In July 2014, fellow Kat David published news of an initiative from the EPO to "to improve legal certainty on pending patent applications." The aims were:
Several comment-posters noted that this "prioritised" most activities -- all searches, and all examination except first examination reports in cases with a negative search opinion. Looked at another way, however, it can be seen as having the effect of cherry-picking the cases that are easiest to take to a final conclusion, either because examination has been started (so the hard work has been done), or because the search opinion is positive so the application can be taken straight to grant. Once these priorities have been left in place for a while, however, the effect is that only the more difficult cases will remain - beginning examination of the cases that are not clearly allowable from the search opinion.
Merpel has now seen draft performance results for examination for the first half of 2015 compared with the first half of 2014, and this strategy does indeed appear to have had an effect. Search actions are up 13% and final examiner actions (grants, withdrawals, refusals, PCT examinations, oppositions) are up 23%, with grants up a staggering 34%. These figures, particularly the increase in grants compared with everything else, do seem to suggest that the easy wins are being won, leaving a legacy of more complex examination work. Doubtless the EPO management will expect this to be done with no less productivity. In this regard, it is notable that the "days/examiner product" are already down 8%, which is fine if you are are just advancing to grant an already allowable case, but will be harder to sustain when you have to examine a case that is not clearly allowable and the applicant's arguments and amendments have to be considered.
It is not only these procedural tweaks that have led to the increased productivity. At the beginning of this year, the EPO announced a system whereby Examiners would be invited to take on non-examining projects under a system whereby, instead of their examination targets being adjusted downwards, they would instead receive a financial bonus in respect of the extra activities. Also, the invalidity and sick leave rules have been tightened.
Other HR practices have also been adjusted to keep Examiners at their desks and examining. Merpel understands that EPO managers have been instructed to routinely refuse other than in exceptional circumstances requests for unpaid leave and part-time working, or, if they are allowed, to increase upwards the pro-rata production targets for the Examiner. Moreover, the taking of leave in the categories of medical leave, strike absence, unpaid leave, parental leave and family leave will have a negative impact on an Examiner's performance evaluation (for comparison, maternity leave, annual leave, home leave, staff representation, flexi hours, compensation hours, training and business travel do not have a negative outcome on the performance evaluation).
So it is not surprising that examination products are up. It is however still unclear what is the need for this. Merpel has attempted with limited success to discern the financial position of the EPO and has called for more financial transparency. She still cannot see why the senior management of the EPO seems obsessed with increasing the flow of patent grants in the short term, whatever the later cost.
- issuing search reports with written opinions within six months of filing,
- prioritising the completion of examination files over starting examination files, and
- expediting grants once a positive search opinion has been issued.
 |
| More productivity -- but is it truly productive? |
Merpel has now seen draft performance results for examination for the first half of 2015 compared with the first half of 2014, and this strategy does indeed appear to have had an effect. Search actions are up 13% and final examiner actions (grants, withdrawals, refusals, PCT examinations, oppositions) are up 23%, with grants up a staggering 34%. These figures, particularly the increase in grants compared with everything else, do seem to suggest that the easy wins are being won, leaving a legacy of more complex examination work. Doubtless the EPO management will expect this to be done with no less productivity. In this regard, it is notable that the "days/examiner product" are already down 8%, which is fine if you are are just advancing to grant an already allowable case, but will be harder to sustain when you have to examine a case that is not clearly allowable and the applicant's arguments and amendments have to be considered.
It is not only these procedural tweaks that have led to the increased productivity. At the beginning of this year, the EPO announced a system whereby Examiners would be invited to take on non-examining projects under a system whereby, instead of their examination targets being adjusted downwards, they would instead receive a financial bonus in respect of the extra activities. Also, the invalidity and sick leave rules have been tightened.
Other HR practices have also been adjusted to keep Examiners at their desks and examining. Merpel understands that EPO managers have been instructed to routinely refuse other than in exceptional circumstances requests for unpaid leave and part-time working, or, if they are allowed, to increase upwards the pro-rata production targets for the Examiner. Moreover, the taking of leave in the categories of medical leave, strike absence, unpaid leave, parental leave and family leave will have a negative impact on an Examiner's performance evaluation (for comparison, maternity leave, annual leave, home leave, staff representation, flexi hours, compensation hours, training and business travel do not have a negative outcome on the performance evaluation).So it is not surprising that examination products are up. It is however still unclear what is the need for this. Merpel has attempted with limited success to discern the financial position of the EPO and has called for more financial transparency. She still cannot see why the senior management of the EPO seems obsessed with increasing the flow of patent grants in the short term, whatever the later cost.
As ever, Merpel welcomes comments, but begs to remind readers of the following:
Henceforth, in respect of all EPO-related blogposts, no comment will be posted if it is merely ascribed to "Anonymous". Any reader wishing to conceal his or her identity must adopt a pseudonym (which should not be obscene and should not be the name, or the mis-spelling of the name, of a real person). The pseudonym need not be an actual login name, as long as it is stated clearly at the beginning of the comment itself (for example, start your comment with "Descartes says: You forgot one point ..."). This way, it will be easier for people who post later comments to identify and remember the earlier comment-poster and to recall the discussion string. Where, as has already happened on occasion, a string carries over from one blogpost to a later one on the same or a related subject, readers will be encouraged to use the same pseudonym for the sake of continuity.
