description contains any information about the location of theengine, the drawings may depict a vehicle in which approximately two
thirds of the height of the engine is located below a plane tangent to the topof the wheels. An amendment which uses the generalised terms definesthat "the major portion of the height of the engine" to define that saidmajor portion is located below the given level would not infringe Art. 123(2)unless if the skilled person would be able to recognise from the drawings, inthe context of the whole description, that such a spatial arrangement of theengine with respect to the wheels is in fact a deliberate measure directed tothe solution of the technical problem (see T 398/00).
7. Changes in claim category in opposition
An amendment can be in the form of a change in the category of a claim,
possibly combined with a change in the technical features of the invention.
Firstly it must be clear that this amendment is necessitated by grounds for
opposition (see H-II, 3.1). If that is not the case, a change of category is
refused.
Even if this condition is fulfilled, the opposition division exercises great
caution in allowing a change of claim category, since the protection as
conferred by the claims may thus be extended (Art. 123(3)). Examples are

Rule 80
Art. 123(2) and (3)Part H – Chapter V-12

Guidelines for Examination in the EPO

March 2023

given in the following sections. Note that these examples could also giverise to issues under Art. 123(2).
7.1 Product claim to use claim
If a patent is so amended that a claim to a product (a physical entity) is
replaced by a claim to the use of this product, the degree of protection is
not extended, provided that the use claim in reality defines the use of aparticular physical entity to achieve an effect and does not define such a
use to produce a product (see G 2/88).
7.2 Product claim to method claim
If a patent is so amended that a claim to a product is replaced by a claim toa method for producing the product, this change of category is allowable,
provided that the method now claimed only results in the product previously
claimed. As it is a fundamental principle of European patent law that theprotection conferred by a product claim covers all methods for production of
the product, the limitation to one of these methods cannot extend theprotection conferred originally (see T 5/90 and T 54/90).
7.3 Method claim to product claim
In general, a change in claim category from a method in which an
apparatus is used to the apparatus itself is not allowable (see T 86/90).
However, it may exceptionally be allowable to replace a claim directed to amethod of operating a device by a claim directed to the device itself if theoriginal claim contains the claimed features of the device exhaustively,
whether in structural or functional terms (see T 378/86 and T 426/89).
This exception, however, does not apply if the device as now claimed is for
its features no longer dependent on the circumstances of its operation
whereas it depended on them under the terms of the prior method claim(see T 82/93).
Moreover, changing the category from a purpose-limited process claim in
the format of a Swiss-type claim in accordance with G 5/83 to a purposelimited product claim in accordance with Art. 54(5) contravenes Art. 123(3),because a purpose-limited process claim confers less protection than apurpose-limited product claim (T 1673/11).
7.4 Method claim to use claim
The change from a process for the preparation of a product to the use of
the product for a purpose other than previously claimed is not allowable(see T 98/85 and T 194/85).
On the other hand, the change in a claim from a method in which a certain
product is used to a claim to the use of that product in performing that same
method is allowable (see T 332/94).
8. Changes in the title
The sole purpose of the title is to inform the public about the technicalinformation disclosed in the application. The title has no bearing on thecontent of the application as filed or on the protection conferred by theMarch 2023

Guidelines for Examination in the EPO

patent, once granted. Furthermore, the title is not part of the documents tobe approved by an applicant before a patent can be granted.
Thus the ultimate responsibility for the title rests with the division, and it iswithin the division's discretion to accept or not any request from theapplicant for a change in the title (see also A-III, 7).

Part H – Chapter V-13

March 2023

Guidelines for Examination in the EPO

Part H – Chapter VI-1

Chapter VI – Correction of errors
1. Introduction
Documents filed with the EPO may contain errors, e.g. in the bibliographic
data, the description, the claims or the drawings (see H-VI, 2). Errors may
also occur in the decision to grant or other decisions of the EPO(see H-VI, 3), in formatting/editing (see H-VI, 4), as well as in printing thespecification (see H-VI, 6 H-VI, 4).
These errors can be corrected as set out below.
2. Corrections of errors in documents filed with the EPO
Corrections under Rule 139 concern linguistic errors, errors of transcription
and other mistakes in documents filed with the EPO, especially inapplication documents (see H-VI, 2.2.1).

Rule 139

However, see also A-VII, 7 for the correction of errors in a translation of apatent application, A-III, 5.5 for the correction of the designation of inventor
and A-III, 6.5.2 for the correction/addition of a priority claim.
Requests for correction under Rule 139 are dealt with by the department
responsible for the proceedings:(i)

In examination and opposition proceedings, the correction of errors
under Rule 139 is the responsibility of the formalities officer, with the
exception of errors in the description, claims and drawings (see thedecision of the President of the EPO dated 12 December 2013,
OJ EPO 2014, A6, Art. 1, point 22, and Art. 2, point 21).

(ii)

Where the Receiving Section is responsible (Rule 10(1)), it decides
on requests for correction unless the request requires technicalexamination. In the latter case, the examining division will decide on
the request once it has assumed responsibility (see J 4/85).

2.1 Admissibility
The correction of linguistic errors, errors of transcription and other mistakes
in any document filed with the EPO may in principle be requested as longas proceedings are pending before the EPO (J 42/92). However, during
examination proceedings, such requests for correction can be considered
only if the decision-making process has not yet been concluded, in otherwords until the day on which the decision to grant is handed over to the
EPO's internal postal service for transmittal to the applicant (see G 12/91;
date "to EPO postal service" printed at the bottom of Form 2006A). See
also H-II, 2.6, last paragraph.
Moreover, other time limitations apply to requests under Rule 139:(i)

The request has to be made without undue delay after the error is
discovered (G 1/12, J 16/08).

(ii)

In the case of correction of bibliographic data (e.g. priority,
designation) or of procedural declarations (e.g. withdrawal), time

Rule 139

Part H – Chapter VI-2

Guidelines for Examination in the EPO

March 2023

limitations may derive from the protection of the interests of the
public. For instance, in the absence of any special circumstances, arequest for correction of a priority claim by the addition of a firstpriority needs to be made sufficiently early for a warning to be
included in the publication of the application (J 6/91). Otherwise,correction is possible only where it is apparent on the face of the
published application that a mistake has been made (see also
A-V, 3). An erroneous withdrawal of an application may only becorrected if, at the time when the request for correction is made, thepublic has not yet been officially notified of the withdrawal (J 25/03).
(iii)

Limitations on requesting the correction of an error in a document
filed with the EPO also exist where a decision has already beentaken or a procedural phase terminated on the basis of the document
containing the error. A request under Rule 139 cannot reinstate anapplicant into an earlier procedural phase or reverse the effects of adecision already taken (J 3/01, see also H-VI, 3.1). Such a request istherefore inadmissible in these cases.

2.1.1 Admissibility in opposition and limitation proceedings
Errors in documents filed during opposition and limitation proceedings may
be corrected under Rule 139 (G 1/12) as long as the corresponding
proceedings are pending before the EPO.
In opposition and limitation, requests to correct an error under Rule 139
may not, however, be used to correct the content of the decision to grant,
thereby circumventing the restrictions under Rule 140.
2.1.1.1 Errors in the description, claims and drawings
The submission by the proprietor of an amended specification containing
the correction of an obvious error will be admitted:
Rule 80–in opposition proceedings if the correction is part of an amendment
going beyond the mere removal of an error, namely an amendment
occasioned by a ground for opposition (see H-II, 3);Therefore, if the proprietor files an amended specification fulfilling therequirements of Rule 80, they can additionally request the correctionof an obvious error under Rule 139 (see T 657/11). This request forcorrection will be dealt with by the opposition division (see H-VI, 2.1
H-VI, 2), as described in H-VI, 2.2 to H-VI, 2.2.2 H-VI, 2.2.1.

Rule 95(2)–in limitation proceedings if the correction is part of an amendment
going beyond the mere removal of an error, namely an amendment
constituting a limitation vis-à-vis the claims as granted or amended,
and complies with Art. 84 and Art. 123 (see D-X, 4.3).

In other words, if an amended set of claims fulfilling the requirements ofRule 95(2) is filed in limitation proceedings, obvious errors can be correctedunder Rule 139.

March 2023

Guidelines for Examination in the EPO

2.2 Allowability
Corrections of clerical or grammatical errors are usually allowed, insofar as
it is evident that an error has occurred and what the correction should be.
However, correction of errors in the description, claims and drawings is a
special form of amendment and is bound by Art. 123(2) (G 2/95; see also
H-VI, 2.2.1). These errors can be corrected as set out below.
2.2.1 Correction of description, claims and drawings
Where the mistake is in the description, claims or drawings, both the error
and the correction must be such that it is immediately evident:(i)that an error has occurred; and(ii)

what the correction should be.

Regarding (i), the incorrect information must be objectively recognisable fora skilled person, using common general knowledge, from the originally-filed
application documents (description, claims and drawings) taken bythemselves.
Regarding (ii), the correction needs to be within the limits of what a skilled
person would derive directly and unambiguously, using common generalknowledge, and seen objectively and relative to the date of filing, from theoriginally-filed application documents.
In other words, the requirements of Art. 123(2) apply mutatis mutandis.
Evidence of what was common general knowledge on the date of filing may
be furnished in any suitable form.
The priority documents cannot be used for the purposes mentioned under(i) and (ii) above (see G 3/89 and G 11/91).
Correction under Rule 139, second sentence, is of a strictly declaratory
nature and establishes what a skilled person, using common generalknowledge, would derive on the date of filing from the parts of a European
patent application, seen as a whole, relating to the disclosure (see G 3/89
and G 11/91 mentioned above). Therefore, the complete replacement of
the application documents (i.e. description, claims and drawings) by otherdocuments is not possible (see G 2/95).
Some examples of allowable corrections:(I)

The replacement of "respectfully" by "respectively" in a claim(T 34/03).

(II)

The addition of the plural "s" to the word "particle" as thecorresponding verb "have" was in the plural form, and the application
as originally filed described a particle size distribution. Since particle
size distributions can be defined only for a plurality of particles, thecorrection was held allowable (T 108/04).

Part H – Chapter VI-3

Rule 139
Art. 123(2)Part H – Chapter VI-4

Guidelines for Examination in the EPO

March 2023

On the other hand, the applicant/proprietor cannot rely on:(a)A mere count of the number of instances of the relevant words in theapplication as originally filed for obtaining the replacement of one
word by another word, for instance the substitution of "included" for"excluded", if it is not clear that an error has occurred and not
possible to ascertain that nothing other than "included" was intended
by the drafter (T 337/88).

(b)

Usual practice or industry standards for measuring concentrations ofcompounds in the relevant technical field, if the application as
originally filed merely refers to "%", without clarification as to whether
by weight or volume, and the description contains no clear guidance
as to whether "%" refers to concentration by % by weight or % byvolume or something different (T 48/02).

(c)

Common general knowledge in the absence of further evidence,such as an encyclopaedia or basic textbook, to argue for instancethat the skilled person would have immediately recognised that an
ASTM standard with a six-digit number did not exist before thepriority date of a patent (T 881/02).

2.2.2 Missing parts of description and , missing drawings orcorrection of erroneously filed application documents filed ascorrections under Rule 139
The applicant may also request that missing parts of the description and/or
missing drawings be included in the application documents by way of acorrection according to Rule 139. In virtually all cases this will not be
possible (see J 1/82). Similarly, it is not generally possible to completely
replace erroneously filed application documents (description, claims ordrawings) or parts by way of a correction under Rule 139 because thatwould require making it evident that nothing else was intended than what isoffered as the corrected application documents.
In extremely rare cases the other application documents might allow theskilled person to reconstruct the missing parts of the description and/or
missing drawings such that they may be filed by way of a correction
according to Rule 139.
By In contrast with to missing parts of the description and/or missing
drawings filed under Rule 56(3) and correct application documents
subsequently filed under Rule 56a(4), corrections under Rule 139 cannever be substantiated by merelly referring filed by reference to the priority
document (see H-VI, 2.2.1).
3. Correction of errors in decisions
Correction of errors in decisions under Rule 140 must be clearly
distinguished from correction of errors in documents filed by the applicant(or patentee) pursuant to Rule 139. For the latter, see A-V, 3 and H-VI, 2
and subsections. Correction of errors made by the applicant (or patentee)
in application (or patent) documents cannot be arrived at in a roundabout

March 2023

Guidelines for Examination in the EPO

manner through correction of the decision to grant (or to maintain in
amended form).
Correction of a decision is allowable only if the text of the decision is
manifestly other than intended by the department concerned. An error in
the text of the patent that forms the basis for the decision cannot be
imputed to the division by suggesting that the division did not intend to
make a decision that in fact included the very text approved by theapplicant (or patent proprietor) himself as a means of bringing the error
within the ambit of Rule 140. Thus only linguistic errors, errors oftranscription and obvious mistakes in decisions can be corrected. The
correction of a mistake an error in a decision under Rule 140 has aretrospective effect (see T 212/88). Therefore, when the decision to becorrected is the refusal of the application or the revocation of the patent, thetime limit for filing a notice of opposition or an appeal is not changed by the
publication or the notification of the corrected decision.
The competence to correct errors under Rule 140 lies with the body which
took the decision (see e.g. G 8/95, J 12/85, J 16/99).
Hence, even during opposition (or appeal) proceedings, the examining
division is competent to correct errors in bibliographic data contained in thedecision to grant (see H-VI, 3.3). Examining or opposition divisions arecompetent to correct errors in the text of the patent that was the subject of
theirrespective
decisions,
including
editing/formatting
errors(see H-VI, 4 H-VI, 3.3).
3.1 Admissibility
Rule 140 is not available to correct errors in documents filed by a patentapplicant or proprietor (G 1/10). The correction of such documents is
admissible only under Rule 139 and only as long as proceedings are
pending (see H-VI, 2.1). Once the decision to grant is handed over to the
EPO's internal postal service (G 12/91), only errors in bibliographic data,
printing errors in the publication of the patent specification andformatting/editing errors may be corrected (see H-VI, 3.2 and H-VI, 3.3).
Since the final responsibility for the text of the patent lies with applicants orpatentees, it is their duty to properly check all the documents making up thecommunication under Rule 71(3) (i.e. Form 2004 and the Druckexemplar).
The same applies to documents as proposed for maintenance in amended
form (see Rules 71(5), 82(1) and 95(2), Art. 113(2) and G 1/10).
However, requests for correction under Rule 139 of documents on which
the patent is granted may under certain conditions be submitted in
opposition and limitation proceedings (see H-VI, 2.1.1).
Corrections of decisions are to be made at the reasoned request of one ofthe parties or by the EPO of its own motion. If the request for correction isrefused, this decision must be reasoned (see T 850/95). These reasonsmust previously have been communicated to the requester (Art. 113(1)).

Part H – Chapter VI-5

Part H – Chapter VI-6

Guidelines for Examination in the EPO

March 2023

3.2 Allowability of the correction of bibliographic data
The sole reason for allowing the correction of linguistic errors, errors oftranscription and obvious mistakes is to ensure that the decision says what
the division actually intended at the time of issue. If the bibliographic data
referred to in the examining division's decision to grant or limit a patent or in
the opposition division's communication under Rule 82(2) that a decision tomaintain a patent in amended form has become final is not and obviously
cannot be the bibliographic data corresponding to the real intention of thedivision, the bibliographic data erroneously indicated can be correctedunder Rule 140. In this respect, it is irrelevant whether the error was
originally introduced by the applicants in their submissions or by thedivision itself.
In particular, misspellings or similar errors in the name of the patent
proprietor may be corrected under Rule 140 wherever it does not result in
the designation of a person different than the one originally named on filing(or their successor in title) and to whom the examining division intended to
grant the patent.
In accordance with the decision of the President of the EPO dated
23 November 2015 (OJ EPO 2015, A104), requests for the correction oferrors in bibliographic data are dealt with by formalities officers.
3.3 Correction of the decision to grant errors under Rule 140 while
opposition proceedings are pending – procedural aspects
Even during opposition proceedings, the examining division is competent tocorrect errors in its decision to grant, in particular errors in the decision's
reasoning and bibliographic data, or formatting/editing errors in the text of
the B1 publication (see H-VI, 3.2 and H-VI, 4).
Thus the opposition division refers to the examining division any request
under Rule 140 to correct such errors filed by the patent proprietor while
opposition proceedings are pending.
However, if the request for correction under Rule 140 is clearlyinadmissible, i.e. the requested correction does not concern errors inbibliographic data contained in the decision to grant or formatting/editing
errors in the text of the B1 publication, the opposition division continues theproceedings until the decision under Art. 101 is taken without waiting forclosure of the proceedings before the examining division concerning thecorrection (in line with the reasoning of G 1/10). The procedural decision tocontinue the proceedings is appealable together with the opposition
decision.
If the request for correction is admissible, the examining division processes
it without delay in order to minimise or avoid delays to the opposition
proceedings. The opposition division may adjourn the opposition
proceedings to wait for closure of the proceedings before the examining
division.

March 2023

Guidelines for Examination in the EPO

4. Correction of formatting/editing errors
Formatting/editing errors which were already contained in the text approvedby the applicant may be corrected by the EPO of its own motion or at therequest of the patent proprietor. Formatting/editing errors are alterations in
the patent documents which occur during the preparation of the
Druckexemplar and which are indicated neither by standard marks nor inForm 2004.
Example 1
In the Druckexemplar, page 10 contains two changes:−

the first change is indicated with standard marks;−

the second change is in a different paragraph on page 10 to the firstchange, and consists in the absence of the two top lines, but thedeletion is not indicated by any standard mark (i.e. the two lines havejust disappeared).

After publication of the grant, the applicant spots the errors and requests:(a)the correction of a spelling error in the first change introduced by theexamining division;(b)

the re-insertion of the top two lines that have disappeared.

Request (a) cannot be accepted, as the error is in the marked change.
However, request (b) regarding the second change is a formatting/editing
error. Thus, the request to reinstate the two top lines can be granted.
Example 2
EPO Form 2004 indicates inter alia page 10 as amended by the examining
division; other pages of the description have been amended.
In the Druckexemplar, page 10 as originally filed is present; noamendments are present.
In this case, the amendment is indicated in EPO Form 2004 so that nocorrection can be made after issuance of the decision to grant as the error
does not qualify as a formatting/editing error. Thus, no correction can bemade after issuance of the decision to grant.
If any correction in the text of the specification as published is allowed, acorrected version of it will be published. However, such a correction has noinfluence on the start of the opposition period.
In any other the case of a discrepancy between the Druckexemplar andForm 2004, the patent proprietor has to file an appeal to can seek remedy
by filing an appeal against the decision to grant. This would apply to
example 2 above.

Part H – Chapter VI-7

Part H – Chapter VI-8

Guidelines for Examination in the EPO

March 2023

The situation is different to that of errors already present in the application
documents or in any of the amended application documents submitted by
the applicant. An error introduced by the applicant does not qualify as aformatting/editing error. A request for correction will not be accepted andthe situation cannot be remedied by an appeal.
5. Correction of the translations of the claims
According to Art. 70(1), the text of a patent in the language of theproceedings is the authentic text. It therefore follows that the translations of
the claims of the patent specification required by Art. 14(6) are for
information only. Hence no examination of the translations takes place(C-V, 1.3); in particular, the translations do not form part of the decision to
grant the patent. Therefore they cannot be corrected under Rule 140,
either. However, if when a corrected version of a translation of the claims isreceived, the stage of preparations for the B publication still allows theexchange of documents, the EPO will publish the corrected version insteadof the original version of the translation.
Where corrected translations of claims are not submitted to the EPO in time
to be taken into account for the B publication, the only possibilities for thepatent proprietor to amend them are when the patent is maintained inamended form (Rule 82(2)) or, as indicated in Art. 70(4), before a national
authority.
6. Errors in publication
Errors in publication occur where the content of the printed specificationdiffers from the documents (Druckexemplar) transmitted to the applicant
with the communication under Rule 71(3) (Form 2004), if these documents
form the basis of the decision to grant.
Errors in publication have to be distinguished from changes introduced in
the text to be granted after the applicant's approval but before the decision
to grant (G 1/10). In such cases, the patent proprietor has to file an appeal
to seek remedy.
The above errors in publication can be corrected at any time (see also
C-V, 10). The same applies mutatis mutandis to errors in the process for
publication of the application and of the amended patent specification
following a decision to maintain the patent as amended.
The competence to correct errors in publication lies with the body before
which proceedings are or were last pending.
Therefore a request for correction of errors in the publication of theB1 specifications filed during opposition proceedings is dealt with by the
opposition division.
Formalities officers are responsible for the correction of publication errors(see the decision of the President of the EPO dated 23 November 2015,
OJ EPO 2015, A104).

March 2023

Computer-Implemented Inventions – 1

Index for Computer-Implemented
Inventions
A computer-implemented invention (CII) is one which involves the use of a computer, computer
network or other programmable apparatus, where one or more features are realised wholly or
partly by means of a computer program.
The following collection of hyperlinks is provided in order to facilitate access to the sections of the
Guidelines for Examination in the EPO which give instructions particularly useful for the search andexamination of CIIs.
It is noted that this collection is not a separate publication about CIIs. Instead, following a hyperlink
will lead to the section of the most recent and applicable version of the Guidelines which has thestated number and title.
The collection of sections essentially comprises the teaching about assessing patentability
requirements, in particular in case of claims comprising a mix of technical and non-technicalfeatures, which are common in CII. Sections providing teaching about how to evaluate features
related to the list of Article 52(2) are included as well as sections describing the search practiceand requirements of Article 83 and 84.
The collection of sections should not be regarded as an exhaustive list. The whole of the
Guidelines apply for any European patent application or patent.
As with the rest of the Guidelines, the updating of sections relating particularly to CIIs is an ongoingprocess to take account of developments in European patent law and practice. The list below also
serves to point out which sections have recently been updated as indicated by the dates which
follow the section title.
Patentable inventions
G-I, 1 Basic Patentability requirements
G-I, 2 Further requirements
G-II, 1 General remarks (updated in GL 2022)
G-II, 2 Examination practice (updated in GL 2022)
Features related to the list of Art. 52(2) and technical contribution
G-II, 3.3 Mathematical methods (updated in GL 2022)–

G-II, 3.3.1 Artificial intelligence and machine learning (introduced in GL 2018)–

G-II, 3.3.2 Simulation, design or modelling (updated in GL 2022)

G-II, 3.4 Aesthetic creations

Computer-Implemented Inventions – 2

March 2023

G-II, 3.5 Schemes, rules and methods for performing mental acts, playing games or doing
business–

G-II, 3.5.1 Schemes, rules and methods for performing mental acts (updated in GL 2022)–

G-II, 3.5.2 Schemes, rules and methods for playing games (updated in GL 2022)–

G-II, 3.5.3 Schemes, rules and methods for doing business (introduced in GL 2018)

G-II, 3.6 Programs for computers (updated in GL 2018)–

G-II, 3.6.1 Examples of further technical effects (introduced in GL 2018)–

G-II, 3.6.2 Information modelling, activity of programming and programming languages(introduced in GL 2018)–

G-II, 3.6.3 Data retrieval, formats and structures (updated in GL 2022)–

G-II, 3.6.4 Database management systems and information retrieval (introduced in GL 2021)

G-II, 3.7 Presentations of information (updated in GL 2018)–

G-II, 3.7.1 User interfaces (updated in GL 2021)

Novelty and inventive step
G-VII, 5.4 Claims comprising technical and non-technical features (updated in GL 2022)–

G-VII, 5.4.1 Formulation of the objective technical problem (updated in GL 2022)–

G-VII, 5.4.2 Examples of applying the COMVIK approach (updated in GL 2022)–

G-VII, 5.4.2.1 Example 1–

G-VII, 5.4.2.2 Example 2–

G-VII, 5.4.2.3 Example 3–

G-VII, 5.4.2.4 Example 4 (updated in GL 2022)–

G-VII, 5.4.2.5 Example 5 (introduced in GL 2022)

Search practice
B-VIII, 2.2 Subject-matter excluded from patentability under Art. 52(2) and (3) (introduced in
GL 2015)–

B-VIII, 2.2.1 Computer-implemented business methods (updated in GL 2015)

March 2023

Computer-Implemented Inventions – 3

Requirements of Art. 84 EPC
F-IV, 3.9 Claims directed to computer-implemented inventions (introduced in GL 2016, with its subsections)–

F-IV, 3.9.1 Cases where all method steps can be fully implemented by generic dataprocessing means–

F-IV, 3.9.2 Cases where method steps define additional devices and /or specific dataprocessing means (updated in GL 2021)–

F-IV, 3.9.3 Cases where the invention is realised in a distributed computing environment(introduced in GL 2018)

Requirements of Art. 83 EPC
F-III, 1 Sufficiency of disclosure (see par. 4)
Formal requirements for the description part
F-II, 4.12 Computer programs

March 2023

Alphabetical keyword index - 1

Guidelines for Examination
Alphabetical keyword index
The Alphabetical keyword index is added for the convenience of the reader; it does not form part of
the Guidelines.
A
Abandonment of claims B-III, 3.4
Abandonment of subject-matter C-IX, 1.3

Accounts
Debit orders for deposit accounts held with the
EPO A-II, 1.5
Deposit accounts with the EPO A-X, 4.2
Safety provision for late replenishment of deposit
accounts A-X, 6.2.2

Abbreviations General Part, 2.2
Activity of the opposition division D-IV, 2
Absence of well-known details F-III, 5.2
Adaptation of the description C-V, 4.5
Abstract A-III, 10, A-III, 10.1, A-III, 16.2, E-IX, 2.3.10,
F-II, 1, F-II, 2, F-II, 2.2, F-II, 2.7, G-IV, 5.1
Abstract in examination F-II, 2.7
Checklist F-II, 2.5
Checklist for considering the abstract F-II, An. 1
Conflict between abstract and source document B-VI, 6.3
Conflict with other European applications G-IV, 5.1
Content of a European patent application (other thanclaims) F-II, 2Content of the abstract A-III, 10.2, F-II, 2.3
Definitive content A-III, 10.2, B-X, 7, F-II, 2.2
Examination of formal requirements A-III, 10
Figure accompanying the abstract A-III, 10.3, F-II, 2.4
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.10
Purpose of the abstract F-II, 2.1
Summaries, extracts or abstracts B-X, 11.5
Title, abstract and figure(s) to be published with theabstract (as indicated on supplemental sheet A) B-X, 7
Transmittal of the abstract to the applicant F-II, 2.6
Accelerated
Accelerated processing before the boards ofappeal E-VIII, 6
Accelerated processing of oppositions E-VIII, 5
Accelerated prosecution of European patentapplications E-VIII, 4
Accelerated examination E-VIII, 4.2
Accelerated search E-VIII, 4.1
Patent Prosecution Highway (PPH) E-VIII, 4.3
Access to EPO documentation for the national patentoffices B-IX, 5
Accorded date of filing and content of the application
still subject to review G-IV, 5.1.2
Account of the search B-X, 3.3

Additional
Additional European searches B-II, 4.2
Additional fee
Additional fee (if application documents comprise morethan thirty-five pages) A-III, 13.2
Additional fee for a European patentapplication A-III, 13.2
Additional fee for divisional applications of second or
subsequent generations A-IV, 1.4.1.1
Additional fee for divisional applications A-III, 13.3
Additional fee for divisional applications of second or
subsequent generations A-IV, 1.4.1.1
Additional fee for pages A-II, 5.6, A-II, 6.8
Correction of erroneously filed application documentsor parts A-II, 6.8
Late filing of missing drawings or missing parts of thedescription A-II, 5.6
Additional search D-VI, 5
Applicant has not paid all additional searchfees B-VII, 1.2.3
Invitation to pay additional search fees combined withinvitation to restrict the scope of thesearch C-III, 3.2.3
Limitation to searched invention no additional searchfees paid C-III, 3.2.1
Refund of additional search fees C-III, 3.4
Additional search fees paid C-III, 3.2.2
Limitation to searched invention no additional searchfees paid C-III, 3.2.1
Additional searches during examination C-IV, 7.3
Adherence to the text of the European patentsubmitted or approved by the patent
proprietor D-VI, 2
Basis for the examination D-VI, 2.1
Revocation of the patent D-VI, 2.2

Alphabetical keyword index - 2Adjournment of oral proceedings due to lack oftime E-III, 8.11.2
Administrative fees A-XI, 1, A-XI, 2.2, E-XIV, 3
Administrative structure D-II, 1
Admissibility H-VI, 2.1, H-VI, 3.1
Admissibility in opposition and limitation
proceedings H-VI, 2.1.1
Errors in the description, claims anddrawings H-VI, 2.1.1.1
Admissibility in opposition procedure H-II, 3
Amendments in reply to the notice of
opposition H-II, 3.1
Amendments not related to the grounds for
opposition H-II, 3.2
Amendments occasioned by national rights H-II, 3.3
Insistence on unallowable amendments H-II, 3.4
Late-filed requests in opposition proceedings H-II, 3.5
Admissibility in the examination procedure H-II, 2
Admissibility in the examination procedure after receiptof the search report - Rule 137(2) H-II, 2.2
Admissibility in the examination procedure at anadvanced stage of the proceedings H-II, 2.4
Admissibility in the examination procedure before
receipt of the search report - Rule 137(1) H-II, 2.1
Admissibility in the examination procedure further
requests for amendment after approval H-II, 2.6
Amendments filed in reply to a Rule 71(3)communication H-II, 2.5
Late-filed requests after summons to oral proceedings
in examination H-II, 2.7
Admissibility in the examination procedure after receipt of
the first communication - Rule 137(3) H-II, 2.3
Examples of the exercise of discretion under Rule137(3) H-II, 2.3.1
Admissibility of amendments C-V, 4.4, H-II, H-III
Admissibility of amendments made by theapplicant C-IV, 6
Amendments and Corrections H-II
Amendments in limitation procedure H-II, 4
Amendments in the case of non-unity H-II, 6
Amendments required by a limitation of the searchunder Rule 62a and/or Rule 63 H-II, 5
Auxiliary requests H-III, 3
Calculation of claims fees H-III, 5Different texts in respect of different contracting
states H-III, 4
Procedure for amendments to documents H-III, 2
Request for amendments or corrections in reply to theRule 71(3) communication C-V, 4.4
Admissibility of auxiliary requests H-III, 3.3.2
Criteria for admissibility of auxiliary
requests H-III, 3.3.2.1
Timeliness and structure of auxiliary
requests H-III, 3.3.2.2
Admissibility of the request E-VIII, 3.1
Entitlement to file the request E-VIII, 3.1.2

March 2023
Form of the request and applicable time
limit E-VIII, 3.1.3
Substantiation of the request E-VIII, 3.1.4
Time limits covered E-VIII, 3.1.1
Correction of errors in decisions H-VI, 3.1
Corrections of errors in documents filed with the
EPO H-VI, 2.1
Decision concerning the admissibility of an opposition, thepatent proprietor being a party D-IV, 5.5
Examination of the admissibility of an intervention andpreparations in the event of an intervention D-IV, 5.6
Admissible languages on filing A-VII, 1
Art. 61 applications A-VII, 1.3
European divisional applications A-VII, 1.3
Filing by reference A-VII, 1.2
Invitation to file the translation A-VII, 1.4
Admissible non-EPO languages A-VII, 3.2
Admission of the public to proceedings E-III, 8.1
Aesthetic creations G-II, 3.4
Agreement
Agreement on secrecy G-IV, 7.2.2
Agreement reached on a text - second Rule 71(3)communication C-V, 4.7.2
Amendments not admitted and/or not allowable,
examination resumed no agreement reached on atext C-V, 4.7.3
Agriculture, industrial application G-III, 1
Allocation
Allocation of duties and appointment of members of the
opposition division D-II, 3
Allocation of individual duties D-II, 7
Allocation of tasks to members D-II, 5
Allocation of the application C-II, 2
Allowability H-VI, 2.2
Allowability of amendments H-IV, H-V
Amendments and Corrections H-IV, H-V
Amendments derived from drawings H-V, 6
Amendments in claims H-V, 3
Amendments in the description H-V, 2
Amendments relating to unsearched matter H-IV, 4
Amendments to drawings H-V, 5
Changes in claim category in opposition H-V, 7
Changes in the title H-V, 8Compliance of amendments with other EPC
requirements H-IV, 5
Disclaimers H-V, 4
Allowability of amendments under Art. 123(2) H-IV, 2
Assessment of "added subject-matter" H-IV, 2.4Content of the application as "originally"
filed H-IV, 2.2, H-IV, 2.3
Special applications H-IV, 2.3

March 2023
Allowability of amendments under Art. 123(3) H-IV, 3
Assessment of impermissible extension of theprotection conferred H-IV, 3.4
Basic principles H-IV, 3.1
Conflicts between Art. 123(2) and Art.
123(3) H-IV, 3.5
Conflicts between Art. 123(3) and other requirementsof the EPC H-IV, 3.6
Protection conferred by the patent as
granted H-IV, 3.2
Version of the granted patent to beconsidered H-IV, 3.3
Allowability of the correction of bibliographic
data H-VI, 3.2
Concept of "clear allowability" H-II, 2.7.1
Correction of description, claims anddrawings H-VI, 2.2.1
Missing parts of description, missing drawings orcorrection of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2
Alteration, excision or addition of text in thedescription H-V, 2.6
Alternatives in a claim F-IV, 3.7
AmendedAmended claims F-V, 6
Bringing the description into line with amended
claims H-V, 2.7
Examples no amended claims filed with theappeal E-XII, 7.4.1
Amended claims, missing parts (Rule 56) or erroneously
filed application documents or parts (Rule 56a) B-III, 3.3
General considerations B-III, 3.3.1
Specific rules applicable to Euro-PCT
applications B-III, 3.3.2
Amended main/single request filed with theappeal E-XII, 7.4.2
Amendments
Admissibility of amendments made by theapplicant C-IV, 6
Allowability of amendments under Art. 123(2) H-IV, 2
Allowability of amendments under Art. 123(3) H-IV, 3
Amendment by submitting missing documents or by filingreplacement pages H-III, 2.2
Amendment of application A-V, A-V, 2
Communications concerning formal
deficiencies A-V, 1
Correction of errors in documents filed with the
EPO A-V, 3
Examination of amendments as to formalities A-V, 2.2
Filing of amendments A-V, 2.1
Amendments and corrections , H-II, 2.6
Admissibility of amendments H-II, H-III
Allowability of amendments H-IV, H-V
Correction of errors H-VI
Other procedural matters H-III
Right to amend H-I
Amendments derived from drawings H-V, 6

Alphabetical keyword index - 3
Amendments filed in preparation for or during oralproceedings E-VI, 2.2.2
Amendments filed in reply to a Rule 71(3)communication H-II, 2.5
Amendments filed in reply to a Rule 71(3)communication further course ofproceedings H-II, 2.5.2
Criteria for admitting such amendments H-II, 2.5.1
Exceptional case where amendments must be
admitted H-II, 2.5.3
Rule 137(4) applies to amendments filed at thisstage H-II, 2.5.4
Amendments in claims H-V, 3
Amendments in claims further cases of broadening ofclaims H-V, 3.4
Deletion of part of the claimed subject-matter H-V, 3.3
Inclusion of additional features H-V, 3.2
Replacement or removal of features from aclaim H-V, 3.1
Amendments in limitation procedure H-II, 4
Amendments in reply to the notice of opposition H-II, 3.1
Amendments in the case of non-unity H-II, 6
Amendments in the case of non-unity no restriction toa single invention searched H-II, 6.3
Restriction to a single, searched invention H-II, 6.1
Restriction to an unsearched invention H-II, 6.2
Amendments in the case of non-unity further procedural
aspects concerning Euro-PCT applications H-II, 6.4
Where the EPO does not perform a supplementary
search H-II, 6.4.1
Where the EPO performs a supplementary
search H-II, 6.4.2
Amendments in the description H-V, 2
Alteration, excision or addition of text in thedescription H-V, 2.6
Bringing the description into line with amended
claims H-V, 2.7
Clarification of a technical effect H-V, 2.1
Introduction of further examples and new
effects H-V, 2.2
Reference document H-V, 2.5
Revision of stated technical problem H-V, 2.4
Supplementary technical information H-V, 2.3
Amendments made by applicants of their own
volition C-III, 2
Amendments made in response to the search
opinion C-III, 2.1
Amendments made in response to the WO-ISA, IPER
or supplementary international search report C-III, 2.2
Amendments made by the EPO at the request of aparty H-III, 2.4
Amendments not admitted and/or not allowable,
examination resumed C-V, 4.7
Agreement reached on a text - second Rule 71(3)communication C-V, 4.7.2
Amendments not admitted and/or not allowable,
examination resumed no agreement reached on atext C-V, 4.7.3
Communications/oral proceedings after
resumption C-V, 4.7.1

Alphabetical keyword index - 4
Refusal C-V, 4.7.3
Amendments not related to the grounds for
opposition H-II, 3.2
Amendments occasioned by national rights H-II, 3.3
Amendments or corrections should be reasoned C-V, 4.3
Amendments relating to unsearched matter H-IV, 4
Euro-PCT applications H-IV, 4.2
Rule 137(5) H-IV, 4.1
Amendments required by a limitation of the search under
Rule 62a and/or Rule 63 H-II, 5
Amendments to drawings A-IX, 10, H-V, 5
Allowability of amendments H-V, 5
Drawings A-IX, 10
Amendments using copies H-III, 2.3
Amendments withdrawn or superseded in the Rule 137(4)period H-III, 2.1.2
Amendments/corrections admitted and allowable - second
Rule 71(3) communication sent C-V, 4.6
Examining division proposes amendments in second
Rule 71(3) communication C-V, 4.6.3
Second Rule 71(3) communication based on higherranking request initially rejected in first Rule 71(3)communication C-V, 4.6.2
Second Rule 71(3) communication reversing theamendments proposed by the examining division in
first Rule 71(3) communication C-V, 4.6.1
Amendments/corrections filed in second Rule 71(3)period C-V, 4.10
Anticipation of amendments to claims B-III, 3.5
Comments and amendments in response to the search
opinion B-XI, 3.3
Compliance of amendments with other EPC
requirements H-IV, 5
Compliance of amendments with other EPC requirements
in examination proceedings H-IV, 5.2
Compliance of amendments with other EPC requirements
in limitation proceedings H-IV, 5.4
Compliance of amendments with other EPC requirements
in opposition proceedings H-IV, 5.3
Distinction between allowable and unallowable
amendments D-V, 6.2
Earlier filed amendments or comments E-IX, 3.3.1
Examination of amendments C-IV, 5
Facts, evidence or amendments introduced at a latestage E-III, 8.6
Handwritten amendments in oral proceedings E-III, 8.7
Indication of amendments and their basis under Rule137(4) H-III, 2.1
Indication of the amendments made in the requests and of
their basis H-III, 3.3.1
Insistence on unallowable amendments H-II, 3.4
Invitation to file comments and amendments C-III, 4.2
Procedure for amendments to documents H-III, 2
Refusal to admit amendments under Rule137(3) E-X, 2.11
Request for amendments or corrections in reply to theRule 71(3) communication C-V, 4
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filing oftranslations necessary C-V, 4.1

March 2023
Standard marks for indicating amendments or corrections
by the divisions C-V, An.
Standard marks for indicating amendments or corrections
by the divisions further communication with theapplicant C-VIII, 5Standard marks for indicating amendments or corrections
by the divisions further ways to accelerate
examination C-VI, 3
Use of Rule 137(4) for amendments filed during oralproceedings in examination E-III, 8.8
Withdrawal of amendments/abandonment of subject
matter H-III, 2.5
Amino acid sequences (Applications relating to
nucleotide and ~) A-IV, 5
AmountAmount of fee payable A-X, 6.2.4
Amount of the fee A-X, 5.1.2
Amount paid insufficient A-III, 11.3.3
Amount payable A-III, 11.3.7
Analysing the parties' arguments E-X, 2.8
Analysis of the application B-IV, 1.1
Analysis of the application and content of the search
opinion B-XI, 3
Comments and amendments in response to the search
opinion B-XI, 3.3
Contribution to the known art B-XI, 3.5
EPC requirements B-XI, 3.6
Extent of first analysis for generally deficient
applications B-XI, 3.4
Making suggestions B-XI, 3.8
Positive opinion B-XI, 3.9
Reasoning B-XI, 3.2
Search division's approach B-XI, 3.7
Search division's dossier B-XI, 3.1
Ancillary proceedings D-II, 4.3
Animal varieties
Excluded from patentability G-II, 5.4, G-II, 5.5.1
Plant and animal varieties or essentially biologicalprocesses for the production of plants oranimals G-II, 5.4
Animals
Essentially biological processes for the production ofplants or animals G-II, 5.4.2
Plant and animal varieties or essentially biologicalprocesses for the production of plants oranimals G-II, 5.4
Processes for the production of animals G-II, 5.4,
G-II, 5.4.2
Antibodies G-II, 5.6
Inventive step of antibodies G-II, 5.6.2
Anticipation of amendments to claims B-III, 3.5

