Guidelines for

Examination in the
European Patent Office
March 2024

ISBN 978-3-89605-361-9

epo.org
Published by the European Patent Office (EPO)
Directorate 5.3.1 – Patent Law and Processes
80298 Munich
Germany
[email protected]

© EPO 2024
ISBN 978-3-89605-361-9
Guidelines for Examination in the
European Patent Office
March 2024
March 2024 Guidelines for Examination in the EPO List of Contents – a

List of Contents

General Part
Contents a

1. Preliminary remarks 1

2. Explanatory notes 1

3. General remarks 4

4. Work at the EPO 6

5. Summary of the processing of applications

and patents at the EPO 6

6. Contracting states to the EPC 7

7. Extension to and validation in states not party

to the EPC 8

8. Unitary Patent protection 8

Part A – Guidelines for Formalities Examination

Contents a

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 transmission of the dossier
to examining division VI-1

Chapter VII Languages VII-1

List of Contents – b Guidelines for Examination in the EPO March 2024

Chapter VIII Common provisions VIII-1

Chapter IX Drawings IX-1

Chapter X Fees X-1

Chapter XI Inspection of files; communication of

information contained in files; consultation of
the European Patent Register; issue of
certified copies XI-1

Part B – Guidelines for Search

Contents a

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

of European 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 the

search VIII-1

Chapter IX Search documentation IX-1

Chapter X Search report X-1

Chapter XI The search opinion XI-1

March 2024 Guidelines for Examination in the EPO List of Contents – c

Part C – Guidelines for Procedural Aspects of

Substantive Examination
Contents a

Chapter I Introduction I-1

Chapter II Formal requirements to be met before the

division starts substantive examination II-1

Chapter III The first stage of examination III-1

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 or

corrections by the divisions V-20

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
Contents a

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 the

proceedings VII-1
List of Contents – d Guidelines for Examination in the EPO March 2024

Chapter VIII Decisions of the opposition division VIII-1

Chapter IX Costs IX-1

Chapter X Limitation and revocation procedure X-1

Part E – Guidelines on General Procedural Matters

Contents a

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 the

proceedings in oral proceedings V-1

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

Chapter VII Interruption, stay and consolidation of the

proceedings VII-1

Chapter VIII Time limits, loss of rights, further and

accelerated processing and re-establishment
of rights VIII-1

Chapter IX Applications under the Patent Cooperation

Treaty (PCT) IX-1

Chapter X Decisions X-1

Chapter XI Impartiality of divisions XI-1

Chapter XII Appeals XII-1

Chapter XIII Request from a national court for a technical

opinion concerning a European patent XIII-1

Chapter XIV Registration of changes of name, transfers,

licences and other rights XIV-1
March 2024 Guidelines for Examination in the EPO List of Contents – e

Part F – The European Patent Application

Contents a

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-16

Annex 2 Units recognised in international practice as

determined by the President under Rule 49(2)
(see F-II, 4.13) II-17

Chapter III Sufficiency of disclosure III-1

Chapter IV Claims (Art. 84 and formal requirements) IV-1

Annex Examples concerning essential features IV-43

Chapter V Unity of invention V-1

Chapter VI Priority VI-1

Part G – Patentability
Contents a

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-27
List of Contents – f Guidelines for Examination in the EPO March 2024

Part H – Amendments and Corrections

Contents a

Chapter I The right to amend I-1

Chapter II Admissibility of amendments – general rules II-1

Chapter III Admissibility of amendments – other

procedural matters III-1

Chapter IV Allowability of amendments 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 2024 revision 1

General Part
March 2024 Guidelines for Examination in the EPO General Part – Contents – a

Contents
1. Preliminary remarks 1

2. Explanatory notes 1

2.1 Overview 1

2.2 Abbreviations 3

3. General remarks 4

4. Work at the EPO 6

5. Summary of the processing of applications and

patents at the EPO 6

6. Contracting states to the EPC 7

7. Extension to and validation in states not party to

the EPC 8

8. Unitary Patent protection 8

March 2024 Guidelines for Examination in the EPO General Part – 1

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 of

developments 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 practice
as these continue to evolve. It follows that no update can ever claim to be
complete. In general, each edition is updated to reflect the situation as at
1 December of the previous year. Any indication from readers drawing
attention to errors as well as suggestions for improvement are highly
appreciated and may be sent by email to: [email protected].

The binding version of the Guidelines for Examination in the European

Patent Office is published by the EPO in searchable HTML format on the
internet 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 collection

of direct hyperlinks to the relevant chapters in the Guidelines;

(c) a full list of the sections that have been amended, together with the
corresponding hyperlinks.

In the HTML publication, modifications can be viewed by ticking the "Show

modifications" 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: Guidelines for Formalities Examination

Part B: Guidelines for Search
Part C: Guidelines for Procedural Aspects of Substantive
Examination
Part D: Guidelines for Opposition and Limitation/Revocation
Procedures
Part E: Guidelines on General Procedural Matters
Part F: The European Patent Application
Part G: Patentability
Part H: Amendments and Corrections

Part A deals with the procedures for formalities examination mainly with
regard to grant proceedings. Part B deals with search matters. Part C and
General Part – 2 Guidelines for Examination in the EPO March 2024

Part D relate to procedures to be followed in examination and opposition

proceedings, respectively.

Part E deals with general procedural matters relevant to several or all of the
stages in procedures before the EPO, including Euro-PCT applications.
Part F deals with the requirements which the application must fulfil other
than patentability, in particular unity of invention (Art. 82), sufficiency of
disclosure (Art. 83), clarity (Art. 84) and the right to priority (Art. 87 to
Art. 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) and
Art. 53), novelty (Art. 54), inventive step (Art. 56) and industrial application
(Art. 57). Part H deals with the requirements relating to amendments and
corrections. It relates in particular to questions of admissibility (Rule 80 and
Rule 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 2024 update: OJ EPO 2024, A9

Re March 2023 update: OJ EPO 2023, A6
Re March 2022 update: OJ EPO 2022, A10
Re March 2021 update: OJ EPO 2021, A6
Re November 2019 update: OJ EPO 2019, A80
Re November 2018 update: OJ EPO 2018, A73
Re November 2017 update: OJ EPO 2017, A75
Re November 2016 update: OJ EPO 2016, A76
Re November 2015 update: OJ EPO 2015, A74
Re November 2014 update: OJ EPO 2014, A88
Re September 2013 update: OJ EPO 2013, 447
Re June 2012 update: OJ EPO 2012, 420
Re April 2010 update: OJ EPO 2010, 230
Re April 2009 update: OJ EPO 2009, 336
Re December 2007 update: OJ EPO 2007, 589
Re June 2005 update: OJ EPO 2005, 440
Re December 2003 update: OJ EPO 2003, 582
Re October 2001 update: OJ EPO 2001, 464
Re February 2001 update: OJ EPO 2001, 115
Re June 2000 update: 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 or
subsection number (thus, e.g. C-V, 4.6, would be used if it were desired to
refer 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 the
legal 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 2024 Guidelines for Examination in the EPO General Part – 3

2.2 Abbreviations
In the Guidelines, the following abbreviations are used:

EPC European Patent Convention

EPO European Patent Office
OJ EPO Official Journal of the European Patent Office
Art. Article
RFees Rules relating to Fees
UP Unitary Patent
WIPO World Intellectual Property Organization
PCT Patent Cooperation Treaty
ISA International Searching Authority
WO-ISA Written Opinion of the International Searching Authority
IPEA International Preliminary Examining Authority
IPRP International Preliminary Report on Patentability
IPER International Preliminary Examination Report
EESR Extended European Search Report
ESOP European Search Opinion (Rule 62)
ADA Arrangements for deposit accounts
AAD Arrangements for the automatic debiting procedure
BNS back-file conversion numerical system
rec. Recital
Prot. Art. 69 Protocol on the Interpretation of Art. 69 EPC
Prot. Centr. Protocol on the Centralisation of the European patent
system and on its introduction (Protocol on
Centralisation)
EU European Union
EVL Electronic virtual library

References to the European Patent Convention (EPC) are references to

the 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 of
7 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 and OJ EPO 2009, 299),
27 October 2009 (OJ EPO 2009, 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 and
OJ EPO 2021, A3), 14 December 2021 (OJ EPO 2022, A3) and
13 October 2022 (OJ EPO 2022, A101).
General Part – 4 Guidelines for Examination in the EPO March 2024

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 similar
way, 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 with
the extension "EPC 2000".

Decisions and opinions of the Enlarged Board of Appeal will only be

referred 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 the
internet (epo.org).

The arrangements for deposit accounts and their annexes, including the
arrangements 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 in
proceedings 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 PCT

applications in the international phase are not the subject of these
Guidelines, but are dealt with in the PCT International Search and
Preliminary Examination Guidelines, which are available on the WIPO
website (wipo.int). Whenever considered appropriate, options given in the
latter 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 to
note that, in respect of international applications filed under the PCT that
are subject to proceedings before the EPO, the provisions of the PCT and
its Regulations apply, supplemented by the EPC. In case of conflict the
provisions of the PCT prevail (Art. 150(2) EPC).

The present Guidelines are addressed primarily to examiners and

formalities officers of the EPO, but are also intended to serve the parties to
March 2024 Guidelines for Examination in the EPO General Part – 5

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 the
proceedings 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 in

every detail, but must be regarded as general instructions that may need to
be 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 – are
amended. 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, the
Protocol on Privileges and Immunities and the Rules relating to Fees, and
secondly 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 to
decisions of the Legal Board of Appeal or technical boards of appeal.

In case of diverging decisions of the Legal Board of Appeal or technical

boards 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 decisions
of the boards of appeal incorporated into the EPO's general practice due to
their 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 patent
applications from certain countries. The instructions in Part B apply in the
main 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 arising
during the European patent grant procedure (see C-IV, 7.2) or, for example,
for requesting unitary effect for the granted patent (see C-V, 2.1). General
information on the aspects of the Unitary Patent system is available on the
EPO website (epo.org/applying/european/unitary.html).
General Part – 6 Guidelines for Examination in the EPO March 2024

4. Work at the EPO

The setting up of the EPO represented a major step forward in the history
of patents. Its reputation depends on all employees, regardless of
nationality, working harmoniously together and giving of their best. But it is
on 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 are
working 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 areas
of responsibility are distributed among the different departments, e.g. the
Receiving Section, the examining or opposition divisions, in order to
harmonise 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 it
delivers its work products. The EPC imposes various time limits on the
parties. The European patent system will be judged a success only when
examiners and other employees also operate within reasonable time
frames.

Finally, it should hardly need stating that all European applications and
patents, regardless of their country of origin and the language in which they
are written, receive equal treatment. An international patent system can be
credible 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 is
carried out in a number of distinct steps which may be summarised as
follows:

(i) the application is filed with the EPO or a competent national

authority;

(ii) the Receiving Section examines the application to determine if a date

of filing can be accorded to the application;

(iii) the Receiving Section carries out the formal examination of the
application;

(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 is
forwarded to the applicant;
March 2024 Guidelines for Examination in the EPO General Part – 7

(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 the
request for examination has been filed before the search report has
been transmitted to the applicant, on confirmation by the applicant
that they desire to proceed further with the European patent
application, the application is subjected to substantive examination
and any necessary formal examination before a European patent is
granted by the examining division;

(vii) provided the requirements of the EPC are met, a European patent is
granted for the states designated;

(viii) the specification of the European patent is published by the EPO;

(ix) no later than one month after the date of publication of the mention of
the grant in the European Patent Bulletin, the patent proprietor may
file a request for unitary effect;

(x) 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 the
patent;

(xi) the patent proprietor may request limitation or revocation of the

granted European patent; the examining division will decide on this
request;

(xii) 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 is
appealable 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 the
ratification in brackets):

Albania (1 May 2010)

Austria (1 May 1979)

* An up-to-date list of the contracting states to the EPC is published on epo.org (see
epo.org/en/about-us/foundation/member-states).
General Part – 8 Guidelines for Examination in the EPO March 2024

Belgium (7 October 1977)

Bulgaria (1 July 2002)
Croatia (1 January 2008)
Cyprus (1 April 1998)
Czech Republic (1 July 2002)
Denmark1 (1 January 1990)
Estonia (1 July 2002)
Finland (1 March 1996)
France2 (7 October 1977)
Germany (7 October 1977)
Greece (1 October 1986)
Hungary (1 January 2003)
Iceland (1 November 2004)
Ireland (1 August 1992)
Italy (1 December 1978)
Latvia (1 July 2005)
Liechtenstein (1 April 1980)
Lithuania (1 December 2004)
Luxembourg (7 October 1977)
Malta (1 March 2007)
Monaco (1 December 1991)
Montenegro (1 October 2022)
Netherlands3 (7 October 1977)
Republic of North Macedonia (1 January 2009)
Norway (1 January 2008)
Poland (1 March 2004)
Portugal (1 January 1992)
Romania (1 March 2003)
Serbia (1 October 2010)
San Marino (1 July 2009)
Slovak Republic (1 July 2002)
Slovenia (1 December 2002)
Spain (1 October 1986)
Sweden (1 May 1978)
Switzerland (7 October 1977)
Türkiye (1 November 2000)
United Kingdom4 (7 October 1977)
(total: 39)

7. Extension to and validation in states not party to the EPC

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

8. Unitary Patent protection

After a European patent is granted, the patent proprietor can file a request
for unitary effect and obtain a Unitary Patent, i.e. a European patent with

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 of
European patents (UK) in crown dependencies, UK overseas territories and Commonwealth
countries, see OJ EPO 2018, A97.
March 2024 Guidelines for Examination in the EPO General Part – 9

unitary effect. For further details, including the territorial scope of a Unitary
Patent, see epo.org/applying/european/unitary.html.
Part A

Guidelines for Formalities

Examination
March 2024 Guidelines for Examination in the EPO Part A – Contents a

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 and

examination on filing II-1
1. Where and how applications may be filed II-1

1.1 Filing of applications by means of electronic

communication II-1
1.1.1 Filing of applications in electronic form II-1
1.1.2 Filing of applications by fax II-1

1.2 Filing of applications by delivery by hand or by postal

services II-2

1.3 Filing of applications by other means II-3

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 Application numbering systems II-4

1.7.1 Applications filed before 1 January 2002 II-4
1.7.2 Applications filed on or after 1 January 2002 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 Minimum requirements for according a date of filing II-6

4.1.1 Indication that a European patent is sought II-6
4.1.2 Information concerning the applicant II-7
4.1.3 Description II-7
Part A – Contents b Guidelines for Examination in the EPO March 2024

4.1.3.1 Reference to a previously filed application II-7

4.1.4 Deficiencies II-9
4.1.5 Date of filing II-10

5. Late filing of missing drawings or missing parts

of the description II-11

5.1 Late filing of missing drawings or missing parts of the

description – on invitation II-11

5.2 Late filing of missing drawings or missing parts of the

description – without invitation II-11

5.3 The filing date changes II-11

5.4 Missing parts of the description or missing drawings

based on the priority application, no change in filing
date II-11
5.4.1 Late-filed missing parts when priority is claimed II-13
5.4.2 The missing parts of the description or missing
drawings are completely contained in the priority
application II-13
5.4.3 Copy of the priority application II-13
5.4.4 Translation of the priority application II-14

5.5 Withdrawal of late-filed missing drawings or missing

parts of the description II-14

5.6 Additional fee for pages II-15

6. Correction of erroneously filed application

documents or parts II-15

6.1 Correction of erroneously filed application documents

or parts – on invitation II-15

6.2 Correction of erroneously filed application documents

or parts – without invitation II-15

6.3 The filing date changes II-16

6.4 Correct application documents based on priority

application, no change in the filing date II-16
6.4.1 Later-filed correct application documents or parts
when priority is claimed II-17
6.4.2 Copy of the priority application II-18
6.4.3 Translation of the priority application II-18

6.5 Withdrawal of correct application documents or parts II-18

6.6 Same-day corrections II-18

6.7 Correct application documents or parts filed after the

search has started II-18
March 2024 Guidelines for Examination in the EPO Part A – Contents c

6.8 Additional fee for pages II-18

6.9 Claims fee II-18

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 III-2
3.2.1 Physical requirements of applications filed by
reference to a previously filed application III-3
3.2.2 Physical requirements of late-filed application
documents or correct application documents or parts III-4

3.3 Other documents III-4

4. Request for grant III-4

4.1 General remarks III-4

4.2 Examination of the request for grant form III-4

4.2.1 Information on the applicant III-5
4.2.2 Signature III-5
4.2.3 Further requirements laid down by Rule 41(2) III-5

5. Designation of inventor III-5

5.1 General remarks III-5

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-6

5.5 Incorrect designation III-7

6. Claim to priority (see also F-VI) III-7

Part A – Contents d Guidelines for Examination in the EPO March 2024

6.1 General remarks III-7

6.2 Applications giving rise to a right of priority III-8

6.3 Multiple priorities III-9

6.4 Examination of the priority document III-9

6.5 Declaration of priority III-9

6.5.1 Filing a new priority claim III-10
6.5.2 Correcting an existing priority claim III-10
6.5.3 Deficiencies in the priority claim and loss of the
priority right III-11

6.6 Priority period III-11

6.7 Copy of the previous application (priority document) III-12

6.8 Translation of the previous application III-14

6.8.1 Invitation to file the translation before examination III-14
6.8.2 Invitation to file the translation in
examination/opposition III-15
6.8.3 Loss of rights and legal remedies III-15
6.8.4 Translation of previous application already filed III-16
6.8.5 Voluntary filing of the translation of the previous
application III-16
6.8.6 Declaration replacing the translation III-16

6.9 Non-entitlement to right to priority III-17

6.10 Loss of right to priority III-17

6.11 Notification III-17

6.12 Copy of the search results for the priority or priorities III-18

7. Title of the invention III-20

7.1 Requirements III-20

7.2 Responsibility III-20

8. Prohibited matter III-20

8.1 Morality or "ordre public" III-20

8.2 Disparaging statements III-21

9. Claims fee III-21

10. Abstract III-23

10.1 General remark III-23

March 2024 Guidelines for Examination in the EPO Part A – Contents e

10.2 Content of the abstract III-23

10.3 Figure accompanying the abstract III-23

11. Designation of contracting states III-23

11.1 General remarks III-23

11.2 European patent applications filed on or after

1 April 2009 III-23
11.2.1 Designation fee; time limits III-23
11.2.2 Payment of designation fee III-24
11.2.3 Consequences of non-payment of the designation
fee III-24
11.2.4 Withdrawal of designation III-24
11.2.5 Euro-PCT applications entering the European phase III-25

11.3 European patent applications filed before

1 April 2009 III-25
11.3.1 Designation fee; time limits III-25
11.3.2 Consequences of non-payment of designation fees III-25
11.3.3 Amount paid insufficient III-26
11.3.4 Application deemed withdrawn III-26
11.3.5 Request for grant form III-26
11.3.6 Indication of the contracting states III-27
11.3.7 Amount payable III-27
11.3.8 Withdrawal of designation III-27
11.3.9 Euro-PCT applications entering the European phase
before 1 April 2009 III-28

12. Extension and validation of European patent

applications and patents to/in states not party to
the EPC III-28

12.1 General remarks III-28

12.2 Time limit for payment of extension and validation

fees III-30

12.3 Withdrawal of the extension or validation request III-30

12.4 Extension and validation deemed requested III-31

12.5 National register III-31

13. Filing and search fees III-31

13.1 Payment of fees III-31

13.2 Additional fee (if application documents comprise

more than 35 pages) III-32

13.3 Additional fee for divisional applications III-36

Part A – Contents f Guidelines for Examination in the EPO March 2024

14. Translation of the application III-36

15. Late filing of claims III-37

16. Correction of deficiencies III-38

16.1 Procedure for formalities officers III-38

16.2 Period allowed for remedying deficiencies III-38

Chapter IV – Special provisions IV-1

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

1.1 General remarks IV-1

1.1.1 Pendency of the earlier application IV-1
1.1.2 Sequences of divisional applications IV-3
1.1.3 Persons entitled to file a divisional application IV-3

1.2 Date of filing of a divisional application; claiming

priority IV-3
1.2.1 Date of filing IV-3
1.2.2 Priority claim of a divisional application IV-4

1.3 Filing a divisional application IV-5

1.3.1 Where and how to file a divisional application IV-5
1.3.2 Request for grant IV-5
1.3.3 Language requirements IV-6
1.3.4 Designation of contracting states IV-6
1.3.5 Extension and validation states IV-6

1.4 Fees IV-6

1.4.1 Filing, search and designation fee(s) IV-6
1.4.1.1 Additional fee for divisional applications of second or
subsequent generations IV-7
1.4.2 Claims fees IV-8
1.4.3 Renewal fees IV-8

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 of

divisional applications IV-9

2. Art. 61 applications and stay of proceedings

under Rule 14 IV-10

2.1 General IV-10

March 2024 Guidelines for Examination in the EPO Part A – Contents g

2.2 Stay of proceedings for grant IV-10

2.2.1 Responsible department IV-11
2.2.2 Date of the stay of proceedings IV-11
2.2.3 Legal nature and effects of the stay IV-11
2.2.4 Interruption of time limits IV-12
2.2.5 Resumption of the proceedings for grant IV-13
2.2.5.1 Resumption after final decision in entitlement
proceedings IV-13
2.2.5.2 Resumption regardless of the stage of entitlement
proceedings IV-13

2.3 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-13

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-14

3.1 Certificate of exhibition; identification of invention IV-14

3.2 Defects in the certificate or the identification IV-15

4. Applications relating to biological material IV-15

4.1 Biological material; deposit of such IV-15

4.1.1 New deposit of biological material IV-16
4.1.2 Application filed by reference to a previously filed
application IV-17

4.2 Missing information; notification IV-17

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 amino

acid sequences IV-19

5.1 Sequence information filed under Rule 56 IV-21

5.2 Sequence information filed under Rule 56a IV-22

5.3 Sequence listings of an application filed by reference

to a previously filed application IV-22

5.4 Sequence listings of a divisional application IV-23

Part A – Contents h Guidelines for Examination in the EPO March 2024

6. Conversion into a national application IV-24

Chapter V – Communications concerning

formal deficiencies; amendment of
application; 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-1

3. Correction of errors in documents filed with the

EPO V-2

Chapter VI – Publication of application;

request for examination and transmission of
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 the

dossier to the examining division VI-4

2.1 Communication VI-4

2.2 Time limit for filing the request for examination VI-4

2.3 Legal remedy VI-5

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

March 2024 Guidelines for Examination in the EPO Part A – Contents i

Chapter VII – Languages VII-1

1. Admissible languages on filing VII-1

1.1 General VII-1

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 the

proceedings 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 the

proceedings 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-1

1. Representation VIII-1

1.1 General principles VIII-1

1.2 Representation by a professional representative; list

of professional representatives; associations 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-3

Part A – Contents j Guidelines for Examination in the EPO March 2024

1.7 General authorisation VIII-4

1.8 Invitation to file authorisation and legal consequence

in case of non-compliance VIII-4

2. Form of documents VIII-5

2.1 Documents making up the European patent

application VIII-5

2.2 Replacement documents and translations VIII-5

2.3 Other documents VIII-5

2.4 Number of copies VIII-5

2.5 Filing of subsequent documents VIII-6

3. Signature of documents VIII-6

3.1 Documents filed after filing the European patent

application VIII-6

3.2 Documents forming part of the European patent

application VIII-7

3.3 Form of signature VIII-7

3.4 Joint applicants VIII-8

Chapter IX – Drawings IX-1

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 if drawings are filed on paper 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-2

March 2024 Guidelines for Examination in the EPO Part A – Contents k

5. General layout of drawings IX-3

5.1 Page-setting IX-3

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 Cross-sections IX-5

7.3.1 Sectional diagrams IX-5
7.3.2 Hatching IX-5

7.4 Scale of drawings IX-5

7.5 Numbers, letters and reference signs IX-5

7.5.1 Leading lines IX-6
7.5.2 Arrows IX-6
7.5.3 Height of the numbers and letters in the drawings IX-6
7.5.4 Consistent use of reference signs in description,
claims and drawings IX-6
7.5.5 Consistent use of reference signs in drawings IX-7

7.6 Variations in proportions IX-7

8. Text matter on drawings IX-7

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 Tables IX-9

11.2.1 Tables in the description IX-9
11.2.2 Tables in the claims IX-9

Chapter X – Fees X-1

1. General X-1

2. Methods of payment X-1

Part A – Contents l Guidelines for Examination in the EPO March 2024

3. Currencies X-2

4. Date considered as date on which payment is

made X-2

4.1 Payment or transfer to a bank account held by the

European Patent Organisation X-2

4.2 Deposit accounts with the EPO X-2

4.2.1 General remarks X-2
4.2.2 Payments to replenish a deposit account X-2
4.2.3 Debiting the deposit account X-3
4.2.4 Date of receipt of the debit order; insufficient funds 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 General X-6

5.1.1 Due date X-6
5.1.2 Amount of the fee X-6

5.2 Due date for specific fees X-7

5.2.1 Filing fee and search fee X-7
5.2.2 Examination fee and designation fee X-7
5.2.3 Fee for grant and publishing X-7
5.2.4 Renewal fees X-7
5.2.5 Claims fees X-11
5.2.6 Fees for limitation/revocation, opposition, appeal,
petition for review X-11
5.2.7 Fees payable for procedural and other requests X-11

6. Payment in due time X-11

6.1 Basic principle X-11

6.2 Late payment of fees – period for payment

considered observed X-11
6.2.1 Fees paid by bank transfer – application of Art. 7(3)
and (4) RFees X-11
6.2.2 Safety provision for late replenishment of deposit
accounts X-12
6.2.3 Debit orders filed with a competent national authority X-12
6.2.4 Amount of fee payable X-12
6.2.5 Noting of loss of rights X-12

7. Purpose of payment X-13

7.1 General X-13

7.1.1 Conditions for valid payment X-13
7.1.2 Purpose of payment X-13
March 2024 Guidelines for Examination in the EPO Part A – Contents m

7.2 Indication of the purpose of the payment in the case

of designation fees X-14

7.3 Indication of the purpose of payment in the case of

claims fees X-14
7.3.1 Claims fees payable on filing the European patent
application X-14
7.3.2 Claims fees payable before the grant of the
European patent X-15

8. No deferred payment of fees, no legal aid, no

discretion X-15

9. Reduction of fees X-15

9.1 General X-15

9.2 Reduction under the language arrangements X-15

9.2.1 Conditions X-15
9.2.2 Reduction of the filing fee X-17
9.2.3 Reduction of the examination fee X-18

9.3 Special reductions X-18

9.3.1 Reduction of the search fee for a supplementary
European search X-18
9.3.2 Reduction of the examination fee where the
international preliminary examination report is drawn
up by the EPO X-19

10. Refund of fees X-19

10.1 General remarks X-19

10.1.1 Fee payments lacking a legal basis X-19
10.1.2 Late payments X-20
10.1.3 Insignificant amounts X-20

10.2 Special refunds X-20

10.2.1 Refund of the search fee X-20
10.2.2 Refund of the further search fee X-20
10.2.3 Refund of the examination fee X-21
10.2.4 Refund under Rule 37(2) X-21
10.2.5 Refund of the fee for grant and publishing X-21
10.2.6 Refund of the appeal fee X-21

10.3 Method of refund X-21

10.3.1 Refunds to a deposit account X-21
10.3.2 Refunds to a bank account X-22

10.4 Reallocation instead of refund X-22

11. Crediting of fees under Rule 71a(5) X-23

11.1 Crediting of the fee for grant and publishing X-23

Part A – Contents n Guidelines for Examination in the EPO March 2024

11.2 Crediting of claims fees X-23

11.3 Separate crediting of the fee for grant and publishing

and claims fees X-24

11.4 Further processing fee and crediting of fees X-24

Chapter XI – Inspection of files;

communication of information contained in
files; consultation of the European Patent
Register; issue of certified copies XI-1
1. General XI-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

3. Communication of information contained in the

files XI-4

4. Consultation of the European Patent Register XI-5

5. Issue of certified copies XI-5

5.1 Certified copies of documents from the files or of

other documents XI-5

5.2 Priority documents issued by the EPO XI-5

March 2024 Guidelines for Examination in the EPO Part A – Chapter I-1

Chapter I – Introduction
1. Overview
Part A of the Guidelines deals with:

(i) the requirements and procedures to be followed in the various

aspects of the formalities examination of European patent
applications (chapters A-II to VI)

(ii) formalities matters of a more general nature that can arise during the
application procedure or 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 matters (chapter A-X)

(v) inspection of files, communication of information contained in files,

consultation of the European Patent Register and issue of certified
copies (chapter A-XI).

2. Responsibility for formalities examination

The matters covered in this part are intended for EPO formalities staff at all Rule 10
sites (The Hague, Munich and Berlin) and in particular for the Receiving Rule 11(3)
Section, which is specifically responsible under the EPC for ensuring that
the formal requirements for European patent applications are met. Once an
application is transferred to the examining division, the latter accepts
responsibility for the formalities of the application, although it should be
understood that the term "examining division" is intended to include the
formalities officer to whom this work is entrusted (see the decisions of the
President of the EPO dated 12 December 2013, OJ EPO 2014, A6,
23 November 2015, OJ EPO 2015, A104, and 14 June 2020, OJ EPO
2020, A80).

3. Purpose of Part A
This part of the Guidelines is intended to provide formalities officers with
the knowledge and background to help them carry out their duties efficiently
and uniformly. It does not override the EPC (see, in particular, section 3 of
the General Part).

4. Other parts relating to formalities

Formalities officers should not concern themselves with only Part A of the
Guidelines. They will need to refer frequently to the other parts and in
particular Part E, where appropriate.
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-1

Chapter II – Filing of applications and

examination on filing
1. Where and how applications may be filed
European patent applications must be filed in writing. They may be filed by Rule 1
means of electronic communication (see A-II, 1.1) or by delivery by hand or Rule 2(1)
by postal services (see A-II, 1.2).

1.1 Filing of applications by means of electronic communication

1.1.1 Filing of applications in electronic form

European patent applications and international (PCT) applications may be
filed electronically with the EPO (see the decision of the President of the
EPO dated 3 May 2023, OJ EPO 2023, A48) using either

(i) EPO Online Filing (OLF), by packaging and submitting the

documents using the software provided by the EPO (see the decision
of the President of the EPO dated 24 November 2023 concerning the
version of the EPO Online Filing software to the used for the
electronic filing of documents, OJ EPO 2023, A96) unless the use of
other software is permitted. Filings using OLF may be made online or
on electronic data carriers accepted by the EPO. At present, they 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
3 May 2023, OJ EPO 2023, A48)

(ii) Online Filing 2.0

(iii) the EPO web-form filing service or

(iv) the EPO Contingency Upload Service.

Other documents may also be filed electronically in proceedings under the

EPC (see the decision of the President of the EPO dated 3 May 2023,
OJ EPO 2023, A48).

Certain procedural acts may be filed electronically using the MyEPO

Portfolio service (see the decision of the President of the EPO dated
9 October 2023, OJ EPO 2023, A89, the notice from the EPO dated
9 October 2023, OJ EPO 2023, A90, and the notice from the EPO dated
3 May 2023, OJ EPO 2023, A50). Currently, only those documents
specified in the above decision or in an announcement on the EPO website
or in the EPO Official Journal may be filed using this service.

European patent applications may also be filed electronically with the

competent national authorities of those contracting states that permit this.

1.1.2 Filing of applications by fax

Applications may also be filed by fax with the EPO's filing offices in Munich,
The Hague or Berlin (see A-II, 1.2) or with the competent national
authorities of contracting states that permit this, namely – at present –
Part A – Chapter II-2 Guidelines for Examination in the EPO March 2024

Austria (AT), Bulgaria (BG), Czech Republic (CZ), Estonia (EE),

Finland (FI), France (FR), Germany (DE), Iceland (IS), Ireland (IE),
Luxembourg (LU), Monaco (MC), Norway (NO), Portugal (PT),
Slovenia (SI), Sweden (SE) and United Kingdom (GB). For further details,
see the latest version of the booklet "National law relating to the EPC"
available on the EPO website (epo.org).

If a faxed application is illegible or incomplete, it is to be treated as not

having been received to the extent that it 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 is

required only where the documents are of inferior quality. In this case, the
EPO will invite the applicant to supply such documents within two months
(Rule 2(1)). If the applicant fails to comply with this invitation in due 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 name of
the authority with which the documents were filed and to make it clear that
these documents represent "confirmation of an application filed by fax".

1.2 Filing of applications by delivery by hand or by postal services

Art. 75(1) European patent applications may be filed by delivery by hand or by postal
Rule 35(1) 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.

The opening hours of the EPO's filing offices are published in the notice
from the EPO dated 14 February 2018, OJ EPO 2018, A18. Dates on which
at least one of the filing offices is not open to receive documents are
announced at regular intervals in the EPO Official Journal (see also
E-VIII, 1.4). The filing offices 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, 1.1;
A-II, 1.3).

The EPO filing offices in Berlin and Munich's PschorrHöfe building (see the
decision of the President of the EPO dated 3 January 2017, OJ EPO 2017,
A11) are equipped with automated mailboxes, which may be used at any
time. The automated mailbox facility is currently not available at the filing
offices in 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 competent
authority of a contracting state if permitted by that state's national law
(see A-II, 1.6). First filings may need to be filed at national offices
(see A-II, 3.2 and the booklet "National law relating to the EPC" on
epo.org).
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-3

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 from the EPO dated
12 September 2000, OJ EPO 2000, 458).

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 Point 7.1.2 ADA
filed in an accepted electronic format (see A-X, 4.2.3), irrespective of how Point 12.1 ADA
the application 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 accepted by way
of exception if it is included with that application on filing (see the
Arrangements for deposit accounts (ADA), Supplementary publication 3,
OJ EPO 2022, Supplementary publication 3, OJ EPO 2023, 10, and the
decision of the President of the EPO dated 13 June 2023,
OJ EPO 2023, A58). Paper Form 1020 is not accepted if filed direct with
the EPO.

1.6 Forwarding of applications

The central industrial property office of a contracting state is obliged to Art. 77(1)
forward applications filed (see A-II, 3.2) with it or with other competent Rule 37(1)
authorities in that state to the EPO in the shortest time compatible with its
national law on the secrecy of inventions (for debit order enclosures,
see A-II, 1.5).

A time limit of six weeks after filing is specified for the onward transmission Art. 77(3)
to the EPO of applications not classified as secret. This is extended to four Rule 37(2)
months or, where priority has been claimed, to 14 months after the date of Art. 135(1)(a)
priority, for applications requiring further examination as to their
classification as secret. An application received outside the specified time
limits, either six weeks or four months, must be processed, provided it is
received in Munich, The Hague or Berlin before the end of the 14th month
after filing or, where appropriate, after the date of priority. Applications
received after 14 months are deemed withdrawn. Re-establishment 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 the applicant's
failure to observe a time limit (see J 3/80). However, the applicant may file
a request for conversion under Art. 135(1)(a) (see A-IV, 6).

If the time limit referred to in Rule 37(2) expires on a day on which the Rule 134(2)
delivery or transmission of mail is interrupted or subsequently dislocated
within the meaning of Rule 134(2), it will extend to the first day following the
end of the period of interruption or dislocation.
Part A – Chapter II-4 Guidelines for Examination in the EPO March 2024

1.7 Application numbering systems

1.7.1 Applications filed before 1 January 2002

For applications filed before 1 January 2002, the following numbering
system applies:

The application number consists of nine digits. The first two digits (from left
to right) indicate the filing year. The last (ninth) digit is a check digit. The
third digit or third and fourth digits indicate(s) the place of filing.

The remaining digits are used for consecutively numbering the applications
in the order in which they arrive 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 numbering
system applies:

The application number consists of nine digits. The first two digits (from left
to right) indicate the filing year. The last digit is a check digit. The remaining
six digits in between are used for consecutively numbering the applications
in the order in which they arrive at the place of filing, 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 to distinguish between online and paper filings.

For international applications designating "EP" (Euro-PCT applications), the

dedicated range for the six-digit number within the application number uses
"7", "8" or "9" as the third digit and does not reflect the place or method of
filing.

A list of the number ranges introduced in 2002, along with, where

appropriate, the corresponding places of filing, is published in
OJ EPO 2001, 465.

2. Persons entitled to file an application

Art. 58 A European patent application may be filed by any natural or legal person,
or any body 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 will be
deemed to be entitled to exercise the right to the European patent.

Art. 59 The application may be in the name of one person or several persons may
Art. 118 be named as joint applicants. The application may also be filed by two or
more applicants designating different contracting states. It may arise that a
first 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 a
patent are not the same for different contracting states they will be
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-5

regarded as joint applicants in proceedings before the EPO (see A-III, 4.2.1
and 11.1 on when and under what circumstances the matter dealt with in
this paragraph must be considered during formalities examination).

If a national court finds that a person other than the applicant is entitled to Art. 61(1)
the grant of a European patent that person has the option of prosecuting
the application as their own application in place of the applicant
(see A-IV, 2).

3. Procedure on filing

3.1 Receipt; confirmation

The receipt of European patent applications filed via EPO Online Filing, Rule 35(2)
Online Filing 2.0 or the EPO web-form filing service is acknowledged
electronically following submission. Where it becomes apparent that the
acknowledgment's transmission failed, the authority with which the
application was filed promptly transmits the acknowledgment by other
means where possible on the basis of the information supplied (see Art. 13
of the decision of the President of the EPO dated 3 May 2023, OJ EPO
2023, A48).

The receipt of European patent applications filed using the EPO

Contingency Upload Service is confirmed electronically by the EPO in the
service itself. An acknowledgment of receipt indicating the application
number assigned is sent separately in accordance with the provisions
governing the filing of documents on paper (see following paragraph).

The acknowledgement of receipt of European patent applications filed on

paper (usually the last page of EPO Form 1001) is issued by the authority
with which the application is filed – either the EPO (Munich, The Hague or
Berlin) or the competent national authority. The receipt must be issued
without delay and include the application number and the date of receipt.

3.2 Filing with a competent national authority

If the application is filed with a competent national authority, that authority Rule 35(3)
must inform the EPO without delay 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 authority should also indicate the applicant's or
representative's reference number, where provided. In practice, the EPO
receives the above information when the actual application is forwarded to
it unless national security checks by the national authority delay the
forwarding of the application, in which case a separate notice is sent by that
authority to the EPO.

When the EPO receives an application forwarded by the national authority Rule 35(4)
of a contracting state, it notifies the applicant, indicating the date of receipt
at the EPO. Once this communication has been received, all further
documents relating to the application must be sent direct to the EPO.
Part A – Chapter II-6 Guidelines for Examination in the EPO March 2024

Art. 77(3) Where an application is not received by the EPO from the national authority
Rule 37(2) of a contracting state before the end of the 14th month after filing or, if
Rule 112(1) priority has been claimed, after the date of priority and is consequently
deemed 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.

4. Examination on filing

4.1 Minimum requirements for according a date of filing

Art. 90(1) The EPO examines applications to determine whether they meet the
Rule 10(1) minimum requirements for according a date of filing. This is done by the
Receiving Section. These requirements are satisfied where the documents
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 be
contacted

Rule 40(1)(c) (c) a description or reference to a single previously filed application.

It is not necessary for the applicant to provide any claims to obtain a filing
date. If the application is filed without claims but satisfies all requirements
for obtaining a filing date, the applicant will be requested to provide 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 for
the application to qualify for a filing date according to Rule 40(2):

(i) the filing date of the previously filed 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 1 To be accorded a filing date, these documents do not have to meet any
particular requirements as to form or presentation. They must, however, be
sufficiently legible to enable the information to be discerned.

4.1.1 Indication that a European patent is sought

Applicants must use the prescribed request for grant form (EPO
Form 1001), which is available in EPO Online Filing and Online Filing 2.0
(see A-II, 1.1.1) or can be downloaded free of charge from the EPO website
(epo.org), to meet the requirement referred to in A-II, 4.1(a) to provide "the
indication that a patent is sought" (see also A-III, 4).
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-7

4.1.2 Information concerning the applicant

For the purposes of establishing a filing date, information must be supplied
which:

(i) identifies the applicant or

(ii) allows the applicant to be contacted.

If there are multiple applicants, the above information has to be supplied for
only one of them. Any kind of information that allows the applicant to be
contacted will be considered to fulfil requirement (ii), for example:

(a) the name and address of the applicant's representative

(b) a PO box number

(c) a phone number.

If the information supplied is sufficient to establish a filing date but not 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 the applicant information supplied satisfies the

requirements for establishing a filing date, the EPO will take into account all
data contained in the documents filed (see J 25/86). Objection should not
be raised at this stage with regard to the status of the applicant or the
entitlement 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) that appear(s) to include a
description. If, instead of filing a description, the applicant files a reference
to a previously filed application, see A-II, 4.1.3.1.

4.1.3.1 Reference to a previously filed application

Instead of application documents, the applicant can file a reference to a
previously filed application under Rule 40(1)(c). The previously filed
application referenced does not need to be claimed as priority.

Details required on the filing date Rule 40(2)

Under Rule 40(2), to qualify for a filing date, the applicant must indicate the
following details on the filing date:

(i) the filing date of the previously filed application

(ii) its file number

(iii) the office where it was filed

Part A – Chapter II-8 Guidelines for Examination in the EPO March 2024

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

The previously filed application referenced may also be an application for a

utility model.

Rule 40(3) Copy of the previously filed application

Rule 53(2)
The applicant must supply a copy of the previously filed application certified
as correct by the authority with which it was filed within two months 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 to be 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 referenced must
be filed within the time limit under Rule 40(3).

Where the previously filed application referenced is the claimed priority

application, only one certified copy needs to be filed to satisfy the
requirements relating to both the filing date (Rule 40(3)) and 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 EPO language, the

applicant must also file a translation into one such language 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 it 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 an official language of

an EPC contracting state according to Art. 14(4), the application may
qualify for a reduction of the filing fee, provided that the applicant is entitled
to a reduction 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 application according to
Rule 40(1)(c), where the previously filed application is in a language
specified in Art. 14(4) but the claims are filed after the filing date in
accordance with Rule 57(c) and Rule 58 and in an official EPO language.
This is because the essential element for establishing a filing date (the
provision of a description, see Rule 40(1)(c)) has been provided in a
language giving rise to the entitlement to the reduction (see G 6/91, mutatis
mutandis).
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-9

The claims

Applicants can also indicate that the reference to the previously filed
application should also replace the claims (Rule 57(c)). This must be done
on the filing date, preferably by selecting the appropriate box on the request
for grant (EPO Form 1001). In that case, the previously filed application's
claims will form the basis for the search and, as they satisfy the
requirement of Rule 57(c), the applicant will not be invited to file claims
later.

If applicants do not refer to the previously filed application's claims but only
to the description and any drawings, they may file a set of claims at the
same time as the reference (i.e. on the filing date). If they do not do so, the
Receiving Section will invite them under Rule 58 to file claims
(see A-III, 15).

4.1.4 Deficiencies
If the EPO (Receiving Section) notes either of the following deficiencies: Art. 90(1) and
(2)
– Rule 40(1)(a) – no indication that a European patent is sought or Rule 55
Rule 112(1)
– Rule 40(1)(c) – no description or reference to a previously filed
application,

either of which prevents the application being accorded a filing date, 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) or
Rule 40(1)(c), as applicable, are not met at the end of this period, the
application will not be dealt with as a European patent application. The
EPO will notify the applicant accordingly under Rule 112(1). In reply, the
applicant 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 and
Rule 136 (see E-VIII, 3).

If none of the available means of redress is filed on time, any fees paid are
refunded. If the applicant wishes to pursue a European patent application,
all documents relating to the purported application will have to be re-filed.
Any such re-filed application will be accorded as the filing date the date on
which all the requirements of Rule 40 are fulfilled.

Deficiency under Rule 40(1)(b)

If the information on 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 on their own initiative
within two months of the date of receipt of the original documents. In this
case, the filing date is the date on which all the requirements of Rule 40 are
met.
Part A – Chapter II-10 Guidelines for Examination in the EPO March 2024

Filing by reference to a previously filed application

Where the application is filed by reference to a previously filed application

and the EPO (Receiving Section) notes that any of the following information
is missing:

(i) the filing date of the previously filed 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 a
European patent 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 it is
not already available to the EPO (see A-II, 4.1.3.1), then a communication
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 patent application. Where a translation of the
application is required but is not provided within the above time limit, the
procedure given in A-III, 14 is followed. The filing date is unaffected by a
missing translation.

4.1.5 Date of filing

The filing date 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. The applicant is
informed of the filing date accorded to the application in this case.

Case (ii) is subject to one exception. Where the application is filed by

reference to a previously filed application and the applicants fail to file the
certified copy of the previously filed application within two months of the
filing date as required by Rule 40(3), an invitation is sent to them to file it
within two months of a communication according to Rule 55. If they file the
certified copy within this two-month period, the application maintains its
original filing date, provided that all other requirements for acquiring a filing
date have been met.

The filing date may also change in cases where the applicant inserts
missing parts of the description or missing drawings under Rule 56
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-11

(see A-II, 5) or corrects erroneously filed parts under Rule 56a (see A-II, 6)
after the filing date.

5. Late filing of missing drawings or missing parts of the description

5.1 Late filing of missing drawings or missing parts of the

description – on invitation
The application is examined on filing to check that it is entitled to a filing Art. 90(1)
date. If, during this check, the EPO notes that parts of the description or Rule 56(1)
drawings appear to be missing, it will invite the applicant to file the missing Rule 56(4)(a)
parts within a time limit of two months of a communication under Rule 56(1) Rule 56a(1)
and Rule 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
communication in time, then all references to the missing parts are deemed
deleted. It should be noted that the applicant may not invoke the omission
of the communication under Rule 56(1) and Rule 56a(1).

5.2 Late filing of missing drawings or missing parts of the

description – without invitation
Applicants may also file missing parts of the description or missing Rule 56(2)
drawings on their own initiative (without being invited to do so by the EPO) Rule 56(4)(a)
within two months of the original filing date. If the applicant does not do so
within this period, all references to the missing parts are deemed deleted. If
the applicant is invited by the EPO to file the missing parts, the period
under Rule 56(1) takes precedence (see A-II, 5.1).

If, within two months of the original filing date, applicants notice that parts of
the description or drawings are missing in the application as originally filed,
they should, on their own initiative, file the missing parts or missing
drawings as soon as possible under Rule 56(2) because, in the absence of
a communication from the EPO sent under Rule 56(1) and 56a(1), the
possibility for applicants to file any missing or correct parts ends two
months after the original filing date.

Further processing is ruled out for the time limits referred to in Rule 56 Rule 135(2)
(Rule 135(2)).

5.3 The filing date changes

If the applicant files missing parts of the description or missing drawings in Rule 56(2)
accordance with the procedure specified in A-II, 5.1 or 5.2, then the filing
date changes to the date on which the missing parts are received at the
EPO. The applicant is informed of the new filing date. This is subject to the
exception explained in A-II, 5.4.

A "drawing" means a single numbered figure. Only whole figures are

accepted according to Rule 56, even where only a part of the original figure
was missing.

5.4 Missing parts of the description or missing drawings based on

the priority application, no change in filing date
If the applicant files missing parts of the description or missing drawings Rule 56(3)
after the filing date in accordance with the procedure specified in A-II, 5.1 or
Part A – Chapter II-12 Guidelines for Examination in the EPO March 2024

5.2, the filing date does not change, provided that all of the following 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 filing date
(see A-II, 5.4.1), and does so within the applicable time limit*

(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 the
applicable time limit* unless such a 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 EPO language, the
applicant files a translation into one such language within the
applicable time limit* unless such a translation is already available 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 the
description 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 filing date remains
unchanged. The EPO will inform the applicant of this in accordance with
Rule 56(3).

Where criterion (i) is not satisfied, the late filing of missing parts is deemed
not to have occurred and all references to those parts in the application are
deemed deleted under Rule 56(4)(a) (see A-II, 5.1 and 5.2). In this case the
filing date does not change but nor are the late-filed missing parts
introduced into the application.

Rule 56(2) 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 filing date
changes to the date on which the EPO receives the late-filed missing parts
of the application. The EPO will inform the applicant of this in accordance
with Rule 56(2).

Rule 56(5) 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 filing date
changes to the date on which the EPO receives the late-filed missing parts
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-13

of the application. The EPO will inform the applicant of this in accordance
with Rule 56(5).

5.4.1 Late-filed missing parts when priority is claimed

In the case of a request under Rule 56(3), the EPO checks that the
requirements 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), the Rule 40(1)
priority claim in question must have been in existence no later than on the
date on which the requirements laid down in Rule 40(1) were first fulfilled
(see A-II, 4.1).

5.4.2 The missing parts of the description or missing drawings are

completely contained in the priority application
In cases where no translation of the priority application is required and both
the European patent application and the priority application are in the same
official EPO language, the requirement that the late-filed parts of the
application be "completely contained" in the priority application is met only if
the parts of the priority application identified by the applicant according to
Rule 56(3)(c) contain the same drawings with the same annotations or, for
late-filed parts of the description, contain the same text.

If a translation of the priority application is required, then the requirement

that the late-filed parts of the application be "completely contained" in the
priority application is met only if the parts of the translation identified by the
applicant according to Rule 56(3)(c) contain the same drawings with the
same annotations or, for late-filed parts of the description, contain the same
text.

In addition to the requirement that the missing drawings or the missing Rule 56a
parts of the description be identical to the corresponding drawings or parts
of the priority application, they must also be inserted in the description in a
manner that does not result in additional technical content. Drawings of low
visual quality are not considered missing within the meaning 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 under the

responsibility of the examining division (see C-III, 1).

5.4.3 Copy of the priority application

The copy of the priority application that is required for the request according
to Rule 56(3) does not need to be certified. However, if the applicants do
provide a certified copy for their request according to Rule 56(3), they will
not need to provide it again for 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.
Part A – Chapter II-14 Guidelines for Examination in the EPO March 2024

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 EPO language and

the European patent application is in a different official EPO language, the
applicant is not required to file a translation of the priority application
according to Rule 56(3)(b). However, since the language of the priority
application differs from that of the European patent application, the
requirement that the newly introduced drawings (if they contain
annotations) or parts of the description be "completely contained" in the
priority application (Rule 56(3)) is not met.

This can be overcome by the applicant's supplying within the applicable

time 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 patent application of those
parts of the priority application identified by the applicant as
completely 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 the

description or missing drawings are an exact translation of the parts
of the priority application identified by the applicant according to
Rule 56(3)(c).

The entire priority application does not need to be translated, since this
translation is required to satisfy the "completely contained" requirement of
Rule 56(3), not the translation requirement of Rule 56(3)(b).

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

description
Rule 56(2) and (4) 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 filing date in a communication from the EPO
(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, the redating
of the application is deemed not to have taken place and all references to
the missing parts of the description or missing drawings are deemed
deleted. The EPO will inform the applicants of this.

Rule 56(2), (4) and (5) 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 filing date changes to the date on which the late-filed parts of the
application are received at the EPO (Rule 56(2) or (5)). The applicants are
informed of the new filing date 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 is
deemed not to have taken place, any filing of missing parts of the
description or missing drawings is deemed not to have occurred and all
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-15

references to the missing parts of the description or missing drawings are

deemed deleted (Rule 56(4)). The EPO will inform the applicants of this.

Where a reference to a missing figure, e.g. "see Fig. 4", is deemed deleted,
then reference signs cited in it are also deemed deleted, although any
technical information in the reference that 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 publication of the application (see
A-VI, 1.3) in such a case will contain the application documents as
originally filed, without the references deleted.

If the late-filed missing parts of the application do not satisfy the physical
requirements of Rule 49(2) in conjunction with the decision of the President
of the EPO dated 25 November 2022 (OJ EPO 2022, A113), the EPO will
not invite the applicant to correct this deficiency according to 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 ("page
fee"), see A-III, 13.2.

6. 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 filing Rule 56a(1)
date. If, during this check, the EPO establishes that the description, claims Rule 56a(5)
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 two
months 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 or
Rule 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 have
occurred and the erroneously filed documents or parts will remain in the
application as filed (Rule 56a(5)). It should be noted that the applicant 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 or Rule 56a(3)
drawings on their own initiative (without being invited to do so by the EPO)
within two months of the original filing date. 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 filing date, applicants notice that they
filed erroneous application documents or parts, they should, on their own
initiative, file the correct ones as soon as possible under Rule 56a(3)
Part A – Chapter II-16 Guidelines for Examination in the EPO March 2024

because, in the absence of an EPO communication sent under Rules 56

and 56a(1), the possibility for applicants to file any missing or correct parts
ends two months after the original filing date.

Whether documents were erroneously filed depends only on the applicants'

statement as to their intention. No further evidence is required by the EPO.

Rule 135(2) Further processing is ruled out for the time limits under Rule 56a(1) and (3)
to (7) (Rule 135(2)).

6.3 The filing date changes

If, after the filing date, the applicant corrects the application documents (or
parts) in accordance with the procedures explained in A-II, 6.1 or A-II, 6.2,
then the erroneously filed documents will be deemed not to have been filed
and the correct documents will be added to the application. The filing date
changes to the date on which the EPO receives the correct parts. The
applicant is informed of the new filing date under 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 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, no

change in the filing date
Rule 56a(4) If, after the filing date, the applicant corrects the application documents (or
parts) in accordance with the procedures explained in A-II, 6.1 or A-II, 6.2,
then the filing date does not change, provided that all of the following
criteria are satisfied:

(i) the correct application documents (or parts) are filed within the
applicable time limit*

(ii) the application claims priority on the date on which the requirements
of 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 be

based on the claimed priority (see A-II, 6.4.1) to avoid a change in
the filing date, and does so within the applicable time limit*

(iv) the correct application documents are completely contained in the

priority application (see A-II, 6.4.1)

(v) the applicant files a copy of the priority application within the
applicable 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 EPO language, the
applicant files a translation into one such language within the
applicable time limit* unless such a translation is already available to
the EPO under Rule 53(3) (see A-II, 6.4.3)
March 2024 Guidelines for Examination in the EPO Part A – Chapter II-17

(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 or

parts under Rule 56a(4) are fulfilled, the date of filing remains unchanged.
The correct application documents or parts are included in the application
and the erroneously filed ones remain in the application as filed. The EPO
informs the applicants of this in a communication under Rule 56a(4). The
erroneously filed documents may only be removed by amending the
application during the grant proceedings and subject to Art. 123(2).

Where criterion (i) is not satisfied, any filing of the correct application Rule 56a(5)(a)
documents or parts is deemed not to have occurred. In this case, the filing
date does not change and the erroneously filed application documents or
parts remain in the application. The EPO will inform the applicant of this in
accordance with Rule 56a(5).

If the request according to Rule 56a(4) does not comply with one or more of Rule 56a(3)
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. They will be
included in the application and the erroneously filed documents or parts will
be deemed not to have been filed. The EPO will inform the applicant of this
in accordance with Rule 56a(3).

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

6.4.1 Later-filed correct application documents or parts when

priority is claimed
In the case of a request under Rule 56a(4), the EPO will check that the Rule 56a(4)
requirements 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), the
priority 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 be

completely 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).
Part A – Chapter II-18 Guidelines for Examination in the EPO March 2024

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).

6.5 Withdrawal of correct application documents or parts

Rule 56a(7) Where applicants are informed about the new filing date, they may, within
one month of the communication under Rule 56a(3) or (6) as 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 or parts will
be restored to the application as filed. The EPO will inform the applicants of
this in accordance with Rule 56a(7).

6.6 Same-day corrections

Rule 56a(2) If applicants become aware that they filed incorrect application documents
or parts and wish to file correct ones 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 included in the application and
the erroneously filed ones are deemed not to have been filed. The EPO will
inform the applicants of this in accordance with Rule 56a(2).

6.7 Correct application documents or parts filed after the search has
started
Rule 56a(8) If applicants file correct application documents or parts after the EPO has
Rule 112(1) already begun to draw up the search report, the EPO will invite them to pay
Rule 135(2) a further search fee under Rule 56a(8) within a time limit of one month. If
the fee is paid in time, the search will be completed on the basis of the filing
date and the application documents established under the procedures
described in A-II, 6.3, 6.4 or 6.5. If the fee is not paid in time, the application
will be deemed 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 ("page
fee"), see A-III, 13.2.

6.9 Claims fee

For the calculation of the claims fee, see A-III, 9.
March 2024 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 examined by Art. 90(3)
the Receiving Section and relate to: Rule 57

(i) representation

(ii) signature

(iii) physical requirements of the application

(iv) abstract

(v) request for grant

(vi) claim to priority

(vii) designation of inventor

(viii) translations, where required

(ix) the presence of at least one claim

(x) filing and search fees.

1.2 Further checks

In addition, the Receiving Section has to:

(i) carry out a preliminary check of the description and claims to ensure Rule 41(2)(b)
that the title of the invention, which will appear in the published
application, generally meets the requirements of 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 Art. 55(1)(b)
filed where the invention has been displayed under Art. 55(1)(b) Rule 25
(see also A-IV, 3)

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

(v) check whether in the case of an application with nucleotide and/or Rule 30
amino acid sequences a prescribed sequence listing has also been
filed (see also A-IV, 5 as well as the decision 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).
Part A – Chapter III-2 Guidelines for Examination in the EPO March 2024

The requirements listed above and the procedure to be followed when they
are not met are considered in the following sections.

2. Representation

2.1 Requirements
The formalities officer must ensure that the requirements with regard to
representation as set out in A-VIII, 1 are met. The main points are:

Art. 133(2) (i) applicants who have neither a residence nor principal place of
business in a contracting state must be represented by an authorised
professional representative or by an authorised legal practitioner
fulfilling the requirements of Art. 134(8)

Art. 133(3) (ii) where an applicant having residence or principal place of business in
a contracting state is represented by an employee, the employee is
authorised

Rule 152 (iii) 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), must be duly signed (see A-VIII, 3.2 and
A-VIII, 3.4) and filed in due time.

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

3. Physical requirements

3.1 General remarks

Art. 90(3) Every application that is subject to formal examination is examined for
compliance 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
The Receiving Section must ensure that the documents making up the
application, i.e. request, description, claims, drawings and abstract, meet
the requirements of Rule 49(2) 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 satisfactory reproduction
and reasonably uniform publication of the application under Rule 68(1).
This equally applies to any supplementary document filed as an appendix
to the description. When evaluating the quality of the application documents
and their suitability for electronic 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. The
Receiving Section should not, however, draw the applicant's attention to
any deficiencies in the content of the application, namely those 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
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-3

the EPO dated 25 November 2022, OJ EPO 2022, A114, point 8, and
A-III, 16.1).

In the case of requirements that may necessitate some technical

knowledge, such as those of Art. 1(2)(f) and (2)(h) of the decision of the
President of the EPO dated 25 November 2022, the Receiving Section
should, if in doubt, consult and take the advice of the search division. It
should also consider taking action when the search division identifies a
deficiency previously overlooked. It should be noted that flow sheets and
diagrams are to be considered as drawings (Art. 1(3) of the decision of the
President of the EPO dated 25 November 2022).

If the formal requirements of 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 it is not remedied in time, the application is
refused (Art. 90(5)).

Once the examining division assumes responsibility for the application, it Rule 10
also becomes responsible for formal matters. It should pay particular Art. 94(1)
attention to the more technical requirements, in particular those laid down
in Art. 1(2)(i) and (j), Art. 2(8), fourth sentence, and Art. 2(9) and (10) of the
decision of the President of the EPO dated 25 November 2022 (see also
the notice from the EPO dated 25 November 2022, point 8).

Replacement documents, including the amendment of granted patents Rule 1

(Rule 86), and translations in an official language of documents filed under Rule 49(2)
the provisions of Art. 14(2) or (4) are subject to the same requirements as Rule 50(1) and
the documents making up the application. They must therefore be typed or (2)
printed. Submissions containing handwritten amendments to application or Rule 86
patent specification documents are formally deficient and need 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).

In examination proceedings the invitation to correct formal deficiencies is

sent by the formalities officer on behalf of the examining division (see the
decision of the President of the EPO dated 12 December 2013,
OJ EPO 2014, A6).

With regard to sequence listings, see 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 a

previously filed application
If the application is filed by reference to a previously filed application under
Rule 40(1)(c) (see A-II, 4.1.3.1), and if no translation is required, 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 EPO language, only the translation under Rule 40(3) must
satisfy the physical requirements (Rule 49(2)), provided that the authenticity
of the contents of the original is not impugned.
Part A – Chapter III-4 Guidelines for Examination in the EPO March 2024

3.2.2 Physical requirements of late-filed application documents or

correct application documents or parts
Where claims are filed after the filing date (see A-III, 15) or where missing
parts of the description, missing drawings or correct application documents
or parts are inserted after the filing date (see A-II, 5 and A-II, 6), all of these
late-filed application documents must also satisfy the physical
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 application documents. Any deficiencies will be
communicated only when the complete application documents are on file.

If the late filing of missing parts of the description, missing drawings or

correct application documents or parts results in a change of the filing date,
the applicant can withdraw the late-filed parts of the description or drawings
up to one month after being notified of the change in filing date
(Rule 56(6)). Similarly, they 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 the description, 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 filing date,

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 respect
of these deficiencies, if the applicant has not withdrawn them in time.

3.3 Other documents

Rule 50(2) All documents other than those making up the application must be
typewritten or printed with a left margin of about 2.5 cm on each page
(Art. 3 of the decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113).

4. Request for grant

4.1 General remarks

Rule 41(1) The request for grant must be made on the appropriate EPO form
(EPO Form 1001), even though the request (the indication that a patent is
sought, referred to in A-II, 4.1(i)) need initially be in no particular form. The
latest version of EPO Form 1001 can be accessed in EPO Online Filing
and Online Filing 2.0 or downloaded from the EPO website (epo.org)
(see A-II, 1.1.1).

For filing with EPO Online Filing, applicants should always use the latest
version of the software (see A-II, 1.1.1(i)) and, for paper filings and filings
made with the EPO web-form filing service and the EPO Contingency
Upload Service, the latest version of the form.

4.2 Examination of the request for grant form

The Receiving Section examines the request form to ensure that it contains
the information listed in Rule 41(2), including the integral petition for grant
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-5

(Rule 41(2)(a)). The applicant must be allowed to correct deficiencies in the

request to the extent indicated in A-III, 16.

4.2.1 Information on the applicant

As specified in Rule 41(2)(c), the request must contain the name, address
and nationality of the applicant and the state in which that party's residence
or principal place of business is located. Where the application 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 person named as applicant's entitlement to apply 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 a
professional representative can use an address for correspondence other
than their residence. It must be the applicant's own address and be in an
EPC contracting state. For the address to be used in proceedings before
the EPO applicants must explicitly inform the EPO that it is to be used for
correspondence, preferably by entering it in the box marked "Address for
correspondence" on EPO Form 1001 (see the notice from the EPO dated
4 September 2014, OJ EPO 2014, A99). Correspondence cannot be sent
to a different (natural or legal) person, since that requires a valid form of
representation under Art. 133 and 134.

4.2.2 Signature
The request must be signed by the applicant or the appointed Rule 41(2)(h)
representative. If there is more than one applicant, each applicant or their
appointed representative must sign the request. For further details as to the
signature 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 with
the title of the invention, divisional applications, Art. 61 applications and
claim to priority, are considered in subsequent sections of this chapter and
in A-IV.

5. Designation of inventor

5.1 General remarks

Every application must designate the inventor, who must be a natural Art. 81
person (J 8/20). The designation is incorporated in EPO Online Filing and Rule 19
Online Filing 2.0 (see A-II, 1.1.1). When filing on paper or in the EPO web- Rule 41(2)(j)
form filing service or the EPO Contingency Upload Service, the designation
is filed on a separate document where the applicant is not the inventor or
the sole inventor. Where that is not the case, the designation must be
effected on the request for grant form (EPO Form 1001) by selecting the
appropriate box in section 22. Where the designation is effected on a
separate document, a trilingual form – EPO Form 1002 – available on the
EPO website should preferably be used.
Part A – Chapter III-6 Guidelines for Examination in the EPO March 2024

5.2 Waiver of right to be mentioned as inventor

Rule 20(1) Inventors designated by the applicant may send the EPO a written waiver
Rule 143(1)(g) of their right to be mentioned as inventor in the published European patent
Rule 144(c) application and the European patent specification. If it is received in time,
Art. 129(a) their name is not mentioned in the published European patent application,
the European patent specification, the European Patent Register
(Rule 143(1)(g)) and, consequently, the European Patent Bulletin.
Moreover, in accordance with Rule 144(c), the designation of the inventor
as well as the waiver is then excluded from file inspection under Art. 128(4).
If the waiver is received after the publication of the European patent
application, the mention of the inventor will be removed in the European
Patent Register.

5.3 Designation filed in a separate document

Rule 19(1) Where filed in a separate document, the designation must contain the
inventor's family name, given names and country and place of residence.
The place of residence is the city or municipality, i.e. not the province 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 (e.g. a company). The
designation must contain the statement, referred to in 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. For
inventions by employees, it is sufficient to mention that the inventor(s)
is/are employee(s) of the applicant(s) and for cases of succession that the
applicant(s) is/are heir(s) of the inventor(s).

The designation of inventor must be signed by the applicant or the

appointed representative. With regard to the signature, the provisions set
out in A-VIII, 3.2 to A-VIII, 3.4, apply.

Rule 19(2) The EPO does not verify the accuracy of the information given in the
designation of the inventor but checks whether the designated inventor is a
natural person (J 8/20).

If the designation of inventor is filed subsequently, the requirements set out

in A-VIII, 3.1 apply.

5.4 Deficiencies
Art. 90(3) to (5) Where a designation is not filed or cannot be considered validly filed due to
Art. 93(1) a deficiency (e.g. inventor's name / country / place of residence / applicant's
Rule 60(1) signature is missing), the applicant is informed that the European patent
Art. 121 application will be refused if the deficiency is not remedied within the period
prescribed under Rule 60(1), i.e. within 16 months of the filing date or, if
priority is claimed, of the priority date. This time limit is deemed met if the
information is communicated before completion of the technical
preparations for publication (see A-VI, 1.2). For divisional applications, see
A-IV, 1.5. Where the applicant has requested early publication and,
accordingly, technical preparations for publication are completed before
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-7

expiry of the 16-month time limit, the applicant can still file the designation
within that time limit (see J 1/10). If the deficiency is not remedied in time,
the application is refused and the applicant is notified accordingly. Further
processing is possible according to Art. 121 and Rule 135 (see E-VIII, 2).

5.5 Incorrect designation

An incorrect designation may be rectified, provided that a request is Rule 21(1)
received together with the consent of the wrongly designated person and
that of the patent's applicant or proprietor where the request is not filed by
that party. If a further inventor is to be designated, the consent 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 the proceedings before the EPO
are terminated.

Where an incorrect designation has been rectified and where the incorrect Rule 21(2)
designation was recorded in the European Patent Register or published in
the European Patent Bulletin, its rectification or cancellation will also be
recorded or published there. Rectification of the designation of an inventor
falls under 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).

6. Claim to priority (see also F-VI)

6.1 General remarks

A European patent applicant is entitled to – and may claim – the priority of
an earlier first application where:

(i) the previous application was filed in or for a state or WTO member Art. 87(1), (2)
recognised as giving rise to a priority right in accordance with the and (5)
provisions of the EPC (see also A-III, 6.2)

(ii) the European patent applicant was the applicant who made the
previous application or is their successor in title

(iii) the European patent application is made during a period of twelve

months from the previous application's filing date (see, however,
A-III, 6.6) and

(iv) the European patent application concerns the same invention as the
invention disclosed in the previous application (see also A-III, 6.4 and
F-VI, 1), which must be the "first application" (see F-VI, 1.4 and
1.4.1).

As concerns (i), the previous application may be an application for a patent,

the registration of a utility model or 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 previous application were sufficient to Art. 87(3)
establish a filing date, that date can be used to determine a priority date,
Part A – Chapter III-8 Guidelines for Examination in the EPO March 2024

irrespective of the outcome (e.g. subsequent withdrawal or refusal) of the

application.

As concerns (ii), it is important to note that the transfer of the priority right is
distinct from a possible transfer of the priority application and must be
assessed under the EPC, regardless of any national laws. The EPC does
not set out any formal requirements for the transfer of the priority right (see
G 1/22 and G 2/22). Where the previous application was filed by joint
applicants, all of them must be among the later European patent
application's applicants or have transferred their rights in the priority
application to the later European patent application's applicant (see
T 844/18). Yet, absent any substantiated indication to the contrary, there is
a strong rebuttable presumption under the EPC that an applicant or joint
applicants claiming priority in accordance with Art. 88(1) and Rule 52 are
also entitled to the claimed priority. The burden of proof is shifted, and the
examining division, opponent or third party challenging an applicant's
entitlement to priority has to prove that this entitlement is missing.
Especially where an international application under the PCT is filed by joint
applicants, including the priority applicant, but without naming the priority
applicant as applicant for the European designation, the mere fact of the
joint filing implies an agreement between the applicants allowing all of them
to rely on the priority right unless substantial facts indicate otherwise (see
G 1/22 and G 2/22).

However, in the case of joint applicants filing the later European patent
application, it is sufficient if one of the applicants is the previous
application's applicant or their successor in title. There is no need for a
special transfer of the priority right to the other applicant(s), since the later
European patent application has been filed jointly. The same applies where
the previous application itself was filed by joint applicants, provided that all
of them, or their successor(s) in title, are among the later European patent
application's joint applicants.

As concerns (iii), the priority period starts on the day following the first
application's filing date (Art. 4C(2) Paris Convention and Rule 131(2)).
Accordingly, where a priority claim relates to an application filed on the
same day as the European patent 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) are
those filed at industrial property offices:

Art. 87(1) (a) of or acting for states party to the Paris Convention for the Protection
of Industrial Property

Art. 87(1) (b) of or acting for any member of the World Trade Organisation (WTO)
or
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-9

(c) not subject to either the Paris Convention or the Agreement Art. 87(5)
establishing the WTO, but where:

(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 EPO President issues a communication indicating this.

To date, no such communication referred to in (c)(ii) has been issued and

so this does not as yet apply. Furthermore, the members of the WTO do
not necessarily have to be states as such but may also be
intergovernmental 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" any
state party to the Paris Convention or member of the WTO, priority may be
claimed of an earlier first-filed national application, a previous European
patent 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 EPO
President dated 26 January 1996, OJ EPO 1996, 81). A list of the countries
party to the Paris Convention is available on WIPO's website and regularly
published in the EPO Official Journal. Likewise, a list of the members of the
WTO is regularly updated on the WTO website.

6.3 Multiple priorities

The applicant may claim more than one priority based on previous Art. 88(2)
applications in the same or different states and/or WTO members. Where
multiple priorities are claimed, time limits calculated from the priority date
run from the earliest date of priority and, as a result, the European patent
application must be made within twelve months of 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 is not required to examine the content of the priority
document. However, where it is obvious, e.g. from the title of the document,
that the document concerns subject-matter quite different from that of the
application, the applicant should be informed that that the document filed
might not be relevant.

6.5 Declaration of priority

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

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

(iii) its file number.

Part A – Chapter III-10 Guidelines for Examination in the EPO March 2024

The declaration of priority should 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 included on the request for grant form
(Rule 41(2)(g)). However, if a priority claim is added or corrected after the
request for grant form has been filed (see A-III, 6.5.1 and 6.5.2), the
applicant 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 the
same as 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.

6.5.1 Filing a new priority claim

Rule 52(2) The declaration of priority should preferably be made on filing but can be
made 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, this
16-month period is calculated from that new earliest priority date in
accordance with Art. 88(2). A priority claim inserted after the filing date
cannot 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).

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 ruled out by
Rule 135(2).

6.5.2 Correcting an existing priority claim

Rule 52(3) The applicant may correct the declaration of priority within 16 months of the
earliest priority date. Where the correction causes a change in the earliest
claimed priority date, this time limit is the earlier to expire of:

(i) 16 months from the earliest priority date as originally claimed or

(ii) 16 months from the earliest priority date as corrected.

However, this time limit cannot expire earlier than four months after the
date of filing. Thus, if the originally claimed priority date is incorrect and
precedes 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 file
number wrong) and claimed a full twelve-month priority period.

If the applicant files a request for correction later it may, exceptionally, be

allowed if it is apparent from the published application that a mistake was
made (see A-V, 3 and other sources mentioned there).
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-11

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: Art. 90(4) and
(5)
(i) failure to indicate a date of the previous application or to indicate the
correct 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.

Deficiencies (i) and (ii) can only be corrected in accordance with the
procedures and within the time limit indicated in A-III, 6.5.2. Failure to
correct either of these deficiencies in time results in 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 ruled out by Rule 135(2).

However, where applicants have failed to indicate the file number of the Art. 90(4) and (5)
previous application (deficiency (iii)), as required by Rule 52(1), before Rule 59
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 in
question according to Art. 90(5).

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

6.6 Priority period

Where a priority claim's date precedes the European patent application's Art. 122
filing date by more than twelve months, the applicant may be informed by Rule 133
the Receiving Section that their priority claim is considered invalid unless Rule 134
they: Rule 136

(i) indicate a corrected date lying within the twelve-month period

preceding the filing date and do so within the time limit according to
Rule 52(3) (see A-III, 6.5.2) or

(ii) request re-establishment of rights in respect of the priority period and

do 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 patent
application within the same two-month period.

Where priority is claimed from an application having the same filing date as
the European patent application (see A-III, 6.1), the EPO will inform the
applicant that priority cannot be claimed from this application unless the
priority date can be corrected (see A-III, 6.5.2).
Part A – Chapter III-12 Guidelines for Examination in the EPO March 2024

Rules 133 and 134 apply to the priority period under Art. 87(1). If the date
indicated for the previous application is subsequent to or the same as the
filing date, the procedure set out in A-III, 6.5.2 also applies (with regard to
the possibility of correcting clerical or similar errors, see A-V, 3).

According to Art. 122 and Rule 136(1) re-establishment of rights in respect

of the priority period (twelve months according to Art. 87(1)) is possible.
The request for re-establishment must be filed within two months of expiry
of the priority period (Rule 136(1)) and the omitted act, i.e. the
establishment of a filing date for the European patent application, must also
be completed in this period (Rule 136(2)). For more details on requesting
re-establishment of rights, see E-VIII, 3.

6.7 Copy of the previous application (priority document)

Rule 53(1) A copy of the previous application from which priority is claimed (priority
Art. 88(2) document) must be filed before the end of the 16th month after the priority
Art. 90(4) date. Priority documents may be filed in paper form or electronically using
EPO Online Filing or Online Filing 2.0, provided the latter are in an
accepted document format, have been digitally signed by the issuing
authority and the signature is accepted by the EPO. Such electronic priority
documents are currently being issued by the patent offices of Austria,
Brazil, Czech Republic, Greece, Italy, France, Poland, Portugal, Singapore
and the USA, with further offices expected to follow. Priority documents
may not be filed using the EPO web-form filing service or the EPO
Contingency Upload Service (see the decision of the President of the EPO
dated 3 May 2023, OJ EPO 2023, A48) or by fax (see the decision of the
President of the EPO dated 20 February 2019, OJ EPO 2019, A18). Where
multiple priorities are claimed, the above time limit runs from the earliest
date of priority.

The copy and the filing date of the previous application must be certified as
correct by the authority with which the previous application was filed.
Certification of the date may take the form of a separate certificate issued
by that authority stating the filing date of the previous application
(Rule 53(1), second sentence) or may be an integral part of the priority
document itself. The certification of the copy's authenticity may also be a
separate document or an integral part of the priority document.

A copy of the previous application (priority document) can also be filed 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 with which the previous application was filed and comes
with the guarantee that its content cannot undetectably be altered
subsequently

(b) the content of the physical medium is certified by that authority as an

exact copy of (parts of) the previous application and

(c) the filing date of the previous application is also certified by that
authority.
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-13

The certificate(s) may be filed separately on paper. The physical medium

must be readable and free of computer viruses and other forms of
malicious logic.

At the request of the applicant, the EPO will include free of charge in the file Rule 53(2)
of a European patent application a copy of the previous application from
which priority is claimed retrieved via the WIPO Digital Access Service
(DAS). DAS permits the automatic electronic exchange of priority
documents between participating patent offices. Applicants may request the
office of first filing (OFF) to make certified copies of previously filed patent
applications available to DAS and then request offices of second filing
(OSF) to retrieve the copies via DAS by indicating the DAS access code(s)
corresponding to the previous application(s) (see the decision 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 copy
of the previous application in the file of the European patent application, if
the previous application is:

(i) a European patent application

(ii) an international application filed with the EPO as receiving Office

under the PCT.

No request is necessary for this. If the language of the previous application

was not one of the official EPO languages, it may still be necessary to file
the translation or declaration under Rule 53(3) (see A-III, 6.8).

Where the applicant has already supplied a copy of the priority document in
connection with 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 base
correct application documents or parts on the claimed priority under
Rule 56a (see A-II, 6.4(v)), there is no 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.

If applicants fail to provide a certified copy of the priority document within Art. 90(4) and
the above-mentioned period (Rule 53(1)), the EPO will invite them to (5)
provide it within a two-month period under Rule 59. This period can be Rule 59
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). If the applicant fails to
provide it within this period, the priority right in question is lost (Art. 90(5)).

A copy of the previous application that cannot be included in the file will not
be deemed duly filed under Rule 53(2). The EPO will inform applicants in
good time and give them an opportunity to file the certified copy in
accordance 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).
Part A – Chapter III-14 Guidelines for Examination in the EPO March 2024

6.8 Translation of the previous application

Art. 88(1) Where the previous application claimed as priority is not in an official EPO
Rule 53(3) language and the validity of the priority claimed is relevant for assessing
the patentability of the invention concerned, the EPO will invite the
applicant for or proprietor of the European patent to file a translation into an
official EPO language within a period specified. 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 the
search report is transmitted – see A-VI, 2.1).

In this case, the time limit for providing the translation is the same as
for filing the request for examination, i.e. six months from the date of
mention of the publication of the European search report according 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 as
for filing the confirmation of the request for examination according to
Rule 70(2):

(a) for applications not filed via the PCT, this is six months from
the 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 communication
according to Rule 70(2) (see E-IX, 2.5.3).

In practice, the invitation according to Rule 53(3) will be sent to the

applicant in a separate communication 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 expiry date of
the period for providing the translation, since the relevant event used in its
calculation (the mention of the publication of the European search report or
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 two months
before expiry of the resulting period; in that case the time limit for filing the
translation will be considered extended until two months after the
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-15

notification of the invitation, 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 for providing the translation in either examination or opposition Rule 132(2)
proceedings is four months.

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 a
communication according to Art. 94(3). When sent as an annex to a
communication according to Art. 94(3), the time limit set for reply to that
communication is the same as for providing the translation (i.e. four
months), even where the issues raised in the communication are minor
(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 for assessing 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 oral
proceedings will be sent until either the translation is provided or (in
examination proceedings) the period for further processing in respect of the
time limit according to Rule 53(3) has expired, whichever is the earlier.

In practice, the search, examining or opposition division dealing with the

patent application or patent will inform the formalities officer that a
translation 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 the
translation 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 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. There is no further invitation to the applicant or proprietor to
file the translation. However, in examination proceedings, further
processing is available in cases of failure to file the translation in time
(see E-VIII, 2). Where appropriate, the applicant can also request a
decision 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 to
Rule 135(1) and Art. 2(1), item 12, RFees for each of these priorities. This
Part A – Chapter III-16 Guidelines for Examination in the EPO March 2024

applies 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
available to the patent proprietor in opposition proceedings. A decision
according 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 connection with a request to base late-filed parts of the
description or drawings on the claimed priority under Rule 56
(see A-II, 5.4(vi)) or to base correct application documents or parts on the
claimed priority under Rule 56a (see A-II, 6.4(vi)), the applicant does not
need 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 on their own initiative 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 a
complete translation of the previous application may be submitted within
those same time limits (see also F-VI, 3.4 and D-VII, 2). The declaration
may also be made by selecting the appropriate box on the request for grant
form (EPO Form 1001). This declaration is only valid if the text of the
European patent application as filed is an exact translation of the previous
application of which priority is claimed, i.e. with nothing added or omitted. If
the European patent application did not contain claims on the filing date
(see A-II, 4.1), the applicant can file these later (see A-III, 15). In such
cases, for the declaration to be valid, the description of the European
patent 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 patent application contains
claims on its filing date and the previous application did not or contained
fewer claims on its filing date, the declaration is not valid. Furthermore, if
the European patent 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, to comply with the requirement for filing a translation, a complete
translation must be filed within the set time limit. A declaration's validity is
not affected by the simple rearrangement of its various parts (i.e. the claims
vs. the description) (e.g. if the claims are presented at the end of the
application, whereas in the previous application they are at the beginning)
or by the use of 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
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-17

of components, section headings and words in the drawings) are not

identical to those in the previous application.

Where a European patent application claims multiple priorities, the

declaration will only in exceptional cases be a translation of the full text of
one of the previous applications. In such cases, it may be filed in respect of
the identical previous application, while a complete translation of the other
previous 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:

(i) the application was not filed within the twelve-month period referred Art. 87(1)
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 that
the European patent application's filing date no longer exceeds
the twelve-month priority period under Art. 87(1) or the priority
date is no longer the same as the filing date (see A-III, 6.6),
nor

(b) successfully requested re-establishment of rights in respect of

the priority claim (see A-III, 6.6)

(ii) the previous application did not seek an industrial property right Art. 87(1)
giving rise to a priority right (see A-III, 6.1) or

(iii) the previous application does not give rise to a priority right in respect Art. 87(1) and
of the state, WTO member or industrial property authority in or for (4)
which it was filed (see A-III, 6.1(i) and 6.2).

6.10 Loss of right to priority

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

(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)

(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 invitation
according 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. Rule 112(1)
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 right
is surrendered. The termination of a priority right has no effect on a time
limit that has already expired (see also F-VI, 3.4 and E-VIII, 1.5). If the
Part A – Chapter III-18 Guidelines for Examination in the EPO March 2024

search has not yet been carried out, the Receiving Section notifies the
search division of a loss of or non-entitlement to a priority date.

6.12 Copy of the search results for the priority or priorities

Rule 141(1) An applicant claiming priority within the meaning of Art. 87 must file a copy
of the results of any search carried out by the authority with which the
previous application was filed together with the European patent application
either without delay after receiving such results or, in the case of a
Euro-PCT application, on entry into the European phase. This requirement
also applies to priority claims that are subsequently withdrawn or lapse and
to priority claims introduced or corrected 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 and applies to all European and
Euro-PCT applications filed on or after 1 January 2011 (OJ EPO 2009,
585). In the case of divisional applications, the relevant date is that on
which the divisional application was received by the EPO (see A-IV, 1.2.1),
not the filing 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.

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 EPO language, no
translation 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 the
applicant will not suffice. Copies of the cited documents do not have to be
provided (see the notice from the EPO dated 28 July 2010,
OJ EPO 2010, 410).

Rule 141(2) The copy referred to in Rule 141(1) is deemed duly filed if it is available to
the EPO and is to be included in the European patent application's file
under the conditions determined by the EPO 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 report
of 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 the
national offices of Albania, Belgium, Croatia, Cyprus, France,
Greece, Italy, Latvia, Lithuania, Luxembourg, Malta, Monaco,
Netherlands, San Marino, United Kingdom.

The EPO also includes a copy of the search results referred to in

Rule 141(1) in the European patent application's file, thus exempting the
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-19

applicant from filing said copy where, based on an agreement with the
national patent offices, the priority of a first filing made in one of the
following 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)

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 the divisional
application (see the notice from the EPO dated 28 July 2010,
OJ EPO 2010, 410).
Part A – Chapter III-20 Guidelines for Examination in the EPO March 2024

7. Title of the invention

7.1 Requirements
Rule 41(2)(b) The request for grant must contain the title of the invention. A requirement
of Rule 41(2)(b) is that the title must clearly and concisely state the
technical 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 that 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 must
clearly state the technical designation of the invention

(iv) trade names and trade marks 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 or
trade marks.

7.2 Responsibility
Rule 41(2)(b) The examining division bears ultimate responsibility for ensuring that the
title accords with the provisions of the Implementing Regulations. The
search division will nevertheless take action and amend the title to avoid, if
possible, the publication of applications having titles that obviously do not
comply with the applicable EPC provisions (see also F-II, 3). In such cases,
the EPO will change the title on its own initiative if this appears necessary
(see OJ EPO 1991, 224).

The applicant learns if the title proposed has been approved by the search
division upon transmission of the European search report. The wording of
the title (in the three official EPO languages), as approved by the search
division, is notified by the communication announcing the forthcoming
publication.

The title of the invention is published and entered in the European Patent
Register (Rule 143(1)(c)) in capital letters.

8. Prohibited matter

8.1 Morality or "ordre public"

Art. 53(a) The application must not contain statements or other matter contrary to
Rule 48(1)(a) and "ordre public" or morality. Such matter may be omitted when the application
(2) is published, the published application indicating the place and number of
words 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
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-21

examination, if carried out, this will entail a cursory examination to ensure

that 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 take
action to prevent the publication of such matter where the search division
draws its attention to such matter which it had overlooked. The applicant is
notified of the material omitted. In practice, it will usually be the search
division that brings the existence of such material in the application to the
attention of the Receiving Section.

8.2 Disparaging statements

According to Rule 48(1)(b), the application must not contain statements Rule 48(1)(b) and
disparaging the products or processes of any particular person other than (3)
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 be
considered disparaging per se. Statements clearly falling into this category
that are evident from the cursory examination referred to in A-III, 8.1 or to
which attention is drawn by the search division may be omitted by the
Receiving Section when publishing the application. In cases of doubt the
matter should be left for 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 the passage omitted. The applicant is
again notified of the material omitted. (See also treatment of prohibited
matter in proceedings before the examining division, F-II, 7.)

9. Claims fee
A European patent application containing more than 15 claims at the time Rule 45(1) to
of filing the claims (see the paragraph below) incurs a claims fee in respect (3)
of each claim in excess of that number. For applications filed and Rule 112(1)
international applications entering the regional phase on or after Rule 37(2)
1 April 2009, a higher amount is payable for each claim in excess of 50. Art. 2(1), item 15,
The claims' order is their sequence at their time of filing. If an application RFees
contains more than one set of claims, Rule 45 only applies to the set of
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 of
claims remaining in the set that originally incurred the fees falls below that
of another set, then the number of claims in the latter set has to be reduced
to the same number as that remaining in the set originally incurring the fees
(see J 8/84). The claims fees must be paid within one month of filing the
claims.

Where correct claims are filed under Rule 56a(3) or (4) (see A-II, 6), the
claims 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 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)

(b) after the filing date, in a timely response to a communication from the
EPO indicating their absence under Rule 58 (see A-III, 15)
Part A – Chapter III-22 Guidelines for Examination in the EPO March 2024

(c) after the filing date, by applicants on their own initiative 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 whichever
of 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 grace period of one month from notification of
a communication under Rule 45(2) pointing out the failure to observe the
time limit. The applicant cannot waive this communication. If a claims fee is
not paid within the grace period, the corresponding claim is deemed
abandoned and the applicant is notified accordingly. 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 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 claims
of the previously filed application are effectively present on the 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 the applicant
has, within two months of the filing date (Rule 40(3)), filed the copy of the
previously filed application, since it is only at this point that the EPO will
know how many claims there are and consequently how many claims fees,
if any, are due.

Features of a claim deemed abandoned under Rule 45(3) and not

otherwise to be found in the description or drawings cannot subsequently
be reintroduced into the application and, in particular, into the claims
(see J 15/88). However, by filing a divisional application, applicants can
pursue any (features of a) claim deemed abandoned due to non-payment
of the claims fee in the procedure for the grant of a patent for the parent
application.

Regarding Euro-PCT applications entering the European phase,

see E-IX, 2.1.3 and E-IX, 2.3.8.
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-23

10. Abstract

10.1 General remark

Every application for a patent must contain an abstract. The effect of Art. 78(1)(e)
non-compliance with this requirement is dealt with in A-III, 16. Art. 90(3)
Rule 57(d)

10.2 Content of the abstract

While responsibility for the definitive content of the abstract lies with the Rule 66
EPO (see F-II, 2), in practice, this is delegated to the search division since
the definitive content of the abstract must be determined and transmitted to
the applicant along with the search report. Where the search division
confirms that the abstract filed does not relate to the claimed invention, the
applicant is informed that the document filed does not constitute an abstract
and 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 Rule 47(4)
(or figures, in exceptional cases) of the drawings that they suggest should
accompany the abstract. Where this requirement is not met, the search
division decides which figure(s) to publish. For the further procedure,
see F-II, 2.4.

11. Designation of contracting states

11.1 General remarks

All states party to the EPC at the application's filing date are deemed Art. 79(1)
designated in the request for grant of a European patent (for a list of the
EPC contracting states, see General Part, section 6). Any other state
entered on the request for grant must be disregarded (for the designation of
contracting states on the request for grant form, see A-III, 11.2.2, 11.3.5
and 11.3.6). When the application is in the name of joint applicants, each
may designate different contracting states (see A-II, 2); objection is to be
raised during the examination of 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

11.2.1 Designation fee; time limits

A designation fee is payable for designating contracting states. Art. 79(2)
Rule 39
For applications filed on or after 1 April 2009 this is a flat fee covering all Art. 149(1)
EPC contracting states. Therefore, for these applications, the system of Art. 2(1), item 3,
charging designation fees for individual designated states (see A-III, 11.3) RFees
no longer applies. For European divisional applications, see also
A-IV, 1.3.4 and 1.4.1.

For European patent applications, the designation fee must be paid within Rule 39
six months of the date on which the European Patent Bulletin mentions the
publication of the European search report.
Part A – Chapter III-24 Guidelines for Examination in the EPO March 2024

Rule 17(3) For divisional applications and new applications under Art. 61(1)(b), the
Rule 36(4) 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 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 entering the European phase on or after

1 April 2009, see A-III, 11.2.5.

11.2.2 Payment of designation fee

Rule 39(1) All states party to the EPC at the time of filing a European patent
application are automatically designated when the application is filed. The
designation fee, however, may be paid later (see A-III, 11.2.1).

Art. 2(1), item 3, Payment of the designation fee covers all contracting states, except those
RFees for which the designation has been expressly withdrawn.

11.2.3 Consequences of non-payment of the designation fee

Rule 39(2) An application is deemed withdrawn where the designation fee has not
been paid by expiry of the period specified in Rule 39(1).

In this case, the EPO sends the applicant a communication under

Rule 112(1) notifying them of the loss of rights. In response, the applicant
can request further processing according to Art. 121 and Rule 135
(see E-VIII, 2).

The loss of rights ensues on expiry of the period under Rule 39(1) and not
on 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

Art. 79(3) Subject to the final sentence of this paragraph, the applicant may withdraw
Rule 39(2) and the designation of one or more contracting states at any time up to the
(3) patent's grant. Withdrawing the designation of all contracting states results
in the application being deemed withdrawn and the applicant being notified
accordingly.

In neither case is a validly paid designation fee refunded (see A-X, 10.1.1).

Rule 15 A contracting state's designation may not be withdrawn from the date a
third party proves to the EPO that they have initiated entitlement
proceedings and up to the date when the EPO resumes proceedings for
grant.

The applicant may withdraw designations when filing the European patent
application, e.g. to avoid overlapping prior national rights with the priority
application according to Art. 139(3). Timely payment of the designation fee
will not cause those designations that have been withdrawn to be
reactivated.
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-25

For European divisional applications, see A-IV, 1.3.4.

11.2.5 Euro-PCT applications entering the European phase

For Euro-PCT applications entering the European phase, the designation Rule 159(1)(d)
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 Rule 160
application entering the European phase is not paid within the basic period Art. 153(2)
under Rule 159(1)(d), the European patent application (see Art. 153(2)) is
deemed withdrawn. If the EPO finds that that has occurred, it notifies the
applicant of this loss of rights according to Rule 112(1). In response, the
applicant can request further processing according to Art. 121 and
Rule 135.

For the designation fee in relation to Euro-PCT applications entering the

European phase, see also E-IX, 2.1.4 and E-IX, 2.3.11.

11.3 European patent applications filed before 1 April 2009

This section refers to the relevant provisions that were in force until
31 March 2009 and that remain applicable to European patent applications
filed and Euro-PCT applications entering the European phase before
1 April 2009.

11.3.1 Designation fee; time limits

A designation fee is payable for designating contracting states. A single Art. 79(2)
joint designation fee is payable for Switzerland and Liechtenstein. All Rule 39, in force until
contracting states are deemed designated on payment of seven times the 31 March 2009
amount of one designation fee. Art. 149(1)
Art. 2(2), item 3 and
For European patent applications, the designation fees must be paid within item 3a RFees
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 Rule 17(3),
before 1 April 2009, the designation fees must be paid within six months of in force until
the date on which the European Patent Bulletin mentions the publication of 31 March 2009
the European search report drawn up in respect of the European divisional Rule 36(4)
application or the new European patent application (see A-IV, 1.4.1). in force until
31 March 2009
For Euro-PCT applications entering the European phase before
1 April 2009, see A-III, 11.3.9.

11.3.2 Consequences of non-payment of designation fees

The designation of a state is deemed withdrawn where the designation fee Rule 39(2),
has not been paid in due time for that state (see also A-III, 11.3.4). 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) notifying
them of the designation's deemed withdrawal according to Rule 39(2). In
response, the applicant can request further processing according to
Art. 121 and Rule 135 in respect of this partial loss of rights (see E-VIII, 2).
Part A – Chapter III-26 Guidelines for Examination in the EPO March 2024

This communication is not sent if the applicant waives the right to receive it
in respect of the state in question by selecting the appropriate box on the
request for grant form. By selecting that box, the applicant waived the right
to further processing in respect of the designation or designations in
question.

For Euro-PCT applications entering the European phase before

1 April 2009, see A-III, 11.3.9.

11.3.3 Amount paid insufficient

Art. 6(2), If, during the period for requesting further processing, designation fees are
1st sentence, RFees paid without an additional sum sufficient to cover 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. The applicant
must then be invited, under Art. 6(2), first sentence, RFees, to indicate
which contracting states the designation fees plus further processing fee
are to be used for (see J 23/82, mutatis mutandis). For the subsequent
procedure, see A-III, 11.3.7.

11.3.4 Application deemed withdrawn

Rule 39(3), An application is deemed withdrawn where no designation fee is validly
in force until paid by expiry of the period specified in Rule 39(1).
31 March 2009
If no designation fees are paid on time leading to the 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) notifying
them of this loss of rights. In response, the applicant can request further
processing according to Art. 121 and Rule 135 in respect of this total loss of
rights (see E-VIII, 2).

Where the application is deemed withdrawn because of failure to pay the

designation fees, the loss of rights ensues on expiry of the normal period
under Rule 39(1). Similarly, the deemed withdrawal of a contracting state's
designation takes effect upon expiry of the 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 the loss 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

Art. 79(1) and All states party to the EPC at the time of filing a European patent
(2) application are automatically designated when the application is filed. The
designation fees payable for an application filed before 1 April 2009,
however, 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 is done by paying the
designation fees for those states, which may include an additional sum
required to validate a request for further processing.
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-27

11.3.6 Indication of the contracting states

For European patent applications filed before 1 April 2009, the designation Art. 2(2), item 3,
fees are deemed paid for all contracting states on payment of seven times RFees
the amount of one designation fee. Such payments simply need to be Art. 6(1) RFees
marked "designation fees" for the purpose of the payment to be
established.

However, if the applicant intended to pay fewer than seven designation

fees when filing the application, it was for them to indicate the contracting
states they wanted to designate in the appropriate section of the request for
grant form (EPO Form 1001, versions prior to April 2009). This was to
ensure that the designation fees paid were properly entered in the books.
Non-payment of designation fees within the basic time limit results in a
communication under Rule 112(1).

In response, 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 can be requested for designations in respect of
which the applicant waived these rights by selecting the appropriate box on
the request for grant form or where the designation in question was
withdrawn.

For applicants taking part in the automatic debiting procedure, see also
A-X, 7.2.

11.3.7 Amount payable

If, given the amount payable within the time limit in question, the sum paid Art. 6(2),
for designation fees during the periods under Rule 39(1) or Rule 135(1) 1st sentence, RFees
does not cover all the contracting states indicated on the request for grant Art. 8(2)
form (EPO Form 1001) and no indication is provided of the contracting 2nd sentence, RFees,
states the fees are intended for, then the payer is requested to indicate, in force until
within a period stipulated by the EPO, which states are to be designated 31 March 2009
(see also A-III, 11.3.3). If the payer fails to comply in due time, then Rule 39(2),
Art. 8(2) RFees applies: the fees are deemed paid only for as many in force until
designations as are covered by the amount paid in the order in which the 31 March 2009
contracting states were designated (see J 23/82, mutatis mutandis). The Rule 112(1)
designation of contracting states not covered by the fees is deemed
withdrawn and the applicant is notified of the loss of rights
(see A-III, 11.3.4, paragraph 3, regarding the time at which loss of rights
ensues).

11.3.8 Withdrawal of designation

Subject to the final sentence of this paragraph, the applicant may withdraw Art. 79(3)
a contracting state's designation at any time up to the patent's grant. A Rule 39(3) in force
validly paid designation fee is not refunded when a designation is until 31 March 2009
withdrawn. Withdrawing the designation of all contracting states results in and (4), in force until
the application being deemed withdrawn and the applicant being notified 31 March 2009
accordingly. A contracting state's designation may not be withdrawn from Rule 15
the date a third party proves to the EPO that they have initiated entitlement
proceedings and up to the date when the EPO resumes proceedings for
grant.
Part A – Chapter III-28 Guidelines for Examination in the EPO March 2024

The applicant may withdraw designations when filing the European patent
application, e.g. to avoid overlapping prior national rights with the priority
application according to Art. 139(3). Timely payment of designation fees will
not cause those designations that have been withdrawn to be reactivated.
Furthermore, no Rule 112(1) communication will be sent in respect of a
failure to pay designation fees for any designation withdrawn.

11.3.9 Euro-PCT applications entering the European phase before

1 April 2009
Rule 159(1)(d) For Euro-PCT applications entering the European phase, a designation fee
with respect to each contracting state designated, up to a maximum of
seven 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 the
request for entry into the European phase (EPO Form 1200).

Rule 160, in force Under Rule 160(2), the designation of a contracting state for which no
until 31 March 2009 designation fee has been paid in time is deemed withdrawn. According to
Art. 153(2) Rule 160(1), if no designation fee is paid within the basic period under
Rule 159(1)(d) for a Euro-PCT application entering the European phase,
the European patent application (see Art. 153(2)) is deemed withdrawn. If
the EPO finds that the deemed withdrawal of a European patent application
or of a contracting state's designation has occurred, it notifies the applicant
of this loss of rights according to Rule 112(1). In response, the applicant
can request further processing according to Art. 121 and Rule 135.

For designation fees in relation to Euro-PCT applications entering the

European phase, see also E-IX, 2.1.3 and E-IX, 2.3.11.

12. Extension and validation of European patent applications and

patents 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 having an extension agreement with the EPO
(extension states). The same applies to requests for validation in European
or non-European states having a validation agreement (validation states).

The states for which such requests may currently be filed are listed below:

(i) extension may be requested for the following European state:

Bosnia and Herzegovina (BA) since 1 December 2004

The EPO's extension agreements with the Republic of Slovenia (entry into
force: 1 March 1994), the Republic of Romania (15 October 1996), the
Republic of Lithuania (5 July 1994), the Republic of Latvia
(1 May 1995), the Republic of Croatia (1 April 2004), the Republic of
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-29

North Macedonia (as the former Yugoslav Republic of Macedonia)

(1 November 1997), Albania (1 February 1996), the Republic of Serbia
(1 November 2004) and Montenegro (1 March 2010) terminated when
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, 1 October 2010 and 1 October 2022
respectively. However, the extension system continues to apply 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, OJ EPO 2018, A16,
and OJ EPO 2023, A105):

Morocco (MA) since 1 March 2015

Republic of Moldova (MD) since 1 November 2015
Tunisia (TN) since 1 December 2017
Cambodia (KH) since 1 March 2018
Georgia (GE) since 15 January 2024

Extension and validation agreements are bilateral international treaties

concluded between the European Patent Organisation and an individual
state. Within the territory of that state, the effects of a European patent
application for which an extension or validation request has been filed, or of
a European patent that 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 the extent that
those provisions are referred to by the applicable national law. Thus, the
EPC provisions concerning applicants' legal remedies and appeals do not
apply in respect of any action taken by the EPO under the extension or
validation procedure (see J 14/00, J 4/05 and J 22/10), e.g. where the
extension or validation fee has not been paid within the applicable 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 does not apply to the extension and validation systems.

A request for extension to or validation for the above-mentioned states is

deemed made with any European patent application filed after entry into
force and, in the case of the former, before termination of the respective
extension agreements. This also applies to Euro-PCT applications,
provided that the EPO has been designated for a European patent and the
extension or validation state has been designated for a national patent in
the international application. The request is deemed withdrawn if the
extension 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 the
applicant decides to extend the application to an extension state or validate
it in a validation state. The declaration in the appropriate section of the
request 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 they intend to pay the extension or validation fee is merely for
information purposes and intended to assist in recording fee payments.
Part A – Chapter III-30 Guidelines for Examination in the EPO March 2024

A request for extension or validation in respect of a divisional application

(see A-IV, 1) is deemed 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 the
European search report

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

If the fee for an extension or validation state has not been paid within the
corresponding basic period (see items (i) and (ii) above), the applicant can
still 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 a
valid 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
withdrawn. No communication of loss of rights is issued.

However, a noting of loss of rights for failure to pay the designation fee
under Rule 39(2) or 159(1)(d) will draw the applicant's attention to the
non-payment of the extension or validation fee, where appropriate,
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 or Euro-PCT application is
finally refused, withdrawn or deemed withdrawn. A separate communication
is not issued to the applicant. Validly paid extension or validation fees are
not refunded.
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-31

12.4 Extension and validation deemed requested

Extension and validation are deemed 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 published application,
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, the European
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 their
territory.

13. Filing and search fees

13.1 Payment of fees

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

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

(ii) for European divisional applications or European patent applications Rule 36(3)
filed according to Art. 61(1)(b), within one month of filing the Rule 17(2)
divisional or Art. 61(1)(b) application

(iii) for Euro-PCT applications, within 31 months of the filing date or, Rule 159(1)
where applicable, from the earliest claimed priority date*.

*Note that when a supplementary European search report is dispensed with

by the EPO (see B-II, 4.3), no search fee is required for the Euro-PCT
application (Rule 159(1)(e)).

With regard to applications of types (i) and (ii), the EPO will check that Art. 90(3)
these fees have been paid. If either fee is not paid on time, the application Rule 57(e)
is deemed withdrawn. The applicant will be notified by the EPO as to the Art. 78(2)
loss of rights according to Rule 112(1) and can respond by requesting Rule 36(3)
further processing according to Art. 121 and Rule 135. Rule 17(2)

Under Art. 2(1) RFees as amended by Administrative Council decision of

13 December 2017 (OJ EPO 2018, A4), the filing fee amount depends on
the method and format used for filing the European patent application or its
translation, if applicable. However, where a fee level relates to a means of
electronic communication or a particular electronic document format, that
level only applies when the means or format, as referred to in
Art. 2(1) RFees, is made available. The date on which such fee level
applies is to be specified by the EPO President (see Art. 2(4) RFees as
adopted by Administrative Council decision 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
Part A – Chapter III-32 Guidelines for Examination in the EPO March 2024

levels of the filing fee and of the fee for grant for 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.

Rule 6(3) to (7) 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 35

pages)
Rule 38(2) and This section relates only to applications filed and international applications
(3) entering the European phase on or after 1 April 2009 (see also the notice
Art. 2(1), item 1a, from the EPO dated 26 January 2009, OJ EPO 2009, 118, and its
RFees supplement, OJ EPO 2009, 338).
Rule 49
EP-direct applications

An additional fee is payable as part of the filing fee for European patent
applications filed on or after 1 April 2009 and comprising more than 35
pages. The fee amount depends on the number of pages over 35. 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 application's filing date or
of the date of receipt of a European divisional application or a European
patent application according to Art. 61(1)(b). If the application is filed
without claims or by reference to a previously filed application, the
additional fee is payable within one month of filing the first set of claims or
the certified copy of the application 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 patent application need to be corrected, the number of pages
complying with the physical requirements (see A-III, 3 and A-IX) is taken as
the basis for calculation. In particular, deficiencies relating to minimum
margins, each document making up the application starting on a new sheet,
line spacing and character size as well as the scale of drawings can
potentially impact the number of pages (see the decision of the President of
the EPO dated 25 November 2022, OJ EPO 2022, A113). Where this is the
case, any additional fee due for the higher number of pages may be paid
within two months of the invitation under 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).
By way of exception, an additional fee is not due either for a parent
application's ST.25 sequence listing filed in PDF format as part of a
divisional application (see OJ EPO 2023, A98, and A-IV, 5.4). If the
application is filed by reference to a previously filed application, the pages
of the certified copy are taken as the basis for the calculation, excluding
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-33

the pages for the certification, for bibliographic data and any sequence
listing in ST.25 format contained in the certified copy under Rule 40(3). If
the application is filed without claims, the additional 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). In general, is calculated on the
basis of the international application as published, regardless of the
language of publication. The pages of the description, claims and drawings
are counted, as well as one page for the bibliographic data with abstract.
Any amendments under Art. 19 and/or 34 PCT are also considered part of
the international publication and are taken into account for calculating the
additional fee unless the applicant indicates that the procedure in the
European phase is not to be based on them. The indications made in EPO
Form 1200 should be clear so the EPO can readily identify the pages for
which the additional fee is payable.

The pages of EPO Form 1200 itself and those forming part of a standard-
compliant sequence listing under Rule 30(1) are not counted.

Amended application

If amendments are filed on entry into the European phase, the basis for
calculating the additional fee depends on the language in which the
international application was published, i.e. one of the EPO's official
languages or another language, e.g. Chinese.

(i) International publication is in an EPO language

The additional fee is based on the application as published, whereby

any amended pages replace the respective pages of the application
as published.

If the claims have been amended, the applicant must submit the
entire set, even if the amendment concerns only some of them. The
additional fee is then based on the entire set of claims as amended.

(ii) International publication is not in an EPO language

If no amendments are filed on entry into the European phase, the

application as published in a non-EPO language (e.g. Chinese) is
taken as the basis for calculating the additional fee. However, if
pages are amended, the translation of the application as required
under Art. 153(4) and Rule 159(1)(a) is taken as the basis instead.
Part A – Chapter III-34 Guidelines for Examination in the EPO March 2024

This is because the replacement pages are in a different language to

the published pages, which would make a proper calculation of the
additional fee impossible. Therefore, if the description or drawings
are amended, the translation of the description or drawings is taken
as the basis for calculating the additional fee. In this case, the
amended pages replace the respective pages of the description or
drawings as translated.

If only the claims are amended, the additional fee is based on the
description and drawings as published in Chinese plus the entire set
of claims as amended in the EPO language. If the claims are not
amended, the additional fee is based on the claims as published in
Chinese.

If the applicant explicitly states that application documents filed on

entry into the European phase have merely been reformatted (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 for calculation of the additional fee (see the notice from the
EPO dated 26 January 2009, OJ EPO 2009, 118, and its
supplement, OJ EPO 2009, 338).

In application of the general principles described above, for international

applications comprising both erroneously filed application documents and
correct 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), the
additional fee must be paid for all application documents contained in the
international publication unless any are replaced by amendments filed on
entry into the European phase, as specified by the applicant.

For international applications with an international filing date on or before

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 or elected
Office (see OJ EPO 2020, A81). Nevertheless, the above general principles
for calculating the additional fee apply. However, where applicants choose
the abridged procedure outlined in C-III, 1.3 and 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, this
renunciation is, for the calculation of the additional fee, equal to an
amendment of the international application as published. Accordingly, those
pages identified in the publication of the international application as
"Incorporated by reference (Rule 20.6)" are deducted 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 filing date. In that case, the erroneously filed pages are
deducted from the international application as published when calculating
the additional fee.
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-35

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 phase
is 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 the
erroneously filed ones) and any further amendments replacing (part of)
them (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 1
Description 50
Claims 20
Drawings 20
claims, Art. 19 PCT 9

Total pages 100

Amended claims (EP entry) 10

On entry into European phase, within the 31-month period, 10 pages of

amended claims are filed to replace previous pages of claims, as indicated
by 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

Example 2:

International application, published in Chinese, containing 75 pages:

Number of Number of pages in

pages in English (EN),
Chinese translation filed on
(ZH) entry into the
European phase
Abstract 1 1
Description 40 50
Claims 15 25
Drawings 19 19
Total number of pages 75 95

Amended description of - 3
the translation

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
Part A – Chapter III-36 Guidelines for Examination in the EPO March 2024

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 and

drawings 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

If in the above example only the claims are amended, the additional fee is
based on the description, drawings and abstract as published in Chinese
and the translation of the entire set of claims as amended.

Pages of amendments filed after the additional fee's payment date, in

particular during the Rule 161(1) or Rule 161(2) period (see E-IX, 3), are
not taken into account. Consequently, if amendments filed at this stage
reduce the number of pages already paid for, no refund will be made.

Art. 78(2) If the additional fee is not paid on time, the application is deemed
withdrawn. The EPO will notify the applicant of the loss of rights according
to Rule 112(1); the applicant can request further processing according to
Art. 121 and Rule 135. The further processing fee is calculated on the basis
of the number of pages on file at the relevant period's expiry and for which
the additional fee, calculated as set out above has not been paid. The
amount of the further processing fee in respect of the additional fee does
not take into account the basic filing fee according to
Art. 2(1), item 1, RFees if this was paid on time.

13.3 Additional fee for divisional applications

Rule 38(4) Regarding the additional fee payable as part of the filing fee for divisional
Art. 2(1), item 1b, applications of second or subsequent generations filed on or after
RFees 1 April 2014, see A-IV, 1.4.1.1 and the notice from the EPO dated
8 January 2014, OJ EPO 2014, A22.

14. Translation of the application

Art. 14(2) There are three situations in which a translation of the European patent
Rule 6(1) application will be required:

(i) the European patent application was filed according to Art. 14(2) in a
non-EPO language

(ii) the European patent application was filed by reference to a

previously filed application in a non-EPO language (Rule 40(3))

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

In all cases, a translation of the application must be filed at the EPO: in

cases (i) and (ii) this must occur within two months of the filing date
according to Rule 6(1) (for type (i)) or Rule 40(3) (for type (ii)); in case (iii) it
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-37

must occur within two months of the divisional application's filing according
to Rule 36(2).

The EPO will check compliance with this requirement. If the translation has Art. 90(3)
not been filed, the EPO will invite the applicant to rectify this deficiency Rule 57(a)
under Rule 58 within two months in accordance with the procedure
explained in A-III, 16.

Failure to file the translation on time in response to the invitation under Rule 58
Rule 58 results in the application being deemed withdrawn according to
Art. 14(2). The EPO will then notify the applicant of this loss of rights
according to Rule 112(1). Further processing is ruled out by Rule 135(2) for
the above time limits for supplying the translation under Rule 40(3),
Rule 6(1) and Rule 36(2) and for the time limit for rectifying the failure to file
the translation under Rule 58. Consequently, further processing is not
possible 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 the

European phase, see E-IX, 2.1.2.

15. Late filing of claims

To obtain a filing date, the European patent application does not have to Art. 80
contain any claims. The presence of at least one claim is nonetheless a Rule 40(1)
requirement for a European patent application according to Art. 78(1)(c),
but a set of claims can be provided after the filing date according to the
procedure described below.

The EPO will check whether at least one claim is present in the application. Art. 90(3) and
If there is not, the EPO will issue an invitation under Rule 58 inviting the (5)
applicant to file one or more claims within two months. If the applicant fails Rule 57(c)
to do so within this period, the application is refused according to Art. 90(5). Rule 58
The applicant is notified of this decision according to Rule 111. Further
processing for failure to observe the time limit under Rule 58 is ruled out
under 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 on their own initiative after the
filing date but before the EPO invites them to do so under Rule 58. In this
case, the EPO does not issue a communication under Rule 58.

If the applicant does supply a set of claims in response to the invitation

under Rule 58, the claims must have a basis in the application documents
(description and any drawings) provided on the filing date (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 filing date that the previously filed application's claims were to take the
place of claims in the application as filed (see A-II, 4.1.3.1), then, provided
Part A – Chapter III-38 Guidelines for Examination in the EPO March 2024

the previously filed application also contained claims on its filing date,
claims were present on the filing date and no communication under Rule 58
will be sent.

The above procedure also applies to divisional applications (Art. 76(1)) and
applications filed in accordance with Art. 61(1)(b).

16. Correction of deficiencies

16.1 Procedure for formalities officers

Art. 90(3) Where, when examining for compliance with the requirements set out in
earlier sections of this chapter, the formalities officer discovers deficiencies
that may be corrected, they must give the applicant the opportunity to
rectify each such deficiency within a specified period. The most common
potential deficiencies at this stage of the procedure and the provisions
governing their rectification are:

A-III, 2 Representation Rule 58

A-III, 3 Physical requirements Rule 58
A-III, 4 Request for grant Rule 58
A-III, 5 Designation of inventor Rule 60
A-III, 6 Claim to priority Rule 52(3), Rule 59
A-III, 9 Payment of claims fees Rule 45
A-III, 10 Abstract Rule 58
A-III, 13 Filing fee, including any Rule 112(1), Rule 135
additional fee, search fee
A-III, 14 Translation of the application Rule 58
A-III, 15 Late filing of claims Rule 58
A-IV, 5 Late furnishing of a standard- Rule 30(3)
compliant sequence listing

The formalities officer should raise all formal objections that become
evident from a first examination of the application – with the exception of
those noted in A-III, 3.2 – in the appropriate communication. The definitive
resolution of certain matters will likely be impossible at this stage, e.g. filing
of priority documents for which the filing period 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 deal with
only this deficiency in the first report. Any request(s) for correction of other
deficiencies will not be sent until a representative has been appointed, and
will be sent to that representative.

16.2 Period allowed for remedying deficiencies

Rule 58 The period for remedying the following deficiencies is two months from a
communication 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 is
necessary, 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)
March 2024 Guidelines for Examination in the EPO Part A – Chapter III-39

(ii) documents making up the application not complying with physical

requirements (see A-III, 3)

(iii) request for grant (with the exception of the priority criteria) not
satisfactory (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 Art. 90(5)
under (i)-(iv) or (vi) are not rectified in time, the application is refused under Art. 14(2)
Art. 90(5). If the deficiency under (v) is not rectified in time, the application
is deemed withdrawn under Art. 14(2). Under Rule 135(2), further
processing is ruled out for all of the above losses of rights, which all arise
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)

(ix) non-payment of filing fee, including any additional fee, and search
fee (see A-III, 13)

(x) 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 related to Rule 45
the payment of claims fees under (vii) is one month from a communication
pointing out their non-payment. Failure to correct this deficiency in time
leads to the claims in question being deemed abandoned under Rule 45(3).
Further processing applies to this loss of rights.

Deficiencies under (viii) are to be corrected within two months of a Art. 90(5)
communication under Rule 59. This period can be extended under Rule 59
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 in
time leads to the loss of the priority right.

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

The deficiency under Rule 30(1) can be corrected within two months of a Rule 30
communication under Rule 30(3). This period is not extendable but further
Part A – Chapter III-40 Guidelines for Examination in the EPO March 2024

processing is available. Failure to correct this deficiency in time leads to the

refusal of the European patent application (see A-IV, 5).

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

March 2024 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 Art. 76
European patent application. A divisional application filed on the same day Rule 36(1)
as the parent application is not considered 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 on
which the divisional application is based ("parent application"). Where the
earlier application is a Euro-PCT application, a divisional application can
only be filed upon the earlier application's effective entry into the European
phase (see E-IX, 2.4.1).

The divisional application is accorded the same filing date as the parent
application and benefits from any priority right 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 divisional application's date of receipt,
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 of receipt 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 more
divisional applications.

Where a divisional application is deemed not validly filed due to

non-fulfilment of one of the filing conditions (see also A-IV, 1.1.1 and 1.1.3),
the applicant will be duly informed in a communication under Rule 112(1)
stating that the application will not be processed as a European divisional
application and providing the opportunity to apply for a decision on the
EPO's findings under Rule 112(2) (see E-VIII, 1.9.3). Any fees 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 in G 1/09 and
J 18/09 as to what constitutes a pending application. In the case of an
application filed as a divisional application from an application that is itself a
divisional application, it is sufficient that the latter is still pending on the
second divisional application's date of receipt.

An application is pending up to (but not on) the date that the European
Patent Bulletin mentions the grant of the patent (OJ EPO 2002, 112).
Rule 134 does not apply in this case. It is not possible to validly file a
Part A – Chapter IV-2 Guidelines for Examination in the EPO March 2024

divisional application when the parent application has been finally refused,
withdrawn or is deemed withdrawn (see also the paragraphs below).

If an application is deemed withdrawn due to non-observance of a time

limit (e.g. following failure to pay the filing fee (Art. 78(2)), a renewal fee
(Art. 86(1)), the fee for grant and publishing or the claims 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.

If a renewal fee is not paid by the due date (Rule 51(1)), the application is
pending up to the last day of the six-month period for payment of that 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 the application takes effect on
expiry of the six-month period (Rule 51(2), second sentence).

Once the application is deemed withdrawn, a divisional application can only

be validly filed if the loss of rights, as communicated under Rule 112(1), is
subsequently remedied. In such a case, the application is deemed to have
been pending throughout.

Art. 112a(5) Depending on the non-observed time limit, the loss of rights may be
remedied either by means of an allowable request for further processing
(see E-VIII, 2) or, where applicable, by a request for re-establishment of
rights (see E-VIII, 3). Furthermore, if the findings in the notice of loss of
rights are considered inaccurate, the applicant may also request a decision
under Rule 112(2) (see E-VIII, 1.9.3). If the competent EPO body shares
this opinion or if it gives an unfavourable decision that is subsequently
overturned on appeal, no loss of rights will have ever occurred and the
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 a
petition for review and the appeal proceedings are reopened under
Art. 112a(5), with the consequence that the decision under Rule 112(2) is
overturned.

If an application has been refused and no appeal has (yet) been filed, the
application 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 this period expires (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 the time limit for filing the grounds of appeal under Art. 108
expires (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 under way. If the appeal
proceedings are reopened under Art. 112a(5), the application will have
been pending throughout.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-3

If the parent application is withdrawn by the applicant, a divisional

application can be filed up to (i.e. including) the date on which the
declaration of withdrawal is received by the EPO.

While proceedings are stayed in accordance with Rule 14(1)

(see A-IV, 2.2), divisional applications cannot be filed. Rule 14(1)
constitutes a lex specialis with regard to the right to file a divisional on a
pending application provided for in Rule 36(1) (see J 20/05 and G 1/09,
reasons 3.2.5).

If a purported divisional application is filed when the parent application is

not pending, the EPO will issue a communication under Rule 112(1) (see
A-IV, 1.1). The pendency of the earlier application is not a procedural
deadline or time limit that would lead to a loss of rights in the event of
non-compliance. Instead, it is a condition of a substantive nature for the
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 within the
meaning of Art. 76(1) for one or more further divisional applications. The
characterising feature of a sequence of divisional applications, each divided
out from its predecessor, is that each member of the sequence claims as
date of filing the date of the root application in which the subject-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 that is not
itself 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 on record of the earlier application may file a divisional
application. In the case of 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 effective vis-à-vis the EPO (Rule 22) at the divisional application's
date of receipt. A purported divisional application that is not (jointly) filed in
the name of the applicant(s) of the parent application will not be processed
as a European divisional application. The EPO will inform applicants by
issuing a communication under 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 Art. 76(1),
not extending beyond the content of the parent application as filed. 2nd sentence
Provided this requirement is met, the divisional application is deemed filed
Part A – Chapter IV-4 Guidelines for Examination in the EPO March 2024

on the parent application's filing date and enjoys that application's priority
(see A-IV, 1.2.2).

Art. 63(1) A divisional application filed in due form, i.e. meeting the requirements of
Art. 80 Art. 80 and Rule 40(1) (see A-II, 4.1 et seq.), is accorded the same filing
Rule 40(1) date as the parent application or that of the root application in the case of a
sequence of divisional applications. Whether the divisional application's
subject-matter is confined to that of the parent application is not decided
until the examination procedure (see C-IX, 1.4 et seq.). The term of a
patent granted for a European divisional application is 20 years from its
filing date, i.e. the filing date of the root application.

Since Rule 40(1) does not require a European patent application to contain
any claims on its filing date, the same applies to a European divisional
application. The applicant can file the claims after filing the divisional
application according to the procedures detailed in A-III, 15. This may be
done after the parent application is no longer pending, provided that the
requirements of Rule 40(1) were satisfied with regard to the divisional
application when the parent application was still pending. If the parent
application's claims are included in the divisional application's description,
they must be clearly identified as part of the description (see F-IV, 4.4).

1.2.2 Priority claim of a divisional application

Art. 76(1) A priority claimed in the parent application also applies to the divisional
Rule 53(2) and application, provided that the parent application's priority claim has not
(3) been lost or withdrawn by the date the divisional application is filed; it is not
necessary to claim it formally a second time. The priority claim can be
withdrawn in respect of the divisional application (F-VI, 3.5, E-VIII, 8.2 and
E-VIII, 8.3). However, this will have no effect on the parent application's
priority claim. Similarly, any withdrawal of the priority claimed in the parent
application after the divisional application's filing has no effect on the latter's
priority claim.

Where the parent application claims multiple priorities under Art. 88(2), the
applicant may claim fewer priorities in respect of the divisional application.
To do so, they must file a clear and unambiguous 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 that have not lapsed in respect
of the parent application when the divisional is filed also remain valid with
respect to that application. What is more, all such priority claims remain
valid for the divisional, even if the applicant provides an incorrect or
incomplete priority claim when filing it.

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. The EPO
makes a copy of these documents and places them in the divisional
application's file (see the decision of the President of the EPO dated
12 July 2007, Special edition No. 3, OJ EPO 2007, B.2).
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-5

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 the
divisional 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 meanwhile submitted these documents in respect of the
parent application. If the divisional application's subject-matter 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 Rule 52(2)
application. For the time limits for indicating the file number and for filing the
priority documents, see A-III, 6.5, 6.5.3 and 6.7 et seq.

1.3 Filing a divisional application

1.3.1 Where and how to file a divisional application

A divisional application must be filed with the EPO. It may be filed using Rule 36(2)
EPO Online Filing, Online Filing 2.0, the EPO web-form filing service or the Rule 35(1)
EPO Contingency Upload Service (see A-II, 1.1.1). If filed by delivery by
hand, by postal services or by fax, divisional applications must be filed with
the EPO in Munich, The Hague or Berlin.

The filing of a European divisional application with a national authority has

no effect in law; the authority may however, as a courtesy service, forward
the European 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 to
an international application that has effectively entered the European phase
(see A-IV, 1.1) and was not filed with the EPO as receiving Office, a
certified 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 Rule 41(2)(e)
application is sought and state the number of the parent application. It
should 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 can
arise if there is no indication that the application constitutes a divisional
application, even though some of the accompanying documents contain an
indication to that effect or if the number is missing, the deficiency may be
corrected in the manner indicated in A-III, 16 or under Rule 139 (see
A-V, 3).
Part A – Chapter IV-6 Guidelines for Examination in the EPO March 2024

1.3.3 Language requirements

Rule 36(2) As indicated in A-VII, 1.3, a divisional application must be filed in the
language of the proceedings of the parent application. Alternatively, if the
earlier (parent) application was filed in a non-official EPO language, the
divisional application may be filed in the same language. In this case a
translation into the language of the proceedings of the earlier application
must then be filed within two months of filing the divisional application
(see A-III, 14).

1.3.4 Designation of contracting states

Art. 76(2) All contracting states designated in the earlier application at the time of
Rule 36(4) filing a European divisional application are deemed designated in the
divisional application (see also G 4/98). If no designations have been
withdrawn in respect of the parent application, then all states party to the
EPC at the date of the parent's filing are automatically designated in the
divisional application when filed. Conversely, contracting states that have
had their designation withdrawn in respect 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
paying 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 all states party to the
EPC at the parent's filing date are automatically designated in the divisional
application when it is filed. Conversely, contracting states that have had
their designation withdrawn or deemed 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 that have had their
designation withdrawn or deemed withdrawn at the time of filing the
divisional application.

1.3.5 Extension and validation states

All extension and validation states designated in the earlier application at
the time of filing a European divisional application are deemed designated
in the divisional application. For more details regarding the designation of
these states, see A-III, 12.1.

1.4 Fees

1.4.1 Filing, search and designation fee(s)

Rule 36(3) and The filing fee and search fee for the divisional application must be paid
(4) within one month of filing the European patent application. For the
Art. 79(2) additional fee due for any pages in excess of 35, see A-III, 13.2. For the
additional fee due for divisional applications of second 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 Patent Bulletin mentions the
publication of the European search report drawn up in respect of the
divisional application.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-7

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 that was lacking in unity and that 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 have Rule 36(3) and
not been paid, the application is deemed withdrawn. The EPO informs the (4)
applicant of these losses of rights in a communication under Rule 112(1).
The applicant can request further processing according to Art. 121 and
Rule 135.

For divisional applications filed before 1 April 2009, see A-III, 11.3.2 and
11.3.4 for the deemed withdrawal of single designations or of the
application and applicable remedies.

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 Rule 38
applications of second or subsequent generations filed on or after Art. 2(1), item 1b,
1 April 2014 (see the notice from the EPO dated 8 January 2014, RFees
OJ EPO 2014, A22). The fee amount varies depending on the generation to
which the divisional application filed belongs (see A-IV, 1.1.2).
First-generation divisional applications are not subject to the additional fee.
The fee amount grows progressively from the second to the fifth generation
and becomes a flat fee for the fifth and subsequent generations (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 the
additional fee for second-generation divisional applications would apply to
EP4, and the amount for third-generation divisional applications would
apply to EP5.

The additional fee is part of the filing fee for divisional applications of
second and subsequent generations. Therefore, it must be paid within the
same period as the filing fee, and the same provisions apply if not paid in
due time (see A-IV, 1.4.1). Likewise, the reduction of the filing fee under the
Part A – Chapter IV-8 Guidelines for Examination in the EPO March 2024

language arrangements applies to this additional fee, provided that the

requirements laid down in Rule 6(4) to (7) are complied with (see A-X, 9.2.1
and 9.2.2).

1.4.2 Claims fees

Rule 45(1) If, at the time of filing the first set of claims, the divisional application
comprises more than 15 claims, a claims fee is payable in respect of each
claim in excess of that number (see A-III, 9). Claims fees are payable even
if they were paid in the parent application 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

Art. 86(1) For the divisional application, as for any other European patent application,
Art. 76(1) renewal fees are payable to the EPO. They are due in respect of the third
Rule 51(3) year and each subsequent year, calculated from the date of filing of the
Art. 2(1), item 5, earlier (parent) application or that of the root application in the case of a
RFees sequence of divisional applications. Under Art. 76(1) in conjunction with
Rule 51(3), the parent application's filing date is also the date from which
the time limits for paying 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, these 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 paying these fees is four months after
filing the divisional application. If not paid in due time, they may still be
validly paid within six months of the date on 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.

Rule 51(3) If, within the four-month period referred to above, a further renewal fee falls
Art. 2(1), due or a renewal fee falls due for the first time, it may be paid without an
item 5, RFees additional 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 the
additional 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 ruled out by
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 in
Rule 51(3), second sentence, the one-year period prescribed by
Rule 136(1) starts to run only after the six months under Rule 51(2) have
expired.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-9

Example:

25.03.2008: date of filing of parent application

11.01.2011: filing of divisional application and due date
of renewal fee for the third year
31.03.2011: due date of renewal fee for the fourth year
11.05.2011: expiry of four-month period under
Rule 51(3)
11.07.2011: expiry of six-month period under Rule 51(2)
in respect of the renewal fee for the third
year
30.09.2011: expiry of six-month period under Rule 51(2)
in respect of the renewal fee for the fourth
year
11.07.2012: expiry of one-year period under
Rule 136(1) in respect of the renewal fee
for the third year
01.10.2012: 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 the Rule 60(2)
inventor, 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, the
representative has to file an authorisation, they may act on the basis of an
individual 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 examination
of 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) RFees are met (see
the decision of the President of the EPO dated 17 January 2023 concerning
the refund of the search fee under Art. 9(2) RFees, OJ EPO 2023, A4, for
Part A – Chapter IV-10 Guidelines for Examination in the EPO March 2024

divisional applications for which the search is completed on or after

1 April 2022).

The divisional application is published in accordance with Art. 93(1). The

filing or priority date taken for calculation of the 18-month period for
publication is the filing date or the earliest priority date claimed
(see A-IV, 1.2.1). Since this period has usually already expired when the
divisional application is filed, the technical preparations for publication are
completed 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 on the date
on which the European Patent Bulletin mentions the publication of the
search report concerning the divisional application.

2. Art. 61 applications and stay of proceedings under Rule 14

2.1 General
Art. 61(1) Under Art. 61(1), a court or competent authority ("court") may by a final
Rule 16 decision find that a person other than the registered applicant is entitled to
the grant of a European patent. Provided that the European patent has not
yet been granted, this third party may, within three months after the
decision has become final, in respect of those contracting states
designated in the European patent application in which the decision has
been taken or recognised or has to be recognised on 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 the
applicant (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).

If the application is no longer pending due to its having been withdrawn,

refused or being deemed withdrawn, the third party can still file a new
European patent application in respect of the same invention, in
accordance with Art. 61(1)(b) (see G 3/92).

2.2 Stay of proceedings for grant

Rule 14(1) If a third party provides proof to the EPO that they have opened
proceedings against the applicant for the purpose of seeking a judgement
that they are entitled to the grant of the European patent, the EPO will stay
the proceedings for grant unless it receives written consent from the third
party to continue such proceedings. This consent is irrevocable.

Proceedings for grant may not be stayed before the publication of the
European 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.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-11

Furthermore, Rule 14(1) only refers to national entitlement proceedings that

result directly, i.e. generally and automatically, in decisions mentioned in
Art. 61(1) and not to proceedings initiated before a court of a
non-contracting state (see J 6/03, r.21). Jurisdiction and the recognition 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. in line with 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 Art. 20
with the EPO's Legal Division (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 from the
date the EPO receives 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 governed

by national law (J 7/00).

2.2.3 Legal nature and effects of the stay

The stay of proceedings is a unique preliminary procedural measure that is
justified as a preventive measure to preserve the third party's possible
rights to the patent in dispute and that 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 that communication, request the issue of an
appealable decision.

Stay of proceedings implies that the legal status quo existing at the time of
the suspension is maintained, i.e. neither the EPO nor the parties can
validly 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).
Likewise, no divisional application can be filed during the stay of
proceedings (J 20/05 and J 9/12).

An automatic debit order ceases to be effective on the day a stay of the

proceedings under Rule 14 takes effect (see point 11.1(c) AAD, Annex A.1
to the ADA, Supplementary publication 3, OJ EPO 2022). Therefore, after
Part A – Chapter IV-12 Guidelines for Examination in the EPO March 2024

resumption of proceedings a new automatic debit order must be filed if the

applicant wishes to continue using the automatic debiting procedure.

2.2.4 Interruption of time limits

Rule 14(4) The time limits in force at the date of stay other than time limits for payment
of renewal fees are interrupted by such stay. The time that has not yet
elapsed begins to run from the date on which proceedings are resumed.
However, the time still to run after the resumption of the proceedings must
not be less than two months. As for renewal fees, they continue to fall due
during the period of stay. Also, in accordance with Rule 14(4), the period for
payment of renewal fee with an additional fee provided for in Rule 51(2) is
not interrupted.

Example: The European Patent Bulletin mentions the European search

report's publication on 15 March 2017. Proceedings are stayed on Friday,
5 May 2017 and resumed on Friday, 18 August 2017. At the resumption of
proceedings, the six-month period from the date of the mention of the
search report's publication for payment of the examination 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 less than two months (Rule 14(4)).

The six-month period starts on the day following the search report's
publication, in accordance with Rule 131(2), i.e. on 16 March 2017, and
ends on 15 September 2017. The period that is already running when
proceedings 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 is
more 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 to
calculate the deadline for payment of the examination fee.

Resumption is on 18 August 2017. All time limits start running again from
and including this day (Rule 131(2) does not apply):

After adding first the remaining days and then the remaining months, it is
necessary 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 and
including 18 August 2017 results in 28 August 2017. Adding four months to
that gives 28 December 2017 as the end of the time limit for payment of the
fee. Since the EPO was closed from Monday, 25 December 2017 to
Monday, 1 January 2018, the period is extended to 2 January 2018 in
accordance with Rule 134(1).
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-13

2.2.5 Resumption of the proceedings for grant

The date of resumption of proceedings as well as the legal basis for the Rule 14(3)
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 Rule 14(2)
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 the
designated contracting states. If the decision is in favour of the third party,
the proceedings may not be resumed earlier than three months after the
decision 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 Rule 14(3)
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 the
proceedings 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 patent

application
From the time when a third party proves to the EPO that they have initiated Rule 15
proceedings concerning entitlement (see A-IV, 2.2) and up to the date on
which the EPO resumes the proceedings for grant (see A-IV, 2.2.5), neither
the European patent application nor the designation of any contracting
state may be withdrawn.

2.4 Prosecution of the application by a third party

Any third parties wishing to avail themselves of the possibility open to them Art. 61(1)(a)
under Art. 61(1)(a) (see A-IV, 2.1(i)) must declare their intention in writing to
the EPO in due time. They then take the place of the erstwhile applicant.
The proceedings for grant are continued from the point reached when they
were stayed or when the declaration was filed by the third party
(see A-IV, 2.2).

2.5 Filing a new application

A new European patent application under Art. 61(1)(b) must be filed Art. 61(1)(b)
electronically or on paper with the EPO in Munich, The Hague, or Berlin. It Art. 76(1)
is not possible to file an application according to Art. 61(1)(b) with the
competent 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, the
following provisions relating to divisional applications apply
mutatis mutandis:

(i) accordance of the date of filing of the earlier application and Art. 61(2)
entitlement to priority date – see A-IV, 1.2;
Part A – Chapter IV-14 Guidelines for Examination in the EPO March 2024

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

Rule 17(2) and (iii) filing, search, designation and claims fees – see A-IV, 1.4.1 and
(3) 1.4.2;
Rule 45(1)
(iv) designation of inventor – see A-IV, 1.5.

(v) language requirements – see A-IV, 1.3.3.

Rule 51(6) However, arrangements for renewal fees are different. For the year in
which 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 other

applications.

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, the
earlier application continues to be in the name of the earlier applicant for
the remaining states.

Rule 17(1) The earlier application is deemed withdrawn on the new application's filing
date for the contracting states originally designated in which the decision
has been taken or recognised.

2.6 Refusal of the earlier application

Art. 61(1)(c) The EPO must accede to a third-party request under Art. 61(1)(c) to refuse
the earlier application. The decision is open to appeal (Art. 106(1)).

2.7 Partial transfer of right by virtue of a final decision

Rule 18(1) If by a final decision it is adjudged that a third party is entitled to the grant of
a European patent in respect of only part of the matter disclosed in the
European patent application, Art. 61 and Rules 16 and 17 apply to that part.

3. Display at an exhibition

3.1 Certificate of exhibition; identification of invention

Art. 55(1)(b) and Where an applicant states when filing an application that the invention
(2) which is the subject of the application has been displayed at an official or
Rule 25 officially recognised international exhibition falling within the terms of the
Convention on international exhibitions, they must file a certificate of
exhibition within four months of the filing of the European patent
application. The exhibitions recognised are published in the EPO's 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

March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-15

(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.

3.2 Defects in the certificate or the identification

The Receiving Section acknowledges receipt of the certificate and
identification of the invention. It draws the applicant's attention to any
manifest defects in said documents in case 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 to Art. 121 and Rule 135.

4. Applications relating to biological material

4.1 Biological material; deposit of such

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

Where in relation to an application concerning biological material an Rule 31(1)(c) and

applicant states having deposited in accordance with Rule 31(1)(a) the (d)
biological material with a depositary institution recognised for the purposes Rule 31(2)
of Rules 31 and 34, the applicant must, if such information is not contained
in the application as filed, submit the name of the depositary institution and
the accession number of the culture deposit and, where the biological
material has been deposited by a person other than the applicant, the
name and address of the depositor, within whichever of the following
periods is the first to expire:

(i) within 16 months of the European patent application's filing date or Rule 31(2)(a)
the priority date, this time limit being deemed to have been met if the
information is submitted before completion of the technical
preparations for publication of the European patent application

(ii) if a request for early publication of the application according to Rule 31(2)(b)
Art. 93(1)(b) is submitted, up to the date of such submission

(iii) if it is communicated that a right to inspection of the files under Rule 31(2)(c)
Art. 128(2) exists, within one month of such communication.

Further processing is ruled out by Rule 135(2) for the above time limit Art. 83
according to Rule 31(2). Nor is Art. 122 applicable because a lack of
disclosure cannot be remedied by way of re-establishment under Art. 122
(see the notice from the EPO dated 7 July 2010, OJ EPO 2010, 498).

Moreover, where the depositor and applicant are not identical, the same Rule 31(1)(d)
time limit applies for submitting a document satisfying the EPO that the
depositor has authorised the applicant to refer to the deposited biological
material in the application and has given unreserved and irrevocable
Part A – Chapter IV-16 Guidelines for Examination in the EPO March 2024

consent 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 the
material being made available to the public must have existed from the
filing date of the application in question. For a recommended wording for
this declaration, see paragraph 3.5 of the above notice. For Euro-PCT
applications, the document referred to above must be provided to the
International Bureau before completion of the technical preparations 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 the above
notice).

Rule 33(6) The depositary institution must be on the list of depositary institutions
recognised for the purposes of Rules 31 to 34, as published in the EPO's
Official Journal. 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 EPO's Official Journal.

The applicant is strongly recommended to file the deposit receipt issued by

the depositary institution with the EPO since this document indicates, in
particular, the depositor and shows the information required under
Rule 31(1)(a) and (c). This information enables the EPO to certify any
requests to issue a sample (see A-IV, 4.2 and A-IV, 4.4) and the examining
division to establish whether the application satisfies the requirements
under 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 for the purposes of Rule 31. The
deposit receipt may be filed as long as proceedings before the EPO are
pending.

4.1.1 New deposit of biological material

Rule 34 If biological material deposited according to Rule 31 ceases to be available
from the recognised depositary institution, an interruption in availability shall
be 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 patent
application or patent.

The non-availability may occur because, for example:

(a) the material has degraded such that it is no longer viable

March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-17

(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 three
months of the depositor's being notified of the non-availability of the
organism by the depositary institution (Art. 4(1)(d) Budapest Treaty). This is
subject 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 the
depositary institution within six months of the date on which it is
published 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 three
months of 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 a
bilateral agreement, the above-mentioned six-month period is calculated
from the date when the EPO publishes the fact that the depositary
institution is no longer qualified to accept deposits of the biological material
in question under that bilateral agreement.

4.1.2 Application 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 and
the previously filed application referenced already satisfied the
requirements of Rule 31(1)(b) and (c) on its filing date, these requirements
will also be satisfied in respect of the European patent application.

If the information on the deposited biological material present in the

previously 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 months
of the filing date – Rule 40(3)). Even where the certified copy and any
translation required are filed up to two months from the filing date, if the
requirements of Rule 31(1)(c) are not satisfied, the time limit for rectification
of this deficiency according to Rule 31(2) is unaffected (see A-IV, 4.2).

4.2 Missing information; notification

When the Receiving Section notices that the information required under Art. 97(2)
Rule 31(1)(c) (indication of the depositary institution and accession number Rule 31
of the culture deposit) or the information and the document referred to in Art. 83
Rule 31(1)(d) (authorisation to refer to the deposit and consent to it being
made available) is not contained in or has not yet been submitted with the
application, it should notify the applicant of this fact, as this information can
only be validly submitted within the time limits specified in Rule 31(2). In the
case of missing information under Rule 31(1)(c), the deposit must be
Part A – Chapter IV-18 Guidelines for Examination in the EPO March 2024

identified in the patent application as filed in such a way that the accession
number submitted later can be traced back without ambiguity. This can
normally be done by indicating the identification reference 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 the accession 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 depositary institution receipt has been filed
(the applicant is advised to provide this receipt when filing the application, if
possible – see the notice from the EPO dated 7 July 2010,
OJ EPO 2010, 498). Filing the receipt is essential for identifying the
depositor, whose name needs to be established before the EPO can certify
a third party's request for the issue 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 sufficiency-of-disclosure requirement, is a
matter for the examining division. See also F-III, 6, in particular F-III, 6.3(ii),
as regards the examining 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).
Further processing is ruled out by Rule 135(2) for the time limit according to
Rule 31(2) for supplying the information required by Rule 31(1)(c) and (d).

4.3 Availability of deposited biological material to expert only

Rule 32(1) Under Rule 32(1)(a) and (b), until the date on which the technical
preparations for publication of the application are deemed complete, the
applicant may inform the EPO that, until the publication of the mention of
the grant of the European patent or, where applicable, for 20 years from the
filing date if the application has been refused or withdrawn or is deemed
withdrawn, the availability referred to in Rule 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 the
description 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 the

European patent application is published (see also A-VI, 1.3).

For Euro-PCT applications published in the international phase in an official

EPO language, the applicant must request the expert solution from the
International Bureau before completion of the technical preparations for
international publication, preferably using Form PCT/RO/134 (see the
notice from the EPO dated 7 July 2010, OJ EPO 2010, 498). For Euro-PCT
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-19

applications not published in the international phase in an official EPO

language, the applicant may request the expert solution under Rule 32(1)
before completion of the technical preparations for publication of the
translation of the international application required under Rule 159(1)(a)
(see the above notice).

If the applicant duly informs the EPO under Rule 32(1), the biological Rule 32(2)
material is issued only to an independent expert nominated by the
requester. The requirements and obligations applying to experts are laid
down by the EPO President and are deemed fulfilled by signing the
relevant declaration on a dedicated EPO form (see the decision 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 a declaration whereby the experts
undertake to comply with the pertinent requirements and obligations and
confirm that they know of no circumstances that might give rise to justified
doubts as to their independence or that might conflict in any other way with
their function as expert.

4.4 Requests for samples of biological material

From the date of publication of a European patent application relating to Rule 33
biological material, the biological material deposited in accordance with
Rule 31 will be made available on request to any person having the right to
inspect the files (see A-XI, 1). Such availability will be effected by issuing 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 and
that 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 the
related data in the EPO records, it may issue a sample of the biological
material to the requester or the expert, as applicable. The EPO is exempted
from 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 the
certified party. It is up to the certified party to pay the fees requested by the
recognised depositary institution direct to them.

5. Applications relating to nucleotide and amino acid sequences

If nucleotide and amino acid sequences within the meaning of Rule 30(1) Rule 57(j)
are disclosed in the European patent application, they are to be Rule 30(1)
represented in a sequence listing that complies with WIPO Standard ST.26. Rule 30(2)
WIPO Standard ST.26 is a worldwide standard that, in Annex VII, contains Art. 123(2)
recommendations on how to prevent potential added or deleted
subject-matter in sequence listings due to conversion from WIPO
Standard ST.25 to WIPO Standard ST.26. The EPO relies on these
recommendations as guidance for examination. Each nucleotide or amino
acid sequence extending over the minimum length as defined in the
Part A – Chapter IV-20 Guidelines for Examination in the EPO March 2024

standard and 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 must be filed
in electronic form, i.e. in XML format as required under WIPO
Standard ST.26, using EPO Forms 1001E, 1200E or 1038E, which are
available in EPO Online Filing and Online Filing 2.0, or on an electronic
data carrier (see A-II, 1.1.1 and OJ EPO 2023, A48). The sequence listing
must not be filed on paper or in PDF format. Regarding divisional
applications, see A-IV, 5.4. Nonetheless, if two or more sequence listings
are filed on the filing date, only the standard-compliant sequence listing will
be used as the basis for the search. See the decision 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, as well as the
decision of the President of the EPO dated 24 April 2023, OJ EPO 2023,
A46, and the notice from the EPO dated 24 April 2023, OJ EPO 2023, A47.

Where a sequence listing is filed or corrected after the filing date, the
applicant is required to submit a statement that it does not include matter
going beyond the content of the application as filed. Standard-compliant
sequence listings filed subsequent to the filing date, 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 part of the description is corrected or amended, a complete
new sequence listing must be filed. The corrected or amended sequence
listing must comply with the applicable WIPO standard, which depends on
the application's date of filing. For applications filed on or after 1 July 2022,
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 belonging to the prior art,

see F-II, 6.1.

Art. 90(3) The Receiving Section will inform the applicant of any deficiencies as to the
Rule 30(3) sequence listing or as to the necessary statement and issue an invitation to
remedy the deficiencies and pay a late furnishing fee within a
non-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 late
furnishing fee therefore does not have to be paid if the standard-compliant
sequence listing is filed after the filing date but before the Receiving
Section has issued the communication under Rule 30(3). If the
requirements of Rule 30 in conjunction with the decision of the President of
the EPO dated 9 December 2021 are not complied with in due time, where
appropriate following the invitation to do so from the Receiving Section,
which includes the payment of the late furnishing fee, the application will be
refused according to Rule 30(3). This also applies if a sequence listing is
subsequently filed in the required electronic format but still contains
deficiencies with respect to the WIPO standard. Such deficiencies will not
prompt the EPO to issue another invitation under Rule 30(3) triggering a
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-21

new period of two months unless the previous invitation did not draw the
applicant's attention to such remaining deficiencies (see J 7/11).

The applicant may request further processing of the application (see Art. 121
E-VIII, 2). Rule 135

5.1 Sequence information filed under Rule 56

The possibility of filing a sequence listing as a missing part of the
description is, as a rule, very rare. The principle of Rule 56 is that it must be
obvious from the application documents as filed that 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 the form of a sequence listing.
Rule 56, for example, is applicable where the description quotes sequence
identifier numbers (SEQ ID Nos.) but the sequences are not further
disclosed in the description. Although in such a case the disclosure is
missing in the form of a sequence listing, the Receiving Section is not
expected to identify such omissions as qualifying for Rule 56, and
according to Rule 56(1) the applicant may not invoke the omission of a
communication under Rule 56(1) or (2). However, applicants may file the
missing parts of the description relating to sequences on their own initiative
within two months of the filing date according 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 EPO President.

If the late-filed sequence information or sequence listing does not conform

to the above requirements, 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 of
Rule 30(1), no Rule 30(3) communication will be sent. In such a case the
late furnishing fee under Rule 30(3) does not fall due.

The above applies regardless of whether the late-filed parts of the

description result in a change of the filing date (see A-II, 5.3) or if the
late-filed missing parts can be based on the claimed priority, allowing the
original filing date to be maintained (see A-II, 5.4). If, however, the late-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 be
sent 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 the
description as a late-filed part of the description according to Rule 56, the
sequence listing so added, whether standard-compliant or not, is
considered part of the description on the filing date (regardless of whether
this has changed) and, consequently, is published with the European
patent application.
Part A – Chapter IV-22 Guidelines for Examination in the EPO March 2024

The rare possibility to file a sequence listing as a late-filed missing part

must, however, be clearly differentiated from those cases where the
application as filed contains:

– the complete sequence information in the body of the description but

no standard-compliant sequence listing

– a sequence listing that 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.

5.2 Sequence information filed under Rule 56a

Erroneously filed sequence listings may be corrected under Rule 56a
(see A-II, 6).

5.3 Sequence listings of an application filed by reference to a

previously 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 sequence
listings on its filing date, then those sequence listings form part of the
application 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 not
include the claims of the previously filed application in the reference, then
those sequences are not included in the European patent application as
originally filed and a sequence listing must be filed separately. If in such a
case the sequence listing is filed on the European patent application's filing
date, it is published with the European patent application.

A sequence listing complying with the applicable WIPO standard and filed
in the previously filed application after the filing date is not part of the
description (Rule 30(2)) and, therefore, not included in the reference to the
description and any drawings under Rule 40(1)(c). Consequently, the
applicant 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 the
compliance 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 filing date (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 does not comply with
Rule 30(1) in conjunction with the rules laid down by the EPO President,
the EPO will send a communication according to Rule 30(3) inviting the
applicant to correct any deficiencies and pay the late furnishing fee
(see A-IV, 5).
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-23

If the previously filed application referred to is a European patent

application or an international application filed with the EPO as receiving
Office, and the sequence listing contained satisfied the requirements of
Rule 30 or Rule 5.2 PCT on its date of filing then all the requirements of
Rule 30(1) are satisfied automatically on the filing date of the European
patent 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 instance because it was filed before the entry into force
of the new WIPO 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, the
applicant will have to ensure that all the requirements of Rule 30(1), in
conjunction with the rules laid down by the EPO President, are met. In
particular, the applicant must consider that any electronic
standard-compliant sequence listing filed on the filing date of the previously
filed application will in most cases not be part of the certified copy under
Rule 40(3) issued by the filing office: due to technical limitations, the
certified copy received by the EPO will in most cases contain a converted
sequence listing that is not standard-compliant. Hence, the applicant will
still have to provide a standard-compliant sequence listing to the EPO to
satisfy the above requirements. The same applies where the previously
filed application was a European patent 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 WIPO Standard ST.26 were not present
on the filing date. If this is not the case, the procedure in A-IV, 5 will be
followed (a communication under Rule 30(3) will be sent).

In alignment with the practice for divisional applications, a sequence listing

in WIPO Standard ST.25 format contained in the certified copy under
Rule 40(3) (e.g. converted from the TXT file available to the issuing office)
is excluded from the calculation of the additional fee for pages in excess of
35 (see also A-IV, 5.4 and A-III, 13.2).

5.4 Sequence listings of a divisional application

As an independent European patent application, a divisional application
must also satisfy the requirements of Rule 30 in conjunction with the
decision of the President of the EPO dated 9 December 2021 concerning
the filing of sequence listings, OJ EPO 2021, A96 (see G 1/05,
reasons 3.1). Without prejudice to the requirements of Art. 76(1), second
sentence, if a sequence listing is to form part of the description of the
divisional application, it must be 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)). Where the sequence listing of the parent
application is in a format complying with WIPO Standard ST.25, it must be
converted into one complying with WIPO Standard ST.26. To avoid the
potential risk of adding and/or losing subject-matter due to conversion,
applicants may additionally file the parent application's ST.25 sequence
listing in PDF format as part of the divisional application. In such cases, the
pages of the ST.25 sequence listing are excluded from the calculation of
Part A – Chapter IV-24 Guidelines for Examination in the EPO March 2024

the additional fee for pages in excess of 35 ("page fee"). The same practice
applies to divisional applications filed by reference where the certified copy
(Rule 40(3)) contains a sequence listing in ST.25 format (see also A-IV, 5.3
and A-III, 13.2). In order to comply with Rule 30(1), the sequence listing in
WIPO Standard ST.26 format must in such cases be filed subsequently
(see OJ EPO 2023, A98). The late furnishing fee under Rule 30(3) does not
fall due if the ST.26 sequence listing is filed before the EPO issues the
communication under Rule 30(3) (see A-IV, 5).

An applicant who has filed a WIPO Standard 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 is
intended to be used for search purposes only (i.e. not as part of the
description) in respect of the divisional application (the relevant check box
for this is preselected in section 38.3 on Form 1001). 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 for search purposes only (see OJ EPO 2021, A97, point 18).
However, since the content of the disclosure of the invention is the
responsibility of the applicant, any sequence listing that is to form part of
the description must be filed by them. The sequence listing of the earlier
application is, thus, not automatically added to the dossier of the divisional
application if

– the applicant files a WIPO Standard ST.26-compliant sequence

listing as part of the divisional application's description

– the sequence listing available in the earlier application does not

comply with WIPO Standard ST.26.

6. Conversion into a national application

Art. 135 The central industrial property office of a contracting state must apply the
procedure for the grant of a national patent or another protective right
provided for by the legislation of that state at the request of the applicant for
or the proprietor of the European patent under the circumstances specified
in Art. 135(1). If the request for conversion is not filed within the
three-month period specified in Rule 155(1), the effect referred to in Art. 66
will lapse (i.e. the European patent application will cease to be equivalent to
a regular national filing in the designated contracting states).

Art. 135(2) The request for conversion is to be made to the EPO, except where the
Rule 155(2) and application is deemed withdrawn under Art. 77(3); in this case the request
(3) is filed with the central industrial property office with which the application
was filed. That office will, subject to national security provisions, transmit
the request direct to the central industrial property offices of the contracting
states specified in it, together with a copy of the file relating to the
European patent application. If the central industrial property office with
which the application was filed does not transmit the request before the
expiry of 20 months from the filing date, or if claimed, from the priority date,
then Art. 135(4) applies (i.e. the effect of Art. 66 lapses).
March 2024 Guidelines for Examination in the EPO Part A – Chapter IV-25

If a request for conversion is filed with the EPO, it must specify the Art. 135(3)
contracting states in which the application of national procedures is desired Rule 155(2)
and be accompanied by a conversion fee. In the absence of the fee the
applicant or proprietor is notified that the request will not be deemed 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 patent application or patent.
March 2024 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
Where an application is found to be formally deficient during a formalities
examination, the Receiving Section or, where appropriate, the examining
division issues one or more communications to the applicant identifying all
the particular EPC requirements not met and, in the case of deficiencies
that can be corrected, inviting the applicant to correct them within specified
periods (see A-III, 16). In the exceptional case of communications that do
not detail all deficiencies, see A-III, 16.1. The applicant will be notified of
the consequences, e.g. application deemed withdrawn, priority right lost,
that result from the deficiencies or failure to take appropriate action within
due time.

In general, depending on the deficiency in question, either:

(i) a time limit will be specified by the EPO, subject to Rule 132, for
meeting 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 in due time,
then the legal effects that are envisaged will apply.

2. Amendment of application

2.1 Filing of amendments

Prior to receiving the European search report, the applicant may amend the Rule 58
application only if invited by the Receiving Section to remedy particular Rule 137(1) and
deficiencies, including when no claims are present in the application as (2)
originally filed. In this case, the applicant must rectify this deficiency by Art. 123(1) and
filing a set of claims in response to a communication according to Rule 58 (2)
(see A-III, 15). In the period between receiving the European search report Rule 68(4)
and a first communication from the examining division, i.e. also when the
application may still be with the Receiving Section, applicants may of their
own volition amend the description, claims and drawings (Rule 137(2)).
Where a search opinion accompanies the search report under Rule 62(1),
the applicant must respond to it by filing observations and/or amendments
(see B-XI, 8 for details and exceptions to this requirement). However, the
European patent application may not be amended in such a way that it
contains subject-matter extending beyond the content of the application 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).

2.2 Examination of amendments as to formalities

The Receiving Section examines amendments, filed before the receipt of Rule 58
the search report, for formal requirements. Such amendments must remedy Rule 137(1)
Part A – Chapter V-2 Guidelines for Examination in the EPO March 2024

the deficiencies notified by the Receiving Section. The description, claims

and drawings may be amended only to the extent sufficient to remedy the
disclosed deficiencies, which makes it necessary for the Receiving Section
to compare any amended description, claims and drawings 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 the wording is identical.
However, identity of wording with the application documents as originally
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 the
requirements of Art. 123(2), but this check is carried out by the
search and examining divisions)

(ii) the filing of missing parts of the description or missing drawings

according to Rule 56 (see A-II, 5).

Amendments that extend beyond the remedying of deficiencies and that

are filed prior to receipt of the search report may be taken into
consideration in the subsequent procedure, provided that on receipt of the
search report the applicants declare that they wish them to be maintained.

Examination as to formalities of amendments filed after the receipt of the

search 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.

3. Correction of errors in documents filed with the EPO

Rule 139, Linguistic errors, errors of transcription and mistakes in any document filed
1st sentence with the EPO may be corrected on request under Rule 139, first sentence.
Requests for such corrections may be made at any time, provided that
proceedings are pending before the EPO (see J 42/92). However, if the
error to be corrected concerns items that third parties might expect to be
able to take at face value and whose correction would jeopardise their
rights, the request for correction must be filed as soon as possible, and at
least in time for incorporation in the publication of the European patent
application. With regard to correction of priority claims, specific provisions
apply with a view to protecting the interests of third parties and allow the
applicant to correct priority claims and lay down a time 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 after this date, in particular after
publication of the application, under certain limited circumstances where it
is apparent on the face of the published application that a mistake has been
made. See J 2/92, J 3/91 and J 6/91 as well as J 11/92 and J 7/94. Each of
these decisions indicated situations under EPC 1973 where the requester
could correct priority data even though it was too late for a warning to be
published with the application. These same situations apply
March 2024 Guidelines for Examination in the EPO Part A – Chapter V-3

mutatis mutandis under EPC 2000 to the acceptance of requests to correct

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 Rule 56a
the application documents under Rule 56a(1) or 56a(3) (see A-II, 6), the
correction 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.

If the error is in the description, claims or drawings, the correction must be Rule 139,
obvious in the sense that it is immediately evident that nothing else could 2nd sentence
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 general
knowledge, and seen objectively and relative to the date of filing, from all 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 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 corrected
according to Rule 56a, regardless of whether this resulted in a change of
the filing date (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.

It is not allowable under Rule 139 to replace the complete set of application
documents (i.e. description, claims and drawings) with other documents
that the applicant had intended to file with the request for grant
(see G 2/95).

The examining division decides on the request for correction. If such a

request is pending before termination of the technical preparations for
publication, a reference to it is published on the front page.

In the case of electronic filing of European patent applications, the technical

documents (description, claims, abstract and drawings) may be attached in
their original format, provided it is one listed in the decision of the President
of the EPO dated 3 May 2023, OJ EPO 2023, A48. Under this decision,
these technical documents may also be attached in a format other than
those listed, provided that on filing the application the applicant informs the
EPO where it can reasonably acquire the corresponding software. If, on the
filing date, the documents making up the European patent application are
available both in the format provided by the Online Filing software and in
another admissible format in accordance with the above decision, the
documents in the latter format can also be used to determine whether a
request for correction of the description, claims or drawings is allowable.
March 2024 Guidelines for Examination in the EPO Part A – Chapter VI-1

Chapter VI – Publication of application; request

for examination and transmission of 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 period Art. 93(1)
of 18 months from the filing date or, where priority is claimed, from the
earliest priority date. Upon request from the applicant, the application may,
however, be published before that date, provided that the filing and search
fees have been validly paid and there are no formal deficiencies in the
application documents (see A-III, 1.1 and 16). Deficiencies not yet
remedied concerning the designation of inventor are not a bar to early
publication (see A-III, 5.4 and J 1/10). If the application is ready for grant
before expiry of the 18-month period, see C-IV, 7.1 and C-VI, 3.

If the applicant abandons the priority date, the publication is deferred,

provided that the EPO receives the abandonment notification before the
technical preparations for publication are completed. These preparations
are considered completed at the end of the day that comes five weeks
before expiry of the 18th month following the earliest date of priority if
priority is claimed, or following the filing date if the priority is abandoned or
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 preparations, the publication number
and intended publication date. Where the priority abandonment notification
is received after that time, publication, if not already completed, takes place
as if the priority date applied, although a notice as to the abandonment of
the priority will appear in the European Patent Bulletin (see F-VI, 3.5). The
same procedure 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 Rule 67(2)
withdrawn or withdrawn before the technical preparations for publication
are completed (see A-VI, 1.1). These preparations are considered
completed at the end of the day that comes five weeks before expiry of the
18th month following the filing or priority date (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 preparations, a request for a decision 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 for re-establishment of
rights under Art. 122 and Rule 136(1).

If, after termination of the preparations, the application is withdrawn,

non-publication cannot be guaranteed. However, the EPO will endeavour
(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
Part A – Chapter VI-2 Guidelines for Examination in the EPO March 2024

permits this without undue effort (see the notice from the EPO dated
25 April 2006, OJ EPO 2006, 406).

Rule 15 The application may be withdrawn by means of a signed declaration, which

should be unqualified and unambiguous (see J 11/80). EPO Form 1018,
which can be downloaded free of charge from epo.org, ensures that the
declaration is unambiguous (also in respect of any conditions for
withdrawal). It is therefore highly recommended to use it for withdrawing the
European patent application (see also the notice from the EPO dated
12 August 2019, OJ EPO 2019, A79). The applicant is bound by an
effective declaration of withdrawal (see C-V, 11) but may make it subject to
the proviso that the content of the application not be made known to the
public. This takes into account the procedural peculiarity that the applicant
making the declaration of withdrawal in the five weeks before the date of
publication cannot know whether publication can still be prevented.
However, neither the application nor the designation of a contracting state
may be withdrawn from the time a third party proves that they have initiated
entitlement proceedings and up to the date on which the EPO resumes the
proceedings for grant (see also E-VIII, 8).

