From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Friday, 17 February 2012

The Whizzkid's Handbook, for European Patent Attorneys

Readers of this Kat's generation may recall a book called "The Whizzkid's Handbook" which was a collection of tricks, pranks and jokes to confirm to any ten-year old that they were immeasurably smarter than the doltish adults all around them, particularly those easily fooled drones known as schoolteachers.

"Give me one hundred lines by tomorrow
morning, Brophy: 'I shall not write in
the style of a cat'.
It probably never occurred to the average Whizzkid that schoolteachers might be wise to the pranks, either from years of experience and/or from having confiscated so many copies of the handbook. What was certain, though, was that the book was written with only one constituency in mind, and it would have been an entirely different beast had it been a collaboration between ten year-olds and schoolteachers.

In contrast, the EPO's latest publication is a joint venture between parties whose interests are often unavoidably opposed, namely the Office and its users (in the form of epi and BusinessEurope). The collaboration has resulted in the "Handbook of Quality Procedures Before the EPO"

On first review, this Kat suspects that while the EPO's new Handbook may never provoke the same amount of mirth as the Whizzkid's Handbook, the patent version is far less likely to land him in detention if faithfully followed. 

The content and purpose of the Handbook is explained in the Foreword:
Guidance on interpreting the EPC is provided by the case law of the EPO's boards of appeal, the Guidelines for Examination (referred to in the margins of this document as "GL") and other official publications (e.g. OJ Notices). The aim of this document is to provide further non-prescriptive guidance and information on how proceedings between the EPO and its users can be conducted in ways conducive to a high-quality process. It relates to aspects of search, examination, opposition, revocation and limitation proceedings. It is not intended to replace or repeat the content of the legal texts, but to be complementary to them. References to specific passages of these legal texts are made where appropriate. 

The following topics are addressed:  
  • the practice of applicants and representatives (to a lesser extent, also of opponents and third parties) in proceedings before the EPO at first instance;
  • the practice of examiners, in particular how the examiner should best carry out examination so as to reach a decision in a reasonable time while dealing openly with parties to the proceedings;
  • the practice of formalities officers, particularly focusing on interaction between formalities officers and applicants; and 
  • how complaints are dealt with at the EPO. 
So, what form does it take? The majority of the book is a collection of brief commentaries on how specific procedural steps play out between the Office and the Applicant. Take as a random example the procedure under Rule 62a, which allows examiners to invite applicants to indicate which independent claim is to be searched, where it appears that there is an unallowable number (i.e. 2 or more) of independent claims in the same category. The Handbook tells us that there are four ways the applicant can respond to this invitation:

4.2.1 Reply to an invitation under Rule 62a
In reply to an invitation under Rule 62a, the applicant may react in four different ways:
  • He does not wish to dispute the search examiner's opinion and indicates the independent claims that fulfil the requirements of Rule 43(2) and that he wishes to have searched.
  • He finds that the objection is not justified and wishes to reply to the invitation: in this case he must provide reasons why the requirements of Rule 43(2) are fulfilled. Furthermore, he may file arguments against the findings in the invitation, requesting as a main request that the claims as filed be completely searched and as an auxiliary request, in case the examiner is not convinced, indicating specific subject-matter to be searched.
  • He finds that the objection is only partly justified and wishes to indicate more than one independent claim per category: in this case too he must provide reasons why the claims he has indicated fulfil the requirements of Rule 43(2).
  • He decides not to reply to the invitation: in this case the examiner decides what to search.

 And a few paragraphs later, we are told that if the applicant requests a telephone consultation to clarify the content of the Rule 62a invitation:
the examiner should agree to such a consultation in order to clarify the content of the invitation and the course of action open to the applicant at this stage. The consultation should be limited to formal issues concerning the invitation. Minutes of the telephone consultation should be written by the examiner.
So on the one hand, this advice is pretty much common-sense, and contains nothing ground-breaking, but as a sanity check it's a very useful summary of options. And it may point an applicant in a direction they might have overlooked, such as remembering when filing arguments to include a main request to search all claims and an auxiliary request indicating the preferred claim to search. Or it may prompt one to telephone the examiner if the content of the invitation is not clear.

