ARTICLE
3 March 2021

New EPO Guidelines For Examination Come Into Force

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J A Kemp LLP

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J A Kemp is a leading firm of European Patent and Trade Mark Attorneys. We combine independent thinking with collective excellence in all that we do. The technical and legal knowledge that we apply to the protection of our clients’ patents is outstanding in its breadth and depth. With around 100 science and technology graduates in the firm, including 50 PhDs, no area of science or technology is outside our scope. Our Patent Attorneys have collective in-depth expertise in patent law and procedure in every country of the world. The team of professionals who advise our clients on trade mark and design matters have backgrounds in major international law firms and hold qualifications as Chartered UK Trade Mark Attorneys, Solicitors and European Trade Mark Professional Representatives. Dedicated to this specialist area of intellectual property protection, the team has the expertise and resources to protect trade marks and designs in any market worldwide.
As discussed in our earlier news item here, one aspect of note in the new Guidelines is the introduction of a stricter approach to amending the description for conformity with the claims.
United Kingdom Intellectual Property

The latest version of the EPO's Guidelines for Examination comes into force today, 1 March 2021, and is available here.

As discussed in our earlier news item here, one aspect of note in the new Guidelines is the introduction of a stricter approach to amending the description for conformity with the claims.

Another interesting development is the introduction of examiner "consultations" by videoconference during the examination procedure (see here). For the last few years the EPO has been encouraging examiners and applicants to consider discussing substantive matters by telephone during prosecution, as part of its "early certainty" drive.

It seems that the EPO is hoping that its now-extensive videoconference infrastructure, which is already being used for the majority of examination, opposition and Board of Appeal oral proceedings (see our briefing here), can also be put to use more informally for consultations with examiners.

A number of changes have also been made to the section of the Guidelines that sets out how unity of invention should be assessed (see here). The general intention of these changes is harmonise practice between the EPO and the intellectual property offices of member states. On a practical level, the changes mean that examiners should start providing more extensive reasoning when unity objections are raised, which may be beneficial to applicants when deciding how best to address such objections during examination.

Finally, a new section specifically focused on antibodies has been added, which is discussed in our new briefing on antibodies here.

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.

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