Insights: Updates to the EPO Guidelines for Examination

The EPO have announced their upcoming amendments of the Guidelines for Examination which will enter into force on 1 March 2022. A number of notable amendments to the Guidelines are scheduled; we will follow with more detailed discussions regarding the changes to Description Amendments and Electronic Signatures of Assignments, whereas here we will look at some of the other significant updates with regard to Priority, the Designation of Inventor, the Claims Fee, Extension of Periods under Rule 134(1), Double Patenting, Selection Inventions, Unity, and Oral Proceedings.

Priority

In view of the decision of T844/18, Part A-II, 6.1 has been updated to clarify the EPO’s conventional practice regarding entitlement to claim priority from applications having multiple applicants. For a later application to validly claim priority from an earlier application that has joint applicants, either “all these applicants must be amongst the applicants of the later European patent application” or [those who are not applicants of the later application] “have transferred their rights in the priority application to the applicant of the later European patent application”. In accordance with the established guidelines, proof of the transfer may be filed later, but the transfer must have taken place before the filing date of the later European application. Equivalent updates and multiple examples have been included in the “Guidelines for Search and Examination at the EPO as PCT Authority” in Part A-VI, 1.6.

Part A-III, 6.7 has been updated in view of the agreement to terminate the existing Priority Document Exchange Agreements (PDX Agreements) in favour of the WIPO Digital Access Service (DAS) for the exchange of certified priority documents. Where the priority document is a Chinese, Korean or US document, and cannot or has not been requested to be retrieved via DAS, the EPO will only include free of charge a copy of said document on the file for European applications filed before 1 January 2022, or Euro-PCT applications entering the European regional phase before 1 January 2022, and for which the required priority document could not be included in the file by 30 June 2023.

Part A-III, 6.12 now includes China and Sweden in the list of states in which the priority filing of a European patent application is made for which the EPO includes a copy of the search results referred to in Rule 141(1), thus exempting the applicant from filing said copy.

Part F-VI, 1.5 has been updated to provide much greater guidance for “partial priority” in view of the decision in G1/15. Partial priority arises where only a part of the subject-matter that is encompassed by a generic claim of a later European patent application is entitled to claim priority. If the part of the subject-matter is first disclosed in the priority document and is encompassed by the generic claim of the later application, the claim is de facto conceptually divided into two parts (a generic “OR” claim), the first part corresponding to that disclosed in the priority document (and enjoying the right to priority), the second part being the remaining part of the generic claim (and not enjoying the right to priority).

By way of example, a priority document P1 may first disclose and claim a specific catalyst comprising copper, and disclose and claim a specific method of manufacturing a catalyst comprising a step of heating at 60°C to 80°C. A later European patent application EP1 claiming priority from P1 discloses and claims a catalyst comprising a metal and a method comprising heating at 60°C to 100°C.

For the product, even though EP1 does not expressly mention copper in the claim, it is conceptually divided into two parts, the first part where the metal is copper validly claims priority from P1, whereas the remaining subject-matter (i.e. wherein the metal is not copper) does not. Equally, for the method, even though the end point of 80°C may not be disclosed in the later application, the range of 60°C to 80°C enjoys priority, whilst the remaining range of greater than 80°C to 100°C does not.

It is noted that this rationale applies equally in the context of deciding whether an application from which priority is claimed is the “first application” within the meaning of Art. 87(1). Therefore, much in the same way the validity of a priority claim of EP1 from P1 may be assessed, so too can it be assessed whether P1 gives rise to a priority right in view of an earlier application filed by the same applicant which partially discloses the subject-matter of P1.

Whilst the Guidelines take the above situation into account, the other direction of further applications claiming priority from EP1 is not considered. That is the second part of a generic claim, being the first disclosure of such subject-matter, should give rise to a right to priority itself (provided the second part is directly and unambiguously derivable from EP1 and not merely conceptually disclosed). However, such a scenario has yet to be considered by the EPO in view of the requirements of Art. 4C of the Paris Convention for the “first application”.

Designation of Inventor

Part A-III, 5.3 has been amended following a change to Rule 19 to clarify that the designation of inventor must contain the family name and given names (as previously required) and country and place of residence (in place of the previous requirement of a full address). The place of residence is the city or municipality, i.e. not the province or region, where the inventor permanently resides. However, the country and place of residence may also be that of the applicant (e.g. a company).

