For years, the patent community has debated the level of quality of the patents granted by the EPO. Although the office is making continual efforts to improve, its new Patent Quality Charter has been met with resistance – according to the industry, the EPO's renewed measures do not go far enough. Now the EPO must contend with a new in-house-led initiative.
12 October 2022 by Konstanze Richter
The EPO Patent Quality Charter came into force on 1 October, replacing the previous quality policy which the EPO published in 2013. It is an important component of the Strategic Plan 2023, which was launched by the EPO in 2018 with a view to achieving its aims before the end of the five-year period.
However, according to industry, these proposals do not go far enough. While, within the framework of this strategy, a working group of the Standing Advisory Committee (SACEPO) has drawn up concrete proposals – including optimisation of workflows, regular monitoring of processes, further training of employees, and exchange with stakeholders – in-house users remain concerned with the quality of the granted patents.
Chief IP counsel of Siemens, Beat Weibel, told JUVE Patent, “All the measures are too focused on the improvement of internal processes and their effectiveness, including speed and timeliness. This does not necessarily enhance the actual quality of the granted patents.”
For this reason, Weibel has launched an industry initiative in response to what is seen as an onging quality issue at the patent office. Industry Patent Quality Charter signatories jointly commit to a set of quality standards independent to the measures set out by the EPO.
Weibel says, “Both the users and the public need good quality patents. And for them this means solid, reliable and enforcable patents that create a value to the company.”
The charter, signed by multiple in-house IP chiefs on behalf of ten major companies, promises to commit to focusing on filing patents that provide value to their respective companies and customers, while producing clearly-written patents with well-defined scopes. It also aims to avoid quantity over quality.
So far, Bayer, Ericsson, HP, Nokia, P&G, Qualcomm, Roche, Siemens, Syngenta and Vodafone have signed the charter. It is likely more will follow.
On social media, observers have met the initiative with great approval. “Good fences make good neighbours,” writes IP professional Ricardo Cali on LinkedIn. By this, he means that property rights work best with well-defined scope and content.
Yann Dietrich is group head of IP at French IT company Atos. He says on LinkedIn, “Social acceptance of patenting is directly linked with patent quality and so this is very essential.” Siegfried Russwurm, president and chairman of the Federation of German Industry (BDI) also adds, “Solid IP rights are an important pillar for innovation, thus quality of patents is key both for the acceptance in society as well as defence against misuse of formalities.”
The debate is nothing new, with the quality of patents a hotly-contested issue. Over the years, industry professionals have voiced a number of complaints.
For example, in 2018, German law firms Grünecker, Hoffmann Eitle, Maiwald, Cohausz & Florack and Vossius & Partner addressed an open letter to the then-EPO president Benoît Battistelli and his designated successor, António Campinos, expressing concern that incentive systems for the examination of patent applications and the internal directives seem to reward quick proceedings. The firms argued this leads to greater productivity at the expense of patent quality.
Since then, the EPO has tirelessly pushed its Strategic Plan 2023, which places an emphasis on patent quality. This has not been without impact. According to an informal and non-representative assessment conducted by JUVE Patent, some parts of the patent community believe the strategy is at least partially successful.
Natalie Kirchhofer is a partner at Cohausz & Florack, one of the signatory firms of the open letter in 2018. She says, “We generally rate the quality of the EPO as high, particularly in comparison with other patent offices.
We very much welcome the EPO’s focus on quality and consider it to be of the utmost importance for the general acceptance and workings of a functioning patent system, that not only efficiency, but also quality remains a main goal and key performance indicator for the EPO.”
Rike Dekker, partner at Kilburn & Strode agrees with Kirchhofer. “We still consider the EPO as one of the best global patent offices,” she says. Others, like Jane Evenson, patent attorney and partner at CMS Cameron McKenna in London, states that her experiences with the EPO have overall been positive. She says, “I find that in the chemistry and life sciences areas, the analysis and opinions of the EPO examining divisions and opposition divisions are generally of high quality.”
