Symposium on Article 123(2) EPC
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On 7 February, a symposium on EPO practice regarding Art. 123(2) EPC took place at the EPO's Munich headquarters. Twenty-five senior patent professionals from Europe, Japan and the USA took the opportunity to share experiences with EPO examiners, lawyers and procedural experts in an effort to enhance understanding of how examiners apply Art. 123(2) EPC, and raise awareness among examiners of the problems encountered by users.
For a few years, external users have been questioning EPO practice related to amendments in examination or opposition under Article 123(2) EPC. The ability to amend an application in response to objections raised by examiners is essential to ensure a constructive and efficient dialogue and finally a solid patent. However, to ensure fairness towards the public, this right must be limited so that amendments do not extend beyond the content of the application as originally filed. The criteria applied in this assessment have been developed on the basis of decisions of the Boards of Appeal. Some of these criteria formed the heart of the discussions at the symposium.
Margot Fröhlinger, Principal Director Patent Law and Multilateral Affairs, welcomed the participants and Heli Pihlajamaa, Director Patent Law, and Alfred Spigarelli, Director Patent Procedures Management opened the plenary session with an overview of EPO practice in assessing Art. 123(2) EPC according to the principles laid down in the Guidelines for Examination, H-IV and H-V, and highlighted recent case law developments.
John Hornickel from the American Intellectual Property Law Association (AIPLA), Yasuda Ryosuke from the Japan Patent Attorney Association (JPAA), and Gabriele Leißler-Gerstl from the European Patent Institute (EPI), presented the US, Japanese and European perspective on Article 123(2) EPC. The three presentations provided a good basis for comparison of the different practices.
In the afternoon, the participants were divided into four break-out sessions depending on their technical field: mechanics, electricity/physics, chemistry and biotechnology. Each group comprised a director in the field of examination, two examiners, and EPO experts on patent law and patent procedures management, as well as five to ten patent professionals, with the chemistry being the largest group.
For two and a half hours, these groups discussed current practice on the basis of examples provided by both the patent professionals and examiners.
The results of the break-out sessions were presented in the final plenary session. Inter alia the following conclusions were drawn:
- There was a broad consensus that the same criteria should be used for the assessment of added subject-matter, novelty and priority.
- The patent professionals advocated less formalism in the assessment of Art. 123(2) EPC, and more consideration of the actual invention, more in the sense of what a skilled person could understand.
- The criterion "directly and unambiguously" does not mean "literally", as also stated in Guidelines, H-IV, 2.3. Yet, it was felt that in certain cases it is overlooked that the application is directed to the skilled person, who may take his common general knowledge into account in order to determine what is directly and unambiguously derivable from the application as filed.
- A too strict approach obliges applicants to inflate their applications with all possible combinations to anticipate possible amendments. This is particularly problematic in cases of selections from multiple lists.
- Added subject matter issues were found to take too much time, e.g. during oral proceedings; the focus should lie more on substantive issues, such as inventive step.
- Applicants were advised to make full use of Rule 137(4) EPC and provide convincing arguments, especially if the basis is less obvious.
The results of the break-out sessions were further discussed in a lively round-table discussion, before Ms Pihlajamaa and Mr Spigarelli closed the symposium.
The participants were unanimous that the constructive discussions at the symposium contribute to an enhanced mutual understanding on Art. 123(2) EPC. The conclusions formulated by the respective technical fields will be carefully studied and will be used for enriching and improving part H of the Guidelines.