"Statistics are like a bikini; what they reveal is suggestive, but what they conceal is vital” (Aaron Levenstein)
Aaron Levenstein’s famous remark rings painfully true for practitioners in the European patent community. There has been much analysis in recent years of the manner in which EPO statistics mislead, and even a dedicated website created to explore the murky depths of IP related statistics.
Here we seek to shed light on the internal workings of the EPO by observing what is not published, and the manner of presentation of what is published. We discuss this in the context of the Early Certainty from Search scheme, and the recent EPO history that led up to it.
In the (ever-sparser) EPO annual reports up to 2009, the average time taken to grant for patents granted in that year was a constant feature. Indeed, in the years from 2006 to 2009, we were presented with the favourable trend of a near-constant decrease in time taken from 45.3 months to 43.1 months. However, in 2009 the average time taken increases, following this the statistic is no longer published by the EPO.
The omission of this grant time data from 2009 onwards points us towards the internal EPO memo CA/162/09 of September 2009, titled “Procedural Efficiency”, and the shift in emphasis that it brought about. In the years preceding 2009 the EPO had been encouraging examiners to issue summons to a hearing at early stages in proceedings, with the intention of bringing proceedings to an earlier conclusion and avoiding drawn-out written correspondence. As such, the number of hearings began rising each year. This growing backlog of applications waiting for oral proceedings likely distorted the grant figures, with easy cases going straight to grant and difficult cases stacking up waiting for oral proceedings, resulting in the seemingly favourable decreasing average time to grant in the years leading up to 2009. However, this trend could not last forever.
The “Procedural Efficiency” memo of 2009 placed a particular emphasis on achieving what was termed a ‘compact examination procedure’. Under this name, the aim was formulated as achieving “A limited number of communications and coming quickly to a decisive action”. To achieve this, examination work should continue to be shifted upstream towards the search phase. This shift would pave the way for a shortened examination phase, as expressed by the desire that the average number of communications under examination should be reduced from 1.25 to just one. However, one obstacle to the reduction of the average time to grant is the right applicants have to a hearing before an application is refused, a right which is almost invariably maintained at an early stage in the prosecution. It is speculated that the EPO were under the opinion that oral proceedings may be a useful vehicle for further contributing to the reduction in time of procedure.
In line with this, an even greater emphasis was placed on issuing a summons at early stages in procedure, with the effect that the summons merely compresses the final prosecution into the remaining time between the summons and the hearing. This, of course, is far more of a burden on the applicant than on the examiner.
This shift in emphasis provided the framework for the current state of affairs at the EPO. Over the next couple of years, applicants did indeed experience a decrease time taken to in first communications to new applications, and similarly an increase in summons to hearings. However, the obvious result of this focus was the ever-increasing backlog of older applications having had their first communication, and those applications awaiting oral proceedings. Further, by focusing on getting first communications out quickly, the incentive was to consistently deal with simple cases, allowing the more complex applications also to languish. By 2012, the number of summons issued had reached an unsustainable volume, and criticisms were mounting as to the backlog of cases that were being left to languish.
New Announcement – Early Certainty from Search
This protean approach has resulted in little improvement in overall prosecution time over the last five years; with the backlog as high as ever, it is merely the contents of the backlog that changes, swinging gradually between old and new applications. In response to this, we are presented with the latest scheme to address overall prosecution periods, the “Early Certainty from Search” scheme (ECfS). This scheme has three main aims:
- To issue all search reports and written opinions within six months of filing,
- To prioritise completion of examination files it has already started over beginning work on new ones, and
- To expedite grant once a “positive search opinion” has been issued.
It also claims to seek to prioritise processing of those cases where substantiated observations are filed by third parties who identify themselves, and in the handling of oppositions, limitations and revocations. The stated beneficial result of these changes will be to give applicants an early and “sound basis for their patent strategies”, whilst also benefiting the general public by providing transparency of pending rights (patentability and prior art) at an early stage.
