How long should proceedings before the EPO ideally take? Admittedly, this is a tricky question because various stakeholders will usually have different interests and thoughts as to what the “right” or “ideal” speed is. Let us tackle this question by beginning with a simple distinction. I posit that the answer depends considerably on whether the proceedings are ex parte or inter partes.

In ex parte examination proceedings, the main stakeholders are the applicant and the patent office. Most, but not all, patent applications do not bother the public much. I therefore tend to take the view that the “ideal speed” of such cases is the one that conforms to the applicant’s interests and wishes, i.e. it should match the speed desired by the applicant as closely as possible. In my experience and given the diversity of applicants, this “ideal” speed is not a constant and largely depends on the technical field of the application. When the application is in a rapidly changing technical field with short product cycles, the applicant will normally have a strong interest in the fast grant of its application. Conversely, in the field of pharmaceuticals and biologicals where product development and approval times are on the order of 12-14 years, applicants will generally be happier with a much slower speed. This is because it does not make much sense to begin the costly national validation process at a time when it is still unclear whether the subject-matter of the patent application is approvable from a regulatory standpoint.

Therefore, “one size fits all” does not apply when it comes to an ideal speed of EPO examination proceedings, and the EPO would be well advised to keep the speed of examinations flexible and in accordance with the applicant’s wishes. In my personal view, the EPO’s past practice with the so-called PACE requests came very close to this ideal, and the EPO should be commended for having introduced it. The EPO rightly considered PACE as “its popular free programme”. However, it has been my experience that PACE requests are still filed for only 5-10% of all applications. Thus, it seems that the remaining 90-95% of applicants are generally happy with the EPO’s normal speed in examination proceedings.

A caveat should be made here. There is, of course, a fraction of EP applications that do concern competitors or the public (e.g. certain NGOs who do not like patents for certain things, such as live matter, or even more ordinary goods such as beer). Those competitors can and usually do make their voices heard by filing third-party observations under Art. 115 EPC. The EPO’s practice of dealing with such observations has much improved over the last couple of years. Generally, such observations are now taken seriously and considered thoroughly, which obviously does not mean that they are always followed by the examiners (nor should they be). Moreover, they generally result in an acceleration of the examination proceedings, as they should (exceptions confirm the rule). This is obviously desirable, since if there is a commercial or legal dispute between two parties, the EPO should decide such a dispute as soon as possible. Justice delayed is justice denied, as the English say – or as the Germans say: Nur schnelles Recht ist gutes Recht.

Therefore, is everything now in order with the EPO’s speed of handling cases? I am afraid not. The latest initiatives by EPO management seem to be focused on working on a problem (“early certainty” in examination) that most applicants do not really have, while not doing much, if anything, about the EPO’s real problem: the extremely slow speed of appeal proceedings.

I will therefore deal with the impact on the EPO’s policy on the various type of proceedings separately and in more detail in three blogs to follow.

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6 comments

  1. I fully understand and approve the comment.
    One size fits all is not what applicants/user of the EP system need.
    The present rush for quick grant (of easy files) is nothing else than applying the PACE procedure indistinctly.
    The number of PACE application, has been, beside certain applicants, never been very high in the past. The reasons are obvious: it is when the validation start that it becomes expensive for the applicant/proprietor.
    Why then get a patent quickly? There are no reasons to get a patent as quickly as possible for an applicant, unless specific reasons are present.
    The only parties interesting in a quick grant are actually the member states. After grant, the annual fee go to the member states, and only 50% of the annual fees are for the EPO. Before grant, if grant takes more than 3 years, 100% of the annual fee goes to the EPO, and 0% to the member states.
    How to get a “positive” vote from member states? Simply allow them to cash in very rapidly annual fees, or to “enhance” cooperation, in other send money from the EPO to the member states (or certain member states which are “worth it “.
    Then one should not wonder why certain decisions are issued by the Administrative Council of the EPO. Tactically very clever.
    The question is thus: is the primary aim of the EPO or the EPC to help member states or to help the users of the EPO/EPC system?
    I think the answer is pretty obvious…..

  2. Thorsten it is my understanding that the “early certainty” from search was intended for the public as much as the Applicant. I mean, when you review emerging A (and WO) publications, you want to do a clearance study. For that you need the prior art. Ideal then would be an A publication, supplemented by a perfect search report and perfect analysis of the adverse effects on patentability, and a law on “added matter” that excludes any improvement in Applicant’s position after filing. That’s as close to a “certain” clearance as you can reasonably get.

    After that, it doesn’t matter so much to the public, if Applicant has divisionals pending till the end of the 20 year term, or if nothing at all issues till near the end of the 20 year patent term.

    Is the EPO to be commended then, for giving more deference, these days, to the needs of the public, the same degree of deference in fact, as it gives to the needs of the Applicant community?

    1. I am not sure whether the EPO management introduced this program in order to satisfy a heretofore unmet need of the public for earlier certainty, which I personally fail to recognize. Other motives suggested by some of the responders appear to me much more plausible. Add to this the quantity-quality fallacy, i.e. the wrong (in my view) belief that high production numbers are always good and a sign of efficient management. In the end, however, it is quality that matters.

  3. The problem is not to obtain as quickly as reasonably possible a search result and an opinion about the patentability of the claimed invention.

    There is nothing to say against this, provided the search is carried out seriously and the opinion is not a collection of standard phrases, which looks like an evaluation, but is often not an evaluation of the true value of the invention.

    What the problem is, is the idea of the top management of the EPO to grant an application as quickly as it thinks that it is needed by the applicant.

    This is what is criticised, and rightly so, by Mr Bausch. The only beneficiaries of this hurry are the member states, and not necessarily the applicants.

  4. As an applicant I want to keep my options open as long as possible, but as third party, I want to have as early as possible certainty on what I might face.

    It appears quite difficult to reconcile both points of view, but this does not justify the rush to patent everything within 12 months after a shoddy search and a meaningless examination.

    Early certainty yes, but at reasonable cost and in a way that my patent does not risk being pulled apart at the first occasion, or that the patents of my competitors are so bad, that I cannot decide what they cover.

    As things develop presently, we are rather in the position of having early certainty in everything meaning early certainty of nothing…

  5. OK. I see in your Part II the “early certainty” mantra extension, from mere “search” now to “examination” and “opposition”. I regret to say that I think it is another manifestation of BB indulging his macho instincts, willy-waving at the Americans. Anything you can do, France can do better.

    But I stand by my original point, that not only Applicant but also the patent owner’s competitor would like to have “early certainty” to be delivered by the EPO.

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