Changes to the EPO Guidelines

A revised set of Guidelines for Examination comes into force on 1 November 2018 and the revisions provide an insight into the changes at the EPO over the last year. It is notable that throughout the Guidelines, many references to “should” or “may” have been replaced by “is” to give greater certainty to those using the Guidelines. For example, the previous version specified that in an inventive step analysis, the problem and solution approach should be applied but the revised version specifies that the problem solution approach is to be applied.

In addition to these subtle but important revisions, there are some new or comprehensively revised sections to provide further guidance on aspects of EPO practice and procedure to both applicants and examiners, for example:

Updates to Reflect Changing Technology in the Computing Field

The European Patent Convention lists a number of exclusions to patentability and one of the key changes in the revised Guidelines is to provide enhanced guidance to applicants wishing to obtain protection for inventions including artificial intelligence or machine learning which may fall within such exclusions. As reported in more detail in our recent article , the sections relating to mathematical methods, mental acts and computer programs have been rewritten and include new illustrative examples to help applicants and examiners understand how inventions in this area may be patented.

There is also a new section detailing the types of claims which are suitable for inventions in a distributed computing system, e.g. claims to a receiver, a transmitter, a system comprising both the receiver and the transmitter, and computer program products.

Essentially biological process

As set out in our article last year, Rule 28 EPC was amended to state that plants or animals are not patentable if they are exclusively obtained by means of an essentially biological process. The revisions in the 2018 Guidelines clarify that a disclaimer may be necessary for claims to avoid this rule change. For example, a claim in the form “A cultivated pepper plant expressing a mutated AHAS enzyme” is excluded but a claim in the form “A cultivated pepper plant expressing a mutated AHAS enzyme with the proviso that the plant is not exclusively obtained by means of an essentially biological process” is not excluded.

Unity of invention

The revised Guidelines provide greater clarity on the European examiners’ approach to assessing whether a set of claims relate to a single inventive concept. An examiner may raise an objection before carrying out a search (non-unity a priori) and such an objection will be based on the structure of the claims themselves. Alternatively, after reviewing the prior art raised in a search, the examiner may raise a unity objection if the independent claim(s) lacks novelty or inventive step and the remaining claims are not unified (non-unity a posteriori). There are new sections to detail the procedure in both cases.

Clarity of claim interpretation

A new section on how relative terms are interpreted when assessing the relevance of the prior art has been added. For example, the section explains how the term “thin” is effectively ignored in the phrase “thin metal plate”. There is also more guidance for applicants who are claiming an invention which is part of another entity, for example on whether it is more appropriate to claim “a cylinder head for an engine” or “an engine comprising a cylinder head”.

There are also revisions to capture procedural changes which have been implemented in the last year:

Continuing to expand country coverage outside Europe

A European patent application can be used to obtain protection in a large number of countries, both within and outside the European Union. The changes to the Guidelines highlight that two more countries can now be covered:Tunisia (since 1 November 2017) and Cambodia (since 1 March 2018).

Fee changes – early payment of renewal fees & payment by credit card

Annual renewal fees are payable to the European patent office for all pending applications from the third year onwards. In general these fees can be paid up to three months early with the exception of the third year renewal fee which can be paid up to six months early. This change came into effect from 1 April 2018 and is particularly useful to time payment with European regional phase entry which falls at 31 months.

Another fee change which was introduced on 1 December 2017 is to allow payment of the fees by credit card.

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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