March 2023
Appeal E-XII
Accelerated processing before the boards ofappeal E-VIII, 6
Amended main/single request filed with theappeal E-XII, 7.4.2
Appeal against the fixing of costs by the opposition
division D-IX, 2.2
Appeals after surrender or lapse of the patent E-XII, 2
Appeals against the apportionment of costs E-XII, 3
Appeals against the decision of the opposition division on
the fixing of costs E-XII, 4
Binding nature of decisions on appeals E-X, 4
Examples no amended claims filed with theappeal E-XII, 7.4.1
Fees for limitation/revocation, opposition, appeal, petition
for review A-X, 5.2.6
Interlocutory revision E-XII, 1, E-XII, 7.3
Main and auxiliary requests filed with theappeal E-XII, 7.4.3
Persons entitled to appeal E-XII, 5
Persons entitled to appeal and to be parties to appeal
proceedings E-XII, 5
Reimbursement of appeal fees E-XII, 7.3
Remittal to the board of appeal E-XII, 7.2
Remittal to the division after appeal E-XII, 9
Response to communication pursuant to Rule 58 filed withthe appeal E-XII, 7.4.4
Rules of Procedure of the Boards of Appeal E-XII, 8
Stay of proceedings when a referral to the Enlarged Boardof Appeal is pending E-VII, 3
Surrender or lapse of the patent E-XII, 2
Time limit and form of appeal E-XII, 6
Appearance before the national court E-XIII, 5.6
ApplicantAdmissibility of amendments made by theapplicant C-IV, 6
Amendments made by applicants of their own
volition C-III, 2
Applicant does not approve the text proposed for
grant H-III, 3.3.6
Applicant has not paid all additional searchfees B-VII, 1.2.3
Arguments and evidence submitted by theapplicant G-VII, 11
Consequences for the applicant F-V, 4.2
Contact between the applicant and the searchdivision B-II, 1.1
Death or legal incapacity of the applicant E-VII, 1.1
Different applicants A-II, 2
Documents cited or supplied by the applicant B-IV, 1.3
Information concerning the applicant A-II, 4.1.2
Information on the applicant A-III, 4.2.1
Joint applicants A-II, 2
Re-establishment of rights A-III, 6.6, E-IX, 2.3.5.3
Standard marks for indicating amendments or corrections
by the divisions further communication with theapplicant C-VIII, 5
Transmittal of the abstract to the applicant F-II, 2.6

Alphabetical keyword index - 5
Applications
Accelerated prosecution of European patentapplications E-VIII, 4
Accorded date of filing and content of the application still
subject to review G-IV, 5.1.2
Additional fee for divisional applications A-III, 13.3
Additional fee for divisional applications of second or
subsequent generations A-IV, 1.4.1.1
Allocation of the application C-II, 2
Amendment of application A-V, A-V, 2
Amendments in the case of non-unity further procedural
aspects concerning Euro-PCT applications H-II, 6.4
Analysis of the application B-IV, 1.1
Analysis of the application and content of the search
opinion B-XI, 3
Application deemed to be withdrawn A-III, 11.3.4
Application deemed withdrawn C-V, 3
Application documents
Additional fee (if application documents comprise morethan thirty-five pages) A-III, 13.2
Amended claims, missing parts (Rule 56) orerroneously filed application documents or parts (Rule56a) B-III, 3.3
Application documents filed under Rule 56 EPC, Rule
56a EPC, Rule 20.5 PCT or Rule 20.5bis
PCT B-XI, 2.1
Application documents filed under Rule 56 or Rule
56a C-III, 1.1.1
Application documents for the supplementary
European search report B-II, 4.3.3
Correct application documents based on priority
application, no change in the filing date A-II, 6.4
Correct application documents or parts filed after the
search has started A-II, 6.7
Correction of erroneously filed application documentsor parts A-II, 6, A-II, 6.1, A-II, 6.2
Deficiencies A-III, 16.2, A-V, 2.2, B-IV, 1.2
Erroneously filed application documents or parts under
Rule 56a H-IV, 2.2.3
For international (Euro-PCT) applications B-III, 3.3.2,
E-IX, 2.1.1, E-IX, 4.3
Later-filed correct application documents or parts whenpriority is claimed A-II, 6.4.1
Missing parts of description, missing drawings orcorrection of erroneously filed application documents
filed as corrections under Rule 139 H-VI, 2.2.2
Parts A-III, 13.2
Physical requirements of late-filed application
documents or correct application documents orparts A-III, 3.2.2
Withdrawal of correct application documents orparts A-II, 6.5
Application numbering systems A-II, 1.7
Applications filed before 1 January 2002 A-II, 1.7.1
Applications filed on or after 1 January
2002 A-II, 1.7.2
Application of known measures? G-VII, An., 1
Application was filed by reference to a previously filed
application A-IV, 4.1.2
Application, entitled persons A-II, 2

Alphabetical keyword index - 6
Applications containing claims filed after the accorded
date of filing B-XI, 2.2
Applications filed by reference to an earlier
application H-IV, 2.3.1
Applications for which a supplementary European search
report is prepared E-IX, 3.1, E-IX, 3.2
Applications giving rise to a right of priority A-III, 6.2
Applications relating to biological material A-IV, 4
Availability of deposited biological material to expert
only A-IV, 4.3
Biological material A-IV, 4.1
Deposit thereof A-IV, 4.1
Missing information A-IV, 4.2
Notification A-IV, 4.2
Requests for samples of biological material A-IV, 4.4
Applications relating to nucleotide and amino acidsequences A-IV, 5
Sequence information filed under Rule 56 A-IV, 5.1
Sequence information filed under Rule 56a A-IV, 5.2
Sequence listings of a divisional application A-IV, 5.4
Sequence listings of an application filed by reference
to a previously filed application A-IV, 5.3
Applications resulting from a decision under Art.
61 C-IX, 2, H-IV, 2.3.3
Entitlement for certain designated states
only C-IX, 2.4
Original application no longer pending C-IX, 2.2
Partial entitlement C-IX, 2.3
Applications to which Rule 62a applies which also lackunity B-VIII, 4.5
Applications to which Rule 63 applies which also lackunity B-VIII, 3.4
Applications under the Patent Cooperation Treaty(PCT) E-IX
Communication according to Rule 161 E-IX, 3
EPO as designated or elected Office E-IX, 2
Examination procedure E-IX, 4Applications where a reservation has been entered inaccordance with Art. 167(2)(a) EPC 1973 C-IX, 3
Art. 61 applications A-VII, 1.3
Art. 61 applications and stay of proceedings under Rule
14 A-IV, 2
Authentic text of the application or patent A-VII, 8
Certified copy of the previous application (priority
document) F-VI, 3.3
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Classification of the patent application B-X, 5
Confirmation of the intention to proceed further with theapplication C-II, 1.1
Conflict with other European applications G-IV, 5
Conflicting applications B-VI, 4Content of a European patent application (other thanclaims) F-II
Content of the application as "originally" filed H-IV, 2.2,
H-IV, 2.3
Conversion into a national application A-IV, 6
Copy of the international application E-IX, 2.1.2
Copy of the previous application (priority
document) A-III, 6.7

March 2023
Copy of the priority application A-II, 5.4.3, A-II, 6.4.2
CPC classification of the application B-V, 4
Date of filing of a divisional application A-IV, 1.2
Determination of filing date in the case of erroneously filed
elements or parts of the international
application E-IX, 2.9.4
Disclaimer disclosed in the application as originally
filed H-V, 4.1
Disclaimers not disclosed in the application as originally
filed H-V, 4.2
Divisional application C-IX, 1, E-IX, 2.4.1, H-IV, 2.3.2
Documents cited in the application B-X, 9.2.7
Documents filed after filing the European patentapplication A-VIII, 3.1
Documents forming part of the European patentapplication A-VIII, 3.2
Documents making up the application, replacement
documents, translations A-III, 3.2
Documents making up the European patentapplication A-VIII, 2.1
Euro-PCT applications C-II, 1.2, C-III, 1.2, C-III, 1.3,
F-V, 7, G-IV, 5.2, H-IV, 4.2
Euro-PCT applications entering the European
phase A-III, 11.2.5
Euro-PCT applications entering the European phase
before 1 April 2009 A-III, 11.3.9
European applications C-III, 1.1
European divisional application A-IV, 1, A-VII, 1.3
European divisional applications other formalities
examination A-IV, 1.7
European patent application
European patent applications filed before 1 April
2009 A-III, 11.3
European patent applications filed on or after 1 April
2009 A-III, 11.2
Examination of a divisional application C-IX, 1.4
Extension and validation of European patent applications
and patents to/in states not party to the EPC A-III, 12
Extent of first analysis for generally deficient
applications B-XI, 3.4
Fees paid by bank transfer - application of Art. 7(3) and (4)RFees A-X, 6.2.1
File inspection before publication of theapplication A-XI, 2.5
Filing a divisional application A-IV, 1.3, C-III, 3.3
Filing a new application A-IV, 2.5
Filing of applications and examination on filing A-II
Filing of applications by delivery by hand or by postal
services A-II, 1.1
Filing of applications by fax A-II, 1.2.1
Filing of applications by means of electronic
communication A-II, 1.2
Filing of applications by other means A-II, 1.3
Filing of applications in electronic form A-II, 1.2.2
First application F-VI, 1.4
Forwarding of applications A-II, 1.6
Further action upon examination of replies further action
where a request for a translation of the priority application
was sent earlier in examination proceedings C-IV, 3.1

March 2023
Identification of the patent application and type of search
report B-X, 4Industrial application B-VIII, 1, D-III, 5, F-II, 4.9, G-I, 1,
G-II, 5.2, G-III, G-III, 1, G-III, 4
Industrial application vs. exclusion under Art.
52(2) G-III, 3
Instructions in Chapter A-II ("Filing of applications andexamination on filing") E-IX, 2.2
Instructions in Chapter A-VI ("Publication of application;
request for examination and transmission of the dossier toexamining division") E-IX, 2.5
Intermediate publication of another European
application F-VI, 2.4.2
Intermediate publication of the contents of the priority
application F-VI, 2.4.1
International application H-IV, 2.3.4
International applications (Euro-PCT applications) C-IX, 4International applications with supplementary
search F-V, 7.2
International applications without supplementary
search F-V, 7.1
IPC classification of the application B-V, 3
Limitation of the option to withdraw the European patentapplication A-IV, 2.3
Missing parts are completely contained in the priority
application A-II, 5.4.2
Missing parts based on the priority application, no change
in filing date A-II, 5.4
Multiple priorities claimed for different inventions in theapplication with an intermediate publication of one of theinventions F-VI, 2.4.3
Pendency of the earlier application A-IV, 1.1.1
Persons entitled to file a divisional application A-IV, 1.1.3
Persons entitled to file an application A-II, 2
Physical requirements of applications filed by reference toa previously filed application A-III, 3.2.1
Potentially conflicting European and international
applications B-VI, 4.1
Preclassification, IPC and CPC classification of European
patent applications B-V
Priority claim of a divisional application A-IV, 1.2.2
Prosecution of the application by a third party A-IV, 2.4
Publication of application A-VI, A-VI, 1
Publication of application no publication A-VI, 1.2
Publication of bibliographic data before publication of theapplication A-XI, 2.6
Publication of the international application E-IX, 2.5.1
Published European applications as "E"
documents B-VI, 4.1.1
Published international applications (WO) as "E"
documents B-VI, 4.1.2
Reduction and refunds of fees in respect of international(PCT) applications E-IX, 2.6
Reference to a previously filed application A-II, 4.1.3.1
Refusal of the earlier application A-IV, 2.6
Scope of application of Rule 134 E-VIII, 1.6.2.3
Search division consisting of more than one member
further searches on a non-unitary application in a different
technical field B-I, 2.2.2
Search for conflicting European applications C-IV, 7.1

Alphabetical keyword index - 7
Search, publication and request for examination ofdivisional applications A-IV, 1.8
Searches on national applications B-II, 4.6
Sequences of divisional applications A-IV, 1.1.2
Situation in which it has to be checked whether theapplication from which priority is actually claimed is the"first application" within the meaning of Art.
87(1) F-VI, 2.4.4
Special applications C-IX, H-IV, 2.3
Specific rules applicable to Euro-PCT
applications B-III, 3.3.2
Subject-matter to be excluded is disclosed in theapplication as originally filed H-V, 4.2.2
Subject-matter to be excluded is not disclosed in theapplication as originally filed (so-called undisclosed
disclaimers) H-V, 4.2.1
Subsequent application considered as first
application F-VI, 1.4.1
Substantive examination of a Euro-PCT applicationaccompanied by an IPER E-IX, 4.3
Summary of the processing of applications and patents atthe EPO General Part, 5Transfer of the European patent application E-XIV, 3
Translation of previous application alreadyfiled A-III, 6.8.4
Translation of the application A-III, 14
Translation of the international application E-IX, 2.1.3
Translation of the previous application A-III, 6.8, F-VI, 3.4
Translation of the priority application A-II, 5.4.4,
A-II, 6.4.3
Unpublished patent applications B-IX, 2.2
Voluntary filing of the translation of the previous
application A-III, 6.8.5
Where and how applications may be filed A-II, 1
Where and how to file a divisional
application? A-IV, 1.3.1
Withdrawal of application or designation E-VIII, 8.1
Approval of the proposed text C-V, 2
Arbitrary choice G-VII, 10.1
Areas of technology searched B-X, 6
Arguments and evidence submitted by theapplicant G-VII, 11
Arrangement of claims F-IV, 3.5
Arrows A-IX, 7.5.2
Art. 124 and the utilisation scheme B-XI, 9
Art. 61 applications A-VII, 1.3
Art. 61 applications and stay of proceedings under Rule
14 A-IV, 2
Filing a new application A-IV, 2.5
Limitation of the option to withdraw the European
patent application A-IV, 2.3
Partial transfer of right by virtue of a final
decision A-IV, 2.7

Alphabetical keyword index - 8
Prosecution of the application by a third
party A-IV, 2.4
Refusal of the earlier application A-IV, 2.6
Stay of proceedings for grant A-IV, 2.2
Art. 83 vs. Art. 123(2) F-III, 2
Art. 84 H-IV, 5.4.1
Claims (Art. 84 and formal requirements) F-IV
Rule 137(3) in conjunction with Art. 84 - missing essential
feature H-II, 2.3.1.3
Artificial intelligence and machine learning G-II, 3.3.1
Ascertaining the existence of a fallback
position B-III, 3.2.5
Asking for evidence E-IV, 4.4
Assessment
Assessment and possible review of the unity
requirement B-VII, 1.4
Assessment of "added subject-matter" H-IV, 2.4
Assessment of impermissible extension of the protection
conferred H-IV, 3.4
Assessment of unity F-V, 3
Determination of the invention first mentioned in theclaims F-V, 3.4
Grouping of inventions F-V, 3.2
Non-unity and prior art F-V, 3.1
Reasoning for a lack of unity objection F-V, 3.3
Authentic text of the application or patent A-VII, 8
Authentication and dates B-X, 10
Authorisations A-IV, 1.6, A-VIII, 1.1, A-VIII, 1.6
Checking the identity and authorisations of participants atoral proceedings E-III, 8.3.1
European divisional applications A-IV, 1.6
Representatives A-VIII, 1.1
Authoritative text of documents E-X, 2.2
Authorities (Taking of evidence by courts or ~ of thecontracting states) E-IV, 3
Authorities of the Contracting States (Taking ofevidence by courts or ~) E-IV, 3
Automatic debiting procedure A-X, 4.3
Auxiliary requests H-III, 3
Auxiliary requests in examination proceedings H-III, 3.3
Admissibility of auxiliary requests H-III, 3.3.2
Applicant does not approve the text proposed for
grant H-III, 3.3.6
Complete text for auxiliary request
available H-III, 3.3.5
Complete text for auxiliary request not yet
available H-III, 3.3.4

March 2023
Indication of the amendments made in the requests
and of their basis H-III, 3.3.1
Preparing the decision H-III, 3.3.3
Auxiliary requests in limitation proceedings H-III, 3.5
Oral proceedings H-III, 3.5.3
Written procedure H-III, 3.5.2
Auxiliary requests in opposition proceedings H-III, 3.4
Oral proceedings H-III, 3.4.2
Written procedure H-III, 3.4.1
Auxiliary requests in the search phase H-III, 3.2
Criteria for admissibility of auxiliary requests H-III, 3.3.2.1
Main and auxiliary requests E-X, 2.9
Main and auxiliary requests filed with theappeal E-XII, 7.4.3
Neither main nor auxiliary requests allowable H-III, 3.1.3
Rule 137(3) in conjunction with auxiliary
requests H-II, 2.3.1.4
Timeliness and structure of auxiliary
requests H-III, 3.3.2.2
Availability of deposited biological material to expert
only A-IV, 4.3
Awarding of costs (Decision concerning the ~ by the
opposition division) D-II, 4.2

B
Background art F-II, 4.3
Format of background art citations F-II, 4.3.1
Basic principles H-IV, 3.1
Basic principles of decisions E-X, 1
Consideration of time limits E-X, 1.2
Form and content E-X, 1.3
Basis
Basis for substantive examination E-IX, 4.3.2
Basis for the examination D-VI, 2.1, D-X, 4.2
Adherence to the text of the European patentsubmitted or approved by the patent
proprietor D-VI, 2.1
Substantive examination (limitation) D-X, 4.2
Basis for the search B-III, 3.1
Basis of the search opinion B-XI, 2
Application documents filed under Rule 56 EPC, Rule
56a EPC, Rule 20.5 PCT or Rule 20.5bis
PCT B-XI, 2.1
Applications containing claims filed after the accorded
date of filing B-XI, 2.2
Basis of this ground for opposition D-V, 6.1
Bibliographic elements B-X, 9.1.1
Binding nature of decisions on appeals E-X, 4

March 2023
Biological material A-III, 1.2, A-IV, 4.1, A-IV, 4.1.1,
A-IV, 4.2, B-IV, 1.2, E-IX, 2.4.4, F-III, 6.1, F-III, 6.3,
G-II, 5.2
Application was filed by reference to a previously filed
application A-IV, 4.1.2
Applications relating to biological material A-IV, 4
Availability of deposited biological material to expert
only A-IV, 4.3
Deposit of biological material F-III, 6.3
Inventions relating to biological material F-III, 6
New deposit of biological material A-IV, 4.1.1
Public availability of biological material F-III, 6.2
Requests for samples of biological material A-IV, 4.4
Biological processes G-II, 5.4, G-II, 5.5.1
Essentially biological processes for the production ofplants or animals G-II, 5.4.2
Plant and animal varieties or essentially biologicalprocesses for the production of plants oranimals G-II, 5.4
Biotechnological inventions
Exclusions and exceptions for biotechnologicalinventions G-II, 5
Patentable biotechnological inventions G-II, 5.2
Boards of Appeal
Accelerated processing before the boards ofappeal E-VIII, 6
Members A-XI, 2.3
Rules of Procedure of the Boards of Appeal E-XII, 8

Alphabetical keyword index - 9
Carrying out the search B-IV, 2.3
Cascading non-unity B-VII, 1.2.2
Cases in which the proceedings may beinterrupted E-VII, 1.1
Cases of loss of rights E-VIII, 1.9.1
Cases of oral description G-IV, 7.3.1
Matters to be determined by the division in cases of oral
description G-IV, 7.3.3
Cases of partially insufficient disclosure F-III, 5
Absence of well-known details F-III, 5.2
Difficulties in performing the invention F-III, 5.3
Only variants of the invention are incapable of being
performed F-III, 5.1
Cases under Rule 62a where claims fees are notpaid B-VIII, 4.4Cases where all method steps can be fully
implemented by generic data processingmeans F-IV, 3.9.1
Cases where method steps define additional devices
and/or specific data processing means F-IV, 3.9.2
Cases where the invention is realised in a distributed
computing environment F-IV, 3.9.3

Calculation of claims fees H-III, 5

Categories F-II, 7.1, F-IV, 3.1
Categories of documents (X, Y, P, A, D, etc.) B-X, 9.2
Documents cited for other reasons B-X, 9.2.8
Documents cited in the application B-X, 9.2.7
Documents defining the state of the art and notprejudicing novelty or inventive step B-X, 9.2.2
Documents relating to the theory or principle
underlying the invention B-X, 9.2.5
Documents which refer to a non-written
disclosure B-X, 9.2.3
Intermediate documents B-X, 9.2.4
Particularly relevant documents B-X, 9.2.1
Potentially conflicting patent documents B-X, 9.2.6
Claims in different categories G-VII, 14
Different categories B-III, 3.10
Kinds of claim F-IV, 3.1
Plurality of independent claims in different
categories F-V, 3.2.2
Prohibited matter F-II, 7.1

Calculation of time limits E-VIII, 1.4

Central industrial property offices, conversion A-IV, 6

Cancellation of the registration E-XIV, 6.2

Certificate C-V, 12
Certificate of exhibition A-IV, 3.1, E-IX, 2.4.3
Defects in the certificate or the identification A-IV, 3.2

Bonus effect G-VII, 10.2
Bringing the description into line with amended
claims H-V, 2.7
Broad claims B-III, 3.6, F-IV, 4.22
Burden of proof G-IV, 7.5.3
Burden of proof as regards the possibility of performing
and repeating the invention F-III, 4
Burden of proof other "print equivalent"publications G-IV, 7.5.3.2
Non-traditional publications G-IV, 7.5.3.3
Technical journals G-IV, 7.5.3.1

C

Cancellation or maintenance of oralproceedings E-III, 7.2
Change of date, cancellation or maintenance of oralproceedings E-III, 7
Withdrawal of the request for oral proceedings E-III, 7.2.2

Certified copies of documents from the files or ofother documents A-XI, 5.1

Alphabetical keyword index - 10
Certified copy of the previous application (priority
document) F-VI, 3.3
Chair D-II, 2.3
Change of date of oral proceedings E-III, 7.1.3
Change of date of oral proceedings at the instigation of thedivision E-III, 7.1.2
Change of date, cancellation or maintenance of oralproceedings E-III, 7
Cancellation or maintenance of oralproceedings E-III, 7.2
Changing the date of oral proceedings E-III, 7.1
Changes in claim category in opposition H-V, 7
Method claim to product claim H-V, 7.3
Method claim to use claim H-V, 7.4
Product claim to method claim H-V, 7.2
Product claim to use claim H-V, 7.1
Changes in the title H-V, 8
Changes of name E-XIV, 5
Registration of changes of name, transfers, licences andother rights E-XIV
Changing from one searched invention toanother C-III, 3.5
Changing the date of oral proceedings E-III, 7.1
Change of date of oral proceedings E-III, 7.1.3
Change of date of oral proceedings at the instigation of thedivision E-III, 7.1.2
Defined notice period E-III, 7.1.3
Requests to change the date of oralproceedings E-III, 7.1.1
Characteristics of the search B-III
Opinions of the search division B-III, 1
Scope of the search B-III, 2
Subject of the search B-III, 3
Charging of costs D-IX, 1
Costs to be taken into consideration D-IX, 1.3
Decisions on the apportionment of costs D-IX, 1.2
General principle D-IX, 1.1
Principle of equity D-IX, 1.4
Checking the identity and authorisations ofparticipants at oral proceedings E-III, 8.3.1
Checklist F-II, 2.5
Checklist for considering the abstract F-II, An. 1
Chemical and mathematical formulae A-IX, 11.1
Citation
Citation of documents corresponding to documents notavailable or not published in one of the official EPO
languages B-VI, 6.2

March 2023
Citation of prior art in the description after the filingdate H-IV, 2.2.7
Citation of video and/or audio media fragments available
on the internet B-X, 11.6
Citing documents not mentioned in the search
report C-IV, 7.5
Claims C-IX, 1.6
Abandonment of claims B-III, 3.4
Amended claims F-V, 6
Amended claims, missing parts (Rule 56) or erroneously
filed application documents or parts (Rule 56a) B-III, 3.3
Amendments A-V, 2.1, A-V, 2.2, B-VIII, 6, C-I, 4,
C-II, 3.1, D-IV, 5.2, G-IV, 3, H-II, 3.1, H-IV, 2.2.4
Amendments in claims H-V, 3
Amendments in claims further cases of broadening ofclaims H-V, 3.4
Anticipation of amendments to claims B-III, 3.5
Applications containing claims filed after the accorded
date of filing B-XI, 2.2
Arrangement of claims F-IV, 3.5
Bringing the description into line with amended
claims H-V, 2.7
Broad claims B-III, 3.6, F-IV, 4.22
Categories F-IV, 3.1, F-V, 2.1
Claim to priority A-III, 6, A-IV, 1.2, E-IX, 2.3.5, F-VI, 3
Applications giving rise to a right of priority A-III, 6.2
Certified copy of the previous application (priority
document) F-VI, 3.3
Copy of the previous application (priority
document) A-III, 6.7
Copy of the search results for the priority or
priorities A-III, 6.12
Date of filing A-IV, 1.2.1
Declaration of priority A-III, 6.5, F-VI, 3.2
Examination of formal requirements A-III, 6
Examination of the priority document A-III, 6.4
Information on prior art E-IX, 2.3.5.2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.5
Loss of right to priority A-III, 6.10
Multiple priorities A-III, 6.3
Non-entitlement to right to priority A-III, 6.9
Notification A-III, 6.11
Priority F-VI, 3
Priority claim of a divisional application A-IV, 1.2.2
Priority document E-IX, 2.3.5.1
Priority period A-III, 6.6
Re-establishment of rights in respect of the priority
period F-VI, 3.6
Restoration of priority E-IX, 2.3.5.3
Translation of the previous application A-III, 6.8,
F-VI, 3.4
Withdrawal of priority claim F-VI, 3.5
Claims (Art. 84 and formal requirements) F-IV
Clarity and interpretation of claims F-IV, 4
Conciseness, number of claims F-IV, 5
Examples concerning essential features F-IV, An.
Form and content of claims F-IV, 2

March 2023
Kinds of claim F-IV, 3
Support in description F-IV, 6
Claims comprising technical and non-technicalfeatures G-VII, 5.4
Examples of applying the COMVIK
approach G-VII, 5.4.2
Formulation of the objective technical problem for
claims comprising technical and non-technicalfeatures G-VII, 5.4.1
Claims contravening Art. 123(2) or Art. 76(1) B-VIII, 6
Claims directed to computer-implemented
inventions F-IV, 3.9
Cases where all method steps can be fully
implemented by generic data processingmeans F-IV, 3.9.1
Cases where method steps define additional devices
and/or specific data processing means F-IV, 3.9.2
Cases where the invention is realised in a distributed
computing environment F-IV, 3.9.3
Claims fee A-II, 6.9, A-III, 9, A-III, 16.2, A-IV, 1.4.2,
A-X, 5.2.5, C-V, 4.8.1, E-IX, 2.3.8
Calculation of claims fees H-III, 5
Cases under Rule 62a where claims fees are notpaid B-VIII, 4.4
Claims fees due in response to Rule 71(3)communication C-V, 1.4
Claims fees payable before the grant of the European
patent A-X, 7.3.2
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Correction of erroneously filed application documentsor parts A-II, 6.9
Crediting of claims fees A-X, 11.2
Due date for specific fees A-X, 5.2.5
Examination of formal requirements A-III, 9Fees A-IV, 1.4.2
Fees to be paid within the second Rule 71(3)period C-V, 4.8.1
Indication of the purpose of payment in the case ofclaims fees A-X, 7.3
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.8
Separate crediting of the fee for grant and publishingand claims fees A-X, 11.3
Claims filed after accordance of a date offiling C-III, 1.1.2
Claims filed after the date of filing H-IV, 2.2.4
Claims for a known substance for a number of distinct
medical uses F-V, 3.2.6
Claims in different categories G-VII, 14
Plurality of independent claims in different
categories F-V, 3.2.2
Claims with explicit references to the description or
drawings B-III, 3.2.1
Clarity F-IV, 1, F-IV, 3.4, F-IV, 4.1, F-IV, 4.5.1, F-IV, 6.4,
F-V, 2.1
Clarity of claims D-V, 5
Common dependent claims F-V, 3.2.4
Consistent use of reference signs as between description,
claims and drawings A-IX, 7.5.4

Alphabetical keyword index - 11
Content A-III, 3.2, F-IV, 5Content of a European patent application (other thanclaims) F-II
Correction A-V, 3, A-VI, 1.3, D-X, 4.3, H-VI, 2, H-VI, 2.2
Correction of description, claims anddrawings H-VI, 2.2.1
Correction of the translations of the claims H-VI, 5
Dependent claims B-III, 3.7, F-IV, 3.4, F-IV, 3.5
Dependent claims pursuant to Art. 54(5) G-VI, 7.1.5
Determination of the invention first mentioned in theclaims F-V, 3.4
Different sets of claims D-X, 10
Errors in the description, claims anddrawings H-VI, 2.1.1.1
Examples no amended claims filed with theappeal E-XII, 7.4.1
Extent of protection F-IV, 4.12
Independent and dependent claims B-III, 3.7, F-IV, 3.4
Independent claims F-IV, 3.1, F-IV, 3.2, F-IV, 3.3,
F-V, 2.1, F-V, 3.2.1
Independent claims containing a reference to anotherclaim or to features from a claim of anothercategory F-IV, 3.8
Interpretation of claims B-III, 3.2
Late filing of claims A-III, 15
Limitation is different for different contracting states
because the claims as granted were different for different
contracting states D-X, 10.2
Limitation results in the claims becoming different indifferent contracting states D-X, 10.1
Novelty of "reach-through" claims G-VI, 9
Number of independent claims F-IV, 3.2
Opposition proceedings where the claims as granted are
different for different contracting states H-III, 4.5
Order of claims F-IV, 4.23
Plurality of independent claims in the same
category F-V, 3.2.1"Reach-through" claims F-III, 9
Relationship between documents and claims B-X, 9.3
Search on dependent claims B-III, 3.8
Support for dependent claims F-IV, 6.6
Tables in the claims A-IX, 11.2.2
Translation C-V, 1.1, D-VI, 7.2.3, E-VIII, 3.1.1
Translations of the claims C-V, 1.3
Treatment of dependent claims under Rule
62a B-VIII, 4.6
Use claims F-IV, 4.16
Use of the description and/or drawings to establish
definitions of unclear terms not defined in theclaims B-III, 3.2.3
Clarification of a technical effect H-V, 2.1
Clarifications H-IV, 2.2.8
Clarity F-IV, 4.1
Clarity and interpretation of claims F-IV, 4
Broad claims F-IV, 4.22
Clarity F-IV, 4.1"Comprising" vs. "consisting of" F-IV, 4.20

Alphabetical keyword index - 12
Definition by reference to (use with) anotherentity F-IV, 4.14
Essential features F-IV, 4.5
Expression "in" F-IV, 4.15
Functional definition of a pathologicalcondition F-IV, 4.21
General statements, "spirit of the invention", claim-likeclauses F-IV, 4.4
Inconsistencies F-IV, 4.3
Interpretation F-IV, 4.2
Interpretation of expressions stating apurpose F-IV, 4.13
Interpretation of terms such as identity and similarity inrelation to amino or nucleic acidsequences F-IV, 4.24
Negative limitations (e.g. disclaimers) F-IV, 4.19
Optional features F-IV, 4.9
Order of claims F-IV, 4.23
Parameters F-IV, 4.11
Product-by-process claim F-IV, 4.12
Reference signs F-IV, 4.18
References to the description or drawings F-IV, 4.17
Relative terms F-IV, 4.6
Result to be achieved F-IV, 4.10
Terms such as "about", "approximately" or"substantially" F-IV, 4.7Trade marks F-IV, 4.8
Use claims F-IV, 4.16
Clarity objections F-IV, 4.6.1, F-IV, 4.7.2, F-IV, 4.14.1
Definition by reference to (use with) anotherentity F-IV, 4.14.1
Relative terms F-IV, 4.6.1
Terms such as "about", "approximately" or"substantially" F-IV, 4.7.2
Clarity of claims D-V, 5Sufficiency of disclosure and clarity F-III, 11Classification
Classification of the patent application B-X, 5
CPC classification of the application B-V, 4
IPC classification in cases of a lack of unity of
invention B-V, 3.3
IPC classification of late-published search
reports B-V, 3.1
IPC classification of the application B-V, 3
IPC classification when the scope of the invention is notclear (e.g. a partial search) B-V, 3.2
Preclassification, IPC and CPC classification of European
patent applications B-V
Verification of the IPC classification B-V, 3.4
Closest prior art and its effects on the
search B-IV, 2.5
Closure of oral proceedings E-III, 8.11
Adjournment of oral proceedings due to lack oftime E-III, 8.11.2
Requesting postponement during oralproceedings E-III, 8.11.1

March 2023
Combination of elements in a claim B-III, 3.9
Combination vs. juxtaposition or aggregation G-VII, 7
Combining pieces of prior art G-VII, 6
Comments and amendments in response to thesearch opinion B-XI, 3.3
Commercial success G-VII, 10.3
Commissioning of experts E-IV, 1.8
Decision on the form of the opinion E-IV, 1.8.1
Objection to an expert E-IV, 1.8.2
Terms of reference of the expert E-IV, 1.8.3
CommonCommon dependent claims F-V, 3.2.4
Common general knowledge of the skilled
person G-VII, 3.1
Common provisions A-VIII
Form of documents A-VIII, 2
Representation A-VIII, 1
Signature of documents A-VIII, 3
Common representatives A-VIII, 1.4
Commonly designated states G-IV, 5.3
Communication A-VI, 2.1, E-II, 1
Admissibility in the examination procedure after receipt of
the first communication - Rule 137(3) H-II, 2.3
Agreement reached on a text - second Rule 71(3)communication C-V, 4.7.2
Amendments filed in reply to a Rule 71(3)communication H-II, 2.5
Amendments filed in reply to a Rule 71(3) communication
further course of proceedings H-II, 2.5.2
Amendments/corrections admitted and allowable - second
Rule 71(3) communication sent C-V, 4.6
Communication according to Rule 161 E-IX, 3Applications for which a supplementary European
search report is prepared E-IX, 3.1, E-IX, 3.2
Exceptions where a reply to the Rule 161(1) invitation
is not required E-IX, 3.3
Rule 137(4) applies E-IX, 3.4
Communication in the event of deficiencies as describedin D-IV, 1.2.1 which, if not remedied, will lead to the
opposition being deemed not to have been
filed D-IV, 1.3.1
Communication in the event of deficiencies as describedin D-IV, 1.2.2 which, if not remedied, will lead to rejectionof the opposition as inadmissible D-IV, 1.3.2
Communication of information contained in files A-XI,
A-XI, 3
Consultation of the European Patent Register A-XI, 4
Inspection of files A-XI, 2
Issuance of certified copies A-XI, 5
Communication of observations from one of the parties tothe other parties D-IV, 5.4
Communication to the EPO as a designatedOffice E-IX, 2.7

March 2023
Communication under Rule 71(3) C-V, 1
Claims fees due in response to Rule 71(3)communication C-V, 1.4
Communication under Rule 71(3) other information in
the communication under Rule 71(3) C-V, 1.5
Examining division resumes examination after
approval of the text further communication under Rule71(3) C-V, 6.2
Grant and publishing fee C-V, 1.2
Text for approval C-V, 1.1
Translations of the claims C-V, 1.3
Communications and notifications E-II
Communications E-II, 1
Notification E-II, 2
Communications concerning formal deficiencies A-V,
A-V, 1
Amendment of application A-V, 2
Correction of errors in documents filed with the
EPO A-V, 3
Communications from the opposition division to the patent
proprietor D-VI, 4
Communications from the opposition
division D-VI, 4.1
Invitation to file amended documents D-VI, 4.2
Reasoned statement D-VI, 4.1
Communications/oral proceedings after
resumption C-V, 4.7.1
Higher-ranking request not admissible and/or notallowable C-V, 4.7.1.1
Examination for deficiencies in the notice of oppositionand communications from the formalities officer arisingfrom this examination D-IV, 1
Examination procedure at least one communication in
examination E-IX, 4.1
Examining division proposes amendments in second Rule71(3) communication C-V, 4.6.3
Extent of the formalities officer's obligation to issue theabove communications D-IV, 1.3.3
Filing of applications by means of electronic
communication A-II, 1.2
First communication C-III, 4
Form of decisions, communications and notices E-II, 1.3
Invitation to the patent proprietor to submit comments andcommunication of opposition to the other parties
concerned by the formalities officer D-IV, 5.2
Issue of communications by the formalities officer as aresult of examination for deficiencies D-IV, 1.3
Issuing a further communication (no refusal) C-V, 15.4
Minutes as the first communication in
examination C-VII, 2.5
Noting and communication of loss of rights E-VIII, 1.9.2
Number of communications E-II, 1.2
Opposition division's communications D-VI, 3.1
Request for amendments or corrections in reply to theRule 71(3) communication C-V, 4
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filing oftranslations necessary C-V, 4.1
Response filed before first communication in
examination C-II, 3

Alphabetical keyword index - 13
Response to communication pursuant to Rule 58 filed withthe appeal E-XII, 7.4.4
Rule 137(4) communication and response
thereto H-III, 2.1.1
Rule 161 communication issued before 1 April
2010 E-IX, 3.3.3
Second Rule 71(3) communication based on higherranking request initially rejected in first Rule 71(3)communication C-V, 4.6.2
Second Rule 71(3) communication reversing theamendments proposed by the examining division in first
Rule 71(3) communication C-V, 4.6.1
Standard marks for indicating amendments or corrections
by the divisions further communication with theapplicant C-VIII, 5
Time limits for response to communications from theexaminer C-VI, 1
Voluntary reply to Rule 161(1) communication E-IX, 3.3.4
Comparative test results E-IX, 4.3.1
Compensation E-IV, 1.10.2
Competence E-IV, 2.3
Complete
Complete search despite of lack of unity B-VII, 2.2
Complete text for auxiliary request available H-III, 3.3.5
Complete text for auxiliary request not yet
available H-III, 3.3.4
Completeness of the search B-III, 2.1
Compliance of amendments with other EPC
requirements H-IV, 5
Compliance of amendments with other EPC requirements
in examination proceedings H-IV, 5.2
Compliance of amendments with other EPC requirements
in limitation proceedings H-IV, 5.4
Art. 84 H-IV, 5.4.1
Examination of the description and/or
drawings H-IV, 5.4.2
Points to be disregarded H-IV, 5.4.3
Compliance of amendments with other EPC requirements
in opposition proceedings H-IV, 5.3
Composition and duties of the examining
division E-XIII, 3
Composition E-XIII, 3.1
Duties E-XIII, 3.2
Compositions B-IX, 4.1, D-II, 2, E-XIII, 3.1, G-II, 4.2
Chair D-II, 2.3
Composition and duties of the examining
division E-XIII, 3.1
Exceptions to patentability G-II, 4.2
Legally qualified examiners D-II, 2.2
Non-patent literature arranged for library-typeaccess B-IX, 4.1
Opposition division D-II, 2
Substances and compositions G-II, 4.2

Alphabetical keyword index - 14

March 2023

Technically qualified examiners D-II, 2.1
Compound units F-II, An. 2, 5"Comprising" vs. "consisting of" F-IV, 4.20
Computer print-out E-II, 2.1
Computer programs F-II, 4.12, G-II, 3.6
Description (formal requirements) F-II, 4.12
List of exclusions G-II, 3.6
Computer-implemented businessmethods B-VIII, 2.2.1
Computers (Programs for ~)G-II, 3.6

Concept of "clear allowability" H-II, 2.7.1
Conciseness, number of claims F-IV, 5
Conditions A-X, 9.2.1
Conditions for valid payment A-X, 7.1.1
Conditions regarding the paper used A-IX, 3
Conduct of oral proceedings E-III, 8, E-III, 8.2
Admission of the public to proceedings E-III, 8.1
Closure of oral proceedings E-III, 8.11
Discussion of the facts and of the legal position E-III, 8.9
Facts, evidence or amendments introduced at a latestage E-III, 8.6
Handwritten amendments in oral proceedings E-III, 8.7
Non-appearance of a party E-III, 8.3
Opening of oral proceedings E-III, 8.3
Opening of the substantive part of theproceedings E-III, 8.4
Participation of members of the division from different
locations E-III, 8.2.2
Participation of parties and their representatives fromdifferent locations E-III, 8.2.1
Recording E-III, 8.2.4
Right of the other members of the division to put
questions E-III, 8.10
Submissions by the parties E-III, 8.5
Technical problems E-III, 8.2.3
Use of Rule 137(4) for amendments filed during oralproceedings in examination E-III, 8.8

Conflict with other European applications G-IV, 5
Commonly designated states G-IV, 5.3
Double patenting G-IV, 5.4
Euro-PCT applications G-IV, 5.2
State of the art pursuant to Art. 54(3) G-IV, 5.1
Conflicting applications B-VI, 4
National prior rights B-VI, 4.2
Potentially conflicting European and international
applications B-VI, 4.1
Conflicts between Art. 123(2) and Art. 123(3) H-IV, 3.5
Conflicts between Art. 123(3) and other requirements ofthe EPC H-IV, 3.6Consequences for the applicant F-V, 4.2Consequences of non-payment of the designation
fee A-III, 11.2.3, A-III, 11.3.2
European patent applications filed before 1 April
2009 A-III, 11.3.2
European patent applications filed on or after 1 April
2009 A-III, 11.2.3
Conservation of evidence E-IV, 2
Competence E-IV, 2.3
Decision on the request and the taking ofevidence E-IV, 2.4
Request for the conservation of evidence E-IV, 2.2
Requirements E-IV, 2.1
Taking and conservation of evidence E-IV
Consideration of the contents of the IPER E-IX, 4.3.3
Consideration of time limits E-X, 1.2
Considerations relating to specific exclusions fromand exceptions to patentability B-VIII, 2
Methods for treatment of the human or animal body bysurgery or therapy and diagnostic methods practised on
the human or animal body B-VIII, 2.1
Subject-matter excluded from patentability under Art. 52(2)and (3) B-VIII, 2.2
Consistent use of reference signs as between
description, claims and drawings A-IX, 7.5.4
Consistent use of reference signs as between
drawings A-IX, 7.5.5

Conducting file inspections A-XI, 2.2

Consolidation of proceedings E-VII, 4

Confidentiality C-VII, 3.2
Confidentiality of the request A-XI, 2.4

Consultations C-VII, 2
Consultation of a legally qualified examiner C-VIII, 7
Consultation of the European Patent Register A-XI,
A-XI, 4
Communication of information contained in thefiles A-XI, 3
Inspection of files A-XI, 2
Issuance of certified copies A-XI, 5Consultation with other examiners B-I, 2.1
Informal nature of consultations C-VII, 2.3

