Sunday, 19 September 2010

When the sweet taste of victory turns to ashes: post-appeal remittal

This tale has just reached PatLit from a reader who practises before the European Patent Office:
"I recently got an Appeal Board Decision entirely in my favour, the Examining Division being slapped down rather brusquely for not having properly considered our detailed submissions or given reasons for their decision.  The appeal fee was refunded (which is rare). I’d be in a good mood you might think. I was -- briefly.
The Examining Division didn’t do a full examination.  Accordingly the Appeal Board wasn’t in a position to pronounce on the case and it got remitted to the first instance. So my client now has two weeks before the 1 October deadline to decide whether to spend about £10,000 to file a divisional as a precaution, and we now wait to see if they do a proper job this time round -- and wait to see what happens for another few years.
The EPO practice of charging applicants for storing a file ever-increasing amounts while it fails to progress prosecution is somewhat inequitable and the need for backdated annuities on divisionals, whereby one is charged what the EPO would have charged to store it had you filed it earlier, is even more so.  In the past, when one filed at the end of the procedure when at least one knew what had happened first time round it wasn’t so bad. But now, having to pay a premium to file simply against the event the EPO doesn’t do what one might expect in examination seems much more painful. All round the world clients faced with the divisional deadline are experiencing this; my case -- where an Appeal slam dunk win was made entirely meaningless by the rule change -- just brings it home harder.
Somehow the balance at the EPO doesn’t feel quite right these days".
PatLit is happy to hear comments from practitioners, and indeed from the EPO itself, on this issue.


Anonymous said...

It sounds as if the patent application is about 8 years old. The invention must be in a much better position for evaluation as to its worth now than at first filing. If it is paying for itself commercially, possibly this insurance (with its very high premium) is worth it. And don't forget, you will long for the annuity charges of the EPO once you begin paying nationally.

Sean said...

There is balance at the EPO?