Among other things, the EPO’s official vision also includes to set world-wide standards in efficiency, so let us look into this goal a bit more closely. To begin with, what is efficiency? Wikipedia defines it as follows:

Efficiency is the extent to which time or effort is well used for the intended task or purpose.

Thus, we need to talk about (a) the intended task or purpose and (b) the extent to which time or effort is well used, when a patent is searched and examined by the European Patent Office

1. Intended Task or Purpose of Examination

The task or purpose of search and examination is to find out whether a given European Patent Application meets the requirements of the European Patent Convention, so that a patent can be granted. If this is not the case, the application must be refused.

Therefore, it is clear from the outset that the number of granted patents per year is NOT an indicator of efficiency per se. If the quality of the examination is insufficient, then the efficiency of the examination process is likewise insufficient, because the process does not serve the intended task or purpose.

There is obviously a very easy way to make the patent granting process super-efficient: One could think of simply registering a patent on any application filed, just like it is done in many countries (such as France) where there is (substantially) no substantive examination. Perhaps President Battistelli comes from this background. If the goal just is to register as many patents as possible per time unit, then one can indeed achieve massive gains in efficiency – and at the same time get rid of all these inconvenient examiners who write nasty letters to the Administrative Council complaining about a drop in quality.

Such a registration philosophy could indeed be considered, as matter of principle. It seems to work at least for France, the Netherlands and many other countries. And a German Utility Model is also registered without examination on the merits. One could certainly just register a patent as “efficiently” as possible and leave the examination of their patentability to the courts, if needed.

However, the European Patent Convention is obviously based on an entirely different philosophy, and it is probably not accidental that most applicants prefer filing their applications at the EPO rather than at the national patent (registration) offices. The EPC philosophy is based on the idea that patents are monopolies granted to applicants in exchange for the (sufficient) disclosure of a (technical) invention that is novel, involves an inventive step and is industrially applicable. Applicants are not supposed to have the right to simply monopolize whatever they want. The EPO’s job is to find out whether applicants’ inventions meet the standards of the EPC or not. Only a properly examined right is a good right that deserves a patent.

These principles of the European Patent Convention can only be changed by a diplomatic conference of its member states. The EPO management and the Administrative Council should firmly bear that in mind. Of course, it is possible to change the system completely and save a lot of money for the examination, but I doubt that applicants will be happy to continue paying the present high official fees if they do not get value in return, i.e. a properly examined monopoly right or at least a fair and well-grounded decision of refusal. But a thorough examination requires time and care, and both should not be shortened by simply unreasonable management goal such as “we want to see 20% more products per examiner in 2018”. You think 20% must be extreme and no sensible person on the planet would ever think of demanding that? I am afraid you are wrong. At least I took this figure from an open letter by the EPO’s Central Staff Committee (CSC) to President Battistelli and Vice President Casado:

…the CSC has observed with astonishment that, while the final PAX Reference Examiner Data is still missing, an enormous unexplained increase of another 20% of the overall production objectives has been cascaded down to the directorates, teams and examiners. Your strategic directions published on 31 January 2018 confirm that this is a new operational goal.

2. Extent to which time or effort is well used

What is “good use” of time or effort? This goes back to my earlier series of blogs about the EPO’s Problem with the Right Speed (I), (II), (III) and (IV), and I will try not to repeat here what I wrote there. Just two add-ons:

a) Deferred Examination

As I pointed out earlier, there are quite a number of applicants who do not actually want or need a super-speedy examination of their applications. This is particularly true, but not limited to, inventions in the field of Life Sciences. The EPO has therefore recently started a discussion of whether deferred examination should be offered to applicants. They call it “User-Driven Early Certainty” or UDEC.

I have to say that I very much welcome this change of direction from the EPO’s previous “speed über alles” policy towards a more applicant-friendly flexibility (which must obviously also take third parties’ interests into account). I am puzzled that the representatives of epi and Business Europe and BusinessEurope do not seem to like it and have raised all sorts of concerns, some of which I find quite strange. However, I accept that opinions on this matter may differ. Personally, I see no downside in slowing examination down, if (a) the applicant requests it and (b) no third party expresses an interest in having this application examined at accelerated speed, which could simply be accomplished by submitting observations pursuant to Art. 115 EPC. In my view, introducing a formal procedure for “deferred examination” is unnecessary. The EPO has introduced a quite successful PACE program without such a change of the EPO or its implementing rules. Why not simply enable an “anti-PACE request” on the same basis? It is a simple fact that many inventions, particularly in the field of Life Sciences, need to undergo extensive testing before their practical utility can be established (not to speak of marketing approval). Most of them fail during this testing period, resulting in that the application covering it is normally abandoned. Why bother the EPO with examining these inventions? If the examiners were allowed or even requested to handle a number of applications more slowly, they could prioritize their work better and make better use of their time and efforts (hence increasing efficiency by definition) by examining those applications faster where the applicant has an interest in “early certainty”.

