The declining search and examination quality of EPO patents is not only harmful because inventions are not protected but they also create a lot of uncertainty for the industry. The problem has aggravated due to the Unitary Patent system, as thousands of Unitary Patents will flood countries where traditional European patents were not often validated in the past. The Industry Patent Quality Charter (IPQC) offered to enter into a dialogue with the EPO, but as the EPO has so far declined to discuss the problems, the IPQC will now turn to national governments for help. Beat Weibel, chief IP Counsel at Siemens and the initiator of the Industry Patent Quality Charter, said this in an interview with Kluwer IP Law.
On 6 November, you had a meeting with the IPQC. Can you describe what was discussed there?
‘We met with about thirty people at the Technical University of Munich. Half of them were from IPQC member companies and the other half of them people from a committee of the Administrative Council of the European Patent Office, that deals with technical issues but also quality issues. Unfortunately, the management of the EPO didn’t participate, they want us to use other channels for communication and are not prepared to enter into a dialogue or open up a direct channel with the IPQC anymore.
However, the members of this committee of the Administrative Council were happy to attend and I think we had a very good exchange about why we from the industry think patent quality is important and why we think – and that is maybe a new aspect – low patent quality is harmful, so to speak.
Interestingly enough, a PhD student carried out an analysis of Board of Appeal decisions of opposition proceedings, focusing on about thousand cases from 2022. It turned out that there was an extremely high change rate. In nearly 90% of the cases, the Boards of Appeal changed the decision of the opposition division. In 40% they upheld the patent in an amended form and in about 50% of the cases the patent was completely revoked.
Actually, in a case where Siemens was involved, prior art was in the file and the Board of Appeal just corrected what had gone wrong in the first and second decision.
And the interesting thing is that these amendments or these revocations were based on prior art that should have been available to the examining division and to the opposition division. Actually, in a case where Siemens was involved, prior art was in the file and the Board of Appeal just corrected what had gone wrong in the first and second decision.
Anyhow, if 90% of the decisions of the opposition division and the examining divisions are apparently regarded by the Boards of Appeal as being wrong, that doesn’t speak for the quality of these instances. And why is that so? If we talk to examiners or people in the examination and opposition divisions, we hear the main reason is that the working conditions are not such that people at the EPO can concentrate on complete searches, complete examinations etc. There is so much work, which will even increase in the future, and there is so much pressure that they have to take shortcuts. We’ve now seen what this leads to in thousand opposition cases. These cases are just a sample of more important cases because somebody feels disturbed about the patent. If already for these cases, the correction is so high, something is definitely going wrong with the quality. And there are many more patents in force in the European market.
That was one part of our meeting. In another part, representatives from the member companies of the IPQC – be it from big pharma, be it from big telecom companies, be it from small start-up companies – presented why they feel high quality patents are important and why low quality patents do harm. The latter was a new aspect which we discussed intensively. Because low quality patents do not only harm start-up companies and SMEs, but this is also true for big pharma, for crop science etc. It bunges the innovation pipeline and that should be really taken seriously by the European Patent Office.
As a third element, we discussed and presented a number of concrete and in my view constructive measures how to improve quality.’
Could you give the broader perspective of why strong and enforceable patents are so important?
‘Firstly, companies like Siemens, Bayer, Ericsson have patents to protect our innovations, our inventions, in which we put a lot of effort and R&D money. We want to secure our competitive advantage. If there is no proper search and examination and we get patents that are not valid, then it’s very clear that we cannot profit from this competitive advantage.
Over the last decades, technology has become more complicated and drafting patent applications as well. Siemens, for instance, has invested about 30-35% more time in drafting patent applications since 2011. On the other hand, at the EPO the efficiency and productivity of the examiners has been increased by 50%. Their output has doubled. That opens a gap which speaks for itself: there is an imbalance in investment in time for drafting on the one hand and searching and examining patents on the other.
Instead of focusing on protecting their own innovations, they are mainly absorbed to do Freedom to Operate analysis of the masses of granted patents that are invalid or too broad as the analysis of Board of Appeal decisions shows.
That’s the active part, but also on the passive side, low quality patents are harmful. I’d like to recite an example from a start-up company that was present on 6 November. They have a small team and only two patent attorneys, and they said they are really fed up with the system because there are too many low-quality, invalid patents out in the field they have to deal with. Instead of focusing on protecting their own innovations, they are mainly absorbed to do Freedom to Operate analysis of the masses of granted patents that are invalid or too broad as the analysis of Board of Appeal decisions shows.
