EPO Publishes Updated Guidelines for Examination

The EPO has published its yearly update to the Guidelines for Examination, which will come into force on 1 November 2017. The updated Guidelines for Examination can be found here, with a list of the amendments made compared to the current version available here.

One significant procedural change is that it will be possible from 1 November 2017 for the EPO to issue a summons to oral proceedings as the first action in examination. At present, the EPO is required to issue a written communication (or "examination report") as the first action in examination. Further details of the new procedure can be found here.

The updated Guidelines for Examination state that a summons to oral proceedings will be issued as the first action in examination only in "exceptional circumstances". However, the criteria that must be satisfied for a summons to oral proceedings to be issued as the first action in examination are:

• that the pending claims are not substantially different to those that were previously searched; and
• that an objection which was raised in the search opinion and which is considered crucial to the outcome of examination still applies.

These criteria will arguably be satisfied for numerous applications and so it seems that the EPO will in principle be able to issue a summons to oral proceedings as the first action in examination for many applications. However, it remains to be seen how often the EPO will make use of this new procedural option in practice, and it is to be hoped that this new power really is only exercised exceptionally (rather than routinely).

It is also worth noting that a summons to oral proceedings cannot be issued as the first action if the examiner wishes to raise new objections or cite new prior art. In addition, at least six months' notice must be provided for the oral proceedings, which means applicants may in many cases have enough time to secure cancellation of the hearing by filing written submissions in advance of the hearing.

The possibility of a summons to oral proceedings as the first action in examination forms part of the EPO's ongoing efforts to accelerate the processing of European patent applications. Another procedural change which has been introduced with the aim of accelerating processing is the option of a telephone conversation between the EPO examiner and the applicant's representative as the first action in examination. In that scenario, the telephone conversation will be followed by a written telephone minute setting a term (of no less than four months) for response.

A number of changes have also been made to the sections of the Guidelines for Examination discussing computer implemented inventions. These changes are discussed separately in our news item here.

If you have any questions concerning the above changes, or any of the other changes to the Guidelines for Examination, please contact Chris Milton or your usual J A Kemp contact.