Confirmation A-II, 3.1
Confirmation of the intention to proceed further with theapplication C-II, 1.1
Conflict
Conflict between abstract and source document B-VI, 6.3
Conflict with national rights of earlier date G-IV, 6

March 2023
Minutes as the first communication in
examination C-VII, 2.5
Minutes of a consultation C-VII, 2.4
Persons participating in the consultation C-VII, 2.2
Contact between the applicant and the searchdivision B-II, 1.1
Content E-X, 2.7
Accorded date of filing and content of the application still
subject to review G-IV, 5.1.2
Analysis of the application and content of the search
opinion B-XI, 3
Consideration of the contents of the IPER E-IX, 4.3.3
Content of a European patent application (other thanclaims) F-II
Abstract F-II, 2
Checklist for considering the abstract F-II, An. 1
Description (formal requirements) F-II, 4
Drawings F-II, 5
Prohibited matter F-II, 7
Request for grant F-II, 3
Sequence listings F-II, 6
Title F-II, 3
Units recognised in international practice as
determined by the President under Rule49(2) F-II, An. 2
Content of the abstract A-III, 10.2, F-II, 2.3
Content of the application as "originally" filed H-IV, 2.2,
H-IV, 2.3
Applications filed by reference to an earlier
application H-IV, 2.3.1
Applications resulting from a decision under Art.
61 H-IV, 2.3.3
Citation of prior art in the description after the filingdate H-IV, 2.2.7
Claims filed after the date of filing H-IV, 2.2.4
Clarifications H-IV, 2.2.8
Divisional applications H-IV, 2.3.2
Erroneously filed application documents or parts under
Rule 56a H-IV, 2.2.3
Features described in a document cross-referenced in
the description H-IV, 2.2.1
International applications H-IV, 2.3.4
Missing parts of the description or missing drawings
filed under Rule 56 after the date of filing H-IV, 2.2.2
Priority documents H-IV, 2.2.6
Sequence listings filed after the date offiling H-IV, 2.2.5
Trade marks H-IV, 2.2.9
Content of the extended European search report(EESR) B-VIII, 3.3, B-VIII, 4.3
More than one independent claim per category (Rule62a) B-VIII, 4.3
No meaningful search possible B-VIII, 3.3Content of the notice of opposition D-III, 6Content of the publication A-VI, 1.3

Alphabetical keyword index - 15
Contents of prior-art disclosures B-VI, 6
Citation of documents corresponding to documents notavailable or not published in one of the official EPO
languages B-VI, 6.2
Conflict between abstract and source
document B-VI, 6.3
Incorrect compound records in online
databases B-VI, 6.5
Insufficient prior-art disclosures B-VI, 6.4
Definitive content F-II, 2.2
Form and content E-X, 1.3, F-II, 5.1
Form and content of claims F-IV, 2Intermediate publication of the contents of the priority
application F-VI, 2.4.1
Continuation
Continuation of proceedings D-VII, 4.2
Continuation after a final decision D-VII, 4.2.1
Continuation regardless of the stage reached innational proceedings D-VII, 4.2.2
Continuation of the opposition proceedings in the cases
covered by Rule 84 D-VII, 5Continuation after the opposition has been
withdrawn D-VII, 5.3
Continuation in the case of surrender or lapse of thepatent D-VII, 5.1
Continuation on the death or legal incapacity of the
opponent D-VII, 5.2
Contracting States
Contracting states to the EPC General Part, 6
Designation of contracting states A-III, 11, A-IV, 1.3.4
Different claims, description and drawings for different
States G-IV, 6
Different texts in respect of different contracting
states H-III, 4
Indication of the contracting states A-III, 11.3.6
Limitation is different for different contracting states
because the claims as granted were different for different
contracting states D-X, 10.2
Limitation results in the claims becoming different indifferent contracting states D-X, 10.1
Opposition proceedings where the claims as granted are
different for different contracting states H-III, 4.5
Taking of evidence by courts or authorities of thecontracting states E-IV, 3
Contribution to the known art B-XI, 3.5
Convention, on international exhibitions A-IV, 3.1
Conventional symbols A-IX, 9Conversion A-IV, 6
Conversion fee A-IV, 6
Conversion into a national application A-IV, 6
Request for conversion A-IV, 6
Request for conversion into a national application A-IV, 6
Co-operation (Legal ~)E-IV, 3.1

Alphabetical keyword index - 16
Copy
Copies to be made available with the search
report B-X, 11"&" sign B-X, 11.3
Citation of video and/or audio media fragments
available on the internet B-X, 11.6
Electronic version of document cited B-X, 11.2
Patent family members B-X, 11.3
Reviews or books B-X, 11.4
Summaries, extracts or abstracts B-X, 11.5
Copy of the international application E-IX, 2.1.2
Copy of the previous application (priority
document) A-III, 6.7
Certified copy of the previous application (priority
document) F-VI, 3.3
Copy of the priority application A-II, 5.4.3, A-II, 6.4.2
Correct application documents based on priority
application, no change in the filing date A-II, 6.4.2
Missing parts based on the priority application, nochange in filing date A-II, 5.4.3
Copy of the search results for the priority or
priorities A-III, 6.12, C-II, 5
Claim to priority A-III, 6.12
Formal requirements to be met before the division
starts substantive examination C-II, 5
Correct
Correct application documents based on priority
application, no change in the filing date A-II, 6.4
Copy of the priority application A-II, 6.4.2
Later-filed correct application documents or parts whenpriority is claimed A-II, 6.4.1
Translation of the priority application A-II, 6.4.3
Correct application documents or parts filed after the
search has started A-II, 6.7
Correcting an existing priority claim A-III, 6.5.2
Corrections H-II, 2.6
Amendments and corrections , H-II, 2.6
Amendments or corrections should be reasoned C-V, 4.3
Amendments/corrections admitted and allowable - second
Rule 71(3) communication sent C-V, 4.6
Amendments/corrections filed in second Rule 71(3)period C-V, 4.10
Correction and certification of the translation A-VII, 7
Correction of deficiencies A-III, 16
Period allowed for remedying deficiencies A-III, 16.2
Procedure formalities officer A-III, 16.1
Correction of description, claims anddrawings H-VI, 2.2.1
Correction of erroneously filed application documents orparts A-II, 6, A-II, 6.1, A-II, 6.2
Additional fee for pages A-II, 6.8
Claims fee A-II, 6.9
Correct application documents based on priority
application, no change in the filing date A-II, 6.4
Correct application documents or parts filed after the
search has started A-II, 6.7
Filing date changes A-II, 6.3
On invitation A-II, 6.1

March 2023
Same-day corrections A-II, 6.6
Withdrawal of correct application documents orparts A-II, 6.5
Without invitation A-II, 6.2
Correction of errors A-V, H-VI
Amendment of application A-V, 2
Communications concerning formal
deficiencies A-V, 1
Correction of errors in the decision to grant C-V, 7
Correction of formatting/editing errors H-VI, 4
Correction of the translations of the claims H-VI, 5
Errors in publication H-VI, 6
Correction of errors in decisions H-VI, 3
Admissibility H-VI, 3.1
Allowability of the correction of bibliographic
data H-VI, 3.2
Correction of the decision to grant while opposition
proceedings are pending H-VI, 3.3
Procedural aspects H-VI, 3.3
Correction of errors in documents filed with the
EPO A-V, 3, H-VI, 2
Admissibility H-VI, 2.1
Allowability H-VI, 2.2
Missing parts of description, missing drawings orcorrection of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2
Request for amendments or corrections in reply to theRule 71(3) communication C-V, 4
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filing oftranslations necessary C-V, 4.1
Standard marks for indicating amendments or corrections
by the divisions C-V, An.
Standard marks for indicating amendments or corrections
by the divisions further communication with theapplicant C-VIII, 5Standard marks for indicating amendments or corrections
by the divisions further ways to accelerate
examination C-VI, 3"Corresponding documents" B-X, 9.1.2
Costs D-IX, E-VI, 2.2.5
Appeal against the fixing of costs by the opposition
division D-IX, 2.2
Appeals against the apportionment of costs E-XII, 3
Appeals against the decision of the opposition division on
the fixing of costs E-XII, 4
Charging of costs D-IX, 1
Costs arising from oral proceedings or taking ofevidence E-IV, 1.9
Costs of taking evidence E-IV, 3.5
Costs to be taken into consideration D-IX, 1.3
Decision concerning the awarding of costs by the
opposition division D-II, 4.2
Decisions on the apportionment of costs D-IX, 1.2
Enforcement of the fixing of costs D-IX, 3
Fixing of costs by the opposition division D-IX, 2.1
Procedure for the fixing of costs D-IX, 2

March 2023
Could-would approach G-VII, 5.3
CPC classification of the application B-V, 4
Creations G-II, 3.4
Aesthetic creations G-II, 3.4
CreditingCrediting of fees paid voluntarily C-V, 4.2
Crediting of fees under Rule 71a(5) A-X, 11, C-V, 6.3
Crediting of claims fees A-X, 11.2
Crediting of fees under Rule 71a(5) further processing
fee and crediting of fees A-X, 11.4
Examining division resumes examination after
approval of the text C-V, 6.3
Fees A-X, 11
Separate crediting of the fee for grant and publishingand claims fees A-X, 11.3
Crediting of the fee for grant and publishing A-X, 11.1
Separate crediting of the fee for grant and publishingand claims fees A-X, 11.3
Criteria for admissibility of auxiliary
requests H-III, 3.3.2.1
Criteria for admitting such amendments H-II, 2.5.1
Cross-references between prior-art
documents G-IV, 8
Cross-sections A-IX, 7.3
Hatching A-IX, 7.3.2
Sectional diagrams A-IX, 7.3.1
Currencies A-X, 3

D
Data retrieval, formats and structures G-II, 3.6.3
Database management systems and information
retrieval G-II, 3.6.4
Date
Date considered as date on which payment ismade A-X, 4
Automatic debiting procedure A-X, 4.3
Deposit accounts with the EPO A-X, 4.2
Payment by credit card A-X, 4.4
Payment or transfer to a bank account held by theEuropean Patent Organisation A-X, 4.1
Date of filing A-II, 4.1.5, A-IV, 1.2.1, G-VII, 2
Accorded date of filing and content of the application
still subject to review G-IV, 5.1.2
Applications containing claims filed after the accorded
date of filing B-XI, 2.2
Claims filed after accordance of a date offiling C-III, 1.1.2
Claims filed after the date of filing H-IV, 2.2.4
Date of filing or priority date as effective date G-IV, 3

Alphabetical keyword index - 17
Minimum requirements for according a date offiling A-II, 4.1
Missing parts of the description or missing drawings
filed under Rule 56 after the date of filing H-IV, 2.2.2
Sequence listings filed after the date offiling H-IV, 2.2.5
Date of filing of a divisional application A-IV, 1.2,
A-IV, 1.2.1, A-IV, 1.2.2, A-IV, 1.4.3, A-IV, 2.5, C-IX, 1.1,
C-IX, 1.4
Priority claim of a divisional application A-IV, 1.2.2
Date of interruption E-VII, 1.3
Date of priority A-IV, 1.2.1, A-IV, 1.2.2, A-IV, 2.5,
C-IX, 1.1, C-IX, 2.1, F-VI, 1.2, G-IV, 3, G-IV, 5.1
Date of publication A-VI, 1.1
Date of receipt A-II, 3.1, A-II, 3.2
Date of receipt of the debit order A-X, 4.2.4
Date of reference for documents cited in the search
report B-VI, 5
Documents published after the filing date B-VI, 5.4
Doubts as to the validity of the priority claim B-VI, 5.3
Extension of the search B-VI, 5.3
Intermediate documents B-VI, 5.2
Matters of doubt in the state of the art B-VI, 5.6
Non-prejudicial disclosures B-VI, 5.5
Verification of claimed priority date(s) B-VI, 5.1
Date of the stay of proceedings A-IV, 2.2.2, D-VII, 4.1.1
Stay of proceedings D-VII, 4.1.1
Stay of proceedings for grant A-IV, 2.2.2
Dealing with different texts in examination H-III, 4.1
Death or legal incapacity E-VII, 1.1
Continuation on the death or legal incapacity of the
opponent D-VII, 5.2
Debit
Debit orders filed with a competent national
authority A-X, 6.2.3
Debit orders for deposit accounts held with the
EPO A-II, 1.5
Debiting the deposit account A-X, 4.2.3
Decisions C-VIII, 6, D-VIII, 2, E-X
Basic principles of decisions E-X, 1
Binding nature of decisions on appeals E-X, 4
Correction of errors in decisions H-VI, 3
Decision according to the state of the file C-V, 15
Decision by means of a standard form C-V, 15.2
Issuing a further communication (norefusal) C-V, 15.4
Issuing a self-contained decision C-V, 15.3
Request for a decision according to the state of thefile C-V, 15.1
Decision concerning the admissibility of an opposition, thepatent proprietor being a party D-IV, 5.5
Decision concerning the awarding of costs by the
opposition division D-II, 4.2
Decision on a notified loss of rights at the request of theperson concerned D-VIII, 2.3

Alphabetical keyword index - 18
Decision on closure of the opposition
proceedings D-VIII, 2.5
Decision on loss of rights E-VIII, 1.9.3
Decision on re-establishment of rights D-VIII, 2.4,
E-VIII, 3.3
Other decisions D-VIII, 2.4
Re-establishment of rights E-VIII, 3.3
Decision on request for revocation D-X, 3
Decision on the documents on the basis of which thepatent is to be maintained D-VI, 7.2.2
Decision on the form of the opinion E-IV, 1.8.1
Decision on the inadmissibility of an opposition orintervention D-VIII, 2.1
Decision on the request and the taking ofevidence E-IV, 2.4
Decisions of the opposition division D-VIII, 2
Decisions of the opposition division D-VIII
Final decisions on an admissible opposition D-VIII, 1
Other decisions D-VIII, 2
Decisions on the apportionment of costs D-IX, 1.2
Decisions taken by the examining or opposition
divisions E-X, 2
Analysing the parties' arguments E-X, 2.8
Authoritative text of documents E-X, 2.2Content E-X, 2.7
Decision on the file as it stands E-X, 2.5
Facts and submissions E-X, 2.4
Late-filed submissions E-X, 2.10
Main and auxiliary requests E-X, 2.9
Reasoning of decisions E-X, 2.6
Refusal to admit amendments under Rule137(3) E-X, 2.11
Requirements as to form E-X, 2.3
Right to be heard E-X, 2.1
Decisions which do not terminate
proceedings D-VIII, 2.2, E-X, 3
Decisions, notification E-II, 2.1
Form of decisions, communications and notices E-II, 1.3
Information as to means of redress E-X, 5Interlocutory decisions E-X, 3
Legal status of decisions D-X, 8
Notification E-X, 6Work within the examining division C-VIII, 6
Declaration of priority A-III, 6.5, F-VI, 3.2
Correcting an existing priority claim A-III, 6.5.2
Deficiencies in the priority claim and loss of the priority
right A-III, 6.5.3
Filing a new priority claim A-III, 6.5.1
Declaration replacing the translation A-III, 6.8.6
Defects in the certificate or the identification A-IV, 3.2
Deficiencies A-II, 4.1.4, A-III, 5.4
Communication in the event of deficiencies as describedin D-IV, 1.2.1 which, if not remedied, will lead to the
opposition being deemed not to have been
filed D-IV, 1.3.1

March 2023
Communication in the event of deficiencies as describedin D-IV, 1.2.2 which, if not remedied, will lead to rejectionof the opposition as inadmissible D-IV, 1.3.2
Communications concerning formal deficiencies A-V,
A-V, 1
Correction of deficiencies A-III, 16
Deficiencies in the priority claim and loss of the priority
right A-III, 6.5.3
Deficiencies which lead to the request being deemed not
to have been filed D-X, 2.1
Deficiencies which may no longer be remedied inaccordance with Rule 77(1) and (2), resulting in the
opposition being rejected as inadmissible D-IV, 1.4.2
Deficiencies which may no longer be remedied, as a resultof which the opposition is deemed not to have been
filed D-IV, 1.4.1
Deficiencies which, if not remedied, lead to the opposition
being deemed not to have been filed D-IV, 1.2.1
Deficiencies which, if not remedied, lead to the opposition
being rejected as inadmissible D-IV, 1.2.2
Deficiencies under Rule 77(1) D-IV, 1.2.2.1
Deficiencies under Rule 77(2) D-IV, 1.2.2.2
Deficiencies which, if not remedied, lead to the request
being rejected as inadmissible D-X, 2.2
Examination for deficiencies in the notice of
opposition D-IV, 1.2
Examination for deficiencies in the notice of oppositionand communications from the formalities officer arisingfrom this examination D-IV, 1
Examination for deficiencies in the request D-X, 2
Formal deficiencies B-IV, 1.2
Issue of communications by the formalities officer as aresult of examination for deficiencies D-IV, 1.3
Period allowed for remedying deficiencies A-III, 16.2
Subsequent procedure in the event of deficiencies which
may no longer be remedied D-IV, 1.4
Defined notice period E-III, 7.1.3
Definitions B-V, 1
Definition by functional and structuralfeatures G-II, 5.6.1.4
Definition by hybridoma G-II, 5.6.1.7
Definition by production process G-II, 5.6.1.5
Definition by reference to (use with) anotherentity F-IV, 4.14
Clarity objections F-IV, 4.14.1
Dimensions and/or shape defined by reference toanother entity F-IV, 4.14.2
Definition by reference to the target antigen G-II, 5.6.1.2
Definition by structure of the antibody G-II, 5.6.1.1
Definition by target antigen and further functionalfeatures G-II, 5.6.1.3
Definition by the epitope G-II, 5.6.1.6
Definition in terms of function F-IV, 6.5
Definition of essential features F-IV, 4.5.2
General remarks and definitions G-II, 5.1, G-IV, 1
Use of the description and/or drawings to establish
definitions of clear terms given a definition different fromtheir usual meaning B-III, 3.2.4

March 2023
Use of the description and/or drawings to establish
definitions of unclear terms not defined in theclaims B-III, 3.2.3
Definitive content F-II, 2.2
Deletion of part of the claimed subjectmatter H-V, 3.3
Delivery of the decision E-III, 9
Department responsible D-VII, 4.4, D-X, 4.1
Procedure where the patent proprietor is notentitled D-VII, 4.4
Substantive examination (limitation) D-X, 4.1
Departments of the EPO (Taking of evidence by the ~)E-IV, 1
Dependent claims F-V, 3.2.3, G-VII, 14
Common dependent claims F-V, 3.2.4
Dependent claims pursuant to Art. 54(5) G-VI, 7.1.5
Independent and dependent claims B-III, 3.7, F-IV, 3.4
Search on dependent claims B-III, 3.8
Support for dependent claims F-IV, 6.6
Treatment of dependent claims under Rule
62a B-VIII, 4.6
Deposit
Debit orders for deposit accounts held with the
EPO A-II, 1.5
Deposit accounts with the EPO A-X, 4.2
Date of receipt of the debit order A-X, 4.2.4
Debiting the deposit account A-X, 4.2.3
Insufficient funds A-X, 4.2.4
Payments to replenish a deposit account A-X, 4.2.2
Deposit of biological material F-III, 6.3
New deposit of biological material A-IV, 4.1.1
Deposit thereof A-IV, 4.1
Application was filed by reference to a previously filed
application A-IV, 4.1.2
New deposit of biological material A-IV, 4.1.1
Refunds to a deposit account A-X, 10.3.1
Safety provision for late replenishment of deposit
accounts A-X, 6.2.2
Derogations
Derogations from language requirements D-III, 4
Derogations from the language of the proceedings in oralproceedings A-VII, 4, E-V
Exceptions from sections 1 and 2 E-V, 3
Language of a contracting state or otherlanguage E-V, 2
Language used by employees of the EPO E-V, 5
Language used in the minutes E-V, 6
Language used in the taking of evidence E-V, 4
Use of an official language E-V, 1
Derogations from the language of the proceedings inwritten proceedings A-VII, 3
Admissible non-EPO languages A-VII, 3.2
Documents filed as evidence A-VII, 3.4

Alphabetical keyword index - 19
Parties' written submissions A-VII, 3.1
Priority document A-VII, 3.3
Third-party observations A-VII, 3.5
Description A-II, 4.1.3, F-II, 1
Adaptation of the description C-V, 4.5
Alteration, excision or addition of text in thedescription H-V, 2.6
Amendment B-VIII, 6, C-II, 3.1, C-III, 2, E-IX, 2.1.3,
H-IV, 2.2.7, H-V, 2.2, H-V, 3.2, H-V, 3.2.1, H-VI, 2.1.1.1
Amendments in the description H-V, 2
Bringing the description into line with amended
claims H-V, 2.7
Cases of oral description G-IV, 7.3.1
Citation of prior art in the description after the filingdate H-IV, 2.2.7
Claims with explicit references to the description or
drawings B-III, 3.2.1
Consistent use of reference signs as between description,
claims and drawings A-IX, 7.5.4
Content F-II, 4.1
Correction A-V, 3, A-VI, 1.3, D-X, 4.3, H-VI, 2, H-VI, 2.2
Correction of description, claims anddrawings H-VI, 2.2.1
Description (formal requirements) F-II, 4
Background art F-II, 4.3
Computer programs F-II, 4.12
Industrial application F-II, 4.9
Irrelevant matter F-II, 4.4
Manner and order of presentation F-II, 4.10
Physical values, units F-II, 4.13
Reference in the description to drawings F-II, 4.7
Reference signs F-II, 4.8
Registered trade marks F-II, 4.14
Rule 42(1)(c) vs. Art. 52(1) F-II, 4.6
Technical field F-II, 4.2
Technical problem and its solution F-II, 4.5
Terminology F-II, 4.11
Description and drawings C-IX, 1.5
Different description for different Contracting
States G-IV, 6
Errors in the description, claims anddrawings H-VI, 2.1.1.1
Examination of the description and/or
drawings H-IV, 5.4.2
Features described in a document cross-referenced in thedescription H-IV, 2.2.1
Late filing of missing drawings or missing parts of thedescription A-II, 5, A-II, 5.1, A-II, 5.2
Matters to be determined by the division in cases of oral
description G-IV, 7.3.3
Missing parts of description, missing drawings orcorrection of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2
Missing parts of the description or missing drawings filed
under Rule 56 after the date of filing H-IV, 2.2.2
Non-prejudicial oral description G-IV, 7.3.2
Reference to a previously filed application A-II, 4.1.3.1
State of the art made available by means of oral
description G-IV, 7.3

Alphabetical keyword index - 20
State of the art made available to the public "by means ofa written or oral description, by use, or in any otherway" G-IV, 7
Subject-matter taken from the description H-IV, 4.1.2
Support in description F-IV, 6
Tables in the description A-IX, 11.2.1
Use of the description and/or drawings to establish
definitions of clear terms given a definition different fromtheir usual meaning B-III, 3.2.4
Use of the description and/or drawings to establish
definitions of unclear terms not defined in theclaims B-III, 3.2.3
Use of the description and/or drawings to identify thetechnical problem B-III, 3.2.2
Withdrawal of late-filed missing drawings or missing partsof the description A-II, 5.5

March 2023
Procedure where the patent proprietor is notentitled D-VII, 4Publication of a new specification of the patent D-VII, 7
Request for documents D-VII, 2
Sequence of proceedings D-VII, 1
Transitional provisions for Art. 54(4) EPC 1973 and Art.
54(5) D-VII, 8
Unity of the European patent D-VII, 3
Details of the entitlements of witnesses andexperts E-IV, 1.10.3
Determination of filing date in the case of erroneously
filed elements or parts of the international
application E-IX, 2.9.4
Determination of the closest prior art G-VII, 5.1

Designated Office (Communication to the EPO as a ~)E-IX, 2.7
Designation
Designation fee A-III, 11.2.1, A-III, 11.2.2, A-III, 11.3.1,
A-IV, 1.4.1, E-IX, 2.3.11
Consequences of non-payment of the designation
fee A-III, 11.2.3, A-III, 11.3.2
Designation fee(s), extension and validation
fees C-II, 4
European divisional application A-III, 11.2.1,
A-IV, 1.3.4, A-IV, 1.4.1
European patent applications filed on or after 1 April
2009 A-III, 11.2.2
Examination fee and designation fee A-X, 5.2.2
Filing fee, designation fee, request for examination andsearch fee E-IX, 2.1.4
Filing, search and designation fee(s) A-IV, 1.4.1
Indication of the purpose of the payment in the case ofdesignation fees A-X, 7.2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.11
Payment of designation fee A-III, 11.2.2
Designation of contracting states A-III, 11, A-IV, 1.3.4
European patent applications filed before 1 April
2009 A-III, 11.3
European patent applications filed on or after 1 April
2009 A-III, 11.2
Designation of inventor A-III, 5, A-IV, 1.5, E-IX, 2.3.4
Deficiencies A-III, 5.4
Designation filed in a separate document A-III, 5.3
European divisional applications A-IV, 1.5
Examination of formal requirements A-III, 5
Incorrect designation A-III, 5.5
Waiver of right to be mentioned as inventor A-III, 5.2
Of Contracting States A-IV, 1.3.4, A-VI, 1.3, C-V, 10
Withdrawal of application or designation E-VIII, 8.1
Withdrawal of designation A-III, 11.2.4, A-III, 11.3.8
Details and special features of the proceedings D-VII
Continuation of the opposition proceedings in the cases
covered by Rule 84 D-VII, 5Intervention of the assumed infringer D-VII, 6

Determination of the invention first mentioned in theclaims F-V, 3.4
Determination of time limits E-VIII, 1.1
Determining priority dates F-VI, 2
Examining the validity of a right to priority F-VI, 2.1
Priority claim not valid F-VI, 2.3
Same invention F-VI, 2.2
Some examples of determining priority dates F-VI, 2.4
Diagnostic methods G-II, 4.2, G-II, 4.2.1, G-II, 4.2.1.3
Exceptions to patentability G-II, 4.2
Limitations of exception under Art. 53(c) G-II, 4.2.1.3
Methods for treatment of the human or animal body bysurgery or therapy and diagnostic methods practised on
the human or animal body B-VIII, 2.1
Surgery, therapy and diagnostic methods G-II, 4.2
Diagnostic uses pursuant to Art. 54(5) G-VI, 7.1.3
Diagrams (Sectional ~)A-IX, 7.3.1

Different categories B-III, 3.10
Claims in different categories G-VII, 14
Plurality of independent claims in different
categories F-V, 3.2.2
Different sets of claims D-X, 10
Limitation is different for different contracting states
because the claims as granted were different for different
contracting states D-X, 10.2
Limitation results in the claims becoming different indifferent contracting states D-X, 10.1
Different text in respect of the state of the art
according to Art. 54(3) EPC and Art. 54(4) EPC
1973 H-III, 4.2
Different text where a transfer of right takes placepursuant to Art. 61 in examination
proceedings H-III, 4.3.1

March 2023
Different text where a transfer of right takes placepursuant to Art. 61 or Rule 78 in respect of certain
designated states H-III, 4.3
Different text where a transfer of right takes placepursuant to Art. 61 in examination
proceedings H-III, 4.3.1
Different texts where a transfer of the patent in respect ofcertain designated states takes place in opposition
proceedings H-III, 4.3.2
Opposition cases with different texts where a transfer ofrights by virtue of a final decision pursuant to Art. 61 takes
place in examination proceedings H-III, 4.3.3
Different texts in respect of different contracting
states H-III, 4
Dealing with different texts in examination H-III, 4.1
Different text in respect of the state of the art according toArt. 54(3) EPC and Art. 54(4) EPC 1973 H-III, 4.2
Different text where a transfer of right takes placepursuant to Art. 61 or Rule 78 in respect of certain
designated states H-III, 4.3
Different texts where national rights of earlier dateexist H-III, 4.4
Opposition proceedings where the claims as granted are
different for different contracting states H-III, 4.5
Different texts where a transfer of the patent inrespect of certain designated states takes place in
opposition proceedings H-III, 4.3.2
Different texts where national rights of earlier dateexist H-III, 4.4
Different types of search reports drawn up by the
EPO B-X, 2Difficulties in performing the invention F-III, 5.3
Dimensions and/or shape defined by reference toanother entity F-IV, 4.14.2
Disclaimers H-V, 4
Disclaimer disclosed in the application as originally
filed H-V, 4.1
Disclaimers not disclosed in the application as originally
filed H-V, 4.2
Subject-matter to be excluded is disclosed in theapplication as originally filed H-V, 4.2.2
Subject-matter to be excluded is not disclosed in theapplication as originally filed (so-called undisclosed
disclaimers) H-V, 4.2.1
Negative limitations (e.g. disclaimers) F-IV, 4.19
Disclosure
Cases of partially insufficient disclosure F-III, 5Contents of prior-art disclosures B-VI, 6
Disclosures which have no date or an unreliable
date G-IV, 7.5.4
Documents which refer to a non-written
disclosure B-X, 9.2.3
Enabling disclosure G-IV, 2
Enabling disclosure of a prior-art document G-VI, 4

Alphabetical keyword index - 21
Generic disclosure and specific examples G-VI, 5
Implicit disclosure and parameters G-VI, 6
Insufficient disclosure D-V, 4
Insufficient disclosure of the invention D-V, 4
Insufficient prior-art disclosures B-VI, 6.4
Internet disclosures B-VI, 7, G-IV, 7.5
Lack of support vs. insufficient disclosure F-IV, 6.4
Non-prejudicial disclosure B-VI, 5.5
Of the invention A-IV, 4.2, B-III, 3.6, F-II, 4.1, F-III, 1,
F-III, 2, F-III, 3, F-III, 6.1, F-IV, 6.4
Oral disclosure, use, exhibition, etc. as state of theart B-VI, 2
Subject-matter of the European patent extending beyond
the original disclosure D-V, 6
Sufficiency of disclosure F-III, F-III, 1
Sufficiency of disclosure and clarity F-III, 11
Sufficiency of disclosure and inventive step F-III, 12
Sufficiency of disclosure and Rules 56 and 56a F-III, 10
Summary of the disclosure F-II, 2.3
Discoveries G-II, 3.1
Dislocation in delivery of mail A-II, 1.6, E-VIII, 1.6.2.2
Disparaging statements A-III, 8.2, F-II, 7.3
Dispensing with the supplementary European search
report B-II, 4.3.1
Display at an exhibition A-IV, 3
Certificate of exhibition A-IV, 3.1
Defects in the certificate or the identification A-IV, 3.2
Identification of invention A-IV, 3.1
Distinction between allowable and unallowable
amendments D-V, 6.2
Divisional application C-IX, 1, E-IX, 2.4.1, H-IV, 2.3.2
Abandonment of subject-matter C-IX, 1.3
Additional fee for divisional applications A-III, 13.3
Additional fee for divisional applications of second or
subsequent generations A-IV, 1.4.1.1
Claims C-IX, 1.6
Date of filing of a divisional application A-IV, 1.2
Description and drawings C-IX, 1.5
European divisional application A-IV, 1, A-VII, 1.3
European divisional applications other formalities
examination A-IV, 1.7
Examination of a divisional application C-IX, 1.4
Filing a divisional application A-IV, 1.3, C-III, 3.3
Instructions in Chapter A-IV ("Special
provisions") E-IX, 2.4.1
Persons entitled to file a divisional application A-IV, 1.1.3
Priority claim of a divisional application A-IV, 1.2.2
Search, publication and request for examination ofdivisional applications A-IV, 1.8
Sequence listings of a divisional application A-IV, 5.4
Sequences of divisional applications A-IV, 1.1.2
Special applications C-IX, 1
Voluntary and mandatory division C-IX, 1.2

Alphabetical keyword index - 22
Where and how to file a divisional
application? A-IV, 1.3.1
Division's approach F-V, 2.2
Search division's approach B-XI, 3.7
Documents
Additional fee (if application documents comprise morethan thirty-five pages) A-III, 13.2
Amended claims, missing parts (Rule 56) or erroneously
filed application documents or parts (Rule 56a) B-III, 3.3
Amendment by submitting missing documents or by filingreplacement pages H-III, 2.2
Application documents filed under Rule 56 EPC, Rule 56a
EPC, Rule 20.5 PCT or Rule 20.5bis PCT B-XI, 2.1
Application documents filed under Rule 56 or Rule
56a C-III, 1.1.1
Application documents for the supplementary European
search report B-II, 4.3.3
Authoritative text of documents E-X, 2.2
Certified copies of documents from the files or of otherdocuments A-XI, 5.1
Citation of documents corresponding to documents notavailable or not published in one of the official EPO
languages B-VI, 6.2
Citing documents not mentioned in the search
report C-IV, 7.5
Correct application documents based on priority
application, no change in the filing date A-II, 6.4
Correct application documents or parts filed after the
search has started A-II, 6.7
Correction of erroneously filed application documents orparts A-II, 6, A-II, 6.1, A-II, 6.2
Correction of errors in documents filed with the
EPO A-V, 3, H-VI, 2"Corresponding documents" B-X, 9.1.2
Cross-references between prior-art documents G-IV, 8
Date of reference for documents cited in the search
report B-VI, 5
Decision on the documents on the basis of which thepatent is to be maintained D-VI, 7.2.2
Documents cited for other reasons B-X, 9.2.8
Documents cited in the application B-X, 9.2.7
Documents cited or supplied by the applicant B-IV, 1.3
Documents defining the state of the art and not prejudicing
novelty or inventive step B-X, 9.2.2
Documents discovered after completion of thesearch B-IV, 3.2
Documents filed after filing the European patentapplication A-VIII, 3.1
Documents filed as evidence A-VII, 3.4
Documents filed in the wrong language A-VII, 5
Documents forming part of the European patentapplication A-VIII, 3.2
Documents in a non-official language G-IV, 4
Machine translations G-IV, 4.1
Documents making up the application, replacement
documents, translations A-III, 3.2
Physical requirements of applications filed byreference to a previously filed application A-III, 3.2.1

March 2023
Physical requirements of late-filed application
documents or correct application documents orparts A-III, 3.2.2
Documents making up the European patentapplication A-VIII, 2.1
Documents noted in the search B-X, 9Categories of documents (X, Y, P, A, D, etc.) B-X, 9.2
Identification of documents in the search
report B-X, 9.1
Identification of relevant passages in prior-art
documents B-X, 9.4
Relationship between documents and claims B-X, 9.3
Documents open to file inspection A-XI, 2.1
Documents published after the filing date B-VI, 5.4
Documents relating to the theory or principle underlying
the invention B-X, 9.2.5
Documents relevant only to other inventions B-VII, 1.3
Documents which refer to a non-written
disclosure B-X, 9.2.3
Erroneously filed application documents or parts under
Rule 56a H-IV, 2.2.3
Errors in documents A-V, 3, A-VI, 1.3, H-VI, 2
Errors in prior-art documents G-IV, 9
Evaluation of prior art documents cited in search reportand late priority claim C-III, 7
Excluded from file inspection A-XI, 2.3, D-II, 4.3
Filing of amended documents in reply to the notice of
opposition D-IV, 5.3
Filing of subsequent documents A-VIII, 2.5
Form of documents A-VIII, 2
Form of documents other documents A-VIII, 2.3
Intermediate documents B-VI, 5.2, B-X, 9.2.4
Invitation to file amended documents D-VI, 4.2
Language A-VII, 5, E-IX, 2.1.3, E-IX, 4.3
Languages of the documents cited B-X, 9.1.3
Late receipt of documents E-VIII, 1.7
Later-filed correct application documents or parts whenpriority is claimed A-II, 6.4.1
Missing parts of description, missing drawings orcorrection of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2
Notification E-II, 2.1
Particularly relevant documents B-X, 9.2.1
Patent documents arranged for systematicaccess B-IX, 2
Physical requirements other documents A-III, 3.3
Potentially conflicting patent documents B-X, 9.2.6
Priority documents A-VII, 3.3, A-XI, 5.2, E-IX, 2.3.5.1,
F-VI, 3.4, H-IV, 2.2.6
Priority documents issued by the EPO A-XI, 5.2
Procedure for amendments to documents H-III, 2Published European applications as "E"
documents B-VI, 4.1.1
Published international applications (WO) as "E"
documents B-VI, 4.1.2
Reference documents F-III, 8, H-V, 2.5
Replacement documents and translations A-VIII, 2.2
Request for documents D-VII, 2
Signature of documents A-VIII, 3

March 2023
Standards and standard preparatory
documents G-IV, 7.6
Subsequent filing of documents A-II, 1.4
Types of documents B-IV, 2.3
Use of "P" and "E" documents in the search
opinion B-XI, 4.1
Withdrawal of correct application documents orparts A-II, 6.5
Double patenting G-IV, 5.4
Doubts as to the validity of the priority claim B-VI, 5.3
Drawings A-IX, E-IX, 2.3.9, F-II, 5
Amendments A-V, 2.1, A-V, 2.2, A-VII, 2, A-IX, 10, C-I, 4,
C-II, 3.1, E-IX, 2.1.3, G-IV, 3
Amendments derived from drawings H-V, 6
Amendments to drawings A-IX, 10
Claims with explicit references to the description or
drawings B-III, 3.2.1
Conditions regarding the paper used A-IX, 3Consistent use of reference signs as between description,
claims and drawings A-IX, 7.5.4
Consistent use of reference signs as between
drawings A-IX, 7.5.5
Content of a European patent application (other thanclaims) F-II, 5
Conventional symbols A-IX, 9Correction A-V, 3, A-VI, 1.3, D-X, 4.3, H-VI, 2, H-VI, 2.2
Correction of description, claims anddrawings H-VI, 2.2.1
Description and drawings C-IX, 1.5
Different drawings for different Contracting States G-IV, 6
Drawings of lines and strokes A-IX, 7.1
Errors in the description, claims anddrawings H-VI, 2.1.1.1
Examination of the description and/or
drawings H-IV, 5.4.2
Executing of drawings A-IX, 7Form A-III, 13.2
Form and content F-II, 5.1
General layout of drawings A-IX, 5Graphic forms of presentation considered as
drawings A-IX, 1
Graphic forms of presentation not considered as
drawings A-IX, 11Grouping of drawings A-IX, 2.1
Height of the numbers and letters in thedrawings A-IX, 7.5.3
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.9
Late filing of missing drawings or missing parts of thedescription A-II, 5, A-II, 5.1, A-II, 5.2
Missing parts of description, missing drawings orcorrection of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2
Missing parts of the description or missing drawings filed
under Rule 56 after the date of filing H-IV, 2.2.2
Numbering of sheets of drawings A-IX, 4.2
Photographs F-II, 5.3

Alphabetical keyword index - 23
Presentation of the sheets of drawings A-IX, 4
Printing quality F-II, 5.2
Prohibited matter A-III, 8.1, A-IX, 6, B-IV, 1.2
Publication of drawings in the abstract B-X, 7, F-II, 2.4
Reference in the description to drawings F-II, 4.7,
F-IV, 4.17
Representation of drawings A-IX, 2
Reproducibility of drawings A-IX, 2.2
Scale of drawings A-IX, 7.4
Technical drawings A-IX, 1.1
Text matter on drawings A-IX, 8
Use of the description and/or drawings to establish
definitions of clear terms given a definition different fromtheir usual meaning B-III, 3.2.4
Use of the description and/or drawings to establish
definitions of unclear terms not defined in theclaims B-III, 3.2.3
Use of the description and/or drawings to identify thetechnical problem B-III, 3.2.2
Withdrawal of late-filed missing drawings or missing partsof the description A-II, 5.5
Due date A-X, 5.1.1
Due date for fees A-X, 5
Due date for specific fees A-X, 5.2
Claims fees A-X, 5.2.5
Examination fee and designation fee A-X, 5.2.2
Fee for grant and publishing A-X, 5.2.3
Fees for limitation/revocation, opposition, appeal,
petition for review A-X, 5.2.6
Fees payable for procedural and otherrequests A-X, 5.2.7
Filing fee and search fee A-X, 5.2.1
Renewal fees A-X, 5.2.4
Duration of the periods to be specified by the EPO on
the basis of EPC provisions E-VIII, 1.2
Duties E-XIII, 3.2
Allocation of duties and appointment of members of the
opposition division D-II, 3
Allocation of individual duties D-II, 7
Composition and duties of the examining
division E-XIII, 3
Duties and powers of members D-II, 6

E
Earlier filed amendments or comments E-IX, 3.3.1
Early processing E-IX, 2.8
Economic effects G-II, 4.1.3
Effect of change in priority date E-VIII, 1.5
Effectiveness and efficiency of the search B-III, 2.2
Elected Office
EPO as designated or elected Office E-IX, 2

Alphabetical keyword index - 24

March 2023

Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9
Electronic notification E-II, 2.4
Electronic version of document cited B-X, 11.2
Employees of the EPO (Language used by ~)Reduction and refunds of fees in respect of international(PCT) applications E-IX, 2.6
Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9
Erroneous elements filed under Rule 20.5bis
PCT C-III, 1.3

E-V, 5

Enabling disclosure G-IV, 2
Enabling disclosure of a prior-art document G-VI, 4
End of search B-IV, 2.6
Enforcement of the fixing of costs D-IX, 3
Enlarged Board of Appeal (Stay of proceedings whena referral to the ~ is pending) E-VII, 3
Enlargement of the examining division C-VIII, 7
Enquiries E-VIII, 7
Entitlement
Entitlement for certain designated states only C-IX, 2.4
Entitlement of parties to put questions at
hearings E-IV, 1.6.7
Entitlement to file the request E-VIII, 3.1.2
Entitlement to oppose D-I, 4
Entitlements of witnesses and experts E-IV, 1.10
Details of the entitlements of witnesses andexperts E-IV, 1.10.3
Expenses for travel and subsistence E-IV, 1.10.1
Loss of earnings, fees E-IV, 1.10.2
Entry into the European phase E-IX, 2.1
Copy of the international application E-IX, 2.1.2
Filing fee, designation fee, request for examination andsearch fee E-IX, 2.1.4
Initial processing and formal examination E-IX, 2.1.2
Requirements for entry into the European
phase E-IX, 2.1.1
Translation of the international application E-IX, 2.1.3
EPO as designated or elected Office E-IX, 2
Communication to the EPO as a designatedOffice E-IX, 2.7
Early processing E-IX, 2.8
Entry into the European phase E-IX, 2.1
Inspection of files E-IX, 2.10
Instructions in Chapter A-II ("Filing of applications andexamination on filing") E-IX, 2.2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3
Instructions in Chapter A-IV ("Special
provisions") E-IX, 2.4
Instructions in Chapter A-VI ("Publication of application;
request for examination and transmission of the dossier toexamining division") E-IX, 2.5