This holds for big companies as well. It could very well be that a project is not executed because an analysis of the field shows a landscape of thousands of patents. Then the management thinks: we’re not going there because that’s already blocked. But if these patents are all invalid, then this really harms the company.’
The creation of the IPQC in October 2023 was your initiative. Was there a particular reason that made you think: something needs to be done?
‘The main reason was the dissatisfaction with how the EPO was listening to industry. We have brought up our concerns for many years, be it via BusinessEurope, be it via the SACEPO meetings where I’m a member of. But we felt we were not listened to.
And then there was one occasion, after such a meeting last year in May or June, where the European Patent Office issued a press release which didn´t describe the controversial discussion of a so-called expert meeting properly. Then a few companies said: we cannot accept this any longer, we have to act and we formed IPQC. And the goal is not to criticize, but to enter into a constructive dialogue with the EPO, where we can bring in the applicant´s view in a very frank way, and work together on improvements. Furthermore, all IPQC member companies signed the self-obligation part of the Charter to do our own part, i.e. drafting and filing of patent applications and patent portfolio management properly.’
The IPQC organised a round table in December 2022 and a panel discussion in May 2023 in Osnabrück where the EPO management was invited, but didn’t come. In a letter in February 2023, the IPQC proposed to enter into dialogue about measures to improve patent quality, but the EPO didn’t react. A new letter sent by the IPQC, including a long list of specific concerns, was returned by EPO vice-president Steve Rowan late July with annotated comments, downplaying or denying there were problems. Do you think this is an acceptable way to address the concerns of a broad range of companies the EPO is supposed to serve?
‘Of course, the IPQC doesn’t represent all applicants, but we represent Ericsson, the biggest European applicant, we have Siemens, the second biggest European applicant, we have Qualcomm, I think the biggest US applicant, Bayer, Roche, so we have really a number of big applicants, and we also have small companies, as I mentioned. If Siemens had the same number of clients with concerns about the quality of Siemens products, I would say the managing board should listen to this.
Furthermore, I think the advantage of IPQC is we are directly involved, we are directly concerned, we can speak frankly, criticize openly and we can offer constructive measures. We represent telecom, electronics, chip industry, pharma start-up companies, small companies, SMEs, so it’s really cross business, a horizontally oriented group sharing the same concerns.’
The EPO plays an important role in the Unitary Patent system. Is that an additional reason for concern?
‘Yes, indeed! Siemens for example has more and more software patents, usually in different jurisdictions. With the Unitary Patent you have one patent that is valid for the entire European Union. It speaks for itself that quality is important.
And one question that nobody has been able to answer me so far, is what all the member states will be doing with the wave of Unitary Patents that is now rolling out over countries such as Romania, Bulgaria, Portugal and others. In Germany, we are used to dealing with masses of patents, as nearly all European bundle patents are validated in Germany. But the Bulgarian industry, for instance, has probably seen a few hundred patents per year validated in Bulgaria.
The experience of the examiners should be appreciated, and retention of the examiners should be prioritized.
With the Unitary Patent this will change completely. Let’s just assume that Huawei alone files one fourth of its patent applications as Unitary Patents, then there will be thousands of patents all of a sudden valid in the country. The industry in Bulgaria cannot ignore this. But if these patents are of low quality, they do harm: they create uncertainty, particularly because the country is not used to deal with these masses of patents.’
What changes would you like to see?
‘On LinkedIn I have published measures that we discussed and proposed, which I am sure you have seen. But in short: we feel that the management of the European Patent Office should get away from its focus on productivity and efficiency, and that they should make sure that the processes, the available time for examination and search, the targets, the incentives of the examiners are such that they are able to do complete searches, complete examinations. The experience of the examiners should be appreciated, and retention of the examiners should be prioritized. Because from our point of view, we get the best examinations and the best searches from experienced examiners that have been working in the field for ten or fifteen years. If these people are pushed as they are currently, they cannot perform. And if the ambition is even to have a shorter changeover of examiners, that goes, in our view, into the wrong direction. Experience is key for a good search and examination.’
Last week, the EPO announced the so-called Active Search Division principle, a measure to tackle the concerns about quality. The Central Staff Committee has called it an ’empty shell’ and a ‘PR exercise’. What is your view?
