Update 03/02/2022: The preview has been re-published and the links to it in this article are live again.

Update 02/02/2022: The original press release regarding the advance preview of the Guidelines and the pdfs of the preview have been taken down. The links in this article will be updated once the advance preview is re-published.

Original article:

The European Patent Office has today published an advance preview of its annual update to the Guidelines for Examination which will come into force on 1 March 2022.

1. Description amendments (again)

Since the updates to the 2021 Guidelines brought in stricter expectations for bringing the description in line with the claims prior to grant of patent applications, the EPO have been receptive to users’ backlash.

The EPO noted that many of the responses in the consultation on the 2021 Guidelines were on this topic. As a result, the EPO have engaged with professional associations to seek feedback, and taken on board proposed wording for the requirements from the SACEPO Working Party on Guidelines.

In light of this, F-IV, 4.3 has been revised to soften the requirement to adapt the description to accord with the claims. In particular, the Guidelines no longer require the removal, or prominent marking as not being claimed, of embodiments in the description that are no longer covered by amended claims. Instead, only subject-matter that is inconsistent with the claims needs to be deleted from the description or marked as not falling within the subject-matter for which protection is sought.

Additionally, the new Guidelines state that applicants must be given the benefit of the doubt for borderline cases where it is unclear whether an embodiment is consistent with the claims.

It is worth bearing in mind that this new Guidelines wording would have been finalised before the somewhat controversial decision in T 1989/18 which found no legal basis for the requirement to amend the description in line with the claims.

2. Establishing a technical effect of a simulation

Following G 1/19, which maintained the status quo by applying COMVIK to assess computer-implemented simulations, G-II, 3.3.2 has been updated to make it clearer how to approach establishing whether or not there is a technical effect when the claimed subject matter involves a simulation. The new discussion delineates different situations where simulations are involved, covering the gamut from purely numerical simulations with no direct link with physical reality, to simulations which interact with the outside world.

Important concepts that were reinforced in G 1/19 are now emphasised in the Guidelines. In particular, that output data of a simulation may have a ‘potential technical effect’ – a technical effect that would be produced when the data is used according to an intended technical use.

Correspondingly, G-VII, 5.4.1 has been updated to refer to G-II, 3.3.2 when formulating the objective technical problem for mixed technical and non-technical claims.

3. Partial priority considerations

Partial priority, when only part of the claimed subject matter is entitled to the priority date of an earlier application, may arise if a claim is broader than disclosed in the priority application.

F-VI, 1.5 of the 2022 Guidelines appends a reminder to the discussion of situations involving partial priority: that since an application and an earlier application filed by the same applicant can partially relate to the same invention, the application can only serve as ‘the first application’ within the meaning of Art. 87(1) EPC for parts of the invention which are not disclosed in the earlier application. In other words, a later application cannot validly claim priority to a part of the application which already appears in the earlier application.

This reminder reflects updates in the most recent edition of the Case Law of the Boards of Appeal in summarising T 282/12 which held that the rationale of G 1/15 also applies when deciding whether an application from which priority is claimed is ‘the first application’.

The additions to F-VI, 1.5 also warn of potential consequences of separately transferring partial priority in case an assignor is left with a limited right and may no longer claim that partial priority.

The addition of these reminders to the Guidelines for Examination is a little curious given that, as a rule, the EPO initially examines only the formal conditions for claiming priority.

4. Inventors’ location

Amended Rule 19(1) EPC came into force in April 2021 and changed the requirement to provide an address for each inventor with their place of residence. Whilst the wording of the amended rule referred only to the place where the inventor resides, in practice, the EPO have been accepting the place of the applicant to be given for the inventor.

The new Guidelines formalise this practice in A-III, 5.3 which may provide reassurance to users who have already been providing the place of the applicant as the place of residence of the inventor.

Honourable mentions

  • F-V, 3.2.4 – new example of lack of unity in claims with multiple dependencies.
  • G-VII, 5.4.2.4 – new example of applying COMVIK approach which illustrates a situation where features which are non-technical in isolation, but contribute to producing a technical effect in the context of the claimed invention.
  • E-VIII, 1.6.2.3 – additional types of period now expressly covered by extensions under Rule 134 EPC. The Guidelines therefore give legitimate expectations to users that the stated periods are extendable under all paragraphs of Rule 134 EPC even though no legal basis is given e.g. for the application of Rule 134(2) EPC to the opposition period.
  • E-VI, 2.2 – restructured with minor revisions to discussion of late submissions in oral proceedings, some of which has been moved from former E-III, 8.6
  • G-IV, 5.4 – discussion on prohibition on double patenting updated in view of G 4/19.
  • F-IV, 4.7.1 – extended reasoning on why the qualifiers “about”, “approximately” or “substantially” normally need to be deleted from claims.

