Insights from the New EPO Guidelines

9 / 2 / 2024

The recent updates to the European Patent Office (EPO) Guidelines for Examination, set to take effect on March 1, 2024, bring forth several noteworthy changes, reshaping patent strategies.

One of the key updates concerns entitlement to priority. Following recent decisions from the Enlarged Board of Appeal (EBA), there is now a stronger presumption that applicants claiming priority are entitled to it, shifting the burden of proof to challengers.

Moreover, guidance on inventive step and evidence evaluation is clarified. Yet further interpretation is needed to fully grasp the possible implications, particularly concerning technical effects supporting inventive step.

For AI inventions, the guidelines underscore the importance of detailed disclosure to enable reproducibility of technical effects. This reflects a broader trend towards ensuring transparency and accountability in patent applications.

Another significant update relates to sequence listings and divisionals. New standards apply to divisional applications filed after July 2022, with the EPO waiving excess page fees for certain filings. This alleviates concerns about additional matter being introduced during the conversion process.

Furthermore, verification of natural person inventors is now mandatory, assuming that AI cannot be designated as inventors. This underscores the human-centric nature of innovation and patent law.

To streamline patent dispute resolution, the guidelines introduce provisions for accelerating opposition proceedings in cases where related infringement actions are pending before the court. This reflects a broader push towards efficiency and effectiveness in the patent system.

Overall, the updated guidelines offer important insights into patent law’s evolution. By understanding and adapting to these updates, patent practitioners can navigate complex issues more effectively to unlock innovation’s potential.

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Standard Essential Patent Reform in the EU

Last year, the European Commission proposed reforms to streamline the standard essential patent (SEP) process in the EU. SEPs cover technologies relating to technical standards for communication like 5G and Wi-Fi. The reforms aim to enhance transparency and negotiation pathways by assigning the European Union Intellectual Property Office (EUIPO) new responsibilities.

Feedback on the proposal was divided, with major SEP holders like Nokia and Ericsson expressing concerns over increased costs and uncertainties. Conversely, organizations representing patent implementers voiced support for the reforms.

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Fee-related support measures for small entities

Starting from April 1, 2024, there will be changes to the fees for European patent applications.

These changes will introduce a new scheme specifically designed to reduce fees for micro-entities.

The aim of this new scheme is to assist smaller and less experienced European entities in accessing the European patent system more easily, thereby supporting their growth and development.

These fee reductions complement the existing support measures available to small and medium-sized entities (SMEs), particularly in terms of language-related fee reductions.