Why you should withdraw your European Patent Application

Patent applicants and their agents should very seriously consider their portfolios of pending European patent applications. Why?

• You will get the whole of the examination fee back if examination has not started. This deal was improved on 1 July 2016 and is part of the EPO drive for greater efficiency as described here. This is set out in Art 11 of the Fees Rules if you don't believe me.
•  You will get the whole search fee back if there is no supplementary search. Art 9 of the Fees Rules
• The prospect of the Unitary Patent (UP) is fading after the #Brexit vote by the United Kingdom is receding fast. The continental Europeans would like the UK to ratify the Agreement fast so that it can become effective. However to do so before negotiations are complete would potentially put UK businesses who hold patents at a disadvantage when they were being enforced. Its possible that as part of the negotiations some new Treaty might be arranged that allowed the UK and possibly other significant non EU countries that are part of the EPO system to participate. Do read the opinion from Counsel which was sought by IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association rather than the spin that certain parties have put on it. Without the Unitary Patent the less rich patent holder tends to proceed on grant only with a few London Agreement territories. A rapidly granted UP held out tantalisingly the prospect of maintaining patent protection in 25 territories for a reasonable period until the renewal fees climb massively after year 10 to encourage lapse of any patents that are unexploited by that age. 

If you don't want to withdraw patent applications on which hefty renewal fees are being paid for nothing then you should consider making a PACE request when paying the next fee. You need the form 1005 and since I just spent an age looking for it, I have written this blog to hold the link to its location. I am sorry if they have since moved it.

Of course if you move the application along you will need to be able to respond to the examination report and pay the grant fees. It is worth giving applicants an idea of what that might cost having looked at the state of the claims in the application as it stands.

As  a further incentive to tactical withdrawal sometimes the EPO is going  to give you advance notice that the examination is about to start. A sensible move because it must frustrate examiners that cases are abandoned when they have done work, which could have been avoided.

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.

The new approach to correspondence with the EPO earns 5 stars

Forgive me if you are already up and away with the delights of the new case management system  (CMS) from the EPO but if not here he is a brief review from a tentative user.

In the past to file electronically with the EPO you needed their stand alone on line filing application. Now this was a brilliant piece of software which I have been using since last century. In the beginning it put paid to those days of sending paper in triplicate by post or worse still using a fax machine. It was instant and incredibly over the years has been allowing us to file more and more of our day to day correspondence with not just the EPO but also our national offices and WIPO. For solo practitioners it was the most wonderful gift and its server version meant that it provided a solution for even the largest practices. In its last hurrah it has just opened up the possibility of filing a demand for examination of a PCT application (which is not yet possible on CMS). Nevertheless the constant updates were a chore and it wasn't always easy to make corporate IT departments understand what you needed.

For some time the UK IPO has adopted web filing which allows us all, whether sole inventors, corporate departments or agents of whatever size to file new applications, other forms and responses using a secure web interface. Now the EPO has decided to follow suit.

For those of us with smart cards already the Case Management System seems the best option. However there is also a web filing option (WFF) that provides for instant registration and usability. Here is the guide for that ( a modest 29 pages).

The more sophisticated CMS option has a guide too but it is 207 pages so get comfortable. First you need to tell the EPO you want to use CMS. There is a web page for doing that. Once the support email has come through you can slot your card in its reader and attempt to go to the start page by clicking on the button on this web page (see picture to the right)
. At first it kept giving me a 404 error but clicking on the EPO logo in the top left (I'm not sure what is under the logo but its worth a try for any 404 errors you get ) was the clue for getting past that one. We are now up to version 1.9 and for the non-solo readership, the release notes suggest it is now possible for one registered user to register others in their organisation.

Having got in, it is fairly intuitive to get on and fill in forms. Its a nice thing that addresses and names you set up in Demo are available when you come to do real work so you can experiment with real data. Don't throw away the on line app just yet, but this is a simpler option for everything it does. You set up your default language in the Preferences option and away you go. I was slightly disconcerted not to see English is the amazing list of filing languages but "Same as Procedural Language" works just fine.

