INFORMATION FROM THE EPO
Notice from the European Patent Office dated 1 October 2007 concerning amendment of the Guidelines for Examination in the European Patent Office
1. By decision of the President of the EPO dated 3 April 2007, the Guidelines for Examination have been amended pursuant to Article 10(2) EPC. Since this amendment has been occasioned primarily by the amendment of the Articles of the EPC agreed at the Diplomatic Conference of 20 to 29 November 2000, and the subsequent amendment of the Implementing Regulations (EPC 2000), the revised Guidelines will be applicable as of the date of entry into force of EPC 2000. The Guidelines have been revised following consultation with the Standing Advisory Committee before the EPO (SACEPO).
2. The revised Guidelines will be published in the form of a complete "December 2007" edition. They will be made available on the EPO website and will also be issued in a complete new edition in paper form.
Amendments of the Guidelines for Examination in the European Patent Office
3. The amendments carried out in this revision of the Guidelines are primarily concerned with EPC 2000. This complete revision of the EPC has resulted in the need for amendments throughout the Guidelines, the more significant of which are described in paragraphs 4 to 13 below. Additionally, amendment of references has been necessary in virtually every section of the Guidelines, because of the rearrangement and renumbering of the Implementing Regulations. As for the Implementing Regulations, the opportunity has been taken to rationalise the numbering of the Guidelines. Furthermore, a number of amendments have been made to bring the Guidelines into line with decisions of the boards of appeal on issues important for search, examination and opposition, and with prevailing EPO practice, and to correct a number of errors. The most significant of these are described in paragraphs 14 to 16 below.
4. The most extensive changes in EPC 2000 concern the requirements for obtaining a filing date and the subsequent examination of formal requirements (see especially Articles 79, 80 and 90 and Rules 39 to 41 and 56 EPC 2000). These changes also have consequences for search and examination: see in particular A-II, 4 and 5, A-III, 3, 9, 11, 13, 15 and 16, A-IV, 1, A-VII, 1, B-XII, 2, C-IV, 6 and C-VI, 3 and 5.
5. The requirements for claiming priority, and those for the filing of copies and translations of priority documents have been revised (see especially Articles 87 and 88 and Rules 52 to 54 EPC 2000), and these again have consequences for search and examination, and also for opposition: see in particular A-III, 6, A-VII, 3, C-V, 1 and 3, C-VI, 8 and D-VII, 2.
6. The language requirements of Article 14 have been significantly revised (new Rules 3 to 6): see in particular A-III, 14, A-VIII, A-XI, 9, C-VI, 2 and 14 and D-V, 5.
7. In addition to bringing all of the Implementing Regulations relating to biotechnological inventions into a single chapter (Part II, Chapter V), EPC 2000 involves a number of changes relating to biological deposits and sequence listings: see in particular A-IV, 4 and 5, A-VII, 4 and C-II, 6.
8. A further significant change to formal procedures in EPC 2000 concerns the legal remedies defined in Articles 121 and 122 and Rules 135 and 136 EPC 2000: see in particular A-VI, 2 and E-VIII, 1 and 2.
9. EPC 2000 also includes a number of formal changes to the examination procedure, such as the deletion of paragraphs 4 to 6 of the existing Article 97, amendment of Article 124, and the new Rule 10 EPC 2000: see in particular C-VI, 1, 2 and 14.
10. A number of the amendments in EPC 2000 relating to substantive patent law (Articles 53(a) and (c) and 54(4) and (5) EPC 2000) and to unity of invention (Rule 164 EPC 2000) have consequences for search, examination and opposition: see in particular B-VII, 2, B-VIII, B-XII, 8, C-II, 4, C-III, 3, 7 and 8, C-IV, 4 and 7, C-VI, 5, D-V, 3 and 6, D-VII, 4 and E-IX, 5.
11. Chapter E-IX has been extensively revised to take into account the major revision of Part X of the Convention in EPC 2000, and the procedural changes for PCT and Euro-PCT applications corresponding to those discussed above.
12. In addition to being adapted to the renumbered and updated articles and rules relating to the opposition procedure, Part D includes amendments relating to changes in formal procedures resulting from amendments in Article 104, the addition of the new Rule 89 and the deletion of the current Rule 36(4); see in particular D-II, 4 and 7, D-III, 3 and 6, D-IV, 1 and 5, D-VII, 2 and 7 and D-IX, as well as E-III, 5.
13. The new limitation and revocation procedures introduced in EPC 2000 are described in the new chapter D-X. but have also resulted in minor amendments elsewhere: see in particular A-XII, 4 and E-III, 1, 3 and 9.
14. A number of amendments have been made in the light of recent decisions from the Enlarged Board of Appeal and the other boards of appeal: see in particular C-IV, 11.2, 11.3 and 11.7.2, D-I, 4, E-III, 2 and 8.6, E-VII, 3 and E-XI, 7.3.
15. In C-II, 4.15 and C-III, 2.3.6 a number of clarifications have been made concerning computer-implemented inventions, again reflecting recent developments in the case law of the boards of appeal.
16. The following amendments relate to recent developments concerning priority document exchange, the rationalised international preliminary examination and the library of the Netherlands Industrial Property Office:
- priority document exchange with the Korean Intellectual Property Office (see OJ EPO 2007, 470): see in particular A-II, 4, A-III, 6, C-V, 3;
- discontinuation of the rationalised international preliminary examination (see OJ EPO 2004, 305): see in particular A-XI, 10;
- closure of the library of the Netherlands Intellectual Property Office: results in deletion of current B-IX, 4 and 5.3.