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

Cookies Settings

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

Armstrong Teasdale’s Jim Heinen Jr discusses the challenge of balancing billables, business development and family life and explains why not all patent lawyers are science nerds
From cross-border jurisdiction to the end of the transitional period, Powell Gilbert’s Ioana Sabau and Bryce Matthewson predict the biggest talking points ahead
A wave of office launches and lateral hires reflect the draw of patent disputes, but booming AI, semiconductor and data centre markets are offering an even bigger IP opportunity
The hire of Frederick Nicolle as a partner continues Pinsent Masons' expansion while reducing Simmons’ patent prosecution offering in London to zero
The expansion into Granada forms part of a national ‘decentralisation’ strategy focused on providing proximity to research and tech businesses away from traditional hubs
Three successive wins have got the firm eyeing additional opportunities as ITC work booms
While many firms remain focused on generative AI, recent hires and practice launches suggest the next battle may be for lawyers who understand how AI is moving into the physical world
The explosion of data centres has prompted patent pool operators to create new licensing opportunities
The court struck out copyright claims brought by Ladbrokes owner Entain, saying that ownership details should have been completed before litigation began
Düsseldorf has overtaken Munich as the UPC's busiest division, while firms including Winston Taylor, Clifford Chance, and Hoyng Rokh Monegier featured in disputes involving Abbott, Essity, Amazon and Hurom
Gift this article