A brief update on the European Patent Office work: What’s better in 2018?

April 16, 2018 Erik.Scarcia@lexisnexis.nl

The European Patent Office has completed an internal reorganization that will enhance the efficiency of its patenting process. The move will be expected to foster the timeliness of the patent granting procedure and contribute to higher quality patents and services. This is made possible through the continuous investment of the Office in new online software tools, financial benefits for the applicants and a stronger framework for the Board of Appeals.

1. Revised rules on procedure: The new measures to be undertaken aim to improve the efficiency, consistency, and predictability of appeal proceedings before the Boards of Appeal of the EPO .

Therefore the Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal have invited users to take part in the written consultation on the proposed revised Rules. The whole “restructuring” focuses on various amendments of  Articles 10, 12, 13, 14 and 15 RPBA (Rules of Procedure before the Board of Appeals), which are considered the milestone of the whole appeal procedure.

Among other amendments is the acceleration provision of Article 10 which gives the Board the discretionary power to decide on a party’s request for acceleration. This means that when an applicant of a patent is engaged in an appeal procedure for a decision of EPO that is not favorable for him, he can ask the BoA to put in “fast track” the appeal process because infringement proceedings have been brought or are expected to be, or that the decision of potential licensees of the patent in suit have interest in the decision. In this way, the case is given priority over other cases, and the Board may adopt a strict framework, always respecting the party’s right to be heard during the proceedings.

We must note though that the Board may refuse the acceleration request due to its workload. On the other hand, a Board could accelerate the appeal without a request if proceedings appear to be deficient in some way. Other proposed amendments refer to the admissibility of the appeal regarding the documents provided, the way a party can amend its statements and the content of its documents during the appeal procedure and the appeal proceedings

Is this good news?: After a close look in the draft of the proposed revision of the RPBA and the explanatory remarks set out in the document, we can understand that the new rules aim to be more precise and supportive towards the parties of the appeal procedure which is one of the most important steps when concluding a patent application process. Under these new rules, the parties are now more certain on what to claim and when, how they can communicate with the Board, which is the exact framework and most important why their appeal may be rejected. In a nutshell, this is a rather positive step towards a more “applicant-friendly” EPO and it will also ameliorate the quality of the Decisions of the Board itself.

2. Fees and online services retouched: Already in 2017 EPO has decided to implement a series of measures that will lower a number of costs in the patent application process and help reinforce a more business-friendly approach in support of innovation. By decision of 13 December 2017, the Administrative Council of the European Patent Organization introduced a reduced fee for appeals filed by natural persons, small and medium-sized enterprises, non-profit organizations, universities and public research organizations. This amendment will enter into force on 1 April 2018 and will apply to appeals filed on or after that date. Appellants wishing to benefit from the reduced fee for appeal must make an express declaration.

On the technical side, the EPO is pursuing an ongoing business process re-engineering effort with the goal of making its operations more efficient. This will ensure that new IT developments offer real efficiency for applicants as changes enable the fully electronic end-to-end processing of European patent applications, from filing through to opposition and appeal.

Is this good news?: Patents are often seen as a financial burden for a company or any natural person that wishes to protect his invention. Reducing the fees and generally rationalizing the fee payment procedure will urge applicants (end especially the SME’s) to fully exploit the benefits of a European patent application. Also, due to the updates of its online services software,  the latest bibliographic data are available for all applicants and provide users with comprehensive portfolios, while others support the development of new, simpler and safer filing processes.

3. Focusing on Brexit: Many discussions have been brought to light lately relating to what will happen to IP rights and patents after the UK leaves the European Union. As known, UK is still a member of the European Union and will continue to be so until the expiry of the notice period provided for by Article 50. European law will continue to apply to the UK. After Brexit, Regulations will cease to be applicable, as they only have effect throughout the EU of which the UK will no longer be a Member. Towards a more close cooperation on the future of UK as a member of EPO, high-level representatives and experts of the EPO met with a delegation of the Chartered Institute of Patent Attorneys (CIPA) and they reassured both patent attorneys and UK applicants that Brexit is not a danger for UK patent applications in EPO. And this, for the very simple reason that the EPO is not an EU agency but an independent international organization, of which the UK is a founding member.

Is this good news?: The fact that UK patent rights are still “resisting” to Brexit is positive both for UK applicants but also for patentees around the world that wish to benefit from the UK’s patent lawyer expertise and use them as representatives to register for a patent in the EPO. Fact is that of the 40,000 European patent applications filed each year by the UK’s European patent attorneys, nearly 90% are for clients from overseas.

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