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In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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We reported in our Summer 2008 edition of our newsletter Patent issues that patent applications were entering the examining divisions at a faster rate than the rate at which the examining divisions were disposing of them, indicative of a growing backlog at the EPO. The then president, Alison Brimelow said she was coming to the conclusion that "the backlog will not be mastered". The EPO published projections that showed, in all but an extreme case, that recruitment would reduce the caseload per examiner.

Subsequent EPO figures published do not yet show that the backlog is shrinking - in fact it stands at over half a million cases - but our research indicates that, in telecoms at least, between 20% and 35% of cases are commencing examination within 6-7 months of the examination request.

Numbers in and out
The 2009 EPO annual report shows, for the first time, that dispositions exceeded requests for examination (124,200 procedures concluded / 118900 examinations requested). "Dispositions" include cases abandoned at any time in the procedure, before or after request for examination. There is nevertheless an overall increase of 3.2% (to 501,100) in the total number of examination files awaiting a final outcome, because the number of examinations completed was 102,200, an increase of a mere 3,100 over the previous year, but still 16,700 less than the number of requests received.
Time to grant
The overall time from filing to grant has remained fairly constant at about 43 months over the last three years. This falls short of the so-called "Paris Criteria" target of 36 months set in 1999.

Delay between requesting examination and first office action
We have examined our own records to estimate in particular the delay in examination between request for examination and first office action. We examined cases for which an office action has been received. We limited our investigation to applications in electronics and communications technologies (other technologies may show a slightly different pattern).

First we looked backwards at the average age of current examination files at the time of receiving the first office action (Figure 1).
This first set of figures show delays of nearly 2 years for office actions received in the first half of 2009, falling to one year for those received in the second half of 2010 but rising since then.

The fall and rise is not only related to the workload of the Examining Divisions but also to rule changes over the period in question. Nevertheless, the figures indicate that there has been some catch-up in examination since 2009.
We also looked at cases for which no office action has yet been received and we found that about 15% of these have been with the examining divisions since 2009 or earlier. We conclude that we are still receiving first office actions for substantial numbers of very old cases.

Our second chart (Figure 2) shows the frequency distribution of the time between requesting examination and receiving the first office action. This is skewed to the 6-12 month period with a peak within 6 months (indeed, 38% of cases were examined within 6 months), but there is a long tail of cases for which examination was requested in 2003-2007.

Are applications filed now susceptible to the same delays? In an attempt to explore in more detail, we looked forwards from the date of the examination request and, for examination requests filed in different 6-month periods, we looked at the average time between requesting examination and receiving a first office action.

Between 20% and 35% of cases are being examined in 6-7 months. More recent cases fare no better than the average for all cases over the period of our study.
Nor will there be an improvement until the backlog is eliminated. Indeed, with the impact of the new Rule 161/162 period (introducing a 6-month delay at the outset in a large number of cases - see page 9 of this newsletter) we can expect the average delay to increase yet further.