With the 2021 changes to the examination guidelines, the EPO changed its schedule for issuing annual changes to the Guidelines for Examination from November to March. This came as part of a restructuring of the revision cycle for the Guidelines under the Strategic Plan 2023, now allowing for greater user involvement with a public online consultation now forming part of the cycle. The EPO Guidelines are important in the prosecution of European patent applications since they set out the expected practice of the EPO. In the following, we discuss some of the main changes appearing in the 2022 edition.
The 2022 Guidelines do not provide significantly surprising changes, but mainly expand on and concretize topics that have already been around for a number of years or were introduced last year.
Further changes in relation to the description amendments call for a more thorough look, though.
With the 2021 edition of the Guidelines, the EPO introduced substantial changes to the requirements to the amend the description to correspond to the (amended) claims. Amongst other reactions, there was widespread controversial discussion in the patent community what consequences this might bring in subsequent litigation proceedings, in particular when assessing infringement under the Doctrine of Equivalents.
Interestingly, on the annual meeting of the German Patent Attorney Chamber in November 2021, it was mentioned that the EPO itself was rather surprised by the strong reaction of the community, as the internal view was that the changes only reflected and were supposed to put in writing the status quo. Apparently, this was not received as such by attorneys and by examiner alike. While some examiners pursued a healthy and reasonable approach, an increase in reference to the 2021 Guidelines could be seen in EPO communications, essentially requiring a complete revision of the specification, in order to remove any disclosure that would not be covered by the claims, or at least to clearly state that certain disclosure would not belong to the claimed invention.
Luckily, the BoA in decision T 1989/18 ruled that there simply is no according legal basis in the EPC to require such extensive revision of the specification - be that Art. 84 or Art. 69 or Rule 42 I c or Rule 48 I c.
So it remains to be seen if in light of the new 2022 Guidelines, the sometimes exaggerated demands to amend the description that the patent community has seen over the last year are calmed again.
While decision T1989/18 found no basis for the requirement to amend the description, patent attorneys will have to wait at least another year to find it reflected in the updated Guidelines. The corresponding section in the 2022 version of the Guidelines saw only a slight softening in the wording, particularly with regards to what the examining division might view as inconsistencies.
In other parts, the updates to the examination procedure have seen less recent decision – namely G 01/15 on the assessment of generic “OR” terms when claiming partial priority as well as G 01/13 and T315/03 on the evaluation of exclusion from patentability due to ordre public or morality - included. Below, the most significant changes are set out in more detail.
Description amendments (F-IV, 4.3 and 4.4):
Concerning inconsistencies between description and claims, the wording is generally softened against the 2021 Guidelines. Inconsistencies must now be avoided if they “could” rather than “may” throw doubt on the subject matter for which protection is sought. Such softening is also represented in H-V, 2.7 (“may” rather than “will” with regards to the issuance of summons to oral proceedings) and H-III, 2.1.1 has been updated to clarify that a Rule 137(4) communication can only be issued by the examining division. The Guidelines still require that there be no inconsistencies between description and claims, but where there is doubt the benefit of the doubt is now given to the applicant.
Although rewording of the guidance on removing inconsistencies left is mostly unchanged, a minor update now allows for the description to be amended to state that references to in vivo methods of treatment are to be interpreted as reference to compounds, etc. for use in x. When inviting the applicant to amend the description, the division now also provides the applicant with examples of inconsistent embodiments in the application. Finally, statements referring to what the invention is according to the claims now “are” – rather than before “may be” - allowable, although this still don’t exempt the applicant from removing inconsistencies.
Partial priority (F-VI, 1.5):
This section is updated to include partial priorities as taught in G 01/15. The ruling is cited to explain the concept of partial priority: the situation where only part of the subject-matter encompassed by a generic “OR” term is entitled to priority.
Assessment of partial priority for subject-matter with a generic “OR” is added: The disclosure test laid down in G 2/98 is to be used to determine the relevant subject-matter in the priority document. If that subject-matter is encompassed by the application claiming priority, the affected claim is to be divided into two alternatives, one covered by the priority document, and the other one not.
The update also includes a new paragraph to G 01/15 on determining if a priority application is even the first application with regards to certain subject-matter in the application that claims priority from it. Additionally, partial priority may now be transferred to someone else separately, in which case the assignee and the assigner enjoy a partial priority right to distinct and precisely defined alternatives within the subject-matter for which there is a right to priority
Double patenting (G-IV, 5.4):
The section on double patenting has been updated in light of G 4/19 stating that the prohibition on double patenting is applicable under Article 125 EPC. This article states that the EPO shall take into account the principles of procedural law generally recognised in the Contracting States. One such principle is that no two patents to the same subject-matter should not be granted. Accordingly, this prohibition also applies to the EPO. This update reflects a change from the previous reasoning of the EPO, which argued that it would not be in the interest of the application to hold two patents on the same subject-matter.