Your PDF files have to be well behaved and as with the app you and the document need to know the number of pages there are and if you have not accounted for them all it will tell you that overlaps are not allowed.

I have not managed to make the little eyeball viewer work happily yet. Maybe it wants my PC to have a tiff viewer (it doesn't) but then I was using Firefox and I think you are probably better off in Internet Explorer.

Despite that, I have managed one live filing that has moved along so I am pretty chuffed and you can probably do the same without having to read the 207 pages but its nice to know that it and the efficient support@epo.org are there to help.

Do share your experiences.

Will a division please bid for my EPO files

I was a bit shocked to receive an examination report from the EPO reprimanding me for addressing a response to the Examiner and not to the Division

Now we all need to encourage the EPO in their mission to work more efficiently and provide better service. There were no personal remarks in the letter. While it is tempting on occasion to criticise the examiner's understanding. It is never helpful so I don't do it.

Back when I first began responses to office actions were wrapped in ribbon and couched in very formal terminology. None of that was at all helpful in developing a forceful and effective argument.

The exam report comes with the name of the examiner on it. This I had thought was to facilitate communication. Sometimes I try to call examiners to clarify a point. This is a lot easier in the UK IPO than at the EPO. It seems to me this is helpful to the efficiency we need.

If you consult the guide intended presumably for unrepresented applicants, it does not make demands for Dear Sirs responses.

Is there a role for a less formal layer of communication with agents? It would need to be voluntary. In this case the objections were all formal or might be thought so. A call or an email with a proposal might get the whole matter sorted more quickly. Now I am left wondering whether I will be hit with an added subject matter objection if I delete the "about" the Examiner says is unclear. I am not a division. I am a Solo so no pair of supporting acts to ask about that. On balance I think not but its going to take me a formal response and another two years for feedback from the EPO examining division. Naturally the idea of initiating an informal communication after that reprimand is out of the window.

The renewal fees on this case are paid through an agency so in these two years of fallow between activity, it generates no income so my financial controller quite rightly asks why I am doing it, if its not for love of the inventive concept and a desire to see it commercialised for the benefit of Europe and the applicant.

Go Mobile with the EPO on your holidays

Just in time for the summer break the EPO has brought forth its mobile site so you can keep in touch while away from your patent files. I was alerted to it by this tweet asking what I thought so I had to try it.  First off I picked up the aged iPhone and browsed to www.epo.org and got the usual desktop site.  I went back to the source material and read it again and this time I arrived at a nice clean launch page.

Who is this site for? initially I thought that I as a n agent was the target market, but clearly I am not. The selection of pages suggests that the media and prospective examiner recruits are the target markets. The job site is particularly good. Nevertheless the rest of this review is based on the utility for the professional agent market.

Now I had just received an email from a client assuming that £500 would cover their next renewal fee so the first thing I thought I would do was check the real fee to see quite how far he was adrift. I spend a lot of time clicking through to the fee schedule on my desktop. Law & Practice was a good option but then I ended up at my familiar schedule in an unreadable scale. Never fear I had passed another link to fees on the European Patent Convention page, this offered me the Fee amounts and codes and here they are. Even after turning the phone round, no fee amounts were available to me.

Since the announcement admits that a lot of things are not in the mobile site, I thought that perhaps News was more likely to be useful and it was. I could read that so I marked it as a favorite page. I did that by touching the star and then the "Add to favorites" option that then appeared. Touching the middle symbol next to the star takes you to the menu. You guessed that, sorry.

Sometimes if you scroll down to the bottom of the page there is an option to share the topic and tweet a link to it. You could also share with your friends on Facebook, your colleagues on LinkedIn, Jane who is the only person I know who uses Xing, or the barren planes of Google +. Whether that option appears was a bit random or so it appeared to me.

