EPO consults on exam guidelines with key UPC update
Proposals promise clarity for patent attorneys wishing to act before the UPC and national courts | Addition to section relating to a summons to an oral proceeding | Finnegan.
The European Patent Court (EPO) has launched a consultation on its 2023 update to the Guidelines for Examination, which proposes a key change relating to the much-anticipated Unified Patent Court (UPC).
The guidelines are prepared by the EPO to direct the work of their employees, but they also provide insight for applicants and their attorneys seeking to obtain patents from the EPO.
UPC update
The guidelines presently states that a party to opposition proceedings may request accelerated processing where an infringement action is pending before a national court.
The proposed update clarifies that accelerated processing of an opposition may also be requested when an infringement action is pending before the UPC.
According to Maeve O’Flynn, partner at Finnegan, this will provide some much-needed clarity for patent attorneys who wish to present before the UPC, as well as a national court.
Noting that the changes for 2023 include an addition to the section relating to summons to oral proceedings as the first action in examination, she added: “The guidelines inform the applicant that if they do not submit a reasoned and substantive response to the search opinion, then they may not receive an examination report from the EPO, and instead will receive a summons as the first action.”
Oral proceedings
Applicants, she explained, should avoid this scenario as it reduces the scope for negotiation during examination, and increases the likelihood of refusal.
“The update clarifies that for divisional applications a summons may be expected as the first action in examination if the claims of the divisional are substantially the same as the parent application, the parent application was refused, and the same objections still apply,” she said.
“Applicants may need to amend their divisional filing strategies to ensure that they are not faced with a summons to oral proceedings at an early stage of examination.”
The guidelines offer instructions on the practice and procedures to be followed in the examination of European and international applications and patents in accordance with the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT).
A critical resource
According to the EPO, the guidelines have become a much-consulted resource for illustrating the law and practice in proceedings before the EPO to external parties.
Given the extent of their application, the guidelines are revised every year to bring them into line with current legal and procedural developments.
Every spring, the EPO invites patent system users to share their views on the latest EPC and PCT-EPO Guidelines in a public online consultation.
This year's consultation invites comments by April 4, which need to state clearly which specific guidelines they refer to (EPC or PCT-EPO) and indicate the part (and, if relevant, chapter, section and subsection) and language version concerned.
The anonymised suggestions on the EPC and PCT-EPO Guidelines will be forwarded to the Standard advisory commitee before the EPO on guidelines for consideration, and will form part of the discussions during its 25th annual meetings in May 2023.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories
