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

As the US reflects on 250 years of independence, patent lawyers say innovation is reshaping old hiring priorities, with firms seeking broader IP expertise over specialisation
The Nokia v Acer ruling in the UK suggests arbitration is moving from the sidelines towards the mainstream of global FRAND disputes - and could reshape forum strategy in the process
The Life Sciences Awards is thrilled to present the shortlist for the 2026 Americas Awards
From Türkiye to Poland and Nigeria, firms with deep local roots continue to dominate the top tier, proving that market expertise can outweigh international scale in many CEE, Middle Eastern and African jurisdictions
Former Hoyng Rokh partner Simon Dack takes a leading PMAC role as busy firms continue to jostle for position
Franck Fougere, founder and managing partner of Ananda IP in Thailand, describes how the firm has developed a reputation for patent work and why he believes IP practice is set to change
After two decades at Kass International, Geetha Kandiah discusses the lessons that shaped her career, building an inclusive regional firm, and AI opportunities
Manisha Singh of LexOrbis discusses the need for commercial alignment with clients and why IP lawyers need to have curiosity at their core
As firms expand into integrated IP services, recent hires show the model's appeal – but high-profile departures reveal how quickly questions of depth and durability can emerge
In-house counsel say private practice firms either aren’t conveying sustainability messaging or simply ‘don’t care’, but a mindful approach to the topic could swing pitches
Gift this article