An updated version of the Guidelines for Examination at the EPO is due to come into force on 1 March 2021. The updates are intended to reflect recent changes to the EPO’s practice. This encompasses both procedural changes, as well as developments in technology.
Traditionally the updated Guidelines were published annually on 1 November, with an advance “preview” version published on the EPO website at the beginning of October. In 2020, however, the EPO sought to restructure the revision cycle of the Guidelines to try and provide greater user involvement.
As a result, for the first time, there was public user consultation on the Guidelines. In particular, experts in the fields of computer implemented inventions and biotechnology were asked to comment. The final draft is prepared based on the result of this consultation and is available on the EPO website. The final version will not be confirmed until publication in March 2021. However, a number of interesting changes are already apparent from the online draft. Selected examples are discussed below.
A number of updates focus on the area of oral proceedings (GL E-III). As the global pandemic put a halt to travel, it is not surprising that procedures have required substantial adaptation to reflect the rapid move to oral proceedings via video conference. These changes began in March 2020 and are now reflected in the updates.
In particular, the Guidelines now set out the complete turnabout in practice that was initiated in March 2020, namely that oral proceedings before examining divisions are to be held by videoconference, unless there are serious reasons against it. In this case, it is necessary to file a request that oral proceedings before the examining division be held by way of exception on the premises of the EPO.
The Guidelines also state that oral proceedings by videoconference are equivalent to oral proceedings held on the premises of the EPO. However, it is now important for the EPO to establish at the end of the proceedings that no technical problems have prevented the oral proceedings from being conducted. This is to ensure that the applicant’s right to be heard and right to oral proceedings has not been contravened.
Various updates have been introduced to confirm and clarify the procedural aspects of holding the oral proceedings via video conference, which came in to practice in March 2020. These include updated statements about connecting from different locations, failures to connect, equipment and technology, checking identification and filing written submissions. In particular, for written submissions, documents should be filed by email with a signature applied to the attached document or to the text of the accompanying email, where appropriate. The updates also state that it is not necessary to file paper documents to confirm documents filed by email.
In addition to oral proceedings, extensive updates on informal consultations with examiners have also been introduced (GL C-VIII). Although consultations have been possible previously, the Guidelines now provide more detailed information regarding those instances where personal consultation, by telephone or interview, can be helpful in advancing prosecution. The Guidelines set out that consultation may take place at the initiative of either the applicant or the examiner or formalities officer, and that it should preferably be held by videoconference. It is stated that consultations should generally be granted, but ultimately it is at the discretion of the examiner or formalities officer.
Typical situations for consultation are now set out and may include discussion of procedural issues, an error in the communication or the applicant’s reply, and clarification of certain points in dispute or minor issues. The requirements of the minutes have also been updated in detail. For a consultation, an interview or telephone conversation, these are to list the participants, summarise the main results and state any oral requests.
Amendments to the Description
The change in the EPO’s approach to bringing the description into conformity with the claims has been widely noted in recent months. It is known that clarity objections can arise where the description discloses as “embodiments”, implementations that do not fall within the scope of the claims. As a result, the Guidelines require that the description must be adapted to the claims in order to avoid inconsistencies between the two.
The new Guidelines explicitly state that “embodiments in the description which are no longer covered by the independent claims must be deleted…unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims”.
When making these adaptations, the updated Guidelines make clear that is not sufficient to use generic statements such as “embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention”, without indicating which parts of the description are no longer covered. Instead, those embodiments must be marked using phrases such as, “embodiment not covered by the claimed invention”. Similarly, merely changing the wording “invention” to “disclosure” and/or the wording “embodiment” to “example”, “aspect” or similar, is not sufficient to clearly state that that part of the description does not fall under the scope of the claimed invention (GL F-IV, 4.3, 4.4).
The updates confirm a more rigorous approach to description amendments at the EPO. Traditionally, patent attorneys have been reticent to make extensive amendments to the description in the absence of any perceived benefit. It will be interesting to see the consistency and extent to which examiners enforce these amendments going forward.
Extensive amendments have also been made to those sections dealing with the assessment of unity, in order to align with the practice of using “a minimum reasoning” when raising a non-unity objection (GL F-V). New sections set out the Examining Division’s approach to the assessment of unity, as well as the minimum requirements for concluding a lack of unity.
In particular, the Guidelines set out that when raising a non-unity objection, the division must back it up with a minimum reasoning outlining: i) the common matter, if any, between the groups of inventions; ii) the reasons why this common matter cannot provide a single general inventive concept based on the same or corresponding special technical features; iii) the reasons why there is no technical relationship between the remaining technical features of the different groups of claims; and iv) a concluding statement that, because neither the same nor corresponding special technical features are present in the claims, there is no single general inventive concept and the requirements for unity of invention are not met.