1.3 Content of the publication

Rule 68(1), (3) The publication must contain the description, the claims and any drawings
and (4) as filed, including any sequence listing filed on the filing date and any
Rule 20 late-filed missing parts of the description or missing drawings filed
Rule 32(1) according to Rule 56(2) or (3) (see A-II, 5) or any correct (parts of the)
application documents according to Rule 56a(3) or (4) (see A-II, 6 and the
notice from the EPO dated 23 June 2022, OJ EPO 2022, A71). Where
correct (parts of the) application documents are included under
Rule 56a(4), the publication also contains the erroneous (parts of the)
application documents – clearly marked as erroneously filed – as the
application as filed. Where the procedure under Rule 56 or 56a is not
finalised when the technical preparations for publication are terminated, a
correction of the publication will be initiated as soon as the filing date and
content of the application are finally determined. The publication will also
specify, where possible, the person(s) designated as the inventor(s). If the
claims were filed after the filing date 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 individual
states have been withdrawn by the applicant before the termination of the
technical preparations for publication. When a European patent application
filed before 1 April 2009 is published, the states for which protection is
actually sought 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 the European Patent Register and the European Patent Bulletin
(see Information from the EPO, OJ EPO 1997, 479). For European
divisional applications, see A-IV, 1.3.4.
March 2024 Guidelines for Examination in the EPO Part A – Chapter VI-3

The publication also contains any new or amended claims filed by the Rule 68(2) and
applicant under Rule 137(2), together with the European search report and (4)
the abstract determined by the search division if both are available before Rule 66
the technical preparations for publication are terminated. Otherwise the
abstract filed by the applicant is published. The search opinion is not
published with the European search report (Rule 62(2)), though it is open to
file inspection (see A-XI, 2.1). If the EPO has received a communication
from 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
EPO President.

With the exception of documents that have to be translated, originals of

documents filed are used for publication purposes where they meet the
physical requirements referred to in A-VIII, 2; otherwise, the amended 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 an
electronic file are deemed to be originals (Rule 147(3)).

If a request for correction under Rule 139 of errors in the documents filed Rule 139
with 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 that third parties might expect
to be able to take at face value and whose correction would jeopardise their
rights, 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 of errors in the
description, claims or drawings (see A-V, 3).

The correction of errors occurring in the course of the European patent

application's publication 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)
accessible 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 is
published separately (also electronically).
Part A – Chapter VI-4 Guidelines for Examination in the EPO March 2024

2. Request for examination and transmission of the dossier to the

examining division

2.1 Communication
Rule 69(1) and The Receiving Section communicates to the applicant the date on which
(2) the European Patent Bulletin mentions the publication of the European
search report and draws attention to the provisions with regard to the
request for examination as set out in Art. 94(1) and (2) and Rule 70(1). In
the unlikely event that the communication wrongly specifies a later date
than the date of the publication's mention, 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 is
also informed that the designation fee(s) must be paid within six months of
the date on which the European Patent Bulletin mentions the search
report's publication (see A-III, 11.2 and 11.3).

Rule 70a(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), the
invitation under Rule 70a(1) is sent in a combined communication with the
communication according to Rule 69(1) (see C-II, 3.3).

2.2 Time limit for filing the request for examination

Art. 94(1) and The request for examination may be filed by the applicant up to the end of
(2) six months after the date on which the European Patent Bulletin mentions
Rule 70(1) the European search report's publication. The request for examination is
not deemed filed until the examination fee has been paid (see C-II, 1). If the
applicant does not file the request for examination and pay the examination
fee within the above time limit, then the procedure explained in A-VI, 2.3
applies.

Art. 78(1)(a) The mandatory request for grant form (EPO Form 1001) contains a written
Rule 41(1) 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 filing date and
prior to receipt of the European search report. In that case, the Receiving
Section invites them under Rule 70(2) to indicate within six months of the
date of the mention of the search report's publication in the European
Patent Bulletin whether they wish to proceed further with their application
(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 to the invitation
under Rule 70(2), the application will be deemed withdrawn under
Rule 70(3), and the examination fee will be refunded in its entirety
(see A-VI, 2.5).

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 the
examining division, see the AAD in Annex A.1 of Supplementary
publication 3, OJ EPO 2022.
March 2024 Guidelines for Examination in the EPO Part A – Chapter VI-5

The request for examination may not be withdrawn. Rule 70(1)

Regarding Euro-PCT applications entering the European phase,

see E-IX, 2.1.4 and E-IX, 2.5.2.

2.3 Legal remedy

If the request for examination is not validly filed by paying the examination Art. 94(2)
fee before expiry of the period under Rule 70(1), the application is deemed Rule 112(1)
withdrawn and the applicant is notified accordingly. In response to this
loss-of-rights communication, 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 the Rule 70(2) and
European search report has been transmitted to them, the Receiving (3)
Section invites them according to Rule 70(2) to indicate within six months of Rule 112(1)
the date of the mention of the search report's publication in the European Art. 121
Patent Bulletin whether they wish to proceed further with their application. If
they fail to respond to this request in time, the application is deemed
withdrawn and the applicants are notified accordingly. In this case, 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 the
right to the communication according to Rule 70(2).

Regarding Euro-PCT applications entering the regional phase, see

E-IX, 2.1.3 and E-IX 2.5.2.

2.4 Transmission of the dossier to the examining division

If the Receiving Section finds that the request for examination was filed in Art. 16
due time, or the wish to proceed further with the application was indicated Art. 18(1)
in due time (Rule 70(2)), it transmits the application to the examining Rule 10
division. Otherwise, it will notify the applicant of the loss of rights that 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 if the application relates
to biological material (see A-IV, 4)

(iii) the European search report, if applicable the search opinion, the
content of the abstract as drawn up by the search division and the
internal search note, if any

(iv) documents cited in the search report and publication document(s)

Part A – Chapter VI-6 Guidelines for Examination in the EPO March 2024

(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)

(vi) all relevant correspondence.

The Receiving Section will direct attention to any aspects of the application
requiring urgent attention by the examining division, e.g. any letters that
have to be answered before the application is examined in its proper turn.

2.5 Refund of examination fee

Art. 11 RFees The examination fee is refunded:

(i) in full if the European patent application is withdrawn, refused or

deemed withdrawn before substantive examination has begun
(Art. 11(a) RFees)

(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 first
invitation under Art. 94(3) issued by the examining division
proper or

– if no such invitation has been issued, before the date of the

communication under Rule 71(3) (Art. 11(b) RFees).

As concerns (i) above, this applies to all European patent applications that
are withdrawn, refused or deemed withdrawn on or after 1 July 2016. As
concerns (ii) above, this applies to all European patent applications for
which substantive examination began on or after 1 November 2016 (see
the Administrative Council decision of 29 June 2016, OJ EPO 2016, A48).

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) if the deficiencies are not duly remedied. These
include the following:

– minutes of consultations by phone or in person, accompanied by an

invitation to remedy deficiencies

– communications relating to the "completely contained" criterion under

Rule 56(3) or 56a(4)

– summonses to oral proceedings under Rule 115(1) to which a

communication complying with the requirements of Art. 94(3) and
Rule 71(1) is annexed.

In contrast, communications addressing purely formal deficiencies and

issued by formalities officers as part of the duties entrusted to them, even if
issued on the basis of Art. 94(3), do not constitute communications under
March 2024 Guidelines for Examination in the EPO Part A – Chapter VI-7

Art. 94(3) "issued by the examining division proper". Likewise,

communications issued by the examining division proper 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 and

wanting to withdraw the application only if certain to receive the 100%
refund may make withdrawal contingent upon the refund ("conditional"
withdrawal). The date of the start of examination (C-IV, 7.1) is indicated by
means of EPO Form 2095 in the public part of the dossier and is thus open
to file inspection in the European Patent Register after the patent
application's publication. If EPO Form 2095 is not on file, substantive
examination is deemed to have started on the date on which the first
communication from 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 applicant can request the
relevant information from the EPO or access it electronically via the MyEPO
Portfolio and My Files services. For more details, see OJ EPO 2013, 153,
and OJ EPO 2023, A89.

2.6 Reduction in examination fee

Where applicants having their residence or principal place of business Art. 14(4)
within the territory of a contracting state having an official language other Rule 6
than English, French or German and nationals of that state who are Art. 14(1) RFees
resident abroad make use of the options provided for under Art. 14(4), the
examination fee is reduced under certain circumstances (Rule 6(3) to (7) in
conjunction 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 Rule 70a
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 withdrawn
(Rule 70a(3)). For more details, see B-XI, 8.
March 2024 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 Art. 14(1) and
in a language other than an official EPO language (English, French and Art. 14(2)
German), a translation into one of the official languages must be filed within Rule 6(1)
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 the applicable
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" (see Rule 6(3) to (7)
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).

Filing a European patent application in a single language is not a

requirement for according a filing date (Art. 90(3) in conjunction with
Art. 14(2)). However, where an application is filed in more than one
language, the EPO will invite the applicant to remedy the deficiency.

1.2 Filing by reference

Where the description is filed by reference to a previously filed application Rule 40(3)
(see A-II, 4.1.3.1) and the latter is not in an official EPO language, the
applicant must also file a translation into one such language within two
months of the filing date.

1.3 European divisional applications; Art. 61 applications

European divisional applications must be filed in the language of the Rule 36(2)
proceedings of the earlier (parent) application. Alternatively, if the earlier
(parent) application was not in an official EPO language, the divisional
application may be filed in the language of the earlier (parent) application.
In this case a translation into the language of the proceedings of the earlier
application must be filed within two months of the filing of the divisional
application.

The same applies to the filing of a new European patent application under Art. 61(2)
Art. 61(1)(b).

1.4 Invitation to file the translation

Where the translation is not filed in due time, the EPO will invite the Art. 90(3)
applicant to rectify this deficiency within a non-extendable period of two Rules 57 and 58
months. Failure to file the translation in time in response to this invitation
results in the application being deemed withdrawn under Art. 14(2), in
which case further processing is ruled out (see A-III, 14).

2. Language of the proceedings

The official EPO language (English, French or German) in which the Art. 14(3)
application is filed, or into which it is subsequently translated, constitutes
the "language of the proceedings". Where the EPO invites the applicant to
file the translation (see A-VII, 1.4), the invitation will be sent by default in
Part A – Chapter VII-2 Guidelines for Examination in the EPO March 2024

English with an update to the language of the proceedings on receipt of the

translation, 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).

Rule 3(2) Where European patent applications are filed in one of the official EPO
languages, 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 filing date will need to be filed in the language of
the proceedings.

Example: If an application is filed without claims in Japanese and is then

translated 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

3.1 Parties' written submissions

Rule 3(1) With the exception of amendments to the European patent application or
European 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

Art. 14(3) and Natural or legal persons having their residence or principal place of
Art. 14(4) business within an EPC contracting state having a language other than
English, French or German as an official language, and nationals of that
state resident abroad, may file documents that have to be filed within a time
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).

Rule 6(2) 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 for
review, if this 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

Rule 53(3) Where the certified copy of the previous application whose priority is
claimed (priority document) is not in an official EPO language, a translation
into one such language 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 the patentability 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.
March 2024 Guidelines for Examination in the EPO Part A – Chapter VII-3

See A-III, 6.8 for more information on the translation of priority documents.

3.4 Documents filed as evidence

Documents to be used as evidence may be filed in any language. This Rule 3(3)
applies to all proceedings before the EPO and, especially, to publications
(for instance, an extract from a Korean periodical cited by 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 of it in one of the official EPO languages, to be chosen by the person
filing the document. If the document is filed by the applicant in pre-grant
proceedings, the EPO should require a translation of the document or
relevant parts of it 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 and will depend on the language concerned and the
length of the document or relevant parts, taking account of 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 Rule 114(1)
EPO's official languages. Supporting documents, e.g. prior-art citations, can
be written in any language.

If the third-party observations and/or prior art are not in an official EPO
language (Art. 14(1)), the EPO may invite the third party, if identifiable, to
submit a translation of the observations and, where appropriate, of the cited
prior art in one such language within a period according to Rule 132.

4. Derogations from the language of the proceedings in oral

proceedings
This subject is dealt with in E-V. Rule 4

5. Documents filed in the wrong language

Documents making up the European patent application can only be filed in Art. 14(1)
the wrong language on the occasion of its amendment, since the
application can originally be filed in any language (see A-VII, 1.1). In such a
case, as well as if any other document is not filed in the prescribed
language or any required translation is not filed in due time, the document
is deemed not filed. The person who has filed the document will be notified
accordingly by the EPO. Even though deemed not filed, the document
concerned will become part of the file and therefore accessible to the public
according to Art. 128(4).

In the event of failure to file a translation of the filed documentary evidence Rule 3(3)
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 a
certified copy of the earlier application for which priority is claimed or filing
Part A – Chapter VII-4 Guidelines for Examination in the EPO March 2024

the translation of the priority document under Rule 53(3)) are not filed in an
official EPO language, they will be included in the file without note being
taken of their content.

Rules 79(1) Observations by third parties and notices of oppositions will be

and 114(2) communicated to the applicant or the patent proprietor even if they are
deemed not filed.

6. Languages of publication
Art. 14(5) and (6) European patent applications are published only in the language of the
proceedings, whereas European patent specifications 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

Art. 14(2) 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 with
the application as filed in the original language (e.g. with the originally filed
Japanese-language application). This applies similarly to translations filed
for Euro-PCT applications upon entry into the European phase (see
E-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 that extends the protection conferred.

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

Rule 5 The EPO has the discretion to require the filing of a certificate that a
translation 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 received unless the EPC provides otherwise.
Further processing is possible according to Art. 121 and Rule 135.

As a rule, certification is not required in respect of the translations of the

claims in the other two official languages required under Rule 71(3).

8. Authentic text of the application or patent

Art. 70(1) The text of an application or patent in the language of the proceedings is
Art. 14(8) the 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 2024 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 Art. 133(1) and
represented by a professional representative in proceedings before the Art. 133(2)
EPO; this holds for all parties to such proceedings, e.g. applicants, Art. 90(3)
proprietors, opponents. A party (natural or legal person) who has neither Rule 152
residence nor principal place of business in a contracting state must be
represented by a professional representative; the party must act through a
professional representative in all proceedings other than in filing the
application (which includes all acts leading to the accordance of a date of
filing) or initiating the European phase within the applicable time limit (see
E-IX, 2.3.1). To "be represented" is to be interpreted as meaning due
representation, including not only notice of the appointment of a
professional representative but also, where applicable, the filing of
authorisations of the appointed representative (see A-VIII, 1.6).

Parties having their residence or principal place of business in a contracting

state may also act direct before the EPO, even if they have appointed a
professional 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 proceedings and do not have either
residence or principal place of business within the territory of one of the
contracting states fail to meet the requirement set out under Art. 133(2) in
the course of the opposition procedure (e.g. the representative withdraws
from the opposition case or is deleted from the 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 oral proceedings and point out
that if they appear alone they will not be entitled to act before the division.

1.2 Representation by a professional representative; list of

professional representatives; associations
Representation of natural or legal persons in proceedings before the EPO Art. 134(1),
may only be undertaken by professional representatives whose names Rule 152(11)
appear on a list kept for this purpose by the EPO. See, however, also
A-VIII, 1.5. The Legal Division has sole responsibility for entries and
deletions in the list of professional representatives (see Art. 20(1) and the
decision of the President of the EPO dated 21 November 2013, OJ EPO
2013, 600). A group of at least two professional representatives registered
with the EPO as an association within the meaning of Rule 152(11) may be
appointed collectively to represent a party under that name (see OJ EPO
2013, 535). In that 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 the association rather than one
particular member. Parties are recommended to clearly specify whether
they wish to appoint the association or an individual representative
Part A – Chapter VIII-2 Guidelines for Examination in the EPO March 2024

belonging to that association (see also A-VIII, 1.7). The Legal Division is
responsible for the registration of associations (OJ EPO 2013, 600).

1.3 Representation by an employee

Art. 133(3) Parties having their residence or principal place of business in a contracting
Art. 134(1) state are not obliged to be represented by a professional representative in
Rule 152 proceedings before the EPO. They may, irrespective of whether they are
legal or natural persons, act through an employee, who need not be a
professional representative but who must always file an authorisation (see
A-VIII, 1.6 and A-VIII, 1.7).

1.4 Common representative

Art. 133(4) Joint applicants, joint proprietors of patents and more than one person
Rule 151(1) and (2) giving joint notice of opposition or intervention may act through a common
representative. If the request for the grant of a European patent, the notice
of opposition or the request for intervention does not name a common
representative, the party first named in the relevant document will be
considered the common representative. The common representative can
thus be a legal person. However, if one of the parties is obliged to appoint a
professional representative and has done so, this representative will be
considered the common representative acting on behalf of all parties. In
such a case, no other party can act as common representative. However, if
the first named party in the document has appointed a professional
representative, that representative will be considered to be acting on behalf
of all parties.

If the European patent application or patent is transferred to more than one

person, and such persons have not appointed a common representative,
the preceding provisions will apply. If such application 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
(J 10/96).

In the case of joint applicants for whom a change of representative is

requested, any authorisation must be signed by all applicants. If this is not
the case, the parties will likewise be invited to appoint a common
representative before registration can take place.

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.

1.5 Representation by a legal practitioner

Art. 134(1) and Representation in proceedings under the EPC may also be undertaken in
Art. 134(8) 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 their
place of business within such state, to the extent that they are entitled,
within the said state, to act as a professional representative in patent
matters. Legal practitioners entitled to act as representatives before the
March 2024 Guidelines for Examination in the EPO Part A – Chapter VIII-3

EPO are not entered on the list of professional representatives (see

J 18/99). However, they are registered in an internal database administered
by the Legal Division (see OJ EPO 2013, 600).

1.6 Signed authorisation

Representatives acting before the EPO must, on request, file a signed Rule 152
authorisation (see A-VIII, 3.2) within a two-month period specified by the
EPO (see E-VIII, 1.6). Both individual and general authorisations (see
A-VIII, 1.7) within the meaning of Rule 152(4) serve the same purpose. For
general authorisations, the indication of the registration number is
equivalent to the filing of the authorisation itself. The filing of an
authorisation is distinct from the appointment of a representative for a
specific case. If the requirements of Art. 133(2) are not fulfilled, the same
period will be specified for the communication 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 of
the same association or law firm) performs a procedural act on behalf of a
party to proceedings, e.g. filing a reply to the communication under
Rule 71(3), provided that it is apparent from the submission that they are
acting at the request of that party without the intention 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 decision).

However, a legal practitioner entitled to act as a 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, must always file a signed authorisation (see Art. 2 and
Art. 3 of the above decision) to be in a position to validly perform procedural
acts. In Euro-PCT proceedings, persons representing applicants in these
capacities are not required to file signed authorisations if they have already
filed an authorisation expressly covering proceedings established by the
EPC with the EPO as receiving Office, ISA or IPEA. Where a
representative is appointed to act on behalf of the applicant in several of
that party's applications, it is not necessary to file an individual authorisation
for 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 the
authorisation 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 the
requirement 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
Part A – Chapter VIII-4 Guidelines for Examination in the EPO March 2024

appointing several representatives can authorise them collectively as an

association instead of having to do so 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.

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 President
of 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 the
authorisation provides to the contrary (Rule 152(9)).

1.7 General authorisation

Art. 133(2) An authorisation may cover more than one application or patent. Also, a
Rule 152(2), (4), (7), general authorisation enabling a representative to act in respect of all the
(8) and (9) patent transactions of the party making the authorisation may be filed.
However, an authorisation given for EP proceedings (EPO Form 1004)
does not extend to UP proceedings unless this is indicated by selecting the
corresponding box on EPO Form 1004. Alternatively, a separate general
authorisation solely for UP proceedings may be used (EPO Form 7004). A
corresponding procedure applies to the withdrawal of an authorisation.

However, the filing of a general authorisation is distinct from the

appointment of a representative for a specific case. The party granting a
general authorisation is not bound to appoint one of the representatives
listed in any specific procedure before the EPO. Nor does a general
authorisation allow the EPO to assume, without any additional information,
that a person listed should be appointed as a representative in a specific
case (see J 17/98). Therefore, in a specific case, a party wishing to appoint
the representative(s) listed in a general authorisation must notify the EPO
accordingly by referring to the general authorisation number already
registered. The Legal Division is responsible for the registration of general
authorisations (OJ EPO 2013, 600).

1.8 Invitation to file authorisation and legal consequence in case of

non-compliance
Rule 152(2) and Where the appointment of a legal practitioner entitled to act as professional
(6) representative in accordance with Art. 134(8), or an employee acting for an
Rule 132 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 the
authorisation within a two-month period specified by the EPO
(see E-VIII, 1.6). Where a party having neither residence nor principal place
of business within a contracting state has failed to fulfil the requirements of
Art. 133(2) (see A-VIII, 1.1), the invitation will be sent direct to the party
concerned. The same period will be specified for the communication of the
appointment and, where applicable, 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
March 2024 Guidelines for Examination in the EPO Part A – Chapter VIII-5

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 taken. The party is informed accordingly.

2. Form of documents

2.1 Documents making up the European patent application

The physical requirements that the documents making up the European
patent application, i.e. request, description, claims, drawings and abstract,
must satisfy are set out in Rule 49(2) in conjunction with the decision of the
President of the EPO dated 25 November 2022 (OJ EPO 2022, A113). 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 and chemical and mathematical formulae – are a formal
deficiency (see Art. 2(7) of the decision of the President of the EPO dated
25 November 2022 and 50(1)). The EPO President 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 are published in OJ EPO 1993, 59. The particular
requirements relating to drawings are dealt with in A-IX.

2.2 Replacement documents and translations

Replacement documents and translations in an official language of Rule 49(1)
documents filed under the provisions of Art. 14(2) or Rule 40(3) are subject Rule 50(1)
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 Rule 50(2)
be typewritten or printed with a left margin of about 2.5 cm on each page
(Art. 3 of the decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113).

2.4 Number of copies

Documents relating to more than one application or patent (e.g. individual
or general authorisation) or having to be communicated to more than one
party, only need to be filed in one copy (see also A-VIII, 1.5). However, in
the case of letters accompanying submitted documents (in particular EPO
Form 1038), a separate copy must be filed 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 EPO Form 1038). Each letter
(or EPO Form 1038) must be duly signed and indicate one or the other of
the two application numbers in respect of which the priority document is
being filed (see also A-VIII, 3.1).
Part A – Chapter VIII-6 Guidelines for Examination in the EPO March 2024

2.5 Filing of subsequent documents

Rule 2(1) After a European patent application has been filed, the documents referred
to in Rule 50 may be filed by delivery by hand, by postal services (see A-II,
1.2) or by means of electronic communication (see A-II, 1.1). These include
filing electronically by means of EPO Online Filing, Online Filing 2.0, the
EPO web-form filing service, the EPO Contingency Upload Service or, for
certain procedural actions, MyEPO Portfolio (see A-II, 1.1.1) and by fax
(see A-II, 1.1.2). Authorisations are, however, excluded from filing by fax or
using the EPO web-form filing service. Priority documents are excluded
from filing by fax, using the EPO web-form filing service or the EPO
Contingency Upload Service. For the means 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 3 May 2023,
OJ EPO 2023, A48).

If subsequent documents relating to European patent applications are filed

by fax, written confirmation reproducing the contents of those documents
and complying with the requirements of the Implementing Regulations to
the EPC must be supplied on invitation from the EPO within two months of
the invitation's notification. If the applicant fails to comply with this request
in time, the fax is deemed not to have been 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) If, in a fax, a party avails itself of Art. 14(4), the subsequent copy must be
Rule 6(2) filed in the same language as the fax, in which case the copy is deemed
received on the fax's filing date. The period under Rule 6(2) for filing the
translation under Art. 14(4) begins on the day following the fax's filing date.

Subsequent documents may not be filed by email 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 in Rule 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. Signature of documents

3.1 Documents filed after filing the European patent application

Rule 50(3) All documents, other than annexes, filed after filing the European patent
Art. 133 application must be signed by the person responsible. Under Art. 133, 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
March 2024 Guidelines for Examination in the EPO Part A – Chapter VIII-7

European patent application may therefore be effectively signed only by

these persons.

Documents such as the priority document or its translation must be

accompanied by a cover letter or at least bear a note on the document itself
addressed to the EPO and duly signed by a person authorised to act before
the EPO. This also applies, for example, to the designation of inventor if
this has been signed by an applicant with neither residence nor principal
place of business in one of the contracting states. As regards the
authorisation, see A-VIII, 1.6. The signature of the entitled person
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.

Submissions filed electronically must be signed by an entitled person, Rule 50(3)

although they may be transmitted using a smart card issued to another
person. 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 it
within a fixed time limit. This also applies if the document in question bears
the signature of an unentitled person (e.g. the secretary of an authorised
representative), a deficiency which for the purposes of the time limits under
way is treated as 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 is deemed not received. 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, certain documents
forming part of the application must be signed. These include the request
for grant, the designation of the inventor and, where applicable, the
authorisation of a representative. If a European patent application is filed
electronically, a facsimile image of the signer's handwritten signature, a
text-string signature or an enhanced electronic signature, as applicable,
may be used to sign the above documents (Art. 12 of the decision of the
President of the EPO dated 3 May 2023, OJ EPO 2023, A48).

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

If documents are filed electronically using EPO Online Filing, the signature
may take the form of a facsimile signature, a text-string signature or an
enhanced electronic signature. Where documents are filed using Online
Filing 2.0, the EPO web-form filing service or the EPO Contingency Upload
Service, the signature may take the form of a facsimile signature or a text-
string signature. Procedural actions performed in MyEPO Portfolio require a
signature in the form of a text string (see OJ EPO 2023, A89).

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
Part A – Chapter VIII-8 Guidelines for Examination in the EPO March 2024

to sign. An enhanced electronic signature is an electronic signature issued

or accepted by the EPO (see OJ EPO 2023, A48).

For signatures accepted on electronically filed assignment documents,

see E-XIV, 3.

Where a document is filed by fax, the reproduction on the fax of the

signature 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).

Where a document is filed on paper, a rubber stamp impression of a party's

name, whether a natural or legal person, must be accompanied by a
personal signature. Initials or other abbreviated 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 entitlement of a person signing on behalf of a legal
person is not checked by the EPO, 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.

3.4 Joint applicants

Rule 151(1) 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, where
applicable, the appointment of the common representative. This also
applies if one of the applicants is considered the common representative
under 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 under Rule 50(3). Authorisations on behalf of more than
one applicant must be signed by all applicants.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IX-1

Chapter IX – Drawings
This chapter deals with the requirements to be met by drawings contained Rule 49
in the application or patent. Guidance on the presentation of application Rule 50
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 practice described below.

1. Graphic forms of presentation considered as drawings

1.1 Technical drawings

All types of technical drawings are considered drawings within the meaning
of 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", which include functional diagrams and
graphic representations of a given phenomenon expressing the relationship
between two or more magnitudes.

Other graphic forms of presentation – chemical and mathematical formulae

and tables – may also be included in the description, claims or abstract but
are not subject to the same requirements as drawings (see Art. 2(8) of the
decision of the President of the EPO dated 25 November 2022). These are
dealt with in A-IX, 11. If they are nevertheless submitted as drawings, they
are subject to the same requirements as drawings.

1.2 Photographs
The EPC makes no express provision for photographs; they are
nevertheless allowed where it is impossible to present in a drawing what is
to be shown and provided that they are directly reproducible and fulfil the
applicable requirements for drawings (e.g. paper size, margins, etc.).
Colour photographs can be submitted but will be scanned, printed and
made available via file inspection only in black and white. If colours are
necessary 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 their copies) are to be numbered like drawings 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 intended OJ EPO 2022, A113
for drawings and may not 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.
Part A – Chapter IX-2 Guidelines for Examination in the EPO March 2024

2.2 Reproducibility of drawings

Rule 49(2) The drawings must be presented in such a way as to allow their electronic
or direct reproduction by scanning, photography, electrostatic processes,
photo offset and microfilming in an unlimited number of copies.

2.3 Figure accompanying the abstract

As regards the figure, or exceptionally figures, to accompany the abstract in
a European patent application containing drawings, see A-III, 10.3 and
F-II, 2.3 and 2.4. The figure(s) illustrating the abstract must be the figure(s)
most representative of the invention and must be chosen from the drawings
accompanying the application. It is therefore not permissible to draw a
special figure for the abstract that differs from the other figures in the
application.

3. Conditions if drawings are filed on paper

OJ EPO 2022, A113 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 and
durable (recommended paper weight: 80-120 g/m2, see OJ EPO 1994, 74).

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.

Each sheet must be reasonably free from erasures and must be free from
alterations. Non-compliance with this rule may be authorised if the
authenticity 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 white
masking fluid, may be used, provided they are indelible and comply with the
other requirements of the decision of the President of the EPO dated
25 November 2022.

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.) that leave
only slight marks in the margin may be used.

4. 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 or
used 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.

4.2 Numbering of sheets of drawings

All sheets making up 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.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IX-3

The numbering on sheets of drawings must be positioned within the

maximum usable surface area as defined in Art. 1(1) of the decision of the
President of the EPO dated 25 November 2022. Instead of appearing in the
middle of the sheet, the numbering may, however, be positioned towards
the right-hand side if the drawing comes too close to the middle of the edge
of the usable surface. This numbering should be clear, for example in
numbers larger than those used for reference numbers.

All application sheets must be numbered consecutively. The application

consists of all the following documents: the request, the description, the
claims, the drawings and the abstract. The numbering should preferably be
effected using three separate series of numbering, each beginning with
one. The first series applies to the request only and is already printed on
the form to be used. The second series commences with the first sheet of
the description and continues through the claims until the last sheet of the
abstract. The third series applies only to the sheets of the drawings and
commences with the first sheet of such drawings.

There are no objections to including the description, claims, abstract and

drawings in one series of numbering beginning with one. The series of
numbering 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, and
figures 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.

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, the
numbering 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 to
illustrate the invention, it should not be numbered and the abbreviation
"FIG" must not appear. This also applies to numbers and letters 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.
Part A – Chapter IX-4 Guidelines for Examination in the EPO March 2024

An exception to the above may be permitted only as regards partial figures

intended to form one whole figure, irrespective of whether 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).

5.3 Whole figure

Where figures drawn on two or more sheets are intended to form one whole
figure, the figures on the various sheets must 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 not
next to one another on a sheet. This practice is permitted. However, the
relationship 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 the
sections shown.

6. Prohibited matter
Rule 48(1) and The provisions on the omission of prohibited matter within the meaning of
(2) Rule 48(1)(a) (see A-III, 8.1 and F-II, 7.2) also apply to drawings.

Rule 48(1)(c) Statements or other matter of the type referred to in Rule 48(1)(c)
(see F-II, 7.4) that are likely to appear in drawings are, in particular, various
kinds of advertising, e.g. where the applicant includes in the drawing
obvious business or departmental markings or a reference to an industrial
design or model, whether registered or not. Doing so introduces matter that
is clearly irrelevant or unnecessary, which is expressly prohibited by
Rule 48.

7. Executing of drawings

7.1 Drawings of lines and strokes

The decision of the President of the EPO dated 25 November 2022 sets
certain standards for lines and strokes in the drawing to permit satisfactory
reproduction by the various means described in Art. 2 of that decision.

The drawings must be executed in black. Colour drawings can be

submitted but will be scanned, printed and made available via file
inspection in black and white only (see also A-IX, 1.2 in respect of colour
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 account
the scale, nature, execution and perfect legibility of the drawing and of the
reproductions.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IX-5

All lines must be drawn with the aid of drafting instruments save those for
which no instrument exists, e.g. irregular diagrams and structures.

7.2 Shading
The use of shading in figures is allowed provided it assists in their
understanding 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 a
normal 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.

Hatching should not impede the clear reading of the reference signs and
leading lines. Consequently, if it is not possible to place references outside
the hatched area, the hatching may be broken off wherever references are
inserted. 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 essential details would not be
clearly distinguished when reproduced electronically or photographically
with a linear reduction in size to two-thirds, then the figure must 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 is still 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 the
drawing is reproduced in reduced format. This excludes indications of size
such as "actual size" or "scale ½", both on the drawings and in the
description, in favour of graphic representations of the scale.

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 the
drawing, acceptable text matter, graduations on scales, etc., must be
simple and clear, and not used in association with any brackets, inverted
commas, circles or outlines whatsoever. Signs such as 6' and 35" are not
regarded as including inverted commas and are therefore permitted.
Part A – Chapter IX-6 Guidelines for Examination in the EPO March 2024

Numbers, letters and reference signs should preferably all be laid out the
same way up as the diagram 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 and
extend at least as far as the features indicated.

Leading lines must be executed in the same way as lines in the drawing in
accordance with Art. 1(2)(a) of the decision of the President of the EPO
dated 25 November 2022.

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:

(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

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.

7.5.4 Consistent use of reference signs in description, claims and

drawings
Reference signs not mentioned in the description and claims may not
appear 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 the
claims, see F-IV, 4.18.

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 as
a result of amendments to the description involving the deletion of pages or
whole paragraphs. One solution would be to strike out on the drawing
reference signs that have been deleted in the description. Such corrections
must be made in accordance with Art. 2(11) of the decision of the President
of the EPO dated 25 November 2022.

Where for any reason a figure is deleted then the applicant or proprietor
ought to delete all reference signs relating solely to that figure appearing in
the description and claims.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IX-7

In the case of applications dealing with complex subjects and incorporating

a large number of drawings, a reference key may be attached to the end of
the description. This key may take whatever form is appropriate and
contain all the reference signs together with the designation of the features
that they indicate. This method could have the advantage of standardising
the terminology used in the description.

7.5.5 Consistent use of reference signs in drawings

The same features, when denoted by reference signs, must be denoted by
the same signs throughout the application.

It would be very confusing if a single feature were allocated different

reference signs in the various drawings. However, where several variants
of an invention are described, each with reference to a particular figure, and
where each variant contains features whose function is the same or
basically the same, the features may, if this is indicated in the description,
be identified by reference numbers made up of the number of the figure to
which it relates followed by the number of the feature, which is the same for
all variants, so that a single number is formed, e.g. the common feature
"15" would be indicated by "115" in Fig. 1 while the corresponding 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 to be considered can be
indicated at the same time. It can also make complex cases involving many
pages of drawings easier to read. Instead of the common reference sign
being prefixed by the number of a figure, it may, when the individual
variants are described with reference to particular groups of figures, be
prefixed by the number of the particular variant to which 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 for

clarity purposes, 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 the second figure be
surrounded by a finely drawn or "dot-dash" circle in the first figure
pinpointing its location without obscuring the figure.

8. Text matter on drawings

It should first be noted that Art. 1(2)(d) and (g) of the decision 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.

The drawings must not contain text matter except when absolutely
indispensable, and then only a single word or a few words. As flow sheets
and diagrams are considered drawings (see A-IX, 1.1), text must be kept to
the absolute minimum indispensable for understanding the drawing.
Part A – Chapter IX-8 Guidelines for Examination in the EPO March 2024

Where text matter is deemed indispensable for understanding the drawing,

only the barest minimum of words should be used, and a space free of all
lines 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 understood
since the essential information may not be adequately conveyed by the
graphical part of the drawing. In such cases, the requirement to keep the
text to an absolute minimum may be relaxed somewhat to allow more than
a 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.

9. Conventional symbols
Known devices may be illustrated by symbols having a universally
recognised conventional meaning, provided no further detail is essential for
understanding the subject-matter of the invention. Other signs and symbols
may be used on condition that they are not likely to be confused with
existing conventional symbols, that they are readily identifiable, i.e. simple,
and 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 are permitted to the drawings, as well as to the other
documents. These amendments may be made at the request of the party
concerned or 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 as

apply in respect of amendments to other application documents and
therefore do not require further analysis here. See also 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 the
examiner must always bear in mind, is that they must not extend the
content of the application as filed, i.e. they must not have the effect of
introducing new material.

If drawings that depart substantially from the physical requirements laid

down in the Implementing Regulations are filed to establish a particular
date of filing or retain a priority date, the Receiving Section will permit them
to be amended or replaced to provide drawings complying with the
Implementing Regulations, provided that it is clear that the amendments do
not introduce new material into the application. In view of this proviso,
applicants should take care that any "informal" drawings filed clearly show
all the features necessary to illustrate the invention.
March 2024 Guidelines for Examination in the EPO Part A – Chapter IX-9

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 by
hand 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 and
paginated with it. It is recommended in such cases that each formula be
designated by a reference sign and the description should contain
references to these formulae whenever necessary.

Chemical or mathematical formulae must employ symbols in general use

and must be drawn in such a way that they are completely unambiguous.
Figures, letters and signs that are not typed must be legible and identical in
form in the various formulae, irrespective of the document in which they
appear.

Chemical or mathematical formulae appearing in the text of the application

or 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.

All mathematical symbols used in a formula appearing 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, the
mathematical 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 on
one or more sheets annexed to the description and paginated with it.

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.

Both characters and tables alike must satisfy the requirements of Art. 2(7)
and (4) of the decision of the President of the EPO dated
25 November 2022 regarding the maximum usable surface areas of sheets.

11.2.2 Tables in the claims

The claims may include tables if their subject-matter indicates a need for
them. In this case, the tables must be included in the text of 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. The claims may refer
to other application documents only where this is absolutely necessary
Part A – Chapter IX-10 Guidelines for Examination in the EPO March 2024

(see F-IV, 4.17). The mere desire to avoid copying said documents does
not constitute absolute necessity.
March 2024 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, to renew a
European patent and to obtain legal remedies. Fees may also need to be
paid by third parties, as is the case, for example, for issuing 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 the date 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 at
regular intervals in the Official Journal. lnformation relating to fees and
methods of payment, including the EPO bank account for payments in
euro, can also be found on the EPO website (epo.org).

The EPC and its Implementing Regulations lay down the time limits for
paying fees and the legal consequences of non-compliance with the time
limits. The time limits for payment and the legal consequences of
non-payment are dealt with in the chapters of the Guidelines covering the
respective 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 with
below.

2. Methods of payment
Fees may be paid: Art. 5 RFees

(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 reallocation of a refund (see A-X, 10.4).

Part A – Chapter X-2 Guidelines for Examination in the EPO March 2024

3. Currencies
Art. 5 RFees The fees due to the EPO must be paid in euro. A debit order must be in
Point 1 ADA euro.

4. Date considered as date on which payment is made

4.1 Payment or transfer to a bank account held by the European

Patent Organisation
Art. 7(1), The date on which payment is deemed made is the date on which the
(3) and amount payable actually enters the European Patent Organisation's bank
(4) RFees account. The date on which payment is deemed made may therefore be
the day following the payment or transfer or an even later date in the event
of delays within the bank. However, payment may still be considered made
in due time, despite being paid late, if the payment or transfer was effected
before expiry of the time limit for payment in a contracting state and if
evidence to this effect is 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 19 July 2022, OJ EPO 2022, A81.

4.2 Deposit accounts with the EPO

4.2.1 General remarks

Art. 7(2) RFees The Arrangements for deposit accounts (ADA) and their annexes are
updated on a regular basis, either in their entirety or in part, whenever a
change or clarification of the scope of practice is required. A consolidated
version of the ADA was last published as Supplementary publication 3,
OJ EPO 2022. The ADA can also be found on the EPO website (epo.org).

A distinction must be drawn, in connection with deposit accounts, between:

Point 3 ADA (i) payments to replenish deposit accounts and

Point 1 ADA (ii) payments of fees in connection with proceedings under the EPC or
the PCT.

4.2.2 Payments to replenish a deposit account

Point 3.2 ADA Payments to replenish a deposit account are to be made in euro to the
Point 3.3 ADA EPO bank account. Payments in a different currency will only be accepted
if freely convertible. However, the deposit account will always be credited in
euro (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 actually enters the EPO bank
account.

Point 4.2 ADA Repayments of deposit account balances can only be remitted to the
Point 5.2 ADA deposit account holder. For this purpose, the deposit account holder must
send a signed request as an email attachment to the EPO at
[email protected] or complete the online contact form available on the EPO
website and submit it together with all bank details necessary for the
transfer (point 5.2 ADA).
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-3

4.2.3 Debiting the deposit account

Debiting occurs on the basis of an electronic debit order which has been Point 7.1.1 ADA
duly signed or authenticated by the account holder, the authorised
representative or a person authorised by the account holder using means
accepted for the online service in question. The debit order may be for
individual fees for one or more patent applications, i.e. a single or batch
debit order, or an automatic debit order for one or more patent applications.
Batch debit orders are only possible in Central Fee Payment (see A-X, 4.3).

The debit order for European patent applications must be filed in an Point 7.1.2 ADA
electronically processable format (XML) via: Point 7.1.3 ADA

– EPO Online Filing using EPO Forms 1001E, 1200E, 2300E or 1038E

– Online Filing 2.0 using EPO Forms 1001E, 1200E or 1038E

– Central Fee Payment

– MyEPO Portfolio.

See also the decision of the President of the EPO dated 19 July 2022
concerning the revision of the Arrangements for deposit accounts and their
annexes, Supplementary publication 3, OJ EPO 2022, the notice from the
EPO dated 19 July 2022, OJ EPO 2022, A81, the decision of the President
of the EPO dated 24 April 2023 concerning the revision of the
Arrangements for deposit accounts and their annexes in view of the entry
into force of the Unitary Patent system, Supplementary publication 3,
OJ EPO 2023, 10, the notice from the EPO dated 24 April 2023,
Supplementary publication 3, OJ EPO 2023, 20, and the decision of the
President of the EPO dated 13 June 2023, OJ EPO 2023, A58.

Debit orders submitted in any other way, e.g. on paper, by fax, via the EPO Point 7.1.3 ADA
web-form filing service or the EPO Contingency Upload Service or using a Point 10.3 ADA
different format such as a PDF attachment, are invalid and thus will not be
executed (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.

If any of the accepted means of filing debit orders is unavailable at the EPO Rule 134(1) and (5)
on the last day for paying a particular fee, the payment period will be Point 11 ADA
extended until the next day on which all such means as are available for
the type of application concerned can be accessed again. Payment periods
are also extended in the event of a general unavailability of electronic
communication services, or other like reasons within the meaning of
Rule 134(5) (see the notice from the EPO dated 22 October 2020,
OJ EPO 2020, A120).

When using the EPO's online filing services, "deposit account" must be
selected as the payment method to pay any selected fees.

In general, debit orders will be processed immediately upon their receipt, Point 7.2.1 ADA
provided there are sufficient funds in the deposit account and provided a Point 4.4 AAD
Part A – Chapter X-4 Guidelines for Examination in the EPO March 2024

deferred 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 payment is to be executed at a date later
than the submission date. In that case, the payment date is deemed to be
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 on its own initiative, for
example, 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 by
means of a communication from the EPO providing a two-month period for
objection in the event of disagreement by the party. In that case, the fee will
be debited as indicated in the (erroneous) debit order or, if applicable, any
corrective booking executed 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 the status of proceedings, that fee
is due on the date of receipt of the debit order.

Point 13 ADA A debit order may be revoked in whole or in part by the person making the
payment by sending a signed written notice to [email protected] by email or
by completing the online contact form available on the EPO website
(epo.org) and submitting it together with the signed written notice. For a
debit order revocation notice to be effective, it must be received by the EPO
no later than on the date on which the debit order is received. 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 the intended
execution date by signed written notice sent to the EPO as indicated above.

Point 9 ADA Payments via deposit account effected in 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 of
patent 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)

– double-payments for fees that can be paid only once in the

proceedings before the EPO.
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-5

4.2.4 Date of receipt of the debit order; insufficient funds

Provided there are sufficient funds in the deposit account on the date the Point 7.2.1 ADA
EPO receives the debit order or on the execution date, that date will be Point 7.4.1 ADA
considered the date on which the payment is made.

This applies also where a debit order is filed together with an application
filed under Art. 75(1)(b) with a competent national authority of a contracting
state (see A-II, 1.6). If the EPO does not receive the debit order until after
expiry of the period allowed for paying fees which can be paid on filing, that
period is deemed observed if evidence is available or presented to the EPO
to show that the debit order was filed with the competent authority of the
contracting state at the same time as the application, provided that
sufficient funds were available in the account at the time the period expired.

If, on the date of receipt of the debit order or on the date specified as the Point 7.3 ADA
execution date (point 10 ADA), the account does not contain sufficient Point 7.4.1 ADA
funds to fully cover all the fees indicated for an application (shortfall), the Point 7.4.2 ADA
fees are booked in ascending order of application number ("PCT" before Point 7.5 ADA
"EP" before "UP") and fee 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 the
application of the safety provision in the case of 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 patent Point 14 ADA
applications on the basis of an automatic debit order, signed or Point 1 AAD
authenticated by or on behalf of the account holder (automatic debiting Point 10 AAD
procedure), in accordance with 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. The AAD can also be found
on the EPO website (epo.org).

An automatic debit order may be filed on behalf of the applicant, the patent
proprietor or the appointed representative and must be filed in an
electronically processable format (XML) via EPO Online Filing or Online
Filing 2.0 using EPO Forms 1001E, 1200E or 1038E, or via Central Fee
Payment. An automatic debit order can be revoked only via Central Fee
Payment and only for the proceedings as a whole.

An automatic debit order extends to all types of fees covered by the

automatic debiting procedure and payable in respect of the proceedings
specified in it. As the proceedings progress, each fee is automatically
debited and treated as having been paid in due time, provided that the
deposit account contains sufficient funds. The automatic debit order may
not be restricted to specific types of fees.

In the case of multiple payments from the same deposit account, the EPO Point 4.4 AAD
processes automatic debit orders in ascending order of application number Point 4.5 AAD
("PCT" before "EP" before "UP") and fee code (unless otherwise indicated) Point 5 AAD
Part A – Chapter X-6 Guidelines for Examination in the EPO March 2024

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.

4.4 Payment by credit card

Art. 5 RFees, Payments by credit card must be made via Central Fee Payment, which is
Art. 7 RFees available on the EPO website (epo.org), using a credit card accepted by the
EPO (American Express, Mastercard and Visa). They are deemed made on
the date on which the transaction is approved (see OJ EPO 2017, A72).
The EPO bears any transaction-related charges. The requirements and
arrangements for payments by credit card are set out in detail in the notice
from the EPO dated 16 February 2022 (see OJ EPO 2022, A18).

5. Due date for fees

5.1 General

5.1.1 Due date

Art. 4(1) RFees In the EPC, the term "due date" has a special meaning, namely the first day
Rule 51(1), on which payment of a fee may be validly effected, not the last day of a
2nd sentence period 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 no
due date is specified, the fee is due on the date of receipt of the request for
the service incurring the fee concerned.

A fee may not be validly paid before the due date. The only exceptions are:

(i) renewal fees (see A-X, 5.2.4)

(ii) fees paid voluntarily in response to the communication under

Rule 71(3) (where amendments are also filed in response to that
communication, see C-V, 4.2).

Payments that may not be validly made before the due date may be
refunded by the EPO. If payment is made shortly before the due date, it is
possible that 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), 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 the
relevant date for determining the amount of the fees (see Art. 2 of the
Administrative Council decision of 5 June 1992, OJ EPO 1992, 344). As a
rule, setting the date of payment as the relevant date makes it unnecessary
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)).
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-7

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 patent
application is filed. They must be paid either within one month of that date
(Rule 38(1), Rule 17(2), Rule 36(3)) or, for Euro-PCT applications, within
31 months of the filing date or, where applicable, of the earliest priority
claimed (Rule 159(1)(c) and (e)). Where fees are paid before expiry of 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 the
applicant indeed wishes to pursue the European-phase processing of the
application 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 request for grant form (EPO Form 1001), the
examination fee may be paid straight away on the European patent
application's filing date if the application is filed with said prescribed
EPO Form 1001. It may be paid up to expiry of the period laid down in
Rule 70(1), namely within six months of the date on which the European
Patent Bulletin mentions the publication of the European search report.

The designation fee falls due upon publication of the mention of the
European 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 the
due date, e.g. upon filing of the application, the designation fee will
however be retained by the EPO. These payments will only be considered
valid from the due date, provided that the amount paid corresponds to the
amount payable on the date of payment (see A-X, 5.1.2).

For Euro-PCT applications, see E-IX, 2.1.4 and E-IX, 2.8.

5.2.3 Fee for grant and publishing

The fee for grant and publishing falls due on notification of the Rule 71(1)
communication under Rule 71(3) requesting that this fee be paid. Under Rule 71(4)
Rule 71(4), the same applies for claims fees added during the procedure to
those that were already paid under Rule 45(1) and (2) or Rule 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 Rule 51(1)
year are due on the last day of the month containing the anniversary of the
European patent application's filing date.

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 be
validly paid more than three months before they fall due.
Part A – Chapter X-8 Guidelines for Examination in the EPO March 2024

Example A:

15.11.2016 Filing date

31.05.2018 Earliest date for valid payment of third-year
renewal fee under Rule 51(1)
30.11.2018 Due date for third-year renewal fee under
Rule 51(1)
31.08.2019 Earliest date for valid payment of
fourth-year renewal fee under Rule 51(1)
30.11.2019 Due date for fourth-year renewal fee under
Rule 51(1)

Example B:

15.07.2016 Priority date

14.07.2017 Filing date
31.01.2019 Earliest date for valid payment of third-year
renewal fee under Rule 51(1)
15.02.2019 Expiry of 31-month period for the
performance of all acts required under
Rule 159(1)
31.07.2019 Due date for third-year renewal fee under
Rule 51(1)
30.04.2020 Earliest date for valid payment of
fourth-year renewal fee under Rule 51(1)
31.07.2020 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 Central Fee
Payment before the earliest valid payment dates under Rule 51(1), 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 filing a valid debit order via OLF and
Online Filing 2.0 or by using any other payment 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.

Rule 51(2) If the renewal fee has not been validly paid on or before the due date, it
Rule 134 may still be validly paid within six months of the said date, provided that the
additional fee is paid within this period. The additional fee can be paid until
the last day of the sixth month following the month containing the
anniversary of the date of filing (see J 4/91, reasons 2.7). This six-month
period begins on the last day of the month referred to in Rule 51(1), first
sentence, even if the circumstances described in Rule 134(1), (2) and (5)
apply. Rule 134 is applicable to the calculation of the expiry of the
six-month time limit for payment of the additional fee (see J 4/91,
reasons 3.2). Whilst a notice draws the applicant's attention to the
possibility under Rule 51(2) and Art. 2(1), item 5, RFees, the omission of
such 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.

For Euro-PCT applications, if the renewal fee in respect of the third year
would have fallen due earlier under Rule 51(1), the due date is deferred to
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-9

the last day of the 31-month period under Rule 159(1). This deferred due
date, and hence the expiry of another period (the 31-month period), forms
the basis for calculating the additional period for payment of the renewal
fee with an additional fee (see J 1/89, the principles of which apply). For
example:

20.04.2016 (Wed) Priority date

17.10.2016 (Mon) Filing date
31.10.2018 (Wed) Due date for third-year renewal fee under
Rule 51(1)
20.11.2018 (Tue) Expiry of 31-month period under
Rule 159(1) = deferred due date for
third-year renewal fee
20.05.2019 (Mon) 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 for
the 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 the
renewal fee is not paid on the date early processing is requested, the
request for early processing will be effective only from the date on which
the renewal fee is paid (and all further requirements necessary on the latter
date have been complied with) (see E-IX, 2.8).

The obligation to pay renewal fees terminates with the payment of the Art. 86(1) and
renewal fee due in respect of the (patent) year in which the mention of the Art. 141(1)
grant of the European patent is published, see Art. 86(2). "Patent years"
are calculated as from the application's filing date. The first patent year
(Art. 86(1), Art. 141(1)) starts on the filing date and ends on the same date
of the following year. For the second and subsequent years, the patent year
starts one day after the anniversary of the filing date and ends on the same
day as the filing date of the following year.

Example of due date and time limits for payment:

15.12.2016 (Thu) Priority date

02.07.2017 (Sun) Filing date
31.01.2019 (Thu) First day for validly paying third-year renewal fee
31.07.2019 (Wed) Due date for third-year renewal fee under
Rule 51(1)
31.01.2020 (Fri) Last day for validly paying renewal fee plus
additional fee (Rule 51(2)); see J 4/91,
reasons 2.7
30.04.2020 (Thu) First day for validly paying fourth-year renewal
fee
31.07.2020 (Fri) Due date for fourth-year renewal fee = last
renewal fee to be paid to the EPO and last day
for payment of this renewal fee without additional
fee
Part A – Chapter X-10 Guidelines for Examination in the EPO March 2024

04.11.2020 (Wed) Mention of grant of the European patent in the

European Patent Bulletin

Example 1 of last renewal fee payable to the EPO:

21.01.2017 (Sat) Filing date

22.01.2019 (Tue) Start of third patent year
31.01.2019 (Thu) Due date for third-year renewal fee (to be
paid to the EPO)
31.10.2019 (Thu) First day for validly paying fourth-year
renewal fee
15.01.2020 (Wed) Mention of grant of the European patent in
the European Patent Bulletin
22.01.2020 (Wed) Start of fourth patent year
31.01.2020 (Fri) Due date for fourth-year renewal fee (no
longer to be paid to the EPO; if already
paid, to be refunded, see A-X, 10.1.1)

This means that for the last renewal fee payable to the EPO, it is not the
due 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 the
anniversary of the filing date, 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) Filing date

23.05.2019 (Thu) Start of third patent year
31.05.2019 (Fri) Due date for third-year renewal fee (to be
paid to the EPO)
12.05.2022 (Thu) Date of dispatch of communication under
Rule 71(3)
20.05.2022 (Fri) Approval of the text for grant and translation
of the claims submitted, fee for grant and
publication and all claims paid
23.05.2022 (Mon) Start of sixth patent year
31.05.2022 (Tue) Due date for sixth-year renewal fee, payable
to EPO (Rule 71a(4))
30.11.2022 (Wed) Payment of the sixth renewal fee with
additional fee (Rule 51(2))
04.01.2023 (Wed) Mention of grant of the European patent in
the European Patent Bulletin
31.05.2023 (Wed) Due date for seventh-year renewal fee (no
longer 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 the
next possible date for publication of the mention of the grant of the
European 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 withdrawn.
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-11

Special provisions apply with regard to the due date for renewal fees in Rule 51(4) and (5)
respect of cases where there is a successful request for re-establishment of
rights under Art. 122 or a successful petition for review of a decision of the
board of appeal under Art. 112a.

5.2.5 Claims fees

Claims fees are due upon filing the first set of claims, which may be the
filing date or may occur later (see A-III, 9 and 15).

5.2.6 Fees for limitation/revocation, opposition, appeal, petition for

review
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 of
appeal and petition for review).

5.2.7 Fees payable for procedural and other requests

The fees payable for procedural requests are due as provided for in the
Implementing Regulations. These requests become effective on payment of
the prescribed fee, which thus falls due on the request's filing date. 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-establishment of 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 EPO President 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 due on the request's filing
date.

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 the
time limit extended under Rule 134.

6.2 Late payment of fees – period for payment considered observed

6.2.1 Fees paid by bank transfer – application of Art. 7(3) and

(4) RFees
If a fee paid by bank transfer enters the EPO's bank account after the Art. 7(3) and
period in which it should have been made, the period for payment of that (4) RFees
fee is considered observed if the payer provides evidence to the EPO that
they fulfilled one of the following conditions in an EPC contracting state
within the period for payment of that fee:

(i) payment of the fee was effected through a banking establishment

(ii) an order was duly given to a banking establishment to transfer the

amount of the payment.

The EPO may ask the person who made the payment to produce evidence,
within a period to be specified by it, as to the date on which one of the
Part A – Chapter X-12 Guidelines for Examination in the EPO March 2024

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 of

Art. 7(3) and (4) RFees, any further processing fee paid will be refunded
(see A-X, 6.2.5).

6.2.2 Safety provision for late replenishment of deposit accounts

Point 7.4.1 ADA Where a payment to replenish the deposit account is considered to have
Point 7.5.1 ADA been 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

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

(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.

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-X, 4.2.4 and A-II, 1.5.

6.2.4 Amount of fee payable

As 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 a
competent national office (Art. 75(1)(b)), see point 12.3 of the ADA
(Supplementary publication 3, OJ EPO 2022).

6.2.5 Noting of loss of rights

Rule 112 If applicants who have been sent a communication under Rule 112(1)
noting non-compliance with a payment time limit claim that the payment
was made in due time under Art. 7(1), (3) and (4) RFees or in accordance
with the safety provision for replenishment of deposit accounts, they must
apply for a decision under Rule 112(2) and submit the requisite evidence.
As an auxiliary request, applicants are advised to request further
processing.
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-13

7. Purpose of payment

7.1 General

7.1.1 Conditions for valid payment

There are two conditions for a fee payment to be valid:

(i) it must relate to pending proceedings

(ii) it must be made in due time, i.e. the date of payment (see A-X, 4) Art. 8 RFees
must be on or after the due date (see A-X, 5.1.1). In addition, for a
time limit for payment to be deemed observed, the full amount 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 enters that account. The payment is valid in
respect of the amount entering the account. If an insufficient amount has
been paid by mistake, it is not possible to rectify the error by having the
shortfall paid subsequently deemed 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 that may be corrected under Rule 139. However, the EPO 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 order
clearly specifies the purpose of payment by indicating the fee intended to
be paid, thus authorising the EPO to debit the fee for this particular
purpose. Furthermore, the EPO can only debit the full amount of the fee if
there are sufficient funds in the deposit account. In respect of
underpayments 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.

7.1.2 Purpose of payment

A distinction must be drawn between these conditions for valid payment Art. 6 RFees
(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 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 reassigning the payment to another application. Otherwise the
payment will be considered not 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 be established
without difficulty from the remaining information. The inadvertent use of a
Part A – Chapter X-14 Guidelines for Examination in the EPO March 2024

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 the intention of the person
giving the order is clear. Instructions to carry out the order must be given by
the EPO department qualified to recognise what is clearly intended
(see T 152/82).

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 for
the change.

7.2 Indication of the purpose of the payment in the case of

designation fees
Art. 2(2), item 3, The following applies only to applications filed before 1 April 2009.
RFees
Art. 6(1) RFees 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 the
payment 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 from
the intended payment as stated on the request form, the contracting states
for which the payment is now intended should be indicated with the
payment.

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, 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 on the
request form. If not, an amount equal to seven times the amount of one
designation fee or the designation fees for the contracting states indicated
on the request form is debited.

The same applies for Euro-PCT applications that entered the European
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

Rule 45(1) If the applicant pays the claims fees for all the claims incurring fees, the
indication "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.
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-15

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 Rule 71(4)
pay claims fees due before the European patent is granted. If the applicant
fails to pay the fee for all the claims in due time, the application is deemed
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 can still apply 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 no discretion
in waiving or refunding, without any legal basis, fees that have become due
(see J 20/87).

9. Reduction of fees

9.1 General
Where a fee reduction applies, the reduced rate may be paid instead of the
full fee. The factual conditions for a reduction of the fee must be met on the
day the payment is made.

9.2 Reduction under the language arrangements

9.2.1 Conditions
European patent applications can be filed in any language. If filed in a Art. 14(2)
language other than an official EPO language, a translation must be
furnished. Consequently, the languages that can be used for filing
European patent applications fall into three categories:

(a) official EPO languages

(b) official languages of contracting states other than English, French or

German, such as Dutch, Italian or Spanish ("admissible non-EPO
languages")

(c) all other languages, such as Chinese, Japanese or Korean.

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

In the case of European patent applications filed on or after 1 April 2014 a Rule 6(3)
30% reduction of the filing and/or examination fee for certain categories of Art. 14(1) RFees
applicants is provided for. For international applications entering the
European phase on or after 1 April 2014, a 30% reduction of the
examination fee is provided for (see the notice from the EPO dated
10 January 2014, OJ EPO 2014, A23). In this regard, it is necessary to file
the documents making up the application "as filed" and/or the request for
Part A – Chapter X-16 Guidelines for Examination in the EPO March 2024

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

– non-profit organisations, universities and public research

organisations

whose residence or principal place of business is in an EPC contracting

state with an official language other than English, French or German, and
nationals of such states who are resident abroad.

Rule 6(5) 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 enterprise
is considered to be any entity engaged in an economic activity, irrespective
of its legal form. The category of micro, small and medium-sized
enterprises is made up of enterprises employing fewer than 250 persons,
having an annual turnover not exceeding EUR 50 million and/or an annual
balance sheet total not exceeding EUR 43 million and for which no more
than 25% of the capital is held directly or indirectly by another company that
is not an SME.

The eligibility of the further entities listed in Rule 6(4) is subject to the
following 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 a
profit – 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 be
universities.

(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 in
carrying out these activities, in disseminating the results or in
teaching.
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-17

If there are multiple applicants, each one must be an entity or a natural Rule 6(7)
person within the meaning of Rule 6(4) for the fee reduction to apply; it is
however sufficient for only one of them to be entitled to use an admissible
non-EPO language (Art. 14(4), Rule 6(3)).

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

Changes in the status of an entity under Rule 6(4) occurring after filing the
declaration will not have a retroactive effect on fee reductions that were
justified when granted.

The EPO will conduct checks to ensure compliance with the eligibility
criteria laid down in Rule 6(3) to (7). If the checks give rise to reasonable
doubt in the course of the grant proceedings as to the veracity of the
declaration given by the applicant, the EPO may request appropriate
evidence.

Should it become apparent that an incorrect declaration has been filed, the
fee would not be validly paid since it was reduced unjustifiably and the
application 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 of
rights arising from an incorrect or missing declaration may be remedied by
filing a request for further processing under Art. 121 and Rule 135 – subject
to making good 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

On filing a European patent application, the presence of a description is
necessary for the accordance of a filing date (Rule 40(1)(c)). The
description, therefore, needs to be in an admissible non-EPO language to
qualify for the fee reduction (not the request for grant, for example; see
J 4/88).

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 not
matter whether the applicant requested that the claims of the previously
Part A – Chapter X-18 Guidelines for Examination in the EPO March 2024

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 the
same admissible non-EPO language as the earlier application (Rule 36(2)
and Rule 6(3)), provided that the other requirements for the reduction are
met (see above) and a translation is filed in time (see A-X, 9.2.1).

Since the additional fees that are payable if the application either comprises
more than 35 pages or 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

Art. 14(4) Applicants eligible for the fee reduction will be allowed a reduction in the
Rule 6 examination 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-down
menus/pre-printed boxes where the request for examination in an
admissible non-EPO language and the declaration under Rule 6(6) can be
selected/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 preselected in the same forms. Wordings for the
request 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 refiled (see G 6/91). Subsequent documents related to
examination proceedings need not be filed in the admissible non-EPO
language.

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

search
Art. 153(7) The search fee for a supplementary European search report is reduced by
a fixed amount for PCT applications for which the patent office of Austria,
Finland, Spain, Sweden or Türkiye, 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 Administrative Council decisions of 27 October 2011,
OJ EPO 2011, 616; 25 October 2012, OJ EPO 2012, 584; 16 December
2015, OJ EPO 2016, A2; 28 June 2017, OJ EPO 2017, A57; 12 December
2019, OJ EPO 2020, A3; 15 December 2021, OJ EPO 2022, A2; and
14 December 2022, OJ EPO 2023, A25).
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-19

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).

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 6 March 2023,
OJ EPO 2023, A28.

9.3.2 Reduction of the examination fee where the international

preliminary examination report is drawn up by the EPO
Where the EPO has drawn up the international preliminary examination Art. 14(2) RFees
report in respect of an international application, the examination fee is
reduced by 75% in proceedings before the EPO as elected Office.
Accordingly, the reduction applies to the Euro-PCT application entering the
European phase. The reduction of the examination fee does not apply to
divisional 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 amount
payable 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 to
Fees (see A-X, 2).

By contrast, any fee that has not been validly paid is to be refunded (see
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 withdrawn) or to
pending proceedings, there is no legal basis for the payment. In these
cases, the amount paid must be refunded.

If the payment is made before or on the due date and if, no later than that
date, the legal basis ceases to exist (e.g. because the patent application is
deemed withdrawn or is withdrawn), the amount paid is to be refunded. For
the designation fee and renewal fees ,see A-X, 5.2.2 and 5.2.4
Part A – Chapter X-20 Guidelines for Examination in the EPO March 2024

respectively. Fees paid after the due date and before expiry of the time limit
for payment are refunded only if there is a particular reason for a refund
(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 and
must be refunded unless a valid request for further processing has been
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 by
Rule 135(1) and Art. 2(1), item 12, RFees (see E-VIII, 2).

10.1.3 Insignificant amounts

Art. 12 RFees 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 17
constitutes an insignificant amount (see the decision of the President of the
EPO dated 7 March 2023, OJ EPO 2023, A27).

10.2 Special refunds

10.2.1 Refund of the search fee

Art. 9 RFees The search fee for a European or supplementary European search is
Rule 10 refunded in the cases provided for in Art. 9 RFees and in the decision of the
President of the EPO dated 17 January 2023, OJ EPO 2023, A4, which
applies to European patent applications in respect of which the European
or supplementary European search is completed on or after 1 April 2023.
Details on criteria for refund 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
of disagreement, the applicant may request an appealable decision
(Art. 106(2)), which is issued by the Receiving Section where the examining
division has not yet assumed responsibility for the application (Rule 10)
(see B-XI, 2).

For the purposes of Art. 9(1) RFees, the date of the start of the search is
indicated by means of EPO Form 1704 in the public part of the dossier and
is thus open to file inspection in the European Patent Register after the
patent application's publication (see also B-IV, 1). Before publication, the
EPO will provide the applicant with the relevant information upon request,
or this information can be accessed electronically via the MyEPO Portfolio
and My Files services.

10.2.2 Refund of the further search fee

Rule 64(2), If an applicant has paid a further search fee following a communication
164(5) from the search division under Rule 64(2) but the examining division finds,
on request, that the communication was not justified, the further search fee
will be refunded. The same principle applies if the applicant has paid a
search fee on the basis of an invitation by the examining division under
Rule 164(2) (see C-III, 3.1). In such cases, the examining division will, on
request, review the justification for charging the search fee in its invitation
under Rule 164(2) (see C-III, 3.4).
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-21

10.2.3 Refund of the examination fee

The examination fee will be refunded in the situations described in Art. 11 RFees
Art. 11 RFees (see A-VI, 2.2, third paragraph, and A-VI, 2.5).

10.2.4 Refund under Rule 37(2)

If a European patent application filed with a competent national authority is Rule 37(2)
deemed withdrawn under Art. 77(3), all fees, in particular the filing, 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 decision Rule 71a(6)
on the grant of a European patent or, at that time, deemed withdrawn, the
fee for grant and publishing will be refunded. The date of the decision's
notification is determined as indicated in E-II, 2. Note that this date is later
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 grant
and publishing within the Rule 71(3) period but does not pay the claims
fees 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 the
period for filing an appeal has expired without an appeal being filed
(see E-XII, 6). Where the application is deemed withdrawn, the refund will
be effected only after the period for requesting further processing has
expired without further processing being requested by the applicant
(see E-VIII, 2).

10.2.6 Refund of the appeal fee

The appeal fee may be refunded in full or in part in some specific situations Rule 103
provided for in Rule 103. However, the department of first instance is only
competent to decide on and order a full refund of the appeal fee in the case
of an interlocutory revision if it considers the reimbursement equitable by
reason of a substantial procedural violation (Rule 103(1)(a)).

In all other situations, reimbursement of the appeal fee, in part or in full, is

decided on by the board of appeal.

10.3 Method of refund

Refunds are made either to a deposit account held with the EPO or by
transfer 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).

10.3.1 Refunds to a deposit account

Fees are refunded to any deposit account that the applicant, proprietor or Point 15 ADA
opponent/appellant (if applicant or proprietor) has indicated in its refund
instructions. In most cases this will be the deposit account of the party to
the proceedings itself, but it may also be a third party's deposit account.
The EPO notifies the party to the proceedings about the intended refund
Part A – Chapter X-22 Guidelines for Examination in the EPO March 2024

and the deposit account to 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) via 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 submitted in any other way, e.g. on paper, by fax, via the EPO
web-form filing service or the EPO Contingency Upload Service, are invalid
and will not be processed. Refund instructions can be updated at any time
using EPO Form 1038E.

For international applications filed with the EPO as receiving Office or for
which the EPO acted as an International Authority under the PCT, new
refund instructions are to be filed when entering the European phase using
EPO Form 1200E.

In the case of a request for a change 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 change's recording. If no new refund instructions are present,
a deposit account recorded for an applicant or representative who has
withdrawn from the proceedings will be deleted by the EPO on its own
initiative. The same applies to the deposit account held by a third party
indicated in the refund instructions of the former applicant or representative.

If no refund instructions are on file when a refund becomes due or if they

are ambiguous, the EPO will on its own initiative establish whether it can
make a refund to a deposit account held by the appointed professional
representative or by the applicant (or appellant, if applicant/proprietor).
Otherwise it will invite the person who made the payment to claim the
refund online.

In the case of a refund of fees not payable by the applicant, proprietor or

appellant (if applicant or proprietor), e.g. the opposition fee, the EPO will on
its own initiative establish whether the refund can be credited to a deposit
account. Otherwise it will invite the person who made the payment to claim
the refund online.

10.3.2 Refunds to a bank account

If a refund cannot be made to a deposit account, the party to the
proceedings is invited to claim the refund online via the EPO website
(epo.org) using a refund code provided in a non-public communication.
Upon successful registration and sign in, the refund can be claimed by
entering the application's details, the refund code and a bank account.

10.4 Reallocation instead of refund

If a party files a written request, the payment may be reallocated instead of
being refunded. The date of receipt of the reallocation instructions is then
considered the payment date for the new purpose of payment.
March 2024 Guidelines for Examination in the EPO Part A – Chapter X-23

11. Crediting of fees under Rule 71a(5)

If, in response to an invitation under Rule 71(3), the applicant has already Rule 71a(5)
paid the fee for grant and publishing or the claims fees, the amount paid will
be credited if a further such invitation is issued. This may happen where:

(i) the applicant requests amendments or corrections in response to the

first Rule 71(3) communication or requests the reversal of
amendments proposed by the examining division in that
communication (see C-V, 4.1) and also voluntarily pays the fee for
grant and publishing and claims fees (even though this is not
required, C-V, 4.2) and the examining division then issues a
subsequent Rule 71(3) communication (see C-V, 4.6 and 4.7.2)

(ii) after the applicant has approved the text for grant in response to the
first 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 a subsequent
Rule 71(3) communication being issued (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 this fee
increases between the first and second Rule 71(3) communications, the
difference must be paid within the period for reply to the second Rule 71(3)
communication.

For European patent applications filed before 1 April 2009 or international Art. 2(2),
applications entering the European phase before that date, the fee for grant item 7, RFees
and publishing incorporates a fixed component and a component in respect
of each page of the application in excess of 35 (see C-V, 1.2 and
A-III, 13.2). If the overall fee changes between the first and 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 the
number of pages). Any excess will be refunded (for example where the
version of the application on which the second Rule 71(3) communication is
based 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 is
important 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 of
claims paid for that 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 of an increase in the per-claim
fee or in the number of claims or both), the difference must be paid within
the period for reply to the second Rule 71(3) communication.
Part A – Chapter X-24 Guidelines for Examination in the EPO March 2024

To calculate the amount of the claims fees due in response to the second
Rule 71(3) communication, the number of fee-free claims (15) and also 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 and second
Rule 71(3) communications are based. Thereafter, the amount of the
claims fees paid in response to the first Rule 71(3) communication is then
credited towards (and so deducted from) the amount of the claims fees due
in response to the second Rule 71(3) communication (if the 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 the
fee 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 further processing fee is not
credited towards any increase in the amount of the fees due in response to
the second Rule 71(3) communication.

Nor is the further processing fee paid in respect of the first Rule 71(3)
communication credited towards any subsequent request for further
processing in respect of the second Rule 71(3) communication.
March 2024 Guidelines for Examination in the EPO Part A – Chapter XI-1

Chapter XI – Inspection of files; communication

of information contained in files; consultation of
the European Patent Register; issue of certified
copies
1. General
After a European patent application has been published, any person may Art. 128
inspect and obtain information from the files relating to the application and Rule 143, Rule 144
the resultant European patent. Similarly, anybody may request the issue of Rule 145, Rule 146
a sample of biological material in accordance with Rule 33 (see A-IV, 4.4). Art. 3(1) RFees

The provisions governing file inspection are contained in Art. 128 and
Rules 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 in

Rule 143 and accessible free of charge, can be consulted to ascertain the
state of the proceedings and the legal status of patent rights. It also
provides access to the files of published European patent applications 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 the

files or of other documents (see A-XI, 5).

Any fees payable for any of the above services are laid down by the
President under 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 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 Art. 128
and appeal procedure with the parties are open for inspection, subject to Rule 145(2)
the restrictions mentioned below (see A-XI, 2.3). This includes information Rule 147(2)
on 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.
Part A – Chapter XI-2 Guidelines for Examination in the EPO March 2024

Observations by third parties (Art. 115) are an integral part of the files and
as such are open to inspection in accordance with Art. 128. A request by a
third party to treat their observations or part of them confidentially cannot
be granted. In such a case, 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.

2.2 Conducting file inspections

Rule 145(2) The EPO President determines all file inspection arrangements, including
Art. 3(1) RFees the circumstances in which an administrative fee is payable (see the
decision of the President of the EPO dated 20 February 2019,
OJ EPO 2019, A16).

As a rule, published patent applications and granted patents can be

inspected in the European Patent Register, which is accessible free of
charge via the EPO website. 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 notice
from the EPO dated 20 February 2019, OJ EPO 2019, A15, and the
decision 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 or

a certified extract from the European Patent Register, see A-XI, 5.

2.3 Restrictions to file inspection

Art. 128(4) Inspection of files is subject to the restrictions laid down in Rule 144.
Rule 146
Rule 145 The parts of the file excluded from inspection are:
Rule 144

Rule 144(a) (i) the documents relating to the exclusion of or objections to members
of 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 communicated
to the parties

Rule 144(c) (iii) the designation of the inventor if that party has waived the right to be
mentioned as inventor under Rule 20(1)

Rule 144(d) (iv) any other document excluded from inspection by the EPO President
on the ground that such inspection would not serve the purpose of
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
under the "PACE" programme (see the decision of the President of
the EPO dated 12 July 2007, Special edition No. 3,
OJ EPO 2007, J.3)
March 2024 Guidelines for Examination in the EPO Part A – Chapter XI-3

(v) subject to Rule 94.2 and 94.3 PCT, the files relating to international Art. 38(1) PCT
preliminary examination for a Euro-PCT application in respect of Rule 94 PCT
which 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).

Apart from listing the documents automatically excluded from file inspection
by the EPO, the decision of the President referred to under point (iv) above
stipulates that, on request, (parts of) other documents may be excluded
from file inspection where their inspection is claimed to be prejudicial to the
legitimate personal or economic interests of a natural or legal person. Any
such request needs to be duly substantiated and specify how the legitimate
personal or economic interests of the party are affected and what the
relevant consequences are rather than merely making a statement
concerning a party's interests in general. Also, any requests for exclusion
from file inspection should be clearly marked, allowing them to be
immediately identified as such and to be provisionally excluded from
inspection, pending a final decision on the request.

When a submission is to be excluded from file inspection only partially, only

the parts or passages in question are excluded; the rest of the submission
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 in 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 the applicant with
any information about the proceedings relating to the inspection 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 be Art. 128(1)
inspected only by applicants or with their consent. The MyEPO Portfolio
and My Files services allow applicants to inspect the public part of the files
relating to their still unpublished applications (see the decision of the
President of the EPO and notice from the EPO both dated 9 October 2023
concerning the web-based online service MyEPO Portfolio,
OJ EPO 2023, A89, and OJ EPO 2023, A90, respectively, as well as the
notice from the EPO dated 3 May 2023, OJ EPO 2023, A50, and the notice
from the EPO dated 13 December 2011, OJ EPO 2012, 22). If a third party
requests file inspection without at the same time submitting the applicant's
consent, the EPO will not release the files until the applicant's approval has
been presented.

However, prior to the European patent application's publication, any person Art. 128(2)
who can prove that applicants have invoked their rights under the
application against them may also inspect the files. The rights under a
European patent application are also deemed to have been invoked where
Part A – Chapter XI-4 Guidelines for Examination in the EPO March 2024

rights under a first filing in a contracting state have been invoked and the
subsequent European patent application is mentioned at the same time
(see J 14/91). If such proof is not furnished together with the request, the
EPO will invite the requester within a specified period to supply proof. If that
is not done in due time, the request will be refused.

If a request for inspection of the files under Art. 128(2) is made, the
applicant is entitled to notification of the identity of the person making the
request. Professional representatives requesting inspection of the files on
behalf of a third party under Art. 128(2) must therefore give the third party's
name and address and file an authorisation.

A decision on a request for inspection of the files under Art. 128(2) is only
taken once the applicant has been heard. If the applicant objects and
provides grounds for believing that the requirements under Art. 128(2) are
not met within the period set by the EPO, a decision will be delivered. This
decision is subject to appeal.

Art. 128(3) Prior to a European divisional application's publication the file of this
divisional application may be inspected only in the cases described in
Art. 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 that earlier
application's publication and without the relevant applicant's consent.

2.6 Publication of bibliographic data before publication of the

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

3. Communication of information contained in the files

Rule 146 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 a
European 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 file
itself, should it deem this to be appropriate in view of the quantity of
information to be supplied.

Correspondence in proceedings relating to the communication of

information conducted between the EPO and the person requesting the
information is filed in the part of the file that 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.
March 2024 Guidelines for Examination in the EPO Part A – Chapter XI-5

4. Consultation of the European Patent Register

The European Patent Register can be accessed free of charge via the EPO Art. 127
website (epo.org) (see A-XI, 2.2). Entries in the European Patent Register Rule 143
are made starting from the publication of the European patent application Rule 21(2)
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 for
review (Art. 112a) are also included (Rule 143(1)(x) and (y)). Since the
correction 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 the
European Patent Register.

Apart from the data to be entered under Rule 143(1), the European Patent
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. Issue of certified copies

5.1 Certified copies of documents from the files or of other

documents
The EPO will issue on request a certified copy of the European patent
application or European patent specification, or of other documents from
the files of European patent applications and patents (e.g. an extract from
the European 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 2023, A3).

A certified copy of the European patent certificate with specification Rule 74

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 patent Rule 54
application together with the certificate stating its filing date) 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 an official
EPO language (Art. 14(2)), the priority document relates to the application
as originally filed, not to the translation in one of the official EPO languages.

The EPO President 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 the
application documents as available on the filing date and as contained in
Part A – Chapter XI-6 Guidelines for Examination in the EPO March 2024

the electronic file, reproduced in black and white (see A-IX, 1.2 and 7.1 and
the 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. Furthermore, if the
patent office at which a European priority document is to be 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 2024 Guidelines for Examination in the EPO Part B – Contents a

Contents

Chapter I – Introduction I-1

1. Scope of Part B I-1

2. Search division I-1

2.1 Consultation with other examiners I-1

2.2 Search division has more than one member I-1

2.2.1 Where claimed unitary subject-matter covers more
than one technical field I-2
2.2.2 Further searches in a different technical field for a
non-unitary application I-2

Chapter II – General II-1

1. Search and substantive examination II-1

1.1 Contact between the applicant and the search

division II-1

2. Aim 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 Supplementary European searches II-2

4.3.1 Dispensing with the supplementary European search
report II-3
4.3.2 A supplementary European search report is required II-3
4.3.3 Application documents for the supplementary
European search report II-3

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

Part B – Contents b Guidelines for Examination in the EPO March 2024

1.2 Opinions on matters relating to limitation of the

search III-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 neighbouring fields III-2

2.4 Internet searches III-3

3. The subject-matter of the search III-3

3.1 Basis for the search III-3

3.2 Interpretation of claims III-3

3.2.1 Claims with explicit references to the description or
drawings III-4
3.2.2 Using the description and/or drawings to identify the
technical problem III-4
3.2.3 Using the description and/or drawings to define
unclear terms not defined in the claims III-4
3.2.4 Using the description and/or drawings to define clear
terms given a definition different from their usual
meaning III-5
3.2.5 Ascertaining whether there is a fallback position III-5

3.3 Amended claims, missing parts (Rule 56) or

erroneously filed application documents or parts
(Rule 56a) III-6
3.3.1 General considerations III-6
3.3.2 Specific rules applicable to Euro-PCT applications III-6

3.4 Abandoned 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-10

3.12 Lack of unity III-10

3.13 Technological background III-10

March 2024 Guidelines for Examination in the EPO Part B – Contents c

Chapter IV – Search procedure and strategy IV-1

1. Procedure before 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-matter of the search; restrictions IV-3

2.2 Devising a search strategy IV-3

2.3 Carrying out the search; types of documents IV-4

2.4 Redefining the searched subject-matter IV-5

2.5 Closest prior art and its effects on the search IV-6

2.6 End of search IV-6

3. Procedure after searching IV-6

3.1 Drawing up the search report IV-6

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 allocation) V-1

2.1 Incorrect preclassification V-1

3. IPC classification of the application V-1

3.1 IPC classification of late-published search reports V-2

3.2 IPC classification where the scope of the invention is

unclear (e.g. a partial search) V-2

3.3 IPC classification in cases of lack of unity of invention V-2

3.4 Verification of the IPC classification V-3

4. CPC classification of the application V-3

Part B – Contents d Guidelines for Examination in the EPO March 2024

Chapter VI – The state of the art at the search

stage VI-1
1. General VI-1

2. Oral disclosure, use, exhibition, etc. as state of

the art VI-1

3. Priority VI-1

4. Conflicting applications VI-1

4.1 Potentially conflicting European and international

applications VI-1
4.1.1 Published European patent applications as
"E" documents VI-2
4.1.2 Published international applications (WO) as
"E" documents VI-2

4.2 National prior rights VI-3

5. Relevant date for documents cited in the search

report; filing and priority date VI-3

5.1 Verification of claimed priority dates VI-3

5.2 Intermediate documents VI-3

5.3 Doubts about the validity of the priority claim;

widening of the search VI-4

5.4 Documents published after the filing date VI-5

5.5 Non-prejudicial disclosures VI-5

5.6 Doubts about the state of the art VI-5

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 EPO's
official languages VI-6

6.3 Conflict between abstract and source document VI-7

6.4 Insufficient prior-art disclosures VI-7

6.5 Incorrect compound records in online databases VI-7

7. Internet disclosures ‒ technical journals VI-8

March 2024 Guidelines for Examination in the EPO Part B – Contents e

Chapter VII – Unity of invention VII-1

1. General remarks VII-1

1.1 Partial European search report VII-1

1.2 Invitation to pay further search fees VII-1

1.2.1 General VII-1
1.2.2 Cascading non-unity VII-2
1.2.3 The applicant has not paid all further search fees 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-3

2.1 Request for refund of further search fees VII-3

2.2 Complete search despite 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

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 VIII-1

2.2 Subject-matter excluded from patentability under

Art. 52(2) and (3) VIII-2
2.2.1 Computer-implemented business methods VIII-2

3. No meaningful search possible VIII-3

3.1 Invitation to indicate subject-matter for search VIII-5

3.2 Reply to the invitation under Rule 63(1) VIII-5

3.2.1 No or late reply VIII-5
3.2.2 Reply in time VIII-5

3.3 Content of the extended European search report

(EESR) VIII-6
Part B – Contents f Guidelines for Examination in the EPO March 2024

3.4 Applications falling under Rule 63 and lacking unity VIII-7

4. More than one independent claim per category

(Rule 62a) VIII-8

4.1 Invitation to indicate which independent claim to

search VIII-8

4.2 Reply to the invitation under Rule 62a(1) VIII-8

4.2.1 Failure to reply in time VIII-8
4.2.2 Reply filed in time VIII-8

4.3 Content of the extended European search report

(EESR) VIII-9

4.4 Cases under Rule 62a where claims fees have not
been paid VIII-9

4.5 Applications falling under Rule 62a and lacking unity VIII-9

4.6 Handling of dependent claims under Rule 62a VIII-10

5. Invitation under both Rule 62a(1) and Rule 63(1) VIII-10

6. Claims contravening Art. 123(2) or Art. 76(1) VIII-11

Chapter IX – Search documentation IX-1

1. General IX-1

1.1 Organisation and content of the documentation

available to the search divisions IX-1

1.2 Means of searching systematically IX-1

2. Patent documents arranged for systematic

searching 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 systematic

access IX-2

3.1 Periodicals, records, reports, books, etc. IX-2

4. Non-patent literature arranged for library-type

access IX-2
March 2024 Guidelines for Examination in the EPO Part B – Contents g

4.1 Content IX-2

5. Access to EPO documentation for the national

patent offices IX-2

Chapter X – Search report X-1

1. General X-1

2. Different types of search report drawn up by the

EPO X-2

3. Form and language of the search report X-2

3.1 Form X-2

3.2 Language X-3

3.3 Search summary X-3

3.4 Record of search strategy X-3

4. Identification of the European patent application

and the search report type X-3

5. Classification of the European patent application X-3

6. Technical fields searched X-4

7. Title, abstract and figure to be published with the

abstract (as indicated on supplemental sheet A) X-4

8. Restriction of the searched subject-matter X-5

9. Documents found in the search X-6

9.1 Identification of documents in the search report X-6

9.1.1 Bibliographic data X-6
9.1.2 "Corresponding documents" X-6
9.1.3 Language of the documents cited X-8
9.1.4 Supplementary European search report X-9

9.2 Categories of documents (X, Y, P, A, D, etc.) X-9

9.2.1 Particularly relevant documents X-9
9.2.2 Documents defining the state of the art and not
prejudicing novelty or inventive step X-10
9.2.3 Documents which refer to a non-written disclosure X-10
9.2.4 Intermediate documents X-10
9.2.5 Documents relating to the theory or principle behind
the invention X-10
9.2.6 Potentially conflicting patent documents X-11
9.2.7 Documents cited in the application X-11
9.2.8 Documents cited for other reasons X-11
Part B – Contents h Guidelines for Examination in the EPO March 2024

9.3 Relationship between documents and claims X-11

9.4 Identification of relevant passages in prior-art

documents X-12

10. Authentication and dates X-12

11. Copies to be made available with the search

report X-12

11.1 General remarks X-12

11.2 Electronic version of cited document X-13

11.3 Patent family members; the "&" sign X-13

11.4 Reviews or books X-13

11.5 Summaries, extracts or abstracts X-13

11.6 Citation of video and/or audio media fragments

available on the internet X-13

12. Transmittal of the search report and search

opinion X-14

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 for the search opinion XI-1

2.1 Application documents filed under Rule 56 EPC,

Rule 56a EPC, Rule 20.5 PCT or Rule 20.5bis PCT XI-2

2.2 Applications containing claims filed after the

accorded filing date XI-3

3. Analysis of the application and content of the

search opinion XI-3

3.1 The search division's dossier XI-3

3.2 Reasoning XI-3

3.2.1 Reasoned objections XI-3
3.2.2 Positive statements XI-4

3.3 Comments and amendments in response to the

search opinion XI-4
March 2024 Guidelines for Examination in the EPO Part B – Contents i

3.4 Scope 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-5

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-7

6. The search opinion where the search was limited XI-8

7. No search opinion is issued XI-8

8. Response to the extended European search

report (EESR) XI-8

9. Art. 124 and the utilisation scheme XI-10

March 2024 Guidelines for Examination in the EPO Part B – Chapter I-1

Chapter I – Introduction
1. Scope of Part B
Part B is about European searches, i.e. searches the EPO search divisions
perform for European patent applications. They also carry out other types
of search (see B-II, 4.4 to B-II, 4.6). These include searches under the
Patent Cooperation Treaty (PCT), which are dealt with in the PCT Search
and Examination Guidelines and in Part B of the Guidelines for Search and
Examination at the EPO as PCT Authority.

2. Search division
The search division is responsible for: Art. 17
Art. 18
– drafting extended European search reports, i.e. European search
reports under Art. 92 and accompanying search opinions under
Rule 62(1)

– drafting all of the different types of search report referred to in B-I, 1

and B-II, 4

– issuing any invitation under Rule 62a(1) (see also B-VIII, 4) to clarify
– or, where necessary, limit the subject-matter to be searched

– issuing any invitation under Rule 63(1) (see B-VIII, 3.1).

In cases of lack of unity, it also draws up a partial search report and a

provisional opinion on the patentability of the invention or unitary group of
inventions first mentioned in the claims (see F-V, 3.4), which includes the
reasons for the non-unity findings, and issues an invitation to pay further
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 normally also the first member of the examining
division for that application.

2.1 Consultation with other examiners

The search division may consult other examiners for advice on various
issues, for example:

(i) searching in databases it is not familiar with

(ii) understanding aspects of the claimed invention outside its area of

technical expertise

(iii) devising a search strategy (see also B-I, 2.2)

(iv) assessing the relevance of a prior-art document for determining the

patentability of claimed subject-matter (see B-X, 9.2).

2.2 Search division has more than one member

A special search division consisting of two, or possibly even three,
members may be formed where the nature of the invention makes it
Part B – Chapter I-2 Guidelines for Examination in the EPO March 2024

necessary to search in very different specialist fields, for example because

the "person skilled in the art" in the relevant technical field has to be
regarded as being more than one person (see G-VII, 3).

This may also happen where subject-matter covering different technical

fields is found to lack unity.

When the search division is enlarged this way, all the documents found in
the various technical fields by its different members are included in the
same search report. However, only one member draws up the search
opinion, albeit in consultation with the members with expertise in the other
technical fields where necessary.

2.2.1 Where claimed unitary subject-matter covers more than one

technical field
Exceptionally, where the subject-matter of an application covers two or
more technical fields which are so different that a member trained to carry
out searches in one field cannot reasonably be expected to search all of
them, two or possibly even more members may share responsibility for
drawing up the search report.

The skills needed to carry out a satisfactory search in a particular technical

field include:

(a) the technical knowledge and training required to properly understand

the claimed subject-matter

(b) expertise in using the appropriate search tools.

If the subject-matter of the application extends over different technical

fields, it may be appropriate to enlarge the search division to include a
second and possibly even more members who are 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 in a different technical field for a non-unitary

application
The search division may also have more than one member where
subject-matter in different technical fields is found to lack of unity. Such
cases are handled as follows:

(a) The first member carries out a search on the invention first
mentioned in the claims (see F-V, 3.4) in one technical field and
draws up a search opinion (if applicable – see B-XI, 7) on this first
invention and the reasons for the lack of unity. The applicant is sent a
partial search report (see B-VII, 1.1), along with an invitation to pay
further search fees for the inventions that are in another technical
field.
March 2024 Guidelines for Examination in the EPO Part B – Chapter I-3

(b) The applicant pays further search fees for the inventions they want to
have searched (see B-VII, 1.2.1).

(c) A second member specialised in the relevant technical field searches

the other inventions for which fees were paid.

(d) The second member adds an opinion on the additionally searched

inventions to the first member's opinion on unity and the first
invention.

In very exceptional cases, more than one other member (i.e. also a third or
possibly even more members) will be needed to search the other invention
or inventions for which fees have been paid, but the procedure followed is
the same.
March 2024 Guidelines for Examination in the EPO Part B – Chapter II-1

Chapter II – General
1. Search and substantive examination
The procedure a European patent application goes through from its filing to Art. 17
the grant of a patent (or the refusal of the application) has two separate Art. 18
main stages, i.e. the search and substantive examination.

1.1 Contact between the applicant and the search division

Consultations with the search division can only take place after the
application has entered the examination stage, except in the cases
mentioned in B-VIII, 3.2.2 and 4.2.2, and for issues related to the timing of
the search report. The search division must not consent to earlier
consultations (see also B-XI, 8) and must instead tell applicants that any
issues they wish to raise will be dealt with in examination. For the
procedure at the examination stage, see C-VII, 2.5.

2. Aim of the search

The search is aimed at identifying the state of the art relevant for Rule 61(1)
determining whether, and if so to what extent, the claimed invention is new
and involves an inventive step.

It is not usually aimed at finding disclosures of potential interest to the

applicant, but documents not directly relevant for assessing the
patentability of the claimed invention may be cited in the search report in
certain circumstances (see B-X, 9.2.2 and 9.2.5).

Both the content of the search opinion and the later substantive
examination depend on the outcome of the search as it establishes what
state of the art is to be taken as the basis for assessing the patentability of
the invention. The search must therefore be as complete and effective as
possible, within the limitations necessarily imposed by unity of invention
and other factors (see B-III, 2, B-VII and B-VIII).

3. Search documentation
The search is carried out in in-house or external document collections or
databases. Their contents can be accessed systematically, e.g. using
keywords, classification symbols or indexing codes. The available
documentation consists largely of patent documents but also includes
non-patent literature, such as articles from periodicals (see B-IX).

4. Search report
The search report contains the results of the search and, in particular, Art. 92
identifies the documents forming the relevant state of the art (see B-X, 9). Rule 61(1)

It informs the applicant, the EPO examining divisions and ‒ once published Art. 92
‒ the public of the relevant state of the art. Art. 93(1)

It is accompanied by a search opinion (see B-XI; except in the cases

mentioned in B-XI, 7) and, together, they make up the extended European
search report (EESR).
Part B – Chapter II-2 Guidelines for Examination in the EPO March 2024

4.1 European searches

Art. 17 The main task of the EPO's search divisions is to carry out searches and
draw up search reports for European patent applications. However, they
may also be called on to perform the various other types of search listed
below.

4.2 Additional European searches

An additional search may be necessary once a European patent application
reaches the examination stage, for example because:

(i) the claims have been amended and now encompass subject-matter
not covered by the original search (see, however, C-III, 3.2.1 and
H-II, 6.1 on claims not searched because of a lack of unity and
H-IV, 4.1.2 on amendments introducing subject-matter from the
description and so resulting in claims defining subject-matter which is
not linked to the originally searched subject-matter by a single
general inventive concept).

Rule 63 (ii) the deficiencies which resulted in an incomplete search or the issue
Art. 17(2) PCT of a declaration replacing a search report under Rule 63 or a
declaration under Art. 17(2)(a) or (b) PCT (see B-VIII and C-IV, 7.3)
have been overcome by amendments or been rebutted during
substantive examination.

Rule 64 (iii) the examining division has reversed the search division's opinion on
Rule 62a novelty or lack of inventive step (see B-III, 1.1) or on other issues
(see B-III, 1.2), in particular lack of unity of invention (see B-VII),
subject-matter to be excluded from the search (see B-III, 3.11 and
B-VIII) or Rule 62a.

(iv) the original search was limited or suffered from imperfections.

The examining division will use any new documents found in an additional
search if it considers them relevant for examining the application. It must
then make copies available to the applicant (Art. 113(1)).

Similarly, an additional search may be needed if a granted European patent

is opposed (see D-VI, 5).

4.3 Supplementary European searches

Art. 153(2), An international (PCT) application for which the EPO acts as designated
(6) and (7) Office or elected Office and which has been accorded an international filing
date is deemed to be a European patent application. Where an
international (PCT) search report is already available, it will replace the
European search report. The search division will then draw up a
supplementary European search report or issue a declaration replacing it
under Rule 63 except in cases where the Administrative Council has
decided that it can be dispensed with (see B-II, 4.3.1).

The (S)ISA/IPEA (other than the EPO) will have given opinions on the
novelty, inventive step and industrial applicability of the claimed invention
under Art. 33(1) PCT and possibly also on unity of invention under
March 2024 Guidelines for Examination in the EPO Part B – Chapter II-3

Art. 34(3) PCT and any subject-matter to be excluded from the international
search/preliminary examination under Art. 17(2)/Art. 34(4) PCT. The search
division will consider these opinions but is free to diverge from them in its
supplementary European search report and its search opinion (if applicable
– see B-XI, 7).

The search division can use the documents cited in the international search
report to support its findings (e.g. lack of novelty) in the search opinion (if
applicable – see B-XI, 7).

4.3.1 Dispensing with the supplementary European search report

The Administrative Council has decided that no supplementary European
search report is to be drawn up for an international application if:

(i) the EPO was the ISA or the SISA (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 ISA and it was
filed before 1 July 2005 (OJ EPO 1979, 248; OJ EPO 1995, 511;
OJ EPO 2012, 212 and 219).

The search fee may be reduced in these cases (see A-X, 9.3.1).

4.3.2 A supplementary European search report is required

If a supplementary European search report is required (see B-II, 4.3.1), the
supplementary European search will generally be carried out in the same
way as a European search. Any limitation is left to the search division's
discretion; a fixed approach to this is not possible since the search
practices at other ISAs are not fully harmonised with those of the EPO and
the documentation available to them may differ too.

The EPO generally aims to avoid any unnecessary duplication of work and
so relies on the efficiency and quality of the international searches as far as
possible. If the international search report has not yet been drawn up when
the application enters the European phase, the EPO will wait until it is
available before starting to process the application. The EPO as designated
Office requests the ISA or the SISA to supply, together with the
international search report, copies of the documents cited in it
(Art. 20(3) PCT, see also Rule 44.3(a) PCT or Rule 45bis.7(c) PCT). If a
cited document is not in one of the EPO's official languages and the search
division needs a translation into one of them, it provides this itself (e.g. a
patent family member or an abstract of the document in an official
language, see B-VI, 6.2) unless it can obtain it from another source,
e.g. the applicant or the ISA.

4.3.3 Application documents for the supplementary European

search report
The European grant procedure, including the supplementary European Rule 159(1)(b)
search, is based on the application documents specified by the applicant Rule 161
when the application enters the European phase (Rule 159(1)(b)).
However, if the applicant amends the application within a non-extendable
Part B – Chapter II-4 Guidelines for Examination in the EPO March 2024

period of six months from notification of a communication under

Rule 161(2) (see E-IX, 3), the amended application will be taken as the
basis for the supplementary European search instead (see also B-XI, 2).
For procedures relating to Euro-PCT applications where no supplementary
European search report is drawn up by the EPO, see E-IX, 3.2, 3.3 and 3.4.

4.4 International (PCT) searches

For the practice as regards international (PCT) searches, see the PCT
International Search and Preliminary Examination Guidelines and the latest
version of the EPO's guide for applicants entitled "Euro-PCT Guide: PCT
procedure at the EPO", which is available at epo.org.

4.5 International-type searches

Under the PCT, the EPO, as an ISA, may be entrusted with carrying out
"international-type searches" for national patent applications
(Art. 15(5) PCT). These searches are by definition similar to international
searches, and the same considerations apply, except where the national
application searched is found to lack unity of invention, in which case no
reasoned statement on this finding is included in the search report and no
invitation to pay further search fees is issued. However, it may be possible
for applicants to pay these fees directly to the national offices. Where a
written opinion is issued, it is drafted in accordance with EPO practice
under PCT Chapter I and does include a reasoned statement on any
potential lack-of-unity objection.

4.6 Searches on national applications

Prot. Centr. I(1)(b) The EPO search divisions also carry out searches on national applications
for some of the EPC contracting states. These Guidelines are not
necessarily fully applicable to these national searches and do not always
give details of how they differ from European searches. However, national
and European searches are largely identical and at any rate compatible.
March 2024 Guidelines for Examination in the EPO Part B – Chapter III-1

Chapter III – Characteristics of the search

1. Opinions of the search division

1.1 Opinions in relation to the search report

The aim of the search is to identify the state of the art relevant for Rule 61(1)
assessing novelty and inventive step (see B-II, 2). Decisions on novelty and
inventive step are the responsibility of the examining divisions, but the
search division already gives the applicant a reasoned assessment of
whether the application and the claimed invention meet the EPC
requirements in the search opinion (if applicable ‒ see B-XI, 7). The
applicant can then reply to this in the examination proceedings (Art. 113(1)
and B-XI, 8). The categories the search division assigns to the documents
cited in the search report (see B-X, 9.2) similarly amount to implicit opinions
on patentability and are subject to review by the examining division at the
examination stage (see B-II, 4.2(iii) and B-XI, 1.2), in particular in the light
of the applicant's reply (see B-XI, 8).

The assessment of patentability at the search stage can have a direct

bearing on how the search itself is carried out: see B-III, 3.8 (on searching
the subject-matter of dependent claims), B-III, 2.3 (on searching in
neighbouring technical fields) and B-IV, 2.6 (on stopping the search when
only trivial subject-matter remains).

1.2 Opinions on matters relating to limitation of the search

Occasionally, matters of substantive examination other than novelty or
inventive step have a direct bearing on how the search is carried out and
may result in its limitation. The search division's opinions on theses matters
are likewise subject to review 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 to the search opinion (see B-XI, 8).

See B-VII (Unity of invention) and B-VIII (Subject-matter to be excluded

from the search) for examples.

2. Scope of the search

2.1 Completeness of the search

A European search is essentially a thorough, all-encompassing search
carried out to a high quality standard. Nevertheless, a search of this kind
cannot always be 100% complete, in particular because all information
retrieval systems, however they are operated, are inevitably imperfect. The
search is carried out in a way that minimises the risk of overlooking
complete anticipations of any claims, or other highly relevant prior art.
Given the sheer amount of material on less relevant prior art that is
available in the document collection, it is acceptable if not all of it is found
(however, see also B-III, 2.3). For limitations of the subject-matter
searched, see B-VIII.

The scope of the international search is defined in Art. 15(4) PCT, which
states that the ISA must endeavour to discover as much of the relevant
prior art as its facilities permit and must, in any case, consult the minimum
Part B – Chapter III-2 Guidelines for Examination in the EPO March 2024

documentation specified in Rule 34 PCT. It follows from this definition ("as

much … as its facilities permit") that international searches must be
equivalent in scope to a European search and must be carried out to the
same high quality standard. This means that, if the EPO carried out the
international search or the supplementary international search, it does not
need to draw up a supplementary European search report and its
international search report can replace the European search report
(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 inherent in, or which
can be applied to, the searched document collection as it is this order that
enables the search division to determine which parts of the documentation
to consult. The basic means of creating order in a document collection are
words, classification units, indexing codes or bibliographical links. The
order can be permanent, as with indexing words or codes and classification
symbols, or it can be created on demand by a search strategy judiciously
using the basic means mentioned above to identify the parts of the
documentation that are likely to contain material relevant to the invention.
To ensure its resources are deployed as efficiently as possible, the search
division, drawing on its knowledge of the technology in question and the
available search tools, uses its judgement to omit parts of the
documentation in which it is unlikely that any relevant documents will be
found, for example parts containing documents from before the area of
technology in question began to develop. Similarly, it only needs to consult
one member of a patent family unless it has good reason to suppose that,
in a particular case, there are relevant substantial differences in the content
of different members of the same family (see B-IX, 2.4).

2.3 Search in neighbouring fields

The search division carries out the search in document collections and
databases in which it can expect to find material covering all the technical
fields directly relevant to the invention. The search strategy determines
which parts of this documentation should be consulted. The scope of the
search may then have to be extended to parts covering neighbouring fields,
but it is for the search division to decide in each individual case whether
this is necessary in view of what it has already found in the initially
consulted parts (see B-III, 3.2).

When deciding which technical fields are to be regarded as neighbouring in

a particular case, the search division has to consider what appears to be
the invention's essential technical contribution and not only the specific
functions expressly mentioned in the application.

It is left to the search division's discretion whether to widen its search to

include fields not mentioned in the application. In deciding on this, it does
not put itself in the inventor's shoes and does not try to imagine every
single possible application of the invention. The most important question
guiding its decision is whether searching in neighbouring fields is likely to
March 2024 Guidelines for Examination in the EPO Part B – Chapter III-3

uncover material on which a reasonable inventive-step objection could be

based (see T 176/84, T 195/84 and G-VII, 3).

2.4 Internet searches

The search can also cover internet sources, including online technical
journals, online databases or other websites (see OJ EPO 2009, 456). The
scope of any search on the internet will depend on the specific case, but
there are some technical fields, especially in the area of information or
software technology, where the most relevant prior art is unlikely to be
found without systematically searching there. The search division may use
the internet even when searching unpublished applications but must bear
its duty to keep them confidential in mind and take great care to ensure that
its search terms do not inadvertently disclose any confidential information
about the invention. It is up to the search division to select suitable
keywords that will enable it to search the invention effectively without
disclosing it. This means, for example, not entering long portions of a
claim's wording as a search term.

On the dating of internet citations, see G-IV, 7.5.

3. The subject-matter of the search

3.1 Basis for the search

The search is carried out on the basis of the claims, with due regard to the Art. 92
description and any drawings (Art. 92). The claims determine the extent of Art. 69(1)
the protection the European patent will confer if granted (Art. 69(1)). Rule 43(6)

3.2 Interpretation of claims

The search is not restricted by the literal wording of the claims but also not Art. 92
broadened to include everything that a person skilled in the art might
envisage from considering the description and drawings. The search
division may need to consider the contents of the description and/or
drawings when performing the search in order to:

(i) identify the technical problem and its solution

(ii) define unclear terms not defined in the claims

(iii) define clear terms given a definition different from their usual
meaning

(iv) ascertain whether there is a fallback position.

The aim of the search is to identify prior art which is relevant to novelty
and/or inventive step (see B-II, 2). The search covers what appear to be the
invention's essential features and is adapted to take account of any
changes in the (objective) technical problem solved by the invention that
may later arise in view of the prior art found so far (see B-IV, 2.3 and 2.4
and G-VII, 5.2).

When interpreting claims for the purpose of the search, the search division
will also consider any prior art comprising technical features which are
Part B – Chapter III-4 Guidelines for Examination in the EPO March 2024

well-known equivalents of the technical features of the claimed invention

and which may mean it lacks 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 the
description 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 features are
unambiguously 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 regarded as included in
the claim, an invitation under Rule 63(1) is issued. In the special case of an
"omnibus claim" (e.g. one reading: "The invention substantially as herein
described"), no invitation under Rule 63(1) is issued, and the search report
will subsequently be treated as complete. This means that this kind of
subject-matter will be dealt with only during examination.

The same procedure is followed regardless of whether or not the reference

to the drawings and/or the description is allowable under Rule 43(6). In
either case, the claim will have the same scope: if the reference is not
allowable, the applicant will be asked to copy the definition of the technical
feature from the description and/or drawings into the claim; if it is allowable,
the claim will stay as it is.

However, where the reference does not appear to be allowable under

Rule 43(6), the search division will object to it in the search opinion (if
applicable – see B-XI, 7).

3.2.2 Using the description and/or drawings to identify the technical

problem
Rule 42(1)(c) states that the description must (at least implicitly) mention
the technical problem the invention is intended to solve (see also F-II, 4.5).
This means the technical problem can be identified even if it is not
immediately apparent from the claims.

However, the technical problem may change in view of the prior art found
(see G-VII, 5.3, H-V, 2.4 and T 39/93, OJ EPO 1997, 134; see
also G-VII, 5.2, T 184/82, OJ EPO 1984, 261, and T 732/89).

3.2.3 Using the description and/or drawings to define unclear terms

not defined in the claims
Sometimes, the terms used to define claimed technical features are unclear
and so the scope of the claims cannot be determined unambiguously. The
search division then uses the description and/or drawings to interpret what
these terms mean (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
March 2024 Guidelines for Examination in the EPO Part B – Chapter III-5

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 because it is a relative term with no

well-defined meaning in the technical field, and so the scope of the claim is
also unclear (F-IV, 4.6, Art. 84). However, the description unambiguously
defines "wide" as meaning "not less than 20mm wide". The search division
takes this definition into account during the search (and subsequently
objects to the clarity of the term "wide" under Art. 84, second sentence, in
the search opinion). The definition of "wide" in the description is also a
fallback position (see B-III, 3.2.5).

3.2.4 Using the description and/or drawings to define clear terms

given a definition different from their usual meaning
The meaning given to a technical term in the description and/or the
drawings sometimes differs from the one commonly accepted in the
relevant technical field. The meaning given can make the term (and so the
scope of the claim) broader (see Example 1) or narrower (see Example 2).

Example 1

Claim 1: Halide salt of compound A

"Halide salt" normally means fluoride, chloride, bromide or iodide salt.

Description: In the context of the present invention the term halide salt
means fluoride, chloride, bromide, iodide or tosylate salt.

Here, the claim at first appears to be clear because it uses a technical term
("halide salt") that has a clear and well-established meaning in the relevant
technical field. However, the description gives this term a broader meaning
than its well-established definition (i.e. it also includes tosylate salt).

Example 2

As in Example 1, except that the description defines "halide salt" as

meaning fluoride, chloride or bromide salt.

Here, the meaning of "halide salt" is narrower than its well-established

definition (i.e. it does not cover iodide salt).

In both cases, the search will take into account both the term's generally
accepted definition in the relevant technical field and its definition in the
application itself.

3.2.5 Ascertaining whether there is a fallback position

Claims sometimes contain an unclear and undefined term for which a clear
preferred embodiment (i.e. a "fallback position"; see B-III, 3.2(iv)) is given
only in the description and/or drawings (see B-III, 3.2.3). The search will
then be based on the broadest technically sensible interpretation of the
Part B – Chapter III-6 Guidelines for Examination in the EPO March 2024

term. However, if the term's meaning is so unclear that a meaningful search

cannot be carried out, it is justified to limit the scope of the search under
Rule 63.

3.3 Amended claims, missing parts (Rule 56) or erroneously filed

application documents or parts (Rule 56a)

3.3.1 General considerations

Rule 56 Where a European application does not derive from an earlier international
Rule 56a application, the applicant is not allowed to amend the claims before
Rule 137(1) receiving the European search report (Rule 137(1)). This means that the
search is carried out on the basis of the claims in the European application
as originally filed or of any set of claims filed under Rule 57(c) or 58.

Search and examination will be based on the filing date and the application
documents established during the procedure under Rule 56 or 56a. These
documents are considered the documents as originally filed within the
meaning of Art. 123(2). If they contain missing parts of the description
and/or missing drawings filed under Rule 56(3), the application including
the missing parts will form the basis for the search. In cases where
erroneously filed documents and correct documents are both part of the
application as filed (i.e. in cases under Rule 56a(4) of corrections without a
change in the filing date), the search will be performed as usual, and the
procedures under Rule 63 or 64 applied where appropriate. If the EPO has
already begun to draw up the search report when correct documents are
filed, the applicant will be invited to pay a further search fee (Rule 56a(8))
(see A-II, 6.7).

In addition, when the search division expects the application to be redated

by the examining division later on in the proceedings (see C-III, 1), it
checks whether the Receiving Section's assessment of the "completely
contained" criterion was correct (see H-IV, 2.2.2). If the Receiving Section
wrongly considered that the missing parts and/or elements or the correct
parts and/or elements were completely contained in the priority document,
the search will be widened to include documents which would be relevant if
the application were to be redated (such documents can be cited as "L"
documents in the European search report (see also B-XI, 2.1)). The same
applies to Euro-PCT applications which contain missing parts of the
description, drawings or claims and/or missing elements filed under
Rule 20.6 PCT.

3.3.2 Specific rules applicable to Euro-PCT applications

Rule 159(1)(b) Where a European application derives from an earlier international
Rule 161 application, the applicant may have amended the international application
in the international phase, either after receiving the international search
report (Art. 19(1) PCT) or during international preliminary examination
(Art. 34(2)(b) PCT). Under Rule 159(1)(b), the applicant can then choose
whether to enter the European phase with these amended application
documents (including claims) or with the ones originally filed. The EPO also
gives them an opportunity to amend the application documents (including
the claims) within a set time limit (Rule 161(2), see E-IX, 3). The application
March 2024 Guidelines for Examination in the EPO Part B – Chapter III-7

as amended is then taken as the basis for any supplementary European

search to be carried out under Art. 153(7) (see B-II, 4.3 and B-XI, 2).

See B-VIII, 6 for the procedure followed where the claims of an

international application entering the European (regional) phase are
amended in such a way that they contravene Art. 123(2).

3.4 Abandoned claims

Claims in a European patent application that are deemed to have been Rule 45(3)
abandoned because the fees for them were not paid must be excluded Rule 162(4)
from the search. The claims which have actually been searched are
specified in the search report. This applies both to searches on directly filed
European patent applications and to supplementary European searches on
Euro-PCT applications entering the European phase (see B-II, 4.3).

3.5 Anticipation of amendments to claims

In principle, and in so far as possible and reasonable, the search covers all
the subject-matter to which the claims are directed or to which they might
reasonably be expected to be directed if they are amended (see, however,
B-VII, 1.3 on cases of lack of unity and H-IV, 4 on the ambit of Rule 137(5)).

Example

Where an application relating to an electric circuit contains one or more

claims directed only to the function and manner of operation, and the
description and drawings include an example detailing a non-trivial
transistor circuit, the search includes this circuit.

However, it is not sufficient for the application as filed to contain one

broadly worded independent claim covering several embodiments, and no
dependent claims, for the applicant to be entitled to a search of all the
features of those embodiments (see T 1679/10).

3.6 Broad claims

The search division does not have to make any special effort to search Art. 83
unduly wide or speculative claims beyond the subject-matter that is Art. 84
sufficiently disclosed in the application (Art. 83) and supported by the
description (Art. 84).

Example 1

If the claims in an application that relates to an automatic telephone

exchange and describes it in detail are directed to an automatic
communication switching centre, the search is not widened to include
automatic telegraph exchanges, data switching centres, etc. merely
because the claims are broadly worded but only if it is probable that it will
then produce a document on which a reasonable novelty or inventive-step
objection could be based.

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 of
Part B – Chapter III-8 Guidelines for Examination in the EPO March 2024

a resistor element, and do not indicate how other types of impedance

element could be manufactured by the claimed process, widening the
search to include, say, the manufacture of capacitors is normally not
justified.

Example 3

If the main claim relates to the chemical treatment of a substrate, but it

appears from the description or all the examples that the problem to be
solved depends solely on the nature of natural leather, the search is
normally not widened to cover the fields of plastics, fabrics or glass.

Example 4

If the description and drawings are directed to a lock with a safety cylinder
but the claims refer to a device allowing the indexation of the angular
position of a first element with respect to two other rotating elements, then
the search is limited to locks.

In exceptional cases where there is such a lack of disclosure or support

that a meaningful search over the whole scope of the claims is impossible,
it may make sense to follow the procedure under Rule 63 and issue either a
partial search report or a declaration replacing the search report
(see B-VIII, 3).

3.7 Independent and dependent claims

Rule 43(4) The search carried out in the documentation to be consulted for the
independent claim or claims must also cover all dependent claims (for
cases not complying with Rule 43(2), see B-VIII, 4). Dependent claims are
ones which are restricted by all the features of the claim or claims on which
they depend. So, where the subject-matter of an independent claim is
novel, that of its dependent claims will also be novel (see, however,
F-VI, 2.4.3). When the patentability of the subject-matter of the independent
claim is not in doubt after the search, there is no need to carry out a further
search or cite documents for the subject-matter of the dependent claims as
such (see, however, B-II, 4.2(iii) and B-XI, 1.2).

Example 1

An application relating to cathode ray oscilloscope tubes has an

independent claim directed to specific means along the edge of the front of
the tube for illuminating the screen and a dependent claim directed to a
specific connection between the front and the main part of the tube. When
searching in the parts of the documentation consulted for the illumination
means, the search division will also look for material relating to the
connecting means, whether in combination with the illumination means or
not. But, if its search in these parts of the documentation does not cast any
doubt on the patentability of the illuminating means, it will not continue the
search on the connecting means in other parts of the documentation which
are likely to contain material relevant to or dealing specifically with these
connections.
March 2024 Guidelines for Examination in the EPO Part B – Chapter III-9

Example 2

An application dealing with a pharmaceutical composition for treating nail

infections has an independent claim relating to specific combinations of the
active ingredients The patentability of this claim's subject-matter is not in
doubt after the search, so there is no need to continue the search in
relation to dependent claims dealing with the use of a specific volatile
organic solvent as a carrier in the composition.

3.8 Search on dependent claims

However, where there is doubt about whether the independent claim's
subject-matter is patentable, the search may have to be continued in other
parts of the documentation, e.g. in one or more additional classification
units, in order to assess whether the subject-matter of the dependent claim
as such is novel and involves an inventive step. No special search is
carried out for features that seem prima facie trivial or are generally known
in the art. However, a handbook or other document showing that a feature
is generally known can be cited if it can be found quickly (see G-VII, 6(iii)).
A dependent claim that adds another feature (instead of providing more
detail on something already in the independent claim) has 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 aimed at finding prior art relating to the combination.
However, when searching the parts of the documentation selected for this,
the search division should also search them for sub-combinations, including
the elements individually (e.g. A and B, A and C, B and C, and also A, B
and C separately). Other parts of the documentation are searched either for
sub-combinations or for individual elements of the combination only if this is
still necessary for establishing the novelty of the element in order to assess
whether the combination involves an inventive step.

3.10 Different categories

If the application contains different categories of claims, the search must
cover all of them (for cases not complying with Rule 43(2), see B-VIII, 4).
However, if a product claim clearly seems to be both new and non-obvious,
the search division will not carry out any special search on claims 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 the application
contains only claims of one category, it may make sense to include other
categories in the search. For example, it can generally be assumed,
i.e. unless the application contains contrary information, 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 products will only be
searched if they are the subject-matter of one or more claims. The final
products on the other hand will always have to be searched unless they are
clearly known.
Part B – Chapter III-10 Guidelines for Examination in the EPO March 2024

3.11 Subject-matter excluded from search

Rule 63 The search division can decide to exclude certain subject-matter from its
Rule 62a search. It may do this where the subject-matter falls under one of the
exceptions to patentability laid down in the EPC or cannot be considered
susceptible to industrial application (see B-VIII, 1 and 2). It may also do this
where the application falls so short of other EPC requirements that it is
impossible to carry out a meaningful search on some or all of the claims or
part of a claim (see B-VIII, 3) or where the application does not comply with
Rule 43(2) (see B-VIII, 4).

3.12 Lack of unity

Rule 64 Where the claims do not relate to a single invention only ‒ or to a group of
inventions that are so closely linked that they form a single general
inventive concept ‒ the search will normally be restricted to the invention or
linked group of inventions first mentioned in the claims (see B-VII and
F-V, 3.4). If the search is restricted this way, the applicant will be informed
in a communication accompanying the partial search report (see B-VII, 1.2).

3.13 Technological background

It makes sense to widen the scope of the search to include the following
"technological background" to the invention:

– the preamble to the first claim, i.e. the part coming before the
expression "characterised by" or "characterised in that"

– any state of the art which the introductory part of the description says
is known but which is not identified by specific citations

– the general technological background to the invention (often called

"general state of the art").
March 2024 Guidelines for Examination in the EPO Part B – Chapter IV-1

Chapter IV – Search procedure and strategy

1. Procedure before searching
Starting the workflow for a European search report, a European search
opinion or a clarification request under Rule 62a and/or 63(1) triggers a
pre-search algorithm that generates a list of documents to be inspected by
the search division. This creates a marker in the file showing that the
search division has started the search. The date when the search started
will be relevant if the search fee has to be refunded because the application
is withdrawn, refused or deemed to be withdrawn (see A-X, 10.2.1).

1.1 Analysis of the application

The search division first of all studies the application to determine the
subject-matter of the claimed invention (see B-III, 3) and critically analyses
the claims in the light of the description and drawings to establish whether
they are potentially open to any objection. In particular, it studies the
content of the claims, description and drawings in enough detail to identify
the problem the invention is intended to solve, the inventive concept
leading to its solution, the features essential to the solution, as found in the
claims, and the results and effects obtained (see, however, B-III, 3.5). If,
according to the description, technical features not included in the claims
are essential to solving the stated problem, these features are included 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 Art. 90
overlooked by the Receiving Section, it issues an internal communication Art. 92
bringing them to the attention of the Receiving Section (or of the examining Art. 78
division, where it has requested an additional search), which then takes Art. 53(a)
appropriate action. However, the search division does not redo the Rules 30 to 34, 40 to
Receiving Section's work and does not make any time-consuming enquiries 45, 47 to 50 and 55 to
into the formalities. Deficiencies it might notice in an application include: 58
OJ EPO 2022, A113
(i) physical deficiencies (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 to number pages
(Art. 2(5) of the decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113)

(c) drawings in the description and/or claims (Art. 2(8) of the

decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113)

(d) erasures and/or alterations in the application documents that

cast doubt on the authenticity of their content and/or are not
conducive to good reproduction (Art. 2(11) of the decision of
the President of the EPO dated 25 November 2022,
OJ EPO 2022, A113).
Part B – Chapter IV-2 Guidelines for Examination in the EPO March 2024

Art. 53(a) (ii) prohibited matter, i.e. content which:

Rule 48(1)(a) and
(b) (a) is contrary to "ordre public" (see A-III, 8.1, F-II, 7.2 and
G-II, 4.1, 4.1.1 and 4.1.2) or

(b) amounts to a disparaging statement (see A-III, 8.2) (as

opposed to permissible "fair comment" – see F-II, 7.3).

Rules 31 to 33 (iii) non-compliance with the provisions on depositing biological material

(see A-IV, 4), in particular any failure to properly identify the
depositary institution and the accession number it assigned to the
biological material (Rule 31(1)(c); see G 2/93 and A-IV, 4.2).

(iv) a failure to correctly identify the application as a divisional application

within the meaning of Art. 76(1) (Rule 41(2)(e); see A-IV, 1.3.2).

(v) text in two different EPO official languages (Art. 14).

1.3 Documents cited or supplied by the applicant

Rule 66 Under the utilisation scheme (see Rule 141(1) and B-XI, 9, as well as
Rule 141 OJ EPO 2010, 410), applicants whose application claims a priority are
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 found by the office of first filing is made available
before the search has been completed, the search division will check the
citations and assess whether they are relevant for examination and for
defining the search strategy.

The search division will also look at documents cited in the application if
they are referred to as the starting point of the invention, as showing the
state of the art or as providing alternative solutions to the problem
concerned or if the application's content cannot be properly understood
without them. But it can disregard them if they clearly relate only to details
not directly relevant to the claimed invention.

In the exceptional case that the application cites a document that has not
been published or is otherwise unavailable to the search division, and it
appears to be so essential to properly understanding the claimed invention
that a meaningful search on at least part of it would not be possible without
knowing what is in it, the search division will send an invitation under
Rule 63 (see B-VIII, 3) that specifies:

(i) which document is needed

(ii) why it is needed

(iii) what will happen if it is not submitted in time (see below).

The applicant can respond by:

(a) either submitting a copy of the document

March 2024 Guidelines for Examination in the EPO Part B – Chapter IV-3

(b) or arguing why the document is not needed for a meaningful search
and/or indicating a part of the application whose subject-matter can
be searched without knowing what is in the document.

If the applicant does not submit a copy of the document ‒ or convince the
search division that it is not needed for a meaningful search ‒ within the
time limit under Rule 63(1), the search division will issue a partial search
report or, where applicable, a declaration replacing the search report under
Rule 63 (see B-VIII, 3.2.1) on the following grounds:

(1) because the document was not available, the claimed invention had
to be regarded as insufficiently disclosed within the meaning of
Art. 83 and

(2) the invention was so insufficiently disclosed that it was impossible to

carry out a meaningful search on at least part of it (see B-VIII, 3).

If the applicant submits the document after the search report and the
search opinion (if applicable ‒ see B-XI, 7) have been drawn up, the
examining division may later carry out an additional search on the originally
excluded subject-matter in view of the correction of the deficiency which led
to the incomplete search (see C-IV, 7.3).

However, applicants should bear in mind that information in documents

referred to in their application can only be taken into account for sufficiency
of disclosure under Art. 83 in the circumstances described in F-III, 8.

2. Search strategy

2.1 Subject-matter of the search; restrictions

Once the search division has determined the subject-matter of the invention Rule 63
as outlined in B-IV, 1.1, its first step is to define its approach to the search ‒ Rule 62a
in terms of what concepts, classes, keywords, etc. it plans to use ‒ as
precisely as possible. Often, one or more of the claims themselves can be
used for this, but they may have to be generalised in order to cover all
aspects and embodiments of the invention. At this point, the search division
should also think about whether there is any non-patentable subject-matter
(see B-VIII, 1 and 2) or any lack of unity of invention (see B-VII, 1.1). It may
also have to restrict the search because claims have to be regarded as
abandoned (see B-III, 3.4), because the application falls so short of the
EPC requirements that a meaningful search is impossible (see B-VIII, 3) or
because the application does not comply with Rule 43(2) (see the
procedure described in B-VIII, 4). If the search is restricted, this must be
mentioned in the search report or the declaration replacing it under
Rule 63. The declaration must indicate the reasons for any restrictions
under Rule 63 (see B-X, 8(iii)). The declaration or the partial search report
is then treated as the search report for the purposes of the subsequent
proceedings.

2.2 Devising a search strategy

The search division next starts the search process by devising a search
strategy, i.e. a plan consisting of a series of search statements reflecting
Part B – Chapter IV-4 Guidelines for Examination in the EPO March 2024

the subject-matter to be searched and determining the parts of the

documentation to be consulted. A search strategy will initially be made up
of one or more combinations of the basic search means mentioned in
B-III, 2.2. But the search process is interactive and iterative in the sense
that the search division will revise its initial search statements depending on
how useful it considers the information it has found so far (see B-III, 1.1 and
B-IV, 2.4 and 2.6). When using classification groups, the search division
selects not only ones in all directly relevant fields but also ones in
neighbouring fields.

If appropriate, the search division will also consult other classification

(e.g. FI) or indexing (e.g. F-terms) schemes. It can also consult colleagues
working in a similar technical field or in fields possibly related to the content
of the application (see B-I, 2.1).

If in doubt about the right fields to search, the search division can ask a
classification expert.

There are usually various possible search strategies, and the search
division, drawing on its experience and knowledge of the available search
tools, will use its judgement to select the one most appropriate in the case
in hand. The search division prioritises search strategies leading to those
parts of the documentation where relevant documents are most likely to be
found. It will usually give the main technical field of the application priority,
first of all using the basic search means (see B-III, 2.2) most relevant to the
specific examples and preferred embodiments of the claimed invention. It
will always consider the results already obtained in deciding whether it
needs to widen the search to include other, less relevant parts of the
documentation.

2.3 Carrying out the search; types of documents

The search division then carries out the search, focusing on documents
relevant for novelty and inventive step.

It also notes any documents that may be important for other reasons, such
as:

(i) conflicting documents (see B-VI, 4), i.e.:

(a) published European patent applications under Art. 54(3)

(see G-IV, 5.1 and 5.1.1)

(b) published international applications under Art. 54(3) and

Art. 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 the

application which may become relevant under Art. 54(2) if the
priority date turns out to be invalid.
March 2024 Guidelines for Examination in the EPO Part B – Chapter IV-5

If the applications listed above were published within the searched

application's priority interval, they will be cited in the search report as
"P" documents (see B-X, 9.2.4); if they were published on or after the
European or international filing date, they will be cited as
"E" documents (see B-X, 9.2.6).

(ii) documents that cast doubt on 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 that help to understand the claimed invention better or to

understand it correctly, which are cited in the search report as
"T" documents (see B-X, 9.2.5).

(iv) documents illustrating the technological background, which are cited

in the search report as "A" documents (see B-X, 9.2.2).

(v) European patent applications that have the same filing or priority
date as the searched application, were filed by the same applicant
and relate to the same invention and that are therefore relevant to
the issue of double patenting (see G-IV, 5.4), which are cited in the
search report as "L" documents (see B-X, 9.2.8 (c)).

(vi) documents indicating or establishing the publication date of a

document found on the internet (see G-IV, 7.5), which are cited in the
search report as "L" documents (see B-X, 9.2.8 (b)).

(vii) documents found on the internet which do not have any publication
date but which the search division nonetheless wants to cite to inform
the applicant or third parties (see G-IV, 7.5.4), which are also cited in
the search report as "L" documents (see B-X, 9.2.8).

However, the search division does not spend a lot of time searching for
these documents or considering any related matters unless it has a special
reason for doing so in a particular case (see B-VI, 5.3 and B-XI, 4).

2.4 Redefining the searched subject-matter

Throughout its search, the search division continuously evaluates the
results obtained so far and, based on the outcome, uses its judgement to
decide whether to redefine the searched subject-matter. For example, the
results may show that it needs to change the classification units selected
for search or the order of searching them. They may also show that it
needs to approach the search documentation in a different way, e.g. by
consulting:

(i) documents cited in relevant documents found during the search, for
example cited in the description or search report of a patent
document, or

(ii) documents citing a relevant document found during the search

Part B – Chapter IV-6 Guidelines for Examination in the EPO March 2024

or that it needs to turn to documentation not available to it in-house

(see B-IX). When searching external document collections for material
relating to unpublished subject-matter using non-secure connections, e.g.
on the internet, the search division must choose its search strategies
extremely carefully to ensure it does not unwittingly reveal confidential
material – i.e. any part of the unpublished patent application (see B-III, 2.4).

2.5 Closest prior art and its effects on the search

Sometimes the search division does not find any documents published
before the earliest priority date which prejudice the novelty or the inventive
step of the claimed invention. Wherever possible, it will then cite in the
search report at least that prior art found which discloses a solution to the
same subjective problem as the one dealt with by the claimed invention and
whose known solution comes technically closest to the claimed solution.
This prior art is cited as an "A" document in the search report
(see B-X, 9.2.2).

If it cannot find such a document, the search division will instead cite as the
closest prior art a document which discloses a solution to a problem closely
related to the one dealt with by the claimed invention and whose solution is
technically the most similar to the one in the searched application.

The search division proceeds in the same way where it finds documents
which are accidentally prejudicial to the novelty of the claimed invention
(cited as "X" documents) but which do not affect inventive step once the
application has been amended appropriately, and does not retrieve any
other documents prejudicing inventive step.

Where a European application is derived from an international application

and undergoes a supplementary European search after entering the
European phase (Art. 153(7) – see B-II, 4.3), the search division sometimes
does not uncover any relevant prior-art documents other than the ones
already cited by the ISA in its international search report. When this
happens, it is permissible for its supplementary European search report not
to cite any additional relevant documents (see B-X, 9.1.4).

2.6 End of search

Efficiency dictates that the search division use its judgement to end its
search once the probability of discovering any more relevant prior art
becomes very low in comparison to the work involved. It can also stop its
search once it has found documents which clearly demonstrate that the
entire subject-matter of the claimed invention and its embodiments in the
description lack novelty, except for features which are trivial or common
general knowledge in the relevant field and whose application would not
involve any inventive step. As to the search for conflicting applications,
see B-VI, 4.

3. Procedure after searching

3.1 Drawing up the search report

Once it has ended its search, the search division selects the documents to
be cited in the search report from among those it has found. These always
March 2024 Guidelines for Examination in the EPO Part B – Chapter IV-7

include the most relevant ones (which will be specially labelled in 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. If there is some doubt about
novelty or inventive step, the search division will cite rather more readily to
enable the examining division to consider the matter more fully
(see B-III, 1.1).

The search division does not cite more documents than necessary in the
search report and so, if there are several equally relevant documents, it
normally cites only one of them. The search report is anyway accompanied
by an automatically generated annex listing the available patent documents
belonging to the same patent family. When selecting which of these
documents to cite, the search division should think about what language is
the most convenient, and should preferably cite (or at least note)
documents in the same language as the application (see B-X, 9.1.2).

3.2 Documents discovered after completion of the search

The search division occasionally discovers other relevant documents after
completing the search report (e.g. in a later search for a related
application). These documents can be used in examination (see C-IV, 7.5).

3.3 Errors in the search report

If an editorial error is found in a search report before it has been published,
a new search report will be drawn up to replace it. Where the search report
has already been sent to the applicant in accordance with Rule 65 but has
not yet been published, the applicant is notified of the error immediately. If
a serious error is discovered after publication, a corrigendum is published in
the European Patent Bulletin, and the applicant and the examining division
are informed accordingly. If a different document from the one cited has
been made available to the applicant by mistake, the right one is made
available.
March 2024 Guidelines for Examination in the EPO Part B – Chapter V-1

Chapter V – Preclassification, IPC and CPC

classification of European patent applications
1. Definitions
"Preclassification" is a first stage of classification using appropriate
classification symbols to broadly identify the subject-matter of the claimed
invention (or the invention first claimed if there is more than one) for the
purposes of internal application (file) routing and allocation.

"IPC classification" involves assigning the appropriate classification

symbols under the International Patent Classification (IPC) scheme
published by WIPO. See the WIPO website for the IPC edition currently in
force, and the "Guide to the IPC", which explains the principles and rules of
IPC classification.

"CPC classification" involves assigning the appropriate classification

symbols under the Cooperative Patent Classification (CPC) scheme
published by the EPO and the USPTO. See the CPC website for the CPC
edition currently in force, and the "Guide to the CPC", which complements
the "Guide to the IPC" in that it deals with the differences between the CPC
and the IPC.

2. Preclassification (for file routing and allocation)

Applications have to be preclassified to ensure they are allocated to the
right search division. The preclassification is assigned using IPC and/or
CPC symbols and entered on the electronic file. Based on a cursory read of
the application, this initial level of classification is kept as general as
possible but should still be specific enough to avoid the need for any further
preclassification of the file before it can be properly allocated. In the rare
case that this is necessary, arrangements should be made for the file to be
redistributed as quickly as possible.

2.1 Incorrect preclassification

If the search division finds that an application has been incorrectly
preclassified and so wrongly allocated to it, it will reallocate it to the right
search division by making the appropriate changes on the electronic file.
This is normally agreed beforehand with the other search division, but there
is sometimes disagreement or uncertainty over classification boundaries, or
the search division to which the application was initially allocated may be
unsure how to preclassify it correctly. In such cases, it does not spend time
trying to resolve the matter but instead forwards the file to a classification
specialist.

3. IPC classification of the application

The IPC classification of a patent application is assigned by the search
division.

The IPC classification identifies all features relevant to the technical

subject-matter of the claimed invention (or of each of the claimed inventions
if there is more than one) as precisely and comprehensively as possible
under the IPC scheme.
Part B – Chapter V-2 Guidelines for Examination in the EPO March 2024

The IPC classification consists of "invention information" symbols and

"additional information" symbols (the latter include IPC indexing codes)
which are assigned according to the IPC rules set out in the "Guide to the
IPC". If more than one symbol has to be assigned for the invention itself,
the symbol which, in the search division's opinion, best identifies it ‒ or, if
that is not straightforward, the one identifying it for which most information
is given ‒ is indicated first. The IPC classification should preferably be
assigned after the search division has studied the content of the application
to decide how to carry out the search. However, if the application is due to
be published before the search report is drawn up, it will have to study it in
enough detail to decide on the IPC classification at this earlier stage
(see B-X, 5).

The IPC classification relates to what is disclosed in the published

application, i.e. the application as filed, and so is determined without taking
into consideration what the application could potentially contain if it is later
amended. If, however, the search division's understanding of the invention,
or of the content of the application as filed, changes significantly during the
search (e.g. as a result of prior art found or because obscure points have
been clarified) and the preparations for publication have not yet been
completed, it will amend the classification accordingly.

3.1 IPC classification of late-published search reports

Where the search report is published separately from the application
because it was not available in time and the search division finds it
necessary to amend the assigned IPC classification for the reasons given
in B-V, 3, last paragraph, it will specify the new IPC classification on the
search report and point out that it replaces the one on the published
application (which then becomes merely the "classification for publication").
It will only change the IPC classification if it 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
drawn up and published separately at a later stage (A3 publication). It can
happen that a new edition of the IPC is published in the meantime. The
search division will then use the IPC edition which was in force when the
application was published for the search report.

3.2 IPC classification where the scope of the invention is unclear

(e.g. a partial search)
Where the scope of the invention is unclear, the IPC classification has to be
based on what appears to be the invention in so far as this can be
understood. It will then have to be amended if the search clears up the
obscure points (see B-V, 3, last paragraph).

3.3 IPC classification in cases of lack of unity of invention

If the search division finds that the application lacks unity of invention, each
of the different inventions claimed must be classified as set out in B-V, 3 to
3.2 because they will all be disclosed in the published application.
March 2024 Guidelines for Examination in the EPO Part B – Chapter V-3

3.4 Verification of the IPC classification

As a general rule, applications are not systematically scrutinised after
leaving the search division to verify whether it assigned the correct IPC
classification. However, the EPO may carry out any spot-checks it
considers necessary to ensure that the IPC is applied correctly and
uniformly. It is for line managers to decide, based on the search division
members' level of experience, whether such checks are needed and, if so,
to arrange for them to be carried out before the applications leave their
units.

4. CPC classification of the application

Besides assigning an IPC classification, the search division also classifies a
patent application under the CPC. In practice, the CPC classification is
assigned first, and the relevant IPC symbols are then generated from the
CPC ones by one-to-one concordance (see the CPC to IPC Concordance
List, published on the CPC website).

The CPC classification should be as precise and comprehensive as

possible under this classification scheme. The CPC comprises "invention
information" symbols and "additional information" symbols. Additional
information symbols include CPC indexing codes. If more than one CPC
classification symbol has to be assigned for the invention itself, the symbol
which, in the search division's opinion, best identifies it ‒ or, if that is not
straightforward, the one identifying it for which most information is given ‒
is indicated first.

Like the IPC classification, the CPC classification should preferably be

assigned after the search division has studied the content of the application
to decide how to carry out the search.

Again like the IPC classification, the CPC classification relates to what is
disclosed in the published application, i.e. the application as filed, and so is
determined without taking into consideration what the application could
potentially contain if it is later amended.

However, if the search division's understanding of the invention, or of the

content of the application as filed, changes significantly during the search, it
will change the CPC classification accordingly, using the appropriate
classification tools. Unlike a change to the IPC classification (see B-V, 3
above), this change can be made even after the preparations for
publication have been completed.

If the scope of the invention is unclear (e.g. a partial search is necessary)

or if there is a 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 2024 Guidelines for Examination in the EPO Part B – Chapter VI-1

Chapter VI – The state of the art at the search

stage
1. General
General considerations applying to the state of the art and patentability,
especially in the context of assessing novelty and inventive step, are set
out in G-IV.

2. Oral disclosure, use, exhibition, etc. as state of the art

Under Art. 54 EPC, a public oral description, use, exhibition, etc. is also Rule 61(4)
considered to be prior art. The search division cites such an oral disclosure
as prior art only if it is convinced that the facts can be proved, for example if
a document confirming the oral disclosure is available. Written confirmation
can be accepted as proof even if it was published after the filing date of the
searched application as it is the date of the oral disclosure which is decisive
under Art. 54(2). The search division then gives the date of the non-written
disclosure as the relevant date (see G-VI, 3) but must also indicate the date
of the subsequent written disclosure.

However, such instances of 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 the search stage and it is
therefore uncertain whether they are valid, the search for conflicting
applications will be widened to cover all published applications with an
earliest claimed priority date up to the searched application's filing date (not
its claimed priority date or dates) (see B-IV, 2.3 and B-XI, 4).

4. Conflicting applications

4.1 Potentially conflicting European and international applications

Where the search is carried out less than 18 months after the application's Art. 54(3)
European or international filing date (i.e. its filing date under Art. 80 and not
its claimed priority date or dates), it will generally not have been possible to
search for all potentially conflicting European and international applications,
and so the examining division will have to complete this search at the
examination stage (see C-IV, 7.1). However, if the search division does find
any potentially conflicting published documents, it will cite them in the
search report.

Patent documents, regardless of their state or region of origin, which have

a filing date or valid priority date before the filing date of the searched
application (not its priority date) but were published on or after that filing
date and which contain novelty-destroying subject-matter for at least one
independent claim of the application are referred to as "E" documents
(see B-X, 9.2.6).

"E" documents cited in a European search report can be other European or

international (WO) patent applications with an earlier priority date
Part B – Chapter VI-2 Guidelines for Examination in the EPO March 2024

(Art. 54(3)) which are relevant because they anticipate the novelty of the
subject-matter claimed in the searched application.

An "E" document is novelty-destroying prior art under Art. 54(3) no matter

where it discloses the subject-matter in question, i.e. whether it is in the
claims, description or drawings.

4.1.1 Published European patent applications as "E" documents

(a) European patent applications filed between 1 July 1997 and
12 December 2007 were published with all EPC contracting states
automatically designated (OJ EPO 1997, 160) because the
designation fees were not payable until after publication
(Art. 79(2) EPC 1973). However, the automatic designations made
on publication were retroactively invalidated under
Rule 23a EPC 1973 for the purposes of Art. 54(3) and (4) EPC 1973
if the relevant designation fees were not then paid on time.

This means that, when a European patent application is found which

is potentially relevant as an "E" document because it contains
novelty-destroying subject-matter and claims earlier priority rights,
and it was filed after the rule on the designation of states changed
(i.e. as from 1 July 1997) but before the entry into force of EPC 2000,
it is not immediately apparent from the published document which
contracting states were validly designated. Nevertheless, such an
application is always cited as an "E" document on the assumption
that it has validly designated states in common with the searched
application.

(b) Any European patent application filed on or after 13 December 2007

which has an earlier filing date than the searched application and
was published on or after that application's filing date is potentially
state of the art for the purposes of Art. 54(3), regardless of whether
the same states are designated.

4.1.2 Published international applications (WO) as "E" documents

(a) According to Art. 158(1) EPC 1973, a conflicting PCT application will
constitute prior art within the meaning of Art. 54(3) and (4) EPC 1973
only if before 13 December 2007:

– it designates the EPO,

– where necessary, the applicant supplied the EPO with a

translation into an official EPO language and

– the applicant paid the EPO's national basic fee (the same as
the filing fee) under Rule 107(1)(c) EPC 1973 and the EPO's
designation fees under Rule 107(1)(d) EPC 1973.
March 2024 Guidelines for Examination in the EPO Part B – Chapter VI-3

(b) According to Rule 165, a conflicting PCT application will constitute

prior art within the meaning of Art. 54(3) only if on or after
13 December 2007 (see G-IV, 5.2):

– it designates the EPO,

– where necessary, the applicant has supplied the EPO with a

translation into an official EPO language required under
Art. 153(4) and Rule 159(1)(a) and

– the applicant has paid the filing fee under Rule 159(1)(c).

Even if it is not possible to verify any of the above requirements based on

the published international (WO) application (in particular because the
31-month time limit for meeting them under Art. 22 PCT and Art. 39 PCT
has not yet expired for the international application at the time of the
search), the application should still be treated as potentially relevant under
Art. 54(3) and so be cited as an "E" document in the search report (see
also B-X, 9.2.6).

4.2 National prior rights

National applications may have been filed in one or more of the contracting Art. 139(2)
states designated in the European patent application before its filing or
priority date and then published as national applications or patents on or
after that date. Such applications do not prevent granting a European
patent, but are a potential ground for revocation in the state or states
concerned, and so they are important for the applicant (see H-III, 4.4). If
any are found during the search, they will be mentioned in the search report
for information (see B-X, 9.2.6).

5. Relevant date for documents cited in the search report; filing and
priority date

5.1 Verification of claimed priority dates

Where the validity of a priority claim cannot be verified at the search stage Art. 80
(see B-XI, 4), the filing date of the European patent application accorded by Rule 40
the Receiving Section must be taken as the relevant date for the search. Art. 90(3)
(However, see B-VI, 3 on the relevant date for the search for conflicting Art. 54(2)
applications.)

5.2 Intermediate documents

The search division takes documents published between the priority date
and the filing date of the searched application into account and labels them
as such in the search report (see B-X, 9.2.4). For identifying what
documents can be considered when an application has more than one
priority date, the earliest date applies. When selecting which documents to
cite in the search report, the search division refers to these dates and
preferably chooses a document published before the priority date. For
example, if there are two equally relevant documents, one published before
the priority date and the other after that date but before the filing date, the
search division will choose the former (see B-IV, 3.1, second paragraph).
Part B – Chapter VI-4 Guidelines for Examination in the EPO March 2024

5.3 Doubts about the validity of the priority claim; widening of the
search
The examining division is responsible for checking whether and to what
extent the priority claim is justified. However, if its search uncovers
intermediate state of the art (see B-VI, 5.2) or potential state of the art
under Art. 54(3), the search division will, if possible, check the validity of the
priority claim (see B-XI, 4, F-VI, 1.2 to F-VI, 1.5 and F-VI, 2). Similarly, if it
finds a document showing that a priority claim might not be justified (e.g. an
earlier application or patent belonging to the same applicant and
suggesting that the application from which priority is claimed may not be
the first application for the invention concerned), it will cite this document in
the search report (see B-X, 9.2.8). However, it will not normally carry out
any special search for such documents and will do so only if it has a
particular reason, e.g. when the priority application is a
"continuation-in-part" of an earlier application from which no priority is
claimed (see B-IV, 2.3 and F-VI, 2.4.4). Sometimes the fact that the
applicant's country of residence is different from the priority application's
country of filing can also be an indication that it is not a first filing and so
justify widening the search to some extent.

If the search is widened this way, it will cover:

(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 Subject-matter

01.03.98 GB1 filed A

30.05.98 GB2 filed A
30.05.99 EP1 filed A
(claiming priority of GB2)
10.09.99 GB1 published A

During the search for EP1, the search division found published
application GB1. GB1 was filed earlier than GB2 and so may
prejudice the priority claim of EP1. The search division therefore cites
published GB1 in the search report as an "L" document
(see B-X, 9.2.8(a)).

(ii) published patent documents which claim priority from an application

filed before the searched application's priority date

Example 2 (assuming that the applicant is the same for all

applications)

Date Application Subject-matter

01.03.98 GB1 filed A

30.05.98 GB2 filed A
01.03.99 US1 filed A
March 2024 Guidelines for Examination in the EPO Part B – Chapter VI-5

(claiming priority of GB1)

30.05.99 EP1 filed A
(claiming priority of GB2)
15.04.00 US1 published A

The publication US1 was found during the search on EP1. GB1 was
filed earlier than GB2 and so may prejudice the priority of EP1. The
search division therefore cites US1, which claims priority from GB1,
in the search report as an "L" document (see B-X, 9.2.8(a)).

5.4 Documents published after the filing date

The search normally does not cover documents published after the filing
date of the application accorded by the Receiving Section.

However, documents published after the filing date can sometimes be

relevant, for example written confirmation of an oral disclosure
(see B-VI, 2), a later document setting out the principle or theory behind the
invention and so helping to understand it better or a later document
showing that the reasoning or the facts behind the invention are incorrect
(see B-X, 9.2.5). The search is not specially widened to include documents
of this kind, but the search division may choose to cite any it knows of in
the search report.

If priority is validly claimed (see B-VI, 5.1), the search also does not
normally cover documents published after the earliest validly claimed
priority date as that date counts under Art. 89 as the application's filing
date. However, the search may have to be widened this way to some
extent for specific purposes (see B-VI, 3, B-VI, 4 and B-VI, 5.3).

5.5 Non-prejudicial disclosures

Disclosures of the invention are disregarded if they happened less than six Art. 55(1)(a) and (b)
months before the European patent application was filed (see G 3/98 and Rule 25
G 2/99) and if they were due either to an evident abuse in relation to the
applicant or the legal predecessor or due to display at an official, or
officially recognised, international exhibition. Nevertheless, the search
division does cite in the search report any documents it has reason to
believe fall within one of the categories mentioned in B-X, 9.2.8. For these
documents too, the relevant date for the search will be the filing date of the
application (see B-VI, 5.1 and B-XI, 4). Since abuse will generally only be
asserted after the search report and search opinion (if applicable ‒
see B-XI, 7) have been sent, and disclosure at an exhibition involves the
question whether the displayed invention and the claimed invention are
identical, both matters will be investigated by the examining division.

5.6 Doubts about the state of the art

It is the examining division, not the search division, that ultimately decides
on novelty (see B-III, 1.1), and so the search division does not disregard
highly relevant documents because it has doubts about, for instance, when
exactly they were published or made publicly available (e.g. standards or
related preparatory documents, see G-IV, 7.6) or, where they refer to an
oral disclosure, exhibition, etc., what exactly was said or displayed. It tries
to remove any such doubts but always cites the documents in the search
Part B – Chapter VI-6 Guidelines for Examination in the EPO March 2024

report anyway, while continuing its search as though they had not been
found. It can also cite additional documents providing evidence on the
matters in doubt (see B-X, 9.2.8). It will explain any such matters in detail in
the search opinion.

Any date of publication indicated in a document is accepted as correct

unless there is good reason to challenge it, e.g. where the search division
can show it was published earlier or where the applicant can show in
examination proceedings that it was published later. If the indicated date of
publication is not precise enough (e.g. because only a month or year is
given) to establish whether it was published before the relevant date for the
search, the search division will try to determine the exact date or at least
narrow it down with enough precision to establish this. A date of receipt at
the EPO stamped on the document or a reference in another document,
which must then be cited (see B-X, 9.2.8), can help with this. Whether a
document was publicly available may be investigated when the search
opinion is drawn up and during substantive examination (see C-IV, 1).
Where, despite the search division's attempts, the date is still not precise
enough for it to know whether or not the document was published before or
after the priority or filing date, it will cite it as though it had been published
on the earliest possible date. For instance, if only the month and year of
publication are known, the search division will cite it as having been
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 cites only documents which are
available in the search documentation or which it can access in some other
way.

6.2 Citation of documents corresponding to documents not available

or not published in one of the EPO's official languages
In certain circumstances, the search division can cite a document without
having verified its content if it has good reason to assume that it is identical
in content to another document which it has inspected. Both documents are
then mentioned in the search report as described at the end of B-X, 9.1.2.
For example, where a document published in a non-EPO language before
the filing date has been selected for citation, the search division may
instead have inspected a corresponding document in an official EPO
language (e.g. another member of the same patent family or a translation of
an article) and possibly published after the filing date. Unless the contrary is
explicitly stated, it can also be assumed that an abstract's contents are
included in the original document, just as it is normally assumed that what
is said in a report of an oral presentation matches what was presented.

Before citing a document written in a language it is not familiar with, the

search division must make sure it is relevant (e.g. by using a machine
translation, a translation by a colleague, a corresponding document or an
abstract in a familiar language, by referring to a drawing or chemical
formula in the document to be cited or by consulting database indexes
relating to that document's technical content (see B-X, 9.1.3)).
March 2024 Guidelines for Examination in the EPO Part B – Chapter VI-7

6.3 Conflict between abstract and source document

Where there is a problem with an abstract, either because it appears to
conflict with its source document or because it conflicts with other abstracts
of the same source document, the search division will proceed as follows:

(i) it will cite the source document if it is in a language it can readily

understand (especially one of an EPC contracting state) and either
directly available to it or easy to obtain.

(ii) it will cite the abstract if the source document is in a language it

cannot readily understand (e.g. Russian, Japanese, Korean or
Chinese) and/or is difficult to obtain. If more than one abstract is
available, it will cite the one most relevant to the claimed invention
even if it conflicts with the other abstracts or the source document.

The source document will be mentioned in the search report as the

"&" document of the cited abstract. Where it is available but is in a
language the search division cannot readily understand (e.g. Japanese),
both it and the abstract will be made available to the applicant and included
in the file (see B-X, 9.1.2). The search division must explain in the search
opinion why it thinks there is a conflict.

Where an abstract conflicts with the source document to such an extent

that it is incorrect, it is not treated as prior art, and the source document is
considered to be the state of the art instead (T 77/87). However, for the
purposes of the search report and opinion, an abstract is assumed to truly
reflect the source document's content unless the discrepancy between the
two is obvious. Since the abstract, the source document and a machine
translation of the source document are all made available (see B-X, 9.1.3
and 12), the applicant can compare their disclosures and form an opinion
on whether the abstract is technically accurate. They will still have an
opportunity to refute the above assumption at the examination stage (e.g.
by providing a translation of the source document).

6.4 Insufficient prior-art disclosures

The search division generally assumes that any technical subject-matter in
a prior-art document is sufficiently disclosed and so part of the state of the
art. Even if there is some doubt about this, it will still be cited in the search
report as normal and relied on as a basis for an objection in the search
opinion. It will be disregarded only if its disclosure is obviously insufficient
(see G-IV, 2).

6.5 Incorrect compound records in online databases

If the search division finds a compound when searching a database created
by abstracting source documents (e.g. patents, journal articles or books)
and identifying the chemical compounds disclosed in them but, on reading
the source document, cannot find the compound, this does not
automatically mean that there has been a mistake and that the compound
is not disclosed in the document. For example, compounds which are
named but whose structures are not drawn are still part of the disclosure
and will be abstracted. In addition, database providers use standard
nomenclature in their database records, whereas authors of technical
Part B – Chapter VI-8 Guidelines for Examination in the EPO March 2024

literature frequently do not, and so the database record may use a different
nomenclature for the compound from the source document.

However, if the search division really is unable to find the compound in the
source document, but the compound is relevant for assessing patentability,
it may write to the database provider to ask why the compound was
included in the abstract and where it is disclosed in the source. If the
database provider has not replied by the time the search report is drafted,
the document will be cited in the search report and in the search opinion on
the assumption that it does disclose the compound, but the search division
will also continue the search as though the compound did not exist.

7. Internet disclosures ‒ technical journals

For some technical journals, the publisher's website displays the date when
they were published online, especially if it differs from the date when they
were published on paper (OJ EPO 2009, 456). There are various possible
scenarios where a journal was published online (see G-IV, 7.5.3.1). In all
cases, the search division makes a copy of the journal web page where the
(electronic and paper) publication and pre-publication date or dates of the
article or issue are mentioned and then cites it in the search report as an
"L" document. It is best to do so as soon as the evidence is found and not
leave it until later, since the information may be moved or removed from the
website in the time between search and substantive examination.
March 2024 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 has a regulatory function and is
intended to promote an efficient procedure up to grant (T 110/82 and
F-V, 6). It would be unfair to treat applications as meeting this requirement
where, because of their diverse content, they cost much more than average
to process, especially in terms of search, since some of this extra cost
would have to be covered by fees paid for other applications. Another
aspect is that an application's content should be readily understandable,
which will not always be the case where its subject-matter is very diverse.

On the other hand, the general purpose of dealing with linked substantive
issues in a single procedure would not be achieved if the provisions on
unity of invention were applied too strictly, and so interconnected
subject-matter must not be split up needlessly (see F-V).

1.1 Partial European search report

If the search division considers that a European patent application lacks Rule 64
unity of invention (see F-V, 1), it must carry out a search, and draw up a
partial European search report under Rule 64(1), for those parts which
relate to the invention (or unitary group of inventions) first mentioned in the
claims (see F-V, 3.4). The partial European search report is accompanied
by a list of the separate inventions identified.

For more on the search opinion in cases where there is 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 Rule 64(1)
in a communication accompanying its partial search report and invite them Point 6.1 AAD
to pay a further search fee for each invention other than the one first
mentioned in the claims if they want the search to cover these inventions as
well. Together with this invitation, the applicant will receive 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 the
non-unity findings. This provisional opinion is for information only and the
applicant does not need to reply to the points raised in it. If the applicant
nevertheless submits a reply, the search division will not take it into account
when drawing up the extended European search report (see the notice
from the EPO dated 3 March 2017, OJ EPO 2017, A20).

1.2.1 General
The further search fees must be paid within two months (Rule 64(1)).
Applicants using the automatic debiting procedure must inform the EPO
within this period if they do not want some or even any of the other
inventions to be searched, because otherwise further search fees for all of
them will be debited automatically on the last day.

(a) If the applicant does not pay any further search fees in time, there
will be no further search and the partial search report will become the
final search report, which is accompanied by the search opinion.
Part B – Chapter VII-2 Guidelines for Examination in the EPO March 2024

Nevertheless, the final decision on unity of invention is taken by the

examining division or – in the event of an appeal – ultimately by the
board of appeal (B-VII, 1.4 and C-III, 3.2.1).

(b) If the applicant pays further search fees for any of the remaining
inventions or groups of inventions in time, a further search will be
carried out on those inventions. The final search report will then be
drawn up for all inventions for which search fees have been paid, i.e.
the first one and the ones included in the further search. If the
application does not meet the EPC requirements as regards any of
the inventions for which further search fees have been paid, this will
be mentioned in the search opinion. For example: invention 1 was
searched and the applicant paid a further search fee for invention 3.
The subject-matter of invention 3 was found to lack novelty. The
search opinion will then cover invention 1 and object to a lack of
novelty for the subject-matter of invention 3.

1.2.2 Cascading non-unity

If a European patent application is found to lack unity at the search stage,
the invention first mentioned in the claims (see F-V, 3.4) will be searched
and the applicant will be invited to pay further search fees for the others.
They will also be warned that, even if a lack of unity "a posteriori" is later
detected, no further invitation to pay additional fees will be issued.

If the applicant pays further search fees for any of the other inventions, a
search is carried out for those inventions.

If this further search reveals that one or more of these inventions also lack
unity "a posteriori", only the first invention in each group of inventions is
searched. The applicant will not be invited to pay another set of further
search fees.

The search division will draw up the search opinion, setting out the reasons
for its finding of non-unity and giving an opinion on the patentability of the
searched inventions (see B-XI, 5).

Divisional applications can be filed for any inventions that have not been
searched (see C-IX, 1.2).

Example

The search division raises a lack of unity objection and identifies 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 mentioned above is given.

The applicant pays two further search fees for inventions B and C. During
the further 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. The European search opinion
must fully explain why the claims of the application were divided into A, B,
March 2024 Guidelines for Examination in the EPO Part B – Chapter VII-3

C and D and why B was then subdivided into B1, B2 and B3 and offer a
view on whether A, B1 and C are patentable.

Examination of the application in the European phase will be based on

either A, B1 or C (see C-III, 3.2.2). The claims relating to inventions B2, B3
and D can be filed as divisional applications (see C-IX, 1.2).

1.2.3 The applicant has not paid all further search fees
The applicant always has to clearly state which inventions the further
search fees have been paid for. If the applicant pays only some, but not all,
of the requested further search fees and does not indicate which inventions
these fees are for, the search division will attempt to find out which
inventions are to be covered by its further search or searches.

1.3 Documents relevant only to other inventions

The search on the invention first mentioned in the claims may also uncover
documents that are relevant only to the other inventions. These documents
do not necessarily have to be included in the partial European search
report unless they are the basis for an objection to lack of unity "a
posteriori" (see F-V, 5 and 7).

1.4 Assessment and possible review of the unity requirement

A search division dealing with unity at the search stage applies the same
criteria as are used in substantive examination (see F-V). In particular, it
will not raise an objection of lack of unity merely because the inventions
claimed are classed in separate classification groups, or simply as a way of
restricting the search to certain parts of the documentation, for example
certain classification groups (but see B-V, 3.3).

The assessment of unity at the search stage is not definitive. Normally, the
search division will have formed a first impression even before it carries out
the search, but it will necessarily have done so prima facie, based on the
common general knowledge in the relevant field and the prior art mentioned
in the application. It will revisit this initial assessment during and after the
search in the light of the documents found. Its findings will be reviewed
again when substantive examination begins and even the position taken
then may be changed later on in the proceedings in the light of new facts
and evidence.

However, as a general rule, a position already taken on unity of invention is

maintained unless there are sound reasons for changing it. The final
decision on the matter is taken by the examining division or – in the event
of an appeal – ultimately by the board of appeal. So any previous finding on
unity is basically always open to review.

2. Procedures in cases of lack of unity

2.1 Request for refund of further search fees

At the examination stage, the applicant may challenge the finding of Rule 64(2)
non-unity and request a refund of one or more of the further search fees Rule 164(5)
paid. If the examining division finds that the challenge is justified, the fee or
fees in question will be refunded (see, however, B-XI, 1.2).
Part B – Chapter VII-4 Guidelines for Examination in the EPO March 2024

2.2 Complete search despite lack of unity

In some exceptional cases ‒ especially where the lack of unity was not
immediately apparent and is detected "a posteriori" and the different
inventions identified are conceptually very close ‒ the extra work and cost
involved in carrying out a complete search and drawing up a search opinion
(where applicable – see B-XI, 7) for all the inventions is only negligible. In
such cases, the search division carries out the search on the other
inventions at the same time as the one on the invention first mentioned in
the claims and includes all the results in a single search report, in which it
objects to the lack of unity and identifies the different inventions. It will also
point out that it did not invite the applicant to pay further search fees
because it was able to search all the claims without the extra work that
would justify them. However, the search opinion (if applicable ‒ see B-XI, 7)
will still raise the objection to the lack of unity of invention (see B-XI, 5).

2.3 Supplementary European search

Art. 153(7) If a lack of unity of invention comes to light during a supplementary
Rule 164(1) European search following an international (PCT) search, 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) on which the
supplementary European search was based (Rule 164(1)(a)), irrespective
of the ISA's findings on unity of invention. Together with this partial search
report, the applicant will be invited to pay a further search fee for each
invention other than the one first mentioned in the claims (Rule 164(1)(b)),
i.e. the same procedure is followed as for the non-unity invitation issued
under Rule 64(1) for direct European patent applications (see B-VII, 1.2).
The applicant will also receive a provisional opinion on the patentability of
the invention or unitary group of inventions first mentioned in the claims,
which will include the reasons for the non-unity findings.

