The Guidelines for Examination in the European Patent Office (EPO) provide an insight into the procedures followed by the EPO. They can be a valuable tool to patent attorneys allowing us to understand what objections might be raised and what actions we can take to avoid them. Every year the EPO updates the Guidelines to not only reflect changes in the law, including important case law decisions, but also changes to the EPO’s internal practice. The latest revisions have now been announced by the EPO, and come into effect on 1 November 2018
This year’s revisions will affect a number of sections of the Guidelines, with substantive revisions being made in the sections relating to mathematical methods, with new sections relating to Artificial Intelligence (AI) and simulation, design or modelling being added. A more detailed discussion of the patentability of AI inventions in light of these changes is provided in an article written by my colleague Richard Kennedy on page 1. Similarly, substantive amendments have been made to the sections concerning programs for computers, with new sections added on information modelling, activity of programming and programming languages and data retrieval formats and structures. It is hoped that these changes to the Guidelines will provide clarity on when a claimed invention may be viewed as technical.
Four further important changes to the Guidelines are discussed below.
Article 82 EPC states that a "European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept". If an Examiner believes that the claims of an application define a group of inventions which are not linked to form a single general inventive concept then a lack of unity objection will be raised.
The revised Guidelines provide a new two part test to determine whether a group of inventions is unified. The test comprises first determining what subject matter is common for each of the claimed inventions. Secondly, it is necessary to determine whether or not any of the identified common features are "special", i.e. whether any of the common features define a contribution over the prior art. If both criteria are met then the claims will be viewed as unified.
Using the problem-solution approach
When assessing inventive step, the EPO applies the problem-solution approach. The first step in this approach comprises identifying the closest prior art document. Due to a recent decision of the Technical Boards of Appeal, T320/15, the Guidelines have been updated to confirm that it is only permissible to identify two or more prior art documents as the closest prior art if it can be shown that all of the documents are equally valid springboards.
This clarification should prevent opponents in opposition proceedings from running multiple different inventive step arguments in the hope that one has a chance of succeeding.
Claims to a plant or animal
Essentially biological processes for the production of plant and animals, and the plants and animals produced using these processes are not patentable. Conversely, plants and animals obtained using a technical process, such as directed mutagenesis, may be patented. The updated Guidelines confirm that if a technical feature of a claimed plant or animal might be the result of either a technical intervention or an essentially biological process, a disclaimer is required to disclaim the non-patentable subject matter.
In view of this change, the Guidelines provide the following example which is not excluded from patentability due to the inclusion of a proviso:
"A cultivated pepper plant expressing a mutated AHAS enzyme with the proviso that the plant is not exclusively obtained by means of an essentially biological process."
It is possible to add a disclaimer to a claim, even if it is not explicitly disclosed in the application as filed if the disclaimer:
- restores novelty over a disclosure which is only citeable for the purposes of establishing novelty;
- restores novelty over an accidental anticipation; or
- removes subject matter which is excluded from patentability, such as in the example provided above.
In addition to these criteria, the amended Guidelines confirm that the disclaimer must not provide a technical contribution to the subject matter disclosed in the application as filed. Furthermore, it must not be or become relevant for the assessment of inventive step or for the question of sufficiency of disclosure.