b) Speed of Boards of Appeal

I have repeatedly complained about the snail pace of appeal proceedings, which in my view is mainly caused by the serious understaffing of the Boards of Appeal by the present EPO management. Finally, finally (and much too late!) there seems to be some light at the end of the tunnel. Even though I was not able to find any official communication to this effect, I was told by several reliable sources that the AC has finally appointed a considerable number of new technical members of the Boards of Appeal so as to fill the numerous open positions in the Boards’ Business Distribution Scheme.

If this is true (and I think it is), great and my compliments to the EPO management and the Administrative Council!

I do not know whether my somewhat sarcastic November blog played any role in this change of policy, but whatever the motives were, this is clearly a step in the right direction. But it is imperative that this first step be followed by a second and third step, at least in my opinion. The positions that will be reoccupied in 2018 may possibly prevent that the BoA’s backlog will increase even more, but they will clearly not suffice to considerably reduce the backlog. For that to happen, new boards must be opened and staffed appropriately and a consequential and long-term policy must be followed in the years to come that allows many more new board members to be appointed and appropriately trained in their jobs. And it goes without saying that ridiculous measures that just undermine the moral of BoA members, who are willing to do their job and do it very well, should be stopped and never ever considered again. There is a relatively simple recipe for EPO management to achieve optimum efficiency from the Boards of Appeal: (i) staff them appropriately, (ii) respect their independence, (iii) leave them alone and (iv) let them do their job.

If all of this is taken to heart, I am optimistic that the present backlog of cases will slowly melt down and that we will come back to “normal” durations of 1-2 years on appeal over the next couple of years.

And the icing on the cake would be a transparent communication policy by the Administrative Council that goes beyond the usual, completely meaningless boilerplate statement in its Communiqués:

the Council decided on a number of appointments and re-appointments as technically qualified members of the Boards of Appeal and as external legally qualified members of the Enlarged Board

I think the public has a right to be informed better than that. I would be the first to congratulate the AC if they showed us how many new technical BoA members they appointed, thus demonstrating their commitment to fight the only real problem with speed that the EPO currently has, i.e. the speed of appeal proceedings.

And ceterum censeo, I caution that the Rules of Procedure of the Boards of Appeal, on which a user consultation is currently conducted, should not be abused as a vehicle to further shorten the appeal proceedings at the expense of the parties’ right to be heard and, in particular, it should not unduly limit the patentee’s right to file appropriate requests to defend his patent. One should firmly bear in mind that BoA proceedings are asymmetric to the detriment of the patentee: if the patent is revoked, then such a decision is (at least currently) final and the patent is gone for all EPC member states. Conversely, if the patent is maintained, it can still be challenged before the national courts. In my view, this asymmetry compels that a patent should only be revoked if its subject-matter really does not comply with the requirements of the EPC, and not because the patentee failed to submit the “right” auxiliary request in the first instance proceedings or with his grounds of appeal, except in absolutely clear cases of procedural abuse. Anything else would throw out the baby with the bath water.


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19 comments

  1. Dr Bausch,
    Regarding the appointments and re-appointments, I think I am right that the external legal members were all of the appointments and the technically qualified members were all of the re-appointments. Thus the Boards did not gain any members this time (or perhaps a minimal advance?) while members may still be retiring?
    Regarding the increased productivity, the increases were not justified other than that’s what the president put in the budget. Increases varied but since there was less room for common sense, there is now more of an across the board equation of seniority and expected productivity, irrespective of technical field or additional duties. Thus some increases have been shocking, as per the CSC letter.
    Regarding user-driven early certainty (aka late uncertainty by some), I understand the AC has already opposed this as being incompatible with early certainty raison d’être and certainly not because member states would have an income cut from lost national renewal fees et al.

    1. Dear Cynic, I just hope you are not right re the appointments or that at least a substantial number of new appointments of technical members will occur in the next AC meeting end of March. Be that as it may, this uncertainty is precisely why some official communication by the AC or the EPO management on this really important issue would be so much and urgently needed.

