Applicants for European patents have in the past enjoyed wide latitude in being able to amend claims during the course of prosecution. There are two opportunities to amend "as of right", after which any further amendment is at the discretion of the Examining Division and, historically, Examining Divisions have been fairly relaxed in allowing amendments to be entered.
A tightening up this exercise of discretion has been feared (under the "Raising the Bar" initiative) and indeed we have been experiencing unprecedented refusals to admit amendments on grounds of discretion. Some of our fears in this respect are now codified in the new Guidelines that came into force on 20 June 2012.
The Enlarged Board of Appeal has in the past called for a balance between the applicant's interests in obtaining a patent and the EPO's interest in bringing the examination procedure to a close (Decision G 7/93). The new Guidelines go further than merely codifying where the balance should lie. They raise many questions and concerns.
The new Guidelines codify for the first time two criteria for exercising discretion to amend found in the jurisprudence. These are:
- "clear allowability" and
These criteria are discussed in detail by our Hugh Dunlop in an article published in CIPA July 2012.
These new criteria for denying an applicant the opportunity to enter amendments apply only in the case of late filed requests. There is an element of doubt as to whether "late-filed" is indeed clear. We interpret "late" as meaning after the one-month period for making final written submissions in preparation for oral proceedings. Where an applicant adheres to that limit, the applicant should not suffer any penalty. There should be no un-written earlier date by which submissions can be considered "late" at the Division's discretion.
"Clear allowability" - the difference between "not clearly allowable" and "clearly not allowable"
Guideline H-II, 2.7.1 is entitled simply "Concept of clear allowability". The origin of this concept is a Board of Appeal decision (T153/85) in which the Board decided that, under its own rules (the Rules of Procedure of the Board of Appeal), amended claims filed in the last weeks before oral proceedings may be inadmissible if they are "not clearly allowable" (nicht eindeutig gewährbar).
This decision was reviewed in greater detail in Decision T 1273/04 in which two thresholds were considered: "not clearly allowable"and "clearly not allowable". The Board said the threshold for admissibility should be higher the later the stage of the proceedings and "it would not be appropriate to require that an amended claim should be clearly allowable in the sense of clearly involving an inventive step given that the assessment of inventive step has not begun." An applicant should not be denied the opportunity to argue of the allowability of claims, provided there is a case to be argued.
Unfortunately, the English version of the Guidelines uses the former threshold and the German version uses the latter (eindeutig nicht gewährbar). Given that the Board of Appeal stressed that the criteria it set out should be "tempered in Examination proceedings", we believe that the lower threshold in the German version is the EPO's intended version. A future Board of Appeal may decide that even the German version of the Guidelines is too strict.
If the amendment is late but not clearly impermissible, the question has then to be asked whether the newly defined subject-matter constitutes a "convergent development" of the subject-matter which has been the subject of examination?
The requirement for "convergent development" of the subject-matter which has been or is to be the subject of examination originates in Decision T1126/97. There is again great doubt over whether this decision is applicable to the exercise of discretion by Examining Divisions at first instance.
The requirement for the debate to converge in the final stages is also applied to auxiliary requests. The new Guideline reads:
The requests should normally represent a convergent development, i.e. the subject-matter of the auxiliary requests should constitute sequential limitations in the direction of an intended invention and should not make use of different characteristics in order to branch out in different directions. Filing a large number of unstructured requests or requests involving different variants late in the procedure may lead to the requests not being admitted.
A strict application of the convergence requirement in Examination would pose great risk of denial of due process. In preparing for oral proceedings, it is often difficult to predict how the Examining Division will view different requests, for example under Article 123(2). It is common to submit requests of varying scope, some narrower to overcome prior art and some broader in anticipation of possible objections to narrowing amendments. Where, as a result of the ensuing discussion, new objections are raised, the proprietor should always be given the opportunity to submit amendments intended to overcome those objections (Guideline E-II, 8.6 and Decision T 273/04). Accordingly, whereas such amendments are "late", they are nevertheless admissible.