‘On the positive side, it has been recognized that something is going wrong. But I have doubts whether the proposed measure to have all searches reviewed by the entire examining division is really effective. When I talked to examiners, they said: we don’t know what we should review and secondly, we don’t get time to review.
We think the working conditions and incentives should be such that there is enough time to perform proper searches, complete searches. The additional review of searches goes into the exact opposite direction. It is rather another procedural measure instead of a content driven one.’
It seems the IPQC’s criticism has so far fallen on deaf ears. What are you going to do next?
‘We are about to discuss this within the IPQC. I have to say it’s a very active and constructive group, I think the most motivated group I have been coordinating, because we have an intrinsic motivation to do something here. We will probably organize other conferences and meetings, focusing for instance on the topic of how bad patents do harm. And what the obligation of patent offices is in that respect, because that’s underestimated.
If I put it in a nutshell, I sometimes feel that many of the patent offices, the EPO included, think their business model is to create as many annuities for the member states as possible in the most efficient way. But that’s not what we want. Both, society and industry need valid and enforceable patents. The business model should be: how can I create the best valid and enforceable patents not how can we grant as many patents as possible and as efficiently.
And we think the national ministries that are supervising the European Patent Office should overlook and control the system. Therefore, we think we need to address ministries to make them – and through them the EPO’s Administrative Council – aware of what’s going on.’
Is there anything you’d like to add?
‘Yes, we do criticize the EPO because we are concerned, but our main goal is to entertain a constructive dialogue. We as the IPQC, since we are cross-businesses, represent all different sizes of companies and since we are experienced applicants, we have something to say. We would really appreciate it if the EPO management listened to us and gave us the opportunity to work together with them in a constructive way.’
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The discussion on the quality of patents has been running around for the past 20 years. I suggest the following as an hypothesis for discussion:
“the management of the EPO wants the quality of patents to be lower.”
Yes, I know I am provocative. But after so many years, one must wonder whether the continuous lowering of the quality of the EPO is due to incompetence or whether it is actually what the management wants.
There has been a constant production pressure. There has been a constant lowering of the competencies of the new examiners (it used to be that they were supposed to have some experience in industry…). The complaints of major applicants are met with contempt, as the article shows.
I think the writing is on the wall.
I read that start-ups complain that:
“….they are really fed up with the system because there are too many low-quality, invalid patents out in the field they have to deal with.”
and that BigCorp is equally fed up with “the system”, I ask myself who exactly is it who should get some of the blame for flooding “the system” with thousands of patents covering trivial contributions to the art.
I prosecute materials and mechanical engineering applications at the EPO for a powerful US-based corporation. I don’t see any great decline in search competence or examination rigour. I think I get exactly the scope the client deserves.
My client thereby gets a B publication and the right, post-grant, to defend marginal patentability in court.
What’s the alternative? Is the EPO to refuse every marginal case? What would be the reaction to that, from IPQC? Even louder howls of protest, for sure, both from its BigCorp members and its start-up members.
Is this what Steve Rowan said? Is this why EPO management declines to engage with IPQC?
The Convention Watchdog
The standards of patentability are set by the legislator and to be applied by the patent offices and the courts. Applicants have to play the game according to these rules. If users of the patent system realize that their competitors obtain patents on trivial improvments they have to do the same in order to remain competitive. As a result, it is up to the courts correct too low standards applied by the patent offices in individual cases. However, this is detrimental to legal certainty and costs a lot of money. Eventually, this is particularly disadvantageous for SMEs which cannot afford costly litigation. Thus, the EPO should do its job and produce reliable search reports and perform a thorough examination. This may not be welcome to some contracting states which are only interested in a high number of granted patents and their share of the renewal fees using the EPO as a milk cow without any own effort.
Filing an opposition and failing is not a good idea, for the patent then has enhanced presumption of validity. So those contemplating opposition put a lot of effort into finding prior art good enough to dispose of the threat from the newly granted patent, and only file opposition if their newly-found art does the business. The search lasers in on the feature combination of the granted claim 1. That’s why so many oppositions succeed.
Thanks to the world-leading clarity of the established case law of the EPO, opponents already know, with a high degree of certainty, whether their opposition will succeed, even before they file it, once they have digested their prior art attack reference collection. That is what delivers greater FTO opinion confidence in Europe than in another leading patent jurisdiction that I could mention. Both SME’s and BigCorp should be grateful for that far from small mercy.
