Following consultation with users in the first half of 2014, in July 2014 the European Patent Office (EPO) published a new early certainty from search scheme

New scheme

Under the scheme, the EPO aims to:

  • issue all search reports and written opinions on patentability within six months of filing;
  • prioritise the completion of files on which it has already started work over the commencement of work on new files; and
  • expedite grants once a positive search opinion has been issued.

In addition, all oppositions and requests for limitation or revocation are prioritised, as are cases where substantiated observations have been filed by third parties which have identified themselves.

The new scheme comes in addition to the 2010 rules for dealing with requests filed under the programme for accelerated prosecution of European patent applications (PACE). These rules set out numerous ways to achieve priority processing.

Likelihood of success

The EPO seems to be aiming for the world record in processing speed simply by adopting the agenda set out by users. But will the new schemes work? It seems unlikely. Based on the assumption that there will not be a huge increase in the number of examiners, and that examiners are already delivering full working days (in fact, they have protested against their working conditions), any prioritisation of files must inevitably lead to slower work in all other cases.

The key issue is what will happen to new cases if the completion of in-progress examinations is prioritised over work on new files. Will examiners ever have time to start examining new files? Perhaps, if a PACE request is filed. Thus, the new scheme is likely to lead to a large increase in PACE requests, with the consequence that even more files will have to be prioritised.

If the grant of a case with a positive search opinion is prioritised, will cases with a negative search opinion (which at present constitute the majority) ever be able to proceed to grant? Must an applicant waive scope in an effort to ensure a positive search opinion?

The new EPO scheme appears to be favourable to users, but it remains to be seen whether it will be able to deliver in practice. The EPO states that the scheme will have no impact on staff workload, but it seems that this could be true only if low-priority files are ignored.

With respect to the prioritisation of cases with observations from an identified third party, third parties appear to be able to choose whether to identify themselves and unintentionally accelerate the case, or to remain anonymous with the result that the case may take a long time to be dealt with.

Rainer A Kuhnen

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.