Productivity Increase at the EPO: How and Why?
Reviewed by Merpel
on
Wednesday, August 05, 2015
Rating:
Reviewed by Merpel
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Wednesday, August 05, 2015
Rating:
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Also worth noting that examiners have a dossier management tool which ranks files on a priority list. Examiners are generally not allowed to deal with a file which is below number 30 and at the end of the year (and during it) the examiner's average ranking value is looked at. Needless to say management priority files go to the top (searches) whole even the ready grants you identify are far lower and, if you have a list of, for example, 40 will probably not be in the top 30 and still not be able to be done. This even if an examiner feels guilty about an old file, the management system just doesn't allow them to do something until that file reaches number 30. More that a request under PACE will move a file up.
ReplyDeleteI see more and more in the way of "easy" formal objections, boilerplate 123(2) and 76(1) objections and concomitant refusal to consider the patentability position until these are resolved to the Examiner's satisfaction. Is this an easy way of getting tricky cases off the Examiners' desks in time?
ReplyDeletePCT Chapter I and Chapter II before the EPO is also painful at the moment. In Chapter I, I see the main claims being examined to a reasonable extent, but then the entire subset of dependent claims being dismissed as "straightforward modifications" or "normal design choices" without substantive reasoning or prior art references. In Chapter II, I see more Written Opinions alleging intermediate generalisation and invoking Rule 70.2c PCT to ignore the amendments made.
Anyone else feeling that Examiners are under more pressure to get files off their desks by any means, even if quality of examination suffers?
I think I disagree with the implied criticism of this EPO policy. I think it is helpful to know that if the search opinion is poor the case will sit collecting renewal fees and making little progress. I advise my clients accordingly. The productivity figures of unfiled applications are getting quite good ( as a solo practitioner the financial controller is in no poistion to overrule my ethical policies). Obviously this will have no impact on the big budget heavy corporate filers but for applicants where the IP budget is scrutinised for value, you can expect filings to decline. However, these entities are also those that welcome rapid examination when they do secure favourable search opinions.
ReplyDeleteDifficult cases too are examined as a priority 1 case as soon as a PACE request or a non-anonymous 3rd party observation is received.
ReplyDeleteApplicants could further use PCT Direct and PCT-II to increase the chance that they enter the EPC examination procedure with a positive opinion so that their case will be examined and granted as a priority 1 case.
Is there an implication here that examination is supposed to be "perfect?"
ReplyDeleteIf the answer to that implication is "yes," then the "shuffling of the deck chairs" in order to grab the easy stuff now and pile up the more difficult stuff is a serious problem, and one easy enough to resolve with a FIFO rule.
If the answer to that implication is "no," then one has to wonder why the easy control of "aged inventory" is (also) not a part of the seemingly "efficiency" policy drivers.
I am not sure how the EPO's financial clarity item comes into the picture in either regard. Mind you, I ma not saying that a public agency should NOT be crystal clear in its financial arrangements (up to and including any "incentives" at the very top), but I am wondering how that applies to the immediate policies, other than casting an intimation that "money" is playing some larger (and quite unclear) role in these policies.
Also, the strategy goes against legal certainty. Where the case is clear-cut, it is dealt with quickly. But if a case is clear-cut for the examiner, it is also clear cut for a competitor's attorney. Where a case is difficult, the case is kicked into the long grass where it remains pending, but with a final scope which is uncertain.
ReplyDeleteI can only strongly agree with Merpel and her worries and strongly disagree with Mrs Cookson's view.
ReplyDeleteWhat is being promoted are short term results and not long term stability and quality of the granting process. The reason why is explained below.
By concentrating on searches and quick grants, the examiners are led to simply churn out files as quickly as possible. The maximum BEST effect is actually reached when an examiner does a quick and dirty search, finds no real prior art, and issues a search report with mainly A documents. This is later a good way to get as first examination action a direct grant. It would be interesting if the EPO would publish a statistic in which the number of search reports with only A documents or only X documents. It would be interesting if the figures are broken down by technical area. The spread might be an eye opener.
This does not mean that a search report with only A documents or only X documents is necessarily bad, respectively good. the spread is the problem.
If an X document is found for claim 1, then the search is stopped. If later the applicant comes back with 1+5, in the manifest absence of prior art, grant can be decided rather quickly. Dependent claims are never looked at for clarity purposes. That is why the President considered in his amicus curiae brief for G 3/14, that clarity should always be examined in opposition. This would be a way to overcome problems which should actually never have occurred.
Do not bank on the division. as pay depends on performance, the two other members would be fools if they block a case. The result might be retaliation, which is to be avoided at any rate. ISO 9001 is a farce.
Production of an examiner is measured by giving more points to the search than to the final action. This fact alone is perverse as the production reached by doing exclusively searches is higher than by doing a mix of searches and examination actions. As the production achieved one year is the bottom line for the one to be achieved next year, this leads to a dangerous spiral. When only difficult files are then left, the productivity might get down, which is not allowed by the system. Examiners are pushed into a vicious circle, where they eventually have no choice but to accelerate the pace of their work if they want to keep up. This is the more so, that now remuneration depends directly from performance.
By concentrating on searches, the ability for examining will go in the background. This might explain why the number of substantial procedural violations is on the increase. In any case, when a file comes back from the Boards of appeal, and examination has to be resumed, the counting of points starts at new...
