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Changes to the EPO Guidelines for Examination.
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.
Further information can be obtained through your usual contact at Boult Wade Tennant or from Nigel Tucker.