EPO: EPO Appeal Board condemns examination delay
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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 ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article