The Enlarged Board of Appeal states in its Opinion G3/08, reason 7.2.1 (italics added):

“The European Patent Organisation is an international, intergovernmental organisation, modelled on a modern state order and based on the separation of powers principle, which the sovereign contracting states have entrusted with the exercise of some of their national powers in the field of patents. Thus the EPC assigns executive power to the Office to grant patents and to its President to manage the Office in organisational respects (Articles 4(3) and 10 ff. EPC), while to the Administrative Council it assigns limited legislative powers restricted to lower-ranking rules (Article 33 EPC), along with financial and supervisory powers. Finally, the Boards of Appeal, which in their decisions are bound only by the EPC (Article 23(3) EPC), are assigned the role of an independent judiciary in this patent system (Articles 21 to 23 EPC; see also G 6/95, OJ EPO 1996, 649, Reasons, points 2 ff.), even if for the present, pursuant to Article 4(2) EPC and to EPC Part 1 Chapter III, they are not an independent organ of the Organisation but structurally integrated departments of the Office under Article 15 EPC.”

The limited legislative powers of the Administrative Council are governed by Article 33 EPC, where paragraph 1(c) gives the Administrative Council the competence to amend the Implementing Regulations of the EPC. Since the EPC 2000 transferred many procedural and administrative issues from the Convention to the Implementing Regulations, the power of the Administrative Council to develop the EPC has increased considerably and its amendments can have a profound influence on the operation of the EPO.

A few recent changes of the Implementing Regulations show that the legislative powers are not so ‘limited’ as could be inferred from the above Opinion of the Enlarged Board of Appeal. The question arises whether the present checks and balances are sufficient to warrant a development of the EPC that takes due account of the interests of both the EPO and the users of the EPC.

1 The recent changes in the search procedure of the EPO are intended to provide a useful search report and avoid further searches during the prosecution (see Rule 62a and 63). Whereas the first aim is laudable, the second one has serious consequences for the applicant. The EPO may ask the applicant before carrying out the search to indicate which subject-matter to be searched or to clarify the subject-matter to be searched. During the examination the examiner will request the applicant to restrict the claims to the searched subject-matter. As a consequence, the applicant has a single opportunity to select the subject-matter for which he desires protection. During prosecution the applicant is restricted mainly to limiting the claims, since other changes in the scope, which may become desirable in view of prior art cited in the search report, have been made impossible by the restriction. In previous practice, the EPO would carry out a further search when such other changes in scope were made. When such a change in scope is desirable in present practice, the applicant has as only option to file a divisional application, provided that this is still possible time-wise after the change of Rule 36(1). These changes reflects wishes of the EPO rather than those of users.

It should be noted that the option to indicate the subject-matter to be searched may violate Article 92, which states that the search report must be ‘on the basis of the claims’.

2 New Rule 70a and amended Rule 161 impose on the applicant the obligation to respond to the EPO search opinion and the PCT written opinion if the opinion notes deficiencies in the application. The purpose is to provide clarity for the public about the applicant’s position as early as possible and to shorten the procedure. The shortening of the procedure will only be achieved if the major delays are caused by the applicants and not by the examiner; nonetheless, the EPO gives the impression that the workload of the examiner is the main problem. The emphasis of the EPO on achieving a shorter period to grant will be hailed by a few applicants. However, numerous applicants prefer a longer period, as in many technical fields the time to market is often about ten years. The voice of these latter applicants appears not to be heard in the Administrative Council.

Various user blogs show that these rules have made the system so complicated that the EPO has difficulty in expressing a consistent interpretation in their communications. The reasons for the complicated system can be traced to the EPC2000. One of the five main aims of the revision of the EPC was the enabling of the BEST system (Bringing Examination and Search Together), a project started in 1990. However, the Basic Proposal for the Revision of October 2000 only proposed to remove the geographical allocation of the searchers and examiners from Articles 16 and 17 EPC. As a consequence, the Diplomatic Conference did not change the division between search and examination. In spite of the existing division in the EPC, the EPO continued merging examination steps into the search procedure for reasons of efficiency. Before the EPC 2000 entered into force the EPO had added a search opinion to the search report, the opinion being a first opinion on patentability to which the applicant was not obliged to respond. As a next step of integration, since 1 April 2010 new Rule 70a requires the applicant to respond to the search opinion as if it were an Article 94(3) communication. However, the search opinion is not a communication under Article 94(3) because the requirements as set out in Rule 71(1) and (2) do not apply; the search opinion is merely a non-binding opinion. The legal basis for treating the search opinion as a communication from the examining division is not very strong.

