AIPLA Submits Comments to EPO on 2022 Revised Guidelines for Examination
Written May 13, 2022
On April 8, AIPLA Submitted comments to the European Patent Office (EPO) on their revised 2022 Guidelines for Examination. AIPLA welcomes the current effort of the EPO to collect comments from stakeholders regarding changes to said Guidelines. We hope that our views will assist the EPO in its process of revising its Guidelines to benefit all stakeholders rather than place unnecessary burdens on them.
Background
The 2021 revision of the EPO Guidelines for Examination attracted many comments concerning the new provisions introduced by the Office about mandatory amendments of the description to avoid any possible inconsistency with the claims [Guidelines F-IV, 4.3 and F-IV, 4.4]. In particular, the 2021 Guidelines appeared to rely on a finding in T1808/06 that “inconsistent” embodiments should be deleted wherever possible; and if not possible that such embodiments should be prominently marked, for example, as an “embodiment not covered by the claimed invention.”
The practice set forth in the 2021 Guidelines has been followed quite strictly by the Examining Divisions starting from March 2021, by requesting adaptation of the description as a condition for issuing a Communication of Intention to Grant (Rule 71(3) EPC) or by introducing amendments directly in the Text Intended to Grant, subject to the Applicant’s approval. The most recent version of the Guidelines, entered into force on March 1st, 2022, substantially maintains the requirements formally introduced in 2021. In particular, although the 2022 Guidelines amend the terms of the relevant sections [particularly F-IV, 4.3], the principal effect of the 2021 Guidelines remains unchanged.
AIPLA's Comments
AIPLA's guidance focused on three main areas, including: the current guidelines vis a vis recent case law; critical issues raised by the new practice; and suggestions revisions for the forthcoming 2023 guidelines.
To view the complete comments, please download the Comment letter posted to the right of this page.