Claims Fee

A seemingly minor but significant clarification has been provided in Part A-III, 9 to address the previous uncertainty with regard to claims “deemed abandoned” for failure to pay the claims fee under Rule 162(4). The risk arose as to whether such abandonment could be interpreted as abandonment with a substantive effect, thereby impeding the valid filing of a divisional application for that subject-matter as discussed in Part C-IX, 1.3.

We are pleased that Part A-III, 9 has been revised to make it explicit that applicants have the possibility of pursuing, in a divisional application, a claim that is deemed abandoned due to non-payment of the claims fee in the parent, thereby removing this legal uncertainty.

Extension of Periods under Rule 134(1)

Rule 134(1) specifies that if a period expires on a day on which one of the offices of the EPO is closed, the period shall extend to the first day thereafter all offices are open. Part E-VIII, 1.6.2.3 has been revised to include, as periods to which Rule 134 applies, the opposition period under Art. 99(1), the period for entry into the European phase under Rule 159(1) and to explicitly refer to the grace period to pay renewal fees under Rule 51(2) and the periods under Rule 51(3) and (4). Periods to which Rule 134 does not apply have also been revised to include the beginning of the grace period under Rule 51(2) (unless the due date for the renewal fee is deferred to the expiry of a period – such as for a Euro-PCT under Rule 159(1)(g)), the due date for renewal fees for a divisional application and the beginning of the four-month period of Rule 51(3) (i.e. the filing date of the divisional), as well as the date of the start of the search (which is relevant for the entitlement to a refund of the search fee).

Double Patenting

Part G-IV, 5.4 has been revised in view of G4/19 (which is discussed in greater detail here). The Guidelines have been amended on the basis that the prohibition on double patenting is applicable under Art. 125 and that it is a principle of procedural law generally recognised in the contracting states that two patents cannot be granted to the same applicant for the same subject-matter.

Selection Inventions

Part G-VI, 8(iii) has been updated to discuss the more recent decision of T1571/15 in place of T26/85 regarding the assessment of novelty in the case of overlapping ranges. In this case regarding an alloy defined by its composition, it was found that even though the overlap fell in the centre region of the ranges disclosed in the prior art, the skilled person would not seriously contemplate working in the area of overlap because said prior art contained a pointer to another region. Specifically, the prior art (D1) disclosed a broad composition, a narrower preferred composition, and an exemplary composition falling within the range of the narrower composition. Amongst the selection of ranges for the other alloying elements (i.e. the “two lists principle” in Part G-VI, 8(i)), the Board held that, in the absence of a pointer to work outside the narrower composition, the titanium (Ti) content of 4% to 5% would not have been seriously contemplated by a skilled person from the broad composition having a Ti content of 3.0% to 5.0% in view of the narrower preferred range of 3.35% to 3.65% and the example at 3.37%.

This seems to be consistent with T261/15 in respect of sub ranges (Part G-VI, 8(ii)) wherein the Board held the view that “although explicitly disclosed…the person skilled in the art would not, in the absence of further teaching in this direction, necessarily contemplate working in the region of the end-points of the prior art range, which are normally not representative of the gist of the prior art teaching”.

Unity and Searched/Unsearched Inventions

Last year, the Guidelines of Unity received substantive updates (which are discussed in greater detail here). Following on from this, Parts F-V, 3 and 3.2 have been revised to clarify the assessment of unity providing a further example.

Part H-II, 6.1 has been amended to clarify that no objection under Rule 137(5) will be raised if the applicant limits a searched claim by introducing subject matter from the description, unless such subject matter was explicitly declared as not searched. However, this section also notes that the amendment will be assessed for allowability under Rule 137(5) as will whether the limitation of the search, or declaration of no search was justified. If it was not, an additional search may be necessary (see also Part C-IV, 7.2).

Oral Proceedings

E-III, 7.1.1 has been revised to specify that a serious reason to request a change of the date for oral proceedings may be if the same party is summoned to oral proceedings before the EPO for the two preceding or two following days where the other oral proceedings are to take place “on the premises of the EPO” at a geographically distant location. In respect of oral proceedings taking place on the same date, or the preceding or following day, the Guidelines still mention other proceedings before a national court as an instance of a serious reason.

Part E-III, 8.6 relates to facts, evidence or amendments filed at a late stage in proceedings and the examples have been moved to Part E-VI, 2 which now includes a number of examples of when late-filed submissions will and will not be admitted together with guidance on the right to be heard in respect of late-filed submissions and the impact on costs.

If you wish to know more about these updates or would like further advice, please contact your usual Boult Wade Tennant LLP advisor.