2021 Guidelines for Examination at the European Patent Office

The Guidelines for Examination give instructions for applicants and examiners on the practice and procedure to be followed in accordance with the European Patent Convention (EPC), which is the system under which European patents are granted by the European Patent Office (EPO).

The guidelines are updated annually to reflect changes in law and practice. A number of important changes came into effect in March 2021, and these are outlined below.

Gender neutral language

The Guidelines have been updated throughout to replace gendered language such as “he” and “chairman” with gender neutral language such as “they” and “chair”. Since gendered language negatively impacts equality, diversity and inclusivity, this is a positive development.

Requirement to amend the description

There has always been a requirement for the description to be amended in line with amendments made to the claims during prosecution of a European patent application. The claims define the scope of protection for the invention. The description describes at least one way of carrying out the invention, typically referring to examples.

In the past, the guidelines allowed the retention of examples and technical descriptions not covered by the claims as long as it was clear that they were background art or examples useful for understanding the invention.

However, the guidelines now apply a much stricter approach whereby examples and technical descriptions no longer covered by the amended claims are expected to be “prominently marked” as such or deleted.

Amendments to the description may impact claim interpretation during post grant proceedings, and thus any amendments made should be carefully considered.

Procedure for oral proceedings

The EPO uses oral proceedings as a means to bring proceedings to a close. The right to oral proceedings is enshrined in law.

The guidelines now stipulate that oral proceedings before examining divisions are to be held by videoconference, unless there are serious reasons against it. Furthermore, the guidelines no longer rule out oral proceedings at opposition and appeal being held by videoconference.

These changes are a continuation of the position rapidly adopted during the global pandemic.

Informal consultations

In addition to oral proceedings, which is a formal procedure, extensive updates on informal consultations with examiners have also been introduced. Although consultations have been possible previously, the guidelines now provide more detailed information regarding those instances where personal consultation can be helpful in advancing prosecution.

The guidelines set out that a consultation may take place at the initiative of either the applicant (or representative) or the examiner or formalities officer, and that it should preferably be held by videoconference. Informal consultations are particularly useful to help progress matters where the applicant or examiner seems to have misunderstood an argument.

Computer-implemented inventions

A computer implemented inventions (CIIs) is defined as one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realised wholly or partly by means of a computer program.

The guidelines now include an Index for CIIs, which provides a collection of hyperlinks which facilitate access to the sections of the guidelines that are useful for the search and examination of CIIs.

There are also updates in the guidelines relating to ‘Data retrieval, formats and structures’, as well as the inclusion of a new section on ‘Database management systems and information retrieval’.