The speediness of examination proceedings before the European Patent Office (EPO) is often a crucial element for obtaining a valuable and enforceable IP right portfolio.

An EPO Board of Appeal (BoA) has now issued an important decision regarding the duration of examination by the EPO.

In this case, the European patent application had been filed in 1996. The first Examination Report had been issued in 2004, i.e. five years after the issuance of the Search Report. The second Examination Report had been issued in 2005, and the third in 2006. In 2010, the applicant had been summoned to attend oral proceedings before the Examining Division, also scheduled for 2010. During the oral proceedings, the Examining Division had decided to refuse the application and had issued a corresponding written decision in 2010.

Thereafter, the applicant filed an appeal against the EPO Examining Division’s decision to refuse the application. On December 21, 2015, the EPO BoA issued its decision, setting aside the refusal decision and returning the case to the Examining Division for further handling, after having held that the applicant had indeed submitted a claim set covering inventive subject-matter.

The BoA decision is noteworthy because, with respect to the duration of the examination proceedings, it noted the following:

“In the opinion of the Board, the delays cannot be justified by the particular circumstances of the case. The duration of the first-instance proceedings of more than twelve years after entry into the European phase must be regarded as excessive. According to decision T 315/03, even a shorter delay of ten years in a much more complex opposition case amounted to a procedural violation …. The Board in that case found that such a delay was not “within a reasonable time” and therefore infringed Article 6(1) of the European Convention on Human Rights (ECHR). ”

Furthermore, the BoA reviewed the contents of the refusal decision issued by the EPO Examining Division and found it to insufficient. According to the BoA, the refusal decision does not address the individual claim features; nor does it clearly identify the closest prior art or the differences between the invention and the prior art. Furthermore, the decision does not explain why the auxiliary claim request submitted by the applicant was not admitted, and the BoA called this reasoning “confusing and insufficient”. The BoA considered that this violates the provision of the European Patent Convention (EPC) which requires that decisions of the EPO open to appeal should be reasoned, also citing the established BoA case law according to which EPO decisions should contain, in logical sequence, those arguments which justify its tenor.

As a result of such findings, the BoA not only decided to examine the application on the merits but also decided to reimburse the appeal fee paid by the applicant. In fact, the BoA applied an EPC principle which provides that the appeal fee must be reimbursed in full “where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation“. Indeed, the BoA found that in this case the excessive duration of the examination proceedings and the insufficient reasoning in the EPO refusal decision both amounted to a substantial procedural violation justifying the reimbursement of the appeal fee.

This decision is very important because it comes from a highly authoritative source. It may be expected that, even though the circumstances of this case were surely exceptional, the EPO will take immediate and appropriate measures to avoid similar delays and insufficiencies in the future, thereby ensuring that it remains a user-friendly institution.

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