tag:blogger.com,1999:blog-5574479.post2156273036278116552..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: Highlights from the new EPO Guidelines for Examination 2023: Erroneous parts, UPC and sequence listingsVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger1125tag:blogger.com,1999:blog-5574479.post-21089500210069480672023-02-22T18:29:54.475+00:002023-02-22T18:29:54.475+00:00As Rose rightly points out, the draft revision of ...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 :<br />- 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).<br />- 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 ?<br />- 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.<br /><br />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.<br />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.<br /><br />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.<br />Francis Hagelhttps://www.blogger.com/profile/08804192496786188080noreply@blogger.com