The results of the EPO’s online user consultation on a procedural option for postponing examination of a European patent application have now been published and are available here (pdf). To cut a long story short, users’ opinions are quite divided. The overall result is surprisingly similar to the result of the Brexit referendum (52% in favour for providing such an option, 46% against, 2% abstentions), but fortunately the question in dispute is much less relevant and divisive than the UK referendum, and above all no evidence of any illegal influencing has come to light or is to be expected. So I hope we can have a civilized debate on these questions.

The signals from the contracting member states and earlier user feedback were also mixed, thus raising the question what the EPO will now do with all of this. Spoiler: the EPO document provides no hint whatsoever in any direction; it merely lists the main arguments provided by both opponents and proponents and thus allows everybody to develop an informed own opinion.

For background, in autumn 2017, the EPO presented a proposal bearing the slightly unfortunate, if not downright misleading, title „User-driven Early Certainty“ (UDEC) offering applicants the possibility to postpone the start of substantive examination by a maximum period of 3 years. Let us forget about the title and focus on the substance and the rationale behind it. It was to provide applicants more time, where needed, to decide about the economic relevance and scope of protection for an invention before incurring significant prosecution and validation costs.

I must say that I always found this rationale quite sensible and liked the idea. This may possibly have to do both with my national and my technical background. In Germany such a possibility has existed for ages (more than 50 years, see §28b PatG 1968) and has never since caused a lot of problems or discussions, at least as far as I can remember. One can also hardly argue that the option of deferred examination has greatly harmed innovation or stifled competition in Germany, which was a fear expressed by some opponents against the EPO’s proposal for flexible timing of examination (abbreviated FTE in the following). And in my technical field, i.e. chemistry and pharmaceuticals, I am constantly reminded on how many inventions never make it to market for regulatory or economic reasons and how many applications are dropped in the course of the examination proceedings despite a positive evaluation of patentability by the EPO. If an opportunity existed to defer the examination of these applications at applicant’s request, I do not see why this would cause any harm to the public or applicant’s competitors. And the EPO would have more capacity to examine the urgent applications faster.

Clearly, any system of deferred examination or FTE must be accompanied by an easily accessible activation mechanism of examination by third parties. This seems to be almost common ground (75% approval). The EPO asked a question on what further requirements should be attached to the third-party activation mechanism (only disclose identity of third party? – show a legitimate interest? – pay a fee? – any two or three of these requirements?). Given that even oppositions may be filed by a strawman, I do not see a need why a third party objecting to deferred examination of a particular application should be required to identify itself; at least I would support the notion that a request filed by an authorized representative before the EPO should always be valid. I would also not support a fee. The applicant must pay the examination fee anyway, and deferred examination is a favour the EPO would do him upon request, if there are no contravening interests of third parties.

But, as stated above, opinions on this matter are divided, and reasonable minds may very well differ. Thus, I hope for and look forward to a civilized debate in the comments on this blog. And I hope that the EPO will take note thereof and let us know soon what its conclusions are from this discussion.


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7 comments

  1. freedom-to-operate assessments are incredibly difficult when an application is relevant but still pending. If a third-party would request examination of one of my applications, I would start filing divisionals and check the products of my competitors to see whether I can tailor one of my applications so that it matches their product….

  2. It is first interesting to note that the result is presented in an open manner. A few months ago this might most probably not have been the case….. Let’s put this to the credit of the new top management.

    On the other hand 600 or so replies cannot be considered as being really representative, even if user groups and professional associations participated. It reminds me of the replies to an enquiry of the EU commission about getting read of the change of time.

    There is a result, but please do not overestimate the representativeness of such a survey. When you hear some user groups, the UPC is an absolute need for European industry and especially for European SMEs……

    As in most of the stories, the question to be asked, who will profit from the measure? It looks somehow strange after years of pushing examiners to deal with the files, more precisely to grant as quickly as possible, now suddenly the pace of examination should possibly be slowed down.

    Was the idea of early certainty, at any cost and at any rate, not really, what the users of the system wanted? In the last years, a PACE request was useless, as every file underwent PACE. I remember Mr Bausch even explaining the deleterious effects of such an acceleration of the procedure in the present blog.

    When the idea was first presented at an epi meeting, if I am right in Warsaw, by the former VP5, it cannot be said that it was received with enthusiasm.

    I am not sure that the member states, having got used to cash in annual fees quite early, will see the move too positively.

    After all, one of the wishes of the founders of the EPO was just to avoid deferred examination, as it was then known in Germany and in The Netherlands. It was foreseen in the EPC 1973 that the AC could decide deferred examination, but with the aim of re-establishing the 6 months period as quickly as possible. See Art 95 EPC 1973.

    This Article was deleted in 2000. I did not check the reason, but I suppose it is because it was shown that the EPO was able to master its workload. May be a look in the minutes of the Diplomatic Conference of 2000 could be useful.

    I would put another reason forward. With the rush for quick grants, there are technical areas in which the examiner’s cup-boards, whether physical or electronic, are quite empty. I suspect the secret hope of the upper management of the EPO when it came up with the idea of deferred examination was to be able to refill those cup-boards, but to leave the responsibility of it to applicants. By doing so, the upper management could claim that it really cared for the needs of the users, after having ignored those quite brutally for years.

