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Saturday, 12 March 2016

EPO Performance 1 - application pendency times

The EPO has been telling all who will listen in recent years that its processing of applications is getting ever more efficient while quality is also improving. Given that quality is somewhat intangible and that the perception of different users on what constitutes quality can differ so much let’s leave that aside. Surely the efficiency claims can be verified beyond doubt?
Alas, the hard data and analysis has been somewhat sparse, leaving Merpel and the world at large in the position of having to rely on the EPO’s figures and claims with little opportunity to put these to the test.
Until now…
A valued reader who goes by the nom de plume of Archibald Calculus has been doing some number crunching. He has taken raw data of various types from the EPO, tabulated it, graphed it, and tortured it mercilessly until it gave up its essential truths.
Over the next few posts, Merpel will be passing on to her readers the results of Archibald’s invaluable analysis. Are pendency times improving measurably? Does an independent analysis back up the claims of efficiency made to the AC?
Read on and find out. 

Archibald takes up the story:

In decision T 0823/11 handed down 21 December 2015, EPO Board of Appeal 3.5.07 [1, 2] regarded examination proceedings lasting 12 years to be excessively long, and held that such a delay constitutes a substantial procedural violation. The grounds for the decision cited the Tyvik AS v Norway case adjudicated in 2013 by the European Court of Human Rights concerning excessively long national patent proceedings, which the judges in Strasbourg considered to have rendered meaningless the plaintiff's right of access to a court.
Proceedings before the EPO are notoriously lengthy. But just how long do they actually last? And what proportion of cases could potentially meet the criteria for a procedural violation?

The ministers of EPC member states defined objectives for the prosecution delay of European patent applications. According to the epi Information 4/2006, p. 126 these are:

14. The Paris Criteria (the time between filing and grant of European Patent Applications) […] arise from an intergovernmental conference in Paris on 24th and 25th June 1999 and include an invitation to the European Patent Organisation to undertake every possible effort to shorten procedures, so as to bring the average time it takes to grant a European patent down to three years, whilst maintaining the level of quality.

The preceding passage stems from a secondary source, and in view of the interpretation by the EPO, one can't say for sure whether the all-important “average” (emphasis added) qualifier had actually been specified by the ministers.

For instance, the 2003 activity report presented by President Ingo Kober (OJ EPO 2/2004, p. 79 ff) stated as follows:
The number of examination files not fulfilling the Paris criteria had slightly increased by 2.5% since the end of 2002, due to priority being allocated to search procedures. It had declined in six of the 14 industrial sectors. In 2003, the Office would meet the Paris criteria for one in five granted patents, up from one in seven for 2001.
This passage implies that the three-year objective is understood to be an absolute limit applying to individual files.

President Alain Pompidou appeared to adhere to the same interpretation as his predecessor in his keynote speech pronounced 5 November 2004 at the CIPA congress in London:
the number of files in the examination phase that do not meet the Paris criteria is decreasing.
Six years later, newly elected President Benoît Battistelli had an optimistic tone in his lecture held 8 November 2010 at University College London:
The average time taken to grant a patent in 2009 was 43 months, as in 2008. Thus, we are within striking reach of the Paris criteria of 36 months.
Document CA/88/14, “President's activities report”, provided on page 5/51 a few data points on the time required to grant a European patent for full years 2012 to 2014, and mentions that values presented are medians.

Six months later, the following edition of that report published as CA/44/15 stated that “[t]imeliness up to grant continues to improve”, and that “patents were published on average 42.3 months after the start of the European procedure”.

Information from the EPO on the duration of the procedure is rather piecemeal and seems confused as to what is being measured: mean, median, or proportion of files respecting some absolute criteria. But since CA/44/14 at last provides a definition of the manner in which the indicators are calculated, it becomes possible to verify them and understand what is being measured.

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The figure above shows the result of this calculation, with the various data points gleaned superposed as green markers. In addition to the sources above, some data points were included from a presentation titled “Global Patent Warming” [sic] by EPO Controller Ciarán McGinley in 2008 at the IP Business Congress in Amsterdam. Slide 3/34 shows a bar chart labelled “Towards the Paris Criteria”, and provides a few interspersed numbers for the “Time to publication of patent”, without indicating whether these are means or medians, or details as to how they were obtained.
Applications can enter the European granting process either through direct filing under Art. 75 EPC (“EPdirect”), as a divisional application under Art. 76 EPC, or as a PCT application entering the regional phase Art. 153 EPC (“EuroPCT”). The dates used for the calculation were respectively the filing date accorded under Art. 90 EPC, the date of receipt of the divisional application documents, and the date of payment of the examination fee under Rule 159(1)(f) EPC. For the sake of completeness, applications can also be filed under Art. 61 EPC, but such applications are extremely rare except as answers to EQE problems, and thus can be safely neglected.

The lower curve, presenting the median delay of the events defined in CA/88/14, matches very well the data points gathered, under the proviso of defining a month to be 31 days, instead of the more logical average month 365.25/12=30.4375 days. At this point, one should realise that the EPO's habit of presenting occasional median value points tells very little about the shape of the  distribution of prosecution delays. The progressively worsening average value curve just above, and its widening gap from the median value suggest an increasing skewness of that age distribution.

Furthermore, the events chosen for starting the stopwatch are not equivalent for the three main types of applications, as each has a somewhat different time line, which also depends on factors including whether priority is claimed, whether the international application was filed in an EPO working language, and whether the EPO performed the international search. The resulting metric is therefore sensitive to applicant procedural choices, and it is difficult to discern their effect from variations in examination speed. To help understand this, the respective numerical proportions expressed in parts per thousand of the five main categories of the granted patents are shown in the lower part of the figure.

A different presentation is therefore necessary which provides more information on the shape of the prosecution delay distribution. The triggering event for the time measurement is the A publication in the European Patent Bulletin, which is more closely associated with the beginning of examination. This information is also more readily available than the events defined in CA/88/15. A “B” publication cannot occur before the “A” publication, but both events can be brought together under the provisions of Art. 93(2) EPC. The “A” publication is therefore a potential absolute zero for the measure of examination delay. The “A” publication is also the point where third parties are informed of the birth of provisional rights under Art. 67(1) EPC, and where the public's uncertainty as to the eventual ultimate scope of the rights begins. This starting point is also somewhat less sensitive to applicant choices and strategies, as the only major difference between the three major application types at the “A” publication date is whether an EPO-issued search report and opinion are available at that point.

What the next figure says isn't good news.

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Despite the reassuring statements put out by almost all EPO Presidents in the last fifteen yearsfootnote including the present one, the delay to grant for European patents has worsened almost continually ever since the Office was founded.

The Office's practice of occasionally presenting median values for prosecution times, whether  deliberate or not, hides this situation.

One could take solace in that the above mean and average values presented in the above two figures remain roughly constant over time, but this is also a sign that emphasis is put on newer applications at the expense of older ones. And these values are not quite the full story, as will be seen in a further instalment.

Already about five percent of granted applications had been pending for more than 10 years, which is the kind of delay which the Boards of Appeal find objectionable. The uncertainty resulting from these delays also affects the right of third parties.

By comparison, twenty years ago, in 1996, the equivalent statistic was that five percent of granted cases had been pending for just six years; in 2006 the relevant value was 7.5 years. It’s now over 10 years. Looking at the 99th percentile line you can see that in both 1996 and 2006 there were effectively no cases that took over ten years to get to grant.

