14 January 2019

IP Federation submits concerns over patent examination deferral

UK-based trade association, the IP Federation, has urged the European Patent Office (EPO) to commission a “comprehensive and impartial study” in view of concerns over a potential new system of patent deferral.

In December, the EPO launched a consultation on potentially introducing the system, which would allow for the examination of some European patents to be postponed. The consultation closed on Friday, January 11.

In a letter to EPO president António Campinos dated January 11, secretary of the IP Federation, David England, started by saying that a deferral would allow greater flexibility in the time it takes for a European patent application to be processed.

England’s letter said that a study should observe the effects of a postponed examination on the EPO, applicants and third parties.

The letter also gave examples of countries including Japan, China and Korea which allow for deferred examinations of patent applications.

It described the potential proposals by the EPO to introduce a new option for deferring applications as “controversial”.

It went on to say that it is “widely understood” that procedural deferral can benefit applicants in several ways.

England said a deferral is beneficial if the “commercial value of an invention is uncertain”, in order to “mitigate the approval processes required in some regulated industrial sectors” and to “allow data generation to support patentability”.

In his letter, England said that while the speed of examination procedures is increasing, a “desire to moderate the speed may be of interest to a broader range of sectors”, and such moderation is achievable by deferral.

But, he also highlighted that there may be “detrimental effects” of delaying the process of patent applications which “can outweigh the benefits”.

“Deferral may have the effect of prolonging uncertainty on third parties”, and a “careful balance needs to be struck with appropriate safeguards”, England added.

One suggested safeguard is giving third parties the ability to activate the examination of a patent application where it has been deferred. England said this “should be included in any proposal that may go forward”.

The IP Federation advised the EPO that the study should cover the likely uptake and duration of deferral. It should also consider different types of safeguards and how they will be implemented.

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