Executive Summary of the Meeting of the ICT Thematic Group of the EPPC

The ICT Subcommittee of the epi’s EPPC Committee met with the EPO’s Directors (henceforth: EPOD) of the ICT cluster (PD18) on 2 December 2015 in a third meeting.

1. An executive summary of the second meeting that shall be published in the epi Journal was accepted with minor edits.
2. The meeting had a strong focus on the completeness and pertinence of European searches in relation to later prosecution, as well as the number and applicability of clarity objections, for CII (computer implemented invention) applications. In addition to this, the EPOD advised about specific challenges and approaches taken in handling large filers’ portfolios within normal, established programs such as PACE, Early Certainty, and the complaints procedure.
   1. In discussing different BoA case law and its consequences, epi commended the approach of examiners prepared to take the effort to cite relevant documents in searches and office actions for all features of a claim – and sub-claims – rather than dismissing them on the basis of “non-technical”, “common knowledge”, or “design choice” objections without documentary evidence. epi expressed concern that non-technical motivation for inventions might easily be confused with non-technical problems and thus promote the frequency of such objections. epi held it should be possible to produce documents to support such objections to also facilitate better examination results. EPOD held that the number of “common knowledge” or “design choice” objections should decrease significantly given recent Examination Guideline changes. Also, continuous amendments and supplements to the Examination Guidelines should give better guidance to Examiners to distinguish features contributing to technical effect from those that don’t and thus ultimately improve searches and examination results. To support the understanding and correct assessment of the objective technical problem, as well as the aspects of the invention contributing to its solution, EPOD considers that applications should be drafted with greater implementation detail. This would also help to avoid inappropriate “non-technical” or “common knowledge” objections.
   2. epi expressed the opinion that the number of terminology-based clarity objections in CII applications seems very high and their merit sometimes questionable. Objections may be based on documents or other uses of the objected term with a different meaning but entirely unrelated to the specification. Still, Examiners often correctly understand the terminology and issue pertinent search reports or office actions. EPOD notes that feedback from EPO-internal quality control often points out clarity as being an issue, and much is done to address that. However, EPOD encourages representatives’ feedback on allegedly inapplicable clarity objections to help improve Examiners’ training in this respect and thus moderate the extent of non-pertinent clarity objections.
   3. EPOD are generally amenable to receiving feedback from representatives. In appreciation of the point raised by epi that representatives do not wish to be seen to be “complaining” (due to a perception that this jeopardises the attorney-examiner relationship) EPOD will suggest a “re-branding” of the “complaints procedure” to a “user feedback procedure“.
   4. EPOD outlined recent developments in PACE and ECfS programs. In relation thereto, EPOD summarised its strategy to support applicants in managing large portfolios following official complaint about high levels of delay, by suggesting filing of a limited number of PACE requests at a time (eg. bi-monthly) that can be reasonably dealt with. This way, the system is not overloaded with massive numbers of PACE requests in one batch from large filers, and smaller filers continue to receive at least equal or even improved benefit from PACE. EPOD indicated that since this regime was put in place, and together with the effects of ECfS, the EPO has a much more effective processing of PACE requests in critical areas of high delay.