France: At The EPO : Slow And Steady Wins The Race

Last Updated: 16 April 2018
Article by Grégoire Desrousseaux, Francois Pochart and Geoffroy Thill

From July 1st, 2018, the European Patent Office contemplates to authorize applicants to request postponement of the examination procedure for a period of 3 years.

At the present time, the average duration of the examination procedure before the European Patent Office (EPO) is 23.2 months1. The examination time period should be reduced to 12 months by 20202. The decreasing duration of the examination procedure comes under criticisms from some applicants. According to its detractors, the faster procedure would prevent applicants from raising funds or submitting complementary data during the examination phase. The EPO acknowledged those observations and suggested to postpone the start of substantive examination upon request.

POSTPONEMENT OF THE EXAMINATION PROCEDURE

This new procedure shall enable applicants to postpone the start of examination for 3 years.

In practice, the applicants shall request postponement of the examination procedure within the time limit set forth in the European patent convention to reply to the European/International search report3. The applicants shall request the postponement of the examination together with the filing of the reply4. In this case, the EPO will not initiate the substantive examination before the expiry of the period of 3 years5.

The 3 years period runs from the beginning of the entry into the European phase in case of Euro-PCT applications or from expiry of 6 months after the time limit according to rule 70(1) for direct European applications. For divisional applications, the time period of the postponement is not extended and ends 3 years from the entry into the European phase of the earliest parent application for Euro-PCT applications or 5 years from the filing date or the priority date of the earliest parent application for divisional applications stemming from direct European applications (which is similar to a period of 3 years from the expiry of the 6 months' time window under rule 70(1)).

The postponement procedure will be optional and at no cost. However, the applicants shall keep paying regularly the official fees (examination fee, designation fee, extension fees, validation fees or renewal fees).

The examination procedure shall resume before the termination of the 3 years' time period, through a simple request from the applicant or the filing of a request for PACE or PPH. The EPO shall also initiate examination before expiry of the maximum period in case of third party observations substantiated and non-anonymous6. In the latter case, or upon applicant's request, the examination procedure shall also be accelerated.

ENTRY INTO FORCE

If the EPO confirms its implementation, the new procedure shall enter into force on July 1st 2018 and apply to direct European applications for which the mention of the publication of the European search report occurs on or after this date, as well as to international applications entered into the European phase from July 1st, 2018. It is a pilot program whose results will be evaluated in 3 years.

The procedure will be effective very shortly and first requests for postponement could be filed in the beginning of July. The effects of this procedure for applicants and third parties are manifold.

IMPLICATIONS FOR APPLICANTS

As initially foreseen by the EPO, this procedure will provide applicants with increasing flexibility. Specially to raise funds before the last stage of examination which incurred important costs for translation and validation7. The procedure will enable applicants to have a better insight of the viability of the invention or to collect additional data before the beginning of the examination8. Since the substantial examination does not start, the examination fee is to be fully refund if the application is withdrawn during the 3 years postponement period9.

Besides, the procedure shall enable the applicants to maintain a pending application before the EPO for three additional years with no need for filing a divisional application.

In practice, the applicants shall analyze and comment on the European search report in the usual time limit. It will be possible to file observations without amendment of the claims while filing the request for examination; and then wait the end of three years and the first communication from the Examining division to amend the claims if need be. The EPO can indeed not refuse any application as long as the first notification is not issued by the examining division10. The only limit lies in the fact that the examining division has the discretionary power to accept or refuse further amendments11.

Incidentally, the examination postponement will enable saving several renewal fees before the national offices (during the 3 years of postponement, renewal fees shall only be paid at the EPO). The postponement of the examination procedure might also permit to wait until the start of the unitary patent12.

The postponement of the examination procedure appears really flexible for the applicants who can resume the examination and even accelerate it upon request (for instance when identifying an infringement).

Except where special circumstances exist, making use of the postponement option of the examination seems to be a good practice. Moreover, it will not be necessary to monitor the time limit. The EPO will begin automatically the examination after the postponement period.

