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Friday, 2 October 2015

EPO queue jumping, part 2 - Don't be French

Part 1 of this guide to getting your application examined earlier started with a thought experiment: should a multinational's application get examiner more quickly than an SMEs. The answer is no, but the EPO may be subtly reminding examiners to prioritise such files nonetheless at the expense of smaller applicants. Now for an even easier thought experiment. You can do this one with your eyes closed, which of course is the recommended approach for all thought experiments anyway. Two applicants (SeƱor Lopez from Barcelona and Monsieur Durand from Marseille) file their patent applications at the EPO on the same day. Both applications are in the same technical area. Also, both are first filings for which the EPO is committed to providing a search report and written opinion at an early stage.
Q: It may seem like a trick question, but based on this information, whose search report will issue first?
A: Anyone but the Frenchman's. 
Yes, the astounding answer is that apparently the French applicant's case will be put on a lower priority list, solely due to the applicant's nationality. And it's not that the Spanish get extra special treatment; the same would be true if you compared M. Durand's treatment to that given to Dutch, British, Greek or Turkish applicants (and you thought we were all in this together?). For second filings, Merpel understands that French-originating cases have been bumped from priority 1 to priority 4, whatever that may mean in practice ... it doesn't sound good though.

Your first reaction to this, dear reader, may be to express disbelief. If Merpel's information is wrong, there are hundreds of examiners reading this blog who will no doubt put her right in the comments below.

Your second reaction is probably: Why France? Well, here Merpel is forced to guess. All she knows is that this discrimination started in June 2015, and she knows that to be the month that La Republique publicly rebuked Mr Battistelli at what was supposed to be his special day.

As Merpel reported at the time, the EPO travelled to Paris in June, followed by an enthralled media, for the celebration of the 2015 Inventor of the Year Awards. This event, a showcase of the Office and its publicly radiant President, was hijacked somewhat. The French Government reminded the audience from the podium that it had concerns about how the Office was being run. State Secretary for the Digital Economy, Axelle Lemaire said:

While it’s not the object of our meeting this morning, the French government knows of the social difficulties that are expressed within the EPO and in this regard, the Office has an exemplary duty of absolute transparency in the rights of employees working there.

Relations with the French Government have been decidedly frosty since then. However, even Merpel, a cynical old soul, finds it difficult to believe that this is the reason why French applicants have been penalised in the treatment of their applications. 

Nonetheless, if this is all true, isn't it a salutory lesson for members of the Administrative Council who might have been encouraged to follow in the footsteps of the French Government and the redoubtable Ms Lemaire?

17 comments:

Maia non... said...

I think there may be a confusion here. The EPO has French applicants of EP applications. But it also has some work involving searches for the French national patent office (as for a number of other national offices). I think it is those searches which are referenced instead of EP applicants originating in France?

Meldrew said...

Utter tosh. There is a garbled message here.

The French (and all those who have their national applications searched by the EPO) have a streamlined path not given to those who first file in other offices. What is more the French and even more so the Italians have their search fees subsidised by their national governments so that they end up paying much less for their European patents than those from other countries.

Waste no sympathy for those who have their national applications searched by the EPO. Instead sympathise with those who have to have their PCT applications searched by either the highest cost provider in the world, or their cartelised fellow traveller European ISAs that charge the same fees despite having different overheads.

Aghastian said...

The President has been attacked by so many people that I have it on good authority that he has ordered every application from every nation be put on the Priority 4 list.

You couldn't make this stuff up, its so absurd.

Anonymous said...

Mack the knife says

Afghanistan - has BB effectively done on strike with all of the other staff members?

The EPO is shooting itself in the foot here. More people are looking at national options, what with the EPO problems right now and the UP/UPC looming on the horizon. In the meantime, applicants like me pay renewal fees on applications that have not been seen by the examiner for over 7 years...it is absurd! Sort it out! NOW!!!

Examiner with Integrity said...

The actual situation is as follows:

1. according to present policy, all new EP or Euro-PCT applications (i.e. those deriving from a PCT application in another ISA and entering the regional phase before the EPO) as well as PCT applications are accorded priority 1 in our work (this is a result of ECfS);
2. in addition, priority 1 is accorded to national first filings (known internally as 'Premiers Depots'), whichever office they derive from (including INPI);
3. other national searches are accorded priority 4 along with any EP-A2 and E-PCT files which were already in stock before ECfS was declared.

There is thus no systematic discrimination against French national applications.

There is, however, a significant corpus of old search files which are way down the list, which is a dubious policy to my mind at least. On the other hand, if the applicant asks when he can expect a search, such files are automatically 'promoted' to priority 1, with a new committed limit date.

I'm a robot said...

Since the annuities of unitary patents will be lower than the annuities of European applications up to the 11th year, I expect a rise of the requests for accelerated examinations, so that it will be difficult to "promote" the files in the future

Examiner said...

They are discriminated slightly, if the receiving date at the Office is up to 9 months from the filing date. Search report will be out one or 2 months later compared to another national first filing. They are still prio 1 however.

black sheep said...

Black sheep comments:
The Problem with ECfS is - like with the EPO under the present administration in general - lack of transparency.
Users should know what to expect from the Office. Therefore, ECfS priorities should be public. However, this seems not to be in the interest of the Administration which wants to present nice numbers for the production to the Council. The foreseeable fact that ECfS results in a growing backlog of final actions has been registered by the administration with surprise. The consequences will have to be borne after the present President will have left the EPO and received his Bonus.
The same applies to the situation in the Board of Appeals which rapidly deteriorates as a consequence of the President's policy of not replacing Board members for 1 1/2 years as retaliation for R 19/12. At the end of this year 6 Boards will have no chairman, and others will follow soon.

MaxDrei said...