      And I also heard that user-driven early certainty has acceptance difficulties, nevertheless I think that a good idea is a good idea and deserves support, for what it’s worth. Look forward to other people’s views on this one.

      1. In fact, 4 new technical members were appointed on 01.03.2018 (and one member had an extension). Every bit helps. No indication of how many contracts ended (retirement or otherwise).

        There were about 6 new external legal members and about 12 reappointed external legal members.

  2. You set me thinking Thorsten, about “efficiency” and the lament in a comment on an earlier one of your 4-member series of postings.

    The lament was about how the EPO President has come to the bright idea, to shift Examiners around so that they examine in technical fields where they have no knowledge. Now, depending on the definition you use, what is “efficient”, that can raise or harm “efficiency”.

    When the aim is to get as many cases as possible through to issue, as fast as possible, it will help “efficiency”. Right, Benoit?

    But when the aim is to sort as efficiently as possible those cases deserving of grant from those that are not, it harms efficiency. As any fool can see.

  3. Another outstanding post of yours Mr Bausch : VIELEN DANK.

    For the EPO to come back onto the path of its true purpose, something could help: the long overdue organisation of a Diplomatic Conference of all EPO Member States (this should occur at regular intervals but Battistelli during his 8 years simply “forgot” it so that no one above the Administrative Council, which he controlled via Kongstad and Dr Ernst, oversees or worse, limit, his actions).

    Such Diplomatic Conference (if held regularly) would surely help to make sure that both the EPO management (but also the Administrative Council) respect the rules and spirit of the Founding Fathers (else the EPO will continue to dysfunction big times).

    Another option (not mutually exclusive) would be that the EU in Brussels- which during the past 5 years shamefully adopted a Pontius Pilatus position along the lines “we cannot do anything into the current EPO mess since we have no institutional relationship with the EPO”, would, eg via a common positions of its 25 member states at the meetings of the EPO Administrative Council, secure that the policies adopted at EPO serve the public at large and not only the interests of its self-serving top management clique as is currently the case.

    For your information here the latest question to the EU Commission by MEP Rina Ronja Kari
    : http://www.europarl.europa.eu/sides/getDoc.do?pubRef=-//EP//TEXT+WQ+P-2018-001379+0+DOC+XML+V0//EN&language=en

    Finally for something different, when you write : “I doubt that applicants will be happy to continue paying the present high official fees if they do not get value in return, i.e. a properly examined monopoly right or at least a fair and well-grounded decision of refusal”

    Well if in 2018 applicants’ funds at EPO do not provide for a thorough search any longer (as it used to be the case 5 years ago), but applicants will “love to hear” that with their fees:
    – indecent amounts are spent on external companies to spy on staff representatives
    – indecent amounts are spent on investigative unit staff and lawyers to organise fake files against union members
    – indecent amountsare wasted on bodyguards (hired to protect the president or the principal director HR Bergot from God knows what kind of non-existing threats)
    – indecent amounts are spent on flights around the globe (the travel details and budget of the EPO president is not public guess why).
    – indecent amounts are spent on communication firms hired to spin the story-telling of Battistelli which fools no one for years any longer

    non exhaustive list. To be continued ad nauseam

    To illustrate the high level of Ethics at which the EPO currently performs, see the next narcissistic, hence highly questionable EPO “event” (see e.g. the faith of an ex-finalist of such EPO event in 2015 http://www.bbc.com/news/business-43406050) labelled “european inventor of the year” – with estimated costs between 1 and 1.5 Mio EUR.

    In 2018 – as chance would have it – this will be organised in Saint Germain en Laye, the very city of which Battistelli is elected at the city council.

    see: https://www.epo.org/learning-events/european-inventor/event.html

    and: https://www.saintgermainenlaye.fr/en/648-7/ficheAnnu/benoit-battistelli.htm

    But all is fine at EPO since as you know, Battistelli is all for transparency (and provide for a yearly report which says nothing of this all but all about his glory and “achievements”).

    The EPO has become a huge money blackbox “audited” by three “independent” auditors (one of which being a former employee of Mr Battistelli at INPI Paris, so much for real independence, no genuine check-and-balances at EPO such as those existing at the EU institutions). As American journalists would put it : (at EPO) follow the money.

    Many thanks for your remarkable work which serves not only the Public at large but also the EPO and gives hope to thousands of sick EPO staff.