By doing quick and easy grants, the member states will still get enough annual fees to keep them happy.
In the mean time, VP1 got his contract renewed until he reaches the age of 70. What else what needed to get a renewal? That the difficult files are then pushed into the future is a problem for his successor, not for him.
By the way, the fixation of VP1 to give priority to searches has certainly to do with the fact that VP1, although being a pure product of the EPO, has only ever carried out searches. For him examination has only ever be a quite useless play on words, which ought to be dispensed with as much as possible.
It is sad to see the EPO being getting ruined by would be managers who are more interested in pushing their ideas through than to act for the long term benefit of the EPO. VP2,4 and 5 are no counter power to the President and to VP1.
I think there is a lot of common sense behind this decision. Instead of taking a one size fits all approach, the real need of applicants can now drive progress of cases. Oh, I remember the times that EPO management was banging the drum about "Paris Criteria" - i.e. bringing average times to grant below 36 months. But many applicants were doing everything to delay grant because they were not interested in a granted patent application. In the meantime the technology lifecycle is way lower than 36 months in many industries.
ReplyDeleteSo rightly the EPO says: everyone gets a search report as quickly as possible... and then it is up to you to tell the EPO if you want a final decision or not (whether you are the applicant, in which case you can file a PACE request, or whether you are a 3rd party, in which case you can file a 3rd party observation). If nobody is interested in a final decision, examination is deferred ad eternam.
It is quite telling that the ones talking about "legal certainty" are examiners, not applicants and representatives.
FormerExaminer
FormerExaminer,
ReplyDeleteNo, it's not examiners who 'go on' about legal certainty - that is an EPO management construct used to justify a policy of prioritising a non-legally binding search over a grant or refusal. If applicants and representatives don't want 'legal certainty', perhaps that should be addressed to BB and co. Of course, non-applicants such as competitors or opponents may have a different viewpoint. And that raises, again, the point of an IP legal system if the system is only run as a sop. It would appear that a legal system concerning the granting of patents would, in your view, be better if it did exist but never actually granted a patent. Perhaps you can't see the farcical logic of your viewpoint?
"Legal Certainty " sounds nice, but is surely an illusion. Time pressures on examiners must surely lead to less rigorous searching in order to meet targets.
ReplyDeleteWhen I was in industrial practice, it was company policy not to file third party observations on, or oppositions to, any competitors' patents for which we were aware of potentially invalidating prior art. Rather than spending time and effort (and money) opposing such patents, it was considered far more cost-effective to keep such prior art in reserve to be rolled out if the patents were asserted against us, especially as the scope for amending granted patents is less after expiry of the opposition period.
In my industry, individual patents were rarely litigated, but were added to a pool of patents for which periodic cross-licencing agreements were made with competitors.
It is certainly my impression that the quality of the examination applied both in the EESR and subsequently has gone down dramatically in recent years. It used to be that the full John McEnroe 'You cannot be serious' was something I reserved primarily for US Office Actions, but that is no longer the case. There seems to be so much lazy tripe spouted by EPO Examiners these days. Whether that is due to lack of ability or time pressure I cannot be sure, although, my impression is that in many cases it is a bit of both.
ReplyDeleteSo often I see clarity objections that state feature X is unclear, with no indication as to why it is considered unclear and that comment can often be applied to added matter objections. I know from preparing validity opinions, oppositions and the like that there is nothing like actually providing a fully reasoned argument in support of an allegation to show up how flimsy it in fact is. And of course, if Examiners actually explained themselves, it would help in addressing the objections raised as attorneys and applicants would not be wandering down blind alleys dealing with their guess as to what the problem might be. I have just been looking at an added matter objection raised following a broadening amendment made to claim 1 of an application. When making the amendment, I explained at length the basis for the amendment and how the feature removed was irrelevant to the problem addressed by the invention and the claimed solution. In support of the objection the Examiner has just used what looks to me like some stock words cut and pasted into the report and I have just been told the removal of the feature adds matter because it was always disclosed as being essential to the invention. There is no analysis of my explanation or explanation as to why my previous submission has not accepted. Difficult to know whether this is because the Examiner is lazy, useless or just doesn't have the time to do the job properly, although the content of the EESR does point to an Examiner who is not up to the mark.
I have seen a few comments excusing leaving cases unexamined for years on the basis applicants and third parties can always file a PACE request or third party observations to hurry things along. In my view this doesn't wash. Try stepping into an attorney's shoes and try excusing inaction on a particular case on the fact the client hasn't chased you to do something you should have done a long ago. I can think of a clutch of applications I filed in the first quarter of 2010 for a particular client. The total EPO fees paid (I do not include subsequent renewal fee payments) was in excess of €20K. Aside from publishing the applications (and sucking up the renewal fees), the EPO has done absolutely nothing with these cases. Why should it be up to the client to chase the EPO to get it to do what it's been paid to do? It strikes me that applies even more so to third parties. Why on earth should a third party be put to the expense of filing observations to stimulate the EPO to action?
Regarding the question of the time pressure EPO Examiners are allegedly working under, I am perfectly happy to accept that this time pressure exists and that the following is perhaps based on ignorance of the true situation, but given that examination has been slow at the EPO for many a long year, why on earth is the EPO searching Belgian, French and Italian national applications as well as many PCT applications filed at the USPTO? If there is insufficient Examiner time to handle EP applications, perhaps the EPO should concentrate on those first. And yes I do understand that if the EPO does not search those US originating cases as PCT applications, it will pick up some later as EP regional phase entries.
