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Wednesday, 12 October 2011

More opinions from the EPO, fewer from the UKIPO

EPO to issue second written opinions. The European Patent Office has issued a notice revising its practice when conducting International Preliminary Examination (IPE) for PCT applications.

The IPKat suspects that International Preliminary
 Examination 
is covered in Chapter 2 of a different text
Under existing practice, if the EPO is the searching authority, the applicant gets a written opinion attached to the International Search Report.  The applicant can pay a fee to file a demand for IPE (it's a purely optional procedure) and then usually has just one shot at responding with arguments or amendments before the final International Preliminary Examination Report is drawn up and circulated to all of the elected national patent offices for use when they come to examine the application.  If the EPO does not conduct the international search but is nominated as the IPE authority, the EPO issues its first and only written opinion in response to the demand, and again the applicant has just one attempt to overcome any objections.

The new practice entitles the applicant to a second written opinion, and provides a second chance to respond with further arguments or amendments. Alternatively, the applicant can choose to have a telephone discussion in lieu of a written opinion. Full details are given in the link above.

Currently only about 10% of PCT applications undergo IPE, and the IPKat suspects the number is rather low due to the cost of the procedure (€1892), the limited value in having just one chance to change the Examiner's mind, and the fact that the first written opinion accompanying the search report gives most of the information most applicants need to make a decision on further prosecution. Allowing for a second written opinion and response certainly makes the proposition much more attractive for those applicants who need a positive IPER for whatever reason.

On the downside, this Kat suspects that if one fails to convince the Examiner twice during the international phase, the EPO will not be slow to issue an early summons to oral proceedings once the application enters the EPO regional phase. 

An examiner in Newport votes in favour of
closing the commercial search service
UKIPO closes Patent Search and Advisory Service. Citing an increase in its regular searching workload (i.e. statutory search and application examination work), the commercial search services provided by the UKIPO were closed down on October 6th. This means the UKIPO will no longer provide patentability, freedom to operate (infringement) or validity searches as a commercial service. The formal Patent Opinion services on validity and infringement of patents, used in cases of disputes, remain unaffected.

The UKIPO notice indicates that alternatives are available and includes a link to a page hosted by the EPO which lists national patent offices offering commercial search services including (you guessed it) the UKIPO's now defunct service.

15 comments:

Roufousse T. Fairfly said...

The EPO's move to abandon "TS" ("Travail Spécial") work around 2007 was (negatively) perceived by its staff (representation) as a present to the National Patent Offices, with no real justification besides the push to progressively re-nationalise the European patent system through the EPN.

I wonder how really successful were UKIPO's services...

Anonymous said...

> ... and the fact that the first written opinion accompanying the search report gives most of the information most applicants need to make a decision on further prosecution.

Isn't that a bit optimistic, or have I just been unlucky? I have seen a lot of strange written opinions that have been successfuly refuted in later phases so now I begin to wonder if it is just my field of technology having these problems the last 8 years or so.

> On the downside, this Kat suspects that if one fails to convince the Examiner twice during the international phase, the EPO will not be slow to issue an early summons to oral proceedings once the application enters the EPO regional phase.

Again I wonder if my experiences are statistical flukes. My experiences is that the EPO lets the applications without any hope rest for a long time to the benefit of the applicant (a live application is preferred to a fatal decision, OPs, appeals, conversions and the rest), while the EPO gets to enjoy a few more years of annuities.

And again, this is perhaps just my field of technology?

MaxDrei said...

I am sorry that the Kat is so unappreciative of the EPO's aim, stated in the Notice, to give Applicants "more scope to enter the national phase before the elected Offices with a positive IPER". Of course, if the world one inhabits is a North Atlantic one, where no Patent Office gives any respect to the work of any other Patent Office, then the value of a positive IPER from the EPO is low. However, the world is bigger than that, and a positive IPER from the EPO is helpful all around the world. It's primarily the reasoning on obviousness that counts, built on a search better than any other Patent Office can deliver. The cost of getting a positive EPO IPER is low compared with the cost of arguing the obviousness issue all around the world

Or do other correspondents here disagree?

MaxDrei said...

Not sure whether that anonymous is saying the EPO changes its mind twice, or only once. Are those WO-ISA's too harsh or too lenient?

With no deference given to DG1 by DG3, reversals on appeal are always on the cards. With a 3-member Exam Division at work in the national/regional phase, but only a single Examiner at work in the PCT phase, reversals after regional phase entry are always on the cards. With so many new and inexperienced EPO Examiners pressed into early service, and so few old hands with sound judgement still standing, reversals are likely to be more the rule than the exception.

