The European Patent Office (EPO) has published a draft version of its new Guidelines for Examination, which will enter into force on 1 March 2022. Martin Kohrs examines the proposed changes.
The new version of the EPO Guidelines for Examination is the result of an annual revision cycle and incorporates a proportion (35%) of the comments received during the public consultation in spring 2021, which now form part of the revision cycle.
All chapters of the Guidelines contain amendments, but important changes include:
- Inconsistency between claims and description (F-IV 4.3)
The 2021 version of the Guidelines had imposed a strict approach to this requirement, which is often difficult and risky to implement, given that the descriptions do not lend themselves well to this exercise. (For background on this, please see ‘New EPO guidelines: Bringing descriptions in line with amended claims’).
While the strict requirement remains in the new version, the new Guidelines attempt to give more precise definitions and examples of what is and is not seen as a mismatch. In particular, it was initially considered inconsistent if the subject matter of the description and/or drawings was not covered by the claims. This very broad definition has now been narrowed and only covers cases where there is an actual mismatch between the description and the subject matter for which protection is sought.
However, the practical impact of this amendment seems limited. When requiring an amendment to the description, the relevant division must now provide 'examples of inconsistent embodiments' and brief justifications. Similarly, the division must provide examples if features of the independent claims are presented as optional in the description. It should be noted, however, that the division is not required to provide an exhaustive list of inconsistencies, only 'examples'.
The amendments also make clear that if there is any doubt as to whether or not an inconsistency exists, the benefit of the doubt lies with the applicant.
- Assignment of the right of priority in case of multiple applicants (A-III 6.1)
It is well known that where priority is claimed by an applicant for a European patent (EP) who is not the applicant for the priority application, the right of priority must have been validly assigned before the filing of the European application. Non-compliance risks losing the benefit of the right of priority.
Decision T844/18 had clarified that in the case of multiple applicants for the priority application, all applicants must have assigned the right of priority. This has now been incorporated into the Guidelines.
- Computer-implemented inventions: Simulations, design and modelling (G-II 3.3.2)
This section has been extensively rewritten, in particular on the basis of decision G1/19, published in March 2021, which dealt with the assessment of the inventive step of computer-implemented simulations. (For additional detail, see ‘Patenting computer-implemented simulations’). In short:
- The general rules for assessing the inventive step of a computer-implemented invention remain valid for simulations.
- The technical or non-technical nature of the simulated system is not in itself decisive in the analysis (for the record, one of the examples given in G1/19 concerned the control of shutters based on the simulation of a meteorological system, a system seen as 'non-technical').
- The digital data produced may have a 'potential technical effect' that would occur if the data were used for technical purposes.
Other changes include more detailed examples relating to partial priorities (F-VI 1.5), and the fact that the address of the inventor may be limited to his or her country and place of residence or that of the applicant (A-III 5.3).
Contact us for additional advice on filing, prosecution and validation strategies for European patents in light of the new Guidelines.
Martin Kohrs is a French & European Patent Attorney based at Novagraaf in Paris.