The Guidelines for Examination provide general instructions on the various aspects of examination of European applications and patents. Although the content of the Guidelines is not legally binding the Guidelines are nevertheless very heavily relied upon by examiners. A revised version of the Guidelines applies as from 1 November 2017 and a large number of changes to the Guidelines have been made. In this article, we highlight some of the changes that are likely to immediately affect applicants.
During the search and examination phase of a European patent an Extended European Search Report (EESR) issues, followed (if deemed necessary by the EPO) by a number of examination reports. The EESR includes a search opinion in which any objection that may be raised in an examination report can also be raised. In effect the search opinion that accompanies the EESR has the look and feel (and arguably also the effect) of a full examination report. If the examining division feels that no progress is made during examination then they summon the applicant or its representatives to attend oral proceedings during which a decision on outstanding objections is made.
The EPO has actively attempted for the last few years to shorten the pendency of patent application by, inter alia, reducing the number of examination reports issued. Applicants will have noticed this change in policy as it has resulted in summons to oral proceedings being issued more frequently.
Previously the Guidelines encouraged examiners not to summons applicants to oral proceedings before a second examination report.
Change in the Guidelines:
The Examining Division may now issue a summons to oral proceedings as the first action in examination. In such a case, the annex to the summons must deal with the applicant's requests in their entirety and must not include objections or refer to documents not notified to the applicant in the search opinion.
According to the revised Guidelines, issuing a summons to oral proceedings as the first action will only occur in exceptional circumstances, in particular if the claims on file are not substantially different to those on which the search was based and the objections raised in the search opinion still apply. A summons to oral proceedings will not be issued as the first action in cases where a search opinion was not issued. In order to allow the applicant sufficient time to prepare submissions, the Guidelines state that the summons should be issued with at least six months' notice.
There have also been minor amendments to the Guidelines relating to citing of new documents in a summons to oral proceedings which is not the first action in examination. The Guidelines now explicitly state that, while new documents can be cited, the Examiner must carefully consider whether this would introduce a new line of argument.
In the past the issue of summons to attend oral proceedings has frequently been justified by the examining division as being the most efficient way of bringing the examination phase to an end. Given the EPO’s declared desire to reduce pendency times further the present change to the Guidelines seem to be a further development in this direction.
Although applicants are now more frequently conducting oral proceedings by video conference, thus reducing the economic impact of receiving a summons to oral proceedings, applicants are nevertheless advised to give serious consideration to filing a full response to all objections raised in the search opinion to avoid an allegation that insufficient progress during examination has created a need for oral proceedings to be conducted.
Lack of unity at the search stage
Previously, if during the search the search examiner believed that the claims lacked unity, a partial search report would issue with an invitation to pay further search fees to cover inventions other than the first, already searched invention. It was at the examiner’s discretion as to whether a reason for the non-unity finding or an initial opinion as to the patentability of the searched invention was also provided with this report. This resulted in the information provided in partial search reports varying from one application to another.
Change in the Guidelines:
The new Guidelines require that a reason for the non-unity finding be provided along with a provisional opinion on the patentability of the searched invention in the partial search report. Once the applicant has indicated whether or not further searches are to be conducted an extended European search report will still be drawn up and issued as normal providing an explanation of the non-unity finding and an opinion on patentability.
The Guidelines also clarify that the preliminary opinion in the partial search report is for information only and responding to the preliminary opinion will have no bearing on the content of the subsequent extended European search report. This confirms that whilst comments can be provided at this stage, they will likely need to be repeated in the response to the extended European search report.
This step of standardisation of the EPO’s work products is to be welcomed as it should allow applicants to make a more informed decision early on in prosecution for which inventions further search fees should be paid. This should be particularly useful in situations in which the examiner’s opinion indicates that patent protection for the first, searched invention may not be available in light of the uncovered prior art. In this case it may be prudent to request searches for one or more of the unsearched inventions identified by the examiner to ensure that they can form the basis of patent protection as part of the application in question and without the need to file divisional applications.
