February 6, 2022
Having reviewed the final 2022 version which is now in force, there are no substantive changes compared to the preview, which the article is based on. With that in mind, the below summary still stands correct and those changes are still relevant.
The European Patent Office (EPO) has published a preview of its revised Guidelines for 2022, which are due to come into force as of 1 March 2022. While a high-level summary of the major changes has been provided by the EPO, here we discuss some of the changes we consider to be most relevant.
One of the major changes last year was directed to stricter guidance for amending the description. Although the EPO indicated the updates were made to reflect the current process, in practice, much more time and attention is now required to comply with the updated Guidelines.
The EPO appears to have taken on board comments from users as part of the consultation process, at least to some extent, and F-IV, 4.3 has been further revised – although perhaps to not the extent that some may have wished for. For example, instead of requiring the removal (or prominent marking as not being claimed) of embodiments no longer encompassed by the amended claims, it is only subject-matter that is inconsistent with the claims that needs to be deleted (or marked as not falling within subject-matter for which protection is sought).
If an embodiment comprises further features which are not claimed as dependent claims, this is not an inconsistency – as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim.
Examples of inconsistencies are also provided, such as the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim, or if the embodiment comprises a feature which is demonstrably incompatible with an independent claim. Claim-like clauses still ought to be deleted.
The revised Guidelines emphasise further that terms such as “disclosure”, “example”, “aspect” or similar are not sufficient replacements for “embodiment” or “invention” in relation to inconsistencies. However, the revised Guidelines indicate benefit of the doubt ought to be given to applicants where it is unclear if an embodiment is consistent with the claims.
Of course, the revisions were likely finalised before the recent decision in T 1989/18 from December 2021, in which the Board held there is no legal basis in the EPC or elsewhere that requires a description must be amended in line with the claims. The summary of the changes to the Guidelines includes a footnote clearly stating that amendments introduced are intended to remove potential misinterpretation of EPO practice, and that the amendments have been extensively discussed with external and internal users to clarify how the established practice is applied. It seems likely that this will be an ongoing subject, and it remains to be seen whether the decision in T 1989/18 will have an impact on EPO practice.
A-III, 6.1 provides clarification relating to transfer of priority rights citing T 844/18: where the previous application was filed by joint applicants, all these applicants must be amongst the applicants of the later European patent application or have transferred their rights in the priority application to the applicant of the later European patent application.
A-III, 6.12 is amended to reflect that the EPO now also performs searches for the national offices of Albania and Croatia, and that the EPO now includes in the file of a European patent application a copy of the search results referred to in Rule 141(1), thus exempting the applicant from filing said copy, where the priority of a first filing is made in People’s Republic of China and Sweden.
Finally, F-VI, 1.5 has been revised with further guidance on determining partial priority when only a part of the subject-matter encompassed by a generic “OR” claim is entitled to the priority date of a previous application, in line with G1/15. The revised Guidelines emphasise that, where a part of an application (e.g. EP-Y) already appears in an earlier application (e.g. EP-X), a later application (e.g. EP-Z) cannot validly claim priority from that part (e.g. in EP-Y).
Of course, this year (as reported here) we have recently had the referrals of G1/22 and G2/22 relating to formal entitlement to priority; it is expected that a decision on this will not be issued in time for the next revision cycle of the Guidelines (coming into effect in March 2023), but we will of course update you as soon as there are developments in this matter.
A-IV, 4.1 now emphasises that for Euro-PCT applications, the document satisfying the EPO that the depositor of a biological material has authorised the applicant to refer to the deposited biological material in the application, and has given unreserved and irrevocable consent to the deposited material being made available to the public, must be provided to the International Bureau before completion of the technical preparations for international publication.
Due to the upcoming implementation of the new WIPO Standard ST.26 for sequence listings that will apply to applications filed on and after 1 July 2022, several sections – in particular A-IV, 5 – have been amended. The changes to the new standard compared to ST.25 are quite extensive and deserve their own separate due care and attention. The revised Guidelines note that detailed information on the changes in practice required by this new standard will be published in the Official Journal of the EPO well in advance.
