The EPO has published its yearly update to the Guidelines for Examination, which will come into force on 1 November 2018. The updated Guidelines for Examination can be found here, with a list of the amendments made compared to the current version available here.
This is the fourth year in a row that significant changes have been made to the sections of the Guidelines for Examination discussing computers and software. Our briefing discussing these changes can be found here. The EPO now also provides an “Index for Computer-Implemented Inventions” which contains links to the relevant parts of the Guidelines for Examination and is available here.
Most of the remaining changes are either editorial in nature or seek to bring the Guidelines for Examination into line with current practice.
One change which may be of particular interest during opposition proceedings relates to the assessment of inventive step at G-VII, 5.1. The EPO adopts the problem-solution approach when assessing inventive step. The first step of the problem-solution approach involves identifying the closest prior art document. It is well established that if there are several equally valid closest prior art documents, then it may be necessary to assess inventive step from each of these documents as different starting points.
The updated Guidelines for Examination have clarified that conducting a problem-solution analysis from multiple different starting points is only appropriate “if it has been convincingly shown that these documents are equally valid springboards”. Furthermore, the updated Guidelines for Examination state that “in opposition proceedings the structure of the problem-solution approach is not that of a forum where the opponent can freely develop as many inventive step attacks as he wishes in the hope that one of said attacks has the chance of succeeding”.
These changes suggest that opposition divisions may in future be unwilling to allow opponents to present problem-solution analyses starting from multiple closest prior art documents, unless it has been demonstrated that those documents are “equally valid springboards”. Further, opposition divisions may more frequently opt to take an initial decision at oral proceeding regarding what is the closest prior art document, before asking the parties to present their problem-solution analysis starting from that closest prior art document.
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