3. Lack of unity and Rule 62a or Rule 63

The procedures for dealing with cases of lack of unity in which Rule 63 or
Rule 62a applies are dealt with in B-VIII, 3.4 and 4.5 respectively.
March 2024 Guidelines for Examination in the EPO Part B – Chapter VIII-1

Chapter VIII – Subject-matter to be excluded

from the search
1. General remarks
The subject-matter listed in Rule 39.1 PCT can be regarded as excluded Art. 52(2) and
from the scope of a European search under the EPC too, i.e. on the basis (3)
that it is not susceptible of industrial application (Art. 57), is excluded from Art. 53
patentability under Art. 52(2) and (3) in so far as the European patent Art. 57
application relates to it as such or falls under one of the exceptions to Rule 63
patentability in Art. 53(b) and (c). The claims are not searched in so far as
they relate to such subject-matter (for the procedure for limiting the search
under Rule 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.

The examining division is responsible for taking a final decision on whether Art. 52
the subject-matter is patentable, but the search division will also form a
view on this for the purpose of drafting the search opinion (if applicable ‒
see B-XI, 7) and also in considering whether or not it needs to limit the
search and apply the procedure under Rule 63(1) (see B-VIII, 3.1 to 3.4).
This means that it too has to consider the patentability requirements other
than novelty and inventive step (see G-II and G-III).

It may be that potentially non-patentable subject-matter is found in only Rule 63

some of the claims or only part of a claim. This will then be indicated in the
invitation under Rule 63(1) and in any subsequent partial search report or
declaration replacing the search report under Rule 63(2).

2. Considerations relating to specific exclusions from and

exceptions 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 where a claim is drafted as a method of medical treatment
(see G-II, 4.2) and is therefore not directed to patentable subject-matter, a
meaningful search may be possible if the determinant technical feature is
the effect of the substance, which can be searched. The procedure under
Rule 63 (see B-VIII, 3.1 to 3.4) will then be unnecessary. For example,
method claims can 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 2024

These method claims are excluded from patentability under Art. 53(c), but
the applicant will usually be able to reword them in an allowable form during
the examination proceedings (see G-II, 4.2). They are therefore searched
since they are usually characterised by the effect of substance X, by one or
more of steps A, B and C not directly practised on the human or animal
body or by the use of reagents rather than by the act of therapy or
diagnosis on the human/animal body.

If, however, a claim includes specific method features (e.g. a combination

of pharmaceutical and physical treatment), a meaningful search may not be
possible. If in doubt, the search division will issue an invitation under
Rule 63(1) (see B-VIII, 3.1). But, regardless of whether such claims are
searched or not, the applicant will be informed in the search opinion (if
applicable ‒ see B-XI, 7) that the subject-matter in question 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). If a claim contains
a mix of technical and non-technical features, the search division identifies
which features contribute to the technical character of the claimed
subject-matter (see G-VII, 5.4) and its search covers all those features.

Features that appear to be non-technical when taken in isolation may still

contribute to the technical character of a claimed invention if, in the context
of that invention, they help to produce a technical effect that has a technical
purpose. Merely implementing effects that are inherent in the excluded
subject-matter (T 1543/06) or that result from circumventing the technical
problem rather than contributing to its technical solution does not qualify as
a technical effect (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 whether they produce a technical effect and contribute to a
technical solution to a technical problem (see B-III, 3.2 and B-IV, 1.1). In
particular, specific embodiments disclosed in the description and drawings
‒ to which the claims might reasonably be expected to be limited
(see B-III, 3.5) ‒ are taken into account since they could confer technical
character on the claimed features.

If the search division considers that some claim features do not contribute
to the technical character of the claimed invention, it will state this in the
search opinion. If it objects to a lack of inventive step and at least some of
the distinguishing features are found not to have a technical effect
contributing to the solution of a technical problem (see G-VII, 5.4), it will
substantiate this finding.

2.2.1 Computer-implemented business methods

If the features contributing to the technical character of the subject-matter
of claims directed to computer-implemented business methods are so
March 2024 Guidelines for Examination in the EPO Part B – Chapter VIII-3

well-known that their existence at the relevant date cannot reasonably be

disputed (T 1411/08, Reasons 4.1 and 4.2, and T 690/06, Reasons 13), the
search division does not have to cite any documentary evidence of the
relevant state of the art in the search report, because they then amount to
"notorious" knowledge, for which no such evidence is needed. "Notorious
knowledge" is not to be confused with the skilled person's common general
knowledge, which is something that generally can be reasonably
challenged (G-VII, 2 and 3.1). In such exceptional cases, a search report
with no cited documents may be issued under Rule 61
(OJ EPO 2007, 592). This is not the same thing as issuing a declaration of
no search or a partial search report under Rule 63(2).

3. No meaningful search possible

In addition to the reasons discussed in B-VIII, 1, an invitation under Rule 63
Rule 63(1) may be issued and the search subsequently limited under
Rule 63(2) because the application falls so short of the relevant EPC
requirements that it is impossible to carry out a meaningful search on all or
some of the claims or part of a claim. The search division then applies the
procedure under Rule 63 (see B-VIII, 3.1 to 3.4 and OJ EPO 2009, 533).

Rule 63 relates only to whether the search is practicable and not to whether
its results are likely to be relevant in the later examination proceedings.
Even if a search will not produce any result that could be used in
examination proceedings, it cannot be refused on the basis of Rule 63
(see T 1242/04).

What is or is not "meaningful" is a question of fact to be answered by the

search division. Its finding may change in the light of any reply from the
applicant to the invitation under Rule 63(1) (see B-VIII, 3.2). How the
search division exercises its discretion will depend on the facts of the case.
A restriction of the search must be carefully considered. There are cases
where a search is impossible in practice in view of the failure to meet the
EPC requirements, for example a fundamental lack of clarity or the
absence of any technical character whatsoever. However, the word
"meaningful" must always be construed reasonably, i.e. Rule 63 cannot be
invoked simply because a search is difficult or does not produce results
relevant for subsequent examination proceedings.

As there is no legal provision requiring that applicants draft their application

in a way that makes searching easier, "procedural economy" cannot be
used as a reason, or part of a reason, for issuing a partial search report
(see also T 1020/98).

The following – non-exhaustive – examples illustrate where Rule 63 can

apply:

(i) claims lacking support; insufficient disclosure

An example is a claim so broadly formulated that its scope is at least

to some extent speculative, i.e. not supported by the disclosure of the
application. It is then so broad that a meaningful search cannot be
carried out over its whole scope but only on the basis of the
Part B – Chapter VIII-4 Guidelines for Examination in the EPO March 2024

narrower, disclosed invention. In extreme cases, this may mean a

search covering only (one or more of) the specific examples
disclosed in the description. The procedure under Rule 63(1) can
then be applied (see B-VIII, 3.1 to B-VIII, 3.4) on the basis of a failure
to meet the requirements of sufficiency of disclosure and support set
out in Art. 83 and 84 (see F-III, 1 and 2, and F-IV, 6). However, the
search division needs to bear in mind that whether these
requirements are met has to be assessed from the point of view of
the person skilled in the art.

(ii) claims lacking conciseness

An example is where there are so many claims, or so many

possibilities within a claim, that it is unduly burdensome to determine
the subject-matter for which protection is sought (however,
see B-VIII, 4 on multiple independent claims in the same category). A
complete search (or even any search at all) may then be impossible
in practice. Again, it may be appropriate to apply Rule 63 and then
issue a partial search report (following the procedures described in
B-VIII, 3.1 to 3.3) or a declaration of no search, on the grounds that
the claims are so lacking in conciseness that a meaningful search is
impossible (see Art. 84; F-IV, 5).

(iii) claims lacking clarity

An example is where the parameter chosen by the applicant to define

the invention makes a meaningful comparison with the prior art
impossible, for example because the prior art did not use the same
parameter or did not use any parameter at all. The applicant's
parameter may then lack clarity (see Art. 84; F-IV, 4.11) and it may
even be so unclear that a meaningful search of the claims, an
individual claim or part of an individual claim is impossible. It may
then be appropriate to apply Rule 63 and issue a partial search
report (or, in exceptional cases, no search report at all) under
Rule 63(2) (following the procedures described in B-VIII, 3.1 to 3.3)
after restricting the search to the worked examples, in so far as they
can be understood, or to the way in which the desired parameter is
obtained (any reply from the applicant to the invitation under
Rule 63(1) would then be taken into account as described in
B-VIII, 3.2 to determine the subject-matter to be searched).

(iv) claims contravening Art. 76 or Art. 123(2)

Rule 63 may also apply in the following cases of claims containing

added subject-matter (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
March 2024 Guidelines for Examination in the EPO Part B – Chapter VIII-5

– Euro-PCT applications for which amended claims were filed as

a 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 it needs to be clear and transparent for both the applicant and third
parties what has and has not been searched.

How these Rule 63 cases are handled in subsequent examination

proceedings is dealt with in H-II, 5 and H-IV, 4.1.1.

3.1 Invitation to indicate subject-matter for search

If the search division considers that the application falls so short of the EPC Rule 63(1), (2)
requirements that it cannot carry out a meaningful search into the state 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 two months,
a statement indicating the subject-matter to be searched. The invitation will
also give the reasons for this finding and may additionally indicate 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, the search division issues
a complete search report only when the claims can easily be reworded to
comprise patentable subject-matter (see B-VIII, 2.1). If, on the other hand, it
plans to issue a partial search report (or a declaration of no search), it must
first send an invitation (e.g. for the claims that cannot easily be reworded).

3.2 Reply to the invitation under Rule 63(1)

3.2.1 No or late reply

If applicants do not reply to the invitation under Rule 63(1) in time, the
search division will take its own decision on what to search. It will then draw
up a partial search report for what it searched or, in exceptional cases,
issue a declaration of no search. As the limitation of the search has
consequences in examination (see H-II, 5 and H-IV, 4.1.1), any late-filed
reply will be included in the file for consideration at that stage because it
may be useful for reviewing the search division's arguments for carrying out
an incomplete search.

Given that the search report should be published with the application,
applicants cannot request further processing if they miss the two-month
period under Rule 63, but they can request re-establishment of rights
(see OJ EPO 2009, 533).

3.2.2 Reply in time

If applicants reply to the invitation under Rule 63(1) in time and the search Rule 63(2)
division considers it possible to carry out a meaningful search based on the
subject-matter they have indicated, it will search that subject-matter.

If applicants reply to the invitation under Rule 63(1) in time but the indicated
subject-matter still cannot be fully searched, the search division will take its
own decision on what to search, but will keep to what was indicated in the
Part B – Chapter VIII-6 Guidelines for Examination in the EPO March 2024

applicant's reply as far as possible. In exceptional cases, it may find that no

meaningful search is possible at all.

Statements consisting of reworded claims filed in reply to an invitation

under Rule 63(1) are not considered amended claims within the meaning of
Rule 137(1) but treated merely as explanations of the originally filed claims.
The applicant must formally introduce these reworded claims into the
proceedings by confirming that this is what they want within the time limit
under Rule 70(1) or (2). The confirmation can be filed either together with
the reply to the extended European search report (Rules 70a(1) and (2)) or,
where applicable, when complying with the requirements under Rule 70(1)
or (2). As far as possible, the search division will draw up the search report
in the light of these explanations. Both the search report and the search
opinion must clearly indicate what has been searched.

Instead of indicating the subject-matter to be searched, applicants can reply

to the invitation under Rule 63(1) by simply arguing why they believe a
meaningful search can be carried out on all of the subject-matter claimed. If
the search division is convinced by the applicant's arguments, it will issue a
full search report. The search will therefore not be limited and there will be
none of the associated consequences in examination. But if it is not
convinced, or is only partially convinced, it will take its own decision on
what to search and then issue a partial search report or, in exceptional
cases, a declaration of no search. The examining division has final
responsibility for deciding whether it was appropriate to send an invitation
under Rule 63 and issue a declaration of no search or a partial search
report at the search stage and it may find that it has to carry out an
additional search (see C-IV, 7.3).

Applicants can also reply to an invitation under Rule 63 by arguing against

the findings there and ‒ as a main request ‒ asking the search division to
fully search the claims as filed and ‒ as an alternative, in case the search
division is still not convinced ‒ indicating specific subject-matter they would
like to have searched (see also H-III, 3.2).

A consultation may take place if the applicant phones the search division to
enquire about the course of action after an invitation under Rule 63 has
been sent. The consultation is limited to formal issues concerning the
content of the invitation and the options available to the applicant. The
search division writes minutes of the consultation and sends them to the
applicant (without setting any time limit) for information only. The
consultation itself does not count as a valid reply to the invitation and so the
applicant still has to file a written reply within the time limit set there.

3.3 Content of the extended European search report (EESR)

In the two parts of the EESR, i.e. the search report (or the declaration of no
search replacing it) and the search opinion, the search division will explain
why it found under Rule 63 that it could not carry out a meaningful search
on some or all of the claimed subject-matter and specify what
subject-matter it did search (if any) following the procedures described in
B-VIII, 3.2. In the search opinion, it will also invite the applicant to limit the
claims to this searched subject-matter (in order to comply with Rule 63(3)).
March 2024 Guidelines for Examination in the EPO Part B – Chapter VIII-7

The documents cited in the search report and referred to in the search
opinion will relate only to this subject-matter. Even if the searched
subject-matter meets the EPC requirements (in particular in that it is novel,
inventive and industrially applicable, but also in that it meets the other
conditions, such as clarity under Art. 84), the search opinion will still be
negative, because the claims do not meet these requirements across their
whole scope.

Similarly, if the applicant replies to the invitation under Rule 63(1) by

disputing the finding that a meaningful search is impossible (see B-VIII, 3.2)
but the search division still disagrees, it will explain why in the search
opinion, referring directly to the applicant's reply if necessary.

3.4 Applications falling under Rule 63 and lacking unity

There are cases where the application not only falls so short of the EPC
requirements that it is impossible to carry out a meaningful search into the
state of the art based on some of the subject-matter claimed
(B-VIII, 1, 2 and 3) but also lacks unity of invention under Art. 82 and
Rule 44. Sometimes it is enough for the search division to raise only 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
results in a serious lack of conciseness but this can be resolved by splitting
the claims up into the different inventions.

In other cases, however, the search division may need to apply the
procedures under both Rule 64(1) (i.e. invite the applicant to pay further
search fees for inventions other than the one first mentioned in the claims)
and Rule 63(1) (i.e. invite the applicant to indicate the subject-matter to be
searched). If so, it will send the applicant the Rule 63(1) invitation first.
Where the lack of unity is already apparent, this invitation will also identify
the invention (or group of inventions) first mentioned in the claims ("first
invention" ‒ see F-V, 3.4) and the claims which relate to it, either in full or in
part, and ask the applicant to clarify what to search in this respect.

If the applicant has not replied by expiry of the time limit under Rule 63(1),
any subject-matter to be searched for the first invention will be determined
according to the procedures described in B-VIII, 3.2. A partial search report
(or exceptionally a declaration of no search) will then be drawn up on this
first invention and sent to the applicant, along with an invitation to pay
further search fees under Rule 64(1) for the other inventions and a
provisional opinion on the first invention's patentability that includes the
reasons for the non-unity findings. Where appropriate, the invitation under
Rule 64(1) may also include an invitation under Rule 63(1) asking the
applicant to clarify the subject-matter to be searched for any other
inventions for which they later pay further search fees.

Where these exceptional circumstances arise in cases of supplementary Rule 164

European search reports for Euro-PCT applications, the procedure is the
same, except that a Rule 164(1) invitation is sent instead of a Rule 64
invitation.
Part B – Chapter VIII-8 Guidelines for Examination in the EPO March 2024

Rule 164 Rule 63 also applies to searches performed under Rule 164(2)
(see C-III, 3.1). As for searches on directly filed European patent
applications, any Rule 63 objection relating to an invention for which a
search fee has to be paid must be included in the invitation to pay that fee.

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

4.1 Invitation to indicate which independent claim to search

Rule 62a(1) If the search division considers that the claims as filed do not comply with
Rule 43(2) (see F-IV, 3.2), it may invite the applicant to indicate compliant
claims on which the search can be based within two months. In the same
way as for an invitation under Rule 64, it is left to the search division's
discretion whether to send this invitation or instead carry out a full search
on all the claims and raise 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 does not indicate the claims to be searched in time, the
search will be based on the first claim in each category. In either case, a
partial search report will be drawn up. As the limitation of the search has
consequences in examination (see H-II, 5 and H-IV, 4.1.1), any late-filed
reply is included in the file for consideration at that stage, in the same way
as is done for a late-filed reply to a Rule 63 invitation (see B-VIII, 3.2.1).

Since the search report should be available when the application is

published, Rule 62a requires that the applicant reply within two months and
rules out further processing. However, a request for re-establishment of
rights may be granted if the relevant conditions are met.

4.2.2 Reply filed in time

If applicants reply to the invitation under Rule 62a(1) in time by indicating
an independent claim in a particular category that they want to have
searched, the search division will carry out the search based on this claim.

It is also open to applicants to indicate more than one independent claim in

the same category if these claims fall within the exceptions in Rule 43(2)
(see F-IV, 3.2). However, if the search division then finds that the indicated
independent claims do not in fact fall within these exceptions, it will search
only the one that comes first in numerical order.

Example

An invitation under Rule 62a(1) is sent for an application that contains

independent product claims 1, 10 and 15. The applicant replies that
independent product claims 10 and 15 fall within the exceptions in
Rule 43(2) and indicates that these two claims should be searched. The
search division disagrees, and so only claim 10 is searched.

See B-VIII, 3.2.2 for the procedure followed where the applicant tries to file
amendments.
March 2024 Guidelines for Examination in the EPO Part B – Chapter VIII-9

Instead of indicating the independent claim or claims to be searched,

applicants can reply to the invitation under Rule 62a(1) by simply arguing
why they believe that the claims comply with Rule 43(2) (i.e. why the
multiple independent claims in the same category fall within one or more of
the exceptions in Rule 43(2)). If the search division is convinced by the
applicant's arguments, it will issue a search report based on all the claims,
and the consequences a limited search has at the examination stage will
not apply. But if it is not convinced, it will issue a search report based only
on the first independent claim in the category. The examining division has
final responsibility for deciding whether an invitation under Rule 62a was
appropriate.

Applicants can also reply to an invitation under Rule 62a by arguing against
the findings there and ‒ as a main request ‒ asking the search division to
search all the claims as filed and ‒ as an alternative, in case the search
division is still not convinced ‒ indicating the independent claims they would
like to have searched (see also H-III, 3.2).

The procedure where applicants phone the search division to enquire about
the course of action after an invitation under Rule 62a has been sent is as
described above for the invitation under Rule 63 (see B-VIII, 3.2.2).

4.3 Content of the extended European search report (EESR)

The search opinion will invite the applicant to limit the application to the
claims which have been searched (Rule 62a(2)). If the applicant replied to
the invitation under Rule 62a(1) by disputing the finding under Rule 43(2)
(see B-VIII, 4.2) but the search division still disagrees, it will explain why in
the search opinion.

4.4 Cases under Rule 62a where claims fees have not been paid
If an independent claim has been deemed to be abandoned under
Rule 45(3) or Rule 162(4) because the claims fee has not been paid
(see A-III, 9), the applicant cannot indicate it in reply to the invitation under
Rule 62a(1), because it is no longer eligible for search (see B-III, 3.4). If
such a claim is indicated, the search division will ignore this, instead
applying Rule 62a(1), last sentence, and searching the first independent
claim in the category in question for which claims fees have been paid.

If all the independent claims in the category in question have been deemed
to be abandoned because the fees were not paid, no invitation under
Rule 62a(1) will be issued and none of them will be searched.

4.5 Applications falling under Rule 62a and lacking unity

There are cases where the application not only does not comply with
Rule 43(2) (see B-VIII, 4.1 and F-IV, 3.2) but also lacks unity of invention
under Art. 82 and Rule 44. Sometimes it is enough for the search division
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).

In other cases, however, the search division may need to apply the
procedures under both Rule 64(1) (i.e. invite the applicant to pay further
search fees for inventions other than the one first mentioned in the claims)
Part B – Chapter VIII-10 Guidelines for Examination in the EPO March 2024

and Rule 62a(1) (i.e. invite the applicant to indicate the independent claims
to be searched). It will then send the applicant the invitation under
Rule 62a(1) first.

Where the lack of unity is already apparent when the invitation under
Rule 62a(1) is sent, it will also identify the invention (or group of inventions)
first mentioned in the claims ("first invention" ‒ see F-V, 3.4) and the claims
which relate to it, either in full or in part, and ask the applicant to indicate
which claims to search. If the applicant has not replied by expiry of the time
limit under Rule 62a(1), the claims to be searched for the first invention will
be determined according to the procedures described in B-VIII, 4.2. A
partial search report will then be drawn up on this first invention and sent to
the applicant, along with an invitation to pay further search fees under
Rule 64(1) for the other inventions and a provisional opinion on the first
invention's patentability that includes the reasons for the non-unity findings.
Where appropriate, this invitation under Rule 64(1) may also include an
invitation under Rule 62a(1) asking the applicant to clarify the claims to be
searched in respect of any other inventions for which they later pay further
search fees.

However, it can also happen that, after the invitation under Rule 62a(1) has
been sent for all claims, the claims which comply with Rule 43(2) and so
are searched (as determined according to the procedures in B-VIII, 4.2) are
found to be open to an objection of lack of unity a posteriori. An invitation to
pay further search fees under Rule 64(1) will then be sent, but only in
relation to the subject-matter of the claims determined by the applicant's
reply (or lack of reply) to the invitation under Rule 62a(1).

Rule 164 Where these exceptional circumstances arise in cases of supplementary

European search reports on Euro-PCT applications, the procedure is the
same, except 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, 3.1). As for searches on directly filed European patent
applications, any Rule 62a objection relating to an invention for which a
search fee has to be paid must be included in the invitation to pay that fee.

4.6 Handling of dependent claims under Rule 62a

Claims depending ‒ whether directly or only 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 preceding
claim and not all of them were searched, it will be searched but only in so
far as it depends on a claim or claims which were searched in accordance
with Rule 62a(1).

5. Invitation under both Rule 62a(1) and Rule 63(1)

It is sometimes necessary to send an invitation under both Rule 63
(see B-VIII, 3.1) and Rule 62a(1) (see B-VIII, 4.1), for example where
clarifying which claim or claims to search under Rule 62a will not
necessarily help to clarify what subject-matter to search, because the
March 2024 Guidelines for Examination in the EPO Part B – Chapter VIII-11

application contains several independent claims in the same category and

none or only some of them can be meaningfully searched over their whole
scope. The invitations under Rule 62a(1) and Rule 63(1) are then sent
jointly in a single communication setting the same two-month time limit for
replying under both rules. Applicants wishing to reply to both invitations
should do so at the same time.

The independent claims indicated in reply to the invitation under

Rule 62a(1) and the subject-matter indicated in reply to the invitation under
Rule 63(1) must be compatible. If the applicant's indications are
incompatible, the search division can choose, depending on the
circumstances, either (i) to search the claims indicated by the applicant
under Rule 62a(1) and, where necessary, limit the subject-matter searched
for those claims by applying Rule 63(2) by analogy or (ii) to search that
subject-matter defined in the first independent claim in a particular category
which is compatible with the subject-matter indicated by the applicant under
Rule 63(1) by applying Rule 62a(1), last sentence, by analogy.

Although sent in the same communication, the invitations under

Rule 62a(1) and Rule 63(1) are still legally separate. Applicants are
therefore free to reply to only one of them. If they reply only to the
Rule 62a(1) invitation, option (i) above applies. If they reply only to the
Rule 63(1) invitation, option (ii) above applies.

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 filing Art. 123(2)
date or under Rule 58, they are not part of the application documents "as Rule 58
originally filed". Similarly, the supplementary European search on a
Euro-PCT application is sometimes based on amended claims
(see B-III, 3.3.1). In either case, before starting the search, the search
division checks whether or not these claims add any subject-matter that
goes beyond what was in the application "as originally filed" (see
also A-III, 15). For Euro-PCT applications, this means the PCT application
as originally filed.

If the claims contravene Art. 123(2), the search division will face one of the
following situations:

(a) there are doubts about whether an objection can be raised (e.g. the
amendment relies on common general knowledge and the search
division is unsure whether the introduced term can be based on this)
and/or the amendment does not significantly change the scope and
subject-matter of the search: the search division then searches the
claims as they are.

(b) there are certain individual features in the claims that clearly
contravene Art. 123(2): the search division then ignores these
features when carrying out the search.

(c) there are substantial non-allowable amendments in the claims: the

search division may then need to issue an invitation under Rule 63(1)
before starting the search (see B-VIII, 3(iv)). Depending on the reply
Part B – Chapter VIII-12 Guidelines for Examination in the EPO March 2024

to the invitation, it may issue a partial search report or even a

declaration replacing the search report under Rule 63. In deciding
what to include in the search and what to exclude from it, it refers to
how the invention is defined in the description.

A similar problem can also arise when a divisional application is filed and
the amended claims do not meet the requirements of Art. 76(1): the same
criteria as described in steps (a) to (c) above are then applied.

In any case, the search opinion will include an objection under Art. 123(2)
or Art. 76(1) and give the reasons for limiting the scope of the search.
March 2024 Guidelines for Examination in the EPO Part B – Chapter IX-1

Chapter IX – Search documentation

1. General

1.1 Organisation and content of the documentation available to the

search divisions
The search documentation consists mainly of a collection of patent
documents that can be systematically accessed in a way that facilitates
searching. It also includes non-patent literature – such as periodicals and
other technical publications – that can be accessed via in-house and
external databases, with some items also available for consultation in a
virtual library. Particularly relevant items of non-patent literature are
selected for inclusion in the systematically accessible documentation. The
systematically accessible part of the search documentation includes the
minimum documentation that an International Searching Authority must
consult under Rules 34 and 36.1(ii) PCT but goes beyond these minimum
requirements.

1.2 Means of searching systematically

The search documentation can be searched using the Cooperative Patent
Classification (CPC), which is based on the International Patent
Classification (IPC) but comprises finer internal subdivisions, or using other
classification systems and/or words.

2. Patent documents arranged for systematic searching

2.1 PCT minimum documentation

The systematically accessible search documentation includes the national
patent documents belonging to the PCT minimum documentation specified
in Rule 34.1(b)(i) and (c) PCT.

It also includes 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 is

available on the WIPO website.

2.2 Unpublished patent applications

Since it is for the examining division to complete the search for any
conflicting applications that were still not published at the time of the initial
search, unpublished patent applications are not among the documents
which can be cited in the search report and so are not in the search
documentation (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 are
included in the search files together with these applications. The official
search reports for national applications are also included in these files
where they are publicly available, as are any unofficial search reports.
Search reports that are not normally or not yet publicly available in the form
Part B – Chapter IX-2 Guidelines for Examination in the EPO March 2024

of a published document are available to the search division separately

from the state-of-the-art documents, but it is not compulsory to search them
for all applications.

2.4 Patent family system

The EPO keeps a patent family system based on application and priority
data of the patent documents stored in its databases. Normally, just one
representative document of a patent family is displayed on screen, but
there will be links to the other family members.

3. Non-patent literature arranged for systematic access

3.1 Periodicals, records, reports, books, etc.

The systematically accessible search documentation includes relevant
articles from the list drawn up by the competent WIPO body of periodicals
belonging to the minimum documentation under the PCT and from other
periodicals the search divisions consider useful. Copies of the articles
selected as relevant for search purposes are generally added to the EPO
search databases with a fictitious country code "XP" and scanned for
inclusion in the electronic "BNS" collection.

The EPO also subscribes to many other periodicals, including abstract

journals, and obtains records of conference proceedings, reports, books,
standards, etc. in all three of its official languages and covering the various
technically important geographical areas. Individual items are selected for
inclusion in the online documentation if they are useful additions to the
state of the art.

4. Non-patent literature arranged for library-type access

4.1 Content
In addition to the non-patent literature mainly used for search purposes
(see B-IX, 3), the non-patent literature arranged for library-type access also
includes literature which the search division can use as sources of
information and for professional development and which covers not only
general and background technical information but also new technical
developments. The collection also includes reports, pamphlets, etc.
Internet-based document delivery services of publishing companies are
available to the search division members via an electronic virtual library
(EVL).

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 described in B-IX, 2.1 to 2.3.

Access to the EPO's other documentation may be limited if it is delivered by

commercial database providers. This depends on the conditions of data
delivery agreed between the EPO and the individual data provider.
However, national offices may also have their own separate agreements
with data providers.
March 2024 Guidelines for Examination in the EPO Part B – Chapter X-1

Chapter X – Search report

1. General
The search report records the results of the search. Its scope is limited in
the following cases:

(i) claims are treated as abandoned because the claims fees were not
paid (Rule 45(3), see B-III, 3.4)

(ii) no search was possible and so a declaration under Rule 63 is issued

instead (see B-VIII)

(iii) a partial search report is issued under Rule 63 and/or Rule 62a
(see B-VIII)

(iv) a partial European search report is issued owing to a lack of unity

under Rule 64(1)

(v) a supplementary European search report under Art. 153(7) is

incomplete for the reasons given in (i) or (iii) (Rule 162(4) applies if
there are unpaid claims fees) or is replaced by a declaration for the
reason in (ii).

The search reports issued in cases (i) – (iii) (and (v) where incomplete for
one of the reasons in (i) – (iii)) are sent to the applicant, published and used
as a basis for the examination by the examining division. A partial search
report issued under Rule 64(1) (case (iv)) is also transmitted to the
applicant, but not published; however, it can still be inspected by the public
as it is included in the electronic file accessible via the European Patent
Register (see A-XI, 2).

Except in the cases mentioned in B-XI, 7, European search reports and Rule 62(1)
supplementary European search reports are accompanied by a search
opinion giving the search division's view on whether the application and the
invention concerned seem to meet the requirements of the EPC
(see B-XI, 1.1). Together, the European search report or supplementary
European search report and the search opinion make up 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 and
search reports on behalf of the industrial property offices of some EPC
contracting states (see B-X, 2 and B-II, 4.4 to 4.6).

This chapter provides the information the search division needs to properly
draw up the search report.

A search report must not contain anything, in particular any expressions of

opinion, reasoning, arguments or explanations, beyond what has to be
entered on the form used and the opinions mentioned 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).
Part B – Chapter X-2 Guidelines for Examination in the EPO March 2024

2. Different types of search report drawn up by the EPO

The EPO search divisions draw up the following types of search report:

(i) European search reports (see B-II, 4.1)

(ii) supplementary European search reports on PCT applications

(see B-II, 4.3)

(iii) "search results under Rule 164(2)" (see 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 for national offices (see B-II, 4.6)

(vii) search reports produced as part of special activities.

The results of any additional searches carried out at the examination stage
(see B-II, 4.2) are also recorded but are not published. However, the
documents found may be used in the examination proceedings
(see C-IV, 7.3).

This chapter sets out the requirements for search reports of types (i) to (v)
only. Nevertheless, all search reports drawn up by the EPO search
divisions should be as similar as possible.

3. Form and language of the search report

3.1 Form
The standard search report has a main page used for all searches to record
the most important information, including:

(i) the application number

(ii) the application's classification

(iii) the technical fields searched

(iv) the relevant documents found in the search

(v) the name of the search division member who carried out the search

plus supplemental sheet A and, in certain cases, also supplemental

sheet B.

Supplemental sheet A is used for recording whether the title, the abstract
as filed by the applicant and the figure to be published with the abstract
were approved or amended and for providing the translation of the title into
the other two official languages (see B-X, 7).
March 2024 Guidelines for Examination in the EPO Part B – Chapter X-3

Supplemental sheet B has to be filled in if the search was restricted,

i.e. when claims were not searched because the claims fees had not been
paid (see B-III, 3.4), when there is a lack of unity of invention (see B-VII),
when a meaningful search was not possible and so the search report is
either incomplete or replaced entirely by a declaration under Rule 63
(see B-VIII, 3) or when the search was limited under Rule 62a
(see B-VIII, 4).

Dates are given in the format specified in WIPO standard ST.2.

3.2 Language
The search report or the declaration accompanying or replacing it under Art. 14(3)
Rule 63 is drawn up in the language of the proceedings. Rule 61(5)

3.3 Search summary

For in-house quality assurance purposes, the search division summarises
all the information needed by the auditors to understand what has been
searched (see B-III, 3), where (see B-III, 2) and how (see B-IV, 2). This
summary of the search is not made publicly available.

3.4 Record of search strategy

An "Information on Search Strategy" sheet is automatically added to all
EPO search reports. It lists the databases searched, classification symbols
used and keywords reflecting the searched subject-matter.

4. Identification of the European patent application and the search

report type
The European patent application concerned is identified on the main page
and supplemental sheets by its application number.

The search report type is also specified.

Where the application and the search report are published together, the Art. 153(7)
main page of the report is marked A1 (WIPO Standard ST.16). If the
application is published before the search is carried out, the main page is
marked A2 (WIPO Standard ST.16). The later search report is drawn up on
a new main page marked A3 (WIPO Standard ST.16). If it is a
supplementary European search report for an international application, the
new main page is marked A4 (WIPO Standard ST.16).

5. Classification of the European patent application

The main page of the search report shows the IPC classification symbol or
symbols assigned to the European patent application (see B-V, 3).

If the application is published before the search report has been drawn up
(A2 publication, see B-X, 4), the search division will fill in supplemental
sheet A in time for its publication, entering all the necessary information
mentioned in B-X, 7 and the application's IPC classification (see B-V, 3.3
on cases where the application lacks unity).

The IPC classification is shown again on the separately published search

report (A3 publication, see B-X, 4). If, in the meantime, the search division
Part B – Chapter X-4 Guidelines for Examination in the EPO March 2024

has changed the IPC classification initially assigned and shown on the
A2 publication, it is the new classification that will appear on the later
published search report (see B-V, 3.1).

6. Technical fields searched

Although not required by the EPC, the European search report includes the
technical fields searched in the form of a list of IPC symbols describing
them down to the sub-class level.

Where the search report is based entirely or partly on a previous search

carried out for an application relating to similar subject-matter, the report
displays the parts of the documentation consulted for this previous search
as the ones consulted for the application in question, again by using the
appropriate IPC symbols.

7. Title, abstract and figure to be published with the abstract (as

indicated on supplemental sheet A)
The search division fills in supplemental sheet A before publication of the
application, regardless of whether it is going to be published with the
search report (A1 publication) or without it (A2 publication), because the
information entered there is needed to publish the application.

On supplemental sheet A, the search division indicates:

Rule 47(1) (i) approval or amendment of the abstract's wording, which is

Rule 66 communicated to the applicant under Rule 66 (see A-III, 10). The
search division does not study the abstract beyond ensuring that it
relates to the application and does not conflict with the invention's
title or the application's classification. Since the abstract has to relate
to the application as filed, the search division will consider it and
decide on its final wording before carrying out the search, in order to
avoid being inadvertently influenced by the search results.

If the search report is published separately (A3 publication), no

information about the abstract is given on supplemental sheet A. The
information sent to the applicant includes the invention's title and any
figure of the drawings to be published with the abstract.

In exceptional cases, the search division may change the abstract

after the search but, if the application has already been published
(A2 publication), supplemental sheet A will not be reissued.

Rule 41(2)(b) (ii) approval or amendment of the invention's title (see A-III, 7)

Rule 47(4) (iii) approval, change or omission of any figure selected by the applicant
to accompany the abstract (see F-II, 2.3(vi) and 2.4)

Art. 14(7)(a) (iv) the translation of the European patent application's title into the two
other official languages.

The European Patent Bulletin is published in all three of the EPO's official
languages (Art. 14(7)(a)) and contains the entries made in the European
March 2024 Guidelines for Examination in the EPO Part B – Chapter X-5

Patent Register. These entries include the invention's title (Rule 143(1)(c))
and so it must be available in all three official languages.

The above applies equally to applications published with the search report
(A1 publication) and those published without it (A2 publication). In an
A2 publication, supplemental sheet A also shows the application's
IPC classification (see B-X, 5). In an A1 publication, the IPC classification
appears only on the search report (Rule 61(6)).

Supplemental sheet A also specifies whether it relates to an A1 or an

A2 publication.

In the case of a supplementary European search report on an international

application, supplemental sheet A is marked A4. The search division does
not decide on the title, abstract or figure to be published with the abstract,
as the ISA will already have decided on them under Rules 37.2, 38 and
8.2 PCT, respectively.

8. Restriction of the searched subject-matter

In the following cases, the search report, the declaration of no search or the
partial search report will state that the search was restricted and which
claims have or have not been searched:

(i) claims above the number of fifteen for which no additional fee has Rule 45(1) and
been paid (see B-III, 3.4). This only applies to European and (3)
supplementary European search reports. Rule 162(1) and
(4)

(ii) lack of unity of invention (see B-VII). The partial search report Rule 64(1)
(see B-VII, 1.1) points out that it has been drawn up for the invention
first mentioned in the claims and is accompanied by a list of the
different inventions identified which specifies their subject-matter and
the claims or parts of claims that relate to them (see Rule 44(2). This
applies regardless of whether the lack of unity is detected "a priori" or
"a posteriori". Any search report later drawn up for all the inventions
for which search fees have been paid will specify the different
inventions searched (and the related claims or parts of claims).

(iii) claims for which no meaningful search or only an incomplete search Rule 63
could be carried out (see B-VIII). The search division then declares: Art. 52(2)
Art. 53
(a) that a meaningful search could not be carried out for any of the
claims (this declaration replaces the search report) or

(b) that a meaningful search could not be carried out for one or
more of the claims or parts of them. The claims concerned are
specified in this declaration, which is issued together with the
partial search report.

In both cases (a) and (b), the reasons for not carrying out the search
or for restricting it must be given (e.g. subject-matter not patentable;
insufficiently clear claims). If necessary, full reasoning is provided in
Part B – Chapter X-6 Guidelines for Examination in the EPO March 2024

the search opinion; see B-VIII, 3.3 for the content of the EESR in
these cases.

Rule 62a (iv) claims not searched because they do not comply with Rule 43(2)
(see B-VIII, 4.2).

9. Documents found in the search

9.1 Identification of documents in the search report

9.1.1 Bibliographic data

All documents cited in the search report must be clearly identified by
indicating the necessary bibliographic data. All citations in the search report
normally comply with the recommendations in WIPO Standards ST.14 (for
including references cited in patent documents), ST.3 (for two-letter codes)
and ST.16 (for identifying different kinds of patent documents), but there
can be exceptions where strictly adhering to them would entail a lot of extra
work and cost and is not necessary to enable a document to be clearly and
easily identified.

9.1.2 "Corresponding documents"

The search division will often come across "corresponding" documents
(see B-VI, 6.2), i.e. documents which have the same or substantially the
same technical content. These are usually either patent documents from
the same patent family or abstracts.

(i) Patent documents in the same patent family

These are patent documents which are from the same country or
from different countries and share at least one claimed priority.

If a cited patent document belongs to a patent family, the search

division does not cite all the other family members it knows of and
can understand, as they are anyway mentioned in the annex to the
search report. However, it may choose to mention one or more
members in addition to the one cited (see B-IV, 3.1). These
documents are identified by naming the office they originate from,
specifying their type and number and placing them after an
ampersand sign (&). There are various 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:

(a) One document in the patent family was published before the
earliest priority date of the application but in a non-EPO
language, whereas another member of the same patent family
was published in an EPO language (see Art. 14(1)) but after
the earliest priority date of the application.

Example

A European application claims a priority of 3 September 1999.

The search on this application uncovers a relevant document
March 2024 Guidelines for Examination in the EPO Part B – Chapter X-7

WO 99 12395 A, which was published in Japanese on

11 March 1999 and so in time to qualify as prior art under
Art. 54(2). There is also the European family member
published as an English translation under Art. 153(4) on
1 March 2000. That is too late for it to be prior art under
Art. 54(2), but it can be cited in the search report as an "&"
document of the Japanese-language WO publication and
made available to the applicant (see B-X, 11.3). It will then be
used to interpret the content of the Japanese WO publication
when the application is examined (see G-IV, 4). In the search
report, these documents would be cited as shown below (on
the linking of cited documents to the claims they relate to ‒
here: claims 1-10 ‒ see B-X, 9.3).

X WO 99 12395 A (SEKI SHUNICHI; KIGUCHI 1-10

HIROSHI (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 *

(b) There are several different documents in the same patent

family and each one contains relevant technical subject-matter
not found in the other family members.

(c) The application cites a family member drafted in a non-EPO

language but there is another family member in an EPO
language, and both were published before the application's
earliest priority date.

Example

Y WO9001867 A (WIDEGREN LARS (SE)) 1-10

8 March 1990 (1990-03-08)
* claim 1 *

D,Y & SE461824 B (WIDEGREN LARS (SE)) 1-10

2 April 1990 (1990-04-02)

By citing the relevant SE document, which is a family member

of the relevant WO document, in the application, the applicant
has already met the requirement that the state of the art be
mentioned in the description (Rule 42(1)(b)). It is important to
make the examining division aware of this by mentioning it in
the search report (see F-II, 4.3).

(ii) Abstracts (see B-VI, 6.2)

Abstracts are provided by several database providers (e.g. Chemical

Abstracts or Derwent) and cover many different types of disclosure
(e.g. patent documents, journal articles, PhD theses, books). They
Part B – Chapter X-8 Guidelines for Examination in the EPO March 2024

summarise the most important aspects of the original document's

technical content. Most abstracts cited are in English. Whenever
citing an abstract in the search report, the search division must
always enter the original document to which it relates after the
"&" sign.

Example

X DATABASE WPI 1-5

Week 200961
Thomson Scientific, London, GB;
AN 2009-N01904
& WO 2009/104990 A1 (VALEXPHARM CO LTD)
27 August 2009 (2009-08-27)
* abstract *

There are various reasons why the search division may choose to
cite the abstract rather than the original document (in which case the
original document must instead be mentioned as an "&" document).
For instance, the original document may not be readily available to it
(e.g. a PhD thesis) or it may be in a non-EPO language (e.g. a
journal article in Russian) and there is no corresponding document.
The original document is made available to the applicant only if it has
been earmarked for this by the search division (see B-X, 12).

If the search division wants to refer to a published Japanese or

Korean patent application (with kind code A), it cites the Japanese or
Korean publication in the search report. If an English abstract is
available in the EPO databases (Patent Abstracts of Japan or Patent
Abstracts of Korea), both the Japanese or Korean publication and
the English abstract are made available to the applicant. A machine
translation is also made available (see B-X, 9.1.3 and 12, and
G-IV, 4.1).

9.1.3 Language of the documents cited

Members of the same patent family are often published in various different
languages. The search division therefore has a choice as to the language
in which it wishes to cite such a document in the search report. If the
relevant technical content of the various family members is the same and
they were all published before the earliest priority date of the application,
they are all equally relevant to the application. The search division chooses
which one of them to cite by looking at the languages they were published
in and applying the following order of preference:

(1) an official EPO language (i.e. English, French or German (Art. 14(1))

(2) an official language of an EPC contracting state under Art. 14(4)

(see A-VII, 1.1) ‒ the document can usually be read by a colleague if
the search division member in charge is not familiar with this
language (see B-VI, 6.2)

(3) a language other than those of the EPC contracting states.

March 2024 Guidelines for Examination in the EPO Part B – Chapter X-9

In cases (2) and (3), the search division might consider citing an abstract in
an official EPO language instead of the original document.

If the original document is in a language the search division cannot readily

understand (e.g. Chinese or Russian), it is best to cite the abstract. It is
possible to obtain a machine translation of a patent document into an
official EPO language. This machine translation will be made available to
the applicant (see B-X, 12 and G-IV, 4).

Alternatively, if only a specific paragraph of the machine translation is

needed, the search division may copy that paragraph into the search
opinion, but the full machine translation will be made available to the
applicant as well.

Non-official translations (i.e. translations with no legal value) of publications

in a language the search division cannot readily understand (e.g. Russian,
Japanese, Korean or Chinese) will not be cited in the search report.

9.1.4 Supplementary European search report

In certain circumstances, it is permissible not to cite any documents at all in
a supplementary European search report under Art. 153(7) (see B-IV, 2.5).
The search report will then include the phrase "No further relevant
documents disclosed", but the search opinion (if applicable ‒ see B-XI, 7)
will give an opinion on whether the claimed invention seems to be
patentable over the state of the art cited in the international search report
(B-XI, 1.1).

Even if the search division disagrees with the ISA's opinion on the
relevance of a document cited in the international search report for
assessing the novelty and/or inventive step of the claimed invention, it
normally does not cite the document again in the supplementary European
search report with a new, corrected document category. The exception to
this is where it wants to combine a first document falling under category Y
(see B-X, 9.2.1) and not found until its supplementary European search
with another document already cited in the international search report: it
may then choose to cite the other document from the international search
report again in its supplementary European search report as a
"Y" document in combination with the first document. Where this
recategorising of the document does not affect all the claims, this is clarified
in the supplementary European search report in order to ensure
consistency with the European search opinion.

9.2 Categories of documents (X, Y, P, A, D, etc.)

All documents cited in the search report are assigned to one of the
categories explained in more detail below by placing the relevant letter in
the first column of the citation sheets. Categories can be combined if
necessary.

9.2.1 Particularly relevant documents

Where a document cited in the search report is particularly relevant, it is Art. 52(1)
labelled with the letter "X" or "Y". Category "X" applies where a document Art. 54
Art. 56
Part B – Chapter X-10 Guidelines for Examination in the EPO March 2024

shows on its own that a claimed invention cannot be considered novel or

to involve an inventive step.

Art. 52(1) Category "Y" applies where a document suggests that a claimed invention
Art. 56 cannot be considered to involve an inventive step when the document is
combined with one or more other documents of the same category and this
combination is obvious to a person skilled in the art. However, if a
document (called a "primary document") explicitly refers to another
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 labelled with the letter "X",
i.e. not "Y", and the document it refers to (the "secondary document") is
labelled with "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 search report represents state of the art that
does not prejudice the novelty or inventive step of the claimed invention, it
is labelled with the letter "A" (see, however, B-III, 1.1).

9.2.3 Documents which refer to a non-written disclosure

Rule 61(4) Where a document cited in the search report refers to a non-written
disclosure (e.g. conference proceedings), it is labelled with the letter "O''
(see B-VI, 2). For oral disclosures that took place at an officially recognised
exhibition (Art. 55(1)(b)), see B-VI, 5.5. The document category "O" is
always accompanied by one of the letters explained in B-X, 9.2.1 and 9.2.2
to indicate its level of relevance. So e.g. "O, X", "O, Y" or "O, A".

9.2.4 Intermediate documents

Rule 61(3) Documents published between the priority date claimed in the searched
application ‒ or the earliest priority date if there is more than one
(see B-VI, 5.2 and B-XI, 4) ‒ and its filing date are labelled with the letter
"P". The letter "P" is also used for a document published on the very day of
the earliest priority date claimed. The document category "P" is always
accompanied by one of the letters explained in B-X, 9.2.1 and 9.2.2 to
indicate its level of relevance. So e.g. "P, X", "P, Y" or "P, A".

9.2.5 Documents relating to the theory or principle behind the

invention
Where a document cited in the search report may be useful for a better
understanding of the principle or theory behind the invention or shows that
the reasoning or the facts behind it are incorrect, it is labelled with the
letter "T".

In the latter case, the "T" document is evidence within the meaning of
Art. 117(1)(c) rather than prior art within the meaning of Art. 54(2) and so it
does not matter whether it was published before or after the searched
application's priority or filing date.

For example: an applicant claims a group of chemical compounds and the

description gives a generically defined process for their production. The
search division finds a document published after the priority date which
March 2024 Guidelines for Examination in the EPO Part B – Chapter X-11

clearly shows that the generically defined process cannot produce all of the
compounds covered by the claims. It can then cite it as a "T" document and
use it to raise an Art. 84 objection that the claims are not supported by the
description (see F-IV, 6.3).

9.2.6 Potentially conflicting patent documents

Any patent document which has a filing or priority date before the searched Art. 54(3)
application's filing date (not its priority date – see B-VI, 3 and B-XI, 4) but Art. 139(2)
was published on or after that date and whose content could potentially
constitute prior art relevant to novelty (Art. 54(1)) is labelled with the letter
"E". This label is also assigned where the patent document and the
searched application have the same filing date (see G-IV, 5.4). However,
patent documents claiming the same priority as the searched application do
not fall in this category and are not cited.

9.2.7 Documents cited in the application

When the search report cites documents already mentioned in the Rule 42(1)(b)
searched application's description, these are labelled with the letter "D"
(see B-IV, 1.3).

9.2.8 Documents cited for other reasons

Where the search report cites a document for reasons other than those Art. 117(1)(c)
referred to above (in particular as evidence – see B-VI, 5.6), for example
because it:

(a) casts doubt on a priority claim (see B-VI, 5.3)

(b) establishes the publication date of another citation (see B-VI, 5.6)

(c) is relevant to the issue of double patenting (see B-IV, 2.3(v) and
G-IV, 5.4),

it is labelled with the letter "L" and brief reasons for citing it are given. In the
special case that the search division considers the claimed subject-matter
to be notorious and so no documentary evidence is needed (see
B-VIII, 2.2), it will give the reasoning behind not citing any prior-art
documents in the search opinion.

A citation of an "L" document does not need not be linked to any of the
claims (see B-X, 9.3) unless the evidence it provides relates only to
particular claims (e.g. it shows the priority claim is invalid for only some
claims), in which case the claims affected must be specified.

9.3 Relationship between documents and claims

Each document cited in the search report is accompanied by an indication Rule 61(2)
of the claims to which it relates, unless it falls in category "L"
(see B-X, 9.2.8). The same document can be cited in different categories
for different claims, but the specific claims it relates to in each category
must be indicated.
Part B – Chapter X-12 Guidelines for Examination in the EPO March 2024

Example

X WO9001867 A (WIDEGREN LARS (SE)) 1

8 March 1990 (1990-03-08)

Y * column 3, line 27 – line 43; figure 1 * 2-5

A * figure 2 * 6-10

The document cited in the above example discloses subject-matter which

prejudices the novelty or inventive step of the subject-matter of claim 1 and,
when the document is combined with another one cited in the search
report, the inventive step of the subject-matter of claims 2 to 5 and which
also represents non-prejudicial state of the art for the subject-matter of
claims 6 to 10. The passages or figures are not necessarily relevant to the
claims and the category indicated on the same line.

Generally speaking, 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 a particular claim was not searched because the
search was restricted as described in B-X, 8) (see B-IV, 2.5).

9.4 Identification of relevant passages in prior-art documents

Rule 61(2) If a cited document is very long, the search division will identify the specific
parts (e.g. claim, example, figure, table, text passage on a particular page,
or a specific time or time range in a video and/or audio media fragment)
which contain the technical subject-matter closest to (or coinciding with) the
searched invention. This is particularly important where the document is
relied on to support objections to novelty or inventive step.

Where the search division relies on a translation of a prior-art document, it

will indicate the relevant passages in the original document whenever
possible.

It makes sense to cite not only those parts of the document describing the
same or similar technical subject-matter but also those parts or passages
relating to the problem solved by that subject-matter. This makes it easier
to assess inventive step in examination and also gives the applicant a
better idea of how the document may be used during the proceedings.

10. Authentication and dates

The search report shows the date on which it was drawn up, i.e. the date it
was drafted by the search division member who carried out the search.

The member's name must also appear on the search report.

11. Copies to be made available with the search report

11.1 General remarks

Rule 65 The search report is sent to the applicant and transmitted to the examining
division. Copies of all the cited documents are made available to the
applicant (see also B-IV, 3.3), except for those documents appearing in the
March 2024 Guidelines for Examination in the EPO Part B – Chapter X-13

search report after the "&" symbol which the search division has not
earmarked for this (see B-X, 11.3).

These cited documents are then 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 proceedings.

11.2 Electronic version of cited document

In the case of patent documents, a complete copy is made available.

If a document has been published in electronic form only (see Rule 68(2)
and OJ EPO 2000, 367), an electronic version is made available to the
applicant. If only parts of it are not available in paper form, then at least
those parts will be made available as an electronic version. At any rate, the
applicant must ultimately be provided with the whole document either as a
combination of paper and electronic versions or in electronic form only.

11.3 Patent family members; the "&" sign

In the case of patent families, only a copy of the family member actually
cited is normally made available. The other members are mentioned in an
automatically generated annex produced for information only
(see B-X, 9.1.2). However, in certain circumstances one or more other
patent documents in the same patent family may be mentioned on the
search report after the "&" sign (see B-X, 9.1.2(i)). The search division may
decide that copies of these patent documents should also be made
available to the applicant (they will then be included in the examination file
too, and can be referred to in any search opinion).

11.4 Reviews or books

In the case of a review or a book, copies of the relevant pages are made
available to the applicant. The relevant bibliographic information has to be
clear from the these copies.

11.5 Summaries, extracts or abstracts

Where a document cited is a summary, extract or abstract of another,
separately published document, a copy of the summary, extract or abstract
is made available to the applicant.

If, however, the search division considers that the whole source document
is needed, that document must be cited and a copy must be made available
to the applicant (see B-X, 9.1.2(ii)).

When an online search in a database (e.g. CAS References, CAS Registry,

COMPENDEX, INSPEC, NTIS) is performed and the original document
referred to in the database is not available at the EPO when the search
report is drafted, the extract is added to the file instead of the original.

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

internet
Video and/or audio media fragments available on the internet are converted
into a non-patent literature citation. The bibliographic data include the URL
of the original location on the internet.
Part B – Chapter X-14 Guidelines for Examination in the EPO March 2024

If these citations 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

Rule 65 The EPO forwards the search report and the search opinion (if applicable ‒
Rule 61(1) see B-XI, 7) to the applicant and makes copies of all cited documents
available to them (see B-X, 11.1), including any machine translations
(see B-X, 9.1.3) and any documents appearing after the "&" sign that the
search division has earmarked for this (see B-X, 11.3).
March 2024 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 items: Rule 62(1)

(i) the European search report or the supplementary European search

report (see B-X)

(ii) the search opinion.

1.1 The search opinion

For European patent applications filed as of 1 July 2005 and international
applications filed as of that date that enter the European phase, European
search reports and supplementary European search reports will be
accompanied by an opinion on whether the application and the invention
dealt with seem to meet the EPC requirements.

This does not apply in the cases referred to in B-XI, 7.

The findings in the search opinion must be in line with the document
categories assigned in the search report and with any other issues raised
there, such as lack of unity of invention or any limitation of the search.

1.2 Position of the examining division

The examining division will consider any objections raised in the search
opinion and the applicant's response to them (see B-XI, 8) when examining
the application. It may change the position taken in the search opinion after
receiving arguments, amendments and other submissions from the
applicant in response to the search opinion or subsequently in examination
proceedings. Irrespective of any such submissions, it may also alter the
position if it finds Art. 54(3) state of the art when carrying out a top-up
search or if it is made aware of additional state of the art either by the
applicant or in observations filed by third parties under Art. 115 (see also
B-IV, 3.2, C-IV, 7.3 and 7.4).

The examining division can also reverse the findings in the search opinion
for other reasons (see B-III, 1.1), but this is rare.

2. Basis for the search opinion

Where a European patent application is not based on an international Art. 123(1)
application, the applicant cannot amend it before receiving the search Rule 137(1)
report. This means that the search opinion will always deal with the
application documents as originally filed although it will also take account of
any reply from the applicant to an invitation under Rule 63(1)
(see B-VIII, 3.4).

However, if it is based on an international application and undergoes a Rule 161(2)

supplementary European search under Art. 153(7) (see B-II, 4.3), the Rule 159(1)(b)
applicant will have had an opportunity to amend it both in the international Art. 19 PCT
phase and on entry into the European phase. The search opinion will then Art. 34(2)(b) PCT
be based on the application documents which the applicant has most
recently asked to be processed (this may involve cancelling previously filed
Part B – Chapter XI-2 Guidelines for Examination in the EPO March 2024

amendments and reverting to parts or all of an earlier set of application

documents). The supplementary European search report will also relate to
these application documents (see B-II, 4.3 and B-III, 3.3.2).

Where the search opinion and supplementary European search report deal
with amended application documents but the requirements in Rule 137(4)
have not been met (see H-III, 2.1), a communication asking the applicant to
meet these requirements (see B-VIII, 6 and H-III, 2.1.1) cannot be sent yet
(i.e. before the search opinion is drawn up) because the examining division
is still not responsible for the application (see C-II, 1). Once it does take
charge of the application, it can send this communication, but only if the
amendments in question have not since been withdrawn or superseded
(see H-III, 2.1.1) and only if the application is of one of the types listed
in H-III, 2.1.4.

2.1 Application documents filed under Rule 56 EPC, Rule 56a EPC,
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) or under Rule 56a(3) or (6), but the search division
considers that the subsequently filed missing parts or correct application
documents or parts are not "completely contained" in the priority document
and/or the requirements of Rule 56(3) or Rule 56a(4) are not met, its
search will also take into account prior art which would potentially become
relevant for assessing novelty and inventive step of the subject-matter
claimed if the application were redated under Rule 56(2) or (5) or under
Rule 56a(3) or (6). The search opinion must include a warning that the
application seems not to meet the requirements in Rule 56 or Rule 56a for
keeping the accorded filing date, a statement of reasons as to why this is
the case and an indication that a formal decision on whether to redate the
application will be taken by the examining division at a later stage. If
appropriate, the search opinion can also comment on the effect redating
would have on the priority claim and/or the status of the prior-art documents
cited in the search report.

A similar procedure is followed for a Euro-PCT application. If the search

division finds when carrying out a supplementary European search 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 under Rule 20.5bis(d) PCT are not
"completely contained" in the priority document, even though the receiving
Office did not redate the application, the search opinion must include a
warning that the application does not seem to meet 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 formal decision on whether to redate
the application will be taken by the examining division at a later stage.

Conversely, if the application has been redated by the Receiving Section or

the receiving Office, but the search division has reason to believe that it
does meet the requirements of Rule 56(3) or Rule 56a(4) (or
Rule 20.6 PCT), it must indicate in the search opinion that the examining
division may reconsider the decisions of the Receiving Section (or the
March 2024 Guidelines for Examination in the EPO Part B – Chapter XI-3

receiving Office) at a later stage unless it is bound by a decision of the

board of appeal.

2.2 Applications containing claims filed after the accorded filing date
If the application documents contain any claims filed after the accorded
filing date (Rules 40(1), 57(c) and 58), the search division has to examine
whether those claims meet the requirements of Art. 123(2), i.e. do not go
beyond the technical content of the application documents as they were at
the filing date. If it finds that they do not meet the requirements, it will carry
out the search as described in B-VIII, 6.

Where the search opinion and search report are based on late-filed claims
but the requirements in Rule 137(4) have not been met (see H-III, 2.1), a
communication asking the applicant to meet these requirements
(see H-III, 2.1.1) cannot be sent yet (i.e. before the search opinion is drawn
up) because the examining division is still not responsible for the
application (see C-II, 1). Once it does take charge of the application, it can
send this communication, but only if the late-filed claims have not since
been superseded (see H-III, 2.1.1) and only if the application is of one of
the types listed in H-III, 2.1.4.

3. Analysis of the application and content of the search opinion

If the search division takes the view that the application and/or the invention
do not meet the EPC requirements, then it will raise objections in the
search opinion.

As a general rule, the search opinion covers all objections to the application
(but see B-XI, 3.4). These objections can relate to substantive matters
(e.g. the subject-matter is not patentable) or to procedural matters (e.g. one
or more of the requirements in Rules 41 to 43, and 48 to 50 are not met;
see Arts. 1 and 2 of the decision of the President of the EPO dated
25 November 2022, OJ EPO 2022, A113), or even to both.

Where claims relating to a method of treatment of the human or animal Art. 53(c)
body or methods of diagnosis practised on the human or animal body have
been searched because it can already be envisaged at this stage that they
will be reworded in an allowable format (see B-VIII, 2), the search opinion
will nonetheless object to these claims as relating to subject-matter that is
not patentable.

3.1 The search division's dossier

The search division's first step is to study the description, any drawings and Rule 62
the claims. For this, it will have access to the documents making up the
European application and a complete history of the proceedings up to the
start of search although the priority documents and any translations may
not yet be available at this stage (see B-XI, 4).

3.2 Reasoning

3.2.1 Reasoned objections

For each objection, the search opinion must clearly specify which part of
the application is deficient and which EPC requirement is not met, for
Part B – Chapter XI-4 Guidelines for Examination in the EPO March 2024

instance by referring to specific articles or rules. It must also give the

reason for the objection where this is not immediately apparent. For
example, where a prior-art document is cited but only part of it is relevant,
the specific passage relied on should be specified. If the cited prior art
shows a lack of novelty or inventive step in the independent claim or claims
and there is lack of unity between dependent claims as a result
(see F-V, 7), the applicant is informed of this situation (see H-IV, 5.2(i)).
Substantive matters are normally set out first. The search opinion should be
drafted in a way that facilitates later examination of the amended
application and, in particular, prevents the need to read it all again in depth
(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 a related
objection. For dependent claims, it may not always be necessary to give
detailed reasoning in the search opinion, but it at least needs to be
apparent what the reason for the objection is.

3.2.2 Positive statements

Where applicable, the search division also comments positively on
patentability in the search opinion. The amount of detail given should be
enough to help applicants make their decisions. There is therefore no need
to give such detailed reasoning as for an objection, but simply making a
positive statement without explaining it will only be enough if the reason
behind is anyway immediately apparent.

3.3 Comments and amendments in response to the search opinion

The applicant generally has to respond to the search opinion although there
are some exceptions (see B-XI, 8).

3.4 Scope of first analysis for generally deficient applications

Where an application is found to be generally deficient, the search division
does not analyse it in detail, but sends the applicant a search opinion
informing them of its view, mentioning the major deficiencies and saying
that, when the application moves on to the examination stage, further
examination will be deferred until the application has been amended to
overcome them. There are cases where, although a meaningful analysis is
possible, a fundamental objection arises, e.g. it is clear that certain claims
lack novelty and that the statement of claim will have to be drastically
recast, or there are substantial amendments (to an international application
entering the European phase – see B-XI, 2) which are not allowable either
because they add new subject-matter that was not in the application as
filed (Art. 123(2)) or because they introduce other deficiencies (e.g. the
amendment makes the claims unclear – Art. 84). It may then be more
appropriate to deal with this objection before making a detailed analysis.
For instance, if the claims need to be recast, it may not make sense to
object to the clarity of some dependent claims or to a passage in the
description which may anyway have to be amended or even deleted in
examination proceedings as a result. However, if there are other major
objections, these should be addressed. Generally speaking, the search
division should try to deal with as many deficiencies as possible in the
search opinion to help make the decision-making process in the later
March 2024 Guidelines for Examination in the EPO Part B – Chapter XI-5

examination proceedings as efficient as possible. As regards 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 Rule 42(1)(c)
to understand what technical contribution the invention defined in the
claims makes to the known art. This should normally be sufficiently clear
from the application as filed. If it is not, the search division will raise an
objection in the search opinion (see F-II, 4.5), but only if it is convinced it is
necessary, because it might lead the applicant to add subject-matter in
breach of Art. 123(2) (see H-IV, 2 and H-V).

3.6 EPC requirements

Although the search division must bear all the EPC requirements in mind,
the ones it is most likely to have to deal with are: sufficiency of disclosure
(see F-III); clarity and support in the description, especially for 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 simply
because it thinks they would improve the wording of the description or
claims. It should not take a pedantic approach; what is important is that the
meaning of 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 is not for the search division to tell applicants to amend their application in
a particular way to overcome an objection. It is the applicants' own
responsibility to draft their application and they are free to amend it any way
they choose as long as the amendment removes the deficiency and is
otherwise in keeping with the EPC. However, it can sometimes help if the
search division suggests, at least in general terms, an acceptable form of
amendment, but it then has to make it clear that the suggestion is merely to
help the applicant and that other forms of amendment will still be
considered in the examination proceedings. Although not obliged to do so,
it will point out amendments which would overcome the objections raised to
the applicant if there is a clear way out.

When suggesting an acceptable way of amending the claims, the search

division will also invite the applicant to adapt the description to bring it into
line with the amended claims (see F-IV, 4.3).

However, the applicant remains responsible for deciding how to word the
application and in particular for defining the subject-matter for which
protection is sought (Art. 113(2) EPC).

3.9 Positive opinion

After analysing the application as described in B-XI, 3.1 to 3.8, the search
division may conclude that it and the claimed invention both satisfy the EPC
requirements and it will then express a general positive opinion on the
Part B – Chapter XI-6 Guidelines for Examination in the EPO March 2024

application documents in the search opinion. However, if a full search for all
potentially conflicting applications under Art. 54(3) could not be carried out
at this stage (see B-VI, 4.1), a top-up search will be needed at the
examination stage (see C-IV, 7.1) and so the application remains open to
any objections under Art. 54(3) raised then.

A positive search opinion can be issued even where minor amendments

would have to be made to the application documents for the application to
be granted. So long as no prior art within the meaning of Art. 54(3) is found
in any subsequent top-up search, the examining division can issue the
Rule 71(3) communication and propose these minor amendments there
(see C-V, 1.1).

The applicant does not have to respond to a positive search opinion

(see B-XI, 8).

It is not possible at the search stage to officially designate an examining

division, because the Receiving Section is still responsible for the
application (Art. 16). However, the prospective members of the examining
division will already be known and the search division will consult them to
check that they agree to the issue 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 by when the priority
document has to 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 to

the search division when drafting the search opinion (Rule 53(3),
see A-III, 6.8 and its subsections, and F-VI, 3.4),

the priority claim will usually be assumed to be valid for the purposes of the
search opinion. Where the only objections which could be raised against
the application at this stage depend on the priority being invalid, and the
priority document (or its translation) is not available, the search division will
issue an entirely positive search opinion without any objections. In case (ii)
above, a communication under Rule 53(3) may be issued (see A-III, 6.8.1)
and the priority's validity may later be reviewed in examination proceedings.

However, if a priority claim's validity has to be assessed as a result of

intermediate prior art or potential state of the art under Art. 54(3), and
evidence against its validity is already available, then this needs to be
brought up in the search opinion. For example, where the priority document
is available when the search opinion is drafted and the technical features of
the claims are not in the priority document, the search division may be able
to do this even without a required translation if it is familiar with the
language of the priority document (see also B-VI, 5.3).
March 2024 Guidelines for Examination in the EPO Part B – Chapter XI-7

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

Where the search division refers to a document potentially amounting to
prior art under Art. 54(3) in the search opinion, there are two possibilities,
depending on whether or not it can conclusively establish that the prior-art
document has an earlier relevant date than the application: if so, it will raise
a novelty objection under Art. 54(3); if not, it will assume that any priority
which cannot be checked is valid. This leads to two different scenarios:

(i) The prior-art document belongs to the state of the art under
Art. 54(3). The search division therefore raises a novelty objection in
the search opinion and specifies 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). If the search opinion raises other kinds of objection in the
search opinion, it will refer to the document potentially falling under
Art. 54(3) (and its relevant passages) and will explain which priorities
have been assumed valid.

Where "P" documents are also cited in the search report and they are not
potential prior art under Art. 54(3) (because they are not international or
European patent applications), they may be prior art under Art. 54(2) and
so be relevant for the assessment of novelty and inventive step in so far as
the application's priority is invalid. If its priority can be checked, the search
division will do so. If it finds that the priority is not valid, it will raise
objections in the search opinion on the basis of the "P" documents. If the
priority cannot be checked, it will assume it is valid and will not raise any
objection in the search opinion.

The issue of whether the priority claim or claims are valid then needs to be
reviewed in examination (see F-VI, 2).

5. Unity in relation to the search opinion

Where the search division finds that the claimed invention lacks unity
(Art. 82 and Rule 44(1) and (2)), it will send the applicant an invitation to
pay further search fees and a partial search report on the invention or
unitary group of inventions first mentioned in the claims (see B-VII, 1.1, 1.2
and 1.3 and Rule 64(1)). It will also send a provisional opinion on the
patentability of that invention or unitary group of inventions and the reasons
for its non-unity findings (see B-VII, 1.2).

After the time limit for paying the further search fees has expired,
(Rule 64(1)) the applicant will be sent a search report on the invention or
unitary group of inventions first mentioned in the claims and all other
claimed inventions or unitary groups of inventions for which further search
fees were paid. This search report will be accompanied by a search opinion
setting out:

(i) the reasoning behind the finding of a lack of unity

(ii) an opinion on whether the first invention or unitary group of

inventions mentioned in the claims is patentable
Part B – Chapter XI-8 Guidelines for Examination in the EPO March 2024

(iii) an opinion on whether all inventions or unitary groups of inventions

for which further search fees have been paid are patentable.

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 where the search was limited

Any arguments and objections set out in the search opinion must be
consistent with how and why the search was limited. This applies to
limitations for reasons of non-patentability (e.g. business methods –
Art. 52(2)(c), see B-VIII, 1), for reasons of severe deficiencies preventing a
meaningful search (Rule 63, see B-VIII, 3) or due to a contravention of
Rule 43(2) (Rule 62a, see B-VIII, 4). In these cases, the search opinion will
also contain the information mentioned in B-VIII, 3.3 and 4.3.

Where claims were not searched because the applicant had not paid the
claims fees for them and so they were deemed abandoned (Rule 45 or
Rule 162), this will be pointed out to the applicant in the search opinion.

7. No search opinion is issued

Where an applicant has filed a request for examination under Rule 70(1)
before being sent the search report and has waived the right to a
communication under Rule 70(2) (see C-II, 1(ii)), the examining division
becomes responsible for the application as soon as the search report is
sent (Art. 18(1) and Rule 10(2)).

If the application is deficient, the examining division will issue a

communication under Art. 94(3) in place of the search opinion. If the
applicant does not respond to this communication, the application will be
considered withdrawn under 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 under Art. 54(3) was
complete, the examining division will issue a communication under
Rule 71(3).

(ii) Where the search for conflicting applications under Art. 54(3) was not
complete, the applicant will be informed that the application can be
granted so long as no state of the art under Art. 54(3) is found during
the top-up search (see B-XI, 3.9). This is purely for information and
the applicant does not have to respond.

8. Response to the extended European search report (EESR)

Rule 70a(1) Applicants have to respond to the search opinion within the time limit for
filing the request for examination under Rule 70(1) (see C-II, 1 and
A-VI, 2.1).

Rule 70a(2) However, where applicants filed a request for examination (which under
Art. 94(1) means also paying the examination fee) before the search report
and the search opinion were transmitted to them, they are sent a
March 2024 Guidelines for Examination in the EPO Part B – Chapter XI-9

communication under Rule 70(2) asking them to confirm that they wish to
continue with the application and setting a period for this (see C-II, 1(i)).
They then also have to respond to the search opinion within that period.
This is generally what happens for Euro-PCT applications for which a
supplementary European search report and search opinion have to be
drawn up (see B-II, 4.3 and E-IX, 2.5.3), unless the applicant has waived
the right to a communication under Rule 70(2) (see C-II, 1(ii)), in which
case the procedure under B-XI, 7 applies.

If applicants do not respond to the search opinion in time, their application Rule 70a(3)
will be deemed to be withdrawn and they will be notified of this loss of rights Rule 112(1)
accordingly. They can then request further processing in accordance with
Art. 121 and Rule 135.

Applicants are not required to respond to the European or supplementary

European search report where it 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 drawn up) or where the search opinion was
positive (see B-XI, 3.9). However, they may still respond to it under
Rule 137(2) if they so wish, in which case they are encouraged to do so
before the application moves on to the examination stage (see C-II, 1).

Applicants can respond to the search opinion by filing amended application

documents under Rule 137(2) (see C-II, 3.1) (where amended claims are
filed before publication, see A-VI, 1.3, paragraph 3) or by filing observations
on the objections raised, or even by filing both. Such amendments and
observations will only be examined by the examining division if the
application moves on to the examination stage.

Making a procedural request, e.g. for a consultation or for oral proceedings,

or simply disagreeing with the search opinion is not a valid response if done
without commenting on any of the objections raised. Where such a request
or simple disagreement is the only response received by expiry of the set
time limit, the application deemed to be withdrawn under Rule 70a(3). The
same applies where a request is filed that cannot be granted at this stage
(e.g. for a decision according to the state of the file).

If an applicant does not respond to a search opinion issued for an

application for which the search report was drawn up before 1 April 2010
and the application moves on to the examination stage (see C-II, 1 and
1.1), the examining division will issue a communication referring to the
search opinion and setting a time limit for a response as the first
communication under Art. 94(3) (see C-III, 4). If the applicant does not
respond to this communication in time, the application will be deemed to be
withdrawn under Art. 94(4).

Where an applicant files amendments in response to the search opinion but

not in the way required under Rule 137(4) (see H-III, 2.1), the examining
division may issue a communication under Rule 137(4) (see H-III, 2.1.1)
relating to these amendments, but this can only happen after the examining
division has become responsible for the application (see C-II, 1) and only if
the application is one of the types listed in H-III, 2.1.4.
Part B – Chapter XI-10 Guidelines for Examination in the EPO March 2024

9. Art. 124 and the utilisation scheme

Art. 124 When drafting the search opinion, the search division will consider any
Rule 141 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 2021, A38, and
OJ EPO 2021, A39) if it is already available at the time (see A-III, 6.12 and
B-IV, 1.3). Requests for information on prior art under Rule 141(3) cannot
be made until the application has entered the examination phase
(see C-III, 5).
Part C

Guidelines for Procedural

Aspects of Substantive
Examination
March 2024 Guidelines for Examination in the EPO Part C – Contents a

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 with

the 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 fees, 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 European patent applications III-1

1.1.1 Application documents filed under Rule 56 or
Rule 56a III-1
1.1.2 Claims filed after accordance of a date of filing III-2
Part C – Contents b Guidelines for Examination in the EPO March 2024

1.2 Euro-PCT applications – missing elements and parts

filed under Rule 20.5 and 20.6 PCT III-3

1.3 Euro-PCT applications – erroneous elements filed

under Rule 20.5bis PCT III-3

2. Amendments made by applicants of their own

volition III-5

2.1 Amendments made in response to the search opinion III-5

2.2 Amendments made in response to the WO-ISA,

IPER or supplementary international search report III-6

3. Unity of invention III-6

3.1 Searches under Rule 164(2) III-6

3.2 Relation to unity in search; limitation to searched

invention III-9
3.2.1 No additional search fees paid III-9
3.2.2 Additional search fees paid III-10
3.2.3 Invitation to pay additional search fees combined with
invitation to restrict the scope of the search III-10

3.3 Excision of other inventions; filing divisional

applications III-11

3.4 Refund of additional search fees III-11

3.5 Changing from one searched invention to another III-12

4. First communication III-12

4.1 Reasoning III-13

4.1.1 Reasoned objections III-13
4.1.2 Positive statements/suggestions III-13

4.2 Invitation to file comments and amendments III-13

5. Summons to oral proceedings as the first action

in examination III-14

6. Requesting information on prior art (not confined

to priority) III-15

7. Evaluation of prior-art documents cited in the

search report and late priority claim III-15

Chapter IV – Examination of replies and

further stages of examination IV-1
1. General procedure IV-1
March 2024 Guidelines for Examination in the EPO Part C – Contents c

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 the

priority 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 the

applicant IV-3

7. Search-related issues in examination IV-3

7.1 Search for conflicting European patent applications IV-3

7.2 National prior rights IV-4

7.3 Additional searches during examination IV-5

7.4 Search at the examination stage IV-6

7.5 Citing documents not mentioned in the search report IV-6

8. New submissions in reply to a summons IV-6

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-2

1.3 Translations of the claims V-3

1.4 Claims fees due in response to Rule 71(3)

communication V-3

1.5 Other information in the communication under

Rule 71(3) V-3

2. Approval of the proposed text – grant of a patent V-4

2.1 Request for unitary effect V-5

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
Part C – Contents d Guidelines for Examination in the EPO March 2024

4.1 No payment of fees or filing of translations necessary V-6

4.2 Crediting of fees paid voluntarily V-6

4.3 Amendments or corrections should be reasoned V-7

4.4 Admissibility of amendments V-7

4.5 Adaptation of the description V-7

4.6 Amendments/corrections admitted and allowable –

second Rule 71(3) communication sent V-8
4.6.1 Second Rule 71(3) communication reversing the
amendments proposed by the examining division in
first Rule 71(3) communication V-8
4.6.2 Second Rule 71(3) communication based on higher-
ranking request initially rejected in first Rule 71(3)
communication V-8
4.6.3 Examining division proposes amendments in second
Rule 71(3) communication V-8

4.7 Amendments not admitted and/or not allowable,

examination resumed V-9
4.7.1 Communications/oral proceedings/refusal after
resumption V-9
4.7.1.1 Higher-ranking request not admissible and/or not
allowable V-9
4.7.2 Agreement reached on a text - second Rule 71(3)
communication V-10
4.7.3 No agreement reached on a text - refusal V-10

4.8 Fees to be paid within the second Rule 71(3) period V-10
4.8.1 Claims fees V-11
4.8.2 Fee for grant and publishing V-11

4.9 Reply explicitly disapproving with the proposed text

without indicating an alternative text V-11

4.10 Amendments/corrections filed in second Rule 71(3)

period V-12

5. Further requests for amendment after approval V-12

6. The examining division resumes examination

after approval of the text V-13

6.1 When does the examining division resume

examination after approval? V-13

6.2 A further communication under Rule 71(3) V-13

6.3 Crediting of fees under Rule 71a(5) V-14

7. Correction of errors in the decision to grant V-14

March 2024 Guidelines for Examination in the EPO Part C – Contents e

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-14

12. Certificate V-15

13. European Patent Bulletin V-15

14. Refusal V-15

15. Decision according to the state of the file V-16

15.1 The request for a decision according to the state of

the file V-16

15.2 Decision by means of a standard form V-17

15.3 Issuing a self-contained decision V-17

15.4 Issuing a further communication (no refusal) V-18

Annex Standard marks for indicating amendments or

corrections by the divisions V-19

Chapter VI – Time limits and acceleration of

examination VI-1
1. Time limits for response to communications from
the 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

3. Further ways to accelerate examination VI-1

Chapter VII – Other procedures in examination VII-1

1. General remark VII-1

2. Consultations VII-1

2.1 General VII-1

Part C – Contents f Guidelines for Examination in the EPO March 2024

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-1

3. Recommendation to refuse VIII-2

4. Tasks of the other members of the examining

division VIII-2

5. Further communication with the applicant VIII-2

5.1 When can a summons to oral proceedings be issued

in substantive examination? VIII-3

6. Decision VIII-3

7. Enlargement of the examining division;

consultation of a legally qualified member VIII-3
March 2024 Guidelines for Examination in the EPO Part C – Contents g

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-2

1.6 Claims IX-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 been

entered in accordance with Art. 167(2)(a)
EPC 1973 IX-4

4. International applications (Euro-PCT

applications) IX-4
March 2024 Guidelines for Examination in the EPO Part C – Chapter I-1

Chapter I – Introduction
1. General remark
Chapters C-II to IX set out the general procedure for examination and Art. 18
provide guidance on specific matters, where necessary. They do not
include detailed instructions on matters of internal administration.

2. The work of examiners

Completing examination 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 the examiner is very important. Examiners should always

strive to be constructive and helpful. They should bear in mind that, subject
to the requirements of the EPC, the drafting of the description and claims of
a European patent application is the responsibility of the applicant or their
authorised representative.

Examiners should note in particular the instruction in section 4 of the

General Part of the Guidelines. This applies not only in relation to other
EPO departments. It also means, for example, that the other members of
an examining division should not attempt to repeat the work of the first
member (see C-VIII, 4).

3. Overview
Part C of the Guidelines deals with matters of examination procedure
(see C-II to IX).

Matters of substantive law, i.e. the requirements that a European patent

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 the Art. 94(1)
subsequent examination proceedings is to ensure that the application and Art. 164(1)
the invention to which it relates meet the requirements set out in the Rule 62(1)
relevant 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 have
been 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), Rule 70(2)
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 the
claims of the application. However, as they will normally have already done
this when they carried out the search (see B-XI, 3), they should concentrate
on any amendments and/or comments filed by the applicant in response to
the search opinion (see B-XI, 8). Where the applicant has made
amendments without identifying them and/or their basis in the application
as filed (see H-III, 2.1) and the application is one of those mentioned in
Part C – Chapter I-2 Guidelines for Examination in the EPO March 2024

H-III, 2.1.4, the examining division may send the applicant a communication
under Rule 137(4) requesting this information (see H-III, 2.1.1).
March 2024 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
For examination of a European patent application to begin, the applicant Art. 94
must file a request for examination and pay the examination fee. The Art. 121
request for examination, which is not deemed filed until after the Rule 70
examination fee's payment, may be filed in the period between the Art. 122(4)
application's filing date and the last day of the six months after the date on Rule 136(3)
which the European Patent Bulletin mentions the European search report's
publication (see A-VI, 2.1). If the request for examination is not filed within
this period, the application is deemed withdrawn. However, in such a case,
the applicant can file a request for further processing pursuant to Art. 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), the request for
examination may not be withdrawn.

Subject to certain exceptions, the applicant must also respond to the Rule 70a(1) and (3)
search opinion within the above period for filing the request for examination
(see B-XI, 9 and C-II, 3.1) unless the EPO invites them to confirm an early
request for examination according to Rule 70(2), in which case they must
respond to the search opinion within the period provided for under
Rule 70(2) (see C-II, 1.1).

Responsibility for examining the application passes from the Receiving Rule 10
Section to the examining division when a request for examination is filed. Rule 70(2)
This is subject to two exceptions:

(i) if the applicant files a request for examination before the European
search report is sent to them, then the examining division is
responsible only from the time when the EPO receives the
applicant's response to the invitation to confirm under Rule 70(2)

(ii) if the applicant, having waived the right to receive an invitation to

confirm under Rule 70(2) (see C-VI, 3), files a request for
examination before the European search report is sent to them, then
the examining division is responsible only from the time when the
search report is sent to the applicant.

1.1 Confirmation of the intention to proceed further with the

application
If the applicant files a request for examination before the search report is Rule 70(2) and (3)
sent to them, the EPO will invite them to confirm, within a six-month period, Art. 121
that they wish to proceed with their application. This six-month period is Art. 11 RFees
calculated from the mention of the European search report's publication in Rule 70a(2) and (3)
the European Patent Bulletin. Where the applicant also has to respond to
the search opinion, their response is required within this same period
(see B-XI, 8 and C-II, 3.1). In such a case, the applicant's response to the
search opinion is interpreted as the confirmation required by Rule 70(2),
Part C – Chapter II-2 Guidelines for Examination in the EPO March 2024

even where not explicitly expressed as such. If they fail to confirm their
wish to proceed with the application in due time in reply to this invitation,
the application will be deemed withdrawn. In this case, however, the means
of redress provided for in Art. 121 (further processing of the application) will
apply (see A-VI, 2.3 and E-VIII, 2). For the conditions applicable to a refund
of the examination fee if the application is withdrawn, refused or deemed
withdrawn, see A-VI, 2.5.

1.2 Euro-PCT applications

Art. 153(4), (6) and For applications filed via the PCT route (Euro-PCT application), the
(7) six-month period under Rule 70(1) begins with the publication of the PCT
Art. 150(2) search report or the declaration under Art. 17(2)(a) PCT. However, as is
Rule 159(1)(f) laid down in Art. 150(2), the time limit for requesting examination of a
Euro-PCT application 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
search pursuant to Art. 153(7) needs to be made or whether the
international application is again published by the EPO pursuant to
Art. 153(4).

Art. 121 If the request for examination of a Euro-PCT application has not been filed
Rule 136(3) within the time limit, the application is deemed withdrawn under
Rule 160(1) Rule 160(1). In such a case, however, the applicant can file 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 report has
been dispatched, a communication under Rule 70(2) is sent to the applicant
inviting them to confirm the request for examination within six months of
that communication's notification (see E-IX, 2.5.3).

1.3 Invention to be examined

Rule 36 Where the search report and the search opinion have been drawn up to
cover several inventions lacking unity, the applicant is free to select the
invention to be examined in the application under consideration (see
also C-III, 3.2).

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 and C-IX, 1.3).

2. Allocation of the application

Dossiers are normally allocated to an examining division that is responsible
for examining applications in the technical field in which the particular
application was classified by the search division or ISA that carried out the
search. It is usual for the first member entrusted with 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 search report and
WO-ISA or the supplementary international search report.
March 2024 Guidelines for Examination in the EPO Part C – Chapter II-3

There may, however, be instances where it is appropriate to allocate the

application to an examining division comprising examiners who are not
normally responsible for the indicated part of the International Patent
Classification (IPC) and who might not have been involved at the search
stage. There are a number of possible reasons for this: e.g. to make it
possible, where appropriate, that a parent and a divisional application are
dealt with by the same examining division (this could sometimes be more
efficient, even when the two applications are classified in different technical
fields); or if the classification of the published application does not
correspond to the subject-matter of the application in the form in which it
reaches the substantive examiner (e.g. because the application 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 the Rule 137(2)
first communication from the examining division, the applicant must (subject Rule 70(2)
to certain exceptions) respond to the search opinion by filing amendments Rule 70a
to the description, claims or drawings and/or filing observations on the
objections raised in the search opinion (see B-XI, 8 for details, in particular
as to the exceptions where no reply is required). To avoid delays, care
should be taken to comply with the requirements of Rule 137(4) when filing
such amendments (see OJ EPO 2009, 533, point 7). Any amendments filed
at this stage are made voluntarily by the applicant in 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 (or Art. 94(3) and (4)
filed voluntarily in response to search opinions not requiring a response) Rule 62(1)
will be taken into account by the examining division when drafting the first
communication. 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 the applicant accepts a search division's suggestion regarding an

acceptable form of amendment of the claims to overcome the objections
raised (see B-XI, 3.8), they are requested to adapt the description to the
claims on file and delete or amend any statements or expressions throwing
doubt on the scope of protection (see F-IV, 4.3).

In exceptional cases, the examining division may decide to issue a

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,
see B-XI, 8) and the applicant did not reply to it, a communication referring
to the search opinion and setting a time limit for reply is issued as the first
communication under Art. 94(3). Failure to respond to this communication
Part C – Chapter II-4 Guidelines for Examination in the EPO March 2024

in due time results in the application being deemed withdrawn according to

Art. 94(4).

The procedure explained in the above paragraphs also applies to

Euro-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).

3.2 Response to PCT actions prepared by the EPO

Rule 161(1) 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 (IPEA) or
the Supplementary International Searching Authority (SISA), the applicant
will already have responded to a negative WO-ISA, IPER or supplementary
international 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 the applicant accepts 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), they are requested to adapt
the description to the claims on file and delete or amend any statements or
expressions throwing doubt on the scope of protection (see F-IV, 4.3).

Any amendments filed at this stage are made voluntarily by the applicant 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 under Art. 94(3) or, in exceptional cases, the annex 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 European
search opinion (ESOP) within the period referred to in Rule 70(1) or, where
applicable, the period referred to in Rule 70(2) (see B-XI, 8) unless they
have waived their right to receive the communication under Rule 70(2)
(see C-VI, 3).

Where the request for examination (including payment of the examination

fee) is filed after the search report has been transmitted to the applicant,
the applicant must respond to the ESOP within the period referred to in
Rule 70(1). In such cases, the invitation under Rule 70a(1) is sent in a
combined communication with the communication under Rule 69(1)
(see A-VI, 2.1). This communication under Rule 70a(1) and Rule 69(1) is
issued shortly after the mention of the European search report's publication
in the European Patent Bulletin (in general, this is approximately one week
later).

Where the request for examination (including payment of the examination

fee) is filed before the search report has been transmitted to the applicant,
March 2024 Guidelines for Examination in the EPO Part C – Chapter II-5

the applicant must respond to the ESOP within the period referred to in
Rule 70(2). In such cases, the invitation under Rule 70a(1) is sent in a
combined communication with the communication under Rule 70(2). With
regard to how the period referred to in Rule 70(2) is calculated for these
cases, see C-II, 1.1 for Euro-direct applications and C-II, 1.2 for Euro-PCT
applications for which a supplementary European search report is
prepared.

4. Designation fees, extension and validation fees

Under Rule 39(1), the designation fees can be validly paid up to the same Rule 39(1)
time limit as the examination fee and therefore will be generally paid at the Art. 90(3)
same time as the examination fee. The examination of whether and to what
extent a designation fee has been validly paid has been entrusted to the
formalities officer under 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 of whether extension or validation
fees have been paid; see A-III, 12.2.

5. Copy of the search results on the priority or priorities

If, when the examining division assumes responsibility, the EPO notes that Rule 70b(1)
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 duly filed under Rule 141(2) (see A-III, 6.12), it invites the applicant
to file, within a period of two months, the copy or a statement that the
results of the search referred to in Rule 141(1) are not available 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 Rule 70b(2)
deemed withdrawn. Further processing is available for this loss of rights
(see E-VIII, 2).

The search results provided by the applicant will be included in the file and
will be open to file inspection (see A-XI).
March 2024 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 patent applications

1.1.1 Application documents filed under Rule 56 or Rule 56a

Where the applicant has supplied missing drawings or parts of the Rule 56
description after the accordance of a filing date (see A-II, 5) under Rule 56 Rule 56a
and the Receiving Section has determined that the missing drawings or
parts of the 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 applies to
correct application documents or parts filed after the accordance of a filing
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 a
decision of a board of appeal.

Normally this review will have been initiated at the search stage (see
B-III, 3.3.1 and B-XI, 2.1). However, it can still be started 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 conclude, contrary to the original finding of

the Receiving Section, that the missing elements are not "completely
contained" in the priority document, 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. In addition, it will warn that non-compliance with the requirements
of Rule 56(3) or Rule 56a(4) as applicable can result in redating, which in
turn can lead to loss of a priority right if the redating causes the filing date
to be more than 12 months after the claimed priority date.

Note that if the review was initiated at the search stage and an objection
under Rule 56 or Rule 56a was raised in the extended European search
report (EESR), the applicant may already have submitted a response to the
search opinion (required by Rule 70a or filed voluntarily in response to a
search opinion not requiring a response). The examining division will treat
this response in the same manner 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 continue
as normal with the original filing date, but without the missing parts or the
correct application documents or parts (see also A-II, 5.5 and F-III, 10).

If the applicant succeeds in arguing in their reply that the "completely

contained" requirement is satisfied, the examination will continue as normal
Part C – Chapter III-2 Guidelines for Examination in the EPO March 2024

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 the applicant maintains the missing parts or the subsequently filed correct
application documents or parts and their arguments do not succeed, the
examining division will issue a further communication under Art. 94(3)
informing them of the application's impending redating to the date on which
the EPO received the missing parts or the correct application documents or
parts. 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 the applicant does not reply to the above communication in due time, the
application is deemed withdrawn (Art. 94(4)).

If the applicant opts to withdraw the subsequently filed missing parts or the
correct application documents or parts, the redating of the application will
be deemed not made (see also B-XI, 2.1). The examiner will continue the
examination procedure as normal with the original filing date but without
missing parts and/or the correct application documents or parts (see also
F-III, 10).

Rule 111 If the applicant does 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
them of the new filing date, the reasons for the redating and (where
appropriate) the detrimental effect of the redating on the claimed priority
right. This decision will allow a separate appeal according to Art. 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 filing
date. Note that the EESR may contain documents that could become
relevant as a result of the redating.

If the applicant files an appeal in due time, the file passes to a board of
appeal to review the decision on the filing date's accordance. The
examining division will not continue substantive examination while the case
is pending before the board. Once the board has issued a decision, the file
will be returned to the examining division, which will be bound on this point
by the board's decision (Art. 111(2)). It will then resume examination on the
basis of the filing date fixed by the board.

1.1.2 Claims filed after accordance of a date of filing

Art. 123(2) If the claims were not present at the application's filing date, the examining
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 the applicant
(see H-III, 2.1) and the application is one of those mentioned in H-III, 2.1.4,
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-3

the examining division may send the applicant a communication under

Rule 137(4) requesting 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 the
description, but also missing claims, may have been filed at the receiving
Office for international applications under Rules 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)
(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 started during
substantive examination. The procedure is the same as for European
patent applications (see C-III, 1.1.1).

1.3 Euro-PCT applications – erroneous elements filed under

Rule 20.5bis PCT
Rule 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.

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 2020, OJ EPO 2020, A81).
The EPO adopts the following practice in respect of those applications:
corrections accepted by the receiving Office during the international 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 the initial 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 in
proceedings 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
Part C – Chapter III-4 Guidelines for Examination in the EPO March 2024

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 date
to the date initially accorded by the receiving Office and confirming
that 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 the
time 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 that
the 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 issuing of the

communication under Rules 20.8(c) PCT and 82ter.1(c) and (d) PCT and
the setting of a time limit of two months for reply, may make use of the
abridged procedure. According to it, they may, within the 31-month time
limit under Rule 159(1), at the time of validly requesting early processing 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.

(b) confirm that they wish to pursue the application with the filing date
corresponding to the date of receipt of the correct application
documents and with those correct application documents. In that
case, 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 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.
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-5

As a consequence of the procedure described above, it may happen that

the application documents as originally filed differ from those forming the
basis for the search in the international phase. If the EPO acted as ISA, the
examiner has to check carefully whether the invention forming the basis for
the European phase was covered by a search in the international phase. If
this is not the case, an invitation under Rule 164(2) will be issued
(see C-III, 3.1).

If the subject-matter forming the basis for European phase processing is

covered by the international search report, then examination continues as
usual but taking into account that the potential change of the filing date
might 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 the applicant of their own volition,
must satisfy the following conditions:

(i) it must not add subject-matter to the content of the application as Art. 123(2)
filed (see H-IV, 2.3 and H-V, 1 to H-V, 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).

If the amendments do not meet these conditions, the applicant should be

told that the amended application cannot be allowed. Apart from the
amendments referred to in C-III, 2.1 and 2.2, which are admissible under
Rule 137(2), the applicant may correct obvious errors at any time
(see H-VI, 2.2.1).

If the applicant makes amendments but does not identify them and/or
indicate their basis in the application as filed (see H-III, 2.1) and the
application is one of those mentioned in H-III, 2.1.4, the examining division
may send the applicant a communication under Rule 137(4) requesting this
information (see H-III, 2.1.1).

If the applicant accepts a search division's suggestion regarding an

acceptable form of amendment of the claims to overcome the objections
raised (see B-XI, 3.8), they are requested to adapt the description to the
claims on file and delete or amend any statements or expressions throwing
doubt on the scope of protection (see F-IV, 4.3).

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 their Rule 137(2) and (3)
own volition (the applicant is required to respond to the search opinion in
the EESR but does not necessarily have to respond by filing amendments;
they can also respond by filing observations on the search opinion –
Part C – Chapter III-6 Guidelines for Examination in the EPO March 2024

see B-XI, 8). This means that the applicant is not restricted to amendments
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
Rule 137(2) For Euro-PCT applications where the EPO acted as ISA or SISA, any
amendments filed in response to the communication under Rule 161(1)
(see E-IX, 3.3.4) are made by the applicant of their own volition. This
means 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. to remedy some lack of clarity that
the applicant has noted in the original documents. In order to avoid delays,
care should be taken to comply 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.

3. Unity of invention

3.1 Searches under Rule 164(2)

Rule 164(2) For Euro-PCT applications where the EPO acted as ISA or as SISA, the
examining 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 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 a

non-searched invention in situations other than where the application
documents that are to serve as the basis for examination do not meet the
requirement 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 even
claimed in the application documents that served as the basis for the
procedure in the international phase and has been imported from the
description (see F-V, 7.1(iv)). In such a case, an invitation to pay search
fees under Rule 164(2) for any non-searched invention is to be issued by
the examining division, irrespective of whether lack of unity persists in the
claims. The invitation under Rule 164(2) must state that – and why – this is
a new invention not searched in the international phase. If there are other
inventions present in the claims that were also not searched (but were
claimed in the PCT phase), the applicant must also be invited by way of the
same invitation to pay further search fees in respect of those inventions. In
assessing whether or not subject-matter present in amended claims
constitutes a previously unclaimed invention imported from the description
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-7

(for which an invitation under Rule 164(2) is to be sent), the principles laid
down for assessing compliance with Rule 137(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 not searched in the
(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) is to be issued
by the examining division.

The invitation under Rule 164(2) must be sent before any communication
under Art. 94(3). For Rule 164(2) to apply, the claims must be sufficiently
clear to allow the identification of a non-searched invention triggering the
procedure under Rule 164(2). If the claims are so unclear that a
non-searched invention cannot be identified, the first action must be to
issue a communication under Art. 94(3) setting out the objections under
Art. 84. Should it turn out later in the procedure that amended claims are
indeed directed to a non-searched invention, 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 of further 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 cases under
Rule 62a or Rule 63 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 fees are paid in due time, the results of the searches are
communicated 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 to
Rule 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 and
the written opinion issued for the claims on file upon expiry of the period
under Rule 161 for which the invitation to pay was sent and the requested
fees 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 file amendments of their
own volition after receiving the results of the search under Rule 164(2)
annexed to the communication under 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
subject-matter that was not searched either because a search fee under
Rule 164(2) was not paid (see H-II, 6) or for a different reason (see
Part C – Chapter III-8 Guidelines for Examination in the EPO March 2024

H-IV, 4). Before the patent is granted, this subject-matter should 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 that
have been amended but still lack unity, it is sufficient to argue in detail why
lack 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 Rule 164(2)(b). This means that the
applicant's right to make amendments of their own volition ends upon
expiry of that time limit.

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 to
obtain 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-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-unity
no (further) invitation under Rule 164(2) is sent. The same applies if, during
the examination procedure, claims are added or existing claims amended
so that they relate to non-searched inventions.

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 or searches led to a further objection as to a

lack of unity a posteriori (a cascading lack of unity), resulting in one
of the inventions identified in the invitation under Art. 17(3)(a) PCT
and Rule 40 PCT being further subdivided and resulting in
sub-inventions not originally identified in that invitation
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-9

(v) The EPO did not search all such sub-inventions.

In the above case, the EPO will invite the applicant to pay search fees for
any such unsearched sub-inventions in the claims that are to form the basis
for examination on expiry of the six-month period under Rule 161(1), in
accordance with Rule 164(2).

Where the EPO acted as SISA in accordance with Rule 45bis.9 PCT, it
may make a finding of a lack of unity of the international application
according to Rule 45bis.6(a) PCT. However, in the procedure before the
SISA, the applicant cannot pay additional supplementary international
search fees, and the supplementary international search report will be
directed only to the invention or unitary group of inventions first mentioned
in the claims (Rule 45bis.6(a) PCT). Where such an application contains
unsearched inventions in the claims that are to form the basis for
examination on expiry of the six-month period under Rule 161(1), a
communication under Rule 164(2) is issued allowing the applicant to have
these inventions searched upon payment of search fees and to pursue one
of them 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
communication under Art. 94(3) to which the search results under
Rule 164(2) are annexed (H-II, 2.3).

3.2 Relation to unity in search; limitation to searched invention

An objection of lack of unity of invention, if applicable, should already have Art. 82
been raised at the search stage. If such an objection was not raised, but
the examining division nevertheless considers that the requirements of
Art. 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).

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 or
group of inventions. In response to such an invitation, applicants must
clearly indicate which searched invention they wish 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 No additional search fees paid

If applicants have not availed themselves of the opportunity to have the Rule 64
search results on the other inventions included in the search report Rule 164(1) and (2)
because they have paid no additional search fees in response to the
invitation under Rule 64(1) (see B-VII, 1.2) or 164(1) (see B-VII, 2.3), they
will be assumed to have elected to proceed with the application on the
basis of the searched invention (see G 2/92). In cases where a
communication under Rule 164(2) has been sent (see C-III, 3.1),
Rule 164(2)(c) requires the applicant to delete all unsearched inventions
from the claims.
Part C – Chapter III-10 Guidelines for Examination in the EPO March 2024

Final responsibility for establishing whether the application meets the

requirement of unity of invention ultimately rests with the examining division
(see T 631/97). When considering the issue of unity, the examining division
will consider both the reasons given in the search opinion and the
applicant's response (see B-XI, 8 for details of when a response to the
search opinion is required); for Euro-PCT applications 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 prepared by the EPO and the applicant's
response as required by Rule 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 than that 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 of the subject-matter that is judged to be unitary with
an invention that was searched (see B-II, 4.2(iii) and C-IV, 7.3) and the
examination is carried out on those claims that comply with the requirement
of unity of invention. The applicant may file a divisional application for any
excised subject-matter (see C-III, 3.3).

3.2.2 Additional search fees paid

If the applicant has taken the opportunity to have other inventions
searched, they may decide that the application is to proceed on the basis of
one of these inventions and to delete the others. If the applicant has not yet
done so and if the examining division maintains the objection of lack of
unity (see C-III, 3.2), it should invite the applicant at the beginning of
substantive examination to state which invention the prosecution of the
application should be based on and to limit the application accordingly by
excising those parts belonging to the other inventions. For the latter
inventions, the applicant may file divisional applications (see C-III, 3.3).

3.2.3 Invitation to pay additional search fees combined with

invitation 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 of
Rule 164(2), after the reply to the first communication, the examiner will
check whether the claims on which substantive examination is based meet
the requirement of unity of invention (Art. 82) and cover only subject-matter
that 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
the objection raised by the examiner, the applicant fails to respond
adequately (either by amending the claims or by submitting convincing
arguments) and the 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
and 6.4), provided that the right to be heard, which includes the right to oral
proceedings if so requested (Art. 116(1)), has been respected.
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-11

If the original set of claims has been amended before entering the
examination phase or, in the case of Rule 164(2), in reply to the first
communication 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 the
applicant 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 claims concerned (see H-IV, 4.1.2). In cases under Rule 164(2),
if the first communication already included the relevant
objections/invitations and the right to be heard has been respected, the
application may be refused.

If, in reply to the invitation under Rule 62a(2) or 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).

3.3 Excision of other inventions; filing divisional applications

The applicant may file divisional applications for inventions deleted in Rule 36
accordance with C-III, 3.2.1 or 3.2.2.

A divisional application may only be filed if the application being divided is

still pending (see A-IV, 1.1.1).

3.4 Refund of additional search fees

If the applicant has paid further search fees in response to an invitation Rule 64(2)
under Rule 64(1), 164(1) or (2) and has requested a refund, the examining Rule 164(5)
division is required to review the validity of the finding of lack of unity (see
also F-V, 4 to F-V, 7).

A refund request should be handled promptly. If the examiner concludes

that it should not be granted, the applicant is informed of the examining
division's preliminary opinion in a communication under Art. 94(3). This
preliminary opinion takes into account the arguments put forward by the
applicant in their reply to the search opinion. The applicant is informed that
they may request an interlocutory decision on the refund, allowing a
separate appeal under Art. 106(2). If there is a pending request for oral
proceedings, the applicant is also invited in the communication to clarify
whether this request also applies to the issuing of the interlocutory decision
on the request for refund. If the applicant confirms this to be the case, oral
proceedings will have to be held before a negative decision on the request
for refund can be issued.

An interlocutory decision should be issued at the earliest opportunity,

subject to the requirements of Art. 113(1), and not left until the final
decision on the application. Of course, if the stage in the procedure when
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 former case, the interlocutory decision can be
issued with the Rule 71(3) communication; in the latter case, the decision
on the refund can be included in the decision refusing the application. The
Part C – Chapter III-12 Guidelines for Examination in the EPO March 2024

examiner ensures that the interlocutory decision issued on this matter

clearly states that a separate appeal under Art. 106(2) is allowed.

The same procedure 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 the
applicant 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 and
requests its refund under Rule 164(5), the examining division may deal
directly with this issue in the communication under Art. 94(3) and
Rule 71(1) or (2) that accompanies the search results under Rule 164(2).
Such an immediate review of the applicant's request is not possible in
cases under Rules 64(1) and 164(1) until the examining division assumes
responsibility for the application.

The review under Rule 64(2) or 164(5) is restricted to a reconsideration of

the validity of the original finding under the circumstances existing at the
time the Rule 64(1), 164(1) or (2) invitation was sent, taking into account
only the prior art that was available at that time. For more details on the
assessment 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 the
procedure. The applicant may contest the payment of additional
international search fees to the EPO acting as ISA by paying these under
protest according to Rule 40.2(c) PCT. However, this must be done in the
international 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 Changing from one searched invention to another

Once the applicant has limited the claims to one searched invention, the
examining division will refuse to admit amendments involving switching to a
different searched invention (for further information, see H-II, 6.1).

4. First communication
Rule 71(1) and (2) If deficiencies persist in the application even after the applicant has filed
Rule 132 their response to the search opinion, the examining division will issue a
Art. 94(3) communication under Art. 94(3) and Rule 71(1), (2) in subsequent
examination proceedings and will consider the applicant's reply before
issuing a negative decision or a summons to oral proceedings. For the
exceptional case where a summons to oral proceedings is issued as the
first action in examination proceedings, see C-III, 5.

When drawing up such a communication (or exceptionally the summons to

oral proceedings), the examining division will take into account the
documents (if any) cited in the search report and any further documents
found as a result of the search referred to in C-IV, 7.1 as well as any
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-13

amendments proposed or comments made by the applicant in reply to the

search opinion (see B-XI, 8) or the Rule 161(1) communication
(see E-IX, 3). The examiner should identify in this communication any EPC
requirements that, in their opinion, the application does not satisfy. The
communication will give reasons for any objections raised and invite the
applicant within a specified period to file observations or submit
amendments. The filed application documents are not sent back to the
applicant although a copy of the description and claims may be sent in
appropriate cases (see H-III, 2). The examiner will re-examine the
application once the applicant has replied.

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
objections to the application (see B-XI, 3.4 for exceptional cases where not
all objections are raised). A summons will not be issued as the first office
action in examination proceedings in such a case.

4.1 Reasoning

4.1.1 Reasoned objections

As with the search opinion, for each objection, the communication should Rule 71(2)
indicate the part of the application that is deficient and the EPC requirement
not met, either by referring to specific articles or rules or by other clear
indication; it should also give the reason for any objection where not
immediately apparent (for more details see B-XI, 3.2).

The burden of proof and the onus to present the relevant facts about
patentability requirements lie initially with the examining division, which
must provide evidence and facts to support its objection (see T 655/13).
Accordingly, prior-art documents forming the basis for novelty 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, the
examiner should make such statements in particular where the claims for
which a positive conclusion is reached have not yet been commented on.

Concerning making suggestions on how to overcome objections,

see B-XI, 3.8. When suggesting an acceptable form of amendment to the
claims, the examining division will also invite the applicant to adapt the
description 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 file Rule 71(1) and (2)
observations, correct any deficiencies and, if necessary, submit Art. 94(3) and (4)
amendments to the description, claims and drawings. It must also state the
period within which the applicant must reply. Failure to reply in due time will
Part C – Chapter III-14 Guidelines for Examination in the EPO March 2024

cause the application to be deemed withdrawn (see C-VI, 1 and E-VIII, 1).
Further processing is available for 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 decide to issue a
summons to oral proceedings as the first action in examination. It may 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 that
of the claims that served as a basis for the search

– one or more of the objections raised in the search opinion and 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 no

prospect 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 that were examined for the
refused or withdrawn parent application or that served as a basis for
the search of the divisional application

– one or more of the objections that are crucial to the outcome of the
examination procedure and that were raised in either the search
opinion established for the divisional application, the parent's refusal
or 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 a
communication under Art. 94(3) (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 the
withdrawn parent application. All objections to the application must be
covered and substantiated by giving the essential legal and factual
reasons. In addition, it must include the reasons for the decision to directly
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.
March 2024 Guidelines for Examination in the EPO Part C – Chapter III-15

In accordance with the principles applicable to the summons to oral

proceedings, applicants may avail themselves of the possibility to submit
any arguments and amendments by expiry of the deadline set under
Rule 116(1). 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 oral
proceedings 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).

6. Requesting information on prior art (not confined to priority)

The EPO may invite the applicant to submit, within a period of two months, Art. 124
information on prior art taken into consideration in national or regional Rule 141(3)
patent proceedings and concerning an invention to which the European
patent application relates. This in particular encompasses search results
with respect to applications for patents or utility models whose priority is not
being claimed. The EPO may by the same means request the copy of the
search results on the priority or priorities referred to in Rule 141(1), where
those 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 by the applicant to comply with this invitation
results in the application being deemed withdrawn under Art. 124(2).
Further processing is available for this loss of rights (see E-VIII, 2).

Given the considerable work such invitations can entail 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 the
same time as an Art. 94(3) communication. If sent at the same time, 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 the search report and

late priority claim
As explained in A-III, 6.5.1 and A-III, 6.5.2, the applicant has the right to
correct or introduce a priority claim within 16 months of the earliest priority
(with a minimum of four months from the European filing date in the case of
corrections). If this happens before finalisation of the search report, the
examiner may review the draft search report to take into account the
change in the application's effective date. 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 examiner at the substantive examination stage should reevaluate the
relevance of the documents cited in the search report. Where it appears
that the prior art available to the examiner is unlikely to reflect the state of
Part C – Chapter III-16 Guidelines for Examination in the EPO March 2024

the art in a sufficiently complete way for the purpose of a patentability

assessment, the examiner should then conduct an additional search (see
C-IV, 7.3). No further search report will be issued in these cases: the
applicant will be informed of any newly found documents in a
communication under Art. 94(3) (with copies of such documents annexed to
that communication).
March 2024 Guidelines for Examination in the EPO Part C – Chapter IV-1

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 the
application, taking into account observations or amendments made by the
applicant.

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 to do
so may result in the examining division sending a communication under
Rule 137(4). For more details of the procedure, see H-III, 2.1.1 and 2.1.2.

In the case of one or more auxiliary requests directed to alternative texts for
grant of a patent, every such request qualifies as a text submitted or agreed
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). For the types of application mentioned in H-III, 2.1.4, Rule 137(4)
must also be complied with in respect of auxiliary requests, which may also
be subject to a communication under 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)

– first communication (see B-XI, 1.1 and 8)

was comprehensive and clear (see B-XI, 3 and C-III, 4 and 4.1), the
examiner will not normally need to completely re-read the application but
rather should concentrate on the amendments themselves, the related
passages and the deficiencies previously noted.
Part C – Chapter IV-2 Guidelines for Examination in the EPO March 2024

3. Further action upon examination of replies

Art. 94(3) 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 should conduct 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 to qualify as a reply within the meaning of
Art. 94(4). For the application not to be deemed withdrawn, it is enough for
the applicant to comment on, even incompletely, or to file amendments in
reply to at least one of the objections raised in the Art. 94(3)
communication. In contrast, purely formal requests, such as for extension
of the time limit under Art. 94(3) or 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 (see C-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 applicant's 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 the
applicant has been given the right to be heard (Art. 113(1)), i.e. the decision
is based solely on grounds they have had an opportunity to comment on,
the examiner will consider recommending to the other members of the
examining division that the application be refused (see T 201/98). However,
where there is a reasonable prospect that an additional invitation to
overcome the objections could lead to a grant, the examiner will send a
further written communication or contact the applicant 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 applicant's reply shows that they have not dealt with
all 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 other
members 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 in
dispute, e.g. the applicant seems to have misunderstood the examiner's
arguments or the applicant's own arguments are unclear, then a
consultation may be useful. A consultation may also expedite the procedure
if the matters to be resolved are minor. Consultations do not constitute oral
proceedings (see E-III) and are more fully considered in C-VII, 2.
March 2024 Guidelines for Examination in the EPO Part C – Chapter IV-3

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 or Rule 53(3)
more priority applications was sent earlier in examination proceedings
(either separately or at the same time as an Art. 94(3) communication – see
A-III, 6.8.2), a subsequent communication (under Art. 94(3) or Rule 71(3) or
a summons to oral proceedings) cannot be sent until the translation is filed
or the period for further processing has expired (see also C-VIII, 5.1). This
also applies in cases where the Rule 53(3) invitation was sent at the same
time as a previous Art. 94(3) communication and the applicant has already
replied to that communication (e.g. by filing amendments) but not yet
provided the translation and the original time limit or the period for further
processing is still running.

4. Later stages of examination

The considerations explained in C-IV, 3 also apply to later stages of
examination given that, having regard to the principle stated in C-IV, 3, the
greater the number of actions performed, the more likely it is that the most
appropriate course of action is to refer the application to the other members
of the examining division for a decision. Where this decision is to refuse the
application, particular care should be taken to ensure that the decision does
not offend against Art. 113(1).

5. Examination of amendments
Amendments must satisfy the conditions listed in C-III, 2. When they were
effected must also be established.

6. Admissibility of amendments made by the applicant

For matters relating to the admissibility of amendments made in Rule 137(2) and (3)
examination proceedings, see H-II, 2.

7. Search-related issues in examination

7.1 Search for conflicting European patent applications

The examiner should make a search for any additional conflicting European
patent applications falling within the area defined by Art. 54(3) unless this
was already covered by the search report.

This is because, in general, the search files will not be complete in respect
of such material at the time of the main search. 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 to cover all European patent applications
published up to eighteen months after the filing of the application under
consideration.

If the examiner is unable to complete this top-up search when preparing the
search opinion or the first communication under Art. 94(3), they should
ensure that it is completed before the application is reported to be in order
for the grant of a patent. In the rare cases where the application is found to
be in order before this search can be completed (e.g. due to a request for
accelerated prosecution of an application not claiming priority, "PACE", see
Part C – Chapter IV-4 Guidelines for Examination in the EPO March 2024

the notice from the EPO dated 30 November 2015, OJ EPO 2015, A93),
the grant of a patent should be postponed until the top-up search can be
completed.

If the top-up search is performed at the earliest 18 months from the filing
date of the application under examination, the priority situation needs to be
checked only if intermediate documents and/or conflicting applications are
retrieved.

The top-up search may exceptionally be performed at the earliest 18

months after the priority date on condition that the priority claim is valid for
the whole content of the patent application under examination.

In addition to retrieving Art. 54(3) documents not available at the time of the
original search, the top-up search takes into consideration potentially
relevant prior art cited by other patent offices on applications belonging to
the same patent family as the application under examination at the EPO
and therefore needs to be performed for any file at the start and end of
examination.

The examiner may retrieve relevant intermediate and/or conflicting Euro-

PCT applications for which it is not yet clear if they will become prior art
under Art. 54(3) alone or in conjunction with Rule 165 (see G-IV, 5.2). In
these cases, the examining division cannot issue an intention to grant
before it can be established if these documents are prior art under
Art. 54(3). The examiner will first check if the Euro-PCT application has
entered the European phase at 31 months after the earliest priority date of
the application. If not, it may still constitute conflicting prior art under
Art. 54(3) if the PCT applicant has paid the required filing fee under
Rule 159(1)(c) and has supplied the PCT application in any official EPO
language. The examiner will then verify if the application has become prior
art under Art. 54(3) in conjunction with Rule 165. Since August 2021, the
EPO publishes these cases in section I.2(2) of the European Patent Bulletin
under the heading "International applications considered as comprised in
the state of the art under Rule 165 and Art. 54(3) EPC".

For the refund of examination fees (see A-VI, 2.5), the launch of a top-up
search is triggered at the start of examination. This creates a marker that
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) to
include national applications and patents of all 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 appear prima facie relevant for the
application are communicated to the applicant.
March 2024 Guidelines for Examination in the EPO Part C – Chapter IV-5

7.3 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 the deficiencies rendering
a meaningful search impossible under Rule 63 have been
subsequently corrected by amendment complying with Rule 137(5)
(see H-IV, 4.1.1) or successfully refuted by the applicant

(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)

(iv) where a particular part of the application has not been searched
because of an objection of lack of unity of invention and the
arguments advanced by the applicant have convinced the examining
division that unity is given

(v) where the claims have been so amended that their scope is no
longer covered by the original search

(vi) where a search report under Rule 61 was issued containing no

prior-art documents because the technical features were considered
notorious (see B-VIII, 2.2.1) and the examining division does not
share this opinion

(vii) where no prior-art document was cited for features that were
considered part of the common general knowledge and the
examining division does not share this opinion or the common
general knowledge is challenged by the applicant (see G-VII, 2 and
3.1)

(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 in
technical fields not taken into account during the search

(ix) where the applicant has introduced a new priority claim after the filing
date (see C-III, 6).

If the application was filed under the PCT, the search report will be the Art. 153(6) and (7)
international search report issued under the PCT and will be accompanied
Part C – Chapter IV-6 Guidelines for Examination in the EPO March 2024

by a supplementary European search report unless the Administrative

Council decides that that is to be dispensed with (see E-IX, 3.2). Both of
these reports will have to be considered by the examiner when deciding
whether any additional search is 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 (see
PCT-EPO Guidelines, B-VIII, 1), an additional search may be necessary if
the deficiencies underlying the limitation of the search have been corrected
by amendment or successfully refuted by the applicant (see B-II, 4.2 (ii)).
Otherwise, the examining division will object to claims relating to subject-
matter not searched by the EPO acting as ISA, referring to the EPC
provision invoked for the limitation of the search, e.g. Art. 84. Rule 137(5),
second sentence, cannot be invoked in that context.

For searches under Rule 164(2), see C-III, 3.1.

7.4 Search at the examination stage

Although all search work (other than for Art. 54(3) material) should as a rule
be done at the search stage, in exceptional circumstances examiners are
not barred from looking for a relevant document whose existence they
know of or have reason to suspect, provided they can retrieve that
document in a short time.

7.5 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, should be sent to the applicant and identified in the electronic
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 a summons

New requests filed in reply to a summons to oral proceedings will normally
be 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 requests may be

allowed by the first member (see C-VII, 2), in particular if there is a
reasonable prospect that the consultation could lead to an agreed allowable
claim set.

The examining division strives to review newly filed requests in good time
before oral proceedings so the proceedings can be cancelled if necessary,
in particular where a newly filed main request is considered patentable.

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 2024 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 decides that a patent can be granted, it must Rule 71(3)
inform the applicant of the text it intends to use for the grant. This text may
include amendments and corrections that the examining division made on
its own initiative and can reasonably expect the applicant to accept. If in
doubt as to whether the applicant will agree to the proposed amendments,
the examining division should contact them by telephone or via an official
communication. The applicant's agreement to such amendments during a
consultation will usually be recorded in the communication under
Rule 71(3) (see C-VII, 2.4).

Examples of amendments not requiring consultation with the applicant:

(a) amendment of a statement of invention in the description to bring it

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 that clearly represents

the prior art closest to the invention (see F-II, 4.3)

(f) amendments that, despite changing the meaning or scope of an

independent claim, are very clearly necessary and so assumed
acceptable to the applicant (see for example G-VI, 6.1.2, G-VI, 6.1.3
and G-VI, 6.1.4)

(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 that the
applicant has not deleted despite having incorporated their features
into other claims).

Examples of amendments that may not be proposed without consulting the

applicant:

(i) amendments that significantly change the meaning or scope of a

claim when there are several different ways to amend it and the
examiner cannot predict which amendment the applicant will agree to
Part C – Chapter V-2 Guidelines for Examination in the EPO March 2024

(ii) deletion of entire claims, with the exception of so-called "omnibus

claims" (i.e. claims reading "An apparatus substantially as described
herein", or the like)

(iii) combining of claims to overcome a novelty or inventive step

objection.

The above list is designed to avoid changes likely to be rejected by the

applicant and thus to help avoid delays in the conclusion of examination
proceedings. For the standard marks used by the division to indicate
amendments and corrections using the in-house electronic tool, see
C-V, Annex.

The text is communicated to the applicant via a Rule 71(3) communication,

which includes an invitation to pay the fee for grant and publishing
(see C-V, 1.2) and to file a translation of the claims in the two official EPO
languages other than the language of the proceedings (see C-V, 1.3) within
a non-extendable period of four months. If the applicant pays the fees and
files the translations in time (and files or requests no corrections or
amendments to the text proposed 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 is
allowable, the communication pursuant to Rule 71(3) is to be issued on the
basis of the (first) allowable request unless there is a higher ranking
request for oral proceedings (see E-X, 2.2). The communication pursuant to
Rule 71(3) must briefly indicate the essential reasons for the non-
allowability of the subject-matter of the higher-ranking requests or their
inadmissibility (see also H-III, 3). The examining division should provide
sufficient information about the objections raised to enable the applicant to
comment on them.

Handwritten amendments by the applicant to the description, claims and

abstract, 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) (see
OJ EPO 2013, 603, and A-III, 3.2). For the procedure to follow in oral
proceedings, see E-III, 8.7.

1.2 Grant and publishing fee

The communication under Rule 71(3) also invites the applicant to pay the
fee for grant and publishing within a non-extendable four-month period. For
European patent applications filed before 1 April 2009 and international
applications entering the regional phase before that date, the fee for grant
and printing may include an element depending on the number of pages,
but for applications filed or entering the regional phase on or after that date,
this additional element is payable as part of the filing fee (see A-III, 13.2).
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-3

1.3 Translations of the claims

The communication under Rule 71(3) also invites the applicant to file a
translation of the claims in the two official EPO languages other than the
language of the proceedings within a 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). 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 grant Rule 71(4)
contains more than fifteen claims, the examining division requests the Rule 45(1)
applicant to pay, within the period under Rule 71(3), claims fees in respect Rule 162(1) and (2)
of each claim in excess of that number unless they have already done so
under Rule 45(1) or Rule 162(1) and (2) (see A-III, 9). Where there is more
than one set of claims, fees are incurred under Rule 45(1), Rule 162(1) and
(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 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, the number of claims in the request determines the claims fees
due in response to the communication. However, if the applicant replies by
requesting a grant based on a higher-ranking request, no claims fees need
to be paid in response to the communication (see C-V, 4.1).

1.5 Other information in the communication under Rule 71(3)

An annex to the Rule 71(3) communication indicates the contracting states
validly designated as well as the extension and validation states for which
the corresponding fees have been paid, the title of the invention in the three
official languages, the international patent classification, the application's
filing date, any priorities claimed, the designated inventors and the
applicant's registered name.

The Rule 71(3) communication also states that, where a renewal fee falls
due between the communication's notification and the proposed date of the
mention of the grant's publication, 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 its reasons for this unless they are
clear from the applicant's reply, from a communication or from the minutes
of a consultation.
Part C – Chapter V-4 Guidelines for Examination in the EPO March 2024

During the grant procedure an applicant may submit further technical

information, for example:

– comparative tests

– further examples

– statements concerning the effects and/or advantages of the

invention.

Technical information extending beyond the content of the application as

filed, however, cannot be included in the application by way of amendment
(Art. 123(2), H-IV and H-V). Such information is added to the file, which is
open to inspection (Art. 128(4)), and its existence is indicated on the cover
page of the patent specification.

All further documents that were neither cited in the application as filed nor
mentioned in the search report but that were 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 to
documents cited to show, for instance, a technical prejudice.

2. Approval of the proposed text – grant of a patent

Rule 71(5) If an applicant pays the fee for grant and publishing along with any claims
Art. 97(1) fees due under Rule 71(4) and files the translation of the claims within the
specified period (and files or requests 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 the
Rule 71(3) communication by requesting that a grant be based on a higher-
ranking request. This means that, in the absence of any indication to the
contrary, the above acts imply approval of the auxiliary request text upon
which the Rule 71(3) communication was based as well as the
abandonment of all higher-ranking requests.

The above also applies where the Rule 71(3) communication included the
examining division's proposals for amendments or corrections to the text
intended for grant (see C-V, 1.1). Consequently, provided the applicant
does not reject these proposals in their reply, completion of the above acts
constitutes approval of the text amended or corrected by the examining
division.

Rule 71a(1) 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(4) If a renewal fee falls due after the Rule 71(3) communication's notification
Art. 86(1) but before the next possible date for publication of the mention of the
European patent's grant, the decision to grant is not issued and the mention
of the grant is not published until the renewal fee has been paid. The
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-5

applicant is informed accordingly. If the renewal fee or any additional fee is

not paid in time, the application is deemed withdrawn (see A-X, 5.2.4).

In rare cases where examination was accelerated to such an extent that the Rule 71a(3)
Rule 71(3) communication is issued before the designation fee falls due,
the decision to grant will not be issued and the mention of the grant will not
be published until the designation fee has been paid. The applicant is
informed accordingly. For European patent applications filed before
1 April 2009 or international applications entering the regional phase before
that date, 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).

The decision to grant does not take effect until the date on which the grant Art. 97(3)
is mentioned in the European Patent Bulletin.

2.1 Request for unitary effect

Requests for unitary effect must be filed with the EPO no later than one
month after the mention of the European patent's grant is published in the
European Patent Bulletin (Rule 6 of the Rules relating to Unitary Patent
Protection). To offer flexibility, users can file requests after the decision to
grant the European patent is issued (EPO Form 2006A), see
Supplementary publication 3, OJ EPO 2023. Requests for unitary effect
filed early will not be processed by the EPO before the date on which the
mention of the European patent's grant is published in the European Patent
Bulletin and will appear in the Register for unitary patent protection only
from that date.

3. No reply in time – application deemed withdrawn

If the applicant fails to pay the fee for grant and publishing or the claims Rule 71(7)
fees or to file the translation within the period under Rule 71(3), the
application is deemed withdrawn unless, within the same period, the
applicant files or requests corrections or amendments to the text proposed
for grant in the Rule 71(3) communication (see C-V, 4.1).

If the applicant fails to meet the time limit under Rule 71(3), further Art. 121
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) 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

(c) filing of the translations of the claims; or

(ii) one or more of the following acts:

(a) filing amendments and/or corrections to the application

documents
Part C – Chapter V-6 Guidelines for Examination in the EPO March 2024

(b) rejecting amendments proposed by the examining division in

the Rule 71(3) communication

(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
Rule 71(6) If the applicant, within the period under Rule 71(3), requests reasoned
amendments or corrections to the communicated text (see C-V, 4.3 for the
reasoning required), the examining division will issue a new Rule 71(3)
communication if it gives its consent (i.e. if it finds the amendments
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 the

examining 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 a
higher-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
"amendments" and "corrections" refer only to amendments or corrections 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, the applicant will not be required to pay
the fee for grant and publishing or any claims fees in reply to the first
Rule 71(3) communication, nor will they be required to file any translations
of the claims within the relevant period. This applies irrespective of whether
the examining division subsequently finds these amendments or
corrections to be admissible and allowable and whether the amendments 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). And it applies if the Rule 71(3) communication was based
on an auxiliary request and the applicant replies by requesting that a grant
be based on a higher-ranking request.

4.2 Crediting of fees paid voluntarily

Although the applicant is not required to pay fees in response to the
Rule 71(3) communication when requesting amendments or corrections in
their reply (see C-V, 4.1), they can do so voluntarily. In that case, 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).
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-7

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 the
amount voluntarily paid in response to the first Rule 71(3) communication, a
refund 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

withdrawn or refused, a refund of the voluntarily paid fee for grant and
publishing 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, they
will also be refunded under the same conditions.

4.3 Amendments or corrections should be reasoned

The reasoning accompanying amendments or corrections filed in response
to the Rule 71(3) communication should indicate respectively:

– why the applicant considers that the amended application documents

comply with the EPC, in particular the patentability requirements,
Art. 123(2) and Art. 84

– why the applicant considers that the errors and their proposed
corrections are evident according to Rule 139.

If, within the period under Rule 71(3), the applicant files amendments or
corrections that are not reasoned, no payment of the fee for grant and
publishing or claims fees is necessary, nor is the filing of translations
(see C-V, 4.1). However, the absence of any reasoning means that such
amendments or corrections are more likely to result in a resumption of the
examination procedure (see C-V, 4.7).

4.4 Admissibility of amendments

The criteria for assessing the admissibility of amendments are dealt with in Rule 137(3)
detail in H-II, 2.5 and subsections.

By way of exception, in cases where the Rule 71(3) communication was

also the first communication in examination proceedings, amendments filed
in response 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 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 the need to adapt
the description. To avoid potential delays in cases where adaptation is
necessary, the applicant should 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 adapt the
description by itself and propose these amendments in the second
Part C – Chapter V-8 Guidelines for Examination in the EPO March 2024

Rule 71(3) communication (see C-V, 4.6.3). Alternatively, it may resume

examination (see C-V, 4.7) and send the applicant a communication under
Art. 94(3) requesting the adapted description before issuing a second
Rule 71(3) communication (see C-V, 4.7.2).

4.6 Amendments/corrections admitted and allowable – second

Rule 71(3) communication sent
Rule 71(6) 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 on them.

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 the
first Rule 71(3) communication and the examining division overturns its
previous opinion, finding that the amendments proposed earlier were not
necessary, possibly as a consequence of arguments or evidence provided
by the applicant in their reply to the first Rule 71(3) communication (in the
absence of such convincing arguments 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 and
subsections), the first communication under Rule 71(3) would have been
accompanied by an indication of why the examining division did not
consider the higher-ranking requests admissible or allowable
(see C-V, 1.1). If the applicant replies to this first Rule 71(3) communication
indicating their wish to base a grant on one of those higher-ranking
requests (see C-V, 1.1), that reply will normally lead to examination being
resumed (see C-V, 4.7 and 4.7.1.1). The examining division may reverse its
opinion, for example due to convincing arguments or evidence filed by the
applicant with their reply to the first Rule 71(3) communication. If the
applicant is successful in this regard, the examining division will send a
second communication under Rule 71(3) based on the higher-ranking
request.

4.6.3 Examining division proposes amendments in second

Rule 71(3) communication
As with the first Rule 71(3) communication, the examining division may
propose amendments to the applicant's latest request forming the basis for
the second Rule 71(3) communication (this request includes amendments
or corrections filed in response to the first Rule 71(3) communication). The
types of amendment that 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, in the second Rule 71(3) communication,
the examining division cannot repropose amendments already rejected by
the applicant. Where the examining division considers that such an
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-9

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

resumed
The examining division may resume the examination proceedings at any Rule 71a(2)
time up to the decision to grant the European patent.

4.7.1 Communications/oral proceedings/refusal after resumption

If the examining division finds the amendments submitted by the applicant Art. 94(3)
in reply to the Rule 71(3) communication either inadmissible or not Rule 71(1) and (2)
allowable, it will resume the examination proceedings.

The next action may be a communication under Art. 94(3) or a consultation

with the applicant (see C-VII, 2). The examining division may also issue a
summons to oral proceedings or, if the necessary requirements are met,
refuse the application directly.

The application may be refused directly if the following criteria are satisfied: Art. 97(2)

(a) the grounds leading to the finding that the requests filed in response
to the Rule 71(3) communication are inadmissible or not allowable
have already been formally dealt with in examination proceedings
(Art. 113(1)), for example in a communication under Art. 94(3) and
Rule 71(1) and Rule 71(2) (see C-III, 4, E-X, 1.1); and

(b) the applicant's right to oral proceedings on request has been

respected (Art. 116(1)).

If one of the following situations applies, the examining division will have to Art. 116(1)
arrange for the holding of 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

(ii) oral proceedings have been held, but:

– the subject of the proceedings has changed such that a right

to subsequent oral proceedings arises under Art. 116(1)
(e.g. as a result of the amendments filed in response to the
Rule 71(3) communication) and

– the applicant has requested subsequent oral proceedings.

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, especially
reasons for the decision 4.4).

4.7.1.1 Higher-ranking request not admissible and/or not allowable

If the applicant replies to the Rule 71(3) communication by requesting that
a grant be based on a higher-ranking request but the examining division is
Part C – Chapter V-10 Guidelines for Examination in the EPO March 2024

not convinced by the arguments and evidence filed with their reply, the
examining division resumes examination following the procedure 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 the Rule 71(3)
communication for the non-allowability of the subject-matter of the
higher-ranking requests or the inadmissibility of 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 their disagreement; 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 the
higher-ranking requests given in the Rule 71(3) communication 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 the applicant'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
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
Rule 71(6) If the resumption of examination described in C-V, 4.7.1 results in an
allowable and admissible text being filed or 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

Art. 97(2) If no agreement can be reached on a text after examination is resumed, the
application is refused (see C-V, 14). For details on conducting resumed
examination proceedings before issuing such a decision, see C-V, 4.7.1.

4.8 Fees to be paid within the second Rule 71(3) period

Where the applicant files amendments or corrections in response to the first
communication 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 the
amended/corrected text is allowable, see C-V, 4.6) or after examination is
resumed and an allowable text is agreed on (see C-V, 4.7.2).
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-11

4.8.1 Claims fees

For the text on which the second Rule 71(3) communication is based to be
deemed approved according to Rule 71(5), the applicant must pay any
claims fees due in response to the communication, 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 this
first 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 in
response 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

For the text on which the second Rule 71(3) communication is based to be
deemed approved according to Rule 71(5), the applicant must pay the fee
for grant and publishing in response to the communication, thus also
avoiding deemed withdrawal of the application under Rule 71(7).

For European patent applications filed before 1 April 2009 or international Art. 2(2), No 7.2
applications entering the European phase before that date, the fee for grant RFees
and publishing incorporates a fee for each page of the application in excess
of 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 second Rule 71(3)
communication, it is the number of pages on which the second Rule 71(3)
communication is based that is used to calculate the fee amount. Where
the applicant paid the fee voluntarily in response to the first Rule 71(3)
communication, the amount paid will be credited according to Rule 71a(5)
(see C-V, 4.2 and A-X, 11.1).

4.9 Reply explicitly disapproving with the proposed text without

indicating an alternative text
If the applicant replies to the communication under Rule 71(3) by simply
disapproving with the text proposed for grant, not indicating an alternative
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 the criteria in C-V, 4.7.1 are met. The basis for the
refusal in this case is the absence of an application text agreed to by
the applicant (Art. 113(2)).

(2) If amendments or corrections were proposed by the division in the

Rule 71(3) communication, the applicant's disagreement is
interpreted as a rejection of the proposal and the procedure
continues as described in C-V, 4.6.1.
Part C – Chapter V-12 Guidelines for Examination in the EPO March 2024

(3) If the communication under Rule 71(3) was based on an auxiliary

request, the applicant's disagreement is interpreted as a request to
base 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 higher-
ranking request the applicant wishes to pursue, the examining
division must request clarification of this in resumed examination
proceedings.

If the applicant first files only their disagreement with the text and then (still
within the Rule 71(3) period) a request for amendment or correction, this is
interpreted as a desire to proceed with the application as amended or
corrected. 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 the second Rule 71(3) period by
doing 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 the

second Rule 71(3) communication

(iii) 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 the
fee for grant and publishing or any claims fees, nor to file translations of the
claims within this second period under Rule 71(3). If the examining division
agrees 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 been
superseded), 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 second

or 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 the
examination proceedings, e.g. by summoning the applicant to oral
proceedings.

5. Further requests for amendment after approval

Rule 137(3) 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.
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-13

6. The examining division resumes examination after approval of the

text

6.1 When does the examining division resume examination after

approval?
Following the applicant's approval in response to the Rule 71(3) Rule 71a(2)
communication (see C-V, 2), the examining division may resume the
examination procedure at any time up to the moment the decision to grant
is handed over to the EPO's internal postal service for transmittal to the
applicant (see G 12/91). This will seldom occur, but may be necessary if:

– the applicant files further prior art necessitating further substantive

examination

– the examining division becomes aware of very relevant prior art

following observations by third parties under Art. 115

– the applicant files amendments or corrections (having already

approved the text)

– the examining division becomes aware in some other way of

circumstances that cause the subject-matter claimed to fail to comply
with the EPC.

The resumption of examination after approval is subject to the same

considerations as resumption due to amendments filed in the Rule 71(3)
period (see C-V, 4.7.1). The next action issued after resumption of
examination must however indicate that the proceedings have been
resumed as well as the substantive reasons that led to the resumption. In
particular, the applicant's right to comment (Art. 113(1)), the right to at least
one 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.

The criteria applied in assessing the admissibility of amendments or Rule 137(3)

corrections 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 issued if the resumed examination Rule 71(6)
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 the
resumption of examination are possible).

If the translations of the claims have already been filed (see C-V, 1.3) and
the fees paid (see C-V, 1.2 and 1.4) in reply to a previous Rule 71(3)
communication, 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 already
Part C – Chapter V-14 Guidelines for Examination in the EPO March 2024

on file are to be used). This also applies if a further Rule 71(3)

communication was sent.

6.3 Crediting of fees under Rule 71a(5)

Rule 71a(5) If, in response to an invitation under Rule 71(3), the applicant has already
paid the fee for grant and publishing or the claims fees, the amount paid will
be credited if a further such invitation is issued. For more details,
see A-X, 11.

7. Correction of errors in the decision to grant

Under certain circumstances, a decision to grant a European patent may be
corrected. For more details, see H-VI, 3.

8. Further processing
If the applicant fails to meet the time limit 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.

9. Refund of the fee for grant and publishing

Rule 71a(6) If the application is refused, withdrawn prior to notification of the decision
on the grant of a European patent or, at that time, deemed 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 European
patent's grant and is sent to the applicant when the technical preparations
for printing the patent specification have been completed.

Art. 98 As soon as possible after the mention of the grant is published in the
Rule 73 Bulletin, the EPO publishes the patent specification containing the
Art. 14(6) description, claims (in the three official languages) and any drawings. The
front page of the published specification shows, in particular, the
contracting states still designated at the time of grant (or whose designation
has been withdrawn after completion of the technical preparations for
printing). Regarding 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.

Mistakes in a European patent specification made during its production

have no effect on the content of the patent granted. For this, only the text
on which the decision to grant is based is decisive (see H-VI, 4). If
necessary, the EPO may arrange for correction to be made public as soon
as any mistake in a specification is discovered. This is done by means of a
note in the European Patent Bulletin and publication of a corrigendum, the
sole purpose being to bring the specification into line with the content of the
decision to grant (see Rule 143(2) and the decision of the President of the
EPO dated 15 July 2014, OJ EPO 2014, A86, Art. 1(2)).

11. Withdrawal before publication of the patent specification

Rule 73 The European patent specification is not published if the application is
withdrawn before termination of the technical preparations for publication.
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-15

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 Rule 74
issues the proprietor with a certificate attesting that the European patent
has been granted to the person named on the certificate. Where there is
more than one proprietor, each of them is issued with a certificate.
Proprietors may request that a certified copy of the certificate with the
specification attached be supplied to them upon payment of an
administrative fee. For further details see the decision of the President of
the EPO dated 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 Art. 129(a)
within nine months of publication of the mention of grant, the patent
proprietor is informed and an appropriate entry is published in the
European Patent Bulletin (Art. 1(1) of the decision of the President of the
EPO dated 15 July 2014, OJ EPO 2014, A86). If it subsequently emerges
that an opposition was filed in due 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 first
communication in examination having been sent (see C-III, 4 and E-IX, 4.1)
or oral proceedings having been held (see C-III, 5). Consequently, the
examining division may not refuse the application directly after the reply to
the 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 for
oral proceedings. The examining division may also not refuse the
application if the only communication issued is under Rule 137(4).

If, despite the applicant's submissions, i.e. amendments or counter- Art. 97(2)
arguments, objections persist after the applicant's reply to the first Art. 113(1)
communication under Art. 94(3) in examination, then a refusal can be Rule 111
issued. If there is a pending request for oral proceedings, oral proceedings Art. 109
must be held and the decision to refuse will, where appropriate, be Art. 111(1) and
announced at the end of them. Similarly, if a summons was issued as the Art. 111(2)
first action in examination, the decision to refuse will, where appropriate, be
announced at the end of the oral proceedings.

If a refusal is envisaged, the first member should bring the application

before the other members of the examining division, who may then decide
Part C – Chapter V-16 Guidelines for Examination in the EPO March 2024

to refuse the application. In any event, the first member will always consult
the other members of the division at some stage to establish whether an
application should be refused or a patent granted. If the division intends to
refuse the application, a written reasoned decision is necessary and this
will normally be prepared by the first member (see E-X, 2.3 and E-X, 2.6).
In preparing the decision, the first member 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 that the applicant has had the opportunity to comment
on (see E-X, 1.1 and E-X, 1.2).

In addition, the applicant's attention must be directed to the provisions for

appeal 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 of
such notification.

Art. 109 If the applicant appeals against the decision and the examining division
considers, in the light of the applicant's statement, that the appeal is
admissible and well-founded, it should rectify its decision accordingly within
three months after receipt of the statement of grounds. Otherwise, the
appeal will be considered by a board of appeal. If a decision to refuse a
patent is reversed on appeal, the application may be referred back to the
examining division for further examination. In such a case, the further
examination will normally be entrusted to the examiner who performed the
original examination. The examining division is bound by the reasoning of
the board of appeal in so far as the facts are the same.

15. Decision according to the state of the file

A special case is where the applicant does not file comments or
amendments 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 is
taken on the basis of the current status of the application and any
supporting arguments. The decision, which may be appealed, may only be
based on grounds and evidence that the applicant has had an opportunity
to comment on (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 the
file 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 in writing (see C-VII, 2.3) and 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 the
ambiguity with an enquiry to the applicant.

If, at the time the applicant files a request for a decision according to the
state of the file, a request for oral proceedings is pending, the examining
division will interpret the request for a decision as equivalent to the
applicant's implicit withdrawal of the pending request for oral proceedings.
March 2024 Guidelines for Examination in the EPO Part C – Chapter V-17

15.2 Decision by means of a standard form

If the applicant has filed an explicit and unambiguous request for a decision
according to the state of the file (see C-V, 15.1) in their latest reply, the
examiner may be in a position to refuse the application using a standard
form referring to the previous communication. To comply with the
requirement that such a decision be reasoned (Rule 111(2)), a number of
conditions have to be met:

(i) the previous communication must properly identify the application

documents on file, be well-reasoned and complete with respect to the
grounds and the reasons for the refusal of the current request and
address all the arguments raised by the applicant

(ii) no new arguments or amendments have been submitted by the

applicant since the previous communication

(iii) all objections raised in the previous communication referred to must

still apply.

If, in its reply to the last communication from the examining division, the
applicant has submitted new arguments that are at least likely to be
effective, 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
arguments either by issuing a regular reasoned decision (see C-V, 15.3) or
by issuing a further communication (see C-V, 15.4).

A decision according to the state of the file by means of a standard form

can be based on minutes of a consultation if they contain a full exposition of
all the legal and factual reasons for refusing the application, as in the case
of minutes of a consultation issued as the first communication in
examination (see C-VII, 2.5).

Examining divisions are not to refer to the minutes of oral proceedings 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, a self-contained decision
to refuse must be issued to comply with Rule 111(2). This is necessary, for
example, where the numerous objections raised in the previous
communications with respect to different sets of claims render unclear the
grounds and the reasons for the refusal. This also applies if the applicant
has made further submissions (including amendments) since the previous
communication, where these do not cause the subsequent decision to be
Part C – Chapter V-18 Guidelines for Examination in the EPO March 2024

based on grounds or evidence on which the applicant has not had the
opportunity to present comments. In all cases, the requirements of
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 oral
proceedings 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 2024 Guidelines for Examination in the EPO Part C – Chapter V-19

Annex
Standard marks for indicating amendments or corrections by the
divisions

1. Insertion of letters and words

Any insertion made using the in-house electronic tool is done in the text
itself. No separate marks are needed in the margins or at the top or bottom
of the page.

In the PDF file created from the working copy of the document prepared for
the printer ("Druckexemplar"), the tool will insert change bars to the right of
amendments and indicate amended pages as such. The tool also adds
pairs of insertion signs to mark the beginning and end of each 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 follow the
signs above to indicate whether the inserted text should be kept in the
same line or if a new line or paragraph should start before or after the
inserted 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)

If inserting an entire newly filed page, e.g. a page numbered "1a", the
instruction [insert page 1a] is used.
March 2024 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 in
general be between two and four months in accordance with Rule 132. The
period to be allowed will be determined by the examiner taking all the
factors relevant to the particular application into account. These include the
language normally used by the applicant or their representative; the
number and nature of the objections raised; the length and technical
complexity of the application; the proximity of the EPO to the applicant or, if
they have one, their representative and the distance separating the two.

If the only outstanding objection is the need to amend the description, the
examiner may invite the applicant to amend the description by issuing a
communication under Art. 94(3) with a two-month time limit to reply.
Alternatively, the examiner may consult the applicant informally, e.g. by
telephone, 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 Art. 94(1) and (4)
(see E-VIII, 1.6). Failure to respond to a communication under Art. 94(3) Rule 132
and Rule 71(1) and (2) in due time results in the application being deemed
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 a time limit of up
to six months. The six-month period may be appropriate, for instance, if the
applicant resides a long way from the representative and the language of
the proceedings is not one to which the applicant is accustomed; or if the
subject-matter of the application or the objections raised are exceptionally
complicated (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 for
accelerated prosecution of European patent applications (PACE), the
applicant can speed up the proceedings at the examination stage (see the
notice from the EPO dated 30 November 2015, OJ EPO 2015, A93). For
further information, see E-VIII, 4.2.

3. Further ways to accelerate examination

Where the applicant files a request for examination before the search report Rule 70(2)
is transmitted to them, they may also dispense with the need to comply with Art. 11(b) RFees
the invitation pursuant to Rule 70(2) and file a categorical request for Rule 62(1)
examination whatever the search result may be, thereby also accelerating
Part C – Chapter VI-2 Guidelines for Examination in the EPO March 2024

the procedure (see the notice from the EPO dated 30 November 2015,
OJ EPO 2015, A93). In this case, confirmation that they desire to proceed
further with their application is deemed 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, a communication under Art. 94(3) and
Rule 71(1) and (2) is transmitted to the applicant. Own-volition
amendments under Rule 137(2) may in that case be submitted by the
applicant in reply to this communication (see C-III, 2).

If the application is in order for grant, the subsequent procedure will depend
on whether it is possible at that time to carry out the search for conflicting
European patent applications according to Art. 54(3) (see C-IV, 7.1 and
B-XI, 7). If it can, and assuming no conflicting applications are identified,
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 is subsequently withdrawn before the
substantive examination has begun, the examination 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 (for more 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 an
international application by the EPO as designated/elected Office (see
E-IX, 2.8).
March 2024 Guidelines for Examination in the EPO Part C – Chapter VII-1

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. Where this is the case, the
procedures described here 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 a consultation will preferably be
held by videoconference so that, where necessary, documents can be
presented, other persons participate and the identity of those attending
verified (see C-VII, 2.2). The shared area in MyEPO Portfolio provides a
space for applicants and examiners to upload documents and informally
discuss changes (see OJ EPO 2023, A59). Consultations can also be held
by telephone at the request of the applicant, 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 to
be held is up to the formalities officer or examiner. A consultation request
from the applicant should usually be granted unless the nature of the issue
to be discussed requires formal proceedings or the examiner 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 the applicant may want a consultation are:

(i) to enquire about a procedural issue such as how to proceed in

particular circumstances (note however that the examiner is not
normally 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 the

applicant's reply making it difficult for them or the examiner to
prepare the next reply/communication (e.g. wrong document cited,
communication based on wrong set of claims, new submissions
referred to but not included).

Typical situations in which the examiner may consider it appropriate to

consult the applicant are:

(iii) where there appears to be confusion about certain points in dispute,

e.g. the applicant seems to have misunderstood the examiner's
arguments – or vice versa – so that the written procedure is leading
nowhere

(iv) where the application seems to be ready for grant except that the
examiner needs to clarify some minor issues with the applicant or
Part C – Chapter VII-2 Guidelines for Examination in the EPO March 2024

would like to discuss a proposal for amendments to overcome the

objections 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 them.

For 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 for oral proceedings (E-III, 6).

2.2 Persons participating in the consultation

The person consulted must be 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)

(c) a duly authorised employee of the applicant (see A-VIII, 1.2) or, to
the 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)

– 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 those listed above,
may be accompanied by other persons, such as the inventor, a
non-European representative or an employee of the applicant. At the
request of the entitled person, such other persons may be allowed to take
part in the consultation if their participation is relevant to the proceedings.
Where the consultation is held by videoconference, these persons may
connect from a different location than the entitled person.

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 or
formalities officer will check the identity of the person or persons
concerned. This can be done by inviting them to show an official identity
document to the camera in the case of a videoconference or to send a copy
March 2024 Guidelines for Examination in the EPO Part C – Chapter VII-3

of the document by email. For data protection reasons, the copy of the
identity document sent by email will not be included in the file (see also
E-III, 8.3.1).

From the examining division, only the first member dealing with the case
will normally be present. However, there is no objection to one or even both
of the other members participating in the consultation.

When the inventor or an expert is attending the consultation, it is

recommended that the chair of the examining division at least should also
attend. However, the applicant or representative does not have the right to
demand the presence of additional division members. If a request is made
for a consultation with all three members, it will usually be advisable to
arrange for the holding of 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 the
consultation depends on the nature of the matters discussed. It should
always be made clear to the applicant that any agreement reached is
ultimately subject to the views of the other members of the examining
division. A decision cannot be taken during a consultation.

Oral statements made during a consultation must be confirmed in writing in

order to be procedurally effective. Indeed, such statements are not normally
legally binding. Such a statement cannot, for instance, be effective to meet
a 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 EPO.
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 by
email during the consultation (see C-VII, 3) may indeed be effective to meet
a 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 of the consultation, 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 the
main results and state any oral requests. They must be signed by the
examiner. Documents filed by email during a consultation (see C-VII, 3),
such as new claims or an amended description, must be attached to the
minutes.
Part C – Chapter VII-4 Guidelines for Examination in the EPO March 2024

The minutes should always indicate whether the next action is due to come
from 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 the
applicant must reply within that extended time limit

(iii) be issued such as to set a new time limit for response, in which case
the 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 oral

proceedings where an agreement on an allowable set of claims can
be reached during the consultation. Cancellation of the oral
proceedings is communicated to the applicant orally during the
consultation and noted in the minutes. No separate communication
regarding the cancellation of the oral proceedings is issued

(vi) be issued for information only where the applicant announces during
the consultation that they do not intend to attend oral proceedings.
The applicant is informed that oral statements must be confirmed in
writing to be procedurally effective (see C-VII, 2.3).

Where the consultation is concerned with the clarification of obscurities, the

resolution of uncertainties or putting the application in order by clearing up
a number of minor points, it will usually be sufficient for the examiner to
make a note in the minutes of the matters discussed and the conclusions
reached or amendments agreed unless a time limit is set for reply (see
below).

Where the consultation involves the discussion of weightier matters, such

as questions of novelty, inventive step, unity or whether the amendment
introduces added subject-matter, a fuller note of the topics raised will be
made in the minutes. In particular, the minutes will specify in concrete
terms the topics discussed, together with any amendments agreed, any
opposing views, the reasons for any change of opinion and any conclusions
drawn unless these are clear from other documents in the dossier.
Furthermore, the reasons for any amendments required by the examiner
should be clearly indicated.

It is important to avoid statements that are unclear, ambiguous or

universally applicable in the minutes. 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 first member at later stages of
the procedure. The same applies to conclusions worded in a generalised
manner.
March 2024 Guidelines for Examination in the EPO Part C – Chapter VII-5

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
consultation) and sent to the applicant 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 prior to completing the Rule 71(3) communication may
be reflected in that communication, provided that there is no uncertainty for
the public as to what was agreed. The amendments must be identified as
precisely 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 four
months unless agreed otherwise with the applicant.

Matters (e.g. objections or reasoning) not discussed during the consultation

itself may be included in such minutes. However, it must be made clear 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) and
Rule 71(1), (2) (see C-III, 4).

Where the examining division is considering issuing a summons to oral

proceedings as the first action in examination (see C-III, 5), the examiner
may inform the representative of this in a call. 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 that
stage, minutes must be issued.

3. Use of email
At present, email is an admissible filing means only for the submission of
subsequently filed documents as referred to in Rule 50 during consultations
and during oral proceedings held by videoconference (for details, in
particular on signature and format of attachments, see the decision 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 in

proceedings under the EPC and thus cannot be used to validly perform any
procedural act and, in particular, to comply with time limits
Part C – Chapter VII-6 Guidelines for Examination in the EPO March 2024

(see OJ EPO 2000, 458, and A-VIII, 2.5). If, for instance, shortly before oral
proceedings, the applicant would like to submit new requests and/or
amended documents, they should do so by electronic filing or fax.
Documents submitted via electronic filing are normally visible in the
electronic file on the same day.

Examples of situations where exchanges by email may be useful are:

(i) to arrange a date for a consultation

(ii) when, during a consultation, possible amendments to claims are

being discussed and the applicant wants to communicate them
immediately without submitting them formally

(iii) shortly before oral proceedings to send an electronic copy of

amended claims in addition to the official submission made; this
ensures that the examining division gets the documents well in time
to prepare for 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 and
E-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 simply arranging of a date for a
consultation or oral proceedings. Furthermore, the mere fact that an email
address is indicated on a letter head does not mean that the examiner can
use it for file-related matters.

If, on the other hand, an examiner receives an email from an applicant

concerning procedural requests or addressing substantive issues without
previous agreement, this email cannot simply be ignored, but must be dealt
with, ensuring that the content is put in the official file (see also T 599/06).
A reply should be sent making clear that email is not an official means of
communication and that 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 must be carefully
maintained, and substantive matters should not form part of any email
correspondence about such applications.

3.3 Inclusion in the file of any email exchange

If email is used, it is essential to ensure that email exchanges are properly
documented in the file by sending the result of 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 that the applicant is aware of
this.
March 2024 Guidelines for Examination in the EPO Part C – Chapter VII-7

Submissions filed by email during a consultation or during oral proceedings

held by videoconference, including all attachments, should be annexed to
the minutes (see E-III, 8.5.2 for details).

4. 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 (i.e. written evidence).

4.2 Producing evidence

An examining division does 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 not
meet the requirements of the EPC. If the applicant does not accept the
examiner's view, then it is for them to decide whether they wish to produce
evidence in support of their case and, if so, what form that evidence should
take. The examining division should afford the applicant a reasonable
opportunity to produce any evidence that is likely to be relevant.

However, this opportunity should not be given where the examining division
is convinced that it would serve no useful purpose or result in undue delay.

4.3 Written evidence

Written evidence can include the supply of information or the production of
a document or a sworn statement.

For example, to rebut an examiner's allegation of lack of inventive step, the

applicant might supply information as to the technical advantages of the
invention. Or they might produce a sworn statement, either from themself or
from an independent witness, purporting to show that workers in the art
have been trying for a long time unsuccessfully to solve the problem with
which 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 the
examining division became responsible for the application (see C-II, 1), the
division must honour the request, even if it was not repeated in
examination.

On dealing with new requests filed in reply to a summons to oral

proceedings, see C-IV, 8.

As a rule, oral proceedings in examination proceedings are held by

videoconference 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 oral
proceedings held by videoconference. Sweeping objections against the
reliability of videoconferencing technology or the non-availability of
videoconferencing equipment will, as a rule, not qualify as serious reasons
Part C – Chapter VII-8 Guidelines for Examination in the EPO March 2024

in this regard, nor will the need to consider written evidence (see E-III, 1.3,
OJ EPO 2020, A134 and A40).

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 2024 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. Art. 18(2)
However, within the examining division responsible for the application, one
member (the first member) will, as a general rule, be entrusted to carry out
all substantive examination work up to the point of a decision to grant a
patent, issue a summons to oral proceedings or refuse the application.
While acting on behalf of the examining division in all communications with
the applicant up to that point, this examiner may confer informally with the
other members of the division at any time on specific points of doubt or
difficulty. The term "examiner" as used in this part of the Guidelines is
normally understood to mean the "first" member.

As stated above, the first member may seek the advice of other members
of the examining division at any stage in the examination. However, there
will come a point when it becomes appropriate for them to refer the case
formally to the other members of the examining division. This will be when
they consider the case to be in order to proceed to grant or, alternatively,
where there seems no possibility of an amendment to overcome their
objections or where the applicant has not overcome these objections, and
when they consider the case to be in order to proceed to refusal. There are
also other circumstances 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.

The first member should also bear in mind that when they issue a
communication they do so in the name of the division, and the applicant is
entitled to assume that if the examiner had doubts as to the views of the
rest of the division, they would have discussed the matter with them
beforehand.

Although the examining division assumes ultimate responsibility for an

application as soon as that application passes to it under Rule 10, formal
matters are normally 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
of the Receiving Section or the formalities officer. However, they should
refer an application to the formalities officer for further consideration if they
believe the formalities report to be incorrect or incomplete.

If required by specific circumstances (e.g. sickness), an application may be

reallocated to another examiner/examining division. In such cases, the
decision to reallocate will be taken by the line manager.

2. Recommendation to grant
If the examiner considers that the application satisfies the requirements of
the EPC and is thus in order to proceed to grant, they should make a brief
Part C – Chapter VIII-2 Guidelines for Examination in the EPO March 2024

written report (the "votum"). As a general rule, the examiner will list in this
report the reasons why, in their opinion, the subject-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 that make it patentable, although
there may be exceptional circumstances where this is not necessary,
e.g. where patentability is based 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 that the examiner
has resolved in favour of the applicant, they should draw attention
specifically to these.

3. Recommendation to refuse
When referring an application that is not in order for the grant of a patent to
the examining division, the first member should confer with the other
members of the division, bringing to their attention the points at issue,
summarising the case history to the extent necessary to enable them to
obtain a quick grasp of the essential facts and recommending the action to
be taken, e.g. refusal, or grant conditional upon certain further
amendments. As the other members will need to study the case
themselves, there is no need for a detailed exposition. It will be useful,
however, to draw attention to any unusual features or points not readily
apparent from the documents themselves. If the first member recommends
refusal and the issue seems clear-cut, they may have a draft reasoned
decision ready for issue by the examining division (see C-V, 14); if the
issue is not clear-cut, the drafting of the reasoned decision should be
deferred until the division has discussed the case.

4. Tasks of the other members of the examining division

Art. 18(2) When an application is referred to the other members of the division, they
will first consider the case individually and each will indicate their opinion on
the course of action to be taken. If there is complete agreement with the
first member's recommendation, no further consultation will be necessary.
Any further action needed will be entrusted to the first member. If, initially,
there is not complete agreement with the first member, or at least one
member of the division wishes to discuss the case further, further
consultation will be arranged. In such discussions, the division should strive
for unanimity, 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, where necessary.

The other members of the division should bear in mind that their function is
not to completely re-examine the application. If, following a discussion, the
first member's conclusions 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 application can be amended
to bring it into a form that meets the requirements of the EPC, then the first
member should be entrusted with informing the applicant of the division's
opinion that the application should be refused on certain grounds unless
satisfactory amendments are submitted within a stated period (see C-VI, 1).
March 2024 Guidelines for Examination in the EPO Part C – Chapter VIII-3

If, within the time limit, satisfactory amendments are made, the examiner
will then report back to the division recommending that the application
should proceed to grant. If not, they should report back recommending
refusal.

5.1 When can a summons to oral proceedings be issued in

substantive examination?
At the beginning of substantive examination, if the examining division is of Art. 76(1)
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 even if the
applicant has replied to them, it is not generally appropriate to send a
summons 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, a summons to oral proceedings may be issued as the first

action in examination proceedings, provided that the criteria set out in
C-III, 5 are met.

In examination proceedings, where the applicant has been invited to

provide 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. Decision
All decisions are issued by the examining division as a whole and not by an Rule 113
individual examiner. All members therefore sign the written decision,
irrespective of whether it was unanimous. If, exceptionally, one or more
division members cannot sign the decision, one of the other members –
normally the chair – may sign it on their behalf, subject to the conditions
defined in E-X, 2.3. A seal may replace the signature.

7. Enlargement of the examining division; consultation of a legally

qualified member
If the examining division deems it necessary given the nature of a decision, Art. 18(2)
it is enlarged to include a legally qualified member. The decision to enlarge
or to set aside an enlargement lies with the examining division.

The participation of a legally qualified member or at least internal

consultation of Directorate Patent Law and Processes, the unit responsible
for providing legally qualified members for examining and opposition
Part C – Chapter VIII-4 Guidelines for Examination in the EPO March 2024

divisions, will be required in the event of a difficult legal question not yet
solved by the Guidelines or jurisprudence.

The applicant is informed of the division's enlargement in the

communication accompanying and/or the annex to the summons or the
decision following enlargement, as appropriate. Once the division has been
enlarged, communications or decisions must be signed by all four
members.

If the examining division has been enlarged to four members, the chair will
have a casting vote. As a rule, enlargement will be required in cases
involving technical opinions (Art. 25 – see E-XIII, 3.1) and where evidence
has to be taken according to Rule 117 (including the giving of evidence by
witnesses – see E-IV). It is also to be considered in the case of oral
proceedings.

Where an examining division has been enlarged pursuant to Art. 18(2) but
the case is decided in a three-member composition, there should be clear
evidence in the public file that a decision to set aside enlargement was
taken by the division in its four-member composition prior to the final
decision.

Therefore, if enlargement is considered no longer necessary, the examining

division will set it aside. This decision is not separately appealable. The
applicant is informed about the setting aside of the enlargement in the
communication accompanying and/or the annex to the summons or the
decision following the setting aside of the enlargement.

