For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 6 November 2008

EPO "admits it got it wrong"

A little bird has just whispered this tale into the IPKat's ear:

"I was recently at a gathering of the great and the good where it was disclosed to me, on the quiet, that the recent hike of the European Patent Office (EPO) excess claim fee has caught the office out. They now find themselves with more work to do and less income from this fee. The more work has resulted because practitioners are reforming the claims in ways which the office had not anticipated (placing alternatives into a single claim, for instance) and because the Examiners now feel they need to review the specific description more thoroughly, seeking out passages that look like potential future claims. Apparently, US-originating specifications are now appearing with claim-like passages being placed at the end of the specific description. The office is getting virtually no money from the excess claim fees because almost everyone is now reducing the claim numbers to 15, as a matter of course.

Apparently, the office has admitted they got it wrong in this instance – next time they consider making similar changes we might find that the Office consults with the professionals first.

However, there is a down side. The office now needs to make up for the shortfall in excess claim fees and we should watch out for increases in other fees as a result".
Thank you, little bird!

For comments on excess claim fees see here, here and here

20 comments:

Anonymous said...

Could it be that the fee hike was severe enough to get US patent attorneys asking their EPO outside counsel, for the first time, for their thoughts on what to file at the EPO. Previously, EPO counsel was simply told "File it". Now those US attorneys write "Conform the claims to European practice". What we now see is that the EPO doesn't like the ingenious "work arounds" of European counsel any more than it liked the long sets of claims originating in the USA. But Jeremy I question your "specifications are appearing" point. That would only be traditional Paris year end filings right, and not the ever-increasing proportion of regional phase entry cases?

Anonymous said...

The increased fees apply to all applications (Euro-direct and Euro-PCT), where the claims fees are paid on or after 1 April 2008 (see Art.2(1) of the decision of the EPO Administrative Council given in OJ EPO 1/2008, 5). Consequently, a great many pending Euro-PCT cases are affected by the increase because the payment of claims fees is delayed by 31 months after the priority date under Art. 22 PCT and Rule 162(1) EPC and as such consequential amendment on entry into the European phase under Rule 159(1)(b) and Rule 161 EPC may already be happening. However, there are no statistics as far as I am aware to support these anecdotal findings.

Gobhicks said...

“the Examiners now feel they need to review the specific description more thoroughly, seeking out passages that look like potential future claims”

I thought the EPO would have been more savvy and would use the discretion they have to restrict search and examination to the claims, and to force divisional filings for amendments that introduce unsearched subject matter from the description. If examiners are going to treat specific “clauses” in the description as if they were “claims”, then they would be justified in charging claims fees for them.

Anonymous said...

Jeremy I think your patent attorney readers will confirm the current tendency to put US claims into "European form" before the end of the Rule 161/2 period. Chalk up another win for the Law of Unintended Consequences, eh? There are two ways in which the US Applicant base has funded the European patent system, up to now. One is by filing ridiculous numbers of claims, the other by filing ridiculously long descriptions, then validating in a long list of EPC translation countries. The fee hike has killed the first golden goose. European patent law firms in the translation countries will be anxious that nothing bad should happen to the second golden goose. I think they're safe, don't you?

Anonymous said...

I am glad if this has backfired on the EPO. I always thought the these price hikes (claims fees + 5th year renwal fees) were timed to coincide with entry of the London Agreement into force. This woudl be based on the naive hope that applicants would not notice the expected savings for industry were actually being snaffled away by the EPO and woudl no adapt their behaviour to the new fee structure.

It also harms SMEs and start-ups, who do not have any London Agreemetn savings to make until they get to the end of the application process, which just got a whole lot dearer (and is scheduled to get dearer again in April 2009).

Not to worry, the new adapted behaviour of applicants will be described shortly as 'abuse' and rules introduced to burden applicants further, and unleash yet another wave of unforeseen consequences on the system. Consultation with the professionals always takes place, but my impression is that professional input is discounted on the premise that, if there is abuse taking place, the professionals are (obviously) the chief 'abusers'.

(As previous anonymous said, the practices to reduce claism fees can affect ex-PCT and direct EP filings equally.)

Anonymous said...

I have to react to the Gobhicks point. The Guidelines impose on EPO Exrs a duty to read the description and imagine what narrowing features Applicant will pluck from it to get through to grant. Imagine the uproar if, every time an Applicant takes into claim 1,an "obvious" narrowing feature from the description, the Exn Divn cites Rule 137(4) declines to examine, and invites Applicant to file a divisional. The EPO is only trying to preserve its reputation for being user friendly. Thank goodness.

Gobhicks said...