For most of the material on the incredible resource that is the EPO website, you do need a bigger viewing and reading screen so this iPhone test is perhaps a little unfair. Having a good readable presentation of the legal resources that works on a tablet (but not necessarily something as small as a phone) would be useful. So the things I would most like to be able to read are the Guidelines and recent cases. The register would be helpful too. What price to read it on Google Glass? Maybe the developers can leave that horror for another day unless I can wear GLASS TM at a hearing and use voice commands to amend and then print the amended pages of my patent specification. 

Coming back from that fantasy, I would like the site to know what browser I was using and adapt to that. I don't know how that's done, but someone must have tried to patent it (I hope you refused it). OHIM made a big song that their site was accessible on all formats, so perhaps they will share.

As a final note and because I have been so cruel to OHIM about the frustrating shortcomings of their new website, I will finish this post by advertising one of its best features, the selective search window that lurks at the top of the screen. You might have thought it just searched the site, but activate it by clicking on the magnifying glass and drop down the hidden list to the left of the search box you can get straight to the register or any of the other databases without once being asked about opening another tab

Do share your opinions of what the EPO is doing in the mobile world.

Handwriting at the EPO

Extract from a note on telephone consultation from 11 Feb 2014

The introduction of the rule forbidding handwritten amendments at the EPO has called consternation amongst practitioners as discussed amongst even the big boys with lots of software licences, portable printers and laptops will long battery life that inhabit the IPkat's illustrious corridors. Maybe the above note with its admission that the deficiency of writing by hand might be rectified offers some crumb of comfort. Nevertheless it does not say the Examiner would not take advantage of the issue to delay re-examination of the application.

Little jewels from The EPO for 2014

More flexibility in dividing your applications

The EPO has been rather busy with its late 2013 Administrative Decisions .Its probably the case that most patents agents will be looking for a spot of CPD to make sure they understand the implications of the changes promised for 2014. The change in divisional practice in October which arrives on 1 April 2014 was greeted with much delight but the additional decisions all need to be read and digested. The whole package is driven by divisional issues. The changes in practice on searches are long overdue and it seems an age since CIPA was trawling for data on these iniquities. They don't arrive till 1 November 2014 so some applicants may be grateful for those prolonged delays in the arrival of their supplementary European searches, even if the renewal fees during that wait are inexorably rising as can be seen on the decision relating to fees. Cleveland have a helpful exposition of the new regime on unsearched subject matter here.
All this and the confusion over how to amend European patent applications now that our hands are tied and everything must be electronic as debated on the IPkat here means that 2014 is going to be an exciting year for the European Patent Attorney.
It is to be hoped that with all these procedural shenanigans that someone will remember that the role of the EPO is to issue valid patents efficiently (this includes timeliness) in the hope that those innovations will be exploited positively to the benefit of the European economy and not just of patent agents and litigators.

Examination Matters -- but at what price?

"Examination Matters 2013" is the title of an attractive and interesting seminar organised by the European Patent Office in a couple of months' time.  It looks like this:

Examination Matters 2013

Seminar for patent professionals
19 - 20 November 2013
European Patent Office, Munich

Register here

With "Examination Matters" the European Patent Academy is organising an in-house training seminar for Professional Representatives before the EPO.

First-hand experience on important aspects of your daily work will be exchanged by examiners and practitioners, which will give participants an insight into an EPO examiner's daily work and their way of thinking. The workshop-type character of most sessions will give the opportunity to discuss relevant aspects with the "other side" in detail and provide immediate feedback on your questions.

Target group

This event is directed to patent attorneys who are active in the prosecution of European patent applications before the EPO. 

The event is not just aimed at this: it gives the EPO a chance to indulge in a little data-grabbing. This is a bit like tagging migratory birds to see where they end up and how they get there -- it's relatively painless and provides all sorts of helpful data, one hopes.  The data grab is attached to the registration process and the first of its five pages look like this:

Registration form for seminar PS05-2013

The seminar "Examination Matters" takes place from 19.11.2013 to 20.11.2013 in EPO Munich.