Depending on the nature of the problem, as an alternative to enlarging the

examining division, it may be sufficient to consult a legally qualified member
in Directorate Patent Law and Processes. For instance, doubts may arise
whether an application concerns an invention within the meaning of
Art. 52(2) or whether the claimed invention is excluded from patentability by
virtue of Art. 53. Such consultation may also be appropriate where legal
considerations predominate in 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 and Processes within the
scope of the duties conferred to them under Rule 11(3) (see the decision of
the President of the EPO dated 12 December 2013, OJ EPO 2014, A6).
March 2024 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

A divisional application may be filed subsequent to the filing of a European Art. 76(1)
patent application or on a Euro-PCT application's entry into the European
phase. The divisional application is accorded the same filing date as the
parent application, which must be pending when the divisional application is
filed (A-IV, 1.1.1), and benefits from any right of priority of the parent
application in respect of subject-matter contained in the divisional
application. A European patent application may give rise to more than one
divisional application, and a divisional application may itself give rise to one
or more divisional applications.

Divisional applications are to be treated the same as ordinary applications

and are subject to the same requirements unless specific EPC provisions,
in particular Art. 76 or Rule 36, require something different (G 1/05,
G 1/06).

Furthermore, as soon as the requirements of Rule 36 and Art. 76(1) are

fulfilled, the proceedings for grant of a divisional application become
separate and independent from the proceedings concerning the parent
application (G 4/98). Pending opposition or appeal proceedings concerning
the parent application (or any member of that family of applications) do not
constitute grounds for staying the examination proceedings for a divisional
application, either by the EPO on its own initiative or on 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 Art. 82
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 to
lack of unity, the applicant is 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
indicate that if not limited within the set time limit the application may be
refused.

1.3 Abandonment of subject-matter

The mere deletion of subject-matter in the parent application is not
prejudicial to the later filing of a divisional application. When deleting
subject-matter, the applicant should, however, avoid any statements that
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).
Part C – Chapter IX-2 Guidelines for Examination in the EPO March 2024

1.4 Examination of a divisional application

Art. 76(1) The substantive examination of a divisional application should in principle
be carried out in the same way as for any other application. However, there
are a number of special points to be considered (see also C-III, 5). The
claims of a divisional application need not be limited to subject-matter
already claimed in the parent application's claims. Furthermore, no abuse
of the system of divisional applications can be identified in the mere fact
that the claims of the application on which the examining division had then
to decide had a broader scope than the claims granted in relation to the
parent application (see T 422/07).

However, under Art. 76(1), the subject-matter may not extend beyond the
content 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 so 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 removing that additional subject-matter, the divisional
application must be refused under Art. 97(2) for failure to comply with
Art. 76(1).

The divisional application cannot be converted into an independent

application taking its own filing date. Moreover, a further divisional
application for this additional subject-matter should also be refused under
Art. 97(2) for failure to comply with Art. 76(1).

Art. 123(2) Amendments made to a divisional application subsequent to its filing must
comply with the requirements of Art. 123(2), i.e. they may not extend the
subject-matter beyond the content of the divisional application as filed
(see G 1/05 and T 873/94). If the 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 under Rule 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 of

the subject-matter claimed in the parent application, this part must be
directly and unambiguously derivable from the parent application as being a
separate part or entity, i.e. one that can be used even 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 for
a 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 the
preceding applications as filed (see G 1/06).

1.5 Description and drawings

The description and drawings of the parent application and the/each
divisional application should in principle be confined to matter that is
March 2024 Guidelines for Examination in the EPO Part C – Chapter IX-3

relevant to the invention claimed in that application. However, amendment

of the description should be required only where 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 for
the matter of cross-references, there is no need for the examiner to check
in the description since, under present practice, cross-references are
always 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
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 the two 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 – that 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 particular
application, it may be adjudged by a final decision of a national court that a
person other than the applicant is entitled to the grant of a patent on it. In
this event the third party may either:

(i) prosecute the application as their own application in place of the Art. 61(1)(a)
applicant

(ii) file a new European patent application in respect of the same Art. 61(1)(b)
invention

(iii) request that the application be refused. Art. 61(1)(c)

If the first of these options is chosen, the third party becomes the applicant
in place of the former applicant and the prosecution of the application is
continued 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), the Art. 61(1) and (2)
provisions of Art. 76(1) apply to this new application mutatis mutandis. This Rule 17(1)
means that the new application is treated as though it were a divisional
application i.e. it takes the filing date and benefit of any priority right of 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
extend beyond that of the original application as filed. The original
application is deemed withdrawn on the new application's filing date for the
designated states concerned.
Part C – Chapter IX-4 Guidelines for Examination in the EPO March 2024

2.2 Original application no longer pending

In cases where the original application has been withdrawn, refused or
deemed withdrawn and is thus no longer pending, Art. 61(1)(b) is
applicable, allowing the third party to still file a new European patent
application in respect of the same invention (see G 3/92).

2.3 Partial entitlement

Rule 18(1) If, by a final decision, it is adjudged that a third party is entitled to the grant
of a European patent in respect of only part of the matter disclosed in the
European patent application, then the above 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 the
designated states concerned, be confined to the subject-matter to which
the original applicant remains entitled. The relationship between the new
application and the amended original application will be similar to that
between two divisional applications, and the relationship between each of
those and the original application will be similar to that between divisional
applications and 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

Rule 18(2) Where the final decision on entitlement applies to only certain designated
states, the original application may contain different description, claims 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, each
application should be examined in the normal way without regard to the
other, with the proviso that the subject-matter of each application must not
extend beyond that of the original application.

3. Applications where a reservation has been entered in accordance

with Art. 167(2)(a) EPC 1973
See H-III, 4.4.

4. International applications (Euro-PCT applications)

For more details on these, see E-IX.
Part D

Guidelines for Opposition and

Limitation/Revocation
Procedures
March 2024 Guidelines for Examination in the EPO Part D – Contents a

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 members II-1

2.2 Legally qualified members II-1

2.3 Chair II-1

3. Allocation of duties and appointment of members

of 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-2

4.3 Ancillary proceedings II-2

5. Allocation of tasks to members II-3

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 2024

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. Examination for deficiencies in the notice of
opposition and communications from the
formalities officer arising from this examination IV-1

1.1 Forwarding of the notice of opposition to the

formalities officer IV-1

1.2 Examination for deficiencies in the notice of

opposition IV-1
1.2.1 Deficiencies which, if not remedied, lead to the
opposition being deemed not to have been filed IV-1
1.2.2 Deficiencies which, if not remedied, lead to the
opposition being rejected as inadmissible IV-2
1.2.2.1 Deficiencies under Rule 77(1) IV-2
1.2.2.2 Deficiencies under Rule 77(2) IV-5

1.3 Issue of communications by the formalities officer as

a result of examination for deficiencies IV-6
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 IV-6
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 IV-6
1.3.3 Extent of the formalities officer's obligation to issue
the above communications IV-6
March 2024 Guidelines for Examination in the EPO Part D – Contents c

1.4 Subsequent procedure in the event of deficiencies

which may no longer be remedied IV-7
1.4.1 Deficiencies which may no longer be remedied, as a
result of which the opposition is deemed not to have
been filed IV-7
1.4.2 Deficiencies which may no longer be remedied in
accordance with Rule 77(1) and (2), resulting in the
opposition being rejected as inadmissible IV-7

1.5 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

4. Termination of opposition proceedings in the

event 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 the

parties to the other parties IV-11

5.5 Decision concerning the admissibility of an

opposition, the patent proprietor being a party IV-11

5.6 Examination of the admissibility of an intervention

and preparations in the event of an intervention IV-12

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 2024

3. Non-patentability pursuant to Art. 52 to 57 V-3

4. Insufficient disclosure of the invention V-3

5. Clarity of claims and support by the description V-3

6. Subject-matter of the European patent extending

beyond the original disclosure V-5

6.1 Basis of this ground for opposition V-5

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 patent

submitted 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-3

4.1 Communications 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 oral

proceedings 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 VI-4
7.2.1 Procedural requirements VI-4
March 2024 Guidelines for Examination in the EPO Part D – Contents e

7.2.2 Decision on the documents on the basis of which the

patent is to be maintained VI-6
7.2.3 Request for publishing fee, translations and a
formally compliant version of amended text passages VI-6

8. Request to stay opposition proceedings VI-7

Chapter VII – Details and special features of

the 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 not

entitled VII-3

4.1 Stay of proceedings VII-3

4.1.1 Date of the stay of proceedings VII-3
4.1.2 Legal character and effect of the stay of proceedings VII-3

4.2 Continuation of proceedings VII-4

4.2.1 Continuation after a final decision VII-4
4.2.2 Continuation regardless of the stage reached in
national proceedings 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

5.1 Continuation in the case of surrender or lapse of the

patent VII-5

5.2 Continuation on the death or legal incapacity of the

opponent VII-6

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 2024

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-8

Chapter 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 Revocation of the European patent VIII-1

1.2.1 Revocation on substantive grounds VIII-1
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 VIII-1
1.2.3 Revocation for failure to notify the appointment of a
new representative VIII-2
1.2.4 Revocation in the event of requirements not being
met until after expiry of time limits VIII-2
1.2.5 Revocation of the patent in the event that the patent
proprietor no longer wishes the patent to be
maintained as granted VIII-2

1.3 Rejection of the opposition VIII-2

1.4 Maintenance of the European patent as amended VIII-2

1.4.1 Taking of a final decision VIII-2
1.4.2 Statement in the decision of the amended form of the
European patent VIII-2

2. Other decisions VIII-3

2.1 Decision on the inadmissibility of an opposition or

intervention 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

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 2024 Guidelines for Examination in the EPO Part D – Contents g

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

3. Enforcement of the fixing of costs IX-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

2.2 Deficiencies which, if not remedied, lead to the

request 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

Part D – Contents h Guidelines for Examination in the EPO March 2024

9. Withdrawal of the request X-7

10. Different sets of claims X-7

10.1 Limitation results in the claims becoming different in

different contracting states X-7

10.2 Limitation is different for different contracting states

because the claims as granted were different for
different contracting states X-7

11. Multiple requests X-8

March 2024 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 or
more 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 a
publication 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 been Rule 75
surrendered or has lapsed for all designated states. This is relevant in that
in 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 states Art. 99(2)
in 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 respect
of all the designated states.

Nevertheless, the effect of an opposition may differ as between contracting Art. 61

states. This may arise where the patent contains different claims for Art. 139(2), Art. 140
different 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 of
Art. 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 of
Art. 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 of
others.

4. Entitlement to oppose
"Any person" may give notice of opposition without specifying any particular Art. 99(1)
interest. "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 the
persons 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 to
withdraw from the proceedings, the EPO must be notified accordingly by
the common representative or by a new common representative
Part D – Chapter I-2 Guidelines for Examination in the EPO March 2024

determined under Rule 151(1) in order for the withdrawal to take effect (see
also G 3/99).

Oppositions are not assignable but may be inherited or succeeded to as

part 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 the
status 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 the
proceedings (see T 1178/04).

5. Intervention of the assumed infringer

Art. 105(1) and (2) Under certain conditions (see D-VII, 6) third parties who prove that
Rule 89 proceedings 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, the
intervention is to be treated as an opposition (see D-IV, 5.6). For
accelerated processing of oppositions on request, see D-VII, 1.2 and
E-VIII, 5.

6. Parties to opposition proceedings

Art. 99(3) The patent proprietor, the opponent(s) and, where applicable, the
Art. 105(2) intervener(s) will be parties to the opposition proceedings. However, an
Art. 115 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 patentability
of the invention in respect of which an application has been filed are not
parties 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) Where evidence has been provided that in a contracting state, following a
Art. 61(1)(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 this
event, by derogation from Art. 118, the previous patent proprietor and the
person 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 2024 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 the Art. 20(1)
Register 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 (see

E-III, 6). When there are multiple opponents and/or proprietors as parties to
a 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 the
statements 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 is
later withdrawn, prejudicial grounds put forward in said opposition are
generally examined by the opposition division of its own motion. If one of
the 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 (see
D-V, 2.2).

7. Representation
As regards the requirements relating to representation of opponents and
patent 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 the
proceedings (see also A-XI, 4).
March 2024 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 Rule 11(1)
conducting opposition proceedings.

2. Composition

2.1 Technically qualified members

An opposition division consists of three technically qualified members, at Art. 19(2)
least two of whom must not have taken part in the proceedings for grant of
the patent to which the opposition relates.

Participation in the proceedings for grant of the patent to which the

opposition relates includes, in particular, performing a procedural act such
as issuing a communication or signing a summons to oral proceedings.
However, participation in the proceedings of a patent family member, e.g. a
parent or priority application of the opposed patent, is not considered as
participation in the proceedings for grant of the patent to which the
opposition relates for the purposes of Art. 19(2).

2.2 Legally qualified members

If the opposition division considers that the nature of the decision so Art. 19(2)
requires, it is enlarged by the addition of a legally qualified member who
has not taken part in the proceedings for grant.

The principles established for inclusion of a legally qualified member and

for 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 be
envisaged in cases where it is questionable whether or not a disclosure by
means other than a document was made available to the public.

2.3 Chair
The chair must be a technically qualified member who has not taken part in
the grant proceedings (see D-II, 2.1).

3. Allocation of duties and appointment of members of the

opposition division
C-II, 2 applies mutatis mutandis. Rule 11(1)

4. Tasks of the opposition divisions

4.1 Examination of oppositions

The opposition divisions are responsible for the examination of oppositions Art. 19(1)
against European patents.
Part D – Chapter II-2 Guidelines for Examination in the EPO March 2024

The examination of newly submitted documents for compliance with

physical requirements will essentially be the task of the competent
formalities 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
Art. 104(2) The opposition division will decide on requests to have the costs fixed by
Rule 88(3) and (4) the formalities officer reviewed (see D-II, 7 and D-IX, 2.1).

4.3 Ancillary proceedings

Art. 122(2) It will be incumbent upon the opposition division to conduct ancillary
Rule 136(4) proceedings arising in the course of opposition proceedings. Such ancillary
Rule 112(2) proceedings may for example concern a request for re-establishment of
rights 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 a
finding arrived at by the formalities officer that a right has been lost or a
request 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).

Rule 144 As regards exclusion from file inspection pursuant to Rule 144 in
conjunction with the decision of the President of the EPO dated
12 July 2007, Special edition No. 3, OJ EPO 2007, J.3, reference is made
to A-XI, 2.1. Documents having a substantive and/or procedural bearing on
opposition proceedings can only exceptionally be excluded from file
inspection (T 1691/15). Communications dealing with a request for
exclusion from file inspection are excluded from file inspection and are
issued separately from communications dealing with other issues.
Depending on its content, a document (provisionally) excluded from file
inspection and any communication concerning a request for its exclusion
from 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, or
parts thereof, not (provisionally) excluded from file inspection can be used
as 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, the
opposition 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 the
above interpretation, is normally granted if the copyright of the document in
question is not owned by a party to the proceedings and the document in
question 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 not
easily retrievable. If the copyright of such company brochure is owned by a
party to the proceedings, the request is refused by the opposition division
and the document is made available via file inspection.

Where the request not to make a document available via file inspection for
reasons of copyright is acceded to by the opposition division, the page(s)
carrying the bibliographic details of the non-patent literature document
March 2024 Guidelines for Examination in the EPO Part D – Chapter II-3

(normally the cover page) will nonetheless be made available via file
inspection in order to ensure that members of the public are in a position to
retrieve the entire document. The nonpatent literature document is not
considered as being excluded from file inspection within the meaning of
Rule 144 and can be used as evidence in the opposition proceedings.

5. Allocation of tasks to members

An opposition division will normally entrust one of its members with the Art. 19(2)
examination of the opposition, but not with the conduct of oral proceedings, Rule 119(1)
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 first member.

6. Duties and powers of members

The first member will conduct the examination of the opposition. If oral
proceedings have been requested, they are normally arranged as first
action, possibly in conjunction with the taking of evidence (see E-III, 1
to E-III, 4 and E-IV, 1.6.1). The first member will prepare the
communication accompanying the summons to oral proceedings and
submit it to the other members. If the first member 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 first
member 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 a
vote 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 Art. 19(2)
votes, the vote of the chair of the division is decisive.

Any further measures necessary will as a rule be entrusted to the first

member. If no further measures are necessary, the first member will draft a
decision on the opposition and will distribute the draft to the other members
of the opposition division for examination and signature. If any changes are
proposed by a member and there are differences of opinion on such
changes, the chair must arrange a meeting.

Where reference is made hereinafter to the opposition division, this is to be

taken to mean the first member 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 not Rule 11(3)
technically or legally qualified 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 (see decisions of the
Part D – Chapter II-4 Guidelines for Examination in the EPO March 2024

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 of
fixing the amount of the costs (see D-IX, 2.1).
March 2024 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 the Art. 99(1)
European patent, notice of opposition has to be given to the EPO in
Munich, The Hague or Berlin.

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 case
of 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 Art. 99(1)
under the EPC must be paid before expiry of the time limit for opposition.

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 Rule 86
printed, with a margin of about 2.5 cm on the left-hand side of each page. It Rule 50(2)
would be appropriate if the notice of opposition also satisfied the Rule 49(2)
requirements laid down in Rule 49(2) in conjunction with the decision of the Rule 76(1)
President of the EPO dated 25 November 2022 (OJ EPO 2022, A113).

3.2 Notices of opposition filed electronically

Notice of opposition may, without prejudice to other means of filing, be filed
in 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 Rule 2
President of the EPO dated 20 February 2019, OJ EPO 2019, A18). At the
invitation 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 to
comply 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 Rule 50(3)
the opponent or, where appropriate, by the representative (see also Rule 2
D-IV, 1.2.1(ii), and A-VIII, 1).
Part D – Chapter III-2 Guidelines for Examination in the EPO March 2024

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 (i.e. a type-
written signature that is preceded and followed by a forward slash (/)).
Where EPO Online Filing is used, the signature may also take the form of
an enhanced electronic signature (see OJ EPO 2023, A48).

Where the notice of opposition is filed by fax, the reproduction on the

facsimile of the signature of the person filing the notice of opposition will be
considered 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, the
document retains its original date of receipt; otherwise, it is deemed not to
have 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.

5. Grounds for opposition

Art. 99(1) A written reasoned statement of the grounds for opposition must be filed
Rule 76(1) 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);
March 2024 Guidelines for Examination in the EPO Part D – Chapter III-3

(iii) the subject-matter of the European patent extends beyond the Art. 100(c)
content 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 a
European patent), beyond the content of the earlier application as
filed (see Art. 76(1)).

(See also D-V, 3, D-V, 4 and D-V, 6).

Note that each single condition mentioned above forms an individual legal
basis for objection to the maintenance of the patent. Consequently, each
such 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 the
patentability of the invention in question (see, however, H-III, 4.4), that the
patent proprietor is not entitled to the European patent, that the
subject-matter of the patent lacks unity, that the claims are not supported
by 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 and
content of the description or drawings of the patent do not comply with the
provisions as to formal requirements as set forth in Rules 42 and 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 the
inventor is incorrect. Nor does the simple allegation that priority has been
wrongly claimed constitute a ground for opposition. However, the matter of
priority 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 of
decisive 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 in Rule 76(2)(a)
which the opponent's residence or principal place of business is Rule 41(2)(c)
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 well as
companies 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 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. Opponents (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 for correspondence
Part D – Chapter III-4 Guidelines for Examination in the EPO March 2024

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 of
representation under Art. 133 and Art. 134. It is recommended that
the telephone number be indicated (see D-IV, 1.2.2.2(i)
and D-IV, 1.4.2);

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) (iii) a statement of the extent to which the European patent is opposed
Rule 76(2)(c) and of the grounds on which the opposition is based as well as an
indication of the facts and evidence presented in support of these
grounds (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 is
recommended that a single copy of any written evidence be
submitted 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's
name and address of place of business in accordance with the
provisions 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 2024 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 and
communications from the formalities officer arising from this
examination

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 patent
concerned in accordance with the relevant administrative instructions and
communicates 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 (for
details, see E-VI, 3). If an opposition fee has been paid, it will in this case
be 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 Art. 7 RFees
within the opposition period (Art. 99(1); see also G 1/18). However, if Art. 8 RFees
the opposition fee, apart from a small amount (e.g. deducted as bank
charges), 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 the
amount lacking can be overlooked, the opposition fee is deemed to
have 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 be
appointed within the prescribed time limit. The above applies if the
Part D – Chapter IV-2 Guidelines for Examination in the EPO March 2024

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 in
Rule 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 the
one-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 the
essential elements into English, French or German within the
abovementioned 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 examined
for 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 in
accordance with Rule 117.

In this connection the opposition division will also examine the extent to
which it is necessary for the formalities officer to request the opponent to
submit 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 2024 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 the
nine-month period, or where the opposition is notified within the
opposition period but only verbally in a telephone call officially noted
in 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 be
received by the EPO before the expiry of the opposition period.
There is no legal obligation upon these offices or authorities to
forward 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; for
example, 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 not
an adequate description of the contested European patent, unless
the patent proprietor who alone is named possesses only one patent
or possesses several patents, the subject-matter of only one of which
fits the title of the invention given in the notice of opposition, being
clearly distinct from the subject-matter of the other patents which this
proprietor 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 Rule 76(2)(c)
the European patent is opposed;

Such a deficiency is present if it is not clear from the requisite

statement whether the opposition is directed against the entire
subject-matter of the patent or only a part of it, i.e. whether it is
directed 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 on Rule 76(2)(c)
which 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
Part D – Chapter IV-4 Guidelines for Examination in the EPO March 2024

which conditions for patentability (Art. 52 to 57) are considered not to

have been fulfilled.

Art. 99(1) (v) the notice of opposition is not adequately substantiated;

Rule 76(2)(c)
According to Rule 76(2)(c), a notice of opposition has to contain a
statement of the extent to which the European patent is opposed, the
grounds 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 a

difference between the grounds for opposition, i.e. the legal basis for
revocation 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 and
factual framework on which the opposition rests to pave the way for a
substantive assessment. As a consequence, the division and the
patent proprietor need to be able to understand, without further
investigation of their own, the issues that need to be decided. It is not
necessary for the admissibility of the opposition that a final decision
can be taken without further investigation. In other words, it is not a
question of admissibility but of substantive examination whether the
facts on which the opponent relies in comprehensibly explaining a
ground for opposition are or can be proven.

Where the grounds comprise an allegation of a prior use or an oral

disclosure prior to the date 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, by

whom") (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, the
opposition is admissible even if the facts, evidence and arguments in
support of the other grounds are submitted belatedly. Such belated
facts, evidence and arguments are in that event dealt with in
accordance with E-VI, 2. Owing to the length of the opposition period
(nine months), however, in order to expedite the opposition
March 2024 Guidelines for Examination in the EPO Part D – Chapter IV-5

proceedings, it is recommended that a single copy of any written

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 Rule 76(2)(c)
to supply such evidence as soon as possible and as a rule within two Rule 83
months. 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 a
late stage see E-VI, 2).

As far as the admissibility of an opposition is concerned, it is

immaterial whether and to what extent the facts, evidence and
arguments submitted in due time actually warrant revocation of the
contested 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 the
other hand a deficient submission may have been rejected as
inadmissible even though, if properly drafted, it could have
succeeded (see also T 222/85).

The substantiation of the grounds for opposition thus has to be

clearly distinguished from the actual assessment of the evidence,
which is part of the process of ascertaining whether the opposition is
well-founded in substance, i.e. proven. Subject to the admissibility of
the 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 the Art. 99(1)
person filing the opposition (Art. 99(1) and Rule 76(2)(a)). 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 and Rule 76(2)(a)
nationality of the opponent and the state in which the opponent's
residence or principal place of business is located in the prescribed
manner (see D-III, 6(i));

(ii) the number of the European patent against which the opposition is Rule 76(2)(b)
filed or the name of the patent proprietor or the title of the invention is
not indicated;

Each of the particulars listed in (ii) above must be supplied within the
time limit set by the formalities officer (see D-IV, 1.3.2), even if the
contested European patent may be identified by means of one of
these 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 the
Register, the formalities officer will inform the opponent of the patent
proprietor's correct name.
Part D – Chapter IV-6 Guidelines for Examination in the EPO March 2024

Rule 76(2)(d) (iii) where the opponent has appointed a representative, the name or the
address of the place of business of such representative is not
indicated 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 communicated
the appointment of a professional representative (Art. 134). In the
communication requesting remedy of such deficiency the opponent
must also be asked to arrange for the signature or approval of the
notice of opposition by the representative to be appointed; and

Rule 86 (v) the notice of opposition fails to satisfy further formal requirements
other than those mentioned in Rule 77(1). For instance, it may fail to
comply 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
Art. 14(4) If, in the course of the examination as described in D-IV, 1.2, formalities
Rule 2(1) officers note deficiencies which may still be remedied, and if there are no
Rule 3(1) deficiencies which may no longer be remedied (in the case of deficiencies
Rule 6(2) which may no longer be remedied see D-IV, 1.4), they will issue the
Rule 50(3) communications described in D-IV, 1.3.1 and/or 1.3.2 to the opponent, if
Rule 77(1) and (2) possible in a single communication.
Rule 152(1) to (3)

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 accordance
with D-IV, 1.2.1 and will state that the opposition will be deemed not to
have 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 accordance
with D-IV, 1.2.2.1 or 1.2.2.2 and will state that the opposition will be
rejected as inadmissible unless the deficiencies as described
in 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 in
good 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 2024 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 officially
notified to the opponent, since this is a statutory requirement. Should this
communication inadvertently be omitted notwithstanding deficiencies of this
type 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 no

longer 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 Rule 112(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 the
notice 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 such
application 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 to

have been filed will form part of the file and will thus be available for
inspection 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 accordance

with 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 notice
of 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 which
have not been communicated to the opponent(s) in accordance
with D-IV, 1.3.2 (because the opposition period has already expired), the
formalities officer must, by virtue of Art. 113(1), notify the opponent(s) of
these 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 successfully refute the opinion expressed by the formalities

officer on the existence of deficiencies under Rule 77(1) that may no
longer be corrected or

– has failed to remedy in good time deficiencies that may be corrected

(Rule 77(2)) and that were communicated to them pursuant
to D-IV, 1.3.2,
Part D – Chapter IV-8 Guidelines for Examination in the EPO March 2024

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 incumbent on the
examining or opposition divisions, OJ EPO 2014, A6, and
OJ EPO 2015, A104). As regards the form of the decision, see E-X, 2.3 and
E-X, 2.6.

However, if the opponent has requested oral proceedings or a further

admissible opposition is pending, 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 accordance
with Rule 77(3). However, for reasons of procedural economy, the
substantive examination is in fact initiated if at least one further admissible
opposition is pending. The patent proprietor may also comment on the
admissibility 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 to
whether the opposition is deemed to have been filed and is admissible are
also notified to the patent proprietors for information. They may file
observations on their own initiative concerning such a communication.

1.6 Subsequent procedure

For the subsequent procedure in the event of one or more oppositions with
no deficiencies see D-IV, 5.2.

2. Activity of the opposition division

Art. 19(2) 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 the
examination 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 no
further 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 2024 Guidelines for Examination in the EPO Part D – Chapter IV-9

In cases of insufficient substantiation, where the formalities officer is not

competent to decide on the inadmissibility (see D-IV, 1.2.2.1(v)), the
opposition division will either:

(i) issue the decision rejecting the opposition as inadmissible (when the
formalities officer has already informed the opponent of this
deficiency 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 the

same time request them to submit observations.

If the opponent does not successfully refute the opinion expressed by the
opposition division on the existence of these deficiencies which may no
longer be corrected, the opposition division will reject the notice of
opposition as inadmissible, possibly after having held oral proceedings. As
regards the form 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 in
accordance 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 normally
be taken at the end of the procedure together with the decision on the
admissible oppositions.

For the possibility of appeal by the opponent and other possible means of
redress, 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 the
European 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 no
further admissible opposition (see T 925/91). Opposition proceedings are
terminated if all notices of opposition filed against a European patent have
been 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

The admissibility of the opposition must be examined ex officio in every
phase of the proceedings. In particular, the opposition division examines
whether the notice of opposition is adequately substantiated
(see D-IV, 1.2.2.1(v)).
Part D – Chapter IV-10 Guidelines for Examination in the EPO March 2024

Since the admissibility of an opposition is always open to question by the

patent proprietor, no separate communication that the opposition is
admissible 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
regarded as inadmissible, but of which the opponent has not been informed
by 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 the
meaning 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 successfully refute the opinion expressed by the
opposition division on the existence of these deficiencies which may no
longer be corrected or fails to remedy in good time deficiencies which may
be corrected, the opposition division will reject the notice of opposition as
inadmissible, possibly after having held oral proceedings. As regards the
form 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.

5.2 Invitation to the patent proprietor to submit comments and

communication of opposition to the other parties concerned by the
formalities officer
Rule 79(1) and (2) If formalities officers consider that no further ex-officio objection to the
admissibility of each or the only opposition remains, they will invite the
patent proprietor, immediately after expiry of the opposition period or the
period 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 the
presentation 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 four-
month 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 the
notice from the EPO dated 31 May 2016, OJ EPO 2016, A42). The above
procedure also applies to oppositions where a decision to the effect that
they 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 will
communicate them to the other opponent(s) at the same time as the
communication 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 via 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 in
March 2024 Guidelines for Examination in the EPO Part D – Chapter IV-11

such a way as to allow the European patent, where appropriate, to be

maintained without further delay in the amended version.

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 more
convenient in certain circumstances to determine first the form of the
claims, leaving purely consequential amendments in the description to be
dealt with later (see D-V, 5).

Care must be taken to ensure that any amendments do not offend against
Art. 123(2) and (3) (see D-V, 6, 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 of Art. 82,
see D-V, 2.2).

Amendments of the description in opposition should be carried out by

submitting amended paragraphs replacing specific numbered paragraphs
of the B publication of the patent. This allows the opposition division and
the opponents to verify the amendments efficiently. For reasons of
procedural economy, the filing of a completely retyped description should
be avoided (see H-III, 2.3). See also H-III, 2.2 to 2.4 for the form of
amended documents.

Proprietors' observations, and any amendments they make, are

communicated 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 the

other parties
The formalities officer will, at any stage in the procedure, immediately Rule 79(3)
communicate the observations of any of the parties to the other parties for Rule 81(2)
information. However, copies of documents supporting the parties'
submissions, which are available for inspection via the Register, will no
longer be transmitted (see also D-IV, 5.2, A-XI, 2 and the notice from the
EPO dated 28 August 2020, OJ EPO 2020, A106).

If the opposition division considers that observations are called for in the
course 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, the

patent 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) because
of deficiencies specified by the patent proprietor himself, the opponent
concerned must be given the opportunity to submit comments within a
period fixed by the formalities officer (normally two months).
Part D – Chapter IV-12 Guidelines for Examination in the EPO March 2024

If the opposition division concludes that the opposition is inadmissible, it

must as a rule first take a reasoned decision, possibly after having held oral
proceedings. This decision is appealable. If, on the other hand, on the basis
of another – admissible – opposition against the same patent, a final
decision with regard to all substantive issues can be taken, the decision on
admissibility is to be taken together with this final decision.

If, despite the observations of the patent proprietor, the opposition division
concludes that the opposition is admissible, the decision on admissibility is
normally to be taken together with the final decision, especially where at
least 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.

An opponent whose opposition has been finally rejected as inadmissible is

no longer a party to the subsequent proceedings once this decision
becomes final.

5.6 Examination of the admissibility of an intervention and

preparations in the event of an intervention
Rule 79(4) When examining whether an intervention is admissible, the formalities
officer and the opposition division will proceed as for the examination as to
admissibility 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.

Rule 86 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 an

advanced stage, the formalities officer will inform third parties who have
intervened 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 the
communications from the opposition division and the observations of the
parties under Rule 81(2), for the preceding period. If this is the case, the
formalities officer will send them with the relevant communications from the
opposition division or the formalities officer to the intervening third party.
March 2024 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 Art. 101(1)
completed pursuant to Rule 79, the opposition division examines whether
the grounds for opposition (see D-III, 5) laid down in Art. 100 prejudice the
maintenance of the European patent. The examination may also begin if a
single admissible opposition has been withdrawn in the interim
(see D-VII, 5.3). If the opponent has died or is legally incapacitated, the
examination may begin even without the participation of the heirs or legal
representatives (see D-VII, 5.2).

2. 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 of
the patent, the opposition division has to limit its examination to the part
opposed. In particular, the opposition division cannot decide on the
revocation of the patent beyond the extent to which it was opposed in the
notice of opposition. However, if the opposition is directed only to an
independent claim, the dependent claims are considered to be implicitly
covered by the extent 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, for
example, the opposition is filed only on the grounds that the subject-matter
of 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 patent
pursuant 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 important

prior art for the purposes of elucidating the technical problem set out in the
description 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 the
closest prior art but whose contents are nevertheless important for
understanding the problem underlying the invention within the meaning of
Rule 42(1)(c) EPC (T 536/88, in particular point 2.1).
Part D – Chapter V-2 Guidelines for Examination in the EPO March 2024

Rule 81(1) Once proceedings for examining the opposition(s) have been initiated
Art. 114 because an admissible opposition has been filed (although it may have
been withdrawn in the interim), there may be reason to believe that other
grounds exist which, prima facie, in whole or in part prejudice the
maintenance 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 the
search report or the examination procedure, the personal knowledge of the
division's members or observations presented by third parties pursuant to
Art. 115 (see also E-VI, 3). Such grounds may also have been put forward
in another opposition which has been rejected as inadmissible, or in
another opposition 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),
such prejudicial 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, take the interests of procedural expediency into account
(see E-VI, 1.2). If the decision is to be based on grounds to be taken into
account pursuant to Art. 114(1) or Rule 81(1), the parties must be given the
opportunity to comment (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 to
establish the facts of its own motion, the patent proprietor is given the
benefit of the doubt (see T 219/83, Headnote I).

For example, if the opponent raises an objection under Art. 100(b) and
provides experimental evidence that e.g. the claimed process cannot be
realised, and the patent proprietor replies that the process can be carried
out without undue burden by the skilled person taking common general
knowledge 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 if
priority 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 patent
in amended form, there will be no further examination as to whether the
remaining subject-matter of the patent contains a single invention or more
than one. Any lack of unity must be accepted (see G 1/91).
March 2024 Guidelines for Examination in the EPO Part D – Chapter V-3

Similarly, where amendments occasioned by a ground for opposition

(see H-II, 3.1) contain multiple independent claims in the same category
and are still covered by the independent claim as granted, compliance with
Rule 43(2) will not be examined further.

The grounds for opposition laid down in Art. 100 are examined in greater
detail below.

3. Non-patentability pursuant to Art. 52 to 57

The same substantive requirements apply in the opposition procedure Art. 100(a)
regarding 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 other
way" (see Art. 54(2) and G-IV, 7).

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

The skilled person wishing to implement the claimed invention reads the
claims in a technically sensible manner. An objection of insufficient
disclosure of the invention is therefore not to be based on embodiments
that 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 is

essential for performance of the invention is missing from the claim but is
disclosed 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 and support by the description

Clarity is not a ground for opposition. Opposition proceedings are not Art. 100
designed as a procedure for generally amending (or revoking) patents that
Part D – Chapter V-4 Guidelines for Examination in the EPO March 2024

contain any kind of defect, and therefore opposition proceedings are not to
be regarded as a continuation of examination proceedings. As a general
rule 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).

Art. 101(3) 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, and
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 the
claims 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 dependent
claims or the deletion of a dependent claim leaving the independent claims
and other dependent claims intact does not permit examination of the
remaining claims for compliance with Art. 84.

A claim amended during opposition proceedings is not subject to

examination for compliance with Art. 84 if it results from

(i) inserting a complete dependent claim as granted into an independent

claim;

(ii) combining one of several alternative embodiments of the dependent

claim 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 of
compliance 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 an

independent 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.

Correspondingly, the description of the patent may be examined for

compliance with the requirements of Art. 84 only when, and then only to the
extent that, an amendment of the patent introduces non-compliance with
Art. 84. In particular, inconsistencies between the description and the
March 2024 Guidelines for Examination in the EPO Part D – Chapter V-5

claims resulting from amendments during opposition proceedings and

casting doubt on the subject-matter for which protection is sought must be
avoided (see F-IV, 4.3 for examination of inconsistencies between the
description and the claims in general).

Other amendments of the description not resulting from amendments of the

claims during opposition proceedings may be allowed under the conditions
laid down in H-II, 3.2.

6. Subject-matter of the European patent extending beyond the

original disclosure

6.1 Basis of this ground for opposition

This ground for opposition under Art. 100(c) refers back to Art. 123(2) and Art. 100(c)
stipulates 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)), two
criteria apply: the subject-matter must not extend beyond the content of the
earlier application as filed (Art. 76(1)), and it must not extend beyond the
content 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
of a patent granted on an application filed in a language other than an
official language of the EPO either in accordance with Art. 14(2) or in
accordance 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 the
application 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 a
European 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.
March 2024 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 first member (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 Art. 114(2)
due and swift conduct of the proceedings, in particular by submitting all Rule 76(2)(c)
relevant facts, evidence, arguments and requests as early and completely Rule 80
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 the
subject 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.

If the opposition division considers it expedient, or if any party requests oral Art. 116
proceedings, 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 make
submissions in order to clarify outstanding questions. Members of the
opposition division may put questions to the parties.

In special, less common cases it will occasionally prove necessary in Rules 117 to 120
opposition proceedings for oral evidence to be taken by the opposition
division as part of oral proceedings or for the conservation of evidence, or
by the first member 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 of residence of the
person to be heard. A member of the opposition division may, at the
request of the opposition division, attend such court hearings
(see E-IV, 1.3).

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, last
paragraph). In view of the specialised knowledge of the members of the
Part D – Chapter VI-2 Guidelines for Examination in the EPO March 2024

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 or

approved by the patent proprietor

2.1 Basis for the examination

Art. 113(2) If the patent proprietors submit amendments to the description, claims or
drawings 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 to
the rest of the opposition procedure. (As regards the possibility of
amending 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 in
which the patent was granted and no amended text is submitted, the patent
must be revoked. This also applies when the patent proprietor requests that
the patent be revoked.

3. Invitation to file observations

3.1 Opposition division's communications

Art. 101(1) In examining the opposition, the opposition division will invite the parties, as
Rule 81(2) often as is necessary, to clarify the substance of the case, to file
observations on communications from another party or issued by itself
(see E-II, 1) and, where appropriate, to adduce evidence in respect of
matters 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).

Rule 81(2) Communications from the opposition division and all replies thereto must
be communicated to all parties.

3.2 Summons to oral proceedings

Art. 116(1) If oral proceedings have to be arranged, the parties must be summoned to
Rule 115(1) them as quickly as possible at reasonable notice (see E-III, 6). If the first
action of the opposition division is to summon the parties, the first
substantive communication of the opposition division under Art. 101(1) is
annexed to the summons to oral proceedings. For the form of oral
proceedings, see E-III, 5, E-III, 1.2 and E-III, 1.3.

Rule 116(1) Together with the summons, the opposition division will draw attention to
and 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 is
appropriate to refer to that communication. Normally, the annexed
March 2024 Guidelines for Examination in the EPO 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 in
particular on amendments filed by the patent proprietor. At the same time, a
date will be fixed up to which written submissions may be made or
amendments may be filed. Normally this date will be two months before the
date 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 not

constitute decisions within the meaning of Art. 106(1) and can thus only be
appealed together with the final decision (see T 1954/14) unless either of
them 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; reasoned

statement
Where necessary, any communication to the patent proprietor must contain Rule 81(3)
a reasoned statement. This also applies to any communication to other
parties which is communicated to the proprietor of the patent for information
only. A reasoned statement will usually not be required if the
communication concerns only matters relating to form or if it contains no
more than self-explanatory proposals. Where appropriate, all the grounds
against the maintenance of the European patent are to be given in the
communication.

4.2 Invitation to file amended documents

If the opposition division considers that the European patent cannot be Rule 81(2) and (3)
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 the
time limit here, see E-VIII, 1.2. Where necessary, the description adjusted
in line with the new claims (see D-IV, 5.3 and D-V, 5) 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 the grounds, evidence and arguments on file (see
also E-X, 1.1).

Proposals for amendment filed at a late stage in the proceedings may be

disregarded (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 and
take it into account in its subsequent decision (see C-IV, 7.4). 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 application by the
Part D – Chapter VI-4 Guidelines for Examination in the EPO March 2024

search division, by the examining division and generally by the

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 a
case might arise, for example, if in the opposition the main subject covered
by the patent shifts to elements of a dependent claim which were originally
of subsidiary importance, to elements which were previously not set out in
the claims, but only in the description, to individual features of a
combination, or to sub-combinations, and there are grounds for believing
that 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.

6. Examination of the opposition during oral proceedings

For details regarding the examination shortly before and during oral
proceedings and the conduct thereof, see E-III, 8.

7. Preparation of the decision

7.1 General remarks

Art. 116(1) If the opposition division does not consider it expedient to arrange for oral
Rule 117 proceedings of its own motion (see E-III, 4 and below) or for the taking of
evidence even where the latter is requested (see E-IV), and if no
admissible 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 oral
proceedings 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 of

evidence, 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 in

amended form

7.2.1 Procedural requirements

Art. 113 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, the
necessary opportunity to comment on the new text on the basis of which
the opposition division intends to maintain the patent is given to the
March 2024 Guidelines for Examination in the EPO Part D – Chapter VI-5

opponent when a communication is issued to the parties. Once these

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 to
comment on it. An interlocutory decision can then be delivered.

If these requirements have still not been met and no oral proceedings are
being 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 need

not 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 oral
proceedings, see E-III, 8.11 and E-III, 8.11.1).

The patent proprietor's approval can also be obtained through a Rule 82(1)
communication 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 no
objections are filed to the text thus notified, the patent proprietor is
considered 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 the
patent proprietor, on which the opponent has been able to comment, still
requires amendments. However, these must not go beyond such editorial
changes 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 the
patent 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 is

intended to maintain the patent, the opposition division will continue
examining the opposition if it considers that the EPC prejudices the
maintenance of the patent in the text initially envisaged.
Part D – Chapter VI-6 Guidelines for Examination in the EPO March 2024

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 the
basis of the text submitted or approved by the patent proprietor, and the
opponent has had sufficient opportunity to comment on this text – either in
writing or during oral proceedings – as well as on the reasons decisive to
the 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 the
patent 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 the
main request (and any higher-ranking auxiliary request) does not meet the
requirements of the EPC (see E-X, 2.9, H-III, 3.4.1 and H-III, 3.4.2).

A separate appeal under Art. 106(2) is allowed against this decision, which
must be reasoned having regard to the grounds for opposition maintained
by the opponent or taken up by the opposition division. The decision is
delivered 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, the
decision is fairly brief, merely noting that in the light of the amended text the
opponent no longer maintains the original grounds for opposition. If this
decision is not contested, the ruling enshrined in it becomes final and as a
result 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 in
appeal proceedings. It nevertheless qualifies as a grant decision in the
sense of G 1/10 and corrections can only be requested in the narrow ambit
provided for in Rule 140 (see H-VI, 3.1).

7.2.3 Request for publishing fee, translations and a formally

compliant version of amended text passages
Rule 82(2) 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 specification
of 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 decision
of the opposition division under Art. 101(3)(a) and 106(2) or the
board of appeal decision under Art. 111(2) has been based on
documents not complying with Rule 50(1) (see E-III, 8.7).
March 2024 Guidelines for Examination in the EPO Part D – Chapter VI-7

If the European patent in the amended form contains different claims for
different contracting states, a translation of all sets of claims – in the text
communicated to the patent proprietor – into all official languages other
than the language of the proceedings must be filed.

If the request under the first paragraph above is not complied with "in due Rule 82(2) and
time", the acts may still be validly performed within two months of (3)
notification of a communication pointing out the failure to observe the time Art. 2(1), item 9,
limit, provided that within this two-month period the prescribed surcharge is RFees
paid. If any of the acts is not performed within the period of grace, the
formalities officer will issue a decision for revocation of the patent in
accordance with Rule 82(3).

8. Request to stay opposition proceedings

If a party requests a stay 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 the stay, the opposition division
will take a decision on the request.

Reasons for a stay or interruption of proceedings are set out in E-VII, 1 to

3.
March 2024 Guidelines for Examination in the EPO Part D – Chapter VII-1

Chapter VII – Details and special features of the

proceedings
1. Sequence of proceedings

1.1 Basic principle

Examination of the admissibility of the opposition and preparation of the
examination of the opposition will be commenced immediately after the
notice 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 a
time 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 not
affect 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 a

considerably 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 the Unified Patent
Court or a national court of a contracting state, or if the EPO is
informed by the Unified Patent Court, a national court or competent
authority of a contracting state that infringement actions are pending
(see the notice from the EPO dated 24 April 2023, Supplementary
publication 3, OJ EPO 2023, 9; see E-VIII, 5);

(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 Rule 83
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, the
Part D – Chapter VII-2 Guidelines for Examination in the EPO March 2024

opposition division may decide not to take any arguments based on them
into account.

In implementing this provision, the desired aim of speeding up the

procedure 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 of
the 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 be
submitted 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 a
translation 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 the
declaration 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 have
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). The patent proprietor will be
notified of this loss of rights (see A-III, 6.11). As a means of redress, the
patent 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. Unity of the European patent

3.1 Basic principle

Art. 118 If the patent proprietors are not the same for different designated
contracting 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 to
Art. 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
March 2024 Guidelines for Examination in the EPO Part D – Chapter VII-3

opposition proceedings may lead to different conclusions, e.g. as regards

the text of the European patent or the scope of protection.

4. 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, to Rule 78(1)
the EPO during opposition proceedings or during the opposition period that
they have opened proceedings against the patent proprietor for the purpose
of 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 deemed
the 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 the

European 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 which
takes 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 of
ordering 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 stay

of the proceedings takes effect (see Point 11.1(c) AAD, Annex A.1 to the
ADA, Supplementary publication 3, OJ EPO 2022, page 35). If the
automatic debiting procedure is to be used again after resumption of the
proceedings, a new automatic debit order is to be filed.
Part D – Chapter VII-4 Guidelines for Examination in the EPO March 2024

4.2 Continuation of proceedings

The date of the continuation of the proceedings and the legal basis for their
continuation are to be communicated to the parties to the opposition
proceedings.

4.2.1 Continuation after a final decision

Rule 14(2) Proceedings are resumed when evidence is provided that a final decision
Rule 78(1) within the meaning of Art. 61(1) has been taken. If the decision is in favour
of the third party, the proceedings may not be resumed earlier than three
months after the decision has become final, unless the third-party requests
resumption.

4.2.2 Continuation regardless of the stage reached in national

proceedings
Rule 14(3) When giving a decision on the stay of proceedings or thereafter, the Legal
Rule 78(1) 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 the

Legal 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 on
each 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 of
first instance proceedings before national courts. Likewise, it will be
considered whether delaying tactics are being employed by the third party.

4.3 Interruption of time limits

Rule 14(4) The time limits in force at the date of stay are interrupted by the stay of
Rule 78(1) proceedings. 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 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 7 November 2023. Under Rule 126(2) and
Rule 131(2), this communication is deemed delivered on the date it bears,
i.e. on 7 November 2023 (OJ EPO 2023, A29). 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 8 November
2023, and it ends on 7 February 2024.

If proceedings are stayed under Rule 78(1) by the Legal Division on

30 November 2023, the three-month period has elapsed from 8 November
2023 to 29 November 2023 before the event of the staying of the
proceedings, i.e. 22 days have already passed and the period remaining is
eight days and two months. Since the remaining period is longer than
two months, under Rule 78(1) and Rule 14(4) it will run after the resumption
of the proceedings.
March 2024 Guidelines for Examination in the EPO Part D – Chapter VII-5

Hence, if the proceedings are resumed by the Legal Division on

23 February 2024, the period for paying the publication fee and filing the
translation of the claims runs until 2 May 2024 for the following reasons:

(i) the day of resumption of the proceedings by the Legal Division

(23 February 2024) 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, eight days from and including 23 February 2024
results in 1 March 2024, and the addition of another two months
results in the remaining period expiring on 1 May 2024.

(iii) Since Rule 134(1) applies also to the remaining period and since the
1 May 2024 no mail is delivered in Munich and Berlin (public holiday),
the time limit is extended until 2 May 2024.

4.4 Department responsible

The Legal Division is responsible for the procedure where the patent Art. 20
proprietor is not entitled (see the decision of the President of the EPO
dated 21 November 2013, OJ EPO 2013, 600).

5. Continuation of the opposition proceedings in the cases covered

by 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 the Rule 84(1)
designated states, the opposition proceedings must be continued at the
request 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 revoked
patent 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 the
designated states all rights conferred by the patent with ab initio and
universal effect, or if no request for continuation has been received within
the time limit, the opposition proceedings will be closed. The decision to
close the proceedings will be communicated to the parties.

A statement by the patent proprietors making it unambiguously clear that

they no longer wish their patent to be maintained is considered to be a
request 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.
Part D – Chapter VII-6 Guidelines for Examination in the EPO March 2024

5.2 Continuation on the death or legal incapacity of the opponent

Rule 84(2) 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, for
example if the legal proceedings in connection with the will or the
appointment 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 who
have filed opposition are deceased or legally incapacitated.

The opposition division will continue the proceedings if, for instance, the
patent 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 to
undertake extensive investigations (see T 197/88).

The patent proprietor and any other parties are to be informed that the
proceedings will be continued. Otherwise the proceedings are closed and
the decision to close the proceedings is communicated to the parties.

5.3 Continuation after the opposition has been withdrawn

Rule 84(2) 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 or
closed.

6. Intervention of the assumed infringer

Art. 105 Assumed infringers of a patent (see D-I, 5) may file notice of intervention in
Rule 89 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 the
patent. 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 the
period for filing an appeal only if a party to the proceedings in which the
decision was given files an appeal pursuant to Art. 107; otherwise the
decision 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 of
first-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 2024 Guidelines for Examination in the EPO Part D – Chapter VII-7

the opposition division must ensure that the intervention does not delay the
proceedings.

If the notice of intervention is filed at a late stage of the proceedings, for Rule 79(4)
example when oral proceedings have already been scheduled, the
opposition division may dispense with issuing communications under
Rule 79(1) to Rule 79(3). The introduction of a new ground for opposition at
such a late stage may lead to a postponement of the date set for oral
proceedings.

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 Rule 89(2)
contain:

(i) a statement of the grounds for intervention and corresponding Art. 105(1)
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 the
preservation of evidence to enable a party to initiate separate
infringement proceedings are not sufficient in this regard
(see T 439/17).

(ii) the name, address and nationality of the assumed infringer and the Rule 76(2)(a)
state in which the assumed infringer's residence or principal place of Rule 41(2)(c)
business 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 well
as companies 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
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 for
correspondence other than their residence. The address for
correspondence 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 number be indicated
(see D-IV, 1.2.2.2(i) and 1.4.2);

(iii) the number of the European patent at issue in the opposition Rule 76(2)(b)
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);

(iv) a statement of the extent to which the European patent at issue is Rule 76(1)
opposed by way of intervention and of the grounds on which the Rule 76(2)(c)
Part D – Chapter VII-8 Guidelines for Examination in the EPO March 2024

opposition by way of intervention is based, as well as an indication of

the facts and evidence presented in support of these grounds,
together with a statement of reasons, 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) if the assumed infringer has appointed a representative, the
representative's name and address of place of business in
accordance with subparagraph (ii) as set out above
(see D-IV, 1.2.2.2(iii) and 1.4.2).

Rule 77(1) D-IV, 1 sets out further details and explains how to deal with the
intervention if one of these requirements is not fulfilled.

7. Publication of a new specification of the patent

Art. 103 If a European patent is maintained in an amended form, the EPO must, as
soon as possible after it publishes the mention of the opposition decision,
publish a new specification of the European patent containing the
description, the claims and any drawings, in the amended form.

Rule 87 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 to
Art. 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 the
Convention).

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 a
filing date or earliest priority date of 29 January 2011 or later (see G 2/08,
OJ EPO 2010, 514 and G-VI, 6.1).

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 2024 Guidelines for Examination in the EPO Part D – Chapter VII-9

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 the
treatment 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 date
when 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 treated

under 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 of
patent 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 the
treatment 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 the
novelty 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 date
of 16.06.2006 and validly designating FR, DE and GB. Oral proceedings in
this 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 this
case, 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 not
for the designations IT and ES.
Part D – Chapter VII-10 Guidelines for Examination in the EPO March 2024

Note that if EP1 had in this case been filed on 13.12.2007, Art. 54(4) and
Rule 23a EPC 1973 would no longer be applicable when assessing novelty
under Art. 54(3) EPC. Consequently, EP2 would be prior art against the
novelty of EP1 as a whole, regardless of any common designations.
March 2024 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 the
European 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, the
proceedings 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 Art. 101(2)
opposition as set out in Art. 100 prejudices the maintenance of the Art. 101(3)(b)
European 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 meet
the requirements of the Convention, it will revoke the patent under
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 due Rule 82(3)
time to:

(i) pay the prescribed fee for the printing of a new specification of the
European patent,

(ii) file a translation of the amended claims in the two official languages
of 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.

Part D – Chapter VIII-2 Guidelines for Examination in the EPO March 2024

1.2.3 Revocation for failure to notify the appointment of a new

representative
Rule 142(3)(a) If opposition proceedings are interrupted according to Rule 142(1)(c) and
the 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 a
request for re-establishment of rights has been filed, in which case a
decision 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 the
patent 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 (or

abandonment or renunciation) of the patent, this is interpreted as
equivalent to a request that the patent be revoked (see T 237/86). If the
request of the patent proprietors is not unambiguous, they are given the
opportunity to request that the patent be revoked or to declare that they no
longer approve of the patent being maintained as granted. This results in
the patent being revoked.

1.3 Rejection of the opposition

Art. 101(2) 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 Maintenance of the European patent as amended

1.4.1 Taking of a final decision

Art. 101(3)(a) If the opposition division is of the opinion that, taking into consideration the
Rule 82(1) and (2) amendments made by the patent proprietor during the opposition
proceedings, the patent and the invention to which it relates meet the
requirements of the EPC, it will issue an interlocutory decision to maintain
the European patent as amended.

The procedure specified in D-VI, 7.2.1 to 7.2.3 will precede the final
decision.

1.4.2 Statement in the decision of the amended form of the European

patent
Rule 82(4) The decision must state which text of the European patent forms the basis
for maintaining it.
March 2024 Guidelines for Examination in the EPO Part D – Chapter VIII-3

2. 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. Rule 112(2)

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.
March 2024 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. Art. 104(1)
However, an opposition division may, for reasons of equity, order a different Rule 88
apportionment of such costs, which may have been incurred during the
taking of evidence, in oral proceedings or under other circumstances.

The phrase "taking of evidence" refers generally to the receiving of

evidence 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. Rule 88(1)
This apportionment will form part of the main decision and will be
incorporated in the operative part of the decision.

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 to
another 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 in
cases 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 been
made.

In the absence of an express decision on the apportionment of costs, each

of 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 to Rule 88(1)
assure proper protection of the rights involved.

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 oral

proceedings or the taking of evidence;
Part D – Chapter IX-2 Guidelines for Examination in the EPO March 2024

(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 the
late 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 an
order to apportion costs when the costs arise in whole or in part as a result
of conduct of one party which is not in keeping with the care required to
assure proper protection of the rights involved, in other words when the
costs are culpably incurred as a result of irresponsible or even malicious
actions. Parties may of course defend their rights or interests (e.g. the
proprietors defend their patent) by any legally admissible means within the
framework 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 legal

means 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 to
a sudden serious illness) do in general not lead to the apportionment of
costs.

The following are examples where the principle of equity may be applied:

The costs incurred by the opponent in preparing oral proceedings which

have been appointed may be charged to patent proprietors if the latter
surrender the patent just before the date appointed for the oral
proceedings, 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 their
irresponsible conduct.

If an aspect of the state of the art is adduced as an argument at a late

stage 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, the
additional costs of further oral proceedings unnecessarily incurred by the
other 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 of

the proceedings without any good reason and if, as a consequence,
March 2024 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 Art. 104(2)
paid to the beneficiary at the request of at least one party. The request from Rule 88(2)
a party to the proceedings to fix the costs is admissible only if the decision
in which the apportionment of costs was ordered has become final.

A list of costs, with supporting evidence in respect of each amount involved, Rule 88(2)
must be attached to the request. Costs may be fixed once their credibility is
established.

The parties will be notified of the costs as fixed by the formalities officer Art. 119
acting for the opposition division.

For 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, Rule 88(3)
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.

The opposition division will take a decision on the request without oral Rule 88(4)
proceedings.

This final decision by the opposition division can be appealed by each party Rule 97(2)
adversely affected. The appeal will only be admissible if the amount fixed
exceeds the appeal fee.

3. Enforcement of the fixing of costs

Any final decision of the EPO fixing the amount of costs must be dealt with, Art. 104(3)
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.
March 2024 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 parte
procedures 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 patent
in 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 Rule 91

and revocation. However, certain aspects of this procedure are entrusted to
formalities 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. Examination for deficiencies in the request

2.1 Deficiencies which lead to the request being deemed not to have
been filed
On receipt of a request for revocation or limitation of a patent, the Art. 105a
formalities officer 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), the
translation 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 have
been filed. This finding is notified to the requester (Art. 119), and the fee is
refunded.

Otherwise, the request is considered to have been filed, and the

limitation/revocation procedure commences.
Part D – Chapter X-2 Guidelines for Examination in the EPO March 2024

2.2 Deficiencies which, if not remedied, lead to the request being

rejected as inadmissible
Rule 92 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 by

Rule 92(2)(a), referring to Rule 41(2)(c)

(iii) the request indicates in which contracting states the requester is the
patent 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 those
contracting 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 and
addresses of the other patent proprietors, and evidence of
entitlement to act on their behalf (Rule 92(2)(c)); due to the
retroactive effect of a limitation/revocation (Art. 68), such evidence is
required also in the case where the patent has lapsed in one or more
of the contracting states referred to under (v) in the meantime. Note
that in the case of joint patent proprietors, whether for the same or
different contracting states, the requirements of Rule 151 for
appointment 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 version
of the amended claims (and of the description and drawings where
applicable) (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 to
correct 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.

3. Decision on request for revocation

Art. 105b(2) If the request is for revocation, and is admissible, the examining division will
Rule 95 revoke the patent and communicate this to the requester (Art. 105b(2) and
Rule 95(1)). The decision takes effect on the date on which it is published
March 2024 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 the
decision 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 all
contracting states in respect of which the patent was granted. It is not
possible for the patent to be revoked only for some contracting states, and
not 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 Rule 91
forwarded to the examining division, as the department responsible for the
examination of the request.

4.2 Basis for the examination

The basis for the examination is the patent as granted or amended in Rule 90
opposition or limitation proceedings (Rule 90). In cases in which there have
already 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.

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 Rule 95(2)
division is required to decide only whether the amended claims of the
request constitute a limitation with respect to the claims as granted or
amended (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 the

extent of protection conferred by the claims. Mere clarifications or changes
made to protect a different subject ("aliud") are not to be considered as
limitations.

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 (for
example tidying up unclear claims, making amendments to improve the
patent or cosmetic changes). Likewise, adding dependent claims in
limitation 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)
Part D – Chapter X-4 Guidelines for Examination in the EPO March 2024

(see also H-V, 7, for Art. 123(3) in the case of a change of category of a
claim).

Art. 69(1) For interpretation of Art. 84 and Art. 123(2), see F-IV, 4 and H-IV, 5.4. The
description and drawings are used to interpret the claims in accordance
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 the
request is allowable, then the next stage of the procedure – the
establishment 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 oral
proceedings according to Art. 116 will be granted if the division does not
consider the request for limitation to be allowable. No further amendments
may be submitted during oral proceedings if the opportunity to make
amendments has already been taken.

4.5 Third-party observations during the examination

Art. 115 Art. 115 explicitly covers all proceedings before the EPO, not just pre-grant
Rule 114 proceedings. Accordingly, its provisions also apply in principle to revocation
and limitation proceedings. Patentability under Art. 115 is to be interpreted
March 2024 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 to
address 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 for
limitation.

5. Formal procedure for limitation when the request is allowable

If the request for limitation is allowable, then according to Rule 95(3) the Rule 95(3)
examining division must communicate this to the requesters and invite Art. 2(1), item 8 and
them to pay the prescribed fee and file translations of the amended claims item 9, RFees
into the other two official languages within a period of three months.

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 from
the communication of the intention to grant during examination proceedings
under Rule 71(3). During limitation, the text filed by the requester is
deemed to be approved, whereas at this stage in examination the text is a
version 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 the
communication under Rule 95(3), make amendments of its own motion to
the claims of a request for limitation in order to render them allowable or
adapt 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 have
an 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, Art. 105b(2) and (3)
the examining division will decide to limit the patent (Art. 105b(2) and
Rule 95(3), last sentence). This takes effect on the date on which the
mention of the decision is published in the Bulletin.

As soon as possible after this, the amended specification will be published Art. 105c
by the EPO. The form of publication of the amended patent specification is
defined in Rule 96, Rule 73(2) and (3) and Rule 74. The procedure for this
is the same as in opposition proceedings.

As for revocation (see D-X, 3), the effect of the decision to limit the patent is Art. 68
that the patent is limited ab initio.

6. Rejection of the request

If:

(i) 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 2024

(ii) the requester responds in due time, but the request is still not
allowable; 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), last
sentence 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) In case (ii), the decision is a reasoned decision taken by the examining
Art. 106(1) division and is subject to appeal.

7. Relation to opposition proceedings

7.1 Precedence of opposition proceedings

Rule 93(1) The case in which opposition proceedings are already pending when the
request 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 or
limitation proceedings are pending, the procedure depends on whether the
pending proceedings relate to a request for revocation or for limitation.

Rule 93(2) According to Rule 93(2), if the pending proceedings relate to a request for
limitation, 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 the

requester (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 to
opposition only if the request for revocation is deemed not to have been
filed, is rejected as inadmissible or is withdrawn. Otherwise, if the patent is
revoked, 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 such
cases 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 nine-
month period to formulate the opposition for the patent as limited.
March 2024 Guidelines for Examination in the EPO Part D – Chapter X-7

8. Legal status of decisions

The decisions rejecting the request for limitation or revocation as either Art. 106(1)
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).

9. Withdrawal of the request

In the absence of any provision to the contrary and in accordance with
normal legal principles, the requester may withdraw the request for
limitation 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 the Art. 105b(3)
patent 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 determine
that the limitation is in other ways different for different contracting states.
Such situations could arise in two different sets of circumstances.

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 with
national prior rights. Such different sets of claims can be allowed, provided
that the substantive requirements are met for all sets for which the
requester is seeking an amendment.

It follows from Rule 138 that a prerequisite for the introduction of different Rule 138
claims for different contracting states during the limitation procedure is that
requesters inform the EPO of the existence of the national prior rights when
filing 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 be
refused under Art. 105b(3) and Rule 138.

For applications filed on or after 13.12.2007, different sets of claims can no Art. 54(3)
longer be justified on the basis of prior art under Art. 54(3) (for transitional
provisions, however, see D-VII, 8).

10.2 Limitation is different for different contracting states because the

claims 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 for
patents granted in respect of European patent applications pending at that
time), 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 2024

The requester might wish to apply a limitation already introduced for one or
more contracting states to the other contracting states, or to bring the
claims into line with each other for a different reason. If this results in a
single 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 paragraph
and paragraph D-X, 10.1 coexist in a single request.

11. Multiple requests

Rule 90 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 2024 Guidelines for Examination in the EPO Part E – Contents a

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 Electronic notification II-2

2.4 Notification by postal services II-3

2.5 Notification to representatives II-3

2.6 Irregularities in the notification II-3

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

premises III-2

1.4 Request to hold on-site oral proceedings at a

particular 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 is
deemed not to have been filed III-3

3. Request for further oral proceedings III-3

4. Oral proceedings at the instance of the EPO III-4

Part E – Contents b Guidelines for Examination in the EPO March 2024

5. Preparation of oral proceedings III-4

5.1 When can a summons to oral proceedings be issued

in substantive examination? III-4

6. Summons to oral proceedings III-4

7. Change of date, cancellation or maintenance of

oral proceedings III-6

7.1 Changing the date of oral proceedings III-6

7.1.1 Requests to change the date of oral proceedings III-6
7.1.2 Change of date of oral proceedings at the instigation
of the division III-7
7.1.3 Change of date of oral proceedings – defined notice
period III-7

7.2 Cancellation or maintenance of oral proceedings III-8

7.2.1 General III-8
7.2.2 Withdrawal of the request for oral proceedings III-8

8. Conduct of oral proceedings III-8

8.1 Admission of the public to proceedings III-8

8.2 Conduct of oral proceedings III-9

8.2.1 Participation of parties and their representatives from
different locations III-9
8.2.2 Participation of members of the division from different
locations III-9
8.2.3 Technical problems III-10
8.2.4 Recording III-10

8.3 Opening of oral proceedings; non-appearance of a

party III-10
8.3.1 Checking the identity and authorisations of
participants at oral proceedings III-10
8.3.2 Opening the oral proceedings III-12
8.3.3 Late arrival, non-appearance and failure to connect III-12
8.3.3.1 General III-12
8.3.3.2 Procedure in opposition proceedings III-13
8.3.3.3 Procedure in examination proceedings III-14

8.4 Opening of the substantive part of the proceedings III-14

8.5 Submissions by the parties III-14

8.5.1 Use of computer-generated slideshows in oral
proceedings III-16
8.5.1.1 Opposition proceedings (inter partes) III-16
8.5.1.2 Examination proceedings (ex parte) III-17
8.5.2 Written submissions during oral proceedings by
videoconference III-17
March 2024 Guidelines for Examination in the EPO Part E – Contents c

8.6 Facts, evidence or amendments introduced at a late

stage III-18

8.7 Handwritten amendments in oral proceedings III-18

8.7.1 General principles III-18
8.7.2 Procedure in examination proceedings III-19
8.7.3 Procedure in opposition proceedings III-19

8.8 Use of Rule 137(4) for amendments filed during oral

proceedings in examination III-20

8.9 Discussion of the facts and of the legal position III-21

8.10 Right of the other members of the division to put

questions III-21

8.11 Closure of oral proceedings III-21

8.11.1 Requesting postponement during oral proceedings III-22
8.11.2 Adjournment of oral proceedings due to lack of time III-22

9. Delivery of the decision III-23

10. Minutes of oral proceedings III-24

10.1 Formal requirements III-24

10.2 Language III-25

10.3 Subject-matter of minutes III-25

10.4 Request for correction of minutes III-27

Chapter IV – Taking and conservation of

evidence IV-1
1. Taking of evidence by the departments of the
EPO IV-1

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 Hearing of parties, witnesses and experts IV-4

1.6.1 General remarks IV-4
1.6.2 Witnesses and experts not summoned IV-5
1.6.3 Guidance to persons heard IV-5
1.6.4 Separate hearings IV-5
1.6.5 Examination as to personal particulars IV-5
Part E – Contents d Guidelines for Examination in the EPO March 2024

1.6.6 Examination as to res gestae IV-5

1.6.7 Entitlement of parties to put questions at hearings IV-6
1.6.8 Hearing of a witness no longer necessary IV-6

1.7 Minutes of taking of evidence IV-6

1.8 Commissioning of experts IV-7

1.8.1 Decision on the form of the opinion IV-7
1.8.2 Objection to an expert IV-7
1.8.3 Terms of reference of the expert IV-7

1.9 Costs arising from oral proceedings or taking of

evidence IV-7

1.10 Entitlements of witnesses and experts IV-8

1.10.1 Expenses for travel and subsistence IV-8
1.10.2 Loss of earnings, fees IV-8
1.10.3 Details of the entitlements of witnesses and experts IV-8

1.11 Models IV-9

1.11.1 When may models be submitted? IV-9
1.11.2 Procedure IV-9
1.11.3 Keeping the model 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 the

contracting states IV-11

3.1 Legal co-operation IV-11

3.2 Means of giving or taking evidence IV-11

3.2.1 Taking of evidence on oath IV-11
3.2.2 Evidence taken by a competent court 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

March 2024 Guidelines for Examination in the EPO Part E – Contents e

4.1 General remarks IV-13

4.2 Types of evidence IV-13

4.3 Examination of evidence IV-14

4.4 Asking for evidence IV-14

4.5 Evaluation of the testimony of a witness IV-15

4.6 Evaluation of the testimony of parties IV-16

4.7 Evaluation of an expert opinion IV-16

4.8 Evaluation of an inspection IV-16

Chapter V – Derogations from the language of

the proceedings in oral proceedings V-1
1. Use of an official language V-1

2. Language of a contracting state or other

language 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

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 Submissions filed in preparation for or during oral

proceedings VI-3
2.2.1 New facts and evidence VI-3
2.2.2 Amendments filed in preparation for or during oral
proceedings VI-4
2.2.3 Principles relating to the exercise of discretion VI-5
Part E – Contents f Guidelines for Examination in the EPO March 2024

2.2.4 Right to be heard VI-6

2.2.5 Costs VI-7

3. Observations by third parties VI-7

4. External complaints VI-9

Chapter VII – Interruption, stay and

consolidation 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 to

pending national entitlement proceedings VII-3

3. Stay of proceedings when a referral to the

Enlarged Board of Appeal is pending VII-3

4. Consolidation of proceedings VII-4

Chapter VIII – Time limits, loss of rights,

further and accelerated processing and
re-establishment of rights VIII-1
1. Time limits and loss of rights resulting from
failure 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 Extension of a time limit VIII-3

1.6.1 Extension of time limits set by the EPO under
Rule 132 VIII-3
1.6.2 Extension of periods under Rule 134 VIII-4
1.6.2.1 Extension of periods under Rule 134(1) VIII-4
March 2024 Guidelines for Examination in the EPO Part E – Contents g

1.6.2.2 Extension of periods under Rule 134(2) and

Rule 134(5) VIII-5
1.6.2.3 Scope of application of Rule 134 VIII-5

1.7 Late receipt of documents VIII-6

1.8 Failure to respond within a time limit VIII-7

1.9 Loss of rights VIII-7

1.9.1 Cases of loss of rights VIII-7
1.9.2 Noting and communication of loss of rights VIII-7
1.9.3 Decision on loss of rights VIII-7

2. Further processing VIII-8

3. Re-establishment of rights VIII-10

3.1 Admissibility of the request VIII-10

3.1.1 Time limits covered VIII-10
3.1.2 Entitlement to file the request VIII-11
3.1.3 Form of the request and applicable time limit VIII-11
3.1.4 Substantiation of the request VIII-14

3.2 Merit of the request VIII-14

3.3 Decision on re-establishment of rights VIII-15

4. Accelerated prosecution of European patent

applications VIII-16

4.1 Accelerated search VIII-17

4.2 Accelerated examination VIII-18

4.3 Patent Prosecution Highway (PPH) VIII-19

5. Accelerated processing of oppositions VIII-19

6. Accelerated processing before the boards of

appeal VIII-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

Part E – Contents h Guidelines for Examination in the EPO March 2024

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 Entry into the European phase IX-2

2.1.1 Requirements for entry into the European phase IX-2
2.1.2 Initial processing and formal examination; copy of the
international application IX-4
2.1.3 Translation of the international application IX-4
2.1.4 Filing fee, designation fee, request for examination
and search fee IX-7

2.2 Instructions in Chapter A-II ("Filing of applications

and examination on filing") IX-7

2.3 Instructions in Chapter A-III ("Examination of formal

requirements") IX-8
2.3.1 Representation, address for correspondence IX-8
2.3.2 Physical requirements IX-10
2.3.3 Request for grant IX-10
2.3.4 Designation of inventor IX-10
2.3.5 Claim to priority IX-10
2.3.5.1 Priority document IX-10
2.3.5.2 Information on prior art IX-11
2.3.5.3 Restoration of priority IX-11
2.3.6 Title of the invention IX-13
2.3.7 Prohibited matter IX-13
2.3.8 Claims fee IX-13
2.3.9 Drawings IX-14
2.3.10 Abstract IX-14
2.3.11 Designation fee IX-14
2.3.12 Renewal fees IX-14

2.4 Instructions in Chapter A-IV ("Special provisions") IX-15

2.4.1 Divisional applications IX-15
2.4.2 Sequence listings IX-15
2.4.3 Certificate of exhibition IX-16
2.4.4 Biological material IX-16

2.5 Instructions in Chapter A-VI ("Publication of

application; request for examination and transmission
of the dossier to examining division") IX-16
2.5.1 Publication of the international application IX-16
2.5.2 Request for examination IX-17
2.5.3 Supplementary European search IX-18

2.6 Reduction and refunds of fees in respect of

international (PCT) applications IX-18

2.7 Communication to the EPO as a designated Office IX-18

March 2024 Guidelines for Examination in the EPO Part E – Contents i

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
2.9.1 Review by the EPO under Art. 25 PCT IX-21
2.9.2 Review by the EPO under Art. 24 PCT and excuse of
delays under Art. 48(2) PCT IX-21
2.9.3 Rectification of errors made by the receiving Office or
the International Bureau IX-22
2.9.4 Determination of filing date in the case of erroneously
filed elements or parts of the international application IX-22

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

3.2 Applications for which no supplementary European

search report is prepared IX-24

3.3 Exceptions where a reply to the Rule 161(1) invitation

is not required IX-25
3.3.1 Earlier filed amendments or comments IX-25
3.3.2 Positive WO-ISA, SISR or IPER IX-26
3.3.3 Rule 161 communication issued before 1 April 2010 IX-26
3.3.4 Voluntary reply to Rule 161(1) communication IX-26

3.4 Rule 137(4) applies IX-26

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 application

accompanied by an IPER IX-28
4.3.1 Comparative test results IX-28
4.3.2 Basis for substantive examination IX-28
4.3.3 Consideration of the contents of the IPER IX-29

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 Form and content X-1

Part E – Contents j Guidelines for Examination in the EPO March 2024

1.3.1 Order X-2

1.3.2 Facts and submissions X-2
1.3.3 Reasoning X-2

2. Decisions taken by the examining or opposition

divisions X-3

2.1 Right 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

4. Binding nature of decisions on appeals X-9

5. Information as to means of redress X-10

6. Notification X-10

7. Expiry of the term of the European patent X-10

Chapter XI – Impartiality of divisions 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
March 2024 Guidelines for Examination in the EPO Part E – Contents k

5. Persons entitled to appeal and to be parties to

appeal 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 Examples XII-3

7.4.1 No amended claims filed with the appeal XII-3
7.4.2 Amended main/single request filed with the appeal XII-4
7.4.3 Main and auxiliary requests filed with the appeal XII-5
7.4.4 Response to communication pursuant to Rule 58
filed with the appeal XII-6

8. Rules of Procedure of the Boards of Appeal XII-6

9. Remittal to the examining or opposition division

after appeal XII-6

Chapter XIII – Request from a national court

for a technical opinion concerning a European
patent XIII-1
1. General XIII-1

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-2

5. 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-3

5.5 File inspection XIII-3

Part E – Contents l Guidelines for Examination in the EPO March 2024

5.6 Appearance before the national court XIII-4

Chapter XIV – Registration of changes of

name, transfers, licences and other rights XIV-1
1. General XIV-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-3

6. Licences and other rights XIV-3

6.1 Registration XIV-3

6.2 Cancellation of the registration XIV-3

March 2024 Guidelines for Examination in the EPO Part E – Chapter I-1

Chapter I – Introduction
Part E contains guidelines for those procedural steps in respect of the
examination of European patent applications and patents which without
major variations may, in so far as the EPC permits, occur at a number of
stages in the procedure. Attention is also drawn to Art. 125, which states:
"In the absence of procedural provisions in this Convention, the EPO shall
take into account the principles of procedural law generally recognised in
the Contracting States".
March 2024 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, where

appropriate, with a request to remedy those deficiencies, e.g. in
accordance 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 patent
cannot be granted or maintained in the text requested by the
applicant 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 be

communicated 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, for
the particular stage of the proceedings, e.g. the preparation of oral
proceedings 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 and Rule 113(1) and (2)
to 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. Notification

2.1 General remarks

The EPO as a matter of course notifies those concerned of decisions and Art. 119
summonses, and of any notice or other communication from which a time Rule 125
limit is reckoned, or of which those concerned must be notified under other Rule 126
provisions of the EPC, or of which notification has been ordered by the Rule 127
Part E – Chapter II-2 Guidelines for Examination in the EPO March 2024

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 the
contracting states.

In proceedings before the EPO, any notification to be made must take the
form of the original document, or a copy thereof certified by or bearing the
seal 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.

2.2 Method of notification

Rule 125(2) and (3) 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 of
electronic communication as determined by the President of the EPO and
under the conditions laid down by him governing their use. Further details
concerning notifications are given in Rules 126 to 129. Notification through
the 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 Electronic notification

Rule 127(2) Where a user has agreed to receive communications electronically, the
electronic document is deemed to be delivered to the addressee on the
date it bears unless it has failed to reach its destination.

Even if the addressee can access the electronic document before the date
of the document, the decisive date for the purpose of the notification fiction
under Rule 127(2) is the date of the document.

In the event of any dispute concerning the delivery of the electronic

document, it is incumbent on the EPO to establish that the document has
reached its destination and to establish the date on which it did so.

If notification is contested and the EPO establishes that the document

reached its destination more than seven days after the date it bears, a
period triggered by the deemed receipt of that document will be extended
by the number of days by which these seven days were exceeded (see the
notice from the EPO dated 6 March 2023, OJ EPO 2023, A29). Rule 134(1)
applies only once the period is extended according to the safeguard under
Rule 127(2). See E-II, 2.4 for an example.

Notification may occur in electronic form to an activated Mailbox. Electronic

notification comprises the decisions, summonses, notices and
communications contained in a list published on the EPO website. The
Mailbox may also be accessed through MyEPO Portfolio. For further
details, see the decision of the President of the EPO dated 9 October 2023
concerning the web-based online service MyEPO Portfolio
(OJ EPO 2023, A89) and the notice from the EPO dated 9 October 2023,
(OJ EPO 2023, A90).
March 2024 Guidelines for Examination in the EPO Part E – Chapter II-3

In the event that further means are introduced for electronic notification, the
conditions and details will follow from the decisions governing the use of
such means.

2.4 Notification by postal services

All notifications by postal services must be by registered letter (see also Rule 126
OJ EPO 2019, A57). The President of the EPO has, so far, not named any
other documents to be notified by registered letter with advice of delivery or
equivalent.

A notified document is deemed to be delivered to the addressee on the Rule 126(2)

date it bears unless it has failed to reach the addressee. In the case of
notification irregularities, the safeguards set out in E-II, 2.3 apply.

Example:

An examination report under Art. 94(3) bears a date of 30 January 2024

and sets a time limit of four months. The report is delivered on 3
February 2024, which is four days after the date it bears. Thus, there will be
no extension under the safeguard and the document will be deemed
notified on 30 January 2024. The four-month period triggered by the
notification on 30 January 2024 falls on 30 May 2024, on which no mail is
delivered in Munich (public holiday). Consequently, the time limit is
extended under Rule 134(1) until 31 May 2024.

By contrast, if the document is delivered on 9 February 2024, i.e. ten days

after the date it bears, the period will be extended by three days to expire
on 2 June 2024 under Rule 126(2). Since 2 June 2024 is a Sunday, the
period is further extended under Rule 134(1) to expire on 3 June 2024.

Notification is deemed to have been effected, even if acceptance of the

document 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.

2.5 Notification to representatives

If a representative has been appointed, notifications must be addressed to Rule 130
him. 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 in
common in filing notice of opposition or intervention and have not appointed
a common representative, notification of one person, viz. the person
referred to in Rule 151, will again be sufficient. If several interested parties
have a common representative, notification of a single document to the
common representative is sufficient.

2.6 Irregularities in the notification

Where a document has reached the addressee, if the EPO is unable to Rule 125(4)
prove that it has been duly notified, or if provisions relating to its notification
Part E – Chapter II-4 Guidelines for Examination in the EPO March 2024

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 2024 Guidelines for Examination in the EPO Part E – Chapter III-1

Chapter III – Oral proceedings

1. General

1.1 Introduction
By "oral proceedings" is meant formal proceedings within the meaning of
Art. 116. The term does not include consultations such as occur in
examination proceedings and limitation/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 the
consultations concern matters which do not affect the interests of other
parties. 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 Art. 18(2)
Receiving Section before the appointed officer and during the examination Art. 19(2)
and opposition procedure before the whole division. Art. 113

In matters lying within its competence, oral proceedings can be held before
the Legal Division. Such proceedings are non-public in both ex parte and
inter partes proceedings.

The right to oral proceedings forms a substantial part of the right to be

heard under Art. 113.

1.2 Format of oral proceedings

Oral proceedings are held by videoconference. In exceptional
circumstances, where there are serious reasons against holding the oral
proceedings by videoconference, they may be held on the premises of the
EPO, either at the request of a party or at the instigation of the division
(OJ EPO 2022, A103, OJ EPO 2022, A106). 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 from following oral proceedings on screen) and reasons
related to the nature and subject-matter of the proceedings (e.g. where they
involve the demonstration or inspection of an object where the haptic
features are essential, to the extent that this is possible in accordance with
the applicable provisions). Sweeping objections against the reliability of
videoconferencing 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 the

technical 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 the

date, time and the videoconference contact details to be used to establish
the connection (in the form of a link or by other suitable means) and
containing any further appropriate information, including on the organisation
of the videoconference.
Part E – Chapter III-2 Guidelines for Examination in the EPO March 2024

1.3 Request for oral proceedings to be held on EPO premises

A request that oral proceedings be held by way of exception on the
premises of the EPO needs to be filed as early as possible, preferably
together with the request for oral proceedings. 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 be
allowed and is received after the summons to oral proceedings, the division
will inform the parties that the oral proceedings will take place by
videoconference 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 not
separately 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 be
held 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 not
admissible; a refusal by the competent department to accept such a
request is not subject to appeal (see T 1142/12).

2. Oral proceedings at the request of a party

Art. 116(1) If, in the course of proceedings, a party requests oral proceedings, the
competent department must grant this request as further explained in this
section. The EPO will not inform any party concerned of this right but will
expect them – if they do not obtain satisfaction from the competent
department – 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 oral
proceedings 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 the
request of the applicant only where the Receiving Section considers this to
be expedient or where it envisages refusing the European patent
application. Where the Receiving Section does not consider it necessary to
hold oral proceedings, it must inform the applicant accordingly
(see J 16/02).

The competent department will decide on the most appropriate date for the
oral proceedings, which will only be held after the issues to be determined
are sufficiently clear (see E-III, 5).
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-3

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 competent

department considers that a decision on the matter may be reached on the
basis of the written evidence on file and intends to take a decision (e.g. in
accordance with Art. 97, 101 or 105b) which fully concurs with the case put
forward by the party or parties having unconditionally requested the oral
proceedings, 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).

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 to
pending proceedings. If the opposition division notes deficiencies in the
notice of opposition under Rule 77(1), any opponent still remains a party to
the 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).

3. Request for further oral proceedings

The EPO may reject a request for further oral proceedings before the same Art. 116(1)
department where the parties and the subject of the proceedings are the
same, irrespective of the form in which the oral proceedings were held.

Oral proceedings, particularly in opposition proceedings, are held to give

the opportunity to finally discuss all matters raised and are normally
terminated with a decision announced orally. The division is bound by that
decision, once announced, and it cannot reopen the proceedings to allow
further submissions to be filed or to take into account new facts (see the
last 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 case
e.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 one
of 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 not
terminated with a decision and after the oral proceedings the subject of the
proceedings changes, for example where fresh evidence is admitted into
the proceedings after the original oral proceedings, then further oral
proceedings will generally have to be held if requested (see T 194/96).
Part E – Chapter III-4 Guidelines for Examination in the EPO March 2024

4. Oral proceedings at the instance of the EPO

Art. 116(1) The competent department of the EPO may arrange for oral proceedings to
take 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 or
surely settled by oral discussion with the party or parties, or if it is
necessary 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 oral
proceedings is chosen.

When preparing oral proceedings, particularly in opposition, the division

considers carefully whether complex legal issues are likely to arise, and it
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 the
party or parties in a notice and possibly also to invite one or more of the
parties to submit written observations or to produce evidence, where
appropriate. Parties may produce evidence in support of their arguments on
their own initiative. Where, however, the evidence is such that it should
have 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 communicated
to 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 same
time as the summons to oral proceedings.

5.1 When can a summons to oral proceedings be issued in

substantive examination?
See C-VIII, 5.1 for when a summons to oral proceedings can be issued in
examination proceedings.

6. Summons to oral proceedings

Rule 115(1) All parties must be duly summoned to oral proceedings by notification. The
Art. 119 summons must state the subject, the date and time and the form of the oral
proceedings.

The division sets a single date for the oral proceedings, i.e. one day or, in
particular cases, more than one consecutive day. No pre-announcement of
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-5

the date will be made. Oral proceedings may be set for any working day on
which the EPO is open at the relevant site.

The summons will be accompanied by a note drawing attention to the Rule 116(1)
points which need to be discussed, normally containing the provisional and
non-binding opinion of the division. New documents may be cited in the
annex to the summons (T 120/12), together with an explanation of their
significance. However, examiners must carefully consider on a
case-by-case basis whether citing a new document would introduce a new
line 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 the
accompanying 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 unless
a 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 be
submitted (see also D-VI, 3.2).

Rule 115(1) stipulates that at least two months' notice of the summons Rule 115(1)
must 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 the
oral proceedings to allow the parties sufficient time for preparing and filing
submissions:

(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 the
parties would have very limited time for filing submissions before the
date fixed in the summons. Examples are where, in examination, the
summons 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 is
changed to a later date (see also 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 and
the date of the oral proceedings (see C-III, 5).
Part E – Chapter III-6 Guidelines for Examination in the EPO March 2024

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 a

rule, 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 comments
on 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 the
party 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 have
arisen. 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 a
national 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 oral proceedings requires travelling
to or from a geographically distant location,

– serious illness,

– a death within the family,

– the marriage of a person whose attendance in oral proceedings is

relevant,

– military service or other obligatory performance of civic duties,

– business trips which have been firmly booked before notification of

the summons to oral proceedings,
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-7

– 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 the
circumstances (e.g. school holidays) which prevent the holidays from
being rescheduled.

If the grounds for changing the date of the oral proceedings submitted by a
party do not meet the above criteria, the division will inform the parties that
the oral proceedings will take place as set out in the summons and annex a
brief 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 those
participants whose presence is essential to the oral proceedings, e.g. the
representative 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 oral
proceedings, 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 is

involved, a more strict approach may be applied to prevent a series of
changes 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 be
scheduled for these days, too. The fact that this may necessitate travel at
weekends is not a sufficient reason to change the date of the oral
proceedings. The departments of first instance will however, circumstances
permitting, try to be flexible where there is a request to change the starting
time 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 the

division
In exceptional cases the division might have to instigate the change of date
of oral proceedings for reasons similar to those mentioned above. The date
of the oral proceedings will, however, be changed only if a suitable
replacement 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 a
shorter period (see also E-III, 6(iii) and E-III, 8.11.1).
Part E – Chapter III-8 Guidelines for Examination in the EPO March 2024

7.2 Cancellation or maintenance of oral proceedings

7.2.1 General
In response to submissions made by a party in reply to the summons to
oral proceedings, the division may also decide to cancel the oral
proceedings 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 oral
proceedings are not cancelled following such submissions, the division
informs the applicant that the date and time set for the oral proceedings are
maintained.

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 decision
according to the state of the file – see OJ EPO 2020, A124), it is within the
discretion 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 to
the 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 the
oral 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 their
absence. The procedural principles require that the party to the
proceedings 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

Art. 116(3) Oral proceedings before the Receiving Section, the examining divisions
and the Legal Division are not public.

Art. 116(4) 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 not
decide otherwise in cases where admission of the public could have
serious and unjustified disadvantages, in particular for a party to the
proceedings. 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 file
inspection (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,
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-9

may also be excluded as being part of the public (e.g. in the case of a
request for exclusion of a medical certificate from file inspection).

Members of the public may be granted remote access to opposition oral

proceedings via a link provided upon request. See OJ EPO 2022, A106, for
details about the request and the conditions.

8.2 Conduct of oral proceedings

Before the Receiving Section oral proceedings will be conducted by the
appointed officer and before the examining or opposition divisions by the
chair 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 and
substantive aspects.

The person conducting the proceedings must in particular ensure that,

where necessary, a list is prepared of all disputed or unclear points relevant
to 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 oral
proceedings 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 right
to oral proceedings (see E-III, 8.2.3).

On the other hand, the oral proceedings are to be conducted strictly and
efficiently, so that the submissions of the party or parties and the
discussions 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 the
appropriate 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.

8.2.1 Participation of parties and their representatives from different

locations
A party, its representative and any persons accompanying the parties or
representatives, as well as witnesses and experts, may connect to the
videoconference from different locations.

8.2.2 Participation of members of the division from different

locations
The members of the examining and opposition divisions may equally
connect to the oral proceedings by videoconference from different
locations. In such cases, the members of the division will deliberate and
vote among themselves via a separate communication channel. The venue
of oral proceedings will be deemed to be the location where the division is
set up.

The applicant or representative will be informed of the remote participation

of the members of the division at the beginning of the oral proceedings,
Part E – Chapter III-10 Guidelines for Examination in the EPO March 2024

after the connection has been established and before they are formally
opened.

8.2.3 Technical problems

OJ EPO 2022, A103 Where technical problems occur such that the oral proceedings held by
videoconference cannot be conducted openly and fairly, for example due to
a total or partial breakdown in communication, the right to be heard might
possibly be violated (Art. 113(1)). The parties, due to the technical
problems, 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 the
transmission is re-established.

If a participant is disconnected for more than a few minutes, a member of

the division will contact that party to see if they are having technical
problems. 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 oral
proceedings by videoconference from being conducted in accordance with
the parties' rights under Art. 113 and Art. 116, the videoconference will be
terminated. A new summons to oral proceedings will be issued. As a rule,
new oral proceedings will be held by videoconference unless there are
serious reasons for not doing so (E-III, 1.2).

8.2.4 Recording
The recording of oral proceedings by the parties is not permitted (see
E-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 oral

proceedings
The division will check the ID document of one representative or authorised
employee of each party unless this person is personally known. For other
representatives, 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 personally
known to at least one member of the division. This applies independently of
whether 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.
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-11

However, the division checks the ID documents of all parties, witnesses

and experts summoned to give evidence before the EPO. Moreover, the
division may check ID documents of other attendees where this is
considered 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.

The identity document may be presented in one of following ways:

– If the identity document is an EPO badge, by showing it to the

camera 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 oral
proceedings.

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.

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 the
person is either

(i) a professional representative acting under a sub-authorisation

(ii) a professional representative from the same agency as the

representative acting in the case, or

(iii) a natural person (e.g. executive director) authorised by law in the

party's country of business to act on behalf of that party

then no further check is required.

Part E – Chapter III-12 Guidelines for Examination in the EPO March 2024

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 the
oral proceedings is his/her first appearance in the procedure, or

(b) 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 the
termination of the authorisation of a previous representative may have been
effected 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 general
authorisation or to file an individual authorisation.

In case (b), the division will request the person concerned to provide a
reference to a registered general authorisation or to file – by email in the
case of oral proceedings by videoconference (OJ EPO 2020, A71) – an
individual 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 can
be pronounced at the end. Instead, the decision is issued in writing once
the missing authorisation has been filed. At the end of the proceedings, the
party 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 and
the oral proceedings are closed. A new date must be fixed for further oral
proceedings.

Rule 115(2) If any party who has been duly summoned to oral proceedings does not
appear as summoned or fails to connect to the oral proceedings by
videoconference, as the case may be, the oral proceedings may be
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-13

conducted without them, since a party should not be able to delay issuance
of a decision by failing to appear or connect.

It is to be noted that if any party appears or connects before the end of the
oral proceedings, they have the right to be heard.

If the party appears or connects only after the proceedings have been
closed, 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) or
Art. 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 Art. 104(1)
has been filed (see E-III, 7.1.1), the proceedings are postponed and a new
date fixed. If the filing of the request was delayed due to the carelessness
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 be
taken (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); see
also E-VI, 2).

Following G 4/92, if new facts are taken into consideration, then at the end
of 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 the
previous 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 on
which 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 a
surprising course of events at the oral proceedings, which changes the
legal 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 oral

proceedings the other side attempts to overcome objections raised before
the oral proceedings. In particular, a submission during oral proceedings of
a more restricted and/or formally amended set of claims with a view to
overcoming 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
Part E – Chapter III-14 Guidelines for Examination in the EPO March 2024

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 for
the first time during oral proceedings which may be an obstacle to the
maintenance of the opposed patent, this new prior art can be taken into
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 file
amended claims before oral proceedings which they subsequently do not
attend, 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
new arguments which may be expected to be raised.

In examination proceedings, the annex to the summons to oral proceedings

must include all the objections that are likely to be discussed during oral
proceedings and indicate that amended claims in response to the
communication will have to be examined at the oral proceedings for
compliance with the EPC. This ensures that the applicant's right to be
heard (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 noted
that this brief indication of the essential reasons for not allowing or not
admitting the auxiliary requests has to be thorough enough to ensure that
the 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, 4.7.1.1).

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 important
matters 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 each
party will have only one opportunity of making a comprehensive statement.

In opposition proceedings the opponents will generally speak first and the
patent proprietor afterwards. Where there are a number of opponents, it
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-15

may be expedient to grant the patent proprietor an opportunity of replying

directly after the statement of each individual opponent. The opponents and
the patent proprietor will be given the opportunity of making a final reply.

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 the
proceedings which are referred to again may only be read out where their
precise wording is relevant.

Submissions by a person who is not qualified under Art. 133 and 134 to
represent parties to proceedings before the EPO may be admitted at oral
proceedings when this person accompanies a professional representative
representing that party. Such submissions, however, cannot be made as a
matter of right, but only with the permission and at the discretion of the
examining 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 a
request 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 oral
proceedings;

(iv) in the case of a late-filed request, either there are exceptional

circumstances justifying the admission of the submission or all the
other parties agree to the making of the submission; and

(v) the submissions are made under the continuing responsibility and
control of the professional representative.

If neither of the alternative conditions mentioned under (iv) are met, a

late-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 a

professional representative, the same considerations apply in respect of a
person accompanying the authorised employee. As no other party is
affected, 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 oral
proceedings by virtue of their status as party to the proceedings.
Part E – Chapter III-16 Guidelines for Examination in the EPO March 2024

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 and
OJ EPO 2020, A71.

8.5.1 Use of computer-generated slideshows in oral proceedings

In oral proceedings a computer-generated slideshow cannot be used as a
matter of right, but only with the permission of and at the discretion of the
examining or opposition division or the Legal Division (T 1556/06), and, in
the case of oral proceedings on the EPO premises, if the necessary
equipment is available in the room in which the oral proceedings are held.
Generally, screens are available in most meeting rooms; 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 a

computer-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 the

case in the most appropriate manner and the other party's need to fully
understand the submissions made and to have a true opportunity to
respond.

The presentation of computer-generated slideshows in oral proceedings will

be 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, or
if 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 the
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-17

same criteria for admissibility as are used for other late-filed facts or
evidence (see E-VI, 2).

8.5.1.2 Examination proceedings (ex parte)

As no other party is affected, examining divisions may adopt a more liberal
approach than opposition divisions. Therefore, examining divisions will
consider 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 same
considerations 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.

8.5.2 Written submissions during oral proceedings by

videoconference
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 is preferably OJ EPO 2020, A71,
applied to the attached document. Alternatively, it may appear in the text of Art. 2
the accompanying email, which will also be annexed to the minutes. 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.

The documents are to be sent to the email address indicated during the OJ EPO 2020, A71,
videoconference by the competent department. Art. 3

Any emails and attached documents filed by a party during oral OJ EPO 2022, A106
proceedings with more than one party will be forwarded by the division to
the other parties present at the proceedings unless the party in question
has already sent them direct to the email address indicated by the other
parties. Therefore, each party must communicate to the division and, where
possible, to the other parties at the beginning of the oral proceedings the
email address it wishes to use for receiving copies of such documents.
Parties and representatives must ensure that they can immediately take
note of any document sent to the email address indicated by them.

Amended application documents are to be filed as attachments. OJ EPO 2020, A71,

Attachments containing these amended application documents must be in Art. 4
PDF format and must comply with the WIPO Standard for Filing and
Processing 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
remedied during the videoconference or within the time limit set, that
Part E – Chapter III-18 Guidelines for Examination in the EPO March 2024

document (or that part of the document which is illegible or incomplete) is

deemed not to have been received.

Other attachments may be sent in any format which can be opened by the
division 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 other

malicious 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, No paper documents need be filed to confirm documents filed by email.
Art. 5

OJ EPO 2020, A71, All submissions made by email during a videoconference must be annexed
Art. 6 to 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 in
emails 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 or
arguments presented at a late stage in the proceedings, including during
oral proceedings, see E-VI, 2.

8.7 Handwritten amendments in oral proceedings

8.7.1 General principles

Rules 50(1) and 86 The requirement of Art. 2(7) of the decision of the President of the EPO
Rule 49(2) dated 25 November 2022 that the description, claims and abstract, as well
OJ EPO 2022, A113 as the request for grant, must be typed or printed in principle extends to
documents replacing application documents and to amended patent
specification documents (see also A-III, 3.2).

Responsibility for formally correct submissions and, in particular, for

compliance with these requirements lies with the applicant/proprietor.

Deletions, correction of the numbering of the figures and insertion of

reference numbers and associated arrows in drawings are considered as
typewritten amendments.

If the oral proceedings take place by way of exception on the premises of

the EPO, the parties may use the EPO's technical facilities that allow for
compliance with the formal requirements, in particular computers equipped
with a word processor and a printer, network printers and copiers enabling
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-19

documents to be printed from a USB stick, and internet access in public

areas via a public 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 are
available via the European publication server. See D-IV, 5.3 for the
preferred way to amend the description in opposition proceedings.

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 prescribed by the OJ EPO 2022, A113
President under Rule 49(2) apply equally to application documents
submitted during oral proceedings by email or by hand.

Documents containing handwritten amendments will normally be accepted

by the division as a basis for discussion during oral proceedings until
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, to
avoid prolonging the proceedings the examining division will go
ahead 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 division

announces the following:

– the amended application fulfils the requirements of the EPC

except for certain formal requirements, e.g. the ones regarding
handwritten amendments; and

– the procedure will be continued in writing.

After the closure of the oral proceedings, the formalities officer on

behalf of the examining division (see A-III, 3.2) will invite the
applicant to file formally correct documents within two months. Where
the amendments submitted in reply to this invitation differ from the
patentable subject-matter established at the oral proceedings, the
procedure described in C-V, 4.7 is to be applied.

8.7.3 Procedure in opposition proceedings

Rule 82(2), third sentence, provides for one exception to the principle that a
decision 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
Part E – Chapter III-20 Guidelines for Examination in the EPO March 2024

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 a
formally 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 to

maintain the patent as amended may be issued only on the basis of
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 decision
of the President of the EPO dated 25 November 2022, i.e. which contain
handwritten amendments, the opposition division will invite the proprietor in
the communication under Rule 82(2) to file a formally compliant version of
the amended text. The invitation will specify the formally 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 department of first instance with the order to
maintain the patent on the basis of amended 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 which
contain 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 deficient
paragraphs (and/or claims) specified in the invitation under Rule 82(2) and
the text of the replacement paragraphs (and/or claims) will trigger a
communication 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 the
replacement 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 the
notification 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 of
amendments filed during oral proceedings (see H-III, 2.1.3), since this
would unduly delay the procedure. Making a request under Rule 137(4)
during oral proceedings would have the consequence of staying the
proceedings for one month, while waiting for the applicant's answer.
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-21

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 the
requests 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 and
H-III, 3.3.2.1).

8.9 Discussion of the facts and of the legal position

A discussion will be conducted with the party or parties concerning those
technical 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 results

from an amendment of the claims, it informs the applicant of the fact and
allows 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 a
prevailing legal opinion, or if facts or evidence already introduced into the
proceedings 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 case
takes 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 the
proceedings 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. When
evidence is taken as part of oral proceedings questions may also be put to
the 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 be
followed. 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 oral
proceedings are held by videoconferences and the members connect to the
oral proceedings from different locations (see E-III, 8.2.2), the members will
deliberate and vote among themselves via a separate communication
channel. If new aspects emerge during the discussion and require further
Part E – Chapter III-22 Guidelines for Examination in the EPO March 2024

questions to be put to the parties, the proceedings may be restarted. Any

person conducting the proceedings may thereafter give the decision of the
department. Otherwise they inform the party or parties of the subsequent
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 the
parties 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
the parties, or informing the parties that it intends to grant or maintain the
patent in an amended form. As regards the delivery of a decision in the last
case, see E-III, 9.

If the patent is to be granted or maintained in an amended form, it is the

aim 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 a
European patent provided that certain amendments are made which could
not reasonably have been foreseen from the earlier procedure, the
applicant 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 to
bring 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 the
proceedings 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 the
necessary changes either in the oral proceedings or during a break.

8.11.2 Adjournment of oral proceedings due to lack of time

If possible, oral proceedings should not last more than eight working hours.
However, they may be extended slightly if an imminent conclusion seems
likely. If not, the chair terminates the discussions for that day at an
appropriate point to allow time for possible arrangement of a new date.
Continuing oral proceedings on a day other than the one set out in the
summons requires a new summons with a notice period of at least two
months according to Rule 115(1) unless all parties agree to a shorter period
of notice. See E-III, 6 for the general practice adopted for setting the date of
oral proceedings. The explicit agreement of all parties is necessary and
must be recorded in the minutes.

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
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-23

the division whether to indicate the points that are closed or to provide a
provisional opinion on the points that are still open. A new final date for
making submissions is not fixed under Rule 116 in the new summons if the
subject of the proceedings has not changed (see E-VI, 2.2.2). Otherwise, a
new date is fixed under Rule 116 and at least two months' notice is given
under Rule 115 unless the parties agree to a shorter period. The minutes of
the oral proceedings which took place are to be issued in advance of the
upcoming oral proceedings, preferably no later than when the new
summons is issued.

If the agreed date is too close for the parties to be able to receive the new
summons in time (e.g. the next day or a day in the same week), it is
necessary that the parties waive their right to receive a 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 Rule 111(1) and (2)
conducting the proceedings announcing the operative part of the decision
(see also E-III, 8.11 and E-X, 2.3).

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 the
correction 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 the

decision 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.
Part E – Chapter III-24 Guidelines for Examination in the EPO March 2024

Generally speaking it will not be possible to give a decision granting a

European patent or maintaining it in amended or limited form in oral
proceedings 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 maintained
in amended or limited form, the requirements of Rule 82(1) and (2) or
Rule 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 the
patent is maintained on the basis of amendments filed during oral
proceedings, 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.

10.1 Formal requirements

Rule 124(1) Minutes of oral proceedings must be drawn up.

The person conducting the proceedings must ensure that during the whole
proceedings an employee is available to keep minutes. If necessary, during
oral proceedings different employees may carry out the task of
minute-writing in sequence. In this case it must be made clear in the
minutes 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.

Rule 124(3) and (4) The minutes must be authenticated by the employee responsible for
drawing them up and by the employee who conducted the oral
proceedings, either by signature or by other appropriate means. If
exceptionally the employee responsible cannot sign the minutes, one of the
other 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 the
parties. 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 sound
recordings of the oral proceedings. However, no person other than an EPO
employee is allowed to make any recording or retransmit any part of the
oral proceedings, whether image or sound or both (see OJ EPO 1986, 63,
OJ EPO 2022, A106).

Sound recordings are made only in the case of taking of evidence

(E-IV, 1.7). 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 of
the members of the department, e.g. the opposition division, present and
the name or names of the minute-writer or writers. Minutes must also
include the details referred to in E-III, 10.3.
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-25

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).

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 for
in Rule 4(6):

(a) requests of the parties

(b) legally relevant statements by parties, witnesses, experts and

division members, and

(c) order of the decision.

The term "statement" within the meaning of Rule 4(6) is to be interpreted

narrowly as the exception to the rule of using the language of proceedings
in the written procedure rather than as allowing the recording of all
arguments made in another official language during the oral proceedings.

For derogations from the language of proceedings see E-V, 6.

See E-III, 10.3 for requests for recording specific statements in the minutes.

10.3 Subject-matter of minutes

Minutes have an important function as evidence of respect for the right to Art. 113(1)
be heard (Art. 113(1)). They must contain the essentials of the oral Rule 124(1)
proceedings and the relevant statements made by the parties, together with
arguments relevant to the decision and not contained in the parties' written
submissions. Details of the arguments raised by the parties, however, are
developed in the decision, and therefore are only briefly reported in the
minutes.

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 and
drawings, and statements of surrender.

The essentials of the oral proceedings include new statements by the party
or 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 the
presence 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.
Part E – Chapter III-26 Guidelines for Examination in the EPO March 2024

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 such
statements is read out to the parties concerned before the decision is taken
and announced.

Requests from parties for recording specific statements are accepted if the
statements form part of the essentials of the oral proceedings and are
relevant for reaching the decision. Otherwise, they may be refused since
recording statements that a party considers might be useful in subsequent
proceedings is not the function of the minutes. See E-III, 10.2 for the
language requirements.

If new facts or evidence are submitted during the oral proceedings, the
minutes 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).

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 be
referred to as such,

(b) the substance of any new requests by the parties, preferably in the
form of a brief statement referring to documents containing these
requests, which must be attached to the minutes, and

(c) objections, arguments and/or requests to the parties voiced by a

member of the division, focusing on the points relevant for the
decision 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 is
preceded by a record of the parties' final requests as indicated in point (b)
above.

The minutes must also contain procedural information, such as how the
proceedings are to be continued after closure of the oral proceedings or
whether the public was excluded for the whole or part of the oral
proceedings.

The structure of the minutes mirrors the course of oral proceedings (see
E-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 are
communicated to the parties as soon as possible.
March 2024 Guidelines for Examination in the EPO Part E – Chapter III-27

10.4 Request for correction of minutes

If a party to oral proceedings considers the minutes thereof not to fulfil the
requirements of Rule 124, it may file a request to that effect, with a
proposed correction, as soon as possible after receipt of the minutes in
question.

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 or
despatch a communication stating that the minutes already contain the
essentials of the oral proceedings and the relevant statements of the
parties and give reasoning thereto (see T 819/96). The communication from
the division cannot on its own be subject to an appeal. If the request for
correction is filed within the period for filing the grounds for appeal, the
division 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 when
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).
March 2024 Guidelines for Examination in the EPO Part E – Chapter IV-1

Chapter IV – Taking and conservation of

evidence
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 Art. 117
opposition proceedings and hardly ever before the examining division. The Rule 117
following sections of this chapter are therefore based primarily on
opposition proceedings. However, they also apply mutatis mutandis to
other proceedings and particularly to substantive examination.

1.2 Means of evidence

The party or parties may at any time during proceedings submit evidence in Art. 117(1)
support 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 for
the 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 the

facts alleged in support of their case, in order, for example, to show
whether 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 concerning
them, if they do not contradict one another or if no objection is raised. In
such cases the facts need not be supported by evidence.

There will however be occasions, particularly in opposition proceedings, in

which 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, for
instance 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, such
prior 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 the

date of publication of a book
Part E – Chapter IV-2 Guidelines for Examination in the EPO March 2024

– opinions by experts (see E-IV, 1.8.1); and

– inspection.

The most appropriate way of obtaining evidence in the individual case

depends on the facts which have to be proven and on the availability of the
evidence. To prove prior use in an opposition, the opponents usually offer
as evidence the production of documents, the hearing of witnesses or
parties, 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 of
evidence, see E-IV, 4).

If the documents produced (e.g. patent documents) leave no doubt as to

their contents and date of availability to the public and are more relevant for
the 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 decide

to hear this person in order to verify the facts for which this witness is
brought 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 are
meant 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 the
evidence 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 in
which the statement was made, etc. Such a statement does not go beyond
its literal content and does not allow the opposition division to assess the
associated or background factors. If the alleged facts are contested by the
other party, the opposition division does not generally base its decision on
such a statement, but summons the person making the statement as a
witness, if so offered by the party. The ensuing hearing of the witness
allows the opposition division and the parties to put questions to the
witness 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 a
witness, 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, for
example, involve the demonstration of a product or process requested by
the applicant or proprietor of the patent to substantiate the method of
March 2024 Guidelines for Examination in the EPO Part E – Chapter IV-3

operation of the subject-matter of the patent where this is disputed by the

examining 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 in
breach of a confidentiality agreement and the other parties agree to the
request (see T 760/89).

1.3 Taking of evidence

The department responsible for the taking of evidence in the form of a Art. 117(2)
hearing of witnesses, parties and experts will, in substantive examination Rules 118 to 120
and opposition proceedings, be the division before which the taking of
evidence as part of oral proceedings would normally take place. If evidence
is to be taken, the examining or opposition division will normally have been
enlarged 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), for
the purposes of an inspection, such as in the form of a demonstration of a
process or the investigation of an object, particularly in undertakings
located far away.

A member may also be commissioned to attend a court hearing pursuant to

Rule 120(3), and put questions to the witnesses, parties and experts.

The language for taking evidence and writing the minutes is governed by
Art. 14(3) (language of the proceedings) and Rule 4 (derogations from the
provisions concerning the language of the proceedings in oral
proceedings); 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 to Rule 117
hear the oral evidence of parties, witnesses or experts or to carry out an
inspection, it must make a decision to this end (order to take evidence),
setting out the investigation which it intends to carry out, relevant facts to
be proved, the date, time and place of the investigation and whether it will
be conducted by videoconference. If oral evidence of witnesses and
experts is requested by a party but the witnesses and experts are not
simultaneously named, the party is requested, either prior to the issue of
the 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 accordance
with Rule 132(2) will be not less than two months and not more than
four months, since any party concerned will normally know beforehand
whom they wish to be heard as a witness or expert.
Part E – Chapter IV-4 Guidelines for Examination in the EPO March 2024

Art. 119 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

Art. 119 The parties, witnesses and experts to be heard must be invited to appear to
Rule 118(1) and (2) give 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 to
give 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 the
date, 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 the
rights 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 been
summoned to appear before the European Patent Office on its
premises may, at their request, be heard by videoconference; and

Rule 118(2)(d) (iv) an indication that any party, witness or expert may request to be
heard by the competent court of their country of residence and a
requirement 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 the
proceedings may attend an investigation. Parties not summoned are
informed thereof within the period laid down in Rule 118(2), together with a
statement 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 purpose
of taking evidence (see E-IV, 1.3) or if the case in question is expected to
give rise to particular legal issues, it is advisable that the division be
enlarged by the addition of a legally qualified examiner, if this is not already
the 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 are
otherwise 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 oral

proceedings themselves (Art. 116(3) and (4)).
March 2024 Guidelines for Examination in the EPO Part E – Chapter IV-5

Where a hearing is held in connection with oral proceedings, the

considerations 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 a

precondition a decision to take evidence (see E-IV, 1.4). This is different
from hearing oral submissions by a person accompanying the
representative during oral proceedings, which can be allowed at the
discretion 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 and
opposition 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 in
question will then decide on whether or not to grant the request (for the
admission 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 informed Rule 119(2)
that the EPO may request the competent court in the country of residence
of 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 to
experts and to the parties. Witnesses whose statements conflict may be
confronted with one another, i.e. each heard in turn in the presence of the
other. The same applies to experts.

1.6.5 Examination as to personal particulars

The hearing will begin by the persons giving evidence being asked their
given names, family name, age, occupation and address. Witnesses and
experts 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 a
particular party being successful in the proceedings.

1.6.6 Examination as to res gestae

The examination as to personal particulars will be followed by the
examination as to res gestae. Any person testifying is to be instructed to
give a full and logical account of what they know concerning the
subject-matter of the hearing. Further questions may have to be put to
clarify and supplement statements and to establish on what the knowledge
of the person testifying is based. Such questions may be put by the
member commissioned for the taking of evidence, where applicable, the
chair or any other member of the department concerned. As regards the
entitlement of other members of the division to put questions,
Part E – Chapter IV-6 Guidelines for Examination in the EPO March 2024

see E-III, 8.10. When formulating questions the same considerations apply
as for the parties (see E-IV, 1.6.7).

1.6.7 Entitlement of parties to put questions at hearings

Rule 119(3) The parties may put relevant questions to the testifying parties, witnesses
and experts including, e.g. in opposition proceedings, witnesses and
experts testifying on behalf of other parties. The official in charge of the
taking of evidence will determine at what point in the proceedings such
questions 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 the
witness, 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 the
subject-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 the
entitlement 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 the
facts which the testimony is supposed to corroborate are relevant to the
decision (see E-IV, 1.2). Therefore, the witness is not heard if the facts to
be proved are no longer relevant due to developments before or during oral
proceedings 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 another
means 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.

1.7 Minutes of taking of evidence

Rule 124(1) 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 the
parties, witnesses or experts.

Rule 124(2) The minutes will normally be taken down by a member of the competent
department carrying out the taking of evidence. The most efficient way of
noting testimony is by way of dictation on to a dictating machine, in the
process of which the person hearing the evidence will summarise the
testimony 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, the
persons being heard must raise any objections immediately. This is pointed
March 2024 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 not
necessary to play back the minutes or to obtain approval of them if the
testimony has been recorded verbatim and directly, using technical means.

Where the taking of evidence includes an inspection, the minutes must

record, in addition to the essentials of the proceedings, the results of the
inspection.

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 Rule 121(1)
opinion (D-VI, 1, sixth paragraph), it will have to decide in what form it is
submitted 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 that
the parties agree to this arrangement. As a rule, in addition to submitting a
written 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 Rule 121(3)
produced by the EPO.

1.8.2 Objection to an expert

The parties may object to an expert. Therefore, before commissioning an Rule 121(4)
expert to make an opinion, the competent department informs the parties of
the expert whom it intends to ask to draw up an opinion and of the
subject-matter of the opinion. The communication to the parties states a
time limit within which objections to the expert may be made. If the parties
do object to an expert, the competent department will decide on the
objection.

1.8.3 Terms of reference of the expert

The terms of reference of any expert must include: a precise description of Rule 121(2)(a)-
their task, the period laid down for the submission of their opinion, the (d)
names 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 travel
and 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 Art. 104(1) and (2)
have incurred. This principle notwithstanding, the competent body in the Rule 122(1) and (2)
opposition proceedings may for reasons of equity (see D-IX, 1.4) decide to
apportion in some other way the costs arising for the parties in respect of
oral proceedings or taking of evidence (see D-IX, 1) and the costs arising
Part E – Chapter IV-8 Guidelines for Examination in the EPO March 2024

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 deposit
with 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 or
seeking 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 such
a deposit, the evidence need not be taken. In opposition proceedings the
party requesting the evidence bears the costs of indemnifying witnesses or
experts 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 is
refunded. 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

1.10.1 Expenses for travel and subsistence

Rule 122(2) Witnesses and experts who are summoned by and appear before the EPO
are entitled to appropriate reimbursement, by the EPO, of expenses for
travel 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 the
course of oral proceedings held by videoconference for travel to the place
where they make themselves available to appear before the EPO by
videoconference (e.g. a videoconference facility provided by one of the
parties 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 of
expenses for travel and subsistence.

1.10.2 Loss of earnings, fees

Rule 122(3) Witnesses entitled to reimbursement of travel and subsistence expenses
are also entitled to appropriate compensation, by the EPO, for loss of
earnings, and experts to fees from the EPO for their work
(see E-IV, 1.10.3). These payments must be made to the witnesses and
experts after they have fulfilled their duties or tasks.

1.10.3 Details of the entitlements of witnesses and experts

Rule 122(4) 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 of
amounts due must be made by the EPO.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IV-9

1.11 Models

1.11.1 When may models be submitted?

The EPC makes no express provision for the submission of models, but
there is nothing to stop a party from submitting one himself. Models are not
part 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 the

patentability of an invention, e.g. by showing that a given device actually
works or does so particularly advantageously. Models may also be filed,
e.g. in opposition proceedings, to illustrate the state of the art, especially
prior 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 of
inspection of a model. If it considers this to be necessary, it must take a
decision 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 the
inspection.

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 a
different 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 the
premises of the EPO can also be inspected during oral proceedings by
videoconference unless such inspection would result in a disadvantage for
a party where, e.g. the haptic feel, texture or handling experience of the
object is of relevance.

In accordance with Rule 124(1), minutes must be taken, including the

essential 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 the
party.

The formalities officer is responsible for implementing the decision to keep

or 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 of
Part E – Chapter IV-10 Guidelines for Examination in the EPO March 2024

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 as
well 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 the
division has looked at them.

2. Conservation of evidence

2.1 Requirements
Rule 123(1) 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 distant
country or where perishable matter, e.g. a food-stuff, is adduced as
involving a use made accessible to the public.

2.2 Request for the conservation of evidence

Rule 123(2) 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 is
located, in accordance with the provisions of Rule 41(2)(c);

Rule 123(2)(b) (ii) sufficient identification of the European patent application or

European patent in question;

Rule 123(2)(c) (iii) the designation of the facts in respect of which evidence is to be
taken;

Rule 123(2)(d) (iv) particulars of the way in which evidence is to be taken; and

Rule 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 conservation
of evidence has been paid.

2.3 Competence
Rule 123(4) The decision on the request and any resulting taking of evidence are
incumbent upon the department of the EPO required to take the decision
liable to be affected by the facts to be established.
March 2024 Guidelines for Examination in the EPO 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 the
decision on the granting of the patent;

(ii) the opposition division, from the latter date until expiry of the time
allowed 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 Rule 123(1)
grants the request, it must also immediately make a decision on the taking Rule 117
of evidence.

The provisions with regard to the taking of evidence in proceedings before Rule 123(4)
the EPO are applicable.

The date on which the measures are to be taken must therefore be Rule 123(1)
communicated to the applicant for or proprietor of the patent and the other Rule 118(2)
parties in sufficient time to allow them to attend. They may ask relevant Rule 119(3)
questions.

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 other Art. 131(2)
competent 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 the Rule 120(3)
hearing of parties, witnesses or experts. In such instances the competent
department may request the competent court to take the evidence on oath
or in an equally binding form.

3.2.2 Evidence taken by a competent court

The competent department will, if necessary, request a competent court to Rule 120(3)
take evidence, where appropriate under oath, where:

(i) 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;
Part E – Chapter IV-12 Guidelines for Examination in the EPO March 2024

Rule 120(2) (ii) the competent department considers it advisable for the evidence of
a party, witness or expert it has heard to be re-examined under oath
or 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) (iv) any party, witness or expert who has been summoned before that
Rule 150(3) department requests the latter in accordance with E-IV, 1.5(iii) to
allow their evidence to be heard by a competent court in their country
of residence. If the party, witness or expert simply refuses to be
heard by the responsible division, they are notified that the
competent national court will have the relevant national legal
possibilities to oblige them to appear and to testify.

3.3 Letters rogatory

Rule 150(2) The EPO must draw up letters rogatory in the language of the competent
authority or must attach to such letters rogatory a translation into the
language of that authority.

Rule 150(1) Letters rogatory must be addressed to the central authority designated by
the contracting state.

3.4 Procedures before the competent authority

Rule 150(5) The EPO must be informed of the time when, and the place where, the
enquiry is to take place and must inform the parties, witnesses and experts
concerned.

Rule 120(3) If so requested by the EPO, the competent authority shall permit the
Rule 150(6) attendance of members of the department concerned and allow them to
question any person giving evidence either directly or through the
competent 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

Rule 150(7) The execution of letters rogatory does not give rise to any reimbursement
of fees or costs of any nature. Nevertheless, the state in which letters
rogatory are executed has the right to require the European Patent
Organisation to reimburse any fees paid to experts and interpreters and the
costs incurred as a result of the attendance of members of the competent
department when evidence is taken.

3.6 Taking of evidence by an appointed person

Rule 150(8) 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.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IV-13

4. Evaluation of evidence

4.1 General remarks

The competent department has the power and the duty to assess whether
the alleged facts are sufficiently established based on evidence. The
proceedings under the EPC are governed by the principle of free evaluation
of evidence. This principle allows, and requires, a competent department to
decide according to its own discretion and conviction, by taking into
account the entire content of the parties' submissions. There are no firm
rules according to which certain types of evidence are, or are not,
convincing. This does not mean that the evaluation of evidence may be
arbitrary, rather the evidence must be assessed comprehensively and
dutifully. The only decisive factor is whether the department is convinced of
the truth of the factual allegation, i.e. how credible the department classifies
a piece of evidence. To do this, the department must put all the arguments
for and against a factual statement in relation to the required standard of
proof. In doing so, the department remains bound by the laws of the logic
and by probability based on experience. The department sets out in the
decision the reasons for reaching its conclusions (G 2/21).

The principle of free evaluation of evidence may not be used to simply

disregard an admissibly submitted piece of evidence that is relied upon by
a party in support of an inference that is challenged and is decisive for the
final decision, for example to prove the presence of a technical effect.
Disregarding it as a matter of principle would deprive the party of a basic
legal procedural right enshrined in Art. 113(1) and 117(1). For example, the
mere fact that evidence is post-published is not a sufficient reason not to
take it into account.

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 the
limits 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 the
method 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 of
claim 1 (argument).

Evidence admissible in EPO proceedings is not confined to that listed in

Art. 117(1). "Taking of evidence" within the meaning of Art. 117 comprises
Part E – Chapter IV-14 Guidelines for Examination in the EPO March 2024

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, the
assertion 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 the
evidence submitted.

When evidence is examined, since the EPC says nothing about how the
outcome of taking of evidence must be assessed, the principle of unfettered
consideration applies. This means that its content and its significance for
the proceedings are assessed in the light of the particular circumstances of
each 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 or
irrelevant. In particular it has to be decided on a case-by-case basis when a
particular 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 to
support it (see T 750/94). For example, if a decision might result in
revocation of the patent in a case concerning alleged prior use, the
available 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 taken
place, the division has to cede to the stricter criterion close to absolute
conviction, i.e. beyond any reasonable doubt (see T 97/94).

When parties make conflicting assertions, the division must decide which
evidence is the most convincing. If it cannot establish which allegation is
right 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 to
prove 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 and
objectively 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).
March 2024 Guidelines for Examination in the EPO Part E – Chapter IV-15

The taking of evidence in each of the forms listed in Art. 117 is done at the
discretion 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 relevant
to 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 to
evaluate the evidence. Where a witness's testimony which is crucial to the
decision has been challenged by a party but the department regards it as
credible, or where a witness's oral or written testimony is disregarded in its
decision as being not credible, the department concerned must state the
grounds for its view in its decision.

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-hand
assertions based on something heard from third parties are for the
most part worthless on their own. It is also important from the point of
view 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 the
event in question and the testimony, it is to be borne in mind that
most 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 a
substance X was commonly used for a particular purpose may show
that there is in fact no contradiction at all, in that while one witness
was saying specifically that substance X was not used for that
particular 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
Part E – Chapter IV-16 Guidelines for Examination in the EPO March 2024

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 the
absence of grounds based on adequate specialist knowledge of its own or
of another expert, irrespective of whether the latter expert is an
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 specific
conditions 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 is
compared 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 to
both.
March 2024 Guidelines for Examination in the EPO Part E – Chapter V-1

Chapter V – Derogations from the language of

the proceedings in oral proceedings
1. Use of an official language
Any party to oral proceedings before the EPO may, in lieu of the language Rule 4(1) and (5)
of 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 for
interpreting 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.

A party must be clear as to which official language it wishes to use. It then

has a right to both speak and hear that language, as long as the conditions
of Rule 4 have been fulfilled. The party does not, however, have a right to
have 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 be

changed. 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, the
division 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 can
be achieved.

It may be possible to agree to limit the interpreting to "one-way", i.e. from

one language into another but not the other way round. If a comment made
in one language has clearly been misunderstood, the division may clarify it
in 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 Rule 4(1) and (4)
states, other than English, French or German, on condition that they make
provision for interpreting into the language of the proceedings. However, if
the parties and the EPO agree, any language may be used in oral
proceedings without interpreting or prior notice.

3. Exceptions from sections 1 and 2

Derogations from the provisions of Rule 4(1) are permitted, and these are Rule 4(1)
at the discretion of the EPO. Clearly such permission must depend on the
circumstances of the individual case. It may, for example, be envisaged
that parties are unable to give one month's notice through no fault of their
own, and, although they have made arrangements for an interpreter, the
latter is unable (e.g. through illness) to attend. If, in such circumstances, the
EPO is unable to provide for interpreting, it postpones the oral proceedings
if they occur at the examination stage. However, in opposition proceedings,
Part E – Chapter V-2 Guidelines for Examination in the EPO March 2024

the oral proceedings continue if the parties agree and the employees of the
EPO involved in the proceedings can cope with the language. In other
cases, the EPO postpones the oral proceedings and any costs incurred by
the innocent party as a result of the postponement are a matter for
apportionment under Art. 104.

4. Language used in the taking of evidence

Rule 4(3) 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 other
official language of the contracting states is permitted to use another
language. The EPO is responsible for interpreting into the language of the
proceedings, assuming that this is necessary, if the evidence is taken at the
request of the EPO itself. However, if the taking of evidence follows a
request by a party to the proceedings, the use of a language other than
English, French or German is allowed only if that party provides for
interpreting 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

Rule 4(2) 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 be
reasonably 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 the
proceedings at its own expense.

6. Language used in the minutes

Where the official language actually employed in oral proceedings is not the
language of the proceedings as defined in Art. 14(3), if the examining or
opposition division or the Legal Division considers it appropriate and
subject to explicit agreement of all parties concerned, the minutes may be
recorded in the official 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 the
proceedings as defined in Art. 14(3). This condition, as well as the
declaration of agreement of the party or parties, is recorded in the minutes.

Statements made in English, French or German are entered in the minutes

of the proceedings in the language employed (Rule 4(6)).

Statements made in any other language must be entered in the official

language into which they are translated.

Amendments to the text of the description or claims of a European patent

application or European patent made during oral proceedings must be
entered in the minutes in the language of the proceedings.
March 2024 Guidelines for Examination in the EPO Part E – Chapter V-3

If the proceedings are conducted in a language other than English, French

or German and no interpretation is effected, statements are entered in the
minutes in the language employed and the EPO subsequently provides in
the minutes a translation into the language of the proceedings.
March 2024 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
parties
1. 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 Art. 114(1)
not restricted in this examination to the facts, evidence and arguments
provided by the parties and the relief sought. This principle of examination
by the EPO of its own motion must be complied with by the competent
department 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 the
proceedings which in whole or in part prejudice the granting or
maintenance of the European patent, such facts and evidence must be
included in those examined by the EPO of its own motion pursuant to
Art. 114(1). See D-V, 2 for the extent of substantive examination of the
facts and evidence in opposition proceedings.

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 be
easily 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 not Art. 114(2)
submitted 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 to
be 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 to
subject-matter which is not capable of industrial application (Art. 57), but
also to an objection for lack of novelty as opposed to an objection for lack
of inventive step.
Part E – Chapter VI-2 Guidelines for Examination in the EPO March 2024

New arguments based on facts, evidence and grounds constituting the

legal 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 procedure
and 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) that
they are relevant, i.e. that the basis of the envisaged decision would be
changed, then the competent department has to take such grounds, facts
or evidence into consideration no matter what stage the procedure has
reached and whatever the reasons for belated submission. In that case, the
principle 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, the
department informs the party concerned in the decision, with due regard to
Art. 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 relevant
to the decision, will be disregarded pursuant to Art. 114(2). On the
apportionment 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 date
on 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 is
concerned, the rulings of the Enlarged Board of Appeal in G 9/91 and
G 10/91 apply. According to these decisions, in principle, the opposition is
to be examined to the extent and on the grounds submitted during the
period for opposition. Under Art. 114(1) the opposition division may go
beyond this framework if prima facie maintenance of the patent is
prejudiced. 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 the
proceedings 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 the

patent, 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 dependent

claim 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 and
only to be admitted under Art. 114(1) if they are prima facie relevant
March 2024 Guidelines for Examination in the EPO Part E – Chapter VI-3

because the opponent must be prepared for this type of amendment and
must 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 the
patent specification as granted contained a large number of dependent
claims 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 the
proceedings in a manner not foreseeable by the opponent, e.g. by taking
up features disclosed in the description, the opponent will have the
opportunity 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 Rule 116(1)
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 summons
that the patent is likely to be revoked, and a timely filed request for
amendment is admitted but relates to subject-matter not covered by the
claims as granted, the subject of the proceedings has changed.
Consequently, new facts and evidence submitted by the opponent in
response 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 will
be 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 other
aspects 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 not
prejudiced by the facts and evidence submitted so far by the opponent, this
Part E – Chapter VI-4 Guidelines for Examination in the EPO March 2024

fact per se does not give the opponent the right to have new facts and
evidence admitted into the proceedings, even if submitted before the final
date fixed under Rule 116(1).

2.2.2 Amendments filed in preparation for or during oral proceedings

Rule 116(2) Rule 116(2) imposes the same obligations on the applicant or patent
proprietor when submitting new documents which meet the requirements of
the 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.

The examining or opposition division has the discretion to disregard

amendments 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 of

subject of the proceedings:

– the opposition division admits under Art. 114(1) new facts and
evidence or a new ground of opposition because they are prima facie
relevant;

– the examining division cites a further relevant document for the first
time (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 maintenance
of the patent.

In these examples, a request from the applicant or proprietor for a

corresponding amendment cannot be rejected as being late-filed even if
submitted after the date set under Rule 116(1). If, however, after a change
of opinion by the division, the applicant or proprietor files a new request that
reintroduces subject-matter against which the division has already raised
an objection, the division has discretion to disregard the new request due to
it 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 in
due 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 the
amendments. 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.
March 2024 Guidelines for Examination in the EPO Part E – Chapter VI-5

2.2.3 Principles relating to the exercise of discretion

In exercising its discretion under Art. 114(2) and Rule 116(1) and (2), the Art. 114(2),
division must assess all relevant factors of the case. Rule 116(1) and
Rule 116(2)
The division will in the first place have to consider the relevance of the
late-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 not
prima facie relevant, i.e. if they do not appear to affect the outcome of the
proceedings (T 320/15), or if these amendments are not clearly allowable
(see H-II, 2.7.1), they will not be admitted.

For instance, if the opposition division states in the annex to the summons
that 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 the
proceedings. 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 is

normally 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 those
claims (T 366/11).

Before admitting these submissions, the division will next consider

procedural expediency, the possibility of abuse of the procedure (e.g. one
of the parties is obviously protracting the proceedings) and the question
whether the parties can reasonably be expected to familiarise themselves
in the time available with the new facts or evidence or the proposed
amendments.

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 or
evidence 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 to
consider 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 the
proceedings also for reasons of procedural efficiency. Admission of such
requests could give rise to a postponement of oral proceedings and to a
decision on apportionment of costs.
Part E – Chapter VI-6 Guidelines for Examination in the EPO March 2024

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 the
proceedings.

– The opponent knowingly abstains from raising an assertion of public

prior 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 of

requests or incomplete variants of requests and invites the division to
choose, shifting the responsibility for determining the content of the
application or patent to the division. It is the duty of any party to
proceedings 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:

– It may only become apparent in the oral proceedings that the

pending request submitted to overcome grounds for opposition is not
allowable under the EPC. The opponent must always expect to have
to discuss subject-matter based on dependent claims as granted if
they 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

Art. 113(1) Generally, the parties must be heard before the division decides on
whether 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. 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 must be 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 oral proceedings. If this is not feasible,
the other parties must, upon request, be given the opportunity to comment
in the proceedings subsequent to the oral proceedings, where appropriate
in a further set of oral proceedings. Where possible, however, oral
proceedings will not be adjourned.
March 2024 Guidelines for Examination in the EPO Part E – Chapter VI-7

Where possible, legal commentaries, decisions (of a board of appeal, for

example) and reports on legal decisions which are to be referred to in oral
proceedings 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 not
come 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 the
proceedings, possibly not until the oral proceedings for example, could give
rise 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 Art. 115
person may present observations concerning the patentability of the Rule 114(1)
invention. Although lack of novelty and/or inventive step are the most
common observations, third-party observations may also be directed to
clarity (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)).

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 filing
such observations (see OJ EPO 2017, A86). Observations may be filed
anonymously.

Documentary evidence and, in particular, publications submitted in support Rule 3(3)

of the arguments may be filed in any language. However, the EPO may
request that a translation into one of its official languages be filed within a
period to be specified; otherwise the evidence will be disregarded.

Although third parties are sent acknowledgment of the receipt of their

observations (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 a
communication or in the intention to grant) and will thus be visible to the
public.

The observations, including those filed anonymously, become part of the Rule 114(2)
file. They are communicated without delay to applicants or proprietors, who
may comment on them. If they call into question the patentability of the
Part E – Chapter VI-8 Guidelines for Examination in the EPO March 2024

invention in whole or in part, the examining or opposition division will take

them into account in the next office action. If the observations relate to
alleged prior art available other than from a document, 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 established beyond reasonable doubt.

Observations by third parties received in examination after dispatch of a

Rule 71(3) communication but before the decision to grant (EPO Form
2006A) has been handed over to the EPO postal service will be considered
by 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 has been

pronounced in oral proceedings (e.g. in the case of a refusal or in
opposition) or issued in written proceedings and handed over to the EPO
postal service (e.g. in the case of a grant decision or if, in opposition, no
oral proceedings were held), will be included in the file without taking note
of their content.

Observations by third parties received once proceedings are no longer

pending 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.

The EPO will make every effort to issue the next office action within three
months of receipt of third-party observations under Art. 115 by the
examining division, provided the observations are substantiated and have
not been filed anonymously. Where the observations are received at a time
when a reply from the applicant to a communication is outstanding, this
period 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 the
Euro-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 three
months after expiry of the period under Rule 161, 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 to
achieve such a result in the European phase must, therefore, make this
clear in the observation or file the observation with the EPO as
designated/elected Office.
March 2024 Guidelines for Examination in the EPO Part E – Chapter VI-9

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/en/formal-complaint.

Complaints are forwarded to a dedicated EPO department responsible for

(i) ensuring that the complaint is dealt with fairly and efficiently and that
suitable 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 handling
complaints 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 of

specific 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 a

third party while proceedings are pending before the EPO. Such a
submission will be treated as a third-party observation (see E-VI, 3).

The department responsible for handling complaints promptly forwards any

complaint relating to appeal proceedings to the EPO Boards of Appeal Unit.

Complaints having a substantive and/or procedural bearing on proceedings Art. 128(4)

before the EPO, as well as replies thereto by the department responsible Rule 144(d)
for handling complaints, will only exceptionally be excluded from file
inspection (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 2024 Guidelines for Examination in the EPO Part E – Chapter VII-1

Chapter VII – Interruption, stay and

consolidation 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 Rule 142(1)
one of the following events:

(i) in the event of the death or legal incapacity of the applicant for or Rule 142(1)(a)
proprietor of a European patent or of the person authorised by
national 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 by
such representative;

(ii) in the event of the applicant for or proprietor of a European patent, as Rule 142(1)(b)
a result of some action taken against their property, being prevented
by legal reasons from continuing the proceedings before the EPO; or

(iii) in the event of the death or legal incapacity of the representative of Rule 142(1)(c)
an applicant for or proprietor of a European patent or of their being
prevented for legal reasons resulting from action taken against their
property from continuing the proceedings before the EPO.

In principle, the EPO interrupts proceedings pursuant to Rule 142 ex officio.

In the case of Rule 142(1)(a) last sentence, however, proceedings are
interrupted on request only.

1.2 Responsible department

The Legal Division of the EPO bears sole responsibility for the interruption Art. 20
and resumption of proceedings under Rule 142 (see the decision of the
President of the EPO dated 21 November 2013, OJ EPO 2013, 600).

1.3 Date of interruption

An interruption is registered (in general retroactively) with legal effect from
the date of the occurrence of the event. In cases where proceedings are
interrupted on request, the interruption is effected as from the date of
receipt of the request at the EPO.

The parties are informed of the interruption of proceedings and the reasons Rule 143(1)(t)
for it. The date of interruption as well as the date of resumption of
proceedings 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 Rule 142(2)
informed of the identity of the person authorised to continue the
proceedings 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.
Part E – Chapter VII-2 Guidelines for Examination in the EPO March 2024

If, three years after the publication of the date of interruption in the
European Patent Bulletin, the EPO has not been informed of the identity of
the 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 will

continue 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 other
parties the communication of the appointment of a new representative of
the proprietor of the patent. If, the EPO has not been informed of the
appointment of a new representative within a period of three months after
the beginning of the interruption of the proceedings, it communicates to the
applicant 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 be
withdrawn or the European patent will be revoked if the information is
not submitted within two months after this communication is notified;
or

Rule 142(3)(b) (ii) where Art. 133(2) is not applicable, that the proceedings will be
resumed with the applicant for or proprietor of the patent as from the
date on which this communication is notified.

A copy of the communication will be forwarded to the other parties.

1.5 Resumption of time limits

Rule 142(4) 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 examination
and for paying renewal fees.

If the time limit for filing the request for examination is in force on the date
of 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 at
least the two months prescribed by Rule 142(4), second sentence.
March 2024 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 in
Rule 51(2) is in force on the date of interruption of the proceedings, it is
suspended and begins to run again for the remaining period on the date of
resumption.

2. Stay of proceedings under Rule 14 due to pending national

entitlement proceedings
If third parties provide evidence that they have instituted proceedings Rule 14(1)
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. This
consent 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 the
outcome of examination or opposition proceedings depends entirely on the
answer to the questions referred to the Enlarged Board of Appeal, the
proceedings 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 the
party/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 to
stay the proceedings or refusing a request to stay is not separately
appealable; it can only be appealed together with the final decision on the
application/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 the
proceedings 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).
Part E – Chapter VII-4 Guidelines for Examination in the EPO March 2024

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 facts
of 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 oral
proceedings.

The parties are to be informed of consolidation. This information includes a

statement about the purpose of consolidation. Where proceedings are
consolidated for the taking of evidence, this is to be notified in the order to
take 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 the

proceedings 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 the
decision allows a separate appeal (see E-X, 3). The same applies
mutatis mutandis to a decision setting aside consolidation.
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-1

Chapter VIII – Time limits, loss of rights, further

and accelerated processing and
re-establishment of rights
1. Time limits and loss of rights resulting from failure to respond
within a time limit

1.1 Determination of time limits

The EPC imposes time limits upon parties to proceedings. In the EPC, a Art. 120
"time limit" is a period of time of defined duration, calculated in full years, Rule 131
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 designation
fees), Rule 58 (correction of deficiencies in application documents),
Rule 70(1) (request for examination), Rule 71(3) (filing translations of the
claims 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 this
range 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 patent
application), 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 basis

of 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 (minimum
of 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 the
subsequent filing of documents referred to by a party; or if
observations are required on amendments which are merely of a
minor 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.

Part E – Chapter VIII-2 Guidelines for Examination in the EPO March 2024

Where a communication according to Art. 94(3) in examination is

accompanied by a request for a translation of a priority document
(Rule 53(3)), the period set for reply to that communication and for
providing the translation is the same and is at least four months, regardless
of the severity of the objections raised in the communication according to
Art. 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 is
difficult to give general guidance, but a six-month time limit might be
justified if for example the subject-matter of the application or patent or the
objections 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 the
indication provided for in Rule 70(2), a six-month time limit running from the
publication 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 the
duration of time limits laid down in Rule 132. They may be fixed by the EPO
at its own discretion.

1.4 Calculation of time limits

Rule 131 Although Rule 131 allows other possibilities, any period fixed by the EPO
Rule 134 will usually be specified in full months which will be calculated from the date
of notification (see E-II, 2). Rule 131 gives precise details for the
determination of the day of expiry of the period, whilst Rule 134 contains
provisions covering certain contingencies (see E-VIII, 1.6).

Rule 142 When proceedings have been interrupted because of the death of the
applicant 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 of
proceedings under Rule 14 due to national entitlement proceedings, with
the exception of those for payment of the renewal fees, are interrupted.
Rule 14(4) applies to the calculation of time limits after the resumption of
proceedings (see A-IV, 2.2.4).

1.5 Effect of change in priority date

Art. 88(2) 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 of
Art. 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. For example, if
a request for restoration of a priority right is filed upon entry into the
European phase on expiry of the 31-month time limit under Rule 159(1) but
the request is not granted resulting in the loss of the right of priority, the 31-
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-3

month time limit will not be deferred. Part A of the Guidelines deals with the
procedure to be followed (see A-III, 6.9 to 6.11).

1.6 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 Rule 132
which may not be extended, the duration of time limits may be extended on
request. The request must be submitted in writing before expiry of the
period that has been set. The extended period is to be calculated from the
start of the original period.

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 a
communication under Art. 101(1) and Rule 79 or Rule 81(2) and
Rule 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 convincingly
that a reply in the period previously set will not be possible. Such
exceptional circumstances might be e.g. the fact that representatives or
clients are so seriously ill that they cannot deal with the case in time; or the
need to perform extensive biological experiments or tests. On the other
hand, foreseeable or avoidable circumstances (e.g. leave, pressure of other
work) are not accepted as a sufficiently exceptional circumstance (see
Notice 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 communication

according 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 Art. 106(2)
rejected and any applicant considers this unjust, they can only overcome
Part E – Chapter VIII-4 Guidelines for Examination in the EPO March 2024

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
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 next
stage, and this could be a decision under Art. 101(2) or (3).

1.6.2 Extension of periods under Rule 134

1.6.2.1 Extension of periods under Rule 134(1)

Rule 134(1) Periods that expire on a day on which at least one of the filing offices of the
European Patent Office (i.e. Munich, The Hague or Berlin) is not open for
receipt of documents (e.g. because a public holiday is observed at the
location of the EPO's filing office) or on which mail is not delivered for other
reasons (with the exception of a general dislocation in the transmission or
delivery 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 filing
offices are open again for receipt of documents and on which mail is
delivered.

An extension pursuant to Rule 134(1) also applies in the event that any one
of the means of electronic filing provided by the EPO under Rule 2(1) is not
available, 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 more

because of scheduled maintenance, Rule 134(1), second sentence,
applies. If the unavailability of a means of electronic filing lasts less
than four hours and is announced at least two working days in
advance, Rule 134(1), second sentence, does not apply.

– In the case of unplanned outages, users who are unable to file a

document should contact the EPO's Customer Services. If it is
confirmed 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 accepted

means of making payment to the EPO for a Euro-direct or Euro-PCT
application is unavailable, the payment period is extended to the first
working day thereafter on which all such means of making payment
are available unless the outage lasts less than four hours and is
announced at least two working days in advance.

For further details see OJ EPO 2020, A120.

March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-5

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 mail Rule 134(2) and (4)
in a contracting state, any period expiring during such dislocation is
extended for parties who are resident in the state concerned or have
appointed a representative with a place if business in that state. Where the
state 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 Rule 134(5)
the delivery or transmission of mail due to an exceptional occurrence inside
or 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 late
submission or payment will be deemed to be received in due time, provided
that

– the dislocation affected the locality where that party or their

representative 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 end
of 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 (see
E-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 of
a 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 an
additional fee in accordance with Rule 51(2) and the expiry of the
periods under Rule 51(3) and (4) (see A-X, 5.2.4).
Part E – Chapter VIII-6 Guidelines for Examination in the EPO March 2024

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 for
the renewal fee is deferred to the expiry of a period, for instance in
the 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) (see
A-IV, 1.4.3);

– the date of the start of the search, which is relevant for the
entitlement to a refund of the search fee (see A-X, 10.2.1);

– the date of the start of substantive examination, which is relevant for

filing 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 to
have 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 other
exceptional occurrence under Rule 134(5) will be taken into account by an
examining or opposition division in exercising its discretion whether to
admit 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.

1.7 Late receipt of documents

Rule 133(1) 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 to
have 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 be
observed vis-à-vis the EPO and/or the national authorities, including the
priority 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 2024 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 was
delivered 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) and
Rule 55 the application will not be proceeded with; under Art. 90(5) the
application will be refused or a right of priority lost; under Rule 5 a
document may be deemed not to have been received. If the request for
examination has not been filed in time, the application is deemed to be
withdrawn (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 specific
legal sanction is laid down in the EPC, submissions and requests from the
parties 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 in
time (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 Rule 112
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 the
refusal 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, a Art. 119
formalities officer will note such loss of rights and communicate this to the Rule 112(1)
person 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, Rule 112(2)
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 the
proceedings. Since such decisions are subject to appeal, the reasons on
Part E – Chapter VIII-8 Guidelines for Examination in the EPO March 2024

which they are based must be stated. Only the person affected by the loss
of rights noted will be party to the proceedings.

The request under Rule 112(2) for a review of the accuracy of the
communication 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 to
observe the relevant time limit for that request (see E-VIII, 2 and
E-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 will
deal 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.

2. Further processing
Art. 121(1) and (2) If the European patent application is to be refused or is refused or deemed
Rule 135(1) and (3) to be withdrawn following failure to reply within a time limit vis-à-vis the
Art. 2(1), EPO, the application is allowed to proceed if the applicant makes a request
item 12, RFees for further processing of the application within two months of the
communication concerning either the failure to observe a time limit or a loss
of rights. Further processing must be requested by payment of the
prescribed fee. The omitted act must be completed within the period for
making the request. The request is not deemed to have been filed until the
respective 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 in
respect of such a time limit is subject to the payment of a single fee for
further 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 and
paying 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 the
examination 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 to
the flat fee (Art. 2(1), item 12, third indent, RFees).
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-9

– 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, the
payment of these two fees forms a unitary procedural act subject to a
unitary 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 (see
Art. 2(1), item 12, first indent, RFees). If only one fee was not paid in
due time, the single fee for further processing amounts to 50% of that
omitted 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 a
four-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 for
further 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 performance
of 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 for
further processing amounts to the sum of the flat fee and 50% of the
claims 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 for
further 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 the
European 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, the
missing of each independent time limit results in the application being
deemed withdrawn (see J 26/95). This applies regardless of whether the
applicant is informed of the non-performance of procedural acts in one
communication or in several communications. In such cases, a fee for
further 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 the
unobserved 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-10 Guidelines for Examination in the EPO March 2024

The department competent to decide on the omitted act also decides on the
request 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 as
completion of the omitted act and therefore cannot lead to further
processing being granted (see B-XI, 8 and C-IV, 3).

Rule 135(2) As a general rule, further processing is the legal remedy for failure to
observe a time limit during proceedings before grant, even where the
consequence 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
Art. 122(1) 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 Admissibility of the request

3.1.1 Time limits covered

Art. 122(1) 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 or
means of redress. This means, for example, that in opposition proceedings
there can be no re-establishment of rights in respect of the time limits for
the patent proprietor's submission of observations on the written statements
of the other parties to the proceedings or on communications from the
opposition division. Likewise, there can be no re-establishment of rights in
case 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) Re-establishment of rights is ruled out in respect of all periods for which
Rule 136(3) further 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), and
not 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 of
rights is therefore not admissible e.g. in respect of failure to be present on
the date of appointed oral proceedings.
March 2024 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 Rule 135(1)
to a communication from the examining division under Art. 94(3);

– filing the translation of any amended claims in opposition Rule 82(2)

proceedings;

– filing the request for a decision by the opposition division on the Rule 88(3)
awarding of costs;

– filing notice of appeal and/or grounds of appeal; and Art. 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 is
available only to applicants and proprietors. Therefore, opponents are in
principle 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, the
opponents are party to the re-establishment proceedings (see T 552/02 and
T 1561/05).

In the case of transfer of an application or patent, the request for Rule 22(3)
re-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 Rule 136(1), (2)
within two months from the removal of the cause of non-compliance with
the 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 some
error 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 a
time 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 a
matter of fact which has to be determined in the circumstances of each
individual case. In the absence of circumstances to the contrary, where a
communication 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).
Part E – Chapter VIII-12 Guidelines for Examination in the EPO March 2024

Unlike the time limit for other cases as described above, a request for
re-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 described

in E-VIII, 2 apply mutatis mutandis to establishing the number of requests
for re-establishment of rights, in particular for establishing the relevant fees
to 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 is
due. Where several independent procedural acts are omitted, each
resulting in the application being deemed withdrawn, a fee for
re-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 a
request for further processing, determines the number of requests for
re-establishment and the corresponding number of fees for
re-establishment.

Example 1

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 a
unitary procedural step but are legally independent and subject to
independent time limits. The table below provides a schematic illustration
regarding further processing and re-establishment of rights (for information
on 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 number
of 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 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-13

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 Number of fees Number of

missed for further fees for re-
(box I) processing establishment
(box II) (box III)

Filing of the translation 1 1 1

Payment of the filing 1 (unitary) 1 (comprising 1

fee 50% of the filing
fee and 50% of
Payment of the the additional
additional fee for an fee)
application comprising
more than 35 pages

Payment of the 1 1 1
designation fee

Payment of the search 1 1 1

fee

Filing of the request for 1 (unitary) 1 (comprising a 1

examination flat fee and 50%
of the
Payment of the examination fee)
examination fee

Resulting number of 5 non- 5 fees for further 5 fees for re-

fees to be paid observed processing, 2 of establishment
time limits them comprising
2 fees

Example 2

The applicant missed the time limit for requesting further processing in
respect of the time limit for replying to a communication from the examining
division under Art. 94(3) as well as the time limit to pay the renewal fee with
the additional fee. As these time limits expire independently of one another
and both have been missed by the applicant, each resulting in the
application being deemed withdrawn, a request for re-establishment has to
be filed in respect of each unobserved time limit (J 26/95). In such cases, a
fee for re-establishment has to be paid in respect of each request. In the
case of independent time limits, in particular where they expire on different
dates, the reasons for missing them and the date of removal of the cause of
non-compliance may be different.

Example 3

After a decision to refuse by the examining division, the applicant missed

both the time limit for filing the notice and the time limit for filing the
Part E – Chapter VIII-14 Guidelines for Examination in the EPO March 2024

statement of grounds of appeal. Both time limits were missed for the same
reason. Despite two time limits being missed, only one re-establishment fee
has to be paid as both periods were triggered by the same event, i.e. the
notification of the decision, and both time limits were missed on the same
grounds. In such a case, re-establishment in respect of both periods has to
be examined together and, as the result would inevitably be the same in
both cases, one re-establishment fee is considered to be sufficient.

If the time limits for filing the notice and the grounds were missed for
different reasons, there would be no causal connection and two fees for
re-establishment would have 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 of
non-compliance with the time limit concerned (i.e. the fact or obstacle
preventing the required action within the time limit), specify at what time
and under which circumstances the cause occurred and was removed, and
present the core facts making it possible to consider whether all due care
required by the circumstances had been taken in order to comply with the
time 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 not
satisfy the requirement for a duly substantiated request under Rule 136(2).

Once the time limit for filing the request for re-establishment has expired,
the requester may clarify or supplement the alleged facts and, where
appropriate, 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 not
admissible and are, therefore, not taken into consideration by the deciding
instance.

3.2 Merit of the request

Art. 122(1) 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 care
required 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 reasonable
care, i.e. the standard of care that the notional reasonably competent
patentee, 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 the
time limit, all due care is considered to have been taken if non-compliance
with 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 of

rights is dependent on the individual facts of the case. Examples include
inter alia organisational upheavals and sudden serious illnesses. In such
cases, the requesters must show not only the existence of those
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-15

circumstances, 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 to
relatively 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 the
applicant 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 and
J 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 that

applicants are on notice that instructions are required in order to meet a
time limit, they have however a duty to take all due care in the
circumstances to meet the time limit (see T 381/93). The fact that the
professional representative has acted correctly does not exempt applicants
from suffering the consequences of their own mistakes or negligence.

European representatives are responsible in the procedure before the EPO

and must be presumed to be supervising their own work continuously (see
T 1095/06). When professional representatives have been instructed by
their client to perform a particular procedural action and do not receive in
due time the necessary additional instructions or required means, they
must 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 the
assistant 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 of
an 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 competent Rule 136(4)
to decide on the request for re-establishment of rights. The grounds for the
Part E – Chapter VIII-16 Guidelines for Examination in the EPO March 2024

decision 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).

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 all
other cases, the appeal, together with the application for the
re-establishment of rights, must be submitted to the competent board of
appeal.

Art. 122(3) If the request is granted, the legal consequences of the failure to observe
Rule 51(4) 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 the
notification of the decision to grant the request for re-establishment will be
due on that latter date. Valid payment will still be possible within four
months of that date. If a renewal fee was already due when the loss of
rights 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.

If other time limits the non-observance of which would also lead to a loss of
rights 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 their
applications processed under the programme for accelerated prosecution
of 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) must

be 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 be
processed by the EPO.

A PACE request may be filed only once during each stage of the
procedure, 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 the
examination phase.
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-17

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 same
stage 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).

Accelerated prosecution under the PACE programme can be provided only

where practically feasible and subject to the workload of the search and
examining divisions. In certain technical fields there may be constraints due
to 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 by
making 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 the

European 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 complete
enough for the extended search report to be drawn up. That means,
Part E – Chapter VIII-18 Guidelines for Examination in the EPO March 2024

in particular, that the accelerated search can only start once the
claims, the description, the translations required and, where
applicable, the drawings and a sequence listing conforming to the
rules for the standardised representation of nucleotide or amino acid
sequences 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 to
Rules 161(2) and 162(2) and pay any claims fees due (see the notice
from 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 the
applicant's response to the invitation to pay further search fee(s) has been
received or until the respective time limit has expired.

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 to

issue the next office action within three months of receipt by the examining
division of the application, the applicant's response under Rule 70a or the
end 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 been
requested 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) and
Rule 162(2) and fulfil all corresponding requirements (see the notice from
the 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 the
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-19

application 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).

Currently, the EPO's PPH partner offices are: JPO (Japan), KIPO (South OJ EPO 2022, A44
Korea), CNIPA (China), USPTO (USA), ILPO (Israel), CIPO (Canada), IMPI OJ EPO 2022, A45
(Mexico), IPOS (Singapore), IPA (Australia), SIC (Colombia), MyIPO OJ EPO 2022, A58
(Malaysia), IPOPHL (Philippines), INPI (Brazil), INDECOPI (Peru) and OJ EPO 2022, A59
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 is
pending 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 court
or the competent authority of a contracting state that infringement or
revocation actions are pending (D-VII, 1.2 and OJ EPO 2023, A99).

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 and
competent authorities of the contracting states (see Art. 10 Rules of
Procedure 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 an
interest in enquiring about the progress of the file and thus obtaining
information on when the next Office action is to be expected. A specific
procedure for enquiries is available to all parties to proceedings before the
EPO's departments of first instance, and applies to enquiries filed on or
Part E – Chapter VIII-20 Guidelines for Examination in the EPO March 2024

after 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 is

filed 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 the
workload in the technical area concerned and the internal deadline for the
completion of the pending action.

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 of

European patent applications filed on or after 1 June 2014 (including
international applications entering the European phase where the
EPO 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 the
committed period;

and within six months from receipt of the enquiry:

– where the extended/partial European search report in respect of

European 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 a
general 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. Renunciation of rights

8.1 Withdrawal of application or designation

Rule 15 Applicants may withdraw their application at any time as long as the
application is pending, provided that no third parties have proven to the
EPO that they have initiated proceedings concerning entitlement to the
March 2024 Guidelines for Examination in the EPO Part E – Chapter VIII-21

application pursuant to Rule 14. With regard to the pendency of an

application, see A-IV, 1.1.1.

The same applies to the withdrawal of a designation (see also A-III, 11.3.8). Art. 79(3)
If all designations are withdrawn, the application is deemed to be Rule 39(2) and
withdrawn. (3)

Withdrawal of the application in due time before the eighteen-month Art. 87(4)
publication 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 have
been left outstanding and the application has not served as a basis for
claiming 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
is refused either in written or oral proceedings can still be withdrawn in this
period.

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 are
completed, the publication will be deferred until eighteen months after the
date of filing of the European application or, where multiple priorities are
claimed, 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 the
examination 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 the
proceedings or the division has to confirm the withdrawal in the minutes
and read out the corresponding passage for confirmation in the oral
proceedings. The withdrawal has effect from the date of the oral
proceedings.

8.4 Surrender of patent

A patent may not be surrendered in opposition proceedings by the Rule 84(1)
proprietor filing a declaration of surrender with the EPO. Such a surrender
must be declared before the competent authorities in the designated states
in question (see D-VII, 5.1). Nevertheless, if a proprietor unambiguously
declares to the EPO the surrender (or abandonment or renunciation) of the
patent, this is deemed equivalent to a request that the patent be revoked
(see also D-VIII, 1.2.5).
March 2024 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 an Art. 153(1)(a) and
international application filed under the Patent Cooperation Treaty (PCT) (b)
designating "EP" (Euro-PCT application). If an applicant enters the Art. 153(2)
European phase without having requested international preliminary Art. 150(2)
examination under PCT Chapter II, the EPO will act as a "designated
Office". If before entering the European phase the application was
processed under PCT Chapter II, the EPO will act in the European phase
as 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 a
European patent application.

In addition to being a designated and, where appropriate, elected Office, Art. 151
the EPO may act as a receiving Office under the PCT within the terms set Art. 152
out in Art. 151. It may also act as an International Searching Authority Rule 157
(ISA), as an International Preliminary Examining Authority (IPEA) under the Rule 158
terms 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, and
OJ EPO 2018, A35). There are thus the following possibilities for a
European application filed under the provisions of the PCT:

(i) the filing of the application and the international search take place at
an 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 designated
Office;

(iii) the application is filed at the EPO, which also performs the
international 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 carry
out 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;
Part E – Chapter IX-2 Guidelines for Examination in the EPO March 2024

(vi) if the international search has been carried out by an office other
than the EPO, the applicant may still request the EPO to perform a
supplementary international search (SIS) in its capacity as SISA.

In case (i), there will be an international search report drawn up by another

office. In cases (ii) and (iii), the international search report and the "written
opinion of the International 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".

2. EPO as designated or elected Office

Art. 150(2) In proceedings before the EPO relating to international applications, the
Art. 27(1) PCT provisions of the PCT apply, supplemented by the provisions of the EPC. In
case of conflict, the provisions of the PCT prevail. The EPO cannot require
compliance with requirements relating to form or contents of the
international application different from or additional to those which are
provided for in the PCT.

As a result of the prevalence of the PCT provisions and the requirements of

Art. 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 that
applicable to European direct applications, by reference to the instructions
in the appropriate sections of Part A.

2.1 Entry into the European phase

2.1.1 Requirements for entry into the European phase

Rule 159 "Entry into the European phase" is not an act in itself but a series of acts to
be 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 published

in 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 2024 Guidelines for Examination in the EPO Part E – Chapter IX-3

– pay the designation fee (and any extension or validation fees) if the
period under Rule 39 has expired earlier (see E-IX, 2.3.11),

– pay the search fee if a supplementary European search report is to

be 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 the
period 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 in

Art. 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) of

which priority is claimed (see E-IX, 2.3.5),

– furnish a sequence listing complying with the standard

(see E-IX, 2.4.2),

– furnish the indications on the applicant mentioned in Rule 163(4) in

respect 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 behalf

of the authority with which the priority application was filed
(see A-III, 6.12).

Applicants are strongly recommended to use the most recent edition of

Form 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 Rule 159(1)(b)
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 the
indications 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 the
additional (page) fee to be paid for applications comprising more than
Part E – Chapter IX-4 Guidelines for Examination in the EPO March 2024

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 the
European grant procedure is to be based, the international application as
published as well as any amendments made in the international phase are
considered 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 the
international publication will be taken as additional pages (see A-III, 13.2).

