Updates to the EPO Guidelines 2021

The long awaited EPO Guidelines update has now been published (albeit in an unedited, provisional form). The new Guidelines came into force on the 1^st March 2021. This update, which normally occurs annually in November, will now take place in March going forwards as part of a restructuring of the revision cycle for the Guidelines under the Strategic Plan 2023.  This new timeline for revisions allows for greater user involvement with a public online consultation now forming part of the cycle. The EPO Guidelines are important in the prosecution of European patent applications, because they set out the expected practice of the EPO. Here, we discuss some of the main changes appearing in the 2021 edition.

Examination

Description amendments

The section of the Guidelines which sets out the practice on description amendments has received an extensive overhaul. The current guidance represents a significant tightening of the requirements to provide clarity between the claims and the description before grant. This follows the circulation of an internal practice note at the EPO in late 2020 and so this tightening has now been coming several months.

More than just a formal requirement, the updates to the requirements for description amendment could lead to differences in the interpretation of granted patents, and may affect the route to grant. Going forward, the EPO will have increased impetus to force through their preferred amendments, including the issuance of a summons to oral proceedings where the applicant does not amend the description as requested. We describe some of the biggest changes to practice in more detail below.

Embodiments not falling within the claims (F-IV, 4.3(iii))

Embodiments contained within an application which are no longer covered by amended claims should be deleted unless they can be deemed useful for demonstrating or highlighting aspects of the invention. If such embodiments are retained, they must now be prominently marked as “non-claimed embodiments” or “embodiments not covered by the invention”. It is worth noting that previous practice in which generic statements about “embodiments not falling under the scope of the claims” being mere examples, but not actually pointing out which embodiments do and do not fall under the scope of the claims is no longer acceptable. Similarly, the replacement of words such as “invention” with “disclosure” or “embodiment” with “example” is also no longer acceptable.

The words embodiment and invention often appear frequently in patent applications. Therefore, this new guidance significantly increases the burden on applicants to review entire specifications and amend such occurrences. It must also be carefully considered whether the statement that an embodiment “does not form part of the invention” could affect interpretation of the claims after grant. In such cases, it will be important to strike a balance between the benefits of retaining the information in the description after grant with the possible impact on claim interpretation if certain embodiments are explicitly stated not to form part of the invention.

Additionally, if an embodiment in the description is excluded under Art. 53 EPC (for example, methods of medical treatment), then these must also be adapted in a similar way. Typically, the offending subject matter should be deleted, reworded to avoid the exclusion under Art. 53 EPC, or be prominently marked as “non-claimed” or “not according to the invention” in a similar manner.

Features of independent claims (F-IV, 4.3(iii))

Amendments during prosecution frequently include features in the independent claims which were originally drafted as optional. The new Guidelines now highlight that any features appearing in the independent claims must not be described in a way that is optional elsewhere in the specification. For example, words such as “preferably”, “may” or “optionally” appearing before an essential feature must be deleted.

Claim-like clauses (F-IV, 4.3(iv))

The requirement to remove claim-like clauses is not new, however the updated Guidelines provide reasoning as to why the EPO prefers these to be deleted. In particular, the EPO is opposed to inconsistencies which may occur between clauses and claims throwing doubt on the scope of the claims. Additionally, the clauses are typically a literal repetition of the claims and so are deemed an irrelevant and unnecessary reduplication, thus falling under the “prohibited matter” class of Rule 48(1)(c) EPC.

Summons to oral proceedings (H-V, 2.7)

Finally, and somewhat alarmingly, examiners are now instructed to issue a summons to oral proceedings in the case that an applicant does not amend the description in the manner that they have been asked. Previously, the examiner would have been likely to suggest amendments in the text proposed for grant. That said, updates to part C-VII, 2 of the Guidelines set out videoconference consultations with document sharing as the preferred way to resolve minor issues with an application (such as further proposed amendments). Perhaps this will be the way forwards, as opposed to the frequency with which examiners suggest amendments in a text proposed for grant, which are ultimately rejected by the applicant.

Computer Implemented Inventions

In amended Section F-IV, 3.9.2, the 2021 Guidelines clarify in which circumstances claims for computer implemented inventions may simply refer to generic data processing means or on the other hand require additional devices or additional specific data processing means in addition to such generic data processing means. In particular, in cases where method steps are not always fully performed by the generic data processing means and the method claim recites specific technical means for carrying out some of the step, not claiming these specific means will normally lead to an objection under Art. 84 if the step carried out by the specific technical means cannot be carried out by a generic data processing means simply due to the lack of said specific technical means.

