The EPO introduced the latest version of the Guidelines for Examination on 1 March 2023. Some of the revisions are highlighted below.
Removal of the ten-day notification rule
Part E-II, 2.3 and 2.4 have been updated in anticipation of the
abolition of the EPO's ten-day notification rule that will take
effect on 1 November 2023. This change was reported in our bulletin
of 18 October 2022.
In particular, the updated Guidelines provide guidance as to the requirements for establishing that a postal or electronic communication was not delivered to the addressee, which then allows a later date of notification to be accorded. This is particularly important as periods for response are calculated from this date of notification.
Oral proceedings
Part E-III, 1.2 has been updated to reflect the EPO's
increasing reliance of videoconference oral proceedings rather than
in-person oral proceedings. The latest changes to the Guidelines
confirm that the default is for oral proceedings to be conducted
via videoconference. However, the Guidelines also make it clear
that oral proceedings may be held at the EPO where there are
serious reasons for doing so. New part E-III, 1.3 states that such
requests for in-person oral proceedings should be presented as soon
as possible, that a refusal to allow such a request must be
reasoned by the EPO, and that such a refusal is not separately
appealable. Further detail is provided in our bulletin of 7
December 2022.
Final stages of examination
The arrival of European patents with unitary effect and the Unified
Patent Court has required amendment of Part C-V that governs the
final stages of the examination procedure. For example, Part C-V, 2
has been amended to allow the possibility of delaying grant until
the Agreement on a Unified Patent Court has come into effect.
Adaptation of the description
The EPO have tightened their requirements on bringing the
description into alignment with amendments to the claims. Part
F-IV, 4.3 has been amended to provide examples of inconsistencies
that should give rise to an objection, and to provide guidance on
how to introduce former embodiments that no longer fall within the
scope of the claims as amended. There is also a requirement for the
description to provide a clear identification of any exceptions to
patentability under Article 53 EPC (contrary to morality,
plant/animal varieties and relevant biological processes, and
methods of treatment).
Admissibility of amendments filed late in
proceedings
The EPO is keen to avoid extensive amendments of a text that could
form the basis of a granted patent. Part H-II, 2.4 has been updated
to clarify that where examination of the amendments will delay
preparations for grant, discretion to allow the requested
amendments should normally be refused.
Assessment of novelty of sub-ranges and purity of
compounds
Part G-VI, 8 has been amended to provide further guidance on how
narrow and sufficiently far removed a claimed sub-range must be
from a known range for it to be considered novel. Part G-VI, 7
relating to disclosures of the purity of compounds, has also been
revised.
Assessment of inventive step of computer implemented
inventions
Part G-VII provides guidance on the COMVIK approach to assessing
the inventive step of computer-implemented inventions, with Part
G-VII, 5.4.2 providing some useful examples of how the COMVIK
approach is to be applied in particular cases. A new example
relating to the use of a fuzzy controller in a neural network has
been added at G-VII, 5.4.2.5.
Evidence of internet prior art
disclosures
Part G-IV, 7.5.6 has been updated to require the EPO to request
capture and storage of internet disclosures suitable to prove the
disclosure's availability to the public in case the disclosure
ceases to be available on the internet at a later date. The EPO
will also make this evidence available upon request by parties to a
proceedings, as confirmed in an update to Part B-X, 11.6.
Erroneously filed application documents
Amendments have been made to reflect changes in practice necessary
as a consequence of the introduction of new Rule 56a EPC which
relates to incorrect application documents or parts. This rule
requires the EPO to set a two-month period for filing corrected
documents where the EPO identifies that parts of the description,
claims or drawings (or parts of those documents) have been
erroneously filed.
Sequence listings
Part F-II has been updated to account for the requirements for
sequence listings set out in WIPO Standard ST.26.
Accession of Montenegro
Part A has been amended to reflect Montenegro's transition from
an extension state to a full contracting member on 1 October 2022,
as reported in our bulletin of 2 August 2022.
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.