Can the EPO devote for the entire rambling (every which way AND loose, all over the shop) disclosure of every newly filed patent application a budget for searching that comes anywhere near the budget a putative opponent will allocate for searching granted claim 1? I think not.
The key issue is how many search hours shall the EPO allocate to each new patent application, to go through the ever greater millions of prior art references. Wise and experienced commentators tell us that search quality at the EPO is declining, and I daresay that is true, but i) is a degree of decline more or less inevitable and ii) is the decline in fact even worse in others of the world’s bulk-filing and world-leading Patent Offices?
There must be a big variation between fields of technology.
Drop is obvious in computer implemented inventions. Very often you get an impression that the examiner wants to kill the application only using lack of clarity and insufficienty of disclosure objections. Sometimes the objections are ridiculous. It is difficult to explain to smaller clients (bigger have professional patent people, they already know) why the EPO acts like this when every other office has been able to understand the invention.
That the quality of the “products” delivered by the office is steadily going down is not surprising. Just a very cursive look at decisions of the boards after appeal on opposition shows the problem. Lots of patents should not have been granted. The search is too summary and examination is also hurried up.
The problem starts with the search. If the search is messed up, the resulting patent can have little validity. In The Hague, the maxim still seems to apply that only the search is important and the examination is really nothing more than wordplay. A good search is a search which has revealed X documents. There are search reports that only contain either A or X documents. And then the opponent comes up with the relevant document that was not found during the original search! It can even be a prior art under Art 54(3) from the applicant/proprietor himself!
Another aspect that also needs to be discussed is the fact that the EPO carries out about 40% of PCT Chapter 1 searches. The problem of poor searches is not only a problem for Europe, but also a global problem. WIPO does not have the resources and capabilities to scrutinise search results, but caution is also required here.
The latest action by the Office’s management, regardless of whether it complies with the EPC, is nothing more than a smokescreen designed to reassure the Administrative Council. The office management can then easily claim that it takes quality very seriously and takes appropriate measures. That no time is left to examiners to do the required checks is another oddity.
Another problem is that very few examiners are still in the office buildings. Under the “Bringing Teams Together” banner, examiners are mainly working from home and contact between examiners has deteriorated.
This can often be observed in the case of serious procedural violations. The first examiner lets something go and the two other members of the division sign without even batting an eyelid. You can no longer walk down the corridor and discuss the matter with your colleagues because on top of it, there isn’t enough time.
Although opposition cannot be used directly as a general quality criterion, the decisions of the boards after opposition give a good idea of what the situation can be with patents that have not been opposed.
Dear Max Drei,
With due respect to your age and experience, I have to strongly disagree with what you said.
I would be very weary to generalise what you experience in your specific field of activity.
You might be satisfied with what the EPO delivers to your client, but you cannot generalise this stance.
There are plenty of reasons not to be satisfied with the work done by the EPO.
A bulk of reasons is given just above here. There are more in the interview.
Your statement will certainly be welcomed by the upper management of the EPO as it will reinforce it in its denegation of a lowering quality. It will not benefit to all the other users of the system which truly have difficulties with what is delivered by the EPO.
The EPO is not refusing every marginal case, it is simply granting lots of patents which should never have been granted for lack of finding the relevant prior art. This is the sad reality, may be not in all technical areas, but in lots of them.
I’d be interested in the original publication of the PhD student. While I do not disagree that there is room for improvement at the EPO, the numbers sound odd to me.
According to the annual report of the Boards (https://link.epo.org/web/Annual%20Report%20BoA%202022_EN_final_rev_230609.pdf), in 2022 a total of 2.305 inter partes cases were settled and a total of 1 051 cases were withdrawn. That leaves approx. 1250 cases in which a decision was issued. Again according to the same annual report, in 520 of these cases, the appeal(s) was (were) dismissed.
So even when only looking at the decided cases (most likely a heavily biased sample), the decision of the OD was overturned in at most 59% of the cases according to the BoAs (and I do not find it probable that they publish wrong numbers).
Last, the assumption that the Boards always get it right underlying the whole exercise is also not a given in my opinion.
