A summons to oral proceedings before the Examining Division is usually only issued after at least one examination report – if not several – has been issued. However, last year the EPO revised the Guidelines for Examination to state that the Division may issue a summons to oral proceedings as the first action in examination after issuance of the extended European search report, albeit only in exceptional cases. Amongst anecdotal evidence of a rise in summons being issued as the first action in examination, the EPO has revised the Guidelines again to further clarify the procedure. These revised Guidelines will come into force on 1 November 2018 and are discussed below.
What constitutes an "exceptional case"?
The 2018 Guidelines state that the Division may decide to issue a summons to oral proceedings as a first substantive action in examination only if:
- in the Division's opinion, there is no prospect of granting the application, even taking into account the applicant's reply to the search opinion;
- the content of the claims on file is not different in substance from that of the claims which served as a basis for the search, and
- one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply.
Notably, it is now an explicit requirement that the applicant's reply to the search opinion must be taken into account.
Content of a summons issued as the first action in examination
The requirements of the annex to a summons issued as the first action in examination have also been revised. In particular, the annex to a summons must:
- not include any new objections
- not cite any new documents;
- cover and substantiate all objections by giving the essential legal and factual reasons, and
- provide the reasons why the Division decided to issue summons as the first action in examination.
The Guidelines have also been revised to clarify that the Division may inform the applicant in a telephone call if it is considering issuing a summons to oral proceedings as the first action in examination. However, the Division must still issue telephone minutes with the same level of information and structure as an examination report under Article 94(3) EPC (see C-VII, 2.7).
Submissions filed after the Rule 116 EPC deadline are not "late-filed"
According to Rule 116 EPC, a summons to oral proceedings shall set a final deadline for making written submissions in preparation for the oral proceedings. Any submissions filed after this date are usually considered "late-filed". However, the revised Guidelines state that if the summons was issued as the first action in examination, then submissions filed after this date are not to be considered late-filed.
This should mean that when a summons is issued as the first action in examination the applicant will have a little more time to prepare and file written submissions that could lead to cancellation of oral proceedings.
It appears that the changes to the Guidelines were intended to clarify that this procedure should only be used rarely, when the applicant does not appear to be making any genuine effort to overcome the Examining Division's objections, and to ensure that the procedure is not misused.
That said, the possibility of this procedure being used should not be disregarded and applicants should be aware that their response to the EESR could potentially be their last opportunity to make submissions before a summons is issued (in the case of a Euro-PCT application where the EPO was the ISA, this is the response to the Communication pursuant to Rules 161(1) and 162 EPC). To reduce the risk of a summons being issued as the first action in examination, a detailed and complete response to the written opinion accompanying the ESR should be submitted with the aim of convincing the Examining Division that there is a real prospect of the application being granted.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.