    Some technical areas would certainly benefit from such a measure. I am primarily thinking of pharmacy and biotech, where it might take a while to be able to decide whether it is worth pursuing an application or rather drop it.

    In the days were the applicant could decide whether he wished a quick examination by filing a PACE request, things worked quite fine. The examiners had time to deal correctly with their files, but the needs of applicants could be taken into account. That changed after the upper management of the EPO decided for the users that their interest lay in a rushed procedure.

    One should not forget that even presently, there is already a way to defer examination. That is by using the PCT which gives the applicant 31 months time to decide whether it is worth continuing or not. Using the PCT allows to gain 7 months in taking a decision, what in certain technical areas is quite a lot.

    For sure using the PCT is not for free, but if you think you need the time, it is a good opportunity. If you want to extent the time a bit more, you have a search carried out by a different office than the EPO, as this will add a few further months as a supplementary search will necessarily be carried out. But in the meantime, you had already at least one opportunity to amend your claims.

    Just a question, if an applicant does not want to see examination triggered by a third party, will he be able to appeal the decision to start examination taken by such a third party? If I am applicant why should I be forced to do something to please a third party?

    I agree that the price to pay for deferred examination should be to allow a competitor to request examination, but is this really legal? I personally do not think that such a serious question should mainly be decided by the AC, but should result from an amendment of the EPC, as it concerns some fundamental rights. That a country could decide such a measure on its own territory, fair enough, but should such a measure be simply decided by an administrative body and not by a parliament?

    Another way of looking at it: should we expect another referral to the Enlarged Board, but now in a direction opposite to G 2/19. Let’s hope that by then the question of the seat of the Boards will have been settled…..

    What would be more intelligent in my opinion would be to step up the staffing level of the Boards of Appeal, so that they would be in a position to get read of their backlog without squeezing appellants and respondents in a very formalistic procedure. If it takes an average of 38 months to decide upon an appeal, what is it good to think of deferred examination? The real uncertainty for third parties lies there!

    To sum it up, prima facie a nice idea, trying apparently to show some respect for the real need of the users, but to be taken with a (big?) pinch of salt, or only to be touched with a big barge pole.

    Techrights: FINGERS OFF!!!! Directly or indirectly

  3. S o today an O.P. was moved from Haar to Isar
    O pened the door, not just left ajar
    U ntil a decision from the board enlarged
    P isses everybody off, situation highly charged!

  4. In reply to Peter Parker, above: if the EPO does introduce a route to deferred examination, perhaps a route to recognise your FTO concerns would be to allow the filing of third-party observations as a mechanism to trigger examination (or the filing of such observations along with an explicit request to examine the application).

  5. As to “early certainty” (so I can write an FTO opinion), I remember asserting to EPO management about 15 years ago that what I require from the EPO is an early and excellent quality search report. After that, I need strict and predictable application of Art 123(2) EPC. Given those two deliveries, I do not care how many divisionals a competitor files, through the 20 year term of exclusive rights. I should not have to wait till a national court of appeal opines on the issue. Instead, I can do it with the WO publication and the search report.

    We all know that i) Technical Boards often reverse Opposition Divisions, courts of appeal reverse first instance courts and supreme courts sometimes reverse both of them. I cannot afford to wait till the national court of appeal pronounces judgement.

    It is the imaginative and dogged painstaking quality of that EPO search, allied with a high level of certainty in i) the Established Case Law of the Boards of Appeal of the EPO and ii) deference by the national courts to the ECLBA, that Europe needs for optimising its patent system.

    Deferring examination is merely a tool for management of inventory. Those who want speed to grant should get it, reliable and quick, every time. That is important. Less important is to cater to those who wish to defer grant, but they should get their wish too because they will anyway find ways to get what they want, regardless what the EPO does to try and stop them.

    BTW, I take it that nobody likes the UK system of imposing early certainty, namely, a cut off date for prosecution through to issue, not only of the individual patent application but also of the entire patent family, including all generations of divisional.

  6. @Bringbackalib

    Are you suggesting that a Board of Appeal has, upon request of a party to an appeal, moved scheduled proceedings from Haar to Isar? If so, would you care to share the number of the application or patent concerned?

  7. To a friend of the EPO and of the Boards :
    Your prediction that “the member states, having got used to cash in annual fees quite early, will see the move too positively” has firm ground in the recent past. This is in effect the reason why member states rejected the first EPO proposal labelled UDEC (with EC standing for “early certainty”, the EPO newspeak for “prolonged uncertainty”.
    I fully concur with Peter Parker’s concern about freedom-to-operate assessments getting more difficult because of deferred examination. Thorsten seriously downplays the impact of deferred examination on third parties. A major benefit of deferred examination for applicants is that it prolongs uncertainty for third parties esp. competitors. Uncertainty not only stifles innovation as Thorsten suggests, it holds up third parties’ project development and business decisions.
    The ability of third parties to trigger examination if applicant opts for deferment is usually presented as an efficient means of restoring a balance of interests. But this sounds like trying to tackle the pernicious side effects of a medication with another medication. And this would take away control of the examination process from the EPO.
    Last comment on Thorsten’s honest admission that he may be biased because of German practice, the issue at the EPO implies a much greater scale than the German national level, thus the stakes are much higher.

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