For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 6 February 2014

EPO Fleas to Increase April 2014 - Kats are concerned

Newsflash: The EPO plans to increase fleas from 1 April 2014; panic has beset the IPKat office. 

"No, I said increase in FEES"
I’m obviously joking, we haven’t got an office… and the EPO is increasing fees rather than fleas… and we aren’t actually cats.

The new schedule of fees announced in decision CA/D 14/13 (found here) is a mixed bag of results this year with most fees seeing a 4-5% increase.  The fee for a European search gets a 10% bump from €1165 to €1285, but the headline news is a change to appeal fees.

A recent talk by Alexander Clelland (ex-head of a Board of Appeal) at the CIPA Life Sciences Conference on 14 November 2013 provided some interesting insight into appeal cases, suggesting that the backlog of appeals is increasing by about 600 per year (in 2012, a total of 2,659 appeals were filed and 2,071 were settled) with each appeal costing the EPO an estimated €40,000.

Therefore it will come as little surprise to learn that the EPO is seeking to recover some of these costs and deter potential appellants.  The fee for requesting an appeal will rise by 50% from €1,240 to €1,860.

The EPO is providing further incentive to avoid cases going far on appeal by amending Rule 103 EPC announced in decision CA/D 16/13 (found here).  Currently, appeal fees are refunded only when there has been a substantial procedural violation or the appeal is withdrawn before the filing of the statement of grounds.  Rule 103 EPC will be amended to include:

(2) The appeal fee shall be reimbursed at 50% if the appeal is withdrawn after expiry of the period under paragraph 1(b), provided withdrawal occurs:
(a) if a date for oral proceedings has been set, at least four weeks before that date;
(b) if no date for oral proceedings has been set, and the Board of Appeal has issued a communication inviting the appellant to file observations, before expiry of the period set by the Board for filing observations; 
(c) in all other cases, before the decision is issued.

Due to the delays between filing an appeal and decisive Oral Proceedings, in some cases the appellant may well have decided that the case is no longer worth pursuing.  This refund offers a chance for applicants to recover some money and not have to go through with appeal fun for an unwanted patent.      

Following the change of heart to the change of heart regarding divisional applications (reported by the IPKat here); the EPO has set new additional filing fees for second and later divisional applications as follows:

Second generation divisional: €210

Third generation divisional: €420

Fourth generation divisional: €630

Fifth generation divisional: €840

These fees are supplemental to the regular filing fee and are relatively modest in comparison to the hefty renewal fees payable on such divisional applications.  It is difficult to imagine that they will actually change applicant behaviour.

This kat has a few tips for saving those pennies:

1. As these fees are coming into effect from 1 April, cases within the current two year window for which the applicant wishes to file a divisional application should consider filing before the supplemental divisional fees are introduced.   
2. Consider paying renewal fees for April, May and June at the start of the renewal fee window prior to the price increase.
3. Don’t buy a dog. They are expensive to look after and really smell. 

A hearty Katpat to Anna Hatt (BeckGreener) for the prompting this Kat into action, and to Paul Beynon (EIP) for co-authorship.


23 comments:

Andy J said...

You aren't actually cats! Come on, it isn't 1st April yet. Did you think we'd fall for that one. You'll be telling us next Merpel doesn't exist. I think that deserves a LOL(cat)

Ron said...

I have never understood why the EPO has such a negative attitude to divisionals. I used to love them when I was an examiner at the UK Patent Office (as it was still called when I was working there), and typically had one every six weeks or so. I didn't need to read the description in detail all over again, and often the new invention had to be searched in the same files as the first (or subsequent) invention - I sometimes had divisionals on divisionals - so only a top-up search was needed. Divisionals used to help my output no end!

Kuifje said...

Well, I hate divisionals, and I am a patent attorney.

Late filing of divisionals is extremely unfair to third parties who not only have to consider whether what applicants have requested may hinder them, but also what applicants may yet further request, 6, 7, 8 years down the line.

Extensive late divisional filing disrupts the balance between disclosure and protection, and creates excessive legal uncertainty for third parties, for an extremely long time.

For me, divisionals, certainly late filed divisionals, are the poison in the patent system. The option is nice for applicants, but disruptive for society as a whole.

Anonymous said...

to a patent attorney at Friday, 7 February 2014 08:00

everything "down the line" won't be more than the disclosure. what is a problem here?

a divisional is an instrument of intellectual property that under clever use brings profit to the owner. what is disruptive for society as a whole? (just make a parallel with financial instruments, for example)



Anonymous said...

Anonymous at 0800: The problem is that third parties cannot reliably assess what the Office will consider to be a reasonable generalisation of the disclosed embodiments. Art 123(2) EPC and its cousin Art 76(1) EPC are constant battlegrounds for applicants, examiners, opponents and boards.

"Directly and unambiguously", while sounding a clear and reasonable test, is in practice difficult to predict reliably, or at very least difficult to prove the negative that something is not directly and unambiguously disclosed. Examiners can get away with pushing the burden onto the applicant to explain why a claim satisfies 123(2)EPC, but an attorney advising a third party cannot, and must give a cautious view.