At the end of the book is a series of flowcharts summarising some of the procedures discussed in the Handbook, such as the steps to take in identifying which elements of the description may need amendment in light of amendments to the claims, or how the Office should handle requests for decisions "according to the state of the file".

So where does its value lie? Well, from a first glance, the Handbook does a very good job of pulling together into one location the possible ways in which one can validly respond to a range of communications. True, much of the information can be found elsewhere, and true again, the experienced practitioner or examiner may have no need to refer to, for example, the flowchart which sets out what elements of the description may need to be amended in view of the claims as this becomes second nature after a few years of practice. 

Part of the flowchart for a "Decision according to the state of the file"
On the other hand, the flowchart (above) illustrating how requests for decisions "on the state of the file" are to be handled may avoid needless unhappiness if taken to heart. The case law of the Boards of Appeal shows this to be an area where both experienced practitioners and examiners are known to slip up from time to time. The flowchart highlights multiple circumstances which should preclude an examiner from issuing such a decision, such as when there are unanswered arguments on file, or the request for the decision is accompanied by new amendments, or some of the examiner's objections have not been sufficiently well reasoned.

The Handbook will also find an appreciative audience in candidates for the EQE who can never have enough official and semi-official summaries of how the Office operates, or ought to. As a bonus it's comparatively short: printed on both sides of the page (it's a downloadable PDF), it will only add a negligible 37 pages to the already-groaning handcarts hauled behind the students into the exam hall.

A word of caution, however, to those applicants and examiners who wish to quote the Handbook, like holy scripture, to one another. No doubt conscious that the Guidelines already exist to formally define the structure of examination procedures, the Foreward tells us:

This document is not binding either on the EPO or on users and their representatives. Consequently, it should not be quoted in communications between the EPO and its users, and no procedural sanction or disciplinary measure applies for departing from efficient practice. Its strength lies in the benefits - in terms of greater quality and efficiency of the patenting process - that all parties stand to gain by following the practices described.
Despite this entreaty, the IPKat confidently predicts that some representatives will be simply unable to resist the temptation to wave the Handbook at examiners.
A final curiosity: the Handbook sensibly references the Guidelines for Examination 2012, which are due to be published in June of this year. Not having been privy to the revision of the Guidelines, the IPKat was momentarily taken aback by references such as "GL H-III". This suggests that the next revision is a very fundamental one, expanding the current five parts (A to E) into at least eight (A to H). 

Congratulations and thanks go out to all those who contributed to the Handbook from the EPO, epi and BusinessEurope.


Anonymous said...

The IPO has a similar thing - though rather shorter - here:

David said...

I had a copy of the Whizzkid's Handbook when I was a nipper. Never had to use the tricks though, as I was far too well-behaved.

almost emeritus said...

The IPO's code of practice, while good in parts, has the objective of making things simpler for the IPO. Adopting certain of its provisions would disadvantage the client.

It is sometimes overlooked that the EPO Guidelines themselves do expicitly state that they have no legal force.

Darren Smyth said...

I think that Almost Emeritus is not quite correct about the EPO Guidelines. They state that they are not "legal provisions" but that is not the same as saying they have no legal force. They are instructions of the President to employees of the EPO under Art 10(2) EPC, which gives them legal force. Although EPO staff "may depart from these instructions in exceptional cases", "as a general rule, parties can expect the EPO to act in accordance with the Guidelines". Therefore, departure from the Guidelines can be cited against EPO employees. To me, that is legal force.

Almost Emeritus said...

Citing the Guidelines got the applicant nowhere in T0206/05: see “Reasons for decision”, 5.1 page 15:

“In other words, even if the Examining Division departs
from the Guidelines a procedural violation can only
arise if they violate a requirement of the EPC.”

Since the “Notice from the European Patent Office dated 1 April 2010 concerning amendment of the Guidelines for Examination in the European Patent Office” para 7 acknowledges that “the Guidelines have not been fully revised” and “In one instance, where the Guidelines are still to be revised, several passages do not completely reflect current examination practice”, they can hardly have legal force!