Whilst the aims of this scheme are clearly to be commended, we have our doubts over whether it will do anything to reduce the overall backlog.
Third Party Observations
As an aside, it is interesting to note that it is only third party observations by parties who identify themselves that will be given priority. This creates an incentive for third parties to file observations if they want patent applications to be examined quickly for purposes of clearing the way. The observations can be anonymous, but that will not have the effect of speeding up proceedings. Once the third party has identified himself, there is little reason to appoint a straw man when it comes to opposition.
“Positive Search Opinion”
For some years now, the EPO has issued a written opinion with every search report, setting out any objections to the patent application. This was the procedure from the outset when acting as the International Searching Authority under the PCT, and the same procedure was adopted for European applications, so that a European Search Report together with its Written Opinion is referred to as an Expanded European Search Report. So what is a “positive” written opinion?
Having contacted a member of the EPO, we were told that the positive search opinion referred to in the recent announcement also includes an International Preliminary Examination Report under the PCT, whether under Chapter I or Chapter II. This is good news, especially for applicants who favour the Chapter II process. It should positively affect enthusiasm for that process and also the effort applicants put into addressing objections at that time.
The EPO member went on to elucidate what is meant by ‘positive’. It does not merely mean that the independent claims are novel and inventive. They must also be free from substantial clarity issues. Thankfully then, ‘positive’ is not as strict as ‘no formal objections and ready to grant’.
As an aside, the EPO member commented that actually, whilst expediting positive cases was an aim of the ECfS scheme, searching will always take top priority. So depending on the workload of the individual there may still remain significant delays in dealing with positive cases. We note that in any case, once you receive a positive examination opinion, the grant process seems fairly quick.
However, contrary to the above view, a more informal source from inside the EPO said that whilst the statement above represented the official party line, their first-hand experience was otherwise. This source said that examiners are being encouraged first-and-foremost to expedite positive cases and go direct for grant, and that searching was secondary to this. Further, this source remarked that although a speedy opposition process is mentioned, oppositions are in fact internally regarded as an extremely low priority; making it unlikely that there will be a significant change in their speed of processing. Further still, this source highlighted that whilst the ECfS scheme claims to prioritise completion of examination on files it has already started over beginning work on new ones, this is not happening at all.
A note posted on the EPO staff union web site confirms that the official top priority is searching and asks DG1 directors to adjust objectives accordingly. The ratio of searches to examinations is expected to increase, but two searches are considered to be the production equivalent of three final actions, so the count of “products” per examiner will fall.
In consequence then, it is speculated that the hierarchy of priority in the ECfS scheme appears like this:
- Top priority : Expediting “positive search opinion” cases direct to grant;
- Medium priority: Searches on new applications;
- Low priority: First communication/first response;
- Very low priority: Oppositions;
- Out of sight: Dealing with older/existing open cases;
The time to first office actions in examination is expected to increase. The reality may be worse than present, with existing cases continuing to take a long time to process, or even taking longer to process now that there is an increased emphasis on new cases and their searches. Similarly, oppositions are unlikely to change in any substantial way, with the current flat-line trend likely remaining constant.
If you receive a positive written opinion, you should be high priority. Where previously you may have been requesting PACE on positive opinions, this is still a sound strategy, because being high priority is well and good, but there is still scope for substantial delay. For instance, in a case where you have patentable subject matter indicated in a written opinion, but minor formal objections still remain, it will still be in your interest to address these formal objections, waive the need for a Rule 161 communication (if ex-PCT), and request PACE.
In the vast majority of cases, the search opinion will not be positive in the manner defined in the ECfS scheme, and so the practitioner’s approach to European prosecution will be left unchanged.
President Battistelli has banned recruitment other than to replace retiring examiners, and the backlog is increasing. We cannot but feel that the ECfS represents an empty promise, or more generously a vain hope.