INFORMATION FROM THE EPO
Notice from the European Patent Office dated 3 April 2000 concerning amendment of the Guidelines for Examination in the European Patent Office
By decision of the President of the EPO dated 3 April 2000, the Guidelines for Examination1 have been amended pursuant to Article 10(2) EPC. The amendments are being published in the form of replacement sheets2.
The amendments have been made following consultation with the Standing Advisory Committee before the EPO (SACEPO). They were mainly due to the desire to deal with difficulties encountered, both in search and examination, in dealing with so-called complex applications. Examples of complex applications are applications comprising a very large number of claims, applications including a claim defining a very large number of possibilities and applications comprising claims defining the invention by statements of desiderata or in terms of obscure parameters. These applications are not just difficult to deal with: they are very often in conflict with basic provisions of the EPC and the PCT such as clarity, conciseness, support and disclosure.
These deficiencies have now been dealt with by adopting a more rigorous application, during substantive examination, of the legal requirements of clarity, conciseness, support and disclosure. Where appropriate, intervention will be made at the search stage with the issuance of a partial search under Rule 45 EPC or Art. 17(2) PCT, based as far as possible on the applicant's real contribution to the art. In extreme cases, there will be a refusal to search at all.
For this purpose, clarifications and, where necessary, corrections of the relevant Guidelines provisions have been included. The opportunity has also been taken to remove some editorial and linguistic inconsistencies. The amendments to Part B clarify the possible reasons for invocation of Rule 45 EPC or Art. 17(2) PCT and better reflect the legal basis for such restrictions as well as the practice in search. The amendments to Part C bring the Guidelines more into line with the case law on support and disclosure.
A summary of the main amendments is given below, indicating the part of the Guidelines in which the amendments occur.
A reference to economic factors is in fact already to be found in B-III, 2.1, where it seems more appropriate. There is a difference between the inevitable constraints on the depth, coverage and "completeness" of any search imposed by economic factors, and those cases where the search is not complete and cannot be complete because the application fails to fulfil certain requirements of the EPC or PCT to such an extent that a meaningful search is impossible. Often, this occurs as a direct result of the applicant's drafting style.
This amendment reflects the fact that lack of disclosure, as well as lack of support, might arise from unduly broad claims. The legal basis for any restriction made is given. The last sentence reflects the fact that where the lack of disclosure is such as to render a meaningful search over the whole of the claim impossible, a partial search or declaration may be appropriate.
B-III, 3.12; B-III, 4.2; B-IV, 2.1:
The amendment reflects that this really is an exceptional case.
B-VIII, 1 and 2:
The reference to the search examiner conducting the search on the basis of likely amendments follows almost verbatim PCT search guideline VIII, 1.1, last sentence. The previous version of the Guidelines at B-VIII contained, to a certain extent, a contradiction in that, at B-VIII, 1, it was suggested that if the application relates to subject-matter which is either excluded from patentability or not susceptible of industrial application then a declaration should (always) be issued, whereas, at B-VIII, 4, another procedure was suggested for certain kinds of such subject-matter. This is dealt with in the amendment by harmonising B-VIII, 1 with the PCT search guideline and by adding a specific reference to B-VIII, 4.
The reference to "part of a claim" in point 2 follows PCT search guideline VIII, 1.2. Some readings of Art. 17(2)(b) PCT suggest that the lowest unit is a single claim. This PCT search guideline makes clear, on the other hand, that is it quite possible to have a part of a single claim which is susceptible of a meaningful search, and a part which is not.
See the comment to B-III, 3.12.
The original version of point 6 forbade the examiner from clarifying minor matter with the applicant. This is in conflict with PCT search guideline VIII, 2.1, from which the amended wording is taken. Such a consultation will, however, be appropriate only in rather limited circumstances, in view of possible doubts concerning the legal implications of anything clarified in this way.
