Guidelines to Examination - Key Changes

Catherine Jewell & Deborah Hart | November 2019

The annual update of the European Patent Office Guidelines to Examination will come into force on 1 November 2019. The Guidelines, which are not legally binding, give instruction on the procedures and practice at the EPO. A few of the key changes are highlighted below.

One apparent omission is amendments in light of the new Rules of Procedure of the Boards of Appeal 2020. However, these do not come into force until 1 January 2020, hence no changes have been made to the Guidelines yet. Nevertheless, the EPO’s desire to streamline and speed up post-grant proceedings is demonstrated in changes to the ”General remarks” for the opposition proceedings highlighting that the parties are subject to “a duty to facilitate due and swift conduct of the proceedings, present all relevant facts, evidence, arguments and request as early and completely as possible.” 

This year the updated Guidelines include a few revisions in the sections on novelty, inventive step and clarity in light of recent case law, as well as more details and guidance provided in the chapters relating to formalities and procedural aspects. For instance, the chapter relating to added matter, in particular the deletion of alternatives from more than one list, has been expanded to include examples of amendments to illustrate the point. Similarly the section relating to means-plus-function features (i,e. “means for”) has been expanded and examples added.

The chapter relating to filing a Euro-PCT application has been brought into line with current EPO practice and procedures, as well as making this easier to read. A sub-section relating to the Patent Prosecution Highway (PPH) has also been introduced, giving details of the basis of the procedure.

The novelty section has been updated in relation to selection inventions, following recent case law decisions.  “Selection inventions” relate to a sub-set or sub-range which has not been previously disclosed, of a larger range. The test for determining whether a selection invention is novel has been amended, removing the last step of assessing whether the selected range is an arbitrary selection. This step was seen to be more a question of inventive step rather than novelty.

There are two changes of note in the inventive step chapter. First, a new subsection relating to the assessment of inventive step in biotechnology has been added, clarifying the definition of “reasonable expectation of success” and that this is different to “hope to succeed”. Second, the chapter relating to AI and machine learning introduced last year has been updated. The section has been softened so that Examiner must take into account whether features such as “a support vector machine” or “neural network” contribute to the technical character of the claim as a whole. The EPO appears to be taking steps to recognise that algorithms and machine learning may contribute to patentable inventions.

Although the changes in this year’s edition of the Guidelines do not appear likely to have a major impact on day-to-day practice, it is helpful to have recent case law changes formalised, as well as seeing how EPO examination practice is changing in line with current developments in the approach of the Boards of Appeal.