Examination procedure before the EPO

Examination before the European Patent Office (EPO) is the stage at which the Examining Division verifies that the European patent application, and the invention it discloses, meet the requirements of the European Patent Convention (EPC). It is governed by Articles 94 to 97 EPC and by Rules 70 et seq. of the Implementing Regulations. It opens with the request for examination and ends with the grant of the patent or the refusal of the application.

Opening of examination

The application first goes through the search, which results in the extended European search report, made up of the search report itself and an opinion on patentability. Responsibility then passes to the Examining Division once the applicant files a request for examination and pays the corresponding fee, within six months of publication of the mention of the search report. Within the same period, the applicant must respond to the opinion annexed to the report, either by contesting its objections or by amending the application. Amendments must remain within the content of the application as filed, under Article 123(2) EPC.

Course of examination

The Examining Division, composed of three examiners, one of whom handles the file in practice, notifies the applicant of its objections as often as necessary under Article 94(3) EPC and sets a time limit for reply. The exchange covers novelty, inventive step assessed under the problem-solution approach, clarity of the claims, sufficiency of disclosure and unity of invention. If no reply is filed in time, the application is deemed withdrawn, subject to further processing. Oral proceedings may be held at the applicant’s request or of the Division’s own motion under Article 116 EPC, nowadays most often by videoconference.

Outcome of examination and appeal

Where the Division considers that the application can proceed to grant, it issues the communication under Rule 71(3), which submits to the applicant the text intended for grant. The patent takes effect on the date on which the mention of its grant is published in the European Patent Bulletin, under Article 97(3) EPC. If the application does not meet the requirements of the Convention, it is refused. A decision to refuse may be appealed before the Boards of Appeal within two months of its notification, with the statement of grounds to be filed within four months.

Key points

European examination is a written negotiation governed by strict time limits, in which every amendment to the claims shapes the future scope of the patent and its resilience in litigation. The arguments put to the examiner will be reread by the opponent, before the Opposition Division and before the courts alike. Every deadline should be monitored, each amendment should be supported by a precise reference to the application as filed, and the option of filing a divisional application should be preserved for as long as the application is pending.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats litigates patent disputes before the Paris Judicial Court, the Paris Court of Appeal and the Unified Patent Court. Where the question arises in a real case, the useful moment is almost always before proceedings are issued.

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