ReplyDeleteAnd a point on boiler plate clarity objections. While there are cases in which it is a reasonable bet the attorney handling the case is merely acting as an agent and has played no part in drafting an application, there are clearly many cases in which it should be apparent that the attorney handling the application more than likely did draft the application. That being the case, it is likely the attorney spent a fair bit of time carefully selecting the wording used in the claims and agreeing that with the client. It is also more than likely the attorney and client believe the wording used meets the requirements of Art 84 EPC. As such, a clarity objection that simply indicates a feature is unclear and provides no explanation as to why that is so might be considered discourteous, lazy or just plain unhelpful. You never know, it's just possible that if the objection is explained, the attorney and client might even take the point and agree.
Old man of EPO,,
ReplyDeleteYou say both too much and too little.
You create a strawman of "never actually granting a patent" and then try to tear it down as a farce. Such is not the view of the person you are addressing as it is clear that quick patents are patented quickly - as they are desired.
There is both the existence and the legitimate rationale for a full spectrum of patent grant timing desires - none of which lead to your absurd reduction and subsequent "farcical" logic.
I see this EPO management initiative as a bona fide effort to deliver what the real world wants (while at the same time extracting from the situation the best performance statistics, going forward).
ReplyDeleteWhen Barbara Cookson above writes of a "poor" search report, I take it she means "poor prospects of getting to grant" and not "poor performance by the search Examiner".
I remember saying to a person of influence at the EPO, about 15 years ago, that I don't care what the Examiner thinks of patentability because in the end all that matters is what the TBA thinks. I remember remonstrating, that what I want is a top quality search, rendered as soon after the filing date as possible. Then I (and not the Examiner) will decide what claims to take to issue.
Cancellation of the 24 month cap on the window for filing divs means that we can file divs right up to the end of the 20 year patent term. So if I'm watching a competitor's case and doing FTO work, I don't know till the end of the 20 year term what claims will issue. So I really do need from the EPO a "quality" performance on Art 123(2), and Art 84, or else i have no degree of legal confidence 8never mind "certainty") whatsoever.
It looks now as if my words back then have been taken to heart. Only problem is the ever-ongoing one, that Examiners and I differ on what offends Art 123(2) EPC and what offends Art 84. One factor might be because I'm a native English speaker and they are not. National Patent Offices do not suffer the same anguish over whether an amendment adds matter and that's because everybody involved has the same first language.
With Examiner training and maturity, and a consistent line from DG3, that problem will ease. But is there anybody of experience left any more in DG3. They are retiring in droves and the President continues to decline to replace them with any "quality" replacements.
There is clearly no "one size fits all" solution to the problem of searching and examining EP applications.
ReplyDeleteA top quality search is undoubtedly beneficial for the reputation of the patent system - as well as to third parties and all applicants (other than perhaps a small minority who might want to "game" the system). To that extent, the EPO's focus upon searches is perhaps a good thing - assuming that there is a corresponding focus upon delivering high quality searches.
On the other hand, there are clearly diverging stakeholder views with regard to the speed and quality of substantive examination that is required. Thus, I guess it might be a little bit difficult for the EPO management to decide which approach to take.
However, here is where a little bit of common sense (as well as having a broader perspective) comes in handy. A common sense approach might tackle the issue by asking:
(i) what effects will be produced by each of the candidate systems for substantive examination; and
(ii) do those effects (more or less) match the social and policy objectives behind the patent system?
Taking this approach, it is clear that excessively slow and/or poor quality substantive examination is a BAD thing. The beneficiaries of such a system (certain applicants - but only in the short term) are greatly outnumbered by those who will suffer injustices or hardships (i.e. competitor companies, the general public and, in the long term, all applicants). This is a long way from the balance that the patent system seeks to strike - and so is a sure way to bring the patent system into disrepute.
I am all for a flexible system that allows examination to be accelerated for those who want it. However, the general standard for "normal" examination should still be prompt and of high quality. If not, the whole system becomes unsustainable. How many "bad news" stories relating to patents granted by the EPO that are of highly questionable validity will the public and politicians need to hear before action (most likely overreaction) is taken to deal with the problem?
With this in mind, I have to question the sense of the system introduced by the EPO management, which seems to focus more upon "quick wins" than quality. I know that quality with respect to patents can be difficult to measure, but that is no excuse for designing a reward / incentive system for examiners that effectively ignores such an important point.
So why has such a system been introduced, I ask myself? A simplistic way of answering this would be to determine the beneficiaries of the system. The answer is not applicants (at least not in the long term, if the patent system is brought into disrepute). It is certainly also not the general public (including competitor companies). Logically, this leaves only those involved in the administration of the system as potential beneficiaries. In this respect, I fully support Merpel's call for full financial transparency from the EPO. Only with that transparency will it be possible to determine whether the system chosen by the EPO's management is merely based upon a misguided, bean-counting approach or is in fact based upon something much more sinister (e.g. at one extreme, an attempt to misappropriate the EPO's funds by rewarding officials for the introduction of "efficiencies" that do nothing to enhance the system).
