New Edition of the Guidelines for Examination at the EPO
The European Patent Office have amended the Guidelines for Examination. The new Guidelines are valid as of November 2019. They include many minor editorial changes but also other changes, which may have an influence on the proceedings at the EPO. In the following, we have selected some of these changes.
- 1. Of more formal nature, the EPO has now also indicated in the Guidelines that it accepts, from specific states, priority documents filed via the WIPO Digital Access Service (DAS), see Part A – III 6.7, this concerns in particular CN, JP, KR and US first filings.
- 2. Not only the Rules of Procedure of the Boards of Appeal have been amended in view of being stricter regarding the submission of new facts and arguments, but also the Guidelines of Examination have been amended to state explicitly that new facts and evidence filed by opponents in the opposition proceedings are handled more strict: “Furthermore any ground, fact and evidence filed by the opponents after the expiry of the opposition period are considered as late-filed unless they are due to a change in the subject of the proceedings.”, see Part D – Chapter VI -1, as this is already the general tendency at the EPO.
- 3. The EPO has detailed the procedure in case on entry of the EP phase, a request for restoration of the priority has to be filed, see Part E – Chapter IX 126.96.36.199. In particular, the two months time-limit for filing the request is calculated from the 31-months time limit for entry into the European phase. In case of further processing, the request for restoration of priority may still be filed together with a timely request for further processing in respect of the 31-months time limit under Rule 159(1) EPC or, failing this, with a timely request for re-establishment of rights in respect of the period for requesting further processing.
- 4. The EPO has provided more details on how parameters should be dealt with during examination, see Part F – Chapter IV – 4.11, in particular if these are measured in a particular way or are unusual parameters.
- 5. Further, a chapter for assessing inventive step in the field of biotechnology has been added, see Part G – Chapter VII – 13.
- As it can be seen, the EPO Guidelines have been amended to provide more details with regard some aspects.