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Changes to the EPO Guidelines from 1 November 2017

The Guidelines for Examination set out the practice and procedure for the examination of European applications and patents for all parties, including examiners, patent proprietors and opponents.   A revised set of Guidelines comes into force on 1 November 2017 and the revisions provide an insight into the changes at the EPO over the last year and are outlined below.

Some of these revisions build on the changes introduced on 1 November 2016 which we reported in detail, for example the EPO continues to modernise and streamline its procedure:

  • No examination report to issue in exceptional cases

If the Examiner thinks that insufficient progress has been made in the response to the European search report, the first examination report can be replaced with a Summons to Oral Proceedings or a detailed note of a telephone conversation.  A Summons cannot be issued if there are any new objections or new documents and the content of the claims on file is substantially different to that of the claims which served as a basis for the search.

  • Examination fee partially refunded after examination has started

If an application is withdrawn within the time limit set for responding to the first examination report, the applicant is entitled to a 50% refund of the examination fee.  This applies if the first examination report is replaced by a Summons or a note of a telephone conversation as described above.  The applicant is also entitled to a full refund if the application is withdrawn, refused or deemed withdrawn before examination commences. For more information on this refund, please see our earlier article.

  • Provisional opinion now issuing with a partial search report

When the European Examiner considers the claims to relate to more than one invention, the EPO will now issue a provisional opinion with a partial search report and an invitation to pay additional search fees.  The provisional opinion will be for information only and will include the Examiner’s opinion about the patentability of the first invention which has been searched. No response to the provisional opinion is required until after the issue of the European search report which gives an opinion on all searched claims.

  • Enquiries about progress of the application

 Enquiries must now be filed on a form and the EPO will respond with an indication of when the next communication will issue.  For applications which have been accelerated using PACE, the EPO commits to issuing the next communication within one month.  Similarly, if a search report has not issued within a standard six month window, the EPO commits to issuing the search report within one month.  Although filing an enquiry may lead to the progress being accelerated in some circumstance, this is not always the case.  If you would like more information on how to accelerate your application, please see this article.

Other revisions capture rule changes and the impact of any recent case law, for example:

  • Essentially biological processes

Rule 28 EPC has been amended to state that plants or animals are not patentable if said plants or animals are exclusively obtained by means of an essentially biological process.  An essentially biological process is one without direct technical intervention in the genome and where the relevant parental plants or animals are merely crossed and the desired offspring is selected. Examples of processes which are not considered to be essentially biological are technically induced mutants, targeted mutations, e.g. with CRISPR/Cas, random mutagenesis, e.g. UV-induced mutation and non-heritable physical features, e.g. a seed coating.  For more information, please see our more detailed article.

  • Partial priority for generic “OR” claims

The recent Enlarged Board of Appeal decision (G1/15) regarding the priority entitlement of a claim has been included in the appropriate sections of the Guidelines. As previously reported, this case solves the problem of so-called “poisonous” divisionals.

  • Swiss type claim

For cases with a priority date earlier than 29 January 2011 it is possible to have a second medical use claim in the format of a Swiss type claim.  However, subsequent cases may only include purpose-related product claims. T13/14 has been added to illustrate that if the parent application is granted with a Swiss-type claim, there is no double patenting if the divisional case has a purpose-related product claim.  However, T1673/11 notes that it is not possible to change post-grant from a Swiss-type claim to a purpose-related product claim because a claim to a particular physical activity confers less protection than a claim to the physical entity.  Such a change would thus be an impermissible broadening of the scope of protection of the granted patent.

  • Other case law, including insufficiency, clarity and amendment

Various cases have been added to the Guidelines to illustrate how the EPO approaches assessments of insufficiency, clarity and basis for amendments.  For example, T38/11 has been added to emphasis that sufficiency of disclosure cannot be acknowledged if a skilled person has to carry out a research programme based on trial and error to reproduce the results of the invention with limited chances of success.  T99/13 has been referenced to show that an assessment of determining basis for an amendment is to be made from the standpoint of a skilled person on a technical and reasonable basis, avoiding artificial and semantic constructions.

There are also some new or comprehensively revised sections to provide further guidance on aspects of EPO practice and procedure, for example:

  • Further processing & Re-establishment

 The EPO has clarified how many further processing or re-establishment fees are required for various stages for an application.  For example, the Guidelines clarify that five fees are due for late entry into the European regional phase and note that for further processing, two of these five fees include two parts.

  • GUIs

 The EPO has issued revised Guidance on the patentability of graphical user interfaces.  Using various examples, some of which are summarised in the table below, the EPO have stated that aspects of the GUI directed to user input rather than presentation of information are more likely to be patentable.

Possibly technical Non-technical
Mechanism enabling user input, e.g. entering text Helping user in deciding what he wants to input (T1741/08)
Predictive input mechanism for text entry Suggestions reflecting purely linguistic considerations
Performance oriented improvements to detection of input, e.g. faster or more accurate gesture recognition Manners of input that merely reflect user preferences, conventions or game rules, e.g. gestures
Reduction of number of interactions if depends on user’s level of expertise or subject preferences
  •  Bioinformatics

Under the EPC, there is an exclusion which specifies that a method of treatment of the human or animal body by surgery or therapy is not patentable. The changes to the Guidelines have clarified that it is not possible to avoid this exclusion by stating that the method is computer-implemented. Claims to medical devices, computer programs and storage media fall outside the exclusion and are patentable subject to the other requirements of the EPC (e.g. novelty and inventive step)

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If you have any questions about or would like more detail on any of these updates, please do not hesitate to get in touch.

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