Convergence of practice
Companies and inventors seeking patent protection in Europe are sometimes confronted with diverging practices at national patent offices and the EPO. This complicates the existing European patent system, and can lead to increased costs and inefficiencies for applicants. A programme, launched by the EPO under its Strategic Plan 2023, aims to reduce or even overcome these differences by establishing common practices in selected areas to be implemented on a voluntary basis. This is of particular importance for SMEs, for whom differences in practice can be a major obstacle to operating internationally.
The following common practices, resulting from discussions in dedicated working groups, have been adopted so far by EPO member states in the Administrative Council:
Examination of unity of invention
This common practice covers the information to be provided to applicants as minimum reasoning when raising non-unity objections.
Designation of the inventor
This common practice concerns the designation of the inventor.
Accordance of a date of priority
This common practice relates to the formal and administrative requirements of the accordance of a date of priority
Re-establishment of rights
This common practice mainly relates to the formal requirements for the filing of requests and for the drafting of decisions and communications on re-establishment of rights.
Claim drafting and structure
This common practice relates to the formal requirements governing the drafting of claims and their structure.
Examination of computer-implemented inventions and artificial intelligence
This common practice aims to establish a common ground for examining CIIs and AI-related inventions between EPC contracting and extension states and the EPO so as to help applicants to successfully draft and prosecute applications in these areas throughout Europe.
Six areas for convergence of practice were chosen jointly by the national patent offices of the EPO member states, the EPO and users during consultations on the Strategic Plan 2023. They were selected as the areas in which a more uniform approach is likely to deliver the most tangible benefits for users and patent offices across Europe. They are:
- Examination of unity of invention
- Designation of the inventor
- Accordance of priority date
- Re-establishment of rights
- Claim drafting and structure
- Examination practice for computer-implemented inventions and artificial intelligence
More closely aligning administrative practices between the EPO and Europe’s national IP offices is expected to bring a number of benefits for offices and applicants alike. For users and the public, it will improve predictability and legal certainty in the European patent system, and provide simpler, more streamlined and cost-efficient proceedings.
The potential cost savings could enable patent applicants to undertake additional investment in research and development, for example. Harmonised practices could also facilitate the extension of patent protection by SMEs from national to European level.
Overall, the programme will enable a more uniform service across Europe for users of the patent system, ensuring that innovators benefit from higher quality services no matter where they are based.
Efficiency and quality gains for patent offices
For the EPO and the national patent offices the convergence of practices will also lead to efficiency and quality gains. Harmonisation facilitates work-sharing, for example, through better use of earlier searches, enabling cost savings to be realised by both national patent offices and the EPO, as well as improving the quality of their work. At the same time, convergence will enable national offices to reduce their administrative workload.
Positive impact on training, knowledge-sharing and IT tools
More aligned workflows in patent procedures will additionally have a positive impact on the harmonisation of IT tools, enabling the joint construction of an effective IT environment and the delivery of tools that work in the long term.
Furthermore, aligning practices between national offices and the EPO will facilitate enhanced knowledge-sharing and training of patent office staff by enabling the EPO to deliver more focused resources based on agreed common practices.
Under the convergence of practice programme, dedicated working groups are set up to agree on a recommendation for a common practice in the selected areas. The working groups, which are composed of representatives of the EPO member states interested in participating in the discussions as well as the EPO, examine the existing practices at the various offices, analyse the disparities, and agree on common practices with regard to these areas. Representatives from industry and the patent profession (epi and BusinessEurope) are also involved in the working groups as observers. The recommendations are then submitted to the Committee on Patent Law of the Administrative Council of the European Patent Organisation for opinion, and to the Administrative Council for adoption.
The implementation of the agreed common practice by the EPO member states and the EPO takes place on a voluntary basis.
Any inquiries concerning the convergence of practice scheme may be addressed to firstname.lastname@example.org