Erroneously filed application documents or parts
under Rule 56a H-IV, 2.2.3
ErrorsError margins in numerical values G-VI, 8.1
Errors in documents A-V, 3, A-VI, 1.3, H-VI, 2
Correction of errors in documents filed with the
EPO A-V, 3, H-VI, 2
Errors in prior-art documents G-IV, 9
Errors in publication H-VI, 6
Errors in the description, claims anddrawings H-VI, 2.1.1.1
Errors in the search report B-IV, 3.3
Essential features F-IV, 4.5
Definition of essential features F-IV, 4.5.2
Examples concerning essential features F-IV, An.
Generalisation of essential features F-IV, 4.5.3
Implicit features F-IV, 4.5.4
Objections arising from missing essential
features F-IV, 4.5.1
Essentially biological processes for the production ofplants or animals G-II, 5.4.2
Plant and animal varieties or essentially biologicalprocesses for the production of plants oranimals G-II, 5.4
Establishing the publication date G-IV, 7.5.1
Establishment and issue of the technicalopinion E-XIII, 5.4
Euro PCT
Euro-PCT applications C-II, 1.2, C-III, 1.2, C-III, 1.3,
F-V, 7, G-IV, 5.2, H-IV, 4.2
Amendments in the case of non-unity further
procedural aspects concerning Euro-PCT
applications H-II, 6.4
Amendments relating to unsearched matter H-IV, 4.2
Conflict with other European applications G-IV, 5.2
Euro-PCT applications entering the European phase
before 1 April 2009 A-III, 11.3.9
International applications (Euro-PCT
applications) C-IX, 4International applications with supplementary
search F-V, 7.2
International applications without supplementary
search F-V, 7.1
International preliminary examination report(IPER) F-V, 7.3
Request for examination C-II, 1.2

March 2023
Restricted IPER F-V, 7.4
Specific rules applicable to Euro-PCT
applications B-III, 3.3.2
Unity of invention F-V, 7
Euro-PCT applications entering the European
phase A-III, 11.2.5
Euro-PCT applications entering the European phase
before 1 April 2009 A-III, 11.3.9
Euro-PCT cases F-III, 6.5
European applications C-III, 1.1
Application documents filed under Rule 56 or Rule
56a C-III, 1.1.1
Claims filed after accordance of a date offiling C-III, 1.1.2
Conflict with other European applications G-IV, 5
Published European applications as "E"
documents B-VI, 4.1.1
Search for conflicting European applications C-IV, 7.1
European divisional application A-IV, 1, A-VII, 1.3
Authorisations A-IV, 1.6
Claiming priority A-IV, 1.2
Date of filing of a divisional application A-IV, 1.2
Designation of Contracting States A-IV, 1.3.4
Designation of the inventor A-IV, 1.5
European divisional applications other formalities
examination A-IV, 1.7
Fees A-III, 11.2.1, A-III, 13.1, A-IV, 1.3.4, A-IV, 1.4,
A-IV, 1.4.1, A-IV, 1.4.3
Filing A-III, 14, A-IV, 1.1
Filing a divisional application A-IV, 1.3
Inspection of files A-XI, 2.5
Language A-IV, 1.3.3, A-VII, 1.3
Search, publication and request for examination ofdivisional applications A-IV, 1.8
European patent
Accelerated prosecution of European patentapplications E-VIII, 4
Adherence to the text of the European patent submitted orapproved by the patent proprietor D-VI, 2
Amendments D-VIII, 1.4.1
Certificate A-XI, 5.1, C-V, 12
Claims fees payable before the grant of the European
patent A-X, 7.3.2
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Consultation of the European Patent Register A-XI,
A-XI, 4
Content of a European patent application (other thanclaims) F-II
Conversion into a national patent A-IV, 6
Designation of the inventor A-VI, 1.3
Documents filed after filing the European patentapplication A-VIII, 3.1
Documents forming part of the European patentapplication A-VIII, 3.2
Documents making up the European patentapplication A-VIII, 2.1

Alphabetical keyword index - 25
European patent application
European patent applications filed before 1 April
2009 A-III, 11.3
European patent applications filed on or after 1 April
2009 A-III, 11.2
European Patent Bulletin A-III, 5.2, C-V, 13
Extension and validation of European patent applications
and patents to/in states not party to the EPC A-III, 12
Factors affecting the unity of the European
patent D-VII, 3.2
Grounds for opposition D-III, 5
Indication that a European patent is sought A-II, 4.1.1
Infringement E-XIII, 1
Inspection of files A-XI, 1, A-XI, 2.3
Limitation of the option to withdraw the European patentapplication A-IV, 2.3
Maintenance of the European patent as
amended D-VIII, 1.4
Opposition D-I, 2, E-XIV, 4
Payment or transfer to a bank account held by theEuropean Patent Organisation A-X, 4.1
Preclassification, IPC and CPC classification of European
patent applications B-V
Preparation of a decision to maintain a European patent inamended form D-VI, 7.2
Publication C-V, 10, C-V, 11
Register of European Patents A-XI, 1
Rejection of the opposition D-VIII, 1.3
Request from a national court for a technical opinion
concerning a European patent E-XIII
Revocation of the European patent D-VIII, 1.2
Statement in the decision of the amended form of theEuropean patent D-VIII, 1.4.2
Subject-matter of the European patent extending beyond
the original disclosure D-V, 6
Text D-VI, 2.1, E-X, 2.2
Transfer during the opposition period or during opposition
proceedings E-XIV, 4
Transfer of the European patent E-XIV, 4
Transfer of the European patent application E-XIV, 3
Unity D-VII, 3.1
Unity of the European patent D-VII, 3
European patent application
Abstract F-II, 1
Accelerated prosecution of European patentapplications E-VIII, 4
Additional fee A-III, 13.2
Amino acid sequences A-III, 1.2
Application documents A-III, 13.2
Assignment E-XIV, 3
Biological material A-III, 1.2, A-IV, 4.1.1, A-IV, 4.2,
F-III, 6.3
Claims (Art. 84 and formal requirements) F-IV
Claims fees A-III, 16.2
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Content of a European patent application (other thanclaims) F-II
Conversion into a national patent application A-IV, 6

Alphabetical keyword index - 26
Date of filing A-IV, 1.2.1
Deficiencies A-II, 4.1.4
Designation of the inventor A-VI, 1.3
Disclosure of the invention A-IV, 4.2
Documents filed after filing the European patentapplication A-VIII, 3.1
Documents forming part of the European patentapplication A-VIII, 3.2
Documents making up the European patentapplication A-VIII, 2.1
Drawings F-II, 1, F-IV, 1, F-VI, 3.4, G-IV, 3
European patent applications filed before 1 April
2009 A-III, 11.3
European patent applications filed on or after 1 April
2009 A-III, 11.2
Examination C-II, 1
Extension and validation of European patent applications
and patents to/in states not party to the EPC A-III, 12
Filing A-IV, 1.1
Filing fee A-III, 13.1, A-III, 13.2, A-III, 16.2
Filing of the translation A-III, 13.1, A-III, 16.2, A-IV, 1.3.3,
A-VII, 1.3, A-VII, 7, A-X, 9.2.1
Further processing A-III, 5.4, A-IV, 5, A-VI, 2.3, C-II, 1,
C-II, 1.1, E-VIII, 2
Inspection of files A-XI, 1, A-XI, 2.3
International application as European patentapplication E-IX, 2.5.1
Limitation of the option to withdraw the European patentapplication A-IV, 2.3
Nucleotide sequences A-III, 1.2
Persons entitled to file European patentapplication A-II, 2
Preclassification, IPC and CPC classification of European
patent applications B-V
Priority F-VI
Provisional protection E-IX, 2.5.1
Publication E-IX, 2.5.1
Re-establishment of rights A-III, 6.6
Refusal A-III, 16.2
Request A-VI, 2.2, F-II, 1
Request for examination C-II, 1
Requirements F-II, 1
Search fee A-III, 13.1, A-III, 16.2
State of the art E-IX, 2.5.1
Sufficiency of disclosure F-III
Text E-X, 2.2
Transfer E-XIV, 3, E-XIV, 6.1
Transfer of the European patent application E-XIV, 3
Unity of invention B-II, 4.2, D-V, 2.2, F-V, F-V, 1, F-V, 2
European patent applications filed before 1 April
2009 A-III, 11.3
Amount paid insufficient A-III, 11.3.3
Amount payable A-III, 11.3.7
Application deemed to be withdrawn A-III, 11.3.4
Consequences of non-payment of designation
fees A-III, 11.3.2
Designation fee A-III, 11.3.1
Euro-PCT applications entering the European phase
before 1 April 2009 A-III, 11.3.9

March 2023
Indication of the contracting states A-III, 11.3.6
Request for grant form A-III, 11.3.5
Time limits A-III, 11.3.1
Withdrawal of designation A-III, 11.3.8
European patent applications filed on or after 1 April
2009 A-III, 11.2
Consequences of non-payment of the designation
fee A-III, 11.2.3
Designation fee A-III, 11.2.1
Euro-PCT applications entering the European
phase A-III, 11.2.5
Payment of designation fee A-III, 11.2.2
Time limits A-III, 11.2.1
Withdrawal of designation A-III, 11.2.4
European Patent Bulletin A-III, 5.2, C-V, 13
Mention of the publication of the European search
report A-VI, 2.1
European Patent Office
As receiving Office E-IX, 1
International preliminary examination E-IX, 1
International Searching Authority E-IX, 1
European Patent Organisation (Payment or transfer toa bank account held by the ~) A-X, 4.1
European patent specification
Mention of the inventor A-III, 5.2
New D-VII, 7
Publication C-V, 10, C-V, 11, D-VII, 7
European search report A-VI, 1.3, A-X, 9.3.1, B-II, 4,
B-II, 4.3, B-VII, 2.3, B-X, 4, B-X, 7, C-II, 1.2, C-II, 3.1,
C-IV, 7.3, E-IX, 2.5.2, F-V, 7.1, F-V, 7.2
Application documents for the supplementary European
search report B-II, 4.3.3
Applications for which a supplementary European search
report is prepared E-IX, 3.1, E-IX, 3.2Content of the extended European search report(EESR) B-VIII, 3.3, B-VIII, 4.3
Dispensing with the supplementary European search
report B-II, 4.3.1
Mention of the publication of the European search reportin the European Patent Bulletin A-VI, 2.1
Partial European search report B-VII, 1.1, B-X, 8, F-III, 1
Publication A-VI, 2.4
Reaction to the extended European search report(EESR) B-XI, 8
Separate publication of the European search
report A-VI, 1.5
Subject-matter searched B-VIII, 1, B-VIII, 3, B-X, 8
Supplementary European search report A-X, 9.3.1,
B-II, 4.3, B-VII, 2.3, B-X, 4, B-XI, 2, B-XI, 8, C-II, 1.2,
C-IV, 7.3, E-IX, 3.1, F-V, 7.1, F-V, 7.2
Supplementary European search report isrequired B-II, 4.3.2
Where the invention lacks unity B-VIII, 3.4, B-VIII, 4.5

March 2023

Alphabetical keyword index - 27

European searches B-II, 4.1
Additional European searches B-II, 4.2
Supplementary European searches B-II, 4.3

Taking of evidence on oath E-IV, 3.2.1
Types of evidence E-IV, 4.2
Written evidence C-VII, 4.3

Evaluation of an expert opinion E-IV, 4.7

Evident abuse G-V, 3

Evaluation of an inspection E-IV, 4.8"Ex post facto" analysis G-VII, 8

Evaluation of evidence E-IV, 4
Asking for evidence E-IV, 4.4
Evaluation of an expert opinion E-IV, 4.7
Evaluation of an inspection E-IV, 4.8
Evaluation of the testimony of a witness E-IV, 4.5
Evaluation of the testimony of parties E-IV, 4.6
Examination of evidence E-IV, 4.3
Types of evidence E-IV, 4.2

Examination C-II, 1
Abstract in examination F-II, 2.7
Accelerated examination E-VIII, 4.2
Additional searches during examination C-IV, 7.3
Amendments not admitted and/or not allowable,
examination resumed C-V, 4.7
Amendments not admitted and/or not allowable,
examination resumed no agreement reached on atext C-V, 4.7.3
Auxiliary requests in examination proceedings H-III, 3.3
Basis for substantive examination E-IX, 4.3.2
Basis for the examination D-VI, 2.1, D-X, 4.2
By the examining division A-I, 2, A-III, 3.2, A-VI, 2.4,
C-II, 1
Compliance of amendments with other EPC requirements
in examination proceedings H-IV, 5.2
Dealing with different texts in examination H-III, 4.1
Different text where a transfer of right takes placepursuant to Art. 61 in examination
proceedings H-III, 4.3.1
European divisional applications other formalities
examination A-IV, 1.7
Examination as to formal requirements A-III, A-III, 3.2
Abstract A-III, 10
Claim to priority A-III, 6
Claims fee A-III, 9
Correction of deficiencies A-III, 16
Designation of contracting states A-III, 11
Designation of inventor A-III, 5
Extension and validation of European patentapplications and patents to/in states not party to the
EPC A-III, 12
Filing and search fees A-III, 13
Late filing of claims A-III, 15
Physical requirements A-III, 3
Prohibited matter A-III, 8
Representation A-III, 2
Request for grant A-III, 4
Title of the invention A-III, 7
Translation of the application A-III, 14
Examination as to personal particulars E-IV, 1.6.5
Examination as to res gestae E-IV, 1.6.6
Examination by the EPO of its own motion D-V, 2.2, E-VI,
E-VI, 1
External complaints E-VI, 4
Late-filed submissions E-VI, 2
Limits on the obligation to undertake
examination E-VI, 1.2
Observations by third parties E-VI, 3
Examination fee A-VI, 2.2, A-VI, 2.5, A-X, 10.2.3, C-II, 1,
C-II, 1.1
Examination fee and designation fee A-X, 5.2.2

Evaluation of prior art documents cited in search
report and late priority claim C-III, 7
Evaluation of the testimony of a witness E-IV, 4.5
Evaluation of the testimony of parties E-IV, 4.6
Evidence
Arguments and evidence submitted by theapplicant G-VII, 11
Asking for evidence E-IV, 4.4Conservation of evidence E-IV, 2
Costs arising from oral proceedings or taking ofevidence E-IV, 1.9
Costs of taking evidence E-IV, 3.5
Decision on the request and the taking ofevidence E-IV, 2.4
Documents filed as evidence A-VII, 3.4
Evaluation of evidence E-IV, 4
Evidence taken by a competent court E-IV, 3.2.2
Examination of evidence E-IV, 4.3
Facts, evidence or amendments introduced at a latestage E-III, 8.6
Facts, evidence or grounds not submitted in duetime E-VI
Language A-VII, 3.4, A-VII, 5, E-VI, 3
Language used in the taking of evidence E-V, 4
Means of evidence E-IV, 1.2
Means of giving or taking evidence E-IV, 3.2
Minutes of taking of evidence E-IV, 1.7
New facts and evidence E-VI, 2.2.1
Not submitted in due time E-VI, 2, E-VI, 2.2.1
Order to take evidence E-IV, 1.4
Producing evidence C-VII, 4.2
Request for the conservation of evidence E-IV, 2.2
Taking and conservation of evidence E-IV
Taking of evidence C-VII, 4, D-VI, 1, D-VI, 7.1, E-IV, 1.1,
E-IV, 1.3, E-IV, 2.4
Taking of evidence by an appointed person E-IV, 3.6
Taking of evidence by courts or authorities of thecontracting states E-IV, 3
Taking of evidence by the departments of the
EPO E-IV, 1

Alphabetical keyword index - 28
Reduction A-X, 9.2.1
Reduction in examination fee A-VI, 2.6, A-X, 9.2.3
Reduction of the examination fee where theinternational preliminary examination report is being
drawn up by the EPO A-X, 9.3.2
Refund A-VI, 2.5, A-X, 10.2.3, C-II, 1.1
Refund of examination fee A-VI, 2.5, A-X, 10.2.3
Examination for deficiencies in the notice of
opposition D-IV, 1.2
Deficiencies which, if not remedied, lead to the
opposition being deemed not to have been
filed D-IV, 1.2.1
Deficiencies which, if not remedied, lead to the
opposition being rejected as inadmissible D-IV, 1.2.2
Examination for deficiencies in the notice of oppositionand communications from the formalities officer arisingfrom this examination D-IV, 1
Forwarding of the notice of opposition to the formalities
officer D-IV, 1.1
Issue of communications by the formalities officer as aresult of examination for deficiencies D-IV, 1.3
Notifications to and observations by the patent
proprietor D-IV, 1.5
Subsequent procedure D-IV, 1.6
Subsequent procedure in the event of deficiencies
which may no longer be remedied D-IV, 1.4
Examination for deficiencies in the request D-X, 2
Deficiencies which lead to the request being deemed
not to have been filed D-X, 2.1
Deficiencies which, if not remedied, lead to the request
being rejected as inadmissible D-X, 2.2
Examination of a divisional application C-IX, 1.4
Examination of amendments C-IV, 5
Examination of amendments as to formalities A-V, 2.2
Examination of evidence E-IV, 4.3
Examination of novelty G-VI, 7First or further medical use of known
products G-VI, 7.1
Second non-medical use G-VI, 7.2
Examination of observations by third parties C-VII, 6
Examination of oppositions D-II, 4.1
Examination of replies and further stages of
examination C-IV
Admissibility of amendments made by theapplicant C-IV, 6
Extent of examination of replies C-IV, 2
Further action upon examination of replies C-IV, 3
General procedure C-IV, 1
Later stages of examination C-IV, 4
New submissions in reply to summons C-IV, 8
Search-related issues in examination C-IV, 7
Examination of the admissibility of an intervention andpreparations in the event of an intervention D-IV, 5.6
Examination of the description and/or
drawings H-IV, 5.4.2
Examination of the grounds for opposition D-V, 2.2
Examination of the opposition during oralproceedings D-VI, 6
Examination of the priority document A-III, 6.4

March 2023
Examination of the request for grant form A-III, 4.2
Examination of the request for grant form further
requirements laid down by Rule 41(2) A-III, 4.2.3
Information on the applicant A-III, 4.2.1
Signature A-III, 4.2.2
Examination on filing A-II, 4, A-III, 3.2, C-II, 1
Filing of applications and examination on filing A-II
Instructions in Chapter A-II ("Filing of applications andexamination on filing") E-IX, 2.2
Minimum requirements for according a date offiling A-II, 4.1
Examination practice G-II, 2
Examination procedure E-IX, 4Admissibility in the examination procedure H-II, 2
Admissibility in the examination procedure after receiptof the first communication - Rule 137(3) H-II, 2.3
Admissibility in the examination procedure after receiptof the search report - Rule 137(2) H-II, 2.2
Admissibility in the examination procedure at anadvanced stage of the proceedings H-II, 2.4
Admissibility in the examination procedure before
receipt of the search report - Rule 137(1) H-II, 2.1
Admissibility in the examination procedure further
requests for amendment after approval H-II, 2.6
Examination procedure at least one communication in
examination E-IX, 4.1
Examination procedure no examination of multiple
inventions in EP phase E-IX, 4.2
Substantive examination of a Euro-PCT applicationaccompanied by an IPER E-IX, 4.3
Examination proceedings (ex parte) E-III, 8.5.1.2
Examining division resumes examination after approval of
the text C-V, 6
Examining division resumes examination after approval of
the text further communication under Rule 71(3) C-V, 6.2
Extent of the examination D-V, 2
Filing fee, designation fee, request for examination andsearch fee E-IX, 2.1.4
Final stage of examination C-V
First stage of examination C-III
Formal requirements to be met before the division starts
substantive examination C-II
Further action upon examination of replies further action
where a request for a translation of the priority application
was sent earlier in examination proceedings C-IV, 3.1
Influencing the speed of examination proceedings C-VI, 2
Initial processing and formal examination E-IX, 2.1.2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3
Instructions in Chapter A-VI ("Publication of application;
request for examination and transmission of the dossier toexamining division") E-IX, 2.5
International preliminary examination E-IX, 1, E-IX, 4.3.3
International preliminary examination report(IPER) F-V, 7.3
Invitation to file the translation before
examination A-III, 6.8.1
Invitation to file the translation in
examination/opposition A-III, 6.8.2

March 2023
Late-filed requests after summons to oral proceedings in
examination H-II, 2.7
Minutes as the first communication in
examination C-VII, 2.5
Opposition cases with different texts where a transfer ofrights by virtue of a final decision pursuant to Art. 61 takes
place in examination proceedings H-III, 4.3.3
Other procedures in examination C-VII
Preliminary examination E-XIII, 5.2
Preparation of substantive examination D-IV, 5
Procedure for the examination of the opposition D-VI
Procedure in examination proceedings E-III, 8.3.3.3,
E-III, 8.7.2
Procedure in the case of lack of unity during substantive
examination F-V, 5
Procedure up to substantive examination D-IV
Purpose of examination C-I, 4
Request for examination C-II, 1, E-IX, 2.5.2
Request for examination and transmission of the dossier
to examining division A-VI, A-VI, 2
Response filed before first communication in
examination C-II, 3
Responsibility for formalities examination A-I, 2
Scope of the examination D-X, 4.3
Search and substantive examination B-II, 1
Search at the examination stage C-IV, 7.4
Search, publication and request for examination ofdivisional applications A-IV, 1.8
Standard marks for indicating amendments or corrections
by the divisions further ways to accelerate
examination C-VI, 3
Substantive examination (limitation) D-X, 4
Substantive examination (limitation) further stages of theexamination D-X, 4.4
Substantive examination of opposition D-V
Summons to oral proceedings as the first action in
examination C-III, 5
Third-party observations during the examination D-X, 4.5
Time limit for filing the request for examination A-VI, 2.2
Time limits and acceleration of examination C-VI
Use of Rule 137(4) for amendments filed during oralproceedings in examination E-III, 8.8
When can summons to oral proceedings be issued in
substantive examination? E-III, 5.1
When does the examining division resume examination
after approval? C-V, 6.1
Examining
Examining division proposes amendments in second Rule71(3) communication C-V, 4.6.3
Examining division resumes examination after approval of
the text C-V, 6
Crediting of fees under Rule 71a(5) C-V, 6.3
Examining division resumes examination after
approval of the text further communication under Rule71(3) C-V, 6.2
When does the examining division resume
examination after approval? C-V, 6.1
Examining divisions, composition C-VIII, 7
Examining the validity of a right to priority F-VI, 2.1

Alphabetical keyword index - 29
Example 1 G-VII, 5.4.2.1
Example 2 G-VII, 5.4.2.2
Example 3 G-VII, 5.4.2.3
Example 4 G-VII, 5.4.2.4
Example 5 G-VII, 5.4.2.5
Example of the accessibility of objects
used G-IV, 7.2.4
Example of the inaccessibility of aprocess G-IV, 7.2.5
Examples concerning essential features F-IV, An.
Examples no amended claims filed with theappeal E-XII, 7.4.1
Examples of applying the COMVIK
approach G-VII, 5.4.2
Example 1 G-VII, 5.4.2.1
Example 2 G-VII, 5.4.2.2
Example 3 G-VII, 5.4.2.3
Example 4 G-VII, 5.4.2.4
Example 5 G-VII, 5.4.2.5
Examples of further technical effects G-II, 3.6.1
Examples of quotation for non-patent
literature F-II, 4.3.1.1
Examples of quotation for patent
literature F-II, 4.3.1.2
Examples of the exercise of discretion under Rule137(3) H-II, 2.3.1
Rule 137(3) in conjunction with Art. 123(2) H-II, 2.3.1.2
Rule 137(3) in conjunction with Art. 83 H-II, 2.3.1.1
Rule 137(3) in conjunction with Art. 84 - missing essential
feature H-II, 2.3.1.3
Rule 137(3) in conjunction with auxiliary
requests H-II, 2.3.1.4
Examples relating to the requirement of inventive
step G-VII, An.
Application of known measures? G-VII, An., 1
Obvious combination of features? G-VII, An., 2
Obvious selection? G-VII, An., 3
Overcoming a technical prejudice? G-VII, An., 4
Exceptional case where amendments must be
admitted H-II, 2.5.3
Exceptions D-VII, 1.2
Exceptions from sections 1 and 2 E-V, 3
Exceptions to patentability G-II, 4
Considerations relating to specific exclusions from andexceptions to patentability B-VIII, 2
Matter contrary to "ordre public" or morality G-II, 4.1

Alphabetical keyword index - 30
Surgery, therapy and diagnostic methods G-II, 4.2
Exceptions where a reply to the Rule 161(1) invitation is
not required E-IX, 3.3
Earlier filed amendments or comments E-IX, 3.3.1
Positive WO-ISA, SISR or IPER E-IX, 3.3.2
Rule 161 communication issued before 1 April
2010 E-IX, 3.3.3
Voluntary reply to Rule 161(1)communication E-IX, 3.3.4
Exclusions and exceptions for biotechnologicalinventions G-II, 5
List of exceptions (Rule 28) G-II, 5.3
Excision of other inventions C-III, 3.3
Exclusions and exceptions for biotechnologicalinventions G-II, 5
Antibodies G-II, 5.6
General remarks and definitions G-II, 5.1
List of exceptions (Rule 28) G-II, 5.3
Microbiological processes G-II, 5.5
Patentable biotechnological inventions G-II, 5.2
Plant and animal varieties or essentially biologicalprocesses for the production of plants oranimals G-II, 5.4
Executing of drawings A-IX, 7
Cross-sections A-IX, 7.3
Drawings of lines and strokes A-IX, 7.1
Numbers, letters and reference signs A-IX, 7.5
Scale of drawings A-IX, 7.4
Shading A-IX, 7.2
Variations in proportions A-IX, 7.6

March 2023
Extension and validation of European patent applications
and patents to/in states not party to the EPC A-III, 12
Extension and validation deemed
requested A-III, 12.4
National register A-III, 12.5
Time limit for payment of extension and validation
fees A-III, 12.2
Withdrawal of the extension or validation
request A-III, 12.3
Extension and validation states A-IV, 1.3.5
Extension of a time limit E-VIII, 1.6
Extension of time limits set by the EPO under Rule
132 E-VIII, 1.6.1
Extension of periods under Rule 134 E-VIII, 1.6.2
Extension of periods under Rule 134(1) E-VIII, 1.6.2.1
Extension of periods under Rule 134(2) and Rule134(5) E-VIII, 1.6.2.2
Scope of application of Rule 134 E-VIII, 1.6.2.3
Extension of the search B-VI, 5.3
Extension to and validation in states not party to the
EPC General Part, 7ExtentExtent of examination of replies C-IV, 2
Extent of first analysis for generally deficient
applications B-XI, 3.4
Extent of generalisation F-IV, 6.2
Extent of the examination D-V, 2
Examination of the grounds for opposition D-V, 2.2
Extent to which the patent is opposed D-V, 2.1
Extent of the formalities officer's obligation to issue theabove communications D-IV, 1.3.3
External complaints E-VI, 4

Exhibitions
Certificate of exhibitions A-IV, 3.1, G-V, 4
International exhibitions G-V, 4

Extracts (Summaries, ~ or abstracts)

Expenses for travel and subsistence E-IV, 1.10.1

F

Experts
Commissioning of experts E-IV, 1.8
Details of the entitlements of witnesses andexperts E-IV, 1.10.3
Entitlements of witnesses and experts E-IV, 1.10
Hearing of parties, witnesses and experts E-IV, 1.6
Reimbursement for witnesses and experts E-IV, 1.10.1,
E-IV, 1.10.2
Reimbursement of expenses E-IV, 1.10.1, E-IV, 1.10.2
Summoning of parties, witnesses and experts E-IV, 1.5
Taking of evidence D-VI, 1, E-IV, 1.3
Witnesses and experts not summoned E-IV, 1.6.2
Expression "in" F-IV, 4.15
Extension H-IV, 3.1, H-V, 3.4, H-V, 7
Assessment of impermissible extension of the protection
conferred H-IV, 3.4
Designation fee(s), extension and validation fees C-II, 4

B-X, 11.5

Factors affecting the unity of the European
patent D-VII, 3.2
Facts
Facts and evidence
New facts and evidence E-VI, 2.2.1
Not submitted in due time E-VI, 2
Facts and submissions E-X, 1.3.2, E-X, 2.4
Decisions taken by the examining or opposition
divisions E-X, 2.4
Form and content E-X, 1.3.2
Facts, evidence or amendments introduced at a latestage E-III, 8.6
Facts, evidence or grounds not submitted in duetime E-VI
Examination by the EPO of its own motion E-VI, 1
External complaints E-VI, 4
Late-filed submissions E-VI, 2
Observations by third parties E-VI, 3

March 2023
Failure to reply in time B-VIII, 4.2.1
Failure to reply in time or no reply B-VIII, 3.2.1
Failure to respond within a time limit E-VIII, 1.8
Time limits and loss of rights resulting from failure to
respond within a time limit E-VIII, 1
Features described in a document cross-referenced in
the description H-IV, 2.2.1
Features of the invention F-IV, 2.1, F-IV, 2.2,
F-IV, 4.5.1, F-V, 2, G-I, 1
Fees A-IV, 1.4, A-X
Additional search fees paid C-III, 3.2.2
Administrative fees A-XI, 1, A-XI, 2.2, E-XIV, 3
Applicant has not paid all additional searchfees B-VII, 1.2.3
Calculation of claims fees H-III, 5
Cases under Rule 62a where claims fees are notpaid B-VIII, 4.4
Claims fees due in response to Rule 71(3)communication C-V, 1.4
Claims fees payable before the grant of the European
patent A-X, 7.3.2
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Crediting of claims fees A-X, 11.2
Crediting of fees paid voluntarily C-V, 4.2
Crediting of fees under Rule 71a(5) A-X, 11
Crediting of fees under Rule 71a(5) further processing fee
and crediting of fees A-X, 11.4
Currencies A-X, 3
Date considered as date on which payment ismade A-X, 4
Designation fee(s), extension and validation fees C-II, 4
Due date for fees A-X, 5
Fee for grant and publishing A-X, 5.2.3, C-V, 4.8.2
Crediting of the fee for grant and publishing A-X, 11.1
Due date for specific fees A-X, 5.2.3
Refund of the fee for grant andpublishing A-X, 10.2.5, C-V, 9
Separate crediting of the fee for grant and publishingand claims fees A-X, 11.3
Fee payments lacking a legal basis A-X, 10.1.1
Fees for limitation/revocation, opposition, appeal, petition
for review A-X, 5.2.6
Fees paid by bank transfer - application of Art. 7(3) and (4)RFees A-X, 6.2.1
Fees payable for procedural and otherrequests A-X, 5.2.7
Fees to be paid within the second Rule 71(3)period C-V, 4.8
Claims fees C-V, 4.8.1
Fees, non-payment B-III, 3.4
Fees, refund A-X, 10.2.1, C-III, 3.4
Filing and search fees A-III, 13
Filing, search and designation fee(s) A-IV, 1.4.1
Indication of the purpose of payment in the case of claims
fees A-X, 7.3

Alphabetical keyword index - 31
Indication of the purpose of the payment in the case ofdesignation fees A-X, 7.2
Invitation to pay additional search fees combined withinvitation to restrict the scope of the search C-III, 3.2.3
Invitation to pay further search fees B-VII, 1.2
Late payment of fees A-X, 6.2
Limitation to searched invention no additional search fees
paid C-III, 3.2.1
Loss of earnings, fees E-IV, 1.10.2
Methods of payment A-X, 2
No deferred payment of fees, no legal aid, nodiscretion A-X, 8
Payment in due time A-X, 6
Payment of fees A-X, 2
Purpose of payment A-X, 7
Reduction and refunds of fees in respect of international(PCT) applications E-IX, 2.6
Reduction of fees A-III, 13.1, A-X, 9
Refund of additional search fees C-III, 3.4
Refund of fees A-X, 10
Reimbursement of appeal fees E-XII, 7.3
Renewal fees A-IV, 1.4.3
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filing oftranslations necessary C-V, 4.1
Time limit for payment of extension and validation
fees A-III, 12.2
Figure accompanying the abstract A-III, 10.3,
A-IX, 2.3, F-II, 2.4
Abstract A-III, 10.3
Representation of drawings A-IX, 2.3
Figures (Numbering of ~)A-IX, 5.2

File inspection E-XIII, 5.5
Conducting file inspections A-XI, 2.2
Documents open to file inspection A-XI, 2.1
File inspection before publication of theapplication A-XI, 2.5
Restrictions to file inspection A-XI, 2.3
Files
Certified copies of documents from the files or of otherdocuments A-XI, 5.1
Communication of information contained in thefiles A-XI, 1, A-XI, 3
Inspection of files A-XI, A-XI, 1, A-XI, 2, A-XI, 2.1,
E-IX, 2.10
FilingAccorded date of filing and content of the application still
subject to review G-IV, 5.1.2
Admissible languages on filing A-VII, 1
Amendment by submitting missing documents or by filingreplacement pages H-III, 2.2
Applications containing claims filed after the accorded
date of filing B-XI, 2.2
Citation of prior art in the description after the filingdate H-IV, 2.2.7

Alphabetical keyword index - 32
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Claims filed after accordance of a date offiling C-III, 1.1.2
Claims filed after the date of filing H-IV, 2.2.4
Correct application documents based on priority
application, no change in the filing date A-II, 6.4
Date of filing A-II, 4.1.5, A-IV, 1.2.1, G-VII, 2
Date of filing of a divisional application A-IV, 1.2
Date of filing or priority date as effective date G-IV, 3
Determination of filing date in the case of erroneously filed
elements or parts of the international
application E-IX, 2.9.4
Documents filed after filing the European patentapplication A-VIII, 3.1
Filing a divisional application A-IV, 1.3, C-III, 3.3
Designation of contracting states A-IV, 1.3.4
Extension and validation states A-IV, 1.3.5
Language requirements A-IV, 1.3.3
Request for grant A-IV, 1.3.2
Where and how to file a divisional
application? A-IV, 1.3.1
Filing a new application A-IV, 2.5
Filing a new priority claim A-III, 6.5.1
Filing and priority date B-VI, 5
Documents published after the filing date B-VI, 5.4
Doubts as to the validity of the priority claim B-VI, 5.3
Extension of the search B-VI, 5.3
Intermediate documents B-VI, 5.2
Matters of doubt in the state of the art B-VI, 5.6
Non-prejudicial disclosures B-VI, 5.5
Verification of claimed priority date(s) B-VI, 5.1
Filing and search fees A-III, 13
Additional fee (if application documents comprise morethan thirty-five pages) A-III, 13.2
Additional fee for divisional applications A-III, 13.3
Payment of fees A-III, 13.1
Filing by reference A-VII, 1.2
Filing date as effective date F-VI, 1.1
Filing date changes A-II, 5.3, A-II, 6.3
Correction of erroneously filed application documentsor parts A-II, 6.3
Late filing of missing drawings or missing parts of thedescription A-II, 5.3
Filing fee A-III, 13.1, A-III, 13.2, A-III, 16.2, A-VII, 1.1,
A-X, 9.2.1
Additional fee as part of filing fee A-III, 13.2,
A-III, 13.3
European divisional application A-III, 13.1, A-IV, 1.4.1
Filing fee and search fee A-X, 5.2.1
Filing fee, designation fee, request for examination andsearch fee E-IX, 2.1.4
Reduction of the filing fee A-X, 9.2.2
Filing of amended documents in reply to the notice of
opposition D-IV, 5.3
Filing of amendments A-V, 2.1
Filing of applications and examination on filing A-II
Correction of erroneously filed application documentsor parts A-II, 6
Examination on filing A-II, 4

March 2023
Instructions in Chapter A-II ("Filing of applications andexamination on filing") E-IX, 2.2
Late filing of missing drawings or missing parts of thedescription A-II, 5
Persons entitled to file an application A-II, 2
Procedure on filing A-II, 3
Where and how applications may be filed A-II, 1
Filing of applications by delivery by hand or by postal
services A-II, 1.1
Filing of applications by means of electronic
communication A-II, 1.2
Filing of applications by fax A-II, 1.2.1
Filing of applications in electronic form A-II, 1.2.2
Filing of applications by other means A-II, 1.3
Filing of opposition after decision on limitation D-X, 7.2
Filing of subsequent documents A-VIII, 2.5
Filing with a competent national authority A-II, 3.2
Filing, search and designation fee(s) A-IV, 1.4.1
Additional fee for divisional applications of second or
subsequent generations A-IV, 1.4.1.1
First filing A-III, 6.1, A-III, 6.2, E-VIII, 8.1, F-VI, 1.3,
F-VI, 1.4.1
Late filing of claims A-III, 15
Minimum requirements for according a date offiling A-II, 4.1
Missing parts based on the priority application, no change
in filing date A-II, 5.4
Missing parts of the description or missing drawings filed
under Rule 56 after the date of filing H-IV, 2.2.2
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filing oftranslations necessary C-V, 4.1
Sequence listings filed after the date of filing H-IV, 2.2.5
Subsequent filing of documents A-II, 1.4
Time allowed for filing notice of opposition D-III, 1
Time limit for filing the request for examination A-VI, 2.2
Voluntary filing of the translation of the previous
application A-III, 6.8.5
Final decisions on an admissible opposition D-VIII, 1
Maintenance of the European patent as
amended D-VIII, 1.4
Rejection of the opposition D-VIII, 1.3
Revocation of the European patent D-VIII, 1.2
Final stage of examination C-V
Application deemed withdrawn C-V, 3
Approval of the proposed text C-V, 2
Certificate C-V, 12
Communication under Rule 71(3) C-V, 1
Correction of errors in the decision to grant C-V, 7
Decision according to the state of the file C-V, 15
European Patent Bulletin C-V, 13
Examining division resumes examination after approval of
the text C-V, 6
Further processing C-V, 8
Further requests for amendment after approval C-V, 5
Grant of a patent C-V, 2
No reply in time C-V, 3
Publication of the patent specification C-V, 10

March 2023
Refund of the fee for grant and publishing C-V, 9Refusal C-V, 14
Request for amendments or corrections in reply to theRule 71(3) communication C-V, 4Standard marks for indicating amendments or corrections
by the divisions C-V, An.
Withdrawal before publication of the patent
specification C-V, 11First application F-VI, 1.4
Situation in which it has to be checked whether theapplication from which priority is actually claimed is the"first application" within the meaning of Art.
87(1) F-VI, 2.4.4
Subsequent application considered as first
application F-VI, 1.4.1
First communication C-III, 4
Admissibility in the examination procedure after receipt of
the first communication - Rule 137(3) H-II, 2.3
Invitation to file comments and amendments C-III, 4.2
Minutes as the first communication in
examination C-VII, 2.5
Reasoning C-III, 4.1
Response filed before first communication in
examination C-II, 3First or further medical use of known
products G-VI, 7.1
Dependent claims pursuant to Art. 54(5) G-VI, 7.1.5
Diagnostic uses pursuant to Art. 54(5) G-VI, 7.1.3
Products that may be claimed for a further medical
use G-VI, 7.1.1
Surgical uses pursuant to Art. 54(5) G-VI, 7.1.4
Therapeutic uses pursuant to Art. 54(5) G-VI, 7.1.2
First stage of examination C-III
Amendments made by applicants of their own
volition C-III, 2
Evaluation of prior art documents cited in search reportand late priority claim C-III, 7First communication C-III, 4
Missing parts or elements C-III, 1
Requesting information on prior art (not confined topriority) C-III, 6
Summons to oral proceedings as the first action in
examination C-III, 5
Unity of invention C-III, 3
Fixing of costs
Appeals against the decision of the opposition division on
the fixing of costs E-XII, 4
Enforcement of the fixing of costs D-IX, 3
Fixing of costs by the opposition division D-IX, 2.1
Appeal against the fixing of costs by the opposition
division D-IX, 2.2
Procedure for the fixing of costs D-IX, 2Form B-X, 3.1
Decision by means of a standard form C-V, 15.2
Decision on the form of the opinion E-IV, 1.8.1

Alphabetical keyword index - 33
Documents forming part of the European patentapplication A-VIII, 3.2
Examination of the request for grant form A-III, 4.2
Examination of the request for grant form further
requirements laid down by Rule 41(2) A-III, 4.2.3
Filing of applications in electronic form A-II, 1.2.2
Form and content E-X, 1.3, F-II, 5.1
Basic principles of decisions E-X, 1.3
Drawings F-II, 5.1
Facts and submissions E-X, 1.3.2
Order E-X, 1.3.1
Reasoning E-X, 1.3.3
Form and content of claims F-IV, 2
Formulae and tables F-IV, 2.4
Technical features F-IV, 2.1
Two-part form F-IV, 2.2
Two-part form unsuitable F-IV, 2.3
Form and language of the search report B-X, 3
Account of the search B-X, 3.3
Form B-X, 3.1
Language B-X, 3.2
Record of search strategy B-X, 3.4
Form of decisions, communications and notices E-II, 1.3
Form of documents A-VIII, 2
Documents making up the European patentapplication A-VIII, 2.1
Filing of subsequent documents A-VIII, 2.5
Form of documents other documents A-VIII, 2.3
Number of copies A-VIII, 2.4
Replacement documents and translations A-VIII, 2.2
Form of signature A-VIII, 3.3
Form of the opposition D-III, 3.1
Form of the request and applicable time limit E-VIII, 3.1.3
Graphic forms of presentation considered as
drawings A-IX, 1
Graphic forms of presentation not considered as
drawings A-IX, 11
Preparation of a decision to maintain a European patent inamended form D-VI, 7.2
Publication in electronic form only A-VI, 1.4
Request for grant form A-III, 11.3.5
Requirements as to form E-X, 2.3
Statement in the decision of the amended form of theEuropean patent D-VIII, 1.4.2
Time limit and form of appeal E-XII, 6
Two-part form unsuitable no two-part form F-IV, 2.3.1
Two-part form "wherever appropriate" F-IV, 2.3.2
FormalFormal deficiencies B-IV, 1.2
Communications concerning formal deficiencies A-V,
A-V, 1
Formal procedure for limitation when the request isallowable D-X, 5
Formal requirements A-III, 1.1, E-III, 10.1
Claims (Art. 84 and formal requirements) F-IV
Description (formal requirements) F-II, 4
Examination as to formal requirements A-III, A-III, 3.2