What a bizarre comment above, from Mack the Knife. Sort it out NOW, he bellows at the Blog. He thinks that people are considering filing national rather than at the EPO because some cases, including his own one, are languishing and not getting to issue.

Meldrew normally I understand what you write, but I didn't get which countries you allude to, when you wrote above with whom we should sympathise.

La cucaracha said...

It is a myrh to believe that any but a marginal part of applicants are interested in speedy prosecution, the contrary is true. A negligible fraction of applicants demands accelerated prosecution which they can have at request and at no cost.

Why would they want to have a patent quick? The translation, attorney cost and national fees are much higher after grant and validation. To get a patent they would have to irrevocably limit their claims. Only after grant third parties can attack the patent. The vast majority of attacked patents get invalidated before courts ((80% in Germany) A pending application cannot get invalidated, however, trivial it may be. For cross licensing, an application is good enough. In far less then one pecent of all patents infringement is ever claimed before a court.

The law maker would have two options, expedite the procedure, or just give up and introduce deferred examination. That is what early certainty is all about, the applicant gets a possibly negative but legally utterly meaningless writtn opinion, and the dossier is dropped into the system at the lowest priority. Whenever the applicant gets in a hurry for whatever reason he can always request accelerated examination. But as we know they don't and as we know for very good reasons.

This system iwould be much more honest as the office would give up th mere pretense of examination. Why should we examine and grant or refuse applications 60.000 of them every year, if just 300 ever go to court. Total waste of human and financial resources. Stopping the pretense you would need much less examiner AND attorneys exchanging meaningless letters with the only intention of procrastination. Under the assumption that examiners and attorneys alike are talented professionals, they would not have to fear unemployment. They could do something else, possibly useful, for a change.

Old sas man said...

That the Relations between the French Government and BB have drastically cooled down can be seen in the fact that the EPO organises on 09.10.2015 a seminar celebrating 30 years of cooperation between EPO and SIPO without the participation of the French Patent Office!
I would say it would more than simply polite to associate the national patent office to such an event. Policy has always been not to organise any event in a member state without associating the national patent office one way or the other.

See: http://documents.epo.org/projects/babylon/eponot.nsf/0/7E1A61AB656965E2C1257E8F004CD6F8/$File/epo-sipo_symposium_programme_en.pdf

I am thus not surprised about the news on the way to deal with French applications.

Anonymous said...

'a significant corpus of old search files which are way down the list'

I have a batch of four cases all filed in the first quarter of 2010 with total filing of fees in excess of €20k (one a regional phase entry and all with long specifications and significant excess claims fees. The EPO has not done a stroke of work on any of them. Yet last year I filed Belgian and French national applications for another client and already have search reports prepared by the EPO.

It is scandalous that the EPO is hawking itself around as a searching authority for national offices and US originating PCT applications when it is not getting its actual job done. It is a still greater scandal that having decided to let two of the above-mentioned four applications go, although we will get the search fees refunded, we will not get the excess claims or excess pages fees back. Given that the basis, as I understand it, for levying excess pages and excess claims fees is to compenstate the EPO for the additional work required to search and examine large applications, it is inequitable to then retain those fees when no work has been done, and still worse, when the EPO has been so diliatory in handling the applications. It really is about time the AC started kicking backsides amongst the higher echelons of the EPO.

Oh and MaxDrei, speaking from my own experience, a good many of my clients are indeed looking at filing national applications now, rather than EP applications. I put this down to the delays often experenced at the EPO,some pretty shoddy examining of some cases and the increasing high costs. I have just sent out reminders to a private individual for ninth year renewal fees on two applications, both of which are awaiting the first examination report. The EPO is not an office for the SME or private individual.

hi there said...

@Anonymous:
It is scandalous that the EPO is hawking itself around as a searching authority for national offices and US originating PCT applications when it is not getting its actual job done.

No idea why those applications still haven't been searched, but what stops you (or the applicant) from inquiring? Or simply file a PACE request.

It is a still greater scandal that having decided to let two of the above-mentioned four applications go, although we will get the search fees refunded, we will not get the excess claims or excess pages fees back. ... it is inequitable to then retain those fees when no work has been done, and still worse, when the EPO has been so diliatory in handling the applications.

There is no legal basis for reimbursing anything but the search fee (and examination fee), so that's it. Equitability in the individual case has no place here.
(Of course the AC could amend the Rules relating to Fees.)

I have just sent out reminders to a private individual for ninth year renewal fees on two applications, both of which are awaiting the first examination report.

Why don't you tell that individual he can file a PACE request and get high priority treatment at no cost whatsoever (other than what you charge for filing the request)?

(Or did you tell him and he's simply happy enough with a pending application?)

Aged Attorney said...

Re PACE
in my experience some PACE requests are apparently ignored. I do not think I am the only representative to notice this, however it is impossible to find out the statistics on PACE requests as the EPO refuses to publish them, we have asked explicitly. So much for transparency in quality measures.

Old man of EPO said...

Aged attorney,
Things do go wrong but at least in my area examiners are definitely obliged to follow PACE deadlines with the threat that the applicant will complain to VP1 or the Pres!
Of course a PACE request can only be achieved if there aren't too many of them and if there aren't legal deadlines to be met (searches for first filing etc.) but I don't see so many requests being made. It has to be said that mgt does have some strange priorities set in our dossier mgt system and PACE is a factor but not an overriding one.

Me said...

My PACE requests are not ignored.

MaxDrei said...

I have heard it said that one or two corporate applicant bulk filers ask for PACE on every one of their cases. They are the ones least likely to enjoy PACE deadline compliance from EPO Examiners. Otherwise though, my sense is that PACE compliance is good.

If you ak for PACE in an art unit overburdened with PACE requests it cannot be anything other than slower. But are there in fact any such art units?

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