Updated EPO Guidelines for Examination
From November 1st, 2018 the new and updated Guidelines for Examination will be applicable.
The complete list of amendments in the November 2018 Guidelines can be found at : http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/m.htm
We note in particular the following changes :
- As from April 1st, the renewal fee for the third year may be paid up to 6 months before it falls due (new Rule 51(1) EPC - http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/a_x_5_2_4.htm).
In this respect, see also our IP Alert of February 2018.
- The information of prior art according to Rule 141EPC has been specified to relate to patent and utility model fillings (http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/c_iii_6.htm).
- Relating to Opposition proceedings, recent case law has been taken into account. In particular, it is specified that in case of one admissible and one inadmissible opposition, the prior art cited in the inadmissible opposition is taken into account as far as it is prima facie relevant (http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/d_i_6.htm).
- The rules relating to statements regarding the "spirit of the invention" have been clarified and harmonized (http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/f_iv_4_4.htm).
- As to clarity, the criteria for admissibility of relative terms in claims have been amended and rendered less strict. In case a relative term is not the only distinguishing feature over the prior art, it may now be allowed to be kept in the claim (http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/f_iv_4_6_1.htm).
- Likewise, the practice concerning terms such as "approximately", "substantially" and "about" has been rendered more flexible and should avoid in the future unnecessary objections of lack of clarity (http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/f_iv_4_7_1.htm).
- As to the terms "comprising" vs "consisting", it has been clarified that the expression "consisting essentially" means for chemical compounds or compositions specific that further components can be present, namely those not materially affecting the essential characteristics of the compound or composition. For other entities, it is clarified that the meaning is identical to "comprising" (http://www.epo.org/law-practice/legal-texts/html/guidelines2018/e/f_iv_4_21.htm).