EPC - general practice, new provisions, EPC.App updates

This year’s first update of our EPC.App reference book to legal status of 1st April 2024 is completed. As always, the English and German versions are synchronized in content. The meanwhile 12th edition of our EPC commentary includes all Official Journal articles until March 2024 with thereby implied changes of EPC provisions and is intended to be used when starting preparations for EQE 2025.

Key changes since the last update in November 2023 were:

1. The new EPO Guidelines valid as of 01 March 2024. Interesting amendments therein provide more clarity to
   • accelerated opposition proceedings in case of parallel infringement or revocation actions (GL E-VIII, 5 – open in EPC.App at A. 99)
   • that claims amended in opposition need not comply with the conciseness requirement of R. 43(2) (GL D-V, 2.2 – at A. 100)
   • that the two-lists principle regarding selection inventions also applies for two overlapping ranges (GL G-VI, 7 – at A. 54)
   • that requests under R. 139 must be filed until the day before the decision to grant is handed over to the postal service (GL H-VI, 2.1  – at A. 123)
   • that examination proceedings continue even after expiry of the term of the European patent (GL E-X, 7 – at A. 63)
   • how a technical effect for AI inventions may be accepted based on training data (GL G-II, 3.3.1 – at A. 56), and
   • EPO practice relating to transfers of priority rights in view of G 1/22 and G 2/22 (GL A-III, 6.1 – at A. 87)
2. Rules 6, 82, 95, 123 and 146, as well as Art. 2 and 14 RFees have been amended, and new Rules 7a and 7b have been introduced as of 01 April 2024 (OJ 2024, A4, see new R. 7a in EPC.App at A. 14). These changes introduce new fee reductions for small or non-commercial entities, now also referring to microenterprises. They further abolish most rarely used administrative EPO fees and compensate these by an increase of remaining EPO fees. This deviates from the prior practice to raise all fees at roughly the same rate and now strongly increases renewal fees for years 3 and 4 by about 30%. Thereby, the EPO seems adapting its fee structure to avoid reductions of payments due to decreasing average times to grant (less applications pending more than 5 years) and now sets the focus on fees which contribute most to the EPO’s budget.
3. Digitalization of EPO proceedings is further moving forward by amendments to Rules 1, 22, 41, 147, 152 as of 01 April 2024, which remove certain requirements with respect to paper reproduction, fax numbers, preservation of data carriers, and numbers of copies. Most significantly, the signature requirement for evidence of transfers is broadened and now also allows text string and other digital signatures (R. 22 and OJ 2024, A17 – at A. 72)
4. The Rules of Procedure of the Boards of Appeal have been amended as of 01 January 2024 (RBoA at A. 110). They now trigger the third level of convergence later (A. 13(2)), namely by the A. 15(1) communication instead of the summons for oral proceedings; they allow earlier summons already one month after reply to the grounds of appeal (A. 15(1)) instead of two months; and they harmonize information to the President in two situations (A. 15(9)).
5. The final decision T 0116/18 has been issued (at A. 56). It provides more clarity on how to interpret order no. 2 of G 2/21, the latter having introduced the vague criteria that to rely on a technical effect for inventive step, the skilled person needs to derive said effect as being “(i) encompassed by the technical teaching” and “(ii) embodied by the same originally disclosed invention”. T 0116/18 now confirms rather low hurdles for acceptance of post-published evidence for inventive step. According thereto, for requirement (i) to be met, the purported technical effect need only be conceptually comprised by the broadest technical teaching of the application as filed. Further requirement (ii) is met unless the skilled person would have legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter. – In addition to this decision, the integrated case law database of the online EPC.App has been complemented by all BoA decisions published until end of March 2024. Further decisions thereof can be added or cited in personal annotations as needed using the self-editing functions (illustrated in this video).
6. As of 15 January 2024, validation of EP patents in Georgia has become possible (at A. 79).
7. The arrangements for deposit accounts have been updated as of 01 April 2024 (ADA at A. 5 Rfees). They now allow claiming refunds in CFP with or without a refund code, and electronic debit orders signed by a person authorized by the account holder.
8. An exemption from page fees for sequence listings in divisional applications has finally been introduced and applies for ST.25 compliant sequence listings in PDF format corresponding to the parent application (OJ 2023, A98 – at A. 78).

The above links to the online versions of the book can be followed when being logged-in. A free one month test account is available (does not extend automatically after expiry).

Feedback from EQE users has been reviewed and further included in the present update. Like in earlier years, we also tested ourselves the current EQE 2024 with the version of EPC.App available before the exam. We believe it was possible to find sufficient guidance to all EPC questions of pre-exam and paper D. Of course, it is always recommended to further enhance the author comments by own annotations for best results.

As usual, all changes of the update are automatically included in the online version on the next login. And as part of our update service, changes are additionally indicated by about 80 brief blue update notes in the App as shown on the screen in the image above and further explained in the FAQs. Of course, self-edited user content from before the update is retained in the respective personal storage on the webserver, and can be exported into the printable PDF offline version so as to avoid time-consuming transfer of handwritten annotations to the new edition. A 2-minute video illustrating the update process and related functions can also be found in our youtube channel.

To further avoid the need of replacing pages in a folder, a customized color paperback with up-to-date content and typed user comments can be ordered via our integrated high-quality print-on-demand service (see image above).

For those who still prefer to start with a classical printed book, we published also the EPC.App April 2024 Edition as stand-alone black-and-white paperback. The book is available in English and German via Amazon.