A Stricter EPO? The EPO Updates its Guidelines for Examination

Effective 1 November 2017, the European Patent Office (EPO) has updated its Guidelines for Examination. While we have already reported the modifications relating to the practice of assignments, here we uncover some of the other notable changes.

Earlier Oral Proceedings?

The headline addition to the Guidelines is the new section C-III, 5 which now enables the EPO to issue a summons to oral proceedings as the first action in examination after the applicant’s reply to the European search opinion. Previously, EPO practice had required the examiner to issue at least one office action before summoning the applicant to oral proceedings.

The two requirements for a summons to issue with no prior office action are:

1) the content of the claims on file is not substantially different to that of the claims which served as basis for the search, and

2) one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply

While the Guidelines state that this should only happen in “exceptional” cases, where “no possibility of a grant can be envisaged”, applicants should clearly be wary of not addressing objections raised in the search stage. The summons will however give at least six months’ notice ahead of oral proceedings, and no new objections or documents can be cited in the summons.

A Friendlier EPO?

Coupled with the EPO’s stricter approach to first office actions, the Guidelines also appear to encourage more dialogue with EPO examiners when filing new claim requests in response to a summons to oral proceedings. For example section C-IV, 8 has been updated to explicitly incorporate the possibility that “informal consultation to discuss the new request(s) may be allowed by the first examiner (see C-VII, 2) in particular if there is a reasonable prospect that the consultation could lead to an agreed allowable claim set”.

The EPO already allows for the possibility of a telephone conversation with the examiner during examination.  In most cases, the examiner will simply issue minutes of the conversation for information without setting any deadline for response.  However, new section C-VII, 2.7 outlines how a telephone conversation with the examiner can form the basis of the first action in examination. In such a case, the examiner can issue a communication including the telephone minutes, with the same level and detail as a regular office action and setting a time limit for response of not shorter than four months, unless agreed otherwise with the applicant.  Further objections not discussed during the telephone call can also be added to the communication. 

The Guidelines also outline that examiners may call the representative if the examining division is considering issuing a summons to oral proceedings.

Other Changes

Another newly introduced practice relates to partial search reports, where the EPO finds lack of unity of invention when carrying out its search. A partial search report contains the search results for the invention first mentioned in the claims, and provides the opportunity to pay additional search fees for the search of other inventions.  Section B, VII-1.2 states that this partial search report will now also include an opinion on patentability of the searched invention. The provisional opinion will be for information only and a reply addressing it will not be required, nor taken into account when the European search report is issued.  However, the new opinion may assist applicants in deciding whether to pursue the searched invention, or to pay additional search fees to allow the choice of a different invention during examination.

The EPO changed its practice in 2016 to accelerate prosecution in applications where substantiated third party observations are filed non-anonymously during EPO examination.  The Guidelines now specify that where substantiated third party observations are filed non-anonymously during the international phase, the EPO will aim to issue the next office action within three months after expiry of the period under Rule 161 EPC, when the third party has “clearly expressed” its wish to achieve this result in the European phase.

Regarding oppositions, the Guidelines now state that for European patents which have been surrendered or lapsed for all designated states, opposition proceedings “must” be continued at the request of the opponent.

Finally, unsurprising changes include updates taking into account EPO Enlarged Board of Appeal Decision G1/15 on partial priorities, and the new EPO rules relating to patentability of plants and animals.