As of 1st March 2023, the latest version of the EPO Guidelines for Examination have entered into force. In addition to a number of minor changes, such as the provisions for drawings and debiting procedures, the Guidelines have been amended to take into account some significant changes in European patent practice over the last year.
The procedure around Oral Proceedings has seen significant amendment, regarding the preference for Oral Proceedings to be held by videoconference over in-person proceedings and the use of Oral Proceedings as the first action in examination of a divisional application. There has also been amendment to the Guidelines of procedure within Oral Proceedings, including the filing of amendments and late-filed evidence, third-party observations and the right to be heard.
The end of the ’10 day rule’
A widely discussed amendment to the Guidelines is the removal of the EPO postal rule provisions- the so-called ’10 day rule’ whereby it was assumed that postal delivery of EPO communications took 10 days. This has long been used as a de facto extension in European patent prosecution, but now its days are numbered. The loss of these provisions for deadlines set by communications issued on or after 1 November 2023 will require a change in practice for those regularly involved in prosecution. It may cause some EP attorneys to shed a few tears!
Erroneously filed parts of the application
One area that has changed appreciably is the procedure regarding erroneously filed parts of the application, which has been amended in light of the newly-introduced Rule 56a EPC. Sections regarding the proper procedure of replacing erroneously filed parts of the application have been added, as well as a discussion of the relation between the provisions of Rule 56a EPC and the missing parts provisions of Rule 56 EPC.
Another area that has seen notable changes is the EPO’s adoption of the WIPO ST.26 standard for sequence listings for applications filed on or after 1 July 2022, including for divisional applications filed after this date that have parent applications filed before this date. This discrepancy between the provisions for parent and divisional applications invites the possibility of running foul of added subject matter provisions when converting between the previous ST.25 standard and the new ST.26 standard.
Although the Guidelines have come into force on the same day as the start of the UPC sunrise period, there are only limited mentions of the UPC in the updated guidelines, focusing primarily on the interaction between existing European prosecution procedure and the provisions of the new Convention in the grant and post-grant stages, such as the interaction between opposition and contentious proceedings before the Unified Patent Court.
Finally, an amendment of note is the reference to the decision of J8/20. This highly publicised decision was issued as part of the DABUS case, concerning whether an Artificial Intelligence could be considered to be an inventor for the purposes of the EPC. The Guidelines refer to the decision of the legal Board of Appeal and reaffirms the EPO’s position that the inventor of a claimed invention is restricted to “a person with legal capacity”.
If you would like more information about how these changes to the Guidelines will affect your patent portfolio, please consult your patent attorney. Wynne-Jones are able to advise you on how best to respond to these changes and take advantage of the new provisions.
Max Bertrand (European patent attorney) & Ian Lambert (European patent attorney and Director)
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