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14 comments

  1. “potential technical effect’”

    This whole “technical effect” doctrine need to go to the bin.

  2. I do not agree that there has been much softening of the EPO’s stance. This is because the proposed wording of F-IV, 4.3 includes the following.

    “Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims. Such inconsistencies may be present in the application as originally filed or may result from amending the claims to such an extent that they are no longer consistent with the description or drawings.

    For example, an inconsistency may exist due to the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim. Further, an inconsistency arises if the embodiment comprises a feature which is demonstrably incompatible with an independent claim…

    The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought…

    The terms “disclosure”, “example”, “aspect” or similar do not necessarily imply that what follows is not encompassed by an independent claim. Unambiguous expressions have to be adopted to mark an inconsistent embodiment (e.g. by adding “not encompassed by the wording of the claims”, “not according to the claimed invention” or “outside the subject-matter of the claims”) instead of replacing the terms “embodiment” or “invention” by one of the aforementioned terms”.

    It therefore seems that the EPO still wants applicants to mark each and every “inconsistent embodiment” in the description as not forming part of the claimed invention.

    In my view, the wording of the revised Guidelines is unlikely to improve the situation in anything other than a small minority of cases. For the majority of cases, the tweaks to the wording will be about as much use as a chocolate fireguard.

    1. Decision T 1642/17 referenced in CLB, II.A.6.3.1 published in the OJ 2021 points out that the claims must be interpreted without the help of the description when the words of the claim have a “well-established meaning in the art”. If this principle is given full consideration, the requirement to remove inconsistencies between the description and the claims loses basis. It is surprising indeed that the advance preview of the 2022 revision fails to mention this principle, especially given that it is emphasised in the last version of the CLB.

      It is also surprising that the issue of sufficiency of training datasets for AI pointed out in T 0161/18 is not mentioned, this is a prominent decision in the field of inventions using AI.

  3. It’s not clear that G 1/19 maintained the status quo. Point 6.1 of T 1371/16 suggests that constraining further use of the output of a simulation might be a new requirement that did not exist prior to G 1/19.

  4. For all those who thought that the EPO would bow to the pressure generated by the famous T 1989/18, the amendments of the Guidelines do not change EPO’s fundamental stance in the matter.
    i agree with Concerned Observer.
    What can be considered positive is that in case of doubts, the doubts should benefit to the applicant.
    When looking at some of the suggestions certain representatives wanted to maintain, it is clear that what they considered allowable is certainly not allowable.

    It is to be hoped that applicants will stop filing claims of the kind “computer program” or “program support” which perform method claim 1 when inserted in a computer, when in order to perform the method needs external devices. If no external devices are disclosed, the objection is then not Art 84 but Art 83. When the method consist for example in controlling process, sicking the program in a laptop will not allow to carry out the method! See F-IV, 3.9.2.
    Such a conclusion was however reached by a BA in T 926/17

    https://www.epo.org/law-practice/case-law-appeals/recent/t170926eu1.html

  5. On the issue of conformity between what the claims define as the invention and what the description describes as the invention, I’m running a thought up the flagpole to see how other readers react.

    Serving US clients, one learns that if it comes to litigation, every “issue” that can be put forward adds another million dollars to the costs. So if one is an SME which frars being bullied by a large corporation, it is essential to keep the number of “issues” to a minimum. But every disconformity between claims and description is an opportunity to construct an additional “issue” to argue about in litigation.

    Accordingly, if the EPO is sincere about helping SME’s by granting them patents they can swiftly enforce, and sincere about raising “quality” it will continue to lean on Applicants to conform their descriptions to the claim amendments they make during prosecution at the EPO.

    But there’s a balance in everything. We want “fair” protection for Applicants together with “reasonable” legal certainty for everybody. It’s the courts that have to deliver that objective. Serving up to them patents with thoughtfully conformed descriptions will help them to do that job, but to chase after clarity to an extent of 100% is ridiculous nonsense. Even when you think you have text which exhibits100% clarity, every self-respecting lawyer will find an argument that it does not..

    1. Each amendment of the description could creates an extra “issue”: anyone could argue e.g. that the deletion of subject-matter from the description violates Art. 123(2) and/or Art. 123(3), if done after grant.
      Such a deletion could also create an “issue” of art. 83 and also art. 84.
      No amendment no “issue”, unless you really have an inconsistency, e.g. you claim that A comprises B and you only disclose and show in the figures that A never comprises B.

    2. Max, it all depends upon whether you think that the provisions of the EPC (and of all relevant national laws) demand complete conformity between the description and the claims.

      Personally, I am of the school of thought that the extent of protection conferred is determined by reference to the claims, with the description serving only as one of many possible sources of evidence that can be considered in the event that wording of the claims does not convey a clear meaning to the person skilled in the art.

