Highlights from the new EPO guidelines for examination 2021: ViCo oral proceedings, description amendments and antibodies

The draft EPO Guidelines for Examination for 2021 (coming into force on 1 March 2021) have been released and can be read here. A controversial update to the guidelines this year is the new section on amending the description. The new guidelines also include changes reflecting the new norm of Examining Division oral proceedings by video conference, as well as new sections on antibodies and sequence identity that will be of particular interest to biotech attorneys.

Amendment of the description 

One of the peculiarities of European patent prosecution is the requirement for the description to be amended in line with allowed claims. Understandably, patent attorneys have generally taken a minimalist approach to amending the description, for example by merely replacing "embodiment of the invention" with "embodiment of the disclosure" where applicable (a 'fun' task generally given to the newest patent attorney trainee...). However, there have been rumours over recent months that the EPO planned on increasing the stringency of the description amendment requirement whereby the minimalist approach would no longer cut the mustard. The new draft guidelines confirm that a more rigorous approach to description amendments is indeed the EPO's intention. 

A new approach to amending the description

The new guidelines explicitly state 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)" (F-VI-4.3, emphasis added). Furthermore, "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. It has to be explicitly specified that this part of the description does not describe part of the claimed invention" (F-VI-4.3(iii), emphasis added). 

The new requirements might be said to place an unreasonable burden (both in terms of time and cost) on the applicant, for an unclear benefit. After all, no other major jurisdiction has trouble with allowing the claims to define the scope of the invention, irrespective of minor inconsistencies in the description. It remains to be seen as to how uncompromising Examiners will be when following the new guidelines.

Oral proceedings by video-conference

It is becoming increasingly apparent that the EPO considers oral proceedings by video conferencing (ViCo) to be the new norm, at least during Examination (IPKat: The inexorable rise of EPO oral proceedings by video conference). The default to ViCo oral proceedings in the Examining Division is now made explicit in the guidelines, with the new guidelines specifying that "[a]s a rule, oral proceedings in examination proceedings are held by videoconference" (C-VII-5 and E-III-1). Oral proceedings may be held on the EPO premises only if there are "serious reasons" for doing so. Serious reasons include, for example, a proven visual impairment of a representative. Serious reasons do not include "sweeping objections against the reliability of videoconferencing technology". Notably, the new guidelines also no longer stipulate that oral proceedings by videoconference are permitted only in the case of ex parte proceedings before an examining division. In other words, the guidelines no longer rule out ViCo oral proceedings at opposition and appeal (see also IPKat: The legality of Board of Appeal oral proceedings by video conference has been referred to the EBA). 

Many of the new provisions in the guidelines relating to how ViCo oral proceedings will be familiar to anyone who have attended the excellent recent CIPA webinars on the topic, in which many aspects of the new procedure were covered in detail.  The guidelines now stipulate, for example, that during ViCo oral proceedings documents must be filed by email (E-III-8.5.2). 

Consultation with Examiners 

The draft 2021 guidelines also include a heavily amended section on Examiner interviews (C-VII-2.1). Previously, telephone consultations with the Examiner were permitted during Examination. These procedures have now been formalised as "consultations", to preferably be held by video-conferencing. The new guidelines also include example situations that might prompt such a consultation, including enquiries about the processing of a file, errors in an official communication and clarification of minor issues. 

Antibody

Amino acid sequences

In the field of biotechnology, claims often include nucleotide or amino acid sequences, for example the amino acid sequence of a therapeutic antibody or the genetic sequence of a genetically modified plant. The draft new guidelines confirm that nucleotide sequences can be defined according to sequence identity (i.e. a amino acid sequence having 95% sequence identity to SEQ ID NO: 1), while amino acid sequences can be defined according to % sequence similarity (F-IV-4.24). Similarity is considered broader than identity, as it permits substitution of amino acids having similar physicochemical properties.

Antibodies

For the first time the guidelines include a section devoted to antibodies (G-II-5.6). The case law on antibodies is complex and not always consistently applied by Examiners. The antibody section is therefore welcome to attorneys working in this field. The new section summarises EPO case law on how an antibody may be defined (e.g. by sequence, functional feature or epitope), and the inventive step requirement for new antibodies binding to a known antigen.