2.1.2 Initial processing and formal examination; copy of the

international application
Art. 23 PCT The initial processing and formal examination of international applications
Art. 40 PCT are carried out in the international phase by PCT authorities under the PCT.
Rule 49.1(a bis) PCT
Art. 24(1)(iii) PCT Unless there is a specific request for early processing (see E-IX, 2.8), the
Rule 159(1) EPO acting as a designated or elected Office may not process or examine
Rule 160 an international application prior to the expiry of 31 months from the date of
Art. 121 filing of the application or, if priority has been claimed, from the earliest
Art. 2(1), item 12, priority date (31-month time limit). The EPO will, however, prior to the
RFees expiry of the 31-month time limit, perform any purely administrative tasks
such as adding documents relating to the European phase to the file and
recording the professional European representative appointed to act on
behalf 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 furnished
by the International Bureau. The EPO does not require the applicant to
furnish 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

Art. 14(2) and (3), Where the international application was not published in an official
153(4) language of the EPO, the applicant is required, in accordance with Art. 22
Rule 159(1)(a) or 39 PCT and Rule 159(1)(a), to furnish a translation of the published
application 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) (i) the description (as originally filed; the title as established by the ISA
PCT under Rule 37.2 PCT, if applicable),

Rule 49.5(a) PCT (ii) the claims (as originally filed),

March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-5

(iii) any text matter in the drawings except for the expression "Fig." (as Rule 49.5(a), (d) and
originally filed), Rule 49.5(f) PCT

NB: In relation to items (i) to (iii) above, in the case of a correction of

erroneously filed elements or parts under Rule 20.5bis(d) PCT by the
receiving Office (see C-III, 1.3), the translation must include both the
erroneously 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), Rule 49.5(a) PCT

(v) any published request for rectification under Rule 91.3(d) PCT;

(vi) any text matter contained in the sequence listing unless the text in Rules 12.1(d) and
the sequence listing is available to the EPO in English; the translation 49.5(a-bis) PCT
is to be furnished in the form of a copy of the complete sequence
listing complying with the applicable WIPO standard including a
translation of the text matter;

(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 the Art. 19 PCT
amended claims under Art. 19 PCT to form the basis of further Rule 49.3, 49.5(a)(ii)
proceedings, and (c-bis) PCT
Rules 3 and 137(4)
– the amendments under Art. 19 PCT in the form of a translation
of the complete set of claims furnished under that provision
and the statement under Art. 19(1) PCT, if submitted to the IB,
and,

– the accompanying letter, indicating the basis for the

amendments in the application as filed (Rule 46.5(b) PCT), so
as to allow the examiner to understand and take the
amendments into account (see also E-IX, 3.4),

(ix) if the EPO acts as elected Office, Art. 39(1), 36(2)(b)

and (3)(b) PCT
– all annexes to the international preliminary examination report Rules 70.16
(IPER), i.e. any replacement sheets and accompanying letters and 74.1(a) PCT
referred to in Rule 70.16 PCT that allow the examiner to
understand 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. Rule 76.5(iv) PCT
item (viii) above) if the applicant wishes these amendments to
form the basis of further proceedings and they are not
annexed to the IPER (for instance because they were
considered reversed by an amendment under Art. 34 PCT).
Part E – Chapter IX-6 Guidelines for Examination in the EPO March 2024

Art. 24(1)(iii) or 39(2) If the applicant does not furnish the translation of any of the items (i) or (ii)
PCT above within the 31-month period, the application is deemed to be
Rule 160(1) withdrawn under Rule 160(1).

Rule 49.5(c-bis), (g), If the applicant does not furnish the translation of any of the items (iii) to (ix)
(h) PCT above within the 31-month period, the EPO will invite him to furnish the
translation within a two-month period from notification of the respective
communication under Rule 159(1)(a). The same applies if, in the case of a
correction 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) – as regards items (iii) to (vii) above, the application is deemed to be
PCT withdrawn;
Rule 160(1)
– as regards translations of erroneously filed application documents (in
relation to items (i) to (iii) above) in the case of a correction of
erroneously filed elements or parts under Rule 20.5bis(d) PCT by the
receiving Office, the application is deemed to be withdrawn;

Art. 39(2) PCT – as regards the replacement sheets referred to in item (ix) above, the
Rule 160(1) application is deemed to be withdrawn;

Rule 49.5(c-bis) PCT – as regards the replacement sheets referred to in item (viii) above, the
Rule 3(2) EPO will disregard the amendments under Art. 19 PCT;

Rule 49.5(c) PCT – as regards the accompanying letter and the statement referred to in
Rule 3(1) item (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 – as regards the accompanying letters referred to item (ix) above, the
Rule 3(1) EPO 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 to
have occurred if, within two months as from notification of the
communication, the translation and a valid request for further processing
(including the payment of the requisite fee) are filed (Art. 121 and
Rule 135(1), see E-VIII, 2).

Where an international application was filed and published in the

international phase in an official language of the EPO, it is not possible to
change the language of the proceedings on entry into the European phase
by 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 the
proceedings within the meaning of Art. 14(3) remains the language in which
the application was published by WIPO's International Bureau.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-7

A translation, whether filed on entry into the European phase under Art. 153(4)
Art. 153(4) or in the international phase under Rule 12.3 or 12.4 PCT, may Art. 14(2)
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 search
fee
Under Rule 159(1)(c), applicants must pay the filing fee, including any Rule 159(1)
additional fee for pages in excess of thirty-five (see A-III, 13.2), within a Rule 160
period of 31 months from the date of filing or, if priority has been claimed, Art. 2(1), item 12,
from the earliest priority date. Further, under Rule 159(1)(d), they must pay RFees
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 must
also 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 the
filing fee, the additional fee, the search fee, the designation fee or the
examination fee, or to file the request for examination, means that the
application is deemed to be withdrawn.

If the EPO finds that the application is deemed to be withdrawn for this
reason, it communicates this to the applicant (Rule 160(2)).

The communication under Rule 160(2) and the communication according to

Rule 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 and

examination 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 is
made 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 of Rule 56
erroneously filed application documents or parts (Rule 56a) completely Rule 56a
contained in the priority document apply if the EPO is designated/elected Rule 20 PCT
Office. Similar options exist under the PCT in relation to the receiving Office
(Rule 20.5 to 20.8 PCT). 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 must have been filed, together with the
documents required under Rule 56(3) or Rule 56a(4) respectively, within
two months from the date of filing or from a communication of the receiving
Office under Rule 20.5(a) PCT or Rule 20.5bis(a) PCT, as the case may be
Part E – Chapter IX-8 Guidelines for Examination in the EPO March 2024

(see Rule 56(2) and Rule 56a(3)), and the applicant must have effectively
requested "early processing" under Art. 23(2) PCT (see E-IX, 2.8) before
expiry of the two-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 and
erroneously filed parts are thus considered part of the application as filed.

Art. 24, 25, 26, In addition, Art. 26, 27 and 48 PCT, Rules 82bis and 82ter PCT and
27 and 48 PCT Rule 139 EPC apply.
Rule 82bis and
82ter PCT The date of filing (see A-II, 4 ("Examination on filing")) of a Euro-PCT
Rule 139 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 for
establishing 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 to
verify 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 is

referred 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 automatically
considered 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 to
representation in the European phase. The same principles apply where
applicants having their residence or principal place of business in an EPC
contracting state are represented by an authorised employee (see
A-VIII, 1.3).
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-9

Applicants, in particular those not resident in an EPC contracting state, are

recommended to appoint a professional representative before the EPO in
good 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 a
translation of the application, file a request for early processing, etc.

Applicants having neither a residence nor their principal place of business

within 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 and
the other procedural steps (e.g. filing a request for re-establishment of
rights) only through a professional representative entitled to practise before
the EPO.

In case of failure to appoint a professional representative where this is Rule 163(5) - (6)
required, the EPO invites the applicant to do so within a time limit of two
months. 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; the
applicant may request further processing (see E-VIII, 2).

If there is more than one applicant and the following information was not Rule 163(4) - (6)
provided for one or more of those applicants in the international phase and
is still missing at the expiry of the 31-month time limit under Rule 159(1):

(i) address

(ii) nationality

(iii) state of residence or principal place of business

the 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 the
end of the 31-month time limit, with the same consequence for failure to
correct the deficiency in time. If the applicants fail to reply in time to the
above-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
professional representative may make use of an address for
correspondence which is different from their address of residence.
See A-III, 4.2.1.
Part E – Chapter IX-10 Guidelines for Examination in the EPO March 2024

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 the
international 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 to
correct 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 must
comply with the physical requirements as set out in A-III, 3 ("Physical
requirements"). The requirements are in general identical with the
corresponding 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 in
Rule 41(2), with the exception of the items referred to in
sub-paragraphs (e) and (f) thereof.

2.3.4 Designation of inventor

Rule 163(1) The requirement, as set out in A-III, 5 ("Designation of inventor"), that the
designation of inventor is filed in a separate document where the applicant
is not the inventor or the sole inventor has to be complied with irrespective
of 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 be
mentioned in the published application. If the inventor has not been named
in the international application at the expiry of the period of 31 months from
the 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 the
designation of inventor within a period of two months. Failure to rectify this
deficiency in time, leads to refusal of the application according to
Rule 163(6). Applicants will be notified of this decision according to
Rule 111. They may request further processing (see E-VIII, 2).

2.3.5 Claim to priority

Rule 17.1 and The claim to priority (see A-III, 6 ("Claim to priority")) for an international
17.2 PCT 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 to
furnish it with a copy as standard practice promptly, but not earlier than
international publication, or, where the applicant has requested early
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.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-11

Where the file number or the copy of the previous application has not yet Rule 163(2)
been submitted at the expiry of the 31-month time limit, the EPO invites the
applicant 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 the
requirement that a copy of the previous application be furnished
(see A-III, 6.7), also apply to international applications entering the
European 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).

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 of
the priority right. 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.

On the other hand, the application may be refused without the priority
document being on file, provided that the relevant prior art is neither an
intermediate document nor an Art. 54(3) document, the relevance of which
depends on the validity of the priority right. For more details on treatment of
such cases in examination see F-VI, 3.4.

Where a translation of the previous application into one of the official Art. 88(1)
languages of the EPO is required, it must be filed on request from the EPO Rule 53(3)
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 of
any search carried out by or on behalf of the office of first filing for each
application 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 the
right of priority can be made either in the international phase before the
receiving 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 of
priority rights granted by a receiving Office under the "unintentional"
criterion does not have any effect before the EPO as designated/elected
Office (Rule 49ter.1(b) PCT).
Part E – Chapter IX-12 Guidelines for Examination in the EPO March 2024

Rule 49ter PCT As set out hereafter, if the applicant has already filed a request for
Art. 122 restoration of priority with the receiving Office, a (new) request need not
PCT Newsletter always be filed upon entry into the European phase.
9/2015, 10
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 the
receiving Office. If, however, the EPO has reasonable doubt that the
requirements 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 the

procedure 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 of

priority 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 the
date on which the 31-month time limit for entry into the European
phase expired or from the effective date of early entry into the
European 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 for
requesting 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;

(v) the request is accompanied by a statement of reasons for the failure

to file the international application within the priority period and is
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-13

preferably accompanied by any declaration or other evidence in

support 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 the
less 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 were
omitted from the published PCT application, the Receiving Section has to
ensure 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 Rule 162(2)
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 expiry
of the six-month period under Rule 161. In this case, the applicant must
ensure 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 the
six-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 and
before expiry of the six-month period under Rule 161. In this case, they
must 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 this
period, they must ensure that any claims fees are paid for the number of
claims on file on expiry of this period which exceeds the number of claims
for which claims fees were paid within the 31-month period.
Part E – Chapter IX-14 Guidelines for Examination in the EPO March 2024

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 the
claims 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 be
deemed 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 have
been abandoned pursuant to Rule 162(4) and which are not otherwise to
be found in the description or drawings cannot subsequently be
reintroduced 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 the
provisions 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 the
international application supplied to the EPO.

2.3.11 Designation fee

The time limit for paying the designation fee is 31 months from the date of
filing 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 expired
earlier (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 the
date 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 a

Euro-PCT application to states for which an Extension Agreement or a
Validation Agreement with the EPO has become effective, see A-III, 12.

2.3.12 Renewal fees

Rule 159(1)(g) The renewal fees for a Euro-PCT application are due in respect of the third
and each subsequent year, calculated from the date of filing of the
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-15

Euro-PCT application as accorded by the receiving Office. If, according to

Rule 51(1), the renewal fee for the third year fell due within the 31-month
time limit for entry into the European phase, the due date is deferred and
the fee may still 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 no
provision 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 that
time 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, and
E-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 the
Euro-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 acid Rule 163(3)
sequences"), where the Euro-PCT application discloses nucleotide or
amino acid sequences, a sequence listing in electronic form 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 be accessible 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 filed
by the applicant, at the expiry of the 31-month time limit, the applicant will
be invited to furnish the sequence listing in electronic form in accordance
with the applicable WIPO standard and pay a late-furnishing fee within a
period of two months (see Rule 163(3) and 30(3)). The sequence listing
may not be filed on paper or in PDF format (see the decision of the
President of the EPO dated 9 December 2021 (OJ EPO 2021, A96) and
point 6 of the notice from the EPO dated 9 December 2021 (OJ EPO 2021,
A97).
Part E – Chapter IX-16 Guidelines for Examination in the EPO March 2024

If the required sequence listing is not filed within the time limit set, the
application is refused. The refusal may be remedied by a request for further
processing (see E-VIII, 2).

2.4.3 Certificate of exhibition

Rule 159(1)(h) 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 the
European 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 material

Rule 31 With respect to A-IV, 4 ("Applications relating to biological material"), no
remedy is available before the EPO as designated/elected Office upon
entry 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 the
deposit 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 upon
entry 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 is
available 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 biological
material concerned will be made available only by the issue of a sample to
an 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")

2.5.1 Publication of the international application

Art. 153(3) and The international publication of a Euro-PCT application in an official
(4) language of the European Patent Office takes the place of publication of
Rule 159 the European patent application and will be mentioned in the European
Art. 67 Patent Bulletin. If the international publication of the Euro-PCT application
is in another language, a translation into one of the official languages must
be 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
(3), only effective as from the date of publication of the translation by the
EPO.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-17

The translation of the international application is published together with the

bibliographic data as an A document and includes all documents that were
part 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 the
European phase are not published.

If Rule 20.5bis(d) PCT applies (see C-III, 1.3), the publication will comprise
the translation of both the erroneously filed application documents and the
correct application documents. The front page of the publication will make
reference 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 of
incompatibility was withdrawn with effect from 1 November 2022 and is no
longer 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 is
available via file inspection (see A-XI, 2.2).

If the translation is not supplied, the application is to be deemed withdrawn Rule 160(1)
(see E-IX, 2.1.3). Furthermore, in this case, the application which has been Rule 165
published under the PCT is not considered as comprised in the state of the
art in accordance with Art. 54(3) pursuant to Rule 165 (see G-IV, 5.2).

2.5.2 Request for examination

The time limit under Rule 70(1) for filing the request for examination Art. 153(6)
referred to in A-VI, 2 runs from the date of publication under Art. 21 PCT of Art. 150(2)
the international search report. However, this time limit will not expire Rule 159(1)(f)
Part E – Chapter IX-18 Guidelines for Examination in the EPO March 2024

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.

2.5.3 Supplementary European search

Rule 70(2) If a supplementary European search report has to be drawn up in respect
of an international application which is deemed to be a European patent
application, 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 of
six months from the notification of this communication is set for filing the
confirmation 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 the
European phase may waive the right to be asked whether they wish to
proceed further by ticking a check box in section 12.2 (see the notice from
the 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.

2.7 Communication to the EPO as a designated Office

Art. 20(1)(a) PCT A copy of the application together with the international search report or a
Rule 44bis.2 PCT declaration in accordance with Art. 17(2)(a) PCT is communicated by the
International 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 copy
of the international application (Rule 49.1(a-bis) PCT). The EPO as a
designated Office will then examine the application for compliance with the
requirements 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.

2.8 Early processing

Art. 23 PCT When acting as a designated Office, the EPO must not process or examine
Rule 44bis.2 PCT 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
the WO-ISA, the applicant may but does not have to file with the IB a
request to do so. If necessary, the EPO will take care of this itself.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-19

A request for early processing under Art. 23(2) or 40(2) PCT may be filed Art. 23(2) and
with the EPO at any time before expiry of the 31-month time limit 40(2) PCT
(Art. 22(3) PCT and Rule 159(1)). The request does not require a specific
wording, but applicants must clearly express that they wish the processing
of their application before the EPO as designated/elected Office to
commence early. Applicants using EPO Form 1200 may file a request by
ticking a check box in section 12.1 (see the notice from the EPO dated
7 July 2017, OJ EPO 2017, A74).

For the request to be effective, applicants must comply with the Rule 159(1)
requirements stipulated in Rule 159(1) as if the 31-month time limit expired
on 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 the
application comprises more than 35 pages), filing of a translation (if a
translation 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)). Which
further requirements stipulated in Rule 159(1) must be complied with
depends on the date on which early processing is requested, since the
(regular) time limits for paying the designation fee (Rule 39(1)) and the
renewal fee (Rule 51(1)) and for filing the request for examination and
paying 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 the
due date according to Rule 51(1) is later than that date), the request for
early processing will be effective without the requirement(s) concerned
having been complied with (Art. 153(2), Art. 11(3) PCT).

If applicants wish not only the processing of the application before the EPO
as designated/elected Office but also the examination of the application to
start, 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 been
validly 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 upon
receipt of an indication from them that they wish to proceed further with the
application 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 Rule 20.5bis PCT
2022, correction of erroneously filed elements or parts under OJ EPO 2022, A3
Rule 20.5bis(d) PCT by the receiving Office is not effective in proceedings
before the EPO as designated/elected Office in accordance with the EPO's
declaration of incompatibility (Rule 20.8 PCT). Thus, applicants who want
to make use of the abridged procedure (by requesting that the correct
application documents be disregarded or by indicating that they wish to
pursue the application containing the correct application documents with
the date of receipt of those application documents as the filing date – see
C-III, 1.3) must inform the EPO accordingly at the time the request for early
Part E – Chapter IX-20 Guidelines for Examination in the EPO March 2024

processing is validly filed or at the latest before the communication under

Rules 20.8(c) and 82ter.1(c) and (d) PCT is issued.

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). 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 (see A-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 the
request for early processing is filed, applicants are advised to choose
another means of payment. Otherwise the fees due will be debited on the
date of receipt of the documents referred to in Art. 20 PCT from the
International Bureau (Rule 47.4 PCT) and the date on which the request for
early processing takes effect will be postponed to that date.

If pursuant to Rule 159(1)(h) a certificate of exhibition must be filed and this

requirement 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 from
the 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, the
request is effective and the Euro-PCT application will as from that date be
processed 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 the
processing 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 from
the EPO dated 21 February 2013, OJ EPO 2013, 156.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-21

2.9 Review by the EPO as a designated/elected Office and

rectification of errors made by the receiving Office or the International
Bureau

2.9.1 Review by the EPO under Art. 25 PCT

The EPO may decide, in accordance with Art. 25 PCT, to allow an Art. 25 PCT, Rules 51
international application deemed to be withdrawn, or not accorded a filing and 82ter PCT
date, to proceed as a European application. Rule 159(2)

To obtain such a review by the EPO as designated Office, applicants must

take 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 is

competent to take decisions in relation to these applications (see the
decision 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 circumstances
of Art. 25(1)(a) PCT to the examining division. Where it is decided that the
application can proceed as a European application, the search and
examination 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 Art. 24(2), 48(2),
maintain the application as a European application even if this is not Rule 82bis PCT
required by virtue of Art. 25(2) PCT (see also OJ EPO 1984, 565, Art. 122, 121
Reasons 4). The filing of a request under Art. 24(2) PCT is governed by the
same 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.
Part E – Chapter IX-22 Guidelines for Examination in the EPO March 2024

2.9.3 Rectification of errors made by the receiving Office or the

International Bureau
Rule 82ter.1(a) PCT 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 that
the 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 the
applicant'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), Further, if a receiving Office accords the international filing date on the
Rule 4.18, Rule basis of incorporation by reference of missing parts under Rule 20.5 PCT,
20.5bis PCT, 20.6, the EPO as designated/elected Office will review of its own motion whether
82ter.1(b) PCT 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 the
international filing date, it is not possible to replace these elements with
elements from a priority application. It is also not possible to add elements
from a priority application if this would result in the international application
having, for instance, two (or more) descriptions or two (or more) sets of
claims. As of 1 July 2020, such cases may however be handled by the
receiving Office under Rule 20.5bis PCT (see E-IX, 2.9.4 for the
determination of the filing date in such a case).

Rule 82ter.1(c), (d) If the EPO does not agree with the finding of the receiving Office, it will
PCT notify the applicant that it intends to consider the (later) date on which the
missing element or part was furnished as the international filing date in the
European patent grant procedure, giving the applicant the opportunity to
comment in accordance with Art. 113(1). In the case of missing parts, the
applicant may also request that the missing part concerned be disregarded
in 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 the
international application as if the international filing date had been
corrected.

2.9.4 Determination of filing date in the case of erroneously filed

elements or parts of the international application
Rule 20.5bis, Rule 20.5bis PCT, which entered into force on 1 July 2020, allows
20.8(b-bis) PCT 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. 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 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.

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 2024 Guidelines for Examination in the EPO Part E – Chapter IX-23

C-III, 1.3 remains unchanged. 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 in proceedings before the EPO as
designated/elected Office. For the procedure applied for establishing the
filing 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 Art. 30(2) PCT
files pertaining to the international phase of applications, provided that Rule 94.2bis PCT
international 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 Rule 94.3 PCT
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, the
IPER has been completed.

The above applies mutatis mutandis to the communication of information

from 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 report

is prepared
Where the EPO has not drawn up an international search report (as ISA) or
a supplementary international search report (as the authority charged with
the supplementary international search (SISA)), the application is subject to
a 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 as
in C-III, 4.

In such cases, promptly after entry into the European phase, the applicant Rule 161(2)
is invited to amend the application within a period of six months (see the
notice from the EPO dated 29 June 2010, OJ EPO 2010, 406, and the
notice 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 the
search opinion. The supplementary European search will be based on the
last 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 of
amendments and/or comments filed with Form 1200 or in response to a
communication under Rule 161(2). If the applicant does reply to the
WO-ISA, IPER or SISR, the supplementary search report and the search
opinion will be drawn up taking this reply into account (see B-II, 4.3 and
B-XI, 2).
Part E – Chapter IX-24 Guidelines for Examination in the EPO March 2024

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, in
addition 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, the
examiner may have to consider the international search report (with the
corresponding 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) prepared
by the EPO (see B-II, 4.3) and any reply filed in response thereto
(see C-II, 3.1).

3.2 Applications for which no supplementary European search

report is prepared
Rule 161(1) 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 supplementary
international 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 to
the 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 the
invitation according to Rule 161(1) and is not extendable.

The communication under Rule 161(1) is issued promptly after expiry of the
time limit for entry into the European phase and is combined with the
communication 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 filing
amendments 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 loss
of 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
account when drafting the first communication (see E-IX, 4.3.2) or when
issuing the invitation under Rule 164(2) (see C-III, 3.1), provided that the
application is not deemed to be withdrawn.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-25

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) and
Rule 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 the
six-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 in
accordance 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 the
examining 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, the
applicant 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 be
considered to be a valid reply. This is the case in the following situations:

(i) If the applicant has filed new amendments and/or comments upon
entry into the regional phase before the EPO, provided that

– the applicant has indicated on entry into the European phase

that 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).

(ii) 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

– has indicated on entry into the European phase that these

amendments are maintained,
Part E – Chapter IX-26 Guidelines for Examination in the EPO March 2024

– 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 been
taken 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 to
respond 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 the
Rule 161(1) communication (see E-IX, 3.4).

In cases (i) and (ii) above, 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 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 fees
due (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 prepared
by 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 the
requirements of Rule 137(4) are fulfilled for any such amendments when
they are filed, thus avoiding a further communication according to
Rule 137(4).

3.4 Rule 137(4) applies

Rule 137(4) 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 for
further examination were filed either during the Rule 161(1) time limit or
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-27

earlier, the requirements of Rule 137(4) must be complied with (the

amendments must be identified and the basis for them in the application as
filed indicated). If the applicant has not yet complied with these
requirements on expiry of the time limit according to Rule 161(1), the
examining division may request him to provide this information within a
period 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 the
international phase (Rules 46.5, 66.8 and 70.2 PCT).

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 general
issue at least one communication according to Art. 94(3) and Rule 71(1)
and (2) in subsequent examination proceedings and will consider the
applicant's reply thereto before issuing a decision or a summons to oral
proceedings. This applies regardless of whether a communication
according 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 the
applicant 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 Rule 164(2)
(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 one
of these searches. The procedure under Rule 164(2) is set out in detail in
C-III, 3.1.

If after receipt of the (supplementary) European search report or, where Rule 137(5)
applicable, after a communication under Rule 164(2)(b) the applicant files
amended claims relating to an invention which differs from any of the
originally claimed inventions and which does not combine with these
inventions to form a single inventive concept, an objection under
Rule 137(5) is raised (see also F-V, 7 and H-IV, 4).
Part E – Chapter IX-28 Guidelines for Examination in the EPO March 2024

4.3 Substantive examination of a Euro-PCT application accompanied

by an IPER
The substantive examination is conducted in the same way as with any
other 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 in
annex 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 the
international preliminary examination report was translated
(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) (i) the applicant must be given the opportunity to amend the claims, the
Rule 161 description and the drawings within a time limit prescribed pursuant
to Rule 78.1(b) PCT (see also Rules 159(1)(b) and 161); and

(ii) the EPO cannot require that the applicant furnish copies, or
information on the contents, of any papers connected with the
examination 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 the
submission of test reports, applicants are taken to agree to the use of these
reports as the basis for proceedings before the EPO when they use the
standard 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 the
test 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 and
replacing the earlier filed documents will be attached to the international
preliminary examination report. If the documents attached to the
international preliminary examination report are in a language other than
the language of the proceedings of the European application in the
European phase, the applicant must be requested to file the documents in
the language of the proceedings within a fixed period.
March 2024 Guidelines for Examination in the EPO Part E – Chapter IX-29

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 Rule 161(1)
EPO, it is to be regarded as an opinion for purposes of examination, and Rule 159
generally 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 amendments or relevant
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 the
international preliminary examination report are sound, they must not be
disregarded.
March 2024 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, the Art. 106(1)
examining divisions, the opposition divisions and the Legal Division. Unless Art. 113(1)
otherwise specified, the principles described in this chapter apply to all
such decisions. They also apply to decisions taken by formalities officers to
whom 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), 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 surprise

by grounds for a decision against their application on which they did not
have 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 is
deemed to have approved the text submitted to him under Rule 71(5) and
has fulfilled all other formal requirements, even if the time limit set in the
Rule 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 the
parties may derive no rights) has expired, so as to ensure that documents
received at the end of the period officially allowed have actually been
entered 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 a

time limit, see E-VIII, 1.8.

1.3 Form and content

Decisions are to be produced in writing. The same applies to decisions
delivered at the end of oral proceedings (see E-III, 9).

No complete rules can be laid down about the form and content of
decisions, 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;
Part E – Chapter X-2 Guidelines for Examination in the EPO March 2024

– the order (operative part), and, if necessary;

– the facts and submissions;

– the reasoning;

– the communication of the possibility of appeal (Rule 111(2)); and

Rule 113(1) – 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 the
applicant 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 a
computer 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 the
request 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 to

Art. 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 for
the 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 of
the parties is given. These points, however, are to be covered in detail in
the subsequent reasoning.

1.3.3 Reasoning
The statement of grounds must first set out and substantiate the reasons
for 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 the
parties have been given an opportunity to comment on all the grounds on
which the decision is based.
March 2024 Guidelines for Examination in the EPO Part E – Chapter X-3

When several grounds are used in the decision, it is imperative to link them
in a logical way, in particular avoiding having a subsequent ground
contradict 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 are

carefully 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, for
example, a number of reasons are invoked for a request for
re-establishment, of which only one justifies re-establishment, a reasoned
decision on re-establishment may be appropriate, in order to clarify the
official action.

2. Decisions taken by the examining or opposition divisions

In substantive examination, applicants must have an opportunity of
presenting their comments on all the grounds invoked against their
application.

Before an application is refused by the examining division, the search

under 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 in
amended form, the opponents in particular must be given the same
opportunity. A decision may be based on grounds indicated in a document
from one of the parties, provided the document has been sent to the other
parties 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 means
that parties have had sufficient opportunity to comment and their right to be
heard has therefore not been infringed (T 263/93).

If the patent is to be maintained in amended form, there must be a text of

the claims and description which has been approved by the patent
proprietor (D-VI, 2), and the opponent(s) must have had an opportunity to
comment on it.

2.1 Right to be heard

The right to be heard is a right not just to present comments but also to
have 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 a
decision still based on grounds and evidence communicated beforehand is
not precluded (see T 268/00 and T 1557/07).
Part E – Chapter X-4 Guidelines for Examination in the EPO March 2024

If a case is remitted from the boards of appeal for further prosecution, the
examining 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 have
been respected. If the decision in opposition proceedings is to be based on
grounds which were raised in the examination proceedings but not in the
notice of opposition, the observations by the parties or the communications
of 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 the
patent 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 and
grounds 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 to
give a party occasion to comment, the party concerned must be given an
opportunity to submit an opinion and to produce evidence before the
decision 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 a
communication 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.

2.2 Authoritative text of documents

Art. 113(2) The EPO must decide upon the European patent application or the
European 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 of
Art. 113(2) (see T 234/86), and therefore must be dealt with in the order
indicated or agreed to by the applicant or proprietor, up to and including the
highest-ranking allowable request, if any.
March 2024 Guidelines for Examination in the EPO Part E – Chapter X-5

When considering such requests it is essential that they are treated in the
correct order. Thus, for instance, if the only allowable request is an auxiliary
request, but is accompanied by a higher auxiliary request for oral
proceedings (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 oral
proceedings in accordance with the higher request would have to be
appointed, 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 Rule 111(1)
the principles laid down in E-X, 1. Where a decision is produced by means
of 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 legally
valid (see T 390/86).

The presentation of the facts and the submissions, the reasoning and the
communication of the means of redress are generally omitted when a
decision merely meets the requests of all the parties concerned; this
applies 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 is
preceded 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 in

order to meet the requirements of Rule 111(2). Arguments of parties in
another official language must be summarised in the language of
proceedings. Deviation is possible in exceptional cases only, such as
where 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 of
the minutes of oral proceedings (also see E-III, 10.3).
Part E – Chapter X-6 Guidelines for Examination in the EPO March 2024

The facts and submissions must clearly indicate what is the subject of the
application 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, in
particular, 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 the
decision. In opposition, the text of the independent claim(s) and other
especially important claims or passages of the description on which the
decision is based must be cited verbatim in the language of the
proceedings (Rule 3(2)) either by copying the text into the decision or
annexing a copy of the claims. As regards the dependent claims, it may be
sufficient 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 of
decisions, 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 the
subject-matter of the claims is unclear and would also lack inventive step
once clarified or whether it is refused because the subject-matter of the
claims lacks inventive step and would have to be clarified once the
inventive step objection is overcome.

Art. 113(1) The reasoning for each of the grounds on which the decision is based must
Rule 111(2) 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 a
particular communication contained in the file, the reasoning of the decision
may be summarised accordingly and reference may be made to the
relevant 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 the
reasons and the facts as set out in the decision and in the minutes (also
see E-X, 2.4). The parts of a publication which are important for the
decision must be cited in such a way that those conclusions can be
checked without difficulty. Therefore, reference is made to each particular
passage in the publication. It is not sufficient, for example, merely to assert
March 2024 Guidelines for Examination in the EPO Part E – Chapter X-7

that the cited publications show that the subject of a claim is known or
obvious, or, conversely, do not cast doubt on its patentability.

The arguments put forward by the examiner during the proceedings form
the "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 the
appropriate 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 is
based solely on reasons already communicated to the applicant in
compliance with Art. 113(1). In the part refuting the applicant's arguments,
the decision must make clear why none of those arguments persuaded the
examining 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, the
impression might be given that such points have been overlooked.
Documents which cover the same facts or arguments may be treated in
summary 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 the
other 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 that
the 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 is
enough to refuse an application, so it is not always necessary to deal with
all 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 in
circumstances where Art. 116(1), second sentence, applies, the decision
must 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 are
carefully examined and comprehensively refuted in the decision. The
Part E – Chapter X-8 Guidelines for Examination in the EPO March 2024

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 to
be discussed.

2.9 Main and auxiliary requests

If during examination proceedings a main and auxiliary requests have
been filed (see E-X, 2.2) and none of these is allowable, the reasons for the
decision 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 is
allowable, the communication pursuant to Rule 71(3) is to be issued on the
basis of the (first) allowable request and must be accompanied by a brief
indication of the essential reasons why the higher-ranking requests are not
allowable 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 the
application pursuant to Art. 97(2) will normally be issued
(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 to
it.

Similarly, if in opposition proceedings the proprietor has submitted in

addition to the main request one or more auxiliary requests, none of which
is allowable, the patent must be revoked and the decision must set out, in
respect of each request submitted and maintained by the proprietor, the
reasons for not allowing it. Where one of the proprietor's requests directed
to the maintenance of the patent in amended form is allowable, an
interlocutory decision is to be issued on the basis of the (first) allowable
request; it has to set out the reasons why this request meets the
requirements of the EPC and, additionally, the reasons why the
higher-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 not
allowing them, so that the applicant or proprietor is not deprived of the
opportunity 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 the

auxiliary request is dealt with.

2.10 Late-filed submissions

Art. 114(2) If an examining or opposition division has exercised its discretion under
Rule 116 Art. 114(2) or Rule 116 to refuse late-filed facts, evidence or requests, its
March 2024 Guidelines for Examination in the EPO Part E – Chapter X-9

decision must give the reasons for its refusal. A mere reference to the
discretionary 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 division Rule 137(3)
refuses 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.

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 the Art. 106(2)
parties is termed an interlocutory decision. An interlocutory decision can
only be appealed together with the final decision unless it allows separate
appeal.

The competent department will use its discretion as to the need for an
interlocutory decision (see, however, D-VI, 7.2.2 with respect to the
interlocutory decision for maintenance of a patent in amended form in
opposition proceedings). To avoid fragmentation of the proceedings, such
decisions 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. The
interests of the parties will also be borne in mind as appropriate.

In the normal course, an interlocutory decision will be contemplated only for

the purpose of ruling that separate appeal may be made, as only in this
way 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 to
allow 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 have
been 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 Art. 111(2)
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,
Part E – Chapter X-10 Guidelines for Examination in the EPO March 2024

e.g. the subject-matter of the patent and the relevant state of the art, are
the 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 the
examining division being bound by the decision on appeal against a
decision of the Receiving Section, makes this clear. Opposition
proceedings are entirely separate from the examination proceedings, and
the opposition division is entitled to examine the facts, evidence and
arguments 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 the
board of appeal.

5. Information as to means of redress

Rule 111(2) Decisions of the EPO which are open to appeal must be accompanied by a
written communication of the possibility of appeal. The communication must
also 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
Art. 119 Decisions must be notified as a matter of course (see E-II, 2).

7. Expiry of the term of the European patent

Art. 63 According to Art. 63(1), the term of the European patent is 20 years from
Art. 89 the date of filing of the application. Under specific circumstances the
contracting states can extend that term (Art. 63(2)).

The expiry of the 20-year term does not have an effect on the pendency of
the European patent application. An applicant may still have a legitimate
interest in the grant of the patent in view of provisional protection provided
for in Art. 67(1). This means that examination of the application must
continue unless the applicant withdraws the application or allows it to lapse
by not responding to a communication issued by the examining division.

Rule 75 An opposition or an appeal can be filed even if the European patent has
Rule 84 been surrendered or has lapsed in all contracting states (see D-I, 2 and
Rule 98 E-XII, 2 respectively). For the effect of the expiry of the 20-year term on
pending opposition proceedings, see D-VII, 5.1.

Similarly, a request for limitation or revocation can be filed after the expiry
of the term of the European patent.
March 2024 Guidelines for Examination in the EPO Part E – Chapter XI-1

Chapter XI – Impartiality of divisions

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 suspect
partiality (partiality for objective reasons).

For the objection to be admissible it must be raised immediately after the

party has become aware of the reason for it. The request must also be
accompanied by a reasoned statement of grounds setting out the facts and
arguments in support of the objection and, where appropriate, any
evidence. 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 the
division 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 and

has 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 a
communication from the division or to the division's decision, and will be
referred to in the facts and submissions part of division's decision.

If the challenge to impartiality is raised in oral proceedings, the proceedings

are interrupted in order for the responsible superior to assess the
challenge. On the same day, the oral proceedings are resumed and the
parties are informed on the outcome of the assessment. If the superior
considers the challenge allowable, the oral proceedings are then
adjourned. Proceedings will be continued by a division in which the
concerned member(s) is/are replaced. If the responsible superior holds that
the challenge to impartiality is either inadmissible or not allowable, the
division will inform the parties accordingly and the oral proceedings will
continue. 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 that decision.
March 2024 Guidelines for Examination in the EPO Part E – Chapter XII-1

Chapter XII – Appeals

1. Suspensive effect
This chapter deals in detail only with those questions which are relevant for Art. 23(3)
interlocutory revision. At this stage of the proceedings the department of Art. 109
first instance is still competent.

Appeals shall lie from decisions of the Receiving Section, Examining Art. 106(1)
Divisions, Opposition Divisions and the Legal Division.

An appeal has suspensive effect. This means that decisions may not yet
become final and their effects are suspended. As the decision may not then
be enforced, the following do not take place: entry in the Register of
European Patents, mention in the European Patent Bulletin and, where
appropriate, 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 Rule 98
if the European patent has been surrendered or has lapsed for all the
designated states.

3. Appeals against the apportionment of costs

The apportionment of costs of opposition proceedings cannot be the sole Rule 97(1)
subject of an appeal. Parties to the proceedings who feel that they have
been 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 Rule 97(2)
the amount of costs of opposition proceedings may be appealed if the Art. 13 RFees
amount is in excess of the fee for appeal.

5. Persons entitled to appeal and to be parties to appeal

proceedings
Any party to proceedings adversely affected by a decision may appeal. Any Art. 107
other parties to the proceedings are parties to the appeal proceedings as of
right.

6. Time limit and form of appeal

Notice of appeal must be filed with the EPO within two months of the date Art. 108
of notification of the decision appealed from. It must contain the name and Rule 99(1)
the 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.

The notice is not deemed to have been filed until after the fee for appeal Rule 6(4), (5)
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 and
entities referred to in Rule 6(4) and (5), i.e. small and medium-sized
enterprises, non-profit organisations, universities and public research
organisations, a reduced fee for appeal is payable, provided that a
Part E – Chapter XII-2 Guidelines for Examination in the EPO March 2024

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 statement
of 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 and
the facts and evidence on which the appeal is based.

7. Interlocutory revision

7.1 General remarks

Art. 109(1) If the department whose decision is contested considers the appeal to be
admissible 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 were
withdrawn 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 and
start the examination on admissibility immediately, and if the appeal is
considered admissible in the form in which it has been filed, the competent
department 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 be

incorrect, but the applicant presents new information or evidence or
files amendments to the application, which overcome the objections
of 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 is

remitted 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.
March 2024 Guidelines for Examination in the EPO Part E – Chapter XII-3

7.2 Remittal to the board of appeal

If the appeal is not allowed within three months after receipt of the Art. 109(2)
statement 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 substance
to 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 to
the board of appeal.

The receipt of the statement of grounds of appeal is a prerequisite for the

examining division when deciding whether the appeal is well-founded. Such
statements can be filed at any time within four months from the notification
of 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 be Rule 103(1)(a)
ordered by the department whose decision has been impugned if such Art. 109
reimbursement is equitable by reason of a substantial procedural violation.
This is particularly the case when essential facts or evidence were not
taken 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 or
evidence 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 requirements

of Art. 109 for interlocutory revision to be fulfilled, but not the requirements
of 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 the
board of appeal for a decision (see J 32/95).

The request for reimbursement of the appeal fee will be remitted to the
board of appeal only if it was filed together with the appeal (see G 3/03 and
T 21/02).

7.4 Examples

7.4.1 No amended claims filed with the appeal

If the applicant has filed an appeal but no amended claims, the division
checks 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 new
Part E – Chapter XII-4 Guidelines for Examination in the EPO March 2024

objections arise, the division communicates these objections to the

applicant 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 the
case: 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 the
applicant 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 same

2. 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 be
continued on a new basis, e.g. where a completely new line of
inventive-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 is
made 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 the

requirements of Art. 123(2), interlocutory revision is not granted, but the
division sends the file to the boards of appeal. If there are doubts as to
whether the amendments meet the requirements of Art. 123(2) or the
amendments clearly meet the requirements of Art. 123(2), the division
checks whether the amended claims overcome the ground(s) for refusal as
indicated above.
March 2024 Guidelines for Examination in the EPO Part E – Chapter XII-5

Examples:

(a) The applicant has included a wording that has already been
suggested 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 an
interlocutory revision.

(c) Refusal for lack of novelty. New claim 1 filed which includes a
feature from dependent claim 3. This claim had already been
discussed in the decision and was considered not to be inventive: no
interlocutory revision.

(d) Refusal for lack of novelty over D1. New claim 1 filed which
includes a feature from the description. This feature had not been
previously discussed per se; however, it is clearly disclosed in D1: no
interlocutory 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. These
features have not been previously discussed. The examiner notes
that although these features are disclosed in D2, the
lack-of-inventive-step argumentation would have to be revised:
interlocutory revision is allowed, since (i) the applicant has made
substantial amendments to overcome the objections raised in the
decision 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 with
the original searched claims to form a single general inventive
concept: no interlocutory revision because said claims cannot be
allowed 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-6 Guidelines for Examination in the EPO March 2024

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 the
examining division and would thus be allowable. There can be no
interlocutory 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 the

appeal
If, 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 drawings did not comply with the requirements set
by the President under Rule 49(2). 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 for the refusal has been
overcome and the reasoning in the decision under appeal 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 the
acceleration of appeal proceedings, can be found in the Rules of Procedure
of 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 examining or opposition division after appeal

If a decision by an examining or opposition division is appealed, the board
of appeal may remit the case to the division under Art. 111(1). In such
cases, 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 with
claims whose wording has been finally decided by the board.

(c) The case is remitted for further prosecution.

In situation (a) above, grant or maintenance is handled by the formalities

officer. The division provides input by verifying the classification and title
March 2024 Guidelines for Examination in the EPO Part E – Chapter XII-7

and adding any references to supplementary technical information (STIN)

or newly cited documents (CDOC). The examining division also carries out
a top-up search for national prior rights and provides information about
whether any are found to be prima facie relevant, if this has not already
been done in the proceedings. This information may assist the applicant in
deciding whether to request Unitary Patent protection or choose the
traditional validation route (C-IV, 7.2).

If the applicant requests further amendments under Rule 71(6), the

application 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 patent
on 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 and E-III, 8.7.3
respectively).

In situation (b) above, the board has taken a final decision on the wording
of the claims which ends the matter. The division can no longer amend the
claims 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 bound
by 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 to
light must be taken into account. In particular:

– the parties must be given the opportunity to submit further requests,

and

– 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.
March 2024 Guidelines for Examination in the EPO Part E – Chapter XIII-1

Chapter XIII – Request from a national court for

a technical opinion concerning a European
patent
1. General
At the request of the competent national court trying an infringement or Art. 25
revocation action, the EPO is obliged, against payment of an appropriate
fee, to give a technical opinion concerning the European patent which is the
subject of the action. The examining divisions are responsible for the issue
of such opinions.

Only requests from a national court in a contracting state will be accepted

by the EPO. It is not, however, up to the EPO to check whether the
requesting 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 the
parties 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 the
parties are heard, such a hearing is not considered to constitute oral
proceedings within the meaning of Art. 116.

The technical opinion is not a decision of the EPO. The parties to the
national 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" upon
request. 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, the
examining 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 technical

opinion on any question which is similar to those normally dealt with in
European substantive examination work, even when the question has a
legal, as well as a technical, aspect. On the other hand, the examining
division will decline to make any specific statement on whether a patent is
valid or on whether it is infringed. It also does not give any opinion on the
extent 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 the
questions on which the court wishes to have an opinion. Since the court is
Part E – Chapter XIII-2 Guidelines for Examination in the EPO March 2024

responsible for deciding the issues of law involved in the questions and
since most questions include a mixture of legal and technical aspects, the
court is expected where possible to separate clearly the legal aspects from
the 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 time
of 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 of
an 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 the
examining division under Art. 25 and of which among these members
participated in European examination or opposition proceedings on the
case. The court will be asked to state whether, in the circumstances, the
request 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 to
the other members of the examining division for consideration. If any
changes are proposed in the draft and there are differences of view on
such 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 of
the 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 be
in 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 2024 Guidelines for Examination in the EPO Part E – Chapter XIII-3

5.1 Formalities check

The formalities officer will check whether the fee has been paid and Art. 2(1),
whether there are any obvious deficiencies as to the language item 20, RFees
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.

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, the
formalities 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, the
arguments of the parties are on file, the case will be referred to the
directorate responsible for the technical field of the patent in order for the
examining division to be established. Assuming that an examining division
consisting entirely of new members can be formed or, where this is not
possible, that the court maintains its request for a technical opinion
(see 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 necessary
translations 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 Art. 10 RFees
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 have
been met, the examining division establishes the technical opinion as soon
as possible.

The opinion is sent to the national court. Any papers received from the
court which belong to the national proceedings are sent back with the
opinion.

5.5 File inspection

The file of a request for a technical opinion is not a file within the meaning
of Art. 128 and is not available for file inspection.
Part E – Chapter XIII-4 Guidelines for Examination in the EPO March 2024

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 the
understanding 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 is
given to the examining division at least one month before the appearance
before the court.
March 2024 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 these Art. 20
registrations (see the decision of the President of the EPO dated
21 November 2013, OJ EPO 2013, 600).

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 the Art. 71
designated contracting states.

Art. 72 is an autonomous provision which exclusively governs the formal Art. 72

requirements of such transfers. The EPO registers a transfer of rights in Rule 22(1) and
respect of a pending European patent application (see A-IV, 1.1.1 and (2)
J 10/93) in the European Patent Register on request, upon fulfilment of the
prerequisites 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 determined
by 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.

With effect from the entry into force of amended Rule 22(1) on 1 April 2024,
the conditions under which payment of an administrative fee is due is laid
down by the President of the EPO.

Rule 22 furthermore requires the production of documents providing

evidence of such a transfer. Any kind of written evidence suitable for
proving the transfer is admissible. This includes formal documentary proof
such as the instrument of transfer itself (the original or a copy thereof) or
other official documents or extracts thereof, provided that they immediately
verify the transfer (J 12/00). Art. 72 requires that, for an assignment, the
signatures of the parties appear on the documents submitted as evidence
of the transfer. Assignment documents filed electronically (see A-II, 1.1.1)
may, instead of handwritten signatures, bear qualified electronic signatures
(see notice from the EPO dated 22 October 2021; OJ EPO 2021, A86).
Part E – Chapter XIV-2 Guidelines for Examination in the EPO March 2024

With effect from the entry into force of amended Rule 22(1) on 1 April 2024,
electronic signatures as determined by the President of the EPO are
accepted on assignment documents.

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 or
equivalent 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
results directly from such a position, is to be given. The contracting parties
have to ensure that the signatories are duly authorised in accordance with
the national law applicable to sign such a document. The EPO, however,
reserves the right to request documentary proof of the signatory's authority
to sign if the circumstances of a particular case necessitate this. In such
cases, if the evidence presented is found to be unsatisfactory, the EPO
informs the party requesting the transfer accordingly and invites them to
remedy the stated deficiency within a given time limit.

As a general rule, the authorisation to represent a party in proceedings

before the EPO within the meaning of Rule 152, be it an individual or a
general authorisation, is not as such considered to empower the
representative to enter into such a contract.

If the request complies with the requirements of Rule 22(1), the transfer is
registered with the date on which the request, the required evidence or the
fee has been received by the EPO, whichever is the latest. In case of a
minor 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 the
person signing were missing), once rectified the effective date is the date of
receipt 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 the
right 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. 20 Once 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 later
as to the entitlement of the person signing on behalf of one of the parties to
enter 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.

4. Transfer of the European patent

Rule 85 Rule 22 applies mutatis mutandis to the registration of a transfer of the
European patent during the opposition period or during opposition
proceedings.
March 2024 Guidelines for Examination in the EPO Part E – Chapter XIV-3

5. Changes of name
Mere 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 as
long as the application (cf. A-IV, 1.1.1) or the proceedings before the EPO
are pending. Such registration is free of charge.

6. Licences and other rights

6.1 Registration
A European patent application may give rise to rights in rem, may be Art. 71
licensed and may be the subject of legal means of execution. This includes Art. 73
contractual licences only (Art. 73). Licences and other rights may be Rule 23(1)
geographically limited to parts of the territories of the designated Rule 24(a) and
contracting states only. (b)

In the case of co-applicants, the registration of licences requires the

consent 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 be
recorded as a sub-licence where it is granted by a licensee whose licence
is recorded in the European Patent Register.

6.2 Cancellation of the registration

A registration of licences or other rights is cancelled upon request, Rule 22(2)
supported by documents providing evidence that the right has lapsed or by Rule 23(2)
the written consent of the proprietor of the right to the cancellation of that
right. Rule 22(2) applies mutatis mutandis, i.e. the cancellation is subject to
the payment of an administrative fee. Cancellation is only possible until
publication of the mention of the grant.
Part F

The European Patent Application

March 2024 Guidelines for Examination in the EPO Part F – Contents a

Contents

Chapter I – Introduction I-1

Chapter II – Content of a European patent

application (other than claims) II-1
1. General II-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 Background art II-4

4.3.1 Format of background art citations II-5
4.3.1.1 Examples of quotation for non-patent literature II-6
4.3.1.2 Examples of quotation for patent literature 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-7

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 2024

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-10

6.2 Sequences that need to be itemised in the sequence

listing II-11
6.2.1 Requirements relating to sequence length and
enumeration of residues II-11
6.2.2 Sequences comprising residues that are not
specifically defined (n or X) II-12
6.2.3 Variants II-13
6.2.4 The qualifier "mol_type" II-14

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-15

Annex 1 Checklist for considering the abstract (see

F-II, 2.5) II-16

Annex 2 Units recognised in international practice as

determined by the President under Rule 49(2)
(see F-II, 4.13) II-17

1. SI units and their decimal multiples and submultiples II-17

2. Units which are defined on the basis of SI units but

are not decimal multiples or submultiples thereof II-20
March 2024 Guidelines for Examination in the EPO Part F – Contents c

3. Units used with the SI, and whose values in SI are

obtained experimentally II-20

4. Units and names of units permitted in specialised

fields only II-21

5. Compound units II-21

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 Rules 56 and 56a III-10

11. Sufficiency of disclosure and clarity III-10

12. Sufficiency of disclosure and inventive step III-11

Part F – Contents d Guidelines for Examination in the EPO March 2024

Chapter IV – Claims (Art. 84 and formal

requirements) IV-1
1. General IV-1

2. Form and content of claims IV-1

2.1 Technical features IV-1

2.2 Two-part form IV-1

2.3 Two-part form unsuitable IV-2

2.3.1 No two-part form IV-3
2.3.2 Two-part form "wherever appropriate" 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 another

claim or to features from a claim of another category IV-8

3.9 Claims directed to computer-implemented inventions IV-9

3.9.1 Cases where all method steps can be fully
implemented by generic data processing means IV-10
3.9.2 Cases where method steps define additional devices
and/or specific data processing means IV-12
3.9.3 Cases where the invention is realised in a distributed
computing environment IV-14

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-21
March 2024 Guidelines for Examination in the EPO Part F – Contents e

4.5 Essential features IV-21

4.5.1 Objections arising from missing essential features IV-21
4.5.2 Definition of essential features IV-21
4.5.3 Generalisation of essential features IV-22
4.5.4 Implicit features IV-22
4.5.5 Examples IV-22

4.6 Relative terms IV-23

4.6.1 Clarity objections IV-23
4.6.2 Interpretation of relative terms IV-23

4.7 Terms such as "about", "approximately" or

"substantially" IV-24
4.7.1 Interpretation of terms such as "about",
"approximately" or "substantially" IV-24
4.7.2 Clarity objections IV-24

4.8 Trade marks IV-25

4.9 Optional features IV-25

4.10 Result to be achieved IV-25

4.11 Parameters IV-26

4.11.1 Unusual parameters IV-27

4.12 Product-by-process claim IV-28

4.12.1 Product claim with process features IV-29

4.13 Interpretation of expressions stating a purpose IV-29

4.13.1 Interpretation of expressions such as "Apparatus for
...", "Product for ... " IV-29
4.13.2 Interpretation of means-plus-function features
("means for ... ") IV-30
4.13.3 Interpretation of expressions such as "Method for ..." IV-31

4.14 Definition by reference to (use with) another entity IV-32

4.14.1 Clarity objections IV-32
4.14.2 Dimensions and/or shape defined by reference to
another entity IV-33

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

Part F – Contents f Guidelines for Examination in the EPO March 2024

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-41

6.5 Definition in terms of function IV-41

6.6 Support for dependent claims IV-42

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 Non-unity and prior art V-7

3.1.1 Non-unity and prior art under Art. 54(3) V-7
3.1.2 Non-unity and prior art under Art. 54(2) V-7

3.2 Grouping of inventions V-7

3.2.1 Plurality of independent claims in the same category V-7
3.2.2 Plurality of independent claims in different categories V-8
3.2.3 Dependent claims V-8
3.2.4 Common dependent claims V-9
3.2.5 Markush grouping (alternatives in a single claim) V-10
3.2.6 Claims for a known substance for a number of
distinct medical uses V-11
3.2.7 Intermediate and final products V-11

3.3 Reasoning for a lack of unity objection V-12

3.3.1 Minimum requirements for reasoning of lack of unity V-13
March 2024 Guidelines for Examination in the EPO Part F – Contents g

3.4 Determination of the invention first mentioned in the

claims V-14

4. Procedure in the case of lack of unity during

search V-14

4.1 Provisional opinion accompanying the partial search

results V-15

4.2 Consequences for the applicant V-15

5. Procedure in the case of lack of unity during

substantive examination V-16

5.1 General principles V-16

5.2 Objections to unsearched inventions V-16

5.3 Review of non-unity findings V-16

6. Amended claims V-16

7. Euro-PCT applications V-16

7.1 International applications without supplementary

search V-16

7.2 International applications with supplementary search V-18

7.3 International preliminary examination report (IPER) V-18

7.4 Restricted IPER V-18

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 First application VI-2

1.4.1 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

Part F – Contents h Guidelines for Examination in the EPO March 2024

2.3 Priority claim not valid VI-7

2.4 Some examples of determining priority dates VI-7

2.4.1 Intermediate publication of the contents of the priority
application VI-7
2.4.2 Intermediate publication of another European
application VI-7
2.4.3 Multiple priorities claimed for different inventions in
the application with an intermediate publication of
one of the inventions VI-8
2.4.4 A situation in which it has to be checked whether the
application from which priority is actually claimed is
the "first application" within the meaning of Art. 87(1) VI-8

3. Claiming priority VI-9

3.1 General remarks VI-9

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
March 2024 Guidelines for Examination in the EPO Part F – Chapter I-1

Chapter I – Introduction
Apart from the requirements of patentability (novelty, inventive step,
industrial application and exclusions from patentability), a European patent
application 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)). These requirements are dealt with in the present Part F.

Part F also deals with the requirements relating to the right to priority. This
is 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 is
nonetheless assessed independently of any issues of patentability.
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-1

Chapter II – Content of a European patent

application (other than claims)
1. General
The requirements for a European patent application are set out in Art. 78. Art. 78
The application must contain:

(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; and Art. 78(1)(d)

(v) an abstract. Art. 78(1)(e)

This Chapter deals with all these requirements, in so far as they are the
concern 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 Rule 57(d)
give brief technical information about the disclosure as contained in the Rule 47(5)
description, claims and any drawings. The abstract is merely for use as
technical information and in particular cannot be used for the purpose of
interpreting the scope of the protection sought. The abstract needs to be
drafted so that it constitutes an efficient instrument for searching in the
particular technical field and for evaluating if it is worth considering the
whole content of the application.

2.2 Definitive content

The abstract is initially supplied by the applicant. The search division has Rule 66
the task of determining its definitive content, which will normally be Rule 68
published with the application. In doing this, it considers the abstract in
relation to the application as filed (see B-X, 7(i)). If the search report is
published later than the application, the abstract, published with the
application 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 Art. 85
consideration the purpose of the abstract (see F-II, 2.1). 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 2024

Rule 47(2) (iii) contain a concise summary of the disclosure as contained in the
description, 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 contain
the chemical formula which, among those contained in the
application, 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; and

Rule 47(4) (vi) if the application contains drawings, be accompanied by an indication

of 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 a
reference sign in parenthesis.

2.4 Figure accompanying the abstract

Rule 47(4) The search division considers not only the text of the abstract but also the
selection 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 the
drawings if it considers that they better characterise the invention.

The search division may prevent the publication of any drawing with the
abstract, where none of the drawings present in the application is useful for
the understanding of the abstract. This can be done even when the
applicant has requested that a particular drawing or drawings be published
with 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 the
General Guidelines for the Preparation of Abstracts of Patent Documents,
using the checklist contained in WIPO Standard ST.12, the relevant parts of
which are annexed to this Chapter (F-II, Annex 1).

2.6 Transmittal of the abstract to the applicant

Rule 66 The content of the abstract is transmitted to the applicant together with the
search report (see B-X, 7(i)).

2.7 Abstract in examination

Art. 98 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 and
its final form for publication is determined by the search division. It is not
necessary to bring it into conformity with the content of the published patent
even if this should differ in substance from that of the application, since the
March 2024 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; for Art. 85
instance, it cannot be used to interpret the scope of protection or to justify
the addition to the description of new subject-matter.

3. Request for grant – the title

The items making up this request are dealt with in A-III, 4. They do not
normally 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 the Rule 41(2)(b)
invention 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, to
make sure that the title is concise and gives a clear and adequate
indication of the subject of the invention. Thus, if amendments are made
which 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 Art. 83
and complete for it to be carried out by a person skilled in the art. Rule 42

The "person skilled in the art" for this purpose is considered to be the
skilled practitioner in the relevant field aware not only of the teaching of the
application 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 the
application. They are assumed to have at their disposal the means and the
capacity for routine work and experimentation, which are normal 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 the description, claims and drawings, if
any. The provisions relating to the content of the description are set out in
Rule 42. The purpose of the provisions of Art. 83 and Rule 42 is:

(i) to ensure that the application contains sufficient technical information

to enable a skilled person to put the invention as claimed into
practice; and

(ii) to enable the skilled person to understand the contribution to the art
which the invention as claimed has made.
Part F – Chapter II-4 Guidelines for Examination in the EPO March 2024

4.2 Technical field

Rule 42(1)(a) 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") portion
of 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 the
invention" 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 in
the appended set of claims" instead of repeating the claims verbatim.

4.3 Background art

Rule 42(1)(b) The description should also mention any background art of which the
Art. 123(2) applicant 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 the

description the closest prior art known to them. It may happen that the prior
art cited by the applicant is not the closest existing for the claimed
invention. Therefore, the documents cited in the application as filed do not
necessarily 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 were
already 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 not
contravene Art. 123(2). The latter merely lays down that, if the application is
amended, 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 patent
application within the meaning of Art. 123(2) is to be understood – starting
off from the prior art – as comprising those features which, in the framework
of 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 and
H-IV, 2.2.7).

References to the prior art introduced after filing must be purely factual.
Any alleged advantages of the invention must be adjusted if necessary, in
the light of the prior art.
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-5

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 to

standard 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 measuring
certain parameters mentioned in the description or to the definitions of
terms 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 initially
cited 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 (see
T 654/92, Reasons 4, and T 1001/98, Reasons 3). However, it may be
allowed 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 Art. 54(3)
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 the
designation 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 to
Rule 165, the above also applies to international applications designating
EP, 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).

For transitional provisions concerning the applicability of Art. 54(4) Art. 54(4) EPC 1973
EPC 1973, see H-III, 4.2.

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);

(ii) 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
Part F – Chapter II-6 Guidelines for Examination in the EPO March 2024

(Recommended Standard Code for the Identification of Different

Kinds of Patent Documents).

WIPO standards:

ST.14 (wipo.int/export/sites/www/standards/en/pdf/03-14-01.pdf)
ST.3 (wipo.int/export/sites/www/standards/en/pdf/03-03-01.pdf)
ST.16 (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 to

correct 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) DE 3744403 A1 (A. JOSEK) 29.08.1991, page 1, abstract.

4.4 Irrelevant matter

Rule 48(1)(c) Since the skilled person is presumed to have the general technical
background knowledge appropriate to the art, the examining division does
not require the applicant to insert anything in the nature of a treatise or
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 sufficient
that the reason for the inclusion of the reference is indicated, unless in a
particular case a more detailed description is necessary for a full
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-7

understanding 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 aspect

of 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 the
excision 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 the Rule 42(1)(c)
technical problem, or problems, with which it deals can be appreciated and Rule 48(1)(b)
the solution can be understood. To meet this requirement, only such details
should be included as are necessary for elucidating the invention.

As an example, to elucidate the nature of the solution according to the

independent claims, either the characterising portion of the independent
claims could be repeated or referred to, or the substance of the features of
the solution according to the relevant claims could be reproduced (see
F-II, 4.2).

In cases where the subject-matter of a dependent claim can be understood

either 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 embodiment
of 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 be
done in such a way as to disparage any particular prior product or process.
Furthermore, neither the prior art nor the applicant's invention should be
referred 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 Rule 42(1)(c)
within the meaning of Art. 52(1), it must be possible to derive a technical
problem from the application. In this case the requirement of Rule 42(1)(c)
is fulfilled (see T 26/81).

4.7 Reference in the description to drawings

If drawings are included they should first be briefly described, in a manner Rule 42(1)(d)
such as: "Figure 1 is a plan view of the transformer housing; Figure 2 is a
side 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 to
Part F – Chapter II-8 Guidelines for Examination in the EPO March 2024

elements 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 is
connected to 5 via 4" but, "resistor 3 is connected to capacitor 5 via
switch 4".

4.8 Reference signs

OJ EPO 2022, A113 The description and drawings need to be consistent with one another,
especially in the matter of reference numbers and other signs, and each
number or sign must be explained. However, where as a result of
amendments to the description whole passages are deleted, it may be
tedious to delete all superfluous references from the drawings and in such
a case the examining division does not pursue an objection 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 the drawings.

4.9 Industrial application

Rule 42(1)(f) The description should indicate explicitly the way in which the invention is
Art. 52(1) capable of exploitation in industry, if this is not obvious from the description
Art. 57 or from the nature of the invention. The expression "capable of exploitation
in industry" means the same as "susceptible of industrial application", and
indeed identical expressions are used in the French and German texts of
the 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 in
which the invention can be exploited in industry will be self-evident, so that
no 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 of
industrial exploitation is not apparent and must therefore be explicitly
indicated.

Rule 29(3) Also, in relation to certain biotechnological inventions, i.e. sequences and
partial sequences of genes, the industrial application is not self-evident.
The industrial application of such sequences must be disclosed in the
patent application (see G-III, 4).

4.10 Manner and order of presentation

Rule 42(2) The manner and order of presentation of the description should be that
specified in Rule 42(1), i.e. as set out above, unless, because of the nature
of 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.

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, the
practical application of which is recognised as being useful, or where the
invention breaks entirely new ground. Also, certain technically simple
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-9

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 with
avoidance of unnecessary technical jargon, the use of recognised terms of
art is acceptable, and will often be desirable. Little-known or
specially-formulated technical terms may be allowed provided that they are
adequately defined and that there is no generally recognised equivalent.
This discretion may be extended to foreign terms when there is no
equivalent in the language of the proceedings. Terms already having an
established meaning are not allowed to be used to mean something
different if this is likely to cause confusion. There may, however, be
circumstances where a term may legitimately be borrowed from an
analogous art. Terminology and signs must be consistent throughout the
application.

4.12 Computer programs

In the particular case of inventions in the computer field, program listings in
programming languages cannot be relied on as the sole disclosure of the
invention. 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 by
a 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 the
invention.

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 by
reference to a published standard (e.g. a standard of sieve sizes) and such
standard is referred to by a set of initials or similar abbreviation, it needs to
be 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 the
other 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 and
Commission Directive (EU) 2019/1258 of 23 July 2019 (see F-II, Annex 2).
Any values not meeting this requirement must also be expressed in the
units recognised in international practice. Values expressed in the system
of imperial units (e.g. inches/pounds) or in units having local character
(e.g. pint), in general, do not meet the criterion "recognised in international
practice".

As determined by the President under Rule 49(2), for mathematical

formulae the symbols in general use must be employed. For chemical
Part F – Chapter II-10 Guidelines for Examination in the EPO March 2024

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 clarity
of 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. Drawings

5.1 Form and content

Most of the requirements relating to the form and content of drawings are
formal (see A-IX), but the examining division may sometimes need to
consider the requirements as determined by the President under
Rule 49(2). Of these, the only question likely to cause difficulty is whether
the textual matter included on the drawings is absolutely indispensable. In
the case 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 a
practical point of view if they are necessary to enable a diagram to be
interpreted rapidly and clearly.

5.2 Printing quality

The examining division has also to check whether the drawings in the
printing copy ("Druckexemplar") are suitable for printing. If necessary, a
copy of the original drawings must be prepared as the printing copy. If,
however, the quality of the original drawings is also insufficient, then the
examining division must request the applicant to present drawings of
sufficient quality for printing. It needs to, however, beware of any extension
of subject-matter (Art. 123(2)).

5.3 Photographs
For the presentation of photographs, see A-IX, 1.2. In the case of
photographs 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.

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 with
the applicable WIPO standard or in any other format.
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-11

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 or
amino 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 notice
from the EPO dated 9 December 2021, OJ EPO 2021, A97, p. 7). If the
database and/or the sequences 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 the

claimed invention, normally no objection is raised. On the other hand,
where these sequences are essential features of at least a part of the
claimed subject-matter, this results in problems relating to the sufficiency of
the original disclosure according to Art. 83, because the nature of the
sequences cannot be unambiguously derived from the incomplete or
ambiguous reference to the database.

Examples where a biological sequence is considered an essential feature

of 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 of

residues
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), and

2. 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 other

than those represented by the symbol "n" and any amino acid other than
those represented by the symbol "X", listed in Annex I (see paragraph 3(k)
of WIPO Standard ST.26).
Part F – Chapter II-12 Guidelines for Examination in the EPO March 2024

Degenerate symbols representing a subgroup of residues are considered

as 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 the
sequence 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 in
prose 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 the

residues 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 specifically

defined (n or X)
If an enumerated sequence comprises regions of specifically defined
residues separated by one or more gaps of n or X, i.e. residues that are not
specifically defined, the representation of this sequence in the sequence
listing 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 the

application:

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

If the number of "n" residues is unknown, each region of specifically defined

residues that meets the minimal length requirement in paragraph 7 of
WIPO Standard ST.26 must be included in the sequence listing as a
separate SEQ ID.

For example, for the sequence: a10nxt12

the sequence listing must have two entries

March 2024 Guidelines for Examination in the EPO Part F – Chapter II-13

SEQ ID No. 1: aaaaaaaaaa

SEQ ID No. 2: tttttttttttt

The sequences should be annotated to indicate that they are part of the
same molecule and separated by an undefined number of "n" residues (see
example 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 note
should indicate that up to 5 n can be deleted. The appropriate feature key
must be associated with the "note" qualifier describing the variant. See
paragraph 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", then
paragraph 95 of WIPO Standard ST.26 applies. This paragraph defines that
these variants should be described by annotation of the primary sequence.
It is a recommendation but it is not compulsory as long as the specific
variant sequence is not enumerated as such in the application.

If the applicant chooses to enter this information in the sequence listing, the
following 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 and

assigned its own sequence identification number, where it contains
variations at multiple distinct locations and the occurrences of those
variations 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 of
variation (see paragraph 96 of WIPO Standard ST.26).
Part F – Chapter II-14 Guidelines for Examination in the EPO March 2024

Type of Feature key Qualifier Use

sequence
Nucleic acid Variation replace or Naturally occurring
note mutations and
polymorphisms, e.g.
alleles, RFLPs.
Nucleic acid misc_difference replace or Variability introduced
note artificially, e.g. by
genetic manipulation or
by chemical synthesis.
Amino acid VAR_SEQ note Variant produced by
alternative splicing,
alternative promoter
usage, alternative
initiation and ribosomal
frameshifting.
Amino acid VARIANT note Any type of variant for
which VAR_SEQ is not
applicable.

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) and
shown in the following table:

DNA RNA AA
genomic DNA genomic RNA protein
other DNA mRNA
unassigned DNA tRNA
rRNA
transcribed RNA
viral cRNA
other RNA
unassigned RNA

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
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-15

their nature is not known or not disclosed and they cannot be assigned to
any more precise qualifier value (e.g. it is not known whether the sequence
is 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 Rule 48
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 Rule 48(1)(a)
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 to
criminal acts; racial, religious or similar discriminatory propaganda; and
grossly obscene matter.

With regard to patentability issues with such matter, see G-II, 4.1 and
subsections.

7.3 Disparaging statements

It is necessary to discriminate in the second category between libellous or Rule 48(1)(b)
similarly disparaging statements, which are not allowed, and fair comment,
e.g. in relation to obvious or generally recognised disadvantages, or
disadvantages stated to have been found and substantiated by the
applicant, which, if relevant, is permitted.

7.4 Irrelevant or unnecessary matter

The third category is irrelevant or unnecessary matter: such matter is Rule 48(1)(c)
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 the
invention 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 of
originally several alternatives. When matter is removed from the
description, it must not be incorporated into the patent specification by
reference to the corresponding matter in the published application or in any
other document (see also F-III, 8).

7.5 Omission of matter from publication

Generally, the Receiving Section will deal with matter falling under Rule 48(2) and
category 1(a) and may have dealt with matter obviously falling within (3)
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 is
required to be removed during examination of the application together with
any other prohibited matter. The applicant is informed of the category under
which matter is required to be removed.
Part F – Chapter II-16 Guidelines for Examination in the EPO March 2024

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

In the following checklist, the abstractor should, after having studied the
disclosure to be abstracted, place a check in the second column after the
applicable terms listed in the first column. The requirements listed in the
third column corresponding to the checked items of the first column should
be borne in mind by the abstractor when preparing the abstract. Finally, the
abstractor may compare the finished abstract with the checked
requirements and place a corresponding checkmark in the fourth column if
satisfied that the requirements have been met.

If the Check The abstract should deal with: If so,

invention is here check
a(n) here
Article its identity, use;
construction, organisation, method of
manufacture
Chemical its identity (structure if appropriate);
compound method of preparation, properties, uses
Mixture its nature, properties, use;
essential ingredients (identity, function);
proportion of ingredients, if significant;
preparation
Machine, its nature, use; construction,
apparatus, organisation;
system operation
Process or its nature and characterising features;
operation material and conditions employed;
product, if significant;
nature of and relationship between the
steps, if more than one
If the the abstract should deal with the
disclosure 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 preferred
alternative
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).
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-17

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

1. SI units and their decimal multiples and submultiples

1.1 SI base units

Quantity Unit
Name Symbol
Length metre m
Mass kilogram kg
Time second s
Electric current ampere A
Thermodynamic temperature kelvin K
Amount of substance mole mol
Luminous intensity candela 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 of
ΔνCs.

– 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 by
taking 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 is
defined 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.
Part F – Chapter II-18 Guidelines for Examination in the EPO March 2024

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 mole
contains exactly 6.022 140 76 × 1023 elementary entities. This number is
the 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 the

number of specified elementary entities. An elementary entity may be an
atom, a molecule, an ion, an electron, any other particle or specified group
of 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 of
h, c and ΔνCs.

1.1.1 Special name and symbol of the SI derived unit of temperature

for expressing Celsius temperature
Quantity Unit
Name Symbol
Celsius temperature degree Celsius °C

Celsius temperature t is defined as the difference t = T-T0 between the two

thermodynamic temperatures T and T0 where T0 = 273.15 K. An interval of
or difference in temperature may be expressed either in kelvins or in
degrees 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 a
numerical 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 radian rad m·m-1
Solid angle steradian sr m2·m-2
Frequency hertz Hz s-1
Force newton N m·kg·s-2
Pressure, stress pascal Pa N·m-2 m-1·kg·s-2
Energy, work; quantity of
joule J N·m m2·kg·s-2
heat
Power(1), radiant flux watt W J·s-1 m2·kg·s-3
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-19

Quantity Unit Expression

Name Symbol In other SI In terms of SI
units base units
Quantity of electricity,
coulomb C s·A
electric charge
Electric potential,
potential difference, volt V W·A-1 m2·kg·s-3·A-1
electromotive force
Electric resistance ohm Ω V·A-1 m2·kg·s-3·A-2
Conductance siemens S A·V-1 m-2·kg-1·s3·A2
Capacitance farad F C·V-1 m-2·kg-1·s4·A2
Magnetic flux weber Wb V·s m2·kg·s-2·A-1
Magnetic flux density tesla T Wb·m-2 kg·s-2·A-1
Inductance henry H Wb·A-1 m2·kg·s-2·A-2
Luminous flux lumen lm cd·sr cd
Illuminance lux lx lm·m-2 m-2·cd
Activity (of a
becquerel Bq s-1
radionuclide)
Absorbed dose, specific
energy imparted, kerma, gray Gy J·kg-1 m2·s-2
absorbed dose index
Dose equivalent sievert Sv J·kg-1 m2·s-2
Catalytic activity katal kat mol·s-1
(1) Special names for the unit of power: the name volt-ampere (symbol "VA") is used to express the
apparent 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 and

symbols 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
Factor Prefix Symbol Factor Prefix Symbol
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
10 9
giga G 10-12
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 the
unit of mass are formed by attaching prefixes to the word "gram" and their
symbols to the symbol "g".
Part F – Chapter II-20 Guidelines for Examination in the EPO March 2024

Where a derived unit is expressed as a fraction, its decimal multiples and

submultiples 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 of

several of the above prefixes, may not be used.

1.4 Special authorised names and symbols of decimal multiples and

submultiples of SI units
Quantity Unit
Name Symbol Value
Volume litre l or L(1) 1 l = 1 dm3 = 10-3 m3
Mass tonne t 1 t = 1 Mg = 103 kg
Pressure, stress bar bar 1 bar = 105 Pa
Length Ångström Å 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 in
conjunction with the units and symbols contained in this table.

2. Units which are defined on the basis of SI units but are not
decimal multiples or submultiples thereof

Quantity Unit
Name Symbol Value
Plane angle revolution(a) 1 revolution = 2 π rad
grade or gon gon 1 gon = π / 200 rad
degree ° 1° = π / 180 rad
minute of angle ' 1' = π / 10 800 rad
second of angle " 1" = π / 648 000 rad
Time Minute min 1 min = 60 s
Hour h 1 h = 3 600 s
Day d 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 the
nuclide 12C.

The electronvolt is the kinetic energy acquired by an electron passing

through a potential difference of 1 volt in a vacuum.

Quantity Unit
Name Symbol Value
Mass unified atomic u 1 u ≈ 1,6605655 x 10-27 kg
mass unit
Energy Electronvolt eV 1eV ≈ 1,6021892 x 10-19 J
March 2024 Guidelines for Examination in the EPO Part F – Chapter II-21

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 in
conjunction with these two units and with their symbols.

4. Units and names of units permitted in specialised fields only

Quantity Unit
Name Symbol Value
Vergency of dioptre 1 dioptre = 1 m-1
optical systems
Mass of precious metric 1 metric carat = 2 x 10-4 kg
stones carat
Area of farmland are a 1 a = 102 m2
and building land
Mass per unit tex tex 1 tex = 10-6 kg.m-1
length of textile
yarns and threads
Blood pressure millimetre mm Hg 1 mm Hg = 133.322 Pa
and pressure of of mercury
other body fluids
Pressure in the millimetre mm Hg 1 mm Hg = 133.322387 Pa
fields of plasma of mercury
physics and
semiconductors Torr Torr 1 Torr = 133.322368 Pa
Effective cross- Barn b 1b = 10-28 m2
sectional area

The prefixes and their symbols listed in F-II, Annex 2, 1.3 may be used in
conjunction with the above units and symbols, with the exception of the
millimetre 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 2024 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 must Rule 42(1)(e)
be given. Since the application is addressed to the person skilled in the art, Art. 83
it is neither necessary nor desirable that details of well-known ancillary
features are given, but the description must disclose any feature essential
for carrying out the invention in sufficient detail to render it apparent to the
skilled 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 the
description 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 particular
case. 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 the
person skilled in the art, using common general knowledge, to perform the
invention over the whole area claimed without undue burden and without
needing inventive skill (see T 727/95). In this context, the "whole area
claimed" 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 be
permissible, e.g. in an unexplored field or when there are many technical
difficulties (see T 226/85 and T 409/91).

However when assessing sufficiency of disclosure, the intrinsic limitations

that a sensible reading imposes on the subject-matter of the independent
claims 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 the
application (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 the
particular 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 Art. 83
fully satisfied, it is necessary that the invention is described not only in Rule 42(1)(c) and
terms of its structure but also in terms of its function, unless the functions of (e)
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.

In cases where it is found that an application is sufficiently disclosed Rule 63

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 and
Part F – Chapter III-2 Guidelines for Examination in the EPO March 2024

B-VIII, 3.2). In such cases, in the absence of appropriate amendment, an

objection under Rule 63(3) will also arise (see H-II, 5 and H-IV, 4.1.1).

2. Art. 83 vs. Art. 123(2)

Art. 83 It is the responsibility of the applicants to ensure that they supply on filing
Art. 123(2) their application, a sufficient disclosure, i.e. one that meets the
requirements of Art. 83 in respect of the invention as claimed in all of the
claims. If the claims define the invention, or a feature thereof, in terms of
parameters, the application as filed must include a clear description of the
methods used to determine the parameter values, unless a person skilled
in 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 requires
that 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; see
also H-V, 2.2). Therefore, in such circumstances, the application must
normally be refused. If, however, the deficiency arises only in respect of
some embodiments of the invention and not others, it could be remedied by
restricting the claims to correspond to the sufficiently described
embodiments only, the description of the remaining embodiments being
deleted.

3. Insufficient disclosure
Art. 83 Occasionally applications are filed in which there is a fundamental
insufficiency in the invention in the sense that it cannot be carried out by a
person skilled in the art; there is then a failure to satisfy the requirements of
Art. 83 which is essentially irreparable.

Two instances deserve special mention. The first is where the successful
performance of the invention is dependent 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 these results 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 the invention, 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 repeated success 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 be readily sorted by a
non-destructive testing procedure, no objection arises under Art. 83.
Another example can be found in the field of artificial intelligence if the
mathematical methods and the training datasets are disclosed in
insufficient detail to reproduce the technical effect over the whole range
claimed. Such a lack of detail may result in a disclosure that is more like an
invitation to a research programme (see also G-II, 3.3.1).

The second instance is where successful performance of the invention is

inherently impossible because it would be contrary to well-established
March 2024 Guidelines for Examination in the EPO Part F – Chapter III-3

physical laws – this applies e.g. to a perpetual motion machine. If the

claims for such a machine are directed to its function, and not 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).

4. Burden of proof as regards the possibility of performing and

repeating 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 the
claimed 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 is
credible, rests with the applicant or the proprietor of the patent. In
opposition, this may be the case where, for example, experiments carried
out by the opponent suggest that the subject-matter of the patent does not
achieve 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 the
invention as a whole is incapable of being performed, i.e. is incapable of
resolving 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 the
invention (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 of

ranges or Markush claims), the scope of the claim might encompass a
large number of alternatives, some of which correspond to non-working
embodiments. In such cases, the presence of non-working embodiments in
the 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 to
describe all the details of the operations to be carried out by the person
Part F – Chapter III-4 Guidelines for Examination in the EPO March 2024

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 the
basis of common general knowledge (see also F-III, 1 and F-IV, 4.5).

5.3 Difficulties in performing the invention

An invention is not immediately regarded as incapable of being performed
on 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 fact
that an artificial hip joint could be fitted to the human body only by a
surgeon of great experience and above-average ability would not prevent
manufacturers of orthopaedic devices from deriving complete information
from 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 the

invention, is used for switching electrical circuits on and off without using
contacts, thereby making for smoother operation, suffers from teething
troubles in that a residual current continues to flow in the circuit when
switched off. However, this residual current adversely affects the use of the
electrical switch in certain fields only, and can otherwise be reduced to
negligible proportions by routine further development of the semiconductor.

6. Inventions relating to biological material

6.1 Biological material

Rule 26(3) Applications relating to biological material are subject to the special
Rule 31(1) provisions set out in Rule 31. In accordance with Rule 26(3), the term
"biological material" means any material containing genetic information and
capable of reproducing itself or being reproduced in a biological system. If
an invention involves the use of or concerns biological material which is not
available to the public and which cannot be described in the European
patent application in such a manner as to enable the invention to be carried
out by a person skilled in the art, the disclosure is not considered to have
satisfied the requirements of Art. 83 unless the requirements of
Rule 31(1), (2), first and second sentences, and 33(1), first sentence, have
been met.

Rule 26(1) 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 patent
applications 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 biological
material 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 the
division knows to have been preserved in a recognised depositary
March 2024 Guidelines for Examination in the EPO Part F – Chapter III-5

institution and to be available to the public without restriction (see notice

from 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
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 public
availability and the biological material is a particular strain not falling within
the known categories such as those already mentioned, then the division
must 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 the
invention 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 is Rule 31(1) and
available to the applicant on the characteristics of the biological (2)
material. The relevant information under this provision concerns the
classification of the biological material and significant differences
from 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 rule
presumed to be available to the applicant, who must therefore
provide it. If necessary, it has to be provided through experiments in
accordance 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 well

known 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,
Part F – Chapter III-6 Guidelines for Examination in the EPO March 2024

plasmids, vectors or free DNA or RNA), the above-mentioned

information is also required for such biological system. If, for
example, other biological material is required, such as host cells or
helper viruses, that cannot be sufficiently described or is not
available to the public, this material must also be deposited and
characterised accordingly. In addition, the process for producing the
biological 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 be
incorporated 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 name
of the depositary institution and the accession number of the deposit
were submitted later, it is checked whether they were filed within the
relevant period under Rule 31(2). If that is the case, it is then further
checked whether on the filing date any reference was supplied which
enables the deposit to be related to the later filed accession number.
Normally the identification reference which the depositor gave to the
deposit is used in the application documents. The relevant document
for later filing the data pursuant to Rule 31(1)(c) could be a letter
containing 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 (see
also 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 are
stated 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 in
Rule 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 in
Rule 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 for
equivalent proof of the deposit of a biological material if such proof has not
been 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 as
submission 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 is
regularly published in the Official Journal.
March 2024 Guidelines for Examination in the EPO Part F – Chapter III-7

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 in
order to fulfil the requirement of Rule 31(1)(a).

If any of these requirements is not satisfied, the biological material in

question cannot be considered as having been disclosed pursuant to
Art. 83 by way of reference to the deposit.

Moreover, there are two situations in which the applicant can file Rule 31
information concerning the deposit which is required under Rule 31(1)(c), Rule 40(1)(c)
and where applicable also under Rule 31(1)(d), in a document filed after the Rule 56(2) and
accorded filing date and within the relevant time limit for filing that (3)
document, but after the expiry of one of the time limits under Rule 56a(3) and
Rule 31(2)(a) to Rule 31(2)(c). As in the preceding paragraph, the Rule 56a(4)
consequence 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. These
situations are those in which the information concerning the deposit is
contained 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 the
two-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) are
satisfied, or correct application documents or parts filed later, within
the two-month period under Rule 56a(3), when the requirements of
Rule 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 to
unavailable biological material mentioned in F-III, 6.1. In this case, the
invention is considered disclosed in the previous application for the purpose
of the priority claim under Art. 87(1) only if the deposit of the biological
material was made no later than the date of filing of the previous application
and 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 made
in a manner enabling it to be identified. Where the deposit of the biological
material 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 is
identical (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
Part F – Chapter III-8 Guidelines for Examination in the EPO March 2024

information must be given in the application and the necessary indications

must be furnished as required during the international phase (see also the
notice from the EPO dated 7 July 2010, OJ EPO 2010, 498).

7. Proper names, trade marks and trade names

The use of proper names, trade marks or trade names or similar words to
refer 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 the
requirements of Art. 83, the product must be sufficiently identified, without
reliance upon the word, to enable the invention to be carried out by the
skilled person at the date of filing. However, where such words have
become internationally accepted as standard descriptive terms and have
acquired 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 the
clarity 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, 2.2.7).

Where the reference document relates directly to the disclosure of the

invention (e.g. details of one of the components of a claimed apparatus),
then the examining division first considers whether knowing what is in the
reference 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 by

reference", or any expression of the same kind, needs to be deleted from
the description.

Art. 65 If matter in the document referred to is essential to satisfy the requirements

of Art. 83, the examining division requires the deletion of the
above-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 to
Art. 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 search
division has requested the applicant to furnish the document referred to, in
order 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
March 2024 Guidelines for Examination in the EPO Part F – Chapter III-9

document is to be considered as forming part of the content of the

application for the purpose of citing the application under Art. 54(3) against
later applications. For reference documents not available to the public
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 a
reference 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) 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., or

(ii) a 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 that
compound) defined only in functional terms with regard to the technical
effect it exerts on one of the above molecules.

Typical examples of such claims would be: "An agonist/antagonist to

polypeptide X [optionally as identified by the screening method of
claim A]."; "An agonist/antagonist to polypeptide X [optionally as identified
by the screening method of claim A], for use in therapy."; "An
agonist/antagonist to polypeptide X [optionally as identified by the
screening 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 sufficient
technical disclosure of the solution to the problem. A functional definition of
a 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 the
claim. 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 to
define the compounds does not necessarily confer sufficiency on the claim;
in fact it constitutes an invitation for the skilled person to perform a research
Part F – Chapter III-10 Guidelines for Examination in the EPO March 2024

programme (see T 435/91 (Reasons 2.2.1), followed by T 1063/06

(Headnote II)).

In general, claims directed to merely functionally defined chemical

compounds 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 which
patent 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 Rules 56 and 56a

Missing parts under Rule 56 and correct application documents or parts
under Rule 56a may be withdrawn within one month of a notification on
redating in order to maintain the 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, H-IV, 2.2.2 and H-IV, 2.2.3).

Under Rule 56a(4), documents or parts filed erroneously cannot be

withdrawn and may only be removed by amending the application in
compliance with Art. 123(2).

In this case, the division must carefully evaluate whether the invention is
still sufficiently disclosed without relying on the technical information
contained in the withdrawn missing parts. If the division reaches the
conclusion that the requirements of Art. 83 are not satisfied, a
corresponding objection is raised. Ultimately, the application may be
refused 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 a
consequence, 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 a
reason to deny sufficiency of disclosure as required by Art. 83. Nor is such
a lack of clear definition necessarily a matter for objection under Art. 84
only. What is decisive for establishing insufficiency within the meaning of
Art. 83 is whether the parameter, in the specific case, is so ill-defined that a
person skilled in the art is not able, on the basis of the disclosure as a
whole 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.
March 2024 Guidelines for Examination in the EPO Part F – Chapter III-11

There is a delicate balance between Art. 83 and Art. 84, which has to be
assessed on the merits of each individual case. Care has therefore to be
taken 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 in
fact be of concern under Art. 83.

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, this
results 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 part
of the problem to be solved, there is a problem of inventive step (see
G 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 is

inherently impossible because it would be contrary to the well-established
laws of physics.
March 2024 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 or Art. 69(1)
application is determined by the claims (interpreted with the help of the
description and the drawings), clarity of the claims is of the utmost
importance (see also F-IV, 4).

2. Form and content of claims

2.1 Technical features

The claims must be drafted in terms of the "technical features of the Rule 43(1)
invention". 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 are
allowed if they assist in defining the invention.

It is not necessary that every feature is expressed in terms of a structural

limitation. Functional features may be included provided that a skilled
person would have no difficulty in providing some means of performing this
function without exercising inventive skill (see F-IV, 6.5). For the specific
case of a functional definition of a pathological condition, see F-IV, 4.21.

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 Rule 43(1)
"wherever appropriate".

The first part or "preamble" needs to contain a statement indicating "the

designation of the subject-matter of the invention", i.e. the general technical
class of apparatus, process, etc. to which the invention relates, followed by
a statement of "those technical features which are necessary for the
definition of the claimed subject-matter but which, in combination, are part
of the prior art". This requirement to state prior-art features in the first part
of the claim is applicable only to independent claims and not to dependent
claims (see F-IV, 3.4). It is clear from the wording of Rule 43 that it is
necessary only to refer to those prior-art features which are relevant to the
invention. For example, if the invention relates to a photographic camera
Part F – Chapter IV-2 Guidelines for Examination in the EPO March 2024

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 features
of 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 for
which, in combination with the features stated in the first part, protection is
sought.

If a single document in the state of the art according to Art. 54(2), e.g. cited
in the search report, reveals that one or more features in the second part of
the claim were already known in combination with all the features in the first
part of the claim and in that combination have the same effect as they have
in the full combination according to the invention, the division will require
that such feature or features be transferred to the first part.

Where, however, a claim relates to a novel combination, and where the

division of the features of the claim between the preamble and the
characterising 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 that
which they have chosen, if their version is not incorrect. If the applicant
insists on including more features in the preamble than can be derived from
the closest available prior art, this is accepted.

If no other prior art is available, this first part of the claim could be used to
raise 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 is
indicated 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 a
different 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 substance
for another; and

(iii) a complex system of functionally interrelated parts, the inventive step

concerning changes in several of these or in their interrelationships.
March 2024 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 and
inappropriate, 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 compound
or 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. Art. 54(3)
This is when the only relevant prior art is another European patent
application falling within the terms of Art. 54(3). Such prior art must
however be clearly acknowledged in the description (see F-II, 4.3,
penultimate paragraph, and F-II, 4.4).

2.3.2 Two-part form "wherever appropriate"

When examining whether or not a claim is to be put in the form provided for
in Rule 43(1), second sentence, it is important to assess whether this form
is "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 definition
of the claimed subject-matter are, in combination, part of the prior art. If this
is sufficiently clear from the indication of prior art made in the description, to
meet 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 or
mathematical 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, the
division does not object to the use of tables in claims where this form is
convenient.

3. Kinds of claim

3.1 Categories
The EPC refers to different "categories" of claim ("products, process, Rule 43(2)
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 of
claim, 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 "a
communication 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
Part F – Chapter IV-4 Guidelines for Examination in the EPO March 2024

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 as

permitting the inclusion of any one of the following combinations of claims
of 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 an
apparatus 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 of
such 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.

3.2 Number of independent claims

Rule 43(2) According to Rule 43(2), as applicable to all European patent applications,
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 the
requirement of Art. 82 with regard to unity is met (see F-V).

The following are examples of typical situations falling within the scope of
the 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

– transmitter – receiver
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-5

– 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 and
sub-units of such systems, as long as these entities are interrelated.
Interrelated methods claims may also fall under the exception of
Rule 43(2)(a).

(ii) Examples of a plurality of different inventive uses of a product or

apparatus (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

(iii) Examples of alternative solutions to a particular problem

(Rule 43(2)(c))

– a group of chemical compounds

– two or more processes for the manufacture of such

compounds

(iv) Examples of allowable claim types

– Claims directed to multiple methods involving a novel and

inventive 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 the

isolated 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 a

plurality of devices coupled to a bus;

a data receiving method for receiving a data packet between a

plurality of devices coupled to a bus.
Part F – Chapter IV-6 Guidelines for Examination in the EPO March 2024

– Methods of operating a data-processing system comprising

steps A, B, … – a data-processing apparatus/system
comprising means for carrying out said method – a computer
program [product] adapted to perform said method – a
computer-readable storage medium/data carrier comprising
said program;

Note however that when several independent claims are directed to

equivalent embodiments that are not sufficiently different (e.g. computer
program adapted to perform said method, optionally carried on an electric
carrier signal – computer program comprising software code adapted to
perform 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 be
interpreted as "different or mutually exclusive possibilities". Moreover, if it is
possible 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 be
appropriate to replace such claims with a single independent claim, e.g. by
selecting 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 no
Rule 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 a
Euro-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 to
amend the claims appropriately. If the search was restricted in accordance
with Rule 62a, and the examining division upholds the objection under
Rule 43(2) despite possible counter-arguments provided by the applicant in
response to the invitation under Rule 62a(1) (see B-VIII, 4.2.2) or to the
search 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 from
the search (Rule 62a(2)) and the description amended accordingly
(see H-II, 5).

If in reply to the reasoned objection (raised or confirmed in a

communication from the examining division) the additional independent
claims are maintained and no convincing arguments are presented that one
of the situations referred to in sub-paragraphs Rule 43(2)(a) to (c) 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-matter
excluded 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 2024 Guidelines for Examination in the EPO Part F – Chapter IV-7

also H-IV, 4 and H-IV, 4.1.1). However, before such a decision can be
taken, it will be necessary to allow the applicant to comment 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 initially

shifted onto the applicant, i.e. it is up to the applicant to argue convincingly
why additional independent claims can be maintained. For example, the
mere statement that the number of claims is the minimum necessary to
provide the overall scope of protection which the applicant seeks is not a
convincing 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 to Rule 43(3) and
the essential features of the invention. Any such claim may be followed by (4)
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 hence
must include all the features of at least one independent claim. The term
"particular embodiment" is construed broadly as meaning any more specific
disclosure 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 Rule 43(4)
"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 dependent
claim does not by itself define all the characterising features of the
subject-matter which it claims, expressions such as "characterised in that"
or "characterised by" are not necessary in such a claim but are
nevertheless permissible. A claim defining further particulars of an invention
may include all the features of another dependent claim by referring back to
that claim. Also, in some cases, a dependent claim may define a particular
feature 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 independent
claims, to one or more dependent claims, or to both independent and
dependent claims.

It sometimes occurs that an independent claim refers explicitly to

alternative 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 the Art. 84
claims as a whole.
Part F – Chapter IV-8 Guidelines for Examination in the EPO March 2024

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 that
composition, it is possible for a claim specifying further features of the
composition to be made dependent on both the independent claim for the
composition and the independent claim for its use.

Art. 84 Objections are, however, raised to this type of claim dependency if it leads
to a lack of clarity.

3.5 Arrangement of claims

Rule 43(4) All dependent claims referring back to a single previous claim and those
referring back to several previous claims must be grouped together to the
extent and in the most appropriate way possible. The arrangement must
therefore be one which enables the association of related claims to be
readily determined and their meaning in association to be readily
construed. The division objects if the arrangement of claims is such as to
create 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 and
thus in no way extend the scope of protection of the invention defined in the
corresponding 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.

3.7 Alternatives in a claim

Art. 84 A claim, whether independent or dependent, may refer to alternatives,
Art. 82 provided that the number and presentation of alternatives in a single claim
does not make the claim obscure or difficult to construe and provided that
the 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 to

features from a claim of another category
A claim containing a reference to another claim is not necessarily a
dependent 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 of
claim 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 a
dependent claim. In all these examples, the division carefully considers the
extent to which the claim containing the reference necessarily involves the
features 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 2024 Guidelines for Examination in the EPO Part F – Chapter IV-9

features (Rule 43(1)) apply to a claim which simply says "Apparatus for
carrying out the process of claim 1". Since the change of category already
makes the claim independent, the applicant is required to set out clearly in
the 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 the
structure is made sufficiently clear; or a process may be defined in terms of
essential structural features of the apparatus for carrying it out; or an
element 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 the
claimed subject-matter, a clear distinction must be maintained between
product claims (for a device, apparatus or system) and process claims (for
a 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; for
this reason, a claim which simply reads "Apparatus Z, when used for
carrying out process Y" is also objected to on the grounds of lack of clarity
and 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 the use explicitly or implicitly implements all
features of the product claim (see T 642/94 and T 1144/07). 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 have different 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 programmable
apparatus, whereby at least one feature is realised by means of a program.
Part F – Chapter IV-10 Guidelines for Examination in the EPO March 2024

Claims directed to CII should define all the features which are essential for
the 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 three

situations. The practice defined in F-IV, 3.9.1 is confined to inventions in
which all the method steps can be carried out by generic data processing
means. 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 or
other 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 by

generic 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 the
invention. If the invention concerns software which can be loaded into
memory, transmitted over a network or distributed on a data carrier, a claim
to a computer program [product] may also be present in addition to a
computer-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) Method claim (claim 1)

– A computer-implemented method comprising steps A, B, ...

– A method carried out by a computer comprising steps A, B, ...

(ii) Apparatus/device/system claim (claim 2)

– A data processing apparatus/device/system comprising means

for carrying out [the steps of] the method of claim 1.

– A data processing apparatus/device/system comprising means

for carrying out step A, means for carrying out step B, ...

– A data processing apparatus/device/system comprising a

processor adapted to/configured to perform [the steps of] the
method of claim 1.
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-11

(iii) Computer program [product] claim (claim 3)

– A computer program [product] comprising instructions which,

when the program is executed by a computer, cause the
computer 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 the
computer to carry out steps A, B, ....

(iv) 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 to
carry 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 to
carry out steps A, B, ...

– A computer-readable data carrier having stored thereon the

computer 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 the
respective 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 this
way, novelty is conferred over an unprogrammed data processing
apparatus or a data processing apparatus programmed to perform a
different 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, an
invitation 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) is raised if there are multiple

independent claims present from a given heading (i)-(iv) and they do not fall
under the exceptions of Rule 43(2) (F-IV, 3.2) (e.g. two or more computer
program [product] claims which cannot be considered as falling under one
of the exceptions of Rule 43(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 and
inventive, the subject-matter of the other claims in a set formulated in
accordance with the headings above will normally be novel and inventive
Part F – Chapter IV-12 Guidelines for Examination in the EPO March 2024

as well, provided they comprise the features corresponding to all those

which assure the patentability of the method.

Claims related to CII which are formulated differently to those in the

formulations (i)-(iv) defined above are assessed on a case-by-case basis in
view 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 refer
to the specific features of the different entities and to define how they
interact 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 their
corresponding 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 may

arise if it is not possible to determine from the claim which steps are carried
out 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 by
its 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 not
necessarily 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 to
the method claim as in formulations (i)-(iv) in F-IV, 3.9.1 to fulfil the
requirements of Art. 84 (see also F-IV, 3.8). Furthermore, if not all the
features of the method claim are reflected in claims in other categories
referring to the method, said claims in other categories have to be
construed 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 technical
physical entities by using computer control. These method steps may not
always be fully performed by the computer and the method claim may
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-13

recite specific technical means for carrying out some of the steps. In such a
case, defining a computer program claim as in F-IV, 3.9.1(iii) will normally
lead to an objection under Art. 84 if the step carried out by the specific
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 the
claims do not define which steps are carried out by the data processor or
by 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 data
processing 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 technical
means, such as sensors, it is not necessary that the computer or computer
program claims referring to the method comprise those specific technical
means. 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 technical
means 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 the

device 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 is

defined as being executed by specific technical means (the electromagnetic
detector in a pulse oximeter). A computer program claim making reference
Part F – Chapter IV-14 Guidelines for Examination in the EPO March 2024

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 computer
program claim should be defined as being executed on the pulse oximeter
with 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 in

blood, comprising:

– receiving data representing first and second electromagnetic

radiation signals acquired by an electromagnetic detector from
a 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 data

according to steps D and E.

2. A data processing apparatus comprising means for carrying out the

method of claim 1.

3. A computer program [product] comprising instructions which, when

the program is executed by a computer, cause the computer to carry
out 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 of

acquired data for determining the oxygen saturation in blood. The data can
be 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 required
feature for receiving the input data. Hence, the device claim defined by
reference to the method claim does not need to include the pulse oximeter
or an electromagnetic detector either. Furthermore, the computer program
claim 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, the
formulations 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) and
server system, accessing storage or processing resources of a computer
cloud, devices in a peer-to-peer network performing file sharing, an
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-15

augmented reality environment with head mounted displays, autonomous

vehicles interacting over an ad hoc network or maintaining a distributed
ledger using a blockchain.

For such distributed CIIs, the claim set may comprise claims directed to
each entity of the distributed system and/or to the overall system and the
corresponding 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 implementation
of a computer cloud using virtual machines enabling adaptation to workload
changes 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 the
involved 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 the
requirements 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 the

help of the following examples. Other formulations (F-IV, 3.9.1) than the
ones given in the examples can also be part of the claim set but have been
omitted for reasons of brevity.

Example

1. A transmitter device comprising means for encoding data by

performing steps A and B and means to transmit the encoded data to
a receiver device.

2. A receiver device comprising means for receiving encoded data from

a 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 the
encoded 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
Part F – Chapter IV-16 Guidelines for Examination in the EPO March 2024

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 of

data over a network. The transmitter device encodes the data using an
algorithm comprising steps A and B and the receiver device performs the
complementary 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 to
perform 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 to
steps C and D is conventional, it may be that only claims 1, 3 and 4 are
new and inventive.

4. Clarity and interpretation of claims

4.1 Clarity
Art. 84 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 a
whole. The clarity of the claims is of the utmost importance in view of their
function in defining the matter for which protection is sought. Therefore, the
meaning 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 ensure
that 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 the
absence of appropriate amendment and/or convincing arguments from the
applicant as to why the invitation under Rule 63(1) was not justified, an
objection 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 the
description gives the words a special meaning, by explicit definition or
otherwise. Moreover, if such a special meaning applies, the division will, so
far as possible, require the claim to be amended whereby the meaning is
clear 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 be
read 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 the
claims. Art. 69 and its Protocol do not provide a basis for excluding what is
literally covered by the terms of the claims (see T 223/05).
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-17

4.3 Inconsistencies
Any inconsistency between the description and the claims must be avoided
if it casts 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 suggests

that the invention is limited to a particular feature but the claims are
not thus limited; also, the description places no particular emphasis
on this feature and there is no reason for believing that the feature is
essential for the performance of the invention. In such a case, the
inconsistency can be removed either by broadening the description
or by limiting the claims. Similarly, if the claims are more limited than
the 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 is
essential to the performance of the invention, or, in other words, is
necessary for the solution of the problem to which the invention
relates. In such a case, the claim does not meet the requirements of
Art. 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 of
view but also that it must clearly define the subject-matter of the
invention, 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 other
evidence, that the feature is in fact not essential, they may be
allowed to retain the unamended claim and, where necessary, to
amend the description instead. The opposite situation in which an
independent claim includes features which do not seem essential for
the performance of the invention is not objectionable. This is a matter
of the applicant's choice. The division therefore does not suggest that
a claim be broadened by the omission of apparently inessential
features;

(iii) Part of the description and/or drawings is inconsistent with the

subject-matter for which protection is sought

– Description inconsistent with independent claim(s)

According to Art. 84, second sentence, the claims must be

supported by the description. This means that there must not
be inconsistency between the claims and the description.
Parts of the description that give the skilled person the
Part F – Chapter IV-18 Guidelines for Examination in the EPO March 2024

impression that they disclose ways to carry out the invention

but are not encompassed by the wording of the claims are
inconsistent (or contradictory) with the claims. Such
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 an alternative feature which has a broader or different
meaning than a feature of the independent claim. Further, an
inconsistency arises if the embodiment comprises a feature
which is demonstrably incompatible with an independent
claim.

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.

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 the
description 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 long as the combination of the features in
the embodiment is encompassed 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 the refinements of the combination defined in the
claim unless there are indications to the contrary. The
passages which describe only the realisation 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
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-19

B2 unless one of A1-A3 is incompatible with B2. On the other

hand, any passage explicitly referring to a sub-combination of
the claimed features (e.g. only A or A+B) as being the
invention is inconsistent with the claim.

Subject-matter in the description regarded as an exception to

patentability under Art. 53 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 G-II, 4.2 for adaptation of the description for
methods of treatment of the human and animal body, G-II, 5.3
for adaptation of the description for the use of human
embryonic stem cells and G-II, 5.4 for adaptation of the
description for plant and animals).

For borderline cases where there is doubt as to whether an

embodiment is consistent with the claims, the benefit of the
doubt is given to the applicant.

– Procedural aspects and examples

The applicant must remove any inconsistencies by amending

the description either by deleting the inconsistent
embodiments or marking appropriately so that it is clear that
they do not fall within the subject-matter for which protection is
sought. See paragraph (i) above for the case where an
inconsistency can be removed by broadening the claims.

Example: Independent claim defines a vehicle with a broad

feature of a "motor", together with other features. The
description and the drawings comprise Embodiment 1, in
which the vehicle has an electric motor, and Embodiment 2, in
which the vehicle has a combustion engine. During the
prosecution, in order to fulfil the requirements of inventive
step, the independent claim is amended to specify a vehicle
employing an electric motor since the combination of claimed
features using a combustion engine was anticipated by the
prior art. Embodiment 2 is no longer consistent with the
independent claim, unless it can be inferred from this
embodiment that the combustion engine is used in
combination with the electric motor. This inconsistency 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 the
claims" or similar wording).

An inconsistency between the description and the claims

cannot be removed by introducing at the beginning of the
description a generic statement such as "embodiments not
falling under the scope of the appended claims are to be
considered merely as examples suitable for understanding the
Part F – Chapter IV-20 Guidelines for Examination in the EPO March 2024

invention" without indicating which parts of the description 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 the claims 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 an independent claim. Unambiguous
expressions have to be adopted to mark an inconsistent
embodiment (e.g. by adding "not encompassed by 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 the
aforementioned 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 by complementing the reference to it with an
explicit statement to the effect that it is retained due to being
useful for understanding the invention (e.g. "embodiment
useful for understanding the invention", "comparative example
from background art".

When inviting the applicant to amend the description, the

division provides examples of embodiments inconsistent with
the independent 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 the
search is still present in the description. Unless the initial objection was not
justified, such subject-matter is objected to under Art. 84 (inconsistency
between the claims and the description).

Furthermore, an inconsistency between the description/drawings and the

claims 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 covered
by the claims.
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-21

4.4 General statements, "spirit of the invention", claim-like clauses

General statements in the description which imply that the extent of
protection may be expanded in some vague and not precisely defined way
are not allowed. In particular, any statement which refers to the extent of
protection being expanded to cover the "spirit of the invention" or "all
equivalents" of the claims must be deleted.

Statements that refer to the extent of protection covering the "scope of the
claims" 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 of

features, any statement that seems to imply that protection is nevertheless
sought not only for the combination as a whole but also for individual
features 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 the
description and/or in the form of numbered paragraphs, particularly in
divisional or Euro-PCT applications, where the original set of claims from
the 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 Art. 84
clear, meaning not only that a claim must be comprehensible from a Rule 43(1) and
technical point of view, but also that it must define clearly all the essential (3)
features of the invention (see T 32/82). Furthermore, the requirement of
Art. 84 that the claims be supported by the description applies to features
which are explicitly presented in the description as being essential for
carrying 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 and
support requirements.

4.5.2 Definition of essential features

Essential features of a claim are those necessary for achieving a technical
effect underlying the solution of the technical problem with which the
application is concerned (the problem usually being derived from the
description). The independent claim(s) must therefore contain all features
explicitly described in the description as being necessary to carry out the
invention. Any features which, even if consistently mentioned in the context
of the invention throughout the application, do not actually contribute to the
solution of the problem are not essential features.
Part F – Chapter IV-22 Guidelines for Examination in the EPO March 2024

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 the
process 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).

Claims towards plants or animals which are not exclusively produced by an

essentially biological process comprising a functionally defined phenotypic
trait and which are worded as product-by-process claims (i.e. obtainable by
crossing 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 of
claim. 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 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.

4.5.3 Generalisation of essential features

In deciding how specific the essential features must be, the provisions of
Art. 83 must be borne in mind: it is sufficient if the application as a whole
describes the necessary characteristics of an invention in a degree of detail
such 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 independent
claim. 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 the
features is not required. This principle applies equally to structural and
functional features.

4.5.4 Implicit features

As detailed above, an independent claim must specify explicitly all of the
essential 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 the
invention lies in modifying it in certain respects, it is sufficient that the claim
clearly identifies the product and specifies what is modified and in what
way. 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.
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-23

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, the
use of this term is objected to under Art. 84 unless the term has a
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 found
elsewhere 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 the
content 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 is
interpreted by the division in the least restrictive possible way when
determining the extension of the subject-matter of the claim. As a
consequence, 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 when
compared to another one, but it does not define an objective and
measurable thickness. So a metal plate three millimetres thick is thin when
compared to a plate five millimetres thick, but thick when compared to a
plate one millimetre thick.

As another example, when considering "an element mounted near the end
of 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 be
mounted 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.
Part F – Chapter IV-24 Guidelines for Examination in the EPO March 2024

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 particular
value (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, 7.1
apply, i.e. the expression "about 200°C" is interpreted as having the same
round-off as "200°C". If error margins are specified in the application, they
must be used in the claims in place of the expression containing "about" or
similar terms.

When terms such as "substantially" or "approximately" qualify a structural

unit of an apparatus (e.g. "a tray plate with a substantially circular
circumference" or "a tray plate with an approximately curved base"), the
expression containing the term "substantially" or "approximately" will be
interpreted as a technical feature being produced within the technical
tolerance 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 more
accurate than cutting by hand) unless the application suggests otherwise.
In other words, in the absence of any indication to the contrary in the
application, the expression "a tray plate with a substantially circular
circumference" is interpreted as claiming the same technical feature as "a
tray 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 within
a certain tolerance and the skilled person knows how to obtain that
tolerance. For example, "a substantially vertical seat back" is interpreted as
allowing for a certain +/- variation around 90° where the skilled person can
recognise that a functionality for supporting the sitting person's back is
present.

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 a
value and/or range outside the error margins of the measurement system
or the structural unit beyond the manufacturing tolerances or any other
tolerance that the skilled person would take into consideration in the
technical field concerned, then the wording of the claims becomes vague
and undefined. This leads to an objection under Art. 84 because the
presence of this wording prevents the subject-matter of the claims from
being 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
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-25

realised by a CNC waterjet cutting machine, this renders the scope of the
claims unclear because:

(i) the tolerance indicated by the application is outside the tolerance of

the manufacturing method (a CNC waterjet cutting machine
approximates a circular circumference by using a polygon with
hundreds 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 "substantially
circular 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
while maintaining its name during the term of the patent. They may be
allowed 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 the

description, 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 if
they 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, such
as 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 the
invention 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
Part F – Chapter IV-26 Guidelines for Examination in the EPO March 2024

or procedures adequately specified in the description or known to the

person 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 the
shape and relative dimensions of the ashtray. The latter may vary
considerably in a manner difficult to define whilst still providing the desired
effect. So long as the claim specifies the construction and shape of the
ashtray as clearly as possible, it may define the relative dimensions by
reference to the result to be achieved, provided that the specification
includes adequate directions to enable the skilled person to determine the
required 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 in
essence to the problem underlying the application. It is established case
law that an independent claim must indicate all the essential features of the
object of the invention in order to comply with the requirements of Art. 84
(see G 2/88 and G 1/04). Art. 84 also reflects the general legal principle
that the extent of monopoly conferred by a patent, as defined in the claims,
must correspond to the technical contribution 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). The technical
contribution of a patent 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), see
also F-IV, 4.5.

The above-mentioned requirements for allowing a definition of

subject-matter in terms of a result to be achieved differ from those for
allowing a definition of subject-matter in terms of functional features (see
F-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 flexural
strength 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 to

the physical structure of the product, provided that those parameters can
be clearly and reliably determined by objective procedures which are usual
in the art. Where the characteristics of the product are defined by a
mathematical relation between parameters, each parameter needs to be
clearly and reliably determined.

The same applies to process-related features defined by parameters.

March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-27

The requirements of Art. 84 with regard to the characterisation of a product

by 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 by

parameters needs to ensure that the skilled person can easily and
unambiguously verify whether they are working inside or outside the
scope of the claim.

If the description of the method for measuring a parameter is so long that

its 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).

Furthermore the requirement under point (ii) can still be met if it can be
convincingly 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 technical

field for determining this parameter yield the same result within the
appropriate 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 the
invention. 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 field
of the invention.

(ii) The unusual parameter measures a property of the product/process

that 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 the
parameter generally recognised in the art is possible, or a
non-accessible apparatus for measuring the unusual parameter is
used are prima facie objectionable on grounds of lack of clarity, as no
Part F – Chapter IV-28 Guidelines for Examination in the EPO March 2024

meaningful comparison with the prior art can be made. Such cases
might also disguise lack of novelty (see G-VI, 5).

– Use of unusual parameters of type (ii) is allowable if it is evident from

the application that the skilled person would face no difficulty in
carrying out the presented tests and would thereby be able to
establish the exact meaning of the parameter and to make a
meaningful comparison with the prior art. In addition, the onus of
proof that an unusual parameter is a genuine distinctive feature
vis-à-vis the prior art lies with the applicant. No benefit of doubt can
be accorded in this respect (see G-VI, 5).

Example of an allowable unusual parameter of type (ii)

The application explains that the abrasive action of sandpaper of very fine
grade 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.

The skilled person has no problem in establishing the exact meaning of the
parameter, measuring it and determining its genuine distinctive feature
against the prior art.

4.12 Product-by-process claim

Art. 53(b) A claim defining a product in terms of a process is to be construed as a
Rule 28(2) claim to the product as such. The technical content of the invention lies not
Art. 64(2) in the process per se, but rather in the technical properties imparted to the
product by the process. Claims defining plants or animals produced by a
method 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 Rule
28(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 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 a technical intervention
(e.g. directed mutagenesis) and an essentially biological process (a natural
allele), a disclaimer is necessary to delimit the claimed subject-matter to the
technically 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 be
obtained by technical intervention only, e.g. a transgene, no disclaimer is
necessary. 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.
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-29

Claims for products defined in terms of a process of manufacture are

allowable only if the products as such fulfil the requirements for
patentability, 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 of
manufacture. A product is not rendered novel merely by the fact that it is
produced by means of a new process. The claim may for instance take the
form "Product X obtainable by process Y". Irrespective of whether the term
"obtainable", "obtained", "directly obtained" or an equivalent wording is
used in the product-by-process claim, it is still directed to the product per se
and 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 under
consideration 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 process
parameters results in another product, for example by showing that distinct
differences exist in the properties of the products. Nevertheless, the
division needs to furnish reasoned argumentation to support the alleged
lack of novelty of a product-by-process claim, especially if this objection is
contested by the applicant (see G 1/98, T 828/08).

Similarly, examination of product or product-by-process claims in respect of Art. 69

their patentability under the EPC is unaffected by the extent of the
protection conferred by the patent or the patent application (see G 2/12 and
G 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 the
novelty of the claimed product only if they cause the claimed product to
have 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 the
applicant.

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 the
process ...", this must be construed as meaning merely apparatus suitable
for carrying out the process. An apparatus which otherwise possesses all of
the features specified in the claims but which is unsuitable for the stated
purpose 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 a
melting 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 is
Part F – Chapter IV-30 Guidelines for Examination in the EPO March 2024

construed 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 the
substance 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 of
novelty. 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, 6.1).

4.13.2 Interpretation of means-plus-function features ("means for ... ")

Means-plus-function features ("means for ...") are a type of functional
feature and hence do not contravene the requirements of Art. 84.

Any prior art feature suitable for carrying out the function of a
means-plus-function feature will anticipate the latter. For example, the
feature "means for opening a door" is anticipated by both the door key and
a crowbar.

An exception to this general principle of interpretation is where the function

of the means-plus-function feature is carried out by a computer or similar
apparatus. In this case the means-plus-function features are interpreted as
means adapted to carry out the relevant steps/functions, rather than merely
means suitable for carrying them out.

Example:

"1. An eyeglass lens grinding machine for processing a lens such that
the 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 frame

and layout data to be used in providing a layout of the lens relative to
the eyeglass frame;

means for detecting an edge position of the lens on the basis of the
received 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 said

first bevel path such that said second bevel path passes through a
desired position on a lens edge; and

means for controlling the grinding wheel during the bevelling of the
lens on the basis of said second bevel path."
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-31

"1. An eyeglass lens grinding machine for processing a lens such that
the lens is fitted in an eyeglass frame, said machine comprising

at least a grinding wheel for bevelling the lens;

a computer adapted to:

– receive frame configurational data on the eyeglass frame and

layout 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 result

of detection by said edge position detecting means;

– determine a second bevel path that is obtained by tilting said

first 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 for
controlling the grinding wheel if the specific processing steps are not
disclosed in the prior art. When "means for" refers to computer means, the
processing steps being defined as "means for + function" (first claim) and
"computer adapted to + function" (second claim) are to be interpreted as
limiting. Therefore, a prior-art document disclosing an eyeglass lens
grinding machine comprising at least a grinding wheel for bevelling the lens
and 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 in

computer-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 are
possible, namely those that define the application or use of a method, and
those 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 the
claimed process would not achieve the stated purpose. Hence a method
claim that defines a working method which, for example, commences with
such words as "Method for remelting galvanic layers", the part "for
remelting ..." is not to be understood as meaning that the process is merely
suitable for remelting galvanic layers, but rather as a functional feature
Part F – Chapter IV-32 Guidelines for Examination in the EPO March 2024

concerning the remelting of galvanic layers and, hence, defining one of the
method steps of the claimed working method (see T 1931/14 and
T 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 in
the 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 effect
which inevitably arises when carrying out the other remaining steps of the
claimed 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
malodor" although not mentioning the specific use (see T 1931/14 and
T 304/08).

4.14 Definition by reference to (use with) another entity

A claim in respect of a physical entity (product, apparatus) may seek to
define 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 the
former is defined by features of its location in the latter.

Since the first entity (the cylinder head) can often be produced and
marketed independently of the other entity (the engine), the applicant is
normally entitled to independent protection of the first entity per se.
Therefore, in first instance, such a claim is always interpreted as not
including the other entity or its features: these limit the subject-matter of the
claim only in so far as the first entity's features are suitable to be used with
the second entity's features. In the above example, the cylinder head must
be suitable to be mounted in the engine described in the claim, but the
features 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 first
and 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 a
cylinder 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 (a
separate 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.
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-33

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 another

entity
It 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 the
size of the second entity is in some way standardised (for example, in the
case 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 the
number-plate).

Furthermore, references to second entities which cannot be seen as

subject to standardisation may also be sufficiently clear in cases where the
skilled person would have little difficulty in inferring the resultant restriction
of the scope of protection for the first entity (for example, in the case of a
covering sheet for an agricultural round bale, where the length and breadth
of the covering sheet and how it is folded are defined by reference to the
bale'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 the
scope 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 worded
in 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 and
voltage comprising the following steps: ...; and

(iv) In a process/system/apparatus etc. ... the improvement consisting

of...

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, or
Part F – Chapter IV-34 Guidelines for Examination in the EPO March 2024

whether 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 is
essential to ensure that the wording is clear.

However, claims such as "use of a substance ... as an anticorrosive

ingredient in a paint or lacquer composition" are acceptable on the basis of
second non-medical use (see G-VI, 6.2).

4.16 Use claims

For the purposes of examination, a "use" claim in a form such as "the use
of 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, a
claim in the form indicated is not to be interpreted as directed to the
substance 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 a
circuit containing the transistor and is not to be interpreted as being
directed to "an amplifying circuit in which the transistor is used", nor to "the
process 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 a
claim 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 case
e.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 a
compound having a given property) with (b) further production steps
(i.e. further transforming the selected compound for instance into the
desired composition).
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-35

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 to
processes 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 of
type (ii). Step (b) builds on the "effect" achieved by step (a), rather than
step (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 partly
of a process for producing a product. This renders the claim unclear
according to Art. 84.

4.17 References to the description or drawings

As indicated in Rule 43(6), the claims must not, in respect of the technical Rule 43(6)
features 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".

The emphatic wording of the excepting clause is to be noted. The onus is

upon the applicant to show that it is "absolutely necessary" to rely on
reference to the description or drawings in appropriate cases
(see T 150/82).

An example of an allowable exception is an invention involving some

peculiar shape, illustrated in the drawings, but which cannot be readily
defined either in words or by a simple mathematical formula. Another
special case is that in which the invention relates to chemical products
some of whose features can be defined only by means of graphs or
diagrams.

4.18 Reference signs

If the application contains drawings, and the comprehension of the claims is Rule 43(7)
improved by establishing the connection between the features mentioned in
the claims and the corresponding reference signs in the drawings, then
appropriate reference signs need to be placed in parentheses after the
features 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 drafted
in the two-part form set out in Rule 43(1), the reference signs need to be
inserted not only in the characterising part but also in the preamble of the
claims.

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 claims
easier 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 of

clarity 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
Part F – Chapter IV-36 Guidelines for Examination in the EPO March 2024

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 where
particular 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 not
include reference signs, e.g. the expression "(concrete) moulded brick" is
unclear because it cannot be determined if the feature moulded brick is
limited or not by the word concrete. In contrast, bracketed expressions with
a generally accepted meaning are allowable, e.g. "(meth)acrylate" which is
known as an abbreviation for "acrylate and methacrylate". The use of
brackets in chemical or mathematical formulae is also unobjectionable, as
is their use when correcting physical values not complying with the
requirements as determined by the President under Rule 49(2).

4.19 Negative limitations (e.g. disclaimers)

A claim's subject-matter is normally defined in terms of positive features
indicating 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 done
e.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 and
concisely 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 were

disclosed 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 not
render the claim unworkable.
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-37

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 compound
refers 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
essential characteristics of the compound or composition. For any other
apparatus/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, are
available from the patent documents or from the common general
knowledge allowing the skilled person to recognise which conditions fall
within 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, the Art. 84 and Art. 83
claims are not sufficiently supported by the description (Art. 84) and also, in
most cases, the invention is not sufficiently disclosed (Art. 83)
(see T 409/91, F-IV, 6.1 and F-IV, 6.4).

Sometimes an objection of lack of novelty arises, for example if the claim is Art. 54 and Art. 56
formulated in such broad terms that it also covers known subject-matter
from other technical fields. Broad claims may also cover embodiments for
which a purported effect has not been achieved. On raising an objection of
lack of inventive step in such cases, see G-VII, 5.2.

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 a
large number of claims is a long way down, so that it could easily be
Part F – Chapter IV-38 Guidelines for Examination in the EPO March 2024

overlooked, the applicant is required either to rearrange the claims in a

more 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).

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 of
identity. The percentage of identity determines the number of identical
residues over a defined length in a given alignment. If no algorithm or
calculation method for determining the percentage of identity is defined, the
broadest 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 given
alignment. The percentage of similarity is determinable only if a
similarity-scoring matrix is defined. If no similarity-scoring matrix is defined,
a claim referring to a sequence displaying a percentage of similarity to a
recited sequence is considered to cover any sequence fulfilling the
similarity 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 the

applicant 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) unless
the 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 the
same meaning.

5. Conciseness, number of claims

Art. 84 The requirement that the claims must be concise refers to the claims in
Rule 43(5) their 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 and
another, 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 of
both their number and their content. For example, the repetition of
subject-matter that has already been claimed is unnecessary and
negatively affects the conciseness of the claims. Similarly, the number of
dependent claims should be reasonable. What is or what is not a
reasonable number of claims depends on the facts and circumstances of
each particular case. The interests of the relevant public must also be
borne in mind. The presentation of the claims must not make it unduly
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-39

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 of
alternatives within a single claim, if this renders it unduly burdensome to
determine the matter for which protection is sought.

Where it is found that the claims lack conciseness under Art. 84, this may
lead 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 the
absence of appropriate amendment and/or convincing arguments from the
applicant as to why the invitation under Rule 63(1) was not justified, an
objection 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 Art. 84
must be a basis in the description for the subject-matter of every claim and
that the scope of the claims must not be broader than is justified by the
extent of the description and drawings and also the contribution to the art
(see T 409/91). Regarding the support of dependent claims by the
description, 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 must
judge in each particular case in the light of the relevant prior art. Thus an
invention which opens up a whole new field is entitled to more generality in
the 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 it
goes beyond the invention nor yet so narrow as to deprive the applicant of
a 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 the
variants 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 or
assertions having no technical content provide no basis.

The division raises an objection of lack of support only if it has well-founded

reasons. Once the division has set out a reasoned case that, for example, a
broad claim is not supported over the whole of its breadth, the onus of
demonstrating that the claim is fully supported lies with the applicant
Part F – Chapter IV-40 Guidelines for Examination in the EPO March 2024

(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 the
information given appears insufficient to enable a person skilled in the art to
extend the teaching of the description to parts of the field claimed but not
explicitly described by using routine methods of experimentation or
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 claimed
or, 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 process
applied to one kind of plant only. Since it is well-known that plants
vary widely in their properties, there are well-founded reasons for
believing that the process is not applicable to all plant seedlings.
Unless the applicants can provide convincing evidence that the
process is nevertheless generally applicable, they must restrict their
claim 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 the
method is such as to appear inappropriate to thermosetting resins.
Unless the applicants can provide evidence that the method is
nevertheless 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 of
obtaining fuel oils having this property, which is by the presence of
defined amounts of a certain additive. No other ways of obtaining fuel
oils having the desired property are disclosed. The claim makes no
mention of the additive. The claim is not supported over the whole of
its 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 such
cases, 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).
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-41

6.4 Lack of support vs. insufficient disclosure

Although an objection of lack of support is an objection under Art. 84, it can Art. 83
often, as in the above examples, also be considered as an objection of Art. 84
insufficient disclosure of the invention under Art. 83 (see F-III, 1 to 3), the
objection 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 be
commensurate with, or be justified by, the invention's technical contribution
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 the
invention, over the whole range claimed, extends to technical
subject-matter not made available to the person skilled in the art by the
application 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 the

description 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 the
use of said feature, the description does not disclose the invention defined
in 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 chemical
compounds 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 not
otherwise feasible by the application of common general knowledge or
routine experimentation. Such a claim would be both technically not
supported and not sufficiently disclosed, regardless of whether the
parametric definition meets the clarity requirement of Art. 84.

Whether the objection is raised as lack of support or as insufficiency is not

important 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 a
functional feature, even where only one example of the feature has been
given in the description, if the skilled person would appreciate that other
means 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 be
supported by a single example comprising a limit switch, it being evident to
the 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 a
particular way, with no intimation that alternative means are envisaged, and
a claim is formulated in such a way as to embrace other means, or all
Part F – Chapter IV-42 Guidelines for Examination in the EPO March 2024

means, 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 the
application as filed, but is not mentioned anywhere in the description, it is
permissible to amend the description so that it includes this subject-matter.
Where the claim is dependent, it may suffice if it is mentioned in the
description that the claim sets out a particular embodiment of the invention
(see F-II, 4.5).
March 2024 Guidelines for Examination in the EPO Part F – Chapter IV-43

Annex
Examples concerning essential features

Example 1

Claim 1 relates to a method for storing gel-coated seeds having a gel coat
comprising 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 was
emphasised in the description that it is necessary to confine the metal ion
concentration to a specific range in order to achieve the goals of the
invention. A metal ion concentration outside the specific range was
presented 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 to
the strip. According to the description, the problem is that the rollers are
unable to subject the lateral ends of the strip to a curve-creating force and
so the lateral ends normally end up planar. The distinguishing feature of the
independent claim specifies that a flexible belt or web-like member is
provided to support the strip in its passage through the shaping set of
rollers. 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 to
solve 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 that
the error between the pixel data of the predicted and actual current fields is
minimised. The description describes only one example for minimising the
error, namely a method of least squares. What is important is that the
skilled person would be able to realise how the error minimising function
can be implemented: it is not relevant in this context whether the method of
least squares is the only method applicable. It is therefore not necessary to
further 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 mixture

of 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-44 Guidelines for Examination in the EPO March 2024

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 the
essential 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 the
minimum 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 the
environment is solved only when the propellant does not exceed a
particular 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 (see
T 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 the
application or patent as a whole, it is to be included as an essential feature
in the independent claim. In other words, if the inevitable outcome of the
first three phases of such a method (see G-II, 4.2.1.3) is a specific
diagnosis for curative purposes allowing the deviation to be attributed to a
particular 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.
March 2024 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 is
granted for each invention separately, i.e. in order to proceed to grant, a
European 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 rendered
service 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 the Rule 64

search 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 in
respect of inventions for which search fees have been paid. At the
examination stage the applicant can select only one searched invention in
each application to be examined for conformity with the patentability and
other requirements of the EPC (see G 2/92, Reasons 2).

Art. 82 and Rule 44 govern the application of the requirement of unity to

European patent applications. This requirement is not applicable in
opposition proceedings (G 1/91).

This chapter deals with the substantive aspects of the assessment of unity
of 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 case
of 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 be
found in chapters B-VII and C-III respectively.

Given the harmonisation of the definitions concerning unity of invention in Art. 150(2)
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 in
both European and PCT procedures according to the same principles. This
does not apply to the respective procedures themselves, where significant
differences exist.

Consequently, decisions of the boards of appeal rendered according to the

former PCT protest procedures continue to be of interest for the
consideration of unity in European applications.

2. Requirement of unity of invention

A European patent application must relate to one invention only or relate to Art. 82
a group of inventions which must be so linked as to form a single general
inventive concept (see also B-VII, 1).
Part F – Chapter V-2 Guidelines for Examination in the EPO March 2024

The requirement of unity of invention needs to be assessed only if a group

of 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, a
plurality of alternative inventions defined within a single independent claim
(see also F-IV, 3.7) or a plurality of dependent claims where the
independent claim is either not novel or not inventive.

Rule 44(1) If a group of inventions is claimed, the requirement that the inventions in
this group are so linked as to form a single general concept (Art. 82) is
fulfilled 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 the
contribution that the invention considered as a whole makes over the "prior
art 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 vary
depending 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, or
interrelated features, e.g. the interaction between a plug and a socket
causing a releasable electrical connection, or in a causal relationship such
as a step in a manufacturing process that causes a certain structural
feature in a product. For example, an application might include two sets of
claims, one comprising a metal spring, and another comprising a block of
rubber. The metal spring and block of rubber may be considered to be
corresponding technical features as they both achieve the same technical
effect of resilience.

In contrast, features that are not shared, i.e. features that only appear in
some but not in other claims, cannot be part of the single general inventive
concept.

2.1 Insufficient grounds for lack of unity

Art. 84 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 the

determination of unity of invention. However, it will have an impact on which
invention 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 of
unity.
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-3

If an application contains claims of different categories or several Rule 43(2)

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 of
individual features, where these features do not present a technical
interrelationship (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 are
juxtaposed 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 in
clear 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 the
possible 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 their
technical relationships (see F-V, 3.2), i.e. according to any common matter
comprising same or corresponding potential special technical features. In
this context, an invention must have technical character and be concerned
with a technical problem within the meaning of Art. 52(1) (see G-I, 1), but it
does not necessarily need to meet other requirements for patentability,
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 account
the 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 the
subject-matter of the claims have anything in common that represents a
single 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 a
separate 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 the
meaning of Rule 44(1);
Part F – Chapter V-4 Guidelines for Examination in the EPO March 2024

(iii) if the common matter does not comprise special technical features,
analysing any remaining technical features which are not part of the
identified common matter to determine if there is a unifying technical
relationship 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 relationship
among the dependent claims as required by Rule 44(1) as it would not
contain 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 or
corresponding (see F-V, 2), namely in features that are either identical to
each other or that provide alone or in combination a common technical
effect or a solution to a common technical problem.

The technical problem in the non-unity assessment may be different from

that 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, the

starting point is usually what is considered by the applicant in the
description 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 the
invention with reference to the background art (Rule 42(1)(c)). This
technical problem defines in the first instance the common matter of the
claims.

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 general
inventive concept. This may happen either where, in view of the information
contained in the description and the common general knowledge of the
skilled person, it is evident that different claims solve different problems (a
priori assessment of lack of unity) or where the search reveals prior art
which discloses or renders obvious a solution of the unifying technical
problem stated by the applicant in the description (a posteriori assessment
of lack of unity). In the latter case, the technical problem stated by the
applicant 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 the
features of an independent claim also discloses, at least implicitly, the
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-5

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 is
present among the claims, i.e. identify, in the light of the application as a
whole, any technical features of the claims that are the same or
corresponding. When determining whether technical features are
corresponding, it is important that the technical problems solved, which are
associated with the technical effects, are not formulated too narrowly or too
generally. If the technical problems are too narrow when they could have
been more general, they may have nothing in common leading to the
possibly wrong conclusion that technical features are not corresponding. If
they 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 technical

effect 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. Then
the application lacks unity because neither a technical relationship within
the meaning of Rule 44(1) is present between the independent claims, nor
does the application entail a single general inventive concept within the
meaning of Art. 82.

(ii) Comparison of the common matter with the prior art at hand

If common matter, namely subject-matter involving the same or

corresponding technical features, is identified in the claims, it must be
compared with the prior art at hand. If the common matter defines a
non-obvious contribution over that prior art, it will involve "special technical
features", and the inventions concerned will be so linked as to form a single
general inventive concept. Otherwise, if the common matter is known or
obvious 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 and
inventive step vis-à-vis the prior art at hand. The obviousness is to be
assessed, whenever appropriate, using the problem-solution approach.
Part F – Chapter V-6 Guidelines for Examination in the EPO March 2024

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 Rule
44(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 priori
assessment"), the only "prior art at hand" may be the background art
provided by the applicant in the description and any common general
knowledge. During the search, other prior art may be revealed and may
form the basis for the "a posteriori assessment". Therefore, the "prior art at
hand" 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 a
lack of unity, as a next step, the groups of different inventions present in the
claims need to be confirmed or refined (see F-V, 3.2).

In order to determine these groups of 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 associated
with the remaining technical features of each of the claims. Those claims
comprising remaining technical features associated with the same technical
problem are combined into a single group. However, if the technical
problem has been successfully solved in the prior art, claims associated
with the same technical problem may be placed into different groups (see
F-V, 3.3.1(iii)(c)).

The technical problems associated with the claims must be formulated with
care. It may not be sufficient to analyse the remaining technical features of
each claim in isolation, but rather to analyse their effect when read in the
context of the individual claim as a whole and in the light of the description.
When formulating the technical problems of the various inventions in a unity
assessment, a very narrow approach should be avoided since the aim of
the exercise is to see whether any commonality may be established
between the inventions. It is therefore often necessary to redefine the very
specific problems associated with each of the claims to arrive at a more
general 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 the

claims or of the remaining technical features of the claims are novel or
inventive 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).
March 2024 Guidelines for Examination in the EPO 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 the
finding of step (ii) that there exists a lack of unity is confirmed.

3.1 Non-unity and prior art

3.1.1 Non-unity and prior art under Art. 54(3)

Documents cited under Art. 54(3) should be disregarded in the evaluation
of 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 be
disregarded in the evaluation of unity of invention since they cannot
anticipate the inventive concept of the application under examination (see
H-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 the
identified groups of inventions. This step comprises the assessment of
which of the remaining claims or alternatives in claims could potentially
relate to the same technical problem. By doing so, groups of inventions are
identified wherein each group of inventions relates to unitary subject-matter
in 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, is
identified 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 a
contribution 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 in
their context rather than in isolation. The initial grouping of claims and
alternatives 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 independent

claims of the same category, on alternatives defined in one independent
claim (see F-V, 3.2.1) or on dependent claims defining alternative
embodiments, provided that the independent claim is either not novel or not
inventive. 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, Rule 43(2)
without prejudice to the requirements of Art. 82, an application is allowed to
comprise a plurality of independent claims in the same category (see
F-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 the
application both lacks unity of invention and fails to comply with the
Part F – Chapter V-8 Guidelines for Examination in the EPO March 2024

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 are
applied in deciding whether or not there is unity of invention, and lack of
unity 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 the
claimed subject-matter is quite different, provided that technical features
making a contribution over the prior art at hand are the same or
corresponding. Examples of such situations include a transmitter and the
corresponding 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 general
inventive concept as defined in Rule 44(2).

However, it is essential that a single general inventive concept link the

claims 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 the
question 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 a

dependent claim is in fact a true dependent claim comprising all the
features of the corresponding independent claim, see F-IV 3.7. For a
definition of a dependent claim, see F-IV, 3.4 and 3.8.
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-9

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 dependent

claim comprises technical features common to several inventions, then it is
part 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, the
subject-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 the
second 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 comprising

feature 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; or

Part F – Chapter V-10 Guidelines for Examination in the EPO March 2024

(b) a device comprising features A, B and C.

In this example, feature A is not a special technical feature (i.e. the subject-
matter of claim 1 is either not new or not inventive).

– If both features B and C are special technical features (new and

inventive) and they are corresponding (that is, they have a technical
relationship with each other), then the claimed devices A+B and A+C
are the same invention. Consequently, the device A+B+C is part of
the 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 a
lack of unity. There are two inventions: the device having the features
A+B (claim 1 partially and claim 2 entirely) and the device having the
features A+C (claim 1 partially and claim 3(a) entirely). The subject-
matter 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 the
search for the first invention mentioned in the claims should, in this
example, cover not only claim 2 (A+B), but also the subject-matter of
claim 3(b) (A+B+C).

The examiner also assesses if a further search fee should be paid for the
second invention (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", the
requirement of Rule 44(1) for same or corresponding special technical
features is considered met if the alternatives are of a similar nature (see
F-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 is

shared by all of the alternatives, or all alternatives belong to a
recognised class of chemical compounds in the art to which the
invention 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 the

compounds share a common chemical structure that occupies a large
portion of their structures, or, if the compounds have in common only a
small portion of their structures, the commonly shared structure constitutes
a structurally distinctive portion and this structure or portion leads to a
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-11

technical contribution in view of existing prior art at hand. The structural

element may be a single component or a combination of individual
components linked together.

There is no need for a significant structural element to be novel in absolute

terms (i.e. novel per se). Rather, the term "significant" means that in
relation to the common property or activity, there must be a common part of
the 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 technical

contribution 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" if

there is an expectation from the knowledge in the art that members of the
class 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 not

novel, unity of invention must be reconsidered. In particular, if the structure
of at least one of the compounds covered by a Markush claim is known,
together with the property or technical effect under consideration, this is an
indication 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) technical
features that are "special".

Claims covering different alternative nucleic acids or proteins defined by

different 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 of
distinct medical uses, see G-VI, 6.1.

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. Such
products are made available with a view to obtaining end products through
a 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 same
Part F – Chapter V-12 Guidelines for Examination in the EPO March 2024

or their chemical structures are technically closely interrelated, the

intermediate incorporating an essential structural element into the
final product, and

(ii) the intermediate and final products are technically interrelated,

i.e. the final product is manufactured directly from the intermediate or
is 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 the

technical 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 upon
reaction.

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 sufficient
evidence to lead one to conclude that the intermediate and final products
are technically closely interrelated as, for example, when the intermediate
contains the same essential element as the final product or incorporates an
essential 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 the
same 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 for
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 compound
should 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 not
prejudice unity of invention.

3.3 Reasoning for a lack of unity objection

An objection of lack of unity must consist of logically presented, technical
reasoning containing the basic considerations behind the finding of lack of
unity. If necessary, it must comprise considerations relating to the number
and grouping of the claimed separate inventions.
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-13

3.3.1 Minimum requirements for reasoning of lack of unity

When raising a non-unity objection, the division must back it up with a
minimum 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 technical
features. 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 general
inventive concept based on the same or corresponding special
technical features. This includes prior art or general knowledge or the
teaching 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 the

remaining technical features of the different groups of claims,
including:

(a) an identification of any remaining technical features of the

different groups and the respective claims of each group, with
an 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 these
remaining 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 technical
features";

(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 no
technical 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 a

similar nature;

(2) in case of lack of unity between intermediate and final

products, why the intermediate and final products do not have
the same essential structural elements and are not technically
closely interrelated;
Part F – Chapter V-14 Guidelines for Examination in the EPO March 2024

(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

Rule 64(1) When lack of unity is established, the sequence of the claimed (groups of)
Rule 164(1) 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 general
rule the division of subject-matter follows the order of appearance of the
different 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 the
invention or that are generally known in the technical field of the invention
are disregarded (see B-III, 3.8 for the search phase).

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-ordered
accordingly before assessing the fulfilment of the requirements of unity.

4. Procedure in the case of lack of unity during search

Rule 64(1) The search division may neither refuse the application for lack of unity nor
Rule 64(2) require limitation of the claims, but must inform the applicant that, if the
search report is to be drawn up to cover those inventions present other
than the first mentioned, then further search fees must be paid within two
months. This applies even if the search reveals prior art that renders the
entire subject-matter of the first invention not novel.

When lack of unity is raised a posteriori, the assessment of the search

division is provisional (G 2/89) and is based on the prior art at hand when
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 this
assessment 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 posteriori

assessment (see B-VII, 1.2), the search division will assess the technical
problem underlying a claimed group of inventions in the light of both the
disclosure of the application as a whole and the relevant prior art at hand
revealed by the search (see W 6/97, W 6/91).

The consideration of the requirement of unity of invention is always made

with 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 over
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-15

the prior art at hand. Nevertheless, the search division may still raise an
objection of lack of unity for such alleged "sub-inventions" in view of
potential amendments that could be reasonably expected in the light of the
description and any drawings.

However, if the inventions concern non-obvious alternatives to the

disclosure 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 dependent
claim, 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 the
alternative 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 a
complete 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 search
fees and the partial search results. It also includes the reasons for the
non-unity findings.

The provisional opinion is sent for information only. A reply addressing the
points 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 examined
by 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 the
application may be necessary (see C-III, 3.3 and F-IV, 4.3).
Part F – Chapter V-16 Guidelines for Examination in the EPO March 2024

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 the
requirement of unity of invention ultimately rests with the examining division
(see T 631/97; see also 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 the
search 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 should
raise an objection only in clear cases, particularly if substantive
examination is at an advanced stage (see also H-II, 6.3).

Rule 36(1) Whenever unity is found to be lacking, the applicants should be required to
limit their claims in such a way as to overcome the objection
(see C-III, 3.2 and C-III, 3.3), which means restricting them to a single
searched invention (see H-II, 6.1). Excision or amendment of parts of the
description may also be necessary (see C-III, 3.3). One or more divisional
applications, covering matter removed to meet this objection, may be filed
(see C-IX, 1), provided that the parent application is pending (A-IV, 1.1.1).

5.2 Objections to unsearched inventions

See H-II, 6.2 and H-II, 6.3.

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, 3.4.

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 the
relevant further search fee(s).

6. Amended claims
Rule 137(5) For the situation where the applicant submits new claims directed to
subject-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 be
appropriate to extend the search to this subject-matter, see H-IV, 4.1.2 and
B-III, 3.5.

7. Euro-PCT applications

7.1 International applications without supplementary search

Art. 153(7) As indicated in B-II, 4.3.1, for certain international applications entering the
European phase with an international search report, no supplementary
March 2024 Guidelines for Examination in the EPO Part F – Chapter V-17

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 have
the other invention(s) searched by paying additional search fees for
them, but has taken the opportunity to amend the claims after receipt
of 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 Rule 164(2)
been raised and the applicant has neither taken the opportunity to
have the other invention(s) searched by paying additional search
fees for them, nor amended the claims so that they are limited to the
invention searched, and the examining division agrees with the
objection 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 to
issue 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 proceed
on 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
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 from

any of the originally claimed inventions, the examining division will
proceed to issue an invitation under Rule 164(2) to pay search fees
for any claimed invention in the application documents not covered
by the international search report or supplementary international
search report, if any (see C-III, 3.1).

(v) If the applicant has not paid additional search fees during the
international phase and the examining division does not agree with
the 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 the
examination will be carried out on all claims.

In cases (i) to (iv), the applicant may file divisional applications for the Rule 36(1)
inventions 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).
Part F – Chapter V-18 Guidelines for Examination in the EPO March 2024

7.2 International applications with supplementary search

Art. 153(7) For international applications entering the European phase with an
Rule 164(1) international search report established by an ISA other than the EPO, a
supplementary European search is carried out by the search division in the
cases 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.

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 examination
of that invention (or group of inventions) covered by the supplementary
European search report which has been chosen by the applicant in
response to the ESOP.

7.3 International preliminary examination report (IPER)

For international applications entering the European phase with an
international preliminary examination report, the examining division should
carefully take into account the position taken in that IPER before deviating
from it. This may be necessary where the claims have been changed, the
applicant 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

Art. 76 If the EPO has established an IPER on the application and the applicant
Rule 164(2) wishes to obtain protection pertaining to claims which were not the subject
of this IPER because they were not searched during the international phase
in consequence of an objection of lack of unity, the applicant can decide to
have such claims searched in response to the invitation to pay additional
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 a
divisional application is filed, the application being divided is still pending
(see A-IV, 1.1.1).
March 2024 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 filing Rule 40
the 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 or
parts of the description provided for in Rule 56 EPC and late-filed correct
application documents or parts filed under Rule 56a.

The date of filing may be the only effective date of the application. It will be
of importance for fixing the expiry of certain time limits (e.g. the date by
which the designation of the inventor must be filed under Rule 60), for
determining the state of the art relevant to the novelty or obviousness of the
subject-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 of Art. 89
priority of the date of filing of a previous application. In such cases, it is the
priority date (i.e. the date of filing of the previous application) which
becomes 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: 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 the
provisions 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 the

invention 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 member Art. 87(2) and
of the WTO, referred to in A-III, 6.2, mean that priority may be claimed in (3)
respect of a previous national application, a previous European application,
a previous application filed under another regional patent treaty or a
previous PCT application. If the previous application was filed in or for an
Part F – Chapter VI-2 Guidelines for Examination in the EPO March 2024

EPC contracting state, this state may also be designated in the European
application. The previous application may be for a patent 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 not recognised
(see J 15/80). So long as the contents of the application were sufficient to
establish 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) 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 of
a previous application only if the skilled person can derive the
subject-matter of the claim directly and unambiguously, using common
general knowledge, from the previous application as a whole. This means
that the specific combination of features present in the claim must at least
implicitly be disclosed in the previous application (see F-VI, 2.2 and
G 2/98).

1.4 First application

Art. 87(1) The filing date of the "first application" must be claimed as a priority, i.e. the
application disclosing for the first time any or all of the subject-matter of the
European 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-matter
of the European application is not novel if the still earlier application
referred 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 the
European application in question (Art. 54(3)).

1.4.1 Subsequent application considered as first application

Art. 87(4) A subsequent application for the same subject-matter and filed in or for the
same state or member of the WTO is considered as the "first application"
for priority purposes if, at the date this subsequent application was filed, the
still 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 not
consider 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 is
important because of intervening prior art (see F-VI, 2.1), the applicant is
required to establish by evidence from an appropriate authority (normally a
national patent office) that there were no rights outstanding in the still
earlier application in respect of the subject-matter of the application being
examined.
March 2024 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 the

description reads as follows: "This application is a continuation in part
(continuation) of Serial Number .... filed .....". The following information is
found 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 the
end 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 (see Rule 40(1)(c)
A-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).

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 the
meaning 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 Art. 88(2) and
rights of priority based on more than one previous application (G 2/98). (3)

"Partial priority" refers to a situation in which only a part of the

subject-matter encompassed by a generic "OR" claim is entitled to the
priority 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 application
must 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
Part F – Chapter VI-4 Guidelines for Examination in the EPO March 2024

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 the
German priority date as effective dates. If embodiments A and B are
claimed as alternatives in one claim, these alternatives will likewise have
the 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, a
claim to that combination will be entitled only to the date of filing of the
European 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 the
two documents can be combined in a particular manner.

According to G 1/15, entitlement to partial priority may not be refused for a

claim encompassing alternative subject-matter by virtue of one or more
generic expressions or otherwise (generic "OR" claim) provided that said
alternative subject-matter has been disclosed for the first time, directly, or
at least implicitly, unambiguously and in an enabling manner in the priority
document. No other substantive conditions or limitations apply in this
respect.

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 the
disclosure test laid down in the conclusion of G 2/98 and on the basis of
explanations put forward by the applicant or patent proprietor to support the
claim to priority, in order to show what the skilled person would have been
able to derive from the priority document. The next step is to examine
whether this subject-matter is encompassed by the claim of the application
or 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 2024 Guidelines for Examination in the EPO Part F – Chapter VI-5

For example, if the priority document discloses the use of a specific

composition 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 in
which the cation was multivalent) and

– alternative (b), concerning the use of a composition defined in more

generic 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 acid
and tribasic phosphate salt in combination).

Alternative (a) is the subject-matter disclosed in the priority document, not

defined as such in the claim but encompassed by it. Alternative (b) is the
remaining subject-matter of the claim, which was not disclosed in the
priority 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 patent
claiming priority from it may partially relate to the same invention, the
priority 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 the
invention which is not the same as in the earlier application (T 282/12).

Partial priority may also be transferable separately (T 969/14). This,

however, has consequences for the remaining priority right because the
assignor is left with a limited right and may no longer keep claiming that
partial priority (an applicant can only claim a right which they own). The
transfer agreement of the partial priority gives a respective partial priority
right to the assignor and the assignee corresponding to two clearly distinct
and precisely defined alternatives.

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 the
validity 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 to
the public within the meaning of Art. 54(2) on or after the priority date
claimed 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 date
within 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 the
Part F – Chapter VI-6 Guidelines for Examination in the EPO March 2024

priority date(s) claimed may be accorded to the appropriate parts of the

application it is examining and informs the applicant of the outcome and
whether, 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 parts
of that other application and to communicate this to the applicant
analogously (see also G-IV, 3). When the division needs to consider the
question 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 a

designated 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, where
appropriate, be refused because the claimed subject-matter lacks novelty
or inventive step, provided that the relevant state of the art is neither an
intermediate 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 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 missing. Where the applicants have complied with
Rule 17.1(a), (b) or (b-bis) PCT, they may not be requested to file the
priority 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 a
priority document is, as far as the requirement of "the same invention" is
concerned (see F-VI, 1.3(iv)), the same as the test for determining whether
or not an amendment to an application satisfies the requirement of
Art. 123(2) (see H-IV, 2). That is to say, for the priority date to be valid in
this respect the subject-matter of the claim must be directly and
unambiguously derivable from the disclosure of the invention in the priority
document, also taking into account any features implicit to a person skilled
in 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 a
disclosure 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 be
found among any claims in the previous application. It is sufficient that the
documents of the previous application taken as a whole "specifically
March 2024 Guidelines for Examination in the EPO Part F – Chapter VI-7

disclose" such subject-matter. The description and any claims or drawings

of the previous application are, therefore, to be considered as a whole in
deciding this question, except that account is not taken of subject-matter
found 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 and
general 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 that
feature 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 of
Art. 87(1). Therefore, such a disclaimer could be introduced when drafting
and filing a successive European patent application, without affecting the
right 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 particular
previous application, then the effective date of the subject-matter of the
claim in question will either be the filing date of the earliest application
which does provide the required disclosure and of which the priority is
validly claimed (see G 3/93) or, in the absence of such, will be the date of
filing of the European application itself (or the new date of filing if the
application 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 the
fact 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 disclosure
of the subject-matter of P.

1.1.90 1.5.90 1.6.90

Filing Publication Filing
P D EP

D is state of the art under Art. 54(2) if the priority claim of P is not valid.

2.4.2 Intermediate publication of another European application

P1 is the application from which priority is claimed by EP1, P2 the one from
which EP2 claims priority. EP1 and EP2 are filed by different applicants.
Part F – Chapter VI-8 Guidelines for Examination in the EPO March 2024

1.2.89 1.1.90 1.2.90 1.8.90 1.1.91

Filing Filing Filing Publication Filing
P1 P2 EP1 EP1 EP2
A+B A+B A+B A+B 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 the

application with an intermediate publication of one of the inventions
EP claims priority of P1 and P2, D is the disclosure of A+B.

1.1.90 1.2.90 1.3.90 1.6.90

Filing Publication Filing Filing
P1 D P2 EP
A+B A+B A+B+C claim 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 this
claim (see G 3/93). It is immaterial whether claim 2 is in the form of a
dependent or an independent claim.

2.4.4 A situation in which it has to be checked whether the

application 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.

1.7.89 1.1.90 1.6.90 1.12.90

Filing Filing Publication Filing
P1 P2 (cip) D EP
A+B A+B A+B claim 1: A + B
A+B+C 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 an
abandonment, 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 latter
claim has the earlier priority of P2.
March 2024 Guidelines for Examination in the EPO Part F – Chapter VI-9

3. Claiming priority

3.1 General remarks

An applicant who wishes to claim priority must file a declaration of priority Art. 88(1)
giving particulars of the previous filing, as specified in Rule 52(1), together Rule 52(1)
with a certified copy of the previous application and, if necessary for the Rule 53(1) and
assessment of patentability, a translation of it into one of the EPO official Rule 53(3)
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 Rule 52(1) and
the time of filing the European application, although this can be done at any Rule 52(2)
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 the
priority application, the relevant state party to the Paris Convention or
member of the WTO, and the file number.

A declaration of priority may be corrected within 16 months from the earliest Rule 52(3)
priority date. This time limit cannot expire earlier than four months after the
filing 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, Rule 53(1)
must be filed within 16 months of the priority date (see A-III, 6.7; for
Euro-PCT cases see, however, E-IX, 2.3.5), unless such a copy is already
on 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 President Rule 53(2)
of 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 patent
application without charging a fee in the cases indicated in A-III, 6.7.

3.4 Translation of the previous application

A translation of the previous application into one of the official languages of Art. 88(1)
the EPO is required only if it is needed for determining the validity of the Rule 53(3)
priority claim, where this is of relevance to the patentability of the
underlying 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 and
subsections.

Alternatively, under Rule 53(3), a declaration that the European patent

application is a complete translation of the previous application may be
submitted 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, for
example, that the translation is "practically complete" or that the contents
"are essentially the same") cannot be accepted. The same applies to cases
where the declaration is obviously incorrect (e.g. if several priorities are
claimed for a single European application or if the European application
contains more or less text than is contained in the previous application as
Part F – Chapter VI-10 Guidelines for Examination in the EPO March 2024

filed). In all these cases a complete translation must be filed. Where the
European 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, the
declaration cannot be accepted. A merely different arrangement of the
various elements of the application (e.g. presenting the claims before the
description, 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 those
cases 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 the
priority document as part of a request under Rule 56 (see A-II, 5.4(vi)) to
base 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 the translation
a second time.

The request for translation cannot be made by telephone (regardless of

whether 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 a
communication 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 for
conflicting 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, the
right 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, for
reasons of legal certainty the right of priority remains effective for
determining 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 not
affect the application of Art. 54(3).

If the required translation or declaration is filed within the time limit, ideally
with accompanying observations, the extent of the validity of the priority
and the co-dependent substantive issues will be examined.

3.5 Withdrawal of priority claim

Applicants may voluntarily withdraw a claimed priority at any time. If they do
so before the technical preparations for publication have been completed,
then the priority date is not effective and the publication is deferred until
March 2024 Guidelines for Examination in the EPO Part F – Chapter VI-11

18 months after the filing date. If it is withdrawn after the technical

preparations for publication have been completed, then the application is
still 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 the Art. 122
priority period under Art. 122 (see A-III, 6.6). Any request for Rule 136(1)
re-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 to
Rule 136(1), second sentence. Where a request for re-establishment in
respect of the priority period has been allowed, the examining division
carefully reviews the relevance of prior-art documents cited previously in
the search report or communications.
Part G

Patentability
March 2024 Guidelines for Examination in the EPO Part G – Contents a

Contents

Chapter I – Patentability I-1

1. Patentability requirements I-1

2. 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 Mathematical methods II-2

3.3.1 Artificial intelligence and machine learning II-5
3.3.2 Simulation, design or modelling II-6

3.4 Aesthetic creations II-8

3.5 Schemes, rules and methods for performing mental

acts, playing games or doing business II-9
3.5.1 Schemes, rules and methods for performing mental
acts II-9
3.5.2 Schemes, rules and methods for playing games II-11
3.5.3 Schemes, rules and methods for doing business II-13

3.6 Programs for computers II-16

3.6.1 Examples of further technical effects II-17
3.6.2 Information modelling, activity of programming and
programming languages II-18
3.6.3 Data retrieval, formats and structures II-19
3.6.4 Database management systems and information
retrieval II-21

3.7 Presentations of information II-22

3.7.1 User interfaces II-26

4. Exceptions to patentability II-27

4.1 Matter contrary to "ordre public" or morality II-27

4.1.1 Prohibited matter II-28
4.1.2 Offensive and non-offensive use II-28
4.1.3 Economic effects II-29
Part G – Contents b Guidelines for Examination in the EPO March 2024

4.2 Surgery, therapy and diagnostic methods II-29

4.2.1 Limitations of exception under Art. 53(c) II-30
4.2.1.1 Surgery II-31
4.2.1.2 Therapy II-32
4.2.1.3 Diagnostic methods II-33
4.2.2 Methods for screening potential medicaments and
clinical trials II-35

5. Exclusions and exceptions for biotechnological

inventions 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 Plant and animal varieties or essentially biological

processes for the production of plants or animals II-40
5.4.1 Plant varieties II-43
5.4.2 Essentially biological processes for the production of
plants or animals II-43
5.4.2.1 Examples II-45

5.5 Microbiological processes II-46

5.5.1 General remarks II-46
5.5.2 Repeatability of results of microbiological processes II-47

6. Antibodies II-47

6.1 General remarks II-47

6.1.1 Definition by structure of the antibody II-48
6.1.2 Definition by reference to the target antigen II-48
6.1.3 Definition by target antigen and further functional
features II-49
6.1.4 Definition by functional and structural features II-49
6.1.5 Definition by production process II-49
6.1.6 Definition by hybridoma II-49

6.2 Inventive step of antibodies 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

4. Sequences and partial sequences of genes III-1

March 2024 Guidelines for Examination in the EPO Part G – Contents c

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 State of the art pursuant to Art. 54(3) IV-4

5.1.1 Requirements IV-5
5.1.2 Accorded date of filing and content of the application
still subject to review 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 "by

means of a written or oral description, by use, or
in any other way" IV-7

7.1 Types of use and instances of state of the art made

available in any other way IV-7

7.2 Matters to be determined by the division as regards

prior use IV-8
7.2.1 General principles IV-9
7.2.2 Agreement on secrecy IV-9
7.2.3 Use on non-public property IV-10
7.2.4 Example of the accessibility of objects used IV-10
7.2.5 Example of the inaccessibility of a process IV-11

7.3 State of the art made available by means of oral

description IV-11
7.3.1 Cases of oral description IV-11
7.3.2 Non-prejudicial oral description IV-11
7.3.3 Matters to be determined by the division in cases of
oral description IV-11
7.3.4 Standard of proof IV-11

7.4 State of the art made available to the public in writing

and/or by any other means IV-12

7.5 Internet disclosures IV-12

Part G – Contents d Guidelines for Examination in the EPO March 2024

7.5.1 Establishing the publication date IV-12

7.5.2 Standard of proof IV-13
7.5.3 Burden of proof IV-13
7.5.3.1 Technical journals IV-14
7.5.3.2 Other "print equivalent" publications IV-14
7.5.3.3 Non-traditional publications IV-15
7.5.4 Disclosures which have no date or an unreliable date IV-15
7.5.5 Problematic cases IV-16
7.5.6 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. General V-1

2. 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. Generic disclosure and specific examples VI-1

5. Implicit disclosure and parameters VI-2

6. Examination of novelty VI-2

6.1 First or further medical use of known products VI-3

6.1.1 Products that may be claimed for a further medical
use VI-5
6.1.2 Therapeutic uses pursuant to Art. 54(5) VI-5
6.1.3 Diagnostic uses pursuant to Art. 54(5) VI-9
6.1.4 Surgical uses pursuant to Art. 54(5) VI-10
6.1.5 Dependent claims pursuant to Art. 54(5) VI-10

6.2 Second non-medical use VI-11

7. Selection inventions VI-11

March 2024 Guidelines for Examination in the EPO Part G – Contents e

7.1 Error margins in numerical values VI-15

8. Novelty of "reach-through" claims VI-15

Chapter VII – Inventive step VII-1

1. General VII-1

2. 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 Claims comprising technical and non-technical

features VII-6
5.4.1 Formulation of the objective technical problem for
claims comprising technical and non-technical
features VII-8
5.4.2 Examples of applying the COMVIK approach VII-9
5.4.2.1 Example 1 VII-9
5.4.2.2 Example 2 VII-11
5.4.2.3 Example 3 VII-13
5.4.2.4 Example 4 VII-15
5.4.2.5 Example 5 VII-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 choice VII-23

10.2 Unexpected technical effect; bonus effect VII-23

10.3 Long-felt need; commercial success VII-23

Part G – Contents f Guidelines for Examination in the EPO March 2024

11. Arguments and evidence submitted by the

applicant VII-24

12. Selection inventions VII-24

13. Inventive step assessment in the field of

biotechnology VII-25

14. Dependent claims; claims in different categories VII-25

15. Examples VII-26

Annex Examples relating to the requirement of inventive

step – indicators VII-27

1. Application of known measures? VII-27

2. Obvious combination of features? VII-28

3. Obvious selection? VII-29

4. Overcoming a technical prejudice? VII-31

March 2024 Guidelines for Examination in the EPO Part G – Chapter I-1

Chapter I – Patentability
1. Patentability requirements
There are four basic requirements for patentability: Art. 52(1)

(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).

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,

– the invention must be such that it can be carried out by a person Art. 83
skilled in the art (after proper instruction by the application).
Instances where the invention fails to satisfy this requirement are
given in F-III, 3; and

– the invention must relate to a technical field (Rule 42(1)(a) – see Rule 42(1)(a) and
F-II, 4.2), must be concerned with a technical problem (Rule 42(1)(c) Rule 42(1)(c)
– see F-II, 4.5) and must have technical features in terms of which Rule 43(1)
the matter for which protection is sought can be defined in the claim
(Rule 43(1) – see F-IV, 2.1).

2. Technical progress, advantageous effect

The EPC does not require explicitly or implicitly that an invention, to be
patentable, 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).
March 2024 Guidelines for Examination in the EPO 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) Art. 52(2) and (3)
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 scientific
theories) and/or non-technical (e.g. aesthetic creations or presentations of
information). In contrast to this, an "invention" within the meaning of
Art. 52(1) must have a technical character (see G-I, 1). It may be in any
field of technology.

2. Examination practice
The question of whether there is an invention within the meaning of
Art. 52(1) is separate and distinct from the questions of whether it is
susceptible 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 is
reserved for inventions involving a "technical teaching", i.e. an instruction
addressed to a skilled person as to how to solve a particular technical
problem using particular technical means. This twofold assessment is
referred to as the "two-hurdle approach" (G 1/19).

