EPO Decisions – The Not So Holy Grail?

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Issues related to patent quality are pressing and worrying, even a standard measure of monitoring patent quality has been difficult. Of late, even in the EU, there has been an increased focus on the quality of patents in response to the rise of business models centered around patent litigation. This heightened interest in patent quality has gained significant attention from different stakeholders due to the criticism that the European Patent Office (EPO) management has been facing for the declining quality of EPO patents. While there are many allegations about the depleting patent quality of EPO patents, the EPO has steadfastly maintained that it is considered the gold standard for patent quality.

Following negotiations with the Standing Advisory Committee to the EPO (SACEPO), the EPO published its own Patent Quality Charter in September, which was criticized by members of the Industry Patent Quality Charter (IPQC), a group which includes some major international businesses, patent offices, and firms. In its roundtable conference held in December last year, the IPQC had collectively raised questions concerning the functioning of the EPO, along with claims stating that priority was given to how quickly the patents were granted and on internal efficiency but at the cost of thorough search and examination. One of the other main concerns raised by IPQC members is that, currently, the patent examination seems to be more biased in the favour of granting patents regardless of the merit of a particular invention. They also seem to be unsettled that there is not much of an impetus for examiners to conduct in-depth searches and examinations. It is also alleged that the working environment for examiners at the EPO does not seem to be that conducive, primarily because of time constraints that preclude thorough search and examination. This lack of adequate time allocated for these crucial processes could result in hurried assessments and potentially lead to oversights. (This may sound familiar to some back home!) 

The members have also urged the EPO to provide more transparency in the search criteria and strategy deployed by them, in addition to providing in-depth analyses of appeal decisions to assess the potential inconsistencies in the process. Gabriele Mohsler, the VP of Patent Development at Ericsson, further explains that the company is supporting the Industry Patent Quality Charter (IPQC) to advocate for high-quality patents, aligning with their selective approach to filing patents and their commitment to thorough examination and search processes. They believe that the EPO has the means and competence to carry out these tasks and that a focus on quality will result in higher-quality granted patents in their portfolio.

Come to think of it, one may wonder why easy patent grants are being opposed by big businesses. I mean, isn’t this something that is entirely in their favour? Not exactly. As explained here, these demands are motivated by a broader overview to have patents with reliable validity, the absence of which hinders the assertion of the right later, for example, in seeking an injunction in an infringement suit.

These concerns were raised in a meeting with the IPQC, and Kluwer Patent Blog subsequently highlighted the critical letter sent by Beat Weibel, the chief IP counsel of Siemens, to the EPO.

Beat Weibel has outlined some of the issues raised in his letter in his LinkedIn post –

“- There is a gap between increased investments in careful patent drafting by industry and decreasing time for search and examination at the European Patent Office.

– The patent system needs complete searches and substantive examination for functioning well. German Courts are decreasingly relying on the grant quality of the EPO.

– Complete searches and examination leading to reliable patents are crucial for industry.

– In certain fields, the granting rate is highly depending on the experience of the examiners and three pair of eye quality control isn´t working properly anymore.

– Nearly 90% of all Board of Appeal of the EPO decisions either completely or partly revoke the patent in question. Most of the decisions being based on prior art that could and should have been found in first instance!

– Incentives and working conditions of the examiners are favoring granting a patent over rejecting it because a rejection needs more time and effort and eventually an oral hearing.”

Many applicants prefer the EPO because, aside from the market, the issuance of an EPO patent carries weight in other jurisdictions as well, as we’ve frequently seen in India. Several cases have shed light on the Indian courts’ approach to considering EPO patent grants. In Societe Des Produits Nestle Sa vs The Controller Of Patents and Design and Anr., the Delhi High Court noted that the patent granted by the EPO had a persuasive effect in favour of the grant of the Indian Patent Application since there was a corresponding patent granted by the EPO with the same prior arts. In Agfa NV & Anr. vs The Assistant Controller Of Patents And Designs And Anr., the Delhi High Court took into consideration that the corresponding patent application has been granted in various jurisdictions, including the EU, and proceeded with the grant of the patent. In Avery Dennison Corporation v. Controller of Patents and Designs, the Court has looked into the approaches used to determine the inventive step and has referred to the Guidelines for Examination published by the EPO. While the equivalent EPO patent granted in Alfred Von Schukmann vs The Controller General Of Patents, Designs, Trademarks And Ors., was not cited by the Court, the appellant referred to the same, which could perhaps imply that the counsel thought it may be a persuasive argument. The Court in Microsoft Technology Licensing v. Assistant Controller of Patents and Designs dealt with the patentability of specific types of inventions, CRI in particular, and referred to the EPO’s guidelines for the examination of inventions. Things are similar in the case of SEPs too. For instance, in Intex v. Ericsson, Ericsson had argued that the claims of their patents in the US and the EU were submitted in response to the Examination Report, after which no further objections were raised by the IPO and the patent was granted to them. Additionally, there are also ways to have patent applications from other jurisdictions fast-tracked in India, with the Patent Prosecution Highway (PPH) initiative being the most well-known. Based on this, if, for instance, the examination results of a patent application filed in the EPO are declared positive, then the Indian Patent Office may rely on the same to process these applications.

Concluding Remarks

Despite facing criticism regarding the quality of its patents, the EPO’s patent grants continue to influence the grant of a corresponding Indian Patent Application. However, considering the discontent of industry bodies with the quality of patents granted by the EPO, it is important that Indian authorities re-examine the deference given to the EPO patent grants.  The situation in the EU is also a good reminder for the IPO to perhaps ponder over whether they are strictly applying Indian law before they dive too much into the question of whether a foreign patent office is applying foreign law correctly, as the basis for granting (or not granting) patents in India. In any case, if India does continue to look to the EU for guidance, hopefully, it will also start discussing patent quality the way it’s being done there too!

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