Date: 20 August 2020
The first public consultation on the EPC and PCT-EPO Guidelines has been published by the EPO. Out of 150 responses, 33% of the comments related to issues in the field of biotechnology, and about 27% to computer-implemented inventions which demonstrates the continued importance and contentious nature of these fields of patent law.
The minutes of three meetings of the SACEPO Working Party on Guidelines (SACEPO WPG) at which the EPO responded to the comments in the consultation have also been published.
One of the meetings discussed the issues relating to computer implemented inventions and it was emphasised that the forthcoming decision from the Enlarged Board of Appeal in the case of G1/19 will be crucial when making further amendments to the guidelines in this field of technology.
Another of the meetings discussed the issues relating to biotechnology and one of the key areas of discussion was Rule 28(2) EPC.
Rule 28(2) EPC was reworded by the Administrative Council of the EPO in 2017 to specifically exclude plants and animals produced by essentially biological processes from patentability. The admissibility of this amendment in light of the requirements of Article 53(b) EPC was recently confirmed by the Enlarged Board of Appeal’s decision G 3/19.
Suggested amendments to Parts F-IV, 4.12, G-II, 5.2 and 5.4 ff. by several members attending the meeting in light of this decision were not introduced. However, the EPO agreed to further clarify the wording in these areas in future. The EPO also clarified that "even a positive definition of the process would not avoid the need of the disclaimer under Rule 28(2) EPC". The EPO went on to state:
"The disclaimer solution was introduced on request of the legislator, i.e. the Administrative Council. The disclaimer solution is, thus, in line with the legislative intent. This is confirmed by the Enlarged Board of Appeal’s decision G 3/19."
The EPO also confirmed the addition of a new clarification of Markush claims in the PCT-EPO guideline, a new definition of the term "parthenotes" in the EPC guidelines, and the introduction of a new section F-IV, 4.24 in the EPC guidelines to provide an interpretation of terms such as identity and similarity in relation to amino or nucleic acid sequences.
The EPO additionally explained at the meeting that "the new chapter on antibodies and antibody patenting was added upon repeated requests by users as also strongly represented in the online user consultation."
We welcome the public consultation of the new EPC and PCT-EPO guidelines by the EPO and we will keep users informed on further developments of these guidelines.
If you have questions or would like to discuss any of the issues raised above, please Contact Us