Neither democracy nor constitution: is it time to rein in EPO rule-making?

A thoughtful and highly respected member of the patent profession in Europe has contacted the IPKat in the hope of stirring up some constructive thinking on a matter of great importance for patent attorneys and their clients alike. He writes:
"The European Patent Office (EPO) brought heartache to most practitioners with its recent rule changes relating to the filing of divisional patent applications. According to Rule 36 EPC, brought in on 1 April 2010 [on which see earlier IPKat discussions here, here, here, here, here, here and here], divisionals must be filed within two years from a non-unity objection or from the first communication from the Examining Division. Apart from significantly reducing the time period for filing divisionals this has introduced real docketing headaches for many firms and engendered the usual large-number-of-zero hand-waving estimates of the true cost to business of recomputing thousands of dates. But at least everyone thought they roughly knew what the EPO meant.

It transpired subsequently however, that this was an incorrect assumption because the EPO itself does not know what it meant. In particular, what is a "communication from the Examining Division", one of the trigger points? In all the hundreds of pages of analysis produced before the Rule changes came into force, there seemed to be a perfectly held understanding that this actually meant an Examination Report. So confusion and consternation took over when somebody noticed that the EPO is issuing other communications marked "from the Examining Division". The communication in question is the communication Rule 161/162 EPC which comes out just after you've entered the European Regional Phase and much earlier than your average Examination Report. What does this mean? Is the divisional filing period even more curtailed? Do we have to recompute all of our dates again at a cost of another 50 billion pounds/dollars/euros/yen?

Concerns were raised with the EPO, which responded by issuing a notice confirming that the Examining Division was entitled to issue communications under Rule 161. This had not really been the point of the concern raised. More concerns were raised and this time the EPO amended the Guidelines to indicate that, of course, the reference to a communication from the Examination Division in Rule 36 didn't mean any communication from the Examining Division, just certain ones. Legal purists were quick to jump on the fact a rule is a rule and a guideline is a guideline and it appears that the EPO may have now accepted this fine point and are discussing potential rule changes at the moment.

What a relief. The entire European profession was at risk of losing a huge range of rights as and when the Board of Appeal decided to exercise its right to ignore the Guidelines, and the private practice segment was going to have to increase their insurance premiums beyond all recognition. This a particularly nasty example of the law of unintended consequences but it raises a more significant point. Since the EPO under EPC 2000 enabled itself to amend rules with minimum fuss via the Administrative Council, and given the Administrative Council is unlikely ever to do anything other than approve a rule change proposed by the EPO, how can we stop things like this happening all the time? Although the EPO has EPI representation on its Working Party on Rules, it is fair to say that the EPO does not consult widely and often leaves very little time for third parties to comment. So we have an organisation which purports to achieve change by democratic consensus but which now is effectively able to change its own rules without proper recourse to its constituency.
Right: consultation need not be painful and can even lead to peace ...
The debacle over Rule 36 demonstrates that this approach is failing. There must be more consultation and time. We know that some perfectly decent democracies can exist without a constitution, but at the moment the EPO seems to have neither democracy nor constitution. Is it time that both of those changed?"
You can view the Guidelines amendments here.

The IPKat is a great admirer of the EPO and all that it has done in the relatively short time it has been around. He is however highly sympathatic to the need to consult those skilled professionals who make the system work not just as an administrative concept but as a means of bringing real inventions within the scope of meaningful and affordable protection in a mean, competitive world. What do his readers think?
Neither democracy nor constitution: is it time to rein in EPO rule-making? Neither democracy nor constitution: is it time to rein in EPO rule-making? Reviewed by Jeremy on Thursday, June 24, 2010 Rating: 5


  1. Frankly, I am still wondering what the real background of this new provision is.

    Legal certainty? That may be a valid one; if your competitor keeps on filing divisionals just before the grant for yet another divisional you never really know what is going to happen.
    On the other hand: what happens if you get an objection for non-unity that applicant (and representative, of course) considers unfounded? For example because the examiner overlooked a relation between the two independent product claims? (plug-socket, you know what I mean) You provide arguments and you wait. Because you prefer to limit costs for your client (or your company). And what now if the examiner does not provide another communication under Article 94(3) within two years from the previous one? Do you have to file a precautionary divisional application that will incur several thousands of euros of cost for your client?
    That is not legal certainty.