But things will get better, won't they?

Anonymous said...

The (non-statutory) SAS searches were introduced in the late 1980's as a way of counteracting the fall in patent applications as progressively increasing numbers of applicants filed with the EPO. Certainly they were initially useful, as searches would be made by highly-experienced examiners who were familiar with the UK's unrivalled physical document collections that had been classified under the UK's old deep indexing schemes. Now that UK uses the EPO's ECLA scheme, there is less likelihood of the UK picking up something that the EPO might have missed.

While the notice indicates that the decision was prompted by an increasing number of applications as if this were an unforeseen phenomenon, the IPO Steering Board minutes
http://www.ipo.gov.uk/steer-minutes
tell a different story.

The minutes 21 July 2009 para 9 tell of the planned release of 20 examiners to balance the books over a 5 year period. It was simultaneously acknowledged that a recruitment drive would be necessary "in 18 months time " [ ie Jan 2011] to address the workload.

What I find ironic is that, while the staff were being released to save [only] £1.5m in order to meet the government-imposed meet financial targets, the IPO budget also had factored into it some £25m to fund high-profile BIS projects not directly concerned with the statutory duties of granting patents and trade marks.

As the IPO has agency status and gets its entire income from the fees paid by its users, that £25m would have come partly from patent applicants who might reasonably expect their fees to be used in providing the services that they were paying for.

I recall attending a meeting at CIPA in the early 1990s about the then impending move to Wales when, in response to a comment from the floor that they would be willing to pay for a service if the PO would provide it, the PO speaker was optimistic that the change to agency status would free them from arbitrary manpower targets imposed by government and would allow them to employ enough staff to give applicants what they were prepared to pay for, rather than being shackled to arbitrary government manpower targets.

Clearly this hope was not realised, as the IPO, while a self-funding agency, is still required to fall in with government targets, regardless of the effect on service. The minutes of 16 Feb 2011 para 5.13 refer to the conflict between what the Minister wants and what is needed to run the business. It appears that the IPO is in fact on course for a substantial surplus that would be more than sufficient to retain or even attract more examining staff, even taking into account the money that is to be syphoned off for high-profile BIS projects, but the discussions of what to do with the surplus have not included retaining enough manpower to do the bread-and-butter work of examination. Manpower cuts are government policy, so that's that.

Certainly there has been no sign of the recruitment exercise that was considered necessary for the business two years ago in order to address the then-existing work backlog, which has only been kept manageable by staff working overtime.

Anonymous said...

The opinion of the EPO is worth more around the world than any other. However, it is the first Written Opinion that is given most credence by other patent offices. They see this as the foundation for their own examination and first rejection. After that they will go it alone.

If it was not for the availability of that first EPO search and opinion, many of these other offices would struggle to create a decent examination case.

Anonymous said...

Some SAS services were useful. One notable exception is the opinion provided to development agencies on the commercial viability of research proposals. A cheap search (patentability) giving rise to a patentability, clearance, and commercial opinion that can lead to approval or rejection of a grant application, is something that we are well rid of.

Why the IPO does not understand the difference between a patentability and clearance search is beyond my comrehension.

Anonymous said...

It's well known that the RS, TS and other acronymic activities were introduced by the EPO as a way to help pay the bills in the relatively lean times of the early 90's. Whatever Mr Fairfly may have heard, for examiners they were a pain in our tender parts and a distraction from the job of examining patent applications properly, even if they were not at all numerous. Late, not lamented.

As for the re-nationalisation of the EPO, this term was bandied about a decade or so ago, but not anymore. Given the consistent rise in applications along with recent well publicised inter-office activities under, for example, the IP5 umbrella, it appears that exactly the opposite is happening and globalisation may be the long term trend. How this bodes for harmonisation of patenting activities and the various national laws which apply to them or which give effect to the patents thereby produced is not clear but, at least as far as IP goes, intriguing and exciting.

Roufousse T. Fairfly said...

It's well known that the RS, TS and other acronymic activities were introduced by the EPO as a way to help pay the bills in the relatively lean times of the early 90's.

Not quite, cher ami, RS (Recherche Standard) and TS (Travail Spécial) were services offered by the former IIB (Institut International des Brevets), which was absorbed into the EPO as DG1. These were continued after 1978. Look at the report on page 205 (pdf:8/46) of OJ 5/1979. It constituted initially a very substantial part of the workload, but its relative significance was greatly reduced as the EP work increased.