Personal data

Professional data

Profiling survey

Workshop selection

Miscellaneous data

Section 1 of 5 Academic title Title * MrMs First name * Surname * Fields marked with an asterisk (*) are mandatory. Click here to go to section 2: Professional data Save and continue later

Password (Draft only) * 

Questions/Problems with your registration?

So far, nothing has been said about the cost:

Registration fee

EUR 350,-

This fee covers conference material, catering for the whole event and dinner on the first day for one participant. The fee cannot be split and is not refundable if cancellation is requested less than 28 days before the start of the event.

That's just the registration fee.  Let's not forget the cost of getting to Munich, if you're not already there, plus accommodation, plus the hidden cost of the time consumed by travel, waiting in lines for security and customs etc and the disruption to one's professional obligations -- many of which are urgent and time-sensitive, clients being what they are.

This blogger hopes that, once all the data is captured, the EPO will contrast the proportion of registrants who work by and for themselves or in small practices with the proportion of such practitioners within the profession as a whole.  Might that just persuade them to offer a wider selection of seminars and events that are accessible online, and thus easier to access for many people who can greatly benefit from them?

Databases Galore : Patent and Trademark Due Diligence Made Easy

The competition is hotting up between the Patent Offices of the world to produce even better and more accessible databases. Today the UK join with a beta version of  IPSUM a UK patent register that offers access to the documents issued by the Patent Office during the prosecution of recent applications. It also allows easy access to the Espacenet records of citations.

The EPO has also recently updated the EPO Register  and made its alert service (now called Register Alert instead of WebRegMT) much more accessible. The EPO show you the whole file including the correspondence from the agent. Also don't miss the tabs along the top that allow some very sophisticated searches to be carried out directly on the register.


The OHIM have been keeping up too. TMView is celebrating its first anniversary and although not yet comprehensive it is the best way to search for free across multiple country databases. French data is promised soon and we would like see German data so that there is a good prospect of spotting most of the big issues with a prospective new mark in one operation. You won't be able to clear a mark with this alone but you can certainly eliminate some items off a list.

The second OHIM effort is eSearch Plus Beta which combines the ability to search Community Trademarks and Community Registered Designs.  This really is a Beta version and some of the results are not up to date or complete. Representations were missing last week. If you want to see how it should work, here is their nice demo.

See the Origin of the search result. 

 

To complete the novelties we must mention the Global Brands Database which is a SERIOUSLY misleading title because it means Madrid registrations, International Emblems protected by the Paris Convention and Appellations of Origin, which leaves a lot of the globe left out. Moreover its only fair to say that the Emblems are the only thing with anything like global protection.  This tool has some amazing features including the ability to see results shown on a Map. The illustration on the right is for the origin of everything in the database. You could spend all day with this database discovering the most fascinating facts.

The Life of a Regulator

It's all about organisation

The morning's email brought a copy of the recently published Annual Report 2010 from IPReg - the regulator of most patent and trademark attorneys. It is one of the smaller regulators that come under the aegis of the Legal Services Board. 
These smaller professions have proudly boasted that they hardly ever have any complaints and could self regulate very well before this new regime came into force. Therefore it comes as something of a surprise that the report indicates that there have been far more requests for guidance on conduct by attorneys in relation to the activities of others attorneys than from the public. They say:
"We are concerned that we should not to be used as leverage in what may be, essentially, a commercial dispute e.g. over “ownership” of client following.
Whatever the source of the complaint, however, we are obliged to follow the same processes and this is a cost to the profession as a whole."

In short, if you want to keep the fees down, don't come to IPReg to resolve your restrictive covenant problems. Frankly, it is unprofessional for a partnership not to be able to manage its business discreetly when it is necessary for staff and partners to be reduced. Yes the recession is really hitting the IT profession now as decisions to put off maintaining intellectual property can no longer be delayed by our clients. As the EPO office actions become more contentious and the Appeal Board decisions later or arbitrary, it's harder to justify the investment.  Its better for the country if our clients stay in business even if we don't.

