In recent years, the European Patent Office (EPO) has been making a renewed and concerted effort to tackle its backlogs of both pending applications and post-grant proceedings (i.e. oppositions and any corresponding appeals). The latest tactics look to reduce the number of pending applications, by financially encouraging the withdrawal of applications at an early stage, and to bring down the average duration of opposition proceedings by streamlining procedure, particularly for straightforward opposition cases.
The EPO has previously offered a full refund of the examination fee if the European patent application is withdrawn before the Examining division has assumed responsibility for the application and a 75% refund if withdrawn before the Examining Division has actually begun to substantively examine the application. This start date is recorded in the European Patent Register so that one can imply that substantive examination has not yet begun if no start date was available. Once substantive examination had begun, no refund was available.
However, the EPO has now amended the rules relating to fees to extend the availability of partial refunds by offering a 50% refund of the examination fee for withdrawal of a European patent application even after a first communication raising objections to the application has been issued by the Examining Division. This new refund will be available for applications where substantive examination of an application starts after 1st November 2016 and the application is withdrawn before the deadline for responding to the first such communication from the Examining Division.
Whilst this could be seen as throwing money at the problem, it does have the potential to significantly increase the amount of European patent applications that are actively withdrawn, which should cut down the number of applications that are pending at the EPO. In combination with the extended European search report (EESR), which provides applicants with a first examination opinion together with the search report, applicants will be able to respond to the first examination opinion issued by the Search Division (with amendments if desired) and obtain the Examining Division’s comments on the applicant’s response for effectively 50% of the examination fee if the application is then withdrawn before the deadline for response.
This enables the applicant to ‘test the waters’ at the Examining Division, while only committing to 50% of the examination fee; although the applicant will of course need to pay the full examination fee initially and then obtain the 50% refund subsequently. This can only be a good thing for applicants and indeed offers more flexibility in approach for the more cost conscious applicant.
But this is not the only change to the rules relating to fees, since 1st July 2016 applicants of all European patent applications that are withdrawn before substantive examination has begun will be entitled to the full refund of the examination fee. In order to enhance certainty during the gap between the Examining Division assuming responsibility and beginning substantive examination, the Examining Division will now begin to phase in the sending of a letter to the applicant setting a date before which the Examining Division will not begin substantive examination. This date will be communicated at least two months in advance and so may be used as a provisional deadline for the applicant to consider whether they want to proceed with the application. However, the actual start of substantive examination may of course be later and so there is still a possibility that the full refund may be available shortly after the communicated date has passed. It will be interesting to see how accurately the EPO Examiners are able to predict the start of substantive examination.
The additional refunded amount during the period where the Examining Division has assumed responsibility but not started substantive examination will be welcome to applicants withdrawing their applications during this time; however, it seems unlikely that the additional 25% refund will push many applicants, who otherwise would have continued, to actively withdraw their applications. Especially since the 50% refund introduced above may actually encourage some applicants, that may have otherwise considered withdrawing an application, to hold out for the Examining Division’s first communication.
In combination with some internal changes, the EPO is hoping to bring the average pendency of granted applications down to 12 months from the start of examination. It remains to be seen whether the above will be enough to achieve this admirable aim.
The EPO introduced a further change in practice on 1st July 2016, namely the streamlined opposition procedure we initially reported here. The EPO aims for the streamlined procedure to cut the overall duration of opposition procedure for cases that do not involve specific legal complications from an average of 26 months to just 15 months.
As previously reported, one simple step the EPO has taken is to restrict the availability of any extensions of time to periods for replying to communications from the Opposition Division to only exceptional cases with requests that substantiate these exceptional conditions. This will of course increase the pressure on the patentee during the four month term set for an initial response to the notice of opposition; however, it is worth bearing in mind that further written submissions may be provided in response to the summons to oral proceedings communication where this has been requested.
An ‘exceptional’ criterion is also applied to the ability to change the date of oral proceedings in front of the Board of Appeal as set out in their Rules of Procedure so we might be able to surmise that similar reasons may apply to these extensions. Some acceptable reasons given have been the need to perform tests regarding the invention in response to the other parties’ arguments, serious illness of a representative or unrepresented client, marriage of a person whose participation is required, a family death or trips that have already been firmly booked. However, it is likely to be much harder to prove that these reasons apply for a proportion of the period for response such that an extension is appropriate as opposed to the unsuitability of a given date for oral proceedings.
After the Opposition Division has received the patentee’s reply they will issue a further action. While this may invite the parties to reply in writing within a time limit, it is clear that the Opposition Division is under pressure for this action to be a summons to oral proceedings in the majority of cases. The EPO has also adjusted their internal procedure to try to reduce the time taken for this action to issue so that the summons should be received within around 5 months from the patentee’s reply rather than 11 months or more.
EPO rules require that summons to oral proceedings be issued at least two months in advance of the date set, but the new notice on procedure specifies that at least six months’ notice must be given in a summons to oral proceedings in opposition procedure. According to the EPO, this gives parties more time to react to the summons; however this advance notice was already common opposition procedure. Indeed, the final date set in the summons for written submissions will now typically be two months before the date of the oral proceedings (rather than just one month as was previously common) and so the parties may actually have less time to respond to the summons.
Because of the restriction to the availability of extensions of time, it is possible that it will be more common for patentees to introduce additional arguments when filing the final written submissions that were not prepared in time for the initial response to the notice of opposition. However, one thing that we can agree on is that both parties will now have longer (i.e. two months rather than just one) to consider the final written submissions of the other party in preparation for the date of the oral proceedings. This may mitigate the effect of any increase in the number of arguments presented at the final written submissions stage.
It will be interesting to see how long it takes the EPO to meet reduce its backlog in order to meet these objectives for examination and opposition proceedings. It took the EPO two years to meet their aim of issuing all EESRs within six months from filing and I suspect these changes may be a harder nut to crack. Especially in examination proceedings where not all applicants enjoy life in the fast lane.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.