24 February 2023
The European Patent Office (EPO) has published a draft version of the amended Guidelines for Examination which will enter into force on 1 March 2023. A summary of the main changes is included below.
With the Unified Patent Court (UPC) sunrise period also due to begin on 1 March 2023, the Guidelines have been amended to extend existing provisions relating to national proceedings to include proceedings before the UPC. For example, where an infringement action in respect of a European patent is pending before a national court of a contracting state or the UPC, a party to the opposition proceedings may request accelerated processing (E-VIII, 5).
In addition, Guidelines C-IV, 7.2 introduce guidance on national prior rights in view of their importance for applicants in proceedings before the UPC. This section reflects the recently introduced practice under which the examiner expands the top-up search scope at the grant stage to include national applications and patents of the contracting states in so far as they are present in the EPO’s databases. The division informs the applicant about the outcome of the top-up search for national prior rights and any documents that are considered prima facie relevant for the application are communicated to the applicant.
In accordance with the OJ EPO Decision 2022, A103, the wording of the Guidelines has been updated to recite that oral proceedings are held by videoconference, or, in exceptional circumstances, where there are serious reasons against holding the oral proceedings by videoconference, they may be held on the premises of the EPO (E-III, 1.2).
The guidance has also been updated to reflect the procedure for when technical problems occur such that the oral proceedings held by videoconference cannot be conducted openly and fairly, for example due to a total or partial breakdown in communication.
If the sound or image transmission of any of the participants taking part in the oral proceedings is lost, the chair will stop the proceedings until the transmission is re-established. If a participant is disconnected for more than a few minutes, a member of the division will contact that party to see if they are having technical problems. Any relevant information will be shared with all parties. If a party reconnects after a temporary connection failure, the chair will make sure that no information has been missed. Some arguments might have to be repeated.
If, despite all efforts of the participants, technical problems prevent the oral proceedings by videoconference from being conducted in accordance with the parties’ rights under Art. 113 and Art. 116, the videoconference will be terminated. A new summons to oral proceedings will be issued. As a rule, new oral proceedings will be held by videoconference unless there are serious reasons for not doing so (E-III, 8.2.3).
This may provide peace of mind to all parties involved in videoconference oral proceedings.
Part C-III, 5 of the Guidelines has also been updated to include a list of exceptional cases whereby the examining division may exceptionally issue a summons to oral proceedings as the first action in examination of a divisional application. Such exceptional circumstances include if:
Section A-II, 6 of the new Guidelines has been introduced to reflect new Rule 56(a) of the Implementing Regulations which entered into force on 1 November 2022 (OJ EPO 2022, A3). This new provision relates to procedures by which an applicant can correct “erroneously filed” parts of a European patent application. This brings the European Patent Court (EPC) into conformity with PCT Rule 20.5bis which also allows correction of erroneously filed elements of an international application. Previously, the EPC only provided provisions by which ‘missing parts’ could be filed (Rule 56).
The application is examined on filing to check that it is entitled to a date of filing. If, during this check, the EPO establishes that the description, claims or drawings (or parts of them) appear to have been erroneously filed, it will invite the applicant to file the correct documents within a time limit of two months of a communication under Rules 56(1) and 56a(1).
Alternatively, if, within two months of the original date of filing, applicants notice that they filed erroneous application documents or parts, they should, of their own motion, file correct application documents or parts as soon as possible under Rule 56a(3). The guidelines set out that whether documents were erroneously filed depends only on the applicant’s statement as to what was intended. No further evidence is required by the EPO.
As with missing parts, if, after the filing date, the applicant corrects erroneously filed application documents, then the date of filing does not change, provided that all of the following criteria are satisfied:
It is also worth noting that erroneously filed application documents remain in the file, even if they are considered not to form part of the application as filed. As such, following publication of the application, the erroneous application documents or parts are open to file inspection.
Erroneously filed sequence listings may also be corrected under Rule 56a (A-IV, 5.2).
The updated Guidelines also confirm the EPO’s position that an ST.26 sequence listing must be filed for all divisional applications, regardless of whether the parent application was filed prior to ST.26 coming into force.
The Guidelines state that, since the content of the disclosure of the invention is the responsibility of the applicants, any sequence listing which is to form part of the description must be filed by the applicant. The sequence listing of the earlier application is, thus, not automatically added to the dossier of the divisional application if:
This comes despite concerns that the requirement for all divisional sequence listings to be in ST.26 format places an unnecessary burden on users, as well as concerns that the requirement may force applicants to add matter in cases where the ST.25 sequence listing contained less information than the ST.26 sequence listing.
Montenegro has also been added to the list of EPC contracting states following the effect of its ratification on 1 October 2022 (General, 6). As such, Bosnia and Herzegovina is now the only remaining extension state (A-III, 12).
The EPO has invited comments on the updated Guidelines by way of a consultation running until 4 April 2023. More information on the consultation can be found here.
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