      It is not practical (and indeed, for some cases, it is impossible) to draft applications that will be straightforward to adapt to each and every hypothetical claim set, i.e. to each and every embodiment of the invention that is clearly and unambiguously disclosed. It is therefore inevitable that bringing the disclosure of some applications STRICTLY into line with the allowable claims will require extensive amendments for which there is questionable basis. Even if this can be done perfectly, ie without inadvertently adding subject matter, the time (and hence cost) of doing so can be hard for some applicants to bear.

      To put this in perspective, another way of solving any perceived problems of unclear claim scope would be for EPO examiners to take the time to PROPERLY assess the clarity of THE CLAIMS. If the wording of a claim conveys a clear meaning to those skilled in the art, then “inconsistencies” between the description and the claims are irrelevant – as there will be no need for anyone (including any national court) to consult the description in order to interpret the claims. Whilst questions may remain about possible equivalents, it is not within the EPO’s remit to worry about those.

      To me, the EPO’s drift towards more strict standards for adapting the description (which is allegedly for the purpose of meeting the requirements of Art 84 EPC) represents a mirror image of their increasingly relaxed attitude towards clarity of the claims. As will be evident from the points made above, this effectively shifts a cost / time burden from examiners to applicants (at least for those cases where the applicant caves in to the examiner’s demands regarding adaptation of the description). And this is far from the only example of policies adopted by the EPO that save (time and) money for them but that are distinctly unfavourable for applicants.

  6. Thank you, Robot, and Concerned, for your replies. I feel the urge to reply.

    Robot, on reflection, I suspect you are right about “issues”. Should we therefore copy the Americans, and leave the description and drawings as a record of what was filed on the filing date. We do it already with the drawing figures. Why not the text too. If it ever then comes to litigating validity, that pristine record would make everybody’s job much easier. And as for infringement, given that we expect judges always to be able to construe a claim which as granted is (as the Americans say) indefinite, surely they will also be able to cope with a lack of perfect conformity.

    Concerned, I don’t see any diminution in the severity with which the EPO examines for Art 84 clarity. It’s the old One-Two technique, as a way to clear out claims which do not impress them, but which Applicant stubbornly defends under Art 54, 56 and 83 EPC. First comes the objection under Art 84. Then, when Applicant amends for clarity, the Art 123(2) punch is a clean knock-out.

    1. Re validity: does it really make a difference whether an otherwise valid claim is included in a patent which discloses an embodiment not covered by the claims?

      Re infringement: should the EPO reject my description because it might create “issues” in patent infringement? Even if my description was a complete disaster in case of infringement litigation, this is not EPO’s business at all.

    2. Dear Max Drei and Robot

      What is the basis in the EPC for requiring the removal of “inconsistencies” between the description and the claims, when the words of the claims have a well-established meaning in the art ? None. And as you mention, this adds potential 123(2) issues.

      One not so visible aspect of the overuse of art 84 objections is that it enables EDs to keep away from art 83 issues.

      Art 83 issues are very unpopular among EDs and the EPO in general, because most often they cannot be cured without adding new matter to the description, so they suffer from an applicant-unfriendly optics This can be assessed from the minuscule number of applications which are finally rejected on the basis of art 83.

      The other reason is that examiners may feel much less technically “legitimate” than applicants’ experts when raising a sufficiency issue.

      Last but not least, spotting art 83 issues requires a thorough review of the entire application, i.e. a time-consuming work.

      1. There is no basis at all in the EPC: art. 84 only requires that the claims are supported by the description, not the opposite.

        The support requirement is there just to avoid that you cannot find a claimed feature in the description of a granted patent. As a matter of fact, the EPO allows applicants to copy a claimed feature into the description to overcome a lack of support objection.

        1. Robot, you assert that there is no basis in Art 84 EPC for stripping the text of inconsistencies between description and claims. I still think that there is something intuitively wrong about letting through to issue a text in which the definition of the invention in the allowed claim is materially very different from what the description states the invention to be. For me, that prejudices the “clarity” of the claim precisely because the statement of invention in the description does not “support” the definition of the invention in the claim.

          But as I always say, the pursuit of 100% clarity is, in day to day practice in the real world, a great mischief. The lesser evil is, I suppose, to leave the description as filed unamended during prosecution.

          1. I was speaking about support, not clarity, which is a different requirement, thought they are both in art. 84.

            As I wrote before, (real) inconsistencies between description and claims should be removed to avoid issues of clarity.

            However, a description containing unclaimed subject-matter is NOT an incosistency.

            Please note that all descriptions contain unclaimed subject-matter, so that, according to the EPO guidelines, all patents in the world, including all European patents, should be unclear.

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