Another Attempt at Deferred Examination:
New User Consultation by the EPO on Increased Flexibility in the Timing of the Examination Process
Dr. D. Herrmann (DE), Member fo the Editorial Committee
Since the launch of the "Early Certainty" initiative in 2014, the EPO has been advertising that the office has significantly reduced the length of the patent grant procedure. The still to achieve goal of this initiative is to reduce the average time for examining an application to 12 months. While some stakeholders have generally welcomed the faster processing of applications, as it provides information on the outcome of examination at an earlier stage, other stakeholders have argued that there are various instances at which applicants might need more time before the grant of a patent, for example, to adapt the claims to the parallel development of corresponding products or to determine the final choice of countries in which the patent is to be validated.
In the present EPO system, examination of EP-direct applications must be requested and the examination fee must be paid within 6 months of the publication of the search report and examination of Euro-PCT applications must be requested and the examination fee must be paid, in most circumstances, on entry into the European regional phase. Under this current system, the applicant has only a few means to start examination at the EPO earlier, such as by requesting early processing under Article 23(2) or 40(2) PCT, or to accelerate examination proceedings, such as by filing a PACE request or by waiving the Communications under Rules 161, 70/70a EPC. However, the applicant has otherwise no control over when examination begins. This is entirely dependent on when the EPO takes up the application for examination.
I. User-Driven Early Certainty (UDEC)
For the above reasons, the EPO presented again a proposal for deferred examination in autumn 2017, which was finally called "User-Driven Early Certainty (UDEC)" (initially: "Early Certainty with Flexibility"). UDEC was planned to allow applicants to postpone the start of substantive examination by a maximum of three years.
Deferred examination systems have been available in multiple countries, including all other IP5 Offices. One prominent example is also the German system where an applicant has a period of seven years from the date of filing in which to request examination and pay the examination fee. This has turned out to be attractive for applicants, who would like to make strategic decisions in context of the grant of a patent at a later stage. Such deferred examination even provides advantages for global patent strategies, because some applicants file a German national phase patent application in parallel to a Euro-PCT application and do initially not request examination for the German patent application to see how the European patent application turns out. That is, the German national phase patent application can serve as a sort of "back-up" for the case that the European patent application does not get granted with the desired scope and the applicant can "activate" the German patent application whenever desired within these 7 years. The German patent community has had good experiences with its deferred examination system and has thus been supporting deferred examination at the EPO.
The basic idea of UDEC was that an application, whether EP-direct or Euro-PCT, would proceed as so far up to the payment of the examination fee. Thus, as usual, the (S)EESR would be produced and the applicant would have to file a response to the ESOP. The applicant would also have to pay the examination fee according to the present rules of the EPC.
The new part would have started with the payment of the examination fee by the applicant. At this stage, the applicant could file a request to postpone examination for up to three years. The applicant would have been able to lift the postponement on request. Apart from the examination fee, no other fee would have been required. The new part of UDEC also included the option for a third party to file substantiated, non-anonymous (but with strawman filings being possible), third party observations. The effect of doing so would have been to lift the postponement of the examination of the application. No fee would have been required for lifting the postponement.
UDEC was also considered to provide advantages for the EPO. For example, the EPO could avoid the examination of applications in which applicants lost interest during the deferment. The overall expected effect of UDEC was that it could reduce, or at least more evenly distribute, the existing backlog. Moreover, as there were no fees involved in the proposal, the EPO considered that it could have been introduced as a change in practice with no need for a change of any rules.
However, there are also disadvantages for third parties. The period of legal uncertainty would be extended by several years. If third party observations needed to be filed, such as in context of FTOs, to lift the deferment, it may be necessary to carry out costly prior art searches and evaluate the results so that sufficiently substantiated observations can be filed.
The EPO held a user consultation for interested parties, including epi, at which the proposal for UEDC was discussed. Some parties were overall in favour and some were completely against the proposal. The content of the proposal was changed in response to user comments but maintained to be differed from the three year postponement from filing that the other IP5 Offices offer.
After the user consultation, the proposal for UDEC went to the Committee on Patent Law (CPL), which advises the Administrative Council (AC) on patent law, in the spring of 2018. After a controversial discussion, which mainly went against the proposal, the proposal was not presented to the next meeting of the AC and was not pursued further by the EPO (see also the article about UDEC by Chris Mercer in issue 2/2018 of epi Information).
II. New User Consultation
Until now. In November 2018, the EPO has launched a new online user consultation to again assess the interest of the stakeholders in increased flexibility in the timing of the examination process. This online consultation will remain open until 11 January 2019 and can be found here: https://forms.epo.org/law-practice/consultation/ongoing/increased-flexibility-examination-process-form.html.
By this new user consultation, stakeholders can submit their answers to a variety of questions regarding the following topics:
1. Need for more flexibility in the timing of examination
In particular, the EPO would like to know from the users, whether they
- are in favour of a procedural option for postponing examination of a European patent application and, if so, why?
- think that a postponed examination system would benefit the European patent system and why?
- are aware of any examples of economic and business impact of a postponed examination system.
- think that such a system would influence the strategy in filing patent applications or enforcing patents and, if so, how?
- think that a postponed examination system would benefit the public at large?
2. Possible features of a postponed examination system
In particular, the EPO would like to know from the users, whether
- all European and Euro-PCT applications should be eligible for postponed examination.
- any particular given implementation detail of a system of postponement would be considered the most suitable.
3. Third-party activation mechanism
In particular, the EPO would like to know from the users, whether and how third parties should be allowed to trigger the start of examination.
4. Office activation mechanism in a postponed examination scheme
In particular, the EPO would like to know from the users, in which situations the EPO should be allowed to start examination ex officio.
The users are also invited to submit any other suggestions for giving applicants greater control over the speed of the examination process.
All readers of epi information are kindly invited to reply to this survey.
III. Office-Driven Examination Control (ODEC)?
Overall, it appears that a careful balancing of the various interests of the applicants, the parties and the EPO could lead to a system of deferred examination at the EPO. On the one hand, it is argued that as long as the EPO continues to provide an EESR including an ESOP and the applicant is obliged to file a response to the ESOP and pay the examination fee, the applicants as well as third parties would have a reasonable basis to estimate what might happen during deferred examination proceedings. On the other hand, it is evident that the argumentation provided by the EPO in the ESOP is not carved in stone and unforeseeable claim amendments can of course be performed by using features from the description, so that there of course remains a certain degree of uncertainty about the outcome of the examination proceedings, which is immanent to deferred examination.
In any case, an increased flexibility for the grant proceedings at the EPO and more means to shape the global patent strategy would increase the need for advice by the profession of European patent attorneys, who should look out for upcoming legal changes in context of deferred examination.
The new user consultation shows that the EPO is planning to make another attempt at implementing deferred examination. As such a potential upcoming system would be proposed by the EPO, the term "Office-Driven Examination Control" (ODEC) was already suggested. It remains to be seen whether the new user consultation will lead to a new initiative by the EPO and whether such a new initiative will have higher chances to be approved by the stakeholders in the various EPC member states as it was the case for UDEC.