Raising the Bar - Second Basket: Having A Peek Into The C...

• Cut-off date for filing divisional applications (Rule 36 EPC): A cut-off date for the filing of voluntary and mandatory divisional applications has been introduced by amendment to Rule 36(1) EPC which will enter into force on April 01, 2010.
• Restriction of the search (Rule 62a EPC): Pursuant to new Rule 62a EPC to be applied to European patent applications for which the European search report or the supplementary European search report is drawn up on or after April 01, 2010, the search will be restricted to one independent claim per category unless the claims fall within the scope of exception under Rule 43(2) EPC.
• Clarification before search (Rule 63 EPC): Where a European patent application does not comply with the EPC to such an extent that it is impossible for the search examiner to carry out a meaningful search, the applicant will be invited to submit before search a statement indicating the subject-matter to be searched in accordance with amended Rule 63 EPC which will apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after April 01, 2010.
• Mandatory reply to the Enhanced European Search Report (EESR) (Rule 70a EPC): In order to streamline the grant proceedings, the applicant will have to reply to the opinion accompanying the European search report unless the latter is positive (new Rule 70a EPC, to be applied to European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010).
• 'Raising the Bar' doctrine extended to work done by the EPO acting as ISA or IPEA (Rule 161 EPC): In case of Euro-PCT applications, the applicant will have to file a substantive response to the WO-ISA where the EPO acted as ISA or, where the EPO was both, ISA and IPEA, to the IPER within the time limit for filing the latest set of amendments (amended Rule 161 EPC, applicable to European patent applications where a communication under current Rule 161 has not been issued before April 01, 2010).
• Limitation of the right to file amendments on applicant's own volition (Rule 137(2), (3) EPC): The applicant's right to file amendments of his own volition will be limited to one opportunity which is in line with Article 123(1) EPC. In the light of new Rule 70a and amended Rule 161 EPC, the moment at which the applicant may file those amendments will be the procedural stage of response to the opinion accompanying the European search opinion, or, where applicable, the WO-ISA or the IPER (see amended Rule 137(2), (3) EPC, to be applied to European patent applications for which the European search report or the supplementary European search report is drawn up on or after April 01, 2010).
• Obligation to identify amendments and to indicate their basis (Rule 137(4) EPC): Pursuant to new Rule 137(4) EPC applicants will have to identify the amendments and to explain their basis in the original application what makes the current recommendation contained in the Guidelines for Examination enforceable for European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010.
• Restriction of the possibility to introduce unsearched subject-matter in claims during examination (Rule 137(5) EPC): As accompanying measure to the changes relating to Rules 62a and 63 EPC, Rule 137 EPC was revised in order to avoid unsearched subject-matter being (re)introduced into the claims during examination by way of amendment (see new Rule 137(5) EPC, to be applied to European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010).
• Inventive step: In order to raise the bar with respect to inventive step, there are indications to the effect that current examination practice will be strengthened within the existing legal framework by taking into account stricter case law of the Board of Appeals concerning the definition of the person skilled in the art and the problem-and-solution approach. Furthermore, according to present information, an internally agreed proposal of amended Guidelines for Examination was presented to the SACEPO Working Party on Guidelines on its meeting on September 14, 2009.
• Oral proceedings before the examining division: Since the number of oral proceedings during examination proceedings where applicants do not attend has increased considerably, the EPO's practice in dealing with this situation has been strengthened and harmonised by making clear that a negative decision may be taken in the applicant's absence (see also the Notice from the EPO concerning non-attendance at oral proceedings before the examining division, OJ EPO 2008, 471).
• Computer-implemented inventions: In addition, there is some information to the effect that the EPO clarified its practice regarding search and examination of computer-implemented inventions by corresponding internal instructions recently handed out to examiners.
• Single Legal Source database: For the EPO staff entrusted with the examination of patent applications and patents, in particular examiners and formalities officers, a fully-searchable online-database for all legal documents has been created.

Raising the Bar - Second basket.

The EPO is currently shifting examination work towards the search phase: traditional examination work has already been shifted upstream. Not only is a written opinion now formulated during the search phase, with the measures approved by the AC, applicants must reply to this opinion before examination can start; potential unity problems should have been sorted out and applicants' comments on clarity will have already been received, where appropriate, before the search report is established.

According to some information, this shift towards the search now encourages the AC to further review the examination procedure. A limited number of communications and coming quickly to a decisive action is the aim. Hence, the second basket of Raising the Bar will further pave the way in this direction by a stricter policy on allowing amendments in examination and a more efficient procedure before grant with a proposal for an amendment to Rule 71 EPC.

Apparently the AC currently does not intend to strictly limit the procedure to one single communication. Exceptionally additional communications are considered to be allowable. However, defining best practices in examination are said to be undertaken by the EPO.

