27 November 2017

Stephen Blake Examines New Proposals From The EPO On Deferral Of Examination

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An innovative economy is something to be celebrated, but increased numbers of patent applications can cause problems for intellectual property offices tasked with examining them.
UK Intellectual Property
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An innovative economy is something to be celebrated, but increased numbers of patent applications can cause problems for intellectual property offices tasked with examining them. It has long been known that the European Patent Office (EPO) has a large backlog of patent applications to examine, with applicants waiting years to receive a first examination report. At the meeting of the EPI Council last week in Warsaw, I learned of a new proposal presented to Council by Alberto Casado, Vice President of the EPO, for tackling this backlog. If implemented in its proposed form then it is likely to have implications for applicants, but most notably for third parties who may be significantly disadvantaged.

In recent times, the EPO has introduced a number of initiatives known collectively as “early certainty” initiatives with the aim of speeding up the prosecution of European patent applications and the opposition proceedings for granted European patents. One of these initiatives is that the EPO aims to give preliminary opinion on patents within six months of filing the application. While the EPO has seen success under this initiative, a further initiative to reduce the average time for examination to 12 months has been less successful – the current average time for examination is just under two years1. The EPO has therefore considered further measures to alleviate the backlog.  One such measure is a proposal to defer examination at the EPO for up to three years on request from the applicant.  I understand that the EPO thinks this will mean less time is spent examining applications that the applicants are not too concerned about.  Presumably, all deferred applications will be removed from the statistics on average examination time, allowing the EPO an opportunity to drive down the numbers without actually doing any further work.

Detail is light at the moment, but as we understand it, deferment requests for direct European patent applications would need to be filed by the examination request deadline, and for patent applications filed under the Patent Cooperation Treaty (Euro-PCT applications) the request would need to be filed by the deadline to confirm the application is to proceed under R161.  

There is expected to be no requirement to respond to the European Search Opinion or the Written Opinion of International Search Authority until the end of the deferment period – with the EPO sending a reminder six months prior to that date. Importantly though, renewal fees will still be payable during the deferment period so the EPO will still be generating fees!

Rather than providing early certainty, this proposal seems to provide increased uncertainty and third parties are likely to suffer as a result – companies will not be able to determine what claims the EPO is likely to grant, which may stifle the opportunity of those third parties to conduct their business. Pre-empting these concerns, the new proposal allows third parties to lift the deferment on request. There are caveats here however, with a fee needing to be paid and substantive third party observations to be filed with the request to lift deferment.

Also, controversially, under the proposed new rules such third party observations would be non-anonymous – so the names of those filing them would be disclosed. There are clearly concerns about the impact this might have on companies looking to lift deferment as it puts the commercially useful information of who has an interest in their patent application in the hands of the applicant, seemingly without good reason.

These proposals are, at the moment, just that, but anecdotally I understand that the EPO has all but decided to implement them - it seems likely we will see them rolled out in some form next year. In the meantime the debate will go on. Clearing the backlog at the EPO is crucial to keeping the innovation economy moving, and giving applicants the assurance that their ideas are properly protected and enforceable. In clearing the backlog however, it’s important that we don’t place undue burden on third parties and possibly stifle the wider economy. 

Council discussed the matter at some length and the view of the current proposal was broadly negative.  Indeed, many were against any form of deferment of examination at all.  Chris Mercer, former (and likely next) Chairman of the European Patent Practice Committee of the EPI will be submitting a letter to the EPO giving Council’s views and requesting reconsideration of the proposals where necessary.



Originally published in Intellectual Property Magazine.

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