Increased Flexibility in the Timing of the Examination Process

C. Mercer (GB)C. Mercer (GB)

Question 1: Would you be in favour of a procedural option for postponing examination of a European patent application and, if so, could you explain why? No

Comments/reasons/examples: This reply is filed on behalf of the Institute of Professional Representatives before the European Patent Office (epi). epi has considered this question a number of times and its Council has consistently decided that it is not in favour of any form of deferred examination. epi notes that deferred examination was considered during the drafting of EPC 1973 but was rejected. Moreover, in the drafting of EPC 2000, Article 95 EPC 1973, which was on a related topic, was deleted. lt therefore appears that the legislators are against any proposal for deferring examination. epi continues to hold the position that there should be NO system for deferring examination.

Question 2: In your view, would a postponed examination system benefit the European patent system? Could you explain why?: No

Comments/reasons/examples: Any proposal to defer examination would lead to increased legal uncertainty. This would be to the detriment of the system as a whole and would in particular be to the detriment of third parties who are adversely affected by any continued legal uncertainty. lt may also be to the detriment of any applicant using such a system as it may be held by the EU Commission to be anti-competitive as it might enable the applicant to maintain an advantageous market position on the basis of an unexamined application. lt also seems to be contrary to the objectives of the EPO which aims to provide early, not delayed, certainty.

Question 3: In your view, what might be the economic and business impact of a postponed examination system?

Comments/reasons/examples: The economic and business impact of a deferred examination system would be a significant reduction in competition and a hindrance to further research and development. In order to decide on whether it can enter a particular market, a technology-based company needs to know how other parties' patents will affect its plans. If the grant of patents is deferred, such companies will not be able to decide whether to enter the market and so competition will be reduced. If such a company wants to clarify the situation, it will need to do the work the EPO is paid to do by filing third party observations (TPOs). Thus, a financial burden is placed on such companies but no such burden is placed on applicants. The same is true if a competitor is trying to develop an improved product or process. Research into such improved products or processes will be inhibited by the existence of unexamined applications. Thus, the business and economic impact is negative.

Question 4: In your view, would such a system influence applicants'/patentees'. behaviour in filing patent applications or enforcing patents and, if so, how? Yes

Comments/reasons/examples: Applicants already have a number of options for conducting prosecution. For instance, prosecution can be speeded up by requesting PACE or slowed down by taking advantage of procedural steps already available (requesting extensions, further processing, requesting oral proceedings). If applicants are provided with another option, they will use it to their advantage and to their competitors disadvantage.

Question 5: In your view. would such a system benefit the public at large? No

Comments/reasons/examples: The basic bargain underlying the patent system is that an applicant discloses an invention to the public in return for which the granting authority gives the applicant a limited monopoly for any invention which meets the requirements for grant. If examination is deferred, the applicant has a de facto monopoly for everything covered by the application, even if it is not patentable. This breaks the bargain. If the application is examined promptly, then the harm is small. If the examination is deferred, the harm becomes greater.

Question 6: Would such a system have an impact on competitors' behaviour?: Yes

Comments/reasons/examples: A competitor will want legal certainty. If such legal certainty cannot be obtained because examination has been deferred, the competitor can either take action, for instance by filing TPOs, or can decide not to compete. In the former case. the competitor has to incur expense to do the work the EPO is paid to do. This has an adverse financial effect on the third party. In the latter case, there is no competition and so the general public is likely to be adversely affected by higher prices. The answers to questions 2 to 6 support epi's view that NO system of deferred examination should be introduced.

Question 7: Should all European and Euro-PCT applications be eligible for postponed examination? If so, why? lf not, please indicate what limitations on eligibility could be envisaged.: No

Comments/reasons/examples: epi considers that there should be no deferred examination system. However, epi also considers that, during examination, there should be no discrimination between applications on the basis of the route taken to reach the EPO. lt is considered that examination of all applications should, as far as practical, start at the same time relative to the earliest claimed priority date. In other IP5 offices, the latest that examination can start is 3 years from the filing date. In the EPO, substantive examination should start at the latest at 4 years from the earliest claimed priority date. lt could be considered whether the opportunity to request deferment of examination should be afforded ONLY to small entities. lt is considered that there should be no opportunity to request deferment of any divisional application.

Question 8. Which postponement option would you consider the most suitable?: Other (e.g. postponed search, postponed decision to grant; please specify)

Comments/reasons/examples: epi considers that no option of deferment should be adopted. There should be no postponement of search. The EPO is providing a very useful service to the system by providing its search reports within, generally, 6 months. This provides everyone in the system with very valuable information regarding possible outcomes of the examination process. However, it does not provide complete certainty because there is no indication of the arguments or amendments that an applicant might submit. Any deferment of search would be adverse. Deferment of examination is not favoured for the reasons set forth above. Deferment of grant might be an option as, although it would increase legal certainty to a certain extent, it would not require the applicant to go through the expansive grant procedure until later. However, even such an option would need safeguards for third parties and would need careful examination.

