The EPO has published its 2019 revision of its Guidelines for Examination, which will come into effect from the 1st Noveember 2019. Until then, the Guidelines as revised in November 2018 will stay in effect. (The revised Guidelines may be found at the following links: Guidelines for Examination in the EPO and Guidelines for Examination as a PCT Authority.)
Whilst changes to the Guidelines may include some updates with a strong bearing on particular cases, it is important to keep the Guidelines in perspective. Although EPO examiners are encouraged to follow the Guidelines, these are exactly what they are labelled as – guidelines, and the Guidelines do not constitute legal provisions. The underlying principles of law for the purposes of the EPO system are found in the European Patent Convention, its Rules, and the case law of the Boards of Appeal .
It is this body of law which the Guidelines are intended to reflect. However, new case law is decided year-round, and there are occasional changes to legal provisions. Since the Guidelines are only updated once a year, there will inevitably be a gap between the cutting edge of legal provisions and case law, and the version of the law depicted in the Guidelines.
The Guidelines reflect only those decisions of the Boards of Appeal incorporated into the EPO’s general practice due to their general procedural significance, but there may on occasion be diverging decisions of Boards of Appeal; and in such cases EPO examiners and formalities officers will, as a rule, follow the common practice as described in the Guidelines, which applies until further notice. However examiners must follow the law and so the Guidelines are not the last word.
While changes to legal provisions are clearly flagged by notices on the EPO website, it is somewhat more difficult to determine whether case law is leading to a change in practice, particularly when Boards of Appeal reach contrary positions.
It is for precisely this reason that we, as professional representatives before the EPO, find it important to keep up with the case law, especially when it coincides with the particular areas of interest of our clients. For instance, the current Enlarged Board of Appeal referral on simulations has the potential to reinforce current practice on computer-implemented inventions or reframe it entirely.
Whilst it is always helpful if the patentability of your application is supported by the Guidelines, it's part of the nature of innovation to come up with new and unexpected approaches which previous precedent didn't necessarily expect. Assessing an application in the light of the Guidelines is often only the beginning of the process of arguing a case, not the be-all and end-all of it.
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.