Alphabetical keyword index - 34
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3
Formal requirements to be met before the division starts
substantive examination C-II
Allocation of the application C-II, 2
Copy of the search results on the priority or
priorities C-II, 5Designation fee(s), extension and validation
fees C-II, 4
Request for examination C-II, 1
Response filed before first communication in
examination C-II, 3
Formalities check E-XIII, 5.1
Formalities examination
European divisional applications other formalities
examination A-IV, 1.7
Responsibility for formalities examination A-I, 2

March 2023

G
Games G-II, 3.5.2
Schemes, rules and methods for performing mental acts,
playing games or doing business G-II, 3.5
Schemes, rules and methods for playing
games G-II, 3.5.2
General authorisation A-VIII, 1.7
General considerations B-III, 3.3.1, C-VI, 1.1
Amended claims, missing parts (Rule 56) or erroneously
filed application documents or parts (Rule56a) B-III, 3.3.1
Time limits for response to communications from theexaminer C-VI, 1.1
General further checks A-III, 1.2

Format of background art citations F-II, 4.3.1
Examples of quotation for non-patent
literature F-II, 4.3.1.1
Examples of quotation for patent literature F-II, 4.3.1.2

General layout of drawings A-IX, 5
Numbering of figures A-IX, 5.2
Pagesetting A-IX, 5.1
Whole figure A-IX, 5.3

Format of oral proceedings E-III, 1.2

General Part General Part
Contracting states to the EPC General Part, 6
Explanatory notes General Part, 2Extension to and validation in states not party to the
EPC General Part, 7
Preliminary remarks General Part, 1
Summary of the processing of applications and patents atthe EPO General Part, 5Work at the EPO General Part, 4

Formulae and tables F-IV, 2.4
Formulating a search strategy B-IV, 2.2
Formulation of the objective technicalproblem G-VII, 5.2
Formulation of the objective technical problem for claims
comprising technical and non-technicalfeatures G-VII, 5.4.1
Forwarding of applications A-II, 1.6
Forwarding of the notice of opposition to theformalities officer D-IV, 1.1

General principle D-IX, 1.1
General principles in opposition proceedings E-VI, 2.1
General remarks and definitions G-II, 5.1, G-IV, 1
General rule for SI derived units F-II, An. 2, 1.2.1

Functional definition of a pathologicalcondition F-IV, 4.21

General statements, "spirit of the invention", claimlike clauses F-IV, 4.4

Further action upon examination of replies C-IV, 3
Further action upon examination of replies further action
where a request for a translation of the priority application
was sent earlier in examination proceedings C-IV, 3.1

Generalisation of essential features F-IV, 4.5.3

Further processing C-V, 8, E-VIII, 2
Crediting of fees under Rule 71a(5) further processing fee
and crediting of fees A-X, 11.4
Further requests for amendment after
approval C-V, 5
Admissibility in the examination procedure further requests
for amendment after approval H-II, 2.6

Generic disclosure and specific examples G-VI, 5
Grant
Grant and publishing fee C-V, 1.2
Grant of a European patent
Mention in the European Patent Bulletin C-V, 2,
C-V, 13
Request for the grant A-III, 11.1, A-III, 11.3.5,
A-III, 13.2, A-VI, 2.2, F-II, 1
Grant of a patent C-V, 2
Graphic forms of presentation considered as
drawings A-IX, 1
Photographs A-IX, 1.2
Technical drawings A-IX, 1.1

March 2023
Graphic forms of presentation not considered as
drawings A-IX, 11
Chemical and mathematical formulae A-IX, 11.1
Tables A-IX, 11.2

Alphabetical keyword index - 35
"Corresponding documents" B-X, 9.1.2
Languages of the documents cited B-X, 9.1.3
Supplementary European search report B-X, 9.1.4
Identification of invention A-IV, 3.1

Grounds for opposition D-III, 5
Amendments not related to the grounds for
opposition H-II, 3.2
Examination of the grounds for opposition D-V, 2.2
Grouping of drawings A-IX, 2.1
Grouping of inventions F-V, 3.2
Claims for a known substance for a number of distinct
medical uses F-V, 3.2.6
Common dependent claims F-V, 3.2.4
Dependent claims F-V, 3.2.3
Intermediate and final products F-V, 3.2.7
Markush grouping (alternatives in a single
claim) F-V, 3.2.5
Plurality of independent claims in different
categories F-V, 3.2.2
Plurality of independent claims in the same
category F-V, 3.2.1
Guidance to persons heard E-IV, 1.6.3

Identification of relevant passages in prior-art
documents B-X, 9.4
Identification of the patent application and type ofsearch report B-X, 4
Impartiality of the examining or opposition
division E-XI
Implicit disclosure and parameters G-VI, 6
Implicit features F-IV, 4.5.4
Implicit features or well-known equivalents G-VI, 2
Inadmissibility at a later stage D-IV, 5.1
Inclusion in the file of any email exchange C-VII, 3.3
Inclusion of additional features H-V, 3.2
Intermediate generalisations H-V, 3.2.1
Inconsistencies F-IV, 4.3

H
Handwritten amendments in oralproceedings E-III, 8.7
Procedure in examination proceedings E-III, 8.7.2
Procedure in opposition proceedings E-III, 8.7.3
Hatching A-IX, 7.3.2
Hearing
Hearing of parties D-VI, 1
Hearing of parties, witnesses and experts E-IV, 1.6
Entitlement of parties to put questions at
hearings E-IV, 1.6.7
Examination as to personal particulars E-IV, 1.6.5
Examination as to res gestae E-IV, 1.6.6
Guidance to persons heard E-IV, 1.6.3
Hearing of a witness no longer necessary E-IV, 1.6.8
Separate hearings E-IV, 1.6.4
Witnesses and experts not summoned E-IV, 1.6.2
Height of the numbers and letters in thedrawings A-IX, 7.5.3
Higher-ranking request not admissible and/or notallowable C-V, 4.7.1.1

I
Identification of documents in the search
report B-X, 9.1
Bibliographic elements B-X, 9.1.1

Incorrect compound records in online
databases B-VI, 6.5
Incorrect designation A-III, 5.5
Incorrect preclassification B-V, 2.1
Independent and dependent claims B-III, 3.7, F-IV, 3.4
Kinds of claim F-IV, 3.4
Subject of the search B-III, 3.7
Independent claims
Independent claims containing a reference to anotherclaim or to features from a claim of anothercategory F-IV, 3.8
Number of independent claims F-IV, 3.2
Plurality of independent claims in different
categories F-V, 3.2.2
Plurality of independent claims in the same
category F-V, 3.2.1
Indication
Indication of amendments and their basis under Rule137(4) H-III, 2.1
Amendments withdrawn or superseded in the Rule137(4) period H-III, 2.1.2
Rule 137(4) and oral proceedings H-III, 2.1.3
Rule 137(4) communication and response
thereto H-III, 2.1.1
Transitional provisions relating to Rule137(4) H-III, 2.1.4
Indication of the amendments made in the requests and of
their basis H-III, 3.3.1

Alphabetical keyword index - 36
Indication of the contracting states A-III, 11.3.6
Indication of the purpose of payment in the case of claims
fees A-X, 7.3
Claims fees payable before the grant of the European
patent A-X, 7.3.2
Claims fees payable on filing the European patentapplication A-X, 7.3.1
Indication of the purpose of the payment in the case ofdesignation fees A-X, 7.2
Indication that a European patent is sought A-II, 4.1.1
Indicators G-VII, An.
Application of known measures? G-VII, An., 1
Obvious combination of features? G-VII, An., 2
Obvious selection? G-VII, An., 3
Overcoming a technical prejudice? G-VII, An., 4
Secondary indicators G-VII, 10
Industrial application B-VIII, 1, D-III, 5, F-II, 4.9, G-I, 1,
G-II, 5.2, G-III, G-III, 1, G-III, 4
Description (formal requirements) F-II, 4.9
Industrial application vs. exclusion under Art.
52(2) G-III, 3
Method of testing G-III, 2
Patentability G-I, 1, G-III
Sequences and partial sequences of genes G-III, 4
Influencing the speed of examination
proceedings C-VI, 2
Informal nature of consultations C-VII, 2.3
Information A-XI, 1
Communication of information contained in files A-XI,
A-XI, 3
Communication under Rule 71(3) other information in thecommunication under Rule 71(3) C-V, 1.5
Database management systems and information
retrieval G-II, 3.6.4
Information as to means of redress E-X, 5
Information concerning the applicant A-II, 4.1.2
Information modelling, activity of programming andprogramming languages G-II, 3.6.2
Information on prior art B-XI, 9, C-III, 6, E-IX, 2.3.5.2
Requesting information on prior art (not confined topriority) C-III, 6
Information on the applicant A-III, 4.2.1
Information to the public D-I, 8Missing information A-IV, 4.2
Presentation of information G-II, 3.7
Sequence information filed under Rule 56 A-IV, 5.1
Sequence information filed under Rule 56a A-IV, 5.2
Supplementary technical information H-V, 2.3
Infringement, technical opinion for a national court
trying an infringement action E-XIII, 1
Initial processing and formal examination E-IX, 2.1.2
Initiation of exchanges by email C-VII, 3.1

March 2023
Insignificant amounts A-X, 10.1.3
Refund A-X, 10.1.3
Insistence on unallowable amendments H-II, 3.4
Inspection of files A-XI, A-XI, 1, A-XI, 2, A-XI, 2.1,
E-IX, 2.10
Communication of information contained in thefiles A-XI, 3
Conducting file inspections A-XI, 2.2
Confidentiality of the request A-XI, 2.4
Consultation of the European Patent Register A-XI, 4
Documents open to file inspection A-XI, 2.1
Exclusion from inspection of files A-XI, 2.3
File inspection before publication of theapplication A-XI, 2.5
Issuance of certified copies A-XI, 5
Publication of bibliographic data before publication of theapplication A-XI, 2.6
Restrictions to file inspection A-XI, 2.3
Instructions in Chapter
Instructions in Chapter A-II ("Filing of applications andexamination on filing") E-IX, 2.2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3
Abstract E-IX, 2.3.10
Claim to priority E-IX, 2.3.5
Claims fee E-IX, 2.3.8
Designation fee E-IX, 2.3.11
Designation of inventor E-IX, 2.3.4
Drawings E-IX, 2.3.9
Physical requirements E-IX, 2.3.2
Prohibited matter E-IX, 2.3.7
Renewal fees E-IX, 2.3.12
Representation, address forcorrespondence E-IX, 2.3.1
Request for grant E-IX, 2.3.3
Title of the invention E-IX, 2.3.6
Instructions in Chapter A-IV ("Special
provisions") E-IX, 2.4
Biological material E-IX, 2.4.4
Certificate of exhibition E-IX, 2.4.3
Divisional applications E-IX, 2.4.1
Sequence listings E-IX, 2.4.2
Instructions in Chapter A-VI ("Publication of application;
request for examination and transmission of the dossier toexamining division") E-IX, 2.5
Publication of the international application E-IX, 2.5.1
Request for examination E-IX, 2.5.2
Supplementary European search E-IX, 2.5.3
InsufficientInsufficient disclosure F-III, 3
Cases of partially insufficient disclosure F-III, 5
Insufficient disclosure of the invention D-V, 4
Lack of support vs. insufficient disclosure F-IV, 6.4
Insufficient funds A-X, 4.2.4
Insufficient grounds for lack of unity F-V, 2.1
Insufficient prior-art disclosures B-VI, 6.4

March 2023
Interlocutory decisions E-X, 3Interlocutory revision E-XII, 7
Reimbursement of appeal fees E-XII, 7.3
Remittal to the board of appeal E-XII, 7.2
Intermediate
Intermediate and final products F-V, 3.2.7
Intermediate documents B-VI, 5.2, B-X, 9.2.4
Intermediate generalisations H-V, 3.2.1
Intermediate publication of another European
application F-VI, 2.4.2
Intermediate publication of the contents of the priority
application F-VI, 2.4.1
International
International (PCT) searches B-II, 4.4
International application H-IV, 2.3.4
Copy of the international application E-IX, 2.1.2
Determination of filing date in the case of erroneously
filed elements or parts of the international
application E-IX, 2.9.4
Filing E-IX, 1
International applications (Euro-PCT
applications) C-IX, 4International applications with supplementary
search F-V, 7.2
International applications without supplementary
search F-V, 7.1
Potentially conflicting European and international
applications B-VI, 4.1
Publication of the international application E-IX, 2.5.1
Published international applications (WO) as "E"
documents B-VI, 4.1.2
Translation E-IX, 2.1.1, E-IX, 2.5.1
Translation of the international application E-IX, 2.1.3
International exhibitions G-V, 4
International preliminary examination E-IX, 1, E-IX, 4.3.3
International preliminary examination report(IPER) F-V, 7.3
Reduction of the examination fee where theinternational preliminary examination report is being
drawn up by the EPO A-X, 9.3.2
International search report (Amendments made in
response to the WO-ISA, IPER or supplementary ~)C-III, 2.2
International Searching Authority
EPO as International Searching Authority E-IX, 1

Alphabetical keyword index - 37
Interpretation F-IV, 4.2
Interpretation of claims B-III, 3.2
Ascertaining the existence of a fallback
position B-III, 3.2.5
Claims with explicit references to the description or
drawings B-III, 3.2.1
Clarity and interpretation of claims F-IV, 4
Use of the description and/or drawings to establish
definitions of clear terms given a definition different
from their usual meaning B-III, 3.2.4
Use of the description and/or drawings to establish
definitions of unclear terms not defined in theclaims B-III, 3.2.3
Use of the description and/or drawings to identify thetechnical problem B-III, 3.2.2
Interpretation of expressions stating a purpose F-IV, 4.13
Interpretation of expressions such as "Apparatus for...", "Product for ... " F-IV, 4.13.1
Interpretation of expressions such as "Method for..." F-IV, 4.13.3
Interpretation of means-plus-function features ("meansfor ... ") F-IV, 4.13.2
Interpretation of relative terms F-IV, 4.6.2
Interpretation of terms such as "about", "approximately" or"substantially" F-IV, 4.7.1
Interpretation of terms such as identity and similarity inrelation to amino or nucleic acid sequences F-IV, 4.24
Interruption E-VII, 1
Cases in which the proceedings may beinterrupted E-VII, 1.1
Date of interruption E-VII, 1.3
Interruption of proceedings E-VII, 1.3
Interruption of time limits A-IV, 2.2.4, D-VII, 4.3
Procedure where the patent proprietor is notentitled D-VII, 4.3
Stay of proceedings for grant A-IV, 2.2.4
Interruption, stay and consolidation of theproceedings E-VII
Consolidation of proceedings E-VII, 4Interruption E-VII, 1
Stay of proceedings under Rule 14 due to pending
national entitlement proceedings E-VII, 2
Stay of proceedings when a referral to the Enlarged
Board of Appeal is pending E-VII, 3
Responsible department E-VII, 1.2
Resumption of proceedings E-VII, 1.4
Resumption of time limits E-VII, 1.5

International-type searches B-II, 4.5

Intervention of the assumed infringer D-I, 5, D-VII, 6Internet disclosures B-VI, 7, G-IV, 7.5
Burden of proof G-IV, 7.5.3
Disclosures which have no date or an unreliable
date G-IV, 7.5.4
Establishing the publication date G-IV, 7.5.1
Problematic cases G-IV, 7.5.5
Standard of proof G-IV, 7.5.2
Technical details and general remarks G-IV, 7.5.6

Introduction of further examples and new
effects H-V, 2.2
Invention G-II
Amendments in the case of non-unity no restriction to asingle invention searched H-II, 6.3
Burden of proof as regards the possibility of performing
and repeating the invention F-III, 4
Cases where the invention is realised in a distributed
computing environment F-IV, 3.9.3

Alphabetical keyword index - 38
Changing from one searched invention toanother C-III, 3.5
Claims directed to computer-implemented
inventions F-IV, 3.9
Description F-II, 1, F-II, 4.1
Determination of the invention first mentioned in theclaims F-V, 3.4
Difficulties in performing the invention F-III, 5.3
Disclosure A-IV, 4.2, B-III, 3.6, E-IX, 2.4.4, F-II, 4.1,
F-III, 1, F-III, 2, F-III, 3, F-IV, 6.4
Documents relating to the theory or principle underlying
the invention B-X, 9.2.5
Documents relevant only to other inventions B-VII, 1.3
Examination practice G-II, 2
Examination procedure no examination of multiple
inventions in EP phase E-IX, 4.2
Exceptions to patentability G-II, 4
Excision of other inventions C-III, 3.3
Exclusions and exceptions for biotechnologicalinventions G-II, 5
Features of the invention F-IV, 2.1, F-IV, 2.2, F-IV, 4.5.1,
F-V, 2, G-I, 1
General statements, "spirit of the invention", claim-likeclauses F-IV, 4.4
Grouping of inventions F-V, 3.2
Identification of invention A-IV, 3.1
Industrial application F-II, 4.9, G-III, 1
Insufficient disclosure of the invention D-V, 4
Invention to be examined C-II, 1.3
Inventions relating to biological material F-III, 6
Biological material F-III, 6.1
Deposit of biological material F-III, 6.3
Euro-PCT cases F-III, 6.5
Priority claim F-III, 6.4
Public availability of biological material F-III, 6.2
Inventive step B-X, 9.2.1, F-IV, 4.22, G-VII, 1
IPC classification in cases of a lack of unity of
invention B-V, 3.3
IPC classification when the scope of the invention is notclear (e.g. a partial search) B-V, 3.2
Limitation to searched invention C-III, 3.2
Limitation to searched invention no additional search fees
paid C-III, 3.2.1
List of exclusions G-II, 3
Multiple priorities claimed for different inventions in theapplication with an intermediate publication of one of theinventions F-VI, 2.4.3
Novelty F-IV, 4.22
Novelty of an invention F-IV, 4.22, G-IV, 1
Objections to unsearched inventions F-V, 5.2
Only variants of the invention are incapable of being
performed F-III, 5.1
Origin of an invention G-VII, 9
Patentable biotechnological inventions G-II, 5.2
Requirement of unity of invention F-V, 2
Restriction to a single, searched invention H-II, 6.1
Restriction to an unsearched invention H-II, 6.2Same invention F-VI, 2.2
Selection inventions G-VI, 8, G-VII, 12

March 2023
Technical features F-IV, 2.1, F-IV, 2.2, F-IV, 4.5.1,
F-V, 2, G-I, 1
Title A-III, 1.2, A-III, 7.1, A-III, 7.2, B-X, 7, F-II, 3
Title of the invention A-III, 7, E-IX, 2.3.6
Unity B-II, 4.2, B-III, 3.12, B-VII, 1.1, B-VIII, 3.4,
B-VIII, 4.5, C-III, 3.2, C-III, 3.2.1, C-IX, 1.2, D-V, 2.2,
F-IV, 3.2, F-IV, 3.3, F-IV, 3.7, F-V, 1, F-V, 2, F-V, 2.1,
F-V, 3.2.1, G-VI, 7.1
Unity of invention B-II, 4.2, B-III, 3.12, B-VII, B-VII, 1.1,
B-VIII, 3.4, B-VIII, 4.5, C-III, 3, C-III, 3.2, C-III, 3.2.1,
C-IX, 1.2, D-V, 2.2, F-IV, 3.2, F-IV, 3.3, F-IV, 3.7, F-V,
F-V, 1, F-V, 2, F-V, 2.1, F-V, 3.2.1, G-VI, 7.1
Inventive step B-X, 9.2.1, F-IV, 4.22, G-I, 1, G-IV, 5.1,
G-VII, G-VII, 1
Arguments and evidence submitted by theapplicant G-VII, 11
Categories of documents (X, Y, P, A, D, etc.) B-X, 9.2.1
Claims in different categories G-VII, 14
Combination vs. juxtaposition or aggregation G-VII, 7
Combining pieces of prior art G-VII, 6
Conflict with other European applications G-IV, 5.1
Date of filing G-VII, 2
Dependent claims G-VII, 14
Documents defining the state of the art and not prejudicing
novelty or inventive step B-X, 9.2.2"Ex post facto" analysis G-VII, 8
Examples relating to the requirement of inventive
step G-VII, An.
Indicators G-VII, An.
Invention G-VII, 1
Inventive step assessment in the field ofbiotechnology G-VII, 13
Inventive step of antibodies G-II, 5.6.2
Obviousness G-VII, 4Origin of an invention G-VII, 9
Patentability G-I, 1, G-VII
Person skilled in the art G-VII, 3
Problem-solution approach G-VII, 5Secondary indicators G-VII, 10
Selection inventions G-VII, 12
State of the art G-VII, 2
Sufficiency of disclosure and inventive step F-III, 12
Inventor
Cancellation of the designation of the inventor A-III, 5.5
Designation A-III, 5.1, A-III, 5.2, A-XI, 2.3
Designation of inventor A-III, 5, A-IV, 1.5, E-IX, 2.3.4
Form A-III, 5.1
Parts of the file not for inspection A-XI, 2.3
Period E-IX, 2.3.4
Waiver of right to be mentioned as inventor A-III, 5.2
Invitation A-II, 5.1, A-II, 6.1
Exceptions where a reply to the Rule 161(1) invitation is
not required E-IX, 3.3
Invitation to file amended documents D-VI, 4.2
Invitation to file authorisation and legal consequence incase of non-compliance A-VIII, 1.8
Invitation to file comments and amendments C-III, 4.2

March 2023
Invitation to file observations D-VI, 3
Opposition division's communications D-VI, 3.1
Summons to oral proceedings D-VI, 3.2
Invitation to file the translation A-VII, 1.4
Invitation to file the translation before
examination A-III, 6.8.1
Invitation to file the translation in
examination/opposition A-III, 6.8.2
Invitation to indicate subject-matter for search B-VIII, 3.1
Invitation to indicate which independent claim tosearch B-VIII, 4.1
Invitation to pay additional search fees combined withinvitation to restrict the scope of the search C-III, 3.2.3
Invitation to pay further search fees B-VII, 1.2
Applicant has not paid all additional searchfees B-VII, 1.2.3
Cascading non-unity B-VII, 1.2.2
Invitation to the patent proprietor to submit comments andcommunication of opposition to the other parties
concerned by the formalities officer D-IV, 5.2
Invitation under both Rule 62a(1) and Rule 63(1) B-VIII, 5
Invitation under Rule 70a(1) C-II, 3.3
Reply to the invitation under Rule 62a(1) B-VIII, 4.2
Reply to the invitation under Rule 63(1) B-VIII, 3.2
Without invitation A-II, 5.2, A-II, 6.2
IPC classification
IPC classification of the application B-V, 3
IPC classification in cases of a lack of unity of
invention B-V, 3.3
IPC classification of late-published search
reports B-V, 3.1
IPC classification when the scope of the invention is
not clear (e.g. a partial search) B-V, 3.2
Verification of the IPC classification B-V, 3.4

Alphabetical keyword index - 39
Extent of the formalities officer's obligation to issue theabove communications D-IV, 1.3.3
Issuing a further communication (norefusal) C-V, 15.4
Issuing a self-contained decision C-V, 15.3

J
Joint applicants A-VIII, 3.4

K
Keeping the model E-IV, 1.11.3
Kinds of claim F-IV, 3
Alternatives in a claim F-IV, 3.7
Arrangement of claims F-IV, 3.5
Categories F-IV, 3.1
Claims directed to computer-implemented
inventions F-IV, 3.9
Independent and dependent claims F-IV, 3.4
Independent claims containing a reference to anotherclaim or to features from a claim of anothercategory F-IV, 3.8
Number of independent claims F-IV, 3.2
Objection under Rule 43(2) or Rule 137(5) F-IV, 3.3
Subject-matter of a dependent claim F-IV, 3.6

L
Lack of support vs. insufficient disclosure F-IV, 6.4

Irregularities in the notification E-II, 2.6
Irrelevant matter F-II, 4.4
Irrelevant or unnecessary matter F-II, 7.4
Issuance of certified copies A-XI, A-XI, 5
Certified copies of documents from the files or of otherdocuments A-XI, 5.1
Communication of information contained in thefiles A-XI, 3
Consultation of the European Patent Register A-XI, 4
Inspection of files A-XI, 2
Priority documents issued by the EPO A-XI, 5.2
Issue of communications by the formalities officer asa result of examination for deficiencies D-IV, 1.3
Communication in the event of deficiencies as describedin D-IV, 1.2.1 which, if not remedied, will lead to the
opposition being deemed not to have been
filed D-IV, 1.3.1
Communication in the event of deficiencies as describedin D-IV, 1.2.2 which, if not remedied, will lead to rejectionof the opposition as inadmissible D-IV, 1.3.2

Lack of unity B-III, 3.12
Complete search despite of lack of unity B-VII, 2.2
Insufficient grounds for lack of unity F-V, 2.1
IPC classification in cases of a lack of unity of
invention B-V, 3.3
Lack of unity and Rule 62a or Rule 63 B-VII, 3
Minimum requirements for reasoning of lack ofunity F-V, 3.3.1
Procedure in the case of lack of unity during
search F-V, 4
Procedure in the case of lack of unity during substantive
examination F-V, 5
Procedures in cases of lack of unity B-VII, 2
Reasoning for a lack of unity objection F-V, 3.3
Language
Admissible languages on filing A-VII, 1
Admissible non-EPO languages A-VII, 3.2
Authentic text of the application or patent A-VII, 8
Citation of documents corresponding to documents notavailable or not published in one of the official EPO
languages B-VI, 6.2
Correction and certification of the translation A-VII, 7

Alphabetical keyword index - 40

March 2023

Derogations from the language of the proceedings in oralproceedings A-VII, 4
Derogations from the language of the proceedings inwritten proceedings A-VII, 3
Documents filed in the wrong language A-VII, 5Information modelling, activity of programming andprogramming languages G-II, 3.6.2
Language of a contracting state or other language E-V, 2
Language of proceedings A-IV, 1.3.3, A-VII, 1.3, A-VII, 2,
A-VII, 3.2, A-VII, 4, A-VII, 8, B-X, 3.2, E-IX, 2.1.3
Filing a divisional application A-IV, 1.3.3
Form and language of the search report B-X, 3.2
Languages A-VII, 2, A-VII, 4, A-VII, 8
Language requirements A-IV, 1.3.3
Derogations from language requirements D-III, 4
Language to be used E-XIII, 4
Language used by employees of the EPO E-V, 5
Language used in the minutes E-V, 6
Language used in the taking of evidence E-V, 4
Language(s)Documents which have to be filed within a time
limit A-VII, 3.2, A-X, 9.2.1, E-IX, 2.1.3
Language(s), EPO A-III, 3.2, H-III, 2.1
Languages of publication A-VII, 6
Languages of the documents cited B-X, 9.1.3
Minutes of oral proceedings E-III, 10.2

Late-filed requests after summons to oral proceedings in
examination H-II, 2.7
Concept of "clear allowability" H-II, 2.7.1
Late-filed requests in opposition proceedings H-II, 3.5
Late-filed submissions E-VI, 2, E-X, 2.10
General principles in opposition
proceedings E-VI, 2.1
Submissions filed in preparation for or during oralproceedings E-VI, 2.2

Late
Late arrival, non-appearance and failure toconnect E-III, 8.3.3
Procedure in examination proceedings E-III, 8.3.3.3
Procedure in opposition proceedings E-III, 8.3.3.2
Late filing of claims A-III, 15
Late filing of missing drawings or missing parts of thedescription A-II, 5, A-II, 5.1, A-II, 5.2
Additional fee for pages A-II, 5.6
Filing date changes A-II, 5.3
Missing parts based on the priority application, nochange in filing date A-II, 5.4
On invitation A-II, 5.1
Withdrawal of late-filed missing drawings or missing
parts of the description A-II, 5.5
Without invitation A-II, 5.2
Late payment of fees A-X, 6.2
Amount of fee payable A-X, 6.2.4
Debit orders filed with a competent national
authority A-X, 6.2.3
Fees paid by bank transfer - application of Art. 7(3)and (4) RFees A-X, 6.2.1
Noting of loss of rights A-X, 6.2.5
Safety provision for late replenishment of deposit
accounts A-X, 6.2.2
Late payments A-X, 10.1.2
Late receipt of documents E-VIII, 1.7

Letters rogatory E-IV, 3.1, E-IV, 3.3

Late filed
Late-filed missing parts when priority isclaimed A-II, 5.4.1

Later stages of examination C-IV, 4
Later-filed correct application documents or parts
when priority is claimed A-II, 6.4.1
Leading lines A-IX, 7.5.1
Legal
Legal character and effect of the stay ofproceedings D-VII, 4.1.2
Legal co-operation E-IV, 3.1
Legal Division A-IV, 2.2.1, D-VII, 4.4, E-VII, 1.2, E-XIV, 2
Legal nature and effects of the stay A-IV, 2.2.3
Legal remedy A-VI, 2.3
Legal status of decisions D-X, 8
Legally qualified examiners D-II, 2.2

Licence
Exclusive licence E-XIV, 6.1
Licences and other rights E-XIV, 6
Cancellation of the registration E-XIV, 6.2
Registration E-XIV, 6.1
Registration of changes of name, transfers, licences
and other rights E-XIV
Sub-licence E-XIV, 6.1
Limitation
Limitation and revocation procedure D-X
Decision on request for revocation D-X, 3Different sets of claims D-X, 10
Examination for deficiencies in the request D-X, 2
Formal procedure for limitation when the request isallowable D-X, 5
Legal status of decisions D-X, 8Multiple requests D-X, 11
Rejection of the request D-X, 6
Relation to opposition proceedings D-X, 7
Substantive examination (limitation) D-X, 4
Withdrawal of the request D-X, 9Limitation is different for different contracting states
because the claims as granted were different for different
contracting states D-X, 10.2
Limitation of the option to withdraw the European patentapplication A-IV, 2.3
Limitation procedure D-X, 2.1, D-X, 4.2, D-X, 5
Amendments in limitation procedure H-II, 4
Limitation results in the claims becoming different indifferent contracting states D-X, 10.1

March 2023
Limitation to searched invention C-III, 3.2
Additional search fees paid C-III, 3.2.2
Invitation to pay additional search fees combined withinvitation to restrict the scope of thesearch C-III, 3.2.3
Limitation to searched invention no additional searchfees paid C-III, 3.2.1
Relation to unity in search C-III, 3.2.1
Limitations of exception under Art. 53(c) G-II, 4.2.1
Diagnostic methods G-II, 4.2.1.3
Surgery G-II, 4.2.1.1
Therapy G-II, 4.2.1.2
Limits on the obligation to undertake
examination E-VI, 1.2
List of exceptions (Rule 28) G-II, 5.3
List of exclusions G-II, 3
Aesthetic creations G-II, 3.4
Discoveries G-II, 3.1
Mathematical methods G-II, 3.3
Presentations of information G-II, 3.7
Programs for computers G-II, 3.6
Schemes, rules and methods for performing mental acts,
playing games or doing business G-II, 3.5
Scientific theories G-II, 3.2
List of professional representatives A-VIII, 1.2
Long-felt need G-VII, 10.3
Loss
Loss of earnings, fees E-IV, 1.10.2
Loss of right to priority A-III, 6.10
Loss of rights A-III, 11.2.5, A-X, 6.2.5, E-VIII, 1.9,
E-VIII, 1.9.1, E-IX, 2.1.4
Cases of loss of rights E-VIII, 1.9.1
Decision on a notified loss of rights at the request of
the person concerned D-VIII, 2.3
Decision on loss of rights E-VIII, 1.9.3
Entry into the European phase E-IX, 2.1.4
European patent applications filed on or after 1 April
2009 A-III, 11.2.5
Loss of rights and legal remedies A-III, 6.8.3
Noting and communication of loss ofrights E-VIII, 1.9.2
Noting of loss of rights A-X, 6.2.5
Time limits and loss of rights resulting from failure to
respond within a time limit E-VIII, 1.9
Time limits and loss of rights resulting from failure to
respond within a time limit E-VIII, 1
Time limits, loss of rights, further and accelerated
processing and re-establishment of rights E-VIII

Alphabetical keyword index - 41
Main and auxiliary requests E-X, 2.9
Main and auxiliary requests filed with theappeal E-XII, 7.4.3
Maintenance of the European patent as
amended D-VIII, 1.4
Statement in the decision of the amended form of theEuropean patent D-VIII, 1.4.2
Taking of a final decision D-VIII, 1.4.1
Making suggestions B-XI, 3.8
Manner and order of presentation F-II, 4.10
Markush grouping (alternatives in a single
claim) F-V, 3.2.5
Mathematical methods G-II, 3.3
Artificial intelligence and machine learning G-II, 3.3.1
List of exclusions G-II, 3.3
Simulation, design or modelling G-II, 3.3.2
Matter contrary to "ordre public" or morality F-II, 7.2,
G-II, 4.1
Economic effects G-II, 4.1.3
Offensive and non-offensive use G-II, 4.1.2
Prohibited matter G-II, 4.1.1
Matters of doubt in the state of the art B-VI, 5.6
Matters to be determined by the division as regards
prior use G-IV, 7.2
Agreement on secrecy G-IV, 7.2.2
Example of the accessibility of objects used G-IV, 7.2.4
Example of the inaccessibility of a process G-IV, 7.2.5
Use on non-public property G-IV, 7.2.3
Matters to be determined by the division in cases oforal description G-IV, 7.3.3
Meaning of opposition D-I, 1
Means of evidence E-IV, 1.2
Means of giving or taking evidence E-IV, 3.2
Evidence taken by a competent court E-IV, 3.2.2
Taking of evidence on oath E-IV, 3.2.1
Mental acts
Schemes, rules and methods for mental acts G-II, 3.5.1
Schemes, rules and methods for performing mental
acts G-II, 3.5.1
Schemes, rules and methods for performing mental acts,
playing games or doing business G-II, 3.5
Merit of the request E-VIII, 3.2

M

Method claim to product claim H-V, 7.3

Machine translations G-IV, 4.1

Method claim to use claim H-V, 7.4
Method of notification E-II, 2.2

Alphabetical keyword index - 42
Method of refund A-X, 10.3
Refunds to a bank account A-X, 10.3.2
Refunds to a deposit account A-X, 10.3.1
Method of testing G-III, 2
Methods for screening potential medicaments andclinical trials G-II, 4.2.2
Methods for treatment of the human or animal body bysurgery or therapy and diagnostic methods practisedon the human or animal body B-VIII, 2.1
Methods of payment A-X, 2
Microbiological processes G-II, 5.2, G-II, 5.5,
G-II, 5.5.1
Animal varieties G-II, 5.5.1
Exclusions and exceptions for biotechnologicalinventions G-II, 5.5
Repeatability of results of microbiologicalprocesses G-II, 5.5.2
Minimum requirements for according a date offiling A-II, 4.1
Date of filing A-II, 4.1.5
Deficiencies A-II, 4.1.4
Description A-II, 4.1.3
Indication that a European patent is sought A-II, 4.1.1
Information concerning the applicant A-II, 4.1.2
Minimum requirements for reasoning of lack ofunity F-V, 3.3.1
Minutes
Minutes as the first communication in
examination C-VII, 2.5
Minutes of a consultation C-VII, 2.4
Minutes of oral proceedings E-III, 10
Formal requirements E-III, 10.1
Language E-III, 10.2
Request for correction of minutes E-III, 10.4
Subject-matter of minutes E-III, 10.3
Minutes of taking of evidence E-IV, 1.7
Missing
Missing information A-IV, 4.2
Missing parts based on the priority application, no change
in filing date A-II, 5.4
Copy of the priority application A-II, 5.4.3
Late-filed missing parts when priority isclaimed A-II, 5.4.1
Missing parts are completely contained in the priority
application A-II, 5.4.2
Translation of the priority application A-II, 5.4.4
Missing parts of description, missing drawings orcorrection of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2
Missing parts of the description or missing drawings filed
under Rule 56 after the date of filing H-IV, 2.2.2

March 2023
Missing parts or elements C-III, 1
Erroneous elements filed under Rule 20.5bis
PCT C-III, 1.3
Euro-PCT applications C-III, 1.2, C-III, 1.3
European applications C-III, 1.1
Missing elements and parts filed under Rule 20.5 and20.6 PCT C-III, 1.2
Models E-IV, 1.11
Keeping the model E-IV, 1.11.3
Procedure E-IV, 1.11.2
When may models be submitted? E-IV, 1.11.1
Morality A-III, 8.1, G-II, 4.1, G-II, 4.1.1
Matter contrary to "ordre public" or morality F-II, 7.2,
G-II, 4.1
Morality or "ordre public" A-III, 8.1
More than one independent claim per category (Rule62a) B-VIII, 4Applications to which Rule 62a applies which also lackunity B-VIII, 4.5
Cases under Rule 62a where claims fees are notpaid B-VIII, 4.4Content of the extended European search report(EESR) B-VIII, 4.3
Invitation to indicate which independent claim tosearch B-VIII, 4.1
Reply to the invitation under Rule 62a(1) B-VIII, 4.2
Treatment of dependent claims under Rule
62a B-VIII, 4.6
Multiple priorities A-III, 6.3
Multiple priorities and partial priorities F-VI, 1.5
Multiple priorities claimed for different inventions in theapplication with an intermediate publication of one of theinventions F-VI, 2.4.3
Multiple requests D-X, 11N
National
National patent (Access to EPO documentation for the ~offices) B-IX, 5
National patent application
Conversion into a national patent application A-IV, 6
Information concerning national patentapplication C-III, 6
National prior rights B-VI, 4.2, C-IV, 7.2
Conflicting applications B-VI, 4.2
Search-related issues in examination C-IV, 7.2
National register A-III, 12.5
Negative limitations (e.g. disclaimers) F-IV, 4.19
Neither main nor auxiliary requests
allowable H-III, 3.1.3

March 2023
New
New deposit of biological material A-IV, 4.1.1
New facts and evidence E-VI, 2.2.1
New submissions in reply to summons C-IV, 8
No deferred payment of fees, no legal aid, nodiscretion A-X, 8
No meaningful search possible B-VIII, 3
Applications to which Rule 63 applies which also lackunity B-VIII, 3.4Content of the extended European search report(EESR) B-VIII, 3.3
Invitation to indicate subject-matter for search B-VIII, 3.1
Reply to the invitation under Rule 63(1) B-VIII, 3.2
Non-unity and prior art F-V, 3.1
Non-unity and prior art under Art. 54(2) F-V, 3.1.2
Non-unity and prior art under Art. 54(3) F-V, 3.1.1
Non-appearance of a party E-III, 8.3
Checking the identity and authorisations of participants atoral proceedings E-III, 8.3.1
Late arrival, non-appearance and failure toconnect E-III, 8.3.3
Opening the oral proceedings E-III, 8.3.2
Non-entitlement to right to priority A-III, 6.9
Non-functional modification G-VII, 10.1
Non-patent literature arranged for library-typeaccess B-IX, 4Composition B-IX, 4.1
Non-patent literature arranged for systematicaccess B-IX, 3
Periodicals, records, reports, books, etc. B-IX, 3.1
Non-patentability pursuant to Art. 52 to 57 D-V, 3
Non-prejudicial disclosure B-VI, 5.5, G-V
Evident abuse G-V, 3International exhibition G-V, 4
Time limit G-V, 2

Alphabetical keyword index - 43
Irregularities in the notification E-II, 2.6
Loss of rights E-VIII, 1.9.2
Method of notification E-II, 2.2
Notification by postal services E-II, 2.3
Notification to representatives E-II, 2.5
Notifications to and observations by the patent
proprietor D-IV, 1.5
Oral proceedings E-III, 6Noting and communication of loss ofrights E-VIII, 1.9.2
Noting of loss of rights A-X, 6.2.5
Novelty G-VI
Documents defining the state of the art and not prejudicing
novelty or inventive step B-X, 9.2.2
Enabling disclosure of a prior-art document G-VI, 4
Examination of novelty G-VI, 7
Generic disclosure and specific examples G-VI, 5
Implicit disclosure and parameters G-VI, 6
Implicit features or well-known equivalents G-VI, 2
Novelty of an invention F-IV, 4.22, G-IV, 1
Novelty of "reach-through" claims G-VI, 9
Relevant date of a prior-art document G-VI, 3
Selection inventions G-VI, 8
State of the art pursuant to Art. 54(2) G-VI, 1
NumberNumber of communications E-II, 1.2
Number of copies A-VIII, 2.4
Number of independent claims F-IV, 3.2
Numbering of figures A-IX, 5.2
Numbering of sheets of drawings A-IX, 4.2
Numbers, letters and reference signs A-IX, 7.5
Arrows A-IX, 7.5.2
Consistent use of reference signs as between
description, claims and drawings A-IX, 7.5.4
Consistent use of reference signs as between
drawings A-IX, 7.5.5
Height of the numbers and letters in thedrawings A-IX, 7.5.3
Leading lines A-IX, 7.5.1