To MaxDrei - look at the percentage of refusals of EP applications and the percentage of those refusals that are appealed. That ends up being a very small percentage - much like the percentage of applications that are still pending (or have divisionals pending) approaching the 20-year mark. To design an examination system based upon such a small percentage of cases (no matter how important they are to their proprietors) really would be letting the tail wag the dog. However, I could not agree more that a top-quality performance of the examiners on Article 84 and 123(2) EPC is highly desirable.
How about the opinion accompanying the EPO search report? Useful? I think it is, at least for the following two reasons.
ReplyDeleteFirst, drafters in love with their own work product and afflicted (as everybody) with the confirmation bias and cognitive dissonance, will scorn the EPO search references. The dispassionate opinion of a disinterested but knowledgeable EPO Examiner is not so easy to shrug off. So, the EPO Opinion serves as a reality check for the drafter.
Second, for members of the public checking out the file, that Opinion is a Roadmap. One might scoff at the less than exhaustive, not quite totally thorough efforts of the EPO Examiner but, in my experience, the Opinion usually homes in on the issues that are going ultimately to be decisive, at oral proceedings or whatever.
On reflection then, you might think, like me, that in concentrating on early issue of the EESR, the EPO is serving the public optimally.
Max - legal certainty requires finality. There is no finality in a search opinion. To illustrate this point, think how many cases you have seen in which a wholly negative search opinion did not prevent the applicant from eventually obtaining a patent - sometimes with little (if anything) in the way of claim amendments.
ReplyDeleteThe prompt issuance of searches and search opinions is all fine and well (and potentially beneficial to the public). However, what use is a promptly-produced search and search opinion (even if of high quality) when the substantive examination that follows takes an exceedingly long time and/or is of low quality? It is granted patents that can be enforced, not pending applications. Thus, it will be those granted patents that will be of greatest concern to applicants, competitors and the wider public.
If there is one weak link in the examining system (especially a link as crucial as substantive examination), then "bad" patents will be granted. Of course, the grant of such patents can never be completely eliminated. However, why design a reward / incentive system that pretty much guarantees an increase in the incidence of such patents (and/or an increase in the duration of uncertainty for third parties in respect of the more "difficult" applications)?
In summary, I do not agree that an obsessive focus by the EPO upon searches (for the production of a WO ISA, ESR or EESR) serves the public optimally. This is because it does not get the balance right. It would be like a car mechanic focussing solely upon how well the engine performs but not worrying at all about ensuring that the brakes are in good working order. The potential risks to the public are pretty self-evident!
Dear Proof of the Pudding,
ReplyDeleteYou are assuming that there is finality in a granted patent.
There is not.
There is finality in your granted patent, when it has survived the opposition proceedings initiated by your competitors based on a document that the examiner could not (and there is no blame in that, it is a tradeoff) find in 1.5 days of searching.
... when it has survived the subsequent appeal in front of the TBA...
... when it has survived the claim by your competitors in a national court that your patent is invalid.
Then you really know that you have a valid patent. Not one minute earlier.
Claiming that a fully examined patent by a patent examiner has a significantly higher legal certainty than a patent application with a search report and written opinion is just b*ll... euhm, nonsense, when the total examination has been done in 3-4 mandays of work. And adding one or two days (50% more time), will not solve anything, in the light of exponential growth of prior art, with most of it being in languages that EPO examiners do not speak (chinese, japanese, korean, indian).
If there is real economic value at stake, the market will be far more effective at finding the relevant prior art than 2 mandays of an EPO examiner. If there is no economic value at stake, well, why would anyone bother with proceeding until and (imperfect) grant.
I invite the many posters above emphasizing the "legal certainty" of granted patents over an application with a search report and written opinion, to reflect about what that legal certainty is.
To render it more factual, some statistics by the EPO would be useful:
- what number of final decisions by examiners are taken on the basis of the documents which were already identified in the search report and are taken with the same assessment as was made in the written opinion (positive or negative) ? If that is a large majority, what is the added value of the examination ?
- which percentage of granted EP patents are successfully opposed/invalidated and on top of that on the basis of documents not found in the search report ? If that is a large majority, what is the legal certainty of a granted patent ?
FormerExaminer
A reply to the commenter from today at 12:25 hr.
ReplyDeleteI stand by what I wrote earlier.
Germans file 70% of oppositions at the EPO. Why? It is their culture. Why? Bifurcation. B publications out of the EPO are "examined rights" and therefore valid and therefore enforceable at regional court by interlocutory injunction. You only get years later to a finding (out of a Federal court in Munich or Karlsruhe) that the enforced claim is, actually, invalid. This is not right. It is overly patent-friendly.
The reality is that many many duly issued claims are not valid. Hence the 70% of oppositions filed by Germans. It is an illusion to suppose that quality at the EPO can ever be ramped up to such a height that the only claims that issue are valid ones.
Where, Proof, are you writing from? May I ask? The real world of patent users? Is it i) a desk at the EPO or ii) a desk in an academic institution or iii) a law firm or iv) in house in a corporation that makes things? I suspect i).
I cannot say at the present moment whether this "early certainty from search" concept is a genuine attempt to serve the public or if there are dark intentions behind. The official version (which, to be honest, makes sense to me) is crystal clear: provide legal certainty (as much as possible at the search stage, of course) as soon as possible. Due to the present circumstances and the present management style, it can be understandable that a veil of suspicion can cover the concept, but I think that presently said suspicion is not at all confirmed.
