Changes to the European Patent Office’s Guidelines for Examination

16 November 2016

  • The European Patent Office’s latest edition of the Guidelines for Examination has come into effect from 1 November 2016.  The new edition brings the Guidelines up to date with recently decided cases and changes to European practice.  In the following we provide a few selected highlights from among the many changes.
  • -  Several amendments have been made to reflect the introduction of streamlined opposition proceedings from 1 July 2016.  It is now expected that straightforward oppositions will be decided within 15 months from the expiry of the opposition period.
  • -  The programme for accelerated prosecution of European patent applications (PACE) has resulted in several updates being made.  In particular, the Guidelines now clarify that separate requests must be made to accelerate search and examination respectively, and that if accelerated status is lost, for example because a renewal fee has not been paid in due time, or a deadline has been missed, then that status cannot be reinstated.
  • -  Assignments of European patent applications can now only be registered with documentary evidence signed by all parties to the assignment, whereas previously only the signature of the assignor was required.
  • -  Some new guidance is provided about acceptable formulations for claims covering computer implemented inventions, with specific consideration given to claims relating exclusively to methods that may be performed with generic computer hardware, and also to claims limited, at least in part, to specific data processing equipment or to interactions with other technical devices.
  • -  In addition, the Guidelines now provide a new set of worked examples of how the patentability of computer implemented inventions should be assessed by examiners, in particular in relation to inventive step.  The examples provide insight into cases where computer implemented inventions are considered allowable and cases where they are considered to be excluded subject matter.
Your usual Potter Clarkson representative will be able to advise you on any specific issues relating to European patent applications.

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