Similarly looking at the 75th percentile, one could say in 1996 that three-quarters of all granted cases were processed to grant in under 4.5 years. By 2006 it was taking 5 years for three-quarters of cases to be granted. Today it takes almost 6 years.

The above figures only show one type of procedural outcome, grants. In addition to this outcome, applications can exit the examination procedure in three different manners. It can be deemed withdrawn as a result by failing to fulfil some procedural obligation, most commonly to pay a renewal fee or answer a communication. This type of event is known by its mnemonic “ADWI”. It can also be explicitly withdrawn (“WDRA”), or refused (“REFU”), most commonly by the examining division under Art. 97(2).

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The figure above shows the pendency distribution for all four outcomes, but also calculated from the legal filing date instead of from the “A” publication date. One should consider that the patent term is 20 years from filing, and that for the right to access to a court (or in the EPO context, a Board of Appeal) to be meaningful in the sense of the ECHR decision, there must be sufficient potential time left in the patent’s life. And this isn't even taking into account potential opposition and/or national revocation proceedings.

The population in the top percentiles is dominated by divisional applications, often undergoing appeals, which are typically filed several years into the life of the parent application. But if one removes these, the levels only improve by about a year or so, without affecting the general character of the graph.

The X-axis ends about six months ago, as it takes about that time for the legal effect date of most (>95%) negative outcomes to be recorded. Once again one can see that pendency times for the worst 5% have lengthened from almost 7 years (late 1995) to 9 years (late 2005) to nearly 12 years (late 2015). The 75th percentile similarly shows a steadily worsening trend: whereas three-quarters of cases were disposed of in 5 years in 1995, it took 6 years to dispose of 75% of cases in 2005 and by last year it was taking 7.5 years to do so.

Footnote ...with the exception of Alison Brimelow, who stated to IAM's Joff Wild back in 2008 that “the backlog won't be mastered”.?


Stuck in the middle said...

The EPO, at least internally, has indicated a policy recently of Ecfs -Early Certainty From Search whereby priority is given to searches, on the basis that the knowledge of search results provides vital information to all. Consequently examination is generally delayed (except of course for those which can be granted immediately). Examiners are obliged to follow, largely, a ranked list of files wherein searches are generally significantly more highly ranked.
I look forward to further analysis. It should be remembered that the national offices only benefit financially from renewal fees from granted patents. Thus delays mean a delay in receiving their share of those fees (and shorter lifespan for payment of renewal fees to them). There are many conflicting factors, policies and desired outcomes

Stuck in the middle said...

Indeed, that is public knowledge:

Meldrew said...

Another problem about presenting the median time to grant is that this tells you nothing about the distribution about the median, and indeed provides perverse short-term incentives which have created long-term problems.

The problem arose with the Paris Criteria which were a well-meaning but ill-considered political fudge. Choosing a single number for performance was a big mistake, particularly a number so fraught with problems as the average time to grant.

Let us suppose you are the EPO management asked to meet the Paris Criteria. Well first you argue that "average" may give undue emphasis to extremely short or extremely long pendencies, and so median is more informative.

Then you look at your backlog and determine how to bring the median time to grant down.

If there is a big backlog and you decide to deal with it by examining old cases (10 years or more), and you grant patents on such long-suffering applications, the median time to grant goes up, which looks bad. [Which I suspect is why we hear little of the "cutting the tail" initiative].

However, if there is a big backlog and you decide to deal with it by examining new cases, the median time to grant goes down, which looks good.

So the short term incentives provided by said well-meaning but ill-considered political fudge are to concentrate on the easy to grant and let the difficult fester.

What results is a race - if you are within the time limit - race hard to get something granted: if you are past the time limit take your time and hope the applicant abandons the case [of course after paying lots of tasty renewal fees].

What was also a problem in the political fudge that lead to the Paris Criteria is that it was driven more by national patent office interests than applicant interest. National offices wanted renewal fees from granted patents which meant that they wanted patents granted in large numbers and quickly. This was not necessarily what all applicants wanted. While some wanted rapid grant others were happy to wait. What developed was a system of deferred examination without safeguards, in that third parties had no way of accelerating blocking applications.

The Early Certainty from Search program is relatively new, and unless I am totally atypical is beginning to have good results.

I am seeing moribund files bursting into life with an office action [often a first action allowance after 8 years or more of sitting silent].

I am seeing new cases with a clear ISR going straight to grant.

I am seeing third party cases on which I file 3POs being accelerated.

And I am seeing PACE requests being respected rather than laughed at.

It appears that the EPO have learnt how to manage a desk - spend some time on the easy, spend some time on the desperate, spend some time on the urgent, and if you have any time left over spend some time on that which is neither easy nor desperate nor urgent.

The EPO have statistics that they present to the Member States. These are not very informative statistics, but a little more informative than the snippets that are currently provided to the public.

In a spirit of transparency, is it not time for the CA/F5/xx series of documents to be made public?

And in a spirit of good management, is it not time to forget the Paris Criteria?

What a Mean Median said...

[Silence. Suspense. We're all waiting for the next installment ...]

I(P)strain said...

Large blocks of red on white writing is hard to read.

Anonymous said...

The proposal to grant cannot be sent before 18 months from the actual filing date due to the legal requirement for a search for prior art relevant under Art. 53(3) EPC which could not have been found in the initial search because those potentially relevant documents would not all be published at that stage. The 18 months from filing, for good administrative reasons, i.e. to leave a safety margin for the databases to be truly up-to-date, is often extended slightly. Once the proposal to grant (R.71(3)) has been sent allowing for the 18 months, the applicant has 4 months to reply. Thus de facto *nothing* can ever be granted *and published* before 2 years from actual filing date. Thus distribution cannot be Gaussian due to this lower hard-cut off. That is why the median is the correct measure and it means it is mean to imply failure to use the meaningless mean means anything; and the B-publication date is not a reflection of the absolute administrative efficiency of the true work of the examination division which finishes sometimes *considerably* sooner compared with the number of months in question.

Merpel said...

To I(P)strain - Merpel has heard your call and changed initial section to black italics instead. Apologies for the strain to our readers' eyes.

Anonymous said...


C ould it be I'm getting pendantic?
O r is granting patents so romantic?
O ver embellishment of the statistics
K nown now for years by realistics
E xternal audit,lay the books bare
D oes this AC really care?

MaxDrei said...

Three cheers for Meldrew's excellent contribution above.

My experience with the EPO Program "Early Certainty from Search" is also positive. Note that all it takes to activate a sleeping file and get its examination expedited is to write a one-liner to the EP, asking when the next Communication will issue.

But the majority of Applicants like their cases to sleep unexamined. Heavy grant costs delayed. Only one annuity per year to pay. Full flexibility to amend claims and file divisionals. Keeps the competitors guessing what claims will issue. Still time to write claims that read on to competitor's products, as soon as they hit the market.

I know that some EPO Examiners resent pressure from management to spend fewer hours searching. That resentment infects Examiner reaction to ECS. But I see that as an issue quite separate from implementing the ECS work prioritizations.

Come now readers, is there anything wrong with the ECS prioritizations as such? Do they not fit exactly with customer needs?

Note that the Program is only just up and running very recently. Far too early to say whether it is delivering success.

Anonymous said...

Amicus Curiae

@Meldrew: I agree with your statements about Early Certainty from Search: some types of applications are in fact treated faster.

I cannot agree that "the EPO have learned to manage a desk". As you mentioned, there will always be some applications which are not easy and have nothing special making them urgent. These are simply dropping out in the current system. Judging from the Figures, these applications dropped out years ago as well. Basically, speedy processing of certain files comes at a cost.

