21 February 2022

Update to the EPO Guidelines 1 March 2022

The first updated version of the Guidelines for Examination according to the new revision cycle is due to come into force on 1 March 2022.  The updates are intended to reflect recent changes to the EPO practice and some of the more significant changes are set out below.

General Practice

Designation of inventor
Every application must designate the inventor and recent amendments have changed the requirements for providing the inventor address.  The updated Guidelines clarify that the place of residence of the inventor is regarded as the city or municipality where the inventor permanently resides and not the province or region (A-III, 5.3).

If the inventor address is not correct then the designation will not be considered as validly filed.  However, in the event of any deficiencies, the applicant is given sixteen months from the date of filing or priority date to remedy the deficiency, before the European patent application is refused (A-III, 5.4).

Priority document retrieval under the WIPO Digital Access Service (DAS)
Under European practice, it is necessary to filed a copy of the previous application from which priority is claimed (priority document).  Traditionally, the EPO included in the file, free of charge, a copy of the priority document, retrieved via DAS, in respect of EP, Chinese, Korean and United States applications.

Following the changes announced on 13 November 2021, the Guidelines now reflect that a copy of the priority document will only be included at the request of the applicant.  Although this is only a small change, it does in fact put the burden of request on the applicant.  So it is important to remember to make such a request, providing the relevant DAS code for the priority document, in order to avoid receiving a notice of deficiency from the EPO and, in the worst case, a loss of priority (A-III, 6.7).

Partial priorities
The Guidelines have been updated to include new text integrating the teaching of G1/15 and, in particular, more detailed examples on how partial priority is assessed are provided.

Partial priority refers to a situation in which only a part of the subject matter of a claim is entitled to the priority date of a previous application.

The changes detail the steps for assessing whether the subject matter within a generic “OR” claim is entitled to partial priority.  The new text provides an example in which the priority document discloses the use of a specific composition, whereas the application claims the use of a composition defined in more generic terms.  In an “OR” claim, the subject matter of the specific composition is entitled to the priority date, whereas the alternative subject matter to the generic composition is not and therefore has the filing date of the application as the priority date (F-VI, 1.5).

Description amendments
The EPO received considerable feedback following the 2021 changes to the Guidelines that brought in stricter expectations on the applicant to amend the description to conform to the claims.  In response, the Guidelines have been updated to moderate these requirements.  Nevertheless, the burden on the applicant to make such amendments is still maintained, despite recent case law that has thrown into question the legal basis for such a requirement (T1989/18).

The amended wording now emphasises that the description and/or drawings should not be inconsistent with the subject matter for which protection is sought.  The applicant is required to remove any such inconsistencies, either by deletion or by marking embodiments as not falling within the subject-matter for which protection is sought (F-IV, 4.3).

Examples of such inconsistencies are now provided, which include the presence of an alternative feature that is broader or different to, or simply incompatible with, a feature of the independent claim.

The updates also clarify that “it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim. Similarly, it is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit.”  Where there is a borderline case, the benefit of the doubt is now given to the applicant.

In order to remove any such inconsistencies, the Guidelines still maintain that a generic statement is not sufficient rather, amendments have to refer to “specific embodiments (e.g. “Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention”).

Similarly, “features required by the independent claims may not be described using wording such as “preferably”, “may” or “optionally”.”  These terms must be removed to avoid making a mandatory feature of an independent claim appear as being optional.  The updates also emphasise that claim-like clauses must be deleted or amended, otherwise they may lead to a lack of clarity on the subject-matter for which protection is sought (F-IV, 4.4).

Computer Implemented Inventions

Mathematical methods
The patentability of mathematical methods has relevance to many artificial intelligence (AI) inventions through the implementation of machine learning algorithms.  In the updated Guidelines, further clarification is provided regarding the principles of assessing such patentability (G-II, 3.3).

In respect of mathematical methods, for the assessment of inventive step, technical character must be taken into account.  According to the Guidelines: “A mathematical method may contribute to the technical character of an invention, i.e. contribute to producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation”.

The Guidelines provide further examples on claims directed to a specific technical implementation of a mathematical method (G-II, 3.3), clarifying that in such circumstances a mathematical method may contribute to technical character:

if the mathematical method is designed to exploit particular technical properties of the technical system on which it is implemented to bring about a technical effect such as efficient use of computer storage capacity or network bandwidth”,

or by implementing “the execution of data-intensive training steps of a machine-learning algorithm to a graphical processing unit (GPU) and preparatory steps to a standard central processing unit (CPU) to take advantage of the parallel architecture of the computing platform.”

In particular, regarding AI inventions, the updated Guidelines now provide an example of the assessment of inventive step according to COMVIK in respect of a claim having distinguishing features directed to computational models and algorithms related to AI (G-VII,

The Guidelines make clear that the implementation of “algorithms related to artificial intelligence are, on their own, of an abstract mathematical nature”.  In other words, when taken in isolation, such features are non-technical.  However, where the computational model and algorithm is directly used in the control of a specific technical process, this is regarded as a technical application.  As such, in the example provided, “the differentiating feature contributes to producing a technical effect serving a technical purpose and thereby contributes to the technical character of the invention. Therefore, it is taken into account in the assessment of inventive step.”  Although, this does not, of course, guarantee that the solution provided by the algorithm is not found to be obvious.

Simulations also fall under the category of mathematical methods, such that when they are at least partially implemented on a computer the subject matter as a whole is not excluded from patentability.  Simulations are therefore examined according to the same criteria as any other computer implemented inventions.

To this end, the Guidelines have now been updated to reflect the important concepts that came from G1/19, which confirmed the application of COMVIK to computer implemented inventions.  The changes are intended to clarify how inventive step is to be assessed, particularly with respect to simulations.  As described above, it is necessary to determine the technical character of such features.

For example, the updated Guidelines set out that:

Computer-implemented simulations that comprise features representing an interaction with an external physical reality at the level of their input or output may provide a technical effect related to this interaction.”

“[In] a “purely numerical” simulation, the underlying models and algorithms may contribute to the technical character of the invention by their adaptation to a specific technical implementation or by an intended technical use of the data resulting from the simulation”.

Calculated numerical data reflecting the physical state or behaviour of a system or process existing only as a model in a computer usually cannot contribute to the technical character of the invention, even if it reflects the behaviour of the real system or process adequately.”

Biotechnology and Chemistry

The formal requirements for filing sequence listings have been updated. In particular, the new Guidelines (A-IV, 5) have broadened the allowable format for sequence listings to encompass the new WIPO standard (ST.26).  The updates clarify that every sufficiently long nucleotide or amino acid sequence needs to be listed in the sequence listing, even if it is a fragment of another disclosed sequence. Furthermore, the new Guidelines (A-IV, 5.1) also clarify the difficulties in filing a sequence listing as a missing part according to Rule 56 EPC and in what circumstances the applicant should expect a communication requesting that they file a compliant sequence listing under Rule 30(3) EPC.

EPO fee changes from 1 April 2022

The European Patent Office (EPO), by way of the Decision of the Administrative Council of 15 December 2021 (CA/D 13/21) (published in the January 2022 issue of The Official Journal of the EPO), has announced that many of its official fees will increase with effect from 1 April 2022. A range of official fees will be affected, rising by approximately 2.5 to 3%. Find out more here.