Non-prejudicial oral description G-IV, 7.3.2

O

Non-traditional publications G-IV, 7.5.3.3

Oath E-IV, 3.2.2
Taking of evidence on oath E-IV, 3.2.1

Notices of opposition filed by fax D-III, 3.3
Notices of opposition filed electronically D-III, 3.2
Notification A-III, 6.11, A-IV, 4.2, E-II, 2, E-II, 2.1,
E-II, 2.5, E-III, 6, E-VIII, 1.9.2, E-X, 6
Claim to priority A-III, 6.11
Communications and notifications E-II, 2
Communications and notifications E-II
Decisions E-X, 6Electronic notification E-II, 2.4

Objection of lack of support F-IV, 6.3
Objection to an expert E-IV, 1.8.2
Objection under Rule 43(2) or Rule 137(5) F-IV, 3.3
Objections arising from missing essential
features F-IV, 4.5.1
Objections to unsearched inventions F-V, 5.2

Alphabetical keyword index - 44
Objective of the search B-II, 2
Obligation to give reasons H-III, 3.1.2
Observations by third parties D-I, 6, E-VI, E-VI, 3
Examination by the EPO of its own motion E-VI, 1
Examination of observations by third parties C-VII, 6
External complaints E-VI, 4
Late-filed submissions E-VI, 2
Obvious combination of features? G-VII, An., 2
Obvious selection? G-VII, An., 3
Obviousness G-VII, 4
Offensive and non-offensive use G-II, 4.1.2
Official language
Official languages, of the Contracting States A-X, 9.2.1
Official languages, of the EPO A-VII, 1.1, E-IX, 4.3
Use of an official language E-V, 1
Omission of matter from publication F-II, 7.5
Only variants of the invention are incapable of being
performed F-III, 5.1
Opening of oral proceedings E-III, 8.3, E-III, 8.3.2
Checking the identity and authorisations of participants atoral proceedings E-III, 8.3.1
Late arrival, non-appearance and failure toconnect E-III, 8.3.3
Opening of the substantive part of theproceedings E-III, 8.4
OpinionAmendments made in response to the search
opinion C-III, 2.1
Analysis of the application and content of the search
opinion B-XI, 3
Basis of the search opinion B-XI, 2
Comments and amendments in response to the search
opinion B-XI, 3.3
Decision on the form of the opinion E-IV, 1.8.1
Establishment and issue of the technicalopinion E-XIII, 5.4
Evaluation of an expert opinion E-IV, 4.7
No search opinion is issued B-XI, 7
Opinions of the search division B-III, 1
Opinions in relation to the search report B-III, 1.1
Opinions on matters relating to limitation of thesearch B-III, 1.2
Positive opinion B-XI, 3.9
Priority claim and the search opinion B-XI, 4Provisional opinion accompanying the partial search
results F-V, 4.1
Request from a national court for a technical opinion
concerning a European patent E-XIII
Response to the search opinion A-VI, 3, C-II, 3.1

March 2023
Scope of the technical opinion E-XIII, 2
Search opinion B-XI, B-XI, 1.1
Search opinion in cases of a limitation of thesearch B-XI, 6
Search opinion is part of the EESR B-XI, 1
Technical opinion E-XIII, 1
Transmittal of the search report and search
opinion B-X, 12
Unity in relation to the search opinion B-XI, 5
Use of "P" and "E" documents in the search
opinion B-XI, 4.1
Opponent D-I, 6, D-III, 6, D-IV, 1.2.2.1, D-IV, 1.2.2.2
Continuation on the death or legal incapacity of the
opponent D-VII, 5.2
Death or legal incapacity of an opponent D-VII, 5.2
Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or is deemed
not to have been filed E-III, 2.1
Opposition D-III
Accelerated processing of oppositions E-VIII, 5
Activity of the opposition division D-IV, 2
Admissibility in opposition and limitation
proceedings H-VI, 2.1.1
Admissibility in opposition procedure H-II, 3
Amendments in reply to the notice of opposition H-II, 3.1
Amendments not related to the grounds for
opposition H-II, 3.2
Appeal against the fixing of costs by the opposition
division D-IX, 2.2
Appeals against the decision of the opposition division on
the fixing of costs E-XII, 4
Basis of this ground for opposition D-V, 6.1
Changes in claim category in opposition H-V, 7
Communication in the event of deficiencies as describedin D-IV, 1.2.1 which, if not remedied, will lead to the
opposition being deemed not to have been
filed D-IV, 1.3.1
Communication in the event of deficiencies as describedin D-IV, 1.2.2 which, if not remedied, will lead to rejectionof the opposition as inadmissible D-IV, 1.3.2
Communications from the opposition division D-VI, 4.1
Communications from the opposition division to the patent
proprietor D-VI, 4Content of the notice of opposition D-III, 6
Continuation after the opposition has been
withdrawn D-VII, 5.3
Decision concerning the admissibility of an opposition, thepatent proprietor being a party D-IV, 5.5
Decision concerning the awarding of costs by the
opposition division D-II, 4.2
Decision on the inadmissibility of an opposition orintervention D-VIII, 2.1
Decisions of the opposition division D-VIII
Deficiencies which may no longer be remedied inaccordance with Rule 77(1) and (2), resulting in the
opposition being rejected as inadmissible D-IV, 1.4.2
Deficiencies which may no longer be remedied, as a resultof which the opposition is deemed not to have been
filed D-IV, 1.4.1

March 2023
Deficiencies which, if not remedied, lead to the opposition
being deemed not to have been filed D-IV, 1.2.1
Deficiencies which, if not remedied, lead to the opposition
being rejected as inadmissible D-IV, 1.2.2
Derogations from language requirements D-III, 4
Examination for deficiencies in the notice of
opposition D-IV, 1.2
Examination for deficiencies in the notice of oppositionand communications from the formalities officer arisingfrom this examination D-IV, 1
Examination of oppositions D-II, 4.1
Examination of the grounds for opposition D-V, 2.2
Examination of the opposition during oralproceedings D-VI, 6
Fees for limitation/revocation, opposition, appeal, petition
for review A-X, 5.2.6
Filing of amended documents in reply to the notice of
opposition D-IV, 5.3
Filing of opposition after decision on limitation D-X, 7.2
Final decisions on an admissible opposition D-VIII, 1
Fixing of costs by the opposition division D-IX, 2.1
Form of the opposition D-III, 3.1
Forwarding of the notice of opposition to the formalities
officer D-IV, 1.1
Grounds for opposition D-III, 5
Impartiality of the examining or opposition division E-XI
Invitation to file the translation in
examination/opposition A-III, 6.8.2
Invitation to the patent proprietor to submit comments andcommunication of opposition to the other parties
concerned by the formalities officer D-IV, 5.2
Meaning of opposition D-I, 1
Notice of intervention of the assumed infringer D-I, 5,
D-VII, 6
Notices of opposition filed by fax D-III, 3.3
Notices of opposition filed electronically D-III, 3.2
Opposition after surrender or lapse D-I, 2
Opposition cases with different texts where a transfer ofrights by virtue of a final decision pursuant to Art. 61 takes
place in examination proceedings H-III, 4.3.3
Opposition Divisions D-II
Administrative structure D-II, 1
Allocation of duties and appointment of members of
the opposition division D-II, 3
Allocation of individual duties D-II, 7
Allocation of tasks to members D-II, 5
Composition D-II, 2
Decisions taken by the examining or opposition
divisions E-X, 2
Duties and powers of members D-II, 6
Tasks of the opposition divisions D-II, 4
Opposition division's communications D-VI, 3.1
Opposition fee D-III, 2
Opposition D-III, 2
Opposition procedure (Admissibility in ~) H-II, 3
Opposition proceedings
Auxiliary requests in opposition proceedings H-III, 3.4
Compliance of amendments with other EPC
requirements in opposition proceedings H-IV, 5.3

Alphabetical keyword index - 45
Continuation of the opposition proceedings in thecases covered by Rule 84 D-VII, 5
Correction of the decision to grant while opposition
proceedings are pending H-VI, 3.3
Costs D-IX, 1.1
Decision on closure of the opposition
proceedings D-VIII, 2.5
Different texts where a transfer of the patent in respectof certain designated states takes place in opposition
proceedings H-III, 4.3.2
Documents D-IV, 5.6, E-III, 8.7.1
General principles in opposition
proceedings E-VI, 2.1
Intervention in opposition proceedings D-I, 5,
D-IV, 5.6, D-VII, 6
Late-filed requests in opposition proceedings H-II, 3.5
Opposition proceedings (inter partes) E-III, 8.5.1.1
Opposition proceedings where the claims as granted
are different for different contracting states H-III, 4.5
Oral proceedings D-VI, 3.2, D-VI, 7.1, D-VI, 7.2.3,
E-III, 3, E-III, 8.1, E-VIII, 3.1.1
Parties D-I, 6
Parties to opposition proceedings D-I, 6
Precedence of opposition proceedings D-X, 7.1
Procedure in opposition proceedings E-III, 8.3.3.2,
E-III, 8.7.3
Relation to opposition proceedings D-X, 7
Request to adjourn opposition proceedings D-VI, 8
Revocation proceedings D-X, 2.1
Termination of opposition proceedings in the event of
inadmissible opposition D-IV, 4
Procedure for the examination of the opposition D-VI
Rejection of the opposition D-VIII, 1.3
Rejection of the opposition as inadmissible by the
opposition division, the patent proprietor not being aparty D-IV, 3
Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or is deemed
not to have been filed E-III, 2.1
Several oppositions D-IV, 5.2
Signature of the notice of opposition D-III, 3.4
Submission in writing D-III, 3
Substantive examination of opposition D-V
Territorial effect of the opposition D-I, 3Time allowed for filing notice of opposition D-III, 1
Time limit for filing notice of opposition D-III, 1,
D-IV, 1.2.2.1
Optional features F-IV, 4.9
Oral
Oral disclosure, use, exhibition, etc. as state of theart B-VI, 2
Oral proceedings C-VII, 5, D-VI, 1, E-III, H-III, 3.4.2,
H-III, 3.5.3
Adjournment of oral proceedings due to lack oftime E-III, 8.11.2
Amendments filed in preparation for or during oralproceedings E-VI, 2.2.2
Auxiliary requests in limitation proceedings H-III, 3.5.3

Alphabetical keyword index - 46
Auxiliary requests in opposition
proceedings H-III, 3.4.2
Cancellation or maintenance of oralproceedings E-III, 7.2
Change of date of oral proceedings E-III, 7.1.3
Change of date of oral proceedings at the instigation of
the division E-III, 7.1.2
Change of date, cancellation or maintenance of oralproceedings E-III, 7
Changing the date of oral proceedings E-III, 7.1
Checking the identity and authorisations of participants
at oral proceedings E-III, 8.3.1
Closure of oral proceedings E-III, 8.11
Communications/oral proceedings after
resumption C-V, 4.7.1
Conduct of oral proceedings E-III, 8
Costs arising from oral proceedings or taking ofevidence E-IV, 1.9
Delivery of the decision E-III, 9
Derogations from the language of the proceedings inoral proceedings A-VII, 4, E-V
Examination of the opposition during oralproceedings D-VI, 6
Format of oral proceedings E-III, 1.2
Handwritten amendments in oralproceedings E-III, 8.7
Late-filed requests after summons to oral proceedings
in examination H-II, 2.7
Minutes of oral proceedings E-III, 10
Opening of oral proceedings E-III, 8.3, E-III, 8.3.2
Oral proceedings at the instance of the EPO E-III, 4
Other procedures in examination C-VII, 5
Preparation of oral proceedings E-III, 5
Request for further oral proceedings E-III, 3
Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or isdeemed not to have been filed E-III, 2.1
Request for oral proceedings to be held on EPO
premises E-III, 1.3
Request to hold on-site oral proceedings at a particularsite E-III, 1.4
Requesting postponement during oralproceedings E-III, 8.11.1
Requests to change the date of oralproceedings E-III, 7.1.1
Rule 137(4) and oral proceedings H-III, 2.1.3
Submissions filed in preparation for or during oralproceedings E-VI, 2.2
Summons to oral proceedings E-III, 6
Summons to oral proceedings as the first action in
examination C-III, 5
Use of computer-generated slideshows in oralproceedings E-III, 8.5.1
Use of Rule 137(4) for amendments filed during oralproceedings in examination E-III, 8.8
When can summons to oral proceedings be issued in
substantive examination? E-III, 5.1
Withdrawal of the request for oralproceedings E-III, 7.2.2

March 2023
Written submissions during oral proceedings byvideoconference E-III, 8.5.2
Oral proceedings at the request of a party E-III, 2
Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or isdeemed not to have been filed E-III, 2.1
Order E-X, 1.3.1
Date of receipt of the debit order A-X, 4.2.4
Debit orders filed with a competent national
authority A-X, 6.2.3
Debit orders for deposit accounts held with the
EPO A-II, 1.5
Manner and order of presentation F-II, 4.10
Order of claims F-IV, 4.23
Order to take evidence E-IV, 1.4
Ordre public
Inventions contrary to ordre public G-II, 4.1
Matter contrary to "ordre public" or morality F-II, 7.2,
G-II, 4.1
Morality or "ordre public" A-III, 8.1
Organisation
Organisation and composition of the documentation
available to the search divisions B-IX, 1.1
Payment or transfer to a bank account held by theEuropean Patent Organisation A-X, 4.1
Origin of an invention G-VII, 9Original application no longer pending C-IX, 2.2
Other procedures in examination C-VII
Consultations C-VII, 2
Examination of observations by third parties C-VII, 6
Oral proceedings C-VII, 5
Taking of evidence C-VII, 4
Use of email C-VII, 3
Overcoming a technical prejudice? G-VII, An., 4

P
PACE C-VI, 2
Pagesetting A-IX, 5.1
Parameters F-IV, 4.11
Implicit disclosure and parameters G-VI, 6
Unusual parameters F-IV, 4.11.1
PartialPartial entitlement C-IX, 2.3
Partial European search report B-VII, 1.1
Partial transfer of right by virtue of a final
decision A-IV, 2.7
Participation of members of the division from different
locations E-III, 8.2.2

March 2023

Alphabetical keyword index - 47

Participation of parties and their representatives fromdifferent locations E-III, 8.2.1

Withdrawal before publication of the patent
specification C-V, 11

Particularly relevant documents B-X, 9.2.1

Patentability B-VIII, 1, , G-I, G-III, 1
Considerations relating to specific exclusions from andexceptions to patentability B-VIII, 2
Exceptions to patentability G-II, 4
Industrial application G-III
Inventions G-II
Inventive step G-VII
Non-prejudicial disclosures G-V
Novelty G-VI
Observations by third parties D-I, 6, E-VI, 3
Patentability requirements G-I, 1
State of the art G-IV
Subject-matter excluded from patentability under Art. 52(2)and (3) B-VIII, 2.2
Technical progress, advantageous effect G-I, 2

Parties to opposition proceedings D-I, 6
Parties' written submissions A-VII, 3.1
Patent applications
Accelerated prosecution of European patentapplications E-VIII, 4
European patent applications filed before 1 April
2009 A-III, 11.3
European patent applications filed on or after 1 April
2009 A-III, 11.2
Extension and validation of European patent applications
and patents to/in states not party to the EPC A-III, 12
Preclassification, IPC and CPC classification of European
patent applications B-V
Unpublished patent applications B-IX, 2.2
Patent Cooperation Treaty (Applications under the ~(PCT)) E-IX
Patent documents arranged for systematicaccess B-IX, 2
Patent family system B-IX, 2.4
PCT minimum documentation B-IX, 2.1
Search reports B-IX, 2.3
Unpublished patent applications B-IX, 2.2
Patent family members B-X, 11.3
Patent family system B-IX, 2.4
Patent proprietor
Adherence to the text of the European patent submitted orapproved by the patent proprietor D-VI, 2
Communications from the opposition division to the patent
proprietor D-VI, 4
Decision concerning the admissibility of an opposition, thepatent proprietor being a party D-IV, 5.5
Invitation to the patent proprietor to submit comments andcommunication of opposition to the other parties
concerned by the formalities officer D-IV, 5.2
Notifications to and observations by the patent
proprietor D-IV, 1.5
Procedure where the patent proprietor is notentitled D-VII, 4
Rejection of the opposition as inadmissible by the
opposition division, the patent proprietor not being aparty D-IV, 3
Revocation of the patent in the event that the patent
proprietor no longer wishes the patent to be maintained as
granted D-VIII, 1.2.5
Patent Prosecution Highway (PPH) E-VIII, 4.3
Patent specification
Publication of the patent specification C-V, 10

Patentable biotechnological inventions G-II, 5.2
Payment
Conditions for valid payment A-X, 7.1.1
Date considered as date on which payment ismade A-X, 4
Fee payments lacking a legal basis A-X, 10.1.1
Indication of the purpose of payment in the case of claims
fees A-X, 7.3
Indication of the purpose of the payment in the case ofdesignation fees A-X, 7.2
Late payments A-X, 10.1.2
Methods of payment A-X, 2
Payment by credit card A-X, 4.4
Payment in due time A-X, 6
Late payment of fees A-X, 6.2
Period for payment considered observed A-X, 6.2
Payment of designation fee A-III, 11.2.2
Payment of fees A-III, 13.1
Late payment of fees A-X, 6.2
No deferred payment of fees, no legal aid, nodiscretion A-X, 8
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filingof translations necessary C-V, 4.1
Payment or transfer to a bank account held by theEuropean Patent Organisation A-X, 4.1
Payments to replenish a deposit account A-X, 4.2.2
Purpose of payment A-X, 7, A-X, 7.1.2
Time limit for payment of extension and validation
fees A-III, 12.2
PCT
Application documents filed under Rule 56 EPC, Rule 56a
EPC, Rule 20.5 PCT or Rule 20.5bis PCT B-XI, 2.1
Applications under the Patent Cooperation Treaty(PCT) E-IX
Erroneous elements filed under Rule 20.5bis
PCT C-III, 1.3
International (PCT) searches B-II, 4.4

Alphabetical keyword index - 48
Missing elements and parts filed under Rule 20.5 and 20.6
PCT C-III, 1.2
PCT minimum documentation B-IX, 2.1
Reduction and refunds of fees in respect of international(PCT) applications E-IX, 2.6
Response to PCT actions prepared by the EPO C-II, 3.2
Review by the EPO under Art. 24 PCT and excuse ofdelays under Art. 48(2) PCT E-IX, 2.9.2
Review by the EPO under Art. 25 PCT E-IX, 2.9.1
Pendency of the earlier application A-IV, 1.1.1
Period allowed for remedying deficiencies A-III, 16.2
Period for payment considered observed A-X, 6.2
Amount of fee payable A-X, 6.2.4
Debit orders filed with a competent national
authority A-X, 6.2.3
Fees paid by bank transfer - application of Art. 7(3) and (4)RFees A-X, 6.2.1
Noting of loss of rights A-X, 6.2.5
Safety provision for late replenishment of deposit
accounts A-X, 6.2.2

March 2023
Physical requirements of late-filed application
documents or correct application documents orparts A-III, 3.2.2
Physical requirements other documents A-III, 3.3
Physical values, units F-II, 4.13
Plant
Plant and animal varieties or essentially biologicalprocesses for the production of plants oranimals G-II, 5.4
Essentially biological processes for the production ofplants or animals G-II, 5.4.2
Plant varieties G-II, 5.4.1
Exceptions to patentability G-II, 5.4
Plants, patentability G-II, 5.2
Processes for the production of plants G-II, 5.4
Plurality of independent claims in different
categories F-V, 3.2.2
Plurality of independent claims in the same
category F-V, 3.2.1
Points to be disregarded H-IV, 5.4.3

Periodicals, records, reports, books, etc. B-IX, 3.1
Position of the examining division B-XI, 1.2
Persons
Person skilled in the art B-X, 9.2.1, D-III, 5, D-V, 4,
F-II, 4.1, F-III, 1, F-III, 2, F-III, 3, F-III, 6.3, F-IV, 6.4, G-I, 1,
G-VII, 1, G-VII, 3
Categories of documents (X, Y, P, A, D,etc.) B-X, 9.2.1
Common general knowledge of the skilled
person G-VII, 3.1
Invention G-VII, 1
Inventions relating to biological material F-III, 6.3
Inventive step G-VII, 3
Patentability G-I, 1
Sufficiency of disclosure F-III, 1, F-III, 2, F-III, 3
Support in description F-IV, 6.4
Persons entitled to appeal and to be parties to appeal
proceedings E-XII, 5
Persons entitled to file a divisional application A-IV, 1.1.3
Persons entitled to file an application A-II, 2
Persons participating in the consultation C-VII, 2.2
Photographs A-IX, 1.2, F-II, 5.3
Drawings F-II, 5.3
Graphic forms of presentation considered as
drawings A-IX, 1.2
PhysicalPhysical requirements A-III, 3, E-IX, 2.3.2
Documents making up the application, replacement
documents, translations A-III, 3.2
Examination of formal requirements A-III, 3
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.2
Physical requirements of applications filed byreference to a previously filed application A-III, 3.2.1

Positive
Positive opinion B-XI, 3.9
Positive statements B-XI, 3.2.2
Positive statements/suggestions C-III, 4.1.2
Positive WO-ISA, SISR or IPER E-IX, 3.3.2
Postal services
Filing of applications by delivery by hand or by postal
services A-II, 1.1
Notification by postal services E-II, 2.3
Potentially conflicting European and international
applications B-VI, 4.1
Published European applications as "E"
documents B-VI, 4.1.1
Published international applications (WO) as "E"
documents B-VI, 4.1.2
Potentially conflicting patent documents B-X, 9.2.6
Precedence of opposition proceedings D-X, 7.1
Preclassification (for file routing anddistribution) B-V, 2
Incorrect preclassification B-V, 2.1
Preclassification, IPC and CPC classification ofEuropean patent applications B-V
CPC classification of the application B-V, 4
Definitions B-V, 1
IPC classification of the application B-V, 3
Preclassification (for file routing and distribution) B-V, 2
Predictable disadvantage G-VII, 10.1

March 2023
Prefixes and their symbols used to designate certain
decimal multiples and submultiples F-II, An. 2, 1.3
Preliminary examination E-XIII, 5.2
International preliminary examination E-IX, 1, E-IX, 4.3.3
International preliminary examination report(IPER) F-V, 7.3
Reduction of the examination fee where the international
preliminary examination report is being drawn up by the
EPO A-X, 9.3.2
Preliminary remarks General Part, 1
Preparation of a decision to maintain a European
patent in amended form D-VI, 7.2
Decision on the documents on the basis of which thepatent is to be maintained D-VI, 7.2.2
Procedural requirements D-VI, 7.2.1
Request for publishing fee, translations and a formallycompliant version of amended text passages D-VI, 7.2.3
Preparation of oral proceedings E-III, 5
When can summons to oral proceedings be issued in
substantive examination? E-III, 5.1
Preparation of substantive examination D-IV, 5
Communication of observations from one of the parties tothe other parties D-IV, 5.4
Decision concerning the admissibility of an opposition, thepatent proprietor being a party D-IV, 5.5
Examination of the admissibility of an intervention andpreparations in the event of an intervention D-IV, 5.6
Filing of amended documents in reply to the notice of
opposition D-IV, 5.3
Inadmissibility at a later stage D-IV, 5.1
Invitation to the patent proprietor to submit comments andcommunication of opposition to the other parties
concerned by the formalities officer D-IV, 5.2
Preparation of the decision D-VI, 7
Preparation of a decision to maintain a European patent inamended form D-VI, 7.2
Preparation of the search report B-IV, 3.1
Presentation of the sheets of drawings A-IX, 4
Numbering of sheets of drawings A-IX, 4.2
Usable surface area of sheets A-IX, 4.1
Presentations of information G-II, 3.7
User interfaces G-II, 3.7.1
Preventing publication A-VI, 1.2
Principle of equity D-IX, 1.4
Principles
Basic principles H-IV, 3.1
Basic principles of decisions E-X, 1
General principles in opposition proceedings E-VI, 2.1
Principles relating to the exercise of discretion E-VI, 2.2.3

Alphabetical keyword index - 49
Printing quality F-II, 5.2
Prior
Prior art
Citation of prior art in the description after the filingdate H-IV, 2.2.7
Closest prior art and its effects on the
search B-IV, 2.5
Combining pieces of prior art G-VII, 6
Determination of the closest prior art G-VII, 5.1
Evaluation of prior art documents cited in search reportand late priority claim C-III, 7
Information on prior art E-IX, 2.3.5.2
Non-unity and prior art F-V, 3.1
Non-unity and prior art under Art. 54(2) F-V, 3.1.2
Non-unity and prior art under Art. 54(3) F-V, 3.1.1
Requesting information on prior art (not confined topriority) C-III, 6
Prior right
National prior rights B-VI, 4.2, C-IV, 7.2
Prior use
Matters to be determined by the division as regards
prior use G-IV, 7.2
Public prior use G-IV, 1
Priority B-VI, 3, F-VI, F-VI, 1.2, G-IV, 3, G-IV, 5.1
Applications giving rise to a right of priority A-III, 6.2
Certified copy of the previous application (priority
document) F-VI, 3.3
Claiming priority F-VI, 3
Conflict with other European applications G-IV, 5.1
Copy of the previous application (priority
document) A-III, 6.7
Copy of the priority application A-II, 5.4.3, A-II, 6.4.2
Copy of the search results for the priority or
priorities A-III, 6.12, C-II, 5
Correct application documents based on priority
application, no change in the filing date A-II, 6.4
Date of priority A-IV, 1.2.1, A-IV, 1.2.2, A-IV, 2.5,
C-IX, 1.1, C-IX, 2.1, F-VI, 1.2, G-IV, 3, G-IV, 5.1
Declaration of priority A-III, 6.5, F-VI, 3.1, F-VI, 3.4
European Patent Application F-VI
Examination of the priority document A-III, 6.4
Examining the validity of a right to priority F-VI, 2.1
Further action upon examination of replies further action
where a request for a translation of the priority application
was sent earlier in examination proceedings C-IV, 3.1
Intermediate publication of the contents of the priority
application F-VI, 2.4.1
Late-filed missing parts when priority isclaimed A-II, 5.4.1
Later-filed correct application documents or parts whenpriority is claimed A-II, 6.4.1
Loss of right to priority A-III, 6.10
Missing parts are completely contained in the priority
application A-II, 5.4.2
Missing parts based on the priority application, no change
in filing date A-II, 5.4
Multiple priorities A-III, 6.3, A-III, 6.7, E-VIII, 1.5, F-VI, 1.5
Non-entitlement to right to priority A-III, 6.9

Alphabetical keyword index - 50
Period of priority A-III, 6.1, A-III, 6.6, A-III, 6.9,
E-IX, 2.3.5.3, F-VI, 1.3, F-VI, 3.6
Priority claim F-III, 6.4
Correcting an existing priority claim A-III, 6.5.2
Deficiencies in the priority claim and loss of the priority
right A-III, 6.5.3
Doubts as to the validity of the priority claim B-VI, 5.3
Evaluation of prior art documents cited in search reportand late priority claim C-III, 7Filing a new priority claim A-III, 6.5.1
Priority claim not valid F-VI, 2.3
Priority claim of a divisional application A-IV, 1.2.2
Withdrawal of priority claim E-VIII, 8.2, F-VI, 3.5
Priority claim and the search opinion B-XI, 4
Use of "P" and "E" documents in the search
opinion B-XI, 4.1
Priority date
Date of filing or priority date as effective date G-IV, 3
Determining priority dates F-VI, 2
Effect of change in priority date E-VIII, 1.5
Filing and priority date B-VI, 5
Some examples of determining priority
dates F-VI, 2.4
Verification of claimed priority date(s) B-VI, 5.1
Priority date as effective date F-VI, 1.2
Date of filing or priority date as effective date G-IV, 3
Priority documents A-VII, 3.3, A-XI, 5.2, E-IX, 2.3.5.1,
F-VI, 3.4, H-IV, 2.2.6
Claim to priority E-IX, 2.3.5.1, F-VI, 3.4Content of the application as "originally"
filed H-IV, 2.2.6
Derogations from the language of the proceedings inwritten proceedings A-VII, 3.3
Issuance of certified copies A-XI, 5.2
Priority documents issued by the EPO A-XI, 5.2
Priority period A-III, 6.6
Re-establishment of rights in respect of the priority
period F-VI, 3.6
Priority right F-VI, 1.2, F-VI, 1.5, F-VI, 2.2, G-IV, 3
Deficiencies in the priority claim and loss of the priority
right A-III, 6.5.3
Requesting information on prior art (not confined topriority) C-III, 6
Restoration of priority E-IX, 2.3.5.3
Right to priority F-VI, 1
Right to priority F-VI, 1.2
Situation in which it has to be checked whether theapplication from which priority is actually claimed is the"first application" within the meaning of Art.
87(1) F-VI, 2.4.4
State of the art at the search stage B-VI, 3
Translation of the priority application A-II, 5.4.4,
A-II, 6.4.3
Validly claiming priority F-VI, 1.3
Problem-solution approach G-VII, 5
Claims comprising technical and non-technicalfeatures G-VII, 5.4
Could-would approach G-VII, 5.3
Determination of the closest prior art G-VII, 5.1

March 2023
Formulation of the objective technical problem G-VII, 5.2
Procedural aspects H-VI, 3.3
Amendments in the case of non-unity further procedural
aspects concerning Euro-PCT applications H-II, 6.4
Procedure after searching B-IV, 3
Documents discovered after completion of thesearch B-IV, 3.2
Errors in the search report B-IV, 3.3
Preparation of the search report B-IV, 3.1
Procedure for amendments to documents H-III, 2
Amendment by submitting missing documents or by filingreplacement pages H-III, 2.2
Amendments made by the EPO at the request of aparty H-III, 2.4
Amendments using copies H-III, 2.3
Indication of amendments and their basis under Rule137(4) H-III, 2.1
Withdrawal of amendments/abandonment of subject
matter H-III, 2.5
Procedure for the examination of the opposition D-VI
Additional search D-VI, 5
Adherence to the text of the European patent submitted orapproved by the patent proprietor D-VI, 2
Communications from the opposition division to the patent
proprietor D-VI, 4
Examination of the opposition during oralproceedings D-VI, 6
Invitation to file observations D-VI, 3
Preparation of the decision D-VI, 7
Request to adjourn opposition proceedings D-VI, 8
Procedure for the fixing of costs D-IX, 2Appeal against the fixing of costs by the opposition
division D-IX, 2.2
Fixing of costs by the opposition division D-IX, 2.1
Procedure formalities officer A-III, 16.1
Procedure in examination proceedings E-III, 8.3.3.3,
E-III, 8.7.2
Handwritten amendments in oral proceedings E-III, 8.7.2
Late arrival, non-appearance and failure toconnect E-III, 8.3.3.3
Procedure in opposition proceedings E-III, 8.3.3.2,
E-III, 8.7.3
Handwritten amendments in oral proceedings E-III, 8.7.3
Late arrival, non-appearance and failure toconnect E-III, 8.3.3.2
Procedure in the case of lack of unity during
search F-V, 4Consequences for the applicant F-V, 4.2
Provisional opinion accompanying the partial search
results F-V, 4.1

March 2023
Procedure in the case of lack of unity during
substantive examination F-V, 5
Objections to unsearched inventions F-V, 5.2
Review of non-unity findings F-V, 5.3
Procedure on filing A-II, 3
Confirmation A-II, 3.1
Filing with a competent national authority A-II, 3.2
Receipt A-II, 3.1
Procedure prior to searching B-IV, 1
Analysis of the application B-IV, 1.1
Documents cited or supplied by the applicant B-IV, 1.3
Formal deficiencies B-IV, 1.2
Procedure up to substantive examination D-IV
Activity of the opposition division D-IV, 2
Examination for deficiencies in the notice of oppositionand communications from the formalities officer arisingfrom this examination D-IV, 1
Preparation of substantive examination D-IV, 5
Rejection of the opposition as inadmissible by the
opposition division, the patent proprietor not being aparty D-IV, 3
Termination of opposition proceedings in the event of
inadmissible opposition D-IV, 4
Procedure where the patent proprietor is notentitled D-VII, 4Continuation of proceedings D-VII, 4.2
Department responsible D-VII, 4.4
Interruption of time limits D-VII, 4.3
Stay of proceedings D-VII, 4.1
Procedures before the competent authority E-IV, 3.4
Procedures in cases of lack of unity B-VII, 2
Complete search despite of lack of unity B-VII, 2.2
Request for refund of further search fee(s) B-VII, 2.1
Supplementary European search B-VII, 2.3
Proceedings
Adjournment of oral proceedings due to lack oftime E-III, 8.11.2
Admissibility in opposition and limitation
proceedings H-VI, 2.1.1
Admissibility in the examination procedure at an advanced
stage of the proceedings H-II, 2.4
Admission of the public to proceedings E-III, 8.1
Amendments filed in preparation for or during oralproceedings E-VI, 2.2.2
Amendments filed in reply to a Rule 71(3) communication
further course of proceedings H-II, 2.5.2
Ancillary proceedings D-II, 4.3
Art. 61 applications and stay of proceedings under Rule
14 A-IV, 2
Auxiliary requests in examination proceedings H-III, 3.3
Auxiliary requests in limitation proceedings H-III, 3.5
Auxiliary requests in opposition proceedings H-III, 3.4
Cancellation or maintenance of oralproceedings E-III, 7.2

Alphabetical keyword index - 51
Cases in which the proceedings may beinterrupted E-VII, 1.1
Change of date of oral proceedings E-III, 7.1.3
Change of date of oral proceedings at the instigation of thedivision E-III, 7.1.2
Change of date, cancellation or maintenance of oralproceedings E-III, 7
Changing the date of oral proceedings E-III, 7.1
Checking the identity and authorisations of participants atoral proceedings E-III, 8.3.1
Closure of oral proceedings E-III, 8.11
Communications/oral proceedings after
resumption C-V, 4.7.1
Compliance of amendments with other EPC requirements
in examination proceedings H-IV, 5.2
Compliance of amendments with other EPC requirements
in limitation proceedings H-IV, 5.4
Compliance of amendments with other EPC requirements
in opposition proceedings H-IV, 5.3
Conduct of oral proceedings E-III, 8, E-III, 8.2
Consolidation of proceedings E-VII, 4Continuation of proceedings D-VII, 4.2
Continuation of the opposition proceedings in the cases
covered by Rule 84 D-VII, 5Continuation regardless of the stage reached in national
proceedings D-VII, 4.2.2
Correction of the decision to grant while opposition
proceedings are pending H-VI, 3.3
Costs arising from oral proceedings or taking ofevidence E-IV, 1.9
Date of the stay of proceedings A-IV, 2.2.2, D-VII, 4.1.1
Decision on closure of the opposition
proceedings D-VIII, 2.5
Decisions which do not terminate
proceedings D-VIII, 2.2, E-X, 3
Derogations from the language of the proceedings in oralproceedings A-VII, 4, E-V
Derogations from the language of the proceedings inwritten proceedings A-VII, 3
Details and special features of the proceedings D-VII
Different text where a transfer of right takes placepursuant to Art. 61 in examination
proceedings H-III, 4.3.1
Different texts where a transfer of the patent in respect ofcertain designated states takes place in opposition
proceedings H-III, 4.3.2
Examination of the opposition during oralproceedings D-VI, 6
Examination proceedings (ex parte) E-III, 8.5.1.2
Format of oral proceedings E-III, 1.2
Further action upon examination of replies further action
where a request for a translation of the priority application
was sent earlier in examination proceedings C-IV, 3.1
General principles in opposition proceedings E-VI, 2.1
Handwritten amendments in oral proceedings E-III, 8.7
Influencing the speed of examination proceedings C-VI, 2Interruption of proceedings E-VII, 1.3
Interruption, stay and consolidation of theproceedings E-VII

Alphabetical keyword index - 52
Language of proceedings A-IV, 1.3.3, A-VII, 1.3, A-VII, 2,
A-VII, 3.2, A-VII, 4, A-VII, 8, B-X, 3.2, E-IX, 2.1.3
Late-filed requests after summons to oral proceedings in
examination H-II, 2.7
Late-filed requests in opposition proceedings H-II, 3.5
Legal character and effect of the stay ofproceedings D-VII, 4.1.2
Minutes of oral proceedings E-III, 10
Opening of oral proceedings E-III, 8.3, E-III, 8.3.2
Opening of the substantive part of theproceedings E-III, 8.4
Opposition cases with different texts where a transfer ofrights by virtue of a final decision pursuant to Art. 61 takes
place in examination proceedings H-III, 4.3.3
Opposition proceedings (inter partes) E-III, 8.5.1.1
Opposition proceedings where the claims as granted are
different for different contracting states H-III, 4.5
Oral proceedings C-VII, 5, D-VI, 1, E-III, H-III, 3.4.2,
H-III, 3.5.3
Oral proceedings at the instance of the EPO E-III, 4
Oral proceedings at the request of a party E-III, 2
Parties to opposition proceedings D-I, 6
Persons entitled to appeal and to be parties to appeal
proceedings E-XII, 5
Precedence of opposition proceedings D-X, 7.1
Preparation of oral proceedings E-III, 5
Procedure in examination proceedings E-III, 8.3.3.3,
E-III, 8.7.2
Procedure in opposition proceedings E-III, 8.3.3.2,
E-III, 8.7.3
Public proceedings E-III, 8.1
Relation to opposition proceedings D-X, 7
Request for further oral proceedings E-III, 3
Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or is deemed
not to have been filed E-III, 2.1
Request for oral proceedings to be held on EPO
premises E-III, 1.3
Request to adjourn opposition proceedings D-VI, 8
Request to hold on-site oral proceedings at a particularsite E-III, 1.4
Requesting postponement during oralproceedings E-III, 8.11.1
Requests to change the date of oralproceedings E-III, 7.1.1
Resumption E-VII, 1.3, E-VIII, 1.4
Resumption after final decision in entitlement
proceedings A-IV, 2.2.5.1
Resumption of proceedings E-VII, 1.4
Resumption of the proceedings for grant A-IV, 2.2.5
Resumption regardless of the stage of entitlement
proceedings A-IV, 2.2.5.2
Rule 137(4) and oral proceedings H-III, 2.1.3
Sequence of proceedings D-VII, 1
Stay of proceedings D-VII, 4.1
Stay of proceedings for grant A-IV, 2.2
Stay of proceedings under Rule 14 due to pending
national entitlement proceedings E-VII, 2
Stay of proceedings when a referral to the Enlarged Boardof Appeal is pending E-VII, 3

March 2023
Submissions filed in preparation for or during oralproceedings E-VI, 2.2
Summons to oral proceedings D-VI, 3.2, E-III, 6
Summons to oral proceedings as the first action in
examination C-III, 5
Termination of opposition proceedings in the event of
inadmissible opposition D-IV, 4
Use of computer-generated slideshows in oralproceedings E-III, 8.5.1
Use of Rule 137(4) for amendments filed during oralproceedings in examination E-III, 8.8
When can summons to oral proceedings be issued in
substantive examination? E-III, 5.1
Withdrawal of the request for oral proceedings E-III, 7.2.2
Written submissions during oral proceedings byvideoconference E-III, 8.5.2
Producing evidence C-VII, 4.2
Product claim
Product claim to method claim H-V, 7.2
Product claim to use claim H-V, 7.1
Product claim with process features F-IV, 4.12.1
Product-by-process claim F-IV, 4.12
Product claim with process features F-IV, 4.12.1
Products F-IV, 3.1, F-IV, 4.12, G-II, 4.2, G-II, 5.4,
G-II, 5.5.1
First or further medical use of known products G-VI, 7.1
Intermediate and final products F-V, 3.2.7
Products that may be claimed for a further medical
use G-VI, 7.1.1
Professional representatives (List of ~)A-VIII, 1.2

Programs for computers G-II, 3.6
Data retrieval, formats and structures G-II, 3.6.3
Database management systems and information
retrieval G-II, 3.6.4
Examples of further technical effects G-II, 3.6.1
Information modelling, activity of programming andprogramming languages G-II, 3.6.2
List of exclusions G-II, 3.6
Prohibited matter A-III, 8, A-IX, 6, E-IX, 2.3.7, F-II, 7,
G-II, 4.1.1
Categories F-II, 7.1
Content of a European patent application (other thanclaims) F-II, 7
Disparaging statements A-III, 8.2, F-II, 7.3
Examination of formal requirements A-III, 8
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.7
Irrelevant or unnecessary matter F-II, 7.4
Matter contrary to "ordre public" or morality F-II, 7.2
Matter contrary to "ordre public" or morality G-II, 4.1.1
Morality or "ordre public" A-III, 8.1
Omission of matter from publication F-II, 7.5
Proper names, trade marks and trade names F-III, 7

March 2023
Property (Use on non-public ~)Alphabetical keyword index - 53
G-IV, 7.2.3

Published European applications as "E"
documents B-VI, 4.1.1

Proprietor of the patent
Death or legal incapacity E-VII, 1.1
Joint proprietors D-I, 6
Proprietor of the patent is not entitled D-I, 6

Published international applications (WO) as "E"
documents B-VI, 4.1.2

Prosecution of the application by a third
party A-IV, 2.4

Purpose of Part A A-I, 3

Protection
Assessment of impermissible extension of the protection
conferred H-IV, 3.4
Extent of protection F-IV, 4.12
Protection conferred by the patent as granted H-IV, 3.2
Provisional protection E-IX, 2.5.1

Purpose of examination C-I, 4

Purpose of Part B B-I, 1
Purpose of payment A-X, 7, A-X, 7.1.2
Indication of the purpose of payment in the case of claims
fees A-X, 7.3
Indication of the purpose of the payment in the case ofdesignation fees A-X, 7.2

