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Friday, 23 March 2012

The Guidelines to go with the Handbook - EPO Publishes new Guidelines for Examination

Our dear readers may recall that my fellow feline David Brophy informed us a little while ago about the "Handbook of quality procedures before the EPO". This turned out to be not only the Whizzkid's Handbook for European Patent Attorneys as originally described, but also a most slippery publication that appeared and disappeared, and then reappeared again, in short succession. David prophetically ended his first post:

A final curiosity: the Handbook sensibly references the Guidelines for Examination 2012, which are due to be published in June of this year. Not having been privy to the revision of the Guidelines, the IPKat was momentarily taken aback by references such as "GL H-III". This suggests that the next revision is a very fundamental one, expanding the current five parts (A to E) into at least eight (A to H).
Today, the EPO has now unveiled the Draft version of the revised Guidelines for Examination 2012, which is being "pre-published online".  The cross references in the "Handbook of quality procedures before the EPO" now can be meaningfully used.

In the comments to David's original post there was some discussion about the status of the Guidelines for Examination.  They have the status of internal administrative instructions from the President of the EPO pursuant to Art 10(2)(a) EPC.  The just-posted draft, like its predecessors, states in the General Part:
These Guidelines are addressed primarily to EPO staff but it is hoped that they will also be of assistance to the parties to the proceedings and patent practitioners.
The Guidelines are intended to cover normal occurrences. They should therefore be considered only as general instructions. The application of the Guidelines to individual European patent applications or patents is the responsibility of the examining staff and they may depart from these instructions in exceptional cases. Nevertheless, as a general rule, parties can expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended.
It should be noted also that the Guidelines do not constitute legal provisions. For the ultimate authority on practice in the EPO, it is necessary to refer firstly to the European Patent Convention itself including the Implementing Regulations, the Protocol on the Interpretation of Article 69 EPC, the Protocol on Centralisation, the Protocol on Recognition, the Protocol on Privileges and Immunities and the Rules relating to Fees, and secondly to the interpretation put upon the EPC by the Boards of Appeal and the Enlarged Board of Appeal.
Unlike the "Handbook of quality procedures before the EPO", which states:
This document is not binding either on the EPO or on users and their representatives. Consequently, it should not be quoted in communications between the EPO and its users, and no procedural sanction or disciplinary measure applies for departing from efficient practice. Its strength lies in the benefits - in terms of greater quality and efficiency of the patenting process - that all parties stand to gain by following the practices described.
(a passage that raised many eyebrows), the Guidelines can be - and are - quoted by both EPO Examiners and professional representatives before the EPO.  Not this version of the Guidelines, of course, as they are only a pre-publiushed Draft.  Not until the final version comes into force in June 2012 can we start quoting them.

The IPKat gets to grips with the
 new draft of the Guidelines
These Guidelines are a comprehensive re-write.  Therefore, unlike previous revisions that indicated amendments from the previous version, these are presented as a whole new document.  In particular, substantive law has been removed from parts C (substantive examination) and D (opposition and limitation/revocation) and placed in new parts F (the European patent application), G (Patentabillity) and H (Amendments and Corrections).  Thankfully, however, the EPO kindly informs us:
To make the revised Guidelines easier to use, a concordance table and a table of contents with references to the old version are also published here.
The main body of the Guidelines therefore has the following sections:
Part A: Guidelines for Formalities Examination;
Part B: Guidelines for Search;
Part C: Guidelines for Procedural Aspects of Substantive Examination;
Part D: Guidelines for Opposition and Limitation/Revocation Procedures;
Part E: Guidelines on General Procedural Matters;
Part F: The European Patent Application;
Part G: Patentability;
Part H: Amendments and Corrections
The IPKat looks forward to a more in-depth read of this draft, and hopes that the final version does not depart from it.  Merpel is going cross-eyed trying to follow the cross-references between the Handbook and the Guidelines and wonders why we need two documents when one used to be quite sufficient.


ex-examiner said...

Confirmations of the principle that the Guidelines per se are not legal authority can be found inter alia in the following reported cases:

T1709/06, where the procedure for decisons on the state of the file as set out in the Guidelines was found to be contrary to the provisions of the EPC, [this is merely one example of many such cases]; and

T0206/05, Reasons, 5.1, where it was held that failure to act in accordance with the Guidelines was not per se a substantial procedural violation.

Anonymous said...

" ... why we need two documents when one used to be quite sufficient." If Merpel says what she seems to be saying, then we can never again have a complete revision of the guidelines, the EPC Rules or the EPC itself.
Or is Merpel objecting to there being a list of cross-references?

Darren Smyth said...

Merpel wishes to clarify that the "two documents" are the Guidelines for Examination and the Handbook of quality procedures before the EPO.

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