The new wording also provides a gloss to what might be meant by the word "meaningful". It has been suggested that Rule 45 EPC and Art. 17(2) PCT should really only be invoked when a search is completely impossible because it is not possible to understand the application at all. This is a too narrow reading of Art. 17(2) PCT and Rule 45 EPC. Such a reading is a disservice to third parties. It means that a purportedly complete search report is issued in many cases where it is clear that in fact a complete search over the whole of the claim has not been carried out at all. Labelling these searches correctly as partial or incomplete searches will send out clear signals to applicants, to third parties, and to the substantive examiner as to the true state of affairs. As already noted, in many cases the reason for a complete search being impossible is due to the applicant's choice of drafting convention. If this choice renders the application so deficient under the EPC or the PCT that no complete meaningful search can be carried out, then this should be signalled. The new wording reflects that these provisions may find application for example where a (complete) search of an unduly broad claim might theoretically be possible, but where it would not be meaningful or sensible to carry out a search into the furthest corners of the claim, in particular since it would serve no useful purpose to do so having regard to the subject-matter the claims might reasonably be expected to be directed to after they have been amended.
C-II, 4.1; C-II, 4.9:
Previous guideline 4.1(i) had sometimes been misunderstood as suggesting that once the application contains sufficient technical information to allow something to be made which falls within the claims, then there is sufficiency of disclosure. In fact, it has now been made clear by later case law that this approach finds application only in those exceptional cases where the applicant has established a whole new principle capable of wide application and generalisation.
C-II, 4.1(i) and (ii) have been clarified to reflect the idea that disclosure is really a matter of ensuring correspondence or commensurateness between the contribution to the art on the one hand and the terms of the claim on the other.
The amendments in 4.9 specify that once a reasoned case for lack of disclosure has been made by the examiner, the onus is on the applicant to show the contrary.
The amendments reflect more accurately the correct legal basis for the objections dealt with here. It is plain that a claim could very well be clear, without necessarily comprising all essential features of the invention. A line of argumentation on this legal basis may prove useful in search, where the lack of essential features of an unduly broad claim may be such as to render a meaningful search impossible over the whole breadth of the claim as it stands.
The previous guideline on parameters did not make clear which legal basis should be used for an objection. The amendment makes clear that it is lack of clarity under Art. 84 EPC which is being used in the first instance, the basis being that a lack of clarity arises when the parameter chosen does not allow for a proper comparison with the prior art. The unnecessary limitation to those cases where the compound is described solely having regard to parameters has been removed.
The amendment incorporates into the Guidelines the result-oriented approach as developed by the case law on conciseness and what a "reasonable" number of claims might be.
C-III, 6.1 and 6.3:
Support, in patent terms, is designed to reflect the idea that the wording of a claim should correspond to the contribution to the art. This is set out in T 409/91 at point 3.3. The previous version was often incorrectly interpreted as requiring merely a kind of formal correspondence or concordance between claims and description.
The amendment to the first sentence of 6.3 removes the gratuitous "exceptionally". The increase in problem applications and extremely broad unsupported Markush formulations suggests that such claims are no longer exceptional.
The previous guideline C-III, 6.3 had, incorrectly, often been perceived as imposing rather a high burden on the examiner. This was because of the statement that "the applicant should be given the benefit of the doubt", which was often interpreted as establishing a "beyond all reasonable doubt" burden of proof, and of placing this burden upon the examiner. This was clearly incorrect. If the examining authority is able to set out a reasoned argument as to why the application does not fulfil certain requirements of the EPC or the PCT, then corresponding objections have to be raised. It then falls to the applicant to establish by reasoned argument, restriction or further technical information either that the objection was unfounded or that it has been overcome. This is as much true in matters of support and disclosure as it is in novelty and inventive step examination. The amendment sets out clearly the responsibilities of the applicant and of the examiner respectively.
The reference to the desirability of specific support by a cited document has been weakened slightly. In T 409/91, no document was deemed necessary for the lack-of-support objection upheld there. Nor is a document mentioned in any of the examples given in C-III, 6.4.
The new example (iii) is based on T 409/91. It covers the case of desiderata claims. Until now, the only reference to such claims in the Guidelines was to be found in C-III, 4.7, which appeared to suggest that "result to be achieved" formulations may be objected to on grounds of clarity, though the guideline was by no means explicit on the precise grounds for objection. In fact, as follows from the case law, such claims can also be objected to for reasons of lack of support, disclosure and essential features.
The amendment to 8.5 clarifies the procedure and covers the possibility that no search report at all has been issued by the search division. This possibility is covered by both Art. 17(2) PCT and Rule 45 EPC.