Updated EPO Guidelines for Examination
The updated EPO Guidelines for Examination came into force on 1 March 2021 (published here). The Guidelines are an important tool for European patent attorneys, and Applicants alike, as they describe the practice of the EPO during prosecution and post-grant procedures. Over the coming months, we will discuss the various changes made. In this note, we will focus on the updated guidance given to Examiners concerning description amendments.
There is a requirement to bring the description in line with the amended claims before grant.
“The description must be brought into line with the amended claims by amending it as needed to meet the requirements set of in F-II, 4,2, F-IV, 4.3(iii) and F-IV, 4.4” (Guidelines for Examination H, V, 2.7).
In the updated Guidelines significant changes were made to the sections covering description amendments and these changes appear to indicate a stricter approach being taken at the EPO. Of note, is the introduction of instructions to Examiners to issue a summons to oral proceedings if the Applicant does not amend the description as required despite being asked to do so (Guidelines for Examination H, V 2.7).
The main changes made relate to how an Applicant is required to deal with subject matter that falls outside the scope of the allowable independent claims and with subject matter that is excluded from patentability by the EPO.
The new guidelines state that “embodiments in the description which are no longer covered by the independent claims must be deleted (for example, if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that this embodiment is not covered must be prominently stated”.
This section further states changing the wording “invention” to “disclosure” and/or the wording embodiment, to “example”, “aspect” is not sufficient to clearly state that it does not fall under the scope of the claimed invention.
A similar approach is outlined for excluded subject matter.
These new requirements will increase the burden on the Applicant and/or their Patent Attorney to carefully review and revise the description before granting in order to ensure that the revised description meets these requirements.
In recent months it is our experience that EPO Examiners are paying close attention to these requirements before grant.
The requirements may appear straightforward to meet and in many cases, they will be. However, for some this change in practice may have far-reaching implications and needs to be carefully considered. The description is used to interpret the claims and any amendments made to the description may impact the claim interpretation during post-grant proceedings. This is especially relevant to contracting states that have a doctrine of equivalents, such as the UKIPO. Therefore, care must be taken when explicitly stating that a certain feature no longer forms part of the invention, or when deleting a feature from the description entirely.
About the author, Susanne Cahill – Patent Attorney