The EPO has published new Guidelines for search and examination. The updated guidelines are applicable as of November 1, 2016.

The EPO Guidelines are an essential tool for applicants to manage their cases before the EPO. The Guidelines extensively address the following aspects:
– Formalities examination in grant and opposition proceedings
– Search
– Procedural aspects of substantive examination
– Opposition and limitation/revocation procedures
– Guidelines on general procedural matters relevant to all stages of proceedings before the EPO
– Requirements to be met by European patent applications other than patentability, e.g. unity of invention, sufficiency of disclosure, clarity, and the right to priority
– Patentability, in particular exclusions from patentability, novelty, inventive step and industrial application
– Amendments and corrections, including questions of admissibility and added matter

The Guidelines have been amended and updated with respect to all of the above aspects. For example, the part concerning formalities examination has been completed to include the validation agreement with the Republic of Moldova, which entered into force on November 1, 2015. Furthermore, since as a rule the Guidelines must reflect the most recent prevailing EPO case law, various amendments have been introduced in view of recent decisions of the Enlarged Board of Appeal (the EPO’s highest instance) and the other EPO Boards of Appeal. The new Guidelines also take account of the changes introduced in the formal procedure for obtaining an amended patent following opposition proceedings before the EPO. In addition, the new Guidelines now reflect the revised conditions for requesting accelerated search and examination of European patent applications under the “PACE” programme, whereby applicants wishing to obtain both accelerated search and accelerated examination must file two separate PACE requests, i.e., one before the start of the EPO search and the other when the case is moved to the EPO Examining Division.

The new Guidelines now also contain two entirely new parts. The first relates to the issue of impartiality of the Examining or Opposition Division, and provides that members of the competent Divisions may not take part in the decision on a case in which they may have any personal interest (partiality for subjective reasons) or in respect of which the applicant may have good reason to suspect partiality (partiality for objective reasons). Even more importantly, the second one relates to claims to computer-implemented inventions, i.e. claims which involve computers, computer networks or other programmable apparatus whereby prima facie one or more of the claimed features are realised by means of a program or programs. This new part addresses both cases where all method steps can be fully implemented by generic data processing means and also cases where method steps require specific data processing means and/or additional technical devices as essential features.

Finally, the part of the Guidelines relating to amendments and corrections of European patent applications and European patents has been thoroughly revised in that the wording and references to EPO case law have now been clarified.

It is worth noting that the new Guidelines also reflect comments and proposals received from users of the EPO system. This has certainly contributed to making the Guidelines an even more valuable tool for applicants, and will therefore surely help to make the EPO even more user-friendly as a whole.

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ISSN 2531-4483