Interpretation of “substantially” or “approximately” (F-IV, 4.7.2):
Where “substantially” or “approximately” could previously only be used in the context of a structural unit of an apparatus, their use is now allowable when they imply a certain effect or result within a certain tolerance where the skilled person would know how to arrive at the tolerance.
Exclusion for ordre public or morality (G-II, 4.1., 5.2):
Here, two rulings have been included. Firstly G 01/13, which states that an Article 53(a) objection might arise from the fact that not everything that can be done to other living beings (e.g. the selection of offspring based on specific properties) can be done to humans.
Secondly, ruling T 315/03 is now included which states that for genetically modified animals or processes for resulting in the same regarding Rule 28(1) the likelihood of animal suffering, the likelihood of substantial medical benefit and the correspondence between the two has to be established (likelihood being the level or standard of proof). Regarding Article 53(a), a new passage states that both animal suffering and risk to the environment need to be weighed up against the usefulness of the invention to mankind.
One of the most substantial changes to the Guidelines concerns computer-implemented inventions in light of ruling G 01/19. The case in this ruling concerns the simulation of the movement of one of more autonomous pedestrians in which some of the parameters on which the simulation is based were not deemed technical (e.g. “preferred step” or “frustration factor”).
Consequently, the Extended Board of Appeal ruled that computer-implemented inventions can solve a technical problem by producing a technical effect extending beyond their implementation and that their basis, at least in part, on technical principles was neither necessary nor sufficient for assessing whether they solve a technical problem. These answers are reflected in the so-called “two-hurdle approach” and other updates in subsequent sections, elaborated on below.
Two-hurdle approach (G-II, 2):
The 2022 Guidelines now explicitly refer to the two-hurdle approach established in G 01/19. The first hurdle refers to the assessment of the subject-matter “as such” under non-inventions of Article 52(2) and (3) The term “as such” prevents a broad interpretations of non-inventions and implies that one technical feature is enough to reach eligibility under Article 52(1). Reference to prior art is not made in the assessment at this stage. The second hurdle covers inventive step under Article 56 and considers only features contributing to the technical character of the invention. The new guide also explicitly states that the assessment of inventive step follows the COMVIK approach, which is explained in G-VII, 5.4.
COMVIK approach (G-VII, 5.4):
The section description the COMVIK approach has only seen comparatively minor changes. Regarding the formulation of the objective technical problem for claims comprising technical and non-technical features, an addition has been made to say that a claim has to be limited in such a way that all embodiments of that claim show the technical effects used for formulating the objective technical problem (again with reference to G 1/19). The different stages of assessment of inventive step according to the COMVIK approach are now also highlighted as steps (i) to (iii)(c). Finally, two examples have been added to illustrate the steps in assessing inventive step according to the COMVIK approach.
Technical applications (G-II, 3.3):
The contribution of a mathematical method is now assessed by whether it produces a technical effect serving a technical purpose. A technical contribution is acknowledged where a mathematical method is used to derive or predict the physical properties of a real object by measuring physical properties
Simulation, design or modelling (G-II, 3.3.2):
The section on simulation, design or modelling was largely re-written. Computer-implemented methods of simulating, designing or modelling are to be examined just as any computer-implemented invention (see G-VII, 5.4 and G 1/19)
For the examination of the technical effect, it is not decisive whether the simulated system is technical or the simulation reflects technical principles underlying the simulated system
The 2022 Guidelines now introduce certain types of simulations and how they might contribute to a technical effect. Simulations interacting with external physical reality can make a technical contribution through a feature interacting with an external physical reality and e.g., serving as indirect measurement method. Even if a direct link to a physical reality does not exist, which is the case in purely numerical simulations, a purely numerical simulation can add a technical effect by adapting to a specific technical implementation or if the data resulting from the simulation brings about an intended technical use. Where this is not the case, the simulation may still form a constraint on the invention, which might be included in the formulation of an objective technical problem according to the COMVIK approach of (G-VII, 5.4). Technical contributions of specific technical implementation of a numerical simulation are stated to be assessed in the same way as mathematical models of G-II, 3.3. Regarding the intended technical use of the calculated numerical output data of a numerical simulation output data of a numerical simulation reflecting the state of a system or process is only considered to contain a technical contribution if the data has an intended effect (e.g. providing control data). This use has to be either explicitly or implicitly specified in the claims.
