Stages of the procedure
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157
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Once you have filed the request for examination, the EPO examines in the light of the search report whether the application and the invention to which it relates meet the requirements of the Convention, and in particular whether the invention is patentable (see points 27-37).
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Art. 94(1)
Guid. C-VI
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158
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After receiving the search report and before receiving the examiner's first communication, you can file substantive observations on the search report and amend the description, claims and drawings (see point 171). This will speed up the processing of the application at the examination stage (see Annex II, point 6).
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R. 86(2)
Guid. C-VI, 3.1
OJ 2001, 459
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If your actions are clearly indicative of an interest in speedy substantive examination, the examiner will make every effort to issue the first communication within three months of the examining division's receipt of the application or the request for accelerated examination (see Annex II, point 4).
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OJ 2001, 459
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If you fail to reply in due time to this or any further communication, the application is deemed to be withdrawn (but see point 216).
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Art. 96(3)
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160
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You must try to deal with all the examiner's objections, the guiding principle of the examination procedure being that the decision to grant a patent or refuse the application should be reached in as few actions as possible.
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Guid. C-VI, 2.5
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If, after examining your response, the examiner considers that the application is not yet grantable, he will continue with the examination procedure by issuing a further written communication or talking to you in person or on the telephone.
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Guid. C-VI, 4, 6
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161
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The examiner may seek the advice of other members of the examining division whenever he sees fit. At the latest he will refer the application to them when a decision has to be taken.
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Guid. C-VI, 4.4, 7
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162
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If the examining division is of the opinion that a European patent cannot be granted, it will refuse the application. The decision is issued by the examining division as a whole, and the grounds of refusal must be stated; refusals may be based only on grounds on which you have had an opportunity to comment.
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Art. 97(1)
Guid. C-VI, 4.4, 7.7
Art. 113(1)
Guid. C-VI, 7.6
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163
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If the application and the invention to which it relates meet the requirements of the Convention, the examining division will decide to grant a European patent provided that the requisite fees have been paid in due time and a translation of the claims in the other two official languages of the EPO has been filed in due time.
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Art. 97(2)
R. 51(4)-(6)
Guid. C-VI, 15
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164
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The examining division first informs you of the text in which it intends to grant the European patent, and invites you to pay the fees for grant and printing and to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings within a period which it specifies (currently four months). If you pay the prescribed fees and file the necessary translations of the claims in due time, you are deemed to have approved the text intended for grant. If you fail to file the translations and/or to pay the fees for grant and printing, the application is deemed to be withdrawn. The above period will be extended once by no more than two months if you so request before the period expires. You need give no reasons for this request.
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Art. 97(3), (5)
R. 51(4), (8)
Guid. C-VI, 15.1, 15.3
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The procedure up to grant of the European patent can be shortened significantly if you request immediate grant under Article 97(6). For such a request to be valid, you must have:
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Art. 97(6)
Guid. C-VI, 15.2
OJ 2001, 459
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·
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filed a translation of the claims in the other two official languages of the EPO,
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·
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paid the fees for grant and printing and any additional claims fees,
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where necessary filed the translation of the priority document or the declaration referred to in Rule 38(5), and
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·
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paid the renewal fees and/or any additional fees already due
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(see Annex II, point 7).
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165
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Upon reviewing the proposed text for grant, you may wish to make minor amendments, and/or you may discover mistakes. In that case you have an opportunity to file amendments or corrections within the period set under Rule 51(4) (see point 164). If the examining division consents to the amendments or corrections, it can immediately proceed to grant, as you are obliged to file translations of the claims as amended or corrected, provided you have also paid the fees for grant and printing within the time limit set. If you file amendments or corrections and translations of the claims in due time, but do not pay the fees, the application is deemed to be withdrawn.
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Art. 97(3)
R. 51(5), (8)
R. 86(3), 88
Guid. C-VI, 4.9, 15.4
OJ 2002, 114
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166
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If the examining division does not consent to the requested amendments or corrections, you are given an opportunity to comment, and either to withdraw or again to amend the amendments or corrections. In the latter case, amended translations of the claims need to be submitted once more to reflect the grantable text. As such amendments are generally of a minor nature, this should involve no substantial burden for you.
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R. 51(6)
Guid. C-VI, 15.4
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If you fail to meet the objections raised, the examining division will refuse the application under Article 97(1) because it does not meet the requirements of the Convention. As you always have to pay the fees for grant and printing and any claims fees within the time limit set under Rule 51(4), any fees you have paid will be refunded if no patent is granted. After you have received the communication under Rule 51(4), the above procedure does not take place until you have paid these fees. If you fail to pay them, the application is deemed to be withdrawn.
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Art. 97(1)
R. 51(6), (7), (8)
Guid. C-VI, 15.7
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167
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You are also requested to file, within the same period, either a translation of the application whose priority you claim or a declaration that the European patent application is a complete translation of the previous application, if you have not yet done so (see point 55).
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R. 38(5)
Guid. C-VI, 15.1
OJ 1999, 296, 571
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Before a patent can be granted, you must also have paid any renewal fee and additional fee due (see point 204 et seq.). If a renewal fee falls due before the expected date of publication of the mention of grant of the European patent, you will be informed accordingly. Mention of grant will not be published until you have paid the renewal fee. If you fail to pay the renewal fee and any additional fee in due time, the application is deemed to be withdrawn.
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Art. 86(3)
R. 51(9)
Guid. C-VI, 15.2
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169
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The grant does not take effect until the date on which it is mentioned in the European Patent Bulletin. At the same time as it publishes this mention, the EPO publishes a European patent specification containing the description, the claims and any drawings. The patent proprietor also receives a certificate for the European patent, with the specification annexed.
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Art. 97(4), 98
R. 54
Guid. C-VI, 15.8-10
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D. The European patent grant procedure
Request for examination
Amending applications before and during examination proceedings
