One has to wonder how many more letters like this are being suppressed (never seen by the outside world) and how widespread these problems really are
Summary: Example of abysmal service at the EPO, where high staff turnover and unreasonable pressure from above may be leading to communication issues that harm stakeholders the most
THE FOLLOWING IS AN anonymised letter to senior EPO staff, bemoaning what was a horrible (and possibly not exceptional) service from the EPO, which caused enormous financial loss and the loss of many years (stuck in a limbo).
Director, Directorate 2.5.2
Quality Support (DQS)
Principal Directorate Quality Management I DG2
European Patent Office
Application No: █ █ █ █ █
Dear Mr. ████████████████████,
Re Letter of ██ & ██ ███
Under rule 71 (2): -
‘Any communication under Article 94, paragraph 3, shall contain a reasoned statement covering, where appropriate, all the grounds against the grant of the European patent.’
At the first oral hearing the EPO stated that Claim 1 as set out in document ██ met the EPC criteria for grant. It was recognised that dependent claims along with possible additional IP that could be added. The directions of the chairman were that these small outstanding matters were to be addressed by email. This resulted in submission of ██████. This provided 4 areas for discussion and detailed mark-up of the changes. There was no separate response to this communication. The response that was given was added by way of an addendum to the intention to grant Rule 71 (3) of ████.
In contravention of Rule 71 (2) the response did not include a reasoned response on all grounds. There was no way of telling which mark-up was acceptable and which wasn’t. Had a full response been provided I would have known those part that may have been acceptable or not could have been addressed or incorporated into any further revision. In fact this failure to provide a full response is confirmed by the fact that no sooner than the initial objections were met than further grounds of objection by the EPO were added (see EPO’s later correspondence). The last such revision of objection being set out in the examining divisions letter of ███. Not only have I been subject to a grossly incomplete first response but further objections have been drip fed over months greatly adding to delay. The last of these objections I haven’t even been given an opportunity to contest because the examining division has refused the application in its entirety; not withstanding that the EPO has stated that a patent could be granted. It would appear that if you challenge the EPO you simply lose the IP that is rightly yours. Why was Rule 71 (2) not followed and why am I not given the opportunity to respond and possibly correct objections before my application is refused?
In your letter you state: “A grant can only be given on the basis of text approved by the applicant.” This would suggest that Rule 71 (3) (the intention to grant) is only instigated when agreement has been reached. I am left confused by the approach of the EPO on this front. The first letter of intent to grant was made under Rule 71 (3) on ███. This was later withdrawn. The exact same approach was then adopted on ████. In your letter of ███ you state that the text was not approved by me. The text in both instances was the same. As the text was not approved I do not understand why the EPO moved to issuing a letter of intention to grant. What had changed between the withdrawal of the intention to grant of ██ and later resubmission of the same words in ██? As detailed in the previous paragraph it is clear from the changing grounds of the EPO that discussions with the EPO were ongoing as at ███. Why are applications refused when discussions are ongoing? Does the applicant have no right of reply? Why was the intention to grant issued when clearly agreement had not been reached? The evidence suggests that this approach has simply been used as a procedural move to refuse the application and curtail criticism.
From paragraph 7 of your letter of ███ it would appear that under Rule 71 (3) applicants are allowed to contest wording but if they do so they run the risk of a complete refusal of your application! The right to contest looks more like Russian Roulette. It would appear that the applicant is being restricted from contesting his case. At the point applicants are offered the prospect of contesting wording, the consequences of doing so should be set out in BOLD print. This they are not. In fact the insight in your letter is the first I have heard of this position and it came precisely at the same moment that this action was taken. You have previously provided a full set of references to substantiate the legal basis for the actions of the EPO but alas there are none here. Please could you supply me with the legal basis for this and references as you have done previously. I think it is critical that all applicants should understand when they are genuinely allowed to contest points and clearly when they are not.
In your letter of ████ paragraph ███ you have still failed to address the contradiction that the EPO is claiming inventive step and no inventive step on identical wording. You claim that my suggestion that the division contradicts itself may simply be due to a misinterpretation of the communication of the division (para 11). Please could you tell me what this misinterpretation is because I haven’t clue and you haven’t stated what it is? In para ██ you state that ███ has been deemed inventive with regard to the document ██. This issue concerning contradiction can readily be resolved if you or your examining division simply tell me what this inventive step is. Currently the examiner is complaining about the metal pipes of the heat exchanged as not being inventive, yet the wording concerning the metal pipes is the same in all documents ██, ██ and ██. You have asserted that ██ shows inventive step over ███, please can you tell me what it is? I bet this cannot answered honestly without agreeing with my assertion about contradiction is correct. Why is the inventive step not documented in the minutes of the oral hearings?
In para ██ of your letter ███ you claim that; “the EPO has taken all possible steps to support your constituent (me)”. I ask you then: -
1. Why did the EPO not suggest I seek, or they themselves seek, an adjournment to the oral proceedings when they knew I could not attend due to being on my honeymoon?
2. Why did the EPO not tell me that I may lose my patent all together if I contested the EPO’s wording or lack of dependent claims?
3. Why has the EPO steadfastly refused to address the issue that the EPO contradicts itself?
4. Is the median turn around for applications greater than 6.5 years?
5. Is it normal to simply refuse an application on which the EPO asserts a patent can be granted without first consulting the applicant?
6. Why has the examining division not followed the order of priority for reviewing claims as set out in correspondence? This would have prevented the refusal letter from being submitted.
7. How are my interests served by being forced into an appeals process that will costs a minimum of 1,860 euros for the appeal, probable a further circa 3,500 euros on renewal fees and a further wait of 3 years when it is accepted by invention is patentable!?
In paras ███, ███ and ███ you suggest that I should employ the services of a competent professional. Setting aside the inference that I am not competent and setting aside all possible steps of support that the EPO has given me I have to ask what happens when the lack of competence lies with the EPO?
In the letter of refusal of ███ the examiners claim there is no ███ document on file. Is there little wonder then that I, and probably many others too, lose all faith in the EPO as an organisation when one realises that not only does the document exist on file but it has historically been replied to. This statement that the document does not exist on file has been signed by three of your examiners! What legal options for redress are there available to applicants who find their applications so evidently mistreated? What actions will you be taking to ensure this does not happen again?
In accordance with the spirit of Rule 71 (2) please could I have a full response to all points raised in this letter. May I suggest a response by email will significantly save time.