Changes in the Guidelines for examination at the European Patent Office 2023

For an applicant seeking for protection of the European Patent or an Opponent seeking for revocation of the European Patent, it’s essential to keep up-to-date with the latest changes to the Guidelines for Examination in the EPO. These Guidelines provide instructions on the practice and procedure to be followed during the examination of European patent applications or European patent, in case of the opposition, in line with the European Patent Convention and its Implementing Regulations. As usual, the European Patent Office (EPO) introduced several changes to its Guidelines for examination in order to improve the legal certainty in the patenting process for patent applicants or patent opponent and to enhance the quality of patents granted/maintained (in amended form) after the opposition. With the March 2023 edition now in force, it’s crucial to stay informed on the main updates. I have prepared short summary of the main recent changes (2023 version of the Guidelines). By keeping up with these updates, you can ensure your patent applications meet the latest standards and are more likely to be granted by the EPO.

These changes cover a wide range of topics, such as: Correction of erroneously filed application documents or parts; Prior art and prior rights searches under rule 164(2) EPC; National prior rights searches and European Patent with Unitary effect; and Format and conduct of the oral proceeding and right to be heard.

Should you need to provide more personalized advice, contact me on email address docket@bauerip.eu .

Correction of erroneously filed application documents or parts

The amendment to the Guidelines reflects introduction R. 56a into the Implementing Regulation of the EPC.

Upon filing, the EPO will review the application to confirm its eligibility for a filing date. If any issues are detected with the description, claims, or drawings, the EPO will request the applicant to submit the correct documents within two months of receiving communication to supplement missing parts or withdraw the parts or supplement the erroneously filed parts. Failing to respond to the EPO’s request within the specified timeframe will result in the not filed or (newly introduces) erroneously filed documents remaining in the application as filed. It’s important to note that applicants cannot claim the omission of the communication as an excuse. Staying informed on these processes is crucial to ensuring successful patent applications. As a European patent attorney, I can assist you in navigating these complex requirements and ensuring your applications meet the necessary standards.

Applicants have the option to file corrections to the description, claims, or drawings on their own initiative within two months of the original filing date. In cases where the EPO requests the applicant to submit the correct documents, Rule 56a(1) takes precedence. If an applicant discovers any errors within two months of the original filing date, they should submit the correct documents as soon as possible under Rule 56a(3) to avoid missing the opportunity to do so.

It’s important to understand the rules surrounding the filing of missing parts of a patent application. If the applicant files any missing parts of the description or drawings within the given timeframe, and the application claims priority of an earlier application, the date of filing will remain the same. This is provided that the missing parts are entirely contained within the earlier application and the applicant submits a copy of the earlier application, a translation if required, and an indication of where the missing parts can be found. Failure to file the missing parts within the specified time or withdrawal of any previously filed parts will result in deletion of any references and non-filing of the missing parts. If the applicant doesn’t comply with the requirements for filing within the specified time, the application will be re-dated to the date of missing parts filing, unless the applicant withdraws the missing parts within one month of notification.

Prior art and prior rights searches under rule 164(2) EPC

If you’re an applicant who is intending to entry into the Euro-PCT phase of the international application according to PCT, you should be aware of Rule 164(2) EPC. This rule states that the examining division will assess your application documents upon expiry of the six-month time limit set in the communication under Rule 161 and Rule 162 if the EPO acted as ISA or as SISA. If you have claimed an invention or group of inventions not searched by the EPO as ISA or SISA, the examining division will issue an invitation to pay search fees for the rest of the non-searched inventions.

There may be situations where your amended application documents contain claims for a non-searched invention, even if the documents met the unity of invention requirement. This can happen when the amended application contains only one invention that was not searched by the EPO in the international phase. In this case, the invitation needs only to refer to the non-unity objection in the WO‑ISA and the lack of payment for the invention during the international phase.

If an invention in the application documents was not claimed in the application documents that served as the basis for the procedure in the international phase and has been imported from the description, an invitation to pay search fees under Rule 164(2) EPC for any non-searched invention will be issued by the examining division, regardless of whether lack of unity persists in the claims.

The application documents forming the basis for the European phase may also cover inventions or groups of inventions which were not searched in the (supplementary) international search report as a result of the procedure for erroneously filed elements under Rule 20.5bis PCT. In this case, an invitation to pay search fees under Rule 164(2) EPC is to be issued by the examining division.

If you want to apply auxiliary requests before a search under Rule 164(2) EPC is performed, only the main request is taken into account for the purpose of the search. If any search fee(s) is/are paid in time, the results of the search(es) are communicated to the applicant as an annex to a communication.

If the applicant pays the search fees in due time under Rule 164(2) EPC and at the same time files a new set of claims, the search will be carried out, and the written opinion will be issued for the claims on file upon expiry of the period under Rule 161 EPC for which the invitation to pay has been sent and the requested fees have been paid.

European Patent with Unitary effect and national prior rights – National Prior Rights in the Unified Patent Court: How to Expand the Top-Up Search Scope

National Prior Rights are crucial for applicants in the Unified Patent Court proceedings. Therefore, the examiner at EPO will provide the top-up search scope at the grant stage to include national applications and patents of the contracting states present in the EPO’s databases. The applicant shall be informed of the results of the top-up search for national prior rights, which are prima facie relevant and will be communicated to the applicant.

Format and conduct of the oral proceeding and right to be heard

From the recent changes, we have learned about the guidelines for holding oral proceedings at the European Patent Office (EPO). Videoconference is the primary method for holding oral proceedings, but there may be exceptions. If there are serious reasons against using videoconference, proceedings may be held on the premises of the EPO. Examples of serious reasons include a visual impairment or an object requiring haptic features. However, objections to videoconferencing technology or equipment availability do not typically qualify.

Parties of the proceeding must ensure that their videoconferencing equipment meets technical requirements and should perform a test call before the proceedings. An email with the necessary details, including a link or other means of connecting to the videoconference, will be sent in addition to the summons.

A request for oral proceedings on EPO premises should be filed early and is at the discretion of the competent division. If the request is denied, the reasons will be given in the annex to the summons or inform the parties after the summons is issued. The decision cannot be appealed. If granted, the parties will be notified, and the date may remain unchanged.

Note that requests for oral proceedings at a specific EPO site are not accepted and cannot be appealed.