23 February 2023

Update to the EPO Guidelines 2023

Update to the EPO Guidelines 2023

The annual updated version of the Guidelines for Examination is due to come into force on 1 March 2023. The updates are intended to reflect recent changes to the EPO’s practice. Some of the more significant changes, including those relating to the arrival of the Unified Patent Court system, are set out below.

General Practice

Unified Patent Court

The arrival of the UPC system on 1 June 2023 is now confirmed. To reflect this, the Guidelines have been updated to specify that proceedings relating to Unitary Patent protection are not dealt with by the Guidelines, other than those aspects arising during the EP patent grant procedure or as a result of temporary measures.

In respect of the grant procedure, due to the potential importance of national prior rights in proceedings before the Unified Patent Court, a new section has been added.  This makes clear that the examiner expands the top-up search scope at the grant stage to include national applications and patents of the contracting states, in so far as they are present in the EPO’s databases. The division informs the applicant about the outcome of the top-up search in respect of those national prior rights that are prima facie relevant in the Rule 71(3) communication (C-IV, 7.2).

Guidance for filing early requests for unitary effect is also provided (C-V, 2).

The Guidelines also now refer to the possibility of accelerating opposition proceedings in case of a pending infringement action relating to the same patent in the Unified Patent Court (E-VIII, 5).

Electronic Notification

In 2022, the EPO announced the intended removal of the “10 day rule”, whereby communications are deemed to be delivered to the addressee on the tenth day after transmission.

In anticipation of this change, the Guidelines now additionally state that with effect from 1 November 2023, where notification is effected by means of electronic communication, the electronic document shall be deemed to be delivered to the addressee on the date it bears, unless it has failed to reach its destination.

In any dispute, if the EPO establishes that the electronic document has reached its destination more than seven days after the date it bears, the deemed receipt of that document is set according to the number of days by which the seven days were exceeded.

Missing Parts

The Guidelines have been amended to reflect the addition of Rule 56a in relation to the correction of erroneously filed documents. Rule 56 provides provisions under which missing parts of the description or drawings can be filed within a 2-month time limit (A-II, 5.1, 5.2). Now, Rule 56a allows for correction of erroneously filed application documents or parts (i.e. description, claims or drawings), also within a 2-month time limit (A-II, 6.1, 6.2; H-IV, 2.2.3). It does not require the applicant to justify the reason for the correction.  This could be beneficial, for instance, if drawings or claims have been mixed up with those of a different application on filing.

The missing or erroneous parts can be filed in response to a communication from the EPO or of the applicant’s own motion and the conditions for establishing whether or not the filing date changes remain the same for both rules (A-II, 5.3, 5.4, 6.3, 6.4).

In the case of correcting erroneously filed parts, it is worth noting that the erroneous parts remain in the application as filed. These parts may only be removed by amending the application during the grant proceedings, where they must comply with the requirements of added matter under Art. 123(2) EPC (A-II, 6.4).

Unsearched Subject Matter

New sections have been added in respect of Rule 137(5) which sets out the two further conditions for the allowability of amended claims. Specifically, where amendments are taken from the description, (i) they may not relate to unsearched subject matter which does not combine with the original invention or (ii) subject matter not searched in accordance with Rule 62a and Rule 63.  The updates make clear that Rule 137(5) does not allow for the discretionary admission of amended claims, rather it requires an in-depth assessment of claim compliance by the examiner (H-IV, 4).

Biotechnology and Chemistry

Sequence Listings

Further updates have been made in respect of the requirements for filing sequence listings, specifying that they must comply with the WIPO Standard ST.26, which came into force on 1 July 2022. Additionally, any corrected or amended sequence listings that are part of the description must comply with the applicable WIPO Standard according to the application filing date (A-IV, 5; E-IX, 2.4.2). In this regard, the Guidelines confirm that any sequence listing that is to form part of the description of a divisional application must comply with WIPO Standard ST.26, regardless of whether the parent application was filed prior to the new standard coming into force (A-IV, 5.4).

Extension States

In October 2022, Montenegro transitioned from an extension state to become the 39th contracting state of the EPC. The Guidelines have been updated to reflect this change, which leaves Bosnia and Herzegovina as the only remaining extension 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 2023.