IP Federation states concerns relating to over patent examination deferrals

The IP Federation is a UK-based trade association that works to ensure that all industrial and commercial companies in use / affected by intellectual property rights, can be secured and protected without ‘undue complexity and expense’[1].  It has recently urged the European Patent Office (‘EPO’) to commission a “comprehensive and impartial study” considering concerns expressed over a potential new system dealing with patent deferral.

In December 2018, the EPO launched a consultation on the potential of introducing a system which would allow for the examination of some European patents to be postponed. On Friday 11 January 2019, the consultation closed.

David England (secretary of the IP Federation) stated in a letter to the EPO president António Campinos dated 11 January 2019, that a deferral would allow greater flexibility in relation to the time it takes for a European patent application to be processed.

In the letter Mr England states that a study should observe the effects of a postponed examination on the EPO, the applicants and other third parties. In addition, he gave examples of countries which allow for deferred examination of patent applications e.g. Japan, China and Korea.

Mr England described the potential proposals by the EPO to introduce a new option for deferring patent applications as controversial. Furthermore, he stated that it is widely appreciated that procedural deferral can benefit applicants in various ways. This is because a deferral is beneficial if the “commercial value of an invention is uncertain”[2] to “mitigate the approval processes required in some regulated industrial sectors”[3].

Mr England also commented on the speed of examination procedures is increasing, there may still be a desire to moderate the speed to a range of broader sectors. This moderation is achievable by deferral. Nevertheless, he also highlighted that there may be detrimental effects of delaying the process of patents that can outweigh the benefits. He mentions that deferrals may have the effect of prolonging the uncertainty on third parties. As a result, there needs to be a balance struck with the appropriate safeguards in place. England suggested the example of third parties being allowed to activate the examination of a patent application where it had been deferred.

The IP Federation has stated that the EPO’s study should cover the likely uptake and duration of deferrals. Additionally, it should consider the different types of safeguards and how they will be implemented.

[1] https://www.ipfederation.com/our-work/

[2] https://www.ipfederation.com/our-work/

[3] https://www.ipfederation.com/our-work/

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