The
European Patent Office (EPO) has released a 2014 edition of its Guidelines for Examination. Although the Guidelines are not legally binding, they are the
official text on proper application of the European Patent Convention (EPC) and
its Implementing Regulations. This latest edition of the Guidelines took effect
on 1 November 2014.
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| European Patent Office |
What has
changed?
Some of the
most important amendments to the Guidelines are, as might be expected,
reflections of the latest changes to the Rules regulating time limits for
submitting new divisional applications and the availability of additional
searches for international applications facing objections on grounds of lack of
unity of invention.
Other
changes address the admissibility of claims relating to second or further
medical uses of known pharmaceutical products, the relationship between method
claims and the rule of one claim per category, as well as revision of the
principles concerning multiple applications referring to the same invention by
the same applicant.
However,
what appears to be the most significant change refers to the question of added
subject matter. Pursuant to Article 123 (2) EPC, a European patent application
or European patent may not be amended such that it contains subject matter
extending beyond the content of the application as filed.
Under the
EPO's current interpretation, the effect of this provision is for amendments to
be deemed admissible only when their wording can be directly and unambiguously
derived from the subject matter of the application as filed. The Board of
Appeal has sought to maintain that this should not be taken to mean that
literal support for the amendment in the original application is required, yet
even so objections that amendments submitted by applicants add subject matter
simply because they lack a strictly literal – that is, word for word – basis in
the application as initially filed are not unusual.
The new
paragraph included as H-IV 2.3 of the Guidelines states as follows:
“When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.”
Accordingly,
this new paragraph may be taken to indicate that the subject matter no longer
corresponds strictly to the literal wording used in the application but more
freely to what a person skilled in the art understands by those words viewed as
a whole. However, though many are hoping that this signifies an end to
objections based on the absence of literal support for amendments, the fact is
that the paragraph in question does not appear to say anything truly new.
The
Guidelines have also added in paragraph H-III 2.1 that the requirement to
identify the amendments and indicate their basis "should be understood as
an opportunity for the applicant to provide convincing arguments ... as to why
the amendment(s) is/are directly and unambiguously derivable from the
application as filed. [These arguments] ... are particularly important ... where
literal support for the amendment(s) is not present in the application as
filed."
This
paragraph thus appears to underscore the need to provide detailed arguments
with a view to justifying amendments lacking literal support and that, by
extension, such amendments would be acceptable.
It remains to be seen whether this update to the
Guidelines will actually bring about a change in EPO examiners' interpretation
of Art. 123 (2)EPC in practice or whether it will simply turn out to add some
nuance to the Office’s current approach, which appears more likely, given that
amendments do require literal support in the application as initially filed.
Author: Ruth Sánchez
