Where a claim in respect of a physical entity (product, apparatus) seeks to define the invention by reference to features relating to the entity's use, a lack of clarity can result. This is particularly the case where the claim not only defines the entity itself but also specifies its relationship to a second entity which is not part of the claimed entity (for example, a cylinder head for an engine, where the former is defined by features of its location in the latter). Before considering a restriction to the combination of the two entities, it should always be remembered that the applicant is normally entitled to independent protection of the first entity per se, even if it was initially defined by its relationship to the second entity. Since the first entity can often be produced and marketed independently of the second entity, it will usually be possible to obtain independent protection by wording the claims appropriately (for example, by substituting "connectable" for "connected"). If it is not possible to give a clear definition of the first entity per se, then the claim should be directed to a combination of the first and second entities (for example, "engine with a cylinder head" or "engine comprising a cylinder head").
It may also be allowable to define the dimensions and/or shape of a first entity in an independent claim by general reference to the dimensions and/or corresponding shape of a second entity which is not part of the claimed first entity but is related to it through use. This particularly applies where the size of the second entity is in some way standardised (for example, in the case of a mounting bracket for a vehicle number-plate, where the bracket frame and fixing elements are defined in relation to the outer shape of the number-plate). However, references to second entities which cannot be seen as subject to standardisation may also be sufficiently clear in cases where the skilled person would have little difficulty in inferring the resultant restriction of the scope of protection for the first entity (for example, in the case of a covering sheet for an agricultural round bale, where the length and breadth of the covering sheet and how it is folded are defined by reference to the bale's circumference, width and diameter, see T 455/92). It is neither necessary for such claims to contain the exact dimensions of the second entity, nor do they have to refer to a combination of the first and second entities. Specifying the length, width and/or height of the first entity without reference to the second would lead to an unwarranted restriction of the scope of protection.
For the assessment of claims directed to computer-implemented inventions, where a claim to a computer program refers to a computer (a separate entity), see F‑IV, 3.9.
Definition by reference to use or another entity
The latest version of the European Patent Office’s Guidelines for Examination include changes relating to speeding up Opposition proceedings, set out stricter requirements for recording assignments, and give new examples that may assist when seeking re-establishment of rights and for establishing inventiveness in computer-implemented invention cases.
The annually updated Guidelines came into effect on 1 November 2016. Changes to the Guidelines tend to reflect recent changes in EPO practice, and can signal the way that EPO examiners will prosecute applications going forwards. We therefore look at some of the more significant changes in this year’s edition of the Guidelines to see the direction in which the EPO is moving.
As we reported in August, the EPO has made some formal changes to opposition procedure in the hope of speeding up proceedings and reducing the existing backlog of oppositions. These changes are reflected in the Parts D and E of the updated Guidelines.
Of particular note is that the Opposition Division will now only grant extensions to time limits for filing observations during proceedings in “exceptionally, duly substantiated cases”. It remains to be seen how strictly this standard will be applied but, anecdotally, some Opposition Divisions have indicated that they would not grant an extension in any circumstances. In another case, an Opposition Division granted an extension to bring the timelines of two related oppositions into line, in view of the overall increase in procedural efficiency.
Also of note is that the deadline for filing written submissions before the scheduled date of Oral Proceedings has been increased from one month before the date of the hearing to two months before the date of the hearing. This gives parties less time to prepare their written arguments, but conversely gives both parties longer to review the other party’s arguments before the hearing.
There have been a number of changes to the EPO’s procedure for speeding up the application process. Many of these changes occurred just too late to make it into last year’s revisions to the Guidelines, but appear in the November 2016 edition.
The main changes concern the PACE programme, which provides accelerated search and examination upon request, at no additional cost. It is now compulsory to make PACE requests on the dedicated PACE form (Form 1005); PACE requests made in a letter are no longer accepted. Additionally, it is now necessary to make separate requests for search and examination, and it is not possible to make a request for accelerated examination cannot be made until after the issue of the search report.
