The salient changes in Part E (General procedural matters ) and Part F (The application) of the EPO Guidelines 2016
E-II.1
Oral proceedings will take place before the competent body, e.g. within the Receiving Section before the competent formalities officer and during the examination and opposition procedure before the whole Division.
The right to oral proceedings forms a substantial part of the right to be heard under Art. 113.
E-II 8.7 Handwritten amendments in oral proceedings
8.7.1 General principles
The requirement of
Rule 49(8) that the description, claims and abstract, as well as the request for grant, must be typed or printed
in principle extends to documents replacing application documents and to amended patent specification documents (
see also A‑III, 3.2) This applies to documents submitted during oral proceedings as well.
Responsibility for formally correct submissions and, in particular, for compliance with Rule 49(8) lies with the applicant/proprietor.
In examination, the formal requirement of Rule 49(8) applies to documents submitted during oral proceedings as well. Documents containing handwritten amendments will normally be accepted by the division as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent. However, a final decision granting a patent may be taken only on the basis of documents which are formally compliant.
For opposition proceedings, two situations have to be distinguished:
(i) In written proceedings, a final decision on the documents on the basis of which the patent is to be maintained may be taken only on the basis of formally compliant documents.
(ii) For oral proceedings, Rule 82(2), third sentence (OJ EPO 2015, A82), provides for one exception to the principle that a decision determining the final text of the patent may be based only on formally compliant documents. Pursuant to this provision, in oral opposition proceedings, the patent proprietor is by way of exception not required to file documents compliant with Rule 49(8) prior to the interlocutory decision on the documents on the basis of which the patent is to be maintained. He may choose to submit a formally compliant version of the amended text only within the time limit under Rule 82(2) (OJ EPO 2016, A22). The same applies mutatis mutandis to opposition appeal proceedings. The parties will nevertheless be encouraged to file documents compliant with Rule 49(8) during oral opposition proceedings.
It is noted that deletions, correction of the numbering of the figures and insertion of reference numbers and associated arrows in drawings are considered as typewritten amendments.
E-V 3. Observations by third parties
Observations by third parties received after the conclusion of proceedings will not be taken into account and will simply be added to the non-public part of the file.Observations by third parties received after the decision to grant/refuse the application has been pronounced in oral proceedings or issued in written proceedings (see G 12/91) will be included in the file without taking note of their content. Observations by third parties received once proceedings are no longer pending (e.g. after publication of the mention of the grant) will be neither taken into account nor made available for file inspection. They will however be made available for file inspection upon the start of opposition proceedings.
E-IV 3. Stay of proceedings when a referral to the Enlarged Board of Appeal is pending
Where a referral to the Enlarged Board of Appeal is pending and the outcome of examination or opposition proceedings depends entirely on the answer to the questions referred to the Enlarged Board of Appeal,
the proceedings may be stayed by the Examining or Opposition Division on its own initiative or on request of a party or the parties.
The party/ies will be informed of t
he stay of proceedings as well as of the continuation of the proceedings after a stay.intention to stay the proceedings. If no reply is received from the party/ies with regard to the intention to stay, or if the party/ies explicitly agree(s), the proceedings will be stayed automatically. If the party/ies do(es) not agree in writing with the intention to stay, but the Examining or Opposition Division maintains its opinion, a decision to stay will be dispatched.
E-VII 3. Re-establishment of rights
Completely rewritten. See here.
E-VII 3.2 Merit of the request
An applicant can have his rights re-established only if he shows that he was unable to observe a time limit vis-à-vis the EPO in spite of all due care required by the circumstances having been taken. The obligation to exercise due care must be considered in the light of the situation as it stood before the missed time limit expired. “All due care” means all reasonable care, i.e. the standard of care that the notional reasonably competent patentee, applicant or representative would employ in all the relevant circumstances (see T 30/90).
For cases where the cause of non-compliance with a time limit involves some error in the carrying out of the party’s intention to comply with the time limit, all due care is considered to have been taken if non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system.
A finding of exceptional circumstances justifying the re-establishment of rights is dependent on the individual facts of the case. Examples include inter alia organisational upheavals and sudden serious illnesses. In such cases, the requester must show not only the existence of those circumstances, but also that he took all due care, e.g. by carefully preparing the reorganisation or by having an effective staff substitution system.