In reply to anon 11:50, I quite agree, up to a point, but searchers/examiners have to draw a line somewhere. Given an application with a dozen or so pages and ten or so claims, it’s reasonable to look beyond the claims for search and examination purposes. An application with dozens of claims and dozens of pages can’t be searched or examined thoroughly beyond the “main” claims on realistic costs and timescales. If a description contains clauses that are plainly drafted as “pseudo-claims”, obviously to avoid claims fees, then why should the EPO just swallow that?

By the way, I’m not here to champion the things the EPO have been doing recently. I do have a degree of sympathy, but in my long experience dealing with the EPO, they have got much less user-friendly. This is partly because of the growing backlog, but also, I think, because they are understandably resistant to US-based claim drafting practice. It’s no secret that many US-originating applications take a shotgun approach to claim drafting – throw it all at the wall and see what sticks. That is pure anathema to the EP culture of (a) published patent applications serving a genuine public-notice function and (b) the problem-solution-approach to inventive step. The EPO expects applicants to tell them what it is they think they have invented, from the outset, not to go on a fishing exercise to see what they can get.

Anonymous said...

On point, Gobhicks. Whereas the height of drafting sophistication amongst US attorneys at law (to keep "the litigators" happy) is never to identify the invention, the EPO-PSA will punish the Applicant who follows that course. That drafting conundrum is getting exposed quite starkly, just at the minute. Now that the EPO speaks unambiguously clearly for what the law is over 600 million inhabitant Greater Europe, expect those drafting in the USA gradually to grasp PSA, and then move away from US practice and towards EPO practice (provided we don't treat the Americans with arrogance or distain. Heaven forfend).

Anonymous said...

Jeremy,
although your conclusions are absolutely correct, I fail to see any evidence that this mishit was "admitted" or even recognised by the EPO management.
That leaves us wondering about the position of your "little bird" (in the EPO ?)....

Anonymous said...

Are the EPO pushing themselves out of the market here? What with increasing fees, slow service (whether accelerated or not), examiner strikes, pension fund problems, "user friendliness" (or lack of it) etc., it all makes me wonder whether I might be better served by taking the national route. I realise the advantage of getting one application examined and the associated cost benefits, but these benefits are starting to ebb away with the current situation at the EPO.

Has anyone got a "formula" I could use to determine whether my application should go the EP route or whether I should just file in the UK, France and Germany?

Anonymous said...

I've heard of word from another little bird that the EPO, with its fee hikes, is pursuing a strategy of deliberately trying to discourage new filings and encourage abandonments. Not only is this bizarre in itself - what organisation seeks to reduce its own business - but also works most against the applicants with the least resources.

As for EPO v National, the big question is the translation cost at the front end of the national route versus the EPO's inflated claims and maintenance fees.

Anonymous said...

The unfortunate thing for the user community is that the EPO has realised in recent years that 1) no other Patent Office comes close to its ability to "manage the workload" and 2) its mastery of the law of patent validity makes that of Germany and the UK look pathetic. No wonder it's getting complacent and self-satisfied. Shame there's no competition from the USA. That might take the smirk off its face. But, cheer up, where would we be on legal certainty for novelty, enablement, prosecution amendment, entitlement to priority, but above all on obviousness, if it weren't for the EPO's work, these past 30 years.

Anonymous said...

I'd say that, on the claims fees, the EPO's management has been guilty not only of failing to consult the professionals, but even their own examiners!

I can tell with certainty that 99% of examiners had anticipated all the various ways that applicants would use to avoid the claims fees, and how this would result in more work for them. I could also say with almost just as much certainty to which bright individual we owe this particular brainf*rt...

I don't think that the basic idea was bad. Dealing with 100+ US-style claims with the PSA is an extremely tedious job, and something had to be done to rein this down. However, the implementation neglected two details:

a) Neglecting to restrict the use of alternatives in one claim or claim-like description passages. Both are old tricks, well-known of examiners and attorneys alike.

b) Neglecting the fact that the patent applications which proportionately give the most trouble are not the European applications, but the PCT applications in the international phase. And there are no claims fees on those.

Anonymous said...

Good comments, just above. There was an earlier time when PCT Ch II was causing EPO Exrs great distress. But, back then, EPO management cracked the problem nicely. Thinking caps on again, I would say. Let round 2 begin, in the gamekeeper/poacher struggle between DG2 and the PCT drafters. Yes, you can.

Gerontius said...

If the EPO are thinking of increasing other fees to compensate for loss of claims fees, they're jumping the gun a bit - they need to wait until the current batch of applications gets through to grant. So, about 10 years with current backlogs :)

Yes, US attorneys may be reducing claims to 15 for EP filing, but do they really want their granted patent to be so limited? If they want more than 15 claims in the granted patent, they'll need to pay the excess claims fees at the 71(3) stage.

