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How the EPO aims to improve legal certainty

James Nurton, London

The European Patent Office has launched a project called Early Certainty from Search. The Office’s Vice President Guillaume Minnoye tells James Nurton why it is needed, and explains how it will benefit both applicants and third parties

Like most patent offices worldwide, the EPO has seen significant growth in filings in the past decade. Last year, the Office received 265,690 applications – a 2.8% rise on the 2012 figure, and a 47% rise on the number received in 2004. If recent trends continue, it will soon pass the milestone of 300,000 applications a year (roughly 820 every day).

That growth presents great challenges to the Office, even before you consider that patent applications in many fields are becoming bigger and more complex, and there is ever more prior art to search. Like many other patent offices, the EPO faces the prospect of backlogs becoming even bigger than they already are, and processing times taking longer – an undesirable outcome for applicants, third parties and the Office itself.

Beating the backlog

Part of the EPO’s response to that is to improve efficiency, says one of the Office’s vice presidents, Guillaume Minnoye (pictured), who is in charge of operations. “We have converted 120 posts from patent administration work, which has been automated, into examiner posts and thereby recruited an additional 120 examiners,” he told Managing IP earlier this year, adding that the Office is always trying to increase efficiency and improve IT systems. But, he said, such initiatives do not go far enough in creating certainty for applicants and the public.

That is where Early Certainty from Search comes in. The project was formally launched in July this year, following a period of consultation with users – which Minnoye says resulted in “very positive” comments. As its title suggests, the aim of the project is simple: to give patent applicants and others a clearer view of prior art and patentability issues as soon as possible. There are four prongs to the strategy:

(1) Issue all search reports and written opinions on patentability within six months of filing;

(2) Prioritise completion of examination files already started over beginning work on new files;

(3) Expedite grants once a positive search opinion has been received;

(4) Prioritise processing of cases where substantiated (not anonymous) third-party observations are filed, and also of oppositions and requests for limitation/revocation.

Minnoye says the project builds on earlier projects at the Office, notably the Raising the Bar initiative and the introduction of the search opinion in 2005: “These provide a search report of a high standard and also an opinion which is de facto the opinion of the examiner on the patentability of the subject matter in the application. We know that is very much appreciated in the patent world. We only hear positive comments on that.”

The changes are designed to empower applicants – armed with an early search report and opinion they are better placed to be able to decide whether to pursue examination of their application (and if so how quickly) or sit on it, and also make any changes that the examiner requires. But Minnoye stresses that they will also benefit the general public and competitors, as search results will become public at the earliest possible time: “That allows both the public and applicant to judge the validity.”

Advanced examination

Initial reactions from patent attorneys in Europe have been positive, given concerns over the number of applications that are stuck for years at the EPO, apparently going nowhere but nevertheless racking up renewal fees. However, there have also been concerns about how the new project will work in practice and which if any applications will be de-prioritised, as well as whether the new process will create additional burdens on examiners. The initiative also does not directly affect oppositions or appeals, which is where time delays (and legal costs) can really mount up.

Minnoye argues that this latest EPO project “goes back to the values of the original EPC creators” as it is technology- and applicant-neutral, unlike some initiatives in other offices (though he acknowledges that certain fields such as thermodynamics need particular attention when it comes to backlogs). He also distinguishes it from deferred examination, as available in other offices, saying: “This is not deferred examination. This is advanced examination.”

With the Unitary Patent due to be launched within the next two years (see box), there will be more attention than ever on the EPO and in particular the efficiency of the search and examination process. Patent applicants and attorneys, as well as others interested in the IP system and technology generally, will be watching carefully to see how effective Early Certainty from Search proves.


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