12 November 2021
The next edition of the Guidelines for Examination, coming into force in March 2022, will enhance clarity and legal certainty with regard to adaptation of the description, thanks to recent intensive discussions with many experts and stakeholders.
Further to the feedback solicited last spring on the current Guidelines for Examination, the EPO organised a workshop on 4 November to discuss the issue of adapting a patent's description to the claims. The workshop included members of three SACEPO Working Parties (namely on Guidelines, on Rules and on Quality), appointed external experts, national judges from The Netherlands, the United Kingdom and Germany, as well as members of the Boards of Appeal and experts from the EPO. In breakout sessions groups of participants presented applicants' concerns and discussed together with the Office's experts a common approach and possible solutions.
The lessons learned from the workshop were consolidated with earlier feedback during an extraordinary meeting of the SACEPO Working Party on Guidelines on 12 November 2021. Users expressed their appreciation for the efforts of the Office to solve the issue and to find consensus. The lively exchange resulted in a revised draft text for the 2022 edition of the Guidelines for Examination. Accordingly, the relevant sections in the Guidelines will reflect users' requirements with a view to legal certainty in the post-grant stage of their European patents while considering the legal provisions and established case law of the Boards of Appeal. The Office will implement a harmonised approach throughout the examining and opposition divisions.