Pages 582-585

INFORMATION FROM THE EPO

Notice from the European Patent Office dated 21 November 2003 concerning amendment of the Guidelines for Examination in the European Patent Office

1. By decision of the President of the EPO dated 21 November 2003, the Guidelines for Examination have been amended pursuant to Article 10(2) EPC. The amendments are being published in the form of a complete "December 2003" edition of the Guidelines. They have been revised following consultation with the Standing Advisory Committee before the EPO (SACEPO). The English version of the amended Guidelines is being made available in advance on the EPO website (http://www.european-patent-office.org; see Toolbox for applicants, Legal Texts). The principle of equal treatment of the official languages having been weighed against the interest of the public in being informed, it has been decided to pre-publish the English version while the translations into French and German are being prepared, in order to provide users with the new texts as soon as possible.1

Amendments to the Guidelines for Examination in the European Patent Office

2. Since the last complete edition of the Guidelines of July 1999, updates relating to the following issues have been published:

• complex applications (Notice dated 3 April 2000, OJ EPO 2000, 228)
• biotechnological inventions (Notice dated 21 December 2000, OJ EPO 2001, 115)
• business methods and computer-related inventions (Notice dated 31 August 2001, OJ EPO 2001, 464).

3. The purpose of the present amendments is to bring the Guidelines as a whole into line with the current articles and rules of the EPC, with decisions of the boards of appeal on issues important for search, examination and opposition, and with prevailing EPO practice.

4. A number of amendments to the Guidelines are due to the entry into force of amended provisions of the EPC, the Implementing Regulations and the Rules relating to Fees (RFees). Such amendments relate to the following issues, among others:

• responsibilities of the Receiving Section, the search divisions and the examining divisions

(Articles 16 to 18 EPC as amended by the Act revising the European Patent Convention of 29.11.2000, provisionally applicable as of 29.11.2000, OJ EPO 2001, Special edition No. 4):

see in particular C-VI, 1

• divisional applications

(Rule 25(1) as amended by decision of the Administrative Council of 18 October 2001, OJ EPO 2001, 488; see also Notice dated 9 January 2002, OJ EPO 2002, 112; Rule 25(2) as amended by decision of the Administrative Council of 13 October 1999, OJ EPO 1999, 660; see also Notice dated 13 October 1999, OJ EPO 1999, 696):

see in particular A-III, 12.2, A-IV, 1.1, A-IV, 1.4.1, and C-VI, 9.1.3

• number of independent claims

(Rule 29(2) as amended by decision of the Administrative Council of 13 December 2001, OJ EPO 2002, 2; see also Notice dated 9 January 2002, OJ 2002, 112):

see in particular C-III, 3, and C-III, 7.1

• priority documents and translations thereof

(Rule 38(3) to (6) as amended by decision of the Administrative Council of 13 October 1999, OJ EPO 1999, 660; see also Notice dated 13 October 1999, OJ EPO 1999, 696; Rule 38(5) as amended by decision of the Administrative Council of 18 October 2001, OJ EPO 2001, 488; see also Notice from the EPO, OJ EPO 2002, 192):

see in particular A-III, 6.8, and C-V, 3

• examination procedure

(Rule 51 as amended by decision of the Administrative Council of 18 October 2001, OJ EPO 2001, 488; see also Notice dated 9 January 2002, OJ EPO 2002, 112):

see in particular A-XI, 4.2.3, C-VI, 2.6, C-VI, 4.9, and C-VI, 15

• Euro-PCT applications entering the European phase

(Rules 85a(1), 85b and Rules 106 to 112 EPC as amended by decision of the Administrative Council of 13 October 1999, OJ EPO 1999, 660; see also Notice dated 13 October 1999, OJ EPO 1999, 696; Rule 107(1) and Rules 85a(1), 85b and 108 EPC as amended by decisions of the Administrative Council of 28 June 2001, OJ EPO 2001, 373 and 374; see also Notice dated 1 December 2001, OJ EPO 2001, 586):

see in particular A-III, 9, A-III, 12.10, A-III, 13.2, A-VII, A-XI, 9.3.2, B-III, 3.4, C-III, 7.11, C-VI, 1.1.3, C-VI, 9.4, and E-IX, 5

• refund of fees

(Article 10 RFees as amended by decision of the Administrative Council of 13 December 2001, OJ EPO 2002, 1; Article 10d RFees as amended by decision of the Administrative Council of 18 October 2001, OJ EPO 2001, 492):

see in particular A-XI, 9.3.2, and A-XI, 10.2.

5. The revised Guidelines take into account in particular the accepted use of electronic media, eg by providing for:

• filing online or on data storage media

(see decision of the President of the EPO of 29 October 2002, OJ EPO 2002, 543; Notice dated 29 October 2002, OJ EPO 2002, 545):

see in particular A-II, 1.3, A-II, 3.1, A-II, 4.1.1, A-IV, 1.3.1, A-V, 3, and A-IX, 2.5

• online file inspection

(see decision of the Administrative Council of 11 October 2000, OJ EPO 2000, 473; decisions of the President of the EPO of 6 June 2003, OJ EPO 2003, 370 and 371; Notice dated 6 June 2003, OJ EPO 2003, 373):

see in particular A-XII, 2.2

• the filing of priority documents on physical media other than paper (eg CD-R):

see in particular A-III, 6.7.

6. Some amendments to the Guidelines have been made in the light of new case law, in particular the following decisions of the Enlarged Board of Appeal:

• G 3/98 (OJ EPO 2001, 62) and G 2/99 (OJ EPO 2001, 83) relating to calculation of the six-month period referred to in Article 55(1) EPC:

see in particular C-IV, 8.2

• G 4/98 (OJ EPO 2001, 131) relating to designation fees:

see in particular A-III, 12.5

• G 2/98 (OJ EPO 2001, 413) relating to the requirement for claiming priority of the "same invention" within the meaning of Article 87(1) EPC:

see in particular C-V, 1.3, and C-V, 2.2

• G 3/99 (OJ EPO 2002, 347) relating to the admissibility of joint opposition or appeal:

see in particular D-I, 4, and D-III, 2.

7. Examples of other main amendments:

The section on "Inventive step" (C-IV, 9) has been extensively revised to take account of established case law on various aspects (eg the problem-solution approach). The sections on "Unity of invention" (B-VII, 1, C-III, 7) have been clarified. To avoid overlap with the PCT International Search and Preliminary Examination Guidelines, the passages relating to the international phase of PCT applications (especially in B-III and E-IX) have been deleted. The introduction of BEST Office-wide has entailed adapting the present Guidelines (see in particular B-II and C-VI, 8). Amendments in Part B also take into account the electronic search tools now available.

8. The format has been changed to standard A4. This allows a larger font size to be used, and will simplify the distribution of any future updates of the Guidelines, since users will additionally have the option of simply printing out updated pages in PDF format from the EPO website in the correct size if they so wish. The opportunity has also been taken to remove some editorial and linguistic inconsistencies and to harmonise the use of headings and numbering.