AIPLA Comments on the Latest Amendments to the EPO Guidelines for Examination

Arlington, VA. April 3, 2023 - The American Intellectual Property Law Association (AIPLA) submitted comments to the European Patent Office (EPO) on the latest amendments to their Guidelines for Examination.  

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. 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. 

 

The most recent comments suggest that the amended Guidelines remain open to inconsistent interpretation by examiners, many of whom continue to adopt an overly zealous approach that is extremely costly and time consuming for both the examiner and applicant and thus counter-productive for an efficient procedure; as well as having the potential to be extremely problematic post-grant. 

  

To view the complete comments, please download the comment letter posted to the right of this page.