Question 9: How should the postponement of examination be activated?: By filing a request

Comments/reasons/examples: epi still considers that no system of deferred examination should be introduced. However, assuming that one were to be introduced and assuming that the applicant has paid all the necessary fees, including the examination fee, before making a request for deferment, then it would seem that; merely filing a request should be sufficient. However, a fee could be required as long as the fee were to be set at a level such that its administration does not place a financial burden on the EPO.

Question 10: Depending on your reply to the previous question, when should a request for postponed examination be filed? Other (please specify) For Euro-PCT applications: Other (please specify)

Comment/reasons/examples: For Euro-direct applications. any request for deferment of examination should be filed after the applicant has taken all the required steps and paid all the fees necessary for examination to commence. Thus, the applicant must have filed a substantive response to the European Search Opinion and paid the examination fee. At this stage, the applicant could abandon the application and should have considered the value of the application. Thus, at this stage, the applicant should be in a good position to determine whether deferred examination is required. For Euro-PCT applications, most of which enter the EPO at 31 months, there has, mainly, already been a search and an IPRP. The applicant should therefore be in a position to decide on whether deferred examination is required at that stage. Thus, any request for deferment should be filed at the end of the 31 months period.

Question 11. What would be the appropriate starting point for a postponement period?: Priority date

Comments/reasons/examples: This could also be the date of filing. However, the earliest claimed priority date seems most appropriate as then all applications are treated identically. If there are different starting points for different types of application, then inequalities will exist. Such inequalities already exist as Euro-direct applications are examined on average earlier that Euro-PCT applications. Such inequalities should be eliminated.

Question 12 What should be the maximum length of the postponement period?: Other (please specify)

Comments/reasons/examples: This question cannot be answered sensibly as set because the starting point is not specified. lf, as in our answer to question 11, the starting point is the earliest claimed priority date, then the period should be a maximum of 4 years. This should allow the EPO to complete its further search and preliminary examination of Euro-PCT applications for which the EPO was not the ISA or IPEA and so all applications, of whatever sort, would then be on the same track.

Question 13: Should the fulfilment of any of the following requirements under the EPC be postponed until the start of examination and, if so, why? 1: Other (please specify)

Comments/reasons/examples: There should be no postponements. If there were to be a system of deferred examination, there should be no other postponements. The applicant should have to take all the steps it is presently required to take, in particular filing responses to search opinions, so as to reduce as far as possible the legal uncertainty caused by deferred examination.

Question 14: Should third parties be allowed to trigger the start of examination?: Yes

Comments/reasons/examples: Absolutely essential if, contrary to epi's view, a system of deferred examination were to be introduced.

Question 15 - How should a third party trigger the start of examination?: By filing an explicit request

Comments/reasons/examples: lf, contrary to epi’s view, a system of deferred examination were to be introduced, it should be balanced, if an applicant can request deferment merely by filing a request, then a third party should be able to lift the deferment merely by filing a request. There should be no financial burden for a third party to request the EPO to do what it should be doing.

Question 16: What further requirements should be attached to the third-party activation mechanism? 1: Other (please specify)

Comments/reasons/examples: The problem here is balancing the interests of third parties, the EPO and the applicant. Clearly, the EPO should be able to prevent abuse, by applicants or third parties, but should not be burdened with a procedure which is onerous and costly to implement. On the other hand, third parties should not be burdened by extra cost to undo a privilege granted to the applicant and should NOT be obliged to identify themselves to the applicant or the general public. Thus, third parties should NOT be charged a fee and should not need to be identified on the public part of the EPO file. However, a third party could be required to identify itself ONLY to the EPO so that the EPO can properly manage the system. epi notes that PACE requests are not placed on the public part of the file and so a balanced system would NOT require that requests for lifting deferment should be placed on the public part of the file.

Question 17. Should the Office be able to start examination ex officio at any time?: Yes

Comments/reasons/examples: The Office should be able to manage the examination procedure for its internal purposes. This would also contribute to maintaining the anonymity of any third party requesting the lifting of the deferment.

Question 18. In which of the following situations should the Office be allowed to start examination ex officio'? 1: Other (please specify)

Comments/reasons/examples: When a third party has requested the Office to do so or when the relevant directorate has reasonably exhausted other work.

Question 19: Do you have any other suggestions for giving applicants greater control over the speed of the examination process?: As epi is against any proposal for a deferred examination system, epi considers that applicants should NOT be given any control over the speed of the examination process. lt is the duty of the EPO to grant patents and it should do this by examining at a reasonable pace while ensuring the quality of the granted patents. Giving the applicant any more opportunities to control the speed of examination is contrary to the duty of the office.

Question 20. Would you be in favour of procedural options for further reducing the pendency of a European patent application? If so. please specify: No

Comments/reasons/examples: The question is unclear. What is the comparison for "further reducing"? However, to the extent that epi understands the question, epi considers that there are already enough options available to applicants and third parties. lf any other options are proposed, there should be a further consultation.