26 February 2024

Update to the EPO Guidelines for Examination 2024

The annual updated version of the Guidelines for Examination is due to come into force on 1 March 2024.  The updates are intended to reflect recent changes to the EPO’s practice and some of the more significant changes are set out below.

General practice

Entitlement to Claim Priority

In response to the decisions handed down under G1/22 and G2/22, the Guidelines have been updated to clarify practice with respect to the transfer of a priority right.  The updates highlight that the transfer of the priority right is distinct from the possible transfer of the priority application and must be assessed under the EPC, regardless of any national laws.  In this assessment, the Guidelines make clear that the burden of proof that entitlement is missing lies with the party challenging an applicant’s entitlement to priority.  In the absence any substantiated indication to the contrary, there is a strong presumption under the EPC that an applicant or joint applicants claiming priority are entitled to the claimed priority (AIII, 6.1).

See here for our previous article on G1/22 and G2/22.

Unitary Patent and Unified Patent Court

In respect of Unitary Patents, the Guidelines explicitly set out that a request for unitary effect can be filed no later than one month after the date of publication of the mention of the grant in the European Patent Bulletin.  Linked to this, whilst the EPO allow a request to be filed early, prior to the date of publication, the Guidelines state that such requests will not be processed prior to that date.  Instead, the request will only appear in the Register for unitary patent protection from that date (General Part, 5; C-V, 2.1).

The Guidelines now also specify that opposition proceedings may be accelerated where an infringement action is pending before the Unified Patent Court, as well as a national court of a contracting state (D-VII, 1.2).

Read more in our previous article here.

Sufficiency of Disclosure and AI

The Guidelines have been updated to clarify the disclosure requirements for Artificial Intelligence (AI) and mathematical methods applications.  In the field of AI, the Guidelines state that an application may be found to be insufficient if the mathematical methods and the training datasets are not disclosed in sufficient detail to reproduce the technical effect over the whole range claimed (F-III, 3).

Further updates state that if the technical effect depends on particular characteristics of a training dataset, there is no general need to disclose the specific training dataset itself.  However, the particular characteristics of the training dataset must be disclosed or at least possible to determine by the skilled person without undue burden (G-II, 3.3.1).

Assignment documents

From 1 April 2024, amended Rule 22(1) will enter into force, by which electronic signatures as determined by the President of the EPO are accepted on assignment documents.  The Guidelines further detail that contracting parties have to ensure that the signatories are duly authorised in accordance with national law to sign such a document, but that the EPO reserves the right to request document proof of such authorisation.  If the EPO considers the evidence to be unsatisfactory, then the relevant party will be invited to remedy the deficiency within a given time limit (E-XIV, 3).

Refund of the appeal fee

There has been an update to make clear that the department of first instance can only decide and order a full refund of the appeal fee in the case of an interlocutory revision, if it considers the reimbursement equitable by reason of a substantial procedural violation.  Otherwise, reimbursement is decided by the board of appeal (A-X, 10.2.6).

Additional page fees

Clarifications have been made with respect to the additional page fees calculated for international (Euro-PCT) applications entering the European phase.  If the international publication is not in an EPO language (e.g. Chinese) then that application is used to calculate the additional fee.  However, if pages are amended, the translation of the application is taken as the basis instead.

Of note, is that if the applicant states that the amendments to the application documents filed on entry into the European phase do not include substantive changes, but merely relate to reformatting (e.g. to reduce the number of pages), then they will be disregarded for the calculation of the additional fee.

Validation states

On 15 January 2024, the validation agreement between the EPO and Georgia entered into force.  The Guidelines have been updated to Georgia as a validation state (A-III, 12.1).

User consultation

The EPO provides the opportunity for users to comment on the updated Guidelines. This year the consultation runs until 4 April 2024.

Our update to the EPO Guidelines 2023 can be found here.