Accuracy is also subsequently highlighted as a factor of whether a technical effect is achieved or not. Whether or not an alleged improvement may be achieved depends on whether the simulation is accurate enough for its intended use. Contribution to the technical character of the subject-matter does, on the other hand, not depend on the quality of the underlying model.
The principles laid out for simulations also apply to computer-implemented simulation claimed as part of a design process.
Schemes, rules and methods for performing mental acts (G-II, 3.5.1):
This section is updated to state that exclusion from patentability applies to methods for performing mental acts if the real word values used are not measured by the method or received by it using technical means. Again in the light of G 01/19, the use of a computer and the steps it takes in carrying out such a method may now only make a technical contribution if they contribute to a technical effect.
Schemes, rules and methods for playing games (G-II, 3.5.2):
This update regards methods for playing games and states that calculations of updates to game states such as equations that model pseudo-physical behaviour amount to computer-implemented simulations based on these models (G 1/19). To assess inventive step, the models are understood as defining a given constraint for a corresponding implementation. The technical effect arises from the simulation adapting to the functioning of the computer system when updating a game state, but not from updating a game state alone.
Programs for computers (G-II, 3.6):
A similar update as above resulting from G 01/19 has been applied to information models of G-II, 3.6.2 and data structures or formats of G-II, 3.6.3. Also resulting from G01/19, technical character for data structures and formats of G-II, 3.6.3 is acknowledged if the data structures and formats have an (implied) intended technical use and cause a technical effect when used according to that (implied) technical use. An example is added, in which is remarked that the technical use of the data has to be implied in the claims in order for a technical effect to be taken into account when assessing inventive step. Where technical use is not implied, the exemplified data would only define an abstract description or model, which is not considered technical and therefore does not make a technical contribution, even if the described entities are technical (G-II, 3.3.2).
The 2022 Guidelines provide changes to procedural aspects from filing to opposition, with the highlights briefly summarized in the following:
C-IV, 3 – Regarding replies to examination, a request for a decision on the state of the file now explicitly qualifies as a reply within the meaning of Article 94(4) EPC (so that the application will not be deemed to be withdrawn)
D-IV, 5.2 – Copies of documents supporting the parties’ (opponent(s) and patent proprietor) submissions available for inspection in the Register will no longer be transmitted
D-VI, 3.2 – It is clarified that the date up to which submissions and amendments can be made is not a time limit and therefore the parties cannot request to postpone it (“Rule 132 shall not apply”, see Rule 116(1)).
E-III, 1 – A decision in writing without oral proceedings can now be reached only if there is no valid request for oral proceedings from a party that might be adversely affected by the decision.
E-III, 8.3.1 – This update includes the new requirement to check the identity of participants before oral proceedings.
D-III, 3.2 – The reference to filing tools is updated to include Online Filing 2.0.
E-VI, 2 – This section now generally encompasses the guidance on late-filed submissions. The section is particularly extended to cover procedural expediency and examples of possible abuse of the proceedings. The right to be heard is also included in this section now. Both parts have been moved from E-III, 8.6.
Other notable changes include:
Address of the inventor (A-III, 5.3):
Only the country or place of residence (i.e., city and ideally postal code), not the address of the inventor has to be provided now. Additionally, the country or place of residence may be that of the applicant (e.g. a company).
Sequence listing (A-IV, 5):
The update draws attention to the new WIPO standard for nucleotide and amino acid sequence listings, ST.26. All disclosed sequences extending over the minimum length as defined in the standard must be included in the sequences listings.
The section on missing sequence listings is extended to state that only in the few cases where it is obvious that a sequence listing as part of the description is missing (e.g., if there is a sequence identifier in the description by no sequence is disclosed) Rule 56 EPC applies. This new wording presents a much more restricted interpretation of when a sequence listing may be filed as a missing part of the description under Rule 56.
The update also adds that while a sequence listing can be added as a late-filed part of a description, the lack of a standard-compliant sequence listing, the absence of disclosed sequences in the listing or non-compliance of the sequence listing with the WIPO standard results in a Rule 30(3) communication.
Unity of invention (B-VII, 1.2.1):
A new passage clarifies that the final decision on whether the requirement for unity of invention is fulfilled lies with the examining division or the competent board of appeal.
About the authors
Christoph is a Partner and Patent Attorney at Mewburn Ellis. He handles original patent drafting and prosecution at the EPO and DPMA (German Patent and Trade Mark Office), principally in the engineering sector. Christoph regularly represents clients in opposition and appeal proceedings, as well as nullity and litigation proceedings before German courts. He advises clients on all matters of IP strategy and portfolio management, including Employee’s Inventions in Germany. Christoph also handles design matters. He is spearheading our dedicated team of future mobility experts.
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