  4. I have another point, Thorsten. You lament it when a patent gets revoked at the EPO, while there is still an element of doubt whether it truly is invalid. The way I see it, however, such misgivings can be seized upon by those within EPO management who are advocating that pre-issue ex parte examination in DG1 should be increasingly done with a light touch. It’s the old English pre-1978 notion that “It’s only fair; the Inventor must be allowed his day in court.”

    You see, by following your line of thinking, the EPO managers get to kill two birds with just one stone. Not only does Office “efficiency” go up, but also, they get to curry favour with all those of the EPO’s “bulk filers” that demand more patent grants out of their patent filing budget.. Like the apocryphal bargain basement tailor, those customers are inclined to boast of their patent portfolio “Never mind the quality, just feel the width”.

    And in the service sector, as BB well knows, the customer is always right.

  5. A little historical reminder.

    In France, the granting system was purely declaratory from 1844 until 1968. From then on, at least a search was performed, originally by the IIB, later by the EPO. There is indeed no examination as such, but if the applicant does not reply to a search report containing X documents, the application will be refused.

    In the Netherlands the situation is different. Up to the entry in force of the EPC, they had a strong examining system. In my opinion more severe than the German one at the time. NL is the only country which dismantled its examination system after entry into force of the EPC in the hope that the patents granted by the EPO are worth more than the paper they are printed on.

    Now let’s come on the topic of the day.

    Efficiency is not merely achieving an objective, and certainly not achieving an objective which is increased year after year for some ludicrous reasons.

    One of the reasons for constantly increasing the objectives is that the EPO has for years massively invested in IP. If the return on investment is too low or even nil, the only way to show to the AC that the money was not spent in vain, is to show that the output pro examiner steadily increases. That such a reason for increasing the objectives which is the worse one does not need any further comment, but it is so tempting to build up a nice Potemkin’s scenery to the AC. The present tenant of the 10th is not the first, and will not the last to play this game.

    As an example, one should not forget that one of the real reasons for introducing BEST was the very heavy investment in IP pushed through by the then VP1 Jacques Michel. This heavy investment was only possible with a proper ROI. To the AC told that thanks to the investment in IP the improvement in efficiency due to BEST was up to 30%, which is blatant lie. The real figure is at best, sorry for the pun, 10-12%. But at this rate, the ROI was nil. So the figure had to be “embellished”. I do not say that it was wrong to go back to what is done in all examining offices in the world, but the true reason were thus quite different.

    One way to achieve the objective is Super-BEST, i.e. doing a shoddy search, not finding much and granting anything that passes the desk. And in order not to be too suspect, find some X documents, which are none, but allow to send out a communication. If the representative is clever, he will utter something which will be good enough to allow grant. The EPO never published the figures of the true refusals. It bundles this figure with applications deemed withdrawn. It cannot be that some examiners have barely written a refusal after 10 or 15 years being in the office. Do not tell me that barely a few percent of applications are such that they cannot be granted. It is in any case less than the number of patents opposed!

    One can observe a tendency, that upon appeal after refusal, some boards find it necessary to bring new documents into the procedure. I do not say it’s the role of boards to find further prior art, but some do. And they have their reasons for doing so.

    Opposition is not a corrective of examination, but it remains strange that once opposed, a patent has two out of three chances to end up being maimed, i.e. revoked or limited. The EPO cannot be blamed for not knowing of public prior uses, but for not finding documents which should have been found during the original search, or having let through patents which are so unclear that they manifestly lack novelty, or are full of added subject-matter.

    It should be easy for the EPO to make a statistic showing that the result of an opposition is due to failure of carrying out a proper examination. The long term survival of national parts of EP should also be disclosed. But then the claim of the highest possible and improving quality is certainly not any longer sustainable.

    It is for the first instance like for the boards: give them means workable and ergonomic, let them do their work the way they know is best, but before all give them good and continuous training. Is this asking too much? I do not think so, and then you do not have to come with such stupid ideas like deferred examination. Only by thinking along this line, it shows that the management of the EPO has lost touch with reality:

    As far as the boards are concerned, I doubt that there have been a few new appointments. There were mainly reappointments. The aim of the Napoleon of the 10th floor has always been to put the boards under pressure. Even if now there is a Chairman of Boards, he is as independent as the President of the EPO, whoever it is, gives him the necessary resources, and especially the financial resources. Unless the boards get their own budget they will never be independent as they should be. The rest is just bla!

    The role of the boards is not to redo the whole work of the first instance, they do not have the capacity to do so, for the reasons I just explained. In view of their staffing, the boards can only check whether the decision of the first instance is correct. The check that the legal requirements have been respected, and the procedural rules correctly applied.