As an example, I had a litigation-happy US attorney go apoplectic on me when I combined numerous alternative features into a single claim until I explained the cost implications of not doing that. If the case is ever granted, it will be granted with many more claims than when it was filed and the EPO will reap the benefit at that stage. Of course, this is big IF in this case.

Perhaps the claims fees would best be paid at the examination stage. Paying on filing makes no sense since, as people have pointed out, the search report should take the description into account no matter how many claims there are. The Search Opinion could be limited to the first 15 claims, say, to avoid excessive work. Then you're at the examination stage and it's time to lay your cards on the table, so to speak, and pay your fees based on those.

Anonymous said...

As to claim sets for PCT filing, does PCT Rule 6.4 still prohibit (US style) any claim that depends from a multiple-dependent claim and is itself multiple-dependent? There's one reason why people file a lot of claims in a PCT application. Here's another reason: American claim differentiation theory. If claim 1 recites say "even number under 10" then claim 2 recites "one of the group consisting of 2, 4, 6 and 8" just in case 1) a jury doesn't understand claim 1 or 2) somebody after filing comes up with an even number under 10 that isn't 2 4 6 or 8 or (most important reason) 3) so that a US litigator can tell a jury that, on its true construction, claim 1 includes in its scope more even numbers than 2 4 6 and 8. Delighted to read that there are happy US attorneys still ready and willing to pay the EPO to include large numbers of such dependent claims.

too_astute_is_not_astute said...

"the search report should take the description into account no matter how many claims there are"

With the caveat of Rule 137(4)-ex Rule 86(4)-.
If an attorney starts to file his original 100 claims in the description and condense them in 10 claims with and/or, it could be that I will think of applying the Non unity fees quite strictly. For instance a posteriori on overly broad first independent claim, in order to either get back the fees paying for my extra-work or to be able to apply Rule 137(4) at the examining stage.
It shouldn't be too difficult, objecting to those overlawyered applications under Art 82 would be like shooting a fish in a barrel.

My preferred solution however would be the higher management pushing an interpretation of the claim fees similar to the Non UNity guidelines, both for PCT or EPC:
" Determination of Unity of Invention Not Affected by Manner of claiming [and].... shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim"
at the receiving section (the logistics just request implementing a screening with and/or OCR and a stupid algorithm, and using sentient experimented people, not unhappy outsourced automatons). If a modifications of the guidelines or even the rules is needed, so be it. A renumbering of the claims and a provisional fee both to be confirmed by the search examiner, maybe? Then I could envision the US or Japanese applicants starting to adapt not only the form but also the substance of their application to the EPC requirements.

Caveat: I am not a chemist, and not familiar with the marcush claims problematic, but I presume some sensible solution can be found too.

Signed: an examiner who sees too many ridiculous first claims.

Anonymous said...

too_astute_is_not_astute:
Obviously we don't want to pay the new excess claims fees, but we also don't want to abandon (or risk abandoning) subject matter, which is where one problem arises - we then end up drafting giant claims with huge numbers of alternatives in order to reduce the number of claims. We might not even want some of them examining, but we have to include them to avoid any risk of abandoning subject matter since of course in US-originating Euro(PCT)s there is no enablement in the description of the PCT application as filed for the original set of claims.

The claim amendments then result in the potential for added matter, meaning that examiners should be reading the description much more carefully - we end up with dependent claims which together with our newly amended independent claims disclose combinations of features which were not included in the original set of claims.

My sympathy goes to the examiners, but I'm also worried about/looking forward to future granted patents issuing with major added matter problems resulting from new claim amendment practice.

The only realistic solution here is to reverse the increase in excess claims fees.

Anonymous said...

Anon Saturday, November 08, 2008 12:16:00 AM said

".... the patent applications which proportionately give the most trouble are not the European applications, but the PCT applications in the international phase. And there are no claims fees on those"

Claims fees on PCT applications are being discussed within WIPO and a European proposal seems to have received a sympathetic reception. See http://www.wipo.int/edocs/mdocs/pct/en/pct_wg_1/pct_wg_1_16.doc

Anonymous said...

Hi

As an EPO examiner working in physics, I would like to clarify one point : when claims contain several alternatives, we are told to examine (I am talking for the great majority of non chemical examiners, as it might be different in chemistry) only the first alternative, and simply ignore the others. In other words, what comes after the "or" in the claim must simply be ignored. If the applicant wants us to consider the alternatives, then let him/her file additional independent claims, each one for each alternative...

So much for the US style claims at the EPO...

Voilà.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':