Here is the catch. Why does the EPO believe it is entitled not to work on these "difficult" examination files? Applicants pay what you called "tasty renewal fees", and their applications remain dormant.

The current approach with Early Certainty from Search applies, as far as I know, only for applications starting July 1, 2014. If your application was filed earlier, it is not part of the program. Hence, the old applications are on purpose not touched, the new ones take precedence.

That, in my opinion, is definitely not ok. You have two applications, an old one and a young one, both need to be searched. The EPO at present gives priority to the young one. You may request accelerated search for your old application, meaning even more delay for other applications.

There is nothing in the EPC which allows the EPO to handle applications differently, e.g. according to filing date. The task is to search and examine all. Introducing deferred search and examination, depending on what the applicant requests, is a decision which must not be taken by the EPO. The minimum level required is the Administrative Council.

Anonymous said...

Anon 0817,
Indeed, theB-publication relies on the willingness to agree of the applicant. Requests for amendments in response to the notification of intention to grant (allowed or not) will delay proceedings as sometimes the applicant appears to wish to delay grant. That date is thus not a true indicator particularly if filing translations has a relatively wide window of option for the applicant - the EPO cannot be responsible for the applicant's speed in getting translations filed.

strohalm said...

That is why the median is the correct measure and it means it is mean to imply failure to use the meaningless mean means anything

So when all the EPO Presidents have said "average", it is mean to understand that as "mean"?

Archibald in fact explained why the median is a misleading indicator of application pendency times. (Of course the mean is not perfect either. If the mean is important, then make sure the 10+ year old cases never proceed to grant...)

Martin said...

@Anonymous: there are cases on my desk, where I cannot issue a grant before 31 months after filing.
Yes, positive IST, but the first "TopUp"-search resultet in an obscure Brazilian WO application, which, if it enters the European Phase, will be an Art. 54(3) document. And to know whether it entered the European phase, I will have to wait until the latest possible entry moment has passed, which is 31 months after filing.

Quousque Tandem said...

Please forgive me if my post is a bit off topic. I have to tell it.
I'm one of the few "fossiles" left in The Hague. Those who started more than 30 years ago, performing searches through mountains of paper and providing both the colleagues in München and our applicants with prior art indicating the novelty destroying "X" documents and the position of the competitors.
Then came BEST, with its holy 14% productivity increase, together with the non-written rule: "Find anything against claim 1, and don't waste your time looking for the other claims." What was passed over is that following this dirty search many applicants were able to restore novelty after the first communication. And so, a new search was then required. At least for those of us having a bit of professional pride left, and of course for free. Farewell state of the art. Farewell complete searches. Cut the corners and hurry up.
Thanks to ISO 9001, the quality at the EPO improved far beyond any hope. Short ago, I've had the traditional new-year meeting with my director. Here is what I learned. Quality millesime 2016 is having no search or examination files in the red list (read "delayed"), no more than 3 published patents older than 6 months awaiting to be classified, no grants from a colleague in the examining division awaiting signature since more than 2 weeks. Highly important matters, as one can imagine. But not for inventors, not for the applicants and not for all those who pay for our work. The content of the search report/search opinion/communication interests NOBODY. Copy/paste an article of the Süddeutsche and it will reach the representative unnoticed. Like a fig leaf hiding the attributes of a horny satyr, our search strategies are now made public. Useless nonsense in terms of quality as only those who want to see can see. And being blind is so convenient for an examiner eager to reach a high productivity. How many times, as chairman, have I seen the sentence "the preparation process being novel then the product is novel too". But thanks to ISO 9001 we are the champions of the world.
Gloria in excelcis Battistelli.

Proof of the pudding said...

In my experience, ECFS has resulted in some EPO examiners becoming more and more inclined to take a superficial view of compliance with the provisions of the EPC, and to go for as many "easy wins" as possible.

The result? More patents of questionable validity and, worst of all, more patents with claims that are completely unclear. This means more (and much harder) work, and greater expense, for third parties seeking to clear the way.

This might just be acceptable if the OD was a reliable arbiter, diligently weeding out the dodgy claims that somehow made it through the coarse filter of examination. However, given the number of times that my eyebrows have been raised when reading 1st instance decisions, I don't think that the OD can be relied upon to deliver justice often enough.

This all ends up looking less like Europe of old and more like the US - with a significant percentage of dodgy patents being granted and with 3rd parties being reluctant to challenge due to the high costs and uncertainties involved. Perhaps we can live with that. However, should the management of the EPO really be the ones deciding that this is where we end up? It does not seem the most democratic way of proceeding.

Meldrew said...

I think my comments have been misunderstood. Perhaps I had better be more explicit.

The Paris Criteria are nonsense, and attempting to follow them has led to much mischief.

Early Certainty from Search is good, because it accepts reality and provides a reasonable way of dealing with it.

Not all applications are equal, so treating them as a succession of rats down a drainpipe does not reflect the ease or otherwise of handling. If you file a fat rat you should expect the consequences.

The political drivers for a low cost, high speed, high quality system were, like all politics aspirational rather than realistic. You can have any two, but you can't have all three in this world (although I am of the view that quality is reasonably high, price reasonably low, and timing becoming manageable). Life is a compromise.

Clarity is at the core of the system - if the claims are unclear how good will the search and examination be? (At the recent symposium on clarity the uses stressed that clarity should be examined, but bad clarity objections should not be clung to).

There have always been dodgy patents - if examiners were expected to be perfect there would be no reason for opposition.

High quality does not require examiners to provide make-work objections.

Anonymous said...

anonymous thinks,

absolutely no chance of Archibald getting a job at the EPO,,,his analysis lacks clarity, it sails too close the wind. A summary and some kind of data reference source would be useful? Am sure Archibald is not the only one who can work out a few statistics and has managed to get his/her head around the concept of percentiles,,.

Presented as it is here - it looks like a second year BSc Statistics student semester 3 hand in,,,,,not good Merpel enough . Not good,,,,

EU Observer said...

This all ends up looking less like Europe of old and more like the US - with a significant percentage of dodgy patents being granted and with 3rd parties being reluctant to challenge due to the high costs and uncertainties involved. Perhaps we can live with that. However, should the management of the EPO really be the ones deciding that this is where we end up?

I do not for one moment believe that it was the management of the EPO who decided anything. They are only the obedient "implementers" and certainly not the master strategists.

The "decisions" are more likely to have been made behind closed doors in some smoke-filled rooms in Brussels or elsewhere. Maybe the very same ones where the TTIP was "negotiated".

Don't forget: lots of "dodgy patents" increases the probability of litigation and could be seen as a handy way of priming the pump for the UPC.

In this context some senior appointments at the EPO in recent years might be worth a closer investigation.
Such as:

Proof of the pudding said...

Meldrew - I accept that life always involves compromises. But it is distressing to see EPO examiners slowly turning into the three wise monkeys (that is, if you don't look too hard for problematic prior art, and don't think too hard about strict compliance with all of the provisions of the EPC, then examination becomes a lot simpler... and faster).

I fully understand what is driving this process, as applicants, the EPO and national patent offices all stand to benefit. However, it does look like it could be the beginning of a process of erosion of the fundamental bargain with the public that underpins the whole patent system.

I am not saying that where we stand now is definitely unacceptable. Instead, I am merely pointing out that what appears to be a drive from the EPO for “examination light” represents a potentially dangerous trend that needs counterbalancing with strong input from voices representing the public interest.