Provisional opinion accompanying the partial search
results F-V, 4.1

Purpose of the abstract F-II, 2.1

Provisional protection E-IX, 2.5.1

Q

PublicAdmission of the public to proceedings E-III, 8.1
Information to the public D-I, 8
Matter contrary to "ordre public" or morality F-II, 7.2,
G-II, 4.1
Morality or "ordre public" A-III, 8.1
Public availability of biological material F-III, 6.2
State of the art made available to the public "by means ofa written or oral description, by use, or in any otherway" G-IV, 7
State of the art made available to the public in writing
and/or by any other means G-IV, 7.4
Publication
Burden of proof other "print equivalent"publications G-IV, 7.5.3.2
Non-traditional publications G-IV, 7.5.3.3
Publication of a new specification of the patent D-VII, 7
Publication of application A-VI, A-VI, 1
Content of the publication A-VI, 1.3
Date of publication A-VI, 1.1
Instructions in Chapter A-VI ("Publication of
application; request for examination and transmissionof the dossier to examining division") E-IX, 2.5
Preventing publication A-VI, 1.2
Publication in electronic form only A-VI, 1.4
Publication of application no publication A-VI, 1.2
Request for examination and transmission of thedossier to the examining division A-VI, 2
Response to the search opinion A-VI, 3
Separate publication of the European search
report A-VI, 1.5
Publication of bibliographic data before publication of theapplication A-XI, 2.6
Publication of the international application E-IX, 2.5.1
Publication of the patent specification C-V, 10
Withdrawal before publication of the patent
specification C-V, 11

Qualifier "mol_type" F-II, 6.2.4

R"Reach-through" claims F-III, 9Novelty of "reach-through" claims G-VI, 9
Reaction to the extended European search report(EESR) B-XI, 8
Reallocation instead of refund A-X, 10.4
Reasoned objections B-XI, 3.2.1, C-III, 4.1.1
Reasoning B-XI, 3.2.1, C-III, 4.1.1
Reasoned statement D-VI, 4.1
Reasoning B-XI, 3.2, C-III, 4.1, E-X, 1.3.3
Analysis of the application and content of the search
opinion B-XI, 3.2
First communication C-III, 4.1
Form and content E-X, 1.3.3
Positive statements B-XI, 3.2.2
Positive statements/suggestions C-III, 4.1.2
Reasoned objections B-XI, 3.2.1, C-III, 4.1.1
Reasoning for a lack of unity objection F-V, 3.3
Minimum requirements for reasoning of lack ofunity F-V, 3.3.1
Reasoning of decisions E-X, 2.6
Receipts A-II, 3.1
Receiving Office
Rectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9.3
Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9

Alphabetical keyword index - 54
Receiving Section
Competence A-X, 10.2.1
Examination as to formal requirements A-III, 3.2
Recommendation to grant C-VIII, 2
Recommendation to refuse C-VIII, 3
Record of search strategy B-X, 3.4
Recording E-III, 8.2.4
Video recordings E-IV, 1.12
Rectification of errors made by the receiving Office or
the International Bureau E-IX, 2.9.3
Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9
Reduction
Reduction and refunds of fees in respect of international(PCT) applications E-IX, 2.6
Reduction in examination fee A-VI, 2.6, A-X, 9.2.3
Request for examination and transmission of thedossier to the examining division A-VI, 2.6
Reduction of fees A-X, 9Special reductions A-X, 9.3
Reduction of the examination fee where the international
preliminary examination report is being drawn up by the
EPO A-X, 9.3.2
Reduction of the search fee for a supplementary European
search A-X, 9.3.1
Reduction under the language arrangements A-X, 9.2
Conditions A-X, 9.2.1
Reduction of the examination fee A-X, 9.2.3
Reduction of the filing fee A-X, 9.2.2
Re-establishment of rights A-III, 6.6, E-VIII, 3,
E-IX, 2.3.5.3, E-IX, 2.9.2, F-VI, 3.6
Admissibility of the request E-VIII, 3.1
Claiming priority E-IX, 2.3.5.3, F-VI, 3.6
Decision on re-establishment of rights E-VIII, 3.3
Merit of the request E-VIII, 3.2
Re-establishment of rights in respect of the priority
period F-VI, 3.6
Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9.2
Time limits, loss of rights, further and accelerated
processing and re-establishment of rights E-VIII, 3
Time limits, loss of rights, further and accelerated
processing and re-establishment of rights E-VIII
Reference
Reference documents F-III, 8, H-V, 2.5
Amendments in the description H-V, 2.5
Sufficiency of disclosure F-III, 8
Reference in the description to drawings F-II, 4.7,
F-IV, 4.17
Clarity and interpretation of claims F-IV, 4.17
Description (formal requirements) F-II, 4.7

March 2023
Reference signs F-II, 4.8, F-IV, 4.18
Clarity and interpretation of claims F-IV, 4.18
Consistent use of reference signs as between
description, claims and drawings A-IX, 7.5.4
Consistent use of reference signs as between
drawings A-IX, 7.5.5
Description (formal requirements) F-II, 4.8
Numbers, letters and reference signs A-IX, 7.5
Reference to a previously filed application A-II, 4.1.3.1
Application was filed by reference to a previously filed
application A-IV, 4.1.2
Physical requirements of applications filed byreference to a previously filed application A-III, 3.2.1
Sequence listings of an application filed by reference
to a previously filed application A-IV, 5.3
Reference to sequences disclosed in a database F-II, 6.1
Reformulation of the subject of the search B-IV, 2.4
Refund A-X, 10.1.3, A-X, 10.2.1, A-X, 10.2.2, B-VII, 2.1,
C-III, 3.4
Reduction and refunds of fees in respect of international(PCT) applications E-IX, 2.6
Refund of additional search fees C-III, 3.4
Refund of examination fee A-VI, 2.5, A-X, 10.2.3
Request for examination and transmission of thedossier to the examining division A-VI, 2.5
Special refunds A-X, 10.2.3
Refund of fees A-X, 10
Method of refund A-X, 10.3
Reallocation instead of refund A-X, 10.4
Special refunds A-X, 10.2
Refund of the fee for grant and publishing A-X, 10.2.5,
C-V, 9Final stage of examination C-V, 9Special refunds A-X, 10.2.5
Refund of the further search fee A-X, 10.2.2
Refund of the search fee A-X, 10.2.1
Refund pursuant to Rule 37(2) A-X, 10.2.4
Refunds to a bank account A-X, 10.3.2
Refunds to a deposit account A-X, 10.3.1
Request for refund of further search fee(s) B-VII, 2.1
Refusal C-V, 4.7.3, C-V, 14
Issuing a further communication (no refusal) C-V, 15.4
Refusal of the earlier application A-IV, 2.6
Refusal to admit amendments under Rule137(3) E-X, 2.11
Register of European Patents A-XI, 1
Entries D-I, 6
Registered letter E-II, 2.3
Registered trade marks F-II, 4.14
Registration E-XIV, 6.1
Cancellation of the registration E-XIV, 6.2

March 2023
Registration of changes of name, transfers, licences andother rights E-XIV
Changes of name E-XIV, 5
Licences and other rights E-XIV, 6
Responsible department E-XIV, 2
Transfer of the European patent E-XIV, 4
Transfer of the European patent application E-XIV, 3
Reimbursement for witnesses andexperts E-IV, 1.10.1, E-IV, 1.10.2
Reimbursement of appeal fees E-XII, 7.3
Rejection of the opposition D-VIII, 1.3
Communication in the event of deficiencies as describedin D-IV, 1.2.2 which, if not remedied, will lead to rejectionof the opposition as inadmissible D-IV, 1.3.2
Rejection of the opposition as inadmissible by the
opposition division, the patent proprietor not being aparty D-IV, 3
Rejection of the request D-X, 6
Relation to opposition proceedings D-X, 7Filing of opposition after decision on limitation D-X, 7.2
Precedence of opposition proceedings D-X, 7.1
Relation to unity in search C-III, 3.2, C-III, 3.2.1
Additional search fees paid C-III, 3.2.2
Invitation to pay additional search fees combined withinvitation to restrict the scope of the search C-III, 3.2.3
Limitation to searched invention no additional search fees
paid C-III, 3.2.1
Relationship between documents and claims B-X, 9.3
Relative terms F-IV, 4.6
Clarity objections F-IV, 4.6.1
Interpretation of relative terms F-IV, 4.6.2
Relevant date of a prior-art document G-VI, 3
Remittal to the board of appeal E-XII, 7.2
Remittal to the division after appeal E-XII, 9
Renewal fees A-IV, 1.4.3, A-X, 5.2.4, E-IX, 2.3.12
Due date for specific fees A-X, 5.2.4
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.12
Renunciation of rights E-VIII, 8
Statement of withdrawal E-VIII, 8.3
Surrender of patent E-VIII, 8.4
Withdrawal of application or designation E-VIII, 8.1
Withdrawal of priority claim E-VIII, 8.2
Repeatability of results of microbiologicalprocesses G-II, 5.5.2
Replacement documents and translations A-VIII, 2.2

Alphabetical keyword index - 55
Replacement or removal of features from aclaim H-V, 3.1
Reply
Reply explicitly disapproving the proposed text without
indicating an alternative text C-V, 4.9
Reply in time B-VIII, 3.2.2, C-V, 3
Failure to reply in time B-VIII, 4.2.1
Failure to reply in time or no reply B-VIII, 3.2.1
Reply to the invitation under Rule 62a(1) B-VIII, 4.2
Failure to reply in time B-VIII, 4.2.1
Reply filed in time B-VIII, 4.2.2
Reply to the invitation under Rule 63(1) B-VIII, 3.2
Failure to reply in time or no reply B-VIII, 3.2.1
Representation A-III, 2, A-VIII, 1, A-VIII, 3.1, D-I, 7
Common provisions A-VIII, 1
Common representative A-VIII, 1.4
Examination of formal requirements A-III, 2
General authorisation A-VIII, 1.7
Invitation to file authorisation and legal consequence incase of non-compliance A-VIII, 1.8
List of professional representatives A-VIII, 1.2
Non-compliance A-III, 2.2
Representation by a legal practitioner A-VIII, 1.5
Representation by a professional
representative A-VIII, 1.2
Representation by an employee A-VIII, 1.3
Representation of drawings A-IX, 2
Figure accompanying the abstract A-IX, 2.3
Grouping of drawings A-IX, 2.1
Reproducibility of drawings A-IX, 2.2
Representation, address for correspondence E-IX, 2.3.1
Requirements A-III, 2.1
Signature of documents A-VIII, 3.1
Signed authorisation A-VIII, 1.6
Representatives
Appointment of representatives A-VIII, 1.1
Authorisations A-VIII, 1.1, A-VIII, 1.6
Common representatives A-VIII, 1.4
List of professional representatives A-VIII, 1.2, A-VIII, 1.5
Notification to representatives E-II, 2.5
Participation of parties and their representatives fromdifferent locations E-III, 8.2.1
Reproducibility of drawings A-IX, 2.2
RequestAdmissibility in the examination procedure further requests
for amendment after approval H-II, 2.6
Admissibility of auxiliary requests H-III, 3.3.2
Admissibility of the request E-VIII, 3.1
Amended main/single request filed with theappeal E-XII, 7.4.2
Amendments made by the EPO at the request of aparty H-III, 2.4
Auxiliary requests H-III, 3
Auxiliary requests in examination proceedings H-III, 3.3
Auxiliary requests in limitation proceedings H-III, 3.5

Alphabetical keyword index - 56
Auxiliary requests in opposition proceedings H-III, 3.4
Auxiliary requests in the search phase H-III, 3.2
Complete text for auxiliary request available H-III, 3.3.5
Complete text for auxiliary request not yet
available H-III, 3.3.4
Confidentiality of the request A-XI, 2.4
Criteria for admissibility of auxiliary requests H-III, 3.3.2.1
Decision on a notified loss of rights at the request of theperson concerned D-VIII, 2.3
Decision on request for revocation D-X, 3
Decision on the request and the taking ofevidence E-IV, 2.4
Deficiencies which lead to the request being deemed not
to have been filed D-X, 2.1
Deficiencies which, if not remedied, lead to the request
being rejected as inadmissible D-X, 2.2
Entitlement to file the request E-VIII, 3.1.2
Examination for deficiencies in the request D-X, 2
Fees payable for procedural and otherrequests A-X, 5.2.7
Form of the request and applicable time limit E-VIII, 3.1.3
Formal procedure for limitation when the request isallowable D-X, 5
Further action upon examination of replies further action
where a request for a translation of the priority application
was sent earlier in examination proceedings C-IV, 3.1
Further requests for amendment after approval C-V, 5
Higher-ranking request not admissible and/or notallowable C-V, 4.7.1.1
Indication of the amendments made in the requests and of
their basis H-III, 3.3.1
Late-filed requests after summons to oral proceedings in
examination H-II, 2.7
Late-filed requests in opposition proceedings H-II, 3.5
Main and auxiliary requests E-X, 2.9
Main and auxiliary requests filed with theappeal E-XII, 7.4.3
Merit of the request E-VIII, 3.2
Multiple requests D-X, 11
Neither main nor auxiliary requests allowable H-III, 3.1.3
Oral proceedings at the request of a party E-III, 2
Rejection of the request D-X, 6
Request for a decision according to the state of thefile C-V, 15.1
Request for amendments or corrections in reply to theRule 71(3) communication C-V, 4
Adaptation of the description C-V, 4.5
Admissibility of amendments C-V, 4.4
Amendments not admitted and/or not allowable,
examination resumed C-V, 4.7
Amendments or corrections should bereasoned C-V, 4.3
Amendments/corrections admitted and allowable second Rule 71(3) communication sent C-V, 4.6
Amendments/corrections filed in second Rule 71(3)period C-V, 4.10
Crediting of fees paid voluntarily C-V, 4.2
Fees to be paid within the second Rule 71(3)period C-V, 4.8

March 2023
Reply explicitly disapproving the proposed text without
indicating an alternative text C-V, 4.9
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filingof translations necessary C-V, 4.1
Request for conversion A-IV, 6
Request for correction of minutes E-III, 10.4
Request for documents D-VII, 2
Request for examination C-II, 1, E-IX, 2.5.2
Confirmation of the intention to proceed further withthe application C-II, 1.1
Euro-PCT applications C-II, 1.2
Filing fee, designation fee, request for examination andsearch fee E-IX, 2.1.4
Instructions in Chapter A-VI ("Publication of
application; request for examination and transmissionof the dossier to examining division") E-IX, 2.5
Invention to be examined C-II, 1.3
Responsibility of the Receiving Section and the
Examining Division A-III, 3.2, C-II, 1
Search, publication and request for examination ofdivisional applications A-IV, 1.8
Time limit for filing the request for
examination A-VI, 2.2
Time limits E-VII, 1.5
Request for examination and transmission of the dossier
to examining division A-VI, A-VI, 2
Communication A-VI, 2.1
Instructions in Chapter A-VI ("Publication of
application; request for examination and transmissionof the dossier to examining division") E-IX, 2.5
Legal remedy A-VI, 2.3
Publication of application A-VI, 1
Reduction in examination fee A-VI, 2.6
Refund of examination fee A-VI, 2.5
Response to the search opinion A-VI, 3Time limit for filing the request for
examination A-VI, 2.2
Transmission of the dossier to the examining
division A-VI, 2.4
Request for further oral proceedings E-III, 3
Request for grant A-III, 4, A-IV, 1.3.2, E-IX, 2.3.3, F-II, 3
Examination of formal requirements A-III, 4
Examination of the request for grant form A-III, 4.2
Examination of the request for grant form further
requirements laid down by Rule 41(2) A-III, 4.2.3
Filing a divisional application A-IV, 1.3.2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.3
Request for grant form A-III, 11.3.5
Examination of the request for grant form A-III, 4.2
Examination of the request for grant form further
requirements laid down by Rule 41(2) A-III, 4.2.3
Request for grant of an EP, form A-III, 13.2
Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or is deemed
not to have been filed E-III, 2.1
Request for oral proceedings to be held on EPO
premises E-III, 1.3

March 2023
Request for publishing fee, translations and a formallycompliant version of amended text passages D-VI, 7.2.3
Request for refund of further search fee(s) B-VII, 2.1
Request for the conservation of evidence E-IV, 2.2
Request from a national court for a technical opinion
concerning a European patent E-XIII
Composition and duties of the examining
division E-XIII, 3
Language to be used E-XIII, 4
Procedure E-XIII, 5
Scope of the technical opinion E-XIII, 2
Request to adjourn opposition proceedings D-VI, 8
Request to hold on-site oral proceedings at a particularsite E-III, 1.4
Requesting information on prior art (not confined topriority) C-III, 6
Requesting postponement during oralproceedings E-III, 8.11.1
Requests for samples of biological material A-IV, 4.4
Requests to change the date of oralproceedings E-III, 7.1.1
Rule 137(3) in conjunction with auxiliary
requests H-II, 2.3.1.4
Second Rule 71(3) communication based on higherranking request initially rejected in first Rule 71(3)communication C-V, 4.6.2
Sequence of requests H-III, 3.1.1
Substantiation of the request E-VIII, 3.1.4
Timeliness and structure of auxiliary
requests H-III, 3.3.2.2
Withdrawal of the extension or validation
request A-III, 12.3
Withdrawal of the request D-X, 9, E-XIII, 5.3
Withdrawal of the request for oral proceedings E-III, 7.2.2
Requirement of unity of invention F-V, 2
Division's approach F-V, 2.2
Insufficient grounds for lack of unity F-V, 2.1
Requirements as to form E-X, 2.3
Requirements for entry into the European
phase E-IX, 2.1.1
Requirements relating to sequence length andenumeration of residues F-II, 6.2.1
Residence or principal place of business A-III, 2.1,
A-VI, 2.6, A-VII, 3.2, A-VIII, 1.1, A-VIII, 1.3, A-X, 9.2.1,
D-III, 6, D-IV, 1.2.2.2, D-VII, 6
Response
Response filed before first communication in
examination C-II, 3
Invitation under Rule 70a(1) C-II, 3.3
Response to PCT actions prepared by the
EPO C-II, 3.2
Response to communication pursuant to Rule 58 filed withthe appeal E-XII, 7.4.4

Alphabetical keyword index - 57
Response to the search opinion A-VI, 3, C-II, 3.1
Amendments made in response to the search
opinion C-III, 2.1
Comments and amendments in response to the search
opinion B-XI, 3.3
Responsibility A-III, 7.2
Responsibility for formalities examination A-I, 2
Responsible department A-IV, 2.2.1, E-VII, 1.2,
E-XIV, 2Interruption E-VII, 1.2
Registration of changes of name, transfers, licences andother rights E-XIV, 2
Stay of proceedings for grant A-IV, 2.2.1
Restoration of priority E-IX, 2.3.5.3
Restricted IPER F-V, 7.4
Restrictions B-IV, 2.1
Restriction of the subject of the search B-X, 8
Restriction to a single, searched invention H-II, 6.1
Restriction to an unsearched invention H-II, 6.2
Restrictions to file inspection A-XI, 2.3
Result to be achieved F-IV, 4.10
Resumption
Resumption of proceedings E-VII, 1.4
Resumption of the proceedings for grant A-IV, 2.2.5
Resumption after final decision in entitlement
proceedings A-IV, 2.2.5.1
Resumption regardless of the stage of entitlement
proceedings A-IV, 2.2.5.2
Resumption of time limits E-VII, 1.5
Review
Review by the EPO as a designated/elected Office andrectification of errors made by the receiving Office or theInternational Bureau E-IX, 2.9
Determination of filing date in the case of erroneously
filed elements or parts of the international
application E-IX, 2.9.4
Rectification of errors made by the receiving Office or
the International Bureau E-IX, 2.9.3
Review by the EPO under Art. 24 PCT and excuse ofdelays under Art. 48(2) PCT E-IX, 2.9.2
Review by the EPO under Art. 25 PCT E-IX, 2.9.1
Review of non-unity findings F-V, 5.3
Reviews or books B-X, 11.4
Revision of stated technical problem H-V, 2.4
Revocation
Revocation of the European patent D-VIII, 1.2
Revocation for failure to notify the appointment of a
new representative D-VIII, 1.2.3
Revocation for failure to pay the prescribed fee forpublishing, to file a translation or to file a formally

Alphabetical keyword index - 58
compliant version of amended text
passages D-VIII, 1.2.2
Revocation in the event of requirements not being met
until after expiry of time limits D-VIII, 1.2.4
Revocation of the patent in the event that the patent
proprietor no longer wishes the patent to be
maintained as granted D-VIII, 1.2.5
Revocation on substantive grounds D-VIII, 1.2.1
Revocation of the patent D-VI, 2.2
Revocation of the patent in the event that the patent
proprietor no longer wishes the patent to be
maintained as granted D-VIII, 1.2.5
Right
Amendments occasioned by national rights H-II, 3.3
Cases of loss of rights E-VIII, 1.9.1
Conflict with national rights of earlier date G-IV, 6
Decision on a notified loss of rights at the request of theperson concerned D-VIII, 2.3
Decision on loss of rights E-VIII, 1.9.3
Decision on re-establishment of rights D-VIII, 2.4,
E-VIII, 3.3
Different texts where national rights of earlier dateexist H-III, 4.4
Licences and other rights E-XIV, 6
Loss of rights A-X, 6.2.5, E-VIII, 1.9.1
Loss of rights and legal remedies A-III, 6.8.3
National prior rights B-VI, 4.2, C-IV, 7.2
Noting and communication of loss of rights E-VIII, 1.9.2
Noting of loss of rights A-X, 6.2.5
Opposition cases with different texts where a transfer ofrights by virtue of a final decision pursuant to Art. 61 takes
place in examination proceedings H-III, 4.3.3
Re-establishment of rights A-III, 6.6, E-VIII, 3,
E-IX, 2.3.5.3, E-IX, 2.9.2, F-VI, 3.6
Re-establishment of rights in respect of the priority
period F-VI, 3.6
Registration of changes of name, transfers, licences andother rights E-XIV
Renunciation of rights E-VIII, 8
Right of priority F-VI, 1
Applications giving rise to a right of priority A-III, 6.2
Filing date as effective date F-VI, 1.1
First application F-VI, 1.4
Multiple priorities and partial priorities F-VI, 1.5
Priority date as effective date F-VI, 1.2
Validly claiming priority F-VI, 1.3
Right of the other members of the division to put
questions E-III, 8.10
Right to amend H-I
Right to be heard E-VI, 2.2.4, E-X, 2.1
Decisions taken by the examining or opposition
divisions E-X, 2.1
Submissions filed in preparation for or during oralproceedings E-VI, 2.2.4
Rights of earlier date D-I, 3, H-III, 4.4
Time limits and loss of rights resulting from failure to
respond within a time limit E-VIII, 1
Time limits, loss of rights, further and accelerated
processing and re-establishment of rights E-VIII

March 2023
Transfer of rights E-XIV, 3, E-XIV, 6.1
Rule
Rule 137(3) in conjunction with Art. 123(2) H-II, 2.3.1.2
Rule 137(3) in conjunction with Art. 83 H-II, 2.3.1.1
Rule 137(3) in conjunction with Art. 84 - missing essential
feature H-II, 2.3.1.3
Rule 137(3) in conjunction with auxiliary
requests H-II, 2.3.1.4
Rule 137(4) and oral proceedings H-III, 2.1.3
Rule 137(4) applies E-IX, 3.4
Rule 137(4) applies to amendments filed at thisstage H-II, 2.5.4
Rule 137(4) communication and response
thereto H-III, 2.1.1
Rule 137(5) H-IV, 4.1
Objection under Rule 43(2) or Rule 137(5) F-IV, 3.3
Rule 62a and/or Rule 63 cases H-IV, 4.1.1
Subject-matter taken from the description H-IV, 4.1.2
Rule 161 communication issued before 1 April
2010 E-IX, 3.3.3
Rule 42(1)(c) vs. Art. 52(1) F-II, 4.6
Rules of Procedure of the Boards of Appeal E-XII, 8S
Safety provision for late replenishment of deposit
accounts A-X, 6.2.2
Same invention F-VI, 2.2
Same-day corrections A-II, 6.6
Scale of drawings A-IX, 7.4
Schemes rules and methods
Schemes, rules and methods for performing mental acts,
playing games or doing business G-II, 3.5
Schemes, rules and methods for doing
business G-II, 3.5.3
Schemes, rules and methods for performing mental
acts G-II, 3.5.1
Schemes, rules and methods for playing
games G-II, 3.5.2
Scientific theories G-II, 3.2
List of exclusions G-II, 3.2
Scope
Scope of application of Rule 134 E-VIII, 1.6.2.3
Scope of the examination D-X, 4.3
Scope of the search B-III, 2
Completeness of the search B-III, 2.1
Effectiveness and efficiency of the search B-III, 2.2
Invitation to pay additional search fees combined withinvitation to restrict the scope of thesearch C-III, 3.2.3
Search in analogous fields B-III, 2.3
Search on the internet B-III, 2.4
Scope of the technical opinion E-XIII, 2

March 2023
Search A-III, 10.2, A-VI, 1.3, B-II, 4, B-III, 3.1, B-III, 3.2,
B-IV, 1.2, B-IV, 1.3, B-VIII, 3.4, B-VIII, 4.5, B-X, 7, F-II, 2.2,
F-II, 2.6
Accelerated search E-VIII, 4.1
Account of the search B-X, 3.3
Additional search D-VI, 5
Amendments required by a limitation of the search under
Rule 62a and/or Rule 63 H-II, 5
Auxiliary requests in the search phase H-III, 3.2
Basis for the search B-III, 3.1
Characteristics of the search B-III
Complete search despite of lack of unity B-VII, 2.2
Completeness of the search B-III, 2.1
Copy of the search results for the priority or
priorities A-III, 6.12, C-II, 5
Correct application documents or parts filed after the
search has started A-II, 6.7
Documents discovered after completion of thesearch B-IV, 3.2
Effectiveness and efficiency of the search B-III, 2.2
Extension of the search B-VI, 5.3
Filing, search and designation fee(s) A-IV, 1.4.1
International applications with supplementary
search F-V, 7.2
International applications without supplementary
search F-V, 7.1
Invitation to indicate subject-matter for search B-VIII, 3.1
Invitation to indicate which independent claim tosearch B-VIII, 4.1
IPC classification when the scope of the invention is notclear (e.g. a partial search) B-V, 3.2
No meaningful search possible B-VIII, 3
Objective of the search B-II, 2
Opinions of the search division B-III, 1
Opinions on matters relating to limitation of thesearch B-III, 1.2
Procedure in the case of lack of unity during
search F-V, 4
Provisional opinion accompanying the partial search
results F-V, 4.1
Relation to unity in search C-III, 3.2, C-III, 3.2.1
Scope of the search B-III, 2
Search and substantive examination B-II, 1
Contact between the applicant and the searchdivision B-II, 1.1
Search at the examination stage C-IV, 7.4
Search division consisting of more than one
member B-I, 2.2
Search division consisting of more than one member
further searches on a non-unitary application in adifferent technical field B-I, 2.2.2
Where claimed unitary subject-matter covers morethan one technical field B-I, 2.2.1
Search divisions B-I, 2, B-II, 4.1
Consultation with other examiners B-I, 2.1
Organisation and composition of the documentation
available to the search divisions B-IX, 1.1
Search division's approach B-XI, 3.7
Search division's dossier B-XI, 3.1

Alphabetical keyword index - 59
Search documentation B-II, 3, B-IX
Access to EPO documentation for the national patentoffices B-IX, 5
Non-patent literature arranged for library-typeaccess B-IX, 4
Non-patent literature arranged for systematicaccess B-IX, 3
Patent documents arranged for systematicaccess B-IX, 2
Search fee
Additional search fees paid C-III, 3.2.2
Applicant has not paid all additional searchfees B-VII, 1.2.3
European search A-III, 13.1, A-IV, 1.4.1, A-X, 10.2.1,
F-V, 1Filing and search fees A-III, 13
Filing fee and search fee A-X, 5.2.1
Filing fee, designation fee, request for examination andsearch fee E-IX, 2.1.4
Invitation to pay additional search fees combined withinvitation to restrict the scope of thesearch C-III, 3.2.3
Invitation to pay further search fees B-VII, 1.2
Limitation to searched invention no additional searchfees paid C-III, 3.2.1
Reduction of the search fee for a supplementary
European search A-X, 9.3.1
Refund of additional search fees C-III, 3.4
Refund of the further search fee A-X, 10.2.2
Refund of the search fee A-X, 10.2.1
Request for refund of further search fee(s) B-VII, 2.1
Supplementary European search A-X, 9.3.1,
A-X, 10.2.1, B-VIII, 3.4, B-VIII, 4.5, E-IX, 2.1.4, F-V, 7.1
Search for conflicting European applications C-IV, 7.1
Search in analogous fields B-III, 2.3
Search on dependent claims B-III, 3.8
Search on the internet B-III, 2.4
Search opinion B-XI, B-XI, 1.1
Amendments made in response to the search
opinion C-III, 2.1
Analysis of the application and content of the search
opinion B-XI, 3
Art. 124 and the utilisation scheme B-XI, 9
Basis of the search opinion B-XI, 2
Comments and amendments in response to the search
opinion B-XI, 3.3
No search opinion is issued B-XI, 7
Priority claim and the search opinion B-XI, 4Reaction to the extended European search report(EESR) B-XI, 8
Response to the search opinion A-VI, 3, C-II, 3.1
Search opinion in cases of a limitation of thesearch B-XI, 6Transmittal of the search report and search
opinion B-X, 12
Unity in relation to the search opinion B-XI, 5
Use of "P" and "E" documents in the search
opinion B-XI, 4.1
Search opinion is part of the EESR B-XI, 1
Position of the examining division B-XI, 1.2

Alphabetical keyword index - 60
Search procedure and strategy B-IV
Procedure after searching B-IV, 3
Procedure prior to searching B-IV, 1
Search report B-II, 4, B-IX, 2.3, B-X
Additional European searches B-II, 4.2
Admissibility in the examination procedure after receiptof the search report - Rule 137(2) H-II, 2.2
Admissibility in the examination procedure before
receipt of the search report - Rule 137(1) H-II, 2.1
Amendments made in response to the WO-ISA, IPER
or supplementary international search report C-III, 2.2
Application documents for the supplementary
European search report B-II, 4.3.3
Applications for which a supplementary European
search report is prepared E-IX, 3.1, E-IX, 3.2
Areas of technology searched B-X, 6Authentication and dates B-X, 10
Citing documents not mentioned in the search
report C-IV, 7.5
Classification of the patent application B-X, 5Content of the extended European search report(EESR) B-VIII, 3.3, B-VIII, 4.3
Copies to be made available with the search
report B-X, 11
Date of reference for documents cited in the search
report B-VI, 5
Different types of search reports drawn up by the
EPO B-X, 2
Dispensing with the supplementary European search
report B-II, 4.3.1
Documents noted in the search B-X, 9
Errors in the search report B-IV, 3.3
European search report A-VI, 1.3, A-X, 9.3.1, B-II, 4,
B-II, 4.3, B-VII, 2.3, B-X, 4, B-X, 7, C-II, 1.2, C-II, 3.1,
C-IV, 7.3, E-IX, 2.5.2, F-V, 7.1, F-V, 7.2
European searches B-II, 4.1
Evaluation of prior art documents cited in search reportand late priority claim C-III, 7
Form and language of the search report B-X, 3
Identification of documents in the search
report B-X, 9.1
Identification of the patent application and type ofsearch report B-X, 4International (PCT) searches B-II, 4.4
International-type searches B-II, 4.5
IPC classification of late-published search
reports B-V, 3.1
Opinions in relation to the search report B-III, 1.1
Partial European search report B-VII, 1.1
Preparation of the search report B-IV, 3.1
Reaction to the extended European search report(EESR) B-XI, 8
Restriction of the subject of the search B-X, 8
Searches on national applications B-II, 4.6
Separate publication of the European search
report A-VI, 1.5
Supplementary European search report B-X, 9.1.4
Supplementary European search report isrequired B-II, 4.3.2
Supplementary European searches B-II, 4.3

March 2023
Title, abstract and figure(s) to be published with theabstract (as indicated on supplemental sheetA) B-X, 7
Transmittal of the search report and search
opinion B-X, 12
Search strategy B-IV, 2
Carrying out the search B-IV, 2.3
Closest prior art and its effects on the
search B-IV, 2.5
End of search B-IV, 2.6
Formulating a search strategy B-IV, 2.2
Record of search strategy B-X, 3.4
Reformulation of the subject of the search B-IV, 2.4
Restrictions B-IV, 2.1
Subject of the search B-IV, 2.1
Types of documents B-IV, 2.3
Search, publication and request for examination ofdivisional applications A-IV, 1.8
State of the art at the search stage B-VI
Subject-matter excluded from search B-III, 3.11
Subject-matter to be excluded from the search B-VIII
Supplementary international search B-III, 3.3.2
Where the EPO does not perform a supplementary
search H-II, 6.4.1
Where the EPO performs a supplementary
search H-II, 6.4.2
Searches on national applications B-II, 4.6
Searches under Rule 164(2) C-III, 3.1
Search-related issues in examination C-IV, 7
Additional searches during examination C-IV, 7.3
Citing documents not mentioned in the search
report C-IV, 7.5
National prior rights C-IV, 7.2
Search at the examination stage C-IV, 7.4
Search for conflicting European applications C-IV, 7.1
Second non-medical use G-VI, 7.2
Second Rule 71(3) communication based on higherranking request initially rejected in first Rule 71(3)communication C-V, 4.6.2
Second Rule 71(3) communication reversing theamendments proposed by the examining division in
first Rule 71(3) communication C-V, 4.6.1
Secondary indicators G-VII, 10
Arbitrary choice G-VII, 10.1
Bonus effect G-VII, 10.2
Commercial success G-VII, 10.3
Long-felt need G-VII, 10.3
Non-functional modification G-VII, 10.1
Predictable disadvantage G-VII, 10.1
Unexpected technical effect G-VII, 10.2
Sectional diagrams A-IX, 7.3.1

March 2023
Selection inventions G-VI, 8, G-VII, 12
Error margins in numerical values G-VI, 8.1
Inventive step G-VII, 12
Novelty G-VI, 8
Separate crediting of the fee for grant and publishingand claims fees A-X, 11.3
Separate hearings E-IV, 1.6.4
Separate publication of the European search
report A-VI, 1.5
Sequence
Sequence information filed under Rule 56 A-IV, 5.1
Sequence information filed under Rule 56a A-IV, 5.2
Sequence listing A-III, 1.2, A-III, 16.2, B-IV, 1.2,
E-IX, 2.4.2, F-II, 6Content of a European patent application (other thanclaims) F-II, 6
Instructions in Chapter A-IV ("Special
provisions") E-IX, 2.4.2
Reference to sequences disclosed in a
database F-II, 6.1
Sequence listings filed after the date offiling H-IV, 2.2.5
Sequence listings of a divisional application A-IV, 5.4
Sequence listings of an application filed by reference
to a previously filed application A-IV, 5.3
Sequence of proceedings D-VII, 1
Exceptions D-VII, 1.2
Sequence of requests H-III, 3.1.1
Sequences and partial sequences of genes G-III, 4Sequences of divisional applications A-IV, 1.1.2
Sequences that need to be itemised in the sequencelisting F-II, 6.2
Qualifier "mol_type" F-II, 6.2.4
Requirements relating to sequence length andenumeration of residues F-II, 6.2.1
Sequences comprising residues that are notspecifically defined (n or X) F-II, 6.2.2
Variants F-II, 6.2.3
Service
Filing of applications by delivery by hand or by postal
services A-II, 1.1
Notification by postal services E-II, 2.3
Shading A-IX, 7.2
SI
SI base units F-II, An. 2, 1.1
Special name and symbol of the SI derived unit oftemperature for expressing Celsius
temperature F-II, An. 2, 1.1.1
SI derived units F-II, An. 2, 1.2
General rule for SI derived units F-II, An. 2, 1.2.1
SI derived units with special names andsymbols F-II, An. 2, 1.2.2

Alphabetical keyword index - 61
SI units and their decimal multiples andsubmultiples F-II, An. 2, 1
Prefixes and their symbols used to designate certain
decimal multiples and submultiples F-II, An. 2, 1.3
Special authorised names and symbols of decimal
multiples and submultiples of SI units F-II, An. 2, 1.4
Signature A-III, 4.2.2, C-VIII, 6, D-III, 3.4
Examination of the request for grant form A-III, 4.2.2
Signature of documents A-VIII, 3
Documents filed after filing the European patentapplication A-VIII, 3.1
Documents forming part of the European patentapplication A-VIII, 3.2
Form of signature A-VIII, 3.3
Joint applicants A-VIII, 3.4
Signature of the notice of opposition D-III, 3.4
Submission in writing D-III, 3.4
Work within the examining division C-VIII, 6
Signed authorisation A-VIII, 1.6
Simulation, design or modelling G-II, 3.3.2
Situation in which it has to be checked whether theapplication from which priority is actually claimed isthe "first application" within the meaning of Art.
87(1) F-VI, 2.4.4
Skilled person (Common general knowledge of the ~)G-VII, 3.1
Small and medium-sized enterprises A-X, 9.2.1
Some examples of determining priority
dates F-VI, 2.4
Intermediate publication of another European
application F-VI, 2.4.2
Intermediate publication of the contents of the priority
application F-VI, 2.4.1
Multiple priorities claimed for different inventions in theapplication with an intermediate publication of one of theinventions F-VI, 2.4.3
Situation in which it has to be checked whether theapplication from which priority is actually claimed is the"first application" within the meaning of Art.
87(1) F-VI, 2.4.4
Special applications C-IX, H-IV, 2.3
Applications filed by reference to an earlier
application H-IV, 2.3.1
Applications resulting from a decision under Art.
61 C-IX, 2, H-IV, 2.3.3
Applications where a reservation has been entered inaccordance with Art. 167(2)(a) EPC 1973 C-IX, 3
Divisional applications C-IX, 1, H-IV, 2.3.2
International applications H-IV, 2.3.4
International applications (Euro-PCT applications) C-IX, 4Special authorised names and symbols of decimal
multiples and submultiples of SI units F-II, An. 2, 1.4

Alphabetical keyword index - 62
Special circumstances C-VI, 1.2
Special name and symbol of the SI derived unit oftemperature for expressing Celsius
temperature F-II, An. 2, 1.1.1
Special provisions A-IV
Applications relating to biological material A-IV, 4Applications relating to nucleotide and amino acidsequences A-IV, 5
Art. 61 applications and stay of proceedings under Rule
14 A-IV, 2
Conversion into a national application A-IV, 6
Display at an exhibition A-IV, 3
European divisional applications A-IV, 1
Instructions in Chapter A-IV ("Special
provisions") E-IX, 2.4
Special reductions A-X, 9.3
Reduction of the examination fee where the international
preliminary examination report is being drawn up by the
EPO A-X, 9.3.2
Reduction of the search fee for a supplementary European
search A-X, 9.3.1
Special refunds A-X, 10.2
Refund of the examination fee A-X, 10.2.3
Refund of the fee for grant and publishing A-X, 10.2.5
Refund of the further search fee A-X, 10.2.2
Refund of the search fee A-X, 10.2.1
Refund pursuant to Rule 37(2) A-X, 10.2.4
Special technical features F-V, 2
Specific rules applicable to Euro-PCT
applications B-III, 3.3.2
Standard
Standard marks for indicating amendments or corrections
by the divisions C-V, An.
Standard marks for indicating amendments orcorrections by the divisions further communication withthe applicant C-VIII, 5Standard marks for indicating amendments orcorrections by the divisions further ways to accelerate
examination C-VI, 3
Standard of proof G-IV, 7.3.4, G-IV, 7.5.2
Internet disclosures G-IV, 7.5.2
State of the art made available by means of oral
description G-IV, 7.3.4
Standards and standard preparatory
documents G-IV, 7.6
State of the art E-IX, 2.5.1, F-II, 4.3, G-IV, G-IV, 5.1,
G-IV, 5.2, G-VII, 1, G-VII, 2
Conflict with national rights of earlier date G-IV, 6
Conflict with other European applications G-IV, 5
Conflict with other European applications G-IV, 5.1,
G-IV, 5.2
Cross-references between prior-art documents G-IV, 8
Date of filing or priority date as effective date G-IV, 3

March 2023
Description (formal requirements) F-II, 4.3
Different text in respect of the state of the art according toArt. 54(3) EPC and Art. 54(4) EPC 1973 H-III, 4.2
Documents defining the state of the art and not prejudicing
novelty or inventive step B-X, 9.2.2
Documents in a non-official language G-IV, 4
Enabling disclosure G-IV, 2
Errors in prior-art documents G-IV, 9
General remarks and definition G-IV, 1
Invention G-VII, 1
Matters of doubt in the state of the art B-VI, 5.6
Patentability G-IV
State of the art at the search stage B-VI
Conflicting applications B-VI, 4Contents of prior-art disclosures B-VI, 6
Date of reference for documents cited in the search
report B-VI, 5
Filing and priority date B-VI, 5Internet disclosures B-VI, 7
Oral disclosure, use, exhibition, etc. as state of theart B-VI, 2
Priority B-VI, 3
Technical journals B-VI, 7
State of the art made available by means of oral
description G-IV, 7.3
Cases of oral description G-IV, 7.3.1
Matters to be determined by the division in cases oforal description G-IV, 7.3.3
Non-prejudicial oral description G-IV, 7.3.2
Standard of proof G-IV, 7.3.4
State of the art made available to the public "by means ofa written or oral description, by use, or in any otherway" G-IV, 7Internet disclosures G-IV, 7.5
Matters to be determined by the division as regards
prior use G-IV, 7.2
Standards and standard preparatory
documents G-IV, 7.6
State of the art made available to the public in writing
and/or by any other means G-IV, 7.4
Types of use and instances of state of the art madeavailable in any other way G-IV, 7.1
State of the art pursuant to Art. 54(2) G-VI, 1
State of the art pursuant to Art. 54(3) G-IV, 5.1
Accorded date of filing and content of the application
still subject to review G-IV, 5.1.2
Requirements G-IV, 5.1.1
Statement
Disparaging statements A-III, 8.2, B-IV, 1.2, F-II, 7.3
General statements, "spirit of the invention", claim-likeclauses F-IV, 4.4
Positive statements B-XI, 3.2.2
Positive statements/suggestions C-III, 4.1.2
Statement in the decision of the amended form of theEuropean patent D-VIII, 1.4.2
Statement of withdrawal E-VIII, 8.3