ReplyDeleteEnforcing the requirement that the applicants receive the search report and the search opinion within 6 to 9 months after filing does not appear to me as hiding any dark intention. As a fact, I honestly think that it is a good service to the public, be it the applicant or a third party. Furthermore, measures are in place to check the quality of the search report and the opinion, including the compulsory check by the division, in case that a search opinion is positive, prior to sending it to the applicant.
Regarding the examination, the limits remain the same: examiners must reply to the applicant within 4-6 months after an applicant's reply. There is a tool giving priorities to the actions that an examiner can do (be it search, examination -including PCT Chapter II- or opposition), but for those examiners not having a backlog, the priorities given by the tool are coincident with the time based priorities. Still, as another poster said, there is still certain degree of flexibility (examiners have a target of having an average ranking below 30, which means that they can work within the first 60 cases in the ranking tool), and, with the consent of the director, the ranking of an application can be modified (if justified). I think that this ranking tool, contrary to some opinions, limit the possibility of "cherry picking". In the case of examiners or fields having a backlog either in search or examination (as can be the case of fast growing technologies in which there is not yet enough workforce), the office has made some prioritisation rules, but these rules always existed.
It is true that the production pressure is increased, but, although I share some concerns regarding the present policies, I cannot agree 100% with the idea that that necessarily leads to a decrease of quality. Experience shows that a high quality search with a thorough and complete search opinion speeds up the issuing of a final action, be it a grant or a refusal. So I do not share the idea that examiners (generalisation is never correct) will prefer a fast and dirty search with not so relevant prior art in order to provide a fast grant. I would not understimate the professionality of the examiners and the professionality of the examining divisions. Of course there are exceptions and mistakes can happen, but I do not like to elevate the anecdote to general trend.
Let's wait and see, but, very important, let's stay calm when rising our concerns and our complaints. A coin has always two sides.
Anon 2316,
ReplyDeleteMinor point - the limit for treatable ranking is 30, not the average. Thus an examiner can do 30 but not 31, even if 31 is ready for grant. The consequence is that I see some examiners with pages of red files (40 to a page or so) I.e. late but not in the top of the list. Files can be re-prioritised but only rarely and, as you say, justifiably e.g. a file has a filing from a party which needs an action in preparation for oral proceedings but the action is not compulsory, such as a new request which may mean the OP may not be necessary.
Coming from people who have spied almost everybody, installed keyloggers, hired highly controversial control companies, destroyed the carriers and almost all staff basic rights, punished or attempted to intimidate at least 14 elected staff representatives, are on the point to slowly dismantle the only independent internal quality audit, pretend to not respect a national court decision, have welded the windows of one building to impeach staff suicides, etc. etc.
ReplyDeleteWe can at least have some doubts about their "cristal clear" intentions.
The practice shows that the first result of this ranking is to prioritize everything that can provide short terms productivity gains. Living the complex and "no point" cases for next year. The objective is to show to the AC that the current reforms are an unprecedented success and should be continued until the END. The machine is supposed to tell you what is the best to do to magnify the management reforms. No care of the public, no care of the reality, no care of the quality.
An unprecedented dropdown in productivity and public trust is therefore foreseeable in the coming years but at this time most of these people will have escaped far from the chaos they have created.
Old man 06:08,
ReplyDeleteMy corresponding quality target for the ranking is "average lower than or equal 30", which means that I can treat files with a ranking higher than 30 if I find it necessary, as soon as the average remains in target. Maybe there are different approaches in different clusters or directorates. And if an application is ready for grant (or for refusal, i.e. it's a final action), it doesn't matter its ranking, because it is not taken into account (this, in my view brings a risk of cherry picking, but I leave it to the responsibility of the examiner).
So cute 06:56,
ReplyDeleteYes, as I said, given the circumstances, it is more than legitimate to suspect of hidden intentions on each of the initiatives taken by management. But it is also our task to judge each action on its own merits. I do not agree that the practice shows that "the first result of this ranking is to prioritize everything that can provide short terms productivity gains". At least that is not what the practice I experience everyday among my colleagues shows. Maybe what I see is the exception. Maybe not. That's why I mean that we must wait and see. Let's not forget that losing an objective and analytical view when confronting management decisions can severely damage our own credibility. If we cannot prove said hidden intentions, we should better keep prudent.
Maybe applicants and third parties appreciate this approach because it is beneficial for the public. Maybe not. But it is a bit early to judge, given the time scales in which the patent world moves.
Max, I cannot understand why you are getting so worked up. We appear to agree on so many points. Perhaps you missed the statement in my previous post when I acknowledged that it is impossible to completely eliminate the grant of "bad" patents? In any event, it appears that we will have to agree to differ on the point of whether the EPO's current reward / incentive system for examiners is a good thing. Your view is clearly long-held and formed through your experiences. I have a different perspective, no doubt influenced by own experiences (which, by the way, have nothing to do with a desk at the EPO - so you can keep guessing as to where I work).
ReplyDeleteFormer Examiner - perhaps I was using the word "finality" a little loosely. You are absolutely right that the court that represents the final avenue of appeal is the only body capable of providing a "final" pronouncement on the validity of a patent claim. However, this rather misses the point that I was trying to make. Only when a patent is granted can its proprietor attempt to enforce it. Also, only when the claims are granted can a "final" opinion upon freedom to operate over those claims be provided. It is for these reasons that a granted patent has much more significance to the public than a searched application.