I say this not as a "patent denier" but rather someone who believes in the patent system, and who wants to cherish it for many years to come.

Think about it. If the pendulum swings too far in terms of permissiveness, then there are certain to be cases where aggressive patent owners assert blatantly invalid patents against competitors with shallow pockets – potentially aided by the €11k fee at the UPC for filing a counterclaim for invalidity. It will not take many cases where a patent owner can be painted as a bad actor for there to be overreactions in the opposite direction. If you have any doubts about what can happen, then witness the effect that lobbying by anti-patent pressure groups has had on “gene” (or other “natural phenomenon”) patents in the US and Australia. Scary stuff!

I agree that some of the professed aims of the ECFS system are laudable. Indeed, there is no point prioritising cases where everyone is happy to let sleeping dogs lie. However, it is not hard to see that much of what is prioritised by ECFS are the “easy wins”, where examination is very straightforward.

The inevitable short term hike in productivity figures produced by ECFS is not to be welcomed for two reasons. Firstly, it will leave a rump of “clearly difficult” cases that no examiner wants to tackle – because the time taken to sort them out will be too detrimental to the examiner’s apparent productivity. Secondly, it is likely to provide a strong temptation to examiners to keep their productivity figures high by waiving through “borderline” cases – ie. treating them as if they are also “easy wins”.

Nobody expects the EPO’s search and examination to be exhaustive. However, they will be doing us all a favour if a way is found to reward examiners for doing their job properly – and not just speedily. In this respect, it is important to acknowledge that it is impossible to constantly drive down the time taken to search and examine applications without compromising on quality. The best that you can hope for is an acceptable balance between speed and quality. Thus, management initiatives that seek to constantly increase productivity look increasingly like a drive to reach the bottom of the barrel.

Anonymous said...

Based on our own experience and talking to others in the profession, it seems that for some examiners getting examination reports issued quickly involves being totally unhelpful, simply not dealing with issues or throwing in a load of amendments and gambling on the applicant just accepting what is given to avoid remaining in examination.

I have recently seen a first examination report to issue on amendments filed in 2011 in response to the EESR. Unfortunately, an amendment shown on a manuscript amended copy of the claims filed with the response did not make it into the clean copy of the claims. The amendment was described at length in the covering letter and is shown clearly on the manuscript amended copy. Rather than examine the claims as including that amendment or call the representative to ask him to submit a clean copy of the claims that included the amendment, some four plus years after the filing of the response, the examiner examined the claims as those the amendment did not exist. Furthermore, despite the fact the representative's letter explained various reasons why other features of claim 1 distinguished over the cited prior art, the examiner has just parroted the objections from the EESR without giving any clue as to why he/she disagrees with the representative's analysis. So about as helpful as a chocolate teapot. However, somewhat craftily, an allowable dependent claim has been allowed.

In a case of my own, we submitted amended claims on entering the regional phase accompanied by a two-part letter explaining the basis for the amendments. Ahead of the search report we got a note from the examiner saying that no basis for the amendments had been supplied when the amendments were filed and if this was not supplied within a month or two, I don't remember which now, the amended claims would not be searched. We were given no more information than that so wrote back pointing out that we had filed a two page letter explaining the basis for the amendments. The response from the examiner was to issue a partial search report with the comment that neither our first letter or our second letter explained the basis for amendments. As far as I can make out, since the **** has not been sufficiently helpful to provide any useful indication, he just did not consider the explanation of the amendments to a couple of claims sufficiently complete. Leaving aside whether he is entitled to ask for further detail at that stage, we might have been able to move things forward if he'd just said asked us to provide additional explanation of the amendments made to particular claims instead of sending out a communication which was misleading and, basically, factually incorrect.

These are just two examples I am aware of and I am guessing that neither I nor those I know in the profession are being singled out for special treatment.

Basically we are seeing cases that already suffer from long delays in examination making no meaningful progress because examiners are simply bloody-minded, unhelpful or do not take the trouble to explain the issue. How much this is down to the mindset of individual examiners and how much a response to management pressure, I really do not know; whatever , it is not doing the reputation of the EPO any favours.

Anonymous said...

Has twitter accepted censorship? #EPO search does not appear to find @Schestowitz tweets anymore...

epo boy said...

about EcFS : I do not consider it to be a good system. As examiner, you have very little freedom to treat files - may sounds good to some applicants, but actually it leads to the following : first actions have low priority, meaning you cannot start new files: so much for reducing the delays ; when a file is promised, the date is generated automatically, hence the examiner has no say in it and the date is not necessarily realistic - especially if several files are requested at the same period, then they receive the same date instead of spreading them a bit; again for promised files you cannot treat them in advance : if a file is e.g. promised for 1st April, it has very low priority until 1st March and so on.
On the contrary all search files have high priority, whether being first filings or Euro-PCT : we have less time to examine files as we spend more on search.
For the delays in general, my experience is that applicants in general are not in a hurry. When they are, they simply ask for PACE or a time limit. An example: when entering examination after a PCT search,applicants were waiting the first action saying "please reply to the objections made in the international phase" before acting until it became compulsory to do so upon entry into european phase.
In my view, the program " cut the tail" was far superior : you could not let old files wait too long. This administration prefers easy points to then tell the world: +14% production in 1 year.

Batti goes Ballistic said...

Angry European Patent Office chief breaks off talks with Dutch minister

Old sad observer said...

ECFS looks wonderful at a glance, but as many have said above, it simply puts the emphasis on quickly gained points for search and files which can easily be granted. The rest is left in the cupboards in the hope the applicant will give up one day and stop paying renewal fees, so they will not have to be examined. Another way to introduce deferred examination, at least for the more complicated cases....

The predecessor of the actual VP1 had introduced a scheme called "cut the tail" by which old files were not forgotten. This has been abolished by his successor. I wonder why?

In view of the existing pressure for increased production (officially +14% in 2015) there is no surprise that examiners tend to be very formalistic and/or superficial when it comes to substantial matters. They simply do not have the time to deal properly with the case, the more since their pay is now directly linked to production.

One should not forget that the idea of EFCS came from VP1 who has only ever been doing searches in his carrier as examiner. He never examined a single case, but always considered search as the only valid aspect in the grant procedure, examination being for him a mere useless play on words.....

Whilst for big applicants, they can deal with useless patents, simply comparing the mass of respective pending/granted ones, for SMEs this can be lethal. Either they obtain patents which they cannot enforce, or they are confronted with patents from larger companies with deep pockets, who can simply threaten them.
But the whole patent system is especially for the benefit of SMEs.... It is sickening to hear this repeatedly by people like BB.

And in top of it now there is proof that the alleged reduction in processing time is no more than fake.

Being asked, and not just once, how to cope with unsubstantiated objections or communications from examiners, makes one sad, to say the least.

MaxDrei said...

A word in reply to Old Sad's posting this afternoon.

It is presumptious to suppose that ex parte examination of an application can lead to a strong presumption of validity. In Germany there is a widespread misapprehension that "examined rights" must be valid rights. Who knows what's patentable? Not the examiners, holed up in their EPO. Rather, the competitors of the Applicant, working at the coal face.

And so we in Europe rightly give no deference to the work of the EPO prior to issue. Just because the patent issues does not mean that there are no validity attacks under, say, Art 83 EPC. Just because the Examining Division failed to enunciate a penetrating Art 56 attack based on its search results does not mean that there are no such attacks.

