Early in February 2021, the European Patent Office (EPO) published a draft update to its Guidelines for Examination. A finalised version will enter into force on 1 March 2021. This publication departs from the EPO’s prior policy of when the industry will be notified of guidelines changes. Previously, updated guidelines would enter into force annually on 1 November with a preview being made available the month before. From now on, however, the EPO will publish a draft version, in English only, at the beginning of February ahead of a finalised version that will be published and come into force at the beginning of the following March.
Of the draft updates to the Guidelines, most notable are the modifications to Part F entitled ‘The European Patent Application’. As predicted and indicated in some Examination Reports issued in the past six months, the EPO has adopted a far more restrictive view of what constitutes an inconsistency between the description and claims and thus what may be considered unclear under Art. 84 EPC. Part F – Chapter IV – 17 of the Guidelines. The draft guidelines state:
‘Embodiments in the description which are no longer covered by the independent claims must be deleted… unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims.’
The Guidelines continue,
‘In such a case [where an embodiment can be reasonably considered to be useful] the fact an embodiment is no covered by the claims must be prominently stated…’ (Emphasis added.)
Moreover, it will be no longer sufficient to use ‘generic statements’ to mark such an embodiment out from the rest of the description; specific parts of the description that are no longer covered must be indicated. In addition, features ‘required’ by an independent claim may no longer be stated as being ‘optional’ or ‘preferable’ etc. in the description. The EPO also appears to have taken a firmer view on the inclusion of so-called ‘claim like clauses’ in the description i.e., clauses that precede features that are not claimed, often introduced by such phrases as ‘characterised in that’ and ‘further comprising’. The EPO cements this tougher stance in Part H, Chapter V of the draft guidelines, which now include a clear warning to applicants that if they do not ‘amend the description as required despite being asked to do so, the Examining Division's next action will be to issue summons to oral proceedings.’
Part F – Chapter V of the Guidelines, which concerns ‘Unity of invention’, has also received updates. Section 2.2, ‘examples of groups of inventions’ of the current guidelines has been deleted, and a new section 3, ‘assessment of unity’ has been introduced. The Guidelines state:
‘When analysing the technical problem in a non-unity assessment, the starting point is usually what is considered by the applicant in the description as having been achieved… The technical problem put forward by the applicant in the description may… reveal itself as unsuitable as a means of linking the subject-matter of the claims…’
The apparent increased emphasis on the description by an Examiner considering unity may influence drafting practice going forwards. In addition, the amendment to Part H may require applicants to consider very carefully how the description is amended during prosecution, particularly with a view to possible post-grant proceedings. Some jurisdictions such as the UK and Germany have a “doctrine of equivalents” provision when considering the scope of the claimed subject matter. In this instance, it will be interesting to see what effect either deletion of text or amendment to specify that the text does not fall within the scope of the claims will have on the perceived scope of the claims. A case-by-case approach to amendment of the description is likely to be required. Furthermore, it is expected that any significant change in approach by Examining Divisions at the EPO is likely to be tested in appeal proceedings. It therefore may be several years until the “new” approach to description requirements becomes settled practice.
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