PATENTS | New EPO Guidelines for Examination 2024 now in force

On 1 March 2024, the updated EPO Guidelines for Examination (“EPC Guidelines”) entered into force, superseding the March 2023 edition. The main updates of the EPC Guidelines concern the entitlement to priority (A-III, 6) and the evidence standard for inventive step (G-VII, 5.2, 11) reflecting recent decisions of the EPO’s Enlarged Board of Appeal on G 1/22 (see here) and G 2/21 (on the application of this decision see here), as well as the acceleration of opposition proceedings in cases of pending actions before the UPC (D-VII, 1.2) and the disclosure requirements for AI inventions (F-III, 3). On the latter update, the EPC Guidelines underlines the importance for patent applications claiming inventions relating to AI to disclose the mathematical methods and the training datasets to the extent needed to reproduce the technical effect over the whole range claimed, provided that “while mere allegations are not enough, comprehensive proof is not required either” when it comes to proof of technical effects. More specifically, the EPC Guidelines state that “if the technical effect is dependent on particular characteristics of the training dataset used, those characteristics that are required to reproduce the technical effect must be disclosed unless the skilled person can determine them without undue burden using common general knowledge”.

Newsletter n. 94 – March 2024