It will be interesting to see whether the detail provided in these sections makes it easier to establish errors in the examiner’s analysis or whether unity objections will become more frequent as a result of these changes.
Computer Implemented Inventions
Notably, the Guidelines now include an Index for computer implemented inventions (CII). Here, a CII is defined as one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realised wholly or partly by means of a computer program. The Index is not a separate publication for CII. Rather, it provides a collection of hyperlinks which facilitate access to the sections of the Guidelines that are useful for the search and examination of CII.
The Index highlights updates in the Guidelines relating to ‘Data retrieval, formats and structures’ (GL G-II, 3.6.3), as well as the inclusion of a new section on ‘Database management systems and information retrieval’ (GL-II, 3.6.4).
The updated section clarifies that a data structure or format contributes to the technical character of the invention if it produces a technical effect. This may happen if it has a technical function in a technical system, such as controlling the operation of the device processing the data. Conversely, the data structure of a computer program that merely aims at facilitating the task of the programmer, is not a technical effect serving a technical function.
The new section details that database management systems are technical systems implemented on computers to perform technical tasks. As such, a method performed in a database management system is not excluded from patentability. In addition, features specifying the internal functioning of a database management system that are based on technical considerations can contribute to the technical character of the invention. These features are therefore taken into account for the assessment of inventive step.
Importantly, however, not all features implemented in a database management system necessarily make a technical contribution by virtue of this fact alone. For example, a feature of a database management system for accounting costs related to the use of the system by different users may be regarded as not making a technical contribution. Thus, the patentability of these systems still depends on the specific elements and purpose of the invention.
Biotechnology and Chemistry specific updates
Here we consider the updates that are particularly relevant from a biotechnology and chemistry perspective.
Starting with Part A (Guidelines for Formalities Examination), a new section A-IV, 4.4 has been included to clarify the rules relating to requests for samples of biological material, and details the procedure of submitting such requests.
Part F (The European Patent Application) has seen updates to section F-IV, 4.24, which details the interpretation of amino or nucleic acid sequence identity. Amino acid sequences can be defined by a percentage of similarity. As opposed to sequence identity, which refers to the number of exact matches between the sequences, sequence similarity uses a similarity-scoring matrix to take into account conservative substitutions of amino acid residues having similar physicochemical properties. The broadest interpretation will be applied using any reasonable algorithm, calculation method or similarity-scoring matrix known at the relevant filing date, if the method for determining the percentage of identity or similarity is not defined.
Essentially biological processes
Following the controversial decision G3/19, there have been several updates on the patentability of products plants/animals and plant/animal parts exclusively obtained by non-technical, i.e. essentially biological, processes. G3/19 is a referral made to the Enlarged Board of Appeal (EBA) following the decision of T1063/18, concerning the patentability of inventions relating to plants and animals and the interpretation of Article 53(b) EPC in combination with Rule 28(2) EPC. More information may be found here.
As a result, there are several additional comments relating to Rule 28(2), pertaining to the exclusion of plants and animals exclusively obtained by essentially biological processes. Comments have been added to clarify the rule’s applicability and to add clarity, for example sections F-IV, 4.12, F-IV, 4.5.2 and G-II, 5.2 to 5.5. It is noted that this exclusion does not apply to patents granted before 1 July 2017 or to pending patent applications with a filing date and/or a priority date before 1 July 2017 (see G3/19, XXIX).
A new section of the Guidelines relates to antibodies (G-II, 5.6). The section also reflects developments in antibody technology, for example heavy-chain-only antibodies. There are updates to the definitions of antibodies, claim wording and the patentability of such claims. In addition, the inventive step requirement for antibodies has been clarified and guidance is provided for specific technical effects and examples.
There are multiple other updates to Part G with respect to biotechnology and chemistry. For example, section G-II, 5.3 has been amended to detail EPO practice in relation to pluripotent stem cells and culture media, supports and apparatuses suitable for use with human embryonic cells. In addition, a new section notes that human pluripotent cells, such as human embryonic stem cells, cannot be regarded as excluded from patentability under Art. 53(a) and Rule 28(1)(c), if the application has an effective date on or after 5 June 2003. In addition, the qualification for a product as a “substance or composition” in the sense of Art. 54(5) has been updated to reflect decisions G5/83 and T1758/15 in section G-VI, 7.1.1.