The full text of the EPO’s acknowledgement that the guidelines are not legal provisions is found in the General Part that precedes part A and reads as follows:

3.2 The Guidelines are intended to cover normal occurrences. They should therefore be considered only as general instructions. The application of the Guidelines to individual European patent applications or patents is the responsibility of the examining staff and they may depart from these instructions in exceptional cases. Nevertheless, as a general rule, parties can expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended. Notices concerning such amendments are published in the Official Journal of the EPO and on the EPO website.

It should be noted also that the Guidelines do not constitute legal provisions. For the ultimate authority on practice in the EPO, it is necessary to refer firstly to the European Patent Convention itself including the Implementing Regulations, the Protocol on the Interpretation of Article 69 EPC, the Protocol on Centralisation, the Protocol on Recognition, the Protocol on Privileges and Immunities and the Rules relating to Fees, and secondly to the interpretation put upon the EPC by the Boards of Appeal and the Enlarged Board of Appeal.

To me, the only possible interpretation of the above paragraph is that the Guidelines per se have no legal force: after all, you cannot have your application refused for failure to comply with the Guidelines: refusal can only be on the basis of failure to comply with specific Articles and/or Rules of the EPC. I have never heard of an application being refused for failure to comply with instructions of the President of the EPO.

Anonymous said...

I'm with Almost Emeritus on this. The Guidelines are in no way binding on applicants, hence they have no legal force. The Guidelines are not enforceable against the EPO, hence they have no legal force in this regard either. 'Enforcement' of any EPO Guidelines by the EPO are actually enforcement of other legal provisions. I only ever cite the Guidelines for convenience.

Anonymous said...

The Guidelines exist as a means to interpret existing legal provisions. For example, the Guidelines state that the wording "about" can, under certain circumstances, render a claim unclear in violation of Art. 84 EPC (EPO Guideline C-III, 4.7). However, this means that a claim containing this wording may then be subject to an objection under Art. 84 EPC (in the light of C/III, 4.7).

The Guidelines mostly offer an interpretation of the rules and articles of the EPC, which then form the basis for any decision or loss of rights. As for decisions of the President of the EPO, these are taken where the EPC (usually the Rules) delegate the power to decide on the details of a procedure to the President and that delegated power (in the form of the decision of the President) then acquires the legal force of the original Rule. For example, Rule 30(1) indicates that applications relating to biological sequences of amino acids or nucleic acids must be accompanied by a standardised sequence listing complying with a standard set by the President. Failure to comply with this standard (which is not set in the Rule but rather in the President's decision) then results in refusal of the application according to Rule 30(3). This means that legal consequences can ensue for failure to comply with a decision of the President because of the delegated power.

This was done in the EPC to make it more flexible. In the above example, the sequence listing standard was recently adapted such that a paper listing is no longer required. This was a change which was possible to implement simply by issuing a new decision of the President rather than a more procedurally cumbersome rule change.

Anonymous said...

It is not a good sign when EPAs treat the Guidelines as gospel rather than understand the underlying legal provisions and case law. Kowtowing to the desires of the EPO is not acting in the interest of applicants. Wy waste money employing such attorneys when you could let the EPO amend your claims or abandon your applications on your behalf?

Almost Emeritus said...

The EQE does not encourage the candidate to challenge the views of the [EPO] Examiner.

A lesson I learned in my first EQE tutorial on an amendment paper was that you were obliged to amend to overcome the examiner's objection, even if you had good grounds for challenging the examiner's view: 50% of the marks were awarded for amendment, and if [as I did by answering the question as I would have in real life] you prepared a response that did not include an amendment, then you cut yourself off from 50% of the marks, however good your arguments may have been. The object of the exam was to file a response that would put the application in order for grant, and not to file a response that sought to obtain the best protection for your client.

Anonymous said...

'The "Handbook of quality procedures before the EPO" has been temporarily removed but will be re-published soon. We would like to ask for your patience and will inform you about the status of the publication as soon as possible'

I wonder if it contained something controversial?

Anonymous said...

Can it be downloaded from somewhere? :O|

Subscribe to the IPKat's posts by email here

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