Rejection of amendments on grounds of non-convergence has gained popularity with Examining Divisions recently. If the new Guideline reins in its use, it is to be welcomed. If not, it may become a curse. At Jenkins, we have an application on appeal that may put this issue to the test.
Switching from one claimed invention to another
The new Guidelines are even more strict when it comes to allowing an applicant to amend claims to change from one searched invention to another.
Guidelines C-III, 3.4 and H-II, 7.1 address this issue. They are not entirely consistent. The former states:
Having limited the claims to one searched invention, the applicant may not amend them to switch to a different searched invention. In such a case the Examining Division will exercise its discretion under Rule 137(3) to refuse to admit the amendments.
The Guideline does not seem to leave any room for discretion. Guideline H-II, 7.1 is more balanced ("discretion to refuse... should be considered"), but this is cold comfort in the face of what appears to be a strict rule in Guideline C-III, 3.4.
No Authority for Guideline C-III, 3.4
This new Guideline cites no precedent for its authority and we are unable to find any. Some general principles for exercising discretion are set out in G07/93: "an Examining Division must consider all relevant factors. In particular it must consider and balance the applicant's interest in obtaining a patent which is legally valid in all of these designated States, and the EPO's interest in bringing the examination procedure to a close by the issue of a decision to grant the patent, and must balance these interests against one another." Guideline C-III, 3.4 does not, however, appear to give the Examining Division scope for considering all relevant factors.
This issue is discussed at length by our Hugh Dunlop in a second paper published in CIPA, September 2012.
There is grave danger that by writing a new rule such as Guideline C-III, 3.4, Examining Divisions become justified in not applying their discretionary power but simply refuse discretion on the basis of a hard-and-fast rule.
May an applicant switch inventions?
We turn to questions of strategy. What should an applicant do where there are two inventions and two search fees have been paid? Lack-of-unity objections are notoriously unavoidable and unpredictable. An examiner can raise an a posteriori lack of unity objection "out of the blue" depending on what is found in the search.
Where two (or more) search fees have been paid, how far can the different inventions be pursued in parallel, for example to explore the examiner's willingness to acknowledge novelty and inventive step in one or another, or perhaps just to keep options open pending clarification of commercial considerations?
Take an example in which the Extended European Search Report indicates that the subject matter of a second invention is novel and inventive. Until now, an applicant could explore the patentability of the first invention, confident that, if all arguments drew a blank, he or she could fall back to the second invention and secure grant of the patent. Is this an unreasonable strategy?
Once the Rule 36(1) period has expired, the question may become vital to the protection of the subject matter in the patent application. The desired claims may be refused in the parent application and there is no opportunity to file a further divisional application (unless a new non-unity objection can be elicited from the examiner).
The Guideline came into force on 20 June 2012. An applicant who restricted non-unitary claims before that date may have had a legitimate expectation that he or she could switch to the other invention at a later date (or at least to do so if the search report indicated it would be allowable). Such an applicant will be caught unawares and will be denied the right to argue the case for that invention.
Advice for the present
Until some questions are answered (or these Guidelines are re-written), our advice to applicants or prospective applicants of European patent applications is:
- be sure to present the claims on filing (e.g. in the International stage under the PCT) in the order you want them to be searched;
- be very careful about restricting claims;
- chase the EPO for a second communication following a response to a communication under Article 97(2) so as not to use up the 2-year period for filing divisional applications;
- look back to earlier restricting amendments and consider the possible retroactive implications of this Guideline; and
- be clear and open with examiners from the earliest opportunity and clearly show the intention not to abandon subject matter (by filing an auxiliary request or otherwise) when restricting claims.
Make more use of PCT Chapter II
Another strategy is to make more use of Chapter II of the PCT, under which the EPO examiner will proceed with examination of more than one searched invention in parallel (upon payment of an additional Examination Fee per extra invention). This is discussed separately in this edition of Patent issues.