Ultimately, I as Applicant's representative, am responsible for what claims go to issue. It's my job, not the Examiner's, to write them, amend them, and to watch out that I don't drop my client into the Art 123(2)/(3) fatal trap.

To do my job I rely on a top quality patentability search within the EPO. The public relies on that too. Then, as from the publication of the search report, Applicant can work out what claims can safely go to issue and those writing "freedom to operate" opinions can work out what scope of protection is possible for the Applicant. And who decides on validity? The court or DG3. And who does not decide on validity? DG1. I like a top quality search report and a robust and sensible opinion in the EESR I get from the EPO. The public needs it quick sharp please. After that, my client and I will decide whether to go to issue quick or slow, and the EPO should not interfere. Don't worry how long it takes, to advance from the A1 or A3 to the B publication.

So I think it is unfortunate when EPO Examiners get delusions of grandeur, supposing themselves to be the one and only thing that decides on validity and therefore holding a mandate to spend "as long as it takes" to examine cases one by one, in excruciating detail. Early Certainty from Search is what is needed, both by the Applicant and the public, OK?

Anonymous said...

Old Sad Observer,

Early Certainty from Search is badly named. Early searches are not the only priority, although they are at the top of the list.

Also on the priority list is finishing examinations which have already been started. From my own experience, this is producing results. In the last year or two, I have seen action on numerous old cases. Cases where I last replied to official objections 5, 6, 7 or even 8 years ago, but then nothing more happened until now.

For example, I had an examination report a few days ago, on a case where I replied to the first exam report in 2008. (That was before the current Rule 161 EPC, so the first exam report was simply an invitation to respond to the PCT Written Opinion.)

And no, these are not all cases where the Examiner sees an easy grant. In my example a few days ago, the Examiner makes a new novelty objection, based on a document not discussed in the PCT Written Opinion.

I don't recall "cutting the tail" achieving such results.

Anonymous said...

@MaxDrei: With all due respect etc etc us examiners certainly do know what is patentable. What we don't know is what value or worth any given patent or application has. In fact, there are plenty of indications that applicants rarely know either; blockbuster drugs aside, who knows what someone will pay for a patent?

As for high quality search, it's a matter both of time and of quality input. One wonders whether attorneys are paid according to the traditional going rates for legal scribes of old - by the word. Faced with ever shrinking search times, and ever increasing obscurity, obfuscation, and verbosity in applications, combined with an enormous and increasing amount and availability of prior art, you only need the skilled person, profoundly knowledgeable and improbably dim, to recognise that a vanishing point is rapidly approaching. How can quality even be measured when the system has been so abused by its custodians and users that those tasked with actually doing the work are faced with irreconcilable demands?

Perhaps fees are just far too low ....

And by the way, we're hiring .

MaxDrei said...

I'm delighted to hear back from that anonymous EPO Examiner. I should respond.

Yes, of course the quality of the search rises with the time the searcher is given. It also rises with the quality of search tools given to the searcher. As I understand it, the tools at the EPO are the best in the world. That's why I treasure that EPO search report so highly.

Yes, of course EPO Examiners know what is patentable under the law. That is the triumph of the White Book of DG3 case law and The Guidelines, the best sources of patent law in the world. My point is that an Examiner cannot know all the relevant facts.

Be careful saying that there is no point in search and examination. Many frustrated users of the USPTO advocate a pure registration system, with no examination of patentability whatsoever. Or we could resurrect the pre-1978 UK examination approach: big on clarity and novelty, non-existent on the other points of patentability (leaving those for the court to decide).

Thanks again for your feed-back.

Meldrew said...

Old Sad Observer asked why "cut he tail" was dropped.

Perhaps because the result was an increase in the average age of granted patents?

Old sad man said...

To be kind, I find Max Drei's comments of March 17th at best stupid and preposterous.
As an examiner has said clearly, a representative does know as little as an examiner whether the application he dealing with, will become a nugget, or will end up in the pile of patented technology which never came to the market.
Case law is clear, it is the responsibility of the applicant and/or his representative to decide upon the wording of the claims, so trying to give it more importance is not helping. Successfully patenting is not only a question of drafting claims, it is to start with correctly drafting an application. Badly drafted applications and broadly drafted claims cannot bring correct results be it for search or examination, and it backfires later in opposition and litigation. How many patents go down the drain due to slapdash drafting.... Remember the long term statistic: whilst only 5% of the patents are opposed, in 2/3 of the cases the patent does not come whole out of the procedure. It has either be revoked or maintained in amended form, i.e. with reduced scope. Taking away cases of public prior use which cannot be known by the EPO, prior art turning up could in a vast majority of the cases have been found at the search level. Why this?
Before uttering such unhelpful comments like "delusion of grandeur", the compliment can easily be returned: you have an illusion of grandeur, and not the examiners you are attacking in such a stupid way. Please come down from the pedestal you think you have to lift yourself up, and this without reason.
I beg to disagree with the fact that cut the tail did not achieve correct results. The problem was that it was not applied over the whole of DG1 as it should have been done. Files sleeping for many years were the target of cut the tail. If the result is achieved with ECfS it is good. But the drawback of ECfS is still prima facie to churn out searches as quickly as possible in as little time as possible, and then to focus on started files. We will meet in a few years.....
And certainly when one looks at quick results, cut the tail was not good. Merpel's study is revealing in this respect.

maxdrei said...

When Old Sad is being 'kind' he tells me I am being 'at best stupid and preposterous'. Heaven help me when he stops being kind to me.

Who is he, I wonder. He seems to have a grudge against patent attorneys in general, and in particular with the management at the EPO. Nothing to do with the SUEPO, I hope.

THE US anon said...


I find it odd how you wonder "who he is" in relation to his "being nice to you" and then add in your own seeming ad hominem about how he must have some type of grudge against others - implicitly denigrating WHATEVER he has to say - including his criticism of you.

Across the pond in the US and here as well, I often find your statements - at best - inane and self serving to whatever viewpoint that you want to champion. I would suggest that instead of the quick dismissal, that you read the rest of his post which does NOT evidence the "type of grudge" that you wish to label him with.

(and believe me, his words ARE kind - that's a relative measure - not an absolute one)

Old sad man said...

To reassure Max Drei, I have no grudge against patent attorneys in general. Just against those who think they are better than anybody else, and not only in the present blog. I have met in my life excellent patent attorneys, and I can count them amongst friends, genuine ones, but none has ever reached the level of self-complacency and "I know it better", Max Drei puts to light.

For the rest, it simply by observing carefully how the Office is run by would be managers that one can draw conclusions. Like Merpel did in the present analysis.

Personally, I find it sad to see how the EPO is simply running into the wall, by an ever more quest for short term results, but this is a trend in our modern society, so why should the EPO be different....

To reassure Max Drei, this has nothing to do whatsoever with SUEPO. On the contrary. Whilst I find the sanctions disproportionate, and actually going further than what was decided by the Disciplinary Committees, which certainly not free of influence by the upper management of the EPO, SUEPO as an institution is not as innocent as they may want to look. Nothing to do either with FPEE.
Simply an independent mind.

Anonymous said...


Were you seriously suggesting that DG1 should stay out of the examination of validity (post of 17 March, last two paragraphs)? That DG1 should just do the search and then let you / the applicant decide on the scope of the granted claims?

If so, why does it surprise you to hear "at best stupid and preposterous"? Seems to me that was way too friendly still.

MaxDrei said...

I write anonymously. Only so, do I have the nerve to criticise EPO management.

