Long EPO examination infringes human rights

Introduced in July 2014, the EPO's "Early Certainty from Search" scheme aims to address this issue. Under the scheme, the EPO aims to "issue all search reports and written opinions on patentability within six months of filing, to prioritise the completion of examination files it has already started over beginning work on new files, and to expedite grants once a positive search opinion has been issued" (see www.epo.org/news-issues/news/2014/20140703.html.

The scheme has come under some criticism. For example, it has been questioned as to whether or not expecting all search reports and written opinions to be issued within six months, and expecting examination of current files to be prioritised over work on new files, are actually contradictory aims (see http://ipkitten.blogspot.co.uk/2014/07/epo-prioritises-newest-and-oldest-files.html). It has also been questioned as to whether or not expediting grants once a positive search opinion has been issued will lead to so-called 'cherry picking' of cases, allowing 'easy' cases, already in a state suitable for grant, to proceed to grant quickly, whilst 'hard' cases, which may require several rounds of argumentation and amendment, get pushed to the back of the queue (read more on this in the 2015 EPO annual report).

Despite these reservations, the EPO's Annual Report 2015 shows significant improvements in terms of EPO work output, with the number of searches, examinations and oppositions up 14% compared to 2014, and the number of granted patents up nearly 6% over 2014. It is difficult to determine the extent to which these improvements have resulted from the Early Certainty from Search scheme as opposed to other factors. However, these improvements are nonetheless welcome, and users of the EPO (including applicants, patentees and opponents) will be hoping that this trend continues into the future.

Users of the EPO who stand to benefit from these recent developments will be pleased to know that the Board of Appeal also seems to be taking seriously the need for proceedings before the EPO to be conducted in a reasonably timely manner. This was exemplified in the recent decision of the Technical Board of Appeal in case T 0823/11.

In T 0823/11, the length of time for first instance proceedings to be concluded (resulting eventually in refusal of the patent application concerned by the Examining Division) was considered by the Board of Appeal to be sufficiently excessive as to constitute a substantial procedural violation. In particular, the Board of Appeal considered the duration of first instance proceedings, which were more than twelve years following entry of the application into the European regional phase and more than fourteen years following the filing date of the application (and which further included delays of more than five years between receipt of the supplementary European search report and the first communication from the Examining Division and of more than two years between a reply from the appellant to the Examination Division and receipt of a Summons to attend Oral Proceedings), were "unacceptable" and "cannot be justified by the particular circumstances of the case". The Board of Appeal therefore determined that the delay constituted a substantial procedural violation.

The Board of Appeal cited a previous decision (T 315/03) in which a delay of ten years in a "much more complicated" opposition case was found to not be "within a reasonable time" as required under Article 6(1) of the European Convention on Human Rights (ECHR). The delay was found to constitute a substantial procedural violation. The Board of Appeal also cited the judgment of the European Court of Human Rights in the case of Kristiansen and Tyvik AS v Norway (decision of 02 May 2013 in application No. 25498/08), in which it was found that a duration of eighteen years for examination and (administrative) appeal proceedings of a patent application at the Norwegian Industrial Property Office (including first instance examination proceedings which took nearly eleven years) was excessive because, taking into account that patent protection itself lasts only twenty years, any exercise by the applicants of their right to access to a court had been rendered "meaningless" by the delay. Because of this, the court concluded that such a delay did not satisfy the "reasonable time" requirement under Article 6(1) of the ECHR.

The Board of Appeal concluded that this decision applied "all the more" in the present case, given that the first instance proceedings had not been affected by any "unusual behaviour" on the part of the appellant (something which had been the case in the Kristiansen case) and that, on the contrary, the appellant during first instance proceedings had actively chased up the EPO by repeatedly enquiring about the further prosecution of the case. The Board of Appeal thus concluded that the duration of first instance EPO proceedings was excessive and constituted a substantial procedural violation.

It is hoped that decisions such as this, together with initiatives by the EPO such as the "Early Certainty from Search" scheme, will help to reduce the duration time of EPO proceedings. From a practical point of view, factors which seem to have worked in the appellant's favour in this case include:

• the appellant actively chased the EPO during first instance proceedings by sending enquiries to the EPO about the progress of the case after they had not received any communications from the EPO for a long time.
• the relatively straightforward nature of the case did not give any good reason as to why delays were necessary (especially since several communications from the Examining Division to the appellant during first instance proceedings were deemed so short and lacking in reasoning that this was found to constitute a further substantial procedural violation by the Board of Appeal). That said, given that a shorter delay of ten years for the "much more complicated opposition case" in T 315/03 was also found to be a substantial procedural violation, it would appear that having a 'straightforward' case would by no means be a prerequisite for a delay in prosecution to be deemed excessive and to hence constitute a substantial procedural violation.

For any reader who feels that they are experiencing unacceptable delays in prosecution for a case they have pending at the EPO, your D Young & Co representative may recommend sending the EPO an enquiry regarding prosecution of the case.

It is also worth remembering other measures made available by the EPO for speeding up prosecution, such the accelerated prosecution of European patent applications (PACE) procedure.

More on the updated PACE procedure

For a summary of the updated PACE procedure which came into force on 1 January 2016, see the article entitled EPO updates PACE procedure - Accelerating European patent application prosecution found in D Young & Co's February 2016 patent newsletter: www.dyoung.com/patentnewsletter-feb2016, which we can advise you on.