THIRD PARTY IMPLICATIONS

The postponement procedure shall make the assessment of the scope of protection of a patent application more difficult. The duration of the uncertainty on the scope of protection shall indeed be extended for about two or three years13. Even though third-party observations lift the postponement, those observations shall be substantiated and then associated with significant cost; can the mere copy-paste of the written opinion be regarded as a substantiated opinion? Furthermore, those observations shall be non-anonymous. Therefore, if applicants do not want to reveal their identity, they have to appoint a patent attorney14.

IMPLICATIONS FOR THE EPO

According to the forgoing - the necessity for applicants to reply to the search report and the increasing legal uncertainty for third party – it appears that the new postponement procedure will firstly benefit the EPO. The workload in the examining divisions will indeed decrease, thus reducing backlog and ironically the duration of the substantive examination procedure.

Incidentally, the increasing duration of the granting procedure will enable the EPO to top up its incomes due to the annual fees collected during the postponement of the examination (whereas fees after grant are paid to the EPO only up to 50%).

CONCLUSION

The new optional postponement procedure of the examination goes against the decreasing duration of the search, examination and opposition procedures initiated during the last few years in the EPO. However, the procedure reveals manifold advantages for applicants. They could maintain a pending application with a broad scope of protection for 3 more years while keeping the opportunity to request an accelerated examination at any time. The applicants shall be able to accelerate or delay the granting procedure of their patents.

Footnotes

1 Average duration of the procedure between the filing of the request for examination and the receipt of the intention to grant (communication under rule 71(3) of the European Patent Convention) on November 25th, 2016, CA/97/16

2 « Early Certainty for Examination » procedure (ECfE) established since July 2016 at the EPO, CA/97/16, 25/11/2016

3 It is the time window pursuant to (i) rule 70a(1) for direct European applications ; (ii) rule 161(1) for Euro-PCT applications for which the EPO acts as the International Searching Authority or as Supplementary International Searching Authority ; or (iii) rule 70a(2) for others European applications. CA/PL 4/18, 25/01/2018

4 Even in the case of a request for postponement, it will be required to request the examination of the patent application (or confirm an earlier request for examination) and to provide a reply to the search report. In absence of reply to the search report, the patent application shall be deemed to be withdrawn (cf. rules 70a(3) or 161(1) last sentence of the European Patent Convention). CA/PL 4/18, 25/01/2018

5 The request for postponement will be refused if third party observations substantiated and non-anonymous are already filed. Therefore, it will be useless to file as a precautionary measure several not-substantiated and anonymous third party observations in order to avoid the postponement of the examination. Only substantiated and non-anonymous observations will be take into account. CA/PL 4/18, 25/01/2018

6 Third party observations shall require at least one specific objection: novelty, inventive step, industrial applicability, clarity, sufficiency of disclosure, non-patentable subject-matter or unallowable amendments; and indicate facts and evidences in support of the objections. CA/PL 4/18, 25/01/2018

7 At least until the beginning of the Unitary patent.

8 Specially in the pharmaceutical and biotechnological industries where the timeframe for the launch of a new product on the market is particularly long and where additional data from the clinical research are often available after the first filing.

9 See Article 11a) Rules relating to Fees

10 See the Guidelines for Examination at the EPO C-V, 14

11 At the present time, this discretionary power is not that used against the applicants. However, according to the recent proposal of amendment of the rules of procedure of the boards of appeal, probably in force in three years, the Boards of appeal will overrule unallowable amendment only in case of obvious error of the examining division.

12 The request for unitary effect shall be filed with the European Patent Office no later than one month after publication of the mention of grant of the European patent in the European Patent Bulletin (rule 6(1) of the Rules relating to Unitary Patent Protection). The postponement of the examination also postpones the grant of the patent and increases the probability that the Unitary Patent enters into force before the grant of the patent application for which postponement was requested.

13 If the first notification is issued shortly after the end of the postponement procedure, although currently the examining division needs about 6 months to 1 year to issue the first notification.

14 Provided that the filing of third-party observation by an appointed third-party or a patent attorney acting as a strawman is considered by the EPO as a non-anonymous filing. It should be the case as appointed third-party or patent attorney acting as strawman is already considered as an authorized person to file an opposition at the EPO.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions