Changes in EPO Guidelines of Examination

Earlier this year, the European Patent Office (EPO) announced a number of changes to be made to the Guidelines of Examination, with the changes taking effect from 1 November 2019.

IP professionals are accustomed to annual changes being made to the Guidelines by the EPO. This year, a variety of notable changes can be seen. Some of the more important changes are reviewed below.

Selection inventions

Guidelines: G-VI 8

Previously, a sub-range selected from a broader numerical range of the prior art was considered novel if the following three criteria (as set out in T 198/84 and T 279/89) were satisfied:

i. the selected sub-range is narrow compared to the known range; 

ii. the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range; 

iii. the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching).

Following T 261/15 and as of 1 November 2019, the former three-step test has been revised to the following two-step test, removing criteria iii.:

iv. the selected sub-range is narrow compared to the known range; 

v. the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range.

This new test hereby clarifies and simplifies the demonstration of novelty of a claim including sub-ranges. Most notably, the revision removes the inventive step assessment linked “purposive” requirement, thereby limiting the test to novelty only. 

First or further medical use of known products*

Guidelines: G-VI 7.1

To provide support for the definition of the term “substance or composition” (as found in the first or second medical use provision), the Technical Boards of Appeal case T 1758/15 has been added to the Guidelines.

*Formerly known as Second or further medical use of known pharmaceutical products

Inventive step assessment in the field of biotechnology

Guidelines: G-VII 13

This year a brand new section related to obviousness in the field of biotechnology has been added to the Guidelines.

According to the Guidelines, if the skilled person would have conducted their research following the teaching of the prior art with a “reasonable expectation of success”, then there is no inventive step. Using research as an example, the Guidelines further clarify the difference between “reasonable expectation of success” and “hope to succeed”. If in order to reach a technical solution, a researcher knows that in addition to their technical skill, non-trivial decisions have to be made along the way, then “this cannot be regarded as a reasonable expectation of success”.

This section further highlights that “reasonable expectation of success” should not be confused with “hope to succeed”.

Product claim with process features

Guidelines: F-IV 4.12.1

A further brand new section relating to product claims with process features has been added to the Guidelines. This section hereby confirms that a claim may contain both product and process features without contravening Article 84 EPC.

The Guidelines further clarify that the process features in the claims can establish novelty of the claimed product only if the features have different properties from the products previously described. The same novelty requirements applied for product-by-process claims also apply here.

Mathematical methods, artificial intelligence and machine learning

Guidelines: G-II 3.3 and G-II 3.3.1

Last year, to be in line with the ever growing area of artificial intelligence (AI), the Guidelines added a brand new section for AI. This year the EPO has updated the section relating to patentability of AI and machine learning, and mathematical methods to clarify that “term such as ‘support vector machine’, ‘reasoning engine’ or ‘neural network’ may, depending on the context, merely refer to abstract models or algorithms and thus do not, on their own, necessarily imply the use of a technical means. This has to be taken into account when examining whether the claimed subject-matter has a technical character as a whole (Art. 52(1), (2) and (3))”.

Classifying text documents solely in respect of their textual content is not regarded as per se a technical purpose, but a linguistic one. Care needs to be taken in the presentation of the technical purpose of semantic AI systems.

Deletion of part of the claimed subject matter

Guidelines: H-V 3.3

Based on T 12/81, deletions made from more than one list were normally not allowable. However, the Guidelines now state that “the deletion of alternatives from more than one list is only allowable if this does not result in the creation of new technical information that is not directly and unambiguously derivable from the application as originally filed”.

Most importantly, a combination of specific features are allowable if the application as filed provides a pointer towards the particular combination. In addition, if a limitation does not result in the singling out of a particular combination of specific features and yet maintains the remaining subject-matter as a generic group (differing from the original group only by its smaller size) then this will meet the requirements of Article 123(2) EPC.

Replacement or removal of features from a claim

Guidelines: H-V 3.1

Previously, if an amendment was made to replace or remove a feature from a claim, the amendment was required to pass the following three-step test:

i. the replaced or removed feature was not explained as essential in the originally filed disclosure; 

ii. the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve

iii. the skilled person would directly and unambiguously recognise that the replacement or removal requires no modification of one or more features to compensate for the change

As of 1 November 2019, the “directly and unambiguously” requirement of step iii. no longer applies.

Copy of the previous application (priority document) 

Guidelines: A-III 6.7

Before, a paper copy of the previous application from which priority was claimed had to be filed before the end of the 16^thmonth after the date of priority. Priority documents could not be filed electronically unless they were digitally signed by the issuing authority and the signature was accepted by the EPO.

From now on, priority documents may be filed in paper form or electronically using OLF or CMS provided the latter are in an accepted document format. Additionally, at the request of the Applicant, the EPO will include a copy of the previous application (from which priority is claimed), retrievable via the WIPO Digital Access Service (DAS). The EPO will offer this service free of charge.

Signed authorisation

Guidelines: A-VIII 1.5

Previously, professional representatives other than the representative on record were recommended to clearly indicate that they act at the request of the party to proceedings.

The revised Guidelines depart from this requirement. Procedural acts such as Rule 71(3) EPC formalities may now be carried out by a professional representative not on record.

Room reservations and communication with the applicant

Guidelines: E-III 11.2.1

Earlier this year, the EPO switched to Skype for examination oral proceedings. A notable change to be seen this year is the certainty of having oral proceedings via videoconference. Whilst previously, the Guidelines indicated that videoconference rooms will “in principle” be reserved. The Guidelines now explicitly say that videoconferencing rooms “will be reserved”. Applicants must provide the EPO of their technical details and contact information as requested by the summons in advance.

Applications under the Patent Cooperation Treaty (PCT)

Guidelines: E-IX

This year the EPO made extensive changes to the entire chapter dealing with Euro-PCT applications. Revisions have been made to the following sections:

• Translations
• Early proceedings
• Responding to the Rule 161 Communication
• Restoration of priority
• Review and rectification of errors made by the receiving office (rO) or the International Bureau (IB)

For further information, please do not hesitate to contact one of our IP Practitioners.