EPO Guidelines for Examination 2023

1 March 2023 was an important day for patents in Europe. It marked the dawn of the sunrise period preceding the long-awaited entry into force of the Unified Patent Court Agreement (UPCA). During this period, European patents can be opted out of the Unified Patent Court’s (UPC) jurisdiction (as discussed in our recent articles on this topic).

It was also the day on which the annual update of the EPO Guidelines for Examination came into force. These updates are based on current practice, regulations, and recent decisions, as well as longer-term changes in patent practice at international levels. Many of the changes relate to the increasing acceptance of digital procedures at the EPO as a default, such as electronic delivery of communications and documents.

Some of the more significant new aspects are summarised below.

Dates of Notification and Deadlines

A number of updates relate to long-anticipated changes to be made to Rules 126 and 127 EPC, which relate to when communications sent by the EPO are deemed to be notified to the recipient, and as a result, when the deadlines set by such communications expire.

In effect, these changes mean that the EPO’s ten-day ‘notification period’ will no longer apply to deadlines set by communications issued on or after 1 November 2023. Instead, periods for response or other action will run from the date given on the communication itself, unless the communication failed to reach its recipient.

Long-time users of the EPC system may well be acclimatised to the previous ‘ten-day rule’, so it will be important to consider European deadlines carefully towards the end of this year.

Unitary Patents and the UPC

Perhaps surprisingly, few of the updates to the Guidelines relate to the upcoming Unitary Patent system and UPC. This is because the Guidelines primarily relate to the European patent grant procedure, whereas the major impacts of the unitary system will be felt after grant.

Exceptions include that the Guidelines now note that top-up searches for potentially conflicting national applications and patents will be carried out at the grant stage, and that opposition procedure can be accelerated if an infringement action is pending before the UPC.

Sequence listings

Following the implementation of WIPO Standard ST.26 for nucleotide and amino acid sequence listings on 1 July 2022, the Guidelines have been updated throughout to refer to ST.26 as the required format for applications, although they note that the previous standard ST.25 still applies to applications filed before 1 July 2022. A new section giving more details of which sequences are required to be itemised in a listing, and the requirements of the listings themselves, are recited in the Guidelines at F-II-6.2.

Importantly, however, the updated Guidelines confirm that updated ST.26 sequence listings are required for divisional applications, even if the parent application was filed before 1 July 2022. This requirement has been controversial, since in most ways a divisional application is treated as if it were filed on the same date as its parent, and because there is a chance of adding or losing subject-matter when converting between the standards.

The best way to avoid such issues will vary depending on the application, and it is sensible to make sure that any updates are considered well in advance of the filing of a divisional application.

In this regard, the Guidelines at A-IV 5.4 now warn that the content of the disclosure is the applicant’s responsibility, and note that the sequence listing of a parent application will not be automatically added to the dossier of the divisional application if it did not comply with ST.26.

Erroneously filed documents

Many changes have been made throughout the Guidelines as a result of the new Rule 56a EPC, which entered into force on 1 November 2022. Briefly, this rule gives an applicant the ability to file corrected versions of elements within a patent application, shortly after filing. Previously, similar provisions relating only to filing ‘missing’ parts of an application were available, under Rule 56 EPC. The changes unify the procedure for correcting erroneously filed elements with those for international applications under the PCT.

More details on this new rule can be found in our recent article. The updates confirm that such corrected elements can be filed up to two months after an invitation from the EPO to do so, or after the original date of filing on the applicant’s own initiative. Details are also given on the circumstances under which such corrections can be made without changing the original date of filing.

Montenegro

Various updates have been made to the Guidelines as a result of Montenegro becoming a member state of the EPO. As explained in our recent article, Montenegro was previously an extension state of the EPC (Bosnia and Herzegovina is now the only remaining extension state), such that an extra fee had to be paid early in the grant process for the option to gain protection in that country. This change will make gaining protection in Montenegro simpler and cheaper.

For more detailed advice in relation to any of these changes, or other matters regarding European practice, please do not hesitate to get in contact with your E+F representative or email us at elkfife@elkfife.com.