One change particularly worth remembering, because it has only been introduced to the new Guidelines in the form of a reference to the November 2015 Official Journal, is the possibility of ending the six month Rule 161 period early by including a request in the letter of response to the Rule 161 communication. Otherwise, this period can delay the progress of PCT(EP) applications by as long as six months, where a response to the Rule 161 communication is filed early in the six month period.
Although there have been no changes to the EPO’s procedure for dealing with re-establishment, the sections of the Guidelines dealing with re-establishment have been significantly overhauled.
Of particular note is the new section dealing with the merits of a request for re-establishment, and the requirements of the “all due care” standard that the EPO applies. Previous editions of the Guidelines provided a limited number of examples of circumstances where re-establishment would be granted, mainly obvious cases such as the destruction of working documents in a fire. The new Guidelines provide a more general, and perhaps more useful, discussion of the state of the EPO’s practice in this area.
Search and examination
The updated Guidelines for Search (Part B) include a short new section stating that examiners should not hold telephone conversations or informal interviews with applicants until the application entered the examination stage. This statement was actually already present in the Guidelines, but it has been moved from a relatively obscure paragraph later in Part B to the start of Part B. This would appear to suggest that the EPO wishes to make it clear to Examiners and applicants alike that they cannot discuss the application until after the filing of a response to the extended European search report (EESR), and that we can expect this to be enforced more strictly from now on.
Notably, this restriction explicitly does not apply in the context of communications under Rule 63(1) EPC (invitations to the indicate subject-matter to be searched) or Rule 62a(1) EPC (invitations to indicate which independent claims should be searched, where an application includes multiple independent claims in the same category), where informal discussions with the search examiner can be helpful.
It is also interesting to see that the EPO has introduced a number of statements in both the Guidelines for Search and Examination encouraging examiners to provide positive statements on patentable subject matter and to provide suggestions for overcoming objections. We can perhaps therefore look forward to receiving somewhat more detailed and positive examination reports from the EPO.
Registration of transfers
The Guidelines now specify that documents supplied to the EPO to evidence a transfer of a European Patent or European Patent Application must include “the signatures of the parties”, and not merely “a declaration of the assignor”.
This new wording, which echoes the wording of Article 72 EPC, can be taken to mean that assignment documents must include the signature of both the assignor and assignee if they are to be used to register assignments at the EPO. While worth bearing in mind for anyone involved in assignments of European Patents and applications, this change should not cause any significant change to practice, not least because the EPO’s position remains relatively relaxed compared to most patent offices around the world.
Computer-Implemented Inventions and ‘Excluded’ Subject Matter
Part G – Chapter VII-5.4.2 of the updated Guidelines includes four new detailed examples illustrating the application of the problem-and-solution approach (the EPO’s preferred approach to assessing inventive step) to inventions that include a mixture of technical and non-technical subject-matter. This is particularly relevant to computer-implemented inventions, including inventions relating to business methods, computer programs and mathematical methods. While not providing any new law or insight, the examples provide a good starting point for dealing with this type of invention in Europe, especially for anyone unfamiliar with the European approach.
Also of note is new Part F – Chapter IV-3.9.1 of the updated Guidelines, which provides a clarification as to how the EPO interprets means plus function style apparatus claims for computer implemented inventions which can be carried out on a general purpose computer. Such inventions are usually claimed primarily as a method, with an apparatus claim specifying “means for” or “means adapted/configured to” perform the steps of the method. In view of the EPO’s usual approach of interpreting the word “for” in a claim as “suitable for”, and in view of the fact such inventions may be implemented on computers with no new technical features, the question of whether these means plus function are or should be allowable has arisen. The updated Guidelines clarify that they are, subject to allowability of the method claim, and that “means for”, “means adapted to” and “means configured to” are all equally acceptable.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
Share: Linkedin Twitter Facebook Google plus Reddit