Guidelines amended to reflect regulation changes

01 June 2010

The April 2010 edition of the Guidelines for Examination in the European Patent Office has been released and applies from April 1 2010. The Guidelines constitute the EPO counterpart to the Manual of Patent Examining Procedure (MPEP) of the United States Patent and Trademark Office (USPTO).

The amendments to the Guidelines reflect in particular the EPO regulation changes, which have entered into force on April 1 2010, including:

Divisional applications: pursuant to new Rule 36 EPC, divisional applications must now be filed within a time limit of 24 months from the first communication from the Examining Division (voluntary division) or within 24 months from the date, on which the Examining Division for the first time raises an objection with respect to lack of unity (mandatory division).
The subject of the search report: under new Rule 62a(1) EPC, the EPO shall invite the applicant to indicate which of the independent claims are to be searched, in case the application contains multiple independent claims in the same category (product, process, apparatus or use).
Response to the extended European search report (EESR): pursuant to new Rule 70a, the applicant must file a response to the EESR at the latest upon requesting examination, i.e. within six months from the publication of the search report.
Response to PCT written opinions or examination reports drawn up by the EPO: new Rule 161 requires that the applicant files a response to the written opinion or the international preliminary examination report, as the case may be, immediately upon EPO regional phase entry, that is within one month from notification.

Additionally, the new Guidelines have been updated with respect to the examination for inventive step in view of recent case law from the Boards of Appeal. One notable change is that the Guidelines now allow examiners to rely on an allegation of common general knowledge, which needs no substantiation unless challenged (Guidelines, C-IV 11.2). Further, according to the new Guidelines, even an implicit prompting or implicitly recognisable incentive is sufficient to demonstrate lack of inventive step (Guidelines C-IV 11.5.2).

The Guidelines are available as a download free of charge from the EPO website.