Of course, anonymous postings can be provocative, and might even be intended to be provocative.

Some readers like an argument. Indeed, that is why they are here. A few readers enjoy taking offence, whenever they find they can. It goes with the forum.

I repeat: Early Certainty from Search is what my clients need and therefore what I want. Put a higher priority on getting the search reports out early. As such, then, ECfS is for me a good initiative from EPO management. Of course, what my clients don't need, and I don't want, is an early but crap search. If searches are to be put out earlier, something else has to be given a lower priority. But ECfS does this, doesn't it?

As endless numbers of people have endlessly repeated in recent months, one cannot have all three of I) top quality ii) timeliness and iii) low cost. A compromise has to be reached. Bad management at the EPO will settle for a bad compromise and market it as a good one. Good management will preserve and enhance the EPO's reputation for a top quality search and not squander it. I know that "certainty" from the EPO search is unattainable, but nevertheless, as close to that as possible is what I would like, and as "early" as possible please, and without any loss of quality please. In this, my experience is that I can rely on EPO Examiners. But can I rely on EPO management? I'm not sure.

THE US anon said...

Your second and third sentences reveal more about you MaxDrei, than you might realize. You do seem to like to throw C R P at the wall just to see what sticks (instead of employing critical thinking).

Provoking offense, and then playing the "victim" game as you do is nothing but internet Tr011ing.

Funny then how you so often accuse me of improper behavior on that other blog.

What a hypocrite.

That aside, yes, the "project management triangle" - the "pick two" - is ever in effect. But that does not and should not stop advances in (gasp) business methods from being applied to the examination process itself.

As to the priority of drivers, well, that is a bit up in the air (even early Lemley was an advocate for less than perfect quality).

I do agree with you that speed at the cost of quality is a poor trade off. I would also shy away from hiking cost as a substitute for obtaining benefit in the other two areas, as "sport of kings" has its own deleterious side effects.

Quality 1
Cost 2
Speed 3

(software and business methods can help in ALL of these areas, by the way ;-) )

Anonymous said...

“EPO’s heartbeat” says…

We are just EPO statistics, created to consume resources and in doing so we produce unreliable facts from reliable figures, because facts are stubborn and statistics are more pliable. Basically the greatest moments are those when you see the result pop up in a graph or in your statistics analysis - that moment you realise you know something no one else does about the EPO’s heartbeat and you get the pleasure of thinking about how to deceive them.

Old sad man said...

To put it once more mildly, Max Drei has discredited himself thoroughly.

Provocation is not what make things move forward. I rather brings in resistance.
If Max Drei feels happy in behaving like this, than let him wallow in his self satisfaction.

I am not sure that I would like to see my company be represented by such a "professional" representative.

Experience also shows that those who are the most vociferous are not necessarily those who get the most respect, simply because they show a total disrespect for other people's opinions.

You made it perfectly clear, that the only thing you want is a search. Fair enough, but that is not just what makes up the patent system. Have you ever thought of this? If society at large think that is what is needed, then let it be. But before a clear debate should take place. Then I would go as far as to say, that unless there is any kind of litigation, why even bother about drafting claims.

That reminds me of an old litigation lawyer who repeatedly said that the patent proprietor discovers the scope of his patent, the day he goes to court. Is this really what you want and advocate?

For instance, I do not think that a search is what is needed by SMEs. They want and need a thorough search and examination, so that they can be confident to keep an edge over competitors, but also that they are not confronted with unduly broad claims which could at a glance endanger their existence.

But do you really think that by increasing production and productivity at the rate requested by the top management of EPO, quality, be it for search and examination, will really improve?

If you think that, you are not only stupid but as well naive. Another reason not to hire you.

Unless I am attacked again by Max Drei, I will not say anything more. I think the point of views are quite clear, and dwelling on the topic will not bring matters forward.

MaxDrei said...

I'm happy that my comments remind Old Sad of:

" old litigation lawyer who repeatedly said that the patent proprietor discovers the scope of his patent, the day he goes to court."

Sadly, that is still the reality, however much Old Sad might wish it were not.

However, as I also wrote, the White Book of case law from DG3 is the jewel in the crown of European patent law. Not DG1 but DG3 decides what is obvious and what is not. From time to time, decisions of opposition divisions get reversed by a Board of Appeal. But because of the Problem and Solution Approach, and the clarity of DG3 thinking on what is meant by the "disclosure" of a document, this is less likely than in other jurisdictions. Long may that remain so. Would that national courts defer more to the jurisprudence in the White Book and the "Established Caselaw of the Boards of Appeal of the EPO". It would help legal certainty in Europe.

But meanwhile, from time to time, national courts do revoke patents upheld by both DG1 and DG3. When advising clients, this then is the reality I have to explain to them. In the end, I'm writing claims that will both cover the infringement and survive all attacks on validity, even after discovery and cross-examination. The claims are no use if they achieve one (of valid and infringed) but not the other. This is the reality, and the squeeze, outside the EPO.

THE US anon said...

The call for "Would that national courts defer more to the jurisprudence in the White Book and the "Established Caselaw of the Boards of Appeal of the EPO". It would help legal certainty in Europe." sounds like a call for stare decisis.

Something that you claim does not work.

The dichotomy in what you post continues without abatement.

Do you even realize this, or is this more of your "be[ing] provocative"...?

Anonymous said...

I must admit that I have only read the last few postings. But what struck me very negatively are the personal attacks on MaxDrei, whereas I cannot see any such personal attacks from him. Not in the last few postings anyway. If he thinks his clients need something, why contradict? May be he has clients with different needs than you have? Also his remark about the decisions of DG3 is not rigid at all. I see it as a call for a more uniform application of the law, so that decisions become more predictable, making the life of a patent agent and the life of the client easier. What is wrong with that? But yes, if you look for some other interpretation, no doubt you'll find it and attacking on the basis of that interpretation is perfectly possible. But is it fair? On top, especially US anon should realise that many posters here do not have English as their mother tongue, or even as their first or second foreign language. I don't know about MaxDrei, but I think reading the postings with a mind willing to understand (as claims are supposedly being read) is a fair and pleasant attitude. Please keep it civil.

Old sad man said...

As my thoughts comments have been misinterpreted once again, I have to say something:

Poor Max Drei,

The more it goes, the more Max Drei shows signs tunnel vision. Sad, very sad.

He is only interested in what he has to say. Other points of view do not seem to touch him in the slightest.....

Nobody has ever disputed that eventually the Boards of Appeal set the standards of patentability, and not DG1. I even doubt that this point has ever been at stake.

For instance, DG 1 has been criticised at length for being too severe with respect to added matter, but this attitude is the result of case law set out by DG3. Whether DG1 and/or applicants/patentee like it or not. What was allowable 10 years ago is not any longer possible, but what is apparently lost on one side (added-matter) is gained on the other side (novelty).

That national courts can revoke patents upheld by DG1 or DG3 should neither be a surprise. They can have a different interpretation of the same criteria or had a different prior art to take into account. This has nothing to do with legal certainty. Absolute certainty will never be achieved, but that's life.

I never claimed that I wish it would not be like the old litigation lawyer said. I leave this to Max Drei. It was a statement of facts of life, how disturbing or disheartening those facts might prima facie be.

The same will happen in future with decisions from the UPC. They might not go along with case law of DG3, but c'est la vie. This is not a reason to despair, but neither a reason to only believe in the result of a search.....

