The Guidelines for Examination in the European Patent Office is an important document for users of the European Patent System. The Guidelines are updated at regular intervals, typically annually. As part of the update cycle new Guidelines are pre-published in February prior to their entry into force in March. The EPO has just published an unedited version of the Guidelines which will enter into force on 1 March 2022:
Occasionally amendments to the Guidelines create rather a stir. This occurred with the last update which entered into force in March 2021 in relation to at least two passages. Interestingly (or possibly unsurprisingly), these two passages have been subject to amendment in the latest update.
The Guidelines currently in force include one passage (H-V 2.7), new at the time of their introduction a year ago, which states that when bringing the description into line with the claims, if the applicant does not amend the description as required, the examining division’s next action will be to issue a summons to oral proceedings (our emphasis has been added). This has been amended in the current draft Guidelines to clarify that under these circumstances the examining division’s next action may be to issue a summons to oral proceedings. In the interests of keeping calm, it is worth remembering that the Guidelines are only that – guidelines – and that oral proceedings are still dictated by Article 116 EPC. Article 116 EPC states that oral proceedings shall take place at the instance of the European Patent Office if it considers this to be expedient. This is a robust provision which has stood the test of time in this form for almost 50 years.
Judging solely by the extent to which section F-IV 4.3(iii) has been amended in the current draft version of the Guidelines , this section (heavily added to last year) generated even greater excitement amongst the user community. This section relates to the clarity and interpretation of the claims, and specifically to inconsistencies between the claims and the description. The intended aim of the guidance is clear: viz. to ensure that the description does not offer a vehicle for blurring (and possibly extending) the scope of protection of a granted patent. Whether this has been achieved in a manner which the user community finds acceptable remains to be seen. The user community largely exists to serve the interests of applicants, whereas the EPO has to keep the interests of third parties in mind. This divergence of interests can lead to differing opinions on what is correct practice. Ultimately however, it is the European Patent Convention which provides the law which defines practice. The speed of evolution of patent law is slower than that of the revision of the Guidelines. Any amendments to the Guidelines should be seen in this context.
Author: Douglas Purdie, European Patent Attorney