The Guidelines for Examination have been amended in line with the EPO’s policy of updating them on an annual basis. This year some notable changes have been introduced and we review most of them below.
It must be pointed out that the revised guidelines do not include changes made in view of the new Rules of Procedure of the Boards of Appeal which will enter into force on 1 January 2020. Next years’ Guidelines are expected to reflect these new Rules.
Novelty of subranges – Guidelines G – VI.8
Selection inventions deal with the selection of individual elements, sub-sets, or sub-ranges, which have not been explicitly mentioned, within a larger known set or range.
Following T261/15, the formerly three-step test for assessing novelty of a sub-range has been revised to include only two-steps. This revision removes the inventive step assessment related to the purposive selection, new technical teaching on the selected sub-range.
According to the revised Guidelines, a sub-range selected from a broader numerical range of the prior art is considered novel if both of the following two criteria are satisfied (see T 261/15 and T 279/89):
(a) the selected sub-range is narrow compared to the known range;
(b) the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range.
Inventive step assessment in the field of biotechnology – Guidelines G- VII -13.
According to this new section of the revised Guidelines, in order to render a solution obvious, it is sufficient to establish that the skilled person would have followed the teaching of the prior art with a reasonable expectation of success.
The same Guidelines clarify that “a reasonable expectation of success” should not be confused with the “hope to succeed”. If researchers are aware when embarking on their research that, in order to reach a technical solution, they will need not only technical skill but also the ability to make the right non-trivial decisions along the way, this cannot be regarded as a “reasonable expectation of success”.
Thus, if non-trivial decisions need to be made in the course of research, it could be argued that this goes beyond a “reasonable expectation of success” and may be indicative of an inventive step.
Mathematical methods – Guidelines G. II – 3.3. and G.II – 3.3.1.
Last year the Guidelines added a new section for AI to point out that mathematical methods play an important role in the solution of technical problems in all fields of technology. However, they are excluded from patentability under Art. 52(2)(a) when claimed as such (Art. 52(3)). The exclusion applies if a claim is directed to a purely abstract mathematical method and the claim does not require any technical means
According to the revised Guidelines, terms such as “support vector machine”, “reasoning engine” or “neural network” may, depending on the context, merely refer to abstract models or algorithms and thus do not, on their own, necessarily imply the use of a technical means. This has to be taken into account when examining whether the claimed subject matter has a technical character as a whole (Art. 52(1), (2) and (3)).
Product claim with process features – Guidelines F-IV-4.12.1.
A new section related to product claim with process features has been added to the Guidelines.
According to this new section, a claim defining a product and comprising both product features and process features, i.e. features for a process for manufacturing the product, does not contravene the requirements of Art. 84.
However, the text highlights that process features can establish the novelty of the claimed product only if they cause it to have different properties from the products previously described. As in the case of product-by-process claims (see F-IV, 4.12), the burden of proof for an allegedly distinguishing “product-by process” feature lies with the applicant.
Deletion of part of claimed subject-matter – Guidelines H-V- 3.3.
According to the Guidelines, it is permissible to delete parts of the claimed subject-matter if the corresponding embodiments were originally described, e.g. as alternatives in the claim or as embodiments explicitly set out in the description.
Based on T12/81, deletions made from more than one list were normally not allowable. However, the revised Guidelines now state that “the deletion of alternatives from more than one list is only allowable if this does not result in the creation of new technical information that is not directly and unambiguously derivable from the application as originally filed. In particular, limitations that do not result in the singling out of a particular combination of specific features but maintain the remaining subject-matter as a generic group which differs from the original group only by its smaller size will normally fulfil the requirements of Article 123(2) EPC.”
Replacement or removal of features from a claim – Guidelines H-V-3.1.
According to the revised Guidelines, the three-step test for assessing whether replacement or removal of a claim feature adds matter no longer needs the “directly and unambiguously” requirement of step iii.
i. the replaced or removed feature was not explained as essential in the originally filed disclosure;
ii. the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve
iii. the skilled person would recognise that the replacement or removal requires no modification of one or more features to compensate for the change
However, the Guidelines keep highlighting that even if the above criteria are met, the division must still ensure that the amendment by replacing or removing a feature from a claim satisfies the requirements of Art. 123(2) as they also have been set out in G 3/89 and G 11/91, referred to in G 2/10 as “the gold standard”.
Other changes
- Procedural acts including paying the grant fee and filing claim translations can now be carried out by a professional representative (other than the appointed one) without a signed authorization if the non-appointed representative makes it clear that he does not intend to take over representation. Guidelines A-VIII – 1.5.
- Reduction for the filing and examination fees have been extended to joint applicants. If there are multiple applicants, each must be an entitled applicant however, only one of them needs to meet the language requirement. Guidelines A-X – 9.2.1.
- The EPO has switched to Skype for Business earlier this year to hold examination oral proceedings as a video conference. The applicant must respond to the summons by including an email address. The EPO will then send a calendar appointment for the oral proceedings with a Skype for Business link to the given email address. Guidelines E.III – 11.2.
Article by Maria Mercè Vidal.
