Guidelines for Examination in the European Patent Office

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The Guidelines for Examination in the European Patent Office (or, for short, the EPO Guidelines) are general instructions, for the examiners working at the European Patent Office (EPO) as well as for the parties interacting with the EPO, [notes 1] on the practice and procedure at the EPO in the various aspects of the prosecution of European patent applications and European patents. The Guidelines have been adopted, effective as at 1 June 1978, by the President of the EPO in accordance with Article 10(2)(a) EPC. [1] [2]

Contents

Structure

Since June 2012, [3] the Guidelines comprise eight parts, relating respectively to the formalities examination (Part A), the search (Part B), the procedural aspects of substantive examination (Part C), the opposition and limitation/revocation procedures (Part D), general procedural matters (Part E), the European patent application (Part F), patentability (Part G), and the amendments and corrections (Part H).

Revisions

The Guidelines are revised annually. [4] Until 2019, the revised editions of the Guidelines were published annually on 1 November. No revised edition of the Guidelines was published in 2020, and, since then, the revised editions are published annually at the beginning of March. [5]

According to several decisions of the Boards of Appeal of the EPO, the Guidelines are only general instructions intended to cover normal occurrences. An Examining Division [notes 2] , for example, can depart from them provided it acts in accordance with the European Patent Convention (EPC). "It [i]s normally desirable for examining divisions to act in accordance with the Guidelines, but (...) these [a]re not rules of law, so failure to follow a procedure set out in them [i]s not in itself a substantial procedural violation". [6] [7] Nevertheless, the users of the European patent system may reasonably expect, in accordance with the established "principle of the protection of legitimate expectations" (also referred to as "principle of good faith"), that the Guidelines will be followed by the departments of first instance of the EPO. [8]

It is also settled case law that the Guidelines are not binding on the Boards of Appeal. [9] This is "an important factor in the judicial independence of the boards of appeal" (Article 23(3) EPC). [9]

PCT-EPO Guidelines

Since 2015, separate guidelines, namely the "Guidelines for Search and Examination at the EPO as PCT authority", or "PCT-EPO Guidelines", are available to cover "the practice and procedure to be followed in various aspects of the handling of international applications before the EPO as International Searching Authority and International Preliminary Examining Authority." [10] These Guidelines entered into force on 1 November 2015. [10]

See also

Notes

  1. ↑ Including the applicants, patentees, opponents, third parties, and their representatives.
  2. ↑ The Examining Divisions are responsible for the examination of European patent applications, Article 18(1) EPC.

Related Research Articles

European Patent Office One of the two organs of the European Patent Organisation

The European Patent Office (EPO) is one of the two organs of the European Patent Organisation (EPOrg), the other being the Administrative Council. The EPO acts as executive body for the organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative body. The actual legislative power to revise the European Patent Convention lies with the Contracting States themselves when meeting at a Conference of the Contracting States.

European Patent Convention International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

There are two provisions in the regulations annexed to the Patent Cooperation Treaty (PCT) that relate to the search and examination of patent applications concerning computer programs. These two provisions are present in the PCT, which does not provide for the grant of patents but provides a unified procedure for filing, searching and examining patent applications, called international applications. The question of patentability is touched when conducting the search and the examination, which is an examination of whether the invention appears to be patentable.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

In certain jurisdictions' patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this context, the concept of "industry" is far-reaching: it includes agriculture, for instance. An example of invention which would not be susceptible of industrial application is "a method of contraception [...] to be applied in the private and personal sphere of a human being".

The European Patent Convention (EPC), the multilateral treaty providing the legal system according to which European patents are granted, contains provisions regarding whether a natural or juristic person needs to be represented in proceedings before the European Patent Office (EPO).

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

Internet as a source of prior art

In the context of patent law, using the Internet as a source of prior art when assessing whether an invention is novel and inventive, may be problematic if it is difficult to ascertain precisely when information on websites became available to the public.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which applies also in many other jurisdictions.

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

Under the European Patent Convention (EPC), any third party –i.e., essentially any person– may file observations on the patentability of an invention which is the subject of a European patent application or, after grant, subject of a European patent, especially to draw the attention of the European Patent Office (EPO) to some relevant prior art documents. This is a form of public participation in the examination of patent applications.

The unitary patent for Switzerland and Liechtenstein is a patent having a unitary character over the territories of Switzerland and Liechtenstein. It can either be a national patent, or a European patent granted under the European Patent Convention (EPC) and having a unitary character pursuant to Article 142(1) EPC. The unitary patent "may only be granted, transferred, annulled or lapse in respect of the whole territory of protection," i.e. for both Switzerland and Liechtenstein.

References

  1. ↑ Guidelines, General Part, 1. Preliminary remarks, first paragraph.
  2. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), iii.w : "Guidelines for Examination in the European Patent Office"
  3. ↑ "Notice from the European Patent Office dated 2 May 2012 concerning revision of the Guidelines for Examination in the European Patent Office". EPO. 20 June 2012. Archived from the original on 16 August 2012. Retrieved June 29, 2012.
  4. ↑ "Notice from the European Patent Office dated 28 July 2015 concerning updating of the Guidelines for Examination in the European Patent Office". EPO Official Journal. European Patent Office. 30 September 2015. p. A78. Retrieved 4 October 2015.
  5. ↑ "Information concerning the publication of the next edition of the EPO Guidelines, OJ 2020, A108". epo.org. European Patent Office. 30 September 2020. Retrieved 19 February 2021.
  6. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), iii.w.2 : "Guidelines binding (in principle) on departments of first instance".
  7. ↑ Decision T 162/82 of 20 June 1987, Reasons 9 (OJ EPO 1987, 533).
  8. ↑ Decision T 1607/08 of 13 June 2012, Reasons 2 to 2.2.
  9. 1 2 Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), iii.w.1 : "Guidelines not binding on boards"
  10. 1 2 "Notice from the European Patent Office dated 21 July 2015 concerning the publication of Guidelines for Search and Examination at the European Patent Office as PCT Authority (PCT-EPO Guidelines)". EPO Official Journal. European Patent Office. 30 September 2015. p. A73. Retrieved 4 October 2015.
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