I have the same impression as Max Drei, quality is still as good as it has to be and statistics from appealed opposition procedures are neither quality-relavant nor have been proven to decline at all. And I imagine how much more worried the industry in China, Japan, USA, etc. should be if you just look at the patent quality standards there. I agree also that patent quality depends mostly from the search done, this is unconfutable. I hadn’t heard of this search division, is not a bad idea if you consider the vital importance of the search results, but it would only be useful if a search gets complemented or integrated by another division examiner, otherwise I cannot understand its purpose (but I will ask directly to my former colleague who joined the EPO few months ago …). And I find it much better for the IPQC to dialogue with the Administrative Council, I think they have there more chances to really change something and get the EPO listening to them (they are the real decision-makers at the end)
Not sure what good it does, Sniffer, for the IPQC to try to get a dialogue going with the AC on the subject of patent “quality”. My impression is that the AC is at least complicit and perhaps even in the driving seat, when it comes to EPO management efforts determinedly to milk the cash cow dry, by driving up fee income and driving down overhead costs (including search quality) regardless of consequences for the competitiveness of industry in Europe.
But having said that, if anybody can bring effective pressure to bear on the AC (and through it the governments of the EPC Member States) it is surely global BigCorp, as represented by the IPQC.
“the AC is at least complicit and perhaps even in the driving seat, when it comes to EPO management efforts determinedly to milk the cash cow dry, by driving up fee income and driving down overhead costs (including search quality) regardless of consequences for the competitiveness of industry in Europe.”
It’s called a ‘conflict of interests’. Follow the Money, the system is corrupt.
I checked also with my colleagues and we have not find a decrease in quality in EPO examination proceedings with regards to examination of novelty and inventive step.
In terms of pure searches the quality of the EPO is often lower than the USPTO (from a European perspective) but overall the quality of examination proceedings is better at the EPO than anywhere else, provided that an important piece of prior art has not been missed during the search.
Opposition statistics are not relevant unless you consider the ratio oppositions/grants: if the big industries think that recent patents should not be granted, then they should file more opposition and this ratio should increase, otherwise they should not compain, since they have all means to file oppositions and appeals (while SMEs do not have sufficient resources to do so).
By the way, it is a general feeling (correct me if I am wrong) that ODs tend to support proprietors and BoAs tend to support opponents.
P.S.: there is indeed a significant drop in quality due to absurd art. 84 EPC objections, but this is another (big) issue
I fully agree on absurd clarity objections … I have the impression they are used as a short cut for avoiding to dive too much into the application or to fully understand it …
OK, it’s a whole different issue. But why the absurd Art 84 objections?
Perhaps because Examiners are not stupid. Their highest priority is to meet the targets set for them by EPO management. Management can measure some values better than others. Is it possible to set metrics for the quality of the obviousness enquiry under Art 56 EPC?
I guess this is why I keep on getting Rule 71(3) communications with screwball edits in the Druckexemplar. Do Examiners get a productivity point for each one they insert, or what? Is this what management spends its time measuring?
I think production is measured as the number of procedures that are finalized to an end, however, what I am experiencing with some examiners is that they tend to not bother understanding the application or even the prior art, but just shoot out always similar interpretation/clarity issues that force us to amend with a very specific example from the description (randomly taken?) and then they grant, I have the impression they need to show that we have somehow amended (narrowed down) and so every internal check is passed, if this is the goal using lack of essential features or insufficiency of disclosure (or lack of support in the sense of clarity) is indeed the easiest way to reach it, but they have to understand that we are here to define a certain protection scope with a clear and fair (it means as broad as allowable) contour, not to draft a technical paper of the invention that every one can consult and practically implement by reading only the claims
The discussion here illustrates how difficult it is to define / measure “quality”. Nevertheless, an EXTREMELY important measure is, or at least ought to be, what users PERCEIVE to be the quality of the EPO’s output. It therefore speaks volumes that the EPO’s management is refusing to engage with IPQC. From this we can deduce that the EPO’s management simply does not care that its output is receiving very poor marks on an important measure of (perceived) quality.
We can also deduce that, with respect to (perceived) quality, the motivations of the EPO’s management are completely misaligned with the objective of delivering an output which meets the legitimate expectations of its users. The reasons for this misalignment clearly have much to do with the EPO’s dysfunctional governance, and the (lack of) mechanisms for ensuring accountability.
As for my own experience, I tend to feel that most EPO examiners, divisions, Boards, etc. are doing their best in the time available to them. Also, depending upon their experience, I feel that most examiners generally spot the majority of the most prominent grounds for objection.
