Neither democracy nor constitution: is it time to rein in EPO rule-making?

A thoughtful and highly respected member of the patent profession in Europe has contacted the IPKat in the hope of stirring up some constructive thinking on a matter of great importance for patent attorneys and their clients alike. He writes:

"The European Patent Office (EPO) brought heartache to most practitioners with its recent rule changes relating to the filing of divisional patent applications. According to Rule 36 EPC, brought in on 1 April 2010 [on which see earlier IPKat discussions here, here, here, here, here, here and here], divisionals must be filed within two years from a non-unity objection or from the first communication from the Examining Division. Apart from significantly reducing the time period for filing divisionals this has introduced real docketing headaches for many firms and engendered the usual large-number-of-zero hand-waving estimates of the true cost to business of recomputing thousands of dates. But at least everyone thought they roughly knew what the EPO meant.

It transpired subsequently however, that this was an incorrect assumption because the EPO itself does not know what it meant. In particular, what is a "communication from the Examining Division", one of the trigger points? In all the hundreds of pages of analysis produced before the Rule changes came into force, there seemed to be a perfectly held understanding that this actually meant an Examination Report. So confusion and consternation took over when somebody noticed that the EPO is issuing other communications marked "from the Examining Division". The communication in question is the communication Rule 161/162 EPC which comes out just after you've entered the European Regional Phase and much earlier than your average Examination Report. What does this mean? Is the divisional filing period even more curtailed? Do we have to recompute all of our dates again at a cost of another 50 billion pounds/dollars/euros/yen?

Concerns were raised with the EPO, which responded by issuing a notice confirming that the Examining Division was entitled to issue communications under Rule 161. This had not really been the point of the concern raised. More concerns were raised and this time the EPO amended the Guidelines to indicate that, of course, the reference to a communication from the Examination Division in Rule 36 didn't mean any communication from the Examining Division, just certain ones. Legal purists were quick to jump on the fact a rule is a rule and a guideline is a guideline and it appears that the EPO may have now accepted this fine point and are discussing potential rule changes at the moment.

What a relief. The entire European profession was at risk of losing a huge range of rights as and when the Board of Appeal decided to exercise its right to ignore the Guidelines, and the private practice segment was going to have to increase their insurance premiums beyond all recognition. This a particularly nasty example of the law of unintended consequences but it raises a more significant point. Since the EPO under EPC 2000 enabled itself to amend rules with minimum fuss via the Administrative Council, and given the Administrative Council is unlikely ever to do anything other than approve a rule change proposed by the EPO, how can we stop things like this happening all the time? Although the EPO has EPI representation on its Working Party on Rules, it is fair to say that the EPO does not consult widely and often leaves very little time for third parties to comment. So we have an organisation which purports to achieve change by democratic consensus but which now is effectively able to change its own rules without proper recourse to its constituency.

Right: consultation need not be painful and can even lead to peace ...

The debacle over Rule 36 demonstrates that this approach is failing. There must be more consultation and time. We know that some perfectly decent democracies can exist without a constitution, but at the moment the EPO seems to have neither democracy nor constitution. Is it time that both of those changed?"

You can view the Guidelines amendments here.

The IPKat is a great admirer of the EPO and all that it has done in the relatively short time it has been around. He is however highly sympathatic to the need to consult those skilled professionals who make the system work not just as an administrative concept but as a means of bringing real inventions within the scope of meaningful and affordable protection in a mean, competitive world. What do his readers think?