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Examining Divison Oral Proceedings

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16 June, 2021

What are Examining Division Oral Proceedings?

Examining Division Oral Proceedings are a videoconference hearing conducted by the European Patent Office (EPO) during examination of a patent application.

All European patent applications must go through the examination procedure before they can be granted. Oral Proceedings are an optional part of the examination procedure, and are usually intended to conclude the examination procedure in cases where no agreement on the outcome of the patent application has been reached based on the earlier written procedure. In most cases, this hearing provides an applicant with a final opportunity to present its case for the application before a decision on the grant or refusal of the application is made.

Before the Hearing

A summons to attend oral proceedings sets out the outstanding objections to be discussed at the hearing. The summons also provides the date of the hearing and sets a deadline for filing written submissions in advance of the hearing.

Written submissions may provide further written arguments and any new facts/evidence in support of the applicant’s case. It is also possible to submit new amendments to the patent specification, including several sets of amended claims setting out multiple “fall back” positions. Any amendments or evidence filed after the written submissions deadline are only admitted at the discretion of the Examining Division, so it is advisable to file in good time where possible.

The Examining Division may find at least some of the arguments/amendments persuasive and cancel the hearing, either consenting to grant the application or otherwise resuming the written procedure.

At the Hearing

If the Examining Division is not persuaded by the written submissions alone, the hearing will take place. Except in special circumstances, the hearing will be conducted via video conference. Examining Division oral proceedings are not open to the public, and are held between the applicant (or more often a European Patent Attorney representing the applicant) and the Examining Division, which is made up of the primary examiner and two other examiners. Under certain circumstances, the applicant and/or representative may be accompanied by others, e.g., an inventor or expert witness.

The hearing allows for a detailed discussion of the case and its outstanding issues in a formal setting. If the Examining Division is convinced by the amendments and/or arguments of the applicant, then the application can be granted. If the Examining Division is not persuaded by the amendments/arguments presented, the application will be refused. The decision is announced at the end of the hearing, but confirmed at a later date by official written communication. The decision is appealable to an independent Appeal Board, if desired.

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