You are correct that patents with a high commercial value will be litigated (and their validity scrutinised by the courts in great detail). However, the courts will not always get the chance to weed out the "bad" patents that are granted by the EPO. There are numerous situations where this can happen, such as where:
- the patent involved is more borderline in its commercial value;
- the competitor is either risk-averse or simply does not have pockets deep enough to launch litigation to "clear the way"; or
- the patentee has deep pockets and asserts a "bad" patent against a competitor of much more limited means.
Thus, by subjecting all patents to a "strict" standard of examination, the EPO serves an important service in protecting the public against such unjust situations. As I have already acknowledged, it is impossible to be 100% successful in preventing "bad" patents from being granted. However, that is no excuse for the EPO's management introducing a reward / incentive scheme that does nothing to ensure that high examination standards are maintained.
I have to say at this point that many EPO examiners still do a good job in examining applications, despite what appear to be very challenging circumstances. However, how long can this be maintained in the face of the current reward / incentive scheme? As others have pointed out, are we not storing a time bomb of "difficult" applications that - under the productivity edicts - will eventually need to be processed at the same speed as the "easy wins" that are being cherry-picked now?
Proof, I wasn't aware that I was getting "worked up" about anything. Sorry, readers, if that is how I come across.
ReplyDeleteYes, we are seeing the emergence of a fast track and a slow track. But if Applicant or a third party wants to jump a case from the slow to the fast track, it can. Those Applicants determined to Go Slow throughout the 20 year term will continue to do so, in furtherance of their commercial objectives. This reality must be faced.
The 24 month cap was an attempt to get rid of legal uncertainty throughout the 20 year term. That was unfair to inventors and their assignees. The new way is to use 3rd party observations as a trigger to accelerate to grant. A better idea I feel.
I remember pre-1978 UK practice, with a Patent Office tigerish on clarity and novelty, but leaving obviousness untouched. It was thought so difficult that only a court could handle it fairly. So patents that issued from the UK PO were clear and novel. FTO opinion writers could live with that.
The marvel of EPO practice since then is the Problem and Solution Approach, an approach that is beautifully elegant, and so close to real life that inventors are enthused by it, as soon as somebody takes the trouble to explain it to them carefully and accurately. The wonder is, that judges have to concede, to "suck it up" that a mere Patent Office can "do" hindsight-free obviousness much better than they can, with all their after the event affidavits, solemn experts, gut feelings and learned opinions.
So I agree with you, that examination of patentability at the EPO is a triumph, and that any management that fails to cherish it is disgracefully negligent and careless of the needs of the public.
Perhaps now I am indeed "worked up". The Problem and Solution Approach always does that to me.
I have some catching up to do, but I do hope this tidbit is not left at face value:
ReplyDelete"When Barbara Cookson above writes of a 'poor' search report, I take it she means 'poor prospects of getting to grant' and not 'poor performance by the search Examiner'."
I am sorry but that is a ludicrous, and in a very real sense insulting, way of taking the Cookson comment. It perpetuates a myth common among those that don't like patents to begin with that the only thing cared about by those obtaining patents is obtaining a grant in and of itself.
How foolish indeed.
Anyone who serves their clients interests realize that the spectrum is much broader, and that BY AND LARGE a patent just to inflate numbers - while a possibility - is more likely than not NOT serving the client.
I - and every single one of the patent attorneys that I know and associate with - would prefer ten times out of ten a high quality report/examination without regards to whether or not a quick" rubber stamp" of approval is obtained.
Let's not subtly feed any C R P notion that rubber stamping "Approve Approve Approve" is a desired goal.
Such is denigrating and dust-kicking a the same time. It changes the focus of what efforts ALL Offices should be applying themselves to: the best possible examination at the accepted trade-off level. At least here in the States, applicants do NOT pay for X number of hours of an examiner's time. Applicants pay for a validating examination regardless of the time it takes.
The distinction of limiting time - either individually or in the aggregate is an Executive branch decision and creation. I am not Polyanna enough to think that every application can be given unlimited time, but let's stop (before it starts) the notion that it is the applicants deviousness in playing any such "time" games.
Anon 0919,
ReplyDeleteIndeed targets vary. We have average 15 and individual files not higher than 30. Regarding easy grants, only grants coming from searches which were positive ate possible but again they rank lowly. If, as is often the car, the applicant amends the claims after objections on the ESOP or WOISA either according to a novel and inventive dependent claim or from another combination, I'm not allowed to stay 'examination' (in reality a grant) until all the old files are finished our that file gets up to number 30. Probably equally frustrating for the applicant since he has taken the effort to draft new claims and yet (without PACE) it gets stuck in the cupboard.
Max - not sure if your comments on the PSA are an attempt at sarcasm or an attack on the courts. Not that it much matters much either way.
ReplyDeleteIf the IPO in the UK can have a compliance period and the US PTO can have internal deadlines (set relative to the filing date) for disposing of an application, then it would appear that the EPO's approach to letting sleeping dogs lie is perhaps a little out of step.
I am not claiming that the standard of examination at the US PTO is anything to write home about (far from it). However, it does illustrate the point that other offices adopt very different policies with regard to prioritising (and incentivising) examiner activities. Which brings us back to Merpel's point, namely what is the objective need for the current "productivity" drive at the EPO and who on earth benefits from it?
