Amendment of the Guidelines for Examination of the European Patent Office on 01.03.2023

On March 1, 2023, new Guidelines for Examination of the European Patent Office (EPO) came into force.

This has implications for the examination practice of patent applications and thus for the work of patent attorneys, both in drafting patent applications and in arguing their patentability before the EPO. Some of the changes introduced by the update of the Guidelines are summarized below.

Correction of erroneously filed application documents

The European Patent Office (EPO) has amended its Guidelines to include a new section (A-II-6) on the procedure for correcting incorrectly filed application documents or parts thereof. Rule 56a EPC was introduced in light of the Patent Cooperation Treaty, PCT Rule 20.5bis, which was incorporated into the PCT in 2020. This rule enables the applicant to replace incorrectly filed parts of the application, for example, if drawings were confused with those of another application when the application was filed. In this way, the applicant can prevent incorrectly filed parts of the description, claims or drawings from being published. The EPO's amendment to the guidelines ensures that applicants can take full advantage of PCT Rule 20.5bis and make corrections to their application documents without fear of publication of the erroneous parts.

In general, the patent application is examined upon filing to determine whether it is entitled to validly claim the filing date. If, during this examination, the EPO finds that the description, claims or drawings (or parts thereof) have obviously been filed incorrectly, it requests the applicant to file the correct documents (see A-II-5).  Within a fixed time limit, the applicant may proceed under Rule 56a or Rule 56. Alternatively, the applicant may file a correction (of parts) of the description, claims or drawings on his own initiative (without invitation by the EPO) within two months from the original filing date.

It is important for the applicant to know that the filing date is not adjusted to the date of receipt of the corrected documents. A-II-6.4 provides a practical note: If the applicant corrects the application documents (or parts thereof) after the filing date, the filing date is not changed, provided, in particular, that the correct application documents (or parts thereof) are filed within the relevant time limit, the application claims priority, and the correct application documents are included in full in the priority application.

Form of oral proceedings

Another change in the Guidelines concerns the form of oral hearings. Whereas until some time ago oral proceedings could be held on the premises of the EPO, the general rule now is that oral proceedings must be held by video conference. Only in exceptional cases, where there are serious reasons not to hold a video conference, oral proceedings may be held at the EPO premises.

This change gives all applicants the same opportunities, regardless of their location. In particular, applicants from abroad will no longer have to travel long distances, thus requiring less time for the oral proceedings. It should be noted that videoconferencing is now the preferred format for oral proceedings both before the Examining Divisions and in inter partes opposition proceedings.

National prior rights

In connection with the new top-up search (we reported in our blog on 01/09/2022), a new section C-IV-7.2 was introduced. This is one of the few sections in the guidelines that reflects the upcoming unitary patent system in conjunction with the Unified Patent Court (UPC). The reason there is little on the UPC in the new Examination Guidelines is because the Guidelines deal primarily with the pre-grant procedure, whereas the Unitary Patent System and the Unified Patent Court (UPC) deal with matters that become relevant only after the grant of a patent.

The said section of the Guidelines notes that, in view of the importance of the respective national rights for applicants in proceedings before the Unified Patent Court, the examiner at the grant stage also includes national applications and patents from contracting states in the final search, to the extent that they are contained in the EPO databases.

Another section of the guidelines that reflects the future unitary patent system and the Unified Patent Court (UPC) is Guideline E-VIII, 5 which deals with the expedited handling of opposition proceedings. Where an action for infringement of a European patent is pending before the Unified Patent Court or a national court of a contracting state, a party to the opposition proceedings may request expedited processing. The EPO also expedites the processing of oppositions when it is informed by the Unified Patent Court, a national court or a competent authority of a contracting state that an infringement action is pending.

Sequence listings

The updated Examination Guidelines reaffirm that applications, including divisional applications, that contain a sequence listing must comply with WIPO Standard ST.26. In particular, with respect to the sequence listing of a divisional application (A-IV-5.4), this means that the sequence listing of a divisional application must be attached in (a converted) ST.26 format even if a parent application was filed under the previous WIPO Standard ST.25. The updated guidelines explicitly state that the content of the publication is under the responsibility of the applicant as well as that sequence listings of the parent application are not automatically attached to the divisional application documents if they do not conform to the ST.26 format.

This update raises concerns among applicants that in cases where the ST.25 sequence listing contains less information than the ST.26 sequence listing, they may be forced to improperly expand the sequence listing and thus the application. It is therefore important to address these issues in a timely manner before filing a divisional application.

Conformity between description and claims

The extent to which claims and description must conform has long been a contentious issue between applicants and the EPO. The updated examination guidelines emphasize that embodiments that are no longer claimed must also be indicated in the description as not belonging to the invention.

According to the updated guidelines (F-IV-4.3), on the one hand, terms such as "disclosure", "example", "aspect" do not necessarily mean by themselves that what follows is outside the scope of protection of an independent claim. On the other hand, simply replacing the term "embodiment" or "invention" with one of these terms would not be sufficient to indicate embodiments that are no longer within the scope of protection of an independent claim. Instead, expressions would have to be used that clearly indicate the embodiment as no longer falling within the scope of protection of an independent claim (e.g., using words such as "not falling within the scope of protection of the claim," "not as in the claimed invention," or "outside the scope of protection of the claim").

This leaves much room for interpretation and discussion as to what a skilled person reading the application, who is open to comprehending its content, actually understands by the invention, knowing that the actual scope of protection is defined by the claims. A feature that is obviously not within the scope of protection of the claims and is referred to in the description, for example, as an "embodiment" will not subsequently be mistakenly considered and interpreted as nevertheless belonging to the invention.

The fact that the requirement of correspondence between description and claims is rather controversial is reflected in the increasingly divergent case law of the boards of appeal on this issue. Examples include T 3097/19 (per conformity) and T 2194/19 (Catchwords: "The requirement that the claims must be supported by the description under Article 84, second sentence, EPC does not necessarily mean that all "embodiments" of the description of a patent application must be covered by the (independent) claims, i.e. that all embodiments must fall within the scope of protection of those claims.").

It remains to be seen where the journey will lead in future practice.

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Author: Dr. Michael Schmid