Pages 959-966

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 31 October 1994 concerning amendment of the Guidelines for Examination in the European Patent Office

By decision of the President of the EPO dated 31 October 1994 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 "December 1994" edition of the Guidelines1. The ringbinders for the loose-leaf edition2 can be retained for use with this new edition.

A summary of the most important amendments is printed below.

Amendments of the Guidelines for Examination in the European Patent Office

The Guidelines for Examination have been revised following consultation with the Standing Advisory Committee before the EPO (SACEPO). The amendments are mainly due to

i) amendments to the Implementing Regulations and the Rules relating to Fees,

ii) recent decisions of the Boards of Appeal of the EPO on important issues.

The opportunity has also been taken to incorporate suggestions made by the SACEPO Working Party on Guidelines, to bring certain parts up to date with respect to the way proceedings are conducted at the EPO, to check the references made in the text and to remove a number of editorial and linguistic inconsistencies.

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

General

Throughout the Guidelines for Examination the references to the location where a certain part of the proceedings takes place (e.g. formalities, search or examination) have been deleted in view of the BEST project (see OJ EPO 1994, 5).

Preliminary remarks and explanatory notes

have been brought up to date.

A-III, 12.2

A reference to J 5/91 has been added to make clear up to when designation fees can be paid when time limits under Rule 85a (1) and (2) EPC expire at different times.

A-III, 14

This new section outlines the system of extending European patent applications and patents to states not party to the EPC.

A-IV, 1.1.2

refers to opinion G 10/92 on admissibility of European divisional applications, confirming current practice.

A-IV, 1.4

now emphasises the requirement to pay the search fee for any divisional application, even if a further search fee has already been paid under Rule 46(1) EPC.

A-IV, 1.4.3

refers to J 4/91 on the calculation of the additional period for payment of the renewal fee.

A-IV, 2.1, and C-VI, 9.9a

take account of decision G 3/92 on the admissibility of a new application under Article 61(1)(b) EPC when the application is no longer pending.

A-IV, 5

This new section concerns patent applications relating to nucleotide and amino acid sequences.

A-V, 2.2

A reference has been added concerning amendments to the application which extend beyond remedying deficiencies and which are filed prior to receipt of the search report.

A-V, 3

takes account of recent Board of Appeal decisions concerning corrections under Rule 88 EPC.

A-VI, 1.2

makes clear that the technical preparations for publication are now terminated 7 weeks before the end of the 18th month from the priority date.

A-VII, 3.1

refers to Legal Advice N° 18/92 on representation of applicants before the EPO as designated or elected Office.

A-VII, 4.2

This new section relates to the filing of sequence listings with the EPO as International Searching Authority, as designated or elected Office.

A-XI, 3.7

This new section outlines the automatic debiting procedure.

A-XI, 9.2

incorporates the amendments already published in OJ EPO 1992, 467.

A-XII, 2.3

was amended to make clear how documents marked "confidential" and correspondence relating to file inspection are dealt with in the EPO.

A-XII, 3.1

A sub-paragraph (e) has been added pointing out that the file concerning the international preliminary examination carried out by the EPO is usually excluded from inspection.

B-III, 3.12, and B-VIII, 4

Amendments indicating when a meaningful search on claims directed to non-patentable subject-matter can be performed.

B-VII, C-III, 7.13 - 7.17, and E-IX, 3.2 and 5.2

Amendments dealing with the differences between European and PCT applications concerning unity of invention.

B-X, 2.1

The list of types of search carried out by the EPO has been updated.

B-X, 4, 5 and 7, and B-XI, 2

The different markings A1 to A4 for the publication of the application and of the search report have been clarified.

B-X, 9

The EPO rules regarding the citation of documents have been brought into line with those of the PCT.

C-II, 4.10; C-III, 4.7a and 4.10; C-IV, 7.5

The conditions regarding the use of parameters in claims have been revised.

C-II, 4.18, and C-VI, 5.7d

The question of sufficiency of disclosure in connection with cross-referenced documents has been treated more extensively, as well as the conditions under which material can be introduced into the application from a document referred to (following T 689/90).

C-II, 6.1

makes clear that "seeds" cannot be considered as micro-organisms as defined in Rule 28 EPC.

C-III, 4.7

This section has been amended to make clear that tests necessary to verify a result as defined in the claims should not require undue experimentation (similar to the definition by functional features as treated in T 68/85).

C-III, 4.11

Following T 237/84 it has been made clear that a general statement in the description that reference signs should not be construed as limiting the claims is admissible. Lack of clarity of the claims resulting from expressions in brackets not being reference signs has been dealt with in more detail.

C-III, 4.12, and C-VI, 5.8b

Amendments made following T 433/86 concerning support in the original application documents for subject-matter of a later disclaimer introduced in the claims to exclude prior art.

