yes-1183407_640Much has been said in recent years about the EPO’s ‘Early Certainty from Search’ program and similar programs for examination and opposition. Since 2014, patent examiners have been pushed to increase their productivity to help reduce the time period between the filing of a patent application and its eventual grant or refusal. While patent attorneys, applicants and (strictly anonymous) examiners have now and then expressed their worries about a perceived reduction in quality of some of the ‘examination products’ and a discomforting increase of workload for examiners, the EPO has frequently advertised the success of this program. Aside from some unwanted side-effects, the main idea behind these programs is a laudable one. In the words of the EPO: “[to] benefit the general public by enhancing the transparency of pending patent rights in Europe, providing an overview of prior art and patentability at an early stage in the proceedings”. Who could ever object to that?

Deliberate delay

Some applicants, predominantly but not exclusively in the biotech field (e.g. 1, 2), are not always that happy with earlier certainty and have argued that in some instances they might need more time to find out if and what embodiments described in their applications are technically or commercially viable. Delaying the start of the substantive examination phase would give them more time to find out what they actually would like to have protected by a patent.

In order to please those applicants, the EPO last autumn reanimated an old idea: deferred examination. A nice overview of the long history of this idea was provide by Chris Mercer in the June issue of ‘epi information’. Like many times before, the proposal appeared to die an early death when it was dismissed by the Administrative Council. The EPO, however, has taken up the idea again last month and started a user consultation process on what they euphemistically call User-Driven Early Certainty. The questionnaire has so many detailed ‘how’ questions that it looks like they have already answered the ‘if’ question a long time ago. Nevertheless, or maybe exactly because thereof, I’m using this opportunity to explain why I think any form of deferred examination is a bad idea.

Patent principles

The basic idea behind our patent system is to provide clever, hard-working and creative people and companies a limited monopoly on the commercial fruits of their inventions. Because monopolies are against the core principles of our (regulated) free market economy, you only get a patent if you give something in return. You have to explain to the world what you have invented and you have to pay a tax for getting your patent granted and keeping it in force. To determine if your invention is worth a patent and to determine the exact scope of your monopoly, European patent applications are examined by the EPO. For the rest of the world, it is important to know this exact scope as quickly as possible. Although a certain period of uncertainty about the fate of a patent application is unavoidable, filing and paying for a patent application does not give you a right to maximise uncertainty for your competitors. It is the task of the patent office to minimise this uncertainty for third parties.

What makes the idea of on-demand examination delay even worse is that, in practice, it won’t be used for clearly inventive and well-defined contributions to the world’s technical knowledge. Delayed examination is most useful for those cases where the patentability of the invention is questionable or where the applicant doesn’t really know yet if there’s something useful in his patent application. Allowing the applicant to maximise the legal uncertainty for his competitors in such situations is diametrically against the basic principles of our patent system.

A half remedy

The EPO does acknowledge the possible problems deferred examination may cause for the general public and does propose a remedy. This remedy is however far from perfect. Upon the payment of a fee and/or the submission of substantiated, non-anonymous, third party observations, it is suggested, the examination can be sped up again. The ‘and/or’ here is one of the aspects the EPO is questioning its users about (on a side note: the proposed changes mainly affect third parties and the public at large. Asking an opinion from EPO users only can never lead to a useful and representative survey result). Without at least one of the two requirements, ‘abuse’ of the remedy would be too easy. With these requirements, third parties concerned about a delayed patent application may have to pay the EPO and do their job for them, while simultaneously informing the applicant (and competitor) about their worries.

A much better remedy would be to not offer the option of deferred examination at all. The patent system is not created for allowing companies to maximise legal uncertainty for their competitors, but to reward true inventors for their proven inventive contributions to the state of the art.

Joeri Beetz 4 December 2018

Do you have an opinion about deferred examination too? Please use the comments functionality below to discuss this topic in public or fill in the EPO questionnaire to share your thoughts anonymously with the EPO only.

Disclaimer: The article above expresses the personal opinion of the writer only and does not necessarily reflect the opinion of the IP firm or clients he may represent.