Communications from the European Patent Office (e.g., European search reports, examination reports, etc.) often include objections commonly referred to as European patent formality objections.
The most common types of these “formality” objections, include:
- the claims should be amended to include reference signs referred to in the description;
- the claims should be placed into two-part form; and
- the specification should be amended to include a description of the cited prior art.
This article provides a general summary of the more common European patent formality objections to provide some clarity as to why we European attorneys suggest our amendments!
Including reference signs to claims
Rule 43(7) of the European Patent Convention (EPC) governs European patent practice on including reference signs in claims.
Rule 43(7) EPC recites that “Where the European patent application contains drawings including reference signs, the technical features specified in the claims shall preferably be followed by such reference signs relating to these features, placed in parentheses, if the intelligibility of the claim can thereby be increased. These reference signs shall not be construed as limiting the claim” [1].
In practice, let’s say that the claims refer to “an electronic device”. If figure 1 of the application includes a reference sign to the electronic device with the numeral 100, then the claims could be amended to recite “an electronic device (100)”.
If the same application includes a second figure that includes a reference sign to the electronic device with the numeral 200, then the claims could be amended to recite “an electronic device (100, 200)”.
This process may be repeated for any technical features specified in the claims with corresponding reference signs that are contained in the drawings.
Should only numerals be included as reference signs?
No.
Alphabetic symbols (e.g., in addition to or alternatively to numerals) may be included as a reference sign.
For example, referring to the “electronic device” example above, if a figure refers to the electronic device by a numeral and alphabetic symbol (e.g., 100A) or an alphabetic symbol (e.g., A), then it is appropriate to include a corresponding reference sign (e.g., 100A, or A) to the claims.
Does including reference signs limit the claims?
In theory, no.
Rule 43(7) EPC explicitly recites that “reference signs shall not be construed as limiting the claim”.
Placing claims into two-part form
The two-part form refers to the requirement that a claim should contain two parts. The two parts are often referred to as the pre-amble, and characterising portion.
From Rule 43(1) EPC, the first part includes:
“a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, form part of the prior art” [1].
In other words, the first part (i.e., the pre-amble) includes features of a claim that are known in the closest prior art.
From Rule 43(1) EPC, the second part includes:
“a characterising portion, beginning with the expression “characterised in that” or “characterised by” and specifying the technical features for which, in combination with the features stated under sub-paragraph (a), protection is sought” [1].
In other words, the second part (i.e., the characterising portion) includes features of a claim that are not known in the closest prior art.
Is the two-part form always required?
No. Rule 43(1) EPC itself refers to this requirement as being used “Wherever appropriate”, which infers that it is not always appropriate to use the two-part form [1].
An example of this often occurs in computer-implemented claims comprising a large number of steps. If the novel feature(s) of such a computer-implemented claim are not the final feature(s) of the claim, it is often difficult to amend the claim to be in the two-part form. In such a situation, it may not be “appropriate” to use the two-part form.
Further information regarding this can be found in the EPO Guidelines for Examination – https://www.epo.org/en/legal/guidelines-epc/2025/f_iv_2_3.html
Including a description of the cited prior art
Rule 42(1)(b) EPC requires that the applicant “indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art”.
In practice, it is often difficult to identify such background art before filing a patent application. Therefore, this objection is very common when the EPO issues its first communication (e.g., a European search report, or first examination report) [2].
Overcoming this objection generally includes amending the description of the patent application to include a brief description of the objected background art (e.g., the closest prior art(s) cited by the examiner).
How can we help?
As specialists in European patent practice, we can prepare and prosecute European patent applications to.
Please get in touch with Thomas Measures – Appleyard Lees if you would like to discuss this further.
References:
[1] https://www.epo.org/en/legal/epc/2020/r43.html
[2] https://www.epo.org/en/legal/epc/2020/r42.html