Legal certainty is not at stake, as it will never be achieved. What would be detrimental to the whole patent system is that case law becomes a kind of lottery, or in other words that the results are hap hazard. This is to be avoided at any rate. Be it from national courts or from the DG3 this seems not to be the case, except may be some decisions of the Paris TGI about CII.

That the BGH has a different approach when it comes to added matter is to be accepted, whether one is happy (the proprietor) or not (the opponent/infringer). See BGH X ZR 161/12, Wound treatment device.

That life of a patent actually starts after grant, and not after a search is as well a fact of life. And I take bets that examiners are aware of it.

To close the debate, life is not something that can be put in neat little boxes, and not every situation fits in existing little boxes, as Max Drei would apparently like to see it. For sure it would make things a lot easier, but it is good that it is not like that. This makes out life's rich tapestry.

Dear Max Drei, may be something to reflect upon.

Meldrew said...

Old Sad Man,

Please don't make me think your non de plume should be Old Bitter Man.

Max Drei is making perfectly sensible comments that are being twisted and attacked.

Your comment that "not every situation fits in existing little boxes" applies just as well to your views of what SME's need. Not all SMEs need the same thing and applying one recipe to all will not provide best service to each SME.

However, ECfS is meant to apply resource at the "product" the majority of users have said they value most: a prompt and high quality search. Of course, if ECfS prejudices the quality of the search, that would be a problem, but frankly, I am giving ECfS the benefit of the doubt at present.

Perhaps you should read posts for what they say, not for what you fear they say?

Old sad man said...

To reassure Meldrew, I am anything but bitter. Simply sad to see how the EPO is going into the wall.

I can certainly read posts for what they say, but I have the freedom to think what I am thinking, and free to say what I am thinking.

I am deeply convinced that a good examination cannot be based on a shoddy search. I am simply questioning the fact that an increase in production/productivity as claimed by the higher spheres of the EPO can be achieved in maintaining the quality standard that made the reputation of the EPO. No more no less. To be clear I am not convinced that it is possible.

You find EfCS wonderful, and nothing should withhold you from this belief. I have, in view of the above a different opinion.

I just want, once again, to make clear that contrary to what has been insinuated by Max Drei,I have no links whatsoever with SUEPO, FPEE or the like.

If I read correctly, the US Anon has similar problems with Max Drei as I have.

May be we should leave it at that: we agree to disagree.

donald trump said...

Max Drei is making perfectly sensible comments that are being twisted and attacked.

It does not seem very sensible to me to complain about DG1 doing its work, i.e. performing substantive examination and deciding on validity in addition to carrying out searches.

I quote:
"And who does not decide on validity? DG1. I like a top quality search report and a robust and sensible opinion in the EESR I get from the EPO. The public needs it quick sharp please. After that, my client and I will decide whether to go to issue quick or slow, and the EPO should not interfere."
"So I think it is unfortunate when EPO Examiners get delusions of grandeur, supposing themselves to be the one and only thing that decides on validity"

Who is deluded here?

Sure, he finished that last sentence by arguing that there is no excuse for DG1 to spend "as long as it takes" (at the same time objecting to examination of cases "one by one"... duh?). Of course DG1 cannot take forever, but DG1 is certainly obliged to decide on validity. A patent that leaves DG1 is not guaranteed to be immune against further attacks, but at least DG1 will have seen to it that its scope correponds in a first approximation to what the applicant is entitled to. Or at least, that's what DG1 is for.

DG3 has little to do with all of this. DG3 is only the review instance for DG1 decisions. DG3 possesses no power that DG1 lacks.

Of course one could think of a registration system supplemented by commercial search services instead of an examination system, but that is not the system we have. If you want such a system, ask your politicians for one.

... the majority of users have said...
Was the public asked?

Now, I don't think ECfS is necessarily a bad idea. If you lack the capacity to do examination in time and are not willing to increase it, then at least get those searches out. But what if this is taken to its logical conclusion? Well, the "users', or at least attorneys, are unlikely to ask for that.

Meldrew said...


Well chosen nom de plume. You write as much sense as he speaks.

To quote Max Drei

"Yes, of course the quality of the search rises with the time the searcher is given. It also rises with the quality of search tools given to the searcher. As I understand it, the tools at the EPO are the best in the world. That's why I treasure that EPO search report so highly.

Yes, of course EPO Examiners know what is patentable under the law. That is the triumph of the White Book of DG3 case law and The Guidelines, the best sources of patent law in the world. My point is that an Examiner cannot know all the relevant facts"

Your approach of picking one passage from a document and drawing an adverse conclusion without reading adjacent passages that lead to the opposite conclusion seems reminiscent of some Examiner's approach to the Guidelines. While the quality of search at the EPO is admired, the quality of examination is not so universally praised.

And no, I don't want a registration system - I want one that gives the public what they want - and the public are the best people to judge that, not civil servants.

The problem many saw was examiners never getting to a view on validity - because the applicant had lost the will to live -ECfS at least gives the hope of some response during patent lifetime.

So get a grip.

donald trump said...

Meldrew, thank you for your kind words.

My post above is self-contained. I take issue with the passages I quoted, not with those I did not. But since you are not actually contesting or even addressing anything I wrote, nor arguing that the passages I quoted say something else than what is in them, we must be in agreement.

The registration system is what MaxDrei, not you, seemed to ask for (see those quotes). The "who is deluded" refers back to "delusions of grandeur". You may well have missed that, as you did not actually respond to what I wrote.

The problem many saw was examiners never getting to a view on validity - because the applicant had lost the will to live -ECfS at least gives the hope of some response during patent lifetime.

Search opinions have been issued together with the search report since 2005 or so. ECfS only ensures that the search report is issued quickly. As far as I'm aware there have never been many cases of applications being withdrawn before the search report was issued. That is not to say that timely search reports are not important. Clearly they are.

MaxDrei said...

In response to, and thanks for, all the remarks, I feel I should write something.

I started in the UK before the EPC got going. In those days the UK Patent Office was strict on novelty and clarity but did not try to judge obviousness. It was felt that Applicant should be allowed his "day in court" and that obviousness was too difficult to decide in ex parte examination. It seems that I'm a victim of my years of training in the profession. I still think obviousness can only be tested properly in inter partes proceedings.

Nevertheless, with the EPO's brilliant search tools, and with correct application of the objective and fair "Problem and Solution Approach", obviousness can these days be examined realistically by the ED, ex parte at the EPO, and blatently obvious matter thrown out with a Minimum of effort. On less obvious matter, I welcome the debate with the ED, so the EPO file can reveal to Readers why the Claim is not obvious. I welcome the filter and I welcome the presumption of validity that claims have when they issue from the EPO. Nevertheless, even when they issue, we still do not know for sure that they are invulnerable to any attack under Art 56, EPC. Examiners examine, object and refuse but they don't decide how much scope to hand out to the Applicant. Perhaps if they stuck to their statutory task there would be fewer Appeals from the ED to DG3 and fewer reversals of decisions by an ED?

On the European mainland and in Asia, the prevailing relationship between representatives and Patent Office Examiners seems to me to be something like "Please Sir, what will you give me?". By contrast, the relationship with representatives in English law countries is more like "Here's what I would like. Can you examine this, please, and tell me if you think it offends any provision of the EPC?"

The way the EPC is written, the task of the ED is to examine whether the Applicant's Request offends any provision of the EPC and the Regs. If not, then because the Task of the EPO is to grant patents, the ED should allow, and the EPO should grant. I hope we all agree that the tasks of the ED do not include writing the claims but that it is helpful for Applicant and a boon for efficiency when the Examiner includes in a Communication (whenever possible) an indication of what would be allowable.

