New EPO Guidelines for Examination

One of the daily tools for a European Patent Attorney is the “Guidelines for Examination in the European Patent Office“, which serves as similar function to the USPTO’s Manual of Patent Examining Procedure (MPEP).

This free public resource is used by EPO Examiners to guide them in their examination of European Patent Applications.  From an attorney’s perspective, an inventive step argument will always be easier if it “goes with the grain” of what is published in the Guidelines.  The Guidelines are not legally equivalent to the actual legislation, but they do represent the EPO’s view of settled interpretation of the European Patent Convention.

The EPO recently committed to updating the Guidelines on an annual basis, and the new version was published on 1 March 2022.

Highlights of the new version include:

• Updating the sections relating to computer-implemented inventions, including incorporating further examples, including one relating to artificial intelligence.
• An update regarding EPO practice in relation to the adaptation of the description to be in line with the claims.  This is quite a technical issue but has actually been a hot topic amongst practitioners, as the formal regulations in this area can create some risks.  The new wording will effectively reign in some of the EPO’s more bizarre practice in this area.

There are also a range of other updates, including clarification on inventions relating to the genetic modification of animals.

Furthermore, the EPO has also opened a consultation on changes to the Guidelines for next year.  The consultation is open until 15 April 2022.

The annual review of the Guidelines and the involvement stakeholder contributions seems to be going well so far, and of course we will keep you informed of developments!

PS – for EPC nerds, the updated Guidelines relating to the description are: H-V-2.7, F-IV-4.3 and F-IV-4.4.

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