The Hitchhiker's Guide to the EPO?

The IPKat practising the precept of "don't panic"

The European Patent Office's Handbook of Quality Procedures is not quite the Hitchhiker's Guide to the Galaxy (motto: Don't panic!"), but they have some elements in common.  For example, (i) neither is binding; (ii) both have to be read several times in order to appreciate their subtleties, (iii) each provides a somewhat quirky reflection on the interrelationships of individuals with systems which they can influence but not control and (iv) readers find different bits funny.  For these reasons and more, the IPKat's friend and patent enthusiast Gwilym Roberts (Kilburn & Strode LLP) has revisited the Handbook which, like the Galaxy itself, is in a state of constant change.  This is what he has to say:

Following the earlier Katcalls (see Darren here and David here) about the European Patent Office's new "Handbook of Quality Procedures before the EPO", a couple of other themes merit commentary as it highlights several areas where the EPO is working towards some fairly crucial revisions in it -- some practical, as well as other interesting stuff. As the Chartered Institute of Patent Attorneys' (CIPA's) European Patent Liaison Committee (EPLC) is hoping to raise related points with the EPO it seems timely to look at the Handbook again.

The Handbook of Quality Procedures before the EPO came out in February after a brief, mysterious disappearance and is very clearly prefaced with the caveat that is it not binding on the EPO or users, cannot be quoted in communications between the EPO and its users and that it carries no sanction if departed from. Nonetheless the level of collaboration between the European Patent Institute (epi), Business Europe and the EPO is clear and the document, while sometimes thought-provoking, is well written, fair and worth a read. In particular its handling of dealings with the Examining and Opposition Divisions, both in writing and at hearings sounds reassuringly familiar, and it would seem that the EPO is adhering very closely to the approaches it suggests in the handbook. 

There are one or two segments in the handbook which are worth commenting on a little further.

Form and Content of the European Application

Very reasonably the EPO does not go in great detail into the substantive requirements for a European application, as this is entirely the wrong forum. However it does provide one interesting piece of guidance which is likely to run rather contrary to best practice and to cause haemorrhages in US litigators, relating to the discussion of the prior art. In particular the EPO states that "after the section referring to the relevant prior art, it is helpful to state...":

1. Listing the features the closest prior art shares with the application in the light of the closest prior art known to the applicant;

2. Listing the features of the invention that define a contribution that the claimed invention considered as a whole makes over the prior art; and

3. Elaborating on the problem those features solve.

From the US we see an increasing tendency to give extremely limited or no discussion of prior art and certainly no indication of problems that could be addressed. Sometimes this is because one doesn't want to give too much away but often it is because of the general concern about admissions and their effect on subsequent court cases in the US. The level of detail suggested by the EPO would be anathema to the US practitioner.

Even from the European point of view, however, the request from the EPO seems unrealistic. First, how often does patentability depend on the prior art disclosed in the application itself? In practice almost invariably the problems arise with later-discovered prior art, typically from the search report. So going into this level of detail based on prior art unlikely to form the basis of later objections seems unnecessary. From a best practice point of view, it is essential to make sure that all of the advantages, improvements, benefits and solutions provided by features are derivable (preferably explicitly) from the application as filed so as to form a legitimate basis for an inventive step argument later on. But this certainly does not need to be in the prior art section, nor explicitly in problem-solution wording, to meet the requirements of the EPC (and probably form a good basis for arguments in most other jurisdictions as well). Luckily, the handbook is not binding, as is explicitly stated in the introductory part, but one wonders whether the EPO weakens other portions of the handbook by being quite so unrealistic here.

Essential reading for every EPO examiner

Another interesting aspect is just how much prior art should be cited. We know that the assessment of patentability contains an inescapable element of hindsight in that the search is performed with a knowledge of the invention such that the almost endless shoal of prior art that would have been available to the nominal skilled person at the priority date is significantly filtered down to a few key documents. While the invention might have been very difficult to find, based on poring through thousands of documents to find two or three key teachings, it always seems more simple when the skilled person is deemed to have only had 2 or 3 documents in front of him which, between them, contained the relevant elements.