The first hurdle, also referred to as the patent eligibility hurdle, requires that
the claimed subject-matter as a whole must not fall under the
"non-inventions" defined in Art. 52(2) and (3). The exclusion from
patentability of the subject-matters and activities referred to in Art. 52(2) is
limited 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 technical
means, 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 to

technical features, claims may also comprise non-technical features. In this
context, the term "non-technical features" refers to features which, on their
own, would be considered "non-inventions" under Art. 52(2). Inventive step
of claims comprising such a mix of technical and non-technical features is
assessed 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 technical
character (i.e. contribute to the technical solution of a technical problem by
providing a technical effect). A feature may support the presence of an
inventive step if and to the extent that it contributes to the technical
character of the invention. Whether any feature contributes to the technical
character of the invention has to be assessed in the context of the invention
as a whole.
Part G – Chapter II-2 Guidelines for Examination in the EPO March 2024

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.

3.1 Discoveries
Art. 52(2)(a) If a new property of a known material or article is found, that is mere
discovery and unpatentable because discovery as such has no technical
effect 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 an
invention 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 be
patentable. To find a previously unrecognised substance occurring in
nature is also mere discovery and therefore unpatentable. However, if a
substance 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 substance
occurring in nature which is found to have an antibiotic effect. In addition, if
a microorganism is discovered to exist in nature and to produce an
antibiotic, 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 a
certain polypeptide or in gene therapy.

For further specific issues concerning biotechnological inventions

see G-II, 5, 5.3 to 5.5, and G-III, 4.

3.2 Scientific theories

Art. 52(2)(a) 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 of
semiconductivity would not be patentable. However, new semiconductor
devices and processes for manufacturing these may be patentable.

3.3 Mathematical methods

Art. 52(2)(a) Mathematical methods play an important role in the solution of technical
problems in all fields of technology. However, they are excluded from
patentability 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 a
mathematical method as such. A purely abstract mathematical object or
concept, 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 the
meaning of Art. 52(1) because it lacks a technical character.

If a claim is directed either to a method involving the use of technical

means (e.g. a computer) or to a device, its subject-matter has a technical
character as a whole and is thus not excluded from patentability under
Art. 52(2) and (3).
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-3

Merely specifying the technical nature of the data or parameters of the

mathematical method may not be sufficient on its own to define an
invention within the meaning of Art. 52(1). Even if the resulting method
would not be considered a purely abstract mathematical method as such
within 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 use
of 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 other
requirements of patentability, in particular novelty and inventive step
(G-I, 1).

For the assessment of inventive step, all features which contribute to the
technical character of the invention must be taken into account (G-VII, 5.4).
When the claimed invention is based on a mathematical method, it is
assessed whether the mathematical method contributes to the technical
character 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 a
technical purpose, by its application to a field of technology and/or by being
adapted to a specific technical implementation (T 2330/13). The criteria for
assessing these two situations are explained below.

Technical applications

When assessing the contribution made by a mathematical method to the

technical character of an invention, it must be taken into account whether
the method, in the context of the invention, produces a technical effect
serving 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 a

compaction 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 the
quality 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 for
transmission over a noisy channel, compression of audio, image,
video or sensor data;
Part G – Chapter II-4 Guidelines for Examination in the EPO March 2024

– encrypting/decrypting or signing electronic communications;

generating keys in an RSA cryptographic system;

– optimising load distribution in a computer network;

– determining the energy expenditure of a subject by processing data

obtained from physiological sensors; deriving the body temperature
of 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.

A generic purpose such as "controlling a technical system" is not sufficient

to confer a technical character to the mathematical method. The technical
purpose must be a specific one.

Furthermore, the mere fact that a mathematical method may serve a

technical purpose is not sufficient, either. The claim is to be functionally
limited to the technical purpose, either explicitly or implicitly. This can be
achieved 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 the
technical purpose so that the mathematical method is causally linked to a
technical effect.

Defining the nature of the data input to a mathematical method does not
necessarily imply that the mathematical method contributes to the technical
character 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 physical

state of an existing real object from measurements of physical properties,
as in the case of indirect measurements, those steps make a technical
contribution regardless of what use is made of the results.

Technical implementations

A mathematical method may also contribute to the technical character of

the invention independently of any technical application when the claim is
directed to a specific technical implementation of the mathematical
method 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 of
computer storage capacity or network bandwidth. For instance, the
adaptation of a polynomial reduction algorithm to exploit wordsize shifts
matched to the word size of the computer hardware is based on such
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-5

technical considerations and can contribute to producing the technical

effect of an efficient hardware implementation of said algorithm. Another
example is assigning the execution of data-intensive training steps of a
machine-learning algorithm to a graphical processing unit (GPU) and
preparatory steps to a standard central processing unit (CPU) to take
advantage 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 the
claimed technical implementation does not go beyond a generic technical
implementation, the mathematical method does not contribute to the
technical character of the invention. In such a case, it is not sufficient that
the 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 a

technical effect due to having been applied to a field of technology and/or
adapted to a specific technical implementation, the computational efficiency
of 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 where
an 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 computational
models and algorithms for classification, clustering, regression and
dimensionality 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 "neural

network" may, depending on the context, merely refer to abstract models or
algorithms and thus do not, on their own, necessarily imply the use of a
technical 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 fields

of 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 of
classification 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-6 Guidelines for Examination in the EPO March 2024

Classifying text documents solely in respect of their textual content is

however 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 made
of 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 of

generating the training set and training the classifier may also contribute to
the technical character of the invention if they support achieving that
technical purpose.

The technical effect that a machine learning algorithm achieves may be

readily apparent or established by explanations, mathematical proof,
experimental data or the like. While mere allegations are not enough,
comprehensive proof is not required either. If the technical effect is
dependent on particular characteristics of the training dataset used, those
characteristics that are required to reproduce the technical effect must be
disclosed unless the skilled person can determine them without undue
burden using common general knowledge. However, in general, there is no
need to disclose the specific training dataset itself (see also F-III, 3 and
G-VII, 5.2).

3.3.2 Simulation, design or modelling

Claims directed to methods of simulation, design or modelling typically
comprise 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 partially

computer-implemented so that the claimed subject-matter as a whole is not
excluded from patentability.

Computer-implemented methods of simulating, designing or modelling

should be examined according to the same criteria as any other computer-
implemented 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 simulation
reflects 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 an

interaction with an external physical reality at the level of their input or
output may provide a technical effect related to this interaction. A computer-
implemented simulation that uses measurements as input may form part of
an indirect measurement method that calculates or predicts the physical
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-7

state 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.

Models and algorithms that do not make a contribution to the technical

character of the invention form constraints that may be included in the
formulation 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 same
manner as adaptations of mathematical methods to specific technical
implementations, see G-II, 3.3.

Intended technical use of the calculated numerical output data of a

numerical simulation

Calculated numerical data reflecting the physical state or behaviour of a

system 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", which

is the technical effect that will be produced when the data is used according
to an intended technical use. Such a potential technical effect may only be
considered in the assessment of inventive step if the intended technical use
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, a
potential technical effect of the data can be considered "implied" by the
claim. The specific adaptation implies that the claim does not encompass
other non-technical uses because the intended technical use is then
inherent to the claimed subject-matter over substantially the whole scope of
the 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 the
claim and therefore cannot be relied on in the assessment of inventive step.
Part G – Chapter II-8 Guidelines for Examination in the EPO March 2024

Accuracy

Whether a simulation contributes to the technical character of the claimed

subject-matter does not depend on the quality of the underlying model or
the 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
be achieved by a method where certain simulation parameters are
inaccurate 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 not
considered to be a technical effect, even if the modelled product, system or
process 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 beyond its
computer-implementation. Reference is made to G-II, 3.6.2 related to
information modelling as an intellectual activity.

3.4 Aesthetic creations

Art. 52(2)(b) Subject-matter relating to aesthetic creations will usually have both
technical aspects, e.g. a "substrate" such as a canvas or a cloth, and
aesthetic aspects, the appreciation of which is essentially subjective,
e.g. the form of the image on the canvas or the pattern on the cloth. If
technical 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 technical
feature 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 a

process claim.
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-9

For example, features relating solely to the aesthetic or artistic effect of the
information 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 means
of 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.

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), even
though 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 book
resulting in a particular layout with aesthetic effect is not excluded, and nor
is 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 business

3.5.1 Schemes, rules and methods for performing mental acts

The exclusion from patentability of schemes, rules and methods for Art. 52(2)(c)
performing mental acts under Art. 52(2)(c) concerns instructions to the
human 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 as
such (Art. 52(2)(c) and (3)). This applies regardless of whether the claim
encompasses also technical embodiments and of whether the method is
based 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 be
refreshed. The method involves determining optimal values for specific
technical parameters of the arrangement by starting with initial values,
performing simulations based on these values, and iteratively changing the
values based on simulation results until a stopping criterion is met. Such a
method is based on technical considerations related to the technical field of
nuclear reactors. However, as long as the claim does not exclude that all
Part G – Chapter II-10 Guidelines for Examination in the EPO March 2024

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 the
claim does not include either a step of carrying out the technical
measurement 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) are
necessary 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.

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 product
comprising 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 the
other requirements of patentability, in particular novelty and inventive step
(G-I, 1).

Where a claim defining a method for performing mental acts as such is

limited 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 computer
themselves may make a technical contribution if they then contribute to a
technical effect. The presence of technical considerations, such as those
related to the technical field of nuclear reactors in the example above, is not
in 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 the
method. These mental steps contribute to the technical character of the
method 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 a
step of manufacturing the selected product. If said selection steps are
carried out mentally, they contribute to the technical character of the
method only to the extent that a technical effect can be derived from the
features characterising the sub-family of selected products over the generic
family 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 not
contribute to the technical character of the method. As another example, in
a 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 performance
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-11

of the flowmeter make a technical contribution to the extent that they define
that particular position (T 1063/05).

For additional information about methods of simulation, design and

modelling, see G-II, 3.3.2. For methods of information modelling and the
activity of programming a computer, see G-II, 3.6.2.

3.5.2 Schemes, rules and methods for playing games

Under Art. 52(2)(c) and (3), schemes, rules and methods for playing games Art. 52(2)(c)
are excluded from patentability, if claimed as such. The exclusion applies to
rules for traditional games such as card or board games, as well as to
game rules that underlie contemporary forms of gameplay such as in
gambling machines or video games.

Game rules define a conceptual framework of conventions and conditions

that govern player conduct and how a game evolves in response to
decisions and actions by the players. They comprise the setup of the game,
options that arise as gameplay unfolds, as well as goals defining progress
in the game. They are normally perceived (or even agreed to) by the
players 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 it
proceeds in interaction with the player(s) (e.g. tapping along with the game
soundtrack to make your character dance if rhythms match). Given that
these 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 true
irrespective 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 a
computer 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 technical

features is examined in accordance with the problem-solution approach for
mixed-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 be
based on further technical effects of a technical implementation of the
game, i.e. technical effects that go beyond those already inherent to the
rules. For example, a networked implementation of a game of chance like
bingo, in which numbers physically drawn by an operator undergo a
random mapping prior to transmission to remote players, makes a technical
Part G – Chapter II-12 Guidelines for Examination in the EPO March 2024

contribution 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 of
memory, network, or computational resources achieved by limiting the
complexity of a game does not overcome a technical constraint by a
technical 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 game
product resulting from simplified rules is an incidental effect without a direct
technical cause.

Inventive step of an implementation is to be assessed from the point of

view of the skilled person, typically an engineer or a game programmer,
who is tasked with implementing game rules as set by a game designer.
Mere claim drafting exercises such as paraphrasing non-technical game
elements ("win computation means" for monitoring the number of game
tokens) 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 a
balanced, 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 computationally
complex, are usually considered non-technical.

Highly interactive gameplay such as in video games involves technical

means 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 and
3.7.1. Cognitive content that informs the player about the current game
state 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 is
regarded 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 of
real-time manoeuvres in a game world, the display of which is subject to
conflicting technical requirements (T 928/03).

Aside from rules, the state of a game world may also evolve in accordance
with 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 computer-
implemented simulation based on these models (G 1/19). For the purpose
of assessing inventive step in this context, the models are to be understood
as defining a given constraint for a corresponding implementation on a
computer (G-VII, 5.4). In contrast to effects that reside within the virtual
game world or are otherwise inherent to the model already, a specific
implementation of a simulation, if adapted to the internal functioning of a
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-13

computer 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 technical
contribution (G-II, 3.7.1). However, a mapping of parameters obtained from
known input mechanisms to parameters of a computer game qualifies as a
game 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 a
touchscreen determines both the power and the spin of a virtual golf shot).

3.5.3 Schemes, rules and methods for doing business

Subject-matter or activities which are of a financial, commercial, Art. 52(2)(c)
administrative or organisational nature fall within the scope of schemes,
rules and methods for doing business, which are as such excluded from
patentability 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 "business
method".

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 a
commercial or administrative nature. Personnel management, designing a
workflow for a business process or communicating postings to a target user
community based on location information are examples of organisational
rules. Other activities typical of doing business concern operational
research, planning, forecasting and optimisations in business
environments, including logistics and scheduling of tasks. These activities
involve collecting information, setting goals, and using mathematical and
statistical 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 to

avoid 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 be
looked at carefully, because a "system" might e.g. refer to a financial
organisation and "means" to organisational units if it cannot be inferred
from 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 with
Part G – Chapter II-14 Guidelines for Examination in the EPO March 2024

respect to novelty and inventive step (G-I, 1). The examination of inventive
step requires an assessment of which features contribute to the technical
character of the invention (G-VII, 5.4).

Where the claim specifies a technical implementation of a business

method, the features which contribute to the technical character of the
claim are in most cases limited to those specifying the particular technical
implementation.

Features which are the result of technical implementation choices and not
part 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 which
allows customers to obtain audio-visual content about selected products
using computers installed at each sales outlet of a company, all connected
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 by
enabling download of individual files directly from the central database to
the computer on request of a customer or, alternatively, by transferring a
plurality of selected electronic files to each sales outlet, storing these files in
a local database of the sales outlet and retrieving the corresponding file
from the local database when audio-visual content is requested by a
customer at the sales outlet. Choosing one implementation among these
two options lies within the competence of a technically skilled person, such
as a software engineer, as opposed to, for example, specifying that the set
of 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 business

method, a modification to the underlying business method aimed at
circumventing a technical problem, rather than addressing this problem in
an inherently technical way, is not considered to make a technical
contribution over the prior art. In the context of an automation of a business
method, effects which are inherent in the business method do not qualify as
technical effects (G-VII, 5.4.1).

For instance, an automated accounting method that avoids redundant

bookkeeping may be considered to require fewer computer resources in
terms 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 business
specification 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 by

successively lowering the price until the price is fixed by the remote
participant who first transmits a message. Since messages may be
received out of order due to possible transmission delays, each message
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-15

contains timestamp information. Changing the auction rules to obviate the

need for timestamp information amounts to circumventing the technical
problem 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 administrative
decision to dispense with the need to obtain the name or address of the
buyer 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
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 the
most cost-effective one which also enables meeting certain technical
constraints (e.g. to achieve a targeted reduction in environmental impact) is
not considered to make a technical contribution beyond the
computer-implementation.

The mere possibility of serving a technical purpose is not enough for a

method 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 specific
technical process due to the breadth of meaning of the term "industry".

The result of a business method may be useful, practical or saleable but

that does not qualify as a technical effect.

Business method features, e.g. administrative features, can be found in

different contexts. For example, a medical support system may be
configured to deliver information to the clinician on the basis of data
obtained from patient sensors, and only if such data is not available, on the
basis of data provided by the patient. The prioritisation of the sensor data
over the data provided by the patient is an administrative rule. Establishing
it 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 no
technical effect, it does not contribute to the technical character of the
claimed 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-matter
comprising business-method features, see G-VII, 5.4.2.1-5.4.2.3.
Part G – Chapter II-16 Guidelines for Examination in the EPO March 2024

3.6 Programs for computers

Art. 52(2)(c) 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 from

patentability, a computer program must produce a "further technical
effect" when run on a computer. A "further technical effect" is a technical
effect 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 of
electrical currents in the computer, are not in themselves sufficient to confer
technical character to a computer program (T 1173/97 and G 3/08).

Examples of further technical effects which confer technical character to a

computer program are the control of a technical process or of the internal
functioning of the computer itself or its interfaces (see G-II, 3.6.1).

The presence of a further technical effect is assessed without reference to

the 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 the
same 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 the
established technical effect contributes to the technical character of the
invention and thus to inventive step (e.g. where the design of the algorithm
is motivated by technical considerations of the internal functioning of the
computer; see also G-II, 3.3).

A computer program cannot derive a technical character from the mere fact
that it has been designed such that it can be automatically performed by a
computer. "Further technical considerations", typically related to the
technical 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 technical
effect (G 3/08).

If a claim is directed to a computer program which does not have a

technical 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 the
questions of novelty and inventive step (see G-VI and G-VII, in particular
G-VII, 5.4).
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-17

Computer-implemented inventions

"Computer-implemented invention" is an expression intended to cover

claims which involve computers, computer networks or other programmable
apparatus wherein at least one feature is realised by means of a computer
program. Claims directed to computer-implemented inventions may take
the 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 of
computer-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) and
any technical means itself (e.g. a computer or a computer-readable storage
medium) have technical character and thus represent inventions within the
meaning 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 is
computer-implemented, a corresponding computer program specifying that
method produces a further technical effect when run on a computer. For
example, a computer program which specifies a method of controlling an
anti-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 technical

considerations of the internal functioning of the computer on which it is to
be executed, such as by being adapted to the specific architecture of the
computer, it may be considered to produce a further technical effect. For
example, computer programs implementing security measures for
protecting 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 the
further technical effect of limiting the resources needed for a particular
build.
Part G – Chapter II-18 Guidelines for Examination in the EPO March 2024

3.6.2 Information modelling, activity of programming and

programming languages
Information modelling is an intellectual activity devoid of technical
character and typically carried out by a systems analyst in a first stage of
software 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 not
regarded as technical effects (T 1171/06).

If an information model is purposively used in the context of an invention to

solve a specific technical problem by providing a technical effect, it can
contribute to the technical character of the invention (see also G-II, 3.3.2
and 3.5.1).

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 a
computer-implemented method for generating program code for a control
task, a feature specifying that a platform-independent model is converted to
a platform-dependent model, from which program code adapted to the
target platform is derived, makes no technical contribution in so far as the
performance of the control task itself is not affected.

The activity of programming, in the sense of writing code, is an

intellectual, non-technical activity, to the extent that it is not used in the
context 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 a

computer program, rather than defining the data type in the program itself,
is merely a programming option when writing code, which has per se no
technical 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 a
technical problem, even if its particular syntax and semantics enable the
programmer 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, the

features pertaining to the programming language do not normally contribute
to 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 of
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-19

particular 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 by
macro-instructions so as to generate optimised code of reduced memory
size makes a technical contribution. In this case, the effect does not
depend on how a human programmer makes use of the macro-instructions.

Features of a programming environment that relate to its graphical user

interface, e.g. visualisations and data input mechanisms, are to be
assessed as indicated in G-II, 3.7 and 3.7.1.

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 a
whole and thus is an invention within the meaning of Art. 52(1).

A data structure or format contributes to the technical character of the

invention if it has an intended technical use and it causes a technical effect
when 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 a
technical 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 to
human users and do not contribute to producing a technical effect (see
however, 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 and
access the picture from the record carrier. This data structure is defined in
terms 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 or
landscape) does not.

Similarly, an index structure used for searching a record in a database

produces 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 are
automatically recognised and processed by the receiving message system.
This processing in turn determines how the content elements are to be
Part G – Chapter II-20 Guidelines for Examination in the EPO March 2024

assembled and presented to its final recipient. The provision of such

instructions in the header contributes to the technical character of the
electronic 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 be
characterised 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 task
of the programmer, which is not a technical effect serving a technical
purpose. Furthermore, data models and other information models at an
abstract logical level have per se no technical character (see G-II, 3.6.2).

Digital data is used to control devices in additive manufacturing (AM), which

is the general term for technologies manufacturing physical objects by
successive addition of material based on a digital representation of the
geometry 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:

Example

A 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) product
of 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 the
product. This technical use of the data is implied across substantially the
whole 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 is
achieved when the data is used according to its intended use is thus a
potential technical effect that is to be taken into account when assessing
inventive step. The digital representation of the product makes a technical
contribution to the extent that it defines technical features of the fabricated
physical 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 product
could 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 3D
model 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
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-21

software tool. Abstract descriptions or models are not considered technical

even 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 on
computers to perform the technical tasks of storing and retrieving data
using 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).

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, technical
considerations are involved in improving system throughput and query
response times by automatically managing data using various data stores
with different technical properties such as different levels of consistency or
performance (T 1924/17, T 697/17).

Database management systems execute structured queries, which formally

and precisely describe the data to be retrieved. Optimising the execution of
such structured queries with respect to the computer resources needed
(such as CPU, main memory or hard disk) contributes to the technical
character 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 in

database management systems to facilitate access to data or for the
execution of structured queries contribute to the technical character of the
invention. 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 technical
character 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 database

management 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 need
of 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
Part G – Chapter II-22 Guidelines for Examination in the EPO March 2024

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 technical
contribution.

The translation of linguistic considerations into a mathematical model with

the aim of enabling the linguistic analysis to be done automatically by a
computer can be seen as involving, at least implicitly, technical
considerations. However, this is not enough to guarantee the technical
character of the mathematical model. Further technical considerations such
as those relating to the internal functioning of the computer system are
needed.

For example, a mathematical model for calculating the probability that a

given term is similar in meaning to another term by analysing the
co-occurrence frequency of the two terms in a collection of documents does
not make a technical contribution per se since it is based on considerations
of 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 mathematical
model only in that information with different cognitive content would be
retrieved. This is a non-technical distinction and does not qualify as a
technical effect. In this context of retrieval based on similarity of meaning of
terms, the concept of "better search" is subjective (T 598/14). In contrast,
optimising the execution time of structured queries in a database
management system as discussed above is a technical effect.

See also G-II, 3.3.1, for artificial intelligence and machine learning
algorithms.

3.7 Presentations of information

Art. 52(2)(d) Presentations of information within the meaning of Art. 52(2)(d) are
understood as the conveying of information to a user. It concerns both the
cognitive 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 for
generating such presentations of information.

Furthermore, conveying information to a user is to be distinguished from

technical 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 not
regarded 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), the
claimed 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 means
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-23

for presenting information (e.g. a computer display) has, as a whole,

technical character and is thus not excluded from patentability. As another
example, a claim directed to a kit comprising a product (e.g. a bleaching
composition) and further features such as instructions for use of the product
or 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 composition
of 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
respect of the other requirements of patentability, in particular novelty and
inventive step (G-I, 1).

During the assessment of inventive step, features related to the

presentation of information are analysed to determine if, in the context of
the invention, they contribute to producing a technical effect serving a
technical 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 served
by the particular presentation of information.

A feature defining a presentation of information produces a technical effect

if it credibly assists the user in performing a technical task by means of a
continued and/or guided human-machine interaction process (T 336/14 and
T 1802/13). Such a technical effect is considered credibly achieved if the
assistance to the user in performing the technical task is objectively,
reliably and causally linked to the feature. This would not be the case if the
alleged effect depends on subjective interests or preferences of the user.
For example, for some users it is easier to understand data when it is
displayed 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 a
musical scale instead of spoken words is a matter concerned only with the
cognitive abilities of the user. As another example, allowing the user to set
parameters determining the information to be presented or to select the
manner 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 technical
task 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, with
the consequence that the distinguishing features make no technical
contribution (e.g. relate only to non-technical subjective user preferences).
Part G – Chapter II-24 Guidelines for Examination in the EPO March 2024

A feature relating to the presentation of information may commonly be

considered 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 of

technical 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 feature
falls into both categories. For example, a step of "displaying the surname of
a customer in capital letters" in a claimed method defines both the cognitive
content of the presented information (surname of a customer) and the
manner of its presentation (in capital letters). Such a feature may be
considered to consist in fact of two features: the displayed text is the
surname of a customer (falling into the first category) and the displayed text
is shown in capital letters (falling into the second category). The manner of
presentation 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 to

an internal state prevailing in a technical system and enables the user to
properly operate this technical system, it has a technical effect. An internal
state prevailing in a technical system is an operating mode, a technical
condition or an event which is related to the internal functioning of the
system, may dynamically change and is automatically detected. Its
presentation typically prompts the user to interact with the system, for
example 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 the
user with the non-technical tasks preceding the technical task, it does not
make 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 to
configuring a device is not a technical effect.

Non-technical information such as the state of a casino game, a business

process 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.
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-25

(2) How is the information presented?

A feature in this category typically specifies the form or arrangement in

which, or the timing at which, information is conveyed to the user (e.g. on a
screen). 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 in
which information is presented.

Features defining a visualisation of information in a particular diagram or

layout 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.

For instance, dealing with limited available screen space is part of

designing 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 on
technical considerations, but is a matter of layout design. Similarly,
arranging objects within available screen space by eliminating "white
space" between window panes follows the same layout principles as would
apply to the layout of a magazine cover and does not involve technical
considerations.

On the other hand, if the manner of presentation credibly assists the user in
performing 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 an
image at higher resolution conveys information to the user in the form of a
technical tool that enables the user to perform the technical task of
interactively searching and retrieving stored images more efficiently.
Storing digital images at different resolutions gives rise to the technical
effect of allowing the simultaneous overview display of several images
(T 643/00). As another example, in a video soccer game, the particular
manner of conveying to the user the location of the nearest teammate by
dynamically displaying a guide mark on the edge of the screen when the
teammate is off-screen produces the technical effect of facilitating a
continued human-machine interaction by resolving conflicting technical
requirements: 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 a
surgeon, if, in the course of surgery, the current orientation of a medical ball
joint implant is displayed in a manner which credibly assists the surgeon to
correct the position of the implant in a more precise manner, this is
considered 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
Part G – Chapter II-26 Guidelines for Examination in the EPO March 2024

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 the
user's current visual focus of attention has the technical effect that it is
more or less guaranteed to be seen immediately (compared e.g. with an
arbitrary placement on one of the screens). In contrast, the decision to
show 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 the
content between successive images are computed on the basis of physical
properties of human visual perception in order to achieve a smooth
transition is considered to make a technical contribution (T 509/07).

If information (e.g. a visual or audio stimulus) is presented to a person for

the purpose of producing in that person a physiological reaction
(e.g. involuntary eye gaze) which can be measured in the context of
assessing a medical condition (e.g. eyesight, hearing impairment or brain
damage), that presentation of information may be considered to produce a
technical 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 is
involved. 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 intermediate
step 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, reading
or memorising nor on influencing the user's decision as to which image is to
be searched. It provides a mechanism for inputting a selection which would
not be possible if the images were not displayed in that specific
arrangement.

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), comprise
features of presenting information and receiving input in response as part of
human-computer interaction. Features defining user input are more likely to
have a technical character than those solely concerning data output and
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-27

display, 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 of
a menu (such as its look and feel) which are determined by aesthetic
considerations, subjective user preferences or administrative rules do not
contribute 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
processing conditions, such as initiating a printing process and setting the
number of copies to be printed by dragging and reciprocated movement of
a document icon onto a printer icon, makes a technical contribution. On the
other hand, supporting user input by providing information facilitating only
the user's mental decision-making process during this task (e.g. helping the
user in deciding what to input) is not considered as making a technical
contribution (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 this
non-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 basis
of an objective technical problem to be solved. For example, a reduction of
the number of interactions required to perform the same input is not
credibly 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 merely

reflect subjective user preferences, conventions or game rules and from
which 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 more
accurate 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 Art. 53(a)
"ordre public" or morality is specifically excluded from patentability. The
Part G – Chapter II-28 Guidelines for Examination in the EPO March 2024

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 human
beings that can be done to other living beings. For example, the avoidance
of 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 fair
test to apply is to consider whether it is probable that the public in general
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 is
raised 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 and
would 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 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).

4.1.1 Prohibited matter

Art. 53(a) 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 the
contracting 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 in
an emergency non-offensive. In such a case, no objection arises under
Art. 53(a). Similarly, if a claimed invention defines a copying machine with
features resulting in an improved precision of reproduction and an
embodiment of this apparatus could comprise further features (not claimed
but apparent to the skilled person) the only purpose of which would be that
it 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 to
fall under Art. 53(a). There is, however, no reason to consider the copying
machine as claimed to be excluded from patentability, since its improved
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-29

properties could be used for many acceptable purposes (see G 1/98,

Reasons 3.3.3). However, if the application contains an explicit reference to
a use which is contrary to "ordre public" or morality, deletion of this
reference 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 the
economic effects of the grant of patents in specific areas of technology and
of 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.

4.2 Surgery, therapy and diagnostic methods

European patents are not to be granted in respect of "methods for Art. 53(c)
treatment of the human or animal body by surgery or therapy and
diagnostic methods practised on the human or animal body; this provision
shall not apply to products, in particular substances or compositions, for
use in any of these methods." Hence, patents may be obtained for surgical,
therapeutic or diagnostic instruments or apparatuses for use in such
methods. The manufacture of prostheses or artificial limbs could be
patentable. For instance, a method of manufacturing insoles in order to
correct the posture or a method of manufacturing an artificial limb is
patentable. In both cases, taking the imprint of the footplate or a moulding
of the stump on which an artificial limb is fitted is clearly not of a surgical
nature. 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 carried
out for taking measurements, would be excluded from patentability under
Art. 53(c) (see T 1005/98).

The exception under Art. 53(c) does not extend to products, particularly
substances or compositions, for use in these methods of treatment or
diagnosis.

Where a substance or composition is already known, (notional) novelty can

be 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 be Art. 54(4)
patented 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 or
composition for the first use in surgical, therapeutic and/or diagnostic
methods must be in a form such as: "Substance or composition X" followed
by the indication of the use, for instance "... for use as a medicament" or "...
for use in therapy/in vivo diagnostics/surgery" (see G-VI, 6.1).

Furthermore, if the known substance or composition was previously Art. 54(5)

disclosed for use in surgery, therapy or diagnostic methods practised on
the human or animal body, a patent may still be obtained according to
Art. 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
Part G – Chapter II-30 Guidelines for Examination in the EPO March 2024

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 specific
therapeutical/in vivo diagnostic/surgical use, for instance, "... for use in
treating disease Y" (see G-VI, 6.1).

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 accordance
with 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 of
this description are to be interpreted as references to compounds,
pharmaceutical compositions and medicaments of the present invention for
use in those methods".

4.2.1 Limitations of exception under Art. 53(c)

Art. 53(c) Exceptions under Art. 53(c) are confined to methods for treatment of the
human or animal body by surgery or therapy and diagnostic methods
practised on the human or animal body. It follows that other methods of
treatment of living human beings or animals (e.g. treatment of a sheep in
order to promote growth, to improve the quality of mutton or to increase the
yield of wool) or other methods of measuring or recording characteristics of
the human or animal body are patentable, provided that such methods are
of 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 of
Art. 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 for
storage 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 of
Art. 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).
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-31

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 a
physical activity or action that constitutes a method step for treatment of the
human 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 of
Art. 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
method practised on the human or animal body are not to be objected to
under Art. 53(c), because only method claims may fall under the exception
of 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 (see
G 1/07, Reasons 3.3.10). Accordingly, the term "surgery" defines the nature
of the treatment rather than its purpose. Thus, for example, a method of
treatment 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 falling

under the exception of Art. 53(c) should be assessed on a case-by-case
basis, taking the individual merits of each case into account. The reason for
the exception is to allow medical and veterinary practitioners to use their
skills 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 kind
of 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 body

which 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 with
the 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 the
injection 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
Part G – Chapter II-32 Guidelines for Examination in the EPO March 2024

environment are not excluded from patentability. They include

e.g. tattooing, piercing, hair removal by optical radiation and micro-abrasion
of 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 indicated
above. An example is a method for retraction of the sulcus of a tooth using
a paste and a cap to prepare an impression of the tooth to manufacture a
dental crown: the possible damage is limited to the superficial epithelium,
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 of
Art. 53(c). Other criteria, such as the degree of invasiveness or the
complexity of the operation performed, could also determine that a physical
intervention 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 the
previous paragraph. The non-patentable subject-matter must be removed
from the scope of the claim. This may be done either by means of a
disclaimer 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 surgical
method. 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 and
covers 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 with
bringing the body from a pathological state back into its normal, healthy
state or preventing a pathological state. Where a method is directed to the
treatment 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 necessarily
a therapy. For example, cooling an animal subject to hot weather conditions
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-33

does not cure or lessen the symptoms of any disorder or malfunction of the
animal's body, nor does it reduce the possibility of contracting any disorder
or 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 an

apparatus 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).

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-patentable
subject-matter must be removed from the scope of the claim. This may be
done 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 of
the 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 a
computer-implemented therapeutic method (T 1680/08). In this respect, the
same observations as in G-II, 4.2.1.1, for computer-implemented surgical
methods 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 the

meaning 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 the
comparison,

(iv) the attribution of the deviation to a particular clinical picture, i.e. the
deductive medical or veterinary decision phase (diagnosis for
curative purposes stricto sensu).
Part G – Chapter II-34 Guidelines for Examination in the EPO March 2024

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 a
pathology; the identification of the underlying disease is not required
(see T 125/02).

Additionally, a method is only regarded as a diagnostic method within the

meaning of Art. 53(c), and thus excluded from patentability, if all method
steps of a technical nature belonging to the preceding steps which are
constitutive 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 not
practised on the human or animal body. Therefore, in most cases only
phase (i), which relates to the examination phase and involves the
collection of data, can actually be of a technical nature within the meaning
of G 1/04 and therefore concerned with the criterion "practised on the
human 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 be
taken into account in determining the diagnostic character of the claimed
method. Additional, preparatory or intermediate steps which may be
introduced into the claimed method are irrelevant for this question (see
T 1197/02, T 143/04, T 1016/10). For example, preparatory steps which
concern the adjustment or preparation of the apparatus with which the
collection 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 phase
which 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 body
is, therefore, irrelevant for the assessment of whether a claimed method is
a diagnostic method falling under the exception clause of Art. 53(c).

In order to determine whether a method step of a technical nature fulfils the

criterion "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 presence
of the body. Direct physical contact with the body is not required.
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-35

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, in
the 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 be
raised under Art. 53(c).

Accordingly, methods for merely obtaining information (data, physical

quantities) from the living human or animal body (e.g. X-ray investigations,
MRI studies, and blood pressure measurements) are not excluded from
patentability under Art. 53(c).

4.2.2 Methods for screening potential medicaments and clinical

trials
Although in general a medical claim directed to tests carried out on Art. 53(a)
"animals" must exclude from its scope the use of human beings as "test
animals" (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 to
a 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. Exclusions and exceptions for biotechnological inventions

5.1 General remarks and definitions

"Biotechnological inventions" are inventions which concern a product Rule 26(2) and (3)
consisting of or containing biological material or a process by means of
which biological material is produced, processed or used. "Biological
material" means any material containing genetic information and capable of
reproducing itself or being reproduced in a biological system.

5.2 Patentable biotechnological inventions

In principle, biotechnological inventions are patentable under the EPC. For Rule 27
European patent applications and patents concerning biotechnological Rule 26(1)
inventions, the relevant provisions of the EPC are to be applied and
interpreted 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 a
supplementary 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).
Part G – Chapter II-36 Guidelines for Examination in the EPO March 2024

Biotechnological inventions are also patentable if they concern an item on

the following non-exhaustive list:

Rule 27(a) (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

Hence, biological material may be considered patentable even if it

already occurs in nature (see also G-II, 3.1).

Rule 29(1) and (2) Although the human body, at the various stages of its formation and
development, 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 technical
process, which is susceptible of industrial application, including the
sequence or partial sequence of a gene, may constitute a patentable
invention, even if the structure of that element is identical to that of a
natural element. Such an element is not a priori excluded from
patentability since it is, for example, the result of technical processes
used to identify, purify and classify it and to produce it outside the
human body, techniques which human beings alone are capable of
putting into practice and which nature is incapable of accomplishing
itself (EU Dir. 98/44/EC, rec. 21).

Rule 29(3) The examination of a patent application or a patent for gene

sequences or partial sequences is subject to the same criteria of
patentability as in all other areas of technology (EU Dir. 98/44/EC,
rec. 22). The industrial application of a sequence or partial sequence
must be disclosed in the patent application as filed (see G-III, 4).

Rule 27(b) (ii) Plants or animals if the technical feasibility of the invention is not
Rule 28(2) confined to a particular plant or animal variety and if said plants or
animals are not exclusively obtained by means of an essentially
biological process

Inventions which concern plants or animals are patentable provided

that the application of the invention is not technically confined to a
single plant or animal variety (EU Dir. 98/44/EC, rec. 29). However,
said plants or animals must not be exclusively obtained by means of
an essentially biological process (see G-II, 5.4).

The exclusion regarding plants and animals exclusively obtained by

means of an essentially biological process applies to patent
applications 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 a
technical intervention (e.g. directed mutagenesis) and an essentially
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-37

biological process (a natural allele), a disclaimer is necessary to

delimit 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 a
priority date after 1 July 2017. A disclaimer will not be required for
patents granted before that date or for 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, on the other hand, the feature in
question can be obtained by technical intervention only, e.g. a
transgene, no disclaimer is necessary. For the general principles
governing disclaimers, see H-V, 4.

The subject-matter of a claim covering but not identifying plant

varieties 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 plant
variety in a product claim, the subject-matter of the claimed invention
is neither limited nor directed to a variety or varieties within the
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 by Rule 27(c)

means of such a process other than a plant or animal variety

"Microbiological process" means any process involving or performed Rule 26(6)

upon or resulting in microbiological material.

5.3 List of exceptions (Rule 28)

In the area of biotechnological inventions, the following list of exceptions to
patentability 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 this
technical field. A possible immoral use is only to be taken into account if it
is specifically considered or at least suggested in the application and can
thus 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 means

of an essentially biological process are excluded from patentability. This
exclusion regarding plants and animals exclusively obtained by means of
an essentially biological process applies to patent applications 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).

Under Art. 53(a), in conjunction with Rule 28(1), European patents are not Rule 28(1)
to be granted in respect of biotechnological inventions which concern:

(i) Processes for cloning human beings Rule 28(1)(a)

For the purpose of this exception, a process for the cloning of human
beings may be defined as any process, including techniques of
embryo splitting, designed to create a human being with the same
Part G – Chapter II-38 Guidelines for Examination in the EPO March 2024

nuclear genetic information as another living or deceased human

being (EU Dir. 98/44/EC, rec. 41).

Rule 28(1)(b) (ii) Processes for modifying the germ line genetic identity of human
beings

Rule 28(1)(c) (iii) Uses of human embryos for industrial or commercial purposes

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 in
time at which such destruction takes place is irrelevant (T 2221/10).

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 to

establish whether products such as stem cell cultures are
obtained exclusively by the use, involving the destruction, of a
human embryo or not. For this purpose, the disclosure of the
description 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 an
effective 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 human
embryonic stem cells derived from parthenogenetically activated
human 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 excised
from the description or prominently marked as not being according to
the claimed invention (e.g. by using the term "reference human
embryonic stem cell") (see F-IV, 4.3).

Foetal and post-natal human cells are in principle not excluded from
patentability.

Culture media, supports and apparatuses "suitable for" use with

human embryonic cells, or even "specifically designed" for this
purpose, are not per se excluded from patentability. Their production
normally does not require the use of human embryos as base
material.
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-39

The exclusion of the use of human embryos for industrial or

commercial purposes does not affect inventions for therapeutic or
diagnostic purposes which are applied to the human embryo and are
useful to it (EU Dir. 98/44/EC, rec. 42).

(iv) Processes for modifying the genetic identity of animals which are Rule 28(1)(d)
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 for

genetically modifying animals needs to meet the requirements of
Rule 28(1)(d) and Art. 53(a) (see T 315/03 and T 19/90).

To fulfil the requirements of Rule 28(1)(d), the following needs to be

established:

(a) that the subject-matter in question concerns a process for

modifying 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 and

substantial medical benefit in terms of the animals claimed.

The level or standard of proof for establishing animal suffering and

substantial medical benefit is likelihood. The correspondence has to
be 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 and

possible risks to the environment, on the one hand, and the
invention's usefulness to mankind, on the other hand, are used to the
extent that those two aspects are supported by evidence (see
T 19/90 and T 315/03).

The substantial medical benefit referred to above includes any

benefit in terms of research, prevention, diagnosis or therapy (EU
Dir. 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 all

cases where animal suffering or possible risks to the environment is
involved, the provisions of Art. 53(a) have to be assessed by
considering the invention's usefulness to mankind (T 1553/15).

In addition, the human body, at the various stages of its formation and Rule 29(1)
development, and the simple discovery of one of its elements, including the
sequence or partial sequence of a gene, cannot constitute patentable
Part G – Chapter II-40 Guidelines for Examination in the EPO March 2024

inventions (see, however, G-II, 5.2). Such stages in the formation or

development 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 and

development nor one of its elements (i.e. human germ cell); thus a
parthenote or cells derived therefrom are in principle not excluded from
patentability 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).

5.4 Plant and animal varieties or essentially biological processes for

the production of plants or animals
Art. 53(b) The list of exceptions to patentability under Art. 53(b) also includes "plant or
animal varieties or essentially biological processes for the production of
plants or animals".

Rule 28(2) 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 means
of an essentially biological process applies to patent applications 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).

The exclusion extends to plants and animals exclusively obtained by

means of an essentially biological process where no direct technical
intervention in the genome of the plants or animals takes place, as the
relevant parental plants or animals are merely crossed and the desired
offspring is selected for. This is the case even if technical means are
provided serving to enable or assist the performance of the essentially
biological steps. In contrast, plants or animals produced by a technical
process 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 technical
intervention in the genome is not covered by the exclusion from
patentability even if in addition a non-technical method (crossing and
selection) is applied in its production.

Determining whether a plant or animal is obtained by exclusively biological

means entails examining whether there is a change in a heritable
characteristic of the claimed organism which is the result of a technical
process exceeding mere crossing and selection, i.e. not merely serving to
enable 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.
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-41

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 or
transgene is present in said offspring it is not produced exclusively by an
essentially biological method and is thus patentable.

Furthermore, for living matter to be patentable, it must be possible to

reproduce 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
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 sequence
in 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 technical
intervention (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 with
the requirements of Art. 53(b) and Rule 28(2). Otherwise the subject-matter
is directed to excluded subject-matter and is to be refused on the basis of
Art. 53(b) in conjunction with Rule 28(2). A disclaimer is required in all
cases and, in particular, even if the description only mentions a technical
method of production and is silent on the use of an essentially biological
process. 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 that

was 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 (for
the general principles governing disclaimers see also H-V, 4).

Such a disclaimer will only be necessary for patent applications with a filing
date and/or a priority date after 1 July 2017. A disclaimer will not be
required for patents granted before that date or for pending patent
applications with a filing date and/or a priority date before 1 July 2017 (see
G 3/19, OJ EPO 2020, A119).
Part G – Chapter II-42 Guidelines for Examination in the EPO March 2024

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 included

in 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) is
isolated from a product (e.g. a living plant) of an essentially biological
process or is produced in a laboratory.

Examples are provided below under G-II, 5.4.2.1.

This exclusion regarding plants and animals exclusively obtained by means

of 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 from
patentability 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 propagation
material. This applies even if the only method available at the filing date for
generating the claimed plants or plant material is an essentially biological
process for the production of plants, and also if the claimed product is
defined 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 conferred
by the product claim encompasses the generation of the claimed product
by 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 with
regard 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 to
essentially biological methods (such as screening wild populations or
conventional breeding) as an alternative method to obtain the claimed plant
or 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 into
line 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 essentially
biological processes to multiply or transfer a feature obtained with technical
means, e.g. mutagenesis, may remain in the description, even though they
cannot be claimed.
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-43

5.4.1 Plant varieties

The term "plant variety" is defined in Rule 26(4). A patent is not to be Rule 26(4)
granted if the claimed subject-matter is directed to a specific plant variety or Rule 27(b)
specific plant varieties. The method for the plant's production, be it by Rule 28(2)
recombinant gene technology or by a classical plant breeding process, is
irrelevant for considering this issue (see T 1854/07). Therefore, plant
varieties containing genes introduced into an ancestral plant by
recombinant gene technology are excluded from patentability (G 1/98).
However, if the invention concerns plants or animals, which are not
exclusively obtained by means of an essentially biological process (see
G-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 is
patentable (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).

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 from
patentability 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) by
consisting of a large number of varieties, not even if there are hundreds of
them. 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 hybrid
of 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 or

animals
A process for the production of plants or animals which is based on the Rule 26(5)
sexual crossing of whole genomes and on the subsequent selection of
plants or animals is excluded from patentability as being essentially
biological. This applies even if the process comprises human intervention,
including the provision of technical means, serving to enable or assist the
performance 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 the
claim before or after the crossing and selection steps (see G 1/08 and
G 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
Part G – Chapter II-44 Guidelines for Examination in the EPO March 2024

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 of
genetic 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 the
process 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 an

additional 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, so
that the introduction or modification of that trait is not the result of the
mixing of the genes of the plants chosen for sexual crossing, then such a
process is not excluded from patentability under Art. 53(b) but qualifies as a
potentially 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 such
processes are not excluded, either.

A process for producing triploid seedless melon fruit which involves the
pollination 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 from
patentability (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 or
animals since it is not based on the sexual crossing of whole genomes and
subsequent selection of plants or animals; the same applies to a method of
treating a plant characterised by the application of a growth-stimulating
substance or radiation. The treatment of soil by technical means to
suppress or promote the growth of plants is also not excluded from
patentability (see also G-II, 4.2.1).
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-45

Claims to breeding methods leaving out an explicit reference to either a

crossing 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 a
technical term, but a general one which is used for a variety of methods,
some clearly technical but others either comprising or consisting of
essentially 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.

– 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 and

selection of plants comprising the step of embryo rescue.

The following subject-matter relates to products exclusively obtained by

means of an essentially biological process excluded from patentability and
having 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, wherein

molecular markers are used to assist the selection process.

– A plant part obtained exclusively by means of an essentially

biological 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.
Part G – Chapter II-46 Guidelines for Examination in the EPO March 2024

– Method for selecting animals having phenotype Y by screening for

the 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/the
transgene.

– 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 the

description that said plant was exclusively obtained by means of an
essentially biological method).

5.5 Microbiological processes

5.5.1 General remarks

Art. 53(b) As expressly stated in Art. 53(b), second half-sentence, the exception
Rule 26(6) referred to in the first half-sentence does not apply to microbiological
processes or the products thereof.

"Microbiological process" means any process involving or performed upon

or resulting in microbiological material. Hence, the term "microbiological
process" 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 a
microbiological process (see G-II, 3.1). The term "microorganism" includes
bacteria and other generally unicellular organisms with dimensions beneath
the limits of vision which can be propagated and manipulated in a
laboratory (see T 356/93), including plasmids and viruses and unicellular
fungi (including yeasts), algae, protozoa and, moreover, human, animal and
plant cells. Isolated plant or animal cells or in vitro plant or animal cell
cultures are treated as microorganisms, since cells are comparable to
unicellular organisms (G 1/98, 5.2).
March 2024 Guidelines for Examination in the EPO Part G – Chapter II-47

On the other hand, product claims for plant or animal varieties cannot be
allowed even if the variety is produced by means of a microbiological
process (Rule 27(c)). The exception to patentability in Art. 53(b), first
half-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 to
regenerate 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 the
plant from which the material originates has been exclusively produced by
an 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).

5.5.2 Repeatability of results of microbiological processes

In the case of microbiological processes, particular regard has to be had to Rule 33(1)
the requirement of repeatability referred to in F-III, 3. As for biological
material 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 to
indicate another process for the production of the biological material.

6. Antibodies

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, both
containing variable and constant domains. Antibodies bind specifically to
antigen targets via the antigen binding region which contains
complementarity-determining regions (CDRs). In the case of an IgG, the
antigen 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 and
constant 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;

Part G – Chapter II-48 Guidelines for Examination in the EPO March 2024

(c) reference to the target antigen;

(d) target antigen and further functional features;

(e) functional and structural features;

(f) the production process;

(g) the hybridoma producing the antibody.

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 required
for binding to the antigen, which, in the case of an IgG, is CDRs 1-3 of each
of the variable domains.

Hence, if an IgG is defined by fewer than its six CDRs, the claim will be
objected to under Art. 84 because it lacks essential technical features
unless it is experimentally shown that one or more of the six CDRs do not
interact with the antigen.

If CDRs are not defined by their specific sequence, but by reference to a

larger heavy or light chain sequence, the numbering scheme, for example
Kabat, Chothia or IMGT, must also be indicated.

6.1.2 Definition by reference to the target antigen

An antibody can be functionally defined by the antigen it binds to, as long
as the antigen is clearly defined in the claims. If the antigen is defined by a
protein sequence, no sequence variability and no open language (e.g. an
antigen 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 the
undefined 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 2024 Guidelines for Examination in the EPO Part G – Chapter II-49

6.1.3 Definition by target antigen and further functional features

In addition to the functional definition by their target antigen, antibodies can
be further characterised by functional features defining their other
properties; for example, the binding affinity, neutralising properties,
induction of apoptosis, internalisation, inhibition or activation of receptors.

An antibody may also be claimed by reference to its epitope, i.e. the

structurally defined part of the antigen that it specifically binds to. Claims
are sometimes directed to antibodies defined by their ability to compete
with a reference antibody which is disclosed for the first time in the
application. However, this property will not normally be sufficient to identify
antibodies in the state of the art. In such a case, a complete search cannot
be carried out (B-VIII, 3) and an invitation under Rule 63(1) to indicate
subject-matter for search is sent (B-VIII, 3.1).

In all these cases, in the absence of any indication to the contrary, it is to

be assumed that a prior-art antibody binding the same target antigen will
have the claimed functional properties. Therefore a novelty objection may
be raised and the burden of proof lies with the applicant (cf. G-VI, 5).

The application must enable the person skilled in the art to produce further
antibodies having the claimed functional property without undue burden
(cf. F-III, 1 and 4). Furthermore, the functional definition must allow the
skilled person to easily and unambiguously verify whether they are working
inside or outside the scope of the claim. The claim should therefore
normally include the relevant characteristics of the method used to
determine and define the functional property (cf F-IV, 4.11).

6.1.4 Definition by functional and structural features

Antibodies can also be defined by both functional properties and structural
features. It is possible to claim an antibody characterised by the sequences
of both variable domains or CDRs with less than 100% sequence identity
when combined with a clear functional feature.

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 defined
sequence does not fulfil the requirements of Art. 84 because the use of
variants renders the scope of the antibodies obtained by the immunisation
process unclear.

6.1.6 Definition by hybridoma

Antibodies may also be defined through a deposited hybridoma cell
producing the antibodies. The general requirements for deposited biological
materials apply, see F-III, 6.3.
Part G – Chapter II-50 Guidelines for Examination in the EPO March 2024

6.2 Inventive step of antibodies

The subject-matter of a claim defining a novel antibody binding to a known
antigen does not involve an inventive step unless a surprising technical
effect is shown in the application or unless there was no reasonable
expectation of success of obtaining antibodies having the required
properties (cf G-VII, 13). Examples of surprising technical effects include an
unexpected improvement over prior-art antibodies in one or more
properties, such as therapeutic activity, stability or immunogenicity, or an
unexpected property not exhibited by prior-art antibodies.

Inventive step is not acknowledged solely on the basis that an antibody is

structurally different from the prior-art antibodies. Arriving at alternative
antibodies exclusively by applying techniques known in the art is
considered to be obvious to the skilled person. The fact that the structure of
an antibody, i.e. its amino acid sequence, is not predictable is not a reason
for considering the antibody as non-obvious (see T 605/14, section 24;
T 187/04, section 11).

Nevertheless, antibodies can be inventive if the application overcomes

technical difficulties in generating or manufacturing the claimed antibodies.
A novel type of functional antibody format may also be considered
inventive.
March 2024 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 Art. 57
can be made or used in any kind of industry, including agriculture".
"Industry" is understood in its broad sense as including any physical activity
of "technical character" (see G-I, 1), i.e. an activity which belongs to the
useful or practical arts as distinct from the aesthetic arts; it does not
necessarily imply the use of a machine or the manufacture of an article 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, a
perpetual motion machine is claimed merely as an article having a
particular specified construction, then an objection is made under Art. 83
(see F-III, 3).

2. Method of testing
Methods of testing generally are regarded as inventions susceptible of
industrial application and therefore patentable if the test is applicable to the
improvement 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 (for
example 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 be
applied to the factory storeroom for spare parts. On the other hand,
although an invention must be "susceptible of industrial application" and the
description must indicate, where this is not apparent, the way in which the
invention 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 patent Rule 42(1)(f)
application must, where this is not self-evident, indicate the way in which Rule 29(3)
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 that
the industrial application of a sequence or a partial sequence of a gene
must be disclosed in the patent application. A mere nucleic acid sequence
without indication of a function is not a patentable invention
Part G – Chapter III-2 Guidelines for Examination in the EPO March 2024

(EU Dir. 98/44/EC, rec. 23). In cases where a sequence or partial sequence
of 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 certain
transcription promoter activity.
March 2024 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 Art. 54(1) and (2)
the art". The "state of the art" is defined as "everything made available to
the public by means of a written or oral description, by use, or in any other
way, before the date of filing of the European patent application". The width
of this definition is to be noted. There are no restrictions whatever as to the
geographical location where or the language or manner in which the
relevant information was made available to the public; also no age limit is
stipulated 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 public
availability only in relation to written description (either alone or in
combination with an earlier oral description or use).

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. Art. 52(1)

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 to
gain 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" in
relation to the application and any further investigation does not produce
evidence sufficient to remove that doubt, the examiner does not pursue the
matter further. The only other problem likely to arise for the examiner is
where:

(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);
and
Part G – Chapter IV-2 Guidelines for Examination in the EPO March 2024

(ii) 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 and
therefore 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 to
Art. 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 technical
teaching which is the subject of the disclosure (see T 26/85, T 206/83 and
T 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 of
that 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 general
knowledge simply because it has been disclosed in the state of the art: in
particular, if the information can only be obtained after a comprehensive
search, it cannot be considered to belong to the common general
knowledge and cannot be used to complete the disclosure (see T 206/83).

For example, a document discloses a chemical compound (identified by

name 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 obtain
these starting materials or reagents on the basis of common general
knowledge (e.g. from text books), the document is insufficiently disclosed
with respect to that compound. Hence, it is not considered to belong to the
state of the art according to Art. 54(2) (at least in as far as it relates to that
compound) and consequently it does not prejudice the patentability of the
claimed 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 is
sufficiently 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.

3. Date of filing or priority date as effective date

Art. 89 For the purposes of Art. 54(2) and (3), the date of priority counts as the
date of filing for both the European application being examined and
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-3

conflicting European applications under Art. 54(3), on condition that the

respective priority is valid (Art. 89). Different claims, or alternative
subject-matters claimed in one claim, may have different effective dates,
i.e. the date of filing or (one of) the claimed priority date(s). The question of
novelty must be considered against 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 need
not (and must not) be concerned with the allocation of effective dates.

If the applicant files missing parts of the description, or drawings Rule 56

(see A-II, 5.1), late under Rule 56, the accorded date of the application is Rule 56a
the 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 the
requirements given in Rule 56(3) are satisfied (see A-II, 5.4), in which case
the original filing date is maintained. The date of the application as a whole
is thus either the date of filing of the missing elements or the original filing
date. In the case of erroneously filed documents, the same applies if the
applicant files a correct description, claims or drawings, or parts thereof,
under Rule 56a (see A-II, 6).

Claims filed in response to a communication under Rule 58 do not result in Rule 58

a change in the filing date of the application (see A-III, 15), as they are
considered as amendments to the application as filed (see H-IV, 2.2.4).

4. Documents in a non-official language

If the applicant

(i) disputes the relevance of a document in a non-official language cited

in 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 and
of the other prior art available, it is justified to pursue the matter. If so, the
examiner must obtain a translation of the document (or merely the relevant
part of it if that can be easily identified). If, after the translation, the
document 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 2024

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 to
rely on a machine translation of said document (see T 991/01), which is
sent 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 the
meaning of the text in a familiar language (see B-X, 9.1.3). Therefore mere
grammatical or syntactical errors which have no impact on the possibility of
understanding 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 the
burden of adducing evidence (in the form of, for instance, an improved
translation of the whole or salient parts of the document) showing the
extent to which the quality of the machine translation is defective and
should therefore not be relied upon.

When the party provides substantiated reasoning for questioning the

objections raised based on the translated text, the examiner must take
these reasons into account, similarly to when the publication date is
questioned (see G-IV, 7.5.3).

5. Conflict with other European applications

5.1 State of the art pursuant to Art. 54(3)

Art. 54(3) The state of the art also comprises the content of other European
Art. 56 applications filed or validly claiming a priority date earlier than – but
Art. 85 published under Art. 93 on or after – the date of filing or valid date of priority
Art. 89 of the application being examined. The date of priority counts as the date of
filing 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 the
art only when considering novelty and not when considering inventive step.
By the "content" of a European application is meant the whole disclosure,
i.e. the description, drawings and claims, including:

(i) any matter explicitly disclaimed (with the exception of disclaimers for
unworkable embodiments);

(ii) any matter for which an allowable reference (see F-III, 8, penultimate
paragraph) to other documents is made; and

(iii) prior art in so far as explicitly described.

March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-5

However, the "content" does not include any priority document (the purpose
of such document being merely to determine to what extent the priority date
is valid for the disclosure of the European application (see F-VI, 1.2)) nor, in
view 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 the
language 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 is
relevant 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 the
application under examination, the latter must be on or after that date. If the
published European application validly claims priority, the priority date
replaces the filing date (Art. 89) for that subject-matter in the application
which corresponds to the priority application. If a priority claim was
abandoned or otherwise lost with effect from a date prior to publication, the
filing 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 patent
application in existence at its publication date.

Changes taking effect after the date of publication (e.g. withdrawal of a

designation or withdrawal of the priority claim or loss of the priority right for
other reasons) do not affect the application of Art. 54(3) (see H-III, 4.2 for
transitional 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 date
of 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, or
Part G – Chapter IV-6 Guidelines for Examination in the EPO March 2024

(ii) an international patent application contains elements or parts of the

description, 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 filing
and on the content of the application on the filing date has already been
taken 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 the
content 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, the examiner temporarily deals with the 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, revisiting the issue at a later point
in time.

5.2 Euro-PCT applications

Art. 153 The above principles also apply to PCT applications designating EP, but
Rule 165 with 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 for
the purposes of Art. 54(3) if the PCT applicant has paid the required filing
fee 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 to
applications 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 of
procedural law generally recognised in the majority of contracting states
that two patents cannot be granted to the same applicant with claims
directed to the same subject-matter.

In line with that, a European patent application can be refused under

Art. 97(2) if it claims the same subject-matter as a European patent that
has been granted to the same applicant and does not form part of the state
of the art pursuant to Art. 54(2) and (3). This would especially be the case
in the following typical situations: two applications filed on the same day,
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-7

parent and divisional applications, or an application and its priority

application.

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 date
and relate to the same invention, the applicant should be required to
perform one of the following: amend one or more of the applications in such
a manner that the subject-matter of the claims of the applications is not
identical, or withdraw overlapping designations, or choose which one of
those 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 be
received 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 Rule 138
designated in the application, there are several possibilities of amendment
open to the applicant. First, that designation may be withdrawn from the
application 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 manner
that 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 the
existing set of claims in such a manner that the national right of earlier date
is 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 (see
D-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 is

neither required nor suggested (see also H-III, 4.4). However, if the claims
have been amended, then amendment of the description and drawings is
required if necessary to avoid confusion.

7. State of the art made available to the public "by means of a

written or oral description, by use, or in any other way"

7.1 Types of use and instances of state of the art made available in
any 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
Part G – Chapter IV-8 Guidelines for Examination in the EPO March 2024

or by applying the process. Marketing may be effected, for example, by

sale or exchange.

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 be
raised 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 in
such 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 was
any 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 for
example the place of use and the form of use. These factors are
important in that, for example, the details of a demonstration of a
manufacturing process in a factory or of the delivery and sale of a
product may well provide information as regards the possibility of the
subject-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 already
available. If the prior use or certain circumstances relating to it are
contested, the division will need to take further evidence (e.g. hearing
witnesses or performing an inspection) for those facts which are relevant to
the case and which cannot yet be considered proven on the basis of the
evidence already submitted. According to the circumstances of a particular
case, such further evidence might have to be submitted by the party(ies).
Evidence is always taken under participation of the party(ies), normally in
oral proceedings. For details concerning means of evidence see E-IV, 1.2.
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-9

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
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 the
buyer thereby acquires unlimited possession of any knowledge which may
be obtained from the object. Even where in such cases the specific features
of the object may not be ascertained from an external examination, but only
by further analysis, those features are nevertheless to be considered as
having been made available to the public. This is irrespective of whether or
not particular reasons can be identified for analysing the composition or
internal structure of the object. These specific features only relate to the
intrinsic 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 a
pharmaceutical product of a known substance or composition
(see Art. 54(4) and (5)) and the use of a known compound for a particular
purpose, based on a new technical effect (see G 2/88). Thus, such
characteristics cannot be considered as already having been made
available to the public (see G 1/92). T 1833/14 contains an example where
a commercially available product was found by the board not to have been
made available to the public as the skilled person was not able to
reproduce it without undue burden, i.e. the alleged public prior use did not
amount to an enabling disclosure.

If, on the other hand, an object could be seen in a given place (a factory, for
example) to which members of the public not bound to secrecy, including
persons with sufficient technical knowledge to ascertain the specific
features 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 concealed
features which could be ascertained only by dismantling or destroying the
object 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 made
available to the public by use or in any other way if there is an express or
tacit 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 or
more parties involved in the prior use had an objectively recognisable
interest in maintaining secrecy. If only some of the parties had such an
interest, 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 business
practice in the relevant industry. For establishing a tacit agreement
Part G – Chapter IV-10 Guidelines for Examination in the EPO March 2024

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, a
joint venture, the delivery of test specimens. The following may be
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 the
burden 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 public
availability 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 public
availability, public prior use has not been established.

Art. 55(1)(a) For the particular case of a non-prejudicial disclosure arising from an
evident 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 and
barracks, is not considered as use made available to the public, because
company employees and soldiers are usually bound to secrecy, save in
cases where the objects or processes used are exhibited, explained or
shown to the public in such places, or where specialists not bound to
secrecy are able to recognise their essential features from the outside.
Clearly the above-mentioned "non-public property" does not refer to the
premises of a third party to whom the object in question was unconditionally
sold 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 a
factory 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 the
opportunity 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 a
possible 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 in
particular 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.
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-11

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
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 when Art. 54(2)
facts 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 Art. 55(1)(a)
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 indirectly
from 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; this
will 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 read
again and again, an oral presentation is ephemeral. Therefore, the
standard of proof for ascertaining the content of an oral disclosure is high.
Whether the amount of evidence provided is sufficient to establish the
content of the oral disclosure based on this standard of proof has to be
evaluated on a case-by-case basis and depends on the quality of the
evidence in each case. However, evidence from the lecturer alone usually
does not provide a sufficient basis for determining the content of the oral
disclosure.
Part G – Chapter IV-12 Guidelines for Examination in the EPO March 2024

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 other
disclosure itself or if they are contested by a party.

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 accordance
with G-IV, 1, the subsequently published written description may be
deemed 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 the
reasons given by the proprietor of the patent. Caution must be exercised
when considering the type of evidence presented to substantiate the
content 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 of
what was in fact conveyed to the public. Similarly, a script from which the
lecturer purportedly read may not actually have been completely and
comprehensibly 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 the
information 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 other
products with a short life cycle. Hence for the sake of a valid patent it is
often 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 the
content 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 date
on 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 displayed
material, nor do they display records which enable members of the public –
including examiners – to establish precisely what was published and when.
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-13

Neither restricting access to a limited circle of people (e.g. by password

protection) nor requiring payment for access (analogous to purchasing a
book or subscribing to a journal) prevent a web page from forming part of
the state of the art. It is sufficient if the web page is in principle available
without any bar of confidentiality.

Finally, it is theoretically possible to manipulate the date and content of an

internet disclosure (as it is with traditional documents). However, in view of
the sheer size and redundancy of the content available on the internet, it is
considered very unlikely that an internet disclosure discovered by an
examiner has been manipulated. Consequently, unless there are specific
indications 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, the
same facts are to be established as for any other piece of evidence,
including standard paper publications (see G-IV, 1). This evaluation is
made according to the principle of "free evaluation of evidence" (see
T 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 in
view of the particular circumstances of each case. The standard for
assessing these circumstances is the balance of probabilities. According to
this standard, it is not sufficient that the alleged fact (e.g. the publication
date) is merely probable; the examining division must be convinced that it is
correct. 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 of
the specific circumstances of the case. In particular, the timing of the
submission 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 face
value, and the burden of proof will be on the applicant to show otherwise.
Circumstantial evidence may be required to establish or confirm the
publication date (see G-IV, 7.5.4). If the examiner comes to the conclusion
that – on the balance of probabilities – it has been established that a
particular document was available to the public at a particular date, this
date 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 the
applicant to prove otherwise – the burden of proof shifts to the applicant.

If an applicant provides reasons for questioning the alleged publication date

of an internet disclosure, the examiner will have to take these reasons into
Part G – Chapter IV-14 Guidelines for Examination in the EPO March 2024

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.

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 a
short amount of time at the search stage to find further evidence in support
of the publication date.

If an applicant refutes the publication date of an internet disclosure with no

reasoning 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 face
value, there are of course differing degrees of reliability. The more reliable
a disclosure, the harder it will be for the applicant to prove that it is
incorrect. 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 from
scientific publishers (e.g. IEEE, Springer, Derwent). The reliability of these
journals 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 a

journal 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 approved
for 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 must
also remember that the pre-published manuscript may differ from the final,
published version.

Where the given publication date of an online journal publication is too

vague (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 a
contact 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 to
provide reliable publication dates. These include for example publishers of
newspapers or periodicals, or television or radio stations. Academic
institutions (such as academic societies or universities), international
organisations (such as the European Space Agency ESA), public
organisations (such as ministries or public research agencies) or
standardisation bodies also typically fall into this category.
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-15

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 these
reports are never published anywhere else. The most prominent such
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, such
as CiteseerX (citeseerx.ist.psu.edu 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 and
white papers on products or product families. Evidently, most of these
documents address the public – e.g. actual or potential customers – and
are thus meant for publication. Hence the date given can be taken as a
date 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 fact
that 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 give
any 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 internet

archiving service. The most prominent such service is the Internet
Archive accessible through the so-called "Wayback Machine"
(archive.org). The fact that the Internet Archive is incomplete does
not detract from the credibility of the data it does archive. It is also
Part G – Chapter IV-16 Guidelines for Examination in the EPO March 2024

noted that legal disclaimers relating to the accuracy of any supplied

information are routinely used on websites (even respected sources
of information such as Espacenet or IEEE), and these 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 such
as 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 to
content (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 the
disclosure, 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 the
applicant and the examiner, these dates can be used only if the
examiner knows how they were obtained and can communicate this
to 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 sufficient
degree of certainty. The probative value of statements so obtained will have
to 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 of
interest to the applicant or third parties, it may be cited in the search report
as an "L" document. The search report and the written opinion must explain
why this document was cited. Citing the disclosure will also make it citable
against 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 is
drawn from different sources. Each of these frames may have its own
publication date which may have to be checked. In an archiving system, for
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-17

instance, 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
publication date is used, i.e. that the cited publication date refers to the
intended content.

When a document retrieved from the Internet Archive contains links, there
is no guarantee that the links point to documents archived on the same
date. It may even happen that the link does not point to an archived page at
all but to the current version of the web page. This may in particular be the
case 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 mean
that the URL will not work for other people (e.g. for the applicant at the time
of receipt of the search report). For non-persistent URLs, or if, for other
reasons, 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 is
clearly 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 the
European 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 the
prior-art status of the document, e.g.:

(i) how and where the publication date was obtained (for example, that
the eight digits in the URL represent the date of archiving in the
format 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 the
second 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
Part G – Chapter IV-18 Guidelines for Examination in the EPO March 2024

evidence suitable to prove its content and availability to the public. If the
disclosure later ceases to be available on the internet, such evidence will
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) and
are usually developed by Standards Development Organisations (SDOs) by
consensus 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 them
available to the interested circles subject to acceptance of a non-disclosure
agreement (categorically forbidding the recipients of the documents to
disclose 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 like
any other written or oral disclosures, i.e. in order to qualify as prior art they
must 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, the
same 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 determined

case by case on the basis of the documents allegedly setting forth this
obligation (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 in
time. 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), the
examiner is allowed to cite them in the search report and to refer to them
during the procedure. The public availability of the documents, if at all
necessary, may be further investigated during examination and opposition
in 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.
March 2024 Guidelines for Examination in the EPO Part G – Chapter IV-19

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
version number and publication date (see also F-III, 7, F-IV, 4.8 and
H-IV, 2.2.9).

8. Cross-references between prior-art documents

If a document (the "primary" document) refers explicitly to another
document (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 to
the 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 on

whether the skilled person, using general knowledge,

(i) can directly and unambiguously derive from the prior art document
that it contains an error and what the only possible correction should
be;

(ii) can directly and unambiguously derive from the prior art document
that 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.
March 2024 Guidelines for Examination in the EPO 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 a Art. 55(1)
prior disclosure of the invention is not taken into consideration as part of the
state of the art, viz. where the disclosure was due to, or in consequence of:

(i) an evident abuse in relation to the applicant or that party's legal Art. 55(1)(a)
predecessor – e.g. the invention was derived from the applicant or
that party's legal predecessor and disclosed against their wish; or

(ii) the display of the invention by the applicant or that party's legal Art. 55(1)(b)
predecessor at an officially recognised international exhibition as
defined in Art. 55(1)(b).

2. Time limit
An essential condition, in both instances G-V, 1(i) and (ii), is that the
disclosure 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 patent
application, 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 published
document or in any other way. As a particular instance, the disclosure
might be made in a European application of earlier priority date. Thus, for
example, 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 of
such publication. In any event, having regard to Art. 61, B may not be
entitled to proceed with the application (see A-IV, 2).

For "evident abuse" to be established, there must be, on the part of the
person disclosing the invention, either actual intent to cause harm or actual
or constructive knowledge that harm would or could ensue from this
disclosure (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 the Art. 55(2)
disclosure of the invention at the exhibition if the display is not to prejudice Rule 25
the application. Furthermore, the applicant must state, at the time of filing
the application, that the invention has been so displayed, and must also file
a supporting certificate within four months, giving the particulars required by
Rule 25 (see A-IV, 3). The exhibitions recognised are published in the
Official Journal.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-1

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 that
in 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, 7.

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 the
whole content of the prior-art document that has to be taken into
consideration.

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, are
to 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 prior
art 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 derivable
directly 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 where
clearly its elastic properties are used even if this is not explicitly stated
takes away the novelty of the use of an elastic material. The limitation to
subject-matter "derivable directly and unambiguously" from the document is
important. Thus, when considering novelty, it is not correct to interpret the
teaching of a document as embracing well-known equivalents which are not
disclosed 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 have
been read by a person skilled in the art on its relevant date. By "relevant"
date is meant the publication date of the prior-art document in the case of a
previously published document and the date of filing (or priority date, where
applicable) in the case of a document according to Art. 54(3)
(see G-IV, 5.1).

4. 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 falling
Part G – Chapter VI-2 Guidelines for Examination in the EPO March 2024

within the terms of that disclosure, but that a specific disclosure does take
away 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 the
novelty of any fastening other than rivets. See also G-VI, 7 in relation to
selection inventions.

5. 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 raised
by the examiner only where there can be no reasonable doubt as to the
practical effect of the prior teaching (for a second non-medical use,
however, see G-VI, 6).

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, is
mentioned. If the known and the claimed products are identical in all other
respects (which is to be expected if, for example, the starting products and
the 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 be
accorded if the applicant does not provide evidence in support of the
allegations (see T 1764/06). If, on the other hand, the applicant is able to
show, e.g. by appropriate comparison tests, that differences do exist with
respect to the parameters, it is questionable whether the application
discloses all the features essential to manufacture products having the
parameters specified in the claims (Art. 83).

6. Examination of novelty
In determining novelty of the subject-matter of claims, the examiner must
have 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 a
particular 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 unless
the use referred to implies a particular form of the substance (e.g. the
presence of certain additives) which distinguishes it from the known form of
the substance. That is to say, characteristics not explicitly stated, but
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 medical
use, 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 a
method for preparing said compound, the method inevitably resulting in the
purity as claimed. Such a claim, however, does not lack novelty if the
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-3

disclosure of the prior art needs to be supplemented, for example by

suitable (further) purification methods allowing the skilled person to arrive at
the claimed purity.

6.1 First or further medical use of known products

Where a substance or composition is already known, it may still be
patentable under Art. 54(4) if the known substance or composition was not
previously disclosed for use in a method referred to in Art. 53(c).

Where a substance or composition is already known to have been used in

a "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 that
said use is novel and inventive.

Art. 54(4) and (5) thus provide for an exception from the general principle
that product claims can only be obtained for novel products. However, this
does not mean that product claims for the first and further medical uses
need not fulfil all other requirements of patentability, especially that of
inventive step (see T 128/82).

A claim in the form "Use of substance or composition X for the treatment of

disease 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" is
acceptable, even if X is a known substance, but its use in medicine is not
known. 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, Art. 82
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 of
unity 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 for
therapeutic application Z") if the application has a filing or earliest priority
date of 29 January 2011 or later (see the notice from the EPO dated
20 September 2010, OJ EPO 2010, 514).
Part G – Chapter VI-4 Guidelines for Examination in the EPO March 2024

The effect of the different claim formulations on patentability is summarised

in the table below:

Examples

# Claim Patentable? Article

A Use of product X for No 53(c)

the treatment of
asthma

B 1. Product X for use as Yes 54(4)

a medicament (even if X is a known
[X known as product, but its use in
e.g. herbicide] medicine is not known)
2. Product according to Yes
claim 1 for use in the
treatment of asthma

C Product X for use in Yes 54(5)

the treatment of (even if case B is prior
cancer* art, provided that such a
claim is inventive over B
and any other prior art)

D Product X for use in Yes 54(5)

the treatment of (even if cases B and C
leukaemia* are prior art, provided
that D is inventive over B
and C and any other
prior art because
leukaemia is a specific
type of cancer)
* 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 these
different uses are allowable in the one application, but only if they form a
single general inventive concept (Art. 82). Regarding use claims of the
above 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 that
a substance selectively binds a receptor, even if representing an important
piece of scientific knowledge, still needs to find an application in the form of
a defined, real treatment of a pathological condition in order to make a
technical contribution to the art and to be considered as an invention
eligible for patent protection (see T 241/95). See also F-IV, 4.22 for the
functional definition of a pathological condition.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-5

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 in
its 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).

6.1.1 Products that may be claimed for a further medical use

The scope of protection of use-related product claims under Art. 54(5) is
limited 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 medical
use (F-IV, 4.13).

A product qualifies as a "substance or composition" in the sense of

Art. 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 (see
G 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 the
shielding effect of the filler material is achieved by a mere mechanical
displacement of the sensitive tissue relative to the target tissue, due to the
volume it occupies between the two tissues, the filler material qualifies as a
device rather than a substance or composition. On the other hand, if the
filler 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).

6.1.2 Therapeutic uses pursuant to Art. 54(5)

The treatment of a disease with a substance or composition which is
already known to be used for treating said disease, where the only
difference from the known treatment is in the dosage regime, is a specific
further 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 the
treatment of a different disease but also on the treatment of the same
disease by a different therapeutic method differing for example in the
dosage, administration regime, group of subjects or route of administration
(G 2/08).
Part G – Chapter VI-6 Guidelines for Examination in the EPO March 2024

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 the
treatment of a different disease must be formulated as follows:

Substance X for use in a method for the treatment of Y, or

or in the therapy of Y, or
Composition in a method of treating Y, or
comprising X in 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 the
wording of Art. 54(5).

If the independent claim is directed to a composition, the definition of the

composition 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 a
different treatment of the same disease, the independent claim must be
formulated as follows:

Substance X in a method for the characterised other features

for use treatment of Y, or in that/ (e.g. the
or in the therapy of Y, or wherein substance/
Composition in a method of composition is
comprising X treating Y, or administered
for use in a method of topically, three
therapy of Y, or times daily...)
as a medicament
defined by its function
(e.g. as an
anti-inflammatory
medicament)

Purpose-related product claims which do not define exclusively (see

claim 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 is
suitable for the claimed use.

The table below shows some examples of claims which do not define a
further medical use within the meaning of Art. 53(c).
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-7

... because ...

1. Substance X or a method for the without the term "for use"

Composition treatment of Y, or it is not evident if the
comprising X in/for the therapy of Y, or claim is directed to the
a method of treating product suitable for the
Y, or specified use or if the
a method of therapy claim is limited by the
of Y, or the (topical) medical use
treatment of Y, or
the (topical) therapy
of Y
2. (Anti-inflammatory) for topical treatment the claim indicates
medicament, or neither a therapeutic role
Pharmaceutical nor a therapeutic
comprising substance X, application of the claimed
or Composition product. Moreover,
comprising X without the term "for use"
it is not evident if the
claim is directed to the
product suitable for the
specified use or if the
claim is limited by the
medical use
3. Substance X or as an without the term "for use"
Composition anti-inflammatory it is not evident if the
comprising X agent claim is directed to the
product suitable for the
specified use or if the
claim is limited by the
medical use
4. Substance X or for use as an the claim does not define
Composition antifungal a specific medical use of
comprising X /antibacterial agent the claimed product. It
encompasses
non-medical uses,
because antifungal/
antibacterial agents are
also used in e.g.
agriculture for treating
plants

If the prior art discloses either the product per se in a form which could be
considered 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).

These amendments 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)).
Part G – Chapter VI-8 Guidelines for Examination in the EPO March 2024

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 specific
therapeutic 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 a
cosmetic treatment. Consequently, the subject-matter of the claimed
composition would be anticipated if said composition comprising X is
already 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 prior

art 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). "Topical
administration" 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 topical
administration" is merely illustrative and not a restrictive technical feature
capable of establishing novelty. The subject-matter of the claimed
composition would thus be anticipated if said composition comprising X is
already 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 over
the 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 the
requirement of industrial application (T 74/93).
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-9

6.1.3 Diagnostic uses pursuant to Art. 54(5)

A suitable formulation of a diagnostic claim according to Art. 54(5) may
read:

Substance X for use in a "in vivo" of disease Y

or method of
Composition diagnosis
comprising X

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 the

composition 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 a
diagnostic use within the meaning of Art. 53(c):

1. Substance X or Composition for use in the diagnosis of disease Y,

comprising X or for use in the "in vitro"/"ex vivo"
diagnosis of disease Y
2. Substance X or Composition for use as a contrast agent for imaging
comprising X 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. "A

method 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 the

Rule 71(3) communication without the need to consult the applicant
beforehand (see C-V, 1.1, point (f)).
Part G – Chapter VI-10 Guidelines for Examination in the EPO March 2024

6.1.4 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 the

composition 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 a
surgical use within the meaning of Art. 53(c):

1. Substance X or for use in a method for hair removal by

Composition comprising X laser radiation

The claim 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.

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 the

Rule 71(3) communication without the need to consult the applicant
beforehand (see C-V, 1.1, point (f)).

6.1.5 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) for use in the therapy wherein other features

or of disease Y (e.g. it is
Composition according to claim # provided as
(comprising X) or water-soluble
(according to for use according to granulates)
claim #) claim #

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 2024 Guidelines for Examination in the EPO Part G – Chapter VI-11

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)).

6.2 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 as
including that technical effect as a functional technical feature. Accordingly,
said claim is not open to objection under Art. 54(1), provided that such
technical 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 for
the known production of a known product cannot be deduced from a new
property 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 same
process 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).

7. Selection inventions
Selection inventions deal with the selection of individual elements, subsets,
or sub-ranges from a more generic disclosure in the prior art, see also
G-VI, 5.

Assessment of the novelty of selection inventions is dependent on the

number of selections identified compared with the prior art, leading to one
of the following two scenarios:

(i) One selection identified

In the case of one single selection, the following scenarios may arise:

(a) The selection is a selection of individual elements or of

subsets of a larger set.

A selection of one or more elements from a single list of

specifically disclosed elements does not confer novelty.

(b) The selection is a selection of a sub-range selected from a

broader numerical range disclosed in the prior art. Whether the
Part G – Chapter VI-12 Guidelines for Examination in the EPO March 2024

selection of a sub-range can be considered novel depends on

the specific circumstances:

A claimed selection of a sub-range is not considered novel if

any specific value disclosed in the prior art falls within the
claimed range, irrespective of whether the value stems from a
concrete example or is disclosed as the endpoint of a range.

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):

– the selected sub-range is narrow compared to the known range;

– the selected sub-range is sufficiently far removed from any specific

examples disclosed in the prior art.

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 the

light of the teaching of the prior art, would seriously contemplate
working in the selected sub-range. If it can be fairly assumed that the
skilled person would do so, the selected sub-range is not novel. For
this reason, it may not be 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 of
prior art and a claim whose inventiveness is in question (see
G-VII, 5.3), because in order to establish anticipation, there cannot
be such a gap.

For example, claim 1 defines a range of 3.0-6.0 wt% of a surfactant

in a liquid detergent composition. D1 discloses a liquid detergent
composition comprising a surfactant in a general range of 1-30 wt%
and one concrete example of 25 wt%. The selection of the claimed
sub-range will be novel since the claimed range is narrow compared
to the prior-art range but also far removed from the concrete
example. However, if a concrete example from D1 discloses a value
of 4.5 wt% of surfactant or if a more preferred range of 5-20 wt% is
disclosed in D1, then D1 takes away novelty of claim 1. If D1
discloses an example with 2.8 wt% surfactant instead, it has to be
assessed if the value 2.8 wt% is sufficiently far removed from the
claimed range of 3.0-6.0 wt%. This is done by assessing whether the
skilled person would seriously contemplate working in the claimed
range.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-13

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.

The same principle applies to Markush formulae. For example, a

claim may define a chemical compound with a substituent being an
alkyl chain with 5 to 10 carbon atoms. This claim is not new in view of
a prior-art chemical compound having 8 carbon atoms. For a prior-art
document disclosing an alkyl chain with an unspecified length and
one concrete compound having 11 carbon atoms, it has to be
assessed if the claimed range is sufficiently far removed from the
known example.

(ii) Multiple selections identified

In the case of multiple selections identified, the situation becomes

more complex to assess. Depending on the type of the selections,
this generally leads to one the following three scenarios:

(a) The identified selections lie in the selection of individual

elements or in the selection of subsets of multiple larger sets.
This amounts to a selection from two or more lists of a certain
length. A list is a description of equal, i.e. non-convergent,
alternatives.

A list is usually considered to have a "certain length" if it has a

length of at least two or three elements. Whether a list has the
required length has to be decided on a case-by-case basis. If
a selection from two or more lists of a certain length has to be
made 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-list principle"). On the
other hand, novelty is not conferred if there is a pointer in the
prior art to the specific combination. Similarly, the mere
reduction in length of lists does not generally confer novelty
when the length of the lists is not reduced below the required
length.

For example, a claim may define the use of sodium chloride

(NaCl) as catalyst in a chemical reaction. If D1 describes the
use of an alkaline metal halide as catalyst, the alkaline metal
being selected from Li, Na, K and Rb and the halide being
selected from F, Cl, Br and I, a selection from two lists needs
to be made to arrive at the specific combination of the claim. In
the absence of any further information in D1, the claim is new
over D1.

The same principle is also applicable to chemical compounds

described by a Markush formula. This includes individual
chemical compounds from a known generic formula whereby
Part G – Chapter VI-14 Guidelines for Examination in the EPO March 2024

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 to specific mixtures
resulting from the selection of individual components from lists
of components making up the prior-art mixture. Similar
considerations also apply to starting materials for the
manufacture of a final product.

(b) The identified selections lie in the selection of multiple

sub-ranges from broader numerical ranges. In this context a
sub-range is a range that either lies completely inside the
prior-art range or overlaps with an endpoint of the prior-art
range, thereby creating a range of overlap with the prior-art
range. These two scenarios are illustrated below, where the
area of overlap is marked as "xxxx".

claim
prior art

claim
prior art

The two-list principle mentioned above applies in the same

way here. In contrast to the situation involving a single
selection as described in (i)(b), it is not sufficient that, for each
claimed range taken individually, the prior art discloses a
specific value or a range endpoint falling within said range to
anticipate the subject-matter of the claim. That is, the selection
of multiple sub-ranges will, in the absence of any pointers to
the combination of the specific sub-ranges, be novel over the
broader ranges. If a concrete example falls slightly outside the
claimed ranges, it has to be assessed if the skilled person
would seriously contemplate working inside all of the claimed
ranges.

If the selections of the multiple sub-ranges concern elements

that interact with each other, which is generally the case for
the constituents of alloys and compositions, the different
selections must not be considered in isolation but in
combination (T 261/15, Reasons 2.3.1).

For example, claim 1 defines an alloy comprising 5-8 wt% Mg

and 12-16 wt% Zn and other metals. D1 discloses a similar
alloy but defines the ranges as 7-20 wt% Mg and 14-22 wt%
Zn and specifies one concrete example of an alloy having
16 wt% Mg and 21 wt% Zn. In the absence of any pointers or
further information in D1 there is no reason why the skilled
person would seriously contemplate a working example of an
alloy falling within both claimed ranges.

(c) The identified selections lie in a combination of selections from

lists and sub-ranges. In this case, both principles described
March 2024 Guidelines for Examination in the EPO Part G – Chapter VI-15

above under (ii)(a) and (ii)(b) need to be applied. This situation

occurs frequently in the field of chemistry when a compound is
described by a Markush formula. For example, one difference
over the prior art may be the selection of a specific substituent
out of a list of substituents and another difference may be in
the selection of a numerical sub-range out of a broader
numerical range of repeating units disclosed in the prior art.

7.1 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 degree
of 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, the
skilled person proceeds on the same basis.

8. Novelty of "reach-through" claims

"Reach-through" claims are defined as claims attempting to obtain
protection 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 functionally
defines chemical compounds in this way by reference to a newly identified
biological target. However, compounds which bind to and exercise this
action on that biological target are not necessarily novel compounds simply
because the biological target which they act on is new. Indeed in many
cases, 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 the
functional definition of the "reach-through" claim are known in the state of
the art and so establishing that a reach-through claim relating to
compounds defined in this way lacks novelty.
March 2024 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 Art. 56
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 is
valid (Art. 89). The state of the art may reside in the relevant common
general knowledge, which need not necessarily be in writing and needs
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 the
relevant field of technology who is possessed of average knowledge and
ability (average skilled person). The person skilled in the art is aware of
what 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 are
normal 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, the
specialist in that field is the person qualified to solve the problem. The
skilled person is involved in constant development in the relevant technical
field (see T 774/89 and T 817/95). The skilled person may be expected to
look for suggestions in neighbouring and general technical fields (see
T 176/84 and T 195/84) or even in remote technical fields, if prompted to do
so (see T 560/89). Assessment of whether the solution involves an
inventive step must therefore be based on that specialist's knowledge and
ability (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 in
mind that the skilled person has the same level of skill for assessing
inventive step and sufficient disclosure (see T 60/89, T 694/92 and
T 373/94).

3.1 Common general knowledge of the skilled person

Common general knowledge can come from various sources and does not
necessarily depend on the publication of a specific document on a specific
date. An assertion that something is common general knowledge need only
be backed by documentary evidence (for example, a textbook) if this is
contested (see G-IV, 2).
Part G – Chapter VII-2 Guidelines for Examination in the EPO March 2024

A single publication (e.g. a patent document, but also the content of a

technical journal) cannot normally be considered as common general
knowledge (see T 475/88). In special cases, articles in technical journals
can be representative of common general knowledge (see T 595/90). This
applies 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 these
materials carried out by only a very few manufacturers form part of the
relevant 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 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).

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 already
common general knowledge (see T 766/91). This means that the
information in such a publication must have already become part of
common general knowledge some time before the date of publication.

4. Obviousness
Thus the question to consider, in relation to any claim defining the
invention, 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 of
the 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 progress
of 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 to
have 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 2024 Guidelines for Examination in the EPO Part G – Chapter VII-3

(iii) considering whether or not the claimed invention, starting from the
closest prior art and the objective technical problem, would have
been 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 or
effect 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 is
generally that which corresponds to a similar use and requires the minimum
of 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 the
assessment of inventive step, e.g. if the skilled person has a choice of
several workable solutions, i.e. solutions starting from different documents,
which might lead to the invention. If a patent is to be granted, it may be
necessary 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 an
inventive step: there is no need to discuss which document is "closest" to
the invention; the only relevant question is whether the document used is a
feasible 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 argument

that the claimed subject-matter lacks inventive step by submitting that a
more promising springboard is available: a piece of prior art on the basis of
which 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 the
invention (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 of
view on the day before the filing or priority date valid for the claimed
invention. The examiner must not make an artificial interpretation of the
Part G – Chapter VII-4 Guidelines for Examination in the EPO March 2024

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 such
acknowledgement 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)).

5.2 Formulation of the objective technical problem

In the second stage, one establishes in an objective way the technical
problem to be solved. To do this one studies the application (or the
patent), the closest prior art and the difference (also called "the
distinguishing feature(s)" of the claimed invention) in terms of features
(either structural or functional) between the claimed invention and the
closest prior art, identifies the technical effect resulting from the
distinguishing 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 technical
character 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 to
provide 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 the
applicant 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 revealed
in the course of the proceedings, which may be different from the prior art
of 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 the
invention in an entirely different perspective from that apparent from
reading the application only. Reformulation might lead to the objective
technical problem being less ambitious than originally envisaged by the
application. An example of such a case would be where the originally
stated problem is the provision of a product, process or method
demonstrating some improvement, but where there is no evidence that the
claimed subject-matter is thereby improved over the closest prior art
uncovered in the search; rather, there is only evidence with respect to more
distantly related prior art (or possibly none at all). In this case, the problem
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-5

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 of
principle any effect provided by the invention may be used as a basis for
the reformulation of the technical problem, as long as said effect is
derivable from the application as filed (see T 386/89). It is also possible to
rely on new effects submitted subsequently during the proceedings by the
applicant, provided the skilled person, having the common general
knowledge at the effective filing date in mind, and based on the application
as originally filed, would derive said effect as being encompassed by the
technical teaching and embodied by the same originally disclosed invention
(see G-VII, 11 and G 2/21).

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 a
technical 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 the
formulation of the problem as part of the framework of the technical
problem 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 not

necessarily imply that the technical solution is an improvement to the prior
art. 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 more
cost-effective. A technical problem may be regarded as being solved only if
it is credible that substantially all claimed embodiments exhibit the technical
effects upon which the invention is based. Criteria for deciding whether lack
of 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 an

aggregation 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 and
T 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 technical
problem, to modify or adapt the closest prior art while taking account of that
teaching, thereby arriving at something falling within the terms of the
claims, and thus achieving what the invention achieves (see G-VII, 4).
Part G – Chapter VII-6 Guidelines for Examination in the EPO March 2024

In other words, the point is not whether the skilled person could have
arrived 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 or
advantage (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 solution

of the technical problem, it is nevertheless regarded as obvious if the
technical 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 features
appearing in a claim, as is often the case with computer-implemented
inventions. The non-technical features may even form a major part of the
claimed subject-matter. However, in the light of Art. 52(1), (2) and (3), the
presence 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 those
features which contribute to the technical character of the invention are
taken 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 such

a way as to ensure that inventive step is not acknowledged on the basis of
features 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 to
be achieved in a non-technical field, this aim may legitimately appear in the
formulation of the objective technical problem as part of the framework of
the technical problem that is to be solved, in particular as a constraint that
has to be met (T 641/00; see step (iii)(c) below and G-VII, 5.4.1).
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-7

The steps below outline the application of the problem-solution approach to

mixed-type inventions following the COMVIK approach:

(i) The features which contribute to the technical character of the

invention 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 prior
art with a focus on the features contributing to the technical character
of the invention identified in step (i) (see G-VII, 5.1).

(iii) The differences from the closest prior art are identified. The technical
effect(s) of these differences, in the context of the claim as a whole,
is(are) determined in order to identify from these differences the
features which make a technical contribution and those which do not.

(a) If there are no differences (not even a non-technical

difference), 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 the
objection is that the subject-matter of a claim cannot be
inventive if there is no technical contribution to the prior art.

(c) If the differences include features making a technical

contribution, the following applies:

– The objective technical problem is formulated on the

basis of the technical effect(s) achieved by these
features. 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 technical
problem 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 the
art, an objection under Art. 56 is raised.

Determination of the features contributing to the technical character of the

invention 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, the
examiner can normally perform the determination in step (i) on a
first-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 the
differences over the selected closest prior art are determined. The extent to
which the differences contribute to the technical character of the invention
is analysed in relation to these technical effects. This analysis, limited to the
differences, 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
Part G – Chapter VII-8 Guidelines for Examination in the EPO March 2024

that some features considered in step (i) at first glance as not contributing
to the technical character of the invention do, on closer inspection, make
such 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 technical
character of the claimed subject-matter, in particular if the examiners
reproduce their understanding of the subject-matter of the claim in their
own 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 the
skilled person in the particular technical field might have been asked to
solve at the relevant date. It must not be formulated in such a way as to
refer 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, the
objective technical problem must be so formulated as not to contain
pointers to the technical solution. However, this principle only applies to
those features of the subject-matter claimed which contribute to the
technical character of the invention and hence are part of the technical
solution. 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 be
solved, in particular as a constraint that has to be met (T 641/00).

In other words, the formulation of the objective technical problem may refer
to 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 a
requirements 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 of
features which contribute to the technical character of the invention. The
technical effects used for formulating the objective technical problem have
to be derivable from the application as filed when considered in the light of
the closest prior art. They must be achieved over the whole scope of the
claim. 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.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-9

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 or
game rules, a modification to the underlying non-technical method or
scheme aimed at circumventing a technical problem, rather than
addressing this problem in an inherently technical way, is not considered to
make 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 technical

advantages or effects associated with the specific features of the technical
implementation over and above the effects and advantages inherent in the
underlying 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.

Example

In a game played online over a distributed computer system, the effect of

reduction in network traffic obtained by reducing the maximum number of
players cannot form the basis for formulating the objective technical
problem. It is rather a direct consequence of changing the rules of the
game, 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 feature
defining the maximum number of players thus constitutes a given constraint
which forms part of the non-technical scheme that the skilled person, e.g. a
software 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 for
illustrative 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;

Part G – Chapter VII-10 Guidelines for Examination in the EPO March 2024

(b) the mobile device transmits the selected products data and the
device 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 the
identified vendors, an optimal shopping tour for purchasing the
selected 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 device
for 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 first
glance identified as a distributed system comprising a mobile device
connected to a server computer which has a cache memory and is
connected 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 a
single 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 for
previous requests are stored.

Differences (1) and (2) represent modifications of the underlying business

concept, since they define producing an ordered list of shops to visit which
sell these products. No technical purpose is served, and no technical
effects 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 implementation
of 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.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-11

Step (iii)(c): The objective technical problem is to be formulated from the

perspective 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 in
business-related matters. In the present case, the skilled person can be
defined as an expert in information technology who gains knowledge of the
business-related features (1) and (2) as part of the formulation of the
technical problem to be solved, as would be the case in a realistic situation
in the form of a requirement specification. The objective technical problem
is thus formulated as how to modify the method of D1 to implement in a
technically 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 of

routine for the skilled person to adapt the mobile device used in D1 so as to
enable 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 with
the server likewise determining the nearest vendor in D1. Since the
objective technical problem further requires a technically efficient
implementation, the skilled person would have looked for efficient technical
implementations of the determination of a tour. A second document D2
discloses a travel planning system for determining travel trips, listing a set
of 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 approach

developed 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 prior
art comprise features making a technical contribution. This analysis refines
the initial finding of step (i) by identifying the feature of accessing the cache
memory 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-technical
modifications to the business concept are given to the skilled person as a
constraint to be met. Whether or not the new business concept is
innovative 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 the

field of transporting freight, comprising the following steps:

(a) receiving transportation offers/demands from users, including

location and time data;
Part G – Chapter VII-12 Guidelines for Examination in the EPO March 2024

(b) 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 are

previous 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 freight

transportation, 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 are

previous 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 business
activity. 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 business
method 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 this

business method can be identified as the features contributing to the
technical character of the invention:

– The business method steps are carried out by a computer.

– The current location information is received from GPS terminals.

March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-13

Step (ii): As a suitable starting point, document D1, which discloses a

method 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 is

thus the computer implementation of the steps of the business method
defined above.

The technical effect of this difference is merely the automation of the

business 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 brokering
offers 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 and
demands, which as such is a business method. The features defining the
business method were easily separable from the technical features of its
computer implementation. Therefore, this example illustrates a line of
argument in which it was possible in step (i) to determine all the features
which contribute to the technical character of the invention and all those
which do not. This line of argument pertains more to the field of
computer-implemented business methods and might be less suitable in
other fields.

5.4.2.3 Example 3
This example illustrates the two-level technicality analysis set forth in
section G-VII, 5.4.

Claim 1:

A system for the transmission of a broadcast media channel to a remote

client over a data connection, said system including:

(a) means for storing an identifier of the remote client and 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;

(b) means for determining a rate at which data is to be transmitted based

on the indication of the available data rate of the data connection;
and
Part G – Chapter VII-14 Guidelines for Examination in the EPO March 2024

(c) means for transmitting data at the determined rate to said remote
client.

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 technical
character 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 of
subscribers' 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 data
is 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 a
maximum data rate for the data connection to the remote client is not
apparent from the claim. Therefore, the relevant disclosure in the
description 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 to
pay less. Hence, using an available data rate which is lower than the
maximum data rate for the connection to the remote client addresses the
aim of allowing a customer to choose a data-rate service level according to
that pricing model. This is not a technical aim, but an aim of a financial,
administrative or commercial nature and thus falls under the exclusion of
schemes, 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 a
constraint 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 the
customer to choose a data-rate service level.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-15

Obviousness: Given the task of implementing this choice of data-rate

service 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 to
be 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 of

technical and non-technical features. On a first-glance basis in step (i), all
features appeared to contribute to the technical character of the invention.
After comparison with D1, a detailed analysis of the technical character of
the 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 an

increased risk of condensation for a surface in a building comprising the
steps of:

(a) controlling an infrared (IR) camera to capture an image of the

temperature 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 of
condensation 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 the
calculated condensation temperature as areas at increased risk of
condensation 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 of
condensation to a user.
Part G – Chapter VII-16 Guidelines for Examination in the EPO March 2024

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 technical
contribution. The question is whether steps (b) to (f) also contribute to the
technical character of the claimed subject-matter.

Considered in isolation, steps (b) to (e) relate to algorithmic/mathematical

steps 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 mathematical

steps as well as the step related to presentation of information do, in the
context 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 of
condensation on the surface (see G-II, 3.3, in particular subsection
"Technical applications"). Thus, steps (b) to (e) contribute also to the
technical character of the invention.

A decision on whether step (f) makes a technical contribution is deferred to

step (iii) below.

Step (ii): Document D1 discloses a method for monitoring a surface to

determine 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 and
the relative air humidity. The numerical value of the difference is then
shown 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 2024 Guidelines for Examination in the EPO Part G – Chapter VII-17

(3) the condensation temperature is calculated on the basis of the mean

air temperature and mean relative air humidity and compared to the
temperature at each point on the IR image of the surface;

(4) image points having a temperature lower than the calculated

condensation temperature are identified as areas at increased risk of
condensation on the surface;

(5) colours are used to indicate areas at increased risk of condensation.

As mentioned above, distinguishing features (1)-(4) contribute to the

technical 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 the
risk of condensation as a result of considering all surface areas (as
opposed 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 technical
effect 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). This
feature thus does not make a technical contribution. It cannot support the
presence 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 and
reliable manner.

Obviousness: The use of an IR camera for obtaining temperature readings

on a surface can be considered a normal technical development in the field
of thermography without exercising any inventive activity: IR cameras were
well known at the effective date of the application. Using an IR camera is a
straightforward alternative to measuring the temperature at several points
on the monitored surface using an IR pyrometer for the skilled person to
arrive at a temperature distribution of the surface.

However, D1 does not suggest considering a temperature distribution on a

surface (as opposed to at a single point) and calculating mean values for
air temperature and taking relative air humidity measured inside the
building 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 the
objective technical problem defined by distinguishing features (1)-(4), the
subject-matter of claim 1 involves an inventive step.

Remarks: This example illustrates the situation addressed in G-VII, 5.4,

second paragraph: features which, when taken in isolation, are
Part G – Chapter VII-18 Guidelines for Examination in the EPO March 2024

non-technical but do, in the context of the claimed invention, contribute to

producing 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 of
an 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 by

detecting properties of particles in the spray jet and supplying the
properties 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 neural-
network and fuzzy logic rules and thereby maps statistical
relationships between input variables and output variables of the
neuro-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 coating
is 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-fuzzy
controller is a mathematical algorithm which combines a neural network
with 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 specific
technical 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 2024 Guidelines for Examination in the EPO Part G – Chapter VII-19

detecting deviations in the properties of the particles in said spray jet and
adjusting process parameters automatically on the basis of the outcome of
a 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 feature
of combining results of a neural network analysis and fuzzy logic defines a
mathematical method when taken on its own. However, together with the
feature 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, the
differentiating feature contributes to producing a technical effect serving a
technical purpose and thereby contributes to the technical character of the
invention. Therefore, it is taken into account in the assessment of inventive
step.

Step (iii)(c): The objective technical problem must be derived from technical
effects 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 coating
process – cannot credibly ensure any technical effect beyond a different
adjustment of the process parameters. In particular, no evidence can be
found to acknowledge any increase in the quality of coating properties or of
the thermal spraying method that would result from the combination of
features of claim 1. In the absence of such evidence, the objective technical
problem is to provide an alternative solution to the problem of adjusting the
process parameters which control the thermal spray coating process which
is 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 neural

network and fuzzy logic rules providing a neuro-fuzzy controller in the
technical 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.
Part G – Chapter VII-20 Guidelines for Examination in the EPO March 2024

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.

The availability of the general teaching of using neuro-fuzzy controllers in

the field of control engineering resulted 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 some technical properties of the spray coating process.
For example, if the desirable coating properties resulted from specific 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, these features would have had to be recited in the claim. The
description and figures as filed could have provided evidence that the
desirable coating properties are indeed achieved. As currently claimed, the
neuro-fuzzy controller is not adapted for the specific application of thermal
spray coating. There is no evidence of any particular technical effect which
is credibly achieved over the whole claimed scope other than that of
providing different process parameters 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 other
pieces of prior art (e.g. a public prior use or unwritten general technical
knowledge) 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 of
features (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 a
case 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 combined
with 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 of
these 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 to

make it likely or unlikely that the person skilled in the art, when faced
with the problem solved by the invention, would combine them – for
example, if two disclosures considered as a whole could not in
practice be readily combined because of inherent incompatibility in
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-21

disclosed 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 to
associate 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 of
the disclosure, see G-IV, 5.1 and G-VI, 1). In determining whether it
is permissible to combine a document with an item of prior art made
public 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 a
claim consists of a "combination of features", it is not correct to argue that
the separate features of the combination taken by themselves are known or
obvious and that "therefore" the whole subject-matter claimed is obvious.
However, where the claim is merely an "aggregation or juxtaposition of
features" and not a true combination, it is enough to show that the
individual 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 of
technical features is regarded as a combination of features if the functional
interaction between the features achieves a combined technical effect
which is different from, e.g. greater than, the sum of the technical effects of
the individual features. In other words, the interactions of the individual
features must produce a synergistic effect. If no such synergistic effect
exists, 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 essentially

that of an electronic switch. However, transistors interconnected to form a
microprocessor synergically interact to achieve technical effects, such as
data 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 or
sequentially, produces a new and unexpected joint therapeutic effect which
cannot be attained by the compounds independently of each other.
Part G – Chapter VII-22 Guidelines for Examination in the EPO March 2024

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 with
foreknowledge 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 must
seek to make a "real-life" assessment of this and other relevant factors.
The examiner has to take into account all that is known concerning the
background of the invention and give fair weight to relevant arguments or
evidence submitted by the applicant. If, for example, an invention is shown
to be of considerable technical value, and particularly if it provides a
technical 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 (and
not, for example, merely to an idea), in order to assess whether an
inventive step is present it is important for the examiner to bear in mind that
an 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 by

minute quantities of a particular compound. As soon as this insight
has been arrived at, the technical application comprising adding this
compound 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 of
that insight may both involve the use of the inventive faculty.
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-23

10. Secondary indicators

10.1 Predictable disadvantage; non-functional modification; arbitrary

choice
If an invention is the result of a foreseeable disadvantageous modification
of the closest prior art, which the skilled person could clearly predict and
correctly 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, a
mere 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 of
an 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 and
T 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 the
description. The unexpected effect must be based on the characterising
features of the invention, in combination with the known features of the
claim. 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 have
been obvious for a skilled person to arrive at something falling within the
terms of a claim, for example due to a lack of alternatives thereby creating
a "one-way street" situation, the unexpected effect is merely a bonus effect
which 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 the
unexpected 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 not
have 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

step, but evidence of immediate commercial success when coupled with
Part G – Chapter VII-24 Guidelines for Examination in the EPO March 2024

evidence of a long-felt want is of relevance provided the examiner is

satisfied that the success derives from the technical features of the
invention and not from other influences (e.g. selling techniques or
advertising).

11. Arguments and evidence submitted by the applicant

The relevant arguments and evidence to be considered by the examiner for
assessing inventive step may be either taken from the originally-filed patent
application 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 the
skilled person, having the common general knowledge at the effective filing
date in mind, and based on the application as originally filed, would derive
said effect as being encompassed by the technical teaching and embodied
by the same originally disclosed invention (G 2/21, Headnote II).

Any evidence submitted to prove a technical effect that can be taken into
account for the assessment of inventive step is assessed in accordance
with the principle of free evaluation of evidence. Such evidence may not be
disregarded solely on the ground that it is post-published (G 2/21).

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 is
allowable to reformulate the technical problem by including the aspect of
toxicity, since pharmaceutical activity and toxicity are related in the sense
that the skilled person would always contemplate the two aspects together.

The reformulation of the technical problem may or may not give rise to
amendment or insertion of the statement of the technical problem in the
description. Any such amendment is only allowable if it satisfies the
conditions listed in H-V, 2.4. In the above example of a pharmaceutical
composition, 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. For the assessment of
novelty, see G-VI, 7. If this selection is connected to a particular technical
effect, and if no hints exist leading the skilled person to the selection, then
an inventive step is accepted (this technical 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 with the assessment of inventive
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-25

step. For inventive step, it has to be considered 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.

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-matter
does not solve the specific problem to which the effect relates, but only the
more general problem of obtaining, for example, "a further product X" or "a
further process Y" (see T 939/92).

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 sufficient
to establish that the skilled person would have followed the teaching of the
prior art with a reasonable expectation of success. Likewise, a mere "try
and 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 when
embarking 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 right
non-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, 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 the
subject-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 and

non-obvious there is no need to investigate the novelty and
non-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 a
use of that product. In particular, analogy processes, i.e. processes which
themselves would otherwise not involve an inventive step, are nevertheless
patentable 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-26 Guidelines for Examination in the EPO March 2024

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 to
a 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 2024 Guidelines for Examination in the EPO Part G – Chapter VII-27

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 one

of 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 from

aluminium. A prior-art document discloses the same structure and
says that it is of light-weight material but fails to mention the use of
aluminium.

(ii) The invention differs from the known art merely in the use of
well-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 tension
of water, this property being known to be an essential one for
detergents.

(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 a
particular newly developed adhesive known to be suitable for
polymer-metal bonding.

(v) The invention consists merely in the use of a known technique in a

closely 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 an
industrial truck, such as a fork-lift truck, the use of this technique to
control the electric propulsion motor of the truck being already
known.
Part G – Chapter VII-28 Guidelines for Examination in the EPO March 2024

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 that
high-frequency power could also be used in conductive butt welding
with similar effect. However, if high-frequency power were used for
the continuous conductive butt welding of coiled strip but without
removing scale (such scale removal normally being necessary during
conductive welding in order to avoid arcing between the welding
contact and the strip), there is the unexpected additional effect that
scale removal is found to be unnecessary because at high frequency
the current is supplied in a predominantly capacitive manner via the
scale 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 and

controlling 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 such
an 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 the
tranquilliser, which intrinsically appeared to have no painkilling effect, the
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-29

analgesic effect of the painkiller was intensified in a way which could not
have been predicted from the known properties of the active substances.

3. Obvious selection?

3.1 Obvious and consequently non-inventive selection among a number

of 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 in

which 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 of
possibilities, and it is clear that these parameters could be arrived at
by 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 in

a 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 to
improve its thermal stability, and this characterising feature can be
derived merely by extrapolation on a straight-line graph, obtainable
from the known art, relating thermal stability to the content of
substance X.

(iv) The invention consists merely in selecting particular chemical

compounds or compositions (including alloys) from a broad field.

Example: The prior art includes disclosure of a chemical compound

characterised by a specified structure including a substituent group
designated "R". This substituent "R" is defined so as to embrace
entire ranges of broadly-defined radical groups such as all alkyl or
aryl radicals either unsubstituted or substituted by halogen and/or
hydroxy, although for practical reasons only a very small number of
specific examples are given. The invention consists in the selection
of a particular radical or particular group of radicals from amongst
those referred to as the substituent "R" (the selected radical or group
of radicals not being specifically disclosed in the prior-art document
Part G – Chapter VII-30 Guidelines for Examination in the EPO March 2024

since the question would then be one of lack of novelty rather than
obviousness). The resulting compounds:

(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 the
prior art, but these properties are ones which the persons
skilled in the art would expect such compounds to possess, so
that they are likely to be led to make this selection.

(v) The invention follows inevitably from developments in the prior art, in
such 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 a
particular compound in a series of known chemical compounds,
expressed in terms of the number of carbon atoms, there is a
consistently 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 this
member of the series, in addition to exhibiting the expected
enhanced insecticidal effect, proves also to have the unexpected
effect of being selective, i.e. of killing some insects but not others, it
nevertheless remains obvious.

3.2 Not obvious and consequently inventive selection among a number of

known 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 operation
of the process or the properties of the resulting product.

Example: In a process where substance A and substance B are

transformed at high temperature into substance C, it was known that
there is in general a constantly increased yield of substance C as the
temperature 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 was
considerably higher than expected.

(ii) The invention consists in selecting particular chemical compounds

or compositions (including alloys) from a broad field, such
compounds 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 the
selection of the substituent radical "R" from the total field of
possibilities defined in the prior disclosure. In this case, however, not
March 2024 Guidelines for Examination in the EPO Part G – Chapter VII-31

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 this
particular selection rather than any other in order to achieve the
advantageous 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. This
applies 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 prevent
the bottled drink from spurting out. A process involving the same steps but
in which no precautions are taken to shield the drink from the outside air
(because none are in fact necessary) would therefore be inventive.
Part H

Amendments and Corrections

March 2024 Guidelines for Examination in the EPO Part H – Contents a

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 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 After receipt of the first communication – Rule 137(3) II-2

2.3.1 Examples of the exercise of discretion under
Rule 137(3) II-3
2.3.1.1 Rule 137(3) in conjunction with Art. 83 II-3
2.3.1.2 Rule 137(3) in conjunction with Art. 123(2) II-4
2.3.1.3 Rule 137(3) in conjunction with Art. 84 – missing
essential feature II-4
2.3.1.4 Rule 137(3) in conjunction with auxiliary requests II-4

2.4 At an advanced stage of the proceedings II-4

2.5 Amendments filed in reply to a Rule 71(3)

communication II-4
2.5.1 Criteria for admitting such amendments II-4
2.5.2 Further course of proceedings II-5
2.5.3 Exceptional case where amendments must be
admitted II-5
2.5.4 Rule 137(4) applies to amendments filed at this stage II-6

2.6 Further requests for amendment after approval II-6

2.7 Late-filed requests after summons to oral

proceedings in examination II-7
2.7.1 Concept of "clear allowability" 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-8

3.3 Amendments occasioned by national rights II-9

3.4 Insistence on inadmissible amendments II-9

3.5 Late-filed requests in opposition proceedings II-10

Part H – Contents b Guidelines for Examination in the EPO March 2024

4. Amendments in limitation procedure II-10

5. Amendments required by a limitation of the

search under Rule 62a and/or Rule 63 II-10

6. Amendments in the case of non-unity II-11

6.1 Restriction to a single, searched invention II-11

6.2 Restriction to an unsearched invention II-11

6.3 No restriction to a single invention searched II-12

6.4 Further procedural aspects concerning Euro-PCT

applications II-13
6.4.1 Where the EPO does not perform a supplementary
search II-13
6.4.2 Where the EPO performs a supplementary search II-13

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) III-1
2.1.1 Rule 137(4) communication and response thereto III-2
2.1.2 Amendments withdrawn or superseded in the
Rule 137(4) period III-3
2.1.3 Rule 137(4) and oral proceedings III-4
2.1.4 Transitional provisions relating to Rule 137(4) III-4

2.2 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

2.5 Withdrawal of amendments/abandonment of subject

matter III-6

3. Auxiliary requests III-6

3.1 General principles III-7

3.1.1 Sequence of requests III-7
3.1.2 Obligation to give reasons III-7
3.1.3 Neither main nor auxiliary requests allowable III-7

3.2 In the search phase III-7

March 2024 Guidelines for Examination in the EPO Part H – Contents c

3.3 In examination proceedings III-8

3.3.1 Indication of the amendments made in the requests
and of their basis III-8
3.3.2 Admissibility of auxiliary requests III-8
3.3.2.1 Criteria for admissibility of auxiliary requests III-8
3.3.2.2 Timeliness and structure of auxiliary requests III-8
3.3.3 Preparing the decision III-9
3.3.4 Complete text for auxiliary request not yet available III-10
3.3.5 Complete text for auxiliary request available III-10
3.3.6 Applicant does not approve the text proposed for
grant III-10

3.4 In opposition proceedings III-10

3.4.1 Written procedure III-10
3.4.2 Oral proceedings III-11

3.5 In limitation proceedings III-11

3.5.1 General principles III-11
3.5.2 Written procedure III-12
3.5.3 Oral proceedings 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 place

pursuant to Art. 61 or Rule 78 in respect of certain
designated states III-14
4.3.1 Different text where a transfer of right takes place
pursuant to Art. 61 in examination proceedings III-14
4.3.2 Different texts where a transfer of the patent in
respect of certain designated states takes place in
opposition proceedings III-14
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 in examination proceedings III-14

4.4 Different texts where national rights of earlier date

exist III-15

4.5 Opposition proceedings where the claims as granted

are different for different contracting states III-15

5. Calculation of claims fees III-16

Chapter IV – Allowability of amendments IV-1

1. Introduction IV-1
Part H – Contents d Guidelines for Examination in the EPO March 2024

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 IV-1
2.2.1 Features described in a document cross-referenced
in the description IV-2
2.2.2 Missing parts of the description or missing drawings
filed under Rule 56 after the date of filing IV-3
2.2.3 Erroneously filed application documents or parts
under Rule 56a IV-3
2.2.4 Claims filed after the date of filing IV-4
2.2.5 Sequence listings filed after the date of filing IV-4
2.2.6 Priority documents IV-4
2.2.7 Citation of prior art in the description after the filing
date IV-5
2.2.8 Clarifications IV-5
2.2.9 Trade marks IV-5

2.3 Content of the application as "originally" filed –

special applications IV-5
2.3.1 Applications filed by reference to an earlier
application IV-5
2.3.2 Divisional applications IV-5
2.3.3 Applications resulting from a decision under Art. 61 IV-6
2.3.4 International applications 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-6

3.3 Version of the granted patent to be considered IV-7

3.4 Assessment of impermissible extension of the

protection conferred IV-7

3.5 Conflicts between Art. 123(2) and Art. 123(3) IV-8

3.6 Conflicts between Art. 123(3) and other requirements

of the EPC IV-8

4. Amendments relating to unsearched matter IV-9

4.1 Rule 137(5) IV-9

4.1.1 Rule 62a and/or Rule 63 cases IV-9
4.1.2 Subject-matter taken from the description IV-9

4.2 Euro-PCT applications IV-10

5. Compliance of amendments with other EPC

requirements IV-10
March 2024 Guidelines for Examination in the EPO Part H – Contents e

5.1 General principles IV-10

5.2 In examination proceedings IV-10

5.3 In opposition proceedings IV-11

5.4 In limitation proceedings IV-11

5.4.1 Art. 84 IV-12
5.4.2 Examination of the description and/or drawings IV-12
5.4.3 Points to be disregarded IV-12

Chapter V – Allowability of amendments –

examples V-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 the

description V-2

2.7 Bringing the description into line with amended

claims V-2

3. Amendments in claims V-2

3.1 Replacement or removal of features from a claim V-3

3.2 Inclusion of additional features V-3

3.2.1 Intermediate generalisations V-4

3.3 Deletion of part of the claimed subject-matter V-6

3.4 Further cases of broadening of claims V-7

3.5 Amendments relating to ranges V-8

4. Disclaimers V-8

4.1 Disclaimer disclosed in the application as originally

filed V-8

4.2 Disclaimers not disclosed in the application as

originally filed V-8
Part H – Contents f Guidelines for Examination in the EPO March 2024

4.2.1 The subject-matter to be excluded is not disclosed in

the application as originally filed (so-called
undisclosed disclaimers) V-8
4.2.2 The subject-matter to be excluded is disclosed in the
application 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-13

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 Admissibility VI-1

2.1.1 Admissibility in opposition and limitation proceedings VI-2
2.1.1.1 Errors in the description, claims and drawings VI-2

2.2 Allowability VI-2

2.2.1 Correction of description, claims and drawings VI-3
2.2.2 Missing parts of description, missing drawings or
correction of erroneously filed application documents
filed as corrections under Rule 139 VI-4

3. Correction of errors in decisions VI-4

3.1 Admissibility VI-5

3.2 Allowability of the correction of bibliographic data VI-5

3.3 Correction of the decision to grant 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-7

6. Errors in publication VI-8

March 2024 Guidelines for Examination in the EPO Part H – Contents g
March 2024 Guidelines for Examination in the EPO Part H – Chapter I-1

Chapter I – The right to amend

A European patent application or European patent may be amended in
examination, opposition and limitation proceedings. With regard to
amendments filed in such proceedings, there are a number of important
aspects to consider. Firstly, amendments must be admissible, i.e. they
must meet the requirements for being admitted into the proceedings (see
H-II, H-III).

Secondly, amendments must be allowable, which means, in particular, that

they must not:

(i) add to the application or patent subject-matter which was not

disclosed 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 is
dedicated to the correction of errors.
March 2024 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 type
of procedure (examination, opposition or limitation) and on the stage of the
proceedings, as detailed in the following sections.

2. Admissibility in the 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 (not Rule 137(1)
via the PCT), it is not possible for the applicant to amend the application
before receiving the European search report (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 the
international phase under Art. 19 PCT and/or Art. 34(2)(b) PCT or by filing
amendments 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, Rule 137(2)
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 from
the 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 (see
E-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 the
description, 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: Rule 71(1)

(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 70a
does not apply and the applicant is not required to respond to the
search opinion), or
Part H – Chapter II-2 Guidelines for Examination in the EPO March 2024

(iii) 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 prosecution
of further amendments proposed by the applicant is within the discretion of
the examining division. Giving the examining division this discretion is
intended to ensure that the examination procedure is brought to a
conclusion in as few actions as possible (see C-IV, 3). In exercising its
discretion the examining division must consider all relevant factors; in
particular, 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 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 communication under Art. 94(3)
to which the search results under Rule 164(2) are annexed (see also
H-II, 6.4.1).

If an amendment is admitted, subsequent proceedings are based on the

description, 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 will
take into account the circumstances of each individual case and the stage
of 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 removed
by 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, the
more 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).
March 2024 Guidelines for Examination in the EPO Part H – Chapter II-3

On the other hand, amendments limiting a claim which is already

considered allowable are normally admitted. The same applies to
amendments 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 Art. 94(3)

communication, they are always admitted, provided they do not give rise to
some new deficiency.

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 reasonable
approach, 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 right
to comment according to Art. 113(1)).

Further limitations may apply after a remittal by a board of appeal under Rule 62a, 63, 137(5)
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 a
person 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 satisfaction
of the examining division that the application contains enough information
to enable the person skilled in the art to carry out the invention; for example
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.
Part H – Chapter II-4 Guidelines for Examination in the EPO March 2024

2.3.1.2 Rule 137(3) in conjunction with Art. 123(2)

The examining division has raised an objection under Art. 123(2) indicating
that a certain feature introduced into the claims extends the subject-matter
of the application as filed.

Unless the applicant is able to demonstrate to the satisfaction of the

examining 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

feature
The examining division has raised an objection under Art. 84 that the
claims are missing an essential feature (see F-IV, 4.5).

Unless the applicant is able to demonstrate to the satisfaction of the

examining 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.

2.4 At an advanced stage of the proceedings

Rule 137(3) When the applicant files an extensively revised request to replace the text
of the application on the basis of which a patent could be granted, 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 to bring the description into line
with that version. Normally only those amendments 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 time that 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 the request under
Rule 137(3).

2.5 Amendments filed in reply to a Rule 71(3) communication

Rule 71(6) If, 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/or
a correction of errors, the procedure is as defined in C-V, 4. This applies
regardless of whether the request is an explicit request for amendment or is
drafted 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 the
admissibility of late-filed amendments in examination. The particular case
to which that decision relates arose when the rules were differently
March 2024 Guidelines for Examination in the EPO Part H – Chapter II-5

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 the
applicant has already had at least one opportunity to amend the application
and the examining division has already completed substantive examination
of the application (see T 1064/04).

In particular, applying the principles of G 7/93 to amendments filed in Rule 71(3)

response to the communication under Rule 71(3) (see C-V, 1 to C-V, 3) Rule 137(3)
means that this communication does not constitute an opportunity for the
applicant 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 this
stage of the proceedings, the substantive examination has already been
completed and the applicant has had the opportunity to amend the
application. Therefore normally only those amendments which do not
appreciably delay the preparations for grant of the patent will be admitted
under Rule 137(3).

It is, however, appropriate to admit separate sets of claims for one or more
designated 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 prior
consultation and agreement of the applicant (C-V, 1.1) does not amount to
a 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 these Rule 71(6)
amendments 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 patent
pursuant to Art. 97(1).

Where amendments or corrections are not admitted, or where they are Rule 71a(2)
admitted but not considered allowable, examination will be resumed (see
C-V, 4.7).

2.5.3 Exceptional case where amendments must be admitted

If the application was one of the exceptional cases (i), (ii) or (iii) mentioned Rule 137(3)
in H-II, 2.2 and no communication under Art. 94(3) has preceded the
communication 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, a
second communication according to Rule 71(3) is issued based on the text
as amended (see C-V, 4.6).
Part H – Chapter II-6 Guidelines for Examination in the EPO March 2024

However, if the examining division is of the opinion that the amendments

are not allowable (a finding of inadmissibility with regard to these
amendments not being possible), the examination procedure is normally
resumed 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) must
satisfy the requirements of Rule 137(4) by identifying the amendments and
indicating the basis for them in the application as filed (see H-III, 2.1 and in
particular 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, the
examining 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, the
examining 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 the
amendments and will proceed accordingly as indicated in C-V, 4.

2.6 Further requests for amendment after approval

Rule 71(5) Once the applicant has approved the text communicated to him pursuant to
Rule 137(3) Rule 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 of

Rule 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 division

must 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 interest
in bringing the examination procedure to a close by the issue of a decision
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 in
a reasonable period of time, and whether the amendments are allowable. If
either of these criteria is not satisfied, the request for amendments is
refused by the division in the exercise of its discretion according to
Rule 137(3).

Refusal of amendments must be reasoned, and both Art. 113(1) and

Art. 116(1) must be observed (see C-V, 4.7.1). It must be shown that the
conditions defined in G 7/93 are not met. This means that arguments must
March 2024 Guidelines for Examination in the EPO Part H – Chapter II-7

be given as to why the amendments are not minor in nature but in fact
necessitate 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 Rule 140
postal service for transmittal to the applicant, the examining division is
bound 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, this
corresponds to the date on which the centrally generated Form 2006,
"Decision to grant a European patent pursuant to Art. 97(1) EPC", is
forwarded to the postal service. This date is shown at the bottom right-hand
corner of Form 2006. The examining division is no longer competent to
decide on a request for amendments or corrections under Rule 139 if the
filing of the request and the completion of the proceedings occur on the
same 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(1),
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 the
oral 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 a
reason 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 reasons
for filing the request late. In the absence of such reasons, and if the
applicant 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.

2.7.1 Concept of "clear allowability"

The examining division will apply the criterion of "clear allowability" in
exercising its discretion under Rule 137(3) for treating requests filed after
the final date set in accordance with Rule 116(1) without proper justification
(T 153/85).

These late-filed claims will only be admitted into the proceedings if they are
clearly allowable. This means that it must be immediately apparent to the
examining division that the amendments successfully overcome the
objections without giving rise to new ones (prima facie assessment).
Part H – Chapter II-8 Guidelines for Examination in the EPO March 2024

For example, late-filed requests will not be admitted if they do not clearly
meet the requirements under Art. 123(2) or Art. 84. Likewise, late-filed
requests may be rejected if the newly defined subject-matter does not
constitute 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, the
examining division must take into account the reasons given by the
applicant 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 that
the 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-matter
does not clearly meet the requirements of the EPC (for cases where the
applicant does not attend the oral proceedings, see H-III, 3.3.3 and
E-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, and
E-VI, 2.2; see also T 98/96 with regard to opposition appeal proceedings).

3. Admissibility in opposition procedure

3.1 Amendments in reply to the notice of opposition

Rule 80 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 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 to remove added subject-matter.
Opposition proceedings cannot be used merely 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 ground for opposition. However, the
replacement of one independent claim as granted by multiple, e.g. two,
independent claims each directed to a 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 in
amended 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 the
requirements of the EPC and that the amendments are considered
March 2024 Guidelines for Examination in the EPO Part H – Chapter II-9

necessary and appropriate. In particular, if one part of a claim has been

amended, it may be necessary or appropriate to amend other parts of the
claim as well.

Moreover, where a "clarification" can be considered as a limitation of the

claim, it would be admissible under Rule 80 and could form the basis for
maintaining the patent in amended form, provided the other requirements of
the 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 of
interpreting 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 division

and 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 (in
written 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 (see D-V, 5).

In the absence of any amendments submitted by the patent proprietor with

a view to meeting the grounds for opposition, there is no possibility to make
any other amendments (see for example T 223/97). Publication errors and
exceptionally 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 by
national rights of earlier date are admissible pursuant to Rule 138 (see also
G-IV, 6, H-III, 4.4 and H-III, 4.5).

3.4 Insistence on inadmissible amendments

If the patent proprietors request amendments going beyond those
permissible under Rule 80 (see H-II, 3.1 and H-II, 3.2), they are invited to
withdraw them. If they then maintain their request, it is not admitted (for the
reasoning 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 in
particular does not comprise amendments not complying with Rule 80, the
Part H – Chapter II-10 Guidelines for Examination in the EPO March 2024

decision 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 the
amendments cannot be admitted, the opposition division explains to the
patentee that revocation of the patent is to be expected solely for reasons
of 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 is
made to D-X, 4 and D-X, 10.

5. Amendments required by a limitation of the search under Rule 62a

and/or Rule 63
Rule 63(3) Where the search was limited to certain subject-matter by application of
Rule 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.

Rule 62a(2) 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 to
remove 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 the

examining 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 not
justified, 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
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 and
B-VIII, 4.2). The applicant will then have to confirm maintenance of these
amendments formally on entry into the examination phase (see A-V, 2.2).
March 2024 Guidelines for Examination in the EPO Part H – Chapter II-11

6. Amendments in the case of non-unity

6.1 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 can
convince the examining division that the objection was not justified.

If the claims have been restricted to a single searched invention, the

examination can be continued as for a unitary application but limited to that
invention (see C-III, 3). If the objection is withdrawn in view of the
arguments put forward by the applicant, an additional search may be
necessary (see C-IV, 7.3) in order for the examination of the claimed
invention to be continued.

However, if in response to a negative opinion concerning that invention the

applicant later amends the claims to switch to a different searched
invention, the division will exercise its discretion under Rule 137(3) and
refuse to admit the amendments since only one invention in each
application can be examined for conformity with the requirements of the
EPC (see G 2/92 and T 158/12).

6.2 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 searched
inventions. 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 the
applicant'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 the
originally filed claims.

If the application is a Euro-PCT application (see also H-II, 6.4) the

examining division, depending on the case:

– either objects under Rule 164(2)(c) to the restriction of the claims to

an 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).
Part H – Chapter II-12 Guidelines for Examination in the EPO March 2024

In both cases, if the applicant declines to limit the claims to a searched

invention, 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 the

communication 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 a
communication under Rule 164(2)(b). In this case, the examining division
issues a communication under Art. 94(3) and Rule 71(1) and (2) inviting the
applicant 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 the

prohibition on pursuing an application for subject-matter for which no
search fees have been paid applies to inventions; it does not apply to
features which were originally claimed with a different invention and had not
been searched, but which were originally disclosed in combination with the
searched invention or group of inventions (see T 998/14).

6.3 No restriction to a single invention searched

If in response to the search opinion the applicant does not restrict the
application to a single invention searched, the objection of lack of unity
raised at the search stage will be reviewed and if the examining division
considers that it remains valid, a first communication repeating the
lack-of-unity objection raised in the search opinion will be issued.

In Rule 164(2) cases, a lack of unity objection is addressed in the

communication under Rule 164(2)(b) (see also 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, 6.2.

If the claims have not been simply restricted, but have instead, or
additionally, been amended, such amendments can often result in the
previously raised lack-of-unity objection no longer being valid, or in the
arguments 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.
March 2024 Guidelines for Examination in the EPO Part H – Chapter II-13

6.4 Further procedural aspects concerning Euro-PCT applications

6.4.1 Where the EPO does not perform a supplementary search

Where the EPO does not perform a supplementary search, the application
must 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, 6.1 to H-II, 6.3) then apply mutatis mutandis (see
also E-IX, 4.2).

In Rule 164(2) cases, a further communication according to Art. 94(3) and

Rules 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 6.2).

6.4.2 Where the EPO performs a supplementary search

Where the EPO performs a supplementary search on an application which
is considered to lack unity, the applicant will be invited to pay additional
fees, and the supplementary search report will be established for those
inventions for which a search fee has been paid. The application must then
be limited to one of the inventions searched in the supplementary search.
The above principles (H-II, 6.1 to 6.3) then apply mutatis mutandis (see
also E-IX, 4.2).
March 2024 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 the
basis 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 and
procedure 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 the Rule 137(4)
basis for them in order to enable the division to assess compliance of the
amendments with the provisions of Art. 123(2). To this end, the division
may request that amendments have to be indicated either with respect to
the immediate previous amendments in the sequence or with respect to the
application as filed. The requirement to indicate amendments is to be
understood as an opportunity for the applicant to provide convincing
arguments to the division as to why the amendment(s) is/are directly and
unambiguously derivable from the application as filed. These arguments
are particularly important for the outcome of the division's assessment of
Art. 123(2) where literal support for the amendment(s) is not present in the
application as filed.

The requirement that the basis for amendments be indicated is met if, on
consulting those parts of the application indicated, it is not necessary to
look 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 not
considered sufficient. This requirement also applies in cases where the
applicant requests the examining division to amend the application (see
H-III, 2.4).

Whether the requirements of Rule 137(4) are met is assessed

independently of whether the amendments in question comply with
Art. 123(2). For example, the applicant may indicate that a particular
amendment 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, the
requirements of Rule 137(4) are met, irrespective of whether the
amendment based on that technical feature is allowable according to
Art. 123(2).

Where the application was not filed in an official language of the EPO, in Rule 7
the absence of evidence to the contrary, for the purpose of assessing
compliance with Art. 123(2) the EPO assumes that any translation of the
application as filed is accurate. Consequently, in order to comply with
Part H – Chapter III-2 Guidelines for Examination in the EPO March 2024

Rule 137(4) it is sufficient to indicate the basis of an amendment in the

translation of the application as filed.

2.1.1 Rule 137(4) communication and response thereto

Rule 137(4) If the amendments and/or their basis cannot be properly identified such that
compliance with Art. 123(2) cannot be assessed, the examining division
notes a failure to meet either requirement of Rule 137(4). It consequently
issues a communication requesting the correction of this deficiency within a
period 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 the
PCT 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 have
since 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 be
withdrawn, because the applicant is considered not to have replied to the
communication 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 to

Rule 71(3) and the requirements of Rule 137(4) are not satisfied in respect
of them, the examining division may send a Rule 137(4) communication.
Thereafter, if the applicant replies in time, the examining division will then
decide 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 2024 Guidelines for Examination in the EPO Part H – Chapter III-3

2.1.2 Amendments withdrawn or superseded in the Rule 137(4)

period
If the applicant replies in time to the Rule 137(4) communication by
withdrawing 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 to
Rule 137(4). However, where the withdrawal results in the re-introduction of
subject-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 of
amendments which are superseded by further amendments filed in the
one-month period. For example:

3 June 2020 Application filed: 10 claims

25 March 2021 Extended European search report drawn up

21 August 2023 Amended claims 1-10 filed in examination

proceedings, no basis indicated

6 November 2023 Examining division sends a Rule 137(4)

communication in respect of amended claims 1-10
filed on 21 August 2023

16 November 2023 Amended claims 6-10 filed

6 December 2023 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 6 December 2023, indicate the basis for
amended claims 1-5 as filed on 21 August 2023 and for amended
claims 6-10 as filed on 16 November 2023, and failure to do so results in
the application being deemed to be withdrawn according to Art. 94(4). It is
not necessary for the applicant to indicate the basis for the superseded
amendments to claims 6-10 filed on 21 August 2023. Note in particular that,
where the basis for the amendments to claims 6-10 filed on 16 November
2023 is not indicated by 6 December 2023, then no further Rule 137(4)
communication is sent in respect of these amendments and the application
is deemed to be withdrawn on expiry of the one-month period
on 6 December 2023.
Part H – Chapter III-4 Guidelines for Examination in the EPO March 2024

2.1.3 Rule 137(4) and oral proceedings

A Rule 137(4) communication will not be sent where the amendments in
question are filed during oral proceedings. Nonetheless, it is a requirement
of Rule 137(4) that amendments and their basis be identified. If the
applicant 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 in
accordance 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 the

invitation according to Rule 116(2) will be dealt with in those oral
proceedings as indicated above. However, if the oral proceedings are
cancelled or applicants do not attend and the procedure is continued in
writing after the oral proceedings are held in their absence, a Rule 137(4)
communication may be sent by the examining division in respect of those
amendments.

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 the
following 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 or

after 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 is

drawn 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 filing

replacement 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 filing
replacement pages. Where replacement pages are filed, the applicant or
patent proprietor is advised, in the interests of procedural efficiency, to
identify clearly all amendments made, and indicate on which passages of
the original application these amendments are based. Where whole
paragraphs have been added or deleted, it is not necessary to renumber
the paragraphs throughout the entire application or patent.

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).
March 2024 Guidelines for Examination in the EPO Part H – Chapter III-5

Amendments should preferably be identified using functions available in a

text 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 the
requirements of Rule 137(4), provided that clean copies are free from
handwritten 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 for
amendments 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 is
advisable 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 by
using 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 to
take account of the objections raised. The annotated copies (not the
working 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 the
objections. 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 to
submitting replacement pages – to indicate on this copy, separately from
the comments of the examining division (typewritten and in such a way as
to be well legible after photocopying), any amendments to be made to the
pages concerned. Opponents may also be invited to submit their comments
in 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 normally
objected 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.

2.4 Amendments made by the EPO at the request of a party

Where necessary, deficient documents may also be amended at the
request 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
Part H – Chapter III-6 Guidelines for Examination in the EPO March 2024

summarising the amendments to be undertaken by the EPO. It is, however,

at the discretion of the examining division to decide whether the number of
changes 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 to
the 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 a
main 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 themselves
to that request, the text is not to be considered as a true auxiliary request
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 applicants
by 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
March 2024 Guidelines for Examination in the EPO Part H – Chapter III-7

be mentioned in the minutes of the telephone conversation or, in the case

of 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 in
a clear order and must not be worded such that they leave it for the
examining division to identify and speculate on the intended text of the
claims (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 another
invention (see C-III, 3.5 and H-II, 6).

Under Art. 113(2), the EPO decides upon European patent applications or
patents only in the text submitted to it, or agreed, by applicants or
proprietors. These parties must therefore clearly indicate the text they are
proposing or, if they are submitting more than one text, the sequence in
which they want the EPO to consider them. Otherwise the division does not
know which version to base its decision on and would ultimately have to
refuse 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 any
of 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 for
rejecting/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 not
admissible before the applicant receives the European search report, and
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).
Part H – Chapter III-8 Guidelines for Examination in the EPO March 2024

3.3 In examination proceedings

3.3.1 Indication of the amendments made in the requests and of their

basis
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, a
communication 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 or
requests 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 the
procedure.

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 in
fact 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 oral
proceedings was issued as the first action.

For late-filed requests, in addition to the criteria set out in H-III, 3.3.2.1, the
subject-matter of the new claims must not diverge considerably from the
claims already filed. The requests normally need to represent a convergent
development, i.e. the subject-matter of the auxiliary requests constitutes a
sequential limitation in the direction of an intended invention and does not
make use of different characteristics in order to branch out in different
directions (T 1273/04). In particular, the applicant cannot shift to the
examining division the responsibility for defining the subject-matter of the
application by filing a large number of unstructured requests or requests
involving different variants: this leads to the requests not being admitted.
March 2024 Guidelines for Examination in the EPO Part H – Chapter III-9

3.3.3 Preparing the decision

If the examining division is able to allow an auxiliary request (but not the
main request or any higher-ranking auxiliary requests), it will inform the
applicant 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 a

good starting point for an allowable request, but it is considered expedient
to issue a communication under Art. 94(3), a brief indication is given of the
essential reasons for the non-allowability or non-admissibility of the subject-
matter of the higher-ranking requests, and a suggestion is provided as to
the most promising request (see C-III, 4.1.2).

Care needs to be taken where oral proceedings have been specifically

requested in cases where the examining division has not allowed the main
request: the applicant must be summoned to oral proceedings even if the
examining division considers one of the auxiliary requests to be patentable.
In such cases it may be appropriate to ask applicants in a telephone call
whether, in view of the examining division's intention to issue a
communication under Rule 71(3) for the allowable auxiliary request, they
would be prepared either to withdraw the request for oral proceedings for
the main request or to replace the main request with the allowable auxiliary
request.

During oral proceedings, the division addresses the main request and
decides on the admissibility of the auxiliary requests, if any, filed in reply to
the 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 higher-
ranking 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 oral
proceedings (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).

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 the
Part H – Chapter III-10 Guidelines for Examination in the EPO March 2024

applicant/representative. A decision to refuse the application in these

circumstances must not take the applicant by surprise (E-III, 8.3.3.1 and
E-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 the
reasons on which the refusal of the higher-ranking requests is based (see
also C-V, 1.1). Where appropriate, this may be done by reference to earlier
communications. If applicants approve this proposed text, then in
accordance with Rule 71(3) they indicate this by filing the translations of the
claims 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, the
application 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 and
evidence 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 to

maintain one or more unallowable higher-ranking requests, an interlocutory
decision is issued. This decision must include the finding that the patent
and the invention to which it relates, as amended in accordance with the
allowable auxiliary request, meet the requirements of the EPC. It must also
set out the reasons, based on grounds and evidence already
March 2024 Guidelines for Examination in the EPO Part H – Chapter III-11

communicated to the parties, for refusing the higher-ranking requests and

for allowing the lower-ranking request.

3.4.2 Oral proceedings

If the opposition division is able to allow an auxiliary request but not the
main or higher-ranking auxiliary requests, the chair informs the parties
(possibly after interrupting the proceedings) which request is allowable and
that the higher-ranking request(s) is/are not allowable (and on which
grounds they are not allowable), ensuring beforehand that the parties have
already 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/are
not allowable

(b) in respect of the allowable auxiliary request, the amended patent and
the 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, the
division 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 of
filing amendments in limitation proceedings (see D-X, 4.3 and D-X, 4.5).

The procedure to be applied, subject to any request for oral proceedings, is

slightly 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 no
longer leave the requester the option of having the main request rejected
with 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;
Part H – Chapter III-12 Guidelines for Examination in the EPO March 2024

(b) if an auxiliary request is allowable, but not the main request (and
possibly other higher-ranking requests), proprietors will be informed
of the reasons in a communication under Rule 95(2) and invited to
abandon the non-allowable request(s); if they do not do so, the
request 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 the
examining division will need to set out the reasons why none of the
requests 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 division
also informs the requester what amendments must be made to the patent
specification documents to bring them into line (Art. 105b(1) and
Rule 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 and
to 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 to

comply with the examining division's request that they file documents
corresponding to the allowable auxiliary request, the request for limitation
must be rejected (Art. 105b(2) and Rule 95(4)). The decision must give the
reasons for not allowing the higher-ranking request(s) and must point out,
as regards the allowable auxiliary request, that the requester failed to
comply with the division's request to submit a text enabling the patent to be
limited on the basis of the allowable request.

3.5.3 Oral proceedings

If the examining division is able to allow an auxiliary request but not the
main or higher-ranking requests, the chair informs the requesters (possibly
after interrupting the proceedings) which request is allowable and why the
higher-ranking request(s) is/are not. The requesters will then normally be
asked if they are prepared to convert the allowable auxiliary request into a
main request. The division cannot however insist on the requester making
such a declaration.
March 2024 Guidelines for Examination in the EPO Part H – Chapter III-13

If, despite the existence of an allowable text, the requester continues to

maintain an unallowable higher-ranking request, the request for limitation
shall be rejected (Rule 95(4)). The division will issue a decision giving the
reasons for not allowing the higher-preference requests and pointing out
that, as regards the allowable auxiliary request, the requester failed to
comply 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 of
unity of the European patent application/patent relate only to EPC
contracting states. However, where there are different text versions for the
contracting states, the applicant may determine which one applies to the
respective extension/validation state.

4.1 Dealing with different texts in examination

If the examining or opposition division considers that the description and
drawings are so inconsistent with any set of claims as to create confusion,
it will require the applicant or proprietor to amend the description and
drawings to remedy this. If the applicant or proprietor voluntarily proposes
such an amendment the examining or opposition division will admit it only if
it considers this necessary. In particular, different descriptions and
drawings will be required only if it is not possible to set out clearly in a
common description which subject-matter is to be protected in the different
contracting states. For adaptation of the description in the case of national
rights 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 same
description and drawings, or two or more sets of claims each supported by
different 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.

4.2 Different text in respect of the state of the art according to

Art. 54(3) EPC and Art. 54(4) EPC 1973
If the EPO notes that in respect of one or more of the designated
contracting states the content of an earlier European patent application
forms part of the state of the art pursuant to Art. 54(3), two situations can
arise:

(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)
Part H – Chapter III-14 Guidelines for Examination in the EPO March 2024

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 of
Rule 87 EPC 1973 as implementing regulations thereto. Here, if
conflicting prior art gives rise to different texts of the claims for
different contracting states and if the relevant designation fee(s) for
the 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 the
state 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, the
conflicting 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 no
provision 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 to

Art. 61 or Rule 78 in respect of certain designated states

4.3.1 Different text where a transfer of right takes place pursuant to

Art. 61 in examination proceedings
Art. 61(1)(b) If by a final decision pursuant to Art. 61 it is adjudged that a third party is
Rule 17 entitled to the grant of a European patent, the original European patent
Rule 18(1) and (2) application must contain, "where appropriate", for the designated
contracting states in which the decision was taken or recognised or must be
recognised on the basis of the Protocol on Recognition, claims, a
description and drawings which are different from those for the other
designated 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 of

certain designated states takes place in opposition proceedings
Rule 78(2) Where a third party has, in accordance with Art. 99(4), replaced the
previous 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 and
drawings which are different from those for the other designated contracting
states (see also D-VII, 3.2). However, Rule 80 applies to amendments by
each 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 in
examination proceedings
The substance of H-III, 4.3.2 applies mutatis mutandis (see also D-I, 6,
third paragraph and D-VII, 3.2).
March 2024 Guidelines for Examination in the EPO Part H – Chapter III-15

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. 139(2)
(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 ground
for revocation. These rights represent exceptions to the uniformity of
European substantive patent law. Where national rights exist, therefore, the
applicant 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 a
particular (designated) contracting state, it is appropriate to admit separate
claims for the contracting state in question. The evidence must be in the
form of a specification or, where applicable, a copy of the utility model or
utility 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 ground

for 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 the
application/patent to the extent required to overcome the effect of the
national 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 other
requirements of the EPC. The same applies to a separate description
(see H-III, 4.1).

Moreover, in general, there is no justification for a separate description.

However, at a suitable point in the preamble to the description, preferably in
a 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 the
reasons set out in H-III, 4.2 to H-III, 4.4, the proprietor might wish to bring
the claims into line either by applying a limitation already introduced for one
Part H – Chapter III-16 Guidelines for Examination in the EPO March 2024

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) (and
Rule 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.
March 2024 Guidelines for Examination in the EPO Part H – Chapter IV-1

Chapter IV – Allowability of amendments

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 the
procedure. After an amendment has been admitted into the procedure, the
competent department must then decide whether the amendment is
allowable, i.e. whether it satisfies the requirements of the EPC. It is
important to note that an admissible amendment is not automatically
allowable.

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 must
of 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 than
references to the prior art, see H-IV, 2.2.7), the drawings or the claims 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 the
application as filed, which would give him an unwarranted advantage and
could be damaging to the legal security of third parties relying on the
content 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 of
matter 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 and
unambiguously, using common general knowledge and also taking into
account any features implicit to a person skilled in the art in what is
expressly mentioned in the document, from the disclosure of the application
as filed. Literal support is, however, not required by the wording of
Art. 123(2) (see T 667/08).

The term "implicit disclosure" means no more than the clear and
unambiguous consequence of what is explicitly mentioned in the
application as filed. Thus, the common general knowledge must be taken
Part H – Chapter IV-2 Guidelines for Examination in the EPO March 2024

into account in deciding what is clearly and unambiguously implied by the

explicit disclosure of a document. However, the question of what may be
rendered obvious by that disclosure in the light of common general
knowledge is not relevant to the assessment of what is implicitly disclosed
by that document (T 823/96, T 1125/07).

When assessing the conformity of the amended claims with the

requirements 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 technical
audience. In particular, the examining division needs to avoid
disproportionally focusing on the structure of the claims as filed to the
detriment of the subject-matter that the skilled person would directly and
unambiguously derive from the application as a whole.

Furthermore, the assessment of the requirements of Art. 123(2) is made

from the standpoint of the skilled person on a technical and reasonable
basis, avoiding artificial and semantic constructions (T 99/13).

2.2.1 Features described in a document cross-referenced in the

description
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 under
particular conditions that such features can be introduced by way of
amendment 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 the
invention 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 the
disclosure of the reference document.

Moreover, documents not available to the public on the date of filing of the
application 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
at the EPO as the receiving Office, on or before the date of filing of
the application; and
March 2024 Guidelines for Examination in the EPO Part H – Chapter IV-3

(b) the document was made available to the public no later than on the
date 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
Rule 56 allows the applicant to file missing drawings or parts of the Rule 56
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 the missing parts were
"completely contained" in the priority document (see C-III, 1 and A-II, 5).
Rule 56(3) applies only at the filing stage of the application. At later stages
of the procedure it is not permissible to rely on the priority documents to
correct or amend 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.

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 Rule 56a
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 of
filing, under Rule 56a(4), redating is avoided if the correct documents or
parts 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 the
application 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 as
elected or designated Office is possible under Rule 82ter PCT.

Correct application documents or parts allowed under Rule 56a(2) and

Rule 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). If erroneously filed
Part H – Chapter IV-4 Guidelines for Examination in the EPO March 2024

application documents or parts remain in the application under Rule 56a(4),

they are part of the application as filed (Art. 123(2)).

2.2.4 Claims filed after the date of filing

Rule 58 Claims filed after the date of filing under Rule 58 are never considered to
be 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 requirements
of Art. 123(2), according to the same practice and standards as established
in examination for amendments filed in other phases of the procedure
(see H-V).

2.2.5 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 the
specification (see the notice from the EPO dated 9 December 2021,
OJ EPO 2021, A97, point 15).

Pages and electronic files disclosing sequences or constituting a non-

standardised sequence listing which were filed at the date of filing are an
integral part of the application as originally filed and are treated like any
other parts of the description.

A subsequently filed standardised sequence listing may contain only the

sequence information – in a standardised form – already contained in the
original application, and in particular the number of sequences and their
numbering needs to be the same as in the original description (see the
notice from the EPO dated 9 December 2021, OJ EPO 2021, A97). To this
end the applicant must file a statement confirming that the subsequently
filed standardised sequence listing does not include matter which goes
beyond the content of the application as originally filed (Art. 2(2) of the
decision of the President dated 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).

A subsequently filed standardised sequence listing is not to be examined

for compliance with the requirements of Art. 123(2), as it is not part of the
description.

Without prejudice to Rule 30, a sequence listing forming part of the

description 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 the
notice from the EPO dated 9 December 2021, OJ EPO 2021, A97,
point 10).

2.2.6 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
March 2024 Guidelines for Examination in the EPO Part H – Chapter IV-5

(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, 2.2.3). For correction of errors, see H-VI, 4.

2.2.7 Citation of prior art in the description after the filing date
There is normally no objection to an applicant introducing, by amendment, Art. 123(2)
further information regarding prior art which is relevant; indeed this may be
required by the examining division (see F-II, 4.3 and F-III, 8).

2.2.8 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 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, the
examining division needs to be particularly careful to ascertain that the
amendment does not conflict with Art. 123(2). The composition of a trade-
marked 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 by
reference 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 to
the previously filed application includes the claims

(ii) at the time of filing, file a new set of claims together with an indication
that the description and any drawings are filed by reference to a
previously filed application

(iii) when filing the European application, indicate the reference to a

previously 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 fulfil the requirements of Art. 123(2) (see H-IV, 2.2.4).

2.3.2 Divisional applications

Under Art. 76(1), the subject-matter of a divisional application may not
extend beyond the content of the parent application as originally filed.
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).
Part H – Chapter IV-6 Guidelines for Examination in the EPO March 2024

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 the
applicant 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 provisions
of 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-matter
extending 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 is
contained 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 those
originally 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.

3. Allowability of amendments under Art. 123(3)

3.1 Basic principles

Art. 69(2) The European patent as granted or as amended in opposition, limitation or
revocation proceedings determines retroactively the protection conferred by
the European patent application.

Opposition proceedings will frequently give rise to amendments to the

claims, following from grounds for opposition raised under Art. 100.
Reasoned requests filed independently by proprietors of the patent for an
amendment 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.

Art. 123(3) In such cases the claims of the European patent may not be amended in
such a way as to extend the protection conferred by the patent.

Art. 123(3) is directly aimed at protecting the interests of third parties by

prohibiting any broadening of the claims of a granted patent, even if there is
a basis for such broadening in the application as filed (see G 1/93,
Reasons 9).

3.2 Protection conferred by the patent as granted

Art. 69(1) The extent of protection conferred by a European patent is determined by
the claims. Nevertheless, the description and drawings are to be used to
interpret the claims.
March 2024 Guidelines for Examination in the EPO Part H – Chapter IV-7

The Protocol on the Interpretation of Art. 69, which is, pursuant to

Art. 164(1), an integral part of the EPC, specifies how Art. 69 is to be
interpreted.

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 this
way 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 and
any connected amendments to the description and drawings in the course
of opposition proceedings, such as a change in the technical features of the
invention, must be examined to determine whether such amendments
could result in the extension of the subject-matter beyond the content of the
application as originally filed (Art. 123(2)) or in the extension of the
protection conferred (Art. 123(3)).

If, in view of Art. 84, the application documents have been adapted to
amended 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 be
reinserted either into the patent specification or into the claims as granted
without infringing Art. 123(3). 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.

The requirements of Art. 123(2) and Art. 123(3) have to be dealt with
separately:

(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, is
based 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 the
Interpretation 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 amount
outside of that range. An amendment restricting the breadth of that
component, for instance by narrowing down a generic class or a list of
Part H – Chapter IV-8 Guidelines for Examination in the EPO March 2024

chemical compounds defining that component, has the consequence of

limiting the scope of this implicit proviso. However, a composition which is
defined as comprising the components indicated in the claim is open to the
presence 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 of
broadening the scope of protection of that claim, with the consequence that
in opposition/appeal proceedings such amended claim may extend the
protection conferred by the granted patent (Art. 123(3)) (see T 2017/07 and
T 287/11). Restricting the breadth of the component means that certain
materials are no longer explicitly limited by the claim and therefore can be
present 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 the
application 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 can
be 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
subject-matter of the claimed invention, merely limits the protection
conferred by the patent as granted by excluding protection for part of the
subject-matter of the claimed invention as covered by the application as
filed, this feature may be maintained (see G 1/93). The technical
significance of a feature in a claim is governed by its contribution to the
technical definition of the claimed subject-matter, and that contribution is to
be 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
Art. 123(3) 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 fact
define a "method for treatment of the human or animal body by therapy or
surgery 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) and
123(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 "method
features" would be contrary to Art. 123(3) (see T 82/93).
March 2024 Guidelines for Examination in the EPO Part H – Chapter IV-9

4. 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 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).

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 in Rule 137(5),
accordance with Rule 62a or Rule 63 (see, however, H-II, 5). second sentence
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 searched
claim by introducing subject-matter taken from the description unless this
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 be
necessary (see C-IV, 7.3).

4.1.2 Subject-matter taken from the description

Within the framework of Art. 123(2) and Art. 82, Rule 137(5), first sentence, Rule 137(5),
should be construed as permitting any limitation of searched subject-matter first sentence
which is unitary with the originally claimed subject-matter, irrespective of
whether the technical feature(s) used for the limitation has/have been
searched.

If amended claims are directed to subject-matter which has not been

searched because it only appeared in the description (and the search
division did not find it appropriate to extend the search to this
subject-matter; see B-III, 3.5) and which does not combine with the
originally claimed and searched invention or group of inventions to form a
single general inventive concept (see F-V, 3), such amendments are not
allowable.
Part H – Chapter IV-10 Guidelines for Examination in the EPO March 2024

In other words, in order to assess whether or not amended claims fulfil the
requirements of Rule 137(5), first sentence, the examining division needs to
establish first whether or not the subject-matter to which they relate has or
should have been searched (see B-III, 3) 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 and
having an effect unrelated to the effect(s) of the features of the originally
claimed invention(s).

If an objection under Rule 137(5), first sentence, is raised, the examining

division provides a reasoning why the subject-matter has not been
searched (see B-III, 3) and why the subject-matter does not combine with
the originally claimed invention or inventions to form a single general
inventive concept (see F-V, 3). Applicants are informed that they may
continue to pursue such subject-matter only in the form 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, or
Rule 164(1) or Rule 164(2), which are dealt with in H-II, 6.2.

Rule 137(3) Applicants should bear in mind that the examination procedure should be
brought to a conclusion in as few actions as possible. Therefore, the
examining 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, the
examining 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. Compliance of amendments with other EPC requirements

5.1 General principles

The other EPC requirements with which amendments have to comply will
depend on whether the amendments are filed in examination, opposition or
limitation proceedings (see below).

5.2 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 must
of 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,
March 2024 Guidelines for Examination in the EPO Part H – Chapter IV-11

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 the
search report seems to reveal lack of novelty or inventive step in the
concept common to all the claims, but the amended claims do not
necessitate further search, the examining division will consider
carefully whether an objection of lack of unity is justified at this stage
of the proceedings (see F-V, 6). If, however, the claims lack a
common inventive concept and a further search is necessary, then
an 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 described
still 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
been altered, will the title require corresponding amendment
(see H-V, 8)?

5.3 In opposition proceedings

The proprietors of the patent generally have to indicate the basis in the
original 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 the
subject-matter of the patent as amended (with reference to
Art. 100(a) and (b)), taking into account the state of the art and objections
raised in the opposition notice together, where appropriate, with the
evidence presented in support.

Opposition is not an opportunity to re-examine the whole patent; it is the

amendments introduced into the patent which must be examined as to
whether 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 to
Art. 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, Rules 42, 43, 48 and 50, and the decision of the President
of the EPO dated 25 November 2022, OJ EPO 2022, A113, must also be
satisfied (see Rule 86).

5.4 In limitation proceedings

Limitation is not an opportunity to re-examine the whole patent; only the
amended 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
Part H – Chapter IV-12 Guidelines for Examination in the EPO March 2024

amendments introduce a deficiency within the meaning of those provisions.

Claims as granted or as maintained are not examined anew.

5.4.1 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 this
respect that mere clarifications made to the claims, in particular to
dependent claims, cannot be allowed unless they are necessitated by the
limitation(s) introduced elsewhere in the claims.

5.4.2 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 the
description, the examining division checks whether the amended claims are
still 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 the
claims, in order to comply with Art. 84. In this context it is pointed out that
the 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
Art. 84. Note that in this respect amendments made to the description
solely in order to improve the patent, or cosmetic changes which are not
necessitated by the limited claims, cannot be allowed.

5.4.3 Points to be disregarded

In limitation proceedings there is no examination as to why a request for
limitation 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 a
particular 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 in
prima facie non-compliance with the patentability criteria, e.g. Art. 53, in
which case the examining division will communicate this non-compliance to
the requester.

Examples:

A granted claim directed to a generic plant is limited to a specific plant

variety. 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 is

limited to a claim reciting an anti-personnel mine comprising the controlled
explosion system, which would be contrary to Art. 53(a).
March 2024 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 a
number of typical situations where compliance with Art. 123(2) and/or
Art. 123(3) is an issue. However, it must be borne in mind that the
allowability of a specific amendment is ultimately to be decided on a case-
by-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 not
contravene Art. 123(2).

2.2 Introduction of further examples and new effects

Amendment by the introduction of further examples always needs to be Art. 123(2)
looked 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 new
technical advantages. For example, if the invention as originally presented
related to a process for cleaning woollen clothing consisting of treating the
clothing with a particular fluid, the applicant is not allowed to introduce later
into the description a statement that the process also has the advantage of
protecting the clothing against moth damage.

Under certain circumstances, however, later filed examples or new effects, Art. 123(2)
even if not allowed into the application, may nevertheless be taken into
account by the examining division as evidence in support of the
patentability 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 the
whole field claimed (see F-IV, 6.3). Similarly a new effect may be
considered 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 the
application was filed and not included in the specification, an appropriate
mention will be printed on the cover page of the patent specification.
Part H – Chapter V-2 Guidelines for Examination in the EPO March 2024

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 to
revise 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 effect

emphasised is one deducible by a person skilled in the art without difficulty
from the application as filed (see H-V, 2.1 and 2.2 above).

If the suggested amendment would contravene Art. 123(2), it will be

necessary 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 particular
conditions 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 outer
layer of polyethylene; amendment of this example either to alter the outer
layer to polypropylene or to omit this layer altogether would not normally be
allowable. In each case, the panel disclosed by the amendment example
would be quite different from that originally disclosed and, hence, the
amendment would introduce fresh subject-matter and therefore be
unallowable.

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 of
further 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 the
application as filed when the amended claim is considered together with its
dependent claims and/or the claims on which it depends.
March 2024 Guidelines for Examination in the EPO Part H – Chapter V-3

3.1 Replacement or removal of features from a claim

The requirements of Art. 123(2) are only met if the replacement or removal Art. 123(2)
of 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).

If the amendment by replacing or removing a feature from a claim fails to

pass 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 that
the feature is not, as such, indispensable for the function of the
invention in the light of the technical problem the invention serves to
solve (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 for
the change (it does not in itself alter the invention).

However, even if the above criteria are met, the division must still ensure
that 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 and
unambiguously 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 the
absence of any of the particular features being deleted.

The removal of a limiting feature from an independent granted claim is Art. 123(3)
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 the Art. 123(2)
resulting combination was directly and unambiguously disclosed in the
application 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-IV, 4
and H-II, 6.2). If the resulting combination is novel over the application as
originally filed (see the test for novelty given in G-VI, 2), the amended claim
does not fulfil the requirements of Art. 123(2).
Part H – Chapter V-4 Guidelines for Examination in the EPO March 2024

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 be

limited;

(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 dependent

claim;

provided the above requirements are fulfilled.

