A lot of people have already seen the document below and someone decided to leak it to us. We have decided that, as IP Kat comments already speak about it, it’s worth presenting in full:
Getting there faster, a case of unclarity?
An Efficiency Presentation has been given in a number of administrative directorates in Berlin during the recent weeks. It was based on a power point presentation titled “Getting there faster” and was further complemented by individual remarks by administrative as well as examining staff.
It has come to the Berlin staff committee’s attention that some parts of this presentation appear to have been misunderstood by many technically qualified examiners in Berlin who felt that those parts of the presentations in their respective directorate lead to undue interferences, be it from interested circles outside or inside the Office, with the responsibilities directly vested by the Contracting States in Examining Divisions (Articles 15 and 18 EPC) to which these examiners are administratively assigned. The title as well as some remark was understood as a prompt to ignore some of the Examining Divisions’ responsibilities in order to more quickly grant patents on European patent applications. Apparently, the following messages were perceived:
(a) the requirements under Article 84 EPC, especially clarity, were often less essential for the quality of the granted patent
(b) the description and figures should be employed, together with the claims, to determine the subject-matter for which protection is sought with the procedure up to grant
(c) clarity of the claims was no ground for opposition, and lack of clarity as such should thus not be the basis to refuse a European patent application
(d) the procedure up to grant should be a co-operative and an interactive process involving essentially the entrusted examiner and the applicants’ representatives as partners, preferably via telephone conversations instead of oral proceedings
(e) a benefit of the doubt on the part of the entrusted examiner should lead to a proposal to grant
(f) the other members of the divisions should follow the entrusted examiners’ proposals to grant
(g) the proposal to grant should promptly be signed by the other members when their own merely administrative checks have been done, i.e. without their own assessments of the requirements e.g. for patentability.
Examining staff thus defied the Berlin staff committee to take position on these issues, and the Berlin staff committee is prepared to dispel any doubts:
The Berlin staff committee finds the title “Getting there faster” as unclear as the title of the Office’s “Early Certainty” presentation in the Patent Law Committee (CA/PL 7/16), because both the term “there” and the term “Certainty” are not unambiguously defined in the presentations. For pending examination procedures (Articles 94 and 97 EPC), the applicants as well as third parties have the right to get in due time a legitimate decision of the Examining Division, be it grant or refusal pursuant to Article 97(1) respectively Article 97(2) EPC (see e.g. point 1.2 of T1131/12, or point 7 of T1515/07). It would thus be illegitimate to understand these terms in the manner that “there” or “Certainty” merely meant grant, even if some parts of the presentations rather apply only to grant. Any bias in this direction does not come as a surprise to the Berlin staff committee, however, since more and more patents are granted directly without any objections, or directly after the applicants answer to any objections, and the percentage of refusals has thus become marginal in most of the technical domains, compared to direct grants.
A grant cannot legitimately be decided by a responsible Examining Division before the patent application and the invention meet all the requirements of the EPC (Article 97(1) EPC), and knowingly skipping any requirement thus amounts to not discharging the responsibilities vested in the Examining Division (e.g. the Catchword and points 2.5 to 2.8 of T0075/09, or point 3 of T1849/12). For a legitimate refusal, on the other hand, a failure of the applicant to comply with a single requirement is sufficient (e.g. Headnote of T0005/81) unless the EPC provides for a different legal consequence (Article 97(2) EPC), i.e. inter alia unless procedural violations are to be overcome (e.g. point 2 of T2411/10), e.g. meeting the principles of party disposition or of the right to be heard (Article 113 EPC, e.g. point 8 of T1969/07). In effect, examination procedures up to grant of a patent in the mean drastically differ from examination procedures up to refusal.
Clearly, not discharging the responsibilities of the Examining Division is often much more “efficient” and “timely” than trying to get from the applicant’s representative a grantable request which meets all the requirements, and this without any procedural violation. And not spending any time and effort for a point, or for the paid search and examination fees, would drastically reduce the beloved “unit costs” and the Office’s liabilities (e.g. point 7 of T1515/07). It was therefore very fortunate that Examining Divisions at least were legitimately able to successfully propose minor amendments to the text in a proposal for grant (in the “Druckexemplar”) in order to overcome minor objections and thereby discharge the responsibilities of the Examining Divisions in a somewhat more efficient manner (e.g. point 14 of T0121/06).
Whereas the staff representation thus certainly supports all legitimate measures to keep and improve the timeliness of the EPO’s services, this end cannot justify illegitimate decisions, i.e. illegitimate grants or refusals, since a lack of discharge of the Examining Divisions’ responsibilities cannot ensure the functioning of the Office in the sense of Article 10 EPC. The Berlin staff representation should thus take position with regard to the misunderstanding as follows:
(a) Article 84 EPC comprises an enumeration of requirements which should be met by the text of the claims proposed for a grant, since these claims define the subject matter for which protection is sought. The wording of Article 84 EPC (“shall”) does not involve any discretionary powers of the Examining Divisions to skip any identified objections (e.g. the Catchword and points 2.5 to 2.8 of T0075/09). Valid objections thus simply need to be overcome by amendments, as submitted or agreed by the applicants, in order to meet the principle of party disposition enshrined in Article 113(2) EPC (e.g. point 14 of T0121/06). A level of “sufficient quality” as promoted for a grant is thus not commensurate with the EPC, since merely ignoring identified objections, thereby not even informing the applicants about them at all, simply amounts to a violation of the principle of party disposition, and it is harmful for third parties, the public as well as the patent system as a whole when examining divisions fail to fully discharge their responsibilities.
