The new version of the EPO's Guidelines for Examination is due to come into force on 1 March 2021. In advance of the Guidelines entering into force, the EPO has now published a draft version of the Guidelines here.
Previously, the Guidelines were published in November each year. However, the EPO departed from this schedule last year and the EPO now plans to publish the updated Guidelines in March each year. Thus, the new version of the Guidelines is the first update since November 2019.
In general, the changes seek to bring the Guidelines into line with current practice and recent Board of Appeal decisions.
One change of particular note relates to amending the description for conformity with the claims. The change had been anticipated following internal guidance that had been issued to examiners at the EPO. The Guidelines now state at Part F, chapter IV, 4.3 (iii):
"Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06)."
Thus, for an embodiment in the description which does not fall under the scope of the claims, the Guidelines indicate that the embodiment should be deleted or "prominently stated" as not being covered by the claims. Indeed, the Guidelines suggest marking such embodiments as an "embodiment not covered by the claimed invention". The Guidelines also state that "[i]t is not sufficient to use generic statements such as "embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention" without indicating which parts of the description are no longer covered", and that "merely changing the wording "invention" to "disclosure" and/or the wording "embodiment" to "example", "aspect" or similar is not sufficient to clearly state that this part of the description does not fall under the scope of the claimed invention. It has to be explicitly specified that this part of the description does not describe part of the claimed invention."
Thus, the EPO now appears to be requiring a more extensive revision of the description in order to bring it into conformity with the claims, which will be an unwelcome burden on applicants. Careful thought will be required before certain embodiments are marked as, e.g., "not covered by the claimed invention" in view of post-grant claim interpretation. Of particular concern will be those embodiments which, while not falling within the literal scope of the claims, might nevertheless be found to infringe the claim as an "equivalent". It would be challenging to argue that such embodiments are infringing equivalents if the description explicitly states that they are "not covered by the claimed invention".
Part H, chapter V, 2.7, the Guidelines now states that "[i]f the applicant does not amend the description as required despite being asked to do so, the examining division's next action will be to issue summons to oral proceedings". Thus, more summons may be issued if examiners are not satisfied with how descriptions are being amended. In effect, the examiners potentially now have a greater remit to require extensive amendments to the description before allowing the application.
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