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.
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.