Nevertheless, it appears to me that there are two main factors that have gradually eroded, and are continuing to further erode, the “quality” of the EPO’s output.
The first factor is the (continual) reduction of the amount of time afforded to each task. For even the most experienced and able patent practitioner, there will be an amount of time that is simply too short to conduct a reasonable examination of a case. My feeling is that this lower limit is being breached in more and more cases.
The second factor is the internal instructions given to examiners. Here, my suspicion is that examiners are discouraged from pushing back too hard when an applicant has provided a plausible response to all objections. Whilst it is nice that applicants are receiving the benefit of the doubt, my feeling is that this is leading to more and more cases proceeding to grant in situations where the applicant’s responses do not withstand detailed scrutiny.
I might also question whether there are internal instructions which have the effect of limiting the number of potentially prejudicial prior art documents that are uncovered by the EPO’s search. In any event, the overall effect of the above-mentioned factors has been obvious for all to see in the EPO’s grant statistics. I mean, are we really meant to believe that, compared to the situation before about 2010, applicants filing at the EPO are suddenly doing a much better job at only filing applications that are directed towards subject matter which is patentable over the prior art?
I would also observe that the overall effect of examination / grant trends since about 2010 has been to significantly increase the annual fee income that EPC states derive from granted EP patents. Whilst a cynical observer might point out that this provides the EPC states with a strong motivation to perpetuate that trend, I could not possibly comment.
“Siemens for example has more and more software patents, usually in different jurisdictions. With the Unitary Patent you have one patent that is valid for the entire European Union. It speaks for itself that quality is important.”
We were sold the UPC was not about software patents… Or maybe it was.
Indeed, I wonder where the statistics with 90% differences in opinion come from. Sounds very irrealistic. It would also be irrealistic to have 90% agreement. Otherwise what would be the function of a supreme court when it allways agrees with the lower court? In more cases than few there is a considerable grey zone when applying the law which adds to the complexity of each technology. It is for sure on the interest of the parties to have a further opinion, which can or not be the same. From a legal point of view to separate decisions into right and wrong is rather surprising and lacks impartiality.
When I started working at the EPO before 2000 (exact date not given due to fear of retribution) we carried out about 70 searches per year. All my searches concerned arguments related to my PhD studies and there was enough time to understand what the applicant had actually invented and to consult colleagues when we needed help, so to prepare a comprehensive Search Report that I was proud of. There were 3000 search examiners in The Hague, 100 directors and 3 principal directors.
Now we are supposed to carry out at least 120 searches and grants per year, let alone all other communications and oral proceedings. My searches concern “chemistry” when I am lucky. I often only have the time to read the claims and try to guess what the invention is about. The rest of my working day is filled with useless formal paperwork consisting in ticking boxes, copy pasting standard clauses and running automatic search tools which give random results from where I pick up some documents that I feel might somehow relate to what the application is about. The ridiculous “active search division” is just the last layer of usefulness. There are now 5000 examiners in The Hague, Munich and Berlin. And we are fleeing away. Directors in DG1-operation (yes, those actually dealing with examiners) are now 22 (yes, 22. That’s today’s news) but there are hundreds of directors, principal directors, leaders, coordinators and so many other fancy titles spread all over the EPO. Most of them have never met an examiner.
And then there is the big boss. The one who made all this possible – with the help of his horrible predecessor – and will stay there at least until 2028.
We tried as much as we could to warn you all that this could have happened. We fought hard. We lost. My resignation letter has already been accepted.
Enjoy the ride.
Our team manager was at a management about a month ago shortly after the industry patent quality charter published an article in the press. The management was furious that they went public instead of entering a discussion with them behind closed doors. Apparently, the article was presented like a smear campaign and that the quality initiative ignored all the progresses we made on quality.
I am trying to cite what I heard more or less verbatim, but I do not know whether my team manager reported correctly.
I am in contact with European and US professional associations. How can we start a conversation?
Sorry for the lenght, but here are some further thoughts in view of the published comments:
It is clear that the results of opposition proceedings cannot be the overall measure of the quality of work at the EPO. They are however a precious indicator, to adopt the EPO’s jargon a key performance indicator.
In view of the costs, litigation at national level is only occurring as last resort. It would however be interesting if the EPO would publish corresponding figures. It is the only organisation which has the means for carrying out such an investigation.
