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.

Friday, 4 July 2014

EPO prioritises newest (and oldest) files

Not as high profile as the
newer applications
The IPKat has always been somewhat dismayed by the continued focus on reducing the delay between filing patent applications and the European Patent Office (EPO) issuing a first opinion on patentability, while ignoring the fact that there are thousands of files in the European system that have gone several years with no action, often despite pleas for attention from the applicant or attorney.

For example, it is easy to find EP cases pending for over fifteen years. These are not divisionals with "deemed" older filing dates, but rather regular cases that have been pending continuously as the years sped past. There are cases that were filed when Hong Kong was a British colony and Princess Diana was alive and well, which have had only one or two examination reports  in the meantime. Cases routinely lie dormant for three to six years between an attorney filing a response and the Examiner picking up the case for the next action. Not all cases, by any stretch of the imagination, but enough to form a noticeable cohort. One can't help wondering if there are cases at the EPO that have gone the full twenty years without a decision on grant or refusal, and if so, is there a standard communication to cover this situation ...?

All of which explains why the IPKat has a mixed reaction to the latest initiative from the EPO, which aims to (once again) reduce the time to first action, while also promising to tackle the longest-pending cases. The press release reads:

New scheme to improve legal certainty on pending applications

Starting this month the EPO is introducing a new scheme to improve legal certainty on pending patent applications.

Under the "Early Certainty from Search" scheme, the EPO will aim to issue all search reports and written opinions on patentability within six months of filing; prioritise completing already started examination files over beginning new files; and expedite grants after a positive search opinion has been issued. [The IPKat wonders how prioritising old files over new ones is compatible with the aim of issuing all written opinions within six months of filing. Surely the latter goal must involve prioritising those new filings over older ones?]

The Office will seek to prioritise processing [this means PACE, the IPKat notes] on those cases where substantiated observations are filed by third parties who identify themselves. Handling of oppositions, limitations and revocations is also to be prioritised.

The new scheme will benefit companies and inventors seeking patent protection in Europe by ensuring the timely delivery of all search reports and opinions for patent applications, giving them a sound basis for their patenting strategies early on. It will also benefit the general public by enhancing the transparency of pending patent rights in Europe, providing an overview of prior art and patentability early on in the procedure.

The implementation of the scheme enjoys support from users of the patent system expressed in consultation throughout 2014.
Old Father Time, while waiting for an
exam report  to issue, even manages
to finish his cricket match
Overall this initiative is welcome news, and the IPKat must praise the EPO for tackling these older files. It would even more welcome if matched by concrete time limits for issuing actions and ensuring that the same elderly applications don't subsequently go dormant (perhaps such time limits are part of this scheme behind the scenes? Maybe someone from the EPO will let us know?).

The IPKat does not believe the theory that it suits the EPO to keep old cases pending just to receive higher renewal fees. However, it is very unfortunate that the increasing cost of renewal fees year on year (rising to €1560 per annum at year 10) acts as a penalty against the applicant and as an institutional reward in favour of the EPO, intentional or not. It does not benefit the reputation of the European patent system when applicants abandon cases simply because they can't afford to keep paying renewal fees with no end date in sight.

12 comments:

Anonymous said...

IMHO it is not so much the legal (un)certainty relating to pending applications that needs to be addressed by the EPO, but rather the legal (un)certainty relating to opposition and appeal-from-opposition proceedings.

If a dodgy patent is granted, any opposition and subsequent appeal proceedings need to be given a high priority by the EPO in order to reduce the period of time in which the proprietor can wield that dodgy patent around.

By the time all of these proceedings have been concluded, the patent is likely to have expired anyway. This is not how it should be.

Anonymous said...

Here's one that went 20 years without a decision. OPs were scheduled to be held several months after the expiry date, but the application was withdrawn shortly before they took place.

Anonymous said...

"...often despite pleas for attention from the applicant or attorney."

Really? What sort of pleas?

Anonymous said...

The EPO should have a proper service-level agreement with reimbursements of the search, examination and renewal fees to applicants if the EPO fails to issue communications in a timely manner.

I can't think of any other organisation that will happily relieve you of thousands of pounds but will then wait 5 years of more before starting to provide the purchased service.

Rory Litton said...

It seems that everything, except old cases that have not received a first Examination Report, will be prioritised. Surely if you prioritise almost everything then nothing actually gets prioritised.

I take from this Press Release that Applicants can expect longer delays on their old cases which have not had the first Examination Report. And as for the rest, nothing much will change. Huzzah!

Barbara Cookson said...

This is good news. It shows the EPO is listening. How about we suggest an incentive. Renewal fees are waived if there has been no communication from the office in the period up to 1 month before the renewal date in cases where a response from the applicant was not due during that period.

The appeal and opposition procedure also need to be accelerated. One distressing factor in the Baillie v Bromhead debacle was the client being told that his patent would not clear the EPO for 9 more years which did make his business plan of enforcing it rather vulnerable. Still the Board of Appeal is independent and must take its own decisions to improve its image or undermine the Unitary Patent before it has begun

Anonymous said...

Although there is nothing more frustrating than watching a third party application sit for years in the EPO with unexamined super-broad claims and nothing you can do about it. I would have thought it best to prioritise the cases with no first exam report (not counting the response to the rule 161 letter) to at least let third parties get an idea who examination will go or to provide a mechanism to enable third parties to (anonymously) request that unexamined cases with no action for years and years get kick-started.

MaxDrei said...

Somebody above observed that if everything gets given an URGENT sticker, nothing gets processed faster.

Many Applicants are quite happy to preserve for most of the 20 year term a cloud of uncertainty about what is going to issue. and they pay handsomely for the privilege through the annuity payment ramp. The strict line on Art 123(2) means that observers of the pending application can nevertheless still dispense meaningful FTO opinions. The EPO should serve its customer base conscientiously.

Hardly anybody asks for their case to be put on the PACE program of accelerated handling.

The EPO should seriously accelerate those few cases where Applicant (or a business competitor) writes in to ask the EPO to accelerate the procedure.

Won't that work? What's wrong with it?

Wabora said...

@ Mrs B. Cookson
The only voice EPO is listening to is the one of its president who needs more and more grants for satisfying the Council. So are all tools implemented for this one and unique goal.

Anonymous said...

I agree with original anon that we should speed up the opposition process on dodgy granted patents. Do they have an ID code so we know which ones they are,
e.g EP 1,234,567 DY ?

Anonymous said...

It is easy to tell which EPO-granted patents are dodgy.. They are suffixed with "B1".

Anonymous said...

Under the "Early Certainty from Search" scheme, the EPO will aim to issue all search reports and written opinions on patentability within six months of filing; prioritise completing already started examination files over beginning new files; and expedite grants after a positive search opinion has been issued. [The IPKat wonders how prioritising old files over new ones is compatible with the aim of issuing all written opinions within six months of filing. Surely the latter goal must involve prioritising those new filings over older ones?]

I think you should read "beginning new files" as "starting the examination for a file after a request for examination has been received". Effectively the start of examination will be delayed (the written opinion issued together with the search report not counting as the start of examination).

One could wonder why there is now still a need to respond to the written opinion... Chances are the attorney writing this reply will not live to see the first examination report.

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