Relatedly, A-IV, 5.1 provides further clarification relating to the filing of a sequence listing as a missing part of the description under vary rare conditions, and the situations in which this may occur or alternatively in which the applicant will be invited to file a standard-compliant sequence listing. We suggest always referring to SEQ ID NOs, so that if the corresponding sequences cannot be identified in the filed description documents, it is obvious that such sequences are missing.
We also note that there are new examples of matter contrary to morality (see G-II, 4.1) and genetically modified animals as patentable biotechnological inventions (see G-II, 5.2). Finally, further to the extensive edits regarding antibodies in 2021, the description of antibodies has been slightly revised in G-II, 5.6, which now states that instead of requiring all six CDRs to be defined, it is “the number of CDRs required for binding” which ought to be defined.
Guidance under G-II, 3.3 (Mathematical methods) and 3.3.2 (Simulation, design or modelling) has been updated to reflect G1/19, which confirmed the COMVIK approach for computer-implemented simulations. Further examples have been added, and simulations that are abstract are differentiated from those simulations that interact with physical reality. For the former, the simulation must output data with a potential technical effect, the effect being produced when the data is used in a technical manner. For the latter, a technical contribution can be made regardless the use of results coming from the simulation.
G-II, 3.5.2 (Schemes, rules and methods for playing games) and 3.6.3 (Data retrieval, formats and structures) have also been revised with new examples of technical effects, and G-VII, 5 (Problem-solution approach) also features additional references to the COMVIK approach and G1/19 for mixed-type inventions, including new examples of applying the problem-solution approach to such claims.
Provisions for checking the identity and authorisations of participants at oral proceedings have been revised, under E-III, 8.3.1, particularly in relation to oral proceedings held by videoconference. Copies of identity documents for parties or their representatives can be filed via EPO online filing options no later than two days prior to the oral proceedings or, at the beginning of the oral proceedings, via email to the address provided to the parties.
The identification must visibly show the full name and picture of the person concerned, but these documents are not made part of the public file. Accompanying persons can have their identity confirmed by the relevant representative.
A-III, 5.3 has been revised to reflect Amended Rule 19(1) EPC (as of April 2021): it is now clearly specified that the country and place of residence may also be that of the applicant (instead of the inventor), in line with commonly accepted practice.
Note that the country and place of residence must be specified, wherein the place of residence is the city or municipality, i.e. not the province or region, where the inventor or applicant permanently resides and should preferably include the postal code.
The revised section on the scope of application of Rule 134 (E-VIII, 18.104.22.168), i.e. the extension of periods due to which at least one EPO filing office not being open for receipt of document, now specifically lists some additional periods. These include the opposition period under Article 99(1), the period for entry into the European phase under Rule 159(1), the expiry of the period to pay renewal fees with an additional fee under Rule 51(2), the expiry of the periods under Rule 51(3) and Rule 51(4), the due date for the renewal fees for a divisional application and the beginning of the four-month period under Rule 51(3) and the date of the start of the search.
The Guidelines for Search and Examination at the EPO as PCT authority have also been revised, with the biggest changes in part A.
In particular, A-VI, 6 contains a new section (1.6) on the applicant’s entitlement to claim priority, similar to the changes in the main EPO Guidelines, A-III. Again, where the previous application was filed by joint applicants, all these applicants must be amongst the applicants of the later patent application or have transferred their rights in the priority application to the applicant of the later patent application.
In addition, A-VI, 1.5 now clarifies that if no request for restoration of priority has been filed by the applicant in the procedure before the EPO as RO (if the request has been rejected), the applicant may file a (new) request in the national phase (i.e. in procedures before the EPO as designated Office or any other designated Office).
A new chapter relating to languages has also been added as A-VII, which provides more detailed guidance on admissible languages on filing, international applications filed in multiple language and languages of proceedings and written submissions.
Furthermore, the revised EPO-PCT Guidelines note that the “record copy” transmitted to the IB is considered a true copy (authentic text) of the international application for the purposes of PCT procedures. If a pre-converted document has also been submitted with the international application, it can be used as a fallback in the event of conversion errors.
It is important to be aware of the revisions that will be applicable from 1 March 2022, in particular the clarifications relating to priority, biotechnology and computer-implemented inventions, and for another year running, amending the description in line with the claims.
The above is not intended to provide legal advice: if you have any questions about how these changes may affect your applications or patents, please get in touch.
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