When early means late

One of the things I like best about blogging is I can sometimes hear interesting whispering from my flock of little birds.

Recently, little birds flying from Munich have brought me tidings of significant developments about to take place at the EPO, in the form of a new program called User Driven Early Certainty.

It turns out that the EPO will introduce the possibility for applicants to postpone the start of substantive examination for a maximum period of 3 years. The new program is scheduled to kick off on July 1, 2018 – in other words, tomorrow.

We have been hearing rumors about this for quite a while, but now more details start being available – finally. As a disclaimer, the explanations below are based on a preparatory document issued by the EPO. Some provisions may of course change when they are finally implemented.

One big little bird.

Here are the main highlights.

First, the procedure remains unchanged up until conclusion of the search stage.

Second, as a new procedural option, the applicant will be given the opportunity to request a postponement of the start of substantive examination. This will need to be done within the 6 months’ time window for filing a reply to the European search report or supplementary European search report (R. 70 and 70a EPC) or to an international search report drawn up by the EPO, after entering European regional phase (R. 161 EPC).

This request will need to be filed online using a dedicated form. It should be filed together with the request for examination or confirmation of an earlier examination request and, where applicable, the reply to the search opinion.

If the request is validly filed, the EPO will not begin substantive examination of the application before the expiry of a 3 year-period calculated:

  • from the expiry of 6 months after the date on which the European Patent Bulletin mentions the publication of the European search report, for an EP-direct application; or
  • from a valid entry into European regional phase, for a Euro-PCT application.

For divisional applications, the postponement period will be limited in relation to the earliest application, namely:

  • 5 years calculated from the earliest application’s filing or priority date, for an EP-direct application; or
  • 3 years from entry into European regional phase of the earliest application, for a Euro-PCT application.

It can be derived from these rules that the postponement period should normally end approximately 5 years from the priority date for an EP-direct application, and up to 5 years and a half (67 months) from the priority date for a Euro-PCT application.

Furthermore, the applicant can file a request to lift the postponement at any time. Filing a request for PACE or PPH would also have the same effect.

The request for postponement will be free, but the payment of existing fees (examination fee, designation fee, renewal fees, etc.) will still have to be performed in due time and cannot be delayed owing to the postponement.

In order to preserve the interests of competitors potentially affected by pending patent rights, a postponement is lifted if the EPO receives third party observations, provided that they are non-anonymous and substantiated.

By “substantiated” is meant that at least one specific objection (on novelty, inventive step, clarity, sufficiency of disclosure, non-patentable subject-matter, exceptions to patentability, industrial applicability or unallowable amendments) must be raised together with a brief indication of the facts and evidence presented in support of this objection.

I assume that the condition that the observations should be “non-anonymous” will still be fulfilled even if the third party is solely identified as a law firm, or a straw man, or a straw man in a law firm. There is no requirement for the third party to show a legitimate interest in lifting the postponement.

Also, if substantiated and non-anonymous third party observations are filed before the applicant requests a postponement, the request for postponement will be rejected.

When the postponement period ends, the subsequent fate of the application depends on how the postponement is lifted:

  • If the postponement ends due to the expiry of the maximum 3 year-period, the case will then be treated in a normal manner, in accordance with the priorities defined by the EPO.
  • If the applicant requests a treatment under PACE or PPH, the examining division will take its next action in an accelerated manner, as provided in the PACE and PPH programs.
  • Finally, if the postponement ends due to the filing of third party observations, the examining division will issue the next action within three months of receipt of the observations.

The applicant can of course still withdraw the application and get a refund of the examination fee if the examination phase has not started yet.

On a legal standpoint, since the timeline for requesting examination is not affected by the new program, and only the actual start of examination by the EPO is, the new procedure does not require an amendment of the EPC or of the implementing regulations.

It will thus simply be based on a notice to be published in the EPO’s Official Journal.

Turning to transitional provisions, the new procedure will enter into force on July 1, 2018 and apply to EP-direct applications for which the mention of the publication of the European search report occurs on or after this date, and to Euro-PCT applications which enter the European phase on or after this date.

What can we make of all this?

On the one hand, the new procedure brings additional flexibility to patent applicants, while preserving to some extent the interests of third parties, as they can have a direct impact on the handling of applications of concern to them. In this respect, the new system prima facie seems relatively fair and balanced. It is also probably a good thing that the early issuance of the search report will not be affected, as the outcome of the search is of general interest to the applicant and to the public.

On the other hand, I cannot for the life of me understand the name of the program, User Driven Early Certainty. I cannot figure out what kind of early certainty there is in postponing examination for 3 years. But after all, according to one the most important books of the 20th century, war is peace and freedom is slavery. Accordingly, and on a much less tragic note, early can certainly be late.

Many thanks for the heads-up, little birds, and please continue whispering.

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