    As far as the rules of procedures of the boards are concerned, they have been set up in order to avoid a tactical and piecemeal approach from the parties. When a party more or less says to a first instance division, you are too stupid to understand, I will go to the boards and they will understand, the party makes a big mistake.

    The rules of procedure exist in their present form since 2005, so the message should by now be understood. I agree that when an applicant/proprietor loses its application/patent, he is left with nothing. But then, in full knowledge of the consequences, what does it bring to file requests without giving any reasons as to why they are filed, and sometimes not giving any substantiation at all? In view of the workload, one cannot be surprised that applications/patents are refused/revoked by the boards simply because the applicant/proprietor has not been diligent enough.

    The purpose of Oral Proceedings in appeal is to give the parties an opportunity to argue their case, but not to give an appellant/patentee the opportunity to repeatedly modify its requests until an acceptable set of claims is found. To sum it up: there is no absolute right for a patentee to a last chance. See for instance T 5/08, T 1617/08 and T 137/09. The sooner this messages goes through, the better it will be.

    Once there is an appeal, be it after refusal, and certainly after opposition, the applicant/proprietor is in a position to evaluate the value of his application/patent and how it figures out in the real life. Why then not come up front with proper requests?

    In front of a civil court in most of the member states, and especially in appeal, the parties cannot amend their presentations up to the last moment. They have to decide quite early what they want. Why should it be different before the boards of appeal? For this you do not need 628 requests (the record I know of).

    I can fully support the request for proper staffing of the boards, and the fact that one should let them do their work, but I cannot agree that they are too formal. In my opinion, most of the boards apply their rules of procedure in a reasonable way. It is for the representatives, or at least for their clients, to become reasonable as well.

    Techrights: FINGERS OFF!!!

    1. Sometimes on this blog, I get the impression that some of the answers are more informative than the blog that triggered it. So thank you, Attentive Observer, and many others for your contributions.

      Just to avoid misunderstandings: I have not stated nor am I of the view that the boards are currently too formal. Reasonable minds may disagree on this question. I have seen individual cases where I thought the boards were too rigid (particularly with the patentee), but on the whole I am not complaining. I completely agree that procedural efficiency is a task both for the boards and the representatives. I only wanted to caution against further curtailing the parties’ right to be heard and filing appropriate requests in the name of procedural efficiency.

      1. I agree with you in the fact that also reasonable minds may disagree on this questions.

        In my humble opinion the role of BoA is not to provide procedural efficiency red tape everywhere but a framework for a reasonable process. If BoA is too strict (emphasis on word “too”, I don’t want to allow clear abuse) on allowing new material to be introduced in the matter it will only mean that unreasonable guys like me will file the mentioned 628 requests already at the opposition phase and some more during the opposition “as a response to the counterparty arguments”. I will have to do this because I cannot count on possibility to amend my case (reasonably or unreasonably) at later stage. Thus, I disagree with Attentive Observer. BoA has to choose if they prefer some flexibility or higher number of request already at the OD.

        Being too strict will turn against them as when I am coming to the appeal I will have already thousand or more requests on the file. Just in the case, because as you know, they need to be presented at the earliest possible moment to be admitted. Well, this might be a bit overexaggerating but at least in my cases the stricter BoA rules have lead into a higher number of requests at the oppositions and they all need to be dealt with.As you known withdrawing them or giving any other indication that you are not willing to pursue them further might mean that you will not be able to use them again.

        As a conclusion, I would not like to sacrafice correct overall decisions just because of procedural efficiency. Too much procedural efficiency will turn against the system.

  6. I am one of the nasty 1000 examiners signing the petition to the AC. Just wanted to thank you for what you are doing here.

    I’ll show your concerns about improving efficiency to my director tomorrow when he’ll officially give me my ‘challenging targets’ for 2018 (+30%, on top of a +25% from 2017) and carefully listen to his explanations on why you are wrong.

    For sure Mr Campinos is going to be an enlightened president who will successfully revert all damages this catastrophic French has done, but – just in case – do you need any help at Kluwer?

  7. Bravo, Attentive Observer. Well said. Many thanks.

    Just two small points:

    Deferred examination you dismiss as “stupid”. Thorsten gives reasons why it is not. Perhaps you have already told us why it is stupid and Thorsten and I missed it. If so, please forgive. If not, you might like to set out your reasons.

    Where I agree with you is on the function of the Boards of Appeal. You state:

    “In view of their staffing, the boards can only check whether the decision of the first instance is correct.”

