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Perhaps the most key change is regarding oral proceedings. Examiners can now issue a summons to attend oral proceedings as a first office action after the extended European search report (EESR).
Currently the earliest the EPO will issue a summons to oral proceedings is after the extended European search report and a further first examination report (assuming there are some remaining objections).
The change means the EPO will no longer be required to issue an examination report after the extended European search report; a summons to oral proceedings may be issued in place of a first office action, effectively being the second substantive office action issued by the EPO. There will now only be two guaranteed office actions in the lifetime of an application that has pending objections (the extended European search report and a summons to oral proceedings).
When will this happen?
The revised Guidelines state that this will only take place “in exceptional situations” in which, despite the applicant’s reply to the extended European search report, “no possibility of grant can be envisaged”
This may only occur if:
the content of the claims on file is not substantially different from that of the claims which served as a basis for the search, and
one or more of the objections raised in the extended European search report which are crucial to the outcome of the examination procedure still apply
If this procedure is followed, the summons to oral proceedings “must not include any new objections or cite new documents”.
What to do differently
Although the new procedure is expected to only be used rarely, applicants should be aware of the possible scenario. We would therefore recommend that a full and detailed response is filed to the extended European search report.
Other changes in Oral Proceedings practice
It is now explicitly stated in the Guidelines that a first examiner may informally discuss an applicant’s submissions in reply to a summons to oral proceedings before the proceedings are held, in particular if there is a reasonable prospect that the discussion could lead to an agreed set of claims.
It is common for examiners to do this already, but having this practice stated in the Guidelines can only strengthen the expectation that such a discussion can happen before proceedings. Discussions with the examiner before oral proceedings are typically very helpful and can lead to an allowable set of claims being arrived at without the need for the proceedings themselves. If proceedings do take place then they can be greatly improved for all parties if the applicant and examiner have had a chance to understand each other’s point of view through an informal discussion beforehand.
The EPO will now write to applicants to advise that a priority claim having the same date as the application’s filing date is not accepted. It is understood that this practice is already in place. It is now explicitly described in the revised Guidelines.
Excluded Subject Matter
The Guidelines have been updated to reflect recent case law in the fields of graphical user interfaces and the presentation of information.
Rules 27 and 28 EPC
The Guidelines have also been updated to reflect amended Rules 27 and 28 which came into force on 1 July 2017. These rules are discussed here in detail and concern the exclusion of products exclusively obtained by essentially biological processes following the Notice of the European Commission from November 2016.
If you would like further detail on any of the above, or would like to discuss any of it with one of our experienced attorneys, then please do not hesitate to be in touch.
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