2017 European Patent Office Updates

December 4, 2017

The European Patent Office recently revised its Examination Guidelines. These Guidelines are primarily directed to the patent examiners and formalities officers of the EPO, but they are also helpful to anyone practicing before the EPO. This year the update contains a few important changes.

Graphical User Interfaces

Reflecting recent case law, the revision replaces and expands on its comments concerning user interfaces. The Guidelines now state that user interfaces comprise “features of presenting information and receiving input in response as part of human-computer interaction.” Features that define user input are more likely to have a technical character (and therefore be patentable subject matter) than those solely concerning data output and display, because input requires compatibility with the predetermined protocol of a machine, whereas output may be largely dictated by the subjective preferences of a user.

This change reflects recent case law about what can be considered patentable subject matter. When drafting claims involving a UI, we will be carefully considering input means and structures to help ensure allowance.

Exclusion of Plants or Animals Produced by Biological Processes

There were no major changes to EPO practice in this area, but the revisions include specific mention of CRISPR/Cas and reflect very recent technical progress in these fields. A plant or animal originating from a technical process or characterized by a technical intervention in the genome is patentable subject matter.

Oral Proceedings

Where no possibility of a grant is envisioned after a European Search Report has issued and applicant has replied to the search, the examining division may issue a summons to oral proceedings as the first action in examination. The EPO will no longer be required to issue an examination report in such an instance, thereby guaranteeing only two substantive office actions from the EPO rather than three.

The revised Guidelines state that this is only for "in exceptional situations” when:

  • the content of the claims on file is not substantially different to that of the claims which served as a basis for the search, and
  • one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply.

Based on this change, we might recommend that a comprehensive response be filed to the extended European Search Report.

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Braginsky, Philip Partner and Co-Chair of Intellectual Property Group and Pharmaceutical and Biologics Practice and China Practice Partner and Co-Chair of Intellectual Property Group and Pharmaceutical and Biologics Practice and China Practice 212.216.8065 VCard

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