    As far as I’m concerned, that’s their job, and they should stick to that, regardless how much “staffing” there is in DG3. So many attorneys seem not to grasp that. And some Board Members too. How can that be? Can any reader explain?

  8. Dear Max Drei,

    I have indeed to clarify something. What I think is stupid and a sign of very bad management is on the one hand heralding “early certainty” for a number of years, and now ending with deferred examination. Not deferred examination as such is stupid. It is the whole surrounding which is stupid. Deferred examination is a kind of fig leaf behind which pseudo managers want to hide. And this should not be tolerated. In the absence of deferred examination, the shelves will soon be empty in view of the ever growing objectives given to the examiners. So the idea of deferred examination can help to hide the stupid production policy of the recent years.

    Over the years, a good balance had been found between incoming and outgoing files. Old files were prioritised, when they were sitting too long on the shelves, but now the examiner cannot even open a file when it is not on top of the pile given to him by a computer!

    The existing balance has been willingly destroyed by pseudo managers who decided what was good for the users of the system and ignoring their requests to slow down the process. PACE was there for those who needed it, and all worked fine. But in order to show their managerial capacity, everything became PACEd. This is typical of the EPO, there is no golden way, and the pendulum swings always full on the other side. It is hypocritical to say now, look we care for your needs when for years they have been ignored.

    As far as the boards are concerned, I agree with you that the boards should primarily check the decisions of first instance. But legally speaking, they can, by virtue of Art 111(1), second sentence, exercise any power within the competence of the department which was responsible for the decision appealed. Strictly speaking, they may thus play the role of an examining or an opposition division. They luckily refrain from doing so, but in exceptional circumstances.

    Although I am a friend of the Boards, I find that some boards are, or were, more formal than others when it comes to late filings. But filing requests without any explanation is not tolerable. Whatever happens, going to appeal should not be a lottery for the parties and all boards should have a similar approach in such matters. After all that is why there is a Praesidium of the Boards.

    Techrights: FINGERS OFF !!!

  9. Deferred examination, in my humble opinion, is not an option under the EPC.

    Looking back, the EPO has had backlogs in search and examination. These are about to disappear. The only reason for PACE and also for accelerated search was to give applicants the opportunity to have their applications processed as is foreseen, i.e. without undue delay. With the backlogs gone, all applications will be handled speedily. There is no legal basis in the EPC for deferred examination, contrary to the German Patent Law. Whether it is sensible or efficient to handle all applications really fast is a different question, and I would agree with Thorsten in this regard.

    Coming to efficiency, I respectfully disagree with the Wikipedia Definition. For me, efficiency is “output divided by input”. Current EPO management relies on a simple bean counting exercise to define the “output”, namely the number of “products”. “Input” is also quite simple: expenses. The EPO uses the inverse formula “input divided by output”, called “unit cost”.

    What these approaches overlook is, naturally, quality. Quality of the examination, quality of the decisions taken and also quality of the process. I will refrain from commenting on the quality of the decisions. The last blog cites some examples where quality was pereived to be lacking: sloppy objections, incorrect druckexemplar, pushing work towards the applicant, etc. I personally believe that process quality also matters, and process quality is more than sticking to the rules and regulations. It is not sufficient that justice is done, justice must also be perceived to have been done. This seems to be in line with Thorsten’s approach about filing additional requests and protecting his clients’ rights and expectations.

    To give you an example, I have sat in several oral proceedings, both examination and opposition, where hours were wasted on added subject-matter, several new requests were filed to overcome this deficiency, and the real discussion on the merits started around 2 pm, with all parties sufficiently exhausted, just to find that there was lack of inventive step and further amendments were necessary. A real motivation driver fostering high quality. With all due respect for Article 123(2) EPC, there are situations where the standard sequence of objections Art. 83, 123(2), 84, 54, 56 should not be adhered to. However, young examiners are trained to work according to the list and to stop once an objection is a killer. They move on to the next request.

    Top of the line is a refusal/revocation based on Art 123(2) without any statement on the merits (novelty, inventive step). Some Boards have started to send increasing numbers of cases back, a time-consuming and quite costly exercise. EPO manangement has realized this could be an issue and that sending cases to the Boards of Appeal without a discussion and decision on all possible obstacles may not be a good idea.

    Now, management is on the move and about to introduce new regulations, requiring that all relevant points shall be covered, The driver is not a sense of customer orientation or user friendliness or the desire to provide a sound service, The driver is purely EPO expenses. Needless to say, we are not allowed to spend more time on these decisions, quite on the contrary.

