European Patent Attorney Benedetta Soranzo highlights the most important changes in the 2023 version of the Guidelines for Examination of the European Patent Office.

On 1 March 2023, the annual updated version of the Guidelines for Examination of the European Patent Office (hereinafter the EPO) came into force; the updates reflect modifications in the EPO’s practice.

Changes in the Guidelines mainly concern the following topics.

Erroneous documents or parts

The latest version of the EPO Guidelines for Examination (hereinafter the Guidelines) reflects the introduction of Rule 56a about erroneous parts (OJ EPO 2022, A3). With respect to the Implementing Regulations of the European Patent Convention (hereinafter EPC), the Guidelines add that whether parts or documents making up an application are considered “erroneously filed” depends on the applicant’s own statement on what was intended, and that no further evidence is required by the EPO (GL, A-II, 6.2).

Moreover, the Guidelines clarify that erroneously filed application documents remain in the file, even if they are considered not to form part of the application as filed. As such, following publication of the application, the erroneous application documents or parts are open to file inspection (GL, A-II, 6.3).

Sequence listings

For applications filed from 1 July 2022, the EPO requires that nucleotide and amino acid sequence listings comply with Standard ST.26 of the World Intellectual property Organization (WIPO) (OJ EPO 2021, A97; GL, A-IV, 5).

Details and examples on sequences that need to be itemised in the sequence listing of the WIPO Standard ST.26 are provided at GL, F-II, 6.2.1-6.2.4.

Erroneously filed sequence listings may be corrected under Rule 56a (GL, A-IV, 5.2).

The updated Guidelines state that if two or more sequence listings are filed on the filing date, only the standard-compliant sequence listing will be used as the basis for the search and whenever a sequence listing that is part of the description is corrected or amended, a complete new sequence listing must be filed (GL, A-IV, 5).

With respect to sequence listings of divisional applications, the Guidelines (GL, A-IV, 5.4) expressly state that since the content of the disclosure of the invention is the responsibility of the applicant, any sequence listing which is to form part of the description must be filed by the applicant. The sequence listing of the earlier application is, thus, not automatically added to the dossier of the divisional application if:

– the applicant files an ST.26-compliant sequence listing as part of the divisional application’s description; or if

– the sequence listing available in the earlier application does not comply with WIPO Standard ST.26.

Unitary Patent System and Unified Patent Court

In view of the importance of national prior rights for applicants in proceedings before the Unified Patent Court, as of 1 September 2022 the EPO introduced systematic top-up searches for national prior rights (Rule 71(3) EPC).

In line with that, the Guidelines (GL, C-IV, 7.2) state that:

– the Examiner expands the top-up search scope at the grant stage to include national applications and patents of the contracting states, in so far as they are present in the EPO’s databases;

– the Examining Division informs the applicant about the outcome of the top-up search for national prior rights;

– national prior rights that are prima facie relevant for the application are communicated to the applicant.

Moreover, the Guidelines have been amended to specify that acceleration of opposition proceedings may be requested when infringement action in respect of a European patent is pending before the Unified Patent Court (GL, E-VIII, 5).

Amendments of the description

The latest version of the Guidelines confirms that any inconsistency between the description and the claims must be avoided if it can raise doubts on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported or objectionable under Art. 84 (GL, F-IV, 4.3).

With respect to previous versions, this year’s Guidelines provide the following further examples of inconsistency (GL, F-IV, 4.3):

• the independent claim defines a feature as being made of “purely substance X”, whereas the description defines it as being made of a blend of substances “X and Y”;
• the independent claim defines the feature of an article comprising nicotine-free liquid material, whereas the description states that the liquid material may contain nicotine;
• the independent claim comprises features A, B and C taken in combination; whereas passages of the description explicitly refer to a sub-combination of the claimed features (e.g. only A or A+B) as being the invention.

However, as long as the resulting text of the description does not present conflicting information to the reader, the updated version of the Guidelines indicates that an inconsistent embodiment may also be remedied by ensuring that:

• it is not referred to as being “according to the invention” throughout the description;
• it is explicitly stated that it is retained due to being useful for understanding the invention (e.g. “embodiment useful for understanding the invention”, “comparative example from background art”) (GL, F-IV, 4.3).

Vi-Co oral proceedings

In line with OJ EPO 2022, A103, it is now stated in the Guidelines that oral proceedings are held by videoconference and only in exceptional circumstances, where there are serious reasons against holding the oral proceedings by videoconference, they may be held on the premises of the EPO (GL, E-III, 1.2).

A request to hold oral proceedings exceptionally at EPO premises must be filed as early as possible, preferably together with the request for oral proceedings. The granting of such a request will be at the discretion of the competent division (GL, E-III, 1.3).

A request to hold oral proceedings at a particular EPO site is not admissible; a refusal by the competent division to accept such a request is not subject to appeal (GL, E-III, 1.4).

As far as the conduction of oral proceedings is concerned, participants must ensure that their videoconferencing equipment meets the technical requirements specified and are encouraged to make a test call in good time before the oral proceedings take place (GL, E-III, 1.2).

In addition, the list of exceptional circumstances in which the Examining Division may issue a summons to oral proceedings as the first action has been extended (GL, C-III, 5).

Electronic notification

In anticipation of the entry into force of the amendments to Rule 127(2) EPC on 1 November 2023, the Guidelines reflect the latest provisions on electronic notification (GL, E-II, 2.4).

Selection invention

With respect to the previous version of the Guidelines, it is no longer required for a sub-range selected from a broader numerical range of the prior art to be sufficiently far removed from end-points of such known range in order to comply with the requirement of novelty.

Under the new Guidelines, a sub-range selected from a broader numerical range of the prior art is considered novel if:

(a) the selected sub-range is narrow compared to the known range; and

(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art (GL, G-VI, 8).

Contracting States

The number of EPC Contracting States reached 39 on 1 October 2022 following the ratification of Montenegro. Bosnia and Herzegovina is now the only “extension State”.

From 8 March to 18 April 2023, the EPO provides a series of web seminars giving a useful overview of the Guidelines in force as of March 2023 and the updates relevant for examiner procedures.

The recorded seminars will be available here.

The EPO invites users to provide feedback on the most recent edition of the EPC via the questionnaire available here until 4 April 2023.

Further suggestions for additions or improvements are welcome at any time of the year and may be sent to [email protected].