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15 June 2018Patents

German law firms raise concerns over EPO patent quality

Four German law firms have published an open letter citing concerns over developments at the European Patent Office (EPO), just two weeks before António Campinos is due to become president of the office.

In particular, patent law firms Grünecker, Hoffmann Eitle, Maiwald, and Vossius & Partner are concerned about “modifications to the incentive systems for the examination of patent applications”.

Published last week, the letter is addressed to both outgoing EPO president Benoît Battistelli and future president Campinos, along with Christoph Ernst, chairman of the Administrative Council, and principal director of user support and quality management Niclas Morey.

The firms noted that while they appreciated the increased average speed of the examination proceedings, such an “overreaching desire for high productivity” has led to problems at the office.

“When the aim is to terminate proceedings as quickly as possible within specific allowed times, the quality of the search and examination of applications must suffer,” claimed the letter.

The fees for search and examination, which are “rather high when compared internationally”, can only be justified by giving the examiners sufficient time for an in-depth assessment of each application, according to the law firms.

Currently, the fee for an international search on an international application is €1,775 ($2,057), while a preliminary examination of an international examination costs €1,830.

Patents that are examined less thoroughly tend to have an erroneous scope of protection, said the letter, which added that this “distorts and hinders economic competition” within the European Patent Convention member states.

As a result of the erroneous scope, patent owners are exposed to the increased risk of being unable to successfully assert their patent in its full scope against competitors.

“If the users of the European system gain the impression that granted EP patents cannot be relied upon anymore due to insufficient search and examination, the users may increasingly be discouraged from filing European patents,” added the firms.

Finally, the law firms expressed concerns over the EPO’s funding—the official fees are supposed to fund the EPO, said the letter.

“However, in contrast to an industrial company, we cannot see why the profit of the EPO needs to be increased beyond the level of self-funding. From our perspective, the high surplus is rather an indication that the fees are too high and that a further, problematic increase of productivity is not appropriate,” the firms concluded.

As for recommendations for improvement, the firms “urgently” suggested the creation of new incentive systems for examining European patents so that the “high-quality of searches and examinations for which the EPO used to be known will be guaranteed again”.

A spokesperson for the EPO said that surveys carried out by the EPO and independently, as well as an annual quality report, show that the high-quality levels for which the office is known continue to increase further.

“The EPO takes feedback from all its users seriously and should the authors of the letter have concerns over quality levels then we would encourage them to provide evidence, rather than unsubstantiated claims,” noted the spokesperson.

They added that the EPO is in regular contact with the “most important” German IP user associations which are “in general very positive about the projects and results of the office, especially in terms of quality”.

In March, WIPR  reported on a petition submitted by 924 patent examiners which claimed that the quality of the EPO patent is endangered by the demands of current management.

The examiners alleged that the timeliness and number of “products” shouldn’t be the only criteria to assess the EPO’s and examiners’ performance, “but that attention should be paid to providing a high level of presumption of validity to the patents we grant”.

One week before the petition was announced, the EPO released its annual report. According to Battistelli, 2017 was a “positive year” for patents in Europe and that the “growing demand for European patents confirms Europe’s attractiveness as a leading technology market”.

On July 1, Campinos will succeed Battistelli as president of the EPO. Does Campinos have what it takes to fix longstanding problems and drive the office forward? Click here to find out more.

The EPO has been contacted for comment.

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More on this story

Patents
16 March 2018   A petition submitted by 924 patent examiners has claimed that the quality of the European Patent Office patent is endangered by the demands of current management.
Patents
26 March 2018   WIPR readers believe that the quality of the European Patent Office patent is endangered by the demands of current management, according to our latest survey.