As an exception, the Guidelines state that where the specific technical means recited in the method are themselves not required for carrying out the method steps, a mere reference thereto may suffice. One example given is a sensor, from which data is received, while the claimed method is mainly concerned with the subsequent processing of the received data. In such a case, it may be not be required to have claims that comprise a sensor as specific technical means.

Patentability of database management systems

In new Section G-II, 3.6.4, the Guidelines affirm that database management systems are technical systems implemented on computers, and that a method performed in a database management system is thus a method which uses technical means and is therefore not excluded from patentability.

In this context, the Guidelines distinguish scenarios where claimed features involve technical considerations and thus make a technical contribution, and such where this is not the case. E.g. features specifying the internal functioning of a database management system are normally considered to contribute to the technical character of the invention and are thus taken into account for the assessment of inventive step. On the other hand, features that relate to the use of a (common) database system may be considered to not contribute to the technical character of the invention and consequently may be disregarded for the assessment of inventive step.

The Guidelines make a distinction between executing structured queries by a database management system and information retrieval. In case a database query is related to the cognitive content of the items to be retrieved, purely linguistic rules or other subjective criteria, it is considered to not make a technical contribution.

Effectively, the Guidelines clarify that the same benchmark exists in relation to database management systems as had been established already in relation to AI and ML inventions, in that in order to contribute to the technical character of an invention, i.e. contribute to producing a technical effect that serves a technical purpose, its application to a field of technology and/or being adapted to a specific technical implementation is required.

Antibodies

New section G-II, 5.6 of the Guidelines details the examination of claims to antibodies, in particular the requirements for patentability depending on how the antibody is defined. For more details specifically on this new section, see our blog New EPO Guidelines for Examination of Antibody Inventions.

Interpretation of “identity” and “similarity” for biological sequences

New section F-IV, 4.24 has been added to outline EPO practice regarding the interpretation of sequence identity and similarity. In particular, if no algorithm for calculation of identity/ similarity, or no similarity-scoring matrix is provided, then the terms are interpreted with the broadest meaning and any reasonable algorithm or matrix available at the relevant filing date may be used. This is essentially in line with EPO interpretation of other parameters in the claims where the method of measurement is not given.

Assessment of Unity

The sections of the Guidelines which relate to the assessment of unity have been entirely restructured. The restructuring reflects the EPO’s attempts to reach a harmonized practice between the EPO and national patent offices of the contracting states. Nominally, EPO practice is unchanged. Instead, the new Guidelines set out the steps taken in assessment of unity in a great deal more detail. The harmonization is aimed at leading to a common practice regarding the information to be provided to applicants when raising non-unity objections from the EPO and the IP offices of the EPC contracting states.

Section F-V, 3.2 now provides a consolidated discussion on the grouping of “inventions”. This covers various specific scenarios including where there are multiple independent claims in the same or different categories, grouping of dependent claims, and the way in which Markush claims are dealt with (i.e., claims that contain a number of alternatives within the same claim). A further important addition is section F-V, 3.3.1 which sets out the minimum requirements expected for an examiner to raise an objection of lack of unity.

At least the following elements must be presented to the applicant:

• the common matter between groups of inventions
• the reasons why the common matter cannot provide a single general inventive concept
• the reasons why there is no technical relationship between remaining features of the different “inventions”

Procedural aspects

Videoconference oral proceedings

Many changes to the Guidelines have been made to reflect the oral proceedings by videoconference, which are rapidly becoming the new normal. Some highlights include the following:

• E-III, 8.2 – updated to give assurances that technical problems must not be allowed to violate the right to be heard and the right to oral proceedings.
• E-III, 8.2.2 – Going forward, oral proceedings before the examining division are, by default, to be held by videoconference, “serious reasons” are required for in-person proceedings. This appears to be the position of the EPO, even after COVID-19 imposed travel restrictions are lifted.
• E-III, 8.5.2 – this is a new section detailing how written submissions are to be made by email during oral proceedings by videoconference.
• E-III, 8.11 – clarifies that where members of the division connect to videoconference oral proceedings from different locations, they will deliberate and vote via a separate communication channel.
• E-III, 11.1.1 – sets out the use of videoconference rooms on EPO premises.
• E-III, 11.3 – is updated to state that now in the case of failed oral proceedings by videoconference, new oral proceedings will also take place by video conference unless there are serious reasons. The previous practice on this point was to issue a new summons for in person proceedings.

Effect of corrections filed under Rule 20.5bis PCT

The EPO issued a notice in June 2020, that new Rule 20.5bis PCT (concerning the correction of erroneously filed parts of an application by incorporation by reference from an earlier application) is partly incompatible with the EPC.

