23/10/2018
We reported earlier this month that, as surely as autumn follows summer, the latest edition of the EPO’s Guidelines for Examination in Europe will enter into force on 1 November 2018. A preview version is now available on the EPO’s website.
The updated Guidelines incorporate recent developments in European law and practice in response to regulation changes and case law. Notable changes this year include how clarity, unity of invention and excluded subject matter will be assessed by the EPO going forwards. Some of the more significant changes are discussed below and a full list of the amendments may be found here on the EPO website.
It is worth noting that the Guidelines have been generally amended to use much tighter language by replacing the term “should” with “must”, or equivalent sentiment. For example, a typical amendment states that “technical character is assessed without regard to the prior art,” rather than it “should be” assessed (see G-II 2 of the Guidelines). It remains to be seen whether these changes make a substantive difference to the prosecution of a European application, however it is hoped that both applicants and examiners will at least be provided with greater procedural certainty.
Assessment of Excluded Subject Matter
Some of the most notable amendments provide welcome guidance on the extent to which certain concepts (such as machine learning, artificial intelligence, methods of simulation or modelling, mathematical models, business methods, mental acts and programs for computers) are patentable.
The updated Guidelines clarify how claims directed to the above are assessed and include examples of patent-eligible claims. Full details may be found in G-II, 3.3, 3.5 and 3.6.
The amendments to these sections are significant and we shall bring you further insights shortly that focus solely on the details of these amendments.
Assessment of Unity of Invention
The chapter relating to Unity of Invention (F-V) has been substantially re-written. In particular, a new substantive assessment for unity is included along with new examples to illustrate the EPO’s recent interpretation of Rule 44(1) EPC.
Under European law, a group of claimed inventions is only linked to form a single general concept if there is a technical relationship among the claimed inventions involving one or more of the same or corresponding “special” features. The special features define a contribution which each of the claimed inventions (when considered as a whole) makes over the prior art.
This requirement will now be assessed using a new two-part substantive assessment for unity, which comprises the steps of:
- determining, in the light of the application as a whole, the subject-matter that is common to the claims directed to the different claimed inventions, i.e. the technical features of these claims that are the same and/or corresponding; and
- examining whether any of this common matter is special, as defined above.
The new assessment appears to be a reversal of the steps taken under the previous assessment of unity, and the wording seems to derive from the reasoning that Examiners should provide when issuing a lack of unity objection (see F-V 4.3). It is hoped that Examiners applying the new test will provide applicants with adequate reasoning to justify the lack of unity objection.
Under the new guidance, any ground for lack of unity must show the absence of the technical relationship, for example either by showing that no common matter is present among the claimed inventions, or that the common matter is not “special”.
The Guidelines provide examples where lack of unity may arise for a plurality of inventions in the same claim category, for example in a so-called “Markush grouping”. For further details and more examples, please see section F-V, 2 of the EPO Guidelines.
New Claim Category
It is noted that the Guidelines are updated to include a new allowable claim category directed towards a distributed computing environment. Examples of a distributed computing environment include: a cloud computing for storage or processing resources; an AR environment with head-mounted displays; autonomous vehicles interacting over an ad hoc network; or the use of blockchain to maintain a distributed ledger.
The new Guidelines indicate that a lack of clarity may arise for claims directed towards distributed computing environments if there is an omission of essential features. To avoid this, applicants should ensure that the claims identify the specific features of each distributed entity and define how these features interact with each other. Further details may be found in section F-IV 3.9.3 of the EPO Guidelines.
We welcome the EPO’s latest indication of what types of claims are allowable and note that the EPO generally are more willing to consider new types of claims. For example, the EPO has allowed patents directed towards computer programs or video signals without the need for physical hardware, unlike in many other jurisdictions.
However, there is an element of doubt as to the usefulness of the new claim category. Distributed computing environments may span several different jurisdictions, and establishing infringement may not be straightforward. Although there is well-established case law in the UK that not every element of a computer system must be located in the UK for infringement to occur, other jurisdictions may apply the law differently.
Assessment of Clarity
The chapter on clarity has also been generally re-written with an apparent intention to bring clarity to the assessment of…clarity. The amendments generally relate to the interpretation of commonly-used terms (for example, approximate terms such as “about 200 ºC” or “substantially circular”), and updated definitions of standard patent terms (such as “comprising”, and “consisting”). Full details may be found in section F-IV, 4 of the EPO Guidelines.
Other Notable Procedural Changes
The Guidelines are updated to clarify procedure for payments made by credit card, which have been available since December 2017. The requirements for paying a fee by credit card are not detailed in the Guidelines, but may be found here instead.
It is also noted that the Guidelines are updated to reflect that the first year renewal fee may be paid within 6 months of the due date. This enables the first renewal fee for PCT-originating cases to be paid immediately on national phase entry.
For more information on the revised Guidelines for Examination, or if you have any questions about the changes and how they might impact your EP prosecution strategy, please contact 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 any action in reliance on it.
