EPO Updates the Guidelines for Examination
The European Patent Office (EPO) has published the updated Guidelines for Examination, which are effective as of 1st November 2016. The Guidelines for Examination provide EPO Examiners with information as to how they should examine patent applications in terms of compliance with formal requirements, as well as in relation to substantive matters such as patentability, novelty, inventive step and added subject matter. While the Guidelines are not a legally binding, they are a useful source for patent attorneys and patent applicants as they provide some insight into how the EPO approaches substantive examination.
The full list of the modifications to the previous Guidelines can be found here. We note some of the interesting modifications here:
1) Part B-II, 1.1 has been modified to clarify when a patent attorney may contact the Search Division of the EPO. Specifically, informal discussions with an EPO Examiner can only take place when the application has entered the examination process, and not when the application is still the responsibility of the Search Division.
This means that if the patent attorney/applicant thinks that the EPO has, perhaps, misunderstood the invention and therefore cited irrelevant prior art, they cannot discuss this with the Search Examiner. Instead, they may raise this issue with the Examiner when the application has moved to the Examination process.
2) Part B-XI, 3.2.2 has been modified to state that an Examiner should make positive statements on patentability when preparing a search opinion, if applicable. This is intended to help the applicant make a decision as to whether to continue further with the patent application.
Similarly, Part C-III, 4.1.2 has been modified to state that the first examination report should also contain positive statements on patentability where some or all of the claims meet the patentability requirements.
3) Part B-XI, 3.8 has been modified to state that Examiners may, during the search stage, suggest ways to overcome any objections raised by the Examiner and which satisfy the requirements of the EPC. The Examiners are therefore being encouraged to indicate possible amendments, particularly if there is a clear way to overcome the objections. This could be useful for applicants who are cost-sensitive.
A similar modification has been made to Part C-IV, 3 in relation to the substantive examination stage.
4) The addition of Part E-I, 2.4 in the Guidelines will be of interest to patent attorneys, since this new section confirms that the 10-day rule used to calculate the deadline for responding to communications sent by post also applies to communications received electronically from the EPO (e.g. via the EPO Mailbox).
5) New sections on claims related to computer-implemented inventions have been added in Part F-IV, 3.9 to 3.9.2. These sections state that computer-implemented inventions are to be divided into two types: (i) inventions in which all the method steps can be carried out by generic data processing means, and (ii) inventions in which at least one method step requires the use of specific data processing means or other technical devices as essential features.
For type (i), the EPO Guidelines state that “if the subject matter of the method claim is considered novel and inventive” then the subject matter of any other claims (e.g. corresponding apparatus claim or computer program claim) “will normally be novel and inventive as well”.
For type (ii), the EPO Guidelines state that in particular fields, such as medical devices, optics or electromechanics, method claims “frequently involve steps of manipulating or interacting with technical physical entities by using computer control”. If the invention involves an interaction between data processing steps and physical entities (such as sensors, actuators, etc.) then these physical entities must be recited in the independent claims if they are essential for carrying out the invention.
The EPO has also added in new sections on how to apply the problem-solution approach for assessing inventive step in relation to computer-implemented inventions. Specifically Part G-VII, 5.4.2 to 126.96.36.199 provides examples, based on case law, on how the inventiveness of claims relating to computer-implemented inventions, and which comprise technical and non-technical features, is assessed. This section is particularly relevant to any applicants working in the software/computer-implemented invention space.
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