New part C-III, 1.3 of the Guidelines sets out the EPO’s approach to dealing with requests under Rule 20.5bis. Effectively, as receiving office or designated/elected office, the EPO will not allow requests to incorporate a part by reference to replace an erroneously filed part while maintaining the original filing date of an international application. If a different receiving office allowed a request for incorporation by reference, then before the EPO an applicant will have to choose whether to maintain the incorporated parts and have a later international filing date, or to maintain the international filing date and lose the incorporated parts.

Extension of periods under Rule 134 EPC

A whole new section E-VIII, 1.6.2 has been added to explain EPO practice on the extension of time limits, for example, due to EPO closure, or due to general dislocation in the delivery of mail. A useful part of this new section (E-VIII, 1.6.2.3) sets out the scope of the application of Rule 134 including examples of which time limits will be extended and which factors are unaffected by an extension under Rule 134 (such as pendency of a parent application).

Fees

Correction of debit orders

The section of the Guidelines concerning the debiting of deposit accounts has been updated to increase the powers of the EPO to correct erroneous debit orders of its own motion. For some time, it has been the case that the EPO must carry out a debit order “if the intention of the person giving the order is clear”.

Now, the EPO can correct a discrepancy between the type of the fee intended to be paid and the corresponding amount due. The party will be informed of the correction and will be provided with a two-month period to object. However, if a required fee is not indicated on the debit order, then said fee will not be added even if it is clear that it is due on the date of receipt of the order.

In essence, this provision will be a useful safe-guard in cases where different amounts may be paid for a given fee depending on the circumstances such as search, examination and appeal fees. For example, where a reduced fees is paid by debit order on behalf of a party not entitled to the reduction, in future, the EPO should correct the fee.

Renewal fees during stay

Section A-IV, 2.2.4. has been updated to clarify the situation for payment of renewal fees in the case of a stay of proceedings due to an entitlement action. There has previously been uncertainty as to whether renewal fees continue to fall due or not. However as stated in Rule 14(4) EPC: “All periods other than those for the payment of renewal fees, running at the date of the stay of proceedings, shall be interrupted by such stay”. The updated Guidelines now make it clear that the EPO expects renewal fees to be paid during a stay of proceedings.

Other

G 3/19

Updates following the decision in G3/19 on the patentability of plants and animals exclusively obtained by means of an essentially biological process have been made throughout the Guidelines. In essence, the updates state that the exclusion from patentability for such products under Rule 28(2) EPC applies only for applications with a priority date after 1 July 2017.

Gender neutrality

The EPO have been taking steps to make the language used in their publications more gender neutral. This is reflected in the recently amended 2020 Rules of Procedure of the Boards of Appeal and 2020 European Patent Guide. Now the Guidelines have also been refreshed with gender neutral language throughout. The update to section 2.1 of the general part of the Guidelines makes it clear that any reference to a person is to be understood as gender-neutral – that is, going beyond parity for binary gender.

Summary

Many of the changes are not surprising and, with some exclusions, only relate to the proper maintenance of the Guidelines, in order to streamline the examination procedure and make it more comprehensible and transparent for the users of the EPC.

However, particularly the envisaged new approach to description amendments seems to be excessive. Indeed, the new requirements seem to place an undue burden (both in terms of time and cost) on the applicant for a European patent, while no major jurisdiction indeed has problems with the claims defining the scope of the invention, notwithstanding minor inconsistencies in the description.

Even though a patent per se is directed to the public, the content of the patent specification and the interpretation of the claims is usually always reviewed by experienced IP professionals, whether patent attorneys in a law firm or in-house, and thus the risk of "misinterpretation" is minimal. Furthermore, considering that only a relatively small proportion of European patents end up in infringement proceedings, this sweeping approach seems exaggerated.

Finally, for some jurisdictions, most noteworthy Germany and the UK, such amendments even carry the risk of affecting issues of added content or claim interpretation in post-grant proceedings, as recitation of features as “do not form part of the invention” would appear to indicate that at least those features may not be deemed equivalent anymore, thus eroding the value of the patent. But even in case this consequence does not ensue, the new approach to description amendments has the risk of significantly increasing costs at the very end of the examination procedure.

About the authors

This blog was co-authored by Christoph Moeller and Joseph Newcombe.

Joseph is a trainee patent attorney working in the chemistry and materials field assisting in the drafting and prosecution of UK and European patents. He also has experience in opposition and appeal proceedings before the EPO and the management of national/regional phase entry of international patent applications.