EPO prioritises newest (and oldest) files
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| Not as high profile as the newer applications |
For example, it is easy to find EP cases pending for over fifteen years. These are not divisionals with "deemed" older filing dates, but rather regular cases that have been pending continuously as the years sped past. There are cases that were filed when Hong Kong was a British colony and Princess Diana was alive and well, which have had only one or two examination reports in the meantime. Cases routinely lie dormant for three to six years between an attorney filing a response and the Examiner picking up the case for the next action. Not all cases, by any stretch of the imagination, but enough to form a noticeable cohort. One can't help wondering if there are cases at the EPO that have gone the full twenty years without a decision on grant or refusal, and if so, is there a standard communication to cover this situation ...?
All of which explains why the IPKat has a mixed reaction to the latest initiative from the EPO, which aims to (once again) reduce the time to first action, while also promising to tackle the longest-pending cases. The press release reads:
New scheme to improve legal certainty on pending applications
Starting this month the EPO is introducing a new scheme to improve legal certainty on pending patent applications.Under the "Early Certainty from Search" scheme, the EPO will aim to issue all search reports and written opinions on patentability within six months of filing; prioritise completing already started examination files over beginning new files; and expedite grants after a positive search opinion has been issued. [The IPKat wonders how prioritising old files over new ones is compatible with the aim of issuing all written opinions within six months of filing. Surely the latter goal must involve prioritising those new filings over older ones?]The Office will seek to prioritise processing [this means PACE, the IPKat notes] on those cases where substantiated observations are filed by third parties who identify themselves. Handling of oppositions, limitations and revocations is also to be prioritised.The new scheme will benefit companies and inventors seeking patent protection in Europe by ensuring the timely delivery of all search reports and opinions for patent applications, giving them a sound basis for their patenting strategies early on. It will also benefit the general public by enhancing the transparency of pending patent rights in Europe, providing an overview of prior art and patentability early on in the procedure.The implementation of the scheme enjoys support from users of the patent system expressed in consultation throughout 2014.
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| Old Father Time, while waiting for an exam report to issue, even manages to finish his cricket match |
Overall this initiative is welcome news, and the IPKat must praise the EPO for tackling these older files. It would even more welcome if matched by concrete time limits for issuing actions and ensuring that the same elderly applications don't subsequently go dormant (perhaps such time limits are part of this scheme behind the scenes? Maybe someone from the EPO will let us know?).
The IPKat does not believe the theory that it suits the EPO to keep old cases pending just to receive higher renewal fees. However, it is very unfortunate that the increasing cost of renewal fees year on year (rising to €1560 per annum at year 10) acts as a penalty against the applicant and as an institutional reward in favour of the EPO, intentional or not. It does not benefit the reputation of the European patent system when applicants abandon cases simply because they can't afford to keep paying renewal fees with no end date in sight.
