EPO: EPO Appeal Board condemns examination delay

March 29, 2016

While the recently released EPO performance statistics for 2015 show an increase in the number of grants compared to the previous year and a decrease of backlog of searches by two thirds, delay in examination of pending cases is still of concern to some. A recent appeal decision rendered in the field of computer implemented inventions reveals that excessive examination delays do not amuse the Boards of Appeal. More specifically, in decision T 823/11 rendered in December 2015, Board 3.5.07 has ruled that duration of examination proceedings of more than 12 years must be regarded as excessive and amounts to a substantial procedural violation.

In the case appealed, the examining division had refused an application relating to the configuration of a clinical device in a patient care management system. The application entered the European phase in December 1997, and the firstinstance decision refusing the application was dispatched in September 2010. During the examination proceedings, the applicant sent two letters in 2004 and 2006, respectively, reminding the examining division of the case. According to the appeal decision, the applicant dealt adequately with the examining division's objections in the examination phase. An amended set of claims filed by the applicant during oral proceedings before the examining division was, however, not admitted into the proceedings.

In decision T 823/11, the Board of Appeal noted in particular the delay of more than five years between the issuance of the search report and the examining division's first communication. Referring to a judgment of the European Court of Human Rights dealing with delay of a national Norwegian patent application, the EPO appeal board held that the delay of the case, from which the appeal lies, was unacceptable having regard to the circumstances. The Board of Appeal further criticised the level of reasoning in the examining division's communications. The Board eventually admitted the applicant's auxiliary request, the subjectmatter of which was held patentable, and reimbursement of the appeal fee was ordered.