By Bradley Crawford --
In the first post in this series, background information from Mr. Enrique Molina Galan's presentation at BIO 2009 was reported. The focus of this post is on the second part of his talk, where Mr. Molina Galan described the European Patent Office's role in fostering innovation.
In his talk, Mr. Molina Galan noted the need for balancing the needs of innovators with those of the public, and the need to balance patent protection against disclosure. In particular, he mentioned the incentive to innovate, the return on investment, and better market position on one hand are weighed against the sharing of knowledge, which can lead to "innovation leaps" in the other. As he made clear, the key to ensure the right balance is for the European Patent Office to apply high standards, which is entirely consistent with the mission statement of the European Patent Office:
As the Patent Office for Europe, we support innovation, competitiveness and economic growth across Europe through a commitment to high quality and efficient services delivered under the EPC.
Quality can be fostered by the applicant via submission of an enabling disclosure, an undisputed inventive contribution, and claim scope that is commensurate with the contribution to the relevant art. These will lead to the granting of a patent with a high presumption of validity. Quality can be fostered by the European Patent Office via the use of highly skilled examiners, thorough and consistent procedures, comprehensive search documentation, and rigorous controls coupled with a commitment to improve. Efficiency can be fostered by minimizing procedural delays, minimizing legal uncertainty as early as possible, and handing the ever increasing workload.
After briefly discussing the European Patent Grant Procedure, a slide entitled "fate of the biotech applications from search to grant" was shown (slide shown below). This slide shows that for every 100 biotech EP applications that were searched, about 70 proceeded to examination. Of the 70 that were examined, 35 were granted, 30 were abandoned or withdrawn, and 5 were refused. Mr. Molina Galan stated that this last number was showing a slight increase. Two of the initial hundred applications were the subject of an opposition after grant. The end results of the opposition were as follows: about a third of the oppositions were rejected, about a third of the patents were revoked, and in about a third of the cases, the patent was maintained in amended form.
As mentioned above, the European Patent Office's workload has been increasing. According to Mr. Molina Galan, the gap between the number of new applications and the number of finished applications is currently growing at a rate of 37,500 applications per year; it would take 750 examiners, working at full capacity to handle this work load. Of course, each year, an additional 750 examiners would have to be hired in order to handle this ever increasing workload.
In an effort to align patent quality standards to the needs of today's society, the European Patent Office has instituted a "Raising the Bar" campaign. Legislative measures supporting this initiative and aimed at improving the quality of the incoming patent applications and streamlining the grant proceedings will take effect on April 1, 2010. The key features of those amendments to the Implementing Regulations to the EPC are as follows.
Early enforcement of the EPC Rules on the admissible number of independent claims per category:
• If a meaningful search is not possible, the applicant will be invited to clarify the subject matter to be searched.
• Examination will be limited to the searched subject matter.
• A response to the search opinion issued by the EPO will become mandatory.
• Amendments and their basis in the application as filed shall be clearly identified.
• Applicants will have fewer opportunities to amend the claims on their own initiative. Further amendments with the consent of the examining division remain possible.
• The sanction for not observing the respective time limits will, as a rule, be the deemed a withdrawal of the application. The available remedy is further processing or, in a few cases, re-establishment of rights.
The European Patent Office is also instituting a new rule regarding the deadline for filing a divisional application. Under the current rules, a divisional may be filed at any time before the European patent is granted. Under the new rules, all divisional applications must be filed either within a period of two years from the first communication by the examining division in respect of the earliest application for which such a communication has been issued or within two years of receiving a lack of unity objection.
As previously mentioned, the new rules take effect on April 1, 2010. However, the European Patent Office has yet to finalize its rules regarding the day to day implementation of the above rules. In the next post in this series, possible results and consequences of the new rules will be discussed.
Patent Docs thanks Mr. Molina Galan for his time, the comments that he provided regarding the above post, and for granting permission to make the slides from his BIO 2009 presentation publicly available. To view the slides, click here.
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