New EU Practice Regarding Summons to Attend Oral Proceedings as First Action in Examination
Whenever objections are raised in the search opinion accompanying the European search report, the applicant of a European patent application must respond to the search opinion by filing amendments to the description, claims or drawings, and/or filing observations on the objections.
In the absence of objections in the search opinion, amendments to the description, claims or drawings, and/or observations may be voluntarily filed in response to the search opinion.
A similar procedure also applies to Euro-PCT applications for which the European Patent Office (EPO) prepares a supplementary European search report and a search opinion, e.g., PCT applications entered in the European phase for which the International Searching Authority (ISA) was an office other than the EPO.
If the EPO performed a search for a PCT application in its capacity as ISA, the EPO does not carry out a supplementary European search upon entry into the European phase. In this case, the EPO issues a Rule 161/162 communication, setting a six-month deadline for filing either a mandatory response or a voluntary response, depending on the content of the written opinion issued by the ISA.
The applicant’s response to the search opinion or to the Rule 161/162 communication serves as the basis for examination, be it filed in response to search opinions requiring a response, or be it voluntarily filed in response to search opinions not requiring a response. The examining division takes these factors into account when drafting the first office action.
Under the current practice, the examining division always issues at least one office action setting a typical 4-month deadline for responding to any remaining objections and/or to any newly raised objections.
However, according to a new practice presented in the new Guidelines for Examination, which will enter into force on November 1, 2017, the examining division may decide to issue summons to oral proceedings as the first action in examination proceedings. Although this should be an exceptional case, applicants should be aware that the examining division may now decide to issue summons to oral proceedings without first issuing an office action whenever the two following conditions are applicable:
- when the content of the claims on file is not substantially different to the content of the claims which served as a basis for the search, and
- when one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply.
A decision to refuse the application cannot be issued without a first office action in examination having been sent, or oral proceedings having been held. This means that the examining division may not refuse the application directly after the response to the search opinion, even if the objections raised in the search opinion remain the same and there is no pending request for oral proceedings. However, in order to avoid the issue of summons to oral proceedings directly after the response to the search opinion, applicants should carefully consider a way to substantially improve their position when responding to the search opinion.
When an applicant is summoned to oral proceedings, arguments and amendments may be filed within the deadline for making written submissions in preparation for the oral proceedings indicated in the summons. If the written submissions contain a genuine effort to overcome all examining division’s objections, the oral proceedings may be cancelled. Otherwise, a decision on the substance of the application is taken during the oral proceedings, even if the applicant does not attend them.