March 2023
Stay of proceedings D-VII, 4.1
Art. 61 applications and stay of proceedings under Rule
14 A-IV, 2
Legal character and effect of the stay ofproceedings D-VII, 4.1.2
Stay of proceedings for grant A-IV, 2.2
Date of the stay of proceedings A-IV, 2.2.2
Interruption of time limits A-IV, 2.2.4
Legal nature and effects of the stay A-IV, 2.2.3
Responsible department A-IV, 2.2.1
Resumption of the proceedings for grant A-IV, 2.2.5
Stay of proceedings under Rule 14 due to pending
national entitlement proceedings E-VII, 2
Stay of proceedings when a referral to the Enlarged Boardof Appeal is pending E-VII, 3
Subject matter
Subject-matter excluded from patentability under Art. 52(2)and (3) B-VIII, 2.2
Computer-implemented businessmethods B-VIII, 2.2.1
Subject-matter excluded from search B-III, 3.11
Subject-matter of a dependent claim F-IV, 3.6
Subject-matter of minutes E-III, 10.3
Subject-matter of the European patent extending beyond
the original disclosure D-V, 6
Basis of this ground for opposition D-V, 6.1
Distinction between allowable and unallowable
amendments D-V, 6.2
Subject-matter taken from the description H-IV, 4.1.2
Subject-matter to be excluded from the search B-VIII
Claims contravening Art. 123(2) or Art. 76(1) B-VIII, 6
Considerations relating to specific exclusions from andexceptions to patentability B-VIII, 2
Invitation under both Rule 62a(1) and Rule63(1) B-VIII, 5More than one independent claim per category (Rule62a) B-VIII, 4
No meaningful search possible B-VIII, 3
Subject-matter to be excluded is disclosed in theapplication as originally filed H-V, 4.2.2
Subject-matter to be excluded is not disclosed in theapplication as originally filed (so-called undisclosed
disclaimers) H-V, 4.2.1
Subject of the search B-III, 3, B-IV, 2.1
Abandonment of claims B-III, 3.4
Amended claims, missing parts (Rule 56) or erroneously
filed application documents or parts (Rule 56a) B-III, 3.3
Anticipation of amendments to claims B-III, 3.5
Basis for the search B-III, 3.1
Broad claims B-III, 3.6
Combination of elements in a claim B-III, 3.9
Different categories B-III, 3.10
Independent and dependent claims B-III, 3.7
Interpretation of claims B-III, 3.2
Lack of unity B-III, 3.12
Reformulation of the subject of the search B-IV, 2.4
Restriction of the subject of the search B-X, 8
Search on dependent claims B-III, 3.8

Alphabetical keyword index - 63
Subject-matter excluded from search B-III, 3.11
Technological background B-III, 3.13
Submissions
Submission in writing D-III, 3
Form of the opposition D-III, 3.1
Notices of opposition filed by fax D-III, 3.3
Notices of opposition filed electronically D-III, 3.2
Signature of the notice of opposition D-III, 3.4
Submissions by the parties E-III, 8.5
Use of computer-generated slideshows in oralproceedings E-III, 8.5.1
Written submissions during oral proceedings byvideoconference E-III, 8.5.2
Submissions filed in preparation for or during oralproceedings E-VI, 2.2
Amendments filed in preparation for or during oralproceedings E-VI, 2.2.2
Costs E-VI, 2.2.5
New facts and evidence E-VI, 2.2.1
Principles relating to the exercise of
discretion E-VI, 2.2.3
Right to be heard E-VI, 2.2.4
Subsequent
Subsequent application considered as first
application F-VI, 1.4.1
Subsequent filing of documents A-II, 1.4
Subsequent procedure D-IV, 1.6
Subsequent procedure in the event of deficiencies which
may no longer be remedied D-IV, 1.4
Deficiencies which may no longer be remedied inaccordance with Rule 77(1) and (2), resulting in the
opposition being rejected as inadmissible D-IV, 1.4.2
Deficiencies which may no longer be remedied, as aresult of which the opposition is deemed not to havebeen filed D-IV, 1.4.1
Substances and compositions G-II, 4.2
Substantiation of the request E-VIII, 3.1.4
Substantive examination
Substantive examination (limitation) D-X, 4
Basis for the examination D-X, 4.2
Department responsible D-X, 4.1
Scope of the examination D-X, 4.3
Substantive examination (limitation) further stages ofthe examination D-X, 4.4
Third-party observations during theexamination D-X, 4.5
Substantive examination of a Euro-PCT applicationaccompanied by an IPER E-IX, 4.3
Basis for substantive examination E-IX, 4.3.2
Comparative test results E-IX, 4.3.1
Consideration of the contents of the IPER E-IX, 4.3.3
Substantive examination of opposition D-V
Beginning of the examination of the opposition D-V, 1
Clarity of claims D-V, 5
Extent of the examination D-V, 2

Alphabetical keyword index - 64
Insufficient disclosure of the invention D-V, 4
Non-patentability pursuant to Art. 52 to 57 D-V, 3
Subject-matter of the European patent extending
beyond the original disclosure D-V, 6
Sufficiency of disclosure F-III, F-III, 1
Art. 83 vs. Art. 123(2) F-III, 2
Burden of proof as regards the possibility of performing
and repeating the invention F-III, 4
Cases of partially insufficient disclosure F-III, 5
Insufficient disclosure F-III, 3
Inventions relating to biological material F-III, 6
Proper names, trade marks and trade names F-III, 7"Reach-through" claims F-III, 9Reference documents F-III, 8
Sufficiency of disclosure and clarity F-III, 11
Sufficiency of disclosure and inventive step F-III, 12
Sufficiency of disclosure and Rules 56 and 56a F-III, 10
Summaries, extracts or abstracts B-X, 11.5
Summary of the processing of applications andpatents at the EPO General Part, 5
Summoning of parties, witnesses andexperts E-IV, 1.5
Summons to oral proceedings D-VI, 3.2, E-III, 6
Invitation to file observations D-VI, 3.2
Late-filed requests after summons to oral proceedings in
examination H-II, 2.7
Oral proceedings E-III, 6
Summons to oral proceedings as the first action in
examination C-III, 5
When can summons to oral proceedings be issued in
substantive examination? E-III, 5.1
Supplementary
Supplementary European search B-VII, 2.3, E-IX, 2.5.3
Application documents for the supplementary
European search report B-II, 4.3.3
Applications for which a supplementary European
search report is prepared E-IX, 3.1, E-IX, 3.2
Dispensing with the supplementary European search
report B-II, 4.3.1
Instructions in Chapter A-VI ("Publication of
application; request for examination and transmissionof the dossier to examining division") E-IX, 2.5.3
Procedures in cases of lack of unity B-VII, 2.3
Reduction of the search fee for a supplementary
European search A-X, 9.3.1
Supplementary European search report isrequired B-II, 4.3.2
Supplementary European search report B-X, 9.1.4
Application documents for the supplementary
European search report B-II, 4.3.3
Applications for which a supplementary European
search report is prepared E-IX, 3.1, E-IX, 3.2
Dispensing with the supplementary European search
report B-II, 4.3.1

March 2023
Supplementary European search report isrequired B-II, 4.3.2
Supplementary European searches B-II, 4.3
Application documents for the supplementary
European search report B-II, 4.3.3
Dispensing with the supplementary European search
report B-II, 4.3.1
Supplementary European search report isrequired B-II, 4.3.2
Supplementary international search B-III, 3.3.2
Amendments made in response to the WO-ISA, IPER
or supplementary international search report C-III, 2.2
Supplementary technical information H-V, 2.3
Support for dependent claims F-IV, 6.6
Support in description F-IV, 6
Definition in terms of function F-IV, 6.5
Extent of generalisation F-IV, 6.2
Lack of support vs. insufficient disclosure F-IV, 6.4
Objection of lack of support F-IV, 6.3
Support for dependent claims F-IV, 6.6
Surgery G-II, 4.2.1.1
Methods for treatment by surgery G-II, 4.2, G-II, 4.2.1
Methods for treatment of the human or animal body bysurgery or therapy and diagnostic methods practised on
the human or animal body B-VIII, 2.1
Surgery, therapy and diagnostic methods G-II, 4.2
Limitations of exception under Art. 53(c) G-II, 4.2.1
Methods for screening potential medicaments andclinical trials G-II, 4.2.2
Surgical uses pursuant to Art. 54(5) G-VI, 7.1.4
Surrender of patent E-VIII, 8.4
Suspensive effect E-XII, 1

T
Tables A-IX, 11.2
Formulae and tables F-IV, 2.4
Tables in the claims A-IX, 11.2.2
Tables in the description A-IX, 11.2.1
Taking and conservation of evidence E-IV
Conservation of evidence E-IV, 2
Evaluation of evidence E-IV, 4
Taking of evidence by courts or authorities of thecontracting states E-IV, 3
Taking of evidence by the departments of the
EPO E-IV, 1
Taking of a final decision D-VIII, 1.4.1
Taking of evidence C-VII, 4, D-VI, 1, D-VI, 7.1,
E-IV, 1.1, E-IV, 1.3, E-IV, 2.4
Conservation of evidence E-IV, 2.4
Costs D-IX, 1.1, D-IX, 1.3, E-IV, 1.9

March 2023
Costs arising from oral proceedings or taking ofevidence E-IV, 1.9
Decision on the request and the taking ofevidence E-IV, 2.4
Language used in the taking of evidence E-V, 4
Minutes of taking of evidence E-IV, 1.7
Other procedures in examination C-VII, 4
Producing evidence C-VII, 4.2
Taking of evidence by courts or authorities of thecontracting states E-IV, 3
Costs of taking evidence E-IV, 3.5
Legal co-operation E-IV, 3.1
Letters rogatory E-IV, 3.3
Means of giving or taking evidence E-IV, 3.2
Procedures before the competent authority E-IV, 3.4
Taking of evidence by an appointed person E-IV, 3.6
Taking of evidence by the departments of the
EPO E-IV, 1
Taking of evidence on oath E-IV, 3.2.1
Written evidence C-VII, 4.3
Taking of evidence by the departments of the
EPO E-IV, 1
Commissioning of experts E-IV, 1.8
Costs arising from oral proceedings or taking ofevidence E-IV, 1.9
Entitlements of witnesses and experts E-IV, 1.10
Hearing of parties, witnesses and experts E-IV, 1.6
Means of evidence E-IV, 1.2
Minutes of taking of evidence E-IV, 1.7
Models E-IV, 1.11
Order to take evidence E-IV, 1.4
Summoning of parties, witnesses and experts E-IV, 1.5
Taking of evidence E-IV, 1.3
Video recordings E-IV, 1.12
Tasks of the opposition divisions D-II, 4Ancillary proceedings D-II, 4.3
Decision concerning the awarding of costs by the
opposition division D-II, 4.2
Examination of oppositions D-II, 4.1
Tasks of the other members of the examining
division C-VIII, 4
Technical
Technical details and general remarks G-IV, 7.5.6
Technical drawings A-IX, 1.1
Technical features F-IV, 2.1
Special technical features F-V, 2
Technical field F-II, 4.2
Search division consisting of more than one member
further searches on a non-unitary application in adifferent technical field B-I, 2.2.2
Where claimed unitary subject-matter covers morethan one technical field B-I, 2.2.1
Technical journals B-VI, 7, G-IV, 7.5.3.1
Technical opinion E-XIII, 1
Establishment and issue of the technicalopinion E-XIII, 5.4

Alphabetical keyword index - 65
Fee for a technical opinion E-XIII, 5.3
Request from a national court for a technical opinion
concerning a European patent E-XIII
Scope of the technical opinion E-XIII, 2
Technical problem E-III, 8.2.3
Formulation of the objective technicalproblem G-VII, 5.2
Formulation of the objective technical problem for
claims comprising technical and non-technicalfeatures G-VII, 5.4.1
Revision of stated technical problem H-V, 2.4
Technical problem and its solution F-II, 4.5
Use of the description and/or drawings to identify thetechnical problem B-III, 3.2.2
Technical progress, advantageous effect G-I, 2
Technically qualified examiners D-II, 2.1
Technological background B-III, 3.13
Termination of opposition proceedings in the event of
inadmissible opposition D-IV, 4
Terminology F-II, 4.11
Terms of reference of the expert E-IV, 1.8.3
Terms such as "about", "approximately" or"substantially" F-IV, 4.7
Clarity objections F-IV, 4.7.2
Interpretation of terms such as "about", "approximately" or"substantially" F-IV, 4.7.1
Territorial effect of the opposition D-I, 3
Text for approval C-V, 1.1
Text matter on drawings A-IX, 8Therapeutic uses pursuant to Art. 54(5) G-VI, 7.1.2
Therapy G-II, 4.2.1.2
Methods for treatment by therapy G-II, 4.2, G-II, 4.2.1
Methods for treatment of the human or animal body bysurgery or therapy and diagnostic methods practised on
the human or animal body B-VIII, 2.1
Surgery, therapy and diagnostic methods G-II, 4.2
Third parties D-I, 6, E-VI, 3
Examination of observations by third parties C-VII, 6
Observations by third parties D-I, 6, E-VI, E-VI, 3
Third-party observations A-VII, 3.5
Third-party observations during the examination D-X, 4.5
TimeTime allowed for filing notice of opposition D-III, 1
Time limit and form of appeal E-XII, 6
Time limit for filing the request for examination A-VI, 2.2
Time limit for payment of extension and validation
fees A-III, 12.2

Alphabetical keyword index - 66
Time limits A-III, 11.2.1, A-III, 11.3.1, G-V, 2
Calculation of time limits E-VIII, 1.4
Consideration of time limits E-X, 1.2
Determination of time limits E-VIII, 1.1
Extension of time limits set by the EPO under Rule
132 E-VIII, 1.6.1
Interruption of time limits A-IV, 2.2.4, D-VII, 4.3
Resumption of time limits E-VII, 1.5
Revocation in the event of requirements not being met
until after expiry of time limits D-VIII, 1.2.4
Time limits covered E-VIII, 3.1.1
Time limits which may be freely
determined E-VIII, 1.3
Time limits and acceleration of examination C-VI
Influencing the speed of examination
proceedings C-VI, 2
PACE C-VI, 2
Standard marks for indicating amendments orcorrections by the divisions further ways to accelerate
examination C-VI, 3Time limits and loss of rights resulting from failure to
respond within a time limit E-VIII, 1
Calculation of time limits E-VIII, 1.4
Determination of time limits E-VIII, 1.1
Duration of the periods to be specified by the EPO on
the basis of EPC provisions E-VIII, 1.2
Effect of change in priority date E-VIII, 1.5
Extension of a time limit E-VIII, 1.6
Failure to respond within a time limit E-VIII, 1.8
Late receipt of documents E-VIII, 1.7
Loss of rights E-VIII, 1.9
Time limits which may be freely
determined E-VIII, 1.3
Time limits for response to communications from theexaminer C-VI, 1
General considerations C-VI, 1.1
Special circumstances C-VI, 1.2
Time limits, loss of rights, further and accelerated
processing and re-establishment of rights E-VIII
Accelerated processing before the boards ofappeal E-VIII, 6
Accelerated processing of oppositions E-VIII, 5
Accelerated prosecution of European patentapplications E-VIII, 4
Enquiries E-VIII, 7
Further processing E-VIII, 2
Re-establishment of rights E-VIII, 3
Renunciation of rights E-VIII, 8
Timeliness and structure of auxiliary
requests H-III, 3.3.2.2
Title F-II, 3
Changes in the title H-V, 8
Title of the invention A-III, 7, E-IX, 2.3.6
Examination of formal requirements A-III, 7
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.6
Requirements A-III, 7.1
Responsibility A-III, 7.2

March 2023
Title, abstract and figure(s) to be published with theabstract (as indicated on supplemental sheet A) B-X, 7
Trade marks F-IV, 4.8, H-IV, 2.2.9
Clarity and interpretation of claims F-IV, 4.8Content of the application as "originally" filed H-IV, 2.2.9
Proper names, trade marks and trade names F-III, 7
Registered trade marks F-II, 4.14
Transfer of rights E-XIV, 3, E-XIV, 6.1
Opposition cases with different texts where a transfer ofrights by virtue of a final decision pursuant to Art. 61 takes
place in examination proceedings H-III, 4.3.3
Transfer of the European patent E-XIV, 4
Transfer of the European patent application E-XIV, 3
Transitional provisions for Art. 54(4) EPC 1973 andArt. 54(5) D-VII, 8
Transitional provisions relating to Rule137(4) H-III, 2.1.4
Translation
Certification A-VII, 7
Correction and certification of the translation A-VII, 7
Divisional application A-IV, 1.3.3, A-VII, 1.3
Documents making up the application, replacement
documents, translations A-III, 3.2
In language of proceedings of documents which have to
be filed within a time limit A-VII, 3.2, A-X, 9.2.1,
E-IX, 2.1.3
Invitation to file the translation A-VII, 1.4
Language of proceedings A-VII, 2, A-VII, 3.2, A-VII, 7,
A-X, 9.2.1, E-IX, 2.1.3
Letters rogatory E-IV, 3.3
Machine translations G-IV, 4.1
Reduction of fees A-III, 13.1
Replacement documents and translations A-VIII, 2.2
Request for amendments or corrections in reply to theRule 71(3) communication no payment of fees or filing oftranslations necessary C-V, 4.1
Request for publishing fee, translations and a formallycompliant version of amended text passages D-VI, 7.2.3
Revocation for failure to pay the prescribed fee forpublishing, to file a translation or to file a formallycompliant version of amended text passages D-VIII, 1.2.2
Translation of claims C-V, 1.3
Correction of the translations of the claims H-VI, 5
Translation of international application E-IX, 2.1.3,
E-IX, 2.5.1
Translation of the application A-III, 14
Translation of the previous application A-III, 6.8, F-VI, 3.4
Claim to priority A-III, 6.8, F-VI, 3.4
Declaration replacing the translation A-III, 6.8.6
Invitation to file the translation before
examination A-III, 6.8.1
Invitation to file the translation in
examination/opposition A-III, 6.8.2
Loss of rights and legal remedies A-III, 6.8.3

March 2023
Translation of previous application alreadyfiled A-III, 6.8.4
Voluntary filing of the translation of the previous
application A-III, 6.8.5
Translation of the priority application A-II, 5.4.4,
A-II, 6.4.3
Correct application documents based on priority
application, no change in the filing date A-II, 6.4.3
Further action upon examination of replies further
action where a request for a translation of the priority
application was sent earlier in examination
proceedings C-IV, 3.1
Missing parts based on the priority application, nochange in filing date A-II, 5.4.4

Alphabetical keyword index - 67
Units which are defined on the basis of SI units but are
not decimal multiples or submultiples
thereof F-II, An. 2, 2

Types
Types of documents B-IV, 2.3
Types of evidence E-IV, 4.2
Types of use and instances of state of the art madeavailable in any other way G-IV, 7.1

Unity
Unity in relation to the search opinion B-XI, 5
Unity of invention B-II, 4.2, B-III, 3.12, B-VII, B-VII, 1.1,
B-VIII, 3.4, B-VIII, 4.5, C-III, 3, C-III, 3.2, C-III, 3.2.1,
C-IX, 1.2, D-V, 2.2, F-IV, 3.2, F-IV, 3.3, F-IV, 3.7, F-V,
F-V, 1, F-V, 2, F-V, 2.1, F-V, 3.2.1, G-VI, 7.1
Amended claims F-V, 6
Assessment of unity F-V, 3
Changing from one searched invention toanother C-III, 3.5
Divisional applications C-IX, 1.2
Euro-PCT applications F-V, 7
European patent application F-V, F-V, 1
European search report B-VII, 1.1
Examination of novelty G-VI, 7.1
Excision of other inventions C-III, 3.3
Extent of the examination D-V, 2.2
Filing divisional applications C-III, 3.3
First stage of examination C-III, 3
IPC classification in cases of a lack of unity of
invention B-V, 3.3
Kinds of claim F-IV, 3.2, F-IV, 3.3, F-IV, 3.7
Lack of unity and Rule 62a or Rule 63 B-VII, 3
Limitation to searched invention C-III, 3.2
No meaningful search possible B-VIII, 3.4
Procedure in the case of lack of unity during
search F-V, 4
Procedure in the case of lack of unity during
substantive examination F-V, 5
Procedures in cases of lack of unity B-VII, 2
Refund of additional search fees C-III, 3.4
Relation to unity in search C-III, 3.2
Requirement of unity of invention F-V, 2
Search report B-II, 4.2
Searches under Rule 164(2) C-III, 3.1
Subject of the search B-III, 3.12
Unity of the European patent D-VII, 3
Factors affecting the unity of the European
patent D-VII, 3.2

U

Unpublished patent applications B-IX, 2.2

Transmission of the dossier to the examining
division A-VI, 2.4
Transmittal
Transmittal of the abstract to the applicant F-II, 2.6
Transmittal of the search report and search
opinion B-X, 12
Travel expenses E-IV, 1.10.1
Treatment of dependent claims under Rule
62a B-VIII, 4.6
TreatyApplications under the Patent Cooperation Treaty(PCT) E-IX
International application pursuant to the Patent
Cooperation Treaty (PCT) E-IX, 1
Two-part form F-IV, 2.2
Two-part form unsuitable F-IV, 2.3
Two-part form unsuitable no two-part form F-IV, 2.3.1
Two-part form "wherever appropriate" F-IV, 2.3.2

Unusual parameters F-IV, 4.11.1
Unexpected technical effect G-VII, 10.2
Usable surface area of sheets A-IX, 4.1
Units
Units recognised in international practice as determined by
the President under Rule 49(2) F-II, An. 2
Compound units F-II, An. 2, 5
SI units and their decimal multiples andsubmultiples F-II, An. 2, 1
Units and names of units permitted in specialised fields
only F-II, An. 2, 4
Units used with the SI, and whose values in SI are
obtained experimentally F-II, An. 2, 3

Use
Use claims F-IV, 4.16
Use of an official language E-V, 1
Use of computer-generated slideshows in oralproceedings E-III, 8.5.1
Examination proceedings (ex parte) E-III, 8.5.1.2
Opposition proceedings (inter partes) E-III, 8.5.1.1
Use of email C-VII, 3
Confidentiality C-VII, 3.2
Inclusion in the file of any email exchange C-VII, 3.3

Alphabetical keyword index - 68

March 2023

Initiation of exchanges by email C-VII, 3.1
Use of "P" and "E" documents in the search
opinion B-XI, 4.1
Use of Rule 137(4) for amendments filed during oralproceedings in examination E-III, 8.8
Use of the description and/or drawings to establish
definitions of clear terms given a definition different fromtheir usual meaning B-III, 3.2.4
Use of the description and/or drawings to establish
definitions of unclear terms not defined in theclaims B-III, 3.2.3
Use of the description and/or drawings to identify thetechnical problem B-III, 3.2.2
Use on non-public property G-IV, 7.2.3

Filing of applications by means of electronic
communication A-II, 1.2
Filing of applications by other means A-II, 1.3
Forwarding of applications A-II, 1.6
Subsequent filing of documents A-II, 1.4

User interfaces G-II, 3.7.1

Where the EPO performs a supplementary
search H-II, 6.4.2

V

Whole figure A-IX, 5.3

Validly claiming priority F-VI, 1.3
Variants F-II, 6.2.3
Only variants of the invention are incapable of being
performed F-III, 5.1
Variations in proportions A-IX, 7.6
Verification of claimed priority date(s) B-VI, 5.1
Verification of the IPC classification B-V, 3.4
Version of the granted patent to beconsidered H-IV, 3.3
Video recordings E-IV, 1.12
Voluntary
Voluntary and mandatory division C-IX, 1.2
Voluntary filing of the translation of the previous
application A-III, 6.8.5
Voluntary reply to Rule 161(1) communication E-IX, 3.3.4

W
Waiver of right to be mentioned as inventor A-III, 5.2
When can summons to oral proceedings be issued in
substantive examination? E-III, 5.1
When does the examining division resume
examination after approval? C-V, 6.1
When may models be submitted? E-IV, 1.11.1
Where and how applications may be filed A-II, 1
Application numbering systems A-II, 1.7
Debit orders for deposit accounts held with the
EPO A-II, 1.5
Filing of applications by delivery by hand or by postal
services A-II, 1.1

Where and how to file a divisional
application? A-IV, 1.3.1
Where claimed unitary subject-matter covers morethan one technical field B-I, 2.2.1
Where the EPO does not perform a supplementary
search H-II, 6.4.1

Withdrawal
Statement of withdrawal E-VIII, 8.3
Withdrawal before publication of the patent
specification C-V, 11
Withdrawal of amendments/abandonment of subject
matter H-III, 2.5
Withdrawal of application or designation E-VIII, 8.1
Withdrawal of correct application documents orparts A-II, 6.5
Withdrawal of designation A-III, 11.2.4, A-III, 11.3.8
European patent applications filed before 1 April
2009 A-III, 11.3.8
European patent applications filed on or after 1 April
2009 A-III, 11.2.4
Withdrawal of late-filed missing drawings or missing partsof the description A-II, 5.5
Withdrawal of priority claim E-VIII, 8.2, F-VI, 3.5
Claiming priority F-VI, 3.5
Renunciation of rights E-VIII, 8.2
Withdrawal of the extension or validation
request A-III, 12.3
Withdrawal of the request D-X, 9, E-XIII, 5.3
Limitation and revocation procedure D-X, 9Technical opinion E-XIII, 5.3
Withdrawal of the request for oralproceedings E-III, 7.2.2
Without invitation A-II, 5.2, A-II, 6.2
Witnesses
Details of the entitlements of witnesses andexperts E-IV, 1.10.3
Entitlements of witnesses and experts E-IV, 1.10
Hearing of parties, witnesses and experts E-IV, 1.6
Reimbursement for witnesses and experts E-IV, 1.10.1,
E-IV, 1.10.2
Summoning of parties, witnesses and experts E-IV, 1.5
Witnesses and experts not summoned E-IV, 1.6.2
WorkWork at the EPO General Part, 4

March 2023
Work of examiners C-I, 2Work within the examining division C-VIII
Consultation of a legally qualified examiner C-VIII, 7
Decision C-VIII, 6
Enlargement of the examining division C-VIII, 7
Recommendation to grant C-VIII, 2
Recommendation to refuse C-VIII, 3Standard marks for indicating amendments orcorrections by the divisions further communication withthe applicant C-VIII, 5Tasks of the other members of the examining
division C-VIII, 4
WrittenWritten evidence C-VII, 4.3
Written procedure H-III, 3.4.1, H-III, 3.5.2
Auxiliary requests in limitation proceedings H-III, 3.5.2

Alphabetical keyword index - 69
Auxiliary requests in opposition
proceedings H-III, 3.4.1
Written submissions during oral proceedings byvideoconference E-III, 8.5.2

Z
There are no expressions in this alphabetical keyword
index beginning with this letter.

&"&" sign B-X, 11.3

March 2023

List of sections amended in 2023 revision – 1

List of sections amended in 2023
revision
The amendments introduced are intended to remove potential misinterpretations of the EPO
practice. These amendments have been extensively discussed with external and internal users
with the aim to clarify how the established practice is applied. This work will continue in future
editions of the Guidelines, for example by including further examples to illustrate the practice.
MAJOR AMENDMENTS
PART A
A-II, 4.1.5;
A-II, 5.1;
A-II, 5.2;
A-II, 5.4;
A-II, 5.4.1;
A-II, 5.4.2;
A-II, 6;
A-II, 6.1;
A-II, 6.2;
A-II, 6.3;
A-II, 6.4;
A-II, 6.4.1;
A-II, 6.4.2;
A-II, 6.4.3;
A-II, 6.5;
A-II, 6.6;
A-II, 6.7;
A-II, 6.8;
A-II, 6.9;
A-III, 3.2.2;
A-III, 6.5.1;
A-III, 6.7;
A-III, 6.8.4;
A-III, 9;
A-IV, 1.1;
A-V, 3;
A-VI, 1.3;
A-XI, 2.1;

Updated or new sections in view ofamended Rule 56, new Rule 56a and thewithdrawal of the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

List of sections amended in 2023 revision – 2

PART B

March 2023

A-II, 5.5;
A-III, 3.2;
A-III, 3.2.1;
A-III, 3.3;
A-III, 16.1;
A-VIII, 2.1;
A-VIII, 2.3;
A-IX;
A-IX, 1.1;
A-IX, 1.2;
A-IX, 3;
A-IX, 4.2;
A-IX, 7.1;
A-IX, 7.5.1;
A-IX, 7.5.4;
A-IX, 8;
A-IX, 11.2.1;

Updated sections reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation in the PGP.

A-III, 12.1

Updated in view of Montenegro’s accession
to the EPC

A-III, 13.2;

Updated sections in view of amended
Rule 56, new Rule 56a and the withdrawalof the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71); thelegal changes as decided by the
Administrative Council CA/30/22 rev. 2 tosupport the digital transformation and theentry into force of WIPO Standard 26(OJ EPO 2021, A97).

A-IV, 5;
A-IV, 5.2;
A-IV, 5.3;
A-IV, 5.4;

Updated sections in view of the entry into
force of WIPO Standard 26 (OJ EPO 2021,
A96, A97).

B-III, 3.3;
B-III, 3.3.1;
B-XI, 2.1

Updated sections in view of amended
Rule 56, new Rule 56a and the withdrawalof the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

List of sections amended in 2023 revision – 3

March 2023

B-IV, 1.2 ;B-IV, 3.3;
B-VI, 6.3;
B-X, 9.1.2;
B-X, 9.1.3;
B-X, 11;
B-X, 11.1;
B-X, 11.2;
B-X, 11.3;
B-X, 11.5;
B-X, 12;
B-XI, 3Updated sections reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation.

B-X, 11.6

Updated practice concerning citation ofvideo/audio fragments from the internet.

C-III, 1.1.1;
C-III, 1.3

Updated sections in view of amended
Rule 56, new Rule 56a and the withdrawalof the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

C-III, 5Updated practice of summoning to oralproceedings as first action in examination in
the case of divisionals identical to a refusedparent.

C-IV, 7.2

Updated practice in view of the top-up
search for national prior rights

C-V, 1.1

Updated sections reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation.

PART D

D-III, 3.1;
D-III, 5;
D-VII, 4.3

Updated sections reflecting the legal
changes decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation.

PART E

E-II, 2.3;
E-II, 2.4;
E-III, 8.7.2;
E-XII, 7.4.4

Updated sections reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation.

E-III, 8.7.1;
E-III, 8.7.3

Updated section reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation. Restructured bymoving some content to E-III, 8.7.2 andE-III, 8.7.3.

PART CList of sections amended in 2023 revision – 4

PART F

PART GMarch 2023

E-VIII, 2;
E-IX, 2.2;
E-IX, 2.5.1;
E-IX, 2.8;
E-IX, 2.9.4

Updated sections in view of amended
Rule 56, new Rule 56a and the withdrawalof the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

E-VIII, 4.3

Updated practice concerning Patent
Prosecution Highway.

E-VIII, 5

Clarified practice concerning accelerated
processing of oppositions in view of theentry into force of the Unified Patent Court.

E-IX, 2.4.2

Updated practice concerning sequencelistings in view of the entry into force ofWIPO Standard 26 (OJ EPO 2021, A96,
A97).

F-I;
F-II, 4.8;
F-II, 4.11;
F-II, 4.13;
F-II, 5.1;
F-II, Annex 2;
F-IV, 2.4;
F-IV, 4.18;

Updated sections reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation.

F-II, 6.2;
F-II, 6.2.1;
F-II, 6.2.2;
F-II, 6.2.3;
F-II, 6.2.4;

New section and sub-sections in view of theentry into force of WIPO Standard 26(OJ EPO 2021, A96, A97).

F-III, 6.3;
F-III, 10;
F-VI, 1.1;
F-VI, 2.3;
F-VI, 3.3;
F-VI, 3.4;

Updated sections in view of amended
Rule 56, new Rule 56a and the withdrawalof the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

G-IV, 5.1.2

Updated sections in view of amended
Rule 56, new Rule 56a and the withdrawalof the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

G-IV, 7.5.6

Updated practice concerning citation ofvideo/audio fragments from the internet.

List of sections amended in 2023 revision – 5

March 2023

PART H

H-IV, 4;
H-IV, 4.1;
H-IV, 4.1.1;
H-IV, 4.1.2;
H-IV, 4.2;

Updated practice concerning allowability
under Rule 137(5) by moving section H-II, 6
and subsections to H-IV, 4.

H-III, 2.1.2;
H-IV, 5.3;

Updated sections reflecting the legal
changes as decided by the Administrative
Council CA/30/22 rev. 2 to support thedigital transformation.

H-IV, 2.2.2;
H-IV, 2.2.3;
H-IV, 2.2.6;
H-V, 5;
H-VI, 2.2.2;

Updated or new sections in view ofamended Rule 56, new Rule 56a and thewithdrawal of the notification of the partial
incompatibility with Rule 20.5bis PCT(OJ EPO 2022, A3, OJ EPO 2022, A71).

List of sections amended in 2023 revision – 6

MINOR AMENDMENTS
General Part
General Part, 3

March 2023

Clarified practice with respect to the Unitary
Patent system.

General Part, 7Update of the number of extension states.

A-II, 1.2.2;
A-II, 4.1.2

Clarified practice concerning filing
applications in electronic form.

A-II, 5.6

Practice concerning calculation of the pagefee

A-III, 5.1;
A-III, 5.2

Clarified practice concerning designation of
the inventor.

A-III, 16.2

Clarified practice concerning period toremedy a deficiency under Rule 30(1).

A-VII, 2Clarified practice concerning language ofthe proceedings.

A-X, 4.2.2;
A-X, 4.2.3;
A-X, 4.2.4;
A-X, 4.3

Clarified practice concerning deposit
accounts.

A-X, 5.2.4

Added examples concerning renewal fees.

A-X, 6.2;
A-X, 6.2.1;
A-X, 6.2.2;
A-X, 6.2.3

Clarified practice concerning payment offees.

A-X, 10.3.1;

Clarified practice concerning refunds to adeposit account.

A-XI, 2.5

Clarified practice concerning file inspection
before publication of the application.

A-XI, 5.2

Clarified practice concerning priority
documents issued by the EPO.

A-II, 1.2.2;
A-II, 4.1.2

Clarified practice concerning filing
applications in electronic form.

PART B

B-X, 9.4

Clarified practice concerning identification of
relevant passages in prior-art documents.

PART C

C-III, 3.1;

Restructured by moving former sub-section
C-III, 2.3 dealing with searches under
Rule 164(2) to C-III, 3.1.

PART A

List of sections amended in 2023 revision – 7

March 2023

PART E

C-IV, 7.3

Clarified practice concerning additional
searches of Euro-PCT applications.

C-V, 2Clarified practice with respect to thetransitional measures in view of the entry
into force of the Unitary Patent system.

C-V, 15.2

Clarified practice concerning decision bymeans of a standard form .

E-III, 1.1;
E-III, 1.2;
E-III, 1.3;
E-III, 1.4;
E-III, 2;
E-III, 2.1;
E-III, 6;
E-III, 7.1.1;
E-III, 8.2;
E-III, 8.2.1;
E-III, 8.2.2;
E-III, 8.2.3;
E-III, 8.2.4;
E-III, 8.3.1;
E-III, 8.5.2;

Clarified practice concerning holding oralproceedings by videoconference.
Streamlined chapter by deleting outdated
information and moving sections E-III, 11
and subsections to E-III, 1.3 andE-III, 8.2.1-8.2.4.

E-III, 8.11.2

Clarified practice concerning adjournment oforal proceedings due to lack of time.

E-III, 10.4

Clarified practice concerning correction ofminutes.

E-VI, 2.2.2;
E-VI, 2.2.3;
E-VI, 2.2.4;

Updated practice regarding late filed
submissions.

E-VI, 3Updated practice concerning observations
by third parties

E-X, 2.3

Clarified practice concerning language ofthe decision.

E-X, 2.11

Clarified practice concerning refusal with noagreed text.

E-XI

Clarified practice concerning impartiality ofthe division.

E-XII, 6

Clarified practice concerning the form ofappeal.

E-XII, 9

Restructured to clarify the practiceconcerning remittals.

List of sections amended in 2023 revision – 8

PART F

PART GPART HMarch 2023

F-IV, 4.3

Clarified definition of inconsistencies byadding further examples. Clarified practiceof adaptation of the description for methodsof treatment of the human and animal body,for the use of human embryonic stem cells
and for plant and animals moved to
G-II, 4.2; G-II, 5.3 and G-II, 5.4.

F-V, 3;
F-V, 3.1;
F-V, 3.1.1;
F-V, 3.1.2;
F-V, 3.2.4;

Clarified assessment of non-unity.
Simplified examples.

G-I, 1

Restructured to clarify the technicalcharacter of an invention.

G-II, 4.2;
G-II, 5.3;
G-II, 5.4;

Clarified practice of adaptation of thedescription for methods of treatment of thehuman and animal body, for the use ofhuman embryonic stem cells and for plant
and animals.

G-II, 5.6.1.1

Clarified definition by structure of theantibody.

G-IV, 3;
G-IV, 5.1;
G-VII, 2;Clarified interpretation of filing dates.

G-VI, 7

Clarified practice in the assessment ofnovelty of purity.

G-VI, 8Clarified practice concerning selection
inventions.

G-VII, 5.4.2.5

Updated example.

H-II, 2.4

Clarified practice concerning admissibility
under Rule 137(3).

H-II, 6.2

Clarified practice concerning additional
search under Rule 164(2).

H-V, 6

Clarified practice concerning amendmentsfrom drawings.

H-VI, 4

Clarified practice concerning
formatting/editing errors.

March 2023

List of sections amended in 2023 revision – 9

EDITORIAL CHANGESGeneral Part
General Part, 2.1; General Part, 2.2; General Part, 6
PART A

A-II, 1.2.1; A-II, 1.5; A-II, 3.1; A-II, 4.1.1; A-II, 5.4.4; A-III, 1.2; A-III, 4.1;
A-III, 5.3; A-III, 6.12; A-IV, 1.1.3; A-IV, 1.3.1; A-IV, 1.8; A-IV, 2.2.3;
A-VI, 1.2; A-VI, 2.2; A-VII, 3.4; A-VIII, 3.3; A-IX, 2.2; A-IX, 4.1; A-IX, 5.1;
A-IX, 5.2; A-IX, 5.3; A-IX, 7.3.2; A-IX, 7.4; A-IX, 7.5; A-IX, 7.5.3;
A-IX, 7.5.5; A-IX, 7.6; A-IX, 9; A-IX, 11.1; A-IX, 11.2.2; A-X, 4.1;
A-X, 4.2.1; A-X, 4.4 ; A-X, 5.2.2; A-X, 5.2.3; A-X, 6.2.4; A-X, 6.2.5;
A-X, 7.2; A-X, 9.2.1; A-X, 9.2.2; A-X, 9.3.1; A-X, 10.2.1; A-X, 10.2.2;
A-X, 10.3; A-XI, 2.2;

PART B

B-II, 4.2; B-III, 3.2; B-III, 3.5; B-IV, 1.3; B-IV, 3.2; B-VI, 4.2; B-VII, 1.2.1;
B-VII, 1.2.2; B-VIII, 3; B-VIII, 3.2.1; B-VIII, 3.2.2; B-VIII, 3.4;
B-VIII, 4.2.1; B-VIII, 4.5; B-X, 2; B-XI, 1.2; B-XI, 2.2

PART C

C-II, 1.3; C-III, 2; C-III, 3.2; C-III, 3.2.1; C-III, 3.2.2; C-III, 3.2.3; C-III, 3.3;
C-III, 3.4; C-III, 3.5; C-IV, 4; C-IV, 7.4; C-IV, 7.5; C-V, 12; C-VII, 5;
C-IX, 1.4

PART D

D-IV, 1.5; D-VI, 3.2; D-VI, 5; D-VII, 4.1.2

PART E

E-III, 8.5.1; E-III, 8.11; E-IX, 3.2; E-IX, 4.2; E-X, 2.1

PART F

F-II, 4.1; F-II, 6.1; F-II, F-III, 1; F-IV, 2.1; F-IV, 3.2; F-IV, 3.3; F-IV, 4.10;
F-V, 2.2; F-V, 4.2, F-V, 5.1; F-V, 5.2; F-V, 5.3; F-V, 6; F-V, 7.1;

PART G

G-I, 2; G-II, 1; G-II, 3.3.2; G-II, 5.6.2; G-III, 1; G-IV, 5.4; G-IV, 7.6;
G-VI, 3; G-VII, 5.1; G-VII, 11PART H

H-II, 2; H-II, 2.3; H-II, 2.5.1; H-II, 3.1; H-II, 6; H-II, 6.1; H-II, 6.3; H-II, 6.4;
H-II, 6.4.1; H-II, 6.4.2; H-III, 3.3.2.2; H-IV; H-IV, 2.2.4; H-IV, 2.2.5;
H-IV, 2.2.7; H-IV, 2.2.8; H-IV, 2.2.9; H-IV, 3.4; H-IV, 5; H-IV, 5.1;
H-IV, 5.2; H-IV, 5.4; H-IV, 5.4.1; H-IV, 5.4.2; H-IV, 5.4.3; H-VI, 1;
H-VI, 2.1.1.1; H-VI, 3; H-VI, 3.3;