I am open to the possibility that the current policies may provide tangible benefits for both applicants and the general public. However, I have seen nothing so far to persuade me that the policies are based upon anything other than a bean-counting approach that pays no attention to the very obvious (negative) long-term consequences.
Has anyone taken a survey of applicants and asked them if they would prefer to either:
(a) avoid a significant increase in fees but (on average) suffer from delayed grant and possibly also from inconsistent / poor quality examination; or
(b) pay a little more for faster, more reliable and better quality examination of their patents?
I suspect not, as I doubt that the likely answers to such questions would square with the current EPO policies.
Which brings us then to the question of financial transparency at the EPO. If there is a real need to increase examiner productivity (without any apparent intention to reduce fees), then why is this? If it is to do with the EPO's backlog of applications, then why is substantive examination not being prioritised? And what is being done with the money "saved" by increased productivity?
There may be simple and straightforward answers to all of the above questions. However, in the absence of complete financial transparency, it will be impossible to dismiss conspiracy theories relating to the reward systems for the EPO management.
Up at the top, Barbara Cookson wrote:
ReplyDelete"I think it is helpful to know that if the search opinion is poor the case will sit collecting renewal fees and making little progress"
I found "poor" ambiguous. Does it mean "poor quality from the writer of the EPO opinion" or does it mean "negative, on the prospects for getting claims of useful scope through to issue"?
US Anon writes in to say that my suggesting that "poor" is ambiguous is "insulting". I'm mystified. Have I insulted anybody? If so, who?
Proof, you helpfully point out that UK patent law imposes an overall period for getting to the intention to grant, not just the pending application but all its divisionals, of all generations. Bravo UK. But it's not the EPO that's "out of step" here, it's the UK IPO. In the USA, for example, amongst Applicants it is considered good practice to keep "something pending" at the USPTO, right through to the end of the patent term.
And other jurisdictions offer the Applicant a 7 year sleep over, before they even have to file a request for examination on the merits.
Productivity increase at the EPO: How and Why? and a VP said…
ReplyDelete"What an organisation, what a crowd, what a reform, what a mistake, what a w*ker you have for a President."
A sailor in the VP1 wash says…
ReplyDeleteVP1: [Showing off his geese that lay golden eggs] They're laying overtime right now, for Easter.
Merpel: But Easter's over!
VP1: [clapping a hand over Merpel mouth] Ssshhh! [quietly]
VP1: They don't know that. I'm trying to get ahead for next year.
Merpel: I think I'm going to be sick!
VP1: Here are some Rainbow drops. Suck them and you can puke in seven different colours!
Another suicide at the EPO
ReplyDeleteIt is pretty pathetic that people still resort to quoting suicides in support of their cause against the EPO and its president. People kill themselves because they are ill. They are depressed. They did not kill themselves so little people can use their deaths on one-sided blogs such as this.
ReplyDeleteI suggest you look at per capita suicide rates to see just how prevalent this problem is amongst people around the world, including at the EPO. With so many thousands of employees, there are going to be significant numbers of depressed people struggling to cope with their lives. Suicide rates are very high. I doubt those who keep blaming the president of the EPO are actually going out of their way to help deal with the problem of the mentally ill.
just me said:
ReplyDeleteI suggest you look at per capita suicide rates to see just how prevalent this problem is amongst people around the world, including at the EPO.
According to wikipedia, suicide rates in the host countries, per year, per 100,000 people:
Germany 8.2
Netherlands 9.2
According to the link provided by EPO Techie, 5 suicides in 39 months among 7000 employees gives:
EPO 22.0
Is the calculation correct?
Is this indicative of anything? or can it be attributed to mere statistical variation?
Statistics released by the EPO last year appear to show an increase in user satisfaction from 2013 to 2014 - see slide 21 of the presentation at the following link:
ReplyDeletehttp://www.aipla.org/globalip/news/Documents/2015/EPO-U.S.%20Bar%20Partnership%20for%20Quality%20Meeting/EPO-1-TheEPO'sQualityManagementUpdate-5.12.15.pdf
However, I am struck by the information in slide 16 of that same presentation. This is because the President appears to control at least three of the steps in the quality management cycle.
This leaves me with some lingering doubts about whether, if there were any evidence of a decline in quality, that evidence would ever see the light of day.
But this is perhaps how it happens - taking control of all feedback / reporting mechanisms allows those at the top to pursue their own agenda, regardless of the consequences. It is therefore perhaps no accident that the financial audit at the EPO has also been completely eviscerated during the reign of the current president. With total control over release of all information on the "performance" of the Office, who could have any basis to challenge the official story?
Sad to say, I believe that I am already seeing evidence of a worrying decline in quality at the EPO. I have been witness to too many cases where EDs (and even ODs) have clearly been inclined to go for an "easy win" - with the easiest / least burdensome course of action usually being to grant or maintain a patent.
It is difficult to say whether my observations are reflective of a general trend. However, I merely observe that using "incentives" that make ODs more inclined to dismiss oppositions would certainly be a good way of generating a self-fulfilling prophesy ("Look how good the quality of our examination is - the ODs are upholding more granted patents than ever!"). If only those pesky Boards of Appeal would come to heel as well!
I would be interested in reader's feedback: has anyone else noticed a trend for "weak" cases to grant / survive more often, or is it just me?
Controlling information....
ReplyDeleteThat is so 1984.
;-)