IP Review Summer 2018

6 IP review summer 2018 European examination: the clock is ticking... In what promises to be a major shake-up for patent examination, the European Patent Office (EPO) is aiming to shorten substantive examination to an average of 12 months by 2020 from an average of 30 months in 2016. Is this feasible, how will it work in practice and what can applicants do now to prepare? Patents Why is the EPO doing this? To remain competitive. As with other major patent offices around the globe, the EPO has been troubled with escalating pendency times over the past decade. These delays increase application costs due to spiralling annual renewal fees and frustrate applicants seeking legal clarity over their inventions. This ultimately weakens the competitiveness of the EPO versus national patent offices across Europe, where pendency times and renewal fees can be more attractive. Never one to rest on its laurels, the EPO has launched a series of streamlining initiatives under the banner of ‘early certainty’ over the past five years, and substantive examination is next to receive the efficiency treatment. Is this target feasible? Yes, but it won’t be easy. Reducing the average examination time by 60% over four years looks suspiciously like blue- sky thinking, given the record number of applications filed in recent years and the limited number of Examiners available. But the EPO has a track record of achieving ambitious productivity goals. The first ‘early certainty’ initiative reduced the average time taken to issue prior art searches to 4.9 months, against a target of 6 months that was widely viewed as overly ambitious. More recently, the EPO is well on its way to reducing the time taken for most post-grant oppositions to 15 months, down from 26 months in 2016. In terms of examination, there has already been a 45% increase in applications being granted since 2015. It would take a brave person to bet against the EPO succeeding again. How will the EPO achieve this? The number of EPO Examiners has been gradually increasing, rising from 3,600 in 2007 to 4,300 in 2016. But hiring more Examiners and asking them to work harder will only get the EPO so far. The main weapons in the productivity arsenal are a series of internal policy changes that will have profound implications for applicants. An EPO examination report typically allows four months in which to respond, extendible to six months by right. A summons to attend oral proceedings, normally the final opportunity for applicants to make their case during examination, is issued four to six months before the date of the oral proceedings. From this, it is feasible to hit the 12-month target by issuing a summons to attend oral proceedings as the second examination report during examination. In fact, the EPO has authorised Examiners to issue a summons to attend oral proceedings as the first examination report. This is in stark contrast to the previous system, which would often see Examiners issue three to four regular examination reports before running out of patience and issuing a summons to attend oral proceedings. Applicants and Examiners are also being encouraged to shorten examination