In some technical fields, crafting a divisional claim to read on to a competitor's product and then keeping it pending or pushing it to grant by arguments based on very close reading of the as-filed text is the bread and butter of the proseuction attorney.

Anonymous said...

Further to this fee increase, it seems that simultaneously Treasury and Accounting are going to introduce changes relating to the Automatic Debiting Order arrangement.
Under the euphemistic heading “abolition of administrative fee for insufficient deposit account funds”, account statements from the EPO now introduce a reduction in service that has functioned as a safety net, at least for smaller firms of EPAs.
Provided you keep your account in funds, any applications you enter will automatically have all its fees paid on the last day in the payment window. The safety net is that if there is a shortfall on that day, you get a Notification and a one-month deadline to replenish and pay a supplementary ‘admininstrative’ fee. If the replenishment is sufficient to cover both the missing amount and the fee, the payment is backdated to the intended payment date.
This is a safety net that has enabled one to avoid the expensive 50% surcharge if an unexpected shortfall has occurred. It is probably of the greatest advantage to small EPAs, because it avoids locking excess funds in the account to cover any contingency. Possibly it has been abused by big firms, but instead of raising the cap of the administrative fee, this safety net is being abolished entirely. It is touted as a removal of a fee, but that is an effect, not the cause.
I have tried in vain to obtain background information on this measure from Treasury and Accounting, but I was merely referred to a forthcoming publication of the rules at the end of February. That is not background information, that is merely making public what we have already been informed of as account holders. A decrease in service it remains.

Kind regards,


George Brock-Nannestad

Anonymous said...

It's not that the EPO don't like divisionals per se, it's the abuse of the divisional system they don't like.

As Kuifje points out, there is scope to cause long-lasting uncertainty to third parties by keeping a divisional pending in some form for years.

Having said that, the two-year period of Rule 36 was, I think, the wrong move and I'm glad it is going away.

I'm not sure there is a way the EPO can amend the divisional rules to provide certainty to third parties while preserving the rights of applicants. Anon@08:30 correctly points out that the only real comfort a third party has is the protection of Article 123. That may have to be enough.

Anonymous said...

I forget exactly what Alec Clelland said at the conference in terms of the cost to the EPO of each appeal. However, the official EPO figure for 2012 is EUR31,000 (para 28 here: http://www.epo.org/modules/epoweb/acdocument/epoweb2/106/en/CA-85-13_Rev._1_en.pdf)

Anonymous said...

EPO has a quite rigid approach to Article 123 that leaves very few if any uncertainty.

I would be very interested to see examples of "unexpected divisionals".

Anonymous said...

They should have simply banned granddaughter divisionals.

Anonymous said...

Anonymous 10:12: I don't think that airing publicly a list of cases where I have achieved grant of a claim bearing little or no resemblance to any independent claim of the parent application would do my clients any favours.

You who have faith in the 76(1) safeguard would be amazed at what one skilled in the art, reading closely and in detail, and giving thorough consideration to the technical effects provided by each and every particle of the parent disclosure, would directly and unambiguously recognise as a combination of essential features together solving a technical problem.

Art 76(1) considers only the technical disclosure of the parent application, and gives no privileged position to the claims of the same. Unfair though it seems, there is no requirement on the applicant to foreshadow technical disclosure which may later be the subject of a divisional, and no requirement to put the public on notice as to what may yet be claimed. The only test in law is a straight delta-test - does the skilled person, reading the divisional, learn something technical that he would not have learnt reading the parent.

Some of my clients are willing for me to spend large amounts of time reading 200-page specifications with a fine-toothed comb, constructing claims, and arguments to support the same, which are originally unclaimed abstractions from the parent disclosure.

The problem for third parties is then not that they cannot, in principle, and with large attorney costs, work out what might possibly be claimed: it is rather that they cannot have any certainty as to what will actually be claimed, what might be allowed, what might be granted on appeal, what might be upheld in opposition, what might be upheld on appeal, and what might finally be held valid and infringed in national proceedings.

Anonymous said...

-- might the thread stick to the subject: FEEs, before it falls below the event horizon?

less kind regards,


George Brock-Nannestad

Kuifje said...

Anon 11.38 wrote:

'The problem for third parties is then not that they cannot, in principle, and with large attorney costs, work out what might possibly be claimed: it is rather that they cannot have any certainty as to what will actually be claimed, what might be allowed, what might be granted on appeal, what might be upheld in opposition, what might be upheld on appeal, and what might finally be held valid and infringed in national proceedings.'


Exactly. And apparently you earn a fine living out of it, good for you. To a degree I drink from the same well.

However, fundamentally it is wrong, at least in my book.

It is not in society's interest to leave third parties in limbo for an eternity, and it is hardly commensurate with the disclosed advancement of technology.


It bothers me that the systems allows these legal abuses.

Anonymous said...

'It is not in society's interest to leave third parties in limbo for an eternity, and it is hardly commensurate with the disclosed advancement of technology.'

sounds like a statement made after 5beers on Friday evening

Anonymous said...

