News & Resources

22.05.23

Changes to the EPO Guidelines for Examination

The annual updated version of the Guidelines for Examination came into force on 1 March 2023. The updates are intended to reflect changes to EPO practice in the last year and the main changes are set out below.

Please contact us at mail@mskpatents.com if you have any questions about recent changes in practice at the EPO.

Unified Patent Court

The Unitary Patent Agreement will enter into force on 1 June 2023. Examination proceedings before the EPO will remain unchanged.

In September 2022, the EPO introduced top-up searches to find earlier national rights, assess their prima facie relevance, and identify any prima facie relevant national rights in an intention-to-grant communication (Rule 71(3) EPC). Part C-IV, 7.2 of the Guidelines has been updated to include comments on the top-up search.

Part C has been updated further to include comments on transitional measures in place during the sunrise period for unitary patents (C-V, 2) i.e., the option to file an early request for unitary effect and to delay grant.

Part E-VIII, 5 has also been updated to refer to the possibility of requesting accelerated processing of an opposition in view of a pending action for the same patent before the UPC.

Correction of erroneously filed application documents

Part A, C and E have been updated to reflect changes in practice necessary as a consequence of the introduction of new Rule 56a EPC, which allows the correction of erroneously filed application documents (description, claims, or drawings).

The application is examined on filing to check that it is entitled to a date of filing. If, during this check, the EPO identifies that parts of the description, claims or drawings (or parts of those documents) have been erroneously filed, then the EPO will set a 2-month period for filing corrected documents.

The applicant may replace erroneously filed application documents by corrected versions:

  • on or before the filing date without changing the filing date; or
  • after the filing date, but in this case the application will normally be re-dated.

Importantly, corrected application documents may now be added after the filing date without changing the filing date if the corrected document is completely contained in the priority application. The priority claim must have been made when the application was filed and cannot be added later.

Adaptation of the description

Part F-IV, 4.3 has been amended to provide examples of inconsistencies between the description and the claims that should give rise to an objection.

Any inconsistencies must be removed by amending the description: either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the claims.

An inconsistent embodiment may be remedied by ensuring that it is not referred to as being “according to the invention” throughout the description and by including a statement that it is merely useful for understanding the invention (e.g. including wording such as “embodiment useful for understanding the invention” or “comparative example from the background art”). It is important that the resulting text of the description does not present conflicting information to the reader.

Patentability

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.

A new example of applying the COMVIK approach (computer-implemented inventions), relating to the use of a fuzzy controller in a neural network, has been added in part G-VII, 5.4.2.5.

Sequence listings

Part F-II, 6 has been updated to include a new section relating to sequence listings complying with WIPO Standard ST.26. For applications (including divisional applications) filed on or after 1 July 2022, sequence listings must comply with 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. Bosnia and Herzegovina is now the only remaining extension state (A-III, 12).

Legal changes for digital transformation

The Administrative Council of the EPO passed a package of rules in October 2022 to support the ongoing digital transformation in the patent grant procedure at the EPO, and strengthen alignment with the PCT.

The changes to the EPC rules related to: (1) document presentation requirements, (2) transmittal of documents cited in the search report, and (3) notification and time limit calculations.

In view of the legal changes for digital transformation, the Guidelines for Examination have been updated as follows.

Part A-IX, 1 indicates that guidance on the presentation of application documents, including drawings, is provided in the decision of the President of the EPO dated 25 November 2022. It is important to note that this decision does not contain any changes to the presentation requirements of documents, it restates the requirements under former R. 46 and 49 EPC in a consolidated manner.

Part B-X, 11 specifies that documents cited in search reports will be “made available” instead of “transmitted”. It is worth noting that a technical solution for making copies of cited documents available to the applicant is under development, and there is no change to the EPO’s practice of transmitting cited documents as yet.

In anticipation of the abolition of the EPO’s 10-day notification rule, Part E-II, 2.3 and 2.4 specify that with effect from 1 November 2023, where notification is effected by postal service or electronic communication, the document will be deemed to be delivered to the addressee on the date it bears, unless it has failed to reach its destination. The EPO will retain the burden of proof in the case of exceptional notification disputes. Appropriate safeguards will be provided if a document is not received, or received very late.

Oral proceedings

Part E-III, 1.2 has been updated to confirm that videoconference is the default format for oral proceedings (also in opposition). Only under unusual circumstances will oral proceedings be conducted in person.

New part E-III, 1.3 states that requests for in-person oral proceedings should be filed as early as possible, preferably together with the request for oral proceedings. If the request for in-person oral proceedings cannot be allowed, and is received after the summons to oral proceedings, the division will inform the parties that the oral proceedings will take place by videoconference as set out in the summons and include a brief reasoning as to why the request cannot be granted. Such a refusal is not separately appealable.

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