INFORMATION FROM THE EPO
Notice from the European Patent Office dated 25 June 2005 concerning amendment of the Guidelines for Examination in the European Patent Office
1. By decision of the President of the EPO dated 25 June 2005, the Guidelines for Examination have been amended pursuant to Article 10(2) EPC. The amendments are being published in the form of a complete "June 2005" edition of the Guidelines. They have been revised following consultation with the Standing Advisory Committee before the EPO (SACEPO). The amended Guidelines are being made available in advance on the EPO website (http://www.european-patent-office.org; see Toolbox for applicants, Legal Texts).
The amended Guidelines will also be issued in a complete new edition in paper form. A separate notice will be published in a later issue of the Official Journal giving details of when the paper copies will be available and how to obtain them.
Amendments of the Guidelines for Examination in the European Patent Office
2. The new Rule 44a EPC will enter into force on 1 July 2005. This has necessitated substantial changes to the Guidelines for Examination, which are mentioned below. Further amendments have been necessitated by the new Rule 108(4) EPC, and the change to Rule 54 EPC, both of which entered into force on 1 April 2005. The opportunity has also been taken to bring the Guidelines into line with decisions of the boards of appeal on issues important for search, examination and opposition, and with prevailing EPO practice, and to correct a number of errors.
3. The entry into force of Rule 44a EPC will result in the search report for most European patent applications being accompanied by an opinion as to whether the application and the invention to which it relates seem to meet the requirements of the EPC. A new chapter XII has been introduced into Part B of the Guidelines describing the drafting of this opinion. As a consequence of this change of procedure, significant amendments were also necessary in the remainder of Part B and in Part C, with more minor amendments also being needed in Part A. These amendments also complete the adaptation to the Office-wide implementation of BEST which was begun in the edition of December 2003:
see in particular A-II, 4, A-VI, 1, A-VI, 2, A-XII, 2, B-I to B-IV, B-VI to B-IX, C-III, 7, C-IV, 5 and C-VI.
4. A number of changes have been made in order to bring the Guidelines into line with current procedures under the PCT and to exclude topics now covered by the PCT Guidelines:
see in particular A-VII, 1, A-VII, 4, A-XI 10, B-I, B-III, B-VII, B-VIII, 1, B-X, B-XI, 3 and E-IX.
see in particular A-III, 12, A-VII, 1, C-VI, 15 and D-VI, 7.
6. Two further groups of amendments have been made in the light of recent decisions from the Enlarged Board of Appeal:
- G 2/02 and G 3/02 (OJ 10/2004, 483) relating to the claiming of priority from a first filing in a state which was not a member of the Paris Convention:
see in particular A-III, 6.2
see in particular C-III, 4.12, C-V, 2.2 and C-VI, 5.3.11.
7. The following amendments relate to recently announced procedures concerning the filing of documents, the rationalised international preliminary examination and the use of deposit accounts:
- electronic filing and related issues
see in particular A-II, 1, A-III, 6, A-IX, A-XI, 3 and A-XII
- filing of documents by facsimile
see in particular A-II, A-VI, 1, A-IX, A-XI, 3, A-XII, 2, C-VI, 15, D-III, D-IV, 1, E-VIII and E-IX, 2
- discontinuation of the rationalised international preliminary examination procedure
see in particular A-XI, 10
- revised procedures for the use of deposit accounts
see in particular A-II, 1, A-III, 2, A-V, 2, A-VI, A-VII and A-XI, 2.
8. Some amendments take into account the Decision of the Administrative Council of 10 June 2005 concerning the reduction of the fee for the supplementary European search report (see OJ 7/2005, 422)
see in particular A-XI, 9.3.1 and B-II, 4.3
9. Other amendments have been introduced in order to bring the Guidelines into line with prevailing practice at the EPO or to clarify procedures which were previously not explicitly defined:
- limitation of searches under Rule 45 EPC
see in particular B-II, 2, B-III, B-V, 6, B-VIII, 3, B-X, 8
- procedures under the revised Rule 51 EPC of 1 July 2002
see in particular C-VI and E-X
- amendments based on the disclosure of drawings
see in particular C-VI, 5
- selection inventions
see in particular C-IV
- late-filed arguments
see in particular D-IV, 1, E-III, 8 and E-VI, 2
- interruption and suspension of proceedings
see in particular E-VII
- withdrawal of applications or designations
see in particular C-VI, 15 and E-VIII, 6
- correction of claimed priority
see in particular A-III, 6 and A-V, 3.