Where an isolated mistake within a normally satisfactory monitoring system is alleged, the relevant party must show that the monitoring system normally works well. Such a system must include an independent, effective cross-check mechanism. However, this requirement does not apply to relatively small entities/patent departments (see T 166/87 and J 11/03).
The duty to exercise all due care applies first and foremost to the applicant and then, by virtue of delegation, to the representative duly entrusted by the applicant to act on his behalf in prosecuting the application (see J 3/93). The obligations of the applicant and those of his representative are clearly distinct and depend on the relationship between them (see T 112/89 and J 19/04). In this regard, the scope of the mandate and any express instructions given to the representative are taken into account.
The applicant is entitled to rely on his representative. To the extent that the applicant is on notice that instructions are required in order to meet a time limit, he has however a duty to take all due care in the circumstances to meet the time limit (see T 381/93). The fact that the professional representative has acted correctly does not exempt the applicant from suffering the consequences of his own mistakes or negligence.
The European representative is responsible in the procedure before the EPO and must be presumed to be supervising his own work continuously (see T 1095/06). When the professional representative has been instructed by his client to perform a particular procedural action and does not receive in due time the necessary additional instructions or required means, he must in principle take all necessary measures to try to obtain these instructions from his client and ascertain his true wishes (see T112/89 and J 19/04).
Professional representatives can delegate routine tasks, such as typing, posting letters, noting time limits or checking due dates, to assistants. In those cases, the same strict standard of care is not expected of the assistant as is demanded of the representative himself. The representative must however show that the assistants have been carefully selected, duly instructed and periodically supervised (see J 5/80 and T 439/06).
If the applicant entrusts a further party with taking care of his application matters, e.g. a non-European representative or a fee payment agency, it has to be established that such a party has taken the due care required of an applicant for or proprietor of a European patent (see J 3/88). In particular, a non-European representative must also show that a reliable system for the monitoring of time limits was in place when the time limit was missed (see J 4/07).
E-VII 7.1 Withdrawal of application or designation
[...] Where a patent application has been refused, proceedings are still pending until expiry of the period for filing an appeal. On the day after, proceedings are no longer pending if no appeal is filed. Therefore, an application which is refused either in written or oral proceedings can still be withdrawn in this period. Previously in E-VII 6.3
E-X – Impartiality of the Examining or Opposition DivisionMembers of the competent divisions may not take part in the decision on a case:
(i) in which they may have any personal interest (partiality for subjective reasons) or
(ii) in respect of which the applicant may have good reasons to suspect partiality (partiality for objective reasons).
For the objection to be admissible it must be raised immediately after the party has become aware of the reason for it. The request must also be accompanied by a reasoned statement of grounds setting out the facts and arguments in support of the objection and, where appropriate, any evidence. Unsubstantiated and merely general statements, e.g. based on the nationality of the examiner(s) concerned, are not admissible.
Any challenge to impartiality must be submitted to the competent division, which will forward it to the immediate superior of the members of the division (Rule 11(1)) along with the statement of the member(s) concerned on the facts and circumstances put forward by the party. The immediate superior will decide on the challenge. If the challenge to impartiality has been raised in written proceedings and has been considered allowable, the concerned member(s) of the division is/are replaced. If the challenge has been considered either inadmissible or not allowable, the reasons are issued in writing. These reasons are part of the final decision and will be appealable with it.
If the challenge to impartiality is raised in oral proceedings, the proceedings are interrupted in order for the immediate superior to assess the challenge. On the same day, the oral proceedings are resumed and the parties are informed on the outcome of the assessment. If the challenge is found allowable, the oral proceedings are then adjourned. Proceedings will be continued by a division in which the concerned member(s) is/are replaced.
If the challenge to impartiality is considered either inadmissible or not allowable, the oral proceedings will continue. The parties will be informed of the reasons during oral proceedings. These reasons become part of the final decision and are appealable with it.
