The European Patent Office (EPO) “Guidelines for Examination” is the internal manual setting out EPO procedures in all stages of the patent application process, from the formalities examination carried out on filing, through search, examination, patentability and post grant procedures such as opposition and limitation. The Guidelines are published by the EPO and are an invaluable source of information. For example, when faced with clarity, added subject-matter or inventive step objections, the Guidelines can often be used to gain an insight into how to craft a persuasive response. Better still, the Guidelines are available online (EPO Guidelines).
Last year, the EPO overhauled the update procedure. The Guidelines are now published as a new, complete edition every year. Tracked changes allow the reader to see how changes in regulations and case law have been adopted into EPO procedure. The latest updates reflect the EPO fine tuning their procedures and are summarised below.
- Translation requirements of priority documents during examination and/or opposition. The EPO can require you to file a translation of a priority document and set a deadline for doing so. If an applicant misses the deadline for filing the translation further processing is available but a further processing fee is due for each priority document for which a translation was requested.
- Relationship between the priority on a parent and its divisional applications. A priority claimed in a parent application applies to any divisional application provided that the parent application’s priority has not been lost or withdrawn by the date the divisional application is filed so that there is no necessity to claim the priority formally a second time during the divisional application process. After a divisional application is filed, the priority claims of the parent and divisional are treated separately; a priority claim can be withdrawn in respect of a divisional application yet retained in the parent application or vice versa.
- Clarification of the documents and fees required before an international application can make an early transition into the European regional phase.
- Clarity on the EPO procedure when an application is amended to claim an unsearched invention – European patent law does not allow an applicant to amend a European patent application to claim an unsearched invention. If during examination, an applicant tries to amend to an unsearched invention, the EPO must issue a communication repeating the lack of unity objection raised in the search stage before they can refuse the application
- “Notorious” Knowledge. The amended Guidelines clarify that where the technical aspects of computer-implemented inventions and business methods are so well known that their existence at the priority date cannot be reasonably disputed (so-called “notorious knowledge”) the search report need not cite any specific documents. Notorious knowledge should not be confused with “common general knowledge” which is the knowledge of an ordinary practitioner in the relevant technical field. As before, where the EPO assert that a technical aspect is common general knowledge this should be supported by basic handbooks and text books and can be contested if documentary evidence is not provided.
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.