Maeve O’FlynnAs a European Patent Attorney, one of my go-to texts is the Guidelines for Examination in the European Patent Office (EPO), known to many as simply the “Guidelines”.  The Guidelines are prepared by the EPO to direct the work of their employees, but they also provide invaluable insight for patent attorneys seeking to obtain patents from the EPO.  The Guidelines provide detailed information on substantive aspects of European patent law, for example, on novelty, inventive step, and excluded subject matter.  They also provide comprehensive procedural information on, for example, time limits, the payment of fees and the submission of documents.

The Guidelines are updated annually to capture the latest legal and procedural developments.  On 1 February 2023, the EPO published a preview version of the latest Guidelines and launched a consultation period for users to provide feedback.  The updated Guidelines will enter into force on 1 March 2023 and the consultation period lasts until 4 April 2023.  The EPO will use the feedback when preparing the amendments for the 2024 update to the Guidelines.

The changes for 2023 include an addition to the section relating to summons to oral proceedings as the first action in examination (Part C, III, 5).  This section was introduced into the Guidelines several years ago, and reflects the EPO’s desire to increase the speed of examination.  If the applicant does not submit a reasoned and substantive response to the search opinion, then they may not receive an examination report from the EPO, and instead will receive a summons as the first action.  Applicants want to avoid this scenario as it reduces the scope for negotiation during examination, and increases the likelihood of refusal.  The 2023 update clarifies that, for divisional applications, a summons may be expected as the first action in examination if the claims of the divisional are substantially the same as the parent application, the parent application was refused, and the same objections still apply.  Applicants may need to amend their divisional filing strategies to ensure that they are not faced with a summons to oral proceedings at an early stage of examination.

Another change relates to the Unified Patent Court (UPC).  The Guidelines presently state that a party to opposition proceedings may request accelerated processing where an infringement action is pending before a national court.  The 2023 update (Part E, VIII, 5) clarifies that accelerated processing of an opposition may also be requested when an infringement action is pending before the UPC.

One section of the Guidelines that has prompted significant discussion in recent years is the section on description amendments (Part F, IV, 4.3).  According to this section of the Guidelines, before a European patent is granted, the applicant must ensure that the description is consistent with the allowed claims.  This is a distinctive aspect of European practice, and often raises concerns with applicants, who fear that deletions of subject matter from their European patents might impact the interpretation of their patents in other jurisdictions, or might even affect the how the European claims are understood, potentially changing the subject matter of the European patent.  Recent changes to the Guidelines, considered by the EPO as a mere codification of existing practice, were viewed by many attorneys as a much stricter approach to description amendments.  The changes this year do not significantly change the approach but do provide clarification, providing additional examples of what is considered to be an inconsistency and explicitly stating that inconsistent embodiments may be retained within the text if they are clearly marked as being useful for understanding the invention, e.g. as a “comparative example from background art”.  Amending the description before grant remains an essential feature of European practice and applicants should be aware that the EPO looks set to retain the same approach.

Further updates, throughout the Guidelines, relate to new rule 56a of the European Patent Convention (EPC).  This rule was introduced in November 2022 to bring the EPC into line with the Patent Co-operation Treaty (PCT).  The rule states that the EPO will invite an applicant to file correct documents if it appears that the description, claims or drawings (or parts thereof) have been erroneously filed.  The applicant will have two months to respond.

The annual revision cycle, whereby the Guidelines are updated and feedback is provided, is an effective mechanism for ensuring that EPO staff and European patent attorneys have access to accurate and detailed information on the process and legal requirements for obtaining European patents.

Written by Maeve O’Flynn, Partner, Finnegan Europe



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