The European Patent Office published 96,000 granted patents in 2016, according to their 2016 Annual Report. This is a 40% increase over 2015 and an all-time record.
The EPO attributes the increase to improved productivity and efficiency measures introduced since 2014. The Early Certainty from Search programme, launched in 2014, undertook to ensure, for all applications, a high quality search report, with a preliminary opinion on patentability, within six months of filing. Having achieved this goal within two years, the EPO has subsequently taken steps to streamline other stages of the patent application process.
In examination proceedings, the aim is for grant to be concluded, on average, within 12 months of an application entering examination. To facilitate this, the EPO increased the previous 75% examination fee refund, available when an application is withdrawn before examination starts, to 100%, and introduced a new 50% refund when an application is withdrawn after the first Examination Report, with a view to reducing backlogs.
Post grant, a new, streamlined opposition procedure has also been introduced, with the aim of reducing the overall duration of oppositions from 26 months to 15.
But are record grant figures and increased productivity measures good news for applicants? The EPO Annual Report indicates a significantly reduced backlog, with stock of work decreased by 25% over two years. However, the report does not go on to reveal how many applications terminated without grant during 2016, or to give statistics on pendency times. It is therefore difficult to judge, at this stage, whether increased productivity measures have resulted in a pro-applicant shift at the EPO, or, taking an alternative view, in a dilution of quality.
And increased productivity measures have led to practical problems for applicants. Once applications hit examination, pressure for Examiners to conclude the process means that applicants often receive just one examination report before a summons to oral proceedings as the next step. This means a formal hearing at the EPO, terminating in allowance or refusal of the application. Once a summons is received, the pressure is on to present a strong and viable case to the Examining Division, backed up by alternative lines of argument to fall back on in the event that the main case for allowance is unsuccessful.
The need to present a main case and a number of fall back positions, coupled with the need to cover off possible objections that the examining division are entitled to raise without notice at the hearing, means that preparing for and attending oral proceedings can often involve as much work as several separate examination reports.
The process can be frustrating for applicants, particularly those used to the US system, where examination also progresses quickly once started, but where the process can proceed in writing through multiple rounds of examination, allowing arguments to be put to Examiners in successive rounds, without the threat of refusal if a particular argument is unsuccessful.
That said, in our experience, while European Examiners are now increasingly issuing a summons to oral proceedings at an early stage, they are also more receptive to written arguments submitted in the lead up to the hearing. If they can see a route through to allowance, they are generally prepared to enter into informal discussions ahead of the hearing, which can lead to allowance without the need to actually attend. Our general advice, therefore, on receipt of a summons to oral proceedings, is to submit written arguments early, to include pragmatic fall back positions, and to engage with the Examiner early on, with a view to reaching a resolution.
While the effect of increased productivity measures on backlogs and pendency times at the EPO are not yet known, it is clear is that prosecution, once examination has started, will move quickly. Whether this increase in speed is achieved at the expense of quality remains to be seen.
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.