The European Patent Office (EPO) has published the new version of the Guidelines for Examination that will enter into force on November 1, 2017. The Guidelines cover, inter alia, formalities examination, search, procedural aspects of substantive examination, patentability, corrections and amendments.

The new version of the section in the Guidelines on amendments addresses the prohibition, contained in the European Patent Convention (EPC), on amending a European patent or patent application in a way that causes the content of that patent or patent application to extend beyond the content of the patent application as originally filed.

That section now contains updated and revised examples of amendments that may or may not be allowable under the EPC.

One noteworthy addition to that section relates to the deletion of features from a claim. The section of the Guidelines explains that where one or more features are deleted from a claim, so that the resulting claim is, e.g., restricted to only part of the originally claimed invention, the subject-matter of the amended claim must be directly and unambiguously derivable from the application as originally filed as being an invention per se. In other words, according to the new Guidelines, the restricted invention must solve a technical problem and be able to work in the absence of any of the deleted features, and it must be clear from the application as originally filed that this is so.

Another equally noteworthy addition to that section of the Guidelines relates to the inclusion of additional features into a claim. The section sets out that a claim may be limited by inclusion of additional features, provided the resulting combination of features – rather than each individual feature taken on its own – is directly and unambiguously disclosed in the application as originally filed. According to the Guidelines, such disclosure in the application as originally filed may be explicit or implicit, but it should be present in the application as originally filed. However, if the resulting combination of features is new over the application as originally filed – i.e. if it would be new in a fictional scenario in which the claim to that combination of features were contained in a later patent application for which the patent application under examination were part of the state of the art – then, according to the Guidelines, the amended claim relating to that combination of features should not be held to fulfill the requirement that a European patent application not be amended in such a way as to cause its content to extend beyond the content of the application as filed.

The section of the Guidelines on the inclusion of additional features into a claim further explains that the fact that the resulting combination of features can be seen as being not inconsistent with the originally filed description is generally not sufficient for the corresponding amendment to be allowable under the EPC. The same is true when the resulting combination of features can be seen as reasonably plausible, or obvious in view of the contents of the patent application as originally filed. The Guidelines emphasize that this is because the standard that must be met for the amended claim relating to that combination of features to be allowable is that the combination of features be directly and unambiguously disclosed in the patent application as originally filed. As a result, according to the Guidelines, lack of inconsistency, plausibility or obviousness do not meet that particular standard.

The Guidelines are a non-binding legal document issued by the EPO. Nevertheless, they surely represent an important tool in understanding the EPO’s approach to amendments and thus developing the best possible arguments in support of any given amendment introduced into a European patent application. Carefully reviewing the revised sections of the Guidelines as each new version is released thus should form part of the practice of all professionals representing users of the system, as this will enable them to obtain the best possible results for their clients.


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ISSN 2531-4483