Frustration and grumbles about the sometimes extraordinary lengths of time the European Patent Office (EPO) can take to process a patent application through to grant are commonplace. Following consultation the EPO has now announced an ’Early Certainty from Search’ scheme aimed at improving its service. The scheme, which came into force in July 2014, has the following objectives:
- Search reports and accompanying patentability opinions should be issued within six months from filing for all applications. At present this service is limited to European applications which are first filings (about 20% of all European applications).
- Completion of examinations which have already been started will be prioritised over starting new examinations. This is aimed at clearing the back-log of partially examined old applications.
- Grant of applications which have received a positive search report and opinion will be expedited.
- Processing of applications on which non-anonymous substantiated third party observations are filed will be prioritised, using the existing PACE programme for accelerated prosecution. This ability to accelerate prosecution of another party’s application offers an interesting new competitive tactic. However, many PACE requests currently filed do not produce the desired acceleration owing to excessive EPO workloads, so the tactic may not prove of use or interest.
- Handling of opposition, limitation and revocation cases will be prioritised. This will presumably be at the expense of some other procedures, although which might suffer has not been made clear. However, a faster opposition process will no doubt be welcome news to many. Oppositions can currently drag on for several years and so compare unfavourably with the USPTO’s new (albeit much more expensive) post-grant and inter-partes review procedures which must conclude within a year.
Hence, the scheme does not offer increased speed across all stages of prosecution. Indeed, one wonders what will become of those applications which have received the promised prompt search report and opinion but not yet had an examination report, and which therefore fall between two tenets of the scheme. The EPO’s intention is not to provide a swift grant for all, however (probably this is too ambitious, and indeed is not always desired by applicants). Rather, the concentrating of examiner time on searches aims to improve certainty for companies and inventors by providing meaningful patentability data to inform patenting strategies at an early stage. Benefit to the public in the form of enhanced transparency by offering an early overview of prior art and patentability is also cited.