We're listening, say the EPO

The European Patent Office has launched a new web-based consultation platform for proposed changes to European patent law and practice, as announced here.

How it works

The EPO will publish on its website preliminary drafts of proposed amendments to European patent law and practice, such as major changes to the Implementing Regulations to the European Patent Convention (EPC), to the Rules relating to Fees or to examination practice. 

Like a serval on the Serengeti,
the EPO is listening intently
The public will then be invited to submit comments on these drafts, and (we are assured) all responses will be analysed carefully. The EPO says that by opening up the process to the public, they aim to increase transparency, and, ultimately, enhance the usefulness of changes for users of the patent system. 

You can be alerted to any new consultations by filling in a form, which you can access here. The EPO warns:
Please note that your submission may be subject to publication or disclosure. If you do not want your name, your submission or an extract of it to be made public or disclosed, please state this clearly in your submission. Anonymous submissions will not be considered.
What happens in this regard is not entirely clear, as the EPO does not specify which submissions will in fact be published or how they will decide on requests not to publish a submission, or indeed whether consideration will be given to submissions which have been submitted subject to a non-publication request to which the EPO does not want to adhere.

First consultation: failure to file a translation of priority document

The first consultation has already been launched: a proposed amendment of Rule 53(3) EPC, which runs until 20 January 2012. As it currently stands, Rule 53(3) authorises the EPO to invite the applicant to supply a translation of the priority document (if this is not in English, French or German) where the priority claim is relevant to patentability, but does not provide a sanction if the applicant does not supply the translation. 

It is proposed to amend Rule 53(3) by adding the following sentence:

If a requested translation is not filed in due time, the right of priority for the European patent application or for the European patent shall be lost. The applicant for or proprietor of the European patent shall be informed accordingly.

Further processing will be available in the event that this sanction is applied. Let the EPO know what you think by visiting the consultation page.

The IPKat welcomes this new development, but wonders what happens if the responses are predominantly opposed to a future proposed change? The EPO's announcement is silent on what the process is following the closing of the consultation period.

Indeed, there was a great deal of opposition to the Rule 36 changes (setting a two year cut-off for filing divisionals) which, despite being clearly and indeed vociferously expressed, were largely ignored by the powers that be. Let's wait and see and in the meantime, the IPKat urges its readers to give the EPO the benefit of their expertise in the first of these consultations.

Merpel says: another way to get some real engagement from users would be to allow them to set the agenda by submitting their own proposals for rule changes? Maybe start with some implementing regulations to dictate how Article 123 is to be applied during examination? Would the EPO have any interest in rolling back the expansion of this seemingly innocuous prohibition on added subject-matter if that was the desire of the vast majority, one wonders? This provision has been transformed (by case law and not by any legislative change) into a restriction against perfectly sensible amendments which, in the early days, would not have even raised the eyebrow of even the most sceptical and stringent examiner? All other suggestions for subversive rule changes to merpel.mckitten@gmail.com (who may even publish the best ones, anonymously of course), or in the comments below.
We're listening, say the EPO We're listening, say the EPO Reviewed by David Brophy on Friday, December 16, 2011 Rating: 5


  1. Perhaps a rule clarifying what is meant by technical character of a claim. That should keep them busy for a while

  2. Unfortunately, how Article 123(2) EPC is applied in examination (and, let's not forget it, opposition as well) has largely been determined by the Boards of Appeal, which are certainly not going to listen to users or anybody else for that matter. Especially since they were themselves one-upped by the Patents Court in London in the DSS vs. ECB case.

    This said, I agree that some examiners are using Art. 123(2) to get rid of any amendments which do not literally correspond to wording in the application as filed, or even specifically to the claims of the application as filed. IMHO, the quality department should start falling on those examiners like a ton of bricks.

  3. It is to some degree understandable that extreme care is taken in examination proceedings when examining features which have been added to claims for compliance with Art.123(2). Examiners are very acutely aware of the Art.123(2)/(3) trap and try to avoid this. This may entail a more conservative approach to assessing added matter, but it is in the patent proprietor's interest to avoid this trap, in particular since it exists both for opposition proceedings at the EPO and nullification proceedings before the courts of the EPO member states (Art.138(1)(c) and (d)).

    Furthermore, the standard of proof generally applied by the Boards of Appeal in assessing compliance with Art.123(2) is that of "beyond a reasonable doubt" (see for example T383/88, T581/91 and T752/92 and also the EPO case law book 6th Edition 2010, section 3.E, page 371). This also explains the conservative approach by the departments of the first instance.

    The making of amendments is only subject to regulation in as far as it relates to establishing the content of the application as filed (which is because Art.80 refers to the implementing regulations, whereas Art.123(2) and (3) do not) and with regard to admissibility of amendments, since Art.123(1) does refer to the implementing regulations. Indeed the issue of admissibility of amendments was modified by the changes to Rule 137 which entered into force on 01.April last year. Once the content of the application as filed is established by the filing under Art.80 and Rule 40, Art.123(2) then takes over and does not appear to be subject to any form of regulatory mitigation. However, if any readers have any ideas how this might be achieved, I would be very interested to hear of them.

  4. Nothing wrong with the applicaiton of Art. 123(2). It is only those of an 'older' gerneration who have a problem, because they were used to getting away with so much in the past, particularly under national systems.

    The development of the law of novelty is as equally culpable as that for Art. 122, but we don't see much moaning from patentees there, do we? "Dear Examiner, my claim is novel because that amazing piece of prior art does not disclose the comma in the equivalent sentence....."

    I'd be interested in any details for recent cases covering basis for a claim based on a drawing?

    Any public consultation process is probably just a quick and easy way for the EPO to determine whether they've missed something obvious. I doubt thye have any regard for the interest of patentees as demonstarted by recent rule changes designed to make life easier for the EPO and to help with their statistics. They have taken that step over the precipice and are on a fast, slippery, downhill slope unfortunately.

    As OHIM changed its name to IMHO becuause of recent EJUCECUJ changes?

  5. I agree with the comments above, on Art 123(2). Has Merpel ever given an infgringement clearance opinion on a WO publication? Only the severity of Art 123(2) allows any level of confidence about what valid claims might ultimately go to issue on the WO (or an EPO divisional out of it). How much is that level of legal certainty worth, in this ever-faster-to-market and ever more litigious world.

    The pity is, there was no need for the politically imposed, controversial and inflexible 24 month cap on divisionals, given the severity of Art 123(2) EPC. You can tell from the WO alone, whether your product in development will be done for infringement of the claims of that 4th generation divisional.


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