Highlights from the new EPO Guidelines for Examination 2023: Erroneous parts, UPC and sequence listings

The updated EPO Guidelines for Examination will enter into force on 1 March 2023. A draft version of the Guidelines can be previewed here.  The main updates this year are those taking account of the new sequence listing standard, the imminent arrival of the Unified Patent Court and the new Rule 56a EPC on erroneously filed parts. 

Missing and erroneous parts

The Guidelines have been amended throughout to reflect the introduction of Rule 56a EPC in 2021 (A-II-6). New Rule 56a EPC relates to procedures by which an applicant can correct "erroneously filed" parts of a European patent application (OJ EPO 2022, A3). Previously, the EPC only provided provisions by which "missing parts" could be filed. Given that such parts were classified as missing, they would be added to the parts already forming the patent application. However, this put the EPC at odds with PCT Rule 20.5bis, added to the PCT in 2020, which also allows applicants to replace "erroneously" filed parts. This allows the applicant to avoid publication of parts of the description, claims or drawings that were filed incorrectly (e.g. in cases where the drawings were mixed up with those of a different application when the application was filed). 

Missing a part?

Rule 56a EPC was introduced in order to bring the EPO in line with PCT Rule 20.5bis. New Rule 56a EPC sits alongside existing Rule 56 EPC, which continues to provide provisions for adding missing parts. According to the Guidelines, "[w]hether documents were erroneously filed depends only on the applicant's statement as to what was intended. No further evidence is required by the EPO."

Rule 56a EPCRule 56 EPC and PCT Rule 20.5bis all contain provisions whereby an applicant may file a replacement or missing part after the filing date, without having to re-date the filing date and lose their priority claim, by making reference to the missing/replacement part in the priority document. Under Rule 56a EPCRule 56 EPCPCT Rule 20.5bis the missing or replacement part will be added to the application alongside the originally filed parts, and will not replace the originally filed parts (whether considered erroneously filed or not) (Rule 56a(4)(c) EPC). To delete the erroneously filed parts, the applicant must then file an amendment during prosecution. Importantly, such amendments will be subject to the added matter provisions of Article 123(2) EPC (A-II-6.4)

Unified Patent Court

With the Unified Patent Court just around the corner, the guidelines have been updated to extend some provisions relating to national proceedings to include proceedings before the UPC. For example, acceleration of opposition proceedings may be requested in cases of pending infringement actions relating to the same patent in a national court or the Unified Patent Court (E-VIII, 5). 

Sequence listings

The updated guidelines confirm that an ST.26 sequence listing must be filed for all divisional applications, regardless of whether the parent application was filed prior to ST.26 coming into force  (A-III-13.2; A-IV-5; F-II-6.2). This requirement has caused some controversy (IPKat). The EPO has thus far ignored users' concerns that the requirement for all divisional sequence listings to be in ST.26 format places an unnecessary burden on users. Epi has also raised concerns that the requirement may force applicants to add matter in cases where the ST.25 sequence listing contained less information than the ST.26 sequence listing. 

Description amendments

The most controversial updates to the Guidelines in recent years was the 2021 update on amending the description in line with the claims (IPKat). Despite the increasingly divergent Boards of Appeal case law on this issue (IPKat), the EPO remains bullish. The latest version of the Guidelines have merely been updated to provide some increasingly pedantic examples of how the description should be adapted in line with the claims (F-IV-4.3; G-II-4.2, 5.3, 5.4). 

Extensions states

Montenegro, previously an extension state to the EPC, became a fully fledged EPC member in October 2022. The Guidelines have been updated  to reflect Montenegro's new status as the 39th contracting state of the EPC (A-III-12.1). Bosnia and Herzegovina is now the only remaining extension state. 

User consultation

EPO has invited users to comment on the updated Guidelines. The consultation can be accessed here, and runs until 4 April 2023. 

Further reading

2022: Changes in the draft 2022 EPO Guidelines for Examination on description amendments: Substantial changes or window-dressing?

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

2019: Updates to the EPO Guidelines for Examination - the highlights

Highlights from the new EPO Guidelines for Examination 2023: Erroneous parts, UPC and sequence listings Highlights from the new EPO Guidelines for Examination 2023: Erroneous parts, UPC and sequence listings Reviewed by Rose Hughes on Monday, February 20, 2023 Rating: 5

1 comment:

  1. As Rose rightly points out, the draft revision of the EPO Guidelines features in the F-IV section the continuation and even aggravation of the EPO’s practice of heavy-handed language policing requiring description and claim amendments, all the more concerning as they are frequently included by the Examining Division itself at the R 71(3) stage. The EPO posture is not so surprising based on their strong track record of ignoring users’ negative feedback. Nevertheless, it may be worth reminding some of the critical comments :
    - Description amendments are in most cases useless. They should be restricted as laid out in Section 5.29 of the PCT ISPE Guidelines i.e. when an inconsistency between the claims and the description causes doubt as to the meaning of the claims (not just could cause doubt).
    - Any amendment of the description has the potential of raising a 123(2) issue, all the more so as the EPO has a very strict approach of compliance with Art 123(2). Recent decision T 1473/19 illustrates a case in which an unfortunate claim amendment at the R 71(3) stage resulted in revocation over Art 123(2). Such iatrogenic revocations, to use medical vocabulary, should not be allowed to happen. The Guidelines regarding claim and description amendments should include a robust warning to make the Examining Divisions fully aware of the 123(2) risk. Isn’t this a major quality issue ?
    - Recent decision T 3097/19 shifting the rationale for description amendments to the 1st sentence of Art 84 (contrary to the interpretation of the settled case law), instead of the support requirement put forward in previous decisions, has shown a divide even within the Boards which support the requirement for description amendment, demonstrating the legal basis for the requirement to be shaky and weak.

    Meantime the sufficiency requirement of Art 83 continues to be paid scant attention, as if it were not part of « quality » in the eyes of the EPO. This is odd, especially considering the overemphasis of the EPO as to description amendments out of a « quality » concern.
    This is illustrated in Guideline F-III,3 by its surprising silence as to datasets to be used for training AI systems, whereas the requirement for disclosure of training datasets has been highlighted in several decisions (T 161/18, T 1191/19 and T 0702/20), showing that the case law of the BOAs on this topic is consistent and can be considered settled. It is worth noting that the topic is addressed within the "Convergence of practice" programme in which the EPO and European NPOs join forces.

    Against this backdrop, the EPO management should consider proposing to add the issue of description amendments to the scope of the Convergence of practice programme. The EPO is fully isolated on this issue, for example the French INPI is very restrictive as to description amendments. This would provide the opportunity to share practices and hopefully work out harmonised outcomes, of great benefits to the users of the European patent system.


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