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EPO Developments: Summer 2019

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Our practice in Munich includes patent applications, oppositions and appeals at the European Patent Office. Several of our European and US attorneys also periodically meet with EPO officials regarding developments there.

In early June 2019, John Pegram was a member of a delegation, which met with EPO and Boards of Appeal officials in Munich. The EPO reported that the average time from the end of the opposition period to decision in the Opposition Divisions was 18.6 months in 2018 and that they expect reach their goal of 15 months in 2020. The Boards of Appeals also are trying to expedite their proceedings, but not nearly as dramatically as in the Opposition Divisions. EPO officials also informally discussed the outlines of proposals, which were to be considered at the Administrative Council meetings on 26-27 June 2019 and now have been approved.

In particular, the Council approved new Procedural Rules for the Boards of Appeal, to be effective 1 January 2020. Most notably, "a party's appeal case shall be directed to requests, facts, objections, arguments and evidence on which the decision under appeal was based" (Art. 12(2)), any part of an appeal case not meeting those requirements shall be regarded as an amendment (Art. 12(4)), any amendment after filing grounds of appeal is subject to justification by the party offering it (Art 13(1)) and a Board will have considerable discretion in deciding whether to admit amendments (Arts. 12-13). It remains to be seen whether these rules will expedite Board proceedings, as many patent holders hope, or complicate and delay proceedings, as a number of practitioners have suggested.

Another significant development is the EPO's decision not to introduce a deferred examination procedure, following a user consultation on the subject that ended in January 2019. This has not expressly stated in any published announcement we are aware of. As explained at the delegation's meeting with the EPO, under existing rules, an applicant has options to control the timing of examination, by using (or not using) the free accelerated procedure (PACE), and by adjusting the time of filing a request for regular examination.

Read more about German Justice Ministry to Await Brexit before Proceeding with UPC.

Authors: John Pegram, Herbert Kunz, Ph.D., John Conroy, Ph.D.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.