Presentations of information
Art. 52(2) of the European Patent Convention lists presentations of information as subject matter excluded from patentability. The way in which the EPO tests whether this exclusion applies is somewhat complex as it directly interacts with the assessment of inventive step. During inventive step assessment, claim features relating to the presentation of information are analysed to determine whether they contribute to producing a technical effect. If they do not, they cannot support the presence of an inventive step. In practice this means that they will be ignored by the examiner when considering inventive step. It will be appreciated that this can lead to a situation in which a particular claim is deemed novel, over cited prior art, but where fewer than all (and in the extreme none) of the novelty conferring features of the claim are taken into consideration for inventive step. This makes it difficult for applicants to defend the inventiveness of the claim.
It is beyond the scope of the present article to go into the minutiae of the mechanisms used by the EPO in examining the question of whether or not a particular claim feature can support an inventive step. However, the present changes to the Guidelines provide an insight into current thinking in as far as the non-statutory subject matter field of presentation of information is concerned.
In particular, the Guidelines section relating to “Presentations of Information” has been revised to clarify suggested EPO practice regarding assessment as to whether features that may be deemed to relate to presentations of information contribute to the technical effect required to justify a claim’s inventiveness. Discussion is now presented in relation to two “categories” of features:
- those specifying the cognitive content of the information presented ("what" is presented);
- those specifying the manner in which information is presented ("how" information is presented)
If a feature is found to relate to the first case (i) it may be harder to show a technical effect. The Guidelines do provide one example in this category where there is considered to be a technical effect, in which the information relates to an internal state prevailing in a technical system and enables the user to properly operate this technical system.
Several examples of features which may make a technical contribution are provided for the second case (ii) on the other hand. These include:
- storing digital images at different resolutions allowing the simultaneous overview display of several images;
- resolving conflicting technical requirements by displaying an enlarged portion of an image and maintaining an overview of a zone of interest which is larger than the display area;
- displaying the current orientation of an implant during surgery in a manner which allows a surgeon to position it more precisely; and
- presenting information in a proactive and timely manner to enable the user to perform a technical task in a more efficient or precise manner.
Separately, the Guidelines also state that those effects which depend upon physical parameters which are based on human physiology and can be precisely defined, may also qualify as technical.
Along the same lines, the section of the Guidelines relating specifically to “User interfaces” has also been substantially revised. It is now stated that features defining user input are more likely to have a technical character, and some examples which may be considered to make a technical contribution are given. These include:
- features which specify a mechanism enabling user input (e.g. entering text, making a selection or submitting a command);
- assisting a user in entering text by providing a predictive input mechanism; and
- performance-oriented improvements to the detection of input (e.g. allowing faster or more accurate gesture recognition or reducing the processing load of the device during recognition).
The examples now provided in these sections may be helpful when arguing the patentability of inventions relating to presentations of information. Reference to the two categories may also assist in clarifying arguments made to the examiner. When drafting applications, providing an explanation in the description as to the technical effect of features which relate to presentations of information, drawing on the effects given in the examples where possible, may help to expedite prosecution at the EPO.
We should emphasise at this point, however, that the Guidelines do not have a legally binding character. Whilst the clarification provided in the Guidelines is to be welcomed it is recommended that, in borderline situations or indeed in situations in which examiners object (based solely on the contents of the Guidelines) that particular features are deemed to relate to non-technical subject matter, reference to the body of decisions of the Board of Appeal is had as these, in contrast to the Guidelines, provide legal precedence.
Further processing and re-establishment of rights
The EPO has clarified procedure relating to further processing and re-establishment fees. The revised Guidelines state that one fee is required for each unitary procedural act which was not carried out. Two or more acts form a unitary procedural act if they have the same legal basis. The size of the fee will depend on the number and the nature of the acts.
For example, filing a written request for examination and paying the examination fee form a unitary procedural act. A request for further processing after failing to request examination and pay the examination fee in time therefore attracts one further processing fee. The further processing fee in this case consists of two parts: the flat fee for further processing and 50% of the examination fee.
The new Guidelines also explicitly state that only a single, flat fee is required when requesting further processing for paying the fee for grant and publishing and filing a translation of the claims at the grant stage.
These changes provide clarity on the EPO’s approach to further processing and re-establishment fees, but do not reflect a change in current EPO practice.