    It seems somewhat strange that dedicated instructions are needed to ensure proper handling of applications and oppositions. It would appear that “proper handling” somehow did not make it on the priority list of EPO management.

  10. Dear experienced examiner,

    I know that it is often a complaint from parties, or better their representatives, that a decision is not taken on all the grounds of opposition raised. However, I have some reservations about deciding on novelty and inventive step, when there are problems with Art 83 and Art 123(2). It is a matter of logic. I would not necessarily call this working according to the book. There can be cases in which the objection is borderline, but even so, I think that the issues cannot be mixed.

    With Art 84, it is not so critical. Should the claim be unclear, then it has to be interpreted, and once the interpretation is decided, then a comparison with prior art is possible. One should however keep in mind that an unclear feature cannot represent a difference with the available prior art. And yet, I have seen lots of communications in which it is first stated that the subject-matter of a claim is either novel/inventive or not, but then it is also stated that it is unclear. If it unclear, how was it possible to decide on novelty/inventive step. This is a logic I fail to understand. And certainly far for efficient.

    If an invention cannot be enabled, it is moot to compare it with prior art, or am I totally wrong? For the same token, a non-enabling technical teaching, even published before the priority date is not part of the prior art, and cannot be used against an application/patent.

    If an independent claim is severely lumbered with added subject-matter, it does not have an effective date, and there again no comparison with prior art is possible. If there is a clear problem with Art 123(2) then the applicant/proprietor is in an inescapable trap. That is the position of the EBA. Or should, as suggested in the decision BGH X ZR 161/12-Wound treatment device- that the part which offends Art 123(2) is not to be taken into account when deciding novelty or inventive step? I do not know a decision of a board or of the enlarged board supporting this view.

    Only if the added subject-matter problem lies with an intermediate generalisation, I could accept that an opinion, certainly not a decision, can be taken on a hypothetical claim in which said intermediate generalisation has been removed. But in order to take a decision, a proper request should be submitted. If a dependent claim is comprising added subject-matter it can in general be deleted, which in first instance is never too late, but a new request has to be submitted.

    When boards send a file back a few times, and I have witnessed this as well, then it is more probably a problem with the division than with the applicant/proprietor. I have seen a real determination by some opposition divisions to kill a patent for whatever reason. That is also not right, and anything but efficient.

    Proper handling of a file is not simply going through all grounds of opposition for the sake of it, but keeping a certain logic, which is what is required by the EPC. I could well imagine a board deciding that continuing the procedure after having decided on such fundamental aspects like enablement or added subject-matter boils down to a substantial procedural violation, like it has happened already in the case of an examining division refusing to allow prejudicial revision.

    It has never been forbidden to a division to make some comments distinct from the decision as such. But this may take more time, and one never knows what the parties or the board will make of it. Anything else, i.e. a decision, not an opinion, on novelty or inventive step within a claim presenting a fundamental problem of enablement or added subject-matter should be avoided.

    As far as deferred examination is concerned, it is worth noting that the corresponding provision in EPC 1973, cf. Art 95EPC 1973, has been deleted in EPC 2000! I would thus like to know from the upper management of the EPO what the legal basis for deferred examination is.

    Techrights: FINGERS OFF!!!

  11. What can we take from the string of comments, overall? Perhaps that there is a craving for “balance”.

    Flexibility, but not too much. Order, but not imposed to an inflexible and unreasonable level. Fair protection for the inventor, but without sacrificing legal certainty for the public. Procedural efficiency, but not so much that the legitimate expectations of users are trampled upon.

    The snag is, that inexperienced and insecure Examiners (not to mention Board Members) lack the experience and maturity needed to know what is the fair, robust and commonsense “balance” between the competing interests of those who are “customers” of the EPO. Reducing the job to that of merely “ticking boxes” demeans the entire EPO. A sound and reliable professional judgement takes many years to acquire.

    Experienced users (and experienced EPO Examiners in retirement) are united in observing a dwindling capability at the EPO to “get the balance right”. This is fatal for the future of an Organisation whose raison d’etre is to dispense justice. The EPO took decades to build its high reputation. I deplore the conduct of the vindictive managers within the EPO (and their enablers on the Administrative Council) who are determined to stamp out inconvenient and irksome protest from the most valuable and conscientious EPO employees, and so destroy the hard-won reputation of the Organisation they pretend to lead with such “efficiency”.

