03/11/2014
Last month, the European Patent Office (EPO) issued a fresh, 2014 edition of its Guidelines for Examination (the ‘Guidelines’). Though not themselves legally binding, the Guidelines are the official authority on the proper application of all aspects of the law set out in the European Patent Convention (EPC) and its Implementing Regulations. As well as being relied upon heavily by examiners, they are often a useful first point of call for attorneys faced with an unfamiliar or difficult issue of patent practice. The EPO provides for annual revisions to the Guidelines in a bid to ensure that they continue to be of relevance in the light of ongoing changes to the law, more major jurisprudential developments and general shifts in practice. This latest edition of the Guidelines apply with effect from 1 November 2014.
So What’s Changed?
As one might expect, some of the more major revisions to the Guidelines reflect the recent changes to the European rules governing the timelines for filing new divisional applications and the availability of further searches for international applications (EP) found to lack unity of invention.
Among the further modifications is a heavy elaboration of the guidance surrounding the allowability of claims to second or further medical uses of known pharmaceutical products. There is also a new consideration of the compatibility of interrelated method claims with the EPC’s strict one-claim-per-category rule, including examples of some specific cases in which a plurality of method claims might be allowable; and a small but not insignificant revision to the directions for dealing with multiple applications, from the same applicant, to a single invention. Following the decision of the Technical Board of Appeal (TBA) in T2461/10, examiners ought now not to dismiss an application so as to rule out double patenting unless it “[claims] the same subject matter” as a second application from the same party. The availability of this ground is thus restricted considerably: currently, an applicant may be barred from proceeding with multiple applications unless the respective claims are “quite distinct in scope and directed to different inventions”.
By far the most notable change, however, relates to the guidance surrounding the question of added subject matter. Under Article 123(2) EPC, any amendment to a European patent or patent application that introduces subject matter “[extending] beyond the content of the application as filed” is unallowable. As currently interpreted by the EPO, this provision takes effect in the form of a condition that the wording of a proposed amendment, to be permissible, must be “directly and unambiguously derivable” from the disclosure of the invention as first filed. The Boards of Appeal have been keen to stress that the legislative wording does not amount to a strict requirement for literal support for the new wording in the original application. Nevertheless, it is not uncommon for European patent attorneys (and their principals), looking to make constructive amendments to move their applications forward, to find themselves frustrated by objections that their proposed new language adds matter simply because it lacks word-for-word basis in the application as filed.
Following a symposium on the issue earlier this year, and echoing the decision of the TBA in T2619/11, the new Guidelines encourage examiners to “avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject matter that the skilled person would directly and unambiguously derive from the application as a whole”.
Instead, “the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience”. In other words, the “subject matter” of an application is now unequivocally understood to correspond not uncompromisingly to the literal sequence of words set out in print on the pages of that application, but more loosely to the overall teaching that those words, when read as a whole, impart to one of ordinary skill in the field of the invention.
Perhaps unsurprisingly, the new paragraph is being welcomed as a positive development for patent practitioners and applicants alike. Though the addition does not in reality express anything new, it is hoped by many that it will signal a conclusive end to demands for literal support for amended wording.
However, proprietors of patents and applications continue to be obliged under Rule 137 EPC to provide adequate basis for any desired amendments. It is perhaps of note that the new Guidelines are more careful than ever to stress this duty, and place particular emphasis on its relevance in the wake of the updated guidance for determining whether or not an amendment adds new matter. The Rule, the Guidelines now read, “should be understood as an opportunity to provide convincing arguments…as to why the amendment(s) is / are directly and unambiguously derivable from the application as filed…[These arguments] are particularly important…where literal support for the amendment(s) is not present in the application as filed”.
To the extent that the freedom to amend is enhanced by the new guidance on added subject matter, therefore, the lengths to which applicants and patentees will be required to go in order to justify more liberal amendments with detailed argumentation remains to be seen. It seems that only time will tell the direction and magnitude of any material shift in the way in which amendments to European patents and applications are examined following the entry into force of these new Guidelines.
For further information on the latest update to the Guidelines, or if you have any questions, please do not hesitate to get in touch with one of our attorneys.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.
