The EPO’s updated Guidelines for Examination entered into force on 1 March 2023. We have summarised the main changes.
Unitary Patent (UP) and the Unified Patent Court (UPC)
The Unitary Patent Agreement will enter into force on 1 June 2023. Examination proceedings before the EPO will remain unchanged. Applicant can request unitary effect one month from grant of the patent to obtain a UP. See our previous posts for more information.
If a UP is obtained, national prior rights in all UPC-member states may be citeable once the UP is in force. Such national prior rights could form the basis of a validity attack filed in the UPC, which, if successful, could result in revocation of the UP. To account for this, the EPO will perform a non-binding top-up search to try to identify national prior rights that would prima facie prejudice the validity of the UP. This gives applicants the chance to submit amendments while the European patent application is pending to address any relevant national prior rights and avoid invalidation of the UP post-grant.
The Guidelines have also been updated to extend some national proceedings provisions to UPC proceedings. For example, accelerating an opposition if there is UPC-based litigation.
Divisional applications and oral proceedings
The examining division can, in extreme circumstances, issue a summons to attend oral proceedings as their first communication. Concerning divisional applications, the updated Guidelines list three circumstances where this may occur:
- the parent application was refused or withdrawn and there is no prospect of a grant for the divisional application;
- the divisional claims are the same/broader than the parent claims and the parent was refused/withdrawn; and
- pertinent points raised in prosecution of the parent application apply to the divisional.
These new provisions may be an attempt to dissuade applicants from filing divisional applications to ensure they have pending European patent applications. Applicants should be mindful of presenting divisional claim sets to the examining division that have been unsuccessful in prosecution of the parent application. However, this in no way prevents grant of a divisional application since amendments can be filed prior to the oral proceedings, if a summons to attend oral proceedings is issued as a first communication from the examining division.
Regarding the third circumstance listed above, applicants may want to consider filing an appeal against any decision to refuse the parent application to obtain a decision from the Board of Appeal as opposed to filing divisional applications prior to such refusal.
Correcting errors in the specification at the filing stage
The EPC has long-standing provisions that allow an applicant to include missing parts of an application without re-dating the filing date of the application. Certain criteria must be met, such as filing the request within the specified time frame (two months from filing/invitation) and the missing part being completely contained in the priority application. The new EPO Guidelines now state that the priority claim must have been made when the application was filed and cannot be added later.
These provisions have now been extended to correcting “erroneously filed” parts of a specification. The same criteria apply and so any request to correct will need to be filed within two months from filing/invitation from the EPO and the correction must be completely contained in the priority document. As with the missing parts provision, the priority claim must have been made when the application was filed and cannot be added later.
Whether documents were erroneously filed depends only on the applicant’s statement as to what was intended. No further evidence is required by the EPO. Therefore, this provides a lower bar to having correction requests granted compared to the other provision in the EPC for making a correction whereby a request to correct the specification can be filed at any time proceedings are pending but will only be granted if it is 1) obvious that an error has occurred and 2) what the correction is. This new provision will also allow correction of the specification prior to publication of the application.
This new rule brings the EPC into conformity with the PCT Rules which also allow correction of erroneously filed elements of an international application.
Oral proceedings by videoconference
The updated Guidelines clarify that videoconference is now the standard format for oral proceedings. In-person oral proceedings can be requested, but will only be granted if there are serious reasons against holding them via videoconference.
ST.26 sequence listing
Since 1 July 2022, sequence listings must be compliant with ST.26 – see our previous post for more details. Forresters attorneys are able to prepare ST.26-compliant sequence listings.
If you have any questions concerning any of the updates to the EPO Guidelines, please contact your regular Forresters attorney.