In some areas there are no oppositions, in others there are plenty. The bulk of oppositions are most often in areas where a lot of money is to be made. For a long time absorbable products were extremely prone to oppositions. More recently there were quite a lot in hair-colouring compositions. Presently they seem more evenly distributed.
They are for instance numerous in new technologies as with emerging technologies it is important to keep contenders out of the market. When a SME working in such emerging market takes the bother to file for a patent and sees this patent ruined due to an incomplete search, it is very bitter for it.
There are certainly some areas in which a drop of quality is less perceivable as in others, but it would be good not just to ignore for this reason what happens in other areas.
The boards of appeal might take some decisions which sometimes warrant one’s eyebrows raising. They are luckily rather an exception. As the boards of appeal of the EPO are the last instance deciding on the validity of a patent, what other benchmark than published decisions of the boards is available? After appeal in opposition, we can see how search and grant procedure went on.
When looking at published decisions after appeal in opposition, defects in the whole grant procedure become apparent. It would be foolish to linearly extrapolate the results from published board’s decisions, but the results cannot be dismissed as insignificant.
One reason of the drop in quality can also be seen in the reduction of training time. In the early days of examination training time was 3 years. When BEST was installed, the training time for search and examination was 3 hours. With the advent of 5 years contracts, training time has shrunk to 2 years. Newcomers are certainly not more intelligent than their predecessors, and the IT tools are not compensating for the lack of training. Those IT tools are often criticised by examiners as they are sometimes more a burden than a help.
When it turns out that the decision of the OD was overturned in 59% of the cases according to the own figures of the BA, an alarm bell should ring. In any system with two instances, if the second instance has to set aside 59% of decisions of the first one, there is manifestly a problem. This is the more so, since the EPO has installed directorates specialised in oppositions. Not all examiners are trained in opposition.
The picture is neither completely black nor completely white as the EPO suggests. It is somewhere in between, but my guess is, in view of what comes out from the boards, quite dark and should urgently be looked at. The EPO repeatedly claims that it delivers better work than the other big IP offices, but when you compare nothing with a little, you will always look better.
The success of the EPO was due to its quality of work and to its user friendliness. Since the EPO is, since roughly 2012, just considered as a cash cow, the users do not any longer receive what they used to receive and pay for.
Please read training time for BEST 3 years and not 3 hours. R 139 should applyby analogy!
As the concerned examiner points out, the quality discussion has been going on for some time. While EPO and IPQC in some way represent the extremes on the spectrum of opinions regarding EPO patent quality, there are variety of other opinions between these two extremes, some closer to one, some to the other. While everybody, including EPO management, will agree that there is potential for improvement, I feel that there is a little too much finger-pointing and not enough mirror-looking.
Mr. Weibel points out that the EPO doubled its out-put over the last 12 years. Has the EPO doubled the number of examiners in that same period? If not, is it surprising that examiners are stressed and that the quality of the patents is going down?
Reactivation of channels of communication is the only solution and the dissatisfied users must understand the EPO’s negotiation position clearly. The EPO having the upper hand, does not describe the situation as well as the German expression of “den längeren Hebel haben” having the longer lever and I like the Spanish expression of “tener la sarten por el mango” (having the pan by its handle) even better.
If IPQC wants to save this relationship, it should do what successfully and happily married people do, “swallow your pride and bite your toungue; considering my own shortcomings, my wife probably does that more often than I do.
Mr Weibel says (capitals added):
“Interestingly enough, a PhD student carried out an analysis of Board of Appeal decisions of OPPOSITION proceedings, focusing on about thousand cases from 2022. It turned out that there was an extremely high change rate. In nearly 90% of the cases, the Boards of Appeal changed the decision of the 0PPOSITION DIVISION. In 40% they upheld the patent in an amended form and in about 50% of the cases the patent was completely revoked.”
And then he says:
“Anyhow, if 90% of the decisions of the opposition division and the EXAMINING DIVISIONS are apparently regarded by the Boards of Appeal as being wrong, that doesn’t speak for the quality of these instances.”
There is no evidence at all that 90% of appealed examining division decisions are overturned. This assertion in the interview is wrong, in my view to the point of being ludicrous.
(Indeed if so many exam div decisions – ie decisons to refuse an application – were being overturned it would mean that the epo was applying too strict a standard and wrongly refusing ‘high quality’ applications – such as those of IPQC companies 😉 – rather than granting patents on too many ‘low quality’ applications