The European Patent Office has opened an online consultation on the possibility of allowing more flexibility in the timing of the examination process by offering means to postpone the examination of European patent applications.
The reasons for the consultation are explained on the EPO’s website: ‘Since the launch of the Early Certainty initiative in 2014, the Office has significantly reduced the length of the patent grant procedure. Applicants and the public at large have generally welcomed the faster processing of applications, as it provides information on the scope of patent protection at an earlier stage.
At the same time it has also been argued that in some instances applicants might need more time before the grant of a patent. In view of this, in autumn 2017 the Office presented a proposal for User-Driven Early Certainty, allowing applicants to postpone the start of substantive examination by a maximum of three years.
(…) The primary objective of this consultation is to receive the views of all stakeholders on the introduction of a postponed examination scheme in the European patent grant procedure, the advantages and drawbacks this could have for users and the public in general, and its potential economic and business impact.
The Office is further interested in collecting input on the different conceivable options and features for implementing such a procedural mechanism. These options and features are not to be understood as exhaustive, and participants are expressly invited to propose further measures.’
The online consultation includes questions such as: ‘would a postponed examination system benefit the European patent system?’, ‘would such a system influence applicants’/patentees’ behaviour in filing patent applications or enforcing patents?’, Should all European and Euro-PCT applications be eligible for postponed examination?’, ‘What should be the maximum length of the postponement period?’, ‘Should third parties be allowed to trigger the start of examination?’ and ‘Would you be in favour of procedural options for further reducing the pendency of a European patent application?’
The consultation, which can be found here, is open until 11 January 2019.
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The founders of the EPC had one aim in mind, that is to create a patenting system without any deferred examination as it existed then in Germany and the Netherlands, where the period to request examining could go up to 7 years. It was considered not acceptable by the founders of the EPO too have such a long time of uncertainty for patent rights.
To that effect, they introduced Art 94 and 95 in EPC 1973. The period for requesting examination was 6 months (Art 94 EPC 1973) after publication of the SR. In Art 95, it was provided that the period for requesting examination could be extended beyond 6 months if it was established that the EPO could not cope with its workload, cf. Art 95(1)EPC1973. If the period was extended, the AC was in the obligation to lay down measures with a view to restoring the original period as soon as possible, cf. Art 95(4) EPC 1973. In 2000 Art 94EPC1973 has been amended and Art 95EPC1973 deleted. The time limit for requesting examination is nowadays to be found in R 70, and hence susceptible to be amended by decision of the AC.
The change proposed is thus as such legal, but does certainly not correspond to the intentions of the founders of the EPC, but this is not something which will hinder the management of the EPO, certainly not since 2010.
Due to the inordinate production pressure put on the examiners, all files are nowadays accelerated, and this is not necessaryly to the liking of lots of users. I remind of some comments of T. Bausch in this respect in the present blog. Former VP 1 claimed that the speeding up was in reply to a demand of the users, but never managed to identify even one user or group of users. It was more what he thought would be good for the users, but this is another story. That’s how Early Certainty came along.
Another consequence of churning out files like mad, is the fact that in some technical areas examiners cupboards are empty or nearly empty. But the points target has still to be achieved. How? Not my problem is the answer of the management.
So why not again bring forward the alleged needs of the users, whether they exist or not. One way for keeping some files in the cupboard is to ask users to slow down the granting pace. This would have the advantage of putting the ball in the court of the users, and focus away from the management mistakes made in the recent past.
If there is one thing which is not wished, is that the extent of a patent is left unknown for a long time. It is thus difficult to belief that such a claim comes from the users in general.
Under the Chairperson in charge of the EPO following the first French president of the EPO, the time limit for filing divisional applications was severely curtailed, just in order to avoid the existence of not clarified patent rights.
Now, the aim is to reastablish this uncertainty. To paraphrase Asterix: they are mad those EPO managers. No, they are not mad, they are just cynic and attempt to hide one management mistake by another one, but always for the “good” of the users.
It is to be hoped that the result of the survey is clearly negative, and that it will be explained to members of AC how stupid the measure is and how they are misused again by the management of the EPO. I am however not too sure of the latter.
The present VP1 already proposed this measure at an epi meeting, but the echo he got on the spot was anything but positive.
It is high time for the EPO to think of the real needs of the users, that is to get solid patents in a reasonable time, and not shoddy ones as quickly as possible.
Techrights: FINGERS OFF!!!!! Directly or indirectly!