    Efficiency? That seems odd. In my opinion, divisional applications, in particular with just minor differences with respect to the parent, should be cases to be dealt with very efficiently as the examiner is already familiar with the subject matter.

    The transitional issues will go away - in the end. But the issues above will remain: legal uncertainty and increased cost. And I sincerely wonder whether they have been taken into account by the EPO.

    I know the EPO as a generally customer-oriented organisation in my everyday work.
    But I also get a growing feeling that certain measures are being put in place because the EPO certain things shouldn't be possible. Filing an unlimited amount of divisionals, scope of protection of those divisionals, patenting something that has even the lightest scent of a business method (even though technical means are involved).

    With all respect to the EPI (of which I am a proud member as well), it might also be a good idea if the EPO got in touch with etrepreneurs on what impact rules changes and changes of other policies could have on their work.

    Because they are, in the end, the actual customers of the EPO. We - EPI members - represent our clients well and confer their needs to the EPO, but perhaps direct contact may open certain eyes.

  2. "Since the EPO under EPC 2000 enabled itself to amend rules with minimum fuss via the Administrative Council, ..." is not correct - the Admin COuncil always had the authority to modify the implementing regulations. What has changed with EPC 2000 is that much of what was previously contained in the Articles, which can only be modified by a diplomatic conference, is now contained in the Rules.
    And as to "the law of unintended consequences" - perhaps one should refrain from jumping to conclusions ...

  3. With the coming into force of the EPC-2000, many EPC procedures were made less onerous for users of the system.

    For instance, further processing and re-establishment of rights were made available for non-payment of the filing, search, designation and examination fees. These were previously excluded from both. Although under EPC_1973, these were subject to grace periods under old Rule 85a and 85b, these grace periods were not themselves subject to re-establishment which the period for further processing now is - see E-VIII, 2.2.1. Consequently, much more chances of remedying errors exist under the amended Convention.

    In addition, the period for requesting re-establishment for non-payment of renewal fees was extended by six months (the six month period for late payment under Art. 86(2) is no longer deducted from the one year for re-establishment under Art. 122).

    Still further, further processing was made available for partial losses of rights e.g. loss of the priority for non provision of a translation, loss of designations (although no longer applicable because of the new unitary designation fee, this applied until 1 April 2009).

    Late introduction or correction of a priority claim was also introduced into the regulatory part of the EPC (Rule 52), whereas previously this was based on case law rather than on statutory provisions and so is now a right guaranteed by the EPC, rather than by a case law interpretation which might change.

    Other useful procedures were also instigated such as filing by reference and late filing of missing parts of the application.

    These changes were introduced in order to make the EPC compliant with the PLT and to harmonise it with PCT practices.

    Indeed the EPC-2000 changes were introduced in such a way that if applicants continued to prosecute their cases as they had previously done under the EPC_1973, they would not risk losing any rights during the transition from the old system to the new one.

  4. In answer to Anonymous @ 9:56:00:

    That is correct, EPC 2000 as it came into force made things easier - but that cannot be said of subsequent rule changes discussed here ...

  5. Anonymous 8:21:00 AM:

    "What has changed with EPC 2000 is that much of what was previously contained in the Articles, which can only be modified by a diplomatic conference, is now contained in the Rules."

    And that is not necessarily a bad thing. Before you know it, a diplomatic conference is really needed and the EPO and representatives are stuck with two additional languages and we will be in the same tower of Babel as the EU. (because certain countries have indicated to block EPC changes unless their languages will become official languages as well)

  6. 1. The EPO guidelines explicitly state " the guidelines do not constitute legal provisions" See "General part - 4 para. 3.2 [this is the part which precedes Part A that most people overlook].

    2. The legal basis for the EPO's existence is Art. 19 Paris, and the EPO's procedures must comply with Paris : confirmed in J15/80 para 7, noting the requirement of Art.19 "... insofar as it does not contravene the provisions of that (Sic) convention." [ i.e. Paris].

    3. While the EPO have virtually combined search and examination under BEST, the EPC still divides the procedure into two distinct phases. Examination can only take place after examination has been requested and the exam fee paid. (Art 94). Anything done before this is not "examination" since it has not been done by the Examining division. The Examining division is the only department authorised to perform examinations (Art 18).

    4. Under the law of the member states, a divisional application is a completely independent application. Divisional status is conceptually merely another form of priority right to prevent publication of the parent from being prior art against the divisional.

