1 Dec 2016 | Patents and Utility Models

The Initiative “Early certainty from Examination” – possible collateral damages and what this means for the applicant

Early certainty from examination for patent applications is the aim of the European Patent Office’s initiative which bears the same name. In the future, there should only be 12 months between the application for examination for the European Patent Application and the decision. It is not just quality which is to be delivered, this quality has to be delivered early for reasons of efficiency. Early certainty for applicants and for third parties as to whether a patent application will be granted is, generally speaking, a positive thing. Third parties in particular have to know early on whether a patent application could encroach on their business activities.

However, according to the opinion of applicants, some “fine-tuning” is still required so that the collateral damages do not outweigh the advantages.

Ideally, decisions on patents and the costs involved should be adapted to the needs of each business. The pharmaceutical industry has very long product cycles and only one out of ten projects is successful. It is preferable, of course, to invest as little money as possible in the “dead horses”; however, due to the long product development periods, it is not until much later when the “dead” horse can be distinguished from the others. Therefore, costs are delayed for as long as possible. The enforced expedition of the examination procedure means that all costs, in particular the high validating costs, will be due for all applications in all projects early. There will be those much harder hit than the pharmaceutical industry, for example academic facilities, small businesses and technology transfer facilities who definitely need to avoid early costs before they have found a strong partner.

A further problem is setting up experimental data during the examination procedure. In many patent applications, in particular in the pharmaceutical and life-science fields, experimental data has to be submitted subsequently, for example in order to provide evidence of the claimed effect or to distinguish the invention from the prior art. For reasons of resources, this will be impossible for the “small” applicant to manage within 12 months.

However, critical voices can be heard from technical areas other than the pharmaceutical area.

The EPO was and is a reference for quality. Experts fear that this could change. Even today, it can be heard that the examiners have insufficient time to really comprehend the invention. Objections in examination reports have been based more and more on formalities. This can lead to unjustly limited claims. A trend which can only get worse.

New and inexperienced examiners with low salaries and temporary contracts are scarcely the solution to tackle the workload with a reasonable level of quality. Other Patent Offices which became “fast boilers” for inexperienced examiners for cost reasons became a quality disaster.

An examination procedure of 12 months also means one or two examination reports and then oral hearings within this period of time. Up to now, we have budgeted one report per year per application. If several reports as well as the oral hearing and the validating costs now confront the applicant each year, this will blow the budget for the small applicant. Costs will become a large problem.

It would be better for the applicant to have a tailor-made approach – expedited examination procedure upon request of the applicant or third parties.

If this initiative becomes reality as planned, then applicants will need a “de-PACE” request to “slow down” the procedure. In view of the costs, it will also be important to be able to put the validation on hold until after the patent has been granted. If the expedited examination is to also apply to pending procedures, then there will also be a need for a transition regulation.

It remains for the applicants to hope that the EPO considered the justified requirements of the applicants and adapt the initiative correspondingly.