A new version of the EPO Guidelines for Examination will come into effect on 1 November 2016 and is already available on the EPO website. We’ve taken a quick peek through the changes (which can be displayed by toggling the “show modifications” button in the upper right portion of the screen) and discuss some of the updates below.
Patent attorneys who work on cases concerning computer-implemented inventions will be interested in the new sections added to Part G which provide a number of examples of applying the problem-solution approach to these types of invention.
General Part – the opening section now includes a link to Chapter X: Impartiality of the Examining or Opposition Division which explains the procedure to be followed in the event of some impartiality. Basically, raise such challenges as soon as possible. If the challenge is upheld then oral proceedings will be adjourned or, if still in the written phase, the concerned members will be replaced.
Part A (Formalities Exam)
- A-II, 1.3 – Filing of applications by means of electronic communications – this section relating to electronic communications has been updated to refer to the new online filing (CMS) and also the EPO web-form filing service.
Part B (Search)
- B-II, 1.1 – Contact between the applicant and the Search Division is a new section that relates to discussions with the Examiner (Note: the contents of this section previously appeared in the November 2015 Guidelines at B-XI, 8). Unless the query relates to a reply to rule 61(1) [incomplete search], rule 62a [more than one independent claim per category] or issues relating to timing of the drawing up of the search report it will not be possible to informally discuss cases with the Examiner until the application enters the exam phase. IPcopy has always regarded this section as disappointing. The extended European search report (EESR) including the search opinion is effectively “Exam Round 1” and it is unfortunate that applicants cannot raise queries or discuss potential amendment/argument options with the Examiner until they’ve filed a response to the EESR and pushed the case into the exam phase.
- B-XI, 3.2.2 – Positive Statements – this is a new section which says that the Examiner should make positive statements on patentability if any exist. He doesn’t need to go into much detail though. See also B-XI, 3.8 (Making suggestions), C-III, 4.1.2 and C-IV, 3
Part D (Opposition and Limitation/Revocation Procedures)
- D-VI, 7.2.3 – Request for publishing fee, translations and a formally compliant version of amended text passages – this section has been revised to confirm that where handwritten amendments were used in opposition or appeal decisions the formalities officer can request a formally compliant verbatim version along with the publishing fee and claim translations. Under D-VIII, 1.2.2 the patent will be revoked if the compliant version is not provided in time.
Part E (General Procedural Matters)
- E-I, 2.4 – Electronic notification – this is a new section confirming that users receiving documents eletronically from the EPO still have the 10 day rule to use.
- E-II, 8.7.1 – General principles – this section has been amended in light of a new version of rule 82. Parties are encouraged to file documents that are compliant with rule 49(8) but may choose to submit formally compliant versions within a time limit that will be specified by the EPO. The procedure to be followed in opposition proceedings is now part of new section E-II, 8.7.3.
- E-VII – Time limits, loss of rights, further and accelerated processing and re-establishment of rights – this whole chapter has seen significant amendment throughout.
Part F (The European Patent Application)
- F-IV, 3.9 – Computer Implemented Inventions (CII) – this is a new section relating to claims that cover computer related inventions. Two further sections F-IV, 3.9.1 and F-IV, 3.9.2 follow which distinguish between inventions in which all the steps can be carried out on a computing device and inventions which involve a mixture of computer and other technical devices. Examples claim formulations are provided for both scenarios.
Part G (Patentability)
- G-VII, 5.4.2 – Problem-solution approach – there are five new sections here comprising an introduction and four examples of how to use the problem-solution approach with claims that comprise technical and non-technical features. This section is a must read for anyone who works with computer-implemented inventions. The four examples are apparently all adapted from caselaw.
- Example 1 (18.104.22.168) relates to a claim that is directed towards a method of shopping on a mobile device. This example is shown to be lacking an inventive step.
- Example 2 (22.214.171.124) relates to a computer-implemented method for brokering offers and demands in the field of freight transportation. This example is shown to be lacking an inventive step.
- Example 3 (126.96.36.199) relates to a system for the transmission of a broadcast media channel to a remote client over a data connection. This example is shown to be lacking an inventive step.
- Example 4 (188.8.131.52) relates to a methof for the numerical simulation of an electronic circuit. This example is shown to comprise an inventive step.
A full list of the amended sections in the November 2016 Guidelines can be found here.
Mark Richardson 25 October 2016