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18.05.22

EPC and PCT-EPO Guidelines 2022

The EPO has published the annual updates to the Guidelines for Examination which came into force on 1st March 2022.

The updates are extensive and below we discuss some of the key changes and what you need to know.

Description amendments

In 2021 the EPO implemented stricter requirements for bringing the description into conformity with the claims that had been proposed for grant by the Examiner.

However, those new requirements resulted in a good deal of feedback that they often led to extensive revision of the description and could have a negative impact on future litigation.

In response, the EPO have now relaxed those requirements and applicants will no longer be forced to remove or clearly mark embodiments that are not covered by the claims.  Only subject matter that is obviously inconsistent with the claims needs to be deleted or marked as not falling within the scope of protection.  Furthermore, where there is ambiguity as to whether an embodiment is consistent with the claims then the applicant will now be given the benefit of the doubt.

This change is consistent with the recent decision T 1989/18 which found that there was no basis in the EPC for insisting on such extensive changes to the description.

Computer-implemented inventions, mathematical methods, and AI

This update clarifies that mathematical methods can contribute to the technical character of an invention by its application to a field of technology and/or by being adapted to a specific technical implementation.

The updates also provide an example for the assessment of the inventive step for a claim having distinguishing features directed to computational models and algorithms related to AI, in accordance with COMVIK.

Examples were included in the updates to help interpret the new wording, providing a welcome guidance for applicants.

The Guidelines were further updated following G 1/19 to provide guidance in the assessment of the presence of a technical effect of a simulation.  A simulation that includes a feature interacting with external physical reality can make a technical contribution, as can a purely numerical simulation for a specific technical implementation, or if the data resulting from the simulation enables an intended technical use.

Partial priority

The section of the Guidelines relating to multiple priorities has been changed to include and define partial priorities in line with G1/15.

A “Partial priority” has been defined as a situation in which only a part of the subject matter encompassed by a generic “OR” claim is entitled to the priority date of a previous application.

The later filed application can only qualify as “the first application” for parts of the invention that are not disclosed in the earlier application and there is now guidance for identifying and assigning the relevant date to the subject matter.

The update further includes a discussion of partial priorities being transferrable separately and the consequences for the assignor.

Address for each Inventor

The requirement to provide the address of each named inventor has been changed such that it is now possible to provide only the country or place of residence, which can now also be that of the applicant (i.e. a company).

 

If you have any questions, please contact mail@mskpatents.com.

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