Cyra Nargolwalla, partner at French patent attorney firm Plasseraud adds, “The EPO is trying to increase efficiency of grant rates – a permanent request from the user community – without impacting quality. The Quality Control Group at the EPO has consistently responded in a highly satisfactory manner to us whenever we have contacted them.”
In response to the EPO’s critics, Nargolwalla says, “In an office which has over 4,500 examiners, it is inevitable that some glitches will occur from time to time. These are immediately treated by the Quality Control Group.”
Nevertheless, its critics remain adamant that the increased workload following the demand for more efficiency is negatively impacting the quality of granted patents. Referring to the Strategic Plan 2023, one German patent attorney told JUVE Patent that in his experience, regarding quality, he has seen no measurable changes since 2019.
Points of criticism include the inconsistency of decisions between examiners in the granting process, as well as from one opposition division to the other. Requests for further improvement also include more time for the opposition divisions to prepare preliminary opinions or oral hearings in complex opposition proceedings.
Another criticism voiced by many patent experts is the increasing formalisation of procedures.
Furthermore, many patent attorneys and in-house counsel continue to view the EPO’s adherence to its effectiveness strategy as the main problem. In talks with JUVE Patent, one IP expert says, “The EPO acts as if it were a profit-oriented corporation.” But it is a patent examination and granting authority that serves the industry, with its users entirely financing the operation. Any approach which does not put user feedback at the heart of its output could have a detrimental impact on future support for the organisation.
However, the EPO refutes a direct correlation between increased efficiency and the increased burden on examiners. An EPO spokesperson explained to JUVE Patent that the EPO is not achieving increases in effectiveness by doing the work “in the same way as before, but faster.”
They say, “Instead, the EPO is making improvements in quality and effectiveness by making more advanced tools available to our examiners to help them find the relevant prior art more easily and prepare their searches and communications more efficiently.”
The EPO also points to its use of new tools to facilitate an improvement in quality, such as new automatic plausibility checks to flag potential issues. “We are using advances in technology to enable more effective work, while maintaining our attention on a thorough search and examination.”
But the EPO is making a point of including stakeholders in the decision-making process. According to the spokesperson, the EPO has a “strong commitment to continuously improving our products and services in close consultation with our users” by implementing various complaints and feedback channels, such as user satisfaction surveys.
Its 2021 edition, based on around 6,000 interviews about the EPO’s search, examination and opposition services, found a satisfaction rate with the office’s “final actions and publications” at 88%. It recently launched the next end-to-end user satisfaction survey, which runs until mid-2023.
Furthermore, in April 2022, the EPO also launched its ‘Ombuds Office’. According to the website, it provides “a space to talk informally and confidentially about difficulties such as stalled processes” with the offer of helping to resolve such issues. The EPO says, “In addition, regular wide-ranging meetings with our users such as SACEPO ensure that we are in touch with our users. We continually take on board any concerns and feedback they may have.”
The EPO drew up the new Quality Charter, for instance, in close cooperation with stakeholders. An EPO spokesperson told JUVE Patent, “Following consultation with our users through the SACEPO Working Party on Quality, a list of user expectations on quality was drawn up.
These factors, together with a wide variety of input from staff in various roles across the EPO, are the basis for early drafts of the Quality Charter, which has been refined through the consultation process.”
In any case, the EPO’s critics are not complaining about a lack of exchange in information between the stakeholders. Rather, the problem does not seem to be a lack of opportunity to voice concerns, but whether the EPO is really listening.
As Beat Weibel says, “There is plenty of communication going on with the EPO. But despite many working groups and round table discussions, we as users of the EPO have the feeling that we are not being heard, our concerns not being dealt with. As a result, more and more colleagues, who take part in these working groups, don’t see the point in contributing.” (Co-author: Joshua Silverwood)