E-XIII 3. Transfer of the European patent application
[] Once a transfer has been duly entered in the European Patent Register, the registration cannot be undone, even if it appears that one or more requirements were actually not fulfilled for reasons not apparent at the time when the transfer was registered by the EPO, e.g. where doubts arise later as to the entitlement of the person signing on behalf of one of the parties to enter such a transfer agreement (see decisions J 16/14 to J 22/14). The original status quo is no longer restored until the valid legal situation has been established. In the meantime, proceedings may have to be stayed under Rule 14 or 78 until it is clear who is the legitimate applicant/proprietor.In cases where the transfer is later challenged by the originally registered applicant, e.g. due to the accusation of falsified documentary evidence or an adverse situation of national civil law, the original status quo of the European Patent Register is restored until the valid legal situation has been proven, e.g. by means of a national judicial decision.
F-IV 3.9 Claims directed to computer-implemented inventions
The expression "computer-implemented invention” (CII) covers claims which involve computers, computer networks or other programmable apparatus, whereby prima facie one or more of the features of the claimed invention are realised by means of a program or programs.
In the following two sections, a distinction is made between two situations. The practice defined in F‑IV, 3.9.1, is confined to inventions in which all the method steps can be carried out by generic data processing means. F‑IV, 3.9.2, on the other hand, relates to inventions in which at least one method step requires the use of specific data processing means or other technical devices as essential features.
3.9.1 Cases where all method steps can be fully implemented by generic data processing means
A common type of CII relates to subject-matter where all the method steps can fully be carried out by computer program instructions running on means which, in the context of the invention, provide generic data processing functions. Such means can, for example, be embedded in a personal computer, smartphone, printer etc. In such inventions, although different claim structures are possible, the set of claims usually starts with a method claim. Further claims in other categories with subject-matter corresponding to that of the method may be included to obtain complete protection of the invention. If the invention concerns software which can be loaded into memory, transmitted over a network or distributed on a data carrier, a claim to a computer program [product] may also be present in addition to a computer-implemented method. The category of a computer program [product] claim is distinguished from that of a corresponding computer-implemented method (T 424/03 and G 3/08). The following non-exhaustive list comprises examples of acceptable claim formulations (T 410/96, T 1173/97 and T 2140/08) in such a set of claims:
(i) Method claim (claim 1)
– A computer-implemented method comprising steps A, B, ...
– A method carried out by a computer comprising steps A, B, ...
(ii) Apparatus/device/system claim (claim 2)
– A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1.
– A data processing apparatus/device/system comprising means for carrying out step A, means for carrying out step B, ...
– A data processing apparatus/device/system comprising a processor adapted to/configured to perform [the steps of] the method of claim 1.
(iii) Computer program [product] claim (claim 3)
– A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out [the steps of] the method of claim 1.
– A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out steps A, B, ....
(iv) Computer-readable [storage] medium/data carrier claim (claim 4)
– A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out [the steps of] the method of claim 1.
– A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out steps A, B, ...
–A computer-readable data carrier having stored thereon the computer program [product] of claim 3.
In formulation (ii) above, apparatus features of the means-plus-function type ("means for ...") are interpreted as means adapted to carry out the respective steps/functions, rather than merely means suitable for carrying them out (T 410/96). There is no particular preference of wording among "comprising means for", "adapted to", "configured to" or equivalents. In this way, novelty is conferred over an unprogrammed data processing apparatus or a data processing apparatus programmed to perform a different function.
An objection under Rule 43(2) should not be raised if the claim set comprises one claim from each of the above formulations (i)-(iv). In these cases, an invitation under Rule 62a(1) should therefore not be sent at the search stage since the requirements of Rule 43(2) are fulfilled.
However, an objection under Rule 43(2) may be raised if more than one claim is present from a heading (i)-(iv), for example if there are two or more computer program [product] claims which cannot be considered as falling under one of the exceptions of Rule 43(2) (F‑IV, 3.2).
When assessing the novelty and inventive step of a set of claims as defined above (formulations (i)-(iv)), the examiner usually starts with the method claim. If the subject-matter of the method claim is considered novel and inventive, the subject-matter of the other claims in a set formulated in accordance with the headings above will normally be novel and inventive as well, provided they comprise the features corresponding to all those which assure the patentability of the method.