My own approach has tended to be to discuss the prior art enough to set the general background and then to concentrate on the closest document my inventors have found, very much mirroring the initial steps of the problem-solution approach. Certainly I have never seen it as the role of the introductory section to indicate other prior art documents which might fill in the gaps as this is very much hindsight-based, and an unfair representation of the state of the art that was realistically faced by the inventor.

Fortunately the EPO appears to take a similar line and we can do no better than to recite explicitly the relevant passage from the handbook:

Prior Art:


There is no need to list all the prior art of which the applicant is aware. Citing only documents that are really pertinent to the invention, e.g. documents that disclose the features recited in the preamble of the independent claim(s), will enable the examiner to carry out a more efficient search and examination.

The practical upshot is that one would never make an admission of exactly which features were taught by a prior art document -- but this recognition by the EPO that one should concentrate effectively on the closest prior art is a welcome acceptance of the risks of applying hindsight in defining the information the inventor would have been likely to rely on.

Informal Consultation with the Examiner

Starting at section 4.11, this segment runs to four pages and would be encouraging if it were (a) binding and/or (b) observed. The section contains guidance regarding telephone and face-to-face interviews and the criteria for each including permitting telephone consultations where:

(i) there is a query about procedural issues; (ii) there is an error in the communication or reply; (iii) there is misunderstanding about the other party's comments or arguments; (iv) minor issues are holding up grant; (v) post rule 71(3) amendments are not acceptable.

There is further guidance regarding what to do with voicemail etc.

Given the reduction in opportunities to interact with the EPO in the prosecution procedure, with hearings being called far earlier than in the past, fewer opportunities to amend, and limitation of the divisional period, informal consultation becomes ever more important and CIPA, through the EPLC, has been pressing hard for this. The amount of space dedicated by the EPO in the handbook to this option is therefore very welcome.

In reality, however, the procedure needs to be formalised yet further and it is certainly the case that informal consultations with Examiners at the moment are very much a matter of the personality of the Examiner. One of the most significant and frustrating difficulties which many practitioners will have encountered is the fact that it can be extremely difficult to get hold of the Examiner at all. A telephone call is not always successful and can go through to a voicemail message which tells you (not always in your own language) that there is no voicemail capability. Usually one can track the Examiner down via the Formalities Officer or sweet-talking the receptionist at the EPO -- but this is not accessibility at the highest level!

There is further discussion in the handbook about using email (entirely informal but useable, but you still have to get the Examiner's email address) and face-to-face interviews (especially if you are at the EPO anyway, if you are accompanied by the applicant or if you have a demonstration of an invention) and again this is all welcome. The sooner, however, the EPO can formalise and make binding routes of communication with the Examiner and can encourage informal consultation as the default rather than the exception, the better. This needs to be balanced against abuse or pestering of Examiners and it may be that this is a significant concern from the EPO. One would hope that this is a small issue and not something that would be encountered from professional representatives -- so let's formalise the informal route.

Complaints

The handbook finishes with a discussion of how to make complaints and sets out a reasonably detailed procedure using Directorate Quality Management Support (DQMS). Users are encouraged to provide the application numbers or relevant cases. This highlights a concern which has been raised by users before, that the EPO requires lengthy evidence before it will take a concern seriously. Individual cases will not be reviewed from a legal perspective, unsurprisingly.

A well-defined complaints procedure ...

It is good to see that the EPO has a well-defined complaints procedure but the feedback from users (for example to the EPLC) is that it is not effective. Anecdotally the DQMS has been found to be defensive or even dismissive. With a huge organisation like the EPO, complaints are inevitable and they should be pleased that they are probably limited to a fraction of the cases and personnel handling them. But even a single case can represent a huge investment for a small user of the system, and a commercially essential element of their business such that a well-defined and well-observed complaints procedure both for individual cases and at the systematic level is really important. We can only hope that the EPO will continue to address this issue and uphold the quality it is so proud of.

All in all the handbook is well reasoned and positive, though provoking but overall reassuring. It is perhaps ironic that the main complaint about it is over its handling of complaints - if only we knew how to complain about that one!".