A portfolio of measures set to launch in the spring of 2010 will raise the bar on the quality of patents while simultaneously improving the efficiency of the granting process. These steps will better protect inventors who turn to the European Patent Office and, at the same time, see the EPO grant patents only for innovations having sufficient inventive merit and meeting the needs of society.
This programme of measures has been designed with three aims in mind: to secure a clear scope for the search at the beginning of the procedure and thereby build on solid foundations; to save time in the application process by reducing the procedural steps through which inventors and the EPO must pass; and, ultimately, to increase the chances of worthy applicants being granted robust patents.
While the volume of applications the EPO has to examine has been on an upward trend, the same cannot be said of their quality. Applications that are inconsistent with European Patent Convention (EPC) standards, the many procedural steps through which they must pass - and the legal uncertainties that sometimes result - have all engendered a backlog at the EPO and a rethink of quality management.
The Office believes patents must support innovation and, by extension, the economy, demanding in turn that resources are not squandered on systematically avoidable procedural matters and that the balance between the teaching of the patent specification and the benefits of private monopoly is redressed. That is why it is in the interest of all stakeholders (and certainly every applicant with a creditable idea) that more stringent measures are put in place to ensure applications are drafted in accordance with EPC standards from the outset - and that fewer opportunities exist to circum vent efficient examination procedures.
That is also why it was essential for the EPO to look at the assessment of inventive step by reviewing best practices as defined in the case law of the boards of appeal and to revise the guidelines for examination accordingly. In addition, changes to EPC rules will help the EPO deliver high-quality patents based on an efficient search and examination process.
The highlights of these changes include:
(1) Clarification of the scope of protection sought prior to search. A cap on the number of independent claims per application and the opportunity for the examiner to have the claims clarified before searching will help examiners perform a more focused search - and reduce the risk of missing an important document.
(2) Mandatory response to the written opinion issued with the search report. This reply from applicants, required before entering examination, will allow them six months to research and justify any issues raised in the written opinion.
(3) One opportunity to file voluntary amendments. Once in possession of the written opinion and the search report, applicants will be granted only one chance to make amendments of their own volition. This will focus attention and activity earlier in the examination process and reduce the average number of communications required up to grant.
(4) Mandatory provision of the basis for amendments. Since applicants are better placed than anyone else to outline the basis for amendments, they are now obliged to clearly identify any changes they seek.
Together, these measures strike a balance by ensuring that patent law does not stifle innovation, while keeping the system affordable and accessible. The EPO's reputation has been built on these qualities, and it aims to maintain - if not exceed - these expectations in the decades to come.
Other proposals yet to come into effect include processing auxiliary requests and the creation of a Manual of Best Practices. As these become reality, the EPO will work throughout the years ahead to make certain the principles and procedures of the quality programme are clear to all parties who value quality over quantity. Even now, discussions with partners are underway to assess whether the benefits of the EPC rule changes can be reflected in the Patent Cooperation Treaty.