Update 16 February 2014

Errors in the November 2013 issue

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Art.153(2)
The first sentence under the note under title "Filing a divisional ..." is wrong and should be deleted.

If the EPO performs a supplementary European search, the EPO ONLY searches the first invention, and draws up a search report only with respect to that single invention. You will not be invited to pay further search fees – R.64 is not applicable, R.164 is a lex specialis of that for Euro-PCT. See R.164(1), and also GL (2013) F-V, 13.2, as well as B-VII, 2.3; B-VIII, 3.4 last par; B-VIII, 4.5 last par; B-XI, 5 last par.

If the EPO was not ISA and not SISA: the EPO will perform a supplementary European search –Art.153(7); OJ 2009, 594. The search will be based on claim set as available after 6m period of R.161/162-communication (R.164(1); GL E-VIII. 3.1, 2nd par). In this search, the EPO does not look at what was searched in the international phase (GL B-VII, 2.3 “…independently of the findings of the ISA”): you can change to a non-searched invention by amending the claim set such that a non-searched invention is mentioned first. In examination, you will be required to limit to the invention searched in the supplementary European search – R.164(2), GL F-V, 13.2, GL E-VIII, 4.2.

If EPO was ISA or SISA: the EPO does not perform a supplementary European search, you immediately enter into examination. Examination will be based on claim set as available after 6m period of R.161/162-communication (R.164(2); GL E-VIII. 3.2, end of 1th par). If the Examining Division considers the claims to lack unity, it will invite applicant to limit to one invention searched by the EPO as ISA/SISA (R.164(2), GL E-VIII, 4.2). Amending to previously non-searched matter, you will get a R.137(5) objection in the first office action (GL E-VIII, 4.2 last par).

NB: R.164(1) will change per 1/11/2014 – this change is however not relevant for EQE2014.

R.81(2)
R.81(2) The citation under the rule refers to E-III ; this should be E-II 1.

R.142
In the table, column "Requirements", last block: the remark "Interrupted periods start again for not lapsed part..." should be replaced by "Interrupted periods start again for the full original period...". This is explained in full detail in the notes under R.142(4).

Update 24 February 2013

Errors in the December 2012 issue

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J 4/86
J 4/86 r.5 summary “Refund of renewal fee paid after lapse of Art.94(2) period (grace period irrelevant)” is not appropriate any more. 
Remove reference to it:
- Art.86(1), page 295
- R.51(1), section “References”, page 298
- RFees 9, Section 15, page 773.

Sentence “Deemed withdrawal under Art.86(3) takes effect at end of 6 month additional period (J 4/86)” on page 296, first line should be changed to:
“Deemed withdrawal under Art.86(1) takes effect at end of 6 month additional period (interpretation of J 4/86 r.3.1 for EPC1973 but taken over for EPC2000, see OJ 2007, SE4, p.86)”

J 7/81
The summary of headnote I of J 7/81 is inaccurate. 
Replace by “Payment of a fee in cash at the counter of a bank is a payment to be transferred to a bank account held by the Office as in Rfees.5(1). Date on which the payment is considered to have been made is the date on which the amount of the payment is entered in a bank account held by the Office [Rfees.8(1)]. 
Change it at:
- Art.78(2), p.219
- R.38(1), p.220
- Rfees.5(1), p.763
- Rfees.7(1), p.766

J 23/82 
J 23/82 II (Payment of designation fees in grace period assumes surcharge) is obsolete and can be removed at: Art.79(1), R.39(1), Rfees.6(2)

J 8/83
J 8/83 II [Refund of examination fee after withdrawal in response to Art.96(1) invitation] is obsolete. Remove under R.70(2), Art.153(7) (twice), Rfees.11

J 27/92
J 27/92 2 is obsolete [R.85b [grace period for filing request of examination, surcharge] does not precede over but is alternative possibility to Rfees.9(1) [small amount lacking]]. 
Remove it under Rfees.8

Art. 153(7)
Section “reduction of search fee for supplementary European search”: the latter of the two headings called "from 1 July 2010 up to and including 30 June 2013" should be replaced with "from 1 July 2013 up to and including 30 June 2016".

R.71
Be aware that the content of the rule has changed and the rule was also split into R.71 and R.71a on April 2012. The current version of the book contains both versions. However, the cross-references are only to the old version.

A rough mapping table is:
Old             New
R.71(3) -> R.71(3)
R.71(4) -> R.71(5)
R.71(5) -> R.71(6)
R.71(6) -> R.71(4)
R.71(7) -> R.71(7)
R.71(8) -> R.71a(3)
R.71(9) -> R.71a(4)
R.71(10) -> removed
R.71(11) -> R.71a(1)
New: R.71a(2), R.71a(5), R.71a(6)

R.159(1)
Item 13 Designation fee: in the table change R.39(2) to R.39(1)

R.160(2)
Remove ‘or 2’

Rfees 2(2), Item 15
Delete paragraph stating that the rule applies to applications filed on or after 1 April 2009.

Update for the flow-chart under R.55 - filing date examination

Update for the flow-chart under Art.94(1) -start of substantive examination

Recommended additional cross-references

• Art.83, section 13 Reference document
  The cited section H-V 2.5 is relevant and reproduced under Art.123(2) section 4.3
• Art.114(1)
  Add under related law also R.81(1) Grounds to be examined in opposition, own motion
• Rfees.2(1) Item 1 and 1a Filing fee/additional fee
  refer to  Rfees.14(1) (reduced fee-language)
• Rfees.2(1) Item 2 Search fee
   refer to Rfees.9 Refund of search fee
• Rfees.2(1), Item 6 Examination fee
  refer to Rfees.11 (refund examination  fee), Rfees.14(1) (reduced fee-language), 
              Rfees.14(2) (reduced examination fee – EPO as IPEA)
• Rfees.2(1) Item 10 Opposition fee
  refer to  Rfees.14(1) (reduced fee-language)
• Rfees.2(1) Item 10a Limitation or revocation fee:
  refer to  Rfees.14(1) (reduced fee-language)
• Rfees.2(1) Item 11 Fee for appeal
   refer to  Rfees.14(1) (reduced fee-language)
• Rfees.2(1) Item 11a Fee for petition for review
   refer to  Rfees.14(1) (reduced fee-language)