3.2.1 Intermediate generalisations

Art. 123(2) 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), the
content 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 the

claim, it has to be established that:

– the feature is not related or inextricably linked to the other features of

that embodiment and

– the overall disclosure justifies the generalising isolation of the feature

and its introduction into the claim.

These conditions are to be understood as an aid to assessing, in the

particular case of an intermediate generalisation, if the amendment fulfils
the requirements of Art. 123(2). In any case it has to be ensured that the
skilled person is not presented with information which is not directly and
unambiguously derivable from the originally filed application, even when
March 2024 Guidelines for Examination in the EPO Part H – Chapter V-5

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 in
connection 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 the
eyelet 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 fibrous
assemblies is a wet laid tissue. The application as filed referred, in
connection with the first fibrous assembly, to a wet laid tissue in
combination with other features (tissue is apertured; tissue is provided with
fibrils 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 not
present in claim 1, the amendments made constitute a generalisation of the
originally disclosed technical information and thereby introduce subject-
matter 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 rosin
compound, at least one polymer and an antifoulant. The only basis for the
method is the examples. The board observed that for some solutions the
amount 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 the
description 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 shared

memory, a directory and a serialisation point. The serialisation point is
defined in functional terms. Claim 1 was amended by adding features that
were addressed in the description as part of the cache coherence strategy.
The board held that the incorporated features, albeit disclosed as such, had
been isolated in an arbitrary manner from the overall disclosure of the
cache coherent memory access architecture. At least one feature had been
Part H – Chapter V-6 Guidelines for Examination in the EPO March 2024

omitted although its function was presented as being essential to achieving

cache coherence. Therefore amended claim 1 was not directly and
unambiguously derivable from the original application (T 166/04).

3.3 Deletion of part of the claimed subject-matter

Art. 123(2) It is permissible to delete parts of the claimed subject-matter if the
corresponding 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 this
does not result in the creation of new technical information that is not
directly 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-matter
as 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 a
pointer towards that particular combination, e.g. by reference to particular
embodiments.

These principles also apply to the combination of features resulting from

dependent claims.
March 2024 Guidelines for Examination in the EPO Part H – Chapter V-7

Example

Original claim 1 "A composition for therapeutic use comprising a

therapeutic agent and a glass-forming
carbohydrate."

Original claim 22 "A composition according to claim 1 wherein the

therapeutic agent is selected from the group
enzymes, biopharmaceuticals, growth hormones,
growth factors, insulin, monoclonal antibodies,
interferons, interleukins and cytokines."

Original disclosure In the description, inhalation is listed as one of

several ways of administration.

In the description, insulin is listed as one of

several therapeutic agents.

Limited claim 1 "A composition for therapeutic use suitable for

administration by inhalation comprising a
therapeutic agent and a glass-forming
carbohydrate".

Dependent claim 10 "A composition according to claim 1 wherein the

therapeutic agent is insulin"

The limitation to inhalation in claim 1 results from a choice from one list and
has a basis in the application as originally filed.

The combination of the subject-matter of dependent claim 10 with the

subject-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 the

amended 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-matter
is explicitly or implicitly, but directly and unambiguously, disclosed in the
application as filed.

Wherever possible, the claim should be limited by a positive indication of

what subject-matter remains instead of stating what is being deleted from
the 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 Art. 123(2)
independent product claim fulfils the requirements of Art. 123(2) only if the
application as filed offers a basis for the assumption that the product can
Part H – Chapter V-8 Guidelines for Examination in the EPO March 2024

also be used in some other way (and if the statement of purpose does not
amount to a functional limitation).

The broadening of a claim by exchanging a particular feature for a more

general 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 more
general feature usually leads to a broadening of the claim. Therefore, the
requirements of Art. 123(3) are not fulfilled.

3.5 Amendments relating to ranges

Art. 123(2) In the case of a disclosure of both a general and a preferred range, a
combination of the preferred disclosed narrower range and one of the part-
ranges lying within the disclosed overall range on either side of the
narrower range can usually be derived from the original disclosure of the
application.

4. Disclaimers

4.1 Disclaimer disclosed in the application as originally filed

In this case, the original application already indicates that specific subject-
matter 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 their
relevance 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, and

may 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 the

application as originally filed (so-called undisclosed disclaimers)
Limiting the scope of a claim by using a "disclaimer" to exclude a technical
feature 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);

March 2024 Guidelines for Examination in the EPO Part H – Chapter V-9

(ii) restoring novelty over an accidental anticipation under Art. 54(2).

"An anticipation is accidental if it is so unrelated to and remote from
the 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 the
available further state of the art. A related document does not
become an accidental anticipation merely because there are other
disclosures even more closely related. The fact that a document is
not considered to be the closest prior art is insufficient for achieving
the status of "accidental". An accidental disclosure has nothing to do
with the teaching of the claimed invention, since it is not relevant for
examining inventive step. For example, this is the case when the
same 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 for
achieving 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, the
insertion of "non-human" in order to satisfy the requirements of
Art. 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 the
applicant's or patent proprietor's position with regard to other requirements
for 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 a

conflicting 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;
Part H – Chapter V-10 Guidelines for Examination in the EPO March 2024

(v) the disclaimer based on a conflicting application also serves another

purpose, e.g. it removes a deficiency under Art. 83.

Art. 84 applies equally to the claim per se and to the disclaimer itself (see
T 2130/11).

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 the
relation between the prior art and the disclaimer must be shown.

4.2.2 The subject-matter to be excluded is disclosed in the

application 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 the
date 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 of
a 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 the

disclaimer, the claim infringes Art. 123(2) or whether it is in conformity with
it, this cannot be decided solely by establishing that the disclaimed subject-
matter 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-matter
remaining in the amended claim and on whether, using common general
knowledge, 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 and
extent of the disclosure in the application as filed, the nature and extent of
the disclaimed subject-matter and its relationship with the subject-matter
remaining in the claim after the amendment.

In this respect it has to be established whether the disclaiming of subject-

matter leads for example to the singling out of compounds or sub-classes
of 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 for
assessing whether this subject-matter extends beyond the content of the
application as filed (see T 2130/11).

5. Amendments to drawings
It sometimes occurs that the drawings used for publication of the
application are not those originally filed but are subsequently filed drawings,
March 2024 Guidelines for Examination in the EPO Part H – Chapter V-11

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 in
the Receiving Section will check that the subsequently filed drawings are
identical to the originals.

However, the ultimate responsibility for ensuring that the subsequently filed
drawings do not contain new technical information, which would conflict
with 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 which
correspond 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 the
same reasons, amendments to drawings are carefully checked for
compliance 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.

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 in
every detail does not allow the conclusion that the disclosed teaching
purposively excluded a feature not represented.

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, that
the 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 the
engine, 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 top
of the wheels. An amendment which uses the generalised terms "the major
portion of the height of the engine" to define that said major portion is
located below the given level would infringe Art. 123(2) unless the skilled
person would be able to recognise from the drawings, in the context of the
whole description, that such a spatial arrangement of the engine with
respect to the wheels is in fact a deliberate measure directed to the solution
of the technical problem.

7. Changes in claim category in opposition

An amendment can be in the form of a change in the category of a claim, Rule 80
possibly combined with a change in the technical features of the invention. Art. 123(2) and (3)
Firstly it must be clear that this amendment is necessitated by grounds for
Part H – Chapter V-12 Guidelines for Examination in the EPO March 2024

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
given in the following sections. Note that these examples could also give
rise 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 a
particular 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 to
a 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 the
protection conferred by a product claim covers all methods for production of
the product, the limitation to one of these methods cannot extend the
protection 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 a

method of operating a device by a claim directed to the device itself if the
original 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 purpose-
limited product claim in accordance with Art. 54(5) contravenes Art. 123(3),
because a purpose-limited process claim confers less protection than a
purpose-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).
March 2024 Guidelines for Examination in the EPO Part H – Chapter V-13

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 technical
information disclosed in the application. The title has no bearing on the
content of the application as filed or on the protection conferred by the
patent, once granted. Furthermore, the title is not part of the documents to
be approved by an applicant before a patent can be granted.

Thus the ultimate responsibility for the title rests with the division, and it is
within the division's discretion to accept or not any request from the
applicant for a change in the title (see also A-III, 7).
March 2024 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 the
specification (see H-VI, 6).

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 Rule 139
and other mistakes in documents filed with the EPO, especially in
application documents (see H-VI, 2.2.1).

However, see also A-VII, 7 for the correction of errors in a translation of a

patent 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 the
decision 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 technical
examination. 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 Rule 139
in any document filed with the EPO may in principle be requested as long
as 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 other
words at the latest on the day before the date 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) In the case of correction of bibliographic data (e.g. priority,

designation) or of procedural declarations (e.g. withdrawal), time
limitations may derive from the protection of the interests of the
public. For instance, in the absence of any special circumstances, a
request for correction of a priority claim by the addition of a first
Part H – Chapter VI-2 Guidelines for Examination in the EPO March 2024

priority 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 be
corrected if, at the time when the request for correction is made, the
public has not yet been officially notified of the withdrawal (J 25/03).

(ii) Limitations on requesting the correction of an error in a document

filed with the EPO also exist where a decision has already been
taken or a procedural phase terminated on the basis of the document
containing the error. A request under Rule 139 cannot reinstate an
applicant into an earlier procedural phase or reverse the effects of a
decision already taken (J 3/01, see also H-VI, 3.1). Such a request is
therefore 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 the

requirements of Rule 80, they can additionally request the correction
of an obvious error under Rule 139 (see T 657/11). This request for
correction will be dealt with by the opposition division (see H-VI, 2),
as described in H-VI, 2.2 to 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 of

Rule 95(2) is filed in limitation proceedings, obvious errors can be corrected
under Rule 139.

2.2 Allowability
Rule 139 Corrections of clerical or grammatical errors are usually allowed, in so far
Art. 123(2) as it is evident that an error has occurred and what the correction should
March 2024 Guidelines for Examination in the EPO Part H – Chapter VI-3

be. The request for correction has to be made without undue delay after the
error has been discovered (G 1/12, J 16/08).

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 for

a skilled person, using common general knowledge, from the originally-filed
application documents (description, claims and drawings) taken by
themselves.

Regarding (ii), the correction needs to be 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, from the
originally-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 general
knowledge, 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 other
documents 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 the
corresponding 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, the
correction was held allowable (T 108/04).
Part H – Chapter VI-4 Guidelines for Examination in the EPO March 2024

On the other hand, the applicant/proprietor cannot rely on:

(a) A mere count of the number of instances of the relevant words in the
application 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 of

compounds 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 % by
volume 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 instance
that the skilled person would have immediately recognised that an
ASTM standard with a six-digit number did not exist before the
priority date of a patent (T 881/02).

2.2.2 Missing parts of description, missing drawings or correction of

erroneously filed application documents filed as corrections 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 a
correction 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 or
drawings) or parts by way of a correction under Rule 139 because that
would require making it evident that nothing else was intended than what is
offered as the corrected application documents.

In extremely rare cases the other application documents might allow the
skilled 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.

In contrast 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 can never be substantiated
by merely referring 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
manner through correction of the decision to grant (or to maintain in
amended form).
March 2024 Guidelines for Examination in the EPO Part H – Chapter VI-5

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 the
applicant (or patent proprietor) himself as a means of bringing the error
within the ambit of Rule 140. Thus only linguistic errors, errors of
transcription and obvious mistakes in decisions can be corrected. The
correction of an error in a decision under Rule 140 has a retrospective
effect (see T 212/88). Therefore, when the decision to be corrected is the
refusal of the application or the revocation of the patent, the time 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 the
decision to grant (see H-VI, 3.3). Examining or opposition divisions are
competent to correct errors in the text of the patent that was the subject of
their respective decisions, including editing/formatting errors (see H-VI, 4).

3.1 Admissibility
Rule 140 is not available to correct errors in documents filed by a patent
applicant 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 and
formatting/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 or
patentees, it is their duty to properly check all the documents making up the
communication 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 of

the parties or by the EPO of its own motion. If the request for correction is
refused, this decision must be reasoned (see T 850/95). These reasons
must previously have been communicated to the requester (Art. 113(1)).

3.2 Allowability of the correction of bibliographic data

The sole reason for allowing the correction of linguistic errors, errors of
transcription 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
Part H – Chapter VI-6 Guidelines for Examination in the EPO March 2024

the opposition division's communication under Rule 82(2) that a decision to

maintain a patent in amended form has become final is not and obviously
cannot be the bibliographic data corresponding to the real intention of the
division, the bibliographic data erroneously indicated can be corrected
under Rule 140. In this respect, it is irrelevant whether the error was
originally introduced by the applicants in their submissions or by the
division 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 of
errors in bibliographic data are dealt with by formalities officers.

3.3 Correction of the decision to grant while opposition proceedings

are pending – procedural aspects
Even during opposition proceedings, the examining division is competent to
correct 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 clearly

inadmissible, i.e. the requested correction does not concern errors in
bibliographic data contained in the decision to grant or formatting/editing
errors in the text of the B1 publication, the opposition division continues the
proceedings until the decision under Art. 101 is taken without waiting for
closure of the proceedings before the examining division concerning the
correction (in line with the reasoning of G 1/10). The procedural decision to
continue 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 wait for closure of the
proceedings before the examining division.

4. Correction of formatting/editing errors

Formatting/editing errors which were already contained in the text approved
by the applicant may be corrected by the EPO of its own motion or at the
request 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 in
Form 2004.
March 2024 Guidelines for Examination in the EPO Part H – Chapter VI-7

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 first

change, and consists in the absence of the two top lines, but the
deletion is not indicated by any standard mark (i.e. the two lines have
just 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 the
examining 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; no

amendments are present.

In this case, the amendment is indicated in EPO Form 2004 so that the
error does not qualify as a formatting/editing error. Thus, no correction can
be made after issuance of the decision to grant.

If any correction in the text of the specification as published is allowed, a

corrected version of it will be published. However, such a correction has no
influence on the start of the opposition period.

In the case of a discrepancy between the Druckexemplar and Form 2004,

the patent proprietor can seek remedy by filing an appeal against the
decision to grant. This would apply to example 2 above.

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 a
formatting/editing error. A request for correction will not be accepted and
the 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 the
proceedings is the authentic text. It therefore follows that the translations of
the claims of the patent specification required by Art. 14(6) are for
Part H – Chapter VI-8 Guidelines for Examination in the EPO March 2024

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 is
received, the stage of preparations for the B publication still allows the
exchange of documents, the EPO will publish the corrected version instead
of 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 the
patent proprietor to amend them are when the patent is maintained in
amended 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 specification
differs 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 the

B1 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 2024 Index for 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 and
examination 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 the
stated 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-technical
features, 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 practice
and 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 ongoing
process 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 Patentability 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

G-II, 3.5 Schemes, rules and methods for performing mental acts, playing games or doing
business
Index for Computer-Implemented Inventions – 2 March 2024

– 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)

Requirements of Art. 84 EPC

F-IV, 3.9 Claims directed to computer-implemented inventions (introduced in GL 2016, with its sub-
sections)
March 2024 Index for Computer-Implemented Inventions – 3

– F-IV, 3.9.1 Cases where all method steps can be fully implemented by generic data
processing means

– F-IV, 3.9.2 Cases where method steps define additional devices and /or specific data
processing 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 2024 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.

Safety provision for late replenishment of deposit

A
accounts A-X, 6.2.2

Abandoned claims B-III, 3.4 Activity of the opposition division D-IV, 2

Abandonment of subject-matter C-IX, 1.3 Adaptation of the description C-V, 4.5

Abbreviations General Part, 2.2 Additional

Additional European searches B-II, 4.2
Absence of well-known details F-III, 5.2 Additional fee
Additional fee (if application documents comprise more
Abstract A-III, 10, A-III, 10.1, A-III, 16.2, E-IX, 2.3.10, than 35 pages) A-III, 13.2
F-II, 1, F-II, 2, F-II, 2.2, F-II, 2.7, G-IV, 5.1 Additional fee for a European patent
Abstract in examination F-II, 2.7 application A-III, 13.2
Checklist F-II, 2.5 Additional fee for divisional applications of second or
Checklist for considering the abstract F-II, An. 1 subsequent generations A-IV, 1.4.1.1
Conflict between abstract and source document B-VI, 6.3 Additional fee for divisional applications A-III, 13.3
Conflict with other European applications G-IV, 5.1 Additional fee for divisional applications of second or
Content of a European patent application (other than subsequent generations A-IV, 1.4.1.1
claims) F-II, 2 Additional fee for pages A-II, 5.6, A-II, 6.8
Content of the abstract A-III, 10.2, F-II, 2.3 Correction of erroneously filed application documents
Definitive content A-III, 10.2, F-II, 2.2 or parts A-II, 6.8
Examination of formal requirements A-III, 10 Late filing of missing drawings or missing parts of the
Figure accompanying the abstract A-III, 10.3, F-II, 2.4 description A-II, 5.6
Instructions in Chapter A-III ("Examination of formal Additional search D-VI, 5
requirements") E-IX, 2.3.10 Invitation to pay additional search fees combined with
Purpose of the abstract F-II, 2.1 invitation to restrict the scope of the
Summaries, extracts or abstracts B-X, 11.5 search C-III, 3.2.3
Title, abstract and figure to be published with the abstract Limitation to searched invention, no additional search
(as indicated on supplemental sheet A) B-X, 7 fees paid C-III, 3.2.1
Transmittal of the abstract to the applicant F-II, 2.6 Refund of additional search fees C-III, 3.4
Additional search fees paid C-III, 3.2.2
Accelerated Limitation to searched invention, no additional search
Accelerated processing before the boards of fees paid C-III, 3.2.1
appeal E-VIII, 6 Additional searches during examination C-IV, 7.3
Accelerated processing of oppositions E-VIII, 5
Accelerated prosecution of European patent Adherence to the text of the European patent
applications E-VIII, 4 submitted or approved by the patent
Accelerated examination E-VIII, 4.2 proprietor D-VI, 2
Accelerated search E-VIII, 4.1 Basis for the examination D-VI, 2.1
Patent Prosecution Highway (PPH) E-VIII, 4.3 Revocation of the patent D-VI, 2.2

Access to EPO documentation for the national patent Adjournment of oral proceedings due to lack of
offices B-IX, 5 time E-III, 8.11.2

Accorded date of filing and content of the application Administrative fees A-XI, 1, A-XI, 2.2, E-XIV, 3
still subject to review G-IV, 5.1.2
Administrative structure D-II, 1
Accounts
Debit orders for deposit accounts held with the
EPO A-II, 1.5
Deposit accounts with the EPO A-X, 4.2
Alphabetical keyword index – 2 March 2024

Admissibility H-VI, 2.1, H-VI, 3.1 Admissible languages on filing A-VII, 1

Admissibility in opposition and limitation Art. 61 applications A-VII, 1.3
proceedings H-VI, 2.1.1 European divisional applications A-VII, 1.3
Errors in the description, claims and Filing by reference A-VII, 1.2
drawings H-VI, 2.1.1.1 Invitation to file the translation A-VII, 1.4
Admissibility in opposition procedure H-II, 3
Amendments in reply to the notice of Admissible non-EPO languages A-VII, 3.2
opposition H-II, 3.1
Amendments not related to the grounds for Admission of the public to proceedings E-III, 8.1
opposition H-II, 3.2
Amendments occasioned by national rights H-II, 3.3 Aesthetic creations G-II, 3.4
Insistence on inadmissible amendments H-II, 3.4
Late-filed requests in opposition proceedings H-II, 3.5 Agreement
Admissibility in the examination procedure H-II, 2 Agreement on secrecy G-IV, 7.2.2
Admissibility in the examination procedure, after Agreement reached on a text - second Rule 71(3)
receipt of the search report - Rule 137(2) H-II, 2.2 communication C-V, 4.7.2
Admissibility in the examination procedure, at an Amendments not admitted and/or not allowable,
advanced stage of the proceedings H-II, 2.4 examination resumed, no agreement reached on a
Admissibility in the examination procedure, before text C-V, 4.7.3
receipt of the search report - Rule 137(1) H-II, 2.1
Admissibility in the examination procedure, further Agriculture, industrial application G-III, 1
requests for amendment after approval H-II, 2.6
Amendments filed in reply to a Rule 71(3) Aim of the search B-II, 2
communication H-II, 2.5
Late-filed requests after summons to oral proceedings Allocation
in examination H-II, 2.7 Allocation of duties and appointment of members of the
Admissibility in the examination procedure, after receipt of opposition division D-II, 3
the first communication - Rule 137(3) H-II, 2.3 Allocation of individual duties D-II, 7
Examples of the exercise of discretion under Allocation of tasks to members D-II, 5
Rule 137(3) H-II, 2.3.1 Allocation of the application C-II, 2
Admissibility of amendments C-V, 4.4, H-II, H-III
Admissibility of amendments made by the Allowability H-VI, 2.2
applicant C-IV, 6 Allowability of amendments H-IV, H-V
Amendments and Corrections H-II Amendments and Corrections H-IV, H-V
Amendments in limitation procedure H-II, 4 Amendments derived from drawings H-V, 6
Amendments in the case of non-unity H-II, 6 Amendments in claims H-V, 3
Amendments required by a limitation of the search Amendments in the description H-V, 2
under Rule 62a and/or Rule 63 H-II, 5 Amendments relating to unsearched matter H-IV, 4
Auxiliary requests H-III, 3 Amendments to drawings H-V, 5
Calculation of claims fees H-III, 5 Changes in claim category in opposition H-V, 7
Different texts in respect of different contracting Changes in the title H-V, 8
states H-III, 4 Compliance of amendments with other EPC
Procedure for amendments to documents H-III, 2 requirements H-IV, 5
Request for amendments or corrections in reply to the Disclaimers H-V, 4
Rule 71(3) communication C-V, 4.4 Allowability of amendments under Art. 123(2) H-IV, 2
Admissibility of auxiliary requests H-III, 3.3.2 Content of the application as "originally"
Criteria for admissibility of auxiliary filed H-IV, 2.2, H-IV, 2.3
requests H-III, 3.3.2.1 Special applications H-IV, 2.3
Timeliness and structure of auxiliary Allowability of amendments under Art. 123(3) H-IV, 3
requests H-III, 3.3.2.2 Assessment of impermissible extension of the
Admissibility of the request E-VIII, 3.1 protection conferred H-IV, 3.4
Entitlement to file the request E-VIII, 3.1.2 Basic principles H-IV, 3.1
Form of the request and applicable time Conflicts between Art. 123(2) and
limit E-VIII, 3.1.3 Art. 123(3) H-IV, 3.5
Substantiation of the request E-VIII, 3.1.4 Conflicts between Art. 123(3) and other requirements
Time limits covered E-VIII, 3.1.1 of the EPC H-IV, 3.6
Correction of errors in decisions H-VI, 3.1 Protection conferred by the patent as
Corrections of errors in documents filed with the granted H-IV, 3.2
EPO H-VI, 2.1 Version of the granted patent to be
Decision concerning the admissibility of an opposition, the considered H-IV, 3.3
patent proprietor being a party D-IV, 5.5 Allowability of the correction of bibliographic
Examination of the admissibility of an intervention and data H-VI, 3.2
preparations in the event of an intervention D-IV, 5.6 Concept of "clear allowability" H-II, 2.7.1
March 2024 Alphabetical keyword index – 3

Correction of description, claims and Replacement or removal of features from a

drawings H-VI, 2.2.1 claim H-V, 3.1
Missing parts of description, missing drawings or Amendments in limitation procedure H-II, 4
correction of erroneously filed application documents filed Amendments in reply to the notice of opposition H-II, 3.1
as corrections under Rule 139 H-VI, 2.2.2 Amendments in the case of non-unity H-II, 6
Amendments in the case of non-unity, no restriction to
Alteration, excision or addition of text in the a single invention searched H-II, 6.3
description H-V, 2.6 Restriction to a single, searched invention H-II, 6.1
Restriction to an unsearched invention H-II, 6.2
Alternatives in a claim F-IV, 3.7 Amendments in the case of non-unity, further procedural
aspects concerning Euro-PCT applications H-II, 6.4
Amended Where the EPO does not perform a supplementary
Amended claims F-V, 6 search H-II, 6.4.1
Bringing the description into line with amended Where the EPO performs a supplementary
claims H-V, 2.7 search H-II, 6.4.2
Examples, no amended claims filed with the Amendments in the description H-V, 2
appeal E-XII, 7.4.1 Alteration, excision or addition of text in the
Amended claims, missing parts (Rule 56) or erroneously description H-V, 2.6
filed application documents or parts (Rule 56a) B-III, 3.3 Bringing the description into line with amended
General considerations B-III, 3.3.1 claims H-V, 2.7
Specific rules applicable to Euro-PCT Clarification of a technical effect H-V, 2.1
applications B-III, 3.3.2 Introduction of further examples and new
Amended main/single request filed with the effects H-V, 2.2
appeal E-XII, 7.4.2 Reference document H-V, 2.5
Revision of stated technical problem H-V, 2.4
Amendments Supplementary technical information H-V, 2.3
Admissibility of amendments made by the Amendments made by applicants of their own
applicant C-IV, 6 volition C-III, 2
Allowability of amendments under Art. 123(2) H-IV, 2 Amendments made in response to the search
Allowability of amendments under Art. 123(3) H-IV, 3 opinion C-III, 2.1
Amendment by submitting missing documents or by filing Amendments made in response to the WO-ISA, IPER
replacement pages H-III, 2.2 or supplementary international search report C-III, 2.2
Amendment of application A-V, A-V, 2 Amendments made by the EPO at the request of a
Communications concerning formal party H-III, 2.4
deficiencies A-V, 1 Amendments not admitted and/or not allowable,
Correction of errors in documents filed with the examination resumed C-V, 4.7
EPO A-V, 3 Agreement reached on a text - second Rule 71(3)
Examination of amendments as to formalities A-V, 2.2 communication C-V, 4.7.2
Filing of amendments A-V, 2.1 Amendments not admitted and/or not allowable,
Amendments and corrections Part H, H-II, 2.6 examination resumed, no agreement reached on a
Admissibility of amendments H-II, H-III text C-V, 4.7.3
Allowability of amendments H-IV, H-V Communications/oral proceedings/refusal after
Correction of errors H-VI resumption C-V, 4.7.1
Other procedural matters H-III Refusal C-V, 4.7.3
Right to amend H-I Amendments not related to the grounds for
Amendments derived from drawings H-V, 6 opposition H-II, 3.2
Amendments filed in preparation for or during oral Amendments occasioned by national rights H-II, 3.3
proceedings E-VI, 2.2.2 Amendments or corrections should be reasoned C-V, 4.3
Amendments filed in reply to a Rule 71(3) Amendments relating to unsearched matter H-IV, 4
communication H-II, 2.5 Euro-PCT applications H-IV, 4.2
Amendments filed in reply to a Rule 71(3) Rule 137(5) H-IV, 4.1
communication, further course of Amendments required by a limitation of the search under
proceedings H-II, 2.5.2 Rule 62a and/or Rule 63 H-II, 5
Criteria for admitting such amendments H-II, 2.5.1 Amendments to drawings A-IX, 10, H-V, 5
Exceptional case where amendments must be Allowability of amendments H-V, 5
admitted H-II, 2.5.3 Drawings A-IX, 10
Rule 137(4) applies to amendments filed at this Amendments using copies H-III, 2.3
stage H-II, 2.5.4 Amendments withdrawn or superseded in the Rule 137(4)
Amendments in claims H-V, 3 period H-III, 2.1.2
Amendments in claims, further cases of broadening of Amendments/corrections admitted and allowable - second
claims H-V, 3.4 Rule 71(3) communication sent C-V, 4.6
Amendments relating to ranges H-V, 3.5 Examining division proposes amendments in second
Deletion of part of the claimed subject-matter H-V, 3.3 Rule 71(3) communication C-V, 4.6.3
Inclusion of additional features H-V, 3.2
Alphabetical keyword index – 4 March 2024

Second Rule 71(3) communication based on higher- Analysis of the application B-IV, 1.1
ranking request initially rejected in first Rule 71(3) Analysis of the application and content of the search
communication C-V, 4.6.2 opinion B-XI, 3
Second Rule 71(3) communication reversing the Comments and amendments in response to the search
amendments proposed by the examining division in opinion B-XI, 3.3
first Rule 71(3) communication C-V, 4.6.1 Contribution to the known art B-XI, 3.5
Amendments/corrections filed in second Rule 71(3) EPC requirements B-XI, 3.6
period C-V, 4.10 Making suggestions B-XI, 3.8
Anticipation of amendments to claims B-III, 3.5 Positive opinion B-XI, 3.9
Comments and amendments in response to the search Reasoning B-XI, 3.2
opinion B-XI, 3.3 Scope of first analysis for generally deficient
Compliance of amendments with other EPC applications B-XI, 3.4
requirements H-IV, 5 Search division's approach B-XI, 3.7
Compliance of amendments with other EPC requirements, Search division's dossier B-XI, 3.1
in examination proceedings H-IV, 5.2
Compliance of amendments with other EPC requirements, Ancillary proceedings D-II, 4.3
in limitation proceedings H-IV, 5.4
Compliance of amendments with other EPC requirements, Animal varieties
in opposition proceedings H-IV, 5.3 Excluded from patentability G-II, 5.4, G-II, 5.5.1
Distinction between allowable and unallowable Plant and animal varieties or essentially biological
amendments D-V, 6.2 processes for the production of plants or
Earlier filed amendments or comments E-IX, 3.3.1 animals G-II, 5.4
Examination of amendments C-IV, 5
Facts, evidence or amendments introduced at a late Animals
stage E-III, 8.6 Essentially biological processes for the production of
Handwritten amendments in oral proceedings E-III, 8.7 plants or animals G-II, 5.4.2
Indication of amendments and their basis under Plant and animal varieties or essentially biological
Rule 137(4) H-III, 2.1 processes for the production of plants or
Indication of the amendments made in the requests and of animals G-II, 5.4
their basis H-III, 3.3.1 Processes for the production of animals G-II, 5.4,
Insistence on inadmissible amendments H-II, 3.4 G-II, 5.4.2
Invitation to file comments and amendments C-III, 4.2
Procedure for amendments to documents H-III, 2 Antibodies G-II, 6
Refusal to admit amendments under Inventive step of antibodies G-II, 6.2
Rule 137(3) E-X, 2.11
Request for amendments or corrections in reply to the Anticipation of amendments to claims B-III, 3.5
Rule 71(3) communication C-V, 4
Request for amendments or corrections in reply to the Appeal E-XII
Rule 71(3) communication, no payment of fees or filing of Accelerated processing before the boards of
translations necessary C-V, 4.1 appeal E-VIII, 6
Standard marks for indicating amendments or corrections Amended main/single request filed with the
by the divisions C-V, An. appeal E-XII, 7.4.2
Standard marks for indicating amendments or corrections Appeal against the fixing of costs by the opposition
by the divisions, further communication with the division D-IX, 2.2
applicant C-VIII, 5 Appeal fee
Standard marks for indicating amendments or corrections Refund of the appeal fee A-X, 10.2.6
by the divisions, further ways to accelerate Reimbursement A-X, 10.2.6
examination C-VI, 3 Reimbursement of appeal fees E-XII, 7.3
Use of Rule 137(4) for amendments filed during oral Appeal, interlocutory revision E-XII, 1, E-XII, 7.3
proceedings in examination E-III, 8.8 Appeal, surrender or lapse of the patent E-XII, 2
Withdrawal of amendments/abandonment of subject Appeal, time limit and form of appeal E-XII, 6
matter H-III, 2.5 Appeals after surrender or lapse of the patent E-XII, 2
Appeals against the apportionment of costs E-XII, 3
Amino acid sequences (Applications relating to Appeals against the decision of the opposition division on
nucleotide and ~) A-IV, 5 the fixing of costs E-XII, 4
Binding nature of decisions on appeals E-X, 4
Amount Examples, no amended claims filed with the
Amount of fee payable A-X, 6.2.4 appeal E-XII, 7.4.1
Amount of the fee A-X, 5.1.2 Fees for limitation/revocation, opposition, appeal, petition
Amount paid insufficient A-III, 11.3.3 for review A-X, 5.2.6
Amount payable A-III, 11.3.7 Interlocutory revision E-XII, 7
Main and auxiliary requests filed with the
Analysing the parties' arguments E-X, 2.8 appeal E-XII, 7.4.3
Persons entitled to appeal E-XII, 5
March 2024 Alphabetical keyword index – 5

Persons entitled to appeal and to be parties to appeal Application documents filed under Rule 56 EPC,
proceedings E-XII, 5 Rule 56a EPC, Rule 20.5 PCT or
Remittal to the board of appeal E-XII, 7.2 Rule 20.5bis PCT B-XI, 2.1
Remittal to the examining or opposition division after Application documents filed under Rule 56 or
appeal E-XII, 9 Rule 56a C-III, 1.1.1
Response to communication pursuant to Rule 58 filed with Application documents for the supplementary
the appeal E-XII, 7.4.4 European search report B-II, 4.3.3
Rules of Procedure of the Boards of Appeal E-XII, 8 Correct application documents based on priority
Stay of proceedings when a referral to the Enlarged Board application, no change in the filing date A-II, 6.4
of Appeal is pending E-VII, 3 Correct application documents or parts filed after the
Suspensive effect E-XII, 1 search has started A-II, 6.7
Time limit and form of appeal E-XII, 6 Correction of erroneously filed application documents
or parts A-II, 6, A-II, 6.1, A-II, 6.2
Appearance before the national court E-XIII, 5.6 Deficiencies A-III, 16.2, A-V, 2.2, B-IV, 1.2
Erroneously filed application documents or parts under
Applicant Rule 56a H-IV, 2.2.3
Admissibility of amendments made by the For international (Euro-PCT) applications B-III, 3.3.2,
applicant C-IV, 6 E-IX, 2.1.1, E-IX, 4.3
Amendments made by applicants of their own Later-filed correct application documents or parts when
volition C-III, 2 priority is claimed A-II, 6.4.1
Applicant does not approve the text proposed for Missing parts of description, missing drawings or
grant H-III, 3.3.6 correction of erroneously filed application documents
Applicant has not paid all further search fees B-VII, 1.2.3 filed as corrections under Rule 139 H-VI, 2.2.2
Arguments and evidence submitted by the Parts A-III, 13.2
applicant G-VII, 11 Physical requirements of late-filed application
Consequences for the applicant F-V, 4.2 documents or correct application documents or
Contact between the applicant and the search parts A-III, 3.2.2
division B-II, 1.1 Withdrawal of correct application documents or
Death or legal incapacity of the applicant E-VII, 1.1 parts A-II, 6.5
Different applicants A-II, 2 Application filed by reference to a previously filed
Documents cited or supplied by the applicant B-IV, 1.3 application A-IV, 4.1.2
Information concerning the applicant A-II, 4.1.2 Sequence listings of an application filed by reference
Information on the applicant A-III, 4.2.1 to a previously filed application A-IV, 5.3
Joint applicants A-II, 2 Application numbering systems A-II, 1.7
Re-establishment of rights A-III, 6.6, E-IX, 2.3.5.3 Applications filed before 1 January 2002 A-II, 1.7.1
Standard marks for indicating amendments or corrections Applications filed on or after 1 January
by the divisions, further communication with the 2002 A-II, 1.7.2
applicant C-VIII, 5 Application of known measures? G-VII, An., 1
Transmittal of the abstract to the applicant F-II, 2.6 Applications containing claims filed after the accorded
filing date B-XI, 2.2
Application Applications falling under Rule 62a and lacking
Accelerated prosecution of European patent unity B-VIII, 4.5
applications E-VIII, 4 Applications falling under Rule 63 and lacking
Accorded date of filing and content of the application still unity B-VIII, 3.4
subject to review G-IV, 5.1.2 Applications filed by reference to an earlier
Additional fee for divisional applications A-III, 13.3 application H-IV, 2.3.1
Additional fee for divisional applications of second or Applications for which a supplementary European search
subsequent generations A-IV, 1.4.1.1 report is prepared E-IX, 3.1, E-IX, 3.2
Allocation of the application C-II, 2 Applications giving rise to a right of priority A-III, 6.2
Amendment of application A-V, A-V, 2 Applications relating to biological material A-IV, 4
Amendments in the case of non-unity, further procedural Availability of deposited biological material to expert
aspects concerning Euro-PCT applications H-II, 6.4 only A-IV, 4.3
Analysis of the application B-IV, 1.1 Biological material A-IV, 4.1
Analysis of the application and content of the search Deposit of such A-IV, 4.1
opinion B-XI, 3 Missing information A-IV, 4.2
Application deemed withdrawn A-III, 11.3.4, C-V, 3 Notification A-IV, 4.2
Application documents Requests for samples of biological material A-IV, 4.4
Additional fee (if application documents comprise more Applications relating to nucleotide and amino acid
than 35 pages) A-III, 13.2 sequences A-IV, 5
Amended claims, missing parts (Rule 56) or Sequence information filed under Rule 56 A-IV, 5.1
erroneously filed application documents or parts Sequence information filed under Rule 56a A-IV, 5.2
(Rule 56a) B-III, 3.3 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
Alphabetical keyword index – 6 March 2024

Applications resulting from a decision under European patent application C-III, 1.1, Part F
Art. 61 C-IX, 2, H-IV, 2.3.3 European patent applications filed before 1 April
Entitlement for certain designated states 2009 A-III, 11.3
only C-IX, 2.4 European patent applications filed on or after 1 April
Original application no longer pending C-IX, 2.2 2009 A-III, 11.2
Partial entitlement C-IX, 2.3 Examination of a divisional application C-IX, 1.4
Applications under the Patent Cooperation Treaty Extension and validation of European patent applications
(PCT) E-IX and patents to/in states not party to the EPC A-III, 12
Communication according to Rule 161 E-IX, 3 Fees paid by bank transfer - application of Art. 7(3) and
EPO as designated or elected Office E-IX, 2 (4) RFees A-X, 6.2.1
Examination procedure E-IX, 4 File inspection before publication of the
Applications where a reservation has been entered in application A-XI, 2.5
accordance with Art. 167(2)(a) EPC 1973 C-IX, 3 Filing a divisional application A-IV, 1.3, C-III, 3.3
Art. 61 applications A-VII, 1.3 Filing a new application A-IV, 2.5
Art. 61 applications and stay of proceedings under Filing of applications and examination on filing A-II
Rule 14 A-IV, 2 Filing of applications by delivery by hand or by postal
Authentic text of the application or patent A-VII, 8 services A-II, 1.2
Certified copy of the previous application (priority Filing of applications by fax A-II, 1.1.2
document) F-VI, 3.3 Filing of applications by means of electronic
Claims fees payable on filing the European patent communication A-II, 1.1
application A-X, 7.3.1 Filing of applications by other means A-II, 1.3
Classification of the European patent application B-X, 5 Filing of applications in electronic form A-II, 1.1.1
Confirmation of the intention to proceed further with the First application F-VI, 1.4
application C-II, 1.1 Forwarding of applications A-II, 1.6
Conflict with other European applications G-IV, 5 Further action upon examination of replies, further action
Conflicting applications B-VI, 4 where a request for a translation of the priority application
Content of a European patent application (other than was sent earlier in examination proceedings C-IV, 3.1
claims) F-II Identification of the European patent application and the
Content of the application as "originally" filed H-IV, 2.2, search report type B-X, 4
H-IV, 2.3 Industrial application B-VIII, 1, D-III, 5, F-II, 4.9, G-I, 1,
Conversion into a national application A-IV, 6 G-II, 5.2, G-III, G-III, 1, G-III, 4
Copy of the international application E-IX, 2.1.2 Industrial application vs. exclusion under
Copy of the previous application (priority Art. 52(2) G-III, 3
document) A-III, 6.7 Instructions in Chapter A-II ("Filing of applications and
Copy of the priority application A-II, 5.4.3, A-II, 6.4.2 examination on filing") E-IX, 2.2
CPC classification of the application B-V, 4 Instructions in Chapter A-VI ("Publication of application;
Date of filing of a divisional application A-IV, 1.2 request for examination and transmission of the dossier to
Determination of filing date in the case of erroneously filed examining division") E-IX, 2.5
elements or parts of the international Intermediate publication of another European
application E-IX, 2.9.4 application F-VI, 2.4.2
Disclaimer disclosed in the application as originally Intermediate publication of the contents of the priority
filed H-V, 4.1 application F-VI, 2.4.1
Disclaimers not disclosed in the application as originally International application H-IV, 2.3.4
filed H-V, 4.2 International applications (Euro-PCT applications) C-IX, 4
Divisional application C-IX, 1, E-IX, 2.4.1, H-IV, 2.3.2 International applications with supplementary
Documents cited in the application B-X, 9.2.7 search F-V, 7.2
Documents filed after filing the European patent International applications without supplementary
application A-VIII, 3.1 search F-V, 7.1
Documents forming part of the European patent IPC classification of the application B-V, 3
application A-VIII, 3.2 Limitation of the option to withdraw the European patent
Documents making up the application, replacement application A-IV, 2.3
documents, translations A-III, 3.2 Missing parts of the description or missing drawings are
Documents making up the European patent completely contained in the priority application A-II, 5.4.2
application A-VIII, 2.1 Missing parts of the description or missing drawings based
Entitled persons A-II, 2 on the priority application, no change in filing
Euro-PCT applications C-II, 1.2, C-III, 1.2, C-III, 1.3, date A-II, 5.4
F-V, 7, G-IV, 5.2, H-IV, 4.2 Multiple priorities claimed for different inventions in the
Euro-PCT applications entering the European application with an intermediate publication of one of the
phase A-III, 11.2.5 inventions F-VI, 2.4.3
Euro-PCT applications entering the European phase Pendency of the earlier application A-IV, 1.1.1
before 1 April 2009 A-III, 11.3.9 Persons entitled to file a divisional application A-IV, 1.1.3
European divisional application A-IV, 1, A-VII, 1.3 Persons entitled to file an application A-II, 2
European divisional applications, other formalities Physical requirements of applications filed by reference to
examination A-IV, 1.7 a previously filed application A-III, 3.2.1
March 2024 Alphabetical keyword index – 7

Potentially conflicting European and international Approval of the proposed text C-V, 2
applications B-VI, 4.1 Request for unitary effect C-V, 2.1
Preclassification, IPC and CPC classification of European
patent applications B-V Arbitrary choice G-VII, 10.1
Priority claim of a divisional application A-IV, 1.2.2
Prosecution of the application by a third party A-IV, 2.4 Arguments and evidence submitted by the
Publication of application A-VI, A-VI, 1 applicant G-VII, 11
Publication of application, no publication A-VI, 1.2
Publication of bibliographic data before publication of the Arrangement of claims F-IV, 3.5
application A-XI, 2.6
Publication of the international application E-IX, 2.5.1 Arrows A-IX, 7.5.2
Published European patent applications as "E"
documents B-VI, 4.1.1 Art. 124 and the utilisation scheme B-XI, 9
Published international applications (WO) as "E"
documents B-VI, 4.1.2 Art. 61 applications A-VII, 1.3
Reduction and refunds of fees in respect of international Art. 61 applications and stay of proceedings under
(PCT) applications E-IX, 2.6 Rule 14 A-IV, 2
Reference to a previously filed application A-II, 4.1.3.1 Filing a new application A-IV, 2.5
Refusal of the earlier application A-IV, 2.6 Limitation of the option to withdraw the European
Scope of application of Rule 134 E-VIII, 1.6.2.3 patent application A-IV, 2.3
Scope of first analysis for generally deficient Partial transfer of right by virtue of a final
applications B-XI, 3.4 decision A-IV, 2.7
Search division has more than one member, further Prosecution of the application by a third
searches in a different technical field for a non-unitary party A-IV, 2.4
application B-I, 2.2.2 Refusal of the earlier application A-IV, 2.6
Search for conflicting European patent Stay of proceedings for grant A-IV, 2.2
applications C-IV, 7.1
Search, publication and request for examination of Art. 83 vs. Art. 123(2) F-III, 2
divisional applications A-IV, 1.8
Searches on national applications B-II, 4.6 Art. 84 H-IV, 5.4.1
Sequences of divisional applications A-IV, 1.1.2 Claims (Art. 84 and formal requirements) F-IV
Situation in which it has to be checked whether the Rule 137(3) in conjunction with Art. 84 - missing essential
application from which priority is actually claimed is the feature H-II, 2.3.1.3
"first application" within the meaning of
Art. 87(1) F-VI, 2.4.4 Artificial intelligence and machine learning G-II, 3.3.1
Special applications C-IX, H-IV, 2.3
Specific rules applicable to Euro-PCT Ascertaining whether there is a fallback
applications B-III, 3.3.2 position B-III, 3.2.5
Subject-matter to be excluded is disclosed in the
application as originally filed H-V, 4.2.2 Asking for evidence E-IV, 4.4
Subject-matter to be excluded is not disclosed in the
application as originally filed (so-called undisclosed Assessment
disclaimers) H-V, 4.2.1 Assessment and possible review of the unity
Subsequent application considered as first requirement B-VII, 1.4
application F-VI, 1.4.1 Assessment of impermissible extension of the protection
Substantive examination of a Euro-PCT application conferred H-IV, 3.4
accompanied by an IPER E-IX, 4.3 Assessment of unity F-V, 3
Summary of the processing of applications and patents at Determination of the invention first mentioned in the
the EPO General Part, 5 claims F-V, 3.4
Transfer of the European patent application E-XIV, 3 Grouping of inventions F-V, 3.2
Translation of previous application already Non-unity and prior art F-V, 3.1
filed A-III, 6.8.4 Reasoning for a lack of unity objection F-V, 3.3
Translation of the application A-III, 14
Translation of the international application E-IX, 2.1.3 Associations A-VIII, 1.2
Translation of the previous application A-III, 6.8, F-VI, 3.4
Translation of the priority application A-II, 5.4.4, Authentic text of the application or patent A-VII, 8
A-II, 6.4.3
Unpublished patent applications B-IX, 2.2 Authentication and dates B-X, 10
Voluntary filing of the translation of the previous
application A-III, 6.8.5 Authorisations A-IV, 1.6, A-VIII, 1.1, A-VIII, 1.6
Where and how applications may be filed A-II, 1 Checking the identity and authorisations of participants at
Where and how to file a divisional application A-IV, 1.3.1 oral proceedings E-III, 8.3.1
Withdrawal of application or designation E-VIII, 8.1 European divisional applications A-IV, 1.6
Representatives A-VIII, 1.1
Alphabetical keyword index – 8 March 2024

Authoritative text of documents E-X, 2.2 Basis for the search B-III, 3.1
Basis for the search opinion B-XI, 2
Authorities (Taking of evidence by courts or ~ of the Application documents filed under Rule 56 EPC,
contracting states) E-IV, 3 Rule 56a EPC, Rule 20.5 PCT or
Rule 20.5bis PCT B-XI, 2.1
Authorities of the Contracting States (Taking of Applications containing claims filed after the accorded
evidence by courts or ~) E-IV, 3 filing date B-XI, 2.2
Basis of this ground for opposition D-V, 6.1
Automatic debiting procedure A-X, 4.3
Bibliographic data B-X, 9.1.1
Auxiliary requests H-III, 3 Allowability of the correction of bibliographic
Auxiliary requests, in examination proceedings H-III, 3.3 data H-VI, 3.2
Admissibility of auxiliary requests H-III, 3.3.2 Publication of bibliographic data before publication of the
Applicant does not approve the text proposed for application A-XI, 2.6
grant H-III, 3.3.6
Complete text for auxiliary request Binding nature of decisions on appeals E-X, 4
available H-III, 3.3.5
Complete text for auxiliary request not yet Biological material A-III, 1.2, A-IV, 4.1, A-IV, 4.1.1,
available H-III, 3.3.4 A-IV, 4.2, B-IV, 1.2, E-IX, 2.4.4, F-III, 6.1, F-III, 6.3,
Indication of the amendments made in the requests G-II, 5.2
and of their basis H-III, 3.3.1 Application filed by reference to a previously filed
Preparing the decision H-III, 3.3.3 application A-IV, 4.1.2
Auxiliary requests, in limitation proceedings H-III, 3.5 Applications relating to biological material A-IV, 4
Oral proceedings H-III, 3.5.3 Availability of deposited biological material to expert
Written procedure H-III, 3.5.2 only A-IV, 4.3
Auxiliary requests, in opposition proceedings H-III, 3.4 Deposit of biological material F-III, 6.3
Oral proceedings H-III, 3.4.2 Inventions relating to biological material F-III, 6
Written procedure H-III, 3.4.1 New deposit of biological material A-IV, 4.1.1
Auxiliary requests, in the search phase H-III, 3.2 Public availability of biological material F-III, 6.2
Criteria for admissibility of auxiliary requests H-III, 3.3.2.1 Requests for samples of biological material A-IV, 4.4
Main and auxiliary requests E-X, 2.9
Main and auxiliary requests filed with the Biological processes G-II, 5.4, G-II, 5.5.1
appeal E-XII, 7.4.3 Essentially biological processes for the production of
Neither main nor auxiliary requests allowable H-III, 3.1.3 plants or animals G-II, 5.4.2
Rule 137(3) in conjunction with auxiliary Plant and animal varieties or essentially biological
requests H-II, 2.3.1.4 processes for the production of plants or
Timeliness and structure of auxiliary animals G-II, 5.4
requests H-III, 3.3.2.2
Biotechnological inventions
Availability of deposited biological material to expert Exclusions and exceptions for biotechnological
only A-IV, 4.3 inventions G-II, 5
Patentable biotechnological inventions G-II, 5.2
Awarding of costs (Decision concerning the ~ by the
opposition division) D-II, 4.2 Boards of Appeal
Accelerated processing before the boards of
appeal E-VIII, 6
B Members A-XI, 2.3
Rules of Procedure of the Boards of Appeal E-XII, 8
Background art F-II, 4.3
Format of background art citations F-II, 4.3.1 Bonus effect G-VII, 10.2

Basic principles H-IV, 3.1 Bringing the description into line with amended
Basic principles of decisions E-X, 1 claims H-V, 2.7
Consideration of time limits E-X, 1.2
Form and content E-X, 1.3 Broad claims B-III, 3.6, F-IV, 4.22

Basis Burden of proof G-IV, 7.5.3

Basis for substantive examination E-IX, 4.3.2 Burden of proof as regards the possibility of performing
Basis for the examination D-VI, 2.1, D-X, 4.2 and repeating the invention F-III, 4
Adherence to the text of the European patent Burden of proof, other "print equivalent"
submitted or approved by the patent publications G-IV, 7.5.3.2
proprietor D-VI, 2.1 Non-traditional publications G-IV, 7.5.3.3
Substantive examination (limitation) D-X, 4.2 Technical journals G-IV, 7.5.3.1
March 2024 Alphabetical keyword index – 9

Plurality of independent claims in different

C
categories F-V, 3.2.2
Prohibited matter F-II, 7.1
Calculation of claims fees H-III, 5
Central industrial property offices, conversion A-IV, 6
Calculation of time limits E-VIII, 1.4
Certificate C-V, 12
Cancellation of the registration E-XIV, 6.2 Certificate of exhibition A-IV, 3.1, E-IX, 2.4.3
Defects in the certificate or the identification A-IV, 3.2
Cancellation or maintenance of oral
proceedings E-III, 7.2 Certified copies of documents from the files or of
Change of date, cancellation or maintenance of oral other documents A-XI, 5.1
proceedings E-III, 7
Withdrawal of the request for oral proceedings E-III, 7.2.2 Certified copy of the previous application (priority
document) F-VI, 3.3
Carrying out the search B-IV, 2.3
Chair D-II, 2.3
Cascading non-unity B-VII, 1.2.2
Change of date of oral proceedings E-III, 7.1.3
Cases in which the proceedings may be Change of date of oral proceedings at the instigation of the
interrupted E-VII, 1.1 division E-III, 7.1.2

Cases of loss of rights E-VIII, 1.9.1 Change of date, cancellation or maintenance of oral
proceedings E-III, 7
Cases of oral description G-IV, 7.3.1 Cancellation or maintenance of oral
Matters to be determined by the division in cases of oral proceedings E-III, 7.2
description G-IV, 7.3.3 Changing the date of oral proceedings E-III, 7.1

Cases of partially insufficient disclosure F-III, 5 Changes in claim category in opposition H-V, 7
Absence of well-known details F-III, 5.2 Method claim to product claim H-V, 7.3
Difficulties in performing the invention F-III, 5.3 Method claim to use claim H-V, 7.4
Only variants of the invention are incapable of being Product claim to method claim H-V, 7.2
performed F-III, 5.1 Product claim to use claim H-V, 7.1

Cases under Rule 62a where claims fees have not Changes in the title H-V, 8
been paid B-VIII, 4.4
Changes of name E-XIV, 5
Cases where all method steps can be fully Registration of changes of name, transfers, licences and
implemented by generic data processing other rights E-XIV
means F-IV, 3.9.1
Changing from one searched invention to
Cases where method steps define additional devices another C-III, 3.5
and/or specific data processing means F-IV, 3.9.2
Changing the date of oral proceedings E-III, 7.1
Cases where the invention is realised in a distributed Change of date of oral proceedings E-III, 7.1.3
computing environment F-IV, 3.9.3 Change of date of oral proceedings at the instigation of the
division E-III, 7.1.2
Categories F-II, 7.1, F-IV, 3.1 Defined notice period E-III, 7.1.3
Categories of documents (X, Y, P, A, D, etc.) B-X, 9.2 Requests to change the date of oral
Documents cited for other reasons B-X, 9.2.8 proceedings E-III, 7.1.1
Documents cited in the application B-X, 9.2.7
Documents defining the state of the art and not Characteristics of the search B-III
prejudicing novelty or inventive step B-X, 9.2.2 Opinions of the search division B-III, 1
Documents relating to the theory or principle behind Scope of the search B-III, 2
the invention B-X, 9.2.5 Subject-matter of the search B-III, 3
Documents which refer to a non-written
disclosure B-X, 9.2.3 Charging of costs D-IX, 1
Intermediate documents B-X, 9.2.4 Costs to be taken into consideration D-IX, 1.3
Particularly relevant documents B-X, 9.2.1 Decisions on the apportionment of costs D-IX, 1.2
Potentially conflicting patent documents B-X, 9.2.6 General principle D-IX, 1.1
Claims in different categories G-VII, 14 Principle of equity D-IX, 1.4
Different categories B-III, 3.10
Kinds of claim F-IV, 3.1 Checking the identity and authorisations of
participants at oral proceedings E-III, 8.3.1
Alphabetical keyword index – 10 March 2024

Checklist F-II, 2.5 Claims (Art. 84 and formal requirements) F-IV

Checklist for considering the abstract F-II, An. 1 Clarity and interpretation of claims F-IV, 4
Conciseness, number of claims F-IV, 5
Chemical and mathematical formulae A-IX, 11.1 Examples concerning essential features F-IV, An.
Form and content of claims F-IV, 2
Citation Kinds of claim F-IV, 3
Citation of documents corresponding to documents not Support in description F-IV, 6
available or not published in one of the EPO's official Claims comprising technical and non-technical
languages B-VI, 6.2 features G-VII, 5.4
Citation of prior art in the description after the filing Examples of applying the COMVIK
date H-IV, 2.2.7 approach G-VII, 5.4.2
Citation of video and/or audio media fragments available Formulation of the objective technical problem for
on the internet B-X, 11.6 claims comprising technical and non-technical
features G-VII, 5.4.1
Citing documents not mentioned in the search Claims contravening Art. 123(2) or Art. 76(1) B-VIII, 6
report C-IV, 7.5 Claims directed to computer-implemented
inventions F-IV, 3.9
Claims C-IX, 1.6 Cases where all method steps can be fully
Abandoned claims B-III, 3.4 implemented by generic data processing
Amended claims F-V, 6 means F-IV, 3.9.1
Amended claims, missing parts (Rule 56) or erroneously Cases where method steps define additional devices
filed application documents or parts (Rule 56a) B-III, 3.3 and/or specific data processing means F-IV, 3.9.2
Amendments A-V, 2.1, A-V, 2.2, B-VIII, 6, C-I, 4, Cases where the invention is realised in a distributed
C-II, 3.1, D-IV, 5.2, G-IV, 3, H-II, 3.1, H-IV, 2.2.4 computing environment F-IV, 3.9.3
Amendments in claims H-V, 3 Claims fee A-II, 6.9, A-III, 9, A-III, 16.2, A-IV, 1.4.2,
Amendments in claims, further cases of broadening of A-X, 5.2.5, C-V, 4.8.1, E-IX, 2.3.8
claims H-V, 3.4 Calculation of claims fees H-III, 5
Anticipation of amendments to claims B-III, 3.5 Cases under Rule 62a where claims fees have not
Applications containing claims filed after the accorded been paid B-VIII, 4.4
filing date B-XI, 2.2 Claims fees due in response to Rule 71(3)
Arrangement of claims F-IV, 3.5 communication C-V, 1.4
Bringing the description into line with amended Claims fees payable before the grant of the European
claims H-V, 2.7 patent A-X, 7.3.2
Broad claims B-III, 3.6, F-IV, 4.22 Claims fees payable on filing the European patent
Categories F-IV, 3.1, F-V, 2.1 application A-X, 7.3.1
Claim to priority A-III, 6, A-IV, 1.2, E-IX, 2.3.5, F-VI, 3 Correction of erroneously filed application documents
Applications giving rise to a right of priority A-III, 6.2 or parts A-II, 6.9
Certified copy of the previous application (priority Crediting of claims fees A-X, 11.2
document) F-VI, 3.3 Due date for specific fees A-X, 5.2.5
Copy of the previous application (priority Examination of formal requirements A-III, 9
document) A-III, 6.7 Fees A-IV, 1.4.2
Copy of the search results for the priority or Fees to be paid within the second Rule 71(3)
priorities A-III, 6.12 period C-V, 4.8.1
Date of filing A-IV, 1.2.1 Indication of the purpose of payment in the case of
Declaration of priority A-III, 6.5, F-VI, 3.2 claims fees A-X, 7.3
Examination of formal requirements A-III, 6 Instructions in Chapter A-III ("Examination of formal
Examination of the priority document A-III, 6.4 requirements") E-IX, 2.3.8
Information on prior art E-IX, 2.3.5.2 Separate crediting of the fee for grant and publishing
Instructions in Chapter A-III ("Examination of formal and claims fees A-X, 11.3
requirements") E-IX, 2.3.5 Claims filed after accordance of a date of
Loss of right to priority A-III, 6.10 filing C-III, 1.1.2
Multiple priorities A-III, 6.3 Claims filed after the date of filing H-IV, 2.2.4
Non-entitlement to right to priority A-III, 6.9 Claims for a known substance for a number of distinct
Notification A-III, 6.11 medical uses F-V, 3.2.6
Priority F-VI, 3 Claims in different categories G-VII, 14
Priority claim of a divisional application A-IV, 1.2.2 Plurality of independent claims in different
Priority document E-IX, 2.3.5.1 categories F-V, 3.2.2
Priority period A-III, 6.6 Claims with explicit references to the description or
Re-establishment of rights in respect of the priority drawings B-III, 3.2.1
period F-VI, 3.6 Clarity F-IV, 1, F-IV, 3.4, F-IV, 4.1, F-IV, 4.5.1, F-IV, 6.4,
Restoration of priority E-IX, 2.3.5.3 F-V, 2.1
Translation of the previous application A-III, 6.8, Clarity of claims and support by the description D-V, 5
F-VI, 3.4 Common dependent claims F-V, 3.2.4
Withdrawal of priority claim F-VI, 3.5
March 2024 Alphabetical keyword index – 11

Consistent use of reference signs in description, claims Functional definition of a pathological

and drawings A-IX, 7.5.4 condition F-IV, 4.21
Content A-III, 3.2, F-IV, 5 General statements, "spirit of the invention", claim-like
Content of a European patent application (other than clauses F-IV, 4.4
claims) F-II Inconsistencies F-IV, 4.3
Correction A-V, 3, A-VI, 1.3, D-X, 4.3, H-VI, 2, H-VI, 2.2 Interpretation F-IV, 4.2
Correction of description, claims and Interpretation of expressions stating a
drawings H-VI, 2.2.1 purpose F-IV, 4.13
Correction of the translations of the claims H-VI, 5 Interpretation of terms such as identity and similarity in
Dependent claims B-III, 3.7, F-IV, 3.4, F-IV, 3.5 relation to amino or nucleic acid
Dependent claims pursuant to Art. 54(5) G-VI, 6.1.5 sequences F-IV, 4.24
Determination of the invention first mentioned in the Negative limitations (e.g. disclaimers) F-IV, 4.19
claims F-V, 3.4 Optional features F-IV, 4.9
Different sets of claims D-X, 10 Order of claims F-IV, 4.23
Errors in the description, claims and Parameters F-IV, 4.11
drawings H-VI, 2.1.1.1 Product-by-process claim F-IV, 4.12
Examples, no amended claims filed with the Reference signs F-IV, 4.18
appeal E-XII, 7.4.1 References to the description or drawings F-IV, 4.17
Extent of protection F-IV, 4.12 Relative terms F-IV, 4.6
Handling of dependent claims under Rule 62a B-VIII, 4.6 Result to be achieved F-IV, 4.10
Independent and dependent claims B-III, 3.7, F-IV, 3.4 Terms such as "about", "approximately" or
Independent claims F-IV, 3.1, F-IV, 3.2, F-IV, 3.3, "substantially" F-IV, 4.7
F-V, 2.1, F-V, 3.2.1 Trade marks F-IV, 4.8
Independent claims containing a reference to another Use claims F-IV, 4.16
claim or to features from a claim of another Clarity objections F-IV, 4.6.1, F-IV, 4.7.2, F-IV, 4.14.1
category F-IV, 3.8 Definition by reference to (use with) another
Interpretation of claims B-III, 3.2 entity F-IV, 4.14.1
Late filing of claims A-III, 15 Relative terms F-IV, 4.6.1
Limitation is different for different contracting states Terms such as "about", "approximately" or
because the claims as granted were different for different "substantially" F-IV, 4.7.2
contracting states D-X, 10.2 Clarity of claims and support by the description D-V, 5
Limitation results in the claims becoming different in Sufficiency of disclosure and clarity F-III, 11
different contracting states D-X, 10.1
Novelty of "reach-through" claims G-VI, 8 Classification
Number of independent claims F-IV, 3.2 Classification of the European patent application B-X, 5
Opposition proceedings where the claims as granted are CPC classification of the application B-V, 4
different for different contracting states H-III, 4.5 IPC classification in cases of lack of unity of
Order of claims F-IV, 4.23 invention B-V, 3.3
Plurality of independent claims in the same IPC classification of late-published search
category F-V, 3.2.1 reports B-V, 3.1
"Reach-through" claims F-III, 9 IPC classification of the application B-V, 3
Relationship between documents and claims B-X, 9.3 IPC classification where the scope of the invention is
Search on dependent claims B-III, 3.8 unclear (e.g. a partial search) B-V, 3.2
Support for dependent claims F-IV, 6.6 Preclassification, IPC and CPC classification of European
Tables in the claims A-IX, 11.2.2 patent applications B-V
Translation C-V, 1.1, D-VI, 7.2.3, E-VIII, 3.1.1 Verification of the IPC classification B-V, 3.4
Translations of the claims C-V, 1.3
Use claims F-IV, 4.16 Closest prior art and its effects on the
Using the description and/or drawings to define unclear search B-IV, 2.5
terms not defined in the claims B-III, 3.2.3
Closure of oral proceedings E-III, 8.11
Clarification of a technical effect H-V, 2.1 Adjournment of oral proceedings due to lack of
time E-III, 8.11.2
Clarifications H-IV, 2.2.8 Requesting postponement during oral
proceedings E-III, 8.11.1
Clarity F-IV, 4.1
Clarity and interpretation of claims F-IV, 4 Combination of elements in a claim B-III, 3.9
Broad claims F-IV, 4.22
Clarity F-IV, 4.1 Combination vs. juxtaposition or aggregation G-VII, 7
"Comprising" vs. "consisting of" F-IV, 4.20
Definition by reference to (use with) another Combining pieces of prior art G-VII, 6
entity F-IV, 4.14
Essential features F-IV, 4.5 Comments and amendments in response to the
Expression "in" F-IV, 4.15 search opinion B-XI, 3.3
Alphabetical keyword index – 12 March 2024

Commercial success G-VII, 10.3 Communications and notifications E-II

Communications E-II, 1
Commissioning of experts E-IV, 1.8 Notification E-II, 2
Decision on the form of the opinion E-IV, 1.8.1 Communications concerning formal deficiencies A-V,
Objection to an expert E-IV, 1.8.2 A-V, 1
Terms of reference of the expert E-IV, 1.8.3 Amendment of application A-V, 2
Correction of errors in documents filed with the
Common EPO A-V, 3
Common dependent claims F-V, 3.2.4 Communications from the opposition division to the patent
Common general knowledge of the skilled proprietor D-VI, 4
person G-VII, 3.1 Communications from the opposition
Common provisions A-VIII division D-VI, 4.1
Form of documents A-VIII, 2 Invitation to file amended documents D-VI, 4.2
Representation A-VIII, 1 Reasoned statement D-VI, 4.1
Signature of documents A-VIII, 3 Communications/oral proceedings/refusal after
Common representatives A-VIII, 1.4 resumption C-V, 4.7.1
Higher-ranking request not admissible and/or not
Commonly designated states G-IV, 5.3 allowable C-V, 4.7.1.1
Examination for deficiencies in the notice of opposition
Communication A-VI, 2.1, E-II, 1 and communications from the formalities officer arising
Admissibility in the examination procedure, after receipt of from this examination D-IV, 1
the first communication - Rule 137(3) H-II, 2.3 Examination procedure, at least one communication in
Agreement reached on a text - second Rule 71(3) examination E-IX, 4.1
communication C-V, 4.7.2 Examining division proposes amendments in second
Amendments filed in reply to a Rule 71(3) Rule 71(3) communication C-V, 4.6.3
communication H-II, 2.5 Extent of the formalities officer's obligation to issue the
Amendments filed in reply to a Rule 71(3) communication, above communications D-IV, 1.3.3
further course of proceedings H-II, 2.5.2 Filing of applications by means of electronic
Amendments/corrections admitted and allowable - second communication A-II, 1.1
Rule 71(3) communication sent C-V, 4.6 First communication C-III, 4
Communication according to Rule 161 E-IX, 3 Form of decisions, communications and notices E-II, 1.3
Applications for which a supplementary European Invitation to the patent proprietor to submit comments and
search report is prepared E-IX, 3.1, E-IX, 3.2 communication of opposition to the other parties
Exceptions where a reply to the Rule 161(1) invitation concerned by the formalities officer D-IV, 5.2
is not required E-IX, 3.3 Issue of communications by the formalities officer as a
Rule 137(4) applies E-IX, 3.4 result of examination for deficiencies D-IV, 1.3
Communication in the event of deficiencies as described Issuing a further communication (no refusal) C-V, 15.4
in D-IV, 1.2.1 which, if not remedied, will lead to the Minutes as the first communication in
opposition being deemed not to have been examination C-VII, 2.5
filed D-IV, 1.3.1 Noting and communication of loss of rights E-VIII, 1.9.2
Communication in the event of deficiencies as described Number of communications E-II, 1.2
in D-IV, 1.2.2 which, if not remedied, will lead to rejection Opposition division's communications D-VI, 3.1
of the opposition as inadmissible D-IV, 1.3.2 Request for amendments or corrections in reply to the
Communication of information contained in files A-XI, Rule 71(3) communication C-V, 4
A-XI, 3 Request for amendments or corrections in reply to the
Consultation of the European Patent Register A-XI, 4 Rule 71(3) communication, no payment of fees or filing of
Inspection of files A-XI, 2 translations necessary C-V, 4.1
Issue of certified copies A-XI, 5 Response filed before first communication in
Communication of observations from one of the parties to examination C-II, 3
the other parties D-IV, 5.4 Response to communication pursuant to Rule 58 filed with
Communication to the EPO as a designated the appeal E-XII, 7.4.4
Office E-IX, 2.7 Rule 137(4) communication and response
Communication under Rule 71(3) C-V, 1 thereto H-III, 2.1.1
Claims fees due in response to Rule 71(3) Rule 161 communication issued before 1 April
communication C-V, 1.4 2010 E-IX, 3.3.3
Communication under Rule 71(3), other information in Second Rule 71(3) communication based on higher-
the communication under Rule 71(3) C-V, 1.5 ranking request initially rejected in first Rule 71(3)
Examining division resumes examination after communication C-V, 4.6.2
approval of the text, further communication under Second Rule 71(3) communication reversing the
Rule 71(3) C-V, 6.2 amendments proposed by the examining division in first
Grant and publishing fee C-V, 1.2 Rule 71(3) communication C-V, 4.6.1
Text for approval C-V, 1.1 Standard marks for indicating amendments or corrections
Translations of the claims C-V, 1.3 by the divisions, further communication with the
applicant C-VIII, 5
March 2024 Alphabetical keyword index – 13

Time limits for response to communications from the Conditions A-X, 9.2.1
examiner C-VI, 1 Conditions for valid payment A-X, 7.1.1
Voluntary reply to Rule 161(1) communication E-IX, 3.3.4 Conditions if drawings are filed on paper A-IX, 3

Comparative test results E-IX, 4.3.1 Conduct of oral proceedings E-III, 8, E-III, 8.2
Admission of the public to proceedings E-III, 8.1
Compensation E-IV, 1.10.2 Closure of oral proceedings E-III, 8.11
Discussion of the facts and of the legal position E-III, 8.9
Competence E-IV, 2.3 Facts, evidence or amendments introduced at a late
stage E-III, 8.6
Complete Handwritten amendments in oral proceedings E-III, 8.7
Complete search despite lack of unity B-VII, 2.2 Non-appearance of a party E-III, 8.3
Complete text for auxiliary request available H-III, 3.3.5 Opening of oral proceedings E-III, 8.3
Complete text for auxiliary request not yet Opening of the substantive part of the
available H-III, 3.3.4 proceedings E-III, 8.4
Participation of members of the division from different
Completeness of the search B-III, 2.1 locations E-III, 8.2.2
Participation of parties and their representatives from
Compliance of amendments with other EPC different locations E-III, 8.2.1
requirements H-IV, 5 Recording E-III, 8.2.4
Compliance of amendments with other EPC requirements, Right of the other members of the division to put
in examination proceedings H-IV, 5.2 questions E-III, 8.10
Compliance of amendments with other EPC requirements, Submissions by the parties E-III, 8.5
in limitation proceedings H-IV, 5.4 Technical problems E-III, 8.2.3
Art. 84 H-IV, 5.4.1 Use of Rule 137(4) for amendments filed during oral
Examination of the description and/or proceedings in examination E-III, 8.8
drawings H-IV, 5.4.2
Points to be disregarded H-IV, 5.4.3 Conducting file inspections A-XI, 2.2
Compliance of amendments with other EPC requirements,
in opposition proceedings H-IV, 5.3 Confidentiality C-VII, 3.2
Confidentiality of the request A-XI, 2.4
Composition and duties of the examining
division E-XIII, 3 Confirmation A-II, 3.1
Composition E-XIII, 3.1 Confirmation of the intention to proceed further with the
Duties E-XIII, 3.2 application C-II, 1.1

Compositions D-II, 2, E-XIII, 3.1, G-II, 4.2 Conflict

Chair D-II, 2.3 Conflict between abstract and source document B-VI, 6.3
Composition and duties of the examining Conflict with national rights of earlier date G-IV, 6
division E-XIII, 3.1 Conflict with other European applications G-IV, 5
Exceptions to patentability G-II, 4.2 Commonly designated states G-IV, 5.3
Legally qualified members D-II, 2.2 Double patenting G-IV, 5.4
Opposition division D-II, 2 Euro-PCT applications G-IV, 5.2
Substances and compositions G-II, 4.2 State of the art pursuant to Art. 54(3) G-IV, 5.1
Technically qualified members D-II, 2.1 Conflicting applications B-VI, 4
National prior rights B-VI, 4.2
Compound units F-II, An. 2, 5 Potentially conflicting European and international
applications B-VI, 4.1
"Comprising" vs. "consisting of" F-IV, 4.20 Conflicts between Art. 123(2) and Art. 123(3) H-IV, 3.5
Conflicts between Art. 123(3) and other requirements of
Computer print-out E-II, 2.1 the EPC H-IV, 3.6

Computer programs F-II, 4.12, G-II, 3.6 Consequences for the applicant F-V, 4.2
Description (formal requirements) F-II, 4.12
List of exclusions G-II, 3.6 Consequences of non-payment of the designation
fee A-III, 11.2.3, A-III, 11.3.2
Computer-implemented business European patent applications filed before 1 April
methods B-VIII, 2.2.1 2009 A-III, 11.3.2
European patent applications filed on or after 1 April
Computers (Programs for ~) G-II, 3.6 2009 A-III, 11.2.3

Concept of "clear allowability" H-II, 2.7.1 Conservation of evidence E-IV, 2

Competence E-IV, 2.3
Conciseness, number of claims F-IV, 5
Alphabetical keyword index – 14 March 2024

Decision on the request and the taking of Content of the application as "originally" filed H-IV, 2.2,
evidence E-IV, 2.4 H-IV, 2.3
Request for the conservation of evidence E-IV, 2.2 Applications filed by reference to an earlier
Requirements E-IV, 2.1 application H-IV, 2.3.1
Taking and conservation of evidence E-IV Applications resulting from a decision under
Art. 61 H-IV, 2.3.3
Consideration of the contents of the IPER E-IX, 4.3.3 Citation of prior art in the description after the filing
date H-IV, 2.2.7
Consideration of time limits E-X, 1.2 Claims filed after the date of filing H-IV, 2.2.4
Clarifications H-IV, 2.2.8
Considerations relating to specific exclusions from Divisional applications H-IV, 2.3.2
and exceptions to patentability B-VIII, 2 Erroneously filed application documents or parts under
Methods for treatment of the human or animal body by Rule 56a H-IV, 2.2.3
surgery or therapy and diagnostic methods practised on Features described in a document cross-referenced in
the human or animal body B-VIII, 2.1 the description H-IV, 2.2.1
Subject-matter excluded from patentability under Art. 52(2) International applications H-IV, 2.3.4
and (3) B-VIII, 2.2 Missing parts of the description or missing drawings
filed under Rule 56 after the date of filing H-IV, 2.2.2
Consistent use of reference signs in description, Priority documents H-IV, 2.2.6
claims and drawings A-IX, 7.5.4 Sequence listings filed after the date of
filing H-IV, 2.2.5
Consistent use of reference signs in Trade marks H-IV, 2.2.9
drawings A-IX, 7.5.5 Content of the extended European search report
(EESR) B-VIII, 3.3, B-VIII, 4.3
Consolidation of proceedings E-VII, 4 More than one independent claim per category
(Rule 62a) B-VIII, 4.3
Consultations C-VII, 2 No meaningful search possible B-VIII, 3.3
Consultation of a legally qualified member C-VIII, 7 Content of the notice of opposition D-III, 6
Consultation of the European Patent Register A-XI, Content of the publication A-VI, 1.3
A-XI, 4 Contents of prior-art disclosures B-VI, 6
Communication of information contained in the Citation of documents corresponding to documents not
files A-XI, 3 available or not published in one of the EPO's official
Inspection of files A-XI, 2 languages B-VI, 6.2
Issue of certified copies A-XI, 5 Conflict between abstract and source
Consultation with other examiners B-I, 2.1 document B-VI, 6.3
Informal nature of consultations C-VII, 2.3 Incorrect compound records in online
Minutes as the first communication in databases B-VI, 6.5
examination C-VII, 2.5 Insufficient prior-art disclosures B-VI, 6.4
Minutes of a consultation C-VII, 2.4 Decisions taken by the examining or opposition
Persons participating in the consultation C-VII, 2.2 divisions E-X, 2.7
Definitive content F-II, 2.2
Contact between the applicant and the search Form and content E-X, 1.3, F-II, 5.1
division B-II, 1.1 Form and content of claims F-IV, 2
Intermediate publication of the contents of the priority
Content B-IX, 4.1, E-X, 2.7 application F-VI, 2.4.1
Accorded date of filing and content of the application still Non-patent literature arranged for library-type
subject to review G-IV, 5.1.2 access B-IX, 4.1
Analysis of the application and content of the search Organisation and content of the documentation available
opinion B-XI, 3 to the search divisions B-IX, 1.1
Consideration of the contents of the IPER E-IX, 4.3.3
Content of a European patent application (other than Continuation
claims) F-II Continuation of proceedings D-VII, 4.2
Abstract F-II, 2 Continuation after a final decision D-VII, 4.2.1
Checklist for considering the abstract F-II, An. 1 Continuation regardless of the stage reached in
Description (formal requirements) F-II, 4 national proceedings D-VII, 4.2.2
Drawings F-II, 5 Continuation of the opposition proceedings in the cases
Prohibited matter F-II, 7 covered by Rule 84 D-VII, 5
Request for grant F-II, 3 Continuation after the opposition has been
Sequence listings F-II, 6 withdrawn D-VII, 5.3
Title F-II, 3 Continuation in the case of surrender or lapse of the
Units recognised in international practice as patent D-VII, 5.1
determined by the President under Continuation on the death or legal incapacity of the
Rule 49(2) F-II, An. 2 opponent D-VII, 5.2
Content of the abstract A-III, 10.2, F-II, 2.3
March 2024 Alphabetical keyword index – 15

Contracting States Later-filed correct application documents or parts when

Contracting states to the EPC General Part, 6 priority is claimed A-II, 6.4.1
Designation of contracting states A-III, 11, A-IV, 1.3.4 Translation of the priority application A-II, 6.4.3
Different claims, description and drawings for different Correct application documents or parts filed after the
States G-IV, 6 search has started A-II, 6.7
Different texts in respect of different contracting Correcting an existing priority claim A-III, 6.5.2
states H-III, 4
Indication of the contracting states A-III, 11.3.6 Corrections H-II, 2.6
Limitation is different for different contracting states Amendments and corrections Part H, H-II, 2.6
because the claims as granted were different for different Amendments or corrections should be reasoned C-V, 4.3
contracting states D-X, 10.2 Amendments/corrections admitted and allowable - second
Limitation results in the claims becoming different in Rule 71(3) communication sent C-V, 4.6
different contracting states D-X, 10.1 Amendments/corrections filed in second Rule 71(3)
Opposition proceedings where the claims as granted are period C-V, 4.10
different for different contracting states H-III, 4.5 Correction and certification of the translation A-VII, 7
Taking of evidence by courts or authorities of the Correction of deficiencies A-III, 16
contracting states E-IV, 3 Period allowed for remedying deficiencies A-III, 16.2
Procedure for formalities officers A-III, 16.1
Contribution to the known art B-XI, 3.5 Correction of description, claims and
drawings H-VI, 2.2.1
Convention, on international exhibitions A-IV, 3.1 Correction of erroneously filed application documents or
parts A-II, 6, A-II, 6.1, A-II, 6.2
Conventional symbols A-IX, 9 Additional fee for pages A-II, 6.8
Claims fee A-II, 6.9
Conversion A-IV, 6 Correct application documents based on priority
Conversion fee A-IV, 6 application, no change in the filing date A-II, 6.4
Conversion into a national application A-IV, 6 Correct application documents or parts filed after the
Request for conversion A-IV, 6 search has started A-II, 6.7
Request for conversion into a national application A-IV, 6 Filing date changes A-II, 6.3
On invitation A-II, 6.1
Co-operation (Legal ~) E-IV, 3.1 Same-day corrections A-II, 6.6
Withdrawal of correct application documents or
Copy parts A-II, 6.5
Copies to be made available with the search Without invitation A-II, 6.2
report B-X, 11 Correction of errors A-V, H-VI
"&" sign B-X, 11.3 Amendment of application A-V, 2
Citation of video and/or audio media fragments Communications concerning formal
available on the internet B-X, 11.6 deficiencies A-V, 1
Electronic version of cited document B-X, 11.2 Correction of errors in the decision to grant C-V, 7
Patent family members B-X, 11.3 Correction of formatting/editing errors H-VI, 4
Reviews or books B-X, 11.4 Correction of the translations of the claims H-VI, 5
Summaries, extracts or abstracts B-X, 11.5 Errors in publication H-VI, 6
Copy of the international application E-IX, 2.1.2 Correction of errors in decisions H-VI, 3
Copy of the previous application (priority Admissibility H-VI, 3.1
document) A-III, 6.7 Allowability of the correction of bibliographic
Certified copy of the previous application (priority data H-VI, 3.2
document) F-VI, 3.3 Correction of the decision to grant while opposition
Copy of the priority application A-II, 5.4.3, A-II, 6.4.2 proceedings are pending H-VI, 3.3
Correct application documents based on priority Procedural aspects H-VI, 3.3
application, no change in the filing date A-II, 6.4.2 Correction of errors in documents filed with the
Missing parts of the description or missing drawings EPO A-V, 3, H-VI, 2
based on the priority application, no change in filing Admissibility H-VI, 2.1
date A-II, 5.4.3 Allowability H-VI, 2.2
Copy of the search results for the priority or Missing parts of description, missing drawings or
priorities A-III, 6.12, C-II, 5 correction of erroneously filed application documents filed
Claim to priority A-III, 6.12 as corrections under Rule 139 H-VI, 2.2.2
Formal requirements to be met before the division Request for amendments or corrections in reply to the
starts substantive examination C-II, 5 Rule 71(3) communication C-V, 4
Request for amendments or corrections in reply to the
Correct Rule 71(3) communication, no payment of fees or filing of
Correct application documents based on priority translations necessary C-V, 4.1
application, no change in the filing date A-II, 6.4 Standard marks for indicating amendments or corrections
Copy of the priority application A-II, 6.4.2 by the divisions C-V, An.
Alphabetical keyword index – 16 March 2024

Standard marks for indicating amendments or corrections

D
by the divisions, further communication with the
applicant C-VIII, 5
Standard marks for indicating amendments or corrections Data retrieval, formats and structures G-II, 3.6.3
by the divisions, further ways to accelerate
examination C-VI, 3 Database management systems and information
retrieval G-II, 3.6.4
"Corresponding documents" B-X, 9.1.2
Date
Costs D-IX, E-VI, 2.2.5 Date considered as date on which payment is
Appeal against the fixing of costs by the opposition made A-X, 4
division D-IX, 2.2 Automatic debiting procedure A-X, 4.3
Appeals against the apportionment of costs E-XII, 3 Deposit accounts with the EPO A-X, 4.2
Appeals against the decision of the opposition division on Payment by credit card A-X, 4.4
the fixing of costs E-XII, 4 Payment or transfer to a bank account held by the
Charging of costs D-IX, 1 European Patent Organisation A-X, 4.1
Costs arising from oral proceedings or taking of Date of filing A-II, 4.1.5, A-IV, 1.2.1, G-VII, 2
evidence E-IV, 1.9 Accorded date of filing and content of the application
Costs of taking evidence E-IV, 3.5 still subject to review G-IV, 5.1.2
Costs to be taken into consideration D-IX, 1.3 Claims filed after accordance of a date of
Decision concerning the awarding of costs by the filing C-III, 1.1.2
opposition division D-II, 4.2 Claims filed after the date of filing H-IV, 2.2.4
Decisions on the apportionment of costs D-IX, 1.2 Date of filing or priority date as effective date G-IV, 3
Enforcement of the fixing of costs D-IX, 3 Minimum requirements for according a date of
Fixing of costs by the opposition division D-IX, 2.1 filing A-II, 4.1
Procedure for the fixing of costs D-IX, 2 Missing parts of the description or missing drawings
filed under Rule 56 after the date of filing H-IV, 2.2.2
Could-would approach G-VII, 5.3 Sequence listings filed after the date of
filing H-IV, 2.2.5
CPC classification of the application B-V, 4 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,
Creations G-II, 3.4 C-IX, 1.4
Aesthetic creations G-II, 3.4 Priority claim of a divisional application A-IV, 1.2.2
Date of interruption E-VII, 1.3
Crediting Date of priority A-IV, 1.2.1, A-IV, 1.2.2, A-IV, 2.5,
Crediting of fees paid voluntarily C-V, 4.2 C-IX, 1.1, C-IX, 2.1, F-VI, 1.2, G-IV, 3, G-IV, 5.1
Crediting of fees under Rule 71a(5) A-X, 11, C-V, 6.3 Date of publication A-VI, 1.1
Crediting of claims fees A-X, 11.2 Date of receipt A-II, 3.1, A-II, 3.2
Crediting of fees under Rule 71a(5), further processing Date of receipt of the debit order A-X, 4.2.4
fee and crediting of fees A-X, 11.4 Date of the stay of proceedings A-IV, 2.2.2, D-VII, 4.1.1
Examining division resumes examination after Stay of proceedings D-VII, 4.1.1
approval of the text C-V, 6.3 Stay of proceedings for grant A-IV, 2.2.2
Fees A-X, 11
Separate crediting of the fee for grant and publishing Dealing with different texts in examination H-III, 4.1
and claims fees A-X, 11.3
Crediting of the fee for grant and publishing A-X, 11.1 Death or legal incapacity E-VII, 1.1
Separate crediting of the fee for grant and publishing Continuation on the death or legal incapacity of the
and claims fees A-X, 11.3 opponent D-VII, 5.2

Criteria for admissibility of auxiliary Debit

requests H-III, 3.3.2.1 Debit orders filed with a competent national
authority A-X, 6.2.3
Criteria for admitting such amendments H-II, 2.5.1 Debit orders for deposit accounts held with the
EPO A-II, 1.5
Cross-references between prior-art Debiting the deposit account A-X, 4.2.3
documents G-IV, 8
Decisions C-VIII, 6, D-VIII, 2, E-X
Cross-sections A-IX, 7.3 Basic principles of decisions E-X, 1
Hatching A-IX, 7.3.2 Binding nature of decisions on appeals E-X, 4
Sectional diagrams A-IX, 7.3.1 Correction of errors in decisions H-VI, 3
Decision according to the state of the file C-V, 15
Currencies A-X, 3 Decision by means of a standard form C-V, 15.2
March 2024 Alphabetical keyword index – 17

Issuing a further communication (no Defects in the certificate or the identification A-IV, 3.2
refusal) C-V, 15.4
Issuing a self-contained decision C-V, 15.3 Deficiencies A-II, 4.1.4, A-III, 5.4
Request for a decision according to the state of the Communication in the event of deficiencies as described
file C-V, 15.1 in D-IV, 1.2.1 which, if not remedied, will lead to the
Decision concerning the admissibility of an opposition, the opposition being deemed not to have been
patent proprietor being a party D-IV, 5.5 filed D-IV, 1.3.1
Decision concerning the awarding of costs by the Communication in the event of deficiencies as described
opposition division D-II, 4.2 in D-IV, 1.2.2 which, if not remedied, will lead to rejection
Decision on a notified loss of rights at the request of the of the opposition as inadmissible D-IV, 1.3.2
person concerned D-VIII, 2.3 Communications concerning formal deficiencies A-V,
Decision on closure of the opposition A-V, 1
proceedings D-VIII, 2.5 Correction of deficiencies A-III, 16
Decision on loss of rights E-VIII, 1.9.3 Deficiencies in the priority claim and loss of the priority
Decision on re-establishment of rights D-VIII, 2.4, right A-III, 6.5.3
E-VIII, 3.3 Deficiencies which lead to the request being deemed not
Other decisions D-VIII, 2.4 to have been filed D-X, 2.1
Re-establishment of rights E-VIII, 3.3 Deficiencies which may no longer be remedied in
Decision on request for revocation D-X, 3 accordance with Rule 77(1) and (2), resulting in the
Decision on the documents on the basis of which the opposition being rejected as inadmissible D-IV, 1.4.2
patent is to be maintained D-VI, 7.2.2 Deficiencies which may no longer be remedied, as a result
Decision on the form of the opinion E-IV, 1.8.1 of which the opposition is deemed not to have been
Decision on the inadmissibility of an opposition or filed D-IV, 1.4.1
intervention D-VIII, 2.1 Deficiencies which, if not remedied, lead to the opposition
Decision on the request and the taking of being deemed not to have been filed D-IV, 1.2.1
evidence E-IV, 2.4 Deficiencies which, if not remedied, lead to the opposition
Decisions of the opposition division D-VIII, 2 being rejected as inadmissible D-IV, 1.2.2
Decisions of the opposition division D-VIII Deficiencies under Rule 77(1) D-IV, 1.2.2.1
Final decisions on an admissible opposition D-VIII, 1 Deficiencies under Rule 77(2) D-IV, 1.2.2.2
Other decisions D-VIII, 2 Deficiencies which, if not remedied, lead to the request
Decisions on the apportionment of costs D-IX, 1.2 being rejected as inadmissible D-X, 2.2
Decisions taken by the examining or opposition Examination for deficiencies in the notice of
divisions E-X, 2 opposition D-IV, 1.2
Analysing the parties' arguments E-X, 2.8 Examination for deficiencies in the notice of opposition
Authoritative text of documents E-X, 2.2 and communications from the formalities officer arising
Content E-X, 2.7 from this examination D-IV, 1
Decision on the file as it stands E-X, 2.5 Examination for deficiencies in the request D-X, 2
Facts and submissions E-X, 2.4 Formal deficiencies B-IV, 1.2
Late-filed submissions E-X, 2.10 Issue of communications by the formalities officer as a
Main and auxiliary requests E-X, 2.9 result of examination for deficiencies D-IV, 1.3
Reasoning of decisions E-X, 2.6 Period allowed for remedying deficiencies A-III, 16.2
Refusal to admit amendments under Subsequent procedure in the event of deficiencies which
Rule 137(3) E-X, 2.11 may no longer be remedied D-IV, 1.4
Requirements as to form E-X, 2.3
Right to be heard E-X, 2.1 Defined notice period E-III, 7.1.3
Decisions which do not terminate
proceedings D-VIII, 2.2, E-X, 3 Definitions B-V, 1
Decisions, notification E-II, 2.1 Definition by functional and structural features G-II, 6.1.4
Expiry of the term of the European patent E-X, 7 Definition by hybridoma G-II, 6.1.6
Form of decisions, communications and notices E-II, 1.3 Definition by production process G-II, 6.1.5
Information as to means of redress E-X, 5 Definition by reference to (use with) another
Interlocutory decisions E-X, 3 entity F-IV, 4.14
Legal status of decisions D-X, 8 Clarity objections F-IV, 4.14.1
Notification E-X, 6 Dimensions and/or shape defined by reference to
Work within the examining division C-VIII, 6 another entity F-IV, 4.14.2
Definition by reference to the target antigen G-II, 6.1.2
Declaration of priority A-III, 6.5, F-VI, 3.2 Definition by structure of the antibody G-II, 6.1.1
Correcting an existing priority claim A-III, 6.5.2 Definition by target antigen and further functional
Deficiencies in the priority claim and loss of the priority features G-II, 6.1.3
right A-III, 6.5.3 Definition in terms of function F-IV, 6.5
Filing a new priority claim A-III, 6.5.1 Definition of essential features F-IV, 4.5.2
General remarks and definitions G-II, 5.1, G-IV, 1
Declaration replacing the translation A-III, 6.8.6
Definitive content F-II, 2.2
Alphabetical keyword index – 18 March 2024

Deletion of part of the claimed subject- Amendments in the description H-V, 2

matter H-V, 3.3 Bringing the description into line with amended
claims H-V, 2.7
Delivery of the decision E-III, 9 Cases of oral description G-IV, 7.3.1
Citation of prior art in the description after the filing
Department responsible D-VII, 4.4, D-X, 4.1 date H-IV, 2.2.7
Procedure where the patent proprietor is not Claims with explicit references to the description or
entitled D-VII, 4.4 drawings B-III, 3.2.1
Substantive examination (limitation) D-X, 4.1 Clarity of claims and support by the description D-V, 5
Consistent use of reference signs in description, claims
Departments of the EPO (Taking of evidence by the ~) and drawings A-IX, 7.5.4
E-IV, 1 Content F-II, 4.1
Correction A-V, 3, A-VI, 1.3, D-X, 4.3, H-VI, 2, H-VI, 2.2
Dependent claims F-V, 3.2.3, G-VII, 14 Correction of description, claims and
Common dependent claims F-V, 3.2.4 drawings H-VI, 2.2.1
Dependent claims pursuant to Art. 54(5) G-VI, 6.1.5 Description (formal requirements) F-II, 4
Handling of dependent claims under Rule 62a B-VIII, 4.6 Background art F-II, 4.3
Independent and dependent claims B-III, 3.7, F-IV, 3.4 Computer programs F-II, 4.12
Search on dependent claims B-III, 3.8 Industrial application F-II, 4.9
Support for dependent claims F-IV, 6.6 Irrelevant matter F-II, 4.4
Manner and order of presentation F-II, 4.10
Deposit Physical values, units F-II, 4.13
Debit orders for deposit accounts held with the Reference in the description to drawings F-II, 4.7
EPO A-II, 1.5 Reference signs F-II, 4.8
Deposit accounts with the EPO A-X, 4.2 Registered trade marks F-II, 4.14
Date of receipt of the debit order A-X, 4.2.4 Rule 42(1)(c) vs. Art. 52(1) F-II, 4.6
Debiting the deposit account A-X, 4.2.3 Technical field F-II, 4.2
Insufficient funds A-X, 4.2.4 Technical problem and its solution F-II, 4.5
Payments to replenish a deposit account A-X, 4.2.2 Terminology F-II, 4.11
Deposit of biological material F-III, 6.3 Description and drawings C-IX, 1.5
New deposit of biological material A-IV, 4.1.1 Different description for different Contracting
Deposit of such A-IV, 4.1 States G-IV, 6
Application filed by reference to a previously filed Errors in the description, claims and
application A-IV, 4.1.2 drawings H-VI, 2.1.1.1
New deposit of biological material A-IV, 4.1.1 Examination of the description and/or
Refunds to a deposit account A-X, 10.3.1 drawings H-IV, 5.4.2
Safety provision for late replenishment of deposit Features described in a document cross-referenced in the
accounts A-X, 6.2.2 description H-IV, 2.2.1
Late filing of missing drawings or missing parts of the
Derogations description A-II, 5, A-II, 5.1, A-II, 5.2
Derogations from language requirements D-III, 4 Matters to be determined by the division in cases of oral
Derogations from the language of the proceedings in oral description G-IV, 7.3.3
proceedings A-VII, 4, E-V Missing parts of description, missing drawings or
Exceptions from sections 1 and 2 E-V, 3 correction of erroneously filed application documents filed
Language of a contracting state or other as corrections under Rule 139 H-VI, 2.2.2
language E-V, 2 Missing parts of the description or missing drawings are
Language used by employees of the EPO E-V, 5 completely contained in the priority application A-II, 5.4.2
Language used in the minutes E-V, 6 Missing parts of the description or missing drawings based
Language used in the taking of evidence E-V, 4 on the priority application, no change in filing
Use of an official language E-V, 1 date A-II, 5.4
Derogations from the language of the proceedings in Missing parts of the description or missing drawings filed
written proceedings A-VII, 3 under Rule 56 after the date of filing H-IV, 2.2.2
Admissible non-EPO languages A-VII, 3.2 Non-prejudicial oral description G-IV, 7.3.2
Documents filed as evidence A-VII, 3.4 Reference to a previously filed application A-II, 4.1.3.1
Parties' written submissions A-VII, 3.1 State of the art made available by means of oral
Priority document A-VII, 3.3 description G-IV, 7.3
Third-party observations A-VII, 3.5 State of the art made available to the public "by means of
a written or oral description, by use, or in any other
Description A-II, 4.1.3, F-II, 1 way" G-IV, 7
Adaptation of the description C-V, 4.5 Subject-matter taken from the description H-IV, 4.1.2
Alteration, excision or addition of text in the Support in description F-IV, 6
description H-V, 2.6 Tables in the description A-IX, 11.2.1
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
March 2024 Alphabetical keyword index – 19

Using the description and/or drawings to define clear Determination of filing date in the case of erroneously
terms given a definition different from their usual filed elements or parts of the international
meaning B-III, 3.2.4 application E-IX, 2.9.4
Using the description and/or drawings to define unclear
terms not defined in the claims B-III, 3.2.3 Determination of the closest prior art G-VII, 5.1
Using the description and/or drawings to identify the
technical problem B-III, 3.2.2 Determination of the invention first mentioned in the
Withdrawal of late-filed missing drawings or missing parts claims F-V, 3.4
of the description A-II, 5.5
Determination of time limits E-VIII, 1.1
Designated Office (Communication to the EPO as a ~)
E-IX, 2.7 Determining priority dates F-VI, 2
Examining the validity of a right to priority F-VI, 2.1
Designation Priority claim not valid F-VI, 2.3
Designation fee A-III, 11.2.1, A-III, 11.2.2, A-III, 11.3.1, Same invention F-VI, 2.2
A-IV, 1.4.1, E-IX, 2.3.11 Some examples of determining priority dates F-VI, 2.4
Consequences of non-payment of the designation
fee A-III, 11.2.3, A-III, 11.3.2 Devising a search strategy B-IV, 2.2
Designation fees, extension and validation
fees C-II, 4 Diagnostic methods G-II, 4.2, G-II, 4.2.1, G-II, 4.2.1.3
European divisional application A-III, 11.2.1, Exceptions to patentability G-II, 4.2
A-IV, 1.3.4, A-IV, 1.4.1 Limitations of exception under Art. 53(c) G-II, 4.2.1.3
European patent applications filed on or after 1 April Methods for treatment of the human or animal body by
2009 A-III, 11.2.2 surgery or therapy and diagnostic methods practised on
Examination fee and designation fee A-X, 5.2.2 the human or animal body B-VIII, 2.1
Filing fee, designation fee, request for examination and Surgery, therapy and diagnostic methods G-II, 4.2
search fee E-IX, 2.1.4
Filing, search and designation fee(s) A-IV, 1.4.1 Diagnostic uses pursuant to Art. 54(5) G-VI, 6.1.3
Indication of the purpose of the payment in the case of
designation fees A-X, 7.2 Diagrams (Sectional ~) A-IX, 7.3.1
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.11 Different categories B-III, 3.10
Payment of designation fee A-III, 11.2.2 Claims in different categories G-VII, 14
Designation of contracting states A-III, 11, A-IV, 1.3.4 Plurality of independent claims in different
European patent applications filed before 1 April categories F-V, 3.2.2
2009 A-III, 11.3
European patent applications filed on or after 1 April Different sets of claims D-X, 10
2009 A-III, 11.2 Limitation is different for different contracting states
Designation of inventor A-III, 5, A-IV, 1.5, E-IX, 2.3.4 because the claims as granted were different for different
Deficiencies A-III, 5.4 contracting states D-X, 10.2
Designation filed in a separate document A-III, 5.3 Limitation results in the claims becoming different in
European divisional applications A-IV, 1.5 different contracting states D-X, 10.1
Examination of formal requirements A-III, 5
Incorrect designation A-III, 5.5 Different text in respect of the state of the art
Waiver of right to be mentioned as inventor A-III, 5.2 according to Art. 54(3) EPC and Art. 54(4) EPC
Of Contracting States A-IV, 1.3.4, A-VI, 1.3, C-V, 10 1973 H-III, 4.2
Withdrawal of application or designation E-VIII, 8.1
Withdrawal of designation A-III, 11.2.4, A-III, 11.3.8 Different text where a transfer of right takes place
pursuant to Art. 61 in examination
Details and special features of the proceedings D-VII proceedings H-III, 4.3.1
Continuation of the opposition proceedings in the cases
covered by Rule 84 D-VII, 5 Different text where a transfer of right takes place
Intervention of the assumed infringer D-VII, 6 pursuant to Art. 61 or Rule 78 in respect of certain
Procedure where the patent proprietor is not designated states H-III, 4.3
entitled D-VII, 4 Different text where a transfer of right takes place
Publication of a new specification of the patent D-VII, 7 pursuant to Art. 61 in examination
Request for documents D-VII, 2 proceedings H-III, 4.3.1
Sequence of proceedings D-VII, 1 Different texts where a transfer of the patent in respect of
Transitional provisions for Art. 54(4) EPC 1973 and certain designated states takes place in opposition
Art. 54(5) D-VII, 8 proceedings H-III, 4.3.2
Unity of the European patent D-VII, 3 Opposition cases with different texts where a transfer of
rights by virtue of a final decision pursuant to Art. 61 takes
Details of the entitlements of witnesses and place in examination proceedings H-III, 4.3.3
experts E-IV, 1.10.3
Alphabetical keyword index – 20 March 2024

Different texts in respect of different contracting Sufficiency of disclosure and clarity F-III, 11
states H-III, 4 Sufficiency of disclosure and inventive step F-III, 12
Dealing with different texts in examination H-III, 4.1 Sufficiency of disclosure and Rules 56 and 56a F-III, 10
Different text in respect of the state of the art according to Summary of the disclosure F-II, 2.3
Art. 54(3) EPC and Art. 54(4) EPC 1973 H-III, 4.2
Different text where a transfer of right takes place Discoveries G-II, 3.1
pursuant to Art. 61 or Rule 78 in respect of certain
designated states H-III, 4.3 Dislocation in delivery of mail A-II, 1.6, E-VIII, 1.6.2.2
Different texts where national rights of earlier date
exist H-III, 4.4 Disparaging statements A-III, 8.2, F-II, 7.3
Opposition proceedings where the claims as granted are
different for different contracting states H-III, 4.5 Dispensing with the supplementary European search
report B-II, 4.3.1
Different texts where a transfer of the patent in
respect of certain designated states takes place in Display at an exhibition A-IV, 3
opposition proceedings H-III, 4.3.2 Certificate of exhibition A-IV, 3.1
Defects in the certificate or the identification A-IV, 3.2
Different texts where national rights of earlier date Identification of invention A-IV, 3.1
exist H-III, 4.4
Distinction between allowable and unallowable
Different types of search report drawn up by the amendments D-V, 6.2
EPO B-X, 2
Divisional application C-IX, 1, E-IX, 2.4.1, H-IV, 2.3.2
Difficulties in performing the invention F-III, 5.3 Abandonment of subject-matter C-IX, 1.3
Additional fee for divisional applications A-III, 13.3
Dimensions and/or shape defined by reference to Additional fee for divisional applications of second or
another entity F-IV, 4.14.2 subsequent generations A-IV, 1.4.1.1
Claims C-IX, 1.6
Disclaimers H-V, 4 Date of filing of a divisional application A-IV, 1.2
Disclaimer disclosed in the application as originally Description and drawings C-IX, 1.5
filed H-V, 4.1 European divisional application A-IV, 1, A-VII, 1.3
Disclaimers not disclosed in the application as originally European divisional applications, other formalities
filed H-V, 4.2 examination A-IV, 1.7
Subject-matter to be excluded is disclosed in the Examination of a divisional application C-IX, 1.4
application as originally filed H-V, 4.2.2 Filing a divisional application A-IV, 1.3, C-III, 3.3
Subject-matter to be excluded is not disclosed in the Instructions in Chapter A-IV ("Special
application as originally filed (so-called undisclosed provisions") E-IX, 2.4.1
disclaimers) H-V, 4.2.1 Persons entitled to file a divisional application A-IV, 1.1.3
Negative limitations (e.g. disclaimers) F-IV, 4.19 Priority claim of a divisional application A-IV, 1.2.2
Search, publication and request for examination of
Disclosure divisional applications A-IV, 1.8
Cases of partially insufficient disclosure F-III, 5 Sequence listings of a divisional application A-IV, 5.4
Contents of prior-art disclosures B-VI, 6 Sequences of divisional applications A-IV, 1.1.2
Disclosures which have no date or an unreliable Special applications C-IX, 1
date G-IV, 7.5.4 Voluntary and mandatory division C-IX, 1.2
Documents which refer to a non-written Where and how to file a divisional application A-IV, 1.3.1
disclosure B-X, 9.2.3
Enabling disclosure G-IV, 2 Division's approach F-V, 2.2
Generic disclosure and specific examples G-VI, 4 Search division's approach B-XI, 3.7
Implicit disclosure and parameters G-VI, 5
Insufficient disclosure D-V, 4 Documents
Insufficient disclosure of the invention D-V, 4 Additional fee (if application documents comprise more
Insufficient prior-art disclosures B-VI, 6.4 than 35 pages) A-III, 13.2
Internet disclosures G-IV, 7.5 Amended claims, missing parts (Rule 56) or erroneously
Internet disclosures ‒ technical journals B-VI, 7 filed application documents or parts (Rule 56a) B-III, 3.3
Lack of support vs. insufficient disclosure F-IV, 6.4 Amendment by submitting missing documents or by filing
Non-prejudicial disclosure B-VI, 5.5 replacement pages H-III, 2.2
Of the invention F-II, 4.1, F-III, 1, F-III, 2, F-III, 3, Application documents filed under Rule 56 EPC,
F-III, 6.1, F-IV, 6.4 Rule 56a EPC, Rule 20.5 PCT or
Oral disclosure, use, exhibition, etc. as state of the Rule 20.5bis PCT B-XI, 2.1
art B-VI, 2 Application documents filed under Rule 56 or
Subject-matter of the European patent extending beyond Rule 56a C-III, 1.1.1
the original disclosure D-V, 6 Application documents for the supplementary European
Sufficiency of disclosure F-III, F-III, 1 search report B-II, 4.3.3
March 2024 Alphabetical keyword index – 21

Authoritative text of documents E-X, 2.2 Excluded from file inspection A-XI, 2.3, D-II, 4.3
Certified copies of documents from the files or of other Filing of amended documents in reply to the notice of
documents A-XI, 5.1 opposition D-IV, 5.3
Citation of documents corresponding to documents not Filing of subsequent documents A-VIII, 2.5
available or not published in one of the EPO's official Form of documents A-VIII, 2
languages B-VI, 6.2 Form of documents, other documents A-VIII, 2.3
Citing documents not mentioned in the search Intermediate documents B-VI, 5.2, B-X, 9.2.4
report C-IV, 7.5 Invitation to file amended documents D-VI, 4.2
Correct application documents based on priority Language A-VII, 5, E-IX, 2.1.3, E-IX, 4.3
application, no change in the filing date A-II, 6.4 Language of the documents cited B-X, 9.1.3
Correct application documents or parts filed after the Late receipt of documents E-VIII, 1.7
search has started A-II, 6.7 Later-filed correct application documents or parts when
Correction of erroneously filed application documents or priority is claimed A-II, 6.4.1
parts A-II, 6, A-II, 6.1, A-II, 6.2 Missing parts of description, missing drawings or
Correction of errors in documents filed with the correction of erroneously filed application documents filed
EPO A-V, 3, H-VI, 2 as corrections under Rule 139 H-VI, 2.2.2
"Corresponding documents" B-X, 9.1.2 Notification E-II, 2.1
Cross-references between prior-art documents G-IV, 8 Particularly relevant documents B-X, 9.2.1
Decision on the documents on the basis of which the Patent documents arranged for systematic
patent is to be maintained D-VI, 7.2.2 searching B-IX, 2
Documents cited for other reasons B-X, 9.2.8 Physical requirements, other documents A-III, 3.3
Documents cited in the application B-X, 9.2.7 Potentially conflicting patent documents B-X, 9.2.6
Documents cited or supplied by the applicant B-IV, 1.3 Priority documents A-VII, 3.3, A-XI, 5.2, E-IX, 2.3.5.1,
Documents defining the state of the art and not prejudicing F-VI, 3.4, H-IV, 2.2.6
novelty or inventive step B-X, 9.2.2 Priority documents issued by the EPO A-XI, 5.2
Documents discovered after completion of the Procedure for amendments to documents H-III, 2
search B-IV, 3.2 Published European patent applications as "E"
Documents filed after filing the European patent documents B-VI, 4.1.1
application A-VIII, 3.1 Published international applications (WO) as "E"
Documents filed as evidence A-VII, 3.4 documents B-VI, 4.1.2
Documents filed in the wrong language A-VII, 5 Reference documents F-III, 8, H-V, 2.5
Documents forming part of the European patent Relevant date for documents cited in the search
application A-VIII, 3.2 report B-VI, 5
Documents found in the search B-X, 9 Replacement documents and translations A-VIII, 2.2
Categories of documents (X, Y, P, A, D, etc.) B-X, 9.2 Request for documents D-VII, 2
Identification of documents in the search Signature of documents A-VIII, 3
report B-X, 9.1 Standards and standard preparatory
Identification of relevant passages in prior-art documents G-IV, 7.6
documents B-X, 9.4 Subsequent filing of documents A-II, 1.4
Relationship between documents and claims B-X, 9.3 Types of documents B-IV, 2.3
Documents in a non-official language G-IV, 4 Use of "P" and "E" documents in the search
Machine translations G-IV, 4.1 opinion B-XI, 4.1
Documents making up the application, replacement Withdrawal of correct application documents or
documents, translations A-III, 3.2 parts A-II, 6.5
Physical requirements of applications filed by
reference to a previously filed application A-III, 3.2.1 Double patenting G-IV, 5.4
Physical requirements of late-filed application
documents or correct application documents or Doubts about the state of the art B-VI, 5.6
parts A-III, 3.2.2
Documents making up the European patent Doubts about the validity of the priority
application A-VIII, 2.1 claim B-VI, 5.3
Documents open to file inspection A-XI, 2.1
Documents published after the filing date B-VI, 5.4 Drawing up the search report B-IV, 3.1
Documents relating to the theory or principle behind the
invention B-X, 9.2.5 Drawings A-IX, E-IX, 2.3.9, F-II, 5
Documents relevant only to other inventions B-VII, 1.3 Amendments A-V, 2.1, A-V, 2.2, A-VII, 2, A-IX, 10, C-I, 4,
Documents which refer to a non-written C-II, 3.1, E-IX, 2.1.3, G-IV, 3
disclosure B-X, 9.2.3 Amendments derived from drawings H-V, 6
Erroneously filed application documents or parts under Amendments to drawings A-IX, 10
Rule 56a H-IV, 2.2.3 Claims with explicit references to the description or
Errors in documents A-V, 3, A-VI, 1.3, H-VI, 2 drawings B-III, 3.2.1
Errors in prior-art documents G-IV, 9 Conditions if drawings are filed on paper A-IX, 3
Evaluation of prior-art documents cited in the search Consistent use of reference signs in description, claims
report and late priority claim C-III, 7 and drawings A-IX, 7.5.4
Alphabetical keyword index – 22 March 2024

Consistent use of reference signs in drawings A-IX, 7.5.5 Due date for specific fees A-X, 5.2
Content of a European patent application (other than Claims fees A-X, 5.2.5
claims) F-II, 5 Examination fee and designation fee A-X, 5.2.2
Conventional symbols A-IX, 9 Fee for grant and publishing A-X, 5.2.3
Correction A-V, 3, A-VI, 1.3, D-X, 4.3, H-VI, 2, H-VI, 2.2 Fees for limitation/revocation, opposition, appeal,
Correction of description, claims and petition for review A-X, 5.2.6
drawings H-VI, 2.2.1 Fees payable for procedural and other
Description and drawings C-IX, 1.5 requests A-X, 5.2.7
Different drawings for different Contracting States G-IV, 6 Filing fee and search fee A-X, 5.2.1
Drawings of lines and strokes A-IX, 7.1 Renewal fees A-X, 5.2.4
Errors in the description, claims and
drawings H-VI, 2.1.1.1 Duration of the periods to be specified by the EPO on
Examination of the description and/or the basis of EPC provisions E-VIII, 1.2
drawings H-IV, 5.4.2
Executing of drawings A-IX, 7 Duties E-XIII, 3.2
Form A-III, 13.2 Allocation of duties and appointment of members of the
Form and content F-II, 5.1 opposition division D-II, 3
General layout of drawings A-IX, 5 Allocation of individual duties D-II, 7
Graphic forms of presentation considered as Composition and duties of the examining
drawings A-IX, 1 division E-XIII, 3
Graphic forms of presentation not considered as Duties and powers of members D-II, 6
drawings A-IX, 11
Grouping of drawings A-IX, 2.1
Height of the numbers and letters in the E
drawings A-IX, 7.5.3
Instructions in Chapter A-III ("Examination of formal Earlier filed amendments or comments E-IX, 3.3.1
requirements") E-IX, 2.3.9
Late filing of missing drawings or missing parts of the Early processing E-IX, 2.8
description A-II, 5, A-II, 5.1, A-II, 5.2
Missing parts of description, missing drawings or Economic effects G-II, 4.1.3
correction of erroneously filed application documents filed
as corrections under Rule 139 H-VI, 2.2.2 Effect of change in priority date E-VIII, 1.5
Missing parts of the description or missing drawings are
completely contained in the priority application A-II, 5.4.2 Effectiveness and efficiency of the search B-III, 2.2
Missing parts of the description or missing drawings based
on the priority application, no change in filing Elected Office
date A-II, 5.4 EPO as designated or elected Office E-IX, 2
Missing parts of the description or missing drawings filed Review by the EPO as a designated/elected Office and
under Rule 56 after the date of filing H-IV, 2.2.2 rectification of errors made by the receiving Office or the
Numbering of sheets of drawings A-IX, 4.2 International Bureau E-IX, 2.9
Photographs F-II, 5.3
Presentation of the sheets of drawings A-IX, 4 Electronic notification E-II, 2.3
Printing quality F-II, 5.2
Prohibited matter A-III, 8.1, A-IX, 6, B-IV, 1.2 Electronic version of cited document B-X, 11.2
Publication of drawings in the abstract B-X, 7, F-II, 2.4
Reference in the description to drawings F-II, 4.7, Employees of the EPO (Language used by ~) E-V, 5
F-IV, 4.17
Representation of drawings A-IX, 2 Enabling disclosure G-IV, 2
Reproducibility of drawings A-IX, 2.2
Scale of drawings A-IX, 7.4 End of search B-IV, 2.6
Technical drawings A-IX, 1.1
Text matter on drawings A-IX, 8 Enforcement of the fixing of costs D-IX, 3
Using the description and/or drawings to define clear
terms given a definition different from their usual Enlarged Board of Appeal (Stay of proceedings when
meaning B-III, 3.2.4 a referral to the ~ is pending) E-VII, 3
Using the description and/or drawings to define unclear
terms not defined in the claims B-III, 3.2.3 Enlargement of the examining division C-VIII, 7
Using the description and/or drawings to identify the
technical problem B-III, 3.2.2 Enquiries E-VIII, 7
Withdrawal of late-filed missing drawings or missing parts
of the description A-II, 5.5 Entitlement
Entitlement for certain designated states only C-IX, 2.4
Due date A-X, 5.1.1
Due date for fees A-X, 5
March 2024 Alphabetical keyword index – 23

Entitlement of parties to put questions at Essentially biological processes for the production of
hearings E-IV, 1.6.7 plants or animals G-II, 5.4.2
Entitlement to file the request E-VIII, 3.1.2 Plant and animal varieties or essentially biological
Entitlement to oppose D-I, 4 processes for the production of plants or
Entitlements of witnesses and experts E-IV, 1.10 animals G-II, 5.4
Details of the entitlements of witnesses and
experts E-IV, 1.10.3 Establishing the publication date G-IV, 7.5.1
Expenses for travel and subsistence E-IV, 1.10.1
Loss of earnings, fees E-IV, 1.10.2 Establishment and issue of the technical
opinion E-XIII, 5.4
Entry into the European phase E-IX, 2.1
Copy of the international application E-IX, 2.1.2 Euro PCT
Filing fee, designation fee, request for examination and Euro-PCT applications C-II, 1.2, C-III, 1.2, C-III, 1.3,
search fee E-IX, 2.1.4 F-V, 7, G-IV, 5.2, H-IV, 4.2
Initial processing and formal examination E-IX, 2.1.2 Amendments in the case of non-unity, further
Requirements for entry into the European procedural aspects concerning Euro-PCT
phase E-IX, 2.1.1 applications H-II, 6.4
Translation of the international application E-IX, 2.1.3 Amendments relating to unsearched matter H-IV, 4.2
Conflict with other European applications G-IV, 5.2
EPO as designated or elected Office E-IX, 2 Euro-PCT applications entering the European phase
Communication to the EPO as a designated before 1 April 2009 A-III, 11.3.9
Office E-IX, 2.7 International applications (Euro-PCT
Early processing E-IX, 2.8 applications) C-IX, 4
Entry into the European phase E-IX, 2.1 International applications with supplementary
Inspection of files E-IX, 2.10 search F-V, 7.2
Instructions in Chapter A-II ("Filing of applications and International applications without supplementary
examination on filing") E-IX, 2.2 search F-V, 7.1
Instructions in Chapter A-III ("Examination of formal International preliminary examination report
requirements") E-IX, 2.3 (IPER) F-V, 7.3
Instructions in Chapter A-IV ("Special Request for examination C-II, 1.2
provisions") E-IX, 2.4 Restricted IPER F-V, 7.4
Instructions in Chapter A-VI ("Publication of application; Specific rules applicable to Euro-PCT
request for examination and transmission of the dossier to applications B-III, 3.3.2
examining division") E-IX, 2.5 Unity of invention F-V, 7
Reduction and refunds of fees in respect of international Euro-PCT applications entering the European
(PCT) applications E-IX, 2.6 phase A-III, 11.2.5
Review by the EPO as a designated/elected Office and Euro-PCT applications entering the European phase
rectification of errors made by the receiving Office or the before 1 April 2009 A-III, 11.3.9
International Bureau E-IX, 2.9 Euro-PCT cases F-III, 6.5

Erroneous elements filed under European divisional application A-IV, 1, A-VII, 1.3
Rule 20.5bis PCT C-III, 1.3 Authorisations A-IV, 1.6
Claiming priority A-IV, 1.2
Erroneously filed application documents or parts Date of filing of a divisional application A-IV, 1.2
under Rule 56a H-IV, 2.2.3 Designation of Contracting States A-IV, 1.3.4
Designation of the inventor A-IV, 1.5
Errors European divisional applications, other formalities
Error margins in numerical values G-VI, 7.1 examination A-IV, 1.7
Errors in documents A-V, 3, A-VI, 1.3, H-VI, 2 Fees A-III, 11.2.1, A-III, 13.1, A-IV, 1.3.4, A-IV, 1.4,
Correction of errors in documents filed with the A-IV, 1.4.1, A-IV, 1.4.3
EPO A-V, 3, H-VI, 2 Filing A-III, 14, A-IV, 1.1
Errors in prior-art documents G-IV, 9 Filing a divisional application A-IV, 1.3
Errors in publication H-VI, 6 Inspection of files A-XI, 2.5
Errors in the description, claims and Language A-VII, 1.3
drawings H-VI, 2.1.1.1 Search, publication and request for examination of
Errors in the search report B-IV, 3.3 divisional applications A-IV, 1.8

Essential features F-IV, 4.5 European patent

Definition of essential features F-IV, 4.5.2 Accelerated prosecution of European patent
Examples concerning essential features F-IV, An. applications E-VIII, 4
Generalisation of essential features F-IV, 4.5.3 Adherence to the text of the European patent submitted or
Implicit features F-IV, 4.5.4 approved by the patent proprietor D-VI, 2
Objections arising from missing essential Amendments D-VIII, 1.4.1
features F-IV, 4.5.1 Certificate A-XI, 5.1, C-V, 12
Alphabetical keyword index – 24 March 2024

Claims fees payable before the grant of the European Transfer of the European patent application E-XIV, 3
patent A-X, 7.3.2 Unity D-VII, 3.1
Claims fees payable on filing the European patent Unity of the European patent D-VII, 3
application A-X, 7.3.1
Classification of the European patent application B-X, 5 European patent application C-III, 1.1, Part F
Consultation of the European Patent Register A-XI, Abstract F-II, 1
A-XI, 4 Accelerated prosecution of European patent
Content of a European patent application (other than applications E-VIII, 4
claims) F-II Additional fee A-III, 13.2
Conversion into a national patent A-IV, 6 Amino acid sequences A-III, 1.2
Designation of the inventor A-VI, 1.3 Application documents A-III, 13.2
Documents filed after filing the European patent Application documents filed under Rule 56 or
application A-VIII, 3.1 Rule 56a C-III, 1.1.1
Documents forming part of the European patent Assignment E-XIV, 3
application A-VIII, 3.2 Biological material A-III, 1.2, A-IV, 4.1.1, A-IV, 4.2,
Documents making up the European patent F-III, 6.3
application A-VIII, 2.1 Claims (Art. 84 and formal requirements) F-IV
European patent application C-III, 1.1, Part F Claims fees A-III, 16.2
European patent applications filed before 1 April Claims fees payable on filing the European patent
2009 A-III, 11.3 application A-X, 7.3.1
European patent applications filed on or after 1 April Claims filed after accordance of a date of
2009 A-III, 11.2 filing C-III, 1.1.2
European Patent Bulletin A-III, 5.2, C-V, 13 Classification of the European patent application B-X, 5
Expiry of the term of the European patent E-X, 7 Content of a European patent application (other than
Extension and validation of European patent applications claims) F-II
and patents to/in states not party to the EPC A-III, 12 Conversion into a national patent application A-IV, 6
Factors affecting the unity of the European Date of filing A-III, 15, A-IV, 1.2.1, B-VI, 5.1
patent D-VII, 3.2 Deficiencies A-II, 4.1.4
Grounds for opposition D-III, 5 Designation of the inventor A-VI, 1.3
Identification of the European patent application and the Documents filed after filing the European patent
search report type B-X, 4 application A-VIII, 3.1
Indication that a European patent is sought A-II, 4.1.1 Documents forming part of the European patent
Infringement E-XIII, 1 application A-VIII, 3.2
Inspection of files A-XI, 1, A-XI, 2.3 Documents making up the European patent
Limitation of the option to withdraw the European patent application A-VIII, 2.1
application A-IV, 2.3 Drawings F-II, 1, F-IV, 1, F-VI, 3.4, G-IV, 3
Maintenance of the European patent as European patent applications filed before 1 April
amended D-VIII, 1.4 2009 A-III, 11.3
Opposition D-I, 2, E-X, 7, E-XIV, 4 European patent applications filed on or after 1 April
Payment or transfer to a bank account held by the 2009 A-III, 11.2
European Patent Organisation A-X, 4.1 Examination C-II, 1
Preclassification, IPC and CPC classification of European Extension and validation of European patent applications
patent applications B-V and patents to/in states not party to the EPC A-III, 12
Preparation of a decision to maintain a European patent in Filing A-IV, 1.1
amended form D-VI, 7.2 Filing fee A-III, 13.1, A-III, 13.2, A-III, 16.2
Publication C-V, 10, C-V, 11 Filing of the translation A-III, 13.1, A-III, 14, A-III, 16.2,
Published European patent applications as "E" A-VII, 1.1, A-VII, 1.3, A-VII, 7, A-X, 9.2.1
documents B-VI, 4.1.1 Further processing A-III, 5.4, A-IV, 5, A-VI, 2.3, C-II, 1,
Register of European Patents A-XI, 1 C-II, 1.1, E-VIII, 2
Rejection of the opposition D-VIII, 1.3 Identification of the European patent application and the
Request from a national court for a technical opinion search report type B-X, 4
concerning a European patent E-XIII Inspection of files A-XI, 1, A-XI, 2.3
Revocation of the European patent D-VIII, 1.2 International application as European patent
Search for conflicting European patent application E-IX, 2.5.1
applications C-IV, 7.1 Languages A-VII, 1.1
Statement in the decision of the amended form of the Limitation of the option to withdraw the European patent
European patent D-VIII, 1.4.2 application A-IV, 2.3
Subject-matter of the European patent extending beyond Nucleotide sequences A-III, 1.2
the original disclosure D-V, 6 Persons entitled to file European patent
Term E-X, 7 application A-II, 2
Text D-VI, 2.1, E-X, 2.2 Preclassification, IPC and CPC classification of European
Transfer during the opposition period or during opposition patent applications B-V
proceedings E-XIV, 4 Priority F-VI
Transfer of the European patent E-XIV, 4 Provisional protection E-IX, 2.5.1
March 2024 Alphabetical keyword index – 25

Publication E-IX, 2.5.1 European search report A-VI, 1.3, A-X, 9.3.1, B-II, 4,
Published European patent applications as "E" B-II, 4.3, B-VII, 2.3, B-X, 4, B-X, 7, C-II, 1.2, C-II, 3.1,
documents B-VI, 4.1.1 C-IV, 7.3, E-IX, 2.5.2, F-V, 7.1, F-V, 7.2
Re-establishment of rights A-III, 6.6 Application documents for the supplementary European
Refusal A-III, 16.2 search report B-II, 4.3.3
Request A-VI, 2.2, F-II, 1 Applications for which a supplementary European search
Request for examination C-II, 1 report is prepared E-IX, 3.1, E-IX, 3.2
Requirements F-II, 1 Content of the extended European search report
Search fee A-III, 13.1, A-III, 16.2 (EESR) B-VIII, 3.3, B-VIII, 4.3
Search for conflicting European patent Dispensing with the supplementary European search
applications C-IV, 7.1 report B-II, 4.3.1
State of the art E-IX, 2.5.1 Mention of the publication of the European search report
Sufficiency of disclosure F-III in the European Patent Bulletin A-VI, 2.1
Text E-X, 2.2 Partial European search report B-VII, 1.1, B-VIII, 1,
Transfer E-XIV, 3, E-XIV, 6.1 B-VIII, 3, B-X, 8, F-III, 1
Transfer of the European patent application E-XIV, 3 Publication A-VI, 2.4
Unity of invention B-II, 4.2, B-VII, 1.1, D-V, 2.2, F-V, Response to the extended European search report
F-V, 1, F-V, 2 (EESR) B-XI, 8
Separate publication of the European search
European patent applications filed before 1 April report A-VI, 1.5
2009 A-III, 11.3 Subject-matter searched B-VIII, 1, B-VIII, 3, B-X, 8
Amount paid insufficient A-III, 11.3.3 Supplementary European search report A-X, 9.3.1,
Amount payable A-III, 11.3.7 B-II, 4.3, B-VII, 2.3, B-X, 4, B-XI, 2, B-XI, 8, C-II, 1.2,
Application deemed withdrawn A-III, 11.3.4 C-IV, 7.3, E-IX, 3.1, F-V, 7.1, F-V, 7.2
Consequences of non-payment of designation Supplementary European search report is
fees A-III, 11.3.2 required B-II, 4.3.2
Designation fee A-III, 11.3.1 Where the invention lacks unity B-VII, 1.1, B-VIII, 3.4,
Euro-PCT applications entering the European phase B-VIII, 4.5
before 1 April 2009 A-III, 11.3.9
Indication of the contracting states A-III, 11.3.6 European searches B-II, 4.1
Request for grant form A-III, 11.3.5 Additional European searches B-II, 4.2
Time limits A-III, 11.3.1 Supplementary European searches B-II, 4.3
Withdrawal of designation A-III, 11.3.8
Evaluation of an expert opinion E-IV, 4.7
European patent applications filed on or after 1 April
2009 A-III, 11.2 Evaluation of an inspection E-IV, 4.8
Consequences of non-payment of the designation
fee A-III, 11.2.3 Evaluation of evidence E-IV, 4
Designation fee A-III, 11.2.1 Asking for evidence E-IV, 4.4
Euro-PCT applications entering the European Evaluation of an expert opinion E-IV, 4.7
phase A-III, 11.2.5 Evaluation of an inspection E-IV, 4.8
Payment of designation fee A-III, 11.2.2 Evaluation of the testimony of a witness E-IV, 4.5
Time limits A-III, 11.2.1 Evaluation of the testimony of parties E-IV, 4.6
Withdrawal of designation A-III, 11.2.4 Examination of evidence E-IV, 4.3
Types of evidence E-IV, 4.2
European Patent Bulletin A-III, 5.2, C-V, 13
Mention of the publication of the European search Evaluation of prior-art documents cited in the search
report A-VI, 2.1 report and late priority claim C-III, 7

European Patent Office Evaluation of the testimony of a witness E-IV, 4.5

As receiving Office E-IX, 1
International preliminary examination E-IX, 1 Evaluation of the testimony of parties E-IV, 4.6
International Searching Authority E-IX, 1
Evidence
European Patent Organisation (Payment or transfer to Arguments and evidence submitted by the
a bank account held by the ~) A-X, 4.1 applicant G-VII, 11
Asking for evidence E-IV, 4.4
European patent specification Conservation of evidence E-IV, 2
Mention of the inventor A-III, 5.2 Costs arising from oral proceedings or taking of
New D-VII, 7 evidence E-IV, 1.9
Publication C-V, 10, C-V, 11, D-VII, 7 Costs of taking evidence E-IV, 3.5
Decision on the request and the taking of
evidence E-IV, 2.4
Documents filed as evidence A-VII, 3.4
Alphabetical keyword index – 26 March 2024

Evaluation of evidence E-IV, 4 Filing and search fees A-III, 13

Evidence taken by a competent court E-IV, 3.2.2 Late filing of claims A-III, 15
Examination of evidence E-IV, 4.3 Physical requirements A-III, 3
Facts, evidence or amendments introduced at a late Prohibited matter A-III, 8
stage E-III, 8.6 Representation A-III, 2
Facts, evidence or grounds not submitted in due Request for grant A-III, 4
time E-VI Title of the invention A-III, 7
Language A-VII, 3.4, A-VII, 5, E-VI, 3 Translation of the application A-III, 14
Language used in the taking of evidence E-V, 4 Examination as to personal particulars E-IV, 1.6.5
Means of evidence E-IV, 1.2 Examination as to res gestae E-IV, 1.6.6
Means of giving or taking evidence E-IV, 3.2 Examination by the EPO of its own motion D-V, 2.2, E-VI,
Minutes of taking of evidence E-IV, 1.7 E-VI, 1
New facts and evidence E-VI, 2.2.1 External complaints E-VI, 4
Not submitted in due time E-VI, 2, E-VI, 2.2.1 Late-filed submissions E-VI, 2
Order to take evidence E-IV, 1.4 Limits on the obligation to undertake
Producing evidence C-VII, 4.2 examination E-VI, 1.2
Request for the conservation of evidence E-IV, 2.2 Observations by third parties E-VI, 3
Taking and conservation of evidence E-IV Examination fee A-VI, 2.2, A-VI, 2.5, A-X, 10.2.3, C-II, 1,
Taking of evidence C-VII, 4, D-VI, 1, D-VI, 7.1, E-IV, 1.1, C-II, 1.1
E-IV, 1.3, E-IV, 2.4 Examination fee and designation fee A-X, 5.2.2
Taking of evidence by an appointed person E-IV, 3.6 Reduction A-X, 9.2.1
Taking of evidence by courts or authorities of the Reduction in examination fee A-VI, 2.6, A-X, 9.2.3
contracting states E-IV, 3 Reduction of the examination fee where the
Taking of evidence by the departments of the international preliminary examination report is drawn
EPO E-IV, 1 up by the EPO A-X, 9.3.2
Taking of evidence on oath E-IV, 3.2.1 Refund A-VI, 2.5, A-X, 10.2.3, C-II, 1.1
Types of evidence E-IV, 4.2 Refund of examination fee A-VI, 2.5, A-X, 10.2.3
Written evidence C-VII, 4.3 Examination for deficiencies in the notice of
opposition D-IV, 1.2
Evident abuse G-V, 3 Deficiencies which, if not remedied, lead to the
opposition being deemed not to have been
"Ex post facto" analysis G-VII, 8 filed D-IV, 1.2.1
Deficiencies which, if not remedied, lead to the
Examination C-II, 1 opposition being rejected as inadmissible D-IV, 1.2.2
Abstract in examination F-II, 2.7 Examination for deficiencies in the notice of opposition
Accelerated examination E-VIII, 4.2 and communications from the formalities officer arising
Additional searches during examination C-IV, 7.3 from this examination D-IV, 1
Amendments not admitted and/or not allowable, Forwarding of the notice of opposition to the formalities
examination resumed C-V, 4.7 officer D-IV, 1.1
Amendments not admitted and/or not allowable, Issue of communications by the formalities officer as a
examination resumed, no agreement reached on a result of examination for deficiencies D-IV, 1.3
text C-V, 4.7.3 Notifications to and observations by the patent
Auxiliary requests, in examination proceedings H-III, 3.3 proprietor D-IV, 1.5
Basis for substantive examination E-IX, 4.3.2 Subsequent procedure D-IV, 1.6
Basis for the examination D-VI, 2.1, D-X, 4.2 Subsequent procedure in the event of deficiencies
By the examining division A-III, 3.2, A-VI, 2.4 which may no longer be remedied D-IV, 1.4
Compliance of amendments with other EPC requirements, Examination for deficiencies in the request D-X, 2
in examination proceedings H-IV, 5.2 Deficiencies which lead to the request being deemed
Dealing with different texts in examination H-III, 4.1 not to have been filed D-X, 2.1
Different text where a transfer of right takes place Deficiencies which, if not remedied, lead to the request
pursuant to Art. 61 in examination being rejected as inadmissible D-X, 2.2
proceedings H-III, 4.3.1 Examination of a divisional application C-IX, 1.4
European divisional applications, other formalities Examination of amendments C-IV, 5
examination A-IV, 1.7 Examination of amendments as to formalities A-V, 2.2
Examination as to formal requirements A-III, A-III, 3.2 Examination of evidence E-IV, 4.3
Abstract A-III, 10 Examination of novelty G-VI, 6
Claim to priority A-III, 6 First or further medical use of known
Claims fee A-III, 9 products G-VI, 6.1
Correction of deficiencies A-III, 16 Second non-medical use G-VI, 6.2
Designation of contracting states A-III, 11 Examination of observations by third parties C-VII, 6
Designation of inventor A-III, 5 Examination of oppositions D-II, 4.1
Extension and validation of European patent
applications and patents to/in states not party to
the EPC A-III, 12
March 2024 Alphabetical keyword index – 27

Examination of replies and further stages of Further action upon examination of replies, further action
examination C-IV where a request for a translation of the priority application
Admissibility of amendments made by the was sent earlier in examination proceedings C-IV, 3.1
applicant C-IV, 6 Influencing the speed of examination proceedings C-VI, 2
Extent of examination of replies C-IV, 2 Initial processing and formal examination E-IX, 2.1.2
Further action upon examination of replies C-IV, 3 Instructions in Chapter A-III ("Examination of formal
General procedure C-IV, 1 requirements") E-IX, 2.3
Later stages of examination C-IV, 4 Instructions in Chapter A-VI ("Publication of application;
New submissions in reply to a summons C-IV, 8 request for examination and transmission of the dossier to
Search-related issues in examination C-IV, 7 examining division") E-IX, 2.5
Examination of the admissibility of an intervention and International preliminary examination E-IX, 1, E-IX, 4.3.3
preparations in the event of an intervention D-IV, 5.6 International preliminary examination report
Examination of the description and/or (IPER) F-V, 7.3
drawings H-IV, 5.4.2 Invitation to file the translation before
Examination of the grounds for opposition D-V, 2.2 examination A-III, 6.8.1
Examination of the opposition during oral Invitation to file the translation in
proceedings D-VI, 6 examination/opposition A-III, 6.8.2
Examination of the priority document A-III, 6.4 Late-filed requests after summons to oral proceedings in
Examination of the request for grant form A-III, 4.2 examination H-II, 2.7
Examination of the request for grant form, further Minutes as the first communication in
requirements laid down by Rule 41(2) A-III, 4.2.3 examination C-VII, 2.5
Information on the applicant A-III, 4.2.1 Opposition cases with different texts where a transfer of
Signature A-III, 4.2.2 rights by virtue of a final decision pursuant to Art. 61 takes
Examination on filing A-II, 4, A-III, 3.2, C-II, 1 place in examination proceedings H-III, 4.3.3
Filing of applications and examination on filing A-II Other procedures in examination C-VII
Instructions in Chapter A-II ("Filing of applications and Preliminary examination E-XIII, 5.2
examination on filing") E-IX, 2.2 Preparation of substantive examination D-IV, 5
Minimum requirements for according a date of Procedure for the examination of the opposition D-VI
filing A-II, 4.1 Procedure in examination proceedings E-III, 8.3.3.3,
Examination practice G-II, 2 E-III, 8.7.2
Examination procedure E-IX, 4 Procedure in the case of lack of unity during substantive
Admissibility in the examination procedure H-II, 2 examination F-V, 5
Admissibility in the examination procedure, after Procedure up to substantive examination D-IV
receipt of the first communication - Purpose of examination C-I, 4
Rule 137(3) H-II, 2.3 Request for examination C-II, 1, E-IX, 2.5.2
Admissibility in the examination procedure, after Request for examination and transmission of the dossier
receipt of the search report - Rule 137(2) H-II, 2.2 to examining division A-VI, A-VI, 2
Admissibility in the examination procedure, at an Response filed before first communication in
advanced stage of the proceedings H-II, 2.4 examination C-II, 3
Admissibility in the examination procedure, before Responsibility for formalities examination A-I, 2
receipt of the search report - Rule 137(1) H-II, 2.1 Scope of the examination D-X, 4.3
Admissibility in the examination procedure, further Search and substantive examination B-II, 1
requests for amendment after approval H-II, 2.6 Search at the examination stage C-IV, 7.4
Examination procedure, at least one communication in Search, publication and request for examination of
examination E-IX, 4.1 divisional applications A-IV, 1.8
Examination procedure, no examination of multiple Standard marks for indicating amendments or corrections
inventions in EP phase E-IX, 4.2 by the divisions, further ways to accelerate
Substantive examination of a Euro-PCT application examination C-VI, 3
accompanied by an IPER E-IX, 4.3 Substantive examination (limitation) D-X, 4
Examination proceedings (ex parte) E-III, 8.5.1.2 Substantive examination (limitation), further stages of the
Examining division resumes examination after approval of examination D-X, 4.4
the text C-V, 6 Substantive examination of opposition D-V
Examining division resumes examination after approval of Summons to oral proceedings as the first action in
the text, further communication under examination C-III, 5
Rule 71(3) C-V, 6.2 Third-party observations during the examination D-X, 4.5
Extent of the examination D-V, 2 Time limit for filing the request for examination A-VI, 2.2
Filing fee, designation fee, request for examination and Time limits and acceleration of examination C-VI
search fee E-IX, 2.1.4 Use of Rule 137(4) for amendments filed during oral
Final stage of examination C-V proceedings in examination E-III, 8.8
First stage of examination C-III When can a summons to oral proceedings be issued in
Formal requirements to be met before the division starts substantive examination? C-VIII, 5.1, E-III, 5.1
substantive examination C-II When does the examining division resume examination
after approval? C-V, 6.1
Alphabetical keyword index – 28 March 2024

Examining Examples, no amended claims filed with the

Examining division proposes amendments in second appeal E-XII, 7.4.1
Rule 71(3) communication C-V, 4.6.3
Examining division resumes examination after approval of Exceptional case where amendments must be
the text C-V, 6 admitted H-II, 2.5.3
Crediting of fees under Rule 71a(5) C-V, 6.3
Examining division resumes examination after Exceptions D-VII, 1.2
approval of the text, further communication under Exceptions from sections 1 and 2 E-V, 3
Rule 71(3) C-V, 6.2 Exceptions to patentability G-II, 4
When does the examining division resume Considerations relating to specific exclusions from and
examination after approval? C-V, 6.1 exceptions to patentability B-VIII, 2
Examining divisions, composition C-VIII, 7 Matter contrary to "ordre public" or morality G-II, 4.1
Examining the validity of a right to priority F-VI, 2.1 Surgery, therapy and diagnostic methods G-II, 4.2
Exceptions where a reply to the Rule 161(1) invitation is
Example 1 G-VII, 5.4.2.1 not required E-IX, 3.3
Earlier filed amendments or comments E-IX, 3.3.1
Example 2 G-VII, 5.4.2.2 Positive WO-ISA, SISR or IPER E-IX, 3.3.2
Rule 161 communication issued before 1 April
Example 3 G-VII, 5.4.2.3 2010 E-IX, 3.3.3
Voluntary reply to Rule 161(1)
Example 4 G-VII, 5.4.2.4 communication E-IX, 3.3.4
Exclusions and exceptions for biotechnological
Example 5 G-VII, 5.4.2.5 inventions G-II, 5
List of exceptions (Rule 28) G-II, 5.3
Example of the accessibility of objects
used G-IV, 7.2.4 Excision of other inventions C-III, 3.3

Example of the inaccessibility of a Exclusions and exceptions for biotechnological

process G-IV, 7.2.5 inventions G-II, 5
General remarks and definitions G-II, 5.1
Examples concerning essential features F-IV, An. List of exceptions (Rule 28) G-II, 5.3
Microbiological processes G-II, 5.5
Examples of applying the COMVIK Patentable biotechnological inventions G-II, 5.2
approach G-VII, 5.4.2 Plant and animal varieties or essentially biological
Example 1 G-VII, 5.4.2.1 processes for the production of plants or
Example 2 G-VII, 5.4.2.2 animals G-II, 5.4
Example 3 G-VII, 5.4.2.3
Example 4 G-VII, 5.4.2.4 Executing of drawings A-IX, 7
Example 5 G-VII, 5.4.2.5 Cross-sections A-IX, 7.3
Drawings of lines and strokes A-IX, 7.1
Examples of further technical effects G-II, 3.6.1 Numbers, letters and reference signs A-IX, 7.5
Scale of drawings A-IX, 7.4
Examples of quotation for non-patent Shading A-IX, 7.2
literature F-II, 4.3.1.1 Variations in proportions A-IX, 7.6

Examples of quotation for patent Exhibitions

literature F-II, 4.3.1.2 Certificate of exhibitions A-IV, 3.1, G-V, 4
International exhibitions G-V, 4
Examples of the exercise of discretion under
Rule 137(3) H-II, 2.3.1 Expenses for travel and subsistence E-IV, 1.10.1
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 Experts
Rule 137(3) in conjunction with Art. 84 - missing essential Commissioning of experts E-IV, 1.8
feature H-II, 2.3.1.3 Details of the entitlements of witnesses and
Rule 137(3) in conjunction with auxiliary experts E-IV, 1.10.3
requests H-II, 2.3.1.4 Entitlements of witnesses and experts E-IV, 1.10
Hearing of parties, witnesses and experts E-IV, 1.6
Examples relating to the requirement of inventive Reimbursement for witnesses and experts E-IV, 1.10.1,
step G-VII, An. E-IV, 1.10.2
Application of known measures? G-VII, An., 1 Reimbursement of expenses E-IV, 1.10.1, E-IV, 1.10.2
Obvious combination of features? G-VII, An., 2 Summoning of parties, witnesses and experts E-IV, 1.5
Obvious selection? G-VII, An., 3 Taking of evidence D-VI, 1, E-IV, 1.3
Overcoming a technical prejudice? G-VII, An., 4 Witnesses and experts not summoned E-IV, 1.6.2
March 2024 Alphabetical keyword index – 29

Expiry of the term of the European patent E-X, 7 Observations by third parties E-VI, 3

Expression "in" F-IV, 4.15 Failure to reply in time B-VIII, 4.2.1

Extension H-IV, 3.1, H-V, 3.4, H-V, 7 Failure to respond within a time limit E-VIII, 1.8
Assessment of impermissible extension of the protection Time limits and loss of rights resulting from failure to
conferred H-IV, 3.4 respond within a time limit E-VIII, 1
Designation fees, extension and validation fees C-II, 4
Extension and validation of European patent applications Features described in a document cross-referenced in
and patents to/in states not party to the EPC A-III, 12 the description H-IV, 2.2.1
Extension and validation deemed
requested A-III, 12.4 Features of the invention F-IV, 2.1, F-IV, 2.2,
National register A-III, 12.5 F-IV, 4.5.1, F-V, 2, G-I, 1
Time limit for payment of extension and validation
fees A-III, 12.2 Fees A-IV, 1.4, A-X
Withdrawal of the extension or validation Additional search fees paid C-III, 3.2.2
request A-III, 12.3 Administrative fees A-XI, 1, A-XI, 2.2, E-XIV, 3
Extension and validation states A-IV, 1.3.5 Applicant has not paid all further search fees B-VII, 1.2.3
Extension of a time limit E-VIII, 1.6 Calculation of claims fees H-III, 5
Extension of time limits set by the EPO under Cases under Rule 62a where claims fees have not been
Rule 132 E-VIII, 1.6.1 paid B-VIII, 4.4
Extension of periods under Rule 134 E-VIII, 1.6.2 Claims fees due in response to Rule 71(3)
Extension of periods under Rule 134(1) E-VIII, 1.6.2.1 communication C-V, 1.4
Extension of periods under Rule 134(2) and Claims fees payable before the grant of the European
Rule 134(5) E-VIII, 1.6.2.2 patent A-X, 7.3.2
Scope of application of Rule 134 E-VIII, 1.6.2.3 Claims fees payable on filing the European patent
Extension to and validation in states not party to application A-X, 7.3.1
the EPC General Part, 7 Crediting of claims fees A-X, 11.2
Crediting of fees paid voluntarily C-V, 4.2
Extent Crediting of fees under Rule 71a(5) A-X, 11
Extent of examination of replies C-IV, 2 Crediting of fees under Rule 71a(5), further processing fee
Extent of generalisation F-IV, 6.2 and crediting of fees A-X, 11.4
Extent of the examination D-V, 2 Currencies A-X, 3
Examination of the grounds for opposition D-V, 2.2 Date considered as date on which payment is
Extent to which the patent is opposed D-V, 2.1 made A-X, 4
Extent of the formalities officer's obligation to issue the Designation fees, extension and validation fees C-II, 4
above communications D-IV, 1.3.3 Due date for fees A-X, 5
Fee for grant and publishing A-X, 5.2.3, C-V, 4.8.2
External complaints E-VI, 4 Crediting of the fee for grant and publishing A-X, 11.1
Due date for specific fees A-X, 5.2.3
Extracts (Summaries, ~ or abstracts) B-X, 11.5 Refund of the fee for grant and
publishing A-X, 10.2.5, C-V, 9
Separate crediting of the fee for grant and publishing
F and claims fees A-X, 11.3
Fee payments lacking a legal basis A-X, 10.1.1
Factors affecting the unity of the European Fees for limitation/revocation, opposition, appeal, petition
patent D-VII, 3.2 for review A-X, 5.2.6
Fees paid by bank transfer - application of Art. 7(3) and (4)
Facts RFees A-X, 6.2.1
Facts and evidence Fees payable for procedural and other
New facts and evidence E-VI, 2.2.1 requests A-X, 5.2.7
Not submitted in due time E-VI, 2 Fees to be paid within the second Rule 71(3)
Facts and submissions E-X, 1.3.2, E-X, 2.4 period C-V, 4.8
Decisions taken by the examining or opposition Claims fees C-V, 4.8.1
divisions E-X, 2.4 Fees, refund A-X, 10.2.1, B-VII, 2.1, C-III, 3.4
Form and content E-X, 1.3.2 Filing and search fees A-III, 13
Facts, evidence or amendments introduced at a late Filing, search and designation fee(s) A-IV, 1.4.1
stage E-III, 8.6 Indication of the purpose of payment in the case of claims
Facts, evidence or grounds not submitted in due fees A-X, 7.3
time E-VI Indication of the purpose of the payment in the case of
Examination by the EPO of its own motion E-VI, 1 designation fees A-X, 7.2
External complaints E-VI, 4 Invitation to pay additional search fees combined with
Late-filed submissions E-VI, 2 invitation to restrict the scope of the search C-III, 3.2.3
Invitation to pay further search fees B-VII, 1.2
Alphabetical keyword index – 30 March 2024

Late payment of fees A-X, 6.2 Date of filing of a divisional application A-IV, 1.2
Limitation to searched invention, no additional search fees Date of filing or priority date as effective date G-IV, 3
paid C-III, 3.2.1 Determination of filing date in the case of erroneously filed
Loss of earnings, fees E-IV, 1.10.2 elements or parts of the international
Methods of payment A-X, 2 application E-IX, 2.9.4
No deferred payment of fees, no legal aid, no Documents filed after filing the European patent
discretion A-X, 8 application A-VIII, 3.1
Payment in due time A-X, 6 Filing a divisional application A-IV, 1.3, C-III, 3.3
Payment of fees A-X, 2 Designation of contracting states A-IV, 1.3.4
Purpose of payment A-X, 7 Extension and validation states A-IV, 1.3.5
Reduction and refunds of fees in respect of international Language requirements A-IV, 1.3.3
(PCT) applications E-IX, 2.6 Request for grant A-IV, 1.3.2
Reduction of fees A-III, 13.1, A-X, 9 Where and how to file a divisional
Refund of additional search fees C-III, 3.4 application A-IV, 1.3.1
Refund of fees A-X, 10 Filing a new application A-IV, 2.5
Reimbursement of appeal fees E-XII, 7.3 Filing a new priority claim A-III, 6.5.1
Renewal fees A-IV, 1.4.3 Filing and priority date B-VI, 5
Request for amendments or corrections in reply to the Documents published after the filing date B-VI, 5.4
Rule 71(3) communication, no payment of fees or filing of Doubts about the state of the art B-VI, 5.6
translations necessary C-V, 4.1 Doubts about the validity of the priority claim B-VI, 5.3
Request for refund of further search fees B-VII, 2.1 Intermediate documents B-VI, 5.2
Time limit for payment of extension and validation Non-prejudicial disclosures B-VI, 5.5
fees A-III, 12.2 Verification of claimed priority dates B-VI, 5.1
Widening of the search B-VI, 5.3
Figure accompanying the abstract A-III, 10.3, Filing and search fees A-III, 13
A-IX, 2.3, F-II, 2.4 Additional fee (if application documents comprise more
Abstract A-III, 10.3 than 35 pages) A-III, 13.2
Representation of drawings A-IX, 2.3 Additional fee for divisional applications A-III, 13.3
Payment of fees A-III, 13.1
Figures (Numbering of ~) A-IX, 5.2 Filing by reference A-VII, 1.2
Filing date as effective date F-VI, 1.1
File inspection E-XIII, 5.5 Filing date changes A-II, 5.3, A-II, 6.3
Conducting file inspections A-XI, 2.2 Correction of erroneously filed application documents
Documents open to file inspection A-XI, 2.1 or parts A-II, 6.3
File inspection before publication of the Late filing of missing drawings or missing parts of the
application A-XI, 2.5 description A-II, 5.3
Restrictions to file inspection A-XI, 2.3 Filing fee A-III, 13.1, A-III, 13.2, A-III, 16.2, A-VII, 1.1,
A-X, 9.2.1
Files Additional fee as part of filing fee A-III, 13.2,
Certified copies of documents from the files or of other A-III, 13.3
documents A-XI, 5.1 European divisional application A-III, 13.1, A-IV, 1.4.1
Communication of information contained in the Filing fee and search fee A-X, 5.2.1
files A-XI, 1, A-XI, 3 Filing fee, designation fee, request for examination and
Inspection of files A-XI, A-XI, 1, A-XI, 2, A-XI, 2.1, search fee E-IX, 2.1.4
E-IX, 2.10 Reduction of the filing fee A-X, 9.2.2
Filing of amended documents in reply to the notice of
Filing opposition D-IV, 5.3
Accorded date of filing and content of the application still Filing of amendments A-V, 2.1
subject to review G-IV, 5.1.2 Filing of applications and examination on filing A-II
Admissible languages on filing A-VII, 1 Correction of erroneously filed application documents
Amendment by submitting missing documents or by filing or parts A-II, 6
replacement pages H-III, 2.2 Examination on filing A-II, 4
Applications containing claims filed after the accorded Instructions in Chapter A-II ("Filing of applications and
filing date B-XI, 2.2 examination on filing") E-IX, 2.2
Citation of prior art in the description after the filing Late filing of missing drawings or missing parts of the
date H-IV, 2.2.7 description A-II, 5
Claims fees payable on filing the European patent Persons entitled to file an application A-II, 2
application A-X, 7.3.1 Procedure on filing A-II, 3
Claims filed after accordance of a date of Where and how applications may be filed A-II, 1
filing C-III, 1.1.2 Filing of applications by delivery by hand or by postal
Claims filed after the date of filing H-IV, 2.2.4 services A-II, 1.2
Correct application documents based on priority Filing of applications by means of electronic
application, no change in the filing date A-II, 6.4 communication A-II, 1.1
Date of filing A-II, 4.1.5, A-IV, 1.2.1, G-VII, 2 Filing of applications by fax A-II, 1.1.2
March 2024 Alphabetical keyword index – 31

Filing of applications in electronic form A-II, 1.1.1 Subsequent application considered as first
Filing of applications by other means A-II, 1.3 application F-VI, 1.4.1
Filing of opposition after decision on limitation D-X, 7.2
Filing of subsequent documents A-VIII, 2.5 First communication C-III, 4
Filing with a competent national authority A-II, 3.2 Admissibility in the examination procedure, after receipt of
Filing, search and designation fee(s) A-IV, 1.4.1 the first communication - Rule 137(3) H-II, 2.3
Additional fee for divisional applications of second or Invitation to file comments and amendments C-III, 4.2
subsequent generations A-IV, 1.4.1.1 Minutes as the first communication in
First filing A-III, 6.1, A-III, 6.2, E-VIII, 8.1, F-VI, 1.3, examination C-VII, 2.5
F-VI, 1.4.1 Reasoning C-III, 4.1
Late filing of claims A-III, 15 Response filed before first communication in
Minimum requirements for according a date of examination C-II, 3
filing A-II, 4.1
Missing parts of the description or missing drawings based First or further medical use of known
on the priority application, no change in filing products G-VI, 6.1
date A-II, 5.4 Dependent claims pursuant to Art. 54(5) G-VI, 6.1.5
Missing parts of the description or missing drawings filed Diagnostic uses pursuant to Art. 54(5) G-VI, 6.1.3
under Rule 56 after the date of filing H-IV, 2.2.2 Products that may be claimed for a further medical
Request for amendments or corrections in reply to the use G-VI, 6.1.1
Rule 71(3) communication, no payment of fees or filing of Surgical uses pursuant to Art. 54(5) G-VI, 6.1.4
translations necessary C-V, 4.1 Therapeutic uses pursuant to Art. 54(5) G-VI, 6.1.2
Sequence listings filed after the date of filing H-IV, 2.2.5
Subsequent filing of documents A-II, 1.4 First stage of examination C-III
Time allowed for filing notice of opposition D-III, 1 Amendments made by applicants of their own
Time limit for filing the request for examination A-VI, 2.2 volition C-III, 2
Voluntary filing of the translation of the previous Evaluation of prior-art documents cited in the search
application A-III, 6.8.5 report and late priority claim C-III, 7
First communication C-III, 4
Final decisions on an admissible opposition D-VIII, 1 Missing parts or elements C-III, 1
Maintenance of the European patent as Requesting information on prior art (not confined to
amended D-VIII, 1.4 priority) C-III, 6
Rejection of the opposition D-VIII, 1.3 Summons to oral proceedings as the first action in
Revocation of the European patent D-VIII, 1.2 examination C-III, 5
Unity of invention C-III, 3
Final stage of examination C-V
Application deemed withdrawn C-V, 3 Fixing of costs
Approval of the proposed text C-V, 2 Appeals against the decision of the opposition division on
Certificate C-V, 12 the fixing of costs E-XII, 4
Communication under Rule 71(3) C-V, 1 Enforcement of the fixing of costs D-IX, 3
Correction of errors in the decision to grant C-V, 7 Fixing of costs by the opposition division D-IX, 2.1
Decision according to the state of the file C-V, 15 Appeal against the fixing of costs by the opposition
European Patent Bulletin C-V, 13 division D-IX, 2.2
Examining division resumes examination after approval of Procedure for the fixing of costs D-IX, 2
the text C-V, 6
Further processing C-V, 8 Form B-X, 3.1
Further requests for amendment after approval C-V, 5 Decision by means of a standard form C-V, 15.2
Grant of a patent C-V, 2 Decision on the form of the opinion E-IV, 1.8.1
No reply in time C-V, 3 Documents forming part of the European patent
Publication of the patent specification C-V, 10 application A-VIII, 3.2
Refund of the fee for grant and publishing C-V, 9 Examination of the request for grant form A-III, 4.2
Refusal C-V, 14 Examination of the request for grant form, further
Request for amendments or corrections in reply to the requirements laid down by Rule 41(2) A-III, 4.2.3
Rule 71(3) communication C-V, 4 Filing of applications in electronic form A-II, 1.1.1
Standard marks for indicating amendments or corrections Form and content E-X, 1.3, F-II, 5.1
by the divisions C-V, An. Basic principles of decisions E-X, 1.3
Withdrawal before publication of the patent Drawings F-II, 5.1
specification C-V, 11 Facts and submissions E-X, 1.3.2
Order E-X, 1.3.1
First application F-VI, 1.4 Reasoning E-X, 1.3.3
Situation in which it has to be checked whether the Form and content of claims F-IV, 2
application from which priority is actually claimed is the Formulae and tables F-IV, 2.4
"first application" within the meaning of Technical features F-IV, 2.1
Art. 87(1) F-VI, 2.4.4 Two-part form F-IV, 2.2
Two-part form unsuitable F-IV, 2.3
Alphabetical keyword index – 32 March 2024

Form and language of the search report B-X, 3 Examples of quotation for patent literature F-II, 4.3.1.2
Form B-X, 3.1
Language B-X, 3.2 Format of oral proceedings E-III, 1.2
Record of search strategy B-X, 3.4
Search summary B-X, 3.3 Formulae and tables F-IV, 2.4
Form of decisions, communications and notices E-II, 1.3
Form of documents A-VIII, 2 Formulation of the objective technical
Documents making up the European patent problem G-VII, 5.2
application A-VIII, 2.1 Formulation of the objective technical problem for claims
Filing of subsequent documents A-VIII, 2.5 comprising technical and non-technical
Form of documents, other documents A-VIII, 2.3 features G-VII, 5.4.1
Number of copies A-VIII, 2.4
Replacement documents and translations A-VIII, 2.2 Forwarding of applications A-II, 1.6
Form of signature A-VIII, 3.3
Form of the opposition D-III, 3.1 Forwarding of the notice of opposition to the
Form of the request and applicable time limit E-VIII, 3.1.3 formalities officer D-IV, 1.1
Graphic forms of presentation considered as
drawings A-IX, 1 Functional definition of a pathological
Graphic forms of presentation not considered as condition F-IV, 4.21
drawings A-IX, 11
Preparation of a decision to maintain a European patent in Further action upon examination of replies C-IV, 3
amended form D-VI, 7.2 Further action upon examination of replies, further action
Publication in electronic form only A-VI, 1.4 where a request for a translation of the priority application
Request for grant form A-III, 11.3.5 was sent earlier in examination proceedings C-IV, 3.1
Requirements as to form E-X, 2.3
Statement in the decision of the amended form of the Further processing C-V, 8, E-VIII, 2
European patent D-VIII, 1.4.2 Crediting of fees under Rule 71a(5), further processing fee
Time limit and form of appeal E-XII, 6 and crediting of fees A-X, 11.4
Two-part form unsuitable, no two-part form F-IV, 2.3.1
Two-part form "wherever appropriate" F-IV, 2.3.2 Further requests for amendment after
approval C-V, 5
Formal Admissibility in the examination procedure, further
Formal deficiencies B-IV, 1.2 requests for amendment after approval H-II, 2.6
Communications concerning formal deficiencies A-V,
A-V, 1
Formal procedure for limitation when the request is G
allowable D-X, 5
Formal requirements A-III, 1.1, E-III, 10.1 Games G-II, 3.5.2
Claims (Art. 84 and formal requirements) F-IV Schemes, rules and methods for performing mental acts,
Description (formal requirements) F-II, 4 playing games or doing business G-II, 3.5
Examination as to formal requirements A-III, A-III, 3.2 Schemes, rules and methods for playing
Instructions in Chapter A-III ("Examination of formal games G-II, 3.5.2
requirements") E-IX, 2.3
Formal requirements to be met before the division starts General authorisation A-VIII, 1.7
substantive examination C-II
Allocation of the application C-II, 2 General considerations B-III, 3.3.1, C-VI, 1.1
Copy of the search results on the priority or Amended claims, missing parts (Rule 56) or erroneously
priorities C-II, 5 filed application documents or parts
Designation fees, extension and validation (Rule 56a) B-III, 3.3.1
fees C-II, 4 Time limits for response to communications from the
Request for examination C-II, 1 examiner C-VI, 1.1
Response filed before first communication in
examination C-II, 3 General layout of drawings A-IX, 5
Numbering of figures A-IX, 5.2
Formalities check E-XIII, 5.1 Page-setting A-IX, 5.1
Whole figure A-IX, 5.3
Formalities examination
European divisional applications, other formalities General Part General Part
examination A-IV, 1.7 Contracting states to the EPC General Part, 6
Responsibility for formalities examination A-I, 2 Explanatory notes General Part, 2
Extension to and validation in states not party to
Format of background art citations F-II, 4.3.1 the EPC General Part, 7
Examples of quotation for non-patent Preliminary remarks General Part, 1
literature F-II, 4.3.1.1
March 2024 Alphabetical keyword index – 33