(b) Article 84 and Article 97 EPC make no difference between major and minor clarity objections, and they do not define essential or inessential clarity objections which must or must not be communicated to the applicants and considered for the decision to grant or to refuse. The EPC rather is built on the assumption of due administration which does not encompass arbitrary decisions, or decisions tainted by partiality of the (members of) Examining Divisions, and deviations from due administration thus amount to a violation of the EPC.
(c) The claims shall define the subject-matter for which protection is sought, not the descriptions nor the figures. They additionally (“and”) shall support the clear claims. Article 69 EPC, together with the Protocol on its Interpretation, is not applicable to the assessment of the text of the claims proposed for a grant (e.g. point 3.3 T2613/11) and inappropriately assessing the clarity of the claims by invoking the description for the claims’ interpretation, instead impinges upon third parties’ rights to oppose illegitimately granted patents, since lack of clarity of the claims is no ground for opposition (Article 100 EPC, “only”) nor can it be employed for revocation in national proceedings (Article 138(1) EPC, “only”). Other grounds for opposition or revocation are indeed not always suitable to make good for any negligence on the part of the Examining Division in glossing over an instance of lack of clarity, and the public is thus merely left with ill-defined claims under these circumstances. If an applicant does not submit or at least agree to amendments overcoming the identified lack of clarity, the responsible Examining Division cannot legitimately grant a patent.
(d) The procedure up to grant is essentially defined in Part IV of the EPC as complemented by the common provisions governing procedure (Part VII EPC). As regards examination by the Examining Divisions, the procedure before the examining division shows all essential elements of a quasi-judicial administrative procedure leading to collective decision making within the Examining Divisions. It is furthermore based on the legal principles of party disposition, of parties’ right to be heard, and of reasoned administrative decisions. The Examining Divisions have been vested by the Contracting States with discretionary powers pursuant to Articles 94(3) and 116(1) EPC in certain cases or situations only, namely to object in writing “as often as necessary” and hold oral proceedings when “expedient”. These discretionary powers should be duly applied by the responsible Examining Divisions when deciding on the course of the procedure. Informal contacts between certain representatives and individual officers, whether members of the responsible Examining Division or not, are not foreseen at all in the EPC, can easily raise issues of suspicion of partiality or lack of independence in the sense of Article 14 ServReg, and suspicion of breach of the principle of collective decision making (e.g. point 2 of T1251/08). The suggested co-operative and interactive processes merely involving the entrusted examiner instead of the responsible Examining Division thus merely enhance the risk of illegitimate grants but hinder and postpone legitimate refusal decisions (e.g. point 3 of T1101/05, or points 3 and 4). It is observed in passing that the Office’s administration has tried more than once to convince the Contracting States of examination procedures involving merely one examiner (most recently in connection with automatic communications and reimbursement of examination fees, see inter alias points 84 and 85 of the minutes of the 42nd meeting of the PLC, CA/PL 13/12). The attempts were refused by the representatives of the Contracting States.
(e) In the proceedings before them, the Examining Divisions shall examine the facts of their own motion, cf. Article 114(1) EPC, and the members shall thereby come collectively to the Examining Divisions’ decision pursuant to Article 97 EPC. Pursuant to Article 97(1) EPC, the Examining Division thus shall be “of the opinion” that all requirements are met before a legitimate grant can collectively be decided. The Examining Divisions’ collective opinion is thus crucial in accordance with the principle of free evaluation of evidence and the measure of proof according to the balance of probabilities. The Contracting States did not vest in the Examining Divisions any discretionary power to disregard any deficiency or to apply a benefit of the doubt (e.g. point 3 of T0622/02, page 11 of T0869/06 or T0075/09, T1849/12), while the legal concepts of the distribution of the burden of proof and the benefit of the doubt rather apply in inter partes procedures.
(f) The other members of the responsible Examining Divisions thus have a duty to contribute to the collective decision making within the Examining Divisions, if necessary by taking votes, and they cannot legitimately follow the entrusted examiners’ proposals to grant when they have identified any requirement that has not been met, and thus come to a different opinion. Rather, it is their duty to determine the Examining Divisions’ collective opinions and correspondingly follow the legitimate procedure.
(g) The Examining Divisions’ appointed members shall collectively decide for the Examining Divisions (Article 97 EPC), and the authentications of all appointed members thus confirm the approval of the collective decisions (Rule 113 EPC). Merely signing without approving the collective decision thus amounts to a procedural violation since the collective decision has not been taken at all if the other members have not duly made an assessment of their own (e.g. points 1 and 2 of T1538/05 or point 1 of T2076/11). Each member is thus individually responsible that her/his own authentication legitimately approves the Examining Divisions’ collective views. Any Guidelines, PPNs, Internal Instructions and other individual instructions can only be understood in accordance with the Contracting States contractual will as enshrined in the EPC. The Berlin staff committee is thus convinced that legitimate timeliness requires fewer administrative interferences with the responsible Examining Divisions, balanced and unbiased examination procedures which are appropriate for both final results, i.e. refusal as well as grant, fewer informal procedural steps which furthermore should be left at the discretion of the responsible examining divisions, and more collective decision making skills which are essential for the legitimate functioning of the EPO.
The Local Staff Committee Berlin, 23 July 2016