    5. Art 4a (1) Paris provides that an applicant may divide out if examination ***of the application*** reveals that it contains more than one invention. This must surely only refer to the (divisional) application per se: actions that may have taken place on the parent are therefore irrelevant to the applicability of Art 4a(1) Paris to a lack of unity objection raised against the claims of a divisional application. Thus if Rule 36(1)(b) EPC purports to deny an applicant the right to file a divisional due to the expiry of a time limit that was determined by the raising of an objection in the (legally independent) parent application, then this is arguably ultra vires Art 4(a)(10 Paris.

  7. Looking forward to MaxDrei's comments on this condition.

  8. @Anonymous 1:01pm

    Art.4G(1) Paris Convention provides that "If the examination reveals that an application for a patent contains more than one invention, the applicant may divide the application into a certain number of divisional applications".

    Perhaps the EPO considers zero to be a valid number? (or even a valid "certain" number, whatever one of those may be) Queue philosophical debates amongst EPO mathematicians.

  9. At Anonymous 1:01:00 -

    I would not understand Art. 4 G as giving applicants the absolute right to divide an application *under any circumstances*. Formal requirements and time limits already exist in the EPC (fees must be paid, must be filed in the right place, must be filed while application is pending etc.), how is a two year time limit any different?

    ps it is clever how everyone manages to comment at precise minutes... overzealous precision, perhaps?

  10. Another example of the less than optimal functioning of the EPO democracy.

    The shackles of Rule 36(1)(a) and (b) where put in place to stop illegitimate filing of divisionals. The Enlarged Board of Appeal regards sequences of divisionals with the same broad disclosure and pending for up to twenty years 'unsatisfactory' (G1/05, reason 13.5). The EPO does not regard as illegitimate the filing of a divisional as safety measure just before oral proceedings or the filing of a divisional for claims the EPO objects to while proceeding to grant with allowable claims in the parent. The new Rule 36(1) has effectively stopped the filing of sequences of divisionals but has also made the legitimate use of divisionals almost impossible.

    The legal directorate of the EPO has made an effort to provide more freedom under Rule 36 and permit legitimate filing of divisionals by proposing a new Rule 36(1)(c), giving the examiner the discretion to allow filing of a divisional. The proposal was voted down in the Administrative Council by a large majority.

    This gives the impression that the EPO democracy is restricted to the EPO and the national patent offices represented in the Administrative Council (see Article 26(1) EPC). The distance between the Administrative Council and the users of the EPC appears to be too large to avoid an overreaction of the Administrative Council on the very few applicants that file sequences of divisionals (75 filings of third and higher generation divisionals versus 150.000 first applications annually).

    The amendment of Rule 36 EPC clearly shows that more input of users of the EPC is required in the decision making process of the EPO to keep the system workable.

  11. Somebody wanted a comment from me. In haste, here goes.

    The AC is destroying the fine work of the professionals in the EPO. And what else would one expect, given that the members of the AC are reprsentatives of the EPO's competitors?

    Of course the users watching the prosecution through the EPO of the applns of their competitors need some protection against the abusive filing of essentially the same claims, in endless cascades of divisionals. But the means to control this abuse were always there. The Dutch and English courts have no problem with it, and nor do Dg1 and DG3 if only they had consistently used the legal tools that were always available to them. There was no need for the 2 year cap. It was politically inspired. The Americans were doing something like it in the USPTO and the AC members thought they could be even more macho than the Yanks. Poor deluded things: they just look more and more incompetent to be running the EPO.

  12. @anon of 9:29AM:
    The Anonymous of 1:01 might have a valid point. A divisional filed near the end of the 2-year period can only be further divided within the remainder of that same 2-year period, and this might indeed restrict the applicant's right laid down in Art. 4G(1) too much. (At first I thought Art. 4G(1) simply does not apply to a "divisional application", but after thinking about it some more I have to agree that "application" in Art. 4G(1) covers any application under the law of the member states, including divisional applications.)

    It would mean that, since Art. 76(1) must be interpreted in a way that is compatible with the Paris Convention, the AC's amendment to R. 36(1) conflicts with Art. 76(1) and is therefore ultra vires (or simply must be ignored, Art. 164(2)).

    It'll probably take a couple of years for this issue to reach the EBA.


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