Wednesday, November 21, 2018

EPO online consultation on increased flexibility in the timing of the examination process (until 11 January 2019)

[Cited, with some adaptations, from the EPO News webpage at link]

Send your feedback to the EPO: online consultation on increased flexibility in the timing of the examination process

19 November 2018

The EPO has launched an online user consultation on the need for more flexibility in the timing of the examination process by giving applicants the possibility of postponing the examination of European patent applications. 
In recent years the EPO has introduced a number of measures to speed up the patent grant procedure through its Early Certainty initiative, and this has been welcomed by applicants and the public as it provides information about the scope of patent protection at an earlier stage. As a result, nowadays 99% of published patent applications are accompanied by their search report including a written opinion on their patentability (it was 90% in 2012).
At the same time it has also been argued that in some instances applicants might need more time before the grant of a patent as it would better suit with the development and innovation cycle of their products. This is why the Office looked for ways to inject some more flexibility in the examination phase, in order to address the various needs of the users. Discussions on the possibility to postpone the examination started with multiple stakeholders and user associations in 2017.
The EPO is now inviting all stakeholders to provide their views on the introduction of a postponed examination scheme in the European patent grant procedure, and on other possible measures to increase flexibility in the examination process.
User feedback plays a key role in helping us to enhance the quality and effectiveness of our processes and services. We welcome your input.
The user consultation runs until 11 January 2019.

Further information

Revised draft of the Rules of Procedure of the Boards of Appeal for the User consultation conference on 5 December 2018

[from EPO Board of Appeal webpage at link news message and link conference; see also revised draft RPBA,

Revised draft of the Rules of Procedure of the Boards of Appeal


The revised draft of the Rules of Procedure of the Boards of Appeal (RPBA) agreed upon by Boards of Appeal Committee (BOAC) and the President of the Boards of Appeal is now available in English.
This revised draft of the RPBA will provide the basis for the User consultation conference on 5 December 2018. At the conference, users of the European patent system will have the opportunity to hear presentations by members of the Boards of Appeal on the revised draft, followed by panel discussions by members of the Boards of Appeal Committee, the Boards of Appeal and representatives of user associations.

User consultation conference on the Rules of Procedure of the Boards of Appeal

5 December 2018
Munich, Germany
RPBA conference poster
The revision of the Rules of Procedure of the Boards of Appeal (RPBA) is a key measure for increasing the efficiency and predictability of appeal proceedings before the Boards of Appeal of the EPO.
The first public draft of the RPBA was subject to an online user consultation procedure. In light of the responses received, a second version was drafted, including newly introduced provisions on case management.
At the "User consultation conference", users of the system will have the opportunity to hear presentations and panel discussions by members of the Boards of Appeal Committee, the Boards of Appeal and representatives of user associations on the revised public draft of the RPBA.
Users are invited to attend the conference to discuss the proposed changes to the RPBA.

Friday, June 24, 2016

EPO makes changes to speed up Opposition procedure

From 1 July 2016, the EPO is introducing changes to speed up their Opposition procedure. Opposition may be filed up to 9 months after the grant of the patent by anyone who is aware of facts that render the patent invalid. It is a valuable alternative for filing national invalidity lawsuits in different EPC contracting states because the decision is taken centrally before a single body and affects the scope of protection in all EPC states.
However, opposition can currently take 2-3 years to get a final decision (and even longer if one of the parties appeals). By introducing changes, the EPO hopes to reduce a typical opposition to less than 18 months. In general, they are reducing the number of formal requests for parties to respond to each others comments, being more strict on extending time limits, and making oral proceedings the focus of the procedure:

  1. After oppositions are filed, the grounds, facts, evidence and argumentation are forwarded to the proprietor who has a few months to file a response. Previously, the EPO gave 4 months and extensions of the time to reply to 6 months were granted routinely, However, with the new procedure, any extensions to 6 months will only be granted in exceptional circumstances.
  2. After the response of the proprietor has been received, it was normal practice to forward the comments to all opponents, giving them 4 months to file their responses. In the new procedure, they comments will still be forwarded, but no formal time limit will be set to respond. The opponents may still respond of their own initiative, and their comments will still be entered into the proceedings.
  3. The opposition division will then invite all parties to oral proceedings - this is already the case in most opposition cases, so there is no change in practice. However, the summons will always now give at least 6 months notice, and all parties must supply additional comments and facts at least 2 months before the hearing (previously this was 1 month).
  4. The text of the patent at the end of oral proceeding will be considered the final text.
  5. Additionally there have been improvements made in the handling times at the EPO to further reduce delays.   
An overview of the new procedure is found here.
Clipart: (c) CanStockPhoto - www.canstockphoto.com 

Tuesday, December 29, 2015

Useful on-line PCT references

The WIPO recently published in their PCT Newsletter (Practical Advice) an overview of useful PCT on-line references.

We have slightly modified the list by separating the basic and advanced user resources, adding some extra references and including some comments. Our version is available here.

This is very useful for anyone wanting to learn more about PCT.

Thursday, July 16, 2015

EPO improves its procedures for maintaining the lists of professional representatives

Over the past couple of years, the EPO has been clarifying the procedures around maintaining the entries on the list of professional representatives (European Patent Attorneys), and the registration of associations.


The latest overview mentions:

  • The Legal Division should be informed without delay of any changes
  • Changes in nationality or business address are particularly important because they affect eligibility - both a business address in an EPC state and nationality of an EPC state are required, although an exemption from the nationality can be requested from the EPO.
  • Requests for (re-)entry on, changes in or deletion must be sent in writing to the Legal Division 
  • If the request is for (re-)entry, the original must be filed. All other requests can also be filed by facsimile or online. Requests filed by electronic mail only are not valid 

The recommended forms and further details on each procedure are not easy to find on the EPO website - they are only available via the search page to find a professional representative.

Wednesday, July 8, 2015

From 1 July 2015 - "PCT Direct" service available with EPO as ISA extended to other receiving offices


In the Official Journal of June 2015  (OJ EPO 2015, A51, "Notice from the European Patent Office dated 22 June 2015 concerning the processing by the EPO as International Searching Authority of informal comments on earlier search results ("PCT Direct")"), the EPO announced that, as of 1 July 2015, the PCT Direct service will be extended to the other receiving Offices than the EPO only.

Monday, July 6, 2015

Use the EPO to find out earlier what you have

Recently, the quality of patents issued by the EPO was rated excellent or very good by 62% of private practice patent attorneys and lawyers who use them, compared to less than 35% for the other major patent offices.

One of the reasons patent professionals rate the EPO so highly is the quality of their search and examination.

Their databases far exceed the PCT minimum documentation set, searching in many full-text patent applications, English abstracts of foreign patent applications and non-patent literature databases.

They also use state-of-the-art tools to search, and the search quality is the same whether it is a European direct filing or a PCT application.

So applicants get a very good idea what their application is worth at an early stage, before decisions on subsequent filings or national entries need to be made.

The EPO has an open system, so anyone world-wide can file a European patent application directly and request a search.

It is also possible for anyone world-wide to get an EPO search under PCT early in the international phase, by either:
  • specifying the EPO to be the ISA (where permitted by the Receiving Office), or
  • requesting a Supplementary International Search (SIS) at the EPO, or
  • by using an Applicant-Of-Convenience when filing 
The EPO has also greatly improved its examination under PCT, providing a higher chance of a positive International Preliminary Report on Patentability before national entry is due.

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