Navigating the EPO’s Updated Guidelines for Examination

Colour photographs

Colour photographs may now be filed as drawings for a European patent application (A-IX, 1.2). However, the photographs will be scanned and reproduced in black and white, so any colour detail will be lost. Therefore, we would not advise relying on the colour detail of the photographs for disclosing features of an invention.

Priority search results

If a European application claims priority, then the search results for the priority application must be provided to the EPO (A-III, 6.12). If the examining division finds that the priority search results have not been provided, then it will ask the applicant to file them within 2 months (C-II, 5). If this is not done in time, then the application is considered to be withdrawn.

However, the priority search results do not have to be provided if:

• the search for the priority application was performed by the EPO;
• the priority application is a US, UK or Japanese application; or
• the European application is a divisional application and the priority search results have already been provided for the parent application.

Patentability

Under European practice, an invention must have a technical effect in order to be considered patentable and involve an inventive step. The new guidelines state that features concerning the graphic design of user interfaces do not have a technical effect, and so cannot provide an inventive step (G-II, 3.7.1).

Also, a data structure is not considered to have a technical effect because it is merely a static memory configuration which does not carry out anything by itself (G-II, 3.7.2). However, the processing of the data structure may achieve a technical effect. Therefore, when an invention involves a new data structure, we would recommend drafting the claims in terms of a method or apparatus which processes the data structure, as this is more likely to succeed than a claim to an isolated data structure.

Generally, methods of treatment of a human or animal body by surgery or therapy are excluded from patentability, since doctors or vets should be able to treat patients without fear of patent infringement. However, the new guidelines provide an exception to this principle. According to the EPO, claims which relate exclusively to a clinical trial of an experimental medicament carried out on human beings should not be excluded from patentability, because they are performed under controlled conditions with the consent of the patient (G-II, 4.2.2).

Prior art status of documents

The new guidelines state that, where there is conflict between an abstract and its source document, the incorrect parts of the abstract are not considered as prior art (B-VI, 6.3). For example, often European examiners rely on an English abstract of a Japanese patent application to support a novelty or inventive step objection, without checking the Japanese description. If the applicant can show that the abstract is incorrect, for example by using a machine translation of the description, then the disclosure of the abstract may be disregarded.

Generally, documents which have only been made available under a non-disclosure agreement (NDA) are not considered to be available to the public and so cannot be considered as prior art or as evidence of a skilled person’s general knowledge.

However, sometimes a document is openly available for sale to interested parties, but under an NDA to protect the income deriving from such sales. For example the CD-ROM, DVD and Blu-Ray disc standards are available for sale in this way. The EPO now says that these standards documents should not be considered as prior art because of the NDA (G-IV, 7.6). If the new guideline is followed, then patent applications which rely on assumed knowledge of these standards for disclosing the invention could be objected to for not sufficiently disclosing the invention. On the other hand, opponents may not be able to use these documents to attack the validity of a patent.

However, applicants and opponents may be able to argue that the new guideline is incorrect because it is contrary to the technical board of appeal’s decision in T50/02 which held that in this situation a document should be considered as available for the public, because it is essentially available to all interested parties who are free to buy the document from its original source.

Claim interpretation

When the word ‘for’ is used in a claim, it is usually interpreted to mean ‘suitable for’. For example, a ‘device for cooking’ would cover any device which is suitable for cooking, even if the device is not explicitly described as being for the purpose of cooking.

However, the EPO has now said that in applications in the computing/data processing field, ‘means for’ features should be interpreted as means adapted to carry out the relevant functions, rather than merely means suitable for carrying them out (F-IV, 4.13). Therefore, these features can provide novelty over an unprogrammed or differently programmed computer which is not explicitly described as performing these functions.

Grant procedure

When the examining division agrees to grant a patent application, a Rule 71(3) communication is issued together with the patent text to be granted. Sometimes the examiner will propose some amendments to the text at this stage. The guidelines contain new examples on what amendments the examining division should, and should not, propose at the Rule 71(3) stage without the applicant’s approval (C-V, 1.1). The examples make it clear that the examiner should only propose amendments which the applicant would be reasonably likely to be accept.

If the applicant files amendments in response to the Rule 71(3), or challenges any amendments made by the examiner, it is no longer necessary to file claim translations or pay fees at this stage (C-V, 4.1). Optionally, the fees may be paid anyway and held on credit ready for when a text is agreed for grant (A-X, 11). If the amended text or arguments against the examiner’s amendments are allowable, a second Rule 71(3) communication will be issued and any credited fees may be used to pay the fees required (C-V, 4.7.2).

Oral proceedings

The guidelines state that the examining division is not allowed to issue a summons to oral proceedings until at least one substantive examination report has been issued (E-II, 5.1). The search opinion is not enough.

Laptops or other electronic devices, and computer-generated slideshows, may now be used in oral proceedings at the discretion of the division (E-II, 8.2.1, 8.5.1).

Oral proceedings before the examining division may be held by video conference (E-II, 11). However, this is not possible before the opposition division.

Lack of unity for a Euro-PCT application

If the EPO believes that an application claims two or more inventions which do not share an inventive concept, the EPO will raise a ‘lack of unity‘ objection and demand that the claims are limited to one invention. For a European application which stems from an international (PCT) application, the EPO usually performs a supplementary search. The guidelines now state that, where the EPO finds lack of unity during the supplementary search, the applicant must limit the application to the invention searched in the supplementary search (H-II, 7.4.2).

This remains a contentious issue, not least because Rule 164(2) EPC could be interpreted as allowing the applicant to select an invention searched in the international search report in this situation. Furthermore the EPO’s approach causes a disparity between Euro-PCT procedure and Euro-direct procedure (since in the latter the applicant has the opportunity to pay an additional search fee if the EPO finds a lack of unity) and Rule 164(2) was introduced as part of the changes in EPC2000 to harmonize the two application routes. It seems that it will require a Board of Appeal to resolve this conflict, but in the meantime it is to be expected that the EPO will continue to insist that when non-unity is raised, only inventions covered by the EPO’s supplementary search may be pursued in a Euro-PCT application.

Divisional applications

A divisional application may be filed only if a) the parent application is still pending, and b) the period for filing a divisional application has not expired.

For point a), the guidelines have been updated to clarify that when a European application is refused, it remains pending until the end of the time limit for filing the notice of appeal (A-IV, 1.1.1.1). Therefore, after a parent application has been refused, a divisional application could still be filed until 2 months after the notification of the decision to refuse the application.

Regarding point b), the period for filing a divisional application based on an earlier European application usually expires 2 years after notification of the first substantive communication from the examining division. The guidelines now clarify that, if the first substantive communication from the examining division is based on the wrong documents, then this does not trigger the 2 year period (A-IV, 1.1.1.2). Therefore, the examining division’s mistake will not disadvantage the applicant.

Also, where a new lack of unity objection is raised later on in prosecution, this can restart the 2 year period for filing a divisional application. The EPO has clarified that when the new objection is raised in oral proceedings, then the 2-year period starts when the minutes of the oral proceedings are notified to the applicant, not on the date of the oral proceedings (E -II, 8.7).