EPO
only with the exercise of the examiner’s discretion. And the right to file divisional applications has been curtailed. All this means that applicants have lost flexibility during prosecution, which can be crucial in enabling a patent which reflects the commercial needs of the applicant to be granted.
Future proposals
As explained above, the changes made as a result of ‘raising the bar’ have taken out of the system much of the flexibility during prosecution that applicants enjoyed previously. Tey also give the examiners many more opportunities to refuse the application, by tripping up the applicant or otherwise making it difficult to proceed. So, an applicant may have to give up because the amendments it wants cannot be entered, for whatever reason. As these technical objections frequently arise long aſter the final date for filing a divisional application has passed, the applicant can find itself with nowhere to go to gain acceptance.
Many applicants and professionals now believe that the EPO is turning itself from a patent- granting authority into an organisation whose raison d’être is the refusal of patent applications, either by making the inventive step requirement particularly high, or by trapping the applicant in a blind prosecution alley. As such, industry is
Tus, applications being filed now may have to be litigated before the UPC, and applicants are being persuaded to consider filing applications by the national route to avoid this risk. Many professionals believe that the UPC as presently proposed would be a disaster. However, even if a better scheme is eventually implemented, the court will still be unproven in its early days and, just as the EPO commenced slowly, so applicants may wish to avoid the UPC until it has proved its merits.
Should the EPO be avoided?
discussing removing its business from the EPO. Te small drop in patent filings in 2011, aſter the numbers held up well in the recession years from 2008, might be the first indication of a move away.
Tere is another problem in the wings, and this is the proposal of the European Commission for a Unified Patents Court (UPC). Various presidencies in Europe have sought to push through a proposal for such a court to deal with the infringement and validity of European patents.
Te proposal is to give the UPC exclusive jurisdiction over matters relating to unitary patents, supplementary protection certificates (SPCs), European patents already granted which are still in force when the proposals come into effect, and all current and future pending European patent applications. For a miserly five- year period there is a transitional period during which patentees can choose to use national courts rather than the UPC for their disputes relating to European patents. Tereaſter, unless the patentee has filed an opt-out during the transitional period, it will be forced to use the UPC. Of course, if the national courts wither and die because of the UPC, any such opt-out would become useless.
With the uncertainty of the UPC proposals, and the increasing problems arising in patent prosecution at the EPO, it is hard to encourage applicants to continue to use the EPO. Yes, it enables patents to be achieved at less expense than filing applications in all EPC countries, but most applicants actually require protection in only four or five countries. Furthermore, as oral proceedings during examination become more numerous, the prosecution costs are increasing. Also, the costs are being front-loaded as they occur so much earlier in the application cycle.
At the very least, some companies are returning to filing a European application in parallel with a national application in their base country. It is interesting to speculate whether applicants will return to the pre-1978 system and file national applications, rather than using the EPO, to obtain protection in those few European countries where they really need protection. n
Jacqueline Needle is a partner with London firm Beck Greener. She can be contacted at:
jneedle@beckgreener.com
16 World Intellectual Property Review Annual 2012
www.worldipreview.com
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