Proceedings before the European Patent Office

Not many blog posts recently. I have been reading a new book from Edward Elgar . They kindly sent me an ebook to review but as its very attractively priced at £44 for the paperback if you buy it on line, I recommend it to all practising patent agents and trainees. Its been written by Marcus O. Müller (a chemist) of the Boards of Appeal of the European Patent Office, Munich, Germany,  and Cees A.M. Mulder, European Patent Attorney, Maastricht University, the Netherlands in the style of dumbed up  a FOR DUMMIES book.

What you get is a candid, accurate and informative guide to how the EPO's judicial process works. There are a myriad of out take  Examples and Practical Advice paragraphs designed to make the attorney more effective in this unique environment. How to play with added subject matter and Article 84 are just some of many ploys on which both seasoned and novice attorneys will receive enlightenment by reviewing this text and taking its lessons to heart.

It has been published with the approval of the EPO. The text is completely uncritical but the critical (but hitherto ignorant) reader might find themselves crying aloud about some of the examples given and there are lots. If you happen not to be experienced in EPO opposition procedure but have read suggestions that the procedure of the new Unified Patent Court should be more EPO like (or even that the IPEC procedure already is) , this book will explain what they mean and you should read it so you can stop that idea in its tracks.

However the EPO procedure is what entrepreneurs have, if they are to get a European Patent or a Unitary Patent in the future. You can't get to the wonderland of the Unified Patent Court if your patent can't survive the opposition stage.  Your competitors will take you there if your patent could be a problem for them or even if they just don't like you as costs are no deterrent. Normally each party bears their own costs - but Chapter 6 will explain when you might expect an apportionment of costs, but its not mentioned that it is ever to punish a vexatious opponent, and it is not. 

The book isn't aimed at inventors but one who has been to the EPO and may find himself there again defending a genuine invention may find it valuable. It will tell him not to employ an "old school" agent - who according to the authors' practical advice is one who writes the application with ambiguous terms, woolly stories, twists and turns, instead of in the way the EPO likes to see it, with a single, clearly defined invention, problem-and- solution approach, etc.The authors admit in their conclusion to the chapter on drafting issues that

"quite a few patents are lost after expensive opposition and appeal proceedings, even though there seems to have been an invention that could have led to a valid patent, simply because the original drafting of the patent application was not appropriate." 

PAMIA take note.

Although neither author is an English native, the book is very readable. If I had a trainee he would be reading it as required study in  his second year. I would give him a paper copy and check it at appraisal time. No dog eared corners and sticky notes would not be a good sign for his future career.  The insight it gives into how the opposition division and boards work behind the scenes is very useful. You learn how those alleged minutes are written and who is allowed water or recording equipment. You learn that its worth paying an appeal fee just in case and get the fee back if no one else appeals. I wonder how many appeals start because both sides appealed just in case.

This book is a valuable addition to sparse library available to practising patent agents. Hopefully it will be followed by other usable texts. We are now blessed with a whole academia of intellectual property that delight in studying the issues arising in big court decisions,  but much less is written to help agents make inventions become valid patents that will be valuable business assets. Well done Edward Elgar for bringing us something so usable.

Does The OHIM Board of Appeal have a Backlog?

All courts and tribunals have a period between the closure of the case (whether it be the end of the trial or the closure of a file of written submissions as at the OHIM Board of Appeals) and the date of the decision. In the case of the OHIM Boards of Appeal the published service standard is 8 months. As you can see from the results which were updated on 1 April 2014 with the 2013 4th quarter outcome, the inter partes Appeal  results rose from a dismal 58% in the third quarter to 80%. For ex-parte decisions they hit 96%.

A Backlog of paperless files can be denied

This would seem to suggest that any backlog has been dealt with, or does it?

These are figures for cases where decisions have been issued within 8 months - not exactly a short time compared with the UK IPO or Courts. Therefore a stunning result can be achieved by taking the recent cases and issuing quick decisions. There are a lot of simple decisions to be taken too, where the Appeal is ill-founded for want of grounds or some such. These decisions are commonly caused by an Appeal being filed to achieve a settlement, but they still generate quick and easy decisions to keep down the averages.

My perception is that there is a backlog is based on one observation of a decision awaited since the file was closed on 31 July 2012. The timeliness standards had given me the impression I was not alone, but apparently I am.

The President of the Boards Of Appeal who attended the Mediation event in London on 31 March 2014 told me there was no problem. The existence of a backlog was denied again by Christoph BARTOS,  member of the Board during the OHIM webinar on 9 April 2014 on Decisions of the Trimester.

ESearch reports that there are 884 appeals pending - these are the Opposition and Absolute Grounds Appeals. 280 filed in 2014, 503 are 2013 appeals but it also confirms that 60 of those appeals have 2012 Appeal Numbers but some of those are already with the CFI and some could be suspended so they are not all part of the non-existent backlog. There are 33 2011 Appeals pending and 7 from 2010 leaving only 1 earlier Appeal except there were 3 in 2009 so something does not add up. Ah, there can be more than one appeal number on a file. 

So what about Cancellations which don't get given an Appeal pending status but a Registration Cancellation pending status. There are 87 with 2014 Appeal Numbers, 239 from 2013, 117  from 2012,  96 from 2011, 37 from 2010, 20 from 2009,  23 from 2008, 14 from 2007.

Now this is perhaps not a backlog, because we cannot expect OHIM to take responsibility for the European Court and its delays or the desire of parties to suspend their cases. Nonetheless I suspect there might be a case to answer on Cancellations. These inter-partes issues are often more challenging legally but also more important commercially. Can you help me establish if there is a problem in the Cancellation corner?