Maintaining the present legal division between the search and examination has made the procedure unnecessarily complicated. Within the framework of Articles 92 and 94 it should be possible to simplify the system and have a two-stage procedure, the first stage combining the search of Article 92 and the first communication under Article 94(3) and the second stage including the second and subsequent communications.

3 The change in Rule 36(1) to limit the filing of sequences of divisional applications, which the Enlarged Board of Appeal regarded as illegitimate, appears to be an overreaction of the Administrative Council: only 75 third or higher generation divisionals are filed annually against 150.000 first filings. The calculation of the 24-month periods in Rule 36 is difficult; the EPO will not implemented it in their software and implementation in most IP management software is not possible. The EPO will check compliance with the 24-month periods only when a divisional application is actually filed, whereas a patent attorney should calculate it for each application to know the deadline for filing a divisional.

The 24-month time constraints in amended Rule 36(1) severely restricts the filing of legitimate divisional applications. Examples of legitimate use, according to the EPO, are filing a divisional close to grant for claims to which objections have been raised that require more discussion, the allowed claims going to grant in the parent; and filing a divisional before oral proceedings as a fallback position when a decision takes the applicant by surprise. It is surprising that the users of the EPC have not been able to maintain this legitimate use.

The legal directorate general of the EPO has proposed to add a new Rule 36(1)(c), giving the examining division the discretion to file a divisional application, thereby mitigating the consequences of the 24-month periods. The proposal was voted down in the Administrative Council by a large majority. It is astonishing that a proposal that would meet unanimous approval of the users did not find sufficient support in the Administrative Council.

It should be noted that the amended Rule 36(1) appears to violate Article 4G(2) of the Paris Convention. Whereas the former limits the filing of divisional applications to a 24-month period, the latter permits the voluntary filing of a divisional application on any application, including divisional applications.

4 The changed Rule 161(1) obliges an applicant to respond to a written opinion drawn up by the EPO. The written opinion itself will not contain any warning about this obligation, because the PCT does not allow inclusion of such a statement. Hence, soon after entry into the European phase, the applicant will receive a communication under Rule 161(1) to respond to the written opinion and rectify any deficiencies in the application within one month. This exceptionally short period will come as a surprise for most foreign applicants who contact their European representative usually only shortly before entry into the European phase. More influence of the users would have made Rule 161(1) more workable.

5 Since 1 June 2010 the EPO can act as Supplementary International Search Authority (SISA) under the PCT. It allows an applicant to obtain an additional search by the EPO for a single invention, which may give him a better view of the prior art. However, if the international application is non-unitary, the supplementary international search of the EPO may have unexpected consequences. Suppose the non-unitary inventions A and B in the application have been searched by the USPTO as ISA and the EPO searches invention B as SISA and finds killing prior art. When the applicant enters the European phase, he will be obliged to limit his claims to the invention searched by the EPO as SISA, i.e. invention B (see amended Rule 164(2), OJ 2009, page 582). If he wants to pursue invention A instead of B, he can only achieve this by entering the European phase with claims relating to B and subsequently filing a divisional application relating to A. The amendment of Rule 164(2) does not appear to show any input from users of the EPC.

It may be of interest to know that the EPO has not yet reached internal agreement on the requirements to be fulfilled for filing a divisional based on a Euro-PCT application: is payment of the designation, search and examination fee for the Euro-PCT under Rule 159(1) necessary before a divisional can be filed? The EPO is working at it.

Conclusion
The recent changes of the Implementing Regulations give the impression that the users have little influence in the Administrative Council. The greatly increased complexity and reduced flexibility of the EPC caused by the recent changes may prompt users to seek protection through the national route instead of through the EPO. This complexity and rigidity has been implemented through the ‘limited powers’ of the Administrative Council. Since the entry into force of the EPC 2000 these powers are not so limited anymore. Hence, there a need for a better representation of the users in the Administrative Council avoid a one-sided development of the law. More democracy would benefit both the EPO and the users.

The contribution of Cees Mulder to this blog is gratefully acknowledged.


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