Summary of the processing of applications and patents at

H
the EPO General Part, 5
Unitary Patent protection General Part, 8
Work at the EPO General Part, 4 Handling of dependent claims under
Rule 62a B-VIII, 4.6
General principle D-IX, 1.1
General principles in opposition proceedings E-VI, 2.1 Handwritten amendments in oral
proceedings E-III, 8.7
General remarks and definitions G-II, 5.1, G-IV, 1 Procedure in examination proceedings E-III, 8.7.2
Procedure in opposition proceedings E-III, 8.7.3
General rule for SI derived units F-II, An. 2, 1.2.1
Hatching A-IX, 7.3.2
General statements, "spirit of the invention", claim-
like clauses F-IV, 4.4 Hearing
Hearing of parties D-VI, 1
General, further checks A-III, 1.2 Hearing of parties, witnesses and experts E-IV, 1.6
Entitlement of parties to put questions at
Generalisation of essential features F-IV, 4.5.3 hearings E-IV, 1.6.7
Examination as to personal particulars E-IV, 1.6.5
Generic disclosure and specific examples G-VI, 4 Examination as to res gestae E-IV, 1.6.6
Guidance to persons heard E-IV, 1.6.3
Grant Hearing of a witness no longer necessary E-IV, 1.6.8
Grant and publishing fee C-V, 1.2 Separate hearings E-IV, 1.6.4
Grant of a European patent Witnesses and experts not summoned E-IV, 1.6.2
Mention in the European Patent Bulletin C-V, 2,
C-V, 13 Height of the numbers and letters in the
Request for the grant A-III, 11.1, A-III, 11.3.5, drawings A-IX, 7.5.3
A-III, 13.2, A-VI, 2.2, F-II, 1
Grant of a patent C-V, 2 Higher-ranking request not admissible and/or not
Request for unitary effect C-V, 2.1 allowable C-V, 4.7.1.1

Graphic forms of presentation considered as

drawings A-IX, 1 I
Photographs A-IX, 1.2
Technical drawings A-IX, 1.1 Identification of documents in the search
report B-X, 9.1
Graphic forms of presentation not considered as Bibliographic data B-X, 9.1.1
drawings A-IX, 11 "Corresponding documents" B-X, 9.1.2
Chemical and mathematical formulae A-IX, 11.1 Language of the documents cited B-X, 9.1.3
Tables A-IX, 11.2 Supplementary European search report B-X, 9.1.4

Grounds for opposition D-III, 5 Identification of invention A-IV, 3.1

Amendments not related to the grounds for
opposition H-II, 3.2 Identification of relevant passages in prior-art
Examination of the grounds for opposition D-V, 2.2 documents B-X, 9.4

Grouping of drawings A-IX, 2.1 Identification of the European patent application and
the search report type B-X, 4
Grouping of inventions F-V, 3.2
Claims for a known substance for a number of distinct Impartiality of divisions E-XI
medical uses F-V, 3.2.6
Common dependent claims F-V, 3.2.4 Implicit disclosure and parameters G-VI, 5
Dependent claims F-V, 3.2.3
Intermediate and final products F-V, 3.2.7 Implicit features F-IV, 4.5.4
Markush grouping (alternatives in a single Implicit features or well-known equivalents G-VI, 2
claim) F-V, 3.2.5
Plurality of independent claims in different Inadmissibility at a later stage D-IV, 5.1
categories F-V, 3.2.2
Plurality of independent claims in the same Inclusion in the file of any email exchange C-VII, 3.3
category F-V, 3.2.1
Inclusion of additional features H-V, 3.2
Guidance to persons heard E-IV, 1.6.3 Intermediate generalisations H-V, 3.2.1
Alphabetical keyword index – 34 March 2024

Inconsistencies F-IV, 4.3 Informal nature of consultations C-VII, 2.3

Incorrect compound records in online Information A-XI, 1

databases B-VI, 6.5 Communication of information contained in files A-XI,
A-XI, 3
Incorrect designation A-III, 5.5 Communication under Rule 71(3), other information in the
communication under Rule 71(3) C-V, 1.5
Incorrect preclassification B-V, 2.1 Database management systems and information
retrieval G-II, 3.6.4
Independent and dependent claims B-III, 3.7, F-IV, 3.4 Information as to means of redress E-X, 5
Kinds of claim F-IV, 3.4 Information concerning the applicant A-II, 4.1.2
Subject-matter of the search B-III, 3.7 Information modelling, activity of programming and
programming languages G-II, 3.6.2
Independent claims Information on prior art B-XI, 9, C-III, 6, E-IX, 2.3.5.2
Independent claims containing a reference to another Requesting information on prior art (not confined to
claim or to features from a claim of another priority) C-III, 6
category F-IV, 3.8 Information on the applicant A-III, 4.2.1
Number of independent claims F-IV, 3.2 Information to the public D-I, 8
Plurality of independent claims in different Missing information A-IV, 4.2
categories F-V, 3.2.2 Presentation of information G-II, 3.7
Plurality of independent claims in the same Sequence information filed under Rule 56 A-IV, 5.1
category F-V, 3.2.1 Sequence information filed under Rule 56a A-IV, 5.2
Supplementary technical information H-V, 2.3
Indication
Indication of amendments and their basis under Infringement, technical opinion for a national court
Rule 137(4) H-III, 2.1 trying an infringement action E-XIII, 1
Amendments withdrawn or superseded in the
Rule 137(4) period H-III, 2.1.2 Initial processing and formal examination E-IX, 2.1.2
Rule 137(4) and oral proceedings H-III, 2.1.3
Rule 137(4) communication and response Initiation of exchanges by email C-VII, 3.1
thereto H-III, 2.1.1
Transitional provisions relating to Insignificant amounts A-X, 10.1.3
Rule 137(4) H-III, 2.1.4 Refund A-X, 10.1.3
Indication of the amendments made in the requests and of
their basis H-III, 3.3.1 Insistence on inadmissible amendments H-II, 3.4
Indication of the contracting states A-III, 11.3.6
Indication of the purpose of payment in the case of claims Inspection of files A-XI, A-XI, 1, A-XI, 2, A-XI, 2.1,
fees A-X, 7.3 E-IX, 2.10
Claims fees payable before the grant of the European Communication of information contained in the
patent A-X, 7.3.2 files A-XI, 3
Claims fees payable on filing the European patent Conducting file inspections A-XI, 2.2
application A-X, 7.3.1 Confidentiality of the request A-XI, 2.4
Indication of the purpose of the payment in the case of Consultation of the European Patent Register A-XI, 4
designation fees A-X, 7.2 Documents open to file inspection A-XI, 2.1
Indication that a European patent is sought A-II, 4.1.1 Exclusion from inspection of files A-XI, 2.3
File inspection before publication of the
Indicators G-VII, An. application A-XI, 2.5
Application of known measures? G-VII, An., 1 Issue of certified copies A-XI, 5
Obvious combination of features? G-VII, An., 2 Publication of bibliographic data before publication of the
Obvious selection? G-VII, An., 3 application A-XI, 2.6
Overcoming a technical prejudice? G-VII, An., 4 Restrictions to file inspection A-XI, 2.3
Secondary indicators G-VII, 10
Instructions in Chapter
Industrial application B-VIII, 1, D-III, 5, F-II, 4.9, G-I, 1, Instructions in Chapter A-II ("Filing of applications and
G-II, 5.2, G-III, G-III, 1, G-III, 4 examination on filing") E-IX, 2.2
Description (formal requirements) F-II, 4.9 Instructions in Chapter A-III ("Examination of formal
Industrial application vs. exclusion under requirements") E-IX, 2.3
Art. 52(2) G-III, 3 Abstract E-IX, 2.3.10
Method of testing G-III, 2 Claim to priority E-IX, 2.3.5
Patentability B-VIII, 1, G-I, 1, G-III Claims fee E-IX, 2.3.8
Sequences and partial sequences of genes G-III, 4 Designation fee E-IX, 2.3.11
Designation of inventor E-IX, 2.3.4
Influencing the speed of examination Drawings E-IX, 2.3.9
proceedings C-VI, 2 Physical requirements E-IX, 2.3.2
March 2024 Alphabetical keyword index – 35

Prohibited matter E-IX, 2.3.7 International exhibitions G-V, 4

Renewal fees E-IX, 2.3.12 International preliminary examination E-IX, 1, E-IX, 4.3.3
Representation, address for International preliminary examination report
correspondence E-IX, 2.3.1 (IPER) F-V, 7.3
Request for grant E-IX, 2.3.3 Reduction of the examination fee where the
Title of the invention E-IX, 2.3.6 international preliminary examination report is drawn
Instructions in Chapter A-IV ("Special up by the EPO A-X, 9.3.2
provisions") E-IX, 2.4 International search report (Amendments made in
Biological material E-IX, 2.4.4 response to the WO-ISA, IPER or supplementary ~)
Certificate of exhibition E-IX, 2.4.3 C-III, 2.2
Divisional applications E-IX, 2.4.1 International Searching Authority
Sequence listings E-IX, 2.4.2 EPO as International Searching Authority E-IX, 1
Instructions in Chapter A-VI ("Publication of application;
request for examination and transmission of the dossier to International-type searches B-II, 4.5
examining division") E-IX, 2.5
Publication of the international application E-IX, 2.5.1 Internet disclosures G-IV, 7.5
Request for examination E-IX, 2.5.2 Burden of proof G-IV, 7.5.3
Supplementary European search E-IX, 2.5.3 Disclosures which have no date or an unreliable
date G-IV, 7.5.4
Insufficient Establishing the publication date G-IV, 7.5.1
Insufficient disclosure F-III, 3 Internet disclosures ‒ technical journals B-VI, 7
Cases of partially insufficient disclosure F-III, 5 Problematic cases G-IV, 7.5.5
Insufficient disclosure of the invention D-V, 4 Standard of proof G-IV, 7.5.2
Lack of support vs. insufficient disclosure F-IV, 6.4 Technical details and general remarks G-IV, 7.5.6
Insufficient funds A-X, 4.2.4
Insufficient grounds for lack of unity F-V, 2.1 Internet searches B-III, 2.4
Insufficient prior-art disclosures B-VI, 6.4
Interpretation F-IV, 4.2
Interlocutory decisions E-X, 3 Interpretation of claims B-III, 3.2
Ascertaining whether there is a fallback
Interlocutory revision E-XII, 7 position B-III, 3.2.5
Reimbursement of appeal fees E-XII, 7.3 Claims with explicit references to the description or
Remittal to the board of appeal E-XII, 7.2 drawings B-III, 3.2.1
Clarity and interpretation of claims F-IV, 4
Intermediate Using the description and/or drawings to define clear
Intermediate and final products F-V, 3.2.7 terms given a definition different from their usual
Intermediate documents B-VI, 5.2, B-X, 9.2.4 meaning B-III, 3.2.4
Intermediate generalisations H-V, 3.2.1 Using the description and/or drawings to define
Intermediate publication of another European unclear terms not defined in the claims B-III, 3.2.3
application F-VI, 2.4.2 Using the description and/or drawings to identify the
Intermediate publication of the contents of the priority technical problem B-III, 3.2.2
application F-VI, 2.4.1 Interpretation of expressions stating a purpose F-IV, 4.13
Interpretation of expressions such as "Apparatus for
International ...", "Product for ... " F-IV, 4.13.1
International (PCT) searches B-II, 4.4 Interpretation of expressions such as "Method for
International application H-IV, 2.3.4 ..." F-IV, 4.13.3
Copy of the international application E-IX, 2.1.2 Interpretation of means-plus-function features ("means
Determination of filing date in the case of erroneously for ... ") F-IV, 4.13.2
filed elements or parts of the international Interpretation of relative terms F-IV, 4.6.2
application E-IX, 2.9.4 Interpretation of terms such as "about", "approximately" or
Filing E-IX, 1 "substantially" F-IV, 4.7.1
International applications (Euro-PCT Interpretation of terms such as identity and similarity in
applications) C-IX, 4 relation to amino or nucleic acid sequences F-IV, 4.24
International applications with supplementary
search F-V, 7.2 Interruption E-VII, 1
International applications without supplementary Cases in which the proceedings may be
search F-V, 7.1 interrupted E-VII, 1.1
Potentially conflicting European and international Date of interruption E-VII, 1.3
applications B-VI, 4.1 Interruption of proceedings E-VII, 1.3
Publication of the international application E-IX, 2.5.1 Interruption of time limits A-IV, 2.2.4, D-VII, 4.3
Published international applications (WO) as "E" Procedure where the patent proprietor is not
documents B-VI, 4.1.2 entitled D-VII, 4.3
Translation E-IX, 2.1.1, E-IX, 2.5.1 Stay of proceedings for grant A-IV, 2.2.4
Translation of the international application E-IX, 2.1.3
Alphabetical keyword index – 36 March 2024

Interruption, stay and consolidation of the IPC classification where the scope of the invention is
proceedings E-VII unclear (e.g. a partial search) B-V, 3.2
Consolidation of proceedings E-VII, 4 Limitation to searched invention C-III, 3.2
Interruption E-VII, 1 Limitation to searched invention, no additional search fees
Stay of proceedings under Rule 14 due to pending paid C-III, 3.2.1
national entitlement proceedings E-VII, 2 List of exclusions G-II, 3
Stay of proceedings when a referral to the Enlarged Multiple priorities claimed for different inventions in the
Board of Appeal is pending E-VII, 3 application with an intermediate publication of one of the
Responsible department E-VII, 1.2 inventions F-VI, 2.4.3
Resumption of proceedings E-VII, 1.4 Novelty F-IV, 4.22
Resumption of time limits E-VII, 1.5 Novelty of an invention F-IV, 4.22, G-IV, 1
Objections to unsearched inventions F-V, 5.2
Intervention of the assumed infringer D-I, 5, D-VII, 6 Only variants of the invention are incapable of being
performed F-III, 5.1
Introduction of further examples and new Origin of an invention G-VII, 9
effects H-V, 2.2 Patentable biotechnological inventions G-II, 5.2
Requirement of unity of invention F-V, 2
Invention G-II Restriction to a single, searched invention H-II, 6.1
Amendments in the case of non-unity, no restriction to a Restriction to an unsearched invention H-II, 6.2
single invention searched H-II, 6.3 Same invention F-VI, 2.2
Antibodies G-II, 6 Selection inventions G-VI, 7, G-VII, 12
Burden of proof as regards the possibility of performing Technical features F-IV, 2.1, F-IV, 2.2, F-IV, 4.5.1,
and repeating the invention F-III, 4 F-V, 2, G-I, 1
Cases where the invention is realised in a distributed Title A-III, 1.2, A-III, 7.1, A-III, 7.2, B-X, 7, F-II, 3
computing environment F-IV, 3.9.3 Title of the invention A-III, 7, E-IX, 2.3.6
Changing from one searched invention to Unity B-II, 4.2, B-III, 3.12, B-VII, 1.1, B-VIII, 3.4,
another C-III, 3.5 B-VIII, 4.5, C-III, 3.2, C-III, 3.2.1, C-IX, 1.2, D-V, 2.2,
Claims directed to computer-implemented F-IV, 3.2, F-IV, 3.3, F-IV, 3.7, F-V, 1, F-V, 2, F-V, 2.1,
inventions F-IV, 3.9 F-V, 3.2.1, G-VI, 6.1
Description F-II, 1, F-II, 4.1 Unity of invention B-II, 4.2, B-III, 3.12, B-VII, B-VII, 1.1,
Determination of the invention first mentioned in the B-VIII, 3.4, B-VIII, 4.5, C-III, 3, C-III, 3.2, C-III, 3.2.1,
claims F-V, 3.4 C-IX, 1.2, D-V, 2.2, F-IV, 3.2, F-IV, 3.3, F-IV, 3.7, F-V,
Difficulties in performing the invention F-III, 5.3 F-V, 1, F-V, 2, F-V, 2.1, F-V, 3.2.1, G-VI, 6.1
Disclosure E-IX, 2.4.4, F-II, 4.1, F-III, 1, F-III, 2, F-III, 3,
F-IV, 6.4 Inventive step B-X, 9.2.1, F-IV, 4.22, G-I, 1, G-IV, 5.1,
Documents relating to the theory or principle behind the G-VII, G-VII, 1
invention B-X, 9.2.5 Arguments and evidence submitted by the
Documents relevant only to other inventions B-VII, 1.3 applicant G-VII, 11
Examination practice G-II, 2 Categories of documents (X, Y, P, A, D, etc.) B-X, 9.2.1
Examination procedure, no examination of multiple Claims in different categories G-VII, 14
inventions in EP phase E-IX, 4.2 Combination vs. juxtaposition or aggregation G-VII, 7
Exceptions to patentability G-II, 4 Combining pieces of prior art G-VII, 6
Excision of other inventions C-III, 3.3 Conflict with other European applications G-IV, 5.1
Exclusions and exceptions for biotechnological Date of filing G-VII, 2
inventions G-II, 5 Dependent claims G-VII, 14
Features of the invention F-IV, 2.1, F-IV, 2.2, F-IV, 4.5.1, Documents defining the state of the art and not prejudicing
F-V, 2, G-I, 1 novelty or inventive step B-X, 9.2.2
General statements, "spirit of the invention", claim-like "Ex post facto" analysis G-VII, 8
clauses F-IV, 4.4 Examples relating to the requirement of inventive
Grouping of inventions F-V, 3.2 step G-VII, An.
Identification of invention A-IV, 3.1 Indicators G-VII, An.
Industrial application F-II, 4.9, G-III, 1 Invention G-VII, 1
Insufficient disclosure of the invention D-V, 4 Inventive step assessment in the field of
Invention to be examined C-II, 1.3 biotechnology G-VII, 13
Inventions relating to biological material F-III, 6 Inventive step of antibodies G-II, 6.2
Biological material F-III, 6.1 Obviousness G-VII, 4
Deposit of biological material F-III, 6.3 Origin of an invention G-VII, 9
Euro-PCT cases F-III, 6.5 Patentability G-I, 1, G-VII
Priority claim F-III, 6.4 Person skilled in the art G-VII, 3
Public availability of biological material F-III, 6.2 Problem-solution approach G-VII, 5
Inventive step B-X, 9.2.1, F-IV, 4.22, G-VII, 1 Secondary indicators G-VII, 10
IPC classification in cases of lack of unity of Selection inventions G-VII, 12
invention B-V, 3.3 State of the art G-VII, 2
Sufficiency of disclosure and inventive step F-III, 12
March 2024 Alphabetical keyword index – 37

Inventor Communication of information contained in the

Cancellation of the designation of the inventor A-III, 5.5 files A-XI, 3
Designation A-III, 5.1, A-III, 5.2, A-XI, 2.3 Consultation of the European Patent Register A-XI, 4
Designation of inventor A-III, 5, A-IV, 1.5, E-IX, 2.3.4 Inspection of files A-XI, 2
Form A-III, 5.1 Priority documents issued by the EPO A-XI, 5.2
Parts of the file not for inspection A-XI, 2.3
Period E-IX, 2.3.4 Issue of communications by the formalities officer as
Waiver of right to be mentioned as inventor A-III, 5.2 a result of examination for deficiencies D-IV, 1.3
Communication in the event of deficiencies as described
Invitation A-II, 5.1, A-II, 6.1 in D-IV, 1.2.1 which, if not remedied, will lead to the
Exceptions where a reply to the Rule 161(1) invitation is opposition being deemed not to have been
not required E-IX, 3.3 filed D-IV, 1.3.1
Invitation to file amended documents D-VI, 4.2 Communication in the event of deficiencies as described
Invitation to file authorisation and legal consequence in in D-IV, 1.2.2 which, if not remedied, will lead to rejection
case of non-compliance A-VIII, 1.8 of the opposition as inadmissible D-IV, 1.3.2
Invitation to file comments and amendments C-III, 4.2 Extent of the formalities officer's obligation to issue the
Invitation to file observations D-VI, 3 above communications D-IV, 1.3.3
Opposition division's communications D-VI, 3.1
Summons to oral proceedings D-VI, 3.2 Issuing a further communication (no
Invitation to file the translation A-VII, 1.4 refusal) C-V, 15.4
Invitation to file the translation before
examination A-III, 6.8.1 Issuing a self-contained decision C-V, 15.3
Invitation to file the translation in
examination/opposition A-III, 6.8.2
Invitation to indicate subject-matter for search B-VIII, 3.1 J
Invitation to indicate which independent claim to
search B-VIII, 4.1 Joint applicants A-VIII, 3.4
Invitation to pay additional search fees combined with
invitation to restrict the scope of the search C-III, 3.2.3
Invitation to pay further search fees B-VII, 1.2 K
Applicant has not paid all further search
fees B-VII, 1.2.3
Cascading non-unity B-VII, 1.2.2 Keeping the model E-IV, 1.11.3
Invitation to the patent proprietor to submit comments and
communication of opposition to the other parties Kinds of claim F-IV, 3
concerned by the formalities officer D-IV, 5.2 Alternatives in a claim F-IV, 3.7
Invitation under both Rule 62a(1) and Rule 63(1) B-VIII, 5 Arrangement of claims F-IV, 3.5
Invitation under Rule 70a(1) C-II, 3.3 Categories F-IV, 3.1
Reply to the invitation under Rule 62a(1) B-VIII, 4.2 Claims directed to computer-implemented
Reply to the invitation under Rule 63(1) B-VIII, 3.2 inventions F-IV, 3.9
Reply to the invitation under Rule 63(1), no or late Independent and dependent claims F-IV, 3.4
reply B-VIII, 3.2.1 Independent claims containing a reference to another
Without invitation A-II, 5.2, A-II, 6.2 claim or to features from a claim of another
category F-IV, 3.8
IPC classification Number of independent claims F-IV, 3.2
IPC classification of the application B-V, 3 Objection under Rule 43(2) or Rule 137(5) F-IV, 3.3
IPC classification in cases of lack of unity of Subject-matter of a dependent claim F-IV, 3.6
invention B-V, 3.3
IPC classification of late-published search L
reports B-V, 3.1
IPC classification where the scope of the invention is
unclear (e.g. a partial search) B-V, 3.2 Lack of support vs. insufficient disclosure F-IV, 6.4
Verification of the IPC classification B-V, 3.4
Lack of unity B-III, 3.12
Irregularities in the notification E-II, 2.6 Complete search despite lack of unity B-VII, 2.2
Insufficient grounds for lack of unity F-V, 2.1
Irrelevant matter F-II, 4.4 IPC classification in cases of lack of unity of
invention B-V, 3.3
Irrelevant or unnecessary matter F-II, 7.4 Lack of unity and Rule 62a or Rule 63 B-VII, 3
Minimum requirements for reasoning of lack of
Issue of certified copies A-XI, A-XI, 5 unity F-V, 3.3.1
Certified copies of documents from the files or of other Procedure in the case of lack of unity during
documents A-XI, 5.1 search F-V, 4
Alphabetical keyword index – 38 March 2024

Procedure in the case of lack of unity during substantive Safety provision for late replenishment of deposit
examination F-V, 5 accounts A-X, 6.2.2
Procedures in cases of lack of unity B-VII, 2 Late payments A-X, 10.1.2
Reasoning for a lack of unity objection F-V, 3.3 Late receipt of documents E-VIII, 1.7

Language Late filed

Admissible languages on filing A-VII, 1 Late-filed missing parts when priority is
Admissible non-EPO languages A-VII, 3.2 claimed A-II, 5.4.1
Authentic text of the application or patent A-VII, 8 Late-filed requests after summons to oral proceedings in
Citation of documents corresponding to documents not examination H-II, 2.7
available or not published in one of the EPO's official Concept of "clear allowability" H-II, 2.7.1
languages B-VI, 6.2 Late-filed requests in opposition proceedings H-II, 3.5
Correction and certification of the translation A-VII, 7 Late-filed submissions E-VI, 2, E-X, 2.10
Derogations from the language of the proceedings in oral General principles in opposition
proceedings A-VII, 4 proceedings E-VI, 2.1
Documents filed in the wrong language A-VII, 5 Submissions filed in preparation for or during oral
Information modelling, activity of programming and proceedings E-VI, 2.2
programming languages G-II, 3.6.2
Language of a contracting state or other language E-V, 2 Later stages of examination C-IV, 4
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 Later-filed correct application documents or parts
Derogations from the language of the proceedings in when priority is claimed A-II, 6.4.1
written proceedings A-VII, 3.2
Filing a divisional application A-IV, 1.3.3 Leading lines A-IX, 7.5.1
Form and language of the search report B-X, 3.2
Languages A-VII, 2, A-VII, 4, A-VII, 8 Legal
Language of the documents cited B-X, 9.1.3 Legal character and effect of the stay of
Language requirements A-IV, 1.3.3 proceedings D-VII, 4.1.2
Derogations from language requirements D-III, 4 Legal co-operation E-IV, 3.1
Language to be used E-XIII, 4 Legal Division A-IV, 2.2.1, D-VII, 4.4, E-VII, 1.2, E-XIV, 2
Language used by employees of the EPO E-V, 5 Legal nature and effects of the stay A-IV, 2.2.3
Language used in the minutes E-V, 6 Legal remedy A-VI, 2.3
Language used in the taking of evidence E-V, 4 Legal status of decisions D-X, 8
Language(s)
Documents which have to be filed within a time Legally qualified members D-II, 2.2
limit A-X, 9.2.1, E-IX, 2.1.3
Language(s), EPO A-III, 3.2, H-III, 2.1 Letters rogatory E-IV, 3.1, E-IV, 3.3
Languages of publication A-VII, 6
Minutes of oral proceedings E-III, 10.2 Licence
Exclusive licence E-XIV, 6.1
Late Licences and other rights E-XIV, 6
Late arrival, non-appearance and failure to Cancellation of the registration E-XIV, 6.2
connect E-III, 8.3.3 Registration E-XIV, 6.1
Procedure in examination proceedings E-III, 8.3.3.3 Registration of changes of name, transfers, licences
Procedure in opposition proceedings E-III, 8.3.3.2 and other rights E-XIV
Late filing of claims A-III, 15 Sub-licence E-XIV, 6.1
Late filing of missing drawings or missing parts of the
description A-II, 5, A-II, 5.1, A-II, 5.2 Limitation
Additional fee for pages A-II, 5.6 Limitation and revocation procedure D-X
Filing date changes A-II, 5.3 Decision on request for revocation D-X, 3
Missing parts of the description or missing drawings Different sets of claims D-X, 10
based on the priority application, no change in filing Examination for deficiencies in the request D-X, 2
date A-II, 5.4 Formal procedure for limitation when the request is
On invitation A-II, 5.1 allowable D-X, 5
Withdrawal of late-filed missing drawings or missing Legal status of decisions D-X, 8
parts of the description A-II, 5.5 Multiple requests D-X, 11
Without invitation A-II, 5.2 Rejection of the request D-X, 6
Late payment of fees A-X, 6.2 Relation to opposition proceedings D-X, 7
Amount of fee payable A-X, 6.2.4 Substantive examination (limitation) D-X, 4
Debit orders filed with a competent national Withdrawal of the request D-X, 9
authority A-X, 6.2.3 Limitation is different for different contracting states
Fees paid by bank transfer - application of Art. 7(3) because the claims as granted were different for different
and (4) RFees A-X, 6.2.1 contracting states D-X, 10.2
Noting of loss of rights A-X, 6.2.5
March 2024 Alphabetical keyword index – 39

Limitation of the option to withdraw the European patent

M
application A-IV, 2.3
Limitation procedure D-X, 2.1, D-X, 4.2, D-X, 5
Amendments in limitation procedure H-II, 4 Machine translations G-IV, 4.1
Limitation results in the claims becoming different in
different contracting states D-X, 10.1 Main and auxiliary requests E-X, 2.9
Limitation to searched invention C-III, 3.2 Main and auxiliary requests filed with the
Additional search fees paid C-III, 3.2.2 appeal E-XII, 7.4.3
Invitation to pay additional search fees combined with
invitation to restrict the scope of the Maintenance of the European patent as
search C-III, 3.2.3 amended D-VIII, 1.4
Limitation to searched invention, no additional search Statement in the decision of the amended form of the
fees paid C-III, 3.2.1 European patent D-VIII, 1.4.2
Relation to unity in search C-III, 3.2.1 Taking of a final decision D-VIII, 1.4.1
Limitations of exception under Art. 53(c) G-II, 4.2.1
Diagnostic methods G-II, 4.2.1.3 Making suggestions B-XI, 3.8
Surgery G-II, 4.2.1.1
Therapy G-II, 4.2.1.2 Manner and order of presentation F-II, 4.10

Limits on the obligation to undertake Markush grouping (alternatives in a single

examination E-VI, 1.2 claim) F-V, 3.2.5

List of exceptions (Rule 28) G-II, 5.3 Mathematical methods G-II, 3.3
Artificial intelligence and machine learning G-II, 3.3.1
List of exclusions G-II, 3 List of exclusions G-II, 3.3
Aesthetic creations G-II, 3.4 Simulation, design or modelling G-II, 3.3.2
Discoveries G-II, 3.1
Mathematical methods G-II, 3.3 Matter contrary to "ordre public" or morality F-II, 7.2,
Presentations of information G-II, 3.7 G-II, 4.1
Programs for computers G-II, 3.6 Economic effects G-II, 4.1.3
Schemes, rules and methods for performing mental acts, Offensive and non-offensive use G-II, 4.1.2
playing games or doing business G-II, 3.5 Prohibited matter G-II, 4.1.1
Scientific theories G-II, 3.2
Matters to be determined by the division as regards
List of professional representatives A-VIII, 1.2 prior use G-IV, 7.2
Agreement on secrecy G-IV, 7.2.2
Long-felt need G-VII, 10.3 Example of the accessibility of objects used G-IV, 7.2.4
Example of the inaccessibility of a process G-IV, 7.2.5
Loss Use on non-public property G-IV, 7.2.3
Loss of earnings, fees E-IV, 1.10.2
Loss of right to priority A-III, 6.10 Matters to be determined by the division in cases of
Loss of rights A-III, 11.2.5, A-X, 6.2.5, E-VIII, 1.9, oral description G-IV, 7.3.3
E-VIII, 1.9.1, E-IX, 2.1.4
Cases of loss of rights E-VIII, 1.9.1 Meaning of opposition D-I, 1
Decision on a notified loss of rights at the request of
the person concerned D-VIII, 2.3 Means
Decision on loss of rights E-VIII, 1.9.3 Means of evidence E-IV, 1.2
Entry into the European phase E-IX, 2.1.4 Means of giving or taking evidence E-IV, 3.2
European patent applications filed on or after 1 April Evidence taken by a competent court E-IV, 3.2.2
2009 A-III, 11.2.5 Taking of evidence on oath E-IV, 3.2.1
Loss of rights and legal remedies A-III, 6.8.3 Means of searching systematically B-IX, 1.2
Noting and communication of loss of
rights E-VIII, 1.9.2 Mental acts
Noting of loss of rights A-X, 6.2.5 Schemes, rules and methods for mental acts G-II, 3.5.1
Time limits and loss of rights resulting from failure to Schemes, rules and methods for performing mental
respond within a time limit E-VIII, 1.9 acts G-II, 3.5.1
Time limits and loss of rights resulting from failure to Schemes, rules and methods for performing mental acts,
respond within a time limit E-VIII, 1 playing games or doing business G-II, 3.5
Time limits, loss of rights, further and accelerated
processing and re-establishment of rights E-VIII Merit of the request E-VIII, 3.2

Method claim to product claim H-V, 7.3

Alphabetical keyword index – 40 March 2024

Method claim to use claim H-V, 7.4 Missing parts of the description or missing drawings filed
under Rule 56 after the date of filing H-IV, 2.2.2
Method of notification E-II, 2.2 Missing parts or elements C-III, 1
Erroneous elements filed under
Method of refund A-X, 10.3 Rule 20.5bis PCT C-III, 1.3
Refunds to a bank account A-X, 10.3.2 Euro-PCT applications C-III, 1.2, C-III, 1.3
Refunds to a deposit account A-X, 10.3.1 European patent applications C-III, 1.1
Missing elements and parts filed under Rule 20.5 and
Method of testing G-III, 2 20.6 PCT C-III, 1.2

Methods for screening potential medicaments and Models E-IV, 1.11

clinical trials G-II, 4.2.2 Keeping the model E-IV, 1.11.3
Procedure E-IV, 1.11.2
Methods for treatment of the human or animal body by When may models be submitted? E-IV, 1.11.1
surgery or therapy and diagnostic methods practised
on the human or animal body B-VIII, 2.1 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,
Methods of payment A-X, 2 G-II, 4.1
Morality or "ordre public" A-III, 8.1
Microbiological processes G-II, 5.2, G-II, 5.5,
G-II, 5.5.1 More than one independent claim per category
Animal varieties G-II, 5.5.1 (Rule 62a) B-VIII, 4
Exclusions and exceptions for biotechnological Applications falling under Rule 62a and lacking
inventions G-II, 5.5 unity B-VIII, 4.5
Repeatability of results of microbiological Cases under Rule 62a where claims fees have not been
processes G-II, 5.5.2 paid B-VIII, 4.4
Content of the extended European search report
Minimum requirements for according a date of (EESR) B-VIII, 4.3
filing A-II, 4.1 Handling of dependent claims under Rule 62a B-VIII, 4.6
Date of filing A-II, 4.1.5 Invitation to indicate which independent claim to
Deficiencies A-II, 4.1.4 search B-VIII, 4.1
Description A-II, 4.1.3 Reply to the invitation under Rule 62a(1) B-VIII, 4.2
Indication that a European patent is sought A-II, 4.1.1
Information concerning the applicant A-II, 4.1.2 Multiple priorities A-III, 6.3
Multiple priorities and partial priorities F-VI, 1.5
Minimum requirements for reasoning of lack of Multiple priorities claimed for different inventions in the
unity F-V, 3.3.1 application with an intermediate publication of one of the
inventions F-VI, 2.4.3
Minutes
Minutes as the first communication in Multiple requests D-X, 11
examination C-VII, 2.5
Minutes of a consultation C-VII, 2.4
Minutes of oral proceedings E-III, 10 N
Formal requirements E-III, 10.1
Language E-III, 10.2 National
Request for correction of minutes E-III, 10.4 National patent (Access to EPO documentation for the ~
Subject-matter of minutes E-III, 10.3 offices) B-IX, 5
Minutes of taking of evidence E-IV, 1.7 National patent application
Conversion into a national patent application A-IV, 6
Missing Information concerning national patent
Missing information A-IV, 4.2 application C-III, 6
Missing parts of description, missing drawings or National prior rights B-VI, 4.2, C-IV, 7.2
correction of erroneously filed application documents filed Conflicting applications B-VI, 4.2
as corrections under Rule 139 H-VI, 2.2.2 Search-related issues in examination C-IV, 7.2
Missing parts of the description or missing drawings based National register A-III, 12.5
on the priority application, no change in filing
date A-II, 5.4 Negative limitations (e.g. disclaimers) F-IV, 4.19
Copy of the priority application A-II, 5.4.3
Late-filed missing parts when priority is Neither main nor auxiliary requests
claimed A-II, 5.4.1 allowable H-III, 3.1.3
Missing parts of the description or missing drawings
are completely contained in the priority New
application A-II, 5.4.2 New deposit of biological material A-IV, 4.1.1
Translation of the priority application A-II, 5.4.4
March 2024 Alphabetical keyword index – 41

New facts and evidence E-VI, 2.2.1 Notifications to and observations by the patent
New submissions in reply to a summons C-IV, 8 proprietor D-IV, 1.5
Oral proceedings E-III, 6
No deferred payment of fees, no legal aid, no
discretion A-X, 8 Noting and communication of loss of
rights E-VIII, 1.9.2
No meaningful search possible B-VIII, 3
Applications falling under Rule 63 and lacking Noting of loss of rights A-X, 6.2.5
unity B-VIII, 3.4
Content of the extended European search report Novelty G-VI
(EESR) B-VIII, 3.3 Documents defining the state of the art and not prejudicing
Invitation to indicate subject-matter for search B-VIII, 3.1 novelty or inventive step B-X, 9.2.2
Reply to the invitation under Rule 63(1) B-VIII, 3.2 Examination of novelty G-VI, 6
Generic disclosure and specific examples G-VI, 4
Non-unity and prior art F-V, 3.1 Implicit disclosure and parameters G-VI, 5
Non-unity and prior art under Art. 54(2) F-V, 3.1.2 Implicit features or well-known equivalents G-VI, 2
Non-unity and prior art under Art. 54(3) F-V, 3.1.1 Novelty of an invention F-IV, 4.22, G-IV, 1
Novelty of "reach-through" claims G-VI, 8
Non-appearance of a party E-III, 8.3 Relevant date of a prior-art document G-VI, 3
Checking the identity and authorisations of participants at Selection inventions G-VI, 7
oral proceedings E-III, 8.3.1 State of the art pursuant to Art. 54(2) G-VI, 1
Late arrival, non-appearance and failure to
connect E-III, 8.3.3 Number
Opening the oral proceedings E-III, 8.3.2 Number of communications E-II, 1.2
Number of copies A-VIII, 2.4
Non-entitlement to right to priority A-III, 6.9 Number of independent claims F-IV, 3.2
Numbering of figures A-IX, 5.2
Non-functional modification G-VII, 10.1 Numbering of sheets of drawings A-IX, 4.2
Numbers, letters and reference signs A-IX, 7.5
Non-patent literature arranged for library-type Arrows A-IX, 7.5.2
access B-IX, 4 Consistent use of reference signs in description,
Content B-IX, 4.1 claims and drawings A-IX, 7.5.4
Consistent use of reference signs in
Non-patent literature arranged for systematic drawings A-IX, 7.5.5
access B-IX, 3 Height of the numbers and letters in the
Periodicals, records, reports, books, etc. B-IX, 3.1 drawings A-IX, 7.5.3
Leading lines A-IX, 7.5.1
Non-patentability pursuant to Art. 52 to 57 D-V, 3

Non-prejudicial disclosure B-VI, 5.5, G-V O

Evident abuse G-V, 3
International exhibition G-V, 4 Oath E-IV, 3.2.2
Time limit G-V, 2 Taking of evidence on oath E-IV, 3.2.1

Non-prejudicial oral description G-IV, 7.3.2 Objection of lack of support F-IV, 6.3

Non-traditional publications G-IV, 7.5.3.3 Objection to an expert E-IV, 1.8.2

Notices of opposition filed by fax D-III, 3.3 Objection under Rule 43(2) or Rule 137(5) F-IV, 3.3

Notices of opposition filed electronically D-III, 3.2 Objections arising from missing essential
features F-IV, 4.5.1
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 Objections to unsearched inventions F-V, 5.2
Claim to priority A-III, 6.11
Communications and notifications E-II, 2 Obligation to give reasons H-III, 3.1.2
Communications and notifications E-II
Decisions E-X, 6 Observations by third parties D-I, 6, E-VI, E-VI, 3
Electronic notification E-II, 2.3 Examination by the EPO of its own motion E-VI, 1
Irregularities in the notification E-II, 2.6 Examination of observations by third parties C-VII, 6
Loss of rights E-VIII, 1.9.2 External complaints E-VI, 4
Method of notification E-II, 2.2 Late-filed submissions E-VI, 2
Notification by postal services E-II, 2.4
Notification to representatives E-II, 2.5
Alphabetical keyword index – 42 March 2024

Obvious combination of features? G-VII, An., 2 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
Obvious selection? G-VII, An., 3 opponent D-VII, 5.2
Death or legal incapacity of an opponent D-VII, 5.2
Obviousness G-VII, 4 Request for oral proceedings by an opponent whose
opposition is to be rejected as inadmissible or is deemed
Offensive and non-offensive use G-II, 4.1.2 not to have been filed E-III, 2.1

Official language Opposition D-III

Citation of documents corresponding to documents not Accelerated processing of oppositions E-VIII, 5
available or not published in one of the EPO's official Activity of the opposition division D-IV, 2
languages B-VI, 6.2 Admissibility in opposition and limitation
Official languages, of the Contracting States A-X, 9.2.1 proceedings H-VI, 2.1.1
Official languages, of the EPO A-VII, 1.1, E-IX, 4.3 Admissibility in opposition procedure H-II, 3
Use of an official language E-V, 1 Amendments in reply to the notice of opposition H-II, 3.1
Amendments not related to the grounds for
Omission of matter from publication F-II, 7.5 opposition H-II, 3.2
Appeal against the fixing of costs by the opposition
Only variants of the invention are incapable of being division D-IX, 2.2
performed F-III, 5.1 Appeals against the decision of the opposition division on
the fixing of costs E-XII, 4
Opening of oral proceedings E-III, 8.3, E-III, 8.3.2 Basis of this ground for opposition D-V, 6.1
Checking the identity and authorisations of participants at Changes in claim category in opposition H-V, 7
oral proceedings E-III, 8.3.1 Communication in the event of deficiencies as described
Late arrival, non-appearance and failure to in D-IV, 1.2.1 which, if not remedied, will lead to the
connect E-III, 8.3.3 opposition being deemed not to have been
filed D-IV, 1.3.1
Opening of the substantive part of the Communication in the event of deficiencies as described
proceedings E-III, 8.4 in D-IV, 1.2.2 which, if not remedied, will lead to rejection
of the opposition as inadmissible D-IV, 1.3.2
Opinion Communications from the opposition division D-VI, 4.1
Amendments made in response to the search Communications from the opposition division to the patent
opinion C-III, 2.1 proprietor D-VI, 4
Analysis of the application and content of the search Content of the notice of opposition D-III, 6
opinion B-XI, 3 Continuation after the opposition has been
Basis for the search opinion B-XI, 2 withdrawn D-VII, 5.3
Comments and amendments in response to the search Decision concerning the admissibility of an opposition, the
opinion B-XI, 3.3 patent proprietor being a party D-IV, 5.5
Decision on the form of the opinion E-IV, 1.8.1 Decision concerning the awarding of costs by the
Establishment and issue of the technical opposition division D-II, 4.2
opinion E-XIII, 5.4 Decision on the inadmissibility of an opposition or
Evaluation of an expert opinion E-IV, 4.7 intervention D-VIII, 2.1
No search opinion is issued B-XI, 7 Decisions of the opposition division D-VIII
Opinions of the search division B-III, 1 Deficiencies which may no longer be remedied in
Opinions in relation to the search report B-III, 1.1 accordance with Rule 77(1) and (2), resulting in the
Opinions on matters relating to limitation of the opposition being rejected as inadmissible D-IV, 1.4.2
search B-III, 1.2 Deficiencies which may no longer be remedied, as a result
Positive opinion B-XI, 3.9 of which the opposition is deemed not to have been
Priority claim and the search opinion B-XI, 4 filed D-IV, 1.4.1
Provisional opinion accompanying the partial search Deficiencies which, if not remedied, lead to the opposition
results F-V, 4.1 being deemed not to have been filed D-IV, 1.2.1
Request from a national court for a technical opinion Deficiencies which, if not remedied, lead to the opposition
concerning a European patent E-XIII being rejected as inadmissible D-IV, 1.2.2
Response to the search opinion A-VI, 3, C-II, 3.1 Derogations from language requirements D-III, 4
Scope of the technical opinion E-XIII, 2 Examination for deficiencies in the notice of
Search opinion B-XI, B-XI, 1.1 opposition D-IV, 1.2
Search opinion is part of the EESR B-XI, 1 Examination for deficiencies in the notice of opposition
Search opinion where the search was limited B-XI, 6 and communications from the formalities officer arising
Technical opinion E-XIII, 1 from this examination D-IV, 1
Transmittal of the search report and search Examination of oppositions D-II, 4.1
opinion B-X, 12 Examination of the grounds for opposition D-V, 2.2
Unity in relation to the search opinion B-XI, 5 Examination of the opposition during oral
Use of "P" and "E" documents in the search proceedings D-VI, 6
opinion B-XI, 4.1
March 2024 Alphabetical keyword index – 43

Fees for limitation/revocation, opposition, appeal, petition Opposition proceedings where the claims as granted
for review A-X, 5.2.6 are different for different contracting states H-III, 4.5
Filing of amended documents in reply to the notice of Oral proceedings D-VI, 3.2, D-VI, 7.1, D-VI, 7.2.3,
opposition D-IV, 5.3 E-III, 3, E-III, 8.1, E-VIII, 3.1.1
Filing of opposition after decision on limitation D-X, 7.2 Parties D-I, 6
Final decisions on an admissible opposition D-VIII, 1 Parties to opposition proceedings D-I, 6
Fixing of costs by the opposition division D-IX, 2.1 Precedence of opposition proceedings D-X, 7.1
Form of the opposition D-III, 3.1 Procedure in opposition proceedings E-III, 8.3.3.2,
Forwarding of the notice of opposition to the formalities E-III, 8.7.3
officer D-IV, 1.1 Relation to opposition proceedings D-X, 7
Grounds for opposition D-III, 5 Request to stay opposition proceedings D-VI, 8
Invitation to file the translation in Revocation proceedings D-X, 2.1
examination/opposition A-III, 6.8.2 Termination of opposition proceedings in the event of
Invitation to the patent proprietor to submit comments and inadmissible opposition D-IV, 4
communication of opposition to the other parties Procedure for the examination of the opposition D-VI
concerned by the formalities officer D-IV, 5.2 Rejection of the opposition D-VIII, 1.3
Lapse of the patent E-X, 7 Rejection of the opposition as inadmissible by the
Meaning of opposition D-I, 1 opposition division, the patent proprietor not being a
Notice of intervention of the assumed infringer D-I, 5, party D-IV, 3
D-VII, 6 Remittal to the examining or opposition division after
Notices of opposition filed by fax D-III, 3.3 appeal E-XII, 9
Notices of opposition filed electronically D-III, 3.2 Request for oral proceedings by an opponent whose
Opposition after surrender or lapse D-I, 2 opposition is to be rejected as inadmissible or is deemed
Opposition cases with different texts where a transfer of not to have been filed E-III, 2.1
rights by virtue of a final decision pursuant to Art. 61 takes Several oppositions D-IV, 5.2
place in examination proceedings H-III, 4.3.3 Signature of the notice of opposition D-III, 3.4
Opposition Divisions D-II Submission in writing D-III, 3
Administrative structure D-II, 1 Substantive examination of opposition D-V
Allocation of duties and appointment of members of Territorial effect of the opposition D-I, 3
the opposition division D-II, 3 Time allowed for filing notice of opposition D-III, 1
Allocation of individual duties D-II, 7 Time limit for filing notice of opposition D-III, 1,
Allocation of tasks to members D-II, 5 D-IV, 1.2.2.1
Composition D-II, 2
Decisions taken by the examining or opposition Optional features F-IV, 4.9
divisions E-X, 2
Duties and powers of members D-II, 6 Oral
Tasks of the opposition divisions D-II, 4 Oral disclosure, use, exhibition, etc. as state of the
Opposition division's communications D-VI, 3.1 art B-VI, 2
Opposition fee D-III, 2 Oral proceedings C-VII, 5, D-VI, 1, E-III, H-III, 3.4.2,
Opposition D-III, 2 H-III, 3.5.3
Opposition procedure (Admissibility in ~) H-II, 3 Adjournment of oral proceedings due to lack of
Opposition proceedings time E-III, 8.11.2
Auxiliary requests, in opposition Amendments filed in preparation for or during oral
proceedings H-III, 3.4 proceedings E-VI, 2.2.2
Compliance of amendments with other EPC Auxiliary requests, in limitation
requirements, in opposition proceedings H-IV, 5.3 proceedings H-III, 3.5.3
Continuation of the opposition proceedings in the Auxiliary requests, in opposition
cases covered by Rule 84 D-VII, 5 proceedings H-III, 3.4.2
Correction of the decision to grant while opposition Cancellation or maintenance of oral
proceedings are pending H-VI, 3.3 proceedings E-III, 7.2
Costs D-IX, 1.1 Change of date of oral proceedings E-III, 7.1.3
Decision on closure of the opposition Change of date of oral proceedings at the instigation of
proceedings D-VIII, 2.5 the division E-III, 7.1.2
Different texts where a transfer of the patent in respect Change of date, cancellation or maintenance of oral
of certain designated states takes place in opposition proceedings E-III, 7
proceedings H-III, 4.3.2 Changing the date of oral proceedings E-III, 7.1
Documents D-IV, 5.6, E-III, 8.7.1 Checking the identity and authorisations of participants
General principles in opposition at oral proceedings E-III, 8.3.1
proceedings E-VI, 2.1 Closure of oral proceedings E-III, 8.11
Intervention in opposition proceedings D-I, 5, Communications/oral proceedings/refusal after
D-IV, 5.6, D-VII, 6 resumption C-V, 4.7.1
Late-filed requests in opposition proceedings H-II, 3.5 Conduct of oral proceedings E-III, 8
Opposition proceedings (inter partes) E-III, 8.5.1.1 Costs arising from oral proceedings or taking of
evidence E-IV, 1.9
Alphabetical keyword index – 44 March 2024

Delivery of the decision E-III, 9 Organisation

Derogations from the language of the proceedings in Organisation and content of the documentation available
oral proceedings A-VII, 4, E-V to the search divisions B-IX, 1.1
Examination of the opposition during oral Payment or transfer to a bank account held by the
proceedings D-VI, 6 European Patent Organisation A-X, 4.1
Format of oral proceedings E-III, 1.2
Handwritten amendments in oral Origin of an invention G-VII, 9
proceedings E-III, 8.7
Late-filed requests after summons to oral proceedings Original application no longer pending C-IX, 2.2
in examination H-II, 2.7
Minutes of oral proceedings E-III, 10 Other parts relating to formalities A-I, 4
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
Other procedures in examination C-VII, 5 Consultations C-VII, 2
Preparation of oral proceedings E-III, 5 Examination of observations by third parties C-VII, 6
Request for further oral proceedings E-III, 3 Oral proceedings C-VII, 5
Request for oral proceedings by an opponent whose Taking of evidence C-VII, 4
opposition is to be rejected as inadmissible or is Use of email C-VII, 3
deemed not to have been filed E-III, 2.1
Request for oral proceedings to be held on EPO Overcoming a technical prejudice? G-VII, An., 4
premises E-III, 1.3
Request to hold on-site oral proceedings at a particular
site E-III, 1.4 P
Requesting postponement during oral
proceedings E-III, 8.11.1 PACE C-VI, 2
Requests to change the date of oral
proceedings E-III, 7.1.1 Page-setting A-IX, 5.1
Rule 137(4) and oral proceedings H-III, 2.1.3
Submissions filed in preparation for or during oral Parameters F-IV, 4.11
proceedings E-VI, 2.2 Implicit disclosure and parameters G-VI, 5
Summons to oral proceedings E-III, 6 Unusual parameters F-IV, 4.11.1
Summons to oral proceedings as the first action in
examination C-III, 5 Partial
Use of computer-generated slideshows in oral Partial entitlement C-IX, 2.3
proceedings E-III, 8.5.1 Partial European search report B-VII, 1.1
Use of Rule 137(4) for amendments filed during oral Partial transfer of right by virtue of a final
proceedings in examination E-III, 8.8 decision A-IV, 2.7
When can a summons to oral proceedings be issued in
substantive examination? C-VIII, 5.1, E-III, 5.1 Participation of members of the division from different
Withdrawal of the request for oral locations E-III, 8.2.2
proceedings E-III, 7.2.2
Written submissions during oral proceedings by Participation of parties and their representatives from
videoconference E-III, 8.5.2 different locations E-III, 8.2.1
Oral proceedings at the request of a party E-III, 2
Request for oral proceedings by an opponent whose Particularly relevant documents B-X, 9.2.1
opposition is to be rejected as inadmissible or is
deemed not to have been filed E-III, 2.1 Parties to opposition proceedings D-I, 6

Order E-X, 1.3.1 Parties' written submissions A-VII, 3.1

Date of receipt of the debit order A-X, 4.2.4
Debit orders filed with a competent national Patent applications
authority A-X, 6.2.3 Accelerated prosecution of European patent
Debit orders for deposit accounts held with the applications E-VIII, 4
EPO A-II, 1.5 European patent applications filed before 1 April
Manner and order of presentation F-II, 4.10 2009 A-III, 11.3
Order of claims F-IV, 4.23 European patent applications filed on or after 1 April
Order to take evidence E-IV, 1.4 2009 A-III, 11.2
Extension and validation of European patent applications
Ordre public and patents to/in states not party to the EPC A-III, 12
Inventions contrary to ordre public G-II, 4.1 Preclassification, IPC and CPC classification of European
Matter contrary to "ordre public" or morality F-II, 7.2, patent applications B-V
G-II, 4.1 Published European patent applications as "E"
Morality or "ordre public" A-III, 8.1 documents B-VI, 4.1.1
March 2024 Alphabetical keyword index – 45

Search for conflicting European patent Payment

applications C-IV, 7.1 Conditions for valid payment A-X, 7.1.1
Unpublished patent applications B-IX, 2.2 Date considered as date on which payment is
made A-X, 4
Patent Cooperation Treaty (Applications under the ~ Fee payments lacking a legal basis A-X, 10.1.1
(PCT)) E-IX Indication of the purpose of payment in the case of claims
fees A-X, 7.3
Patent documents arranged for systematic Indication of the purpose of the payment in the case of
searching B-IX, 2 designation fees A-X, 7.2
Patent family system B-IX, 2.4 Late payments A-X, 10.1.2
PCT minimum documentation B-IX, 2.1 Methods of payment A-X, 2
Search reports B-IX, 2.3 Payment by credit card A-X, 4.4
Unpublished patent applications B-IX, 2.2 Payment in due time A-X, 6
Late payment of fees A-X, 6.2
Patent family members B-X, 11.3 Period for payment considered observed A-X, 6.2
Payment of designation fee A-III, 11.2.2
Patent family system B-IX, 2.4 Payment of fees A-III, 13.1
Late payment of fees A-X, 6.2
Patent proprietor No deferred payment of fees, no legal aid, no
Adherence to the text of the European patent submitted or discretion A-X, 8
approved by the patent proprietor D-VI, 2 Request for amendments or corrections in reply to the
Communications from the opposition division to the patent Rule 71(3) communication, no payment of fees or filing
proprietor D-VI, 4 of translations necessary C-V, 4.1
Decision concerning the admissibility of an opposition, the Payment or transfer to a bank account held by the
patent proprietor being a party D-IV, 5.5 European Patent Organisation A-X, 4.1
Invitation to the patent proprietor to submit comments and Payments to replenish a deposit account A-X, 4.2.2
communication of opposition to the other parties Purpose of payment A-X, 7, A-X, 7.1.2
concerned by the formalities officer D-IV, 5.2 Time limit for payment of extension and validation
Notifications to and observations by the patent fees A-III, 12.2
proprietor D-IV, 1.5
Procedure where the patent proprietor is not PCT
entitled D-VII, 4 Application documents filed under Rule 56 EPC,
Rejection of the opposition as inadmissible by the Rule 56a EPC, Rule 20.5 PCT or
opposition division, the patent proprietor not being a Rule 20.5bis PCT B-XI, 2.1
party D-IV, 3 Applications under the Patent Cooperation Treaty
Revocation of the patent in the event that the patent (PCT) E-IX
proprietor no longer wishes the patent to be maintained as Erroneous elements filed under
granted D-VIII, 1.2.5 Rule 20.5bis PCT C-III, 1.3
International (PCT) searches B-II, 4.4
Patent Prosecution Highway (PPH) E-VIII, 4.3 Missing elements and parts filed under Rule 20.5 and
20.6 PCT C-III, 1.2
Patent specification PCT minimum documentation B-IX, 2.1
Publication of the patent specification C-V, 10 Reduction and refunds of fees in respect of international
Withdrawal before publication of the patent (PCT) applications E-IX, 2.6
specification C-V, 11 Response to PCT actions prepared by the EPO C-II, 3.2
Review by the EPO under Art. 24 PCT and excuse of
Patentability B-VIII, 1, Part G, G-I, G-III, 1 delays under Art. 48(2) PCT E-IX, 2.9.2
Considerations relating to specific exclusions from and Review by the EPO under Art. 25 PCT E-IX, 2.9.1
exceptions to patentability B-VIII, 2
Exceptions B-VIII, 1 Pendency of the earlier application A-IV, 1.1.1
Exceptions to patentability G-II, 4
Industrial application G-III Period allowed for remedying deficiencies A-III, 16.2
Inventions G-II
Inventive step G-VII Period for payment considered observed A-X, 6.2
Non-prejudicial disclosures G-V Amount of fee payable A-X, 6.2.4
Novelty G-VI Debit orders filed with a competent national
Observations by third parties D-I, 6, E-VI, 3 authority A-X, 6.2.3
Patentability requirements G-I, 1 Fees paid by bank transfer - application of Art. 7(3) and (4)
State of the art G-IV RFees A-X, 6.2.1
Subject-matter excluded from patentability under Art. 52(2) Noting of loss of rights A-X, 6.2.5
and (3) B-VIII, 2.2 Safety provision for late replenishment of deposit
Technical progress, advantageous effect G-I, 2 accounts A-X, 6.2.2

Patentable biotechnological inventions G-II, 5.2 Periodicals, records, reports, books, etc. B-IX, 3.1
Alphabetical keyword index – 46 March 2024

Persons Positive statements B-XI, 3.2.2

Person skilled in the art B-X, 9.2.1, D-III, 5, D-V, 4, Positive statements/suggestions C-III, 4.1.2
F-II, 4.1, F-III, 1, F-III, 2, F-III, 3, F-III, 6.3, F-IV, 6.4, G-I, 1, Positive WO-ISA, SISR or IPER E-IX, 3.3.2
G-VII, 1, G-VII, 3
Categories of documents (X, Y, P, A, D, Postal services
etc.) B-X, 9.2.1 Filing of applications by delivery by hand or by postal
Common general knowledge of the skilled services A-II, 1.2
person G-VII, 3.1 Notification by postal services E-II, 2.4
Invention G-VII, 1
Inventions relating to biological material F-III, 6.3 Potentially conflicting European and international
Inventive step G-VII, 3 applications B-VI, 4.1
Patentability G-I, 1 Published European patent applications as "E"
Sufficiency of disclosure F-III, 1, F-III, 2, F-III, 3 documents B-VI, 4.1.1
Support in description F-IV, 6.4 Published international applications (WO) as "E"
Persons entitled to appeal and to be parties to appeal documents B-VI, 4.1.2
proceedings E-XII, 5
Persons entitled to file a divisional application A-IV, 1.1.3 Potentially conflicting patent documents B-X, 9.2.6
Persons entitled to file an application A-II, 2
Persons participating in the consultation C-VII, 2.2 Precedence of opposition proceedings D-X, 7.1

Photographs A-IX, 1.2, F-II, 5.3 Preclassification (for file routing and
Drawings F-II, 5.3 allocation) B-V, 2
Graphic forms of presentation considered as Incorrect preclassification B-V, 2.1
drawings A-IX, 1.2
Preclassification, IPC and CPC classification of
Physical European patent applications B-V
Physical requirements A-III, 3, E-IX, 2.3.2 CPC classification of the application B-V, 4
Documents making up the application, replacement Definitions B-V, 1
documents, translations A-III, 3.2 IPC classification of the application B-V, 3
Examination of formal requirements A-III, 3 Preclassification (for file routing and allocation) B-V, 2
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.2 Predictable disadvantage G-VII, 10.1
Physical requirements of applications filed by
reference to a previously filed application A-III, 3.2.1 Prefixes and their symbols used to designate certain
Physical requirements of late-filed application decimal multiples and submultiples F-II, An. 2, 1.3
documents or correct application documents or
parts A-III, 3.2.2 Preliminary examination E-XIII, 5.2
Physical requirements, other documents A-III, 3.3 International preliminary examination E-IX, 1, E-IX, 4.3.3
Physical values, units F-II, 4.13 International preliminary examination report
(IPER) F-V, 7.3
Plant Reduction of the examination fee where the international
Plant and animal varieties or essentially biological preliminary examination report is drawn up by the
processes for the production of plants or EPO A-X, 9.3.2
animals G-II, 5.4
Essentially biological processes for the production of Preliminary remarks General Part, 1
plants or animals G-II, 5.4.2
Plant varieties G-II, 5.4.1 Preparation of a decision to maintain a European
Exceptions to patentability G-II, 5.4 patent in amended form D-VI, 7.2
Plants, patentability G-II, 5.2 Decision on the documents on the basis of which the
Processes for the production of plants G-II, 5.4 patent is to be maintained D-VI, 7.2.2
Procedural requirements D-VI, 7.2.1
Plurality of independent claims in different Request for publishing fee, translations and a formally
categories F-V, 3.2.2 compliant version of amended text passages D-VI, 7.2.3

Plurality of independent claims in the same Preparation of oral proceedings E-III, 5

category F-V, 3.2.1 When can a summons to oral proceedings be issued in
substantive examination? E-III, 5.1
Points to be disregarded H-IV, 5.4.3
Preparation of substantive examination D-IV, 5
Position of the examining division B-XI, 1.2 Communication of observations from one of the parties to
the other parties D-IV, 5.4
Positive Decision concerning the admissibility of an opposition, the
Positive opinion B-XI, 3.9 patent proprietor being a party D-IV, 5.5
March 2024 Alphabetical keyword index – 47

Examination of the admissibility of an intervention and Correct application documents based on priority
preparations in the event of an intervention D-IV, 5.6 application, no change in the filing date A-II, 6.4
Filing of amended documents in reply to the notice of Date of priority A-IV, 1.2.1, A-IV, 1.2.2, A-IV, 2.5,
opposition D-IV, 5.3 C-IX, 1.1, C-IX, 2.1, F-VI, 1.2, G-IV, 3, G-IV, 5.1
Inadmissibility at a later stage D-IV, 5.1 Declaration of priority A-III, 6.5, F-VI, 3.1, F-VI, 3.4
Invitation to the patent proprietor to submit comments and European Patent Application F-VI
communication of opposition to the other parties Examination of the priority document A-III, 6.4
concerned by the formalities officer D-IV, 5.2 Examining the validity of a right to priority F-VI, 2.1
Further action upon examination of replies, further action
Preparation of the decision D-VI, 7 where a request for a translation of the priority application
Preparation of a decision to maintain a European patent in was sent earlier in examination proceedings C-IV, 3.1
amended form D-VI, 7.2 Intermediate publication of the contents of the priority
application F-VI, 2.4.1
Presentation of the sheets of drawings A-IX, 4 Late-filed missing parts when priority is
Numbering of sheets of drawings A-IX, 4.2 claimed A-II, 5.4.1
Usable surface area of sheets A-IX, 4.1 Later-filed correct application documents or parts when
priority is claimed A-II, 6.4.1
Presentations of information G-II, 3.7 Loss of right to priority A-III, 6.10
User interfaces G-II, 3.7.1 Missing parts of the description or missing drawings are
completely contained in the priority application A-II, 5.4.2
Preventing publication A-VI, 1.2 Missing parts of the description or missing drawings based
on the priority application, no change in filing
Principle of equity D-IX, 1.4 date A-II, 5.4
Multiple priorities A-III, 6.3, A-III, 6.7, E-VIII, 1.5, F-VI, 1.5
Principles Non-entitlement to right to priority A-III, 6.9
Basic principles H-IV, 3.1 Period of priority A-III, 6.1, A-III, 6.6, A-III, 6.9,
Basic principles of decisions E-X, 1 E-IX, 2.3.5.3, F-VI, 1.3, F-VI, 3.6
General principles in opposition proceedings E-VI, 2.1 Priority claim F-III, 6.4
Principles relating to the exercise of discretion E-VI, 2.2.3 Correcting an existing priority claim A-III, 6.5.2
Deficiencies in the priority claim and loss of the priority
Printing quality F-II, 5.2 right A-III, 6.5.3
Doubts about the validity of the priority claim B-VI, 5.3
Prior Evaluation of prior-art documents cited in the search
Prior art report and late priority claim C-III, 7
Citation of prior art in the description after the filing Filing a new priority claim A-III, 6.5.1
date H-IV, 2.2.7 Priority claim not valid F-VI, 2.3
Closest prior art and its effects on the Priority claim of a divisional application A-IV, 1.2.2
search B-IV, 2.5 Withdrawal of priority claim E-VIII, 8.2, F-VI, 3.5
Combining pieces of prior art G-VII, 6 Priority claim and the search opinion B-XI, 4
Determination of the closest prior art G-VII, 5.1 Use of "P" and "E" documents in the search
Information on prior art E-IX, 2.3.5.2 opinion B-XI, 4.1
Non-unity and prior art F-V, 3.1 Priority date
Non-unity and prior art under Art. 54(2) F-V, 3.1.2 Date of filing or priority date as effective date G-IV, 3
Non-unity and prior art under Art. 54(3) F-V, 3.1.1 Determining priority dates F-VI, 2
Requesting information on prior art (not confined to Effect of change in priority date E-VIII, 1.5
priority) C-III, 6 Filing and priority date B-VI, 5
Prior right Some examples of determining priority
National prior rights B-VI, 4.2, C-IV, 7.2 dates F-VI, 2.4
Prior use Verification of claimed priority dates B-VI, 5.1
Matters to be determined by the division as regards Priority date as effective date F-VI, 1.2
prior use G-IV, 7.2 Date of filing or priority date as effective date G-IV, 3
Public prior use G-IV, 1 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 B-VI, 3, F-VI, F-VI, 1.2, G-IV, 3, G-IV, 5.1 Claim to priority E-IX, 2.3.5.1, F-VI, 3.4
Applications giving rise to a right of priority A-III, 6.2 Content of the application as "originally"
Certified copy of the previous application (priority filed H-IV, 2.2.6
document) F-VI, 3.3 Derogations from the language of the proceedings in
Claiming priority F-VI, 3 written proceedings A-VII, 3.3
Conflict with other European applications G-IV, 5.1 Issue of certified copies A-XI, 5.2
Copy of the previous application (priority Priority documents issued by the EPO A-XI, 5.2
document) A-III, 6.7 Priority period A-III, 6.6
Copy of the priority application A-II, 5.4.3, A-II, 6.4.2 Re-establishment of rights in respect of the priority
Copy of the search results for the priority or period F-VI, 3.6
priorities A-III, 6.12, C-II, 5
Alphabetical keyword index – 48 March 2024

Priority right F-VI, 1.2, F-VI, 1.5, F-VI, 2.2, G-IV, 3 Procedure for the fixing of costs D-IX, 2
Deficiencies in the priority claim and loss of the priority Appeal against the fixing of costs by the opposition
right A-III, 6.5.3 division D-IX, 2.2
Requesting information on prior art (not confined to Fixing of costs by the opposition division D-IX, 2.1
priority) C-III, 6
Restoration of priority E-IX, 2.3.5.3 Procedure in examination proceedings E-III, 8.3.3.3,
Right to priority F-VI, 1 E-III, 8.7.2
Right to priority F-VI, 1.2 Handwritten amendments in oral proceedings E-III, 8.7.2
Situation in which it has to be checked whether the Late arrival, non-appearance and failure to
application from which priority is actually claimed is the connect E-III, 8.3.3.3
"first application" within the meaning of
Art. 87(1) F-VI, 2.4.4 Procedure in opposition proceedings E-III, 8.3.3.2,
State of the art at the search stage B-VI, 3 E-III, 8.7.3
Translation of the priority application A-II, 5.4.4, Handwritten amendments in oral proceedings E-III, 8.7.3
A-II, 6.4.3 Late arrival, non-appearance and failure to
Validly claiming priority F-VI, 1.3 connect E-III, 8.3.3.2

Problem-solution approach G-VII, 5 Procedure in the case of lack of unity during

Claims comprising technical and non-technical search F-V, 4
features G-VII, 5.4 Consequences for the applicant F-V, 4.2
Could-would approach G-VII, 5.3 Provisional opinion accompanying the partial search
Determination of the closest prior art G-VII, 5.1 results F-V, 4.1
Formulation of the objective technical problem G-VII, 5.2
Procedure in the case of lack of unity during
Procedural aspects H-VI, 3.3 substantive examination F-V, 5
Amendments in the case of non-unity, further procedural Objections to unsearched inventions F-V, 5.2
aspects concerning Euro-PCT applications H-II, 6.4 Review of non-unity findings F-V, 5.3

Procedure after searching B-IV, 3 Procedure on filing A-II, 3

Documents discovered after completion of the Confirmation A-II, 3.1
search B-IV, 3.2 Filing with a competent national authority A-II, 3.2
Drawing up the search report B-IV, 3.1 Receipt A-II, 3.1
Errors in the search report B-IV, 3.3
Procedure up to substantive examination D-IV
Procedure before searching B-IV, 1 Activity of the opposition division D-IV, 2
Analysis of the application B-IV, 1.1 Examination for deficiencies in the notice of opposition
Documents cited or supplied by the applicant B-IV, 1.3 and communications from the formalities officer arising
Formal deficiencies B-IV, 1.2 from this examination D-IV, 1
Preparation of substantive examination D-IV, 5
Procedure for amendments to documents H-III, 2 Rejection of the opposition as inadmissible by the
Amendment by submitting missing documents or by filing opposition division, the patent proprietor not being a
replacement pages H-III, 2.2 party D-IV, 3
Amendments made by the EPO at the request of a Termination of opposition proceedings in the event of
party H-III, 2.4 inadmissible opposition D-IV, 4
Amendments using copies H-III, 2.3
Indication of amendments and their basis under Procedure where the patent proprietor is not
Rule 137(4) H-III, 2.1 entitled D-VII, 4
Withdrawal of amendments/abandonment of subject Continuation of proceedings D-VII, 4.2
matter H-III, 2.5 Department responsible D-VII, 4.4
Interruption of time limits D-VII, 4.3
Procedure for formalities officers A-III, 16.1 Stay of proceedings D-VII, 4.1

Procedure for the examination of the opposition D-VI Procedures before the competent authority E-IV, 3.4
Additional search D-VI, 5
Adherence to the text of the European patent submitted or Procedures in cases of lack of unity B-VII, 2
approved by the patent proprietor D-VI, 2 Complete search despite lack of unity B-VII, 2.2
Communications from the opposition division to the patent Request for refund of further search fees B-VII, 2.1
proprietor D-VI, 4 Supplementary European search B-VII, 2.3
Examination of the opposition during oral
proceedings D-VI, 6 Proceedings
Invitation to file observations D-VI, 3 Adjournment of oral proceedings due to lack of
Preparation of the decision D-VI, 7 time E-III, 8.11.2
Request to stay opposition proceedings D-VI, 8 Admissibility in opposition and limitation
proceedings H-VI, 2.1.1
March 2024 Alphabetical keyword index – 49

Admissibility in the examination procedure, at an Format of oral proceedings E-III, 1.2

advanced stage of the proceedings H-II, 2.4 Further action upon examination of replies, further action
Admission of the public to proceedings E-III, 8.1 where a request for a translation of the priority application
Amendments filed in preparation for or during oral was sent earlier in examination proceedings C-IV, 3.1
proceedings E-VI, 2.2.2 General principles in opposition proceedings E-VI, 2.1
Amendments filed in reply to a Rule 71(3) communication, Handwritten amendments in oral proceedings E-III, 8.7
further course of proceedings H-II, 2.5.2 Influencing the speed of examination proceedings C-VI, 2
Ancillary proceedings D-II, 4.3 Interruption of proceedings E-VII, 1.3
Art. 61 applications and stay of proceedings under Interruption, stay and consolidation of the
Rule 14 A-IV, 2 proceedings E-VII
Auxiliary requests, in examination proceedings H-III, 3.3 Language of proceedings A-IV, 1.3.3, A-VII, 1.3, A-VII, 2,
Auxiliary requests, in limitation proceedings H-III, 3.5 A-VII, 3.2, A-VII, 4, A-VII, 8, B-X, 3.2, E-IX, 2.1.3
Auxiliary requests, in opposition proceedings H-III, 3.4 Late-filed requests after summons to oral proceedings in
Cancellation or maintenance of oral examination H-II, 2.7
proceedings E-III, 7.2 Late-filed requests in opposition proceedings H-II, 3.5
Cases in which the proceedings may be Legal character and effect of the stay of
interrupted E-VII, 1.1 proceedings D-VII, 4.1.2
Change of date of oral proceedings E-III, 7.1.3 Minutes of oral proceedings E-III, 10
Change of date of oral proceedings at the instigation of the Opening of oral proceedings E-III, 8.3, E-III, 8.3.2
division E-III, 7.1.2 Opening of the substantive part of the
Change of date, cancellation or maintenance of oral proceedings E-III, 8.4
proceedings E-III, 7 Opposition cases with different texts where a transfer of
Changing the date of oral proceedings E-III, 7.1 rights by virtue of a final decision pursuant to Art. 61 takes
Checking the identity and authorisations of participants at place in examination proceedings H-III, 4.3.3
oral proceedings E-III, 8.3.1 Opposition proceedings (inter partes) E-III, 8.5.1.1
Closure of oral proceedings E-III, 8.11 Opposition proceedings where the claims as granted are
Communications/oral proceedings/refusal after different for different contracting states H-III, 4.5
resumption C-V, 4.7.1 Oral proceedings C-VII, 5, D-VI, 1, E-III, H-III, 3.4.2,
Compliance of amendments with other EPC requirements, H-III, 3.5.3
in examination proceedings H-IV, 5.2 Oral proceedings at the instance of the EPO E-III, 4
Compliance of amendments with other EPC requirements, Oral proceedings at the request of a party E-III, 2
in limitation proceedings H-IV, 5.4 Parties to opposition proceedings D-I, 6
Compliance of amendments with other EPC requirements, Persons entitled to appeal and to be parties to appeal
in opposition proceedings H-IV, 5.3 proceedings E-XII, 5
Conduct of oral proceedings E-III, 8, E-III, 8.2 Precedence of opposition proceedings D-X, 7.1
Consolidation of proceedings E-VII, 4 Preparation of oral proceedings E-III, 5
Continuation of proceedings D-VII, 4.2 Procedure in examination proceedings E-III, 8.3.3.3,
Continuation of the opposition proceedings in the cases E-III, 8.7.2
covered by Rule 84 D-VII, 5 Procedure in opposition proceedings E-III, 8.3.3.2,
Continuation regardless of the stage reached in national E-III, 8.7.3
proceedings D-VII, 4.2.2 Public proceedings E-III, 8.1
Correction of the decision to grant while opposition Relation to opposition proceedings D-X, 7
proceedings are pending H-VI, 3.3 Request for further oral proceedings E-III, 3
Costs arising from oral proceedings or taking of Request for oral proceedings by an opponent whose
evidence E-IV, 1.9 opposition is to be rejected as inadmissible or is deemed
Date of the stay of proceedings A-IV, 2.2.2, D-VII, 4.1.1 not to have been filed E-III, 2.1
Decision on closure of the opposition Request for oral proceedings to be held on EPO
proceedings D-VIII, 2.5 premises E-III, 1.3
Decisions which do not terminate Request to hold on-site oral proceedings at a particular
proceedings D-VIII, 2.2, E-X, 3 site E-III, 1.4
Derogations from the language of the proceedings in oral Request to stay opposition proceedings D-VI, 8
proceedings A-VII, 4, E-V Requesting postponement during oral
Derogations from the language of the proceedings in proceedings E-III, 8.11.1
written proceedings A-VII, 3 Requests to change the date of oral
Details and special features of the proceedings D-VII proceedings E-III, 7.1.1
Different text where a transfer of right takes place Resumption E-VII, 1.3, E-VIII, 1.4
pursuant to Art. 61 in examination Resumption after final decision in entitlement
proceedings H-III, 4.3.1 proceedings A-IV, 2.2.5.1
Different texts where a transfer of the patent in respect of Resumption of proceedings E-VII, 1.4
certain designated states takes place in opposition Resumption of the proceedings for grant A-IV, 2.2.5
proceedings H-III, 4.3.2 Resumption regardless of the stage of entitlement
Examination of the opposition during oral proceedings A-IV, 2.2.5.2
proceedings D-VI, 6 Rule 137(4) and oral proceedings H-III, 2.1.3
Examination proceedings (ex parte) E-III, 8.5.1.2 Sequence of proceedings D-VII, 1
Alphabetical keyword index – 50 March 2024

Stay of proceedings D-VII, 4.1 Omission of matter from publication F-II, 7.5
Stay of proceedings for grant A-IV, 2.2
Stay of proceedings under Rule 14 due to pending Proper names, trade marks and trade names F-III, 7
national entitlement proceedings E-VII, 2
Stay of proceedings when a referral to the Enlarged Board Property (Use on non-public ~) G-IV, 7.2.3
of Appeal is pending E-VII, 3
Submissions filed in preparation for or during oral Proprietor of the patent
proceedings E-VI, 2.2 Death or legal incapacity E-VII, 1.1
Summons to oral proceedings D-VI, 3.2, E-III, 6 Joint proprietors D-I, 6
Summons to oral proceedings as the first action in Proprietor of the patent is not entitled D-I, 6
examination C-III, 5
Termination of opposition proceedings in the event of Prosecution of the application by a third
inadmissible opposition D-IV, 4 party A-IV, 2.4
Use of computer-generated slideshows in oral
proceedings E-III, 8.5.1 Protection
Use of Rule 137(4) for amendments filed during oral Assessment of impermissible extension of the protection
proceedings in examination E-III, 8.8 conferred H-IV, 3.4
When can a summons to oral proceedings be issued in Extent of protection F-IV, 4.12
substantive examination? C-VIII, 5.1, E-III, 5.1 Protection conferred by the patent as granted H-IV, 3.2
Withdrawal of the request for oral proceedings E-III, 7.2.2 Provisional protection E-IX, 2.5.1
Written submissions during oral proceedings by Unitary Patent protection General Part, 8
videoconference E-III, 8.5.2
Provisional opinion accompanying the partial search
Producing evidence C-VII, 4.2 results F-V, 4.1

Product claim Provisional protection E-IX, 2.5.1

Product claim to method claim H-V, 7.2
Product claim to use claim H-V, 7.1 Public
Product claim with process features F-IV, 4.12.1 Admission of the public to proceedings E-III, 8.1
Information to the public D-I, 8
Product-by-process claim F-IV, 4.12 Matter contrary to "ordre public" or morality F-II, 7.2,
Product claim with process features F-IV, 4.12.1 G-II, 4.1
Morality or "ordre public" A-III, 8.1
Products F-IV, 3.1, F-IV, 4.12, G-II, 4.2, G-II, 5.4, Public availability of biological material F-III, 6.2
G-II, 5.5.1 State of the art made available to the public "by means of
First or further medical use of known products G-VI, 6.1 a written or oral description, by use, or in any other
Intermediate and final products F-V, 3.2.7 way" G-IV, 7
Products that may be claimed for a further medical State of the art made available to the public in writing
use G-VI, 6.1.1 and/or by any other means G-IV, 7.4

Professional representatives (List of ~) A-VIII, 1.2 Publication

Burden of proof, other "print equivalent"
Programs for computers G-II, 3.6 publications G-IV, 7.5.3.2
Data retrieval, formats and structures G-II, 3.6.3 Non-traditional publications G-IV, 7.5.3.3
Database management systems and information Publication of a new specification of the patent D-VII, 7
retrieval G-II, 3.6.4 Publication of application A-VI, A-VI, 1
Examples of further technical effects G-II, 3.6.1 Content of the publication A-VI, 1.3
Information modelling, activity of programming and Date of publication A-VI, 1.1
programming languages G-II, 3.6.2 Instructions in Chapter A-VI ("Publication of
List of exclusions G-II, 3.6 application; request for examination and transmission
of the dossier to examining division") E-IX, 2.5
Prohibited matter A-III, 8, A-IX, 6, E-IX, 2.3.7, F-II, 7, Preventing publication A-VI, 1.2
G-II, 4.1.1 Publication in electronic form only A-VI, 1.4
Categories F-II, 7.1 Publication of application, no publication A-VI, 1.2
Content of a European patent application (other than Request for examination and transmission of the
claims) F-II, 7 dossier to the examining division A-VI, 2
Disparaging statements A-III, 8.2, F-II, 7.3 Response to the search opinion A-VI, 3
Examination of formal requirements A-III, 8 Separate publication of the European search
Instructions in Chapter A-III ("Examination of formal report A-VI, 1.5
requirements") E-IX, 2.3.7 Publication of bibliographic data before publication of the
Irrelevant or unnecessary matter F-II, 7.4 application A-XI, 2.6
Matter contrary to "ordre public" or morality F-II, 7.2 Publication of the international application E-IX, 2.5.1
Matter contrary to "ordre public" or morality G-II, 4.1.1
Morality or "ordre public" A-III, 8.1
March 2024 Alphabetical keyword index – 51

Publication of the patent specification C-V, 10 Receiving Section, examination as to formal

Withdrawal before publication of the patent requirements A-III, 3.2
specification C-V, 11
Recommendation to grant C-VIII, 2
Published European patent applications as "E"
documents B-VI, 4.1.1 Recommendation to refuse C-VIII, 3

Published international applications (WO) as "E" Record of search strategy B-X, 3.4
documents B-VI, 4.1.2
Recording E-III, 8.2.4
Purpose of examination C-I, 4 Video recordings E-IV, 1.12

Purpose of Part A A-I, 3 Rectification of errors made by the receiving Office or

the International Bureau E-IX, 2.9.3
Purpose of payment A-X, 7, A-X, 7.1.2 Review by the EPO as a designated/elected Office and
Indication of the purpose of payment in the case of claims rectification of errors made by the receiving Office or the
fees A-X, 7.3 International Bureau E-IX, 2.9
Indication of the purpose of the payment in the case of
designation fees A-X, 7.2 Redefining the searched subject-matter B-IV, 2.4

Purpose of the abstract F-II, 2.1 Reduction

Reduction and refunds of fees in respect of international
(PCT) applications E-IX, 2.6
Q Reduction in examination fee A-VI, 2.6, A-X, 9.2.3
Request for examination and transmission of the
Qualifier "mol_type" F-II, 6.2.4 dossier to the examining division A-VI, 2.6
Reduction of fees A-X, 9
Special reductions A-X, 9.3
R Reduction of the examination fee where the international
preliminary examination report is drawn up by the
EPO A-X, 9.3.2
"Reach-through" claims F-III, 9 Reduction of the search fee for a supplementary European
Novelty of "reach-through" claims G-VI, 8 search A-X, 9.3.1
Reduction under the language arrangements A-X, 9.2
Reallocation instead of refund A-X, 10.4 Conditions A-X, 9.2.1
Reduction of the examination fee A-X, 9.2.3
Reasoned objections B-XI, 3.2.1, C-III, 4.1.1 Reduction of the filing fee A-X, 9.2.2
Reasoning B-XI, 3.2.1, C-III, 4.1.1
Re-establishment of rights A-III, 6.6, E-VIII, 3,
Reasoned statement D-VI, 4.1 E-IX, 2.3.5.3, E-IX, 2.9.2, F-VI, 3.6
Admissibility of the request E-VIII, 3.1
Reasoning B-XI, 3.2, C-III, 4.1, E-X, 1.3.3 Claiming priority E-IX, 2.3.5.3, F-VI, 3.6
Analysis of the application and content of the search Decision on re-establishment of rights E-VIII, 3.3
opinion B-XI, 3.2 Merit of the request E-VIII, 3.2
First communication C-III, 4.1 Re-establishment of rights in respect of the priority
Form and content E-X, 1.3.3 period F-VI, 3.6
Positive statements B-XI, 3.2.2 Review by the EPO as a designated/elected Office and
Positive statements/suggestions C-III, 4.1.2 rectification of errors made by the receiving Office or the
Reasoned objections B-XI, 3.2.1, C-III, 4.1.1 International Bureau E-IX, 2.9.2
Reasoning for a lack of unity objection F-V, 3.3 Time limits, loss of rights, further and accelerated
Minimum requirements for reasoning of lack of processing and re-establishment of rights E-VIII, 3
unity F-V, 3.3.1 Time limits, loss of rights, further and accelerated
Reasoning of decisions E-X, 2.6 processing and re-establishment of rights E-VIII
Receipts A-II, 3.1 Reference
Reference documents F-III, 8, H-V, 2.5
Receiving Office Amendments in the description H-V, 2.5
Rectification of errors made by the receiving Office or the Sufficiency of disclosure F-III, 8
International Bureau E-IX, 2.9.3 Reference in the description to drawings F-II, 4.7,
Review by the EPO as a designated/elected Office and F-IV, 4.17
rectification of errors made by the receiving Office or the Clarity and interpretation of claims F-IV, 4.17
International Bureau E-IX, 2.9 Description (formal requirements) F-II, 4.7
Reference signs F-II, 4.8, F-IV, 4.18
Clarity and interpretation of claims F-IV, 4.18
Alphabetical keyword index – 52 March 2024

Consistent use of reference signs in description, Reimbursement for witnesses and

claims and drawings A-IX, 7.5.4 experts E-IV, 1.10.1, E-IV, 1.10.2
Consistent use of reference signs in
drawings A-IX, 7.5.5 Reimbursement of appeal fees E-XII, 7.3
Description (formal requirements) F-II, 4.8
Numbers, letters and reference signs A-IX, 7.5 Rejection of the opposition D-VIII, 1.3
Reference to a previously filed application A-II, 4.1.3.1 Communication in the event of deficiencies as described
Application filed by reference to a previously filed in D-IV, 1.2.2 which, if not remedied, will lead to rejection
application A-IV, 4.1.2 of the opposition as inadmissible D-IV, 1.3.2
Physical requirements of applications filed by Rejection of the opposition as inadmissible by the
reference to a previously filed application A-III, 3.2.1 opposition division, the patent proprietor not being a
Sequence listings of an application filed by reference party D-IV, 3
to a previously filed application A-IV, 5.3
Reference to sequences disclosed in a database F-II, 6.1 Rejection of the request D-X, 6

Refund A-X, 10.1.3, A-X, 10.2.1, A-X, 10.2.2, Relation to opposition proceedings D-X, 7
A-X, 10.2.6, B-VII, 2.1, C-III, 3.4 Filing of opposition after decision on limitation D-X, 7.2
Reduction and refunds of fees in respect of international Precedence of opposition proceedings D-X, 7.1
(PCT) applications E-IX, 2.6
Refund of additional search fees C-III, 3.4 Relation to unity in search C-III, 3.2, C-III, 3.2.1
Refund of examination fee A-VI, 2.5, A-X, 10.2.3 Additional search fees paid C-III, 3.2.2
Request for examination and transmission of the Invitation to pay additional search fees combined with
dossier to the examining division A-VI, 2.5 invitation to restrict the scope of the search C-III, 3.2.3
Special refunds A-X, 10.2.3 Limitation to searched invention, no additional search fees
Refund of fees A-X, 10 paid C-III, 3.2.1
Method of refund A-X, 10.3
Reallocation instead of refund A-X, 10.4 Relationship between documents and claims B-X, 9.3
Special refunds A-X, 10.2
Refund of the appeal fee A-X, 10.2.6 Relative terms F-IV, 4.6
Refund of the fee for grant and publishing A-X, 10.2.5, Clarity objections F-IV, 4.6.1
C-V, 9 Interpretation of relative terms F-IV, 4.6.2
Final stage of examination C-V, 9
Special refunds A-X, 10.2.5 Relevant date for documents cited in the search
Refund of the further search fee A-X, 10.2.2 report B-VI, 5
Refund of the search fee A-X, 10.2.1 Documents published after the filing date B-VI, 5.4
Refund under Rule 37(2) A-X, 10.2.4 Doubts about the state of the art B-VI, 5.6
Refunds to a bank account A-X, 10.3.2 Doubts about the validity of the priority claim B-VI, 5.3
Refunds to a deposit account A-X, 10.3.1 Intermediate documents B-VI, 5.2
Request for refund of further search fees B-VII, 2.1 Non-prejudicial disclosures B-VI, 5.5
Verification of claimed priority dates B-VI, 5.1
Refusal C-V, 4.7.3, C-V, 14 Widening of the search B-VI, 5.3
Communications/oral proceedings/refusal after
resumption C-V, 4.7.1 Relevant date of a prior-art document G-VI, 3
Issuing a further communication (no refusal) C-V, 15.4
Refusal of the earlier application A-IV, 2.6 Remittal to the board of appeal E-XII, 7.2
Refusal to admit amendments under
Rule 137(3) E-X, 2.11 Remittal to the examining or opposition division after
appeal E-XII, 9
Register of European Patents A-XI, 1
Entries D-I, 6 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
Registered letter E-II, 2.4 Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.12
Registered trade marks F-II, 4.14
Renunciation of rights E-VIII, 8
Registration E-XIV, 6.1 Statement of withdrawal E-VIII, 8.3
Cancellation of the registration E-XIV, 6.2 Surrender of patent E-VIII, 8.4
Registration of changes of name, transfers, licences and Withdrawal of application or designation E-VIII, 8.1
other rights E-XIV Withdrawal of priority claim E-VIII, 8.2
Changes of name E-XIV, 5
Licences and other rights E-XIV, 6 Repeatability of results of microbiological
Responsible department E-XIV, 2 processes G-II, 5.5.2
Transfer of the European patent E-XIV, 4
Transfer of the European patent application E-XIV, 3 Replacement documents and translations A-VIII, 2.2
March 2024 Alphabetical keyword index – 53

Replacement or removal of features from a Complete text for auxiliary request not yet
claim H-V, 3.1 available H-III, 3.3.4
Confidentiality of the request A-XI, 2.4
Reply Criteria for admissibility of auxiliary requests H-III, 3.3.2.1
Reply explicitly disapproving with the proposed text Decision on a notified loss of rights at the request of the
without indicating an alternative text C-V, 4.9 person concerned D-VIII, 2.3
Reply in time B-VIII, 3.2.2, C-V, 3 Decision on request for revocation D-X, 3
Failure to reply in time B-VIII, 4.2.1 Decision on the request and the taking of
Reply to the invitation under Rule 62a(1) B-VIII, 4.2 evidence E-IV, 2.4
Failure to reply in time B-VIII, 4.2.1 Deficiencies which lead to the request being deemed not
Reply filed in time B-VIII, 4.2.2 to have been filed D-X, 2.1
Reply to the invitation under Rule 63(1) B-VIII, 3.2 Deficiencies which, if not remedied, lead to the request
Reply to the invitation under Rule 63(1), no or late being rejected as inadmissible D-X, 2.2
reply B-VIII, 3.2.1 Entitlement to file the request E-VIII, 3.1.2
Examination for deficiencies in the request D-X, 2
Representation A-III, 2, A-VIII, 1, A-VIII, 3.1, D-I, 7 Fees payable for procedural and other
Associations A-VIII, 1.2 requests A-X, 5.2.7
Common provisions A-VIII, 1 Form of the request and applicable time limit E-VIII, 3.1.3
Common representative A-VIII, 1.4 Formal procedure for limitation when the request is
Examination of formal requirements A-III, 2 allowable D-X, 5
General authorisation A-VIII, 1.7 Further action upon examination of replies, further action
Invitation to file authorisation and legal consequence in where a request for a translation of the priority application
case of non-compliance A-VIII, 1.8 was sent earlier in examination proceedings C-IV, 3.1
List of professional representatives A-VIII, 1.2 Further requests for amendment after approval C-V, 5
Non-compliance A-III, 2.2 Higher-ranking request not admissible and/or not
Representation by a legal practitioner A-VIII, 1.5 allowable C-V, 4.7.1.1
Representation by a professional Indication of the amendments made in the requests and of
representative A-VIII, 1.2 their basis H-III, 3.3.1
Representation by an employee A-VIII, 1.3 Late-filed requests after summons to oral proceedings in
Representation of drawings A-IX, 2 examination H-II, 2.7
Figure accompanying the abstract A-IX, 2.3 Late-filed requests in opposition proceedings H-II, 3.5
Grouping of drawings A-IX, 2.1 Main and auxiliary requests E-X, 2.9
Reproducibility of drawings A-IX, 2.2 Main and auxiliary requests filed with the
Representation, address for correspondence E-IX, 2.3.1 appeal E-XII, 7.4.3
Requirements A-III, 2.1 Merit of the request E-VIII, 3.2
Signature of documents A-VIII, 3.1 Multiple requests D-X, 11
Signed authorisation A-VIII, 1.6 Neither main nor auxiliary requests allowable H-III, 3.1.3
Oral proceedings at the request of a party E-III, 2
Representatives Rejection of the request D-X, 6
Appointment of representatives A-VIII, 1.1 Request for a decision according to the state of the
Authorisations A-VIII, 1.1, A-VIII, 1.6 file C-V, 15.1
Common representatives A-VIII, 1.4 Request for amendments or corrections in reply to the
List of professional representatives A-VIII, 1.2, A-VIII, 1.5 Rule 71(3) communication C-V, 4
Notification to representatives E-II, 2.5 Adaptation of the description C-V, 4.5
Participation of parties and their representatives from Admissibility of amendments C-V, 4.4
different locations E-III, 8.2.1 Amendments not admitted and/or not allowable,
examination resumed C-V, 4.7
Reproducibility of drawings A-IX, 2.2 Amendments or corrections should be
reasoned C-V, 4.3
Request Amendments/corrections admitted and allowable -
Admissibility in the examination procedure, further second Rule 71(3) communication sent C-V, 4.6
requests for amendment after approval H-II, 2.6 Amendments/corrections filed in second Rule 71(3)
Admissibility of auxiliary requests H-III, 3.3.2 period C-V, 4.10
Admissibility of the request E-VIII, 3.1 Crediting of fees paid voluntarily C-V, 4.2
Amended main/single request filed with the Fees to be paid within the second Rule 71(3)
appeal E-XII, 7.4.2 period C-V, 4.8
Amendments made by the EPO at the request of a Reply explicitly disapproving with the proposed text
party H-III, 2.4 without indicating an alternative text C-V, 4.9
Auxiliary requests H-III, 3 Request for amendments or corrections in reply to the
Auxiliary requests, in examination proceedings H-III, 3.3 Rule 71(3) communication, no payment of fees or filing
Auxiliary requests, in limitation proceedings H-III, 3.5 of translations necessary C-V, 4.1
Auxiliary requests, in opposition proceedings H-III, 3.4 Request for conversion A-IV, 6
Auxiliary requests, in the search phase H-III, 3.2 Request for correction of minutes E-III, 10.4
Complete text for auxiliary request available H-III, 3.3.5 Request for documents D-VII, 2
Alphabetical keyword index – 54 March 2024

Request for examination C-II, 1, E-IX, 2.5.2 Request to hold on-site oral proceedings at a particular
Confirmation of the intention to proceed further with site E-III, 1.4
the application C-II, 1.1 Request to stay opposition proceedings D-VI, 8
Euro-PCT applications C-II, 1.2 Requesting information on prior art (not confined to
Filing fee, designation fee, request for examination and priority) C-III, 6
search fee E-IX, 2.1.4 Requesting postponement during oral
Instructions in Chapter A-VI ("Publication of proceedings E-III, 8.11.1
application; request for examination and transmission Requests for samples of biological material A-IV, 4.4
of the dossier to examining division") E-IX, 2.5 Requests to change the date of oral
Invention to be examined C-II, 1.3 proceedings E-III, 7.1.1
Responsibility of the Receiving Section and the Rule 137(3) in conjunction with auxiliary
Examining Division A-III, 3.2, C-II, 1 requests H-II, 2.3.1.4
Search, publication and request for examination of Second Rule 71(3) communication based on higher-
divisional applications A-IV, 1.8 ranking request initially rejected in first Rule 71(3)
Time limit for filing the request for communication C-V, 4.6.2
examination A-VI, 2.2 Sequence of requests H-III, 3.1.1
Time limits E-VII, 1.5 Substantiation of the request E-VIII, 3.1.4
Request for examination and transmission of the dossier Timeliness and structure of auxiliary
to examining division A-VI, A-VI, 2 requests H-III, 3.3.2.2
Communication A-VI, 2.1 Withdrawal of the extension or validation
Instructions in Chapter A-VI ("Publication of request A-III, 12.3
application; request for examination and transmission Withdrawal of the request D-X, 9, E-XIII, 5.3
of the dossier to examining division") E-IX, 2.5 Withdrawal of the request for oral proceedings E-III, 7.2.2
Legal remedy A-VI, 2.3
Publication of application A-VI, 1 Requirement of unity of invention F-V, 2
Reduction in examination fee A-VI, 2.6 Division's approach F-V, 2.2
Refund of examination fee A-VI, 2.5 Insufficient grounds for lack of unity F-V, 2.1
Response to the search opinion A-VI, 3
Time limit for filing the request for Requirements as to form E-X, 2.3
examination A-VI, 2.2
Transmission of the dossier to the examining Requirements for entry into the European
division A-VI, 2.4 phase E-IX, 2.1.1
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 Requirements relating to sequence length and
Examination of formal requirements A-III, 4 enumeration of residues F-II, 6.2.1
Examination of the request for grant form A-III, 4.2
Examination of the request for grant form, further Residence or principal place of business A-III, 2.1,
requirements laid down by Rule 41(2) A-III, 4.2.3 A-VI, 2.6, A-VII, 3.2, A-VIII, 1.1, A-VIII, 1.3, A-X, 9.2.1,
Filing a divisional application A-IV, 1.3.2 D-III, 6, D-IV, 1.2.2.2, D-VII, 6
Instructions in Chapter A-III ("Examination of formal
requirements") E-IX, 2.3.3 Response
Request for grant form A-III, 11.3.5 Response filed before first communication in
Examination of the request for grant form A-III, 4.2 examination C-II, 3
Examination of the request for grant form, further Invitation under Rule 70a(1) C-II, 3.3
requirements laid down by Rule 41(2) A-III, 4.2.3 Response to PCT actions prepared by the
Request for grant of an EP, form A-III, 13.2 EPO C-II, 3.2
Request for oral proceedings by an opponent whose Response to communication pursuant to Rule 58 filed with
opposition is to be rejected as inadmissible or is deemed the appeal E-XII, 7.4.4
not to have been filed E-III, 2.1 Response to the extended European search report
Request for oral proceedings to be held on EPO (EESR) B-XI, 8
premises E-III, 1.3 Response to the search opinion A-VI, 3, C-II, 3.1
Request for publishing fee, translations and a formally Amendments made in response to the search
compliant version of amended text passages D-VI, 7.2.3 opinion C-III, 2.1
Request for refund of further search fees B-VII, 2.1 Comments and amendments in response to the search
Request for the conservation of evidence E-IV, 2.2 opinion B-XI, 3.3
Request for unitary effect C-V, 2.1
Request from a national court for a technical opinion Responsibility A-III, 7.2
concerning a European patent E-XIII Responsibility for formalities examination A-I, 2
Composition and duties of the examining
division E-XIII, 3 Responsible department A-IV, 2.2.1, E-VII, 1.2,
Language to be used E-XIII, 4 E-XIV, 2
Procedure E-XIII, 5 Interruption E-VII, 1.2
Scope of the technical opinion E-XIII, 2 Registration of changes of name, transfers, licences and
other rights E-XIV, 2
March 2024 Alphabetical keyword index – 55

Stay of proceedings for grant A-IV, 2.2.1 Decision on a notified loss of rights at the request of the
person concerned D-VIII, 2.3
Restoration of priority E-IX, 2.3.5.3 Decision on loss of rights E-VIII, 1.9.3
Decision on re-establishment of rights D-VIII, 2.4,
Restricted IPER F-V, 7.4 E-VIII, 3.3
Different texts where national rights of earlier date
Restrictions B-IV, 2.1 exist H-III, 4.4
Restriction of the searched subject-matter B-X, 8 Licences and other rights E-XIV, 6
Restriction to a single, searched invention H-II, 6.1 Loss of rights A-X, 6.2.5, E-VIII, 1.9.1
Restriction to an unsearched invention H-II, 6.2 Loss of rights and legal remedies A-III, 6.8.3
Restrictions to file inspection A-XI, 2.3 National prior rights B-VI, 4.2, C-IV, 7.2
Noting and communication of loss of rights E-VIII, 1.9.2
Result to be achieved F-IV, 4.10 Noting of loss of rights A-X, 6.2.5
Opposition cases with different texts where a transfer of
Resumption rights by virtue of a final decision pursuant to Art. 61 takes
Resumption of proceedings E-VII, 1.4 place in examination proceedings H-III, 4.3.3
Resumption of the proceedings for grant A-IV, 2.2.5 Re-establishment of rights A-III, 6.6, E-VIII, 3,
Resumption after final decision in entitlement E-IX, 2.3.5.3, E-IX, 2.9.2, F-VI, 3.6
proceedings A-IV, 2.2.5.1 Re-establishment of rights in respect of the priority
Resumption regardless of the stage of entitlement period F-VI, 3.6
proceedings A-IV, 2.2.5.2 Registration of changes of name, transfers, licences and
Resumption of time limits E-VII, 1.5 other rights E-XIV
Renunciation of rights E-VIII, 8
Review Right of priority F-VI, 1
Review by the EPO as a designated/elected Office and Applications giving rise to a right of priority A-III, 6.2
rectification of errors made by the receiving Office or the Filing date as effective date F-VI, 1.1
International Bureau E-IX, 2.9 First application F-VI, 1.4
Determination of filing date in the case of erroneously Multiple priorities and partial priorities F-VI, 1.5
filed elements or parts of the international Priority date as effective date F-VI, 1.2
application E-IX, 2.9.4 Validly claiming priority F-VI, 1.3
Rectification of errors made by the receiving Office or Right of the other members of the division to put
the International Bureau E-IX, 2.9.3 questions E-III, 8.10
Review by the EPO under Art. 24 PCT and excuse of Right to amend H-I
delays under Art. 48(2) PCT E-IX, 2.9.2 Right to be heard E-VI, 2.2.4, E-X, 2.1
Review by the EPO under Art. 25 PCT E-IX, 2.9.1 Decisions taken by the examining or opposition
Review of non-unity findings F-V, 5.3 divisions E-X, 2.1
Reviews or books B-X, 11.4 Submissions filed in preparation for or during oral
proceedings E-VI, 2.2.4
Revision of stated technical problem H-V, 2.4 Rights of earlier date D-I, 3, H-III, 4.4
Time limits and loss of rights resulting from failure to
Revocation respond within a time limit E-VIII, 1
Revocation of the European patent D-VIII, 1.2 Time limits, loss of rights, further and accelerated
Revocation for failure to notify the appointment of a processing and re-establishment of rights E-VIII
new representative D-VIII, 1.2.3 Transfer of rights E-XIV, 3, E-XIV, 6.1
Revocation for failure to pay the prescribed fee for
publishing, to file a translation or to file a formally Rule
compliant version of amended text Rule 137(3) in conjunction with Art. 123(2) H-II, 2.3.1.2
passages D-VIII, 1.2.2 Rule 137(3) in conjunction with Art. 83 H-II, 2.3.1.1
Revocation in the event of requirements not being met Rule 137(3) in conjunction with Art. 84 - missing essential
until after expiry of time limits D-VIII, 1.2.4 feature H-II, 2.3.1.3
Revocation of the patent in the event that the patent Rule 137(3) in conjunction with auxiliary
proprietor no longer wishes the patent to be requests H-II, 2.3.1.4
maintained as granted D-VIII, 1.2.5 Rule 137(4) and oral proceedings H-III, 2.1.3
Revocation on substantive grounds D-VIII, 1.2.1 Rule 137(4) applies E-IX, 3.4
Revocation of the patent D-VI, 2.2 Rule 137(4) applies to amendments filed at this
Revocation of the patent in the event that the patent stage H-II, 2.5.4
proprietor no longer wishes the patent to be Rule 137(4) communication and response
maintained as granted D-VIII, 1.2.5 thereto H-III, 2.1.1
Rule 137(5) H-IV, 4.1
Right Objection under Rule 43(2) or Rule 137(5) F-IV, 3.3
Amendments occasioned by national rights H-II, 3.3 Rule 62a and/or Rule 63 cases H-IV, 4.1.1
Cases of loss of rights E-VIII, 1.9.1 Subject-matter taken from the description H-IV, 4.1.2
Conflict with national rights of earlier date G-IV, 6 Rule 161 communication issued before 1 April
2010 E-IX, 3.3.3
Alphabetical keyword index – 56 March 2024

Rule 42(1)(c) vs. Art. 52(1) F-II, 4.6 Effectiveness and efficiency of the search B-III, 2.2
Rules of Procedure of the Boards of Appeal E-XII, 8 Filing, search and designation fee(s) A-IV, 1.4.1
International applications with supplementary
search F-V, 7.2
S International applications without supplementary
search F-V, 7.1
Safety provision for late replenishment of deposit Invitation to indicate subject-matter for search B-VIII, 3.1
accounts A-X, 6.2.2 Invitation to indicate which independent claim to
search B-VIII, 4.1
Same invention F-VI, 2.2 IPC classification where the scope of the invention is
unclear (e.g. a partial search) B-V, 3.2
Same-day corrections A-II, 6.6 Means of searching systematically B-IX, 1.2
No meaningful search possible B-VIII, 3
Scale of drawings A-IX, 7.4 Opinions of the search division B-III, 1
Opinions on matters relating to limitation of the
Schemes rules and methods search B-III, 1.2
Schemes, rules and methods for performing mental acts, Procedure in the case of lack of unity during
playing games or doing business G-II, 3.5 search F-V, 4
Schemes, rules and methods for doing Provisional opinion accompanying the partial search
business G-II, 3.5.3 results F-V, 4.1
Schemes, rules and methods for performing mental Relation to unity in search C-III, 3.2, C-III, 3.2.1
acts G-II, 3.5.1 Scope of the search B-III, 2
Schemes, rules and methods for playing Search and substantive examination B-II, 1
games G-II, 3.5.2 Contact between the applicant and the search
division B-II, 1.1
Scientific theories G-II, 3.2 Search at the examination stage C-IV, 7.4
List of exclusions G-II, 3.2 Search division has more than one member B-I, 2.2
Search division has more than one member, further
Scope searches in a different technical field for a non-unitary
Scope of application of Rule 134 E-VIII, 1.6.2.3 application B-I, 2.2.2
Scope of first analysis for generally deficient Where claimed unitary subject-matter covers more
applications B-XI, 3.4 than one technical field B-I, 2.2.1
Scope of Part B B-I, 1 Search divisions B-I, 2, B-II, 4.1
Scope of the examination D-X, 4.3 Consultation with other examiners B-I, 2.1
Scope of the search B-III, 2 Organisation and content of the documentation
Completeness of the search B-III, 2.1 available to the search divisions B-IX, 1.1
Effectiveness and efficiency of the search B-III, 2.2 Search division's approach B-XI, 3.7
Internet searches B-III, 2.4 Search division's dossier B-XI, 3.1
Invitation to pay additional search fees combined with Search documentation B-II, 3, B-IX
invitation to restrict the scope of the Access to EPO documentation for the national patent
search C-III, 3.2.3 offices B-IX, 5
Search in neighbouring fields B-III, 2.3 Non-patent literature arranged for library-type
Scope of the technical opinion E-XIII, 2 access B-IX, 4
Non-patent literature arranged for systematic
Search A-III, 10.2, A-VI, 1.3, B-II, 4, B-III, 3.1, B-III, 3.2, access B-IX, 3
B-IV, 1.2, B-IV, 1.3, B-VIII, 3.4, B-VIII, 4.5, B-X, 7, F-II, 2.2, Patent documents arranged for systematic
F-II, 2.6 searching B-IX, 2
Accelerated search E-VIII, 4.1 Search fee
Additional search D-VI, 5 Additional search fees paid C-III, 3.2.2
Aim of the search B-II, 2 Applicant has not paid all further search
Amendments required by a limitation of the search under fees B-VII, 1.2.3
Rule 62a and/or Rule 63 H-II, 5 European search A-III, 13.1, A-IV, 1.4.1, A-X, 10.2.1,
Auxiliary requests, in the search phase H-III, 3.2 F-V, 1
Basis for the search B-III, 3.1 Filing and search fees A-III, 13
Characteristics of the search B-III Filing fee and search fee A-X, 5.2.1
Complete search despite lack of unity B-VII, 2.2 Filing fee, designation fee, request for examination and
Completeness of the search B-III, 2.1 search fee E-IX, 2.1.4
Copy of the search results for the priority or Invitation to pay additional search fees combined with
priorities A-III, 6.12, C-II, 5 invitation to restrict the scope of the
Correct application documents or parts filed after the search C-III, 3.2.3
search has started A-II, 6.7 Invitation to pay further search fees B-VII, 1.2
Documents discovered after completion of the Limitation to searched invention, no additional search
search B-IV, 3.2 fees paid C-III, 3.2.1
March 2024 Alphabetical keyword index – 57

Reduction of the search fee for a supplementary Drawing up the search report B-IV, 3.1
European search A-X, 9.3.1 Errors in the search report B-IV, 3.3
Refund of additional search fees C-III, 3.4 European search report A-VI, 1.3, A-X, 9.3.1, B-II, 4,
Refund of the further search fee A-X, 10.2.2 B-II, 4.3, B-VII, 2.3, B-X, 4, B-X, 7, C-II, 1.2, C-II, 3.1,
Refund of the search fee A-X, 10.2.1 C-IV, 7.3, E-IX, 2.5.2, F-V, 7.1, F-V, 7.2
Request for refund of further search fees B-VII, 2.1 European searches B-II, 4.1
Supplementary European search A-X, 9.3.1, Evaluation of prior-art documents cited in the search
A-X, 10.2.1, B-VII, 2.3, B-VIII, 3.4, B-VIII, 4.5, report and late priority claim C-III, 7
E-IX, 2.1.4, F-V, 7.1 Form and language of the search report B-X, 3
Search for conflicting European patent Identification of documents in the search
applications C-IV, 7.1 report B-X, 9.1
Search in neighbouring fields B-III, 2.3 Identification of the European patent application and
Search on dependent claims B-III, 3.8 the search report type B-X, 4
Search opinion B-XI, B-XI, 1.1 International (PCT) searches B-II, 4.4
Amendments made in response to the search International-type searches B-II, 4.5
opinion C-III, 2.1 IPC classification of late-published search
Analysis of the application and content of the search reports B-V, 3.1
opinion B-XI, 3 Opinions in relation to the search report B-III, 1.1
Art. 124 and the utilisation scheme B-XI, 9 Partial European search report B-VII, 1.1
Basis for the search opinion B-XI, 2 Relevant date for documents cited in the search
Comments and amendments in response to the search report B-VI, 5
opinion B-XI, 3.3 Response to the extended European search report
No search opinion is issued B-XI, 7 (EESR) B-XI, 8
Priority claim and the search opinion B-XI, 4 Restriction of the searched subject-matter B-X, 8
Response to the extended European search report Searches on national applications B-II, 4.6
(EESR) B-XI, 8 Separate publication of the European search
Response to the search opinion A-VI, 3, C-II, 3.1 report A-VI, 1.5
Search opinion where the search was limited B-XI, 6 Supplementary European search report B-X, 9.1.4
Transmittal of the search report and search Supplementary European search report is
opinion B-X, 12 required B-II, 4.3.2
Unity in relation to the search opinion B-XI, 5 Supplementary European searches B-II, 4.3
Use of "P" and "E" documents in the search Technical fields searched B-X, 6
opinion B-XI, 4.1 Title, abstract and figure to be published with the
Search opinion is part of the EESR B-XI, 1 abstract (as indicated on supplemental sheet
Position of the examining division B-XI, 1.2 A) B-X, 7
Search procedure and strategy B-IV Transmittal of the search report and search
Procedure after searching B-IV, 3 opinion B-X, 12
Procedure before searching B-IV, 1 Search strategy B-IV, 2
Search report B-II, 4, B-IX, 2.3, B-X Carrying out the search B-IV, 2.3
Additional European searches B-II, 4.2 Closest prior art and its effects on the
Admissibility in the examination procedure, after search B-IV, 2.5
receipt of the search report - Rule 137(2) H-II, 2.2 Devising a search strategy B-IV, 2.2
Admissibility in the examination procedure, before End of search B-IV, 2.6
receipt of the search report - Rule 137(1) H-II, 2.1 Record of search strategy B-X, 3.4
Amendments made in response to the WO-ISA, IPER Redefining the searched subject-matter B-IV, 2.4
or supplementary international search report C-III, 2.2 Restrictions B-IV, 2.1
Application documents for the supplementary Subject-matter of the search B-IV, 2.1
European search report B-II, 4.3.3 Types of documents B-IV, 2.3
Applications for which a supplementary European Search summary B-X, 3.3
search report is prepared E-IX, 3.1, E-IX, 3.2 Search, publication and request for examination of
Authentication and dates B-X, 10 divisional applications A-IV, 1.8
Citing documents not mentioned in the search State of the art at the search stage B-VI
report C-IV, 7.5 Subject-matter excluded from search B-III, 3.11
Classification of the European patent Subject-matter to be excluded from the search B-VIII
application B-X, 5 Supplementary international search B-III, 3.3.2
Content of the extended European search report Where the EPO does not perform a supplementary
(EESR) B-VIII, 3.3, B-VIII, 4.3 search H-II, 6.4.1
Copies to be made available with the search Where the EPO performs a supplementary
report B-X, 11 search H-II, 6.4.2
Different types of search report drawn up by the Widening of the search B-VI, 5.3
EPO B-X, 2
Dispensing with the supplementary European search Searches on national applications B-II, 4.6
report B-II, 4.3.1
Documents found in the search B-X, 9 Searches under Rule 164(2) C-III, 3.1
Alphabetical keyword index – 58 March 2024

Search-related issues in examination C-IV, 7 Sequences that need to be itemised in the sequence
Additional searches during examination C-IV, 7.3 listing F-II, 6.2
Citing documents not mentioned in the search Qualifier "mol_type" F-II, 6.2.4
report C-IV, 7.5 Requirements relating to sequence length and
National prior rights C-IV, 7.2 enumeration of residues F-II, 6.2.1
Search at the examination stage C-IV, 7.4 Sequences comprising residues that are not
Search for conflicting European patent specifically defined (n or X) F-II, 6.2.2
applications C-IV, 7.1 Variants F-II, 6.2.3

Second non-medical use G-VI, 6.2 Service

Filing of applications by delivery by hand or by postal
Second Rule 71(3) communication based on higher- services A-II, 1.2
ranking request initially rejected in first Rule 71(3) Notification by postal services E-II, 2.4
communication C-V, 4.6.2
Shading A-IX, 7.2
Second Rule 71(3) communication reversing the
amendments proposed by the examining division in SI
first Rule 71(3) communication C-V, 4.6.1 SI base units F-II, An. 2, 1.1
Special name and symbol of the SI derived unit of
Secondary indicators G-VII, 10 temperature for expressing Celsius
Arbitrary choice G-VII, 10.1 temperature F-II, An. 2, 1.1.1
Bonus effect G-VII, 10.2 SI derived units F-II, An. 2, 1.2
Commercial success G-VII, 10.3 General rule for SI derived units F-II, An. 2, 1.2.1
Long-felt need G-VII, 10.3 SI derived units with special names and
Non-functional modification G-VII, 10.1 symbols F-II, An. 2, 1.2.2
Predictable disadvantage G-VII, 10.1 SI units and their decimal multiples and
Unexpected technical effect G-VII, 10.2 submultiples F-II, An. 2, 1
Prefixes and their symbols used to designate certain
Sectional diagrams A-IX, 7.3.1 decimal multiples and submultiples F-II, An. 2, 1.3
Special authorised names and symbols of decimal
Selection inventions G-VI, 7, G-VII, 12 multiples and submultiples of SI units F-II, An. 2, 1.4
Error margins in numerical values G-VI, 7.1
Inventive step G-VII, 12 Signature A-III, 4.2.2, C-VIII, 6, D-III, 3.4
Novelty G-VI, 7 Examination of the request for grant form A-III, 4.2.2
Signature of documents A-VIII, 3
Separate crediting of the fee for grant and publishing Documents filed after filing the European patent
and claims fees A-X, 11.3 application A-VIII, 3.1
Documents forming part of the European patent
Separate hearings E-IV, 1.6.4 application A-VIII, 3.2
Form of signature A-VIII, 3.3
Separate publication of the European search Joint applicants A-VIII, 3.4
report A-VI, 1.5 Signature of the notice of opposition D-III, 3.4
Submission in writing D-III, 3.4
Sequence Work within the examining division C-VIII, 6
Sequence information filed under Rule 56 A-IV, 5.1
Sequence information filed under Rule 56a A-IV, 5.2 Signed authorisation A-VIII, 1.6
Sequence listing A-III, 1.2, A-III, 16.2, B-IV, 1.2,
E-IX, 2.4.2, F-II, 6 Simulation, design or modelling G-II, 3.3.2
Content of a European patent application (other than
claims) F-II, 6 Situation in which it has to be checked whether the
Instructions in Chapter A-IV ("Special application from which priority is actually claimed is
provisions") E-IX, 2.4.2 the "first application" within the meaning of
Reference to sequences disclosed in a Art. 87(1) F-VI, 2.4.4
database F-II, 6.1
Sequence listings filed after the date of Skilled person (Common general knowledge of the ~)
filing H-IV, 2.2.5 G-VII, 3.1
Sequence listings of a divisional application A-IV, 5.4
Sequence listings of an application filed by reference Small and medium-sized enterprises A-X, 9.2.1
to a previously filed application A-IV, 5.3
Sequence of proceedings D-VII, 1 Some examples of determining priority
Exceptions D-VII, 1.2 dates F-VI, 2.4
Sequence of requests H-III, 3.1.1 Intermediate publication of another European
Sequences and partial sequences of genes G-III, 4 application F-VI, 2.4.2
Sequences of divisional applications A-IV, 1.1.2
March 2024 Alphabetical keyword index – 59

Intermediate publication of the contents of the priority Standard

application F-VI, 2.4.1 Standard marks for indicating amendments or corrections
Multiple priorities claimed for different inventions in the by the divisions C-V, An.
application with an intermediate publication of one of the Standard marks for indicating amendments or
inventions F-VI, 2.4.3 corrections by the divisions, further ways to accelerate
Situation in which it has to be checked whether the examination C-VI, 3
application from which priority is actually claimed is the Standard marks for indicating amendments or corrections
"first application" within the meaning of by the divisions, further communication with the
Art. 87(1) F-VI, 2.4.4 applicant C-VIII, 5
When can a summons to oral proceedings be issued in
Special applications C-IX, H-IV, 2.3 substantive examination? C-VIII, 5.1
Applications filed by reference to an earlier Standard of proof G-IV, 7.3.4, G-IV, 7.5.2
application H-IV, 2.3.1 Internet disclosures G-IV, 7.5.2
Applications resulting from a decision under State of the art made available by means of oral
Art. 61 C-IX, 2, H-IV, 2.3.3 description G-IV, 7.3.4
Applications where a reservation has been entered in Standards and standard preparatory
accordance with Art. 167(2)(a) EPC 1973 C-IX, 3 documents G-IV, 7.6
Divisional applications C-IX, 1, H-IV, 2.3.2
International applications H-IV, 2.3.4 State of the art E-IX, 2.5.1, F-II, 4.3, G-IV, G-IV, 5.1,
International applications (Euro-PCT applications) C-IX, 4 G-IV, 5.2, G-VII, 1, G-VII, 2
Conflict with national rights of earlier date G-IV, 6
Special authorised names and symbols of decimal Conflict with other European applications G-IV, 5
multiples and submultiples of SI units F-II, An. 2, 1.4 Conflict with other European applications G-IV, 5.1,
G-IV, 5.2
Special circumstances C-VI, 1.2 Cross-references between prior-art documents G-IV, 8
Date of filing or priority date as effective date G-IV, 3
Special name and symbol of the SI derived unit of Description (formal requirements) F-II, 4.3
temperature for expressing Celsius Different text in respect of the state of the art according to
temperature F-II, An. 2, 1.1.1 Art. 54(3) EPC and Art. 54(4) EPC 1973 H-III, 4.2
Documents defining the state of the art and not prejudicing
Special provisions A-IV novelty or inventive step B-X, 9.2.2
Applications relating to biological material A-IV, 4 Documents in a non-official language G-IV, 4
Applications relating to nucleotide and amino acid Doubts about the state of the art B-VI, 5.6
sequences A-IV, 5 Enabling disclosure G-IV, 2
Art. 61 applications and stay of proceedings under Errors in prior-art documents G-IV, 9
Rule 14 A-IV, 2 General remarks and definition G-IV, 1
Conversion into a national application A-IV, 6 Invention G-VII, 1
Display at an exhibition A-IV, 3 Patentability G-IV
European divisional applications A-IV, 1 State of the art at the search stage B-VI
Instructions in Chapter A-IV ("Special Conflicting applications B-VI, 4
provisions") E-IX, 2.4 Contents of prior-art disclosures B-VI, 6
Filing and priority date B-VI, 5
Special reductions A-X, 9.3 Internet disclosures ‒ technical journals B-VI, 7
Reduction of the examination fee where the international Oral disclosure, use, exhibition, etc. as state of the
preliminary examination report is drawn up by the art B-VI, 2
EPO A-X, 9.3.2 Priority B-VI, 3
Reduction of the search fee for a supplementary European Relevant date for documents cited in the search
search A-X, 9.3.1 report B-VI, 5
State of the art made available by means of oral
Special refunds A-X, 10.2 description G-IV, 7.3
Refund of the appeal fee A-X, 10.2.6 Cases of oral description G-IV, 7.3.1
Refund of the examination fee A-X, 10.2.3 Matters to be determined by the division in cases of
Refund of the fee for grant and publishing A-X, 10.2.5 oral description G-IV, 7.3.3
Refund of the further search fee A-X, 10.2.2 Non-prejudicial oral description G-IV, 7.3.2
Refund of the search fee A-X, 10.2.1 Standard of proof G-IV, 7.3.4
Refund under Rule 37(2) A-X, 10.2.4 State of the art made available to the public "by means of
a written or oral description, by use, or in any other
Special technical features F-V, 2 way" G-IV, 7
Internet disclosures G-IV, 7.5
Specific rules applicable to Euro-PCT Matters to be determined by the division as regards
applications B-III, 3.3.2 prior use G-IV, 7.2
Standards and standard preparatory
documents G-IV, 7.6
Alphabetical keyword index – 60 March 2024

State of the art made available to the public in writing Subject-matter taken from the description H-IV, 4.1.2
and/or by any other means G-IV, 7.4 Subject-matter to be excluded from the search B-VIII
Types of use and instances of state of the art made Claims contravening Art. 123(2) or Art. 76(1) B-VIII, 6
available in any other way G-IV, 7.1 Considerations relating to specific exclusions from and
State of the art pursuant to Art. 54(2) G-VI, 1 exceptions to patentability B-VIII, 2
State of the art pursuant to Art. 54(3) G-IV, 5.1 Invitation under both Rule 62a(1) and
Accorded date of filing and content of the application Rule 63(1) B-VIII, 5
still subject to review G-IV, 5.1.2 More than one independent claim per category
Requirements G-IV, 5.1.1 (Rule 62a) B-VIII, 4
No meaningful search possible B-VIII, 3
Statement Subject-matter to be excluded is disclosed in the
Disparaging statements A-III, 8.2, F-II, 7.3 application as originally filed H-V, 4.2.2
General statements, "spirit of the invention", claim-like Subject-matter to be excluded is not disclosed in the
clauses F-IV, 4.4 application as originally filed (so-called undisclosed
Positive statements B-XI, 3.2.2 disclaimers) H-V, 4.2.1
Positive statements/suggestions C-III, 4.1.2
Statement in the decision of the amended form of the Submissions
European patent D-VIII, 1.4.2 Submission in writing D-III, 3
Statement of withdrawal E-VIII, 8.3 Form of the opposition D-III, 3.1
Notices of opposition filed by fax D-III, 3.3
Stay of proceedings D-VII, 4.1 Notices of opposition filed electronically D-III, 3.2
Art. 61 applications and stay of proceedings under Signature of the notice of opposition D-III, 3.4
Rule 14 A-IV, 2 Submissions by the parties E-III, 8.5
Legal character and effect of the stay of Use of computer-generated slideshows in oral
proceedings D-VII, 4.1.2 proceedings E-III, 8.5.1
Stay of proceedings for grant A-IV, 2.2 Written submissions during oral proceedings by
Date of the stay of proceedings A-IV, 2.2.2 videoconference E-III, 8.5.2
Interruption of time limits A-IV, 2.2.4 Submissions filed in preparation for or during oral
Legal nature and effects of the stay A-IV, 2.2.3 proceedings E-VI, 2.2
Responsible department A-IV, 2.2.1 Amendments filed in preparation for or during oral
Resumption of the proceedings for grant A-IV, 2.2.5 proceedings E-VI, 2.2.2
Stay of proceedings under Rule 14 due to pending Costs E-VI, 2.2.5
national entitlement proceedings E-VII, 2 New facts and evidence E-VI, 2.2.1
Stay of proceedings when a referral to the Enlarged Board Principles relating to the exercise of
of Appeal is pending E-VII, 3 discretion E-VI, 2.2.3
Right to be heard E-VI, 2.2.4
Subject matter
Subject-matter excluded from patentability under Art. 52(2) Subsequent
and (3) B-VIII, 2.2 Subsequent application considered as first
Computer-implemented business application F-VI, 1.4.1
methods B-VIII, 2.2.1 Subsequent filing of documents A-II, 1.4
Subject-matter of a dependent claim F-IV, 3.6 Subsequent procedure D-IV, 1.6
Subject-matter of minutes E-III, 10.3 Subsequent procedure in the event of deficiencies which
Subject-matter of the European patent extending beyond may no longer be remedied D-IV, 1.4
the original disclosure D-V, 6 Deficiencies which may no longer be remedied in
Basis of this ground for opposition D-V, 6.1 accordance with Rule 77(1) and (2), resulting in the
Distinction between allowable and unallowable opposition being rejected as inadmissible D-IV, 1.4.2
amendments D-V, 6.2 Deficiencies which may no longer be remedied, as a
Subject-matter of the search B-III, 3, B-IV, 2.1 result of which the opposition is deemed not to have
Abandoned claims B-III, 3.4 been filed D-IV, 1.4.1
Amended claims, missing parts (Rule 56) or
erroneously filed application documents or parts Substances and compositions G-II, 4.2
(Rule 56a) B-III, 3.3
Anticipation of amendments to claims B-III, 3.5 Substantiation of the request E-VIII, 3.1.4
Basis for the search B-III, 3.1
Broad claims B-III, 3.6 Substantive examination
Combination of elements in a claim B-III, 3.9 Substantive examination (limitation) D-X, 4
Different categories B-III, 3.10 Basis for the examination D-X, 4.2
Independent and dependent claims B-III, 3.7 Department responsible D-X, 4.1
Interpretation of claims B-III, 3.2 Scope of the examination D-X, 4.3
Lack of unity B-III, 3.12 Substantive examination (limitation), further stages of
Search on dependent claims B-III, 3.8 the examination D-X, 4.4
Subject-matter excluded from search B-III, 3.11 Third-party observations during the
Technological background B-III, 3.13 examination D-X, 4.5
March 2024 Alphabetical keyword index – 61

Substantive examination of a Euro-PCT application Supplementary European search report B-X, 9.1.4
accompanied by an IPER E-IX, 4.3 Application documents for the supplementary
Basis for substantive examination E-IX, 4.3.2 European search report B-II, 4.3.3
Comparative test results E-IX, 4.3.1 Applications for which a supplementary European
Consideration of the contents of the IPER E-IX, 4.3.3 search report is prepared E-IX, 3.1, E-IX, 3.2
Substantive examination of opposition D-V Dispensing with the supplementary European search
Beginning of the examination of the opposition D-V, 1 report B-II, 4.3.1
Clarity of claims and support by the description D-V, 5 Supplementary European search report is
Extent of the examination D-V, 2 required B-II, 4.3.2
Insufficient disclosure of the invention D-V, 4 Supplementary European searches B-II, 4.3
Non-patentability pursuant to Art. 52 to 57 D-V, 3 Application documents for the supplementary
Subject-matter of the European patent extending European search report B-II, 4.3.3
beyond the original disclosure D-V, 6 Dispensing with the supplementary European search
report B-II, 4.3.1
Sufficiency of disclosure F-III, F-III, 1 Supplementary European search report is
Art. 83 vs. Art. 123(2) F-III, 2 required B-II, 4.3.2
Burden of proof as regards the possibility of performing Supplementary international search B-III, 3.3.2
and repeating the invention F-III, 4 Amendments made in response to the WO-ISA, IPER
Cases of partially insufficient disclosure F-III, 5 or supplementary international search report C-III, 2.2
Insufficient disclosure F-III, 3 Supplementary technical information H-V, 2.3
Inventions relating to biological material F-III, 6
Proper names, trade marks and trade names F-III, 7 Support for dependent claims F-IV, 6.6
"Reach-through" claims F-III, 9
Reference documents F-III, 8 Support in description F-IV, 6
Sufficiency of disclosure and clarity F-III, 11 Definition in terms of function F-IV, 6.5
Sufficiency of disclosure and inventive step F-III, 12 Extent of generalisation F-IV, 6.2
Sufficiency of disclosure and Rules 56 and 56a F-III, 10 Lack of support vs. insufficient disclosure F-IV, 6.4
Objection of lack of support F-IV, 6.3
Summaries, extracts or abstracts B-X, 11.5 Support for dependent claims F-IV, 6.6

Summary of the processing of applications and Surgery G-II, 4.2.1.1

patents at the EPO General Part, 5 Methods for treatment by surgery G-II, 4.2, G-II, 4.2.1
Methods for treatment of the human or animal body by
Summoning of parties, witnesses and surgery or therapy and diagnostic methods practised on
experts E-IV, 1.5 the human or animal body B-VIII, 2.1
Surgery, therapy and diagnostic methods G-II, 4.2
Summons to oral proceedings D-VI, 3.2, E-III, 6 Limitations of exception under Art. 53(c) G-II, 4.2.1
Invitation to file observations D-VI, 3.2 Methods for screening potential medicaments and
Late-filed requests after summons to oral proceedings in clinical trials G-II, 4.2.2
examination H-II, 2.7
Oral proceedings E-III, 6 Surgical uses pursuant to Art. 54(5) G-VI, 6.1.4
Summons to oral proceedings as the first action in
examination C-III, 5 Surrender of patent E-VIII, 8.4
When can a summons to oral proceedings be issued in
substantive examination? C-VIII, 5.1, E-III, 5.1 Suspensive effect E-XII, 1

Supplementary
Supplementary European search B-VII, 2.3, E-IX, 2.5.3 T
Application documents for the supplementary
European search report B-II, 4.3.3 Tables A-IX, 11.2
Applications for which a supplementary European Formulae and tables F-IV, 2.4
search report is prepared E-IX, 3.1, E-IX, 3.2 Tables in the claims A-IX, 11.2.2
Dispensing with the supplementary European search Tables in the description A-IX, 11.2.1
report B-II, 4.3.1
Instructions in Chapter A-VI ("Publication of Taking and conservation of evidence E-IV
application; request for examination and transmission Conservation of evidence E-IV, 2
of the dossier to examining division") E-IX, 2.5.3 Evaluation of evidence E-IV, 4
Procedures in cases of lack of unity B-VII, 2.3 Taking of evidence by courts or authorities of the
Reduction of the search fee for a supplementary contracting states E-IV, 3
European search A-X, 9.3.1 Taking of evidence by the departments of the
Supplementary European search report is EPO E-IV, 1
required B-II, 4.3.2
Taking of a final decision D-VIII, 1.4.1
Alphabetical keyword index – 62 March 2024

Taking of evidence C-VII, 4, D-VI, 1, D-VI, 7.1, Technical opinion E-XIII, 1

E-IV, 1.1, E-IV, 1.3, E-IV, 2.4 Establishment and issue of the technical
Conservation of evidence E-IV, 2.4 opinion E-XIII, 5.4
Costs D-IX, 1.1, D-IX, 1.3, E-IV, 1.9 Fee for a technical opinion E-XIII, 5.3
Costs arising from oral proceedings or taking of Request from a national court for a technical opinion
evidence E-IV, 1.9 concerning a European patent E-XIII
Decision on the request and the taking of Scope of the technical opinion E-XIII, 2
evidence E-IV, 2.4 Technical problem E-III, 8.2.3
Language used in the taking of evidence E-V, 4 Formulation of the objective technical
Minutes of taking of evidence E-IV, 1.7 problem G-VII, 5.2
Other procedures in examination C-VII, 4 Formulation of the objective technical problem for
Producing evidence C-VII, 4.2 claims comprising technical and non-technical
Taking of evidence by courts or authorities of the features G-VII, 5.4.1
contracting states E-IV, 3 Revision of stated technical problem H-V, 2.4
Costs of taking evidence E-IV, 3.5 Technical problem and its solution F-II, 4.5
Legal co-operation E-IV, 3.1 Using the description and/or drawings to identify the
Letters rogatory E-IV, 3.3 technical problem B-III, 3.2.2
Means of giving or taking evidence E-IV, 3.2 Technical progress, advantageous effect G-I, 2
Procedures before the competent authority E-IV, 3.4
Taking of evidence by an appointed person E-IV, 3.6 Technically qualified members D-II, 2.1
Taking of evidence by the departments of the
EPO E-IV, 1 Technological background B-III, 3.13
Taking of evidence on oath E-IV, 3.2.1
Written evidence C-VII, 4.3 Termination of opposition proceedings in the event of
inadmissible opposition D-IV, 4
Taking of evidence by the departments of the
EPO E-IV, 1 Terminology F-II, 4.11
Commissioning of experts E-IV, 1.8
Costs arising from oral proceedings or taking of Terms of reference of the expert E-IV, 1.8.3
evidence E-IV, 1.9
Entitlements of witnesses and experts E-IV, 1.10 Terms such as "about", "approximately" or
Hearing of parties, witnesses and experts E-IV, 1.6 "substantially" F-IV, 4.7
Means of evidence E-IV, 1.2 Clarity objections F-IV, 4.7.2
Minutes of taking of evidence E-IV, 1.7 Interpretation of terms such as "about", "approximately" or
Models E-IV, 1.11 "substantially" F-IV, 4.7.1
Order to take evidence E-IV, 1.4
Summoning of parties, witnesses and experts E-IV, 1.5 Territorial effect of the opposition D-I, 3
Taking of evidence E-IV, 1.3
Video recordings E-IV, 1.12 Text for approval C-V, 1.1

Tasks of the opposition divisions D-II, 4 Text matter on drawings A-IX, 8

Ancillary proceedings D-II, 4.3
Decision concerning the awarding of costs by the Therapeutic uses pursuant to Art. 54(5) G-VI, 6.1.2
opposition division D-II, 4.2
Examination of oppositions D-II, 4.1 Therapy G-II, 4.2.1.2
Methods for treatment by therapy G-II, 4.2, G-II, 4.2.1
Tasks of the other members of the examining Methods for treatment of the human or animal body by
division C-VIII, 4 surgery or therapy and diagnostic methods practised on
the human or animal body B-VIII, 2.1
Technical Surgery, therapy and diagnostic methods G-II, 4.2
Technical details and general remarks G-IV, 7.5.6
Technical drawings A-IX, 1.1 Third parties D-I, 6, E-VI, 3
Technical features F-IV, 2.1 Examination of observations by third parties C-VII, 6
Special technical features F-V, 2 Observations by third parties D-I, 6, E-VI, E-VI, 3
Technical field F-II, 4.2
Search division has more than one member, further Third-party observations A-VII, 3.5
searches in a different technical field for a non-unitary Third-party observations during the examination D-X, 4.5
application B-I, 2.2.2
Technical fields searched B-X, 6 Time
Where claimed unitary subject-matter covers more Time allowed for filing notice of opposition D-III, 1
than one technical field B-I, 2.2.1 Time limit and form of appeal E-XII, 6
Technical journals G-IV, 7.5.3.1 Time limit for filing the request for examination A-VI, 2.2
Internet disclosures ‒ technical journals B-VI, 7 Time limit for payment of extension and validation
fees A-III, 12.2
March 2024 Alphabetical keyword index – 63

Time limits A-III, 11.2.1, A-III, 11.3.1, G-V, 2 Trade marks F-IV, 4.8, H-IV, 2.2.9
Calculation of time limits E-VIII, 1.4 Clarity and interpretation of claims F-IV, 4.8
Consideration of time limits E-X, 1.2 Content of the application as "originally" filed H-IV, 2.2.9
Determination of time limits E-VIII, 1.1 Proper names, trade marks and trade names F-III, 7
Extension of time limits set by the EPO under Registered trade marks F-II, 4.14
Rule 132 E-VIII, 1.6.1
Interruption of time limits A-IV, 2.2.4, D-VII, 4.3 Transfer of rights E-XIV, 3, E-XIV, 6.1
Resumption of time limits E-VII, 1.5 Opposition cases with different texts where a transfer of
Revocation in the event of requirements not being met rights by virtue of a final decision pursuant to Art. 61 takes
until after expiry of time limits D-VIII, 1.2.4 place in examination proceedings H-III, 4.3.3
Time limits covered E-VIII, 3.1.1
Time limits which may be freely Transfer of the European patent E-XIV, 4
determined E-VIII, 1.3 Transfer of the European patent application E-XIV, 3
Time limits and acceleration of examination C-VI
Influencing the speed of examination Transitional provisions for Art. 54(4) EPC 1973 and
proceedings C-VI, 2 Art. 54(5) D-VII, 8
PACE C-VI, 2
Standard marks for indicating amendments or Transitional provisions relating to
corrections by the divisions, further ways to accelerate Rule 137(4) H-III, 2.1.4
examination C-VI, 3
Time limits and loss of rights resulting from failure to Translation
respond within a time limit E-VIII, 1 Certification A-VII, 7
Calculation of time limits E-VIII, 1.4 Correction and certification of the translation A-VII, 7
Determination of time limits E-VIII, 1.1 Divisional application A-IV, 1.3.3, A-VII, 1.3
Duration of the periods to be specified by the EPO on Documents making up the application, replacement
the basis of EPC provisions E-VIII, 1.2 documents, translations A-III, 3.2
Effect of change in priority date E-VIII, 1.5 In language of proceedings of documents which have to
Extension of a time limit E-VIII, 1.6 be filed within a time limit A-X, 9.2.1, E-IX, 2.1.3
Failure to respond within a time limit E-VIII, 1.8 Invitation to file the translation A-VII, 1.4
Late receipt of documents E-VIII, 1.7 Language of proceedings A-VII, 2, A-VII, 3.2, A-VII, 7,
Loss of rights E-VIII, 1.9 A-X, 9.2.1, E-IX, 2.1.3
Time limits which may be freely Letters rogatory E-IV, 3.3
determined E-VIII, 1.3 Machine translations G-IV, 4.1
Time limits for response to communications from the Reduction of fees A-III, 13.1
examiner C-VI, 1 Replacement documents and translations A-VIII, 2.2
General considerations C-VI, 1.1 Request for amendments or corrections in reply to the
Special circumstances C-VI, 1.2 Rule 71(3) communication, no payment of fees or filing of
Time limits, loss of rights, further and accelerated translations necessary C-V, 4.1
processing and re-establishment of rights E-VIII Request for publishing fee, translations and a formally
Accelerated processing before the boards of compliant version of amended text passages D-VI, 7.2.3
appeal E-VIII, 6 Revocation for failure to pay the prescribed fee for
Accelerated processing of oppositions E-VIII, 5 publishing, to file a translation or to file a formally
Accelerated prosecution of European patent compliant version of amended text passages D-VIII, 1.2.2
applications E-VIII, 4 Translation of claims C-V, 1.3
Enquiries E-VIII, 7 Correction of the translations of the claims H-VI, 5
Further processing E-VIII, 2 Translation of international application E-IX, 2.1.3,
Re-establishment of rights E-VIII, 3 E-IX, 2.5.1
Renunciation of rights E-VIII, 8 Translation of the application A-III, 14
Translation of the previous application A-III, 6.8, F-VI, 3.4
Timeliness and structure of auxiliary Claim to priority A-III, 6.8, F-VI, 3.4
requests H-III, 3.3.2.2 Declaration replacing the translation A-III, 6.8.6
Invitation to file the translation before
Title F-II, 3 examination A-III, 6.8.1
Changes in the title H-V, 8 Invitation to file the translation in
Title of the invention A-III, 7, E-IX, 2.3.6 examination/opposition A-III, 6.8.2
Examination of formal requirements A-III, 7 Loss of rights and legal remedies A-III, 6.8.3
Instructions in Chapter A-III ("Examination of formal Translation of previous application already
requirements") E-IX, 2.3.6 filed A-III, 6.8.4
Requirements A-III, 7.1 Voluntary filing of the translation of the previous
Responsibility A-III, 7.2 application A-III, 6.8.5
Title, abstract and figure to be published with the abstract Translation of the priority application A-II, 5.4.4,
(as indicated on supplemental sheet A) B-X, 7 A-II, 6.4.3
Correct application documents based on priority
application, no change in the filing date A-II, 6.4.3
Alphabetical keyword index – 64 March 2024

Further action upon examination of replies, further Assessment of unity F-V, 3

action where a request for a translation of the priority Changing from one searched invention to
application was sent earlier in examination another C-III, 3.5
proceedings C-IV, 3.1 Divisional applications C-IX, 1.2
Missing parts of the description or missing drawings Euro-PCT applications F-V, 7
based on the priority application, no change in filing European patent application F-V, F-V, 1
date A-II, 5.4.4 European search report B-VII, 1.1
Examination of novelty G-VI, 6.1
Transmission of the dossier to the examining Excision of other inventions C-III, 3.3
division A-VI, 2.4 Extent of the examination D-V, 2.2
Filing divisional applications C-III, 3.3
Transmittal First stage of examination C-III, 3
Transmittal of the abstract to the applicant F-II, 2.6 IPC classification in cases of lack of unity of
Transmittal of the search report and search invention B-V, 3.3
opinion B-X, 12 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
Travel expenses E-IV, 1.10.1 Limitation to searched invention C-III, 3.2
No meaningful search possible B-VIII, 3.4
Treaty Procedure in the case of lack of unity during
Applications under the Patent Cooperation Treaty search F-V, 4
(PCT) E-IX Procedure in the case of lack of unity during
International application pursuant to the Patent substantive examination F-V, 5
Cooperation Treaty (PCT) E-IX, 1 Procedures in cases of lack of unity B-VII, 2
Refund of additional search fees C-III, 3.4
Two-part form F-IV, 2.2 Relation to unity in search C-III, 3.2
Two-part form unsuitable F-IV, 2.3 Requirement of unity of invention F-V, 2
Two-part form unsuitable, no two-part form F-IV, 2.3.1 Search report B-II, 4.2
Two-part form "wherever appropriate" F-IV, 2.3.2 Searches under Rule 164(2) C-III, 3.1
Subject-matter of the search B-III, 3.12
Types Unity of the European patent D-VII, 3
Types of documents B-IV, 2.3 Factors affecting the unity of the European
Types of evidence E-IV, 4.2 patent D-VII, 3.2
Types of use and instances of state of the art made
available in any other way G-IV, 7.1 Unpublished patent applications B-IX, 2.2

Unusual parameters F-IV, 4.11.1

U
Usable surface area of sheets A-IX, 4.1
Unexpected technical effect G-VII, 10.2
Use
Unitary Patent protection General Part, 8 Use claims F-IV, 4.16
Use of an official language E-V, 1
Units Use of computer-generated slideshows in oral
Units recognised in international practice as determined by proceedings E-III, 8.5.1
the President under Rule 49(2) F-II, An. 2 Examination proceedings (ex parte) E-III, 8.5.1.2
Compound units F-II, An. 2, 5 Opposition proceedings (inter partes) E-III, 8.5.1.1
SI units and their decimal multiples and Use of email C-VII, 3
submultiples F-II, An. 2, 1 Confidentiality C-VII, 3.2
Units and names of units permitted in specialised fields Inclusion in the file of any email exchange C-VII, 3.3
only F-II, An. 2, 4 Initiation of exchanges by email C-VII, 3.1
Units used with the SI, and whose values in SI are Use of "P" and "E" documents in the search
obtained experimentally F-II, An. 2, 3 opinion B-XI, 4.1
Units which are defined on the basis of SI units but are Use of Rule 137(4) for amendments filed during oral
not decimal multiples or submultiples proceedings in examination E-III, 8.8
thereof F-II, An. 2, 2 Use on non-public property G-IV, 7.2.3

Unity User interfaces G-II, 3.7.1

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, Using the description and or drawings
B-VIII, 3.4, B-VIII, 4.5, C-III, 3, C-III, 3.2, C-III, 3.2.1, Using the description and/or drawings to define clear
C-IX, 1.2, D-V, 2.2, F-IV, 3.2, F-IV, 3.3, F-IV, 3.7, F-V, terms given a definition different from their usual
F-V, 1, F-V, 2, F-V, 2.1, F-V, 3.2.1, G-VI, 6.1 meaning B-III, 3.2.4
Amended claims F-V, 6 Using the description and/or drawings to define unclear
terms not defined in the claims B-III, 3.2.3
March 2024 Alphabetical keyword index – 65

Using the description and/or drawings to identify the Where the EPO does not perform a supplementary
technical problem B-III, 3.2.2 search H-II, 6.4.1

Where the EPO performs a supplementary

V search H-II, 6.4.2

Validly claiming priority F-VI, 1.3 Whole figure A-IX, 5.3

Variants F-II, 6.2.3 Widening of the search B-VI, 5.3

Only variants of the invention are incapable of being
performed F-III, 5.1 Withdrawal
Statement of withdrawal E-VIII, 8.3
Variations in proportions A-IX, 7.6 Withdrawal before publication of the patent
specification C-V, 11
Verification of claimed priority dates B-VI, 5.1 Withdrawal of amendments/abandonment of subject
matter H-III, 2.5
Verification of the IPC classification B-V, 3.4 Withdrawal of application or designation E-VIII, 8.1
Withdrawal of correct application documents or
Version of the granted patent to be parts A-II, 6.5
considered H-IV, 3.3 Withdrawal of designation A-III, 11.2.4, A-III, 11.3.8
European patent applications filed before 1 April
Video recordings E-IV, 1.12 2009 A-III, 11.3.8
European patent applications filed on or after 1 April
Voluntary 2009 A-III, 11.2.4
Voluntary and mandatory division C-IX, 1.2 Withdrawal of late-filed missing drawings or missing parts
Voluntary filing of the translation of the previous of the description A-II, 5.5
application A-III, 6.8.5 Withdrawal of priority claim E-VIII, 8.2, F-VI, 3.5
Voluntary reply to Rule 161(1) communication E-IX, 3.3.4 Claiming priority F-VI, 3.5
Renunciation of rights E-VIII, 8.2
Withdrawal of the extension or validation
W request A-III, 12.3
Withdrawal of the request D-X, 9, E-XIII, 5.3
Limitation and revocation procedure D-X, 9
Waiver of right to be mentioned as inventor A-III, 5.2 Technical opinion E-XIII, 5.3
Withdrawal of the request for oral
When can a summons to oral proceedings be issued proceedings E-III, 7.2.2
in substantive examination? C-VIII, 5.1, E-III, 5.1
Preparation of oral proceedings E-III, 5.1 Without invitation A-II, 5.2, A-II, 6.2
Standard marks for indicating amendments or corrections
by the divisions, further communication with the Witnesses
applicant C-VIII, 5.1 Details of the entitlements of witnesses and
experts E-IV, 1.10.3
When does the examining division resume Entitlements of witnesses and experts E-IV, 1.10
examination after approval? C-V, 6.1 Hearing of parties, witnesses and experts E-IV, 1.6
Reimbursement for witnesses and experts E-IV, 1.10.1,
When may models be submitted? E-IV, 1.11.1 E-IV, 1.10.2
Summoning of parties, witnesses and experts E-IV, 1.5
Where and how applications may be filed A-II, 1 Witnesses and experts not summoned E-IV, 1.6.2
Application numbering systems A-II, 1.7
Debit orders for deposit accounts held with the Work
EPO A-II, 1.5 Work at the EPO General Part, 4
Filing of applications by delivery by hand or by postal Work of examiners C-I, 2
services A-II, 1.2 Work within the examining division C-VIII
Filing of applications by means of electronic Consultation of a legally qualified member C-VIII, 7
communication A-II, 1.1 Decision C-VIII, 6
Filing of applications by other means A-II, 1.3 Enlargement of the examining division C-VIII, 7
Forwarding of applications A-II, 1.6 Recommendation to grant C-VIII, 2
Subsequent filing of documents A-II, 1.4 Recommendation to refuse C-VIII, 3
Standard marks for indicating amendments or
Where and how to file a divisional corrections by the divisions, further communication
application A-IV, 1.3.1 with the applicant C-VIII, 5
Tasks of the other members of the examining
Where claimed unitary subject-matter covers more division C-VIII, 4
than one technical field B-I, 2.2.1
Alphabetical keyword index – 66 March 2024

Written
Z
Written evidence C-VII, 4.3
Written procedure H-III, 3.4.1, H-III, 3.5.2
Auxiliary requests, in limitation There are no expressions in this alphabetical keyword
proceedings H-III, 3.5.2 index beginning with this letter.
Auxiliary requests, in opposition
proceedings H-III, 3.4.1
Written submissions during oral proceedings by &
videoconference E-III, 8.5.2
"&" sign B-X, 11.3
March 2024 List of sections amended in 2024 revision – 1

List of sections amended in 2024

revision
MAJOR AMENDMENTS
General Part General Part, 8 Updated to include new point on Unitary
Patent protection

PART A A-II, 3.1 Updated in view of OJ EPO 2023, A48,

decision on the electronic filing of
documents

A-III, 6.1 Clarified practice relating to transfer of

priority right in view of G 1/22 and G 2/22

A-III, 12.1 Updated to include Georgia as validation

state

A-X, 10.2.6 New subsection related to refund of the

appeal fee

PART C C-V, 2.1. New subsection related to the request for

unitary effect

PART D D-VII, 4.3 Updated section to reflect the legal change

concerning Rules 126(2) and 131(2) (OJ
EPO 2022, A101)

PART E E-II, 2.3 Updated section to reflect the legal change

E-II, 2.4 concerning Rule 126(2) (OJ EPO 2023,
A29)

E-IV, 4.1 Updated section in view of G 2/21

E-X, 7 New section concerning procedures after

expiry of the term of European patent
List of sections amended in 2024 revision – 2 March 2024

MINOR AMENDMENTS
General Part General Part, 1 Clarified cut-off date for updates
incorporated in Guidelines

General Part, 2.2 Updated with Unitary Patent

General Part, 3 Clarification that Guidelines do not refer to

Unitary Patent proceedings

General Part, 5 Added new point specifying date of filing

request for Unitary Patent after date of
publication

PART A A-II, 1 Restructured to reflect the Office's digital

A-II, 1.1 transformation and the users' preferred
A-II, 1.1.1 practice to file online
A-II, 1.1.2
A-II, 1.2

A-II, 1.5 Updated section concerning update of the

ADA (OJ EPO 2023, A58)

A-III, 3.2 Updated to include reference to A-IV, 5

A-III, 5.1 Clarification added about the person of the

inventor and means of filing the
designation of inventor

A-III, 5.3 Clarified practice relating to the inventor in

view of J 8/20

A-III, 6.2 Updated to remove outdated references

A-III, 6.7 Updated section concerning the copy of

the priority document

A-III, 13.2 Clarified practice relating to calculating the

additional fee for Euro-PCT applications
and the additional fee for ST.25 sequence
listings in divisional applications

A-IV, 1.3.1 Clarified practice relating to electronic

means of filing (OJ EPO 2023, A48).

A-IV, 1.3.2 Clarified practice relating to possible

deficiencies in the request for grant

A-IV, 5 Clarified practice in view of WIPO

Standard ST.26
March 2024 List of sections amended in 2024 revision – 3

A-IV, 5.3 Updated practice relating to ST.25

A-IV, 5.4 sequence listings in divisional applications

A-VI, 1.1 Clarified practice in view of J 1/10

A-VI, 1.3 Clarified practice relating to publication of

erroneous application documents

A-VI, 2.5 Updated section concerning the refund of

the examination fee

A-VII, 1.1 Clarified language requirement for

according a filing date

A-VIII, 1.4 Clarified practice relating to signing of

authorisation in cases of joint applicants
appointing a common representative

A-VIII, 1.7 Clarified practice relating to authorisations

for UP proceedings

A-VIII, 2.5 Update concerning electronic filing of

subsequent documents in view of OJ EPO
2023, A48

A-VIII, 3.1 Updated section in view of the withdrawal

of paper EPO Form 1037

A-VIII, 3.3 Clarified practice relating to the form of

signature in the case of electronic filing

A-X, 4.2.3 Clarified practice relating to batch debit

orders

A-X, 5.2.4 Clarified due date for paying third renewal

fee in Euro-PCT applications

A-X, 9.2.1 Clarification of fee reductions available

under the language regime for Euro-PCT
applications entering the European phase

A-X, 9.2.2 Deletion of outdated information

A-X, 10.3.1 Update concerning invalid refund requests

in view of updated ADA
List of sections amended in 2024 revision – 4 March 2024

PART B B-III, 3.3.1 Clarified search practice in cases of

missing parts or erroneously filed
application documents

B-VI, 4.1.2 Clarified practice relating to conflicting

PCT applications

B-VI, 4.2 Clarified importance of national prior rights

B-X, 9.1.2 Clarified practice concerning the

B-X, 9.1.3 availability of machine translation of a
cited published patent application for the
applicant

PART C C-I, 1 Updated section concerning the work of

C-I, 2 examiners

C-III, 3.4 Clarified practice relating to refund of

additional search fees

C-IV, 7.1 Clarified practice relating to the search for

conflicting Euro-PCT applications

C-V, 2 Updated section in view of the end of the

transitional measures before the start of
the Unitary Patent

C-V, 4.7 Updated practice relating to the

C-V, 4.7.1 resumption of examination proceedings

C-V, 14 Clarified practice relating to

communications issued under Rule 137(4)

C-V, 15.1 Clarified practice relating to decisions

C-V, 15.2 according to the state of the file

C-VII, 2.1 Added reference to MyEPO Portfolio and

shared area

C-VII, 2.4 Clarification concerning minutes of a

consultation

C-VIII, 5.1 Restructured by moving former section

E-III, 5.1 concerning substantive
examination
March 2024 List of sections amended in 2024 revision – 5

PART D D-II, 2.1 Clarified role of technically qualified

members in opposition

D-III, 3.4 Clarified term "text string signature" based

on OJ EPO 2023, A48

D-III, 6 Digitisation: fax numbers no longer

D-VII, 6 required

D-IV, 1.4.2 Clarified responsibilities of the formalities

officer and the opposition division

D-IV, 5.1 Clarified practice relating to ex officio

examination in opposition

D-IV, 5.3 Restructured by moving former content

from section E-III, 8.7.3

D-IV, 5.4 Clarified practice relating to supporting

documents

D-IV, 5.5 Clarified practice relating to admissibility of

an opposition

D-V, 2.1 Clarified practice relating to the extent to

which a patent is opposed

D-V, 2.2 Clarified practice relating to compliance

with Rule 43(2) in opposition

D-V, 5 Clarified practice in alignment with

F-IV, 3.4

D-VII, 1.2 Updated practice relating to acceleration

of opposition proceedings in cases of
pending actions before the UPC

PART E E-III, 1.2 Clarified practice concerning oral

proceedings on the premises of the EPO

E-III, 5.1 Restructured by moving content to

C-VIII, 5.1

E-III, 8.1 Clarified practice relating to remote access

to members of the public to opposition oral
proceedings

E-III, 8.7.1 Added reference about electronic copies

for amendment purpose in opposition oral
proceedings
List of sections amended in 2024 revision – 6 March 2024

E-III, 8.7.3 Restructured by moving one paragraph to

D-IV, 5.3

E-III, 8.11.2 Clarified practice relating to new

summonses in cases of continuation of
oral proceedings

E-III, 10.1 Clarified practice relating to sound

recording

E-III, 10.2 Clarified practice relating to entering

E-III, 10.3 statements in the minutes
E-V, 6

E-VIII, 1.5 Clarification concerning the effect of

change of priority date on the time limit for
entering the European phase

E-VIII, 3.1.3 Added examples concerning fee for re-

establishment

E-VIII, 5 Added reference concerning accelerated

processing of opposition in cases of
pending actions before the UPC or a
national court of a contracting state

E-XII, 9 Clarified practice concerning the top-up

search for national prior rights in cases of
remittal

E-XIV, 3 Simplified procedure concerning signature

checks on assignment documents

PART F F-III, 3 Clarified practice relating to disclosure

requirements for AI and mathematical
methods applications

F-III, 10 Clarified practice relating to sufficiency of

disclosure in cases of erroneously filed
documents

F-IV, 3.8 Clarified practice relating to the

assessment of novelty and inventive step
of independent claims in different
categories

F-IV, 4.3 Restructured section and added sub-

headings
March 2024 List of sections amended in 2024 revision – 7

PART G G-II, 3.3.1 Clarified practice relating to the sufficiency

of disclosure requirements for AI and
machine learning

G-II, 6 Restructured so that the section does not

G-II, 6.1 fall under the classification "exclusions and
G-II, 6.1.1 exceptions" restructured by merging
G-II, 6.1.2 former sections G-II, 5.6.1.6 and
G-II, 6.1.3 G-II, 5.6.1.3; clarified practice relating to
G-II, 6.1.4 the assessment of antibodies defined by
G-II, 6.1.5 target antigen and further functional
G-II, 6.1.6 features

G-II, 6.2 Clarified practice relating to inventive step

of antibodies

G-IV, 5.4 Clarified practice in view of G 4/19

G-VI, 1 Restructured by incorporation of passage

from former G-VI, 8

G-VI, 4 Deletion of redundant information

G-VI, 7 Clarified practice relating to the novelty

assessment of selection inventions

G-VII, 5.2 Updated practice in view of G 2/21

G-VII, 11

PART H H-IV, 2.2.3 Clarified practice relating to documents "as

originally filed" in cases of erroneously
filed applications

H-IV, 2.4 Restructured by moving second paragraph

to new subsection H-V, 3.5 and covering
third and fourth paragraphs by H-V, 3.2
and H-V, 6 respectively

H-IV, 4.1.2 Clarified practice relating to the reason

why subject-matter is not searched in view
of Rule 137(5)

H-V, 3.5 Updated by incorporating former section

H-IV, 2.4

H-VI, 2.1 Clarification concerning the time limitations

H-VI, 2.2 applying to requests under Rule 139 in
view of G 1/12
List of sections amended in 2024 revision – 8 March 2024

EDITORIAL CHANGES
General Part General Part, 2.1; General Part, 6; General Part, 7

PART A A-II, 4.1.1; A-II, 5.4.4; A-III, 2.1; A-III, 4.1; A-III, 4.2.1; A-III, 6.8.2;
A-III, 11.2.2; A-III, 11.3.8; A-III, 16.2; A-IV, 1.8; A-IV, 2.5; A-IV, 4.1.1;
A-V, 3; A-VI, 1.2; A-VI, 2.4; A-VIII, 1.1; A-VIII, 1.2; A-VIII, 1.3;
A-VIII, 1.6; A-VIII, 3.2; A-IX, 3; A-X, 1; A-X, 4.2.1; A-X, 4.2.2;
A-X, 4.2.4; A-X, 4.3; A-X, 4.4; A-X, 5.2.2; A-X, 5.2.4; A-X, 9.1;
A-X, 9.3.1; A-X, 10.1.3; A-X, 10.2.1; A-X, 10.3.2; A-XI, 2.5; A-XI, 5.1

PART B B-VI, 6.3; B-XI, 2.1; B-XI, 9; B-X, 7

PART C C-II, 1.2; C-II, 2; C-II, 3.3; C-III, 1.1.1; C-IV, 3.1; C-IV, 7.2; C-IV, 8;
C-V, 1.1; C-V, 4.9; C-V, 10; C-V, 13; C-VII, 2.2; C-VII, 2.4; C-VII, 3;
C-VIII, 1; C-VIII, 2; C-VIII, 3; C-VIII, 4; C-VIII, 5; C-VIII, 7

PART D D-I, 5; D-II, 2.2; D-II, 2.3; D-II, 5; D-II, 6; D-II, 7; D-III, 5; D-IV, 3;
D-IV, 5.2; D-VI, 1; D-VI, 3.2; D-VI, 4.2; D-VI, 7.2.2; D-VI, 8; D-VII, 6;
D-VII, 8; D-X, 2.1

PART E E-III, 1.1; E-III, 8.3.3.3; E-III, 8.5.1.1; E-III, 8.5.1.2; E-III, 8.5.2;
E-VIII, 3.1.1; E-IX, 2.3.12; E-IX, 4.3; E-XI

PART F F-IV, 3.3; F-IV, 3.9.1; F-IV, 3.9.3; F-IV, 4.7.1; F-IV, 4.11.1;
F-IV, 4.13.1; F-IV, 4.15; F-V, 3.2.6; F-VI, 1.5

PART G G-I, 1; G-II, 4.2; G-V, 3; G-VI, 5; G-VI, 6; G-VI, 6.1; G-VI, 6.1.1;
G-VI, 6.1.2; G-VI, 6.1.3; G-VI, 6.1.4; G-VI, 6.1.5; G-VI, 6.2; G-VI, 7.1;
G-VI, 8; G-VII, 12; G-VII, 13

PART H H-II, 2.7; H-II, 2.7.1; H-II, 3.2; H-II, 3.4; H-III, 2.1.2; H-III, 3.3.3;
H-VI, 2.2.2; H-VI, 3.3