New EPO Guidelines

[25.02.2022 – Thomas Henzler & Dr. Stephan Milles]

Most important updates:

Guidelines for Examination of the European Patent Office coming into force on 1 March 2022.

On 1 March 2022, the annually updated Guidelines for Examination of the European Patent Office will come into force. These Guidelines provide guidance on the practice of proceedings before the EPO under the European Patent Convention and its Implementing Regulations.

In the following article, the most important amendments to the updated Examination Guidelines are addressed, with a compact overview of the amendments in the respective Parts A-H.

Amendments Part A (Formal Examination)

Section A-III, 5.3 dealing with the designation of the inventor was updated.

If the applicant is not the (sole) inventor, the designation shall be filed in a separate document, containing the country and place of residence of the inventor and should preferably include the postal code. The updated now expressly states that the country and place of residence of the inventor can be that of the applicant.

Furthermore, in view of new Rule 19 EPC (in force since 01.04.2021), amended by deleting the procedure of communicating the designation to the inventor, the corresponding part of the Guidelines (previously section A-III 5.4) was canceled. Further, in section A-III, 6.12 it is stated that applicants from the People’s Republic of China and Sweden are exempted from filing a copy of search results under Rule 141(1).

Amendments Part B (the Search), Part C (Substantive Examination), Part D (Opposition and Limitation/Revocation)

Only minor changes have been made in Parts B-D, which need not be discussed further.

Amendments Part E (General Procedural Matters)

In section E-III, 8.3.1 the practice on checking the identity and authorizations of participants at oral proceedings held by videoconference was commented. For practice, especially the newly added part could be relevant, according to which copies of identity documents can also be filed via the EPO online filing options no later than two days prior to the oral proceedings or via email to the address provided to the parties at the beginning of the oral proceedings.

Further chapter E-VI was largely updated, dealing with the Examination by the EPO of its own motion; facts, evidence or grounds not submitted in due time and observations by third parties. Here, particularly broad additions were made in relation to section E-VI, 2.2 concerning the submission filed in preparation for or during oral proceedings. In more detail, section E-VI, 2.2.1 clarifies the topic of new facts and evidence. It states that Rule 116(1) EPC, being an implementation of Art. 114(2) EPC as a further development on the existing jurisprudence regarding facts or evidence not filed in due time, makes it clear that the examining or opposition division has a discretion to disregard new facts or evidence for the reason that they have been filed after the date indicated in the summons under Rule 116 EPC unless they have to be admitted because the subject of the proceedings has changed.

Also, the Amendments filed in preparation for or during oral proceedings are commented in section E-VI, 2.2.2 with respect to Rule 116(2) EPC, followed by clarifying the principles relating to the exercise of discretion (section 2.2.3),the Right to be heard (2.2.4) and the cost in section 2.2.5.

In addition to that the Scope of application of Rule 134 EPC (extension of periods) in section E-VIII, 1.6.2.3 was specified and now expressly cites: The period for entry into the European phase under Rule 159(1) EPC; the opposition period under Art. 99(1) EPC or the due date for the renewal fees for a divisional application and the beginning of the four-month period under Rule 51(3) EPC (see A-IV, 1.4.3), among others.

Amendments Part F (European Patent Application)

F-IV, 4.3 addresses inconsistencies between the description and the claims. Since the 2021 update of the Guidelines brought more demanding requirements for conforming the description to the claims prior patent granting, extensive user feedback was considered in the 2022 update. As a result, the requirements to adapt the description in accordance with the claims were loosened now. For example, it is no longer necessary to remove an embodiment in the description which is no longer covered by the amended claims. As an alternative, only subject-matter that is inconsistent with the claims needs to be deleted from the description. In addition to that, for borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant.

Moreover, it is described in section F-IV, 4.7.1 how to interpret terms such as “about”, “approximately” or “substantially”, in order to articulate a clear description that is consistent with the claims.

In section F-V, 3.2.4, a new example is given describing the lack of unity in claims with multiple dependencies.

In chapter F-VI, which is addresses the topic of priority, section F-VI, 1.5 was updated by integrating the teaching of G 1/15 about partial priorities. “Partial priority” refers to a situation in which only a part of the subject-matter encompassed by a generic “OR” claim is entitled to the priority date of a previous application (https://www.epo.org/law-practice/legal-texts/official-journal/2017/09/a82.html). The rationale of decision G 1/15 also applies in the context of deciding whether an application from which priority is claimed is the first application within the meaning of Art. 87(1) EPC. Likewise, an example is given that applies the new case law and describes whether a document enjoys priority or not.

Amendments Part G (Patentability)

In section G-II, 3.3.2 the topic of claims directed to computer-implemented methods of simulating, designing and modelling was extensively updated since the decision G 1/19 plays a major role in view of the patentability of computer-implemented simulations (https://www.epo.org/law-practice/case-law-appeals/recent/g190001ex1.html).

Claims directed to methods of simulation, design or modelling typically comprise features which fall under the category of mathematical methods or of methods for performing mental acts. Hence, the claimed subject-matter as a whole may fall under the exclusions from patentability mentioned under Art. 52(2)(a)(c) and (3) EPC.

In the updated Guidelines, however, it is clarified that methods that are at least partially computer-implemented can lead to a claimed subject-matter which is as a whole not excluded from patentability anymore. The Guidelines here also go into more detail on the examples of simulations interacting with the external physical reality, purely numerical simulations, specific technical implementation of a numerical simulation and the intended technical use of the calculated numerical output data of a numerical simulation.

With respect to a design process, it is added that the specified principles apply equally if a computer-implemented simulation is claimed as part of a design process.

In Chapter G-VII dealing with the inventive step, section G-VII, 5.4 directed to problem-solution-approach was updated with respect to claims comprising technical and non-technical features.

It is legitimate to have a mix of technical and non-technical features appearing in a claim (mixed-type invention), as is often the case with computer-implemented inventions. In the new version of the Guidelines the application of the problem-solution approach to mixed-type inventions is outlined following the COMVIK approach.

Moreover, addressing the formulation of the objective technical problem for claims comprising technical and non-technical features, section G-VII, 5.4.1 provides practical advises to the users. Examples illustrating the application of the COMVIK approach in the field of artificial intelligence are given in section G-VII, 5.4.2.5.

Amendments Part H (Amendments and Corrections)

No significant changes were made to the updated version of the Guidelines.

Conclusion

In our opinion, the most relevant practical updates are:

  1. Computer-implemented simulation, designing or modelling are not inevitable excluded from patentability, G1/19, COMVIK – G-II, 3.3.2
  2. Description amendments are necessary (only) if the text is inconsistent with the claims – F-IV, 4.3
  3. Designation of the inventor may include the country and address of the applicant – A-III, 5.3
  4. Partial priority considerations and information, G1/15 – F-VI, 1.5
  5. Clarity of “about”, “approximately” or “substantially” – F-IV, 4.7.1
  6. Lack of unity example for claims with multiple dependencies – F-V, 3.2.4
  7. Extension of periods examples, Rule 134 EPC (automatic extension) – E-VIII, 1.6.2.3