EPO under pressure not to lower quality standards

In a letter send to the outgoing EPO president Benoît Battistelli, four reowned law firms – Grünecker, Hoffmann Eitle, Maiwald und Vossius&Partner – critisise that the time for the examination of patents has been cut drastically on cost of quality. While the goal of establishing a higher productivity at the EPO through its Early Certainty Initiative in Examination was good, working routines, which incentivise a high throughput of patent searches and examinations have led to lower quality. "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," the patent attorneys write in their 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 indepth assessment of each single application."

Decreasing quality of patents has been a major concern of EPO users in the past, as decreasing quality jeopardises industry investments and revenues. As an answer to concerns of technology companies,and patent experts  that quality of patents and thus litigation might suffer from shorter examination times, the EPO in February presented a proposal ("UDEC" – user-driven early certainty) at an on-invite meeting. It allows exemptions from the goal of Battistelli’s Early Certainty in Examination initiative to half the time for patent examination from currently 22 months to 12 months on average. In March, however, the EPO cancelled implementation of UDEC by 1 July following critics from Business Europe, the only industry association that has observer status both in the EPO Committee on Patent Law and the EPO‘s Administrative Council. UDEC foresaw to allow applicants to postpone the start of substantive examination for a maximum of three years.

Additionally, the EPO, rejected the industries’ and patent attorneys’ critics that acceleration of patent examination could lead to a loss of quality in patent examination. On request of the German newspaper FAZ the EPO stressed: „If the authors of the letter are concerned about the quality of the work of the EPO, we encourage them to use them on the basis of clear facts rather than unsubstantiated claims. Both in internal customer surveys by the EPO as well as in independent investigations and in the quality report of the EPO, it is clearly demonstrated that the acknowledged high quality level of the EPO has further improved.“ In fact, the EPO has established several measures to maintain a high quality level of patents, even under the higher throughput of accelerated examination, and created a Standing Advisory Committee before the EPO (SACEPO) Working Party on Quality in January 2017 to “provide another channel to gather feedback on quality at the EPO based on the experiences of major user groups.”

However, an open letter sent in May from 924 EPO patent examiners to the EPO‘s Administrative Council, which controls Battistelli, who has diplomatic status, reads clearly different: Patent quality has fallen, thanks to the push by the EPO management to approve more of them, it says. The underwriters confirm that they are “submitted to constraints that are no longer compatible with fulfilling appropriately our duties within the Search and Examination divisions.” They warn that throughput may not come at the expense of the validity of patents granted – “timelines and number of products should not be the only criteria to assess the Office …”

The patent attorneys’ letter raises another interesting question: "The official fees are supposed to self-fund the EPO. 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." In fact, the EPO has currently a surplus of €2.3bn, according to FAZ reports. 

Sources told European Biotechnology that accelerated approval of patents could lead to a huge shift in fees from the EPO to the national patent offices. On average, the annual renewal fee for a pending patent at the EPO is tenfold lower than the fee payable to the national patent offices after a patent has been granted and nationalised in 30 European countries (which is the standard case). A three year earlier nationalisation of the 96,000 patents issued in 2016 would have resulted in flushing about €1.47bn more into the national patent offices. 

Experts, however, wonder why the EPO has established the Early Certainty Initiative because there has been already an instrument in place – called PACE – to accelerate examination on user request which is legally approved and is not under suspicion to generally lower quality of European patents.