{"id":24140,"date":"2023-03-28T08:18:44","date_gmt":"2023-03-28T08:18:44","guid":{"rendered":"http:\/\/www.sib.it\/?p=24140"},"modified":"2023-07-26T13:50:52","modified_gmt":"2023-07-26T13:50:52","slug":"english-epo-guidelines-for-examination-2023-whats-new-by-b-soranzo","status":"publish","type":"post","link":"https:\/\/www.sib.it\/en\/articles\/epo-guidelines-for-examination-2023-whats-new-by-b-soranzo\/","title":{"rendered":"EPO Guidelines for Examination 2023: what\u2019s new? – B. Soranzo"},"content":{"rendered":"

European Patent Attorney Benedetta Soranzo<\/a> highlights the most important changes in the 2023 version of the Guidelines for Examination of the European Patent Office.<\/em><\/p>\n

On 1 March 2023, the annual updated version of the Guidelines for Examination of the European Patent Office (hereinafter the EPO) came into force; the updates reflect modifications in the EPO\u2019s practice.<\/p>\n

Changes in the Guidelines mainly concern the following topics.\"EPO<\/p>\n

Erroneous documents or parts <\/span><\/h2>\n

The latest version of the EPO Guidelines for Examination (hereinafter the Guidelines) reflects the introduction of Rule 56a<\/a> about erroneous parts (OJ EPO 2022, A3). With respect to the Implementing\u00a0Regulations of the European Patent Convention (hereinafter EPC), the Guidelines add that whether parts or documents making up an application are considered \u201cerroneously filed\u201d depends on the applicant\u2019s own statement on what was intended, and that no further evidence is required by the EPO (GL, A-II, 6.2).<\/p>\n

Moreover, the Guidelines clarify that erroneously filed application documents remain in the file, even if they are considered not to form part of the application as filed. As such, following publication of the application, the erroneous application documents or parts are open to file inspection (GL, A-II, 6.3).<\/p>\n

Sequence listings<\/span><\/h2>\n

For applications filed from 1 July 2022, the EPO requires that nucleotide and amino acid sequence listings comply with Standard\u00a0ST.26 of the World Intellectual property Organization (WIPO) (OJ EPO 2021, A97; GL, A-IV, 5).<\/p>\n

Details and examples on sequences that need to be itemised in the sequence listing of the WIPO Standard\u00a0ST.26 are provided at GL, F-II, 6.2.1-6.2.4.<\/p>\n

Erroneously filed sequence listings may be corrected under\u00a0Rule\u00a056a (GL, A-IV, 5.2).<\/p>\n

The updated Guidelines state that if two or more sequence listings are filed on the filing date, only the standard-compliant sequence listing will be used as the basis for the search and whenever a sequence listing that is part of the description is corrected or amended, a complete new sequence listing must be filed (GL, A-IV, 5).<\/p>\n

With respect to sequence listings of divisional applications, the Guidelines (GL, A-IV, 5.4) expressly state that since the content of the disclosure of the invention is the responsibility of the applicant, any sequence listing which is to form part of the description must be filed by the applicant. The sequence listing of the earlier application is, thus, not automatically added to the dossier of the divisional application if:<\/p>\n

– the applicant files an ST.26-compliant sequence listing as part of the divisional application’s description; or if<\/p>\n

– the sequence listing available in the earlier application does not comply with WIPO Standard\u00a0ST.26.<\/p>\n

Unitary Patent System and Unified Patent Court<\/span><\/h2>\n

In view of the importance of national prior rights for applicants in proceedings before the Unified Patent Court, as of 1 September 2022 the EPO introduced systematic top-up searches for national prior rights (Rule 71(3) EPC).<\/p>\n

In line with that, the Guidelines (GL, C-IV, 7.2) state that:<\/p>\n

– 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;<\/p>\n

– the Examining Division informs the applicant about the outcome of the top-up search for national prior rights;<\/p>\n

– national prior rights that are\u00a0prima facie<\/em>\u00a0relevant for the application are communicated to the applicant.<\/p>\n

Moreover, the Guidelines have been amended to specify that acceleration of opposition proceedings may be requested when infringement action in respect of a European patent is pending before the Unified Patent Court (GL, E-VIII, 5).<\/p>\n

Amendments of the description<\/span><\/h2>\n

The latest version of the Guidelines confirms that any inconsistency between the description and the claims must be avoided if it can raise doubts on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported or objectionable under\u00a0Art.\u00a084<\/a> (GL, F-IV, 4.3).<\/p>\n

With respect to previous versions, this year\u2019s Guidelines provide the following further examples of inconsistency (GL, F-IV, 4.3):<\/p>\n