Update to the EPO Guidelines 1 March 2022 The first updated version of the Guidelines for Examination according to the new revision cycle came into force on 1 March 2022 (Guidelines). The updates are intended to reflect recent changes to European Patent Office (EPO) practice and some of the more significant changes are set out below. General practice Designation of inventor
Every application must designate the inventor and recent amendments have changed the requirements for providing the inventor address. The Guidelines clarify that the place of residence of the inventor is regarded as the city or municipality where the inventor permanently resides and not the province or region (A-III, 5.3). If the inventor address is not correct, then the designation will not be considered as validly filed. However, in the event of any deficiencies, the applicant is given 16 months from the date of filing or priority date to remedy the deficiency before the European patent application is refused (A-III, 5.4).
Priority document retrieval under the World Intellectual Property Organization (WIPO) Digital Access Service (DAS) Under European practice, it is necessary to file a copy of the previous application from which priority is claimed (priority document). Traditionally, the EPO included in the file, free of charge, a copy of the priority document retrieved via DAS in respect of EP, Chinese, Korean, and United States applications.
Following the changes announced on 13 November 2021, the Guidelines now reflect that a copy of the priority document will only be included at the request of the applicant. Although this is only a small change, it does in fact put the burden of request on the applicant. So it is important to remember to 20
make such a request, providing the relevant DAS code for the priority document, in order to avoid receiving a notice of deficiency from the EPO and, in the worst case, a loss of priority (A-III, 6.7).
Partial priorities
The Guidelines have been updated to include new text integrating the teaching of G1/15 and, in particular, more detailed examples are provided on how partial priority is assessed. Partial priority refers to a situation in which only a part of the subjectmatter of a claim is entitled to the priority date of a previous application. The changes detail the steps for assessing whether the subject-matter within a generic “OR” claim is entitled to partial priority. The new text provides an example in which the priority document discloses the use of a specific composition, whereas the application claims the use of a composition defined in more generic terms. In an “OR” claim, the subject-matter of the specific composition is entitled to the priority date, whereas the alternative subject-matter to the generic composition is not and therefore has the filing date of the application as the priority date (FVI, 1.5).
Description amendments
The EPO received considerable feedback following the 2021 changes to the Guidelines that brought in stricter expectations on the applicant to amend the description to conform to the claims. In response, the Guidelines have been updated to moderate
these requirements. Nevertheless, the burden on the applicant to make such amendments is still maintained, despite recent case law that has thrown into question the legal basis for such a requirement (T1989/18). The amended wording now emphasises that the description and/or drawings should not be inconsistent with the subjectmatter for which protection is sought. The applicant is required to remove any such inconsistencies, either by deletion or by marking embodiments as not falling within the subject-matter for which protection is sought (F-IV, 4.3). Examples of such inconsistencies are now provided, which include the presence of an alternative feature that is broader or different to, or simply incompatible with, a feature of the independent claim. The updates also clarify that “it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim. Similarly, it is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit.” Where there is a borderline case, the benefit of the doubt is now given to the applicant. In order to remove any such inconsistencies, the Guidelines still maintain that a generic statement is not sufficient; rather, amendments have to refer to “specific embodiments (e.g. “Embodiments X and Y are not
