http://ipkitten.blogspot.com/2023/02/highlights-from-new-epo-guidelines-for.html
The updated EPO Guidelines for Examination will enter into force on 1 March 2023. A draft version of the Guidelines can be previewed here. The main updates this year are those taking account of the new sequence listing standard, the imminent arrival of the Unified Patent Court and the new Rule 56a EPC on erroneously filed parts.
Missing and erroneous parts
The Guidelines have been amended throughout to reflect the introduction of Rule 56a EPC in 2021 (A-II-6). New Rule 56a EPC relates to procedures by which an applicant can correct “erroneously filed” parts of a European patent application (OJ EPO 2022, A3). Previously, the EPC only provided provisions by which “missing parts” could be filed. Given that such parts were classified as missing, they would be added to the parts already forming the patent application. However, this put the EPC at odds with PCT Rule 20.5bis, added to the PCT in 2020, which also allows applicants to replace “erroneously” filed parts. This allows the applicant to avoid publication of parts of the description, claims or drawings that were filed incorrectly (e.g. in cases where the drawings were mixed up with those of a different application when the application was filed).
| Missing a part? |
Rule 56a EPC was introduced in order to bring the EPO in line with PCT Rule 20.5bis. New Rule 56a EPC sits alongside existing Rule 56 EPC, which continues to provide provisions for adding missing parts. According to the Guidelines, “[w]hether documents were erroneously filed depends only on the applicant’s statement as to what was intended. No further evidence is required by the EPO.”
Rule 56a EPC, Rule 56 EPC and PCT Rule 20.5bis all contain provisions whereby an applicant may file a replacement or missing part after the filing date, without having to re-date the filing date and lose their priority claim, by making reference to the missing/replacement part in the priority document. Under Rule 56a EPC, Rule 56 EPC, PCT Rule 20.5bis the missing or replacement part will be added to the application alongside the originally filed parts, and will not replace the originally filed parts (whether considered erroneously filed or not) (Rule 56a(4)(c) EPC). To delete the erroneously filed parts, the applicant must then file an amendment during prosecution. Importantly, such amendments will be subject to the added matter provisions of Article 123(2) EPC (A-II-6.4)
Unified Patent Court
With the Unified Patent Court just around the corner, the guidelines have been updated to extend some provisions relating to national proceedings to include proceedings before the UPC. For example, acceleration of opposition proceedings may be requested in cases of pending infringement actions relating to the same patent in a national court or the Unified Patent Court (E-VIII, 5).
Sequence listings
The updated guidelines confirm that an ST.26 sequence listing must be filed for all divisional applications, regardless of whether the parent application was filed prior to ST.26 coming into force (A-III-13.2; A-IV-5; F-II-6.2). This requirement has caused some controversy (IPKat). The EPO has thus far ignored users’ concerns that the requirement for all divisional sequence listings to be in ST.26 format places an unnecessary burden on users. Epi has also raised concerns that the requirement may force applicants to add matter in cases where the ST.25 sequence listing contained less information than the ST.26 sequence listing.
Description amendments
The most controversial updates to the Guidelines in recent years was the 2021 update on amending the description in line with the claims (IPKat). Despite the increasingly divergent Boards of Appeal case law on this issue (IPKat), the EPO remains bullish. The latest version of the Guidelines have merely been updated to provide some increasingly pedantic examples of how the description should be adapted in line with the claims (F-IV-4.3; G-II-4.2, 5.3, 5.4).
Extensions states
Montenegro, previously an extension state to the EPC, became a fully fledged EPC member in October 2022. The Guidelines have been updated to reflect Montenegro’s new status as the 39th contracting state of the EPC (A-III-12.1). Bosnia and Herzegovina is now the only remaining extension state.
User consultation
EPO has invited users to comment on the updated Guidelines. The consultation can be accessed here, and runs until 4 April 2023.
Further reading
2019: Updates to the EPO Guidelines for Examination – the highlights
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