Claims related to CII which are formulated differently to those in the formulations (i)-(iv) defined above are assessed on a case-by-case basis in view of the requirements of clarity, novelty and inventive step (see also F‑IV, 3.9.2, and G‑II, 3.6).
For example, when the invention is realised in a distributed computing environment or involves interrelated products, it may be necessary to refer to the specific features of the different entities and to define how they interact to ensure the presence of all essential features, rather than making a mere reference to another claim as in the above formulations (ii)-(iv). In such cases, further independent claims to interrelated products and their corresponding methods may also be allowable under Rule 43(2)(a) (F‑IV, 3.2).
Similarly, if user interaction is required, an objection under Art. 84 may arise if it is not possible to be determine from the claim which steps are carried out by the user.
Furthermore, a claim to a computer-implemented data structure in addition to formulations (i)-(iv) may be allowable under Rule 43(2) if it is defined by its own technical features, e.g. by a well-defined structure as in T 858/02, possibly with references to the corresponding method or system in which it is used. However, a computer-implemented data structure does not necessarily comprise the features of the process by which it is generated. It is not necessarily restricted by a method in which it is used, either. Therefore, a claim to a computer-implemented data structure usually cannot be defined merely by reference to a method or as an outcome of a process. For further information on data structures, see G‑II, 3.7.2.
For the assessment of inventive step for claims comprising features related to exclusions under Art. 52(2), as is often the case with CII, see G‑VII, 5.4.
3.9.2 Cases where method steps require specific data processing means and/or require additional technical devices as essential features
Where not all the steps of the method defining the invention can be implemented fully by generic data processing means, defining claims as in formulations (i)-(iv) in F‑IV, 3.9.1, may not suffice to fulfil the requirements of Art. 84. Furthermore, in such cases, claims of different categories have to be construed and examined separately with respect to novelty and inventive step.
In particular in applied fields such as medical devices, measuring, optics, electro-mechanics or industrial production processes, method claims frequently involve steps of manipulating or interacting with technical physical entities by using computer control. However, these method steps are not fully performed by the computer and require specific technical means. If the invention involves an interaction between data processing steps and other technical means such as a sensor, an actuator etc., these technical means must be comprised in the independent claims if they are essential for carrying out the invention. An objection under Art. 84 may arise if the claims do not define which steps are carried out by the data processor or by the additional devices involved, as well as their interactions. The same applies if specific data processing means (e.g. a particular parallel computer architecture) are required as opposed to the generic data processing means described in F‑IV, 3.9.1.
1. A method of determining oxygen saturation in blood in a pulse oximeter, comprising:
– receiving in an electromagnetic detector first and second electromagnetic radiation signals from a blood-perfused tissue portion corresponding to two different wavelengths of light;
– normalising said electromagnetic signals according to steps A, B and C to provide normalised electromagnetic signals;
– determining oxygen saturation based on said normalised electromagnetic signals according to steps D and E.
2. A pulse oximeter having an electromagnetic detector and means adapted to execute the steps of the method of claim 1.
3. A computer program [product] comprising instructions to cause the device of claim 2 to execute the steps of the method of claim 1.
4. A computer-readable medium having stored thereon the computer program of claim 3.
Remarks: The method has a step which is executed by specific technical means (the electromagnetic detector) for receiving electromagnetic radiation signals. Therefore, the electromagnetic detector has to be defined in the device claim because it is an essential feature for executing the method. In this example, the device claim may make reference to method claim 1, since it is clear how means for executing this method are to be implemented.
However, a computer program making reference only to claim 1 would lack clarity, because such a program could not be executed e.g. on a general-purpose computer which does not have an electromagnetic detector. Therefore, it must be clear from the program that it is to be executed on the specific device of claim 2.
F-IV 4.12 Product-by-process claim
Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e.
inter alia that they are new and inventive
, and it is impossible to define the claimed product other than in terms of a process of manufacture (see G 2/12 and G 2/13). [...]
When determining the features of a product obtained by a process, the purpose of the process has also to be taken into consideration. This is in contrast to the evaluation of a method or process of producing a product for which the indication of the particular purpose (product production) merely implies suitability (see F‑IV, 4.13).
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