EPO: EPO Appeal Board condemns examination delay

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: EPO Appeal Board condemns examination delay

While the recently released EPO performance statistics for 2015 show an increase in the number of grants compared to the previous year and a decrease of backlog of searches by two thirds, delay in examination of pending cases is still of concern to some. A recent appeal decision rendered in the field of computer implemented inventions reveals that excessive examination delays do not amuse the Boards of Appeal. More specifically, in decision T 823/11 rendered in December 2015, Board 3.5.07 has ruled that duration of examination proceedings of more than 12 years must be regarded as excessive and amounts to a substantial procedural violation.

In the case appealed, the examining division had refused an application relating to the configuration of a clinical device in a patient care management system. The application entered the European phase in December 1997, and the firstinstance decision refusing the application was dispatched in September 2010. During the examination proceedings, the applicant sent two letters in 2004 and 2006, respectively, reminding the examining division of the case. According to the appeal decision, the applicant dealt adequately with the examining division's objections in the examination phase. An amended set of claims filed by the applicant during oral proceedings before the examining division was, however, not admitted into the proceedings.

In decision T 823/11, the Board of Appeal noted in particular the delay of more than five years between the issuance of the search report and the examining division's first communication. Referring to a judgment of the European Court of Human Rights dealing with delay of a national Norwegian patent application, the EPO appeal board held that the delay of the case, from which the appeal lies, was unacceptable having regard to the circumstances. The Board of Appeal further criticised the level of reasoning in the examining division's communications. The Board eventually admitted the applicant's auxiliary request, the subjectmatter of which was held patentable, and reimbursement of the appeal fee was ordered.

frederiksen.jpg

Jakob Pade Frederiksen


Inspicos P/SKogle Allé 2DK-2970 HoersholmCopenhagen, DenmarkTel: +45 7070 2422Fax: +45 7070 2423info@inspicos.comwww.inspicos.com

more from across site and SHARED ros bottom lb

More from across our site

Leighton Cassidy Legal hopes to leverage its founder's international experience and provide clients with a rare chance to receive litigation and prosecution under one umbrella
UKIPO rejects trademark application for 'Cristiano Ronaldo Origins' following opposition by Beck Greener client in a rare case that considered actual use
Partners at both firms have voted in favour of the tie-up, which marks ‘the largest law firm merger in history’
Head of IP, Andrew Brennan, and new partner, France Delord, explain how tech provides an edge in the battle for global brand owners’ business
Anton Hopen, shareholder at Trenam Law, shares how counsel should construct Section 101 claims as early 2026 PTAB data shows reversals rising in technical cases
Law firms should consider how they can help clients, as report calls on EU to use IP-backed financing to increase bloc’s competitiveness and attractiveness for businesses
In the final part of a series on challenging patent invalidation decisions in China, lawyers at Spruson & Ferguson and Marshall Gerstein share how courts adjudicate appeals
Stijn Debaene and Carina Gommers want Brussels-based Cast Law to be the place 'everybody wants to work'
The combination between Ashurst and Perkins Coie, which will create a $2.8 billion law firm, is expected to close in Q3
While Sipara will continue operating under its existing name and leadership for now, both firms plan to present a united front at the INTA Annual Meeting in London
Gift this article