New Guidelines for Examination of the European Patent Office enter into force on 1 March 2023

The March 2023 edition of the Guidelines for the Examination in the European Patent Office entered into force on 1 March 2023. This new guideline provides instructions on the practice and procedure to be followed in the various aspects of the examination of European patent applications and patents in accordance with the European Patent Convention and its Implementing Regulations.

Amendments have been made throughout the Guidelines. In this regard, we have summarized the most important amendments as follows:

Amendments Parts A (Formalities Examination), Part B (Search), Part C (Substantive Examination), Part E (General Procedural Matters), Part F (The European Patent Application), Part G (Patentability) and Part H (Amendments and Corrections)

Updated or new sections concerning the correction of erroneously filed application documents or parts under amended Rule 56 and new Rule 56a EPC:

Previously, the EPC allowed only the adding of missing parts of the description and/or missing drawings under Rule 56 EPC. On 1 November 2022, new Rule 56a EPC has been inserted into the EPC, which allows the correction of erroneously filed application documents or parts thereof and therefore allows the EPO to fully apply the PCT provisions. Rule 56 EPC has also been amended accordingly. All relevant parts in the EPC Guidelines have been updated to include information about the applicability of new Rule 56a EPC.

A new section, Part A-II, 6 has been added to the guidelines concerning the correction of erroneously filed application documents or parts. Part A-II, 6.1 and 6.2 give guidance to applicants to correct erroneously filed application documents or parts with or without EPO’s invitation. Part A-II, 6.3 discloses the possibility of changing the filing date due to the correction of erroneously filed application documents or parts. Moreover, Part A-II, 6.4-6.6 have further explained the different conditions concerning the correction of erroneously filed application documents or parts.

Correspondingly, Part H-IV, 2 provides guidance concerning the allowability of amendments under Article 123(2) EPC, wherein Part H-IV-2.2.3 is concerning the erroneously filed application documents or parts under Rule 56a(2) and (4) EPC. It states that the correct application documents or part are considered to be part of the application documents originally filed.

Moreover, Part B (Search), Part C (Substantive Examination), Part E (General Procedural Matters), Part F (The European Patent Application) and Part G (Patentability) have also been updated according to the amended Rule 56 and new Rule 56a EPC.

Amendments Parts A (Formalities Examination), Part B (Search), Part C (Substantive Examination), Part D (Opposition and Limitation/Revocation Procedures), Part E (General Procedural Matters), Part F (The European Patent Application), Part H (Amendments and Corrections)

Updated sections reflecting the legal changes as decided by the Administrative Council CA/30/22 rev. 2 to support the digital transformation

To support the digital transformation in the EPO’s patent grant procedure, serval legal changes have been made last year, which are reflected in the new EPC Guidelines.

According to new Rule 49(2) EPC, the President of the European Patent Office shall determine the presentation requirements of documents making up the application, which provides for a flexible regulatory system that ensures rapid and easy adjustment of these provisions to developments in the EPO’s digital systems. So far, no amendments have been made to the presentation requirements of documents. Therefore, all relevant sections, such as Part A-II, 4.8 and 5.4, Part A-III, 3, Part A-VIII, 2, Part B-IV, 1.2, Part E-II, 8.7, Part F-II, 4.8, in the Guidelines reflect only the legal changes defined in new Rules 49(2) EPC.

Part B-X, 12 defines the transmittal of the search report and search opinion, which states that the EPO should forward the search report and the search opinion to the applicant and makes available copies of all cited documents to the applicant. In view of amended Rule 65 EPC (in force as of 1 February 2023), EPO shall make these documents available to applicants through new digital services and not only by transmission to the Mailbox or by post, as it was the case previously. These changes allow electronic access to all kinds of citation, including multimedia and internet citations.

Part E-II, 2 defines the notification by postal services and electronic means, it contains the changes that postal and electronic notification from EPO are deemed to occur on the day on the date of document, which will apply as of 1 November 2023. This change represents the cancellation of “10-day rule” and simplifies the calculation of EPO deadlines.

Amendments Parts A (Formalities Examination), Part E (General Procedural Matters), Part F (The European Patent Application)

Part A-IV, 5, Part E-IX, 2.4.2 and Part F-II, 6.2 Updated or new sections concerning sequence listings in view of the entry force of WIPO Standard 26

Starting from 1 July 2022 the sequence listing must be in compliance with the new in XML format complying with a new standard, WIPO Standard ST.26, for all European patent applications and international patent applications filed on or after that date.

Accordingly, Part A-IV, 5, which defines the general presentation of sequence listings in European patent application, was updated concerning this new standard. A new section, Part F-II, 6.2, further discloses details of requirements relating to sequence listings in European patent application.

Part E-IX, 2.4.2, which defines sequence listings for patent applications under the Patent Cooperation Treaty, was also adapted to the WIPO Standard ST.26.

Conclusions

In our opinion, the most relevant practical updates are:

  1. the correction of erroneously filed application documents or parts under Rule 56a EPC, throughout the EPC Guidelines
  2. the authority of the President of EPO to decide on the presentation requirements of European application and other documents, throughout the EPC Guidelines
  3. the entry into force of WIPO Standard 26 for sequence listings, Part A-IV, 5, Part F-II, 6.2 and Part E-IX, 2.4.2
  4. . electronically available for all documents cited in the search report and search opinion, Part B-X, 12
  5. the cancellation of 10-day rule, Part E-II, 2