The EPO announced on 5th July that it has published its first ever quality report. The report includes details of the EPO quality management and assurance systems including Examiner training but arguably the most interesting aspect is the section on timeliness of procedures. It describes the measures that the EPO has taken to try to reduce examination and opposition periods with varying degrees of success.
Search Reports – The percentage of international search reports delivered on time for publication with the application has increased from 90% in 2015 to almost 95% in 2016. For European applications, the EPO report that the median time for a search report and written opinion is 5.1 months. The use of median time in reporting EP search timeliness is telling and tallies with our experience – searches are either received before the 6 month EPO objective or markedly late. The report makes no mention of an average for the outlier cases or any comparison of median and mean times for either European search reports or international search reports. It therefore provides no way of determining whether some or all of the improvement is offset by corresponding increases to the timescales on the outlier cases. From a quality assessment perspective, it would be preferable to see assessment of outlier cases and mention of any measures to bring these cases more into line with EPO targets.
Examination – The report states the EPO’s objective to reduce the total time from request for examination to notice of intention to grant to 12 months on average by 2020. The 2016 median is reported as 23.3 months, down slightly from 23.5 months in 2015 but a long way from the 12 month target. It will require concerted effort from both the applicant and the EPO to reach the 12 month “on average” target. There will always be cases where it does not suit an applicant to fast track their application, for example because the applicant wishes to defer costs whilst they seek investment in, or sale of, their invention. Reporting the median, rather than mean time may focus on cases where the applicant shares the EPO’s desire for a shorter examination, but there will be significant numbers of outlier cases where the applicant is doing all they can to progress the case swiftly. It will be interesting to see how much progress towards its target the EPO can report next year.
Accelerated examination (PACE) – When a request for accelerated examination (PACE request) has been filed, the EPO aim to send an examination report or notice of intention to grant in a very speedy 3 months. The EPO met this target half of the time in 2016 but the report makes no attempt to quantify the average length of the examination process for PACE cases. There are several reasons why it would be difficult to give an average for such a case. PACE can be requested at any time so an application could have been waiting in a queue for examination for an indeterminate period before the PACE request is filed. An applicant does not have to give a reason for PACE but for many applications, the invention is particularly important to the applicant. Responding to an examination report on important cases can take more time to allow proper discussion of the different options for amendment between the attorney, the applicant and the inventors allowing them to weigh up which option best matches the business needs and goals of the applicant. Sometimes this means that an extension request must be filed even though this results in the application losing it PACE status. Tracking PACE cases is therefore not as straightforward as monitoring for a PACE request. Regardless of the rationale, the EO have not tried to report an average examination time for PACE cases but have stuck to the simple metric of three months to issue either an examination report or intention to grant. I believe that a far better, albeit incomplete, indication of quality in the EPO accelerated examination system would be provided were the EPO to take a subset of straightforward cases (those for which PACE was requested before examination started and the case remained within the PACE track to grant) and reported an average examination time of these cases for comparison with the average for non-PACE cases.
Opposition – Length of opposition proceedings fell in 2016, down from 26.1 months in 2015 to 24.8 months in 2016. 63% of users were unsatisfied with this aspect of the European patent application process. In July 2016, the EPO streamlined its opposition process with earlier allocation to the EPO examiner allowing for earlier oral proceedings with the goal of reducing the pendency of oppositions down to 15 months. The 2016 results will not be representative of oppositions handled under the new procedures so it would be reasonable to expect that the EPO may make good progress in reaching this goal with oppositions filed under the new process. Whether this will mean that earlier filed cases suffer longer delays to meet the new goals on late filed cases remains to be seen.
Ongoing pressures – The EPO do seem to be striving hard to ensure that the European patent application process remains fit for purpose and show a clear commitment to customer satisfaction with a rolling program of visits to users and regular user surveys. It continues to face ongoing pressure from the steadily increasing numbers of EP patent applications and international applications entering the EP regional phase (see EPO publication Facts and Figures 2017 available here EPO – Publications).
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.