Pages 66-68

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 27 December 1991 concerning amendment of the Guidelines for Examination in the European Patent Office

By decision of the President of the EPO dated 27 December 1991 the Guidelines for Examination in the EPO have been amended pursuant to Article 10(2) EPC. The amendments are being published in the form of a complete "January 1992" edition of the Guidelines1. The ring-binders for the loose-leaf edition2 can be retained for use with this new edition.

A summary of the main amendments is given below.

Amendments to the Guidelines for Examination in the European Patent Office

Summary of the main points

The Guidelines for Examination in the EPO have been further amended after consultation with the Standing Advisory Committee before the EPO (SACEPO). The main reasons for amendment are:

(i) Changes in the EPC Implementing Regulations and in the Rules relating to Fees.

(ii) Important decisions of the EPO Boards of Appeal.

The opportunity has been taken to review the Guidelines in other respects too and to correct a number of editorial and linguistic inconsistencies.

A summary of the most important amendments is given below indicating the parts of the Guidelines in which the amendments occur.

A-III, 7.3 - A reference to the simplified procedure for amending the title of the invention has been incorporated. The title can be amended by the EPO prior to publication of the application; any objections are dealt with during the subsequent examination procedure.

A-III, 9 - Brought into line with the new version of Rule 31(1) EPC, which now expressly provides for a period of grace for the payment of claims fees.

A-VI, 1.2 - Here a reference has been added to Office practice regarding the publication of European patent applications that are not yet finally deemed withdrawn.

A-VII - Chapter VII, which deals with Euro-PCT applications, has been revised on the basis of the new version of Rule 104b EPC. The new periods of 21 or 31 months in particular have been taken into account. It has also been made clear that the EPO does not require the applicant to furnish a copy of the international application as provided for in Article 22(1) PCT.

A-VIII, 1.2 to 1.3, 2.1, 3.2 - Amended owing to the liberalisation of the provisions concerning the language of proceedings in Rule 1 EPC.

A-IX - Chapter IX has been amended on the basis of the new version of Rule 101 EPC and the decision of the President of the EPO dated 19 July 1991 on the filing of authorisations (OJ EPO 1991, 489). A reference to new Form 1038 for covering letters (OJ EPO 1991, 64) has also been incorporated.

A-XI, 1 to 9 - This part has been brought into line with the new version of Article 8 RFees and point 6.4 of the Arrangements for deposit accounts, in accordance with which, contrary to previous case law, what counts for payment to an account held by the Office is the date of actual entry in the account. Provision has now been made to remedy the consequences of late entries subject to payment of a surcharge.

A-XI, 10.1.3 - Here reference to new Article 10c RFees on the refund of insignificant amounts has been added.

A-XI, 10.2.6 - The new version takes into account the consolidation of the fee for grant and the fee for printing in Article 2, item 8, RFees.

B-VI, 2 - Here the circumstances under which an oral disclosure is to be mentioned in the search report are specified.

C-II, 6.3 - With regard to the deposit of microorganisms it is pointed out that in accordance with Technical Board of Appeal decision T 118/87 applicant and depositor must be one and the same.

C-III, 7.2, 7.3, 7.3a and 7.4a - These parts have been revised. The new version, based on amended Rule 30, reflects an agreement reached between the EPO, the Japanese Patent Office and the United States Patent and Trademark Office in 1988 to harmonise their practices regarding unity of invention.

C-IV, 7.5 and 7.6 - References have been added to Enlarged Board of Appeal decisions G 2/88 and G 6/88 on the admissibility of claims to a second non-medical use.

C-VI, 4.11 - The new version sets out what action is to be taken in the event of refusal of amendments under Rule 86(2) EPC, in particular where these are requested after approval has been indicated under Rule 51(4) EPC.

D-V, 6.2 - The amendment relates to Enlarged Board of Appeal decision G 2/88 on the admissibility of changing from a "product" claim to a "use" claim.

E-IX, 6.4.1 - This part has been revised to make clear on which documents the substantive examination in the regional phase is to be based.

E-XI, 7 - Here account has been taken of decision T 139/87 on interlocutory revision following refusal by the Examining Division.