Whatever Mr Fairfly may have heard,

Not only heard, but lived...

for examiners they were a pain in our tender parts and a distraction from the job of examining patent applications properly,

To me, you very much sound either like a newer recruit, or a(n) (aspiring) manager, or maybe even be someone in Munich. There is definitively a difference in the EPO's "corporate culture" between sites, even today. For a search examiner (that two legged creature inhabiting the space between paper groups) at The Hague, to be asked by your director to spend some days on a special job was felt as a reward.

Now in retrospect, I would agree that TS was not indispensable anymore for neither the applicants nor the EPO.

TS would typically be used by customers for FTO searches, or identifying the SOTA in a new field. Since 1970 so many new, often free, information sources have appeared, that the documentary collections at The Hague no longer provided a unique advantage. Paper groups were scanned and offered for self-service access to the world.

Another use of TS was to find documents for busting a patent. I'm not sure about that, but I would think that the EPO would not accept work if the patent in question was an EP. Furthermore, a "pure" search examiner (Art. 17) had no real decisional power, so there was no potential suspicion of "Befangenheit". With the generalisation of BEST, a substantive examiner (Art. 18) shouldn't really be actively helping a party against another, even if he isn't otherwise involved in the case beyond finding documents.

For RS, there are so many ways to get a search report from the EPO (national, EP, PCT, and you can always withdraw the application if you don't want the results to be published), that this "product" is not essential either. But why scrap it, when at almost the same time the EPO picks up new commitments, such as searches for Italy? Activation of old IIB agreements? There is a logical problem here.

As for the re-nationalisation of the EPO, this term was bandied about a decade or so ago, but not anymore.

Aw, come on, please, spare me the party line. How come does staff rep uses the term at least as late as 2009: It seems that the very success of the European Patent Office may thus have become a driver for the re-nationalisation of the European patent system...

Its not as if I did not hear and read disparaging comments from national offices, which are sooooo eager to "help" the EPO, such as that FPÖ hack...

How this bodes for harmonisation of patenting activities and the various national laws which apply to them or which give effect to the patents thereby produced is not clear but, at least as far as IP goes, intriguing and exciting.

As for IP5, I'm not holding my breath for concrete results. Until further notice, the EPC will apply.

Anonymous said...

Hmm, last anonymous should know that, although the demise of the "Travail Spécial" was unlamented by the examiners it was indeed perceived, rightfully in my opinion, as an egregious sop to the national offices, and in particular to the Danish PTO, whose management strongly pushed for renationalisation at the time and also had great ambitions for its commercial search services.
Those ambitions, however, appear to have been seriously derailed by the rise of Indian commercial search firms, which have undercut the never-particularly-profitable commercial search market.
To the credit of the EPO's management, it seems to have spotted that trend well in advance of the national offices and thrown them a mostly meatless bone...

Anonymous said...

If all of these comments are from current examiners then please stop with the nostalgia and deal with my pending applications before I retire.

Anonymous said...

Did you ask for inclusion on the PACE programme, to get your cases handled more speedily? No fee, no reason needed. Unless you have asked for speed, why complain if you don't get it. Most Applicants are happy to keep their competitors guessing, and stave off those brutal validation costs for another year. For those Applicants, exam slowness does them a favour.

But what is your experience with PACE? Does it work?

Anonymous said...

One problem with relying on PACE is for those in private practice who would like the work to come in sooner of its own accord. Permission from the applicant would be required before requesting acceleration and they may be happy with the delay

It appears to me that private practice is getting round this by merely asking the EPO to advise when the next communication will be issued. No charge is made to the client, and the usual result is that the EPO pull out a finger and shift the application in question to the top of their pile. They are no different than the rest of us when the boss asks where that report is - "Just dealing with it now boss!"

With this being a likely and intended result, a question mark must arise over the ethics of this behaviour.

Anonymous said...

I have always found the EPO to be extremely accommodating with PACE requests. When a client wanted a large number of its cases accelerated in a field where there was a substantial backlog, the examiner asked us to rank them so that the most important ones could be dealt with first.

Anonymous said...

Something I learn't the other day was that if your ISA is Australia, and you request IPE but do not include any amendments (even when invited) the next report issued can be an IPRP, rather than a report to which a response may be filed (even if there is enough time to do so - the earlier WOISA is considered to the be the examiner's report). Does anyone know what the standard practice of other ISA's is in such circumstances?

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