That the claim strikes the Examiner as "too broad" is no reason to object to the application. No string of words was ever 100% clear, so objections under Art 84 EPC can be continued indefinitely, if the ED is so minded. Just because the Examiner has a gut feeling that the claim is wider than the contribution to the art justifies is not a good enough reason to refuse the application or raise yet another point of clarity. I remember long ago, trying to get a Notice of Allowance out of the Patent Office in Moscow. No matter what we filed, there was always another objection, and another. The Examiner was happy. He had work to do. His employer was happy. There was a continuing inflow of lovely US dollars. With my provocative "delusions of grandeur" remark, I was thinking of such Examiners and the role of Art 84 EPC in the the "Bermuda Triangle" of objections at the EPO.

Some EPO Examiners might see it as indispensible, that the ED's scrutiny of patentability is exhaustive. But nobody is indispensible. Think: what if the users are telling the (French) EPO President, as he jets round the world, that he should save money and time by concentrating on the search and shift towards the practice of the French national Patent Office, of issuing an opinion on patentability and then leaving it to Applicant to decide what claims to take to grant. What if the AC rubber stamps a plan to execute that shift? What will the Examiners do? Feel sad, I suppose.

Has it come to that yet? I hope not. If it has, I would feel sad too.

Meldrew said...

Donald Trump

"As far as I'm aware there have never been many cases of applications being withdrawn before the search report was issued"

Then you need to get out more.

Withdrawal before search is very common, particularly when the search is the supplementary search. The introduction of ECfS will reduce the incidence of such withdrawals, but there will still be a few. Of course, the absence of usable EPO statistics makes it difficult to see what is going on.

MaxDrei said...

Let nobody tell you that Europe's patent system is dysfunctional. If you want to see something that really is dysfunctional, follow the Link below, and scroll to the comment thread at #15.

As the last commenter in that thread observes, at, the Patent Office grants patents on ineligible subject matter, and then itself revokes them as ineligible, on demand from a third party:

Three cheers for the stabilising effect on patent law in Europe, of the enormous accumulated specialist wisdom of the Enlarged Board of Appeal of the EPO. Long may it reign.

Eine gewisse Demut ist angesagt said...

The EPO has a unique position in juridical terms. It is just an administrative body tasked with taking administrative decisions - but with no judicial oversight. This wouldn't be tolerated in any other branch of public administration I can think of, and it surprises me that the member states continue to connive in maintaining the conceit of a fair and thorough patent granting system.

Because it isn't fair, and it certainly isn't thorough.

It's not fair, because the process can result in applicants being denied a patent which would be upheld as valid in a court of law. There is no mechanism for detecting, let alone righting, such injustices.

And it's certainly not thorough. Most EPO examiners and BoA members have no concept of what a thorough analysis is like. How could they? Unless you have experienced the rigour of a multi-million euro invalidity or infringement suit, you probably think that the EPO procedure is pretty nifty. It isn't. At best, it's a good first approximation, but not more than that.

anonymous attorney said...

@eine gewisse Demut:

Are your comments based on a thorough analysis?
My experience (and the generally taken view) is rather that on average the analysis of BoA is more accurate and consistent than what you may get from national courts.
Of course there are exceptions such as your multimillion infringement suit (I am not sure as to what you mean as multimillion invalidity).
I sincerely hope that the UPC will reach the same standards as the BoA

MaxDrei said...

The commentator eine gewisse Demut has an axe to grind, and would do well to confer with members of national judiciaries who have served on the EPO's Enlarged Board of Appeal. Sir Robin Jacob, for example. For him, there is no doubt that the necessary GATT-TRIPS-compliant judicial supervisory function for the administrative work of the EPO is delivered by DG3.

Eine gewisse Demut ist angesagt said...

...on average the analysis of BoA is more accurate and consistent than what you may get from national courts

True, but this is not the point I was making. The point is that the system is lopsided. The owner of a granted patent has full access to the legal process, while the owner of a refused application has none. Nobody can tell you how big this lopsidedness is, because there is no way of measuring it. It's just an inherent feature of the EPC.

...would do well to confer with members of national judiciaries who have served on the EPO's Enlarged Board of Appeal. Sir Robin Jacob, for example.

The quality of DG3 decisions is again not the point. The point is that their positive decisions are regularly tested in court, whereas their negative decisions are not. Incidentally, Sir Robin Jacob has written and spoken often about the lopsidedness problem.

MaxDrei said...

Ah! So that's your point, Demut. A lack of symmetry. If the Technical Board of Appeal finds your issued patent (or patent application pending at the EPO) devoid of merit, you die without recourse to a Supreme Court of a contracting EPC State. Whereas, if you don't get wiped out by DG3, you can go on asserting your rights all the way to the Supreme Court in each of 38 EPC Member States.

Perhaps not coincidentally, we see currently a huge ruckus about whether the USPTO can revoke patents it already issued. Does that lie heavy on your mind too?

But GATT-TRIPS promises a judicial review of an administrative decision and that's what you get at the EPO. If you don't like it, you can shun the EPO and file your patent application country by country.

I fully understand the grief of a patent practitioner who thought that the claim he drafted was good enough for the BGH and is outraged when DG3 revokes his client's patent and the client demands to know why he is left empty-handed and deeply out of pocket. But that's because the BGH chooses to paddle its own canoe up a different creek from the one defined by the established case law of the Boards of Appeal, which every other Member State finds persuasive.

Or are you from England, and outraged that the EPO does obviousness differently than in England?

Childishly crying "It isn't fair" though, that doesn't cut the mustard, sorry.

I'm curious though, what justifies your assertion that at the EPO thoroughness is lacking. I presume you hanker after full discovery, like the USA still does but which has been done away with in patent litigation in England. Of course, adversarial English legal procedure is big on cross-examination of witness evidence. If you were to argue that fact-finding is more rigorous under English law than under the civil law procedures used everywhere in the world, I would agree with you. But please don't write off the EPO as "not thorough" because it does fact-finding like everywhere else in the world except the English common law countries. If there is any thoroughness lacking at the EPO, it is amongst the profession of representatives, who prepare their cases as if for a home fixture, in line with their particular domestic jurisdiction, and not thoroughly enough in line with an away fixture with the Rules of the Game as practised on the turf in Munich. The judges can only play what's put on the table for them to consider.

I am reminded of the excuse every politician offers when losing an election: A communication failure, it was. We were not quite imaginative and creative enough, to get our winning message across to the voters.

But reply, do. What do you mean by "not thorough enough"? Are those guys in DG3 just not reading your stuff thoroughly enough for your liking?

anonymous attorney said...

@eine gewisse Demut:

I apologize, I thought that your point was about the quality of the BoA decisions.

Now that I understood you better it seems that the difference is that I consider the BoA as a court and you don´t.
If however you take my position the system is lopsided as any other national system. Also there, once you get a refusal and go through all the available court levels, the final decision can be challenged in case of a positive decision in nullity proceedings but cannot be further challenged in case of a negative decision.

Or maybe the point is that in the EPC the number of available instances is rather reduced, because the BoA are already the final one. But I am not sure whether the users would like a different situation.

Eine gewisse Demut ist angesagt said...

@anon Attorney:

The quality of BoA decisions is probably the best that's possible under the circumstances.

You're right. The number of instances is reduced by at least two in the case of a negative BoA decision.

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