One could entirely delete Art 76 and Art 82, and then, to guard against massive monolithic multi-invention applications, require, instead of further search fees being payable, a lack of unity at the search stage to be mandatorialy met by the branching of a further "divisional-style" application for the unsearched non-unitary subject-matter. Unsearched subject-matter provisions would then guard against invention-switching during prosecution.

The applicant would in this system be required to declare his intended scope of protection for each of his desired inventions upfront, with the opportunity to refine it during examination i.e. by deleting or generalising features where supported. Such could be far more easily predicted by third parties.

But that won't happen.

Anonymous said...

Kuifje,

I have a simple solution for you:

If you see something in a patent that might be claimed, advise your clients to treat it as being claimed.

And instead of your crying how unfair and harmful to society this is, realize that by doing so you force the advance of society forward by providing a stronger and more robust incentive to design around what is actually disclosed (whether claimed or not).

It bothers me that whiners such as yourself do not see the opportunity for greater advancement and only see a roadblock to mediocre copying.

Society's interests? Legal abuses?

Please, let's keep it real.

MaxDrei said...

Good advice:

"If you see something in a patent that might be claimed, advise your clients to treat it as being claimed."

but useful only in a jurisdiction in which everybody has solid basis for a firm opinion what is "added matter" and what isn't.

It took Germany about 30 years to fall into line with the EPO's "Gold Standard", on the substantive law of what a document "discloses" (which is relevant to novelty, priority and added matter). It really is important, now that one can keep filing divisionals at the EPO throughout the 20 year term, that we can all opine with confidence, on whether any of those claims can survive attacks based on Art 123 of the EPC.

Roufousse T. Fairfly said...

Darren,

There is another novelty regarding fees.

Rule 6, which foresees a reduction for nationals and residents of countries who have languages other than DE, FR or EN, will be amended to restrict its scope to private persons and SMEs. The reduction set in the RRFs will be increased to 30% instead of 20%.

(I dislike this idea, as it institutes an inquiry into the personality of the applicant, which I feel is incompatible with Art. 60(3) EPC.)

This item could be of interest to British IPKat readers. I suggested here that UK residents could prevail themselves of the language reduction by placing a request for examination pursuant Art. 94 EPC in the Welsh language. One could invest a few quids into a certified translation of the magic phrase, and a case could be build up by paying both the full and the reduced fees, and requesting a reasoned, appealable, decision from the Receiving section.

Regarding divisionals, I feel the increased filing fees as being rather silly when the >1000EUR search fee is in most cases refunded in full or in part in accordance with Rule 9(2) RRF. If you file a divisional, it is in theory to protect an invention distinct from the one defined in the parent application's claims.

Anonymous said...

@Roufousse: It is also interesting to note that the new R6 fee reduction only applies to the filing fee and the examination fee.

The assumption behind this reform seems to be that only private persons and SMEs "deserve" a fee reduction, but only insofar grant proceedings are concerned. For post-grant, appeal and review proceedings they are on their own.

Kuifje said...

Apparently according to some anons I post pub talk and am a whiner.

Thanks for the insults and sorry for being an idealist instead of a money grabber.(NOT!)

"If you see something in a patent that might be claimed, advise your clients to treat it as being claimed."

Problem is that ANY CLAIM, whether as originally filed or in a divisional, is a generalisation, so the applicant ALWAYS gets more than he really developed and disclosed.

You're talking like a landowner who wants to stop trespassers but not indicate where his property is.

Do you really not see how wrong this is, or do you just not care?

Anonymous said...

More whining from Kuifje.

And on top of that, making the mistake as to thinking we care if you are sorry that you are whining.

We are not - leastwise in the way that you appear to think (we ARE sorry that we have to hear your whining - not that you think you have a cause for whining).

And nice glass house, by the way, the phrase 'money-grabber' is what, exactly?

I take it that you are not actually trained in patent law, being as your portrayal of what a claim is (generalisation) and mere proclamation of excess (ALWAYS) is pure unadulterated anti-patent swill. What I see is wrong is your attempting to preach on something that you only hold a passing (and seriously flawed) understanding - and I KNOW that you do not care to understand the actual legal underpinnings.

Anonymous said...


'Problem is that ANY CLAIM, whether as originally filed or in a divisional, is a generalisation, so the applicant ALWAYS gets more than he really developed and disclosed.'

RE: the EPC includes Article 69 which addresses your concerns.

'You're talking like a landowner who wants to stop trespassers but not indicate where his property is.'

RE: the patent owner did indicated the borders of his property by the content of the application as filed and Article 123 EPC.

Coming back to your parallel, it is always a good idea to inquire whether the land belongs to anybody before you dig your pool in it and sells tickets to everybody in the town for swimming in it.




Anonymous said...

'You're talking like a landowner who wants to stop trespassers but not indicate where his property is.

Do you really not see how wrong this is, or do you just not care?'

We always have to be very careful with parallels in law. Let's try to analyse yours.

If you, Kuifje, would use the land of your neighbour, while he does not exploit his land, your neighbour would lose his right of ownership ONLY after 20 years. During 20 years he can come any time and claim the land back.

Is 24 months enough for patents?


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