In Greek mythology Sisyphus, king of the city now known as Corinth, was punished by the gods for his deceitfulness by being compelled to roll an immense boulder up a hill, only to watch it roll back down, and to repeat this action forever.
We woeful European patent attorneys are now to be subjected to annual "revisions" to the EPO Guidelines for Examination "in order to keep the Guidelines in line with legal and procedural developments", and a round of revisions was published with immediate effect in September 2013.
Among the dozens of changes, the September 2013 Guidelines discuss how inventive step can be based only on technical features, which have to be clearly defined in the claim. Guideline G-VIII, 5.4 says:
Non-technical features, to the extent that they do not interact with the technical subject-matter of the claim for solving a technical problem i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing in-ventive step.
A number of new examples are given of non-technical mathematical methods, aesthetic creations, programs for computers and presentations of information. In this edition of Patent issues, we explore just one of these, which related to the patentability of graphical user interfaces (GUIs).
We also anticipated clarification of the Guidelines in relation to how and when Examiners may exercise discretion to refuse entry of amendments. We report now on our great disappointment in this regard.
Discretion - what Discretion?
In our Autumn 2012 edition of Patent issues, we wrote about how, historically, EPO examiners have been fairly relaxed in exercising discretion given to them by Rule 137(3) to allow amendments to be entered, but new Guidelines had been introduced to make it easier for them or indeed to compel them to refuse amendments.
We wrote about how Guideline H-II, 2.7.1 instructs examining divisions to refuse discretion to enter amendments if they are late and"not clearly allowable". We criticised this guideline for a number of reasons:
1. It is not clear what is meant by "late" and should be applied only after the last date for submissions ahead of oral proceedings or after issuance of a text intended for grant and until that time, discretion should be exercised liberally;
2. According to Decision T 1273/04 the threshold should be "clearly not allowable" rather than "not clearly allowable", so an applicant should not be denied the opportunity to argue the allowability of claims, provided there is a case to be argued; and
3. The German version of the Guideline set the correct standard "clearly not allowable" but the English version was incorrect and leads to refusal if "not clearly allowable".
Well, we now report that the Guideline has been amended, but we are dismayed to find that it is the German version that has been "corrected" to reflect the English version and not the other way around. We believe this is wrong, because in T1273/04, the Board said "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".
We also wrote about how the 2012 Guidelines were 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 addressed this issue. They were not consistent. The former left no room for discretion. It said:
Having limited the claims to one searched invention, the applicant may not ammend 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.
Guideline H-II, 7.1 was more balanced and said "discretion to refuse... should be considered".
Again, we regret to report our dismay that this inconsistency has been resolved against the interests of applicants. Both Guidelines now say the Examining Division "shall refuse discretion".
The Authority for these Guidelines has now been given as G02/92, which was a case that concerned whether unsearched subject matter could be pursued after failure to pay a search fee. The decision has no bearing on the question of examination of subject matter that has been searched, but there is an obiter comment:
At the examination stage, having regard to the requirement of unity of invention and the fact that only one examination fee can be paid for each application, clearly only one invention in each application is to be examined for conformity with the patenta-bility and other requirements of the EPC.
It is not entirely clear what this obiter comment means, i.e. whether an Examining Division should refuse discretion to begin examination of a set of claims that it believes, prima facie, is drawn to subject matter that is non-unitary with other subject matter being examined, or whether only one invention in each application is to be examined to the point of grant.
As we feared, Guidelines C-III, 3.4 and H-II, 7.1 are no longer an exercise of discretion, but a hard-and-fast rule.
There is a further Guideline on the subject, which is E-VIII, 4.2. This Guideline draws a contrast to PCT procedure (in which several examination fees can be paid for different inventions) and says "in the European procedure only one invention will be examined." By this Guideline, an applicant is to be invited to limit the application to one invention covered by the international (or the supplementary European) search report. It is clear that where the EPO writes "only one invention" it does not mean "only one invention at a time".
We believe these various Guidelines are contrary to the legislative requirement that examining divisions exercise their discretion, which should be case-by-case, and we believe they are not consistent with the case law. Our Hugh Dunlop has written on the subject in the CIPA Journal (July 2012 and September 2012) and will lobby further to try to improve them. The greater authority on exercise of discretion is G07/93, which says: "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 . . . 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."