    Suppose the EPO President is looking for a school for his children of an operating theatre for a member of his close family. Would he entrust his family members to an Organisation managed in the way he himself manages the EPO? Getting operating costs down to the bare minimum is not the be all and end all. Not even at a Patent Office.

  12. A general comment on the “EPO vision” and its discussion by Thorsten Bausch : it is only focused on the applicant and the EPO and pays little attention to the EPO’s mission vis-à-vis third parties and the public at large. The EPO’s excessive focus on “products” is questionable in itself because of the undesirable implications on how examiners handle proceedings, in addition the definition of “products” fails to include the indexation of upcoming patent documents carried out by examiners as part of their daily work, while a correct indexation is crucial to the updating of the EPO’s patent database and the quality of the prior art searches performed by the EPO.
    I have noted that Thorsten Bausch and some of the contributors to this thread are in favour of deferred axamination at the EPO. A frequent argument for this position is that the system has been in use in Germany for decades without raising serious concerns. However, the issue must be placed in context. In Germany, filing decisions by companies are strongly influenced by the inventor remuneration system. As a result, applications can be filed for inventions of highly uncertain merit/potential. There is a logic for deferred examination in this context. The situation is different for the filing of European applications (direct or Euro-PCT) since applicants can be presumed to base their filing decision on a positive assessment of the merit/potential of the invention.

  13. Dear Attentive Observer,

    thank you for your feedback. Some additional explanation seems appropriate.

    I do not advocate to decide on inventive step if there are issues with clarity and added subject-matter. The sequence to be followed when deciding makes sense: Art 84, 123(2), where needed 83, on basis of the application/patent, and then move on and broaden the field by considering also the prior art – 54, 56.

    I do advocate, however, to discuss all objections towards a given set of claims and not to stop once one requirement of the EPC has been found to be infringed. It makes no sense to overcome 123(2) to be caught by 56. The idea is to discuss whether moving in a certain direction will be useful. Most representatives in my area are very reasonable and prepared to enter in such a discussion. They will normally not prosecute an approach with very limited chances of success.

    That way, we take a decision on 123(2) and save everybody the trouble to file and discuss further requests which, in all likelihood, will anyway not be allowable. The underlying concept is to reduce the number of requests, which in turn reduces the time needed for the proceedings, for writing the decision and of course for the competent board in case of an appeal. If someone insists on amendments, we will of course allow them, but caution about admissibility of possible further amendments.

    The approach has a certain risk. You mix objections, you have no clearly worded request on record to analyze in detail (that is precisely what shall be avoided), you may loose overview, you have to issue preliminary comments/opinions after having listened to the parties. It is much easier to handle one objection after the other. Legally correct, but not really efficient or satisfying.

    Still, with some experience, good preparation and reasonable representatives, you save a lot of time and effort. You tackle the case on novelty/inventive step which is what most parties are interested in. Basically, you satisfy the needs of the parties. That is the “justice must appear to have been done” part.

    I cannot say whether this approach works in all areas of technology. My experiences are very good, and the feedback we get from representatives is very positive.

  14. For “Experienced Examiner” and Attentive Observer, just a quick thought on sequencing handling of Art 84, 123(2) 83, 54 and 56.

    Often, it is only AFTER thorough consideration of the close prior art that one sees where in claim 1 the key word is. Often, claim 1 contains a woolly word which doesn’t matter when it is in the pre-characterizing portion but which is not acceptable as the basis for recognising novelty over D1.

    So what is needed, for efficiency, in finely balanced cases is i) written proceedings, full case, up front ii) a summons to orals, with an Annexe that puts the finger on the crux points, not yet clear iii) oral proceedings, on those points. Only AFTER reaching a thorough grasp of the points on which the case will turn, is it possible to work through the various grounds and Articles of the EPC in the orderly and compact sequence that has become routine at the EPO.

    Trouble is, it takes a bit more than just a few hours of on-line training seminar time, to be good enough to finger the key issues, and then write a competent Annexe to a Summons. The present management, in its foolish and blinkered obsession with “quality” metrics, seems to be squandering, as fast as it can, the resources inside the EPO that allow the EPO to deal with tough cases judiciously, fairly and efficiently. The “quality” exhibited in Annexes to Oral Proceedings is on the wane, sadly, in my opinion. Perhaps financial people outside the EPO give more respect to the EPO, these days. But lawyers? I think not!

    Is that palpable and manifest loss of efficiency a concern, for EPO management, and the AC? It seems not.

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