• Review of the practice in allowing amendments under current Rule 137(3) and (4) EPC: Under some future new regime, the applicant will have one single opportunity to file amendments. Any further amendments may be made only with the consent of the Examining Division. As far as known, it is therefore currently assessed by the EPO how examiners should in future exercise their discretion in admitting those later amendments.
• Review of the examination of auxiliary requests: Clear and probably quite restrictive instructions for the processing of auxiliary requests will likely be provided under the doctrine.
• Review of the final stage of the examination procedure (Rule 71(4) and (5) EPC): The current procedure under Rule 71(3) EPC by which the applicant is invited to approve the text proposed for grant and to fulfil the formal requirements of filing the translations of the claims and of paying the relevant fees appears to be very efficient. However, some argue that more flexibility should be reintroduced into that last phase of the procedure where amendments are proposed at the Rule 71(3) EPC stage by the applicant or the examining division. This might, in many cases, avoid the need of an additional intervention of the examiner or a further communication of the examining division.
• According to some information, an exchange of views with the SACEPO Working Party on Rules has already taken place in June 2009, and a first outline for amending Rule 71(4) and (5) EPC will be presented to the Committee on Patent Law at its next meeting in November.
• Review of the preparation of oral proceedings: The EPO's practice on summoning to oral proceedings is going to be reviewed within the current legal framework in order to contribute to shortening the duration of the procedure.
• Observations by third parties (Article 115 EPC): Third parties should be encouraged to file observations in examination in a form which is useful for the examining division. An increased use of Article 115 EPC by the public in examination will contribute to the assessment of patentability and, through additional available information, raise the quality of the result of examination. In addition online tools for filing third party observations will be provided. These will contribute to receiving better structured comments which can then be more easily assessed by examiners. Maybe that the introduction of a clone of the U.S. Peer-to-Patent project is mooted for Europe?
• Establishment of a Manual of Best Practice: The Manual of Best Practice is intended to provide guidance to improve cooperation between applicants/representatives and examiners/formalities officers with a view to raising the service level provided by the EPO and rendering the proceedings before the EPO more efficient.
• Clarification of the roles of the members of the examining division and considerations on making the reasons public: It is currently considered to clarify the tasks of the members of the examining division and to provide corresponding instructions to examiners so as to ensure that best practice is consistently applied throughout the Office. In addition, consideration is being given to providing some further guidance to examiners on the drafting of the "votum" and to making the reasons for grant public.
• Moreover, the EPO is said to have taken the initiative to expand the suitable "Raising the Bar" measures to international applications, and has taken the following steps:
• announcing its intention to start using the enabling clauses of Nrs 9.34 and 9.35 of the PCT Guidelines (informal clarification before search, PCT/MIA/16/11)
• proposing an amendment to Rules 46.5 and 66.8 PCT (identification of the basis for amendments in the application as filed, PCT/WG/2/9)
• The proposal to amend Rules 46.5 and 66.8 PCT was supported by the PCT MIA and the PCT WG, and was submitted to the PCT Assembly in September 2009 for approval. Further the EPO intends to propose an amendment to Rule 42.1 PCT to the effect that for second filings the ISR be established in time for international publication at 18 months rather than within the strict time limit currently foreseen. Such amendment would give the EPO more flexibility in the allocation of resources. The EPO is also considering possibilities to further improve the timeliness to establish the ISR and WO-ISA, and will review its practice when acting as ISA and IPEA with a view to further enhance the PCT.

All this suggests there is some grim determination amongst AC members to create sort of a procedural strait jacket for applicants and their representatives in order to help solving their own problems at the expense of others. Of course I won't object to the proposals aimed at improving databases and interfaces for prior art submissions also forming part of the Second Basket.

More and more patent prosecution before the EPO will be transformed along the 'front loading' paradigm: Applicant has only 'one shot' to be carefully prepared when setting up the case, and only a minimum of options to amend the case later on during prosecution.

In an earlier posting written at the occasion of the introduction of prohibitive claims fees for the 16th and every further patent claim I had argued that during the coming decade, in order to fight the backlog, Patent Offices will get more tight rules discouraging Applicants setting up and utilising systems of cascaded fallback lines as it is common practice today. Moreover, I also indicated that I would also not be surprised if the general rule already provided with the EPC saying that applicant is guaranteed only one amendment of the claims would, in later years, be rigorously enforced in order to reduce complexity of the patent Examination process and speed up the same. Under such a system, Applicant might have, after being served with the Search Report, one and only one shot to amend and bring through a certain statement of claims. No late filing of Divisionals, no auxiliary requests.

Today we can see more bricks of the walls in future channelling the patent prosecution efforts of the applicants.

An option for applicants might be to think of filing more but less complex patent applications with fewer fallback lines (perhaps derived from a single internal master application text by appropriate cut-and-paste techniques), calculating that some of them will come through even under a fully implemented 'Raise the Bar' doctrine. However, this might be viable only if the upfront costs for patent prosecution (application fee, search fee, examination fee) are not set too high when balanced against renewal fees. There is a strong political incentive for the EPO to raise the procedural fees because of if they should manage to melt down the huge backlog the amount of renewal fees available for EPO will shrink. If 'Raising the Bar' is implemented as set out in the current roadmap, and financing of the Office is shifted towards procedural fees, sort of a death spiral might occur: More and more applications get killed during prosecution phase, no useful remedies available, applicants considering filing more but less complex applications but dismissing this due to financial considerations.

The ominous Manual of Best Practice ('M.B.P.') is especially suspicious and troubling: Apparently the EPO is about to define what shall be considered 'best' practice in the sense of that document. Rigorously defending applicant's interests by utilising each and every 'loophole' left by the implementators of the 'Raise the Bar' doctrine might most probably not find its way into this book. Now, nothing precludes the Office from internally defining some informal wish-list of applicant's behaviour but the risk here is that the political forces behind the AC, i.e. the national Governments of the EPC Member States, might be tempted to go one step further by establishing some sort of a legal status of such M.B.P. suitable to press professional representatives to comply. This might easily create a conflict between the professional duties of the representatives, on the one hand, and the legitimate interests of applicants, on the other hand.

(Photo: B/W snippet of (C) 2008 by mariosp via twitter under a CC-BY-SA licence)