|"Give me one hundred lines by tomorrow |
morning, Brophy: 'I shall not write in
the style of a cat'."
Guidance on interpreting the EPC is provided by the case law of the EPO's boards of appeal, the Guidelines for Examination (referred to in the margins of this document as "GL") and other official publications (e.g. OJ Notices). The aim of this document is to provide further non-prescriptive guidance and information on how proceedings between the EPO and its users can be conducted in ways conducive to a high-quality process. It relates to aspects of search, examination, opposition, revocation and limitation proceedings. It is not intended to replace or repeat the content of the legal texts, but to be complementary to them. References to specific passages of these legal texts are made where appropriate.
The following topics are addressed:
- the practice of applicants and representatives (to a lesser extent, also of opponents and third parties) in proceedings before the EPO at first instance;
- the practice of examiners, in particular how the examiner should best carry out examination so as to reach a decision in a reasonable time while dealing openly with parties to the proceedings;
- the practice of formalities officers, particularly focusing on interaction between formalities officers and applicants; and
- how complaints are dealt with at the EPO.
4.2.1 Reply to an invitation under Rule 62aIn reply to an invitation under Rule 62a, the applicant may react in four different ways:
- He does not wish to dispute the search examiner's opinion and indicates the independent claims that fulfil the requirements of Rule 43(2) and that he wishes to have searched.
- He finds that the objection is not justified and wishes to reply to the invitation: in this case he must provide reasons why the requirements of Rule 43(2) are fulfilled. Furthermore, he may file arguments against the findings in the invitation, requesting as a main request that the claims as filed be completely searched and as an auxiliary request, in case the examiner is not convinced, indicating specific subject-matter to be searched.
- He finds that the objection is only partly justified and wishes to indicate more than one independent claim per category: in this case too he must provide reasons why the claims he has indicated fulfil the requirements of Rule 43(2).
- He decides not to reply to the invitation: in this case the examiner decides what to search.
the examiner should agree to such a consultation in order to clarify the content of the invitation and the course of action open to the applicant at this stage. The consultation should be limited to formal issues concerning the invitation. Minutes of the telephone consultation should be written by the examiner.
|Part of the flowchart for a "Decision according to the state of the file"|
A word of caution, however, to those applicants and examiners who wish to quote the Handbook, like holy scripture, to one another. No doubt conscious that the Guidelines already exist to formally define the structure of examination procedures, the Foreward tells us:
This document is not binding either on the EPO or on users and their representatives. Consequently, it should not be quoted in communications between the EPO and its users, and no procedural sanction or disciplinary measure applies for departing from efficient practice. Its strength lies in the benefits - in terms of greater quality and efficiency of the patenting process - that all parties stand to gain by following the practices described.Despite this entreaty, the IPKat confidently predicts that some representatives will be simply unable to resist the temptation to wave the Handbook at examiners.