C-III, 7.10, and C-VI, 3.2a and 3.2b

Reference is made to decision G 2/92 relating to the prosecution of subject-matter for which no further search fees have been paid after an invitation to do so by the Search Division.

C-III, 8.3 and 8.4

Amendments made following G 7/93 concerning the discretionary power of the Examining Division under Rule 86(3) EPC to allow submission of separate sets of claims for Contracting States having made reservations under Article 167(2) EPC or in view of prior national rights.

C-IV, 9.5

The problem-solution approach, generally used when assessing inventive step, is now described in this section.

C-IV, 9.10; C-VI, 5.7 and 5.7a

The question of "new effects" submitted later in support of inventive step has been clarified (taking into account T 386/89 as well as T 184/82).

C-VI, 1.1 and 1.1.4, and E-VIII, 2.2.4

Account has been taken of decisions G 3/91, 5/92, 6/92 and 5/93 with respect to re-establishment of rights.

C-VI, 1.1.2, 3.1, 4.3, 4.9, and E-VIII, 3

The possibilities for applicants to accelerate the search and examination procedure are mentioned.

C-VI, 4.4, and C-VI, 15.1

have been supplemented with a commentary concerning amendments which the examiner may suitably propose with the communication under Rule 51(4) EPC.

C-VI, 4.9-4.12

Amendments made following decisions G 7/93 and 12/91 clarifying the discretionary power of the Examining Division in the case of late submissions and the time limit up to which submissions can be considered.

C-VI, 5.4

A reference to T 260/85, regarding amendments originating only from the priority document, has been added.

C-VI, 5.8a

The replacement or removal of a feature from a claim, dealt with in T 331/87 in relation to Article 123(2) EPC, is referred to.

C-VI, 5.9

Opinion G 3/89 and decision G 11/91 dealing with the allowability of corrections under Rule 88 EPC and the relationship between Rule 88 and Article 123(2) EPC are incorporated.

D-I, 4

refers to decision G 9/93: an opposition by the proprietor against his own patent is no longer admissible.

D-I, 7, and D-VII, 5.4

The status of the Legal Division, as defined in Article 20, is dealt with.

D-IV, 1.2.1 (e)

takes account of T 193/87 regarding an opposition filed in an admissible non-official language of the EPO, where the translation (of the essential elements, following decision G 6/91) in an official language is not filed within the specified time limit.

D-IV, 5.3

has been revised regarding amendments proposed by the proprietor during opposition proceedings, which are not related to the grounds of opposition (e.g. corrections, clarifications).

D-V, 2.1 and 2.2

deal with the situation where a patent is only opposed in part (following decision G 9/91) and with the question of whether the Opposition Division can consider grounds of opposition other than those brought forward by the opponent (following opinion G 10/91).

D-V, 3.1.3

takes account of decision G 1/92 concerning the question of whether subject-matter can be considered as made available to the public in cases where the characteristics of the subject-matter can only be ascertained by further analysis.

D-V, 6.2

refers to decision G 1/93 concerning the possible conflict between Article 123(2) and (3) EPC, where in the proceedings before grant a feature was added which later, in opposition proceedings, was found to be inadmissible under Article 123 (2) EPC.

D-VII, 7

takes account of decisions G 4/91 and G 1/94: intervention is only possible as long as opposition and appeal proceedings are pending.

E-II, 2

deals with the filing of completely retyped pages, following T 113/92.

E-III, 8.3

takes account of opinion G 4/92 concerning the consequences when a party duly summoned fails to attend oral proceedings.

E-III, 10.1, 10.2; E-IV, 1.7, and E-V, 6

These sections have been revised regarding the actual practice in taking minutes in oral proceedings, particularly when hearing witnesses.

E-IV, 1.2 and 3.2.2 (d)

The amendments concern the situation where a witness refuses to be heard or to give the requested information.

E-VIII, 1.6

clarifies the calculation of extended time limits under Rule 84 EPC and also takes account of J 37/89.

E-VIII, 2.2.2

Opponents cannot be re-established into the time limit for filing an appeal, following T 210/89.

E-IX, 2

makes clear how many copies must be filed with the EPO as PCT Receiving Office.

E-IX, 3.2 and 5.2

outline the protest procedure before the EPO as International Searching Authority and International Preliminary Examining Authority following an objection of lack of unity.

E-IX, 4.8 and 6.5

deal with file inspection of international applications where the EPO acts as designated or elected Office.

E-IX, 5.3 and 6.4.1

explain how results of comparative tests submitted to the EPO as International Preliminary Examining Authority and as elected Office are treated.

E-X, 5

has been supplemented with guidance on how to deal with different possible reasons for refusing an application or revoking a patent.