Raising the Bar
This article was included in our Summer 2010 edition of Inside IP magazine.
The “Raising the Bar”* initiative of the European Patent Office (EPO) was implemented in 2007 in response to a perceived devaluation of granted European patents and an internal perception of procedural inadequacies in the patent system. According to Thomas Hammer, Vice President, DG Operations, of the EPO, the initiative was invoked in order to ensure “that a greater number of sound patents are granted in the future”** . Significant resources have been invested by the EPO in the pursuit of this goal. But how does the Office intend to achieve the aims underpinning the “Raising the Bar” initiative? And from the perspective of the applicant, what impact does this initiative have on the prosecution of patents before the EPO, and what effect, if any, will it have on patent quality?
According to the EPO, the primary aims of the “Raising the Bar” initiative are***:
• To support the EPO’s practice with respect to assessment of patentability requirements
• To enable patent examiners to ensure that the search is focussed on the subject matter for which protection is sought
• To place more emphasis on the search opinion, and streamline the search and examination process
• To formalise the existing practice of applicants identifying and indicating the basis of amendments
• To restrict the filing of divisional applications to twenty four months after the later of either the first communication or a specific non-unity objection raised by the Examining Division for the first time
Thus, “Raising the Bar” aims to improve coordination between search and substantive examination, to ensure a consistency of approach in examination, and to tighten up time limits in which divisional applications can be filed. Most notably, no changes to the patentability threshold for European patents are included within its remit.
In order to achieve the aims set out in “Raising the Bar”, the EPO has introduced a series of measures, most significantly in the form of changes to the implementing regulations which entered into force on 1 April 2010. These new and amended rules set out strict time limits for the filing of divisional applications, implement pre-search communication between examiner and applicant, require obligatory response to the search opinion prior to entry into substantive examination, formalise the requirement for applicants to identify and indicate the basis for amendments and require a clear restriction of examination only to the subject matter searched. These procedural changes are intended to ensure that users of the system play their part in improving the quality of incoming applications and to ‘front-load’ legal certainty for third-parties.
Despite the obvious connotations, the EPO seems keen to reassure users that the “Raising the Bar” initiative is not intended as a vehicle for raising the patentability threshold for European Patents. Indeed, following a detailed review of EPO case law and practice around the world undertaken as part of the initiative, it was decided that patentability standards currently in place at the EPO are already appropriate for granting quality patents with a high presumption of validity.
However, an outcome of the review was the determination that increased consistency is required in the application of existing patentability requirements across all technical fields to ensure that the high standards sought for granted European Patents are maintained.
The “Raising the Bar” initiative aims to achieve this increased consistency by a series of measures; firstly, by re-focusing the attention of examiners on substantive examination, in part via the changes to the implementing regulations discussed above, which are intended to enhance the quality of incoming applications; and to ensure that the applicant takes a greater responsibility for ensuring compliance with the provisions of the EPC at an early stage of the procedure. In addition, the EPO has issued Revised Guidelines for Examination in the European Patent Office and a new set of Internal Instructions, each of which entered into force on 1 April 2010, with the express goal of increasing consistency of approach.
The procedural impact of the “Raising the Bar” initiative is now being felt by many users of the European Patent System. Applicants are required to ensure that high standards are met for applications upon filing and to focus at an early stage of the Examination procedure on that subject-matter for which protection is sought. In addition, opportunities and time-scales for filing divisional applications have been significantly curtailed. Users of the system can also expect a more rigorous approach to substantive examination, particularly insofar as inventive step is concerned. Mandatory application of the “problem-solution” approach by Examiners, and increasing requirements for evidence of a technical effect to be demonstrated over the whole scope claimed, are two of the more likely effects of this initiative.
There is more to come. The EPO has indicated that in the future we can expect a “Manual of Best Practice”, prepared in conjunction with the European Patent Institute, and documenting best practice to be adopted by applicants, their representatives and the EPO during prosecution with a view to furthering the aims of “Raising the Bar”**** . In addition, further changes to the implementing regulations can be expected, in areas where it is considered that procedural efficiency can be further improved. Representatives of the EPO have indicated that the end stage of the examination procedure is one area in which further changes are envisaged, with a view to reintroducing the flexibility when amendments are required that was lost when rule 71(3) superseded rule 54(3)***** .
ConclusionIn conclusion, although ostensibly not raising the threshold for patentability before the European Patent Office, the procedural changes recently implemented alongside a more rigorous approach to the application of existing provisions are likely to ensure that higher standards are expected for newly-filed applications. Thus particular consideration should be given by applicants to the breadth of protection sought; to support, in terms of sufficient data and evidence demonstrating a technical effect across this breadth, and to the requirement of potential divisional applications before filing. In return, users can expect greater certainty at an earlier stage of the procedure, and a higher presumption of validity for those patents granted via the streamlined procedure.
As Thomas Hammer has wryly commented, perhaps it’s not so much “Raising the Bar” as “straightening out some of the bends”.
*. Raising the Bar on Patent Quality, EPO Annual Report 2007
**. “Bringing the European patent grant process into focus, Thomas Hammer, EPO, Patents in Europe 2010/2011
***. Realigning the European patent grant procedure, http://www.epo.org/topics/patent-system/realigning.html
****. EPO Annual Report 2009, http://www.epo.org/about-us/office/annual-reports/2009/business-report/quality.html
*****. “Raising the Bar: Increasing legal certainty by improving quality and efficiency”, Stephen Hey, Domain Leader, Raising the Bar, CIPA