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EPO Guidelines for Examination 2017 – a review of the changes


19th Oct 2017

The European Patent Office (EPO) has recently issued revised Guidelines for Examination that come into effect from 1 November 2017. As in previous years, we have had an opportunity to review the revised Guidelines in advance and we have identified what look to be the main changes below.

In most cases, the changes are a clarification or codification of what would appear to be the current practice anyway. For example, we understand the EPO has begun writing to applicants to advise that a priority claim having the same date as the application’s filing date is not accepted – the revised Guidelines describe this new practice.

With regard to applicants’ submissions in reply to a summons to oral proceedings, the revised Guidelines state that informal consultation to discuss the new request(s) may be allowed by the first examiner, in particular if there is a reasonable prospect that the consultation could lead to an agreed allowable claim set – this seems to echo what the examiners are already doing.

On excluded subject-matter, the revised Guidelines are updated substantially in view of recent case law in the fields of graphical user interfaces and presentations of information. The Guidelines are also updated to accommodate the amended Rules 27 and 28 in force as of 1 July 2017, i.e. the exclusion of products exclusively obtained by essentially biological processes following the Notice of the European Commission from November 2016.

But, one new change of interest describes what appears to be a new practice whereby the examining division issues a summons to oral proceedings as a first communication. The Guidelines state that, in exceptional situations where despite the applicant’s reply to the search opinion no possibility of a grant can be envisaged, the examining division may issue a summons to oral proceedings as the first action in examination. In particular, the division may decide to do so only if

  1. the content of the claims on file is not substantially different to that of the claims which served as a basis for the search, and
  2. one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply.

Since the Guidelines state that these apply in exceptional circumstances only, we expect it to be relatively rare to receive a summons to oral proceedings as first communication from the examining division. But, one situation where we wonder if the EPO examining division might issue a summons as first communication is in cases where applicants have previously elected Chapter II examination during the international phase using the EPO as International Preliminary Examination Authority (IPEA), but have failed to make any progress. This might be either by maintaining arguments that have not been found persuasive by the EPO as IPEA or by making amendments that add subject-matter. Before examination begins in the EP regional phase, the same EPO examiner might have already had multiple rounds of prosecution with the applicant and may feel more justified in issuing an early summons to oral proceedings if prosecution appears to have stalled.

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.

Author
Christopher Smith
Senior Associate
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Would you like to know more? You can talk to Christopher Smith who will be able to help. Call +44 (0)20 7242 0901

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