The EPO has released a preview of the amended Guidelines for Examination, due to come into force on 1 March 2021.
As expected, the amended Guidelines for Examination include more detailed guidance on the EPO’s new approach towards description amendments (as discussed in our recent article).
In particular, parts F-II, 4.2, F-IV, 4.3 (iii), F-IV, 4.4 and H-V, 2.7 include updated information on the new approach.
In line with the guidance currently being received in Examination Reports that are being issued on pending applications at the EPO, it is noted at F-IV, 4.3 (iii) that, embodiments in the description which are no longer covered by the independent claims must be deleted unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06).
Furthermore, it is explicitly noted (also at F-IV, 4.3 (iii)) that merely changing the wording “invention” to “disclosure” and/or the wording “embodiment” to “example”, “aspect” or similar is not sufficient to clearly state that this part of the description does not fall under the scope of the claimed invention.
Part H-V, 2.7 further notes that, if the applicant does not amend the description as required despite being asked to do so, the examining division's next action will be to issue summons to oral proceedings.
Therefore, as discussed in our recent article, how best to adapt a description into conformity with an allowed set of claims in view of the new approach at the EPO will require careful consideration as practice under the new guidance develops.