Alternative Business Structures (ABS)

The Report also indicates that one of the issues facing IPReg this year is whether it should be an ABS regulator. Personally, I was surprised that the Law Society and the Solicitors Regulation Authority had so much difficulty in deciding that they would regulate ABS. Neil Rose covers the decision very well in his Guardian article. Surely it is now increasingly clear that lawyers are good at practising law but bad at running businesses and that the law like every other business should be professionally managed. In short, it seems to me an ABS is the only legal business a consumer or a business should want to enter into a relationship with. Of course, dealing with a SOLO practitioner or a barrister is the exception because you are buying a personal service. Personally, I hope that IPReg will take the plunge and become an ABS regulator. Otherwise I foresee Patent and Trademark attorneys once more joining the great unregulated and the British Standard won't really help.

Don't be made a Fool of by the European Patent Office Rule Revisions

1st April is the day that the EPO introduces its rule changes to "raise the bar". The EPO website highlights the changes here. Loads of publicity has been given to the changes to Rule 36, which prevents you filing voluntary divisionals more than 2 years after the first communication on examination.

My guess is that Patent Agents will be filling the EPO coffers with fees for Further Processing because of the new Rule 70(a) and Rule 161. These require a response to the search opinion. Its not too bad if you are processing a normal European patent application filed directly with the EPO. You must respond to the  search report when requesting examination. If you do not then you can expect a communication that the application is deemed withdrawn and further processing fees will apply as well as the filing of the response.

Life is a bit more complicated when it is a PCT-EP application. If you are going to get a supplementary search then you are OK to wait the usual long period where nothing is required of the applicant however meritless the apllication. However if the EPO did the search, then your Rule 161(1) notice stops being a letter you can ignore, but one that needs a response within a short period. Entering the national phase of a PCT application is already wildly expensive and a heavy financial risk to solo attorneys. Now it means a big risk on your own time working on the response as well. My low esimate proved too much for a lay client the other day and it transpires he is doing the work unaided.

A little client management is now going to be needed to explain this early obligation. The EPO hope that agents will be helping them reduce the backlog of doomed applications before they arrive. Its not going to be that easy especially if it raises the number of unrepresented applicants. I advised a different corporate client last week that it was not worth entering the national phase as they could not tell me why they thought the search opinion had missed the point of the invention. All that happens is that another attorney will do it and I earned no fees for my sound advice. Being solo I have no-one to whom to justify that loss of business but in larger firms such good advice may be less welcome.

If you are in Glasgow you can attend the CIPA Seminar on 16 April to make sure you are up to speed with all of the new rules.

Patent Highway

Isla Furlong, patent attorney at Venner Shipley has been doing some blogging on the CambridgeIP site. I wanted to comment on her piece on the Patent Prosecution Highway which the EPO call the Utilisation Pilot Project.

The whole idea is premised on the assumption that at least some patent applicants don't like the protracted grant procedure. Certainly first-time applicants are usually appalled at the timescales, but they rapidly come to see that delay can have many advantages, not least on the funding requirement.

So much so that I suspect that these highways have little traffic. I took a ride on the EPO/highway recently and was very impressed by the thoroughness of the new search I received. This was a case already accepted in the UK but the EPO were not simply going to use the UK work product. In discussions with some other attorneys, there was some concern that they would lose out on the further search.

When I receive a search opinion. I find it hard to resist diving in to see whether the examiner has a good position or not. I am blessed with clients of similar enthusiasm, which is a bit of a problem in this highway as you can't talk back without stopping to pay at the examination fee toll booth.

I would like to see the Patent Offices offering some incentives to applicants that want to co-operate with them and allowing the examination to continue while the subject is fresh in the mind of both applicant, agent and examiner seems like an efficient thing to do.

I wonder whether patent applicants in general do want speed. Hope is often more attractive and more marketable.

Those impeded by alleged patent risks may, on the other hand, very much prefer their competitor's more ambitious hopes to be dashed quickly so it would be good to have the option of putting them on the highway.