On 25.05.2023, I had the opportunity to follow online a conference/discussion organised and hosted by the Department for IP of the University of Osnabruck.
Introduction to the event
Since the publication of the Patent Quality Charter by the European Patent Office (EPO), a lively discussion has flared up whether the EPO is setting the right priorities in improving processes and accurately assesses the interests of the stakeholders.
Between the lines, the EPO seems to be a “granting authority“, while users of the patent system would prefer an “examining authority“.
The right balance between effectiveness & thoroughness is a core problem of procedural law for which there is no one size fits all solution.
Rather, the procedure must be adapted to the objectives of the respective substantive law as well as the protected interests of the parties and the public. Accordingly it makes sense to consider who can make what contribution to improving patent quality.
Against this background, the initiators of the Industry Patent Quality Charter invited to a panel discussion on the occasion of the “Osnabrucker Patent Days 2023”.
Programme of the discussion
Welcome Beat Weibel
The advantage of substantive patent examination Mary-Rose McGuire
The EPO’s examination practice: a sample in figures Daniel Skiebe
The value of diligent search and examination from an industry perspective Jörg Thomaier
Patent grant rates: A question of examiner seriousness? Beat Rauber
Discussion Chair: Beat Weibel
The discussion took place on Thursday, 25 May 2023, 16h-17h30.
Brief report of the event
The head of the department as well as representatives of the IPQC spoke, but also a searcher from the university which presented some interesting figures.
At the beginning two diagrams were presented. On the one hand, the time used by applicants to prepare applications has apparently increased over time by around 35%, whereas in the same period, the time apparently used by examiners in order to deal with a file has decreased by around 40%.
The main reproach made towards the EPO is that it takes more care about the form and speed of decisions than their correctness.
As introduction the head of the IP department compared the pro and cons of determining the validity of an IP title a posteriori, which is in case of litigation, or up front that is by examination before grant. Both have advantages and disadvantages. One thing was however clear, if search and examination precede grant, both have to be of high quality.
The data provided by the searcher appear statistically significant and showed that the survival rate of patents after opposition and appeal is rather low. This seem to be the consequence of an incomplete search and examination. The analysis of the searcher was based on published decisions of the BA. The figures were broken down according to the filing year.
It is only in a low number of cases, 8,7%, that literature found by opponents was not available in the search files of the office.
A comparison of the survival rates after opposition (with a kind of equilibrium between the three possible outcomes) and appeal, showed that after appeal much more patents are revoked or maintained in amended form and the survival rate of unamended patents is much lower.
What was interesting was a comparison between the revocation/amendment rates between the BA and the German Federal Patent Court. Although for the latter, there are less cases, the figures are comparable.
According to the speakers from industry, the incomplete search seems due to the fact that, on the one hand, the prior art revealed by the search is incomplete, and on the other hand, not all the features of claim have been taken into account.
All speakers, but, for obvious reasons, not the searcher, have explained that in private conversations examiners complained about the ever increasing production pressure. This does not mean that examiners want a cushy job, on the contrary, they consider that they are just not given the resources, especially time wise, to correctly carry out their job.
One consequence is that examiners avoid as much as possible interviews and OP in examination and rather prefer to grant. Interviews and OP simply take too much time. It was pointed out that a request for OP in the event of refusal has become almost systematic, and yet there are not many OP in examination.
Although it was based on the observation of specific directorates, one speaker of the industry showed that decisions taken by experienced examiners are, as a group, much more coherent than decisions taken by examiners with less experience. For the latter he even spoke of a kind of lottery. One of the possible causes was inadequate training. The IPQC reiterated its offer for training of examiners.
One suggestion was to bring examiners more together and not only to discuss cases by electronic means. The necessity of more face to face meetings of examiners was insisted upon.
One case was reported, in which, with the communication under R 71(3) the e-mail exchange between members of the division was inadvertently attached. The examiner in charge expressed his doubts about patentability. The chair had also doubts, but advised grant, claiming that opposition would be a corrective…. The file number was not revealed, and the e-mail exchange had disappeared from the public part of the register.
What was also criticised was the length of the procedure, especially the time in appeal. An average length of 14 years was way too long. It was acknowledged that the situation is improving, but efforts still need to be made.
One industry speaker said that it is frustrating for an applicant/proprietor to have spent a lot of money to see its patent revoked after a long time, and for opponents to have as well to spend money in order to obtain a limitation or revocation of a patent. All this money could be saved if search and examination would have been carried out thoroughly. One added that speed is not everything.
An important comment was that some national courts presently refuse to grant preliminary injunctions based on EP patents, as they were not sure that those patents were strong enough. In case of an opposition or nullity, the proceedings are rather stayed. Some courts do not have the same approach and still quasi automatically grant preliminary injunctions. All in all, the situation is not satisfactory for proprietors or litigants.
One major concern expressed by all industry speakers was the upcoming of the UPC. Especially in view of the high costs of litigation before the UPC, industry speakers expressed their concern: what good is it, if patents do not survive a thorough review by the litigating parties at the end of this expensive procedure?
The head of the IP department noted with interest that some EPC contracting states, NL, FR, CH, were introducing examination and even opposition procedures. She concluded that the national route would become interesting again and would avoid the necessity to go to the UPC. In this respect, it is worth noting that FR and DE will accept the coexistence of a national and a patent with unitary effect.
A point which was briefly touched at the end of the meeting were the attempts of the EU Commission to interfere directly in patent matters by creating at the ‘EUIPO specialised sections dealing for instance with unitary SPCs and SEP/FRAND matters. All speakers noted that the EUIPO has no competence in patent matters and were rather hostile to the move envisaged by the EU.
Some speakers considered that the granting of unitary SPCs should be a task of the EPO and not of the EUIPO. All regretted the distance between the EU and the EPO.
All in all, the way the EPO deals with applications and patents was not considered too positive. All speakers however insisted that the EPO is working better than other patent offices, but in view of the perceived decline in quality, things had to improve at the EPO.
Don’t shoot the messenger. I am not in a position to decide on the correctness of the figures shown, but the overall impression was that a thorough work had been carried out at the University of Osnabruck.
The concerns expressed by the various speakers were genuine and at no moment one could have the impression that the speakers were criticizing the EPO for the sake of it.
The distance between the EPO and the EU is the direct consequence of the events preceding the creation of the EPO and the inability at the time of the European Community, now the European Union to agree on a patent for with unitary effect for the, then much smaller, European Community.
On the verge of the opening of the UPC the move of the EU Commission to open specialized departments at the EUIPO is difficult to follow.