IP Quick Tip: Filing auxiliary requests at the EPO (2023)

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One of the unique features at the European Patent Office is the possibility to file auxiliary requests. These requests serve as a fallback set of claims for when the main request is considered not allowable.

Auxiliary requests are often filed in response to the summons to oral proceedings. The Division will consider the allowability of the request and provide reasons if they are not allowable. If one of the requests is found allowable, the oral proceedings might even be cancelled.

Although it might still be possible to file a request leading up to, or even during, the oral proceedings, there is a risk that non-converging requests are rejected as being late filed.

Auxiliary requests can also be filed during opposition proceedings. For instance, filing them early in reply to the notice of opposition can result in the Division giving their preliminary opinion, allowing you to address them if required.

In any case, the final submissions prior to oral proceedings is the last chance to present auxiliary requests without facing the risk of rejection due to late filing.

The risk of late filing, or even not filing any request at first instance, may have severe consequences at the appeal stage, especially after the introduction of the stricter Rules of Procedure in 2020.