Patents

(Hoffmann Eitle)/ /15 Comments

…well, at least the EPO’s Boards of Appeal, represented by their President Mr. Josefsson, are.

Mr. Josefsson announced in the Boards of Appeal and key decisions 2023 conference just a few minutes ago that in view of the feedback received by users (including yours truly) he will no longer pursue the planned shortening of the period for replying to the grounds of appeal. The proposed change to Art 13(2) RPBA will go ahead, i.e. the third level of convergence will run from the date of the Art 15(1) communication rather than the date of the summons.

We will probably learn more tomorrow about the other proposed changes of the RPBA, but for today let us just praise the EPO’s Boards of Appeal Committee and the President of the Boards of Appeal that they took the (probably pretty unequivocal) user feedback on this important point into due account. In particular, I am both pleased and relieved that my earlier scepticism proved wrong and my hope turned out to be justified.

I read somewhere that the EPO logo derives its shape from an ear. Let us hope that Mr. Josefsson has set an example here which will be followed also by other organs of the European Patent Office.


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15 comments

  3. Well said, Thorsten. Credit where credit’s due, I say.

    Your point about the EPO logo made me smile. I had not seen an ear there, but now you mention it. Better would be a logo depicting both ears, but just one is infinitely better than no ears at all.

  4. Well done but there is still a lot to do: the EPO is still raising complicated, costly, legally unfounded and useless requests to amend descriptions and is soon going to raise by 30% the 3rd and 4th annual fees, so that they practically become additional filing fees for Euro-PCT applications:

    https://patentblog.kluweriplaw.com/2023/09/09/epo-propaganda-master-class-or-how-to-justify-higher-fees-for-lower-quality-work/

    In these cases, the EPO seems to be rather deaf…

    P.S.: the EPO logo is a fingerprint

    1. I agree with adaptation of the description which is almost ridiculous considering that from now on UPC judges will know how to put into the right light eventual dubious statements in the description, including spirit of the invention which you can leave in without worrying at all (can you imagine a UPC judge taking seriously that expression …) However, the fees are unavoidable as long as the costs of the EPO stay that high, first reduce the costs and then the fees, not the other way around

      1. Good suggestions: if the EPO stopped the legally unfounded practice about the adaptation of the description then the productivity of the examiners would increase and costs might be reduced (or quality/timeliness increased).

        Another way to reduce costs is to avoid unnecessary expenses: how much does the EPO spend for the EIA?

    2. As far as amendments to the description are concerned, there might be a referral on the way.
      This has been commented in another blog. Just have look. Some comments are interesting.

    3. For discussion whether the time is ripe to refer to the EBA the vexed issue of how much conformity there has to be between description and claims, Board of Appeal Communication of 21.07.2023 in EP 15700545.5, Appeal T56/21 might be helpful.

  5. Thorsten, this is indeed good news. However, it is a sad turn of events when one is surprised and delighted that a “consultation exercise” conducted by the EPO actually resulted in the views of respondents being taken into account. I can only hope that the positive response on this occasion has the effect of persuading the EPO’s management that perhaps it is not such a bad idea to actually read, understand and reflect upon the feedback they receive. Perhaps their experience with the outcome of the complaint to the EPO ombuds office (regarding practice on ST.26 sequence listings for divisionals of “pre-big bang” applications) will teach them that lesson too.

  6. There is another occurrence where the chair of the boards and the board of appeal committee listened.
    In the first version of Art 11, remittal was only foreseen in case of a substantial procedural violation. One of the members of the BOAC justified this position by comparing the situation at the BGH and that at the EPO.
    At the BGH we do not have technical members, so that we have to remit, but at the boards you have technical members so that there is no reason to remit. I know for a fact that members of the boards protested heavily and the possibility to remit in other circumstances than for a SPV.
    It would interesting to know how the ordinary board members have reacted in the present instance. It would not be the first time that members of the boards have strongly disagreed with their chair. Just think of G 1/21.
    As far as the upper management of the EPO is concerned, it is deaf from both ears. Neither staff nor users have ever been heard!

  7. @Patentrobot

    I fully agree with your qualifications of the EPO’s requirement on description amendment. In addition, the EPO’s stance has been explicitly justified in the EPO release of July 2022 by the objective of meddling in the claim interpretation by national courts, clearly outside the EPO’s remit. This has generated unprecedented infighting between the BOAs, not just on the legal basis for description amendments but also on the applicability of article 69 to pending applications.

    There is fresh news on this topic (30 October) : in case T 56/21, the applicant Hoffmann–La Roche has approved the BOA’s suggestion of an EBA referral.

  8. I would suggest that the title is misleading: it is not the EPO that is able to listen, but the Boards of Appeal and the Board of Appeal Committee (the latter known as BOAC comprises representatives of Member States at the AC and external members appointed by the AC).
    The EPO does not appear to be able to listen. Meetings on the quality of patents are dialogues of the deaf (when the EPO attends, see the posts by B. Weibel on LinkedIn).

  9. I am really curious about where the anatomical debate is heading, or does the comment on other organs of the EPO refer to divisions and departments?

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