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The public eye on the European Patent Office

When you want to protect an invention, you file a patent application [1] with a dedicated public body [2]. The European Patent Office (EPO) is a route widely used by European and international applicants. It granted nearly 109,000 patents in 2021. The legal reference text is the European Patent Convention (EPC) [3]. The procedure for granting a patent takes several years. It essentially includes a search for the absence of prior art and an examination procedure which makes it possible to determine whether the invention meets the conditions of patentability (novelty, inventiveness and industrial application). [4]. The EPO also checks whether the invention is not excluded, by its nature, from patentability. [5]. This is the case of ” plant varieties or animal breeds “, of the ” essentially biological processes ” or some ” inventions the commercial exploitation of which would be contrary to public order “. GMOs could be part of this last exception. The EPO also ensures that the invention is disclosed in a sufficiently clear and complete manner for a person skilled in the art to be able to carry it out. [6]. An opposition phase is opened at the end of the examination phase. This possibility of opposition is essential because it allows specialized professionals and civil society actors to complete the work of examiners who cannot be experts in all areas.

Several years to obtain a patent at the EPO

the Patent Index 2021 [7] sheds light on the current dynamics of the procedure for obtaining a patent at the EPO. In April 2022, it published the average durations of its different phases. The average time between the filing of the patent application and the issuance of the ” written opinion » [8] on patentability is five months. It will then take another 23 months on average until the final decision of the examining division to grant a patent or to reject the application. When the patent is granted, a nine-month period begins during which the patent can be opposed. The average duration of proceedings before the Opposition Division is 19 months. At its end, the patent is maintained or revoked in whole or in part. Either party can appeal this decision. Without counting this last possibility, it is necessary to wait 56 months from the filing of the application to know what the patent covers. ultimately.

Procedure for granting a patent by the European Patent Office
Credits: EPO

Oppose the grant of a patent

The European patent application is published 18 months after its filing [9]. The EPO guidelines state: After publication, any third party may submit observations on the patentability of the invention » [10]. To be admissible, these observations must be submitted in writing, not anonymously and received before the EPO’s final decision. The latter takes these observations into account in its procedures in the event that they totally or partially cast doubt on the patentability of the invention. He shares his assessment in the communications mentioning that the grant of the patent is envisaged [11]. These elements are published in the European Patent Register [12]. Observations received after the deadline may still be considered by the EPO if opposition proceedings are initiated.

Indeed, after the EPO’s final decision, ” every person » can oppose the grant of a patent or certain of its claims [13]. Unlike the ” third-party observations », this approach can be very expensive, even inaccessible. A fortiori if you wish to be assisted by a professional representative with the EPO who applies hourly rates of several hundred euros. These agents cannot therefore be solicited by opponents who do not have a substantial budget. In other words, exit parties outside the industrial sector and small businesses.

Thanks to the health measures taken during the Covid, the oral part of the opposition phase (known as ” oral proceedings ”) can now be offered by videoconference by the EPO. This project, still a pilot today, has just been extended until December 2022 [14]. Failing to arouse the interest of the public – time will tell – this initiative allows the public to attend, on simple registration, the exchanges between the owners of patents and those who oppose them. It thus allows him to train and to apprehend ” live » the challenges of patentability, for example of living organisms, and the motivations of the parties. What can be perceived as progress nevertheless remains difficult to access from a technical point of view.

Opposition procedures that can weaken third parties

Opposition procedures at the EPO are very slow. This weak dynamic can weigh heavily on third parties because it puts them pending “. Indeed, to know if he is an infringer, the potential user of a product or a method described by a patent must know its definitive scope. This may be the case for ” small » breeders or brewers who must ensure that they will be able to engage in some of their projects without the risk of being blocked by patents on « inventions of GM seeds. The assessment of the infringement of a European patent is done at the level of the national courts [15]. The latter can, for the proper administration of justice “, decide to ” to stay proceedings pending the outcome of opposition proceedings at the EPO. However, we note that national judges do not often grant this reprieve, considering it too slow. They therefore pronounce a judgment without being able to take into account the final position of the EPO on a patent and are satisfied with the patent granted before the opposition phase.

The EPO considers in a report ” quality » that opposition deadlines have generally improved but that this only concerns standard cases [16]. However, the procedures concerning the patentability of living things are often “ non-standard and decisions entrusted to opposition divisions had to be suspended pending decisions by the EPO’s Enlarged Board of Appeal [17]. The latter has spoken out on various occasions over the past 15 years on issues relating to the protection of plants, essentially biological processes and products derived from them. [18].

The patentability of living organisms raises important questions and creates case law accordingly, which can certainly slow down procedures. But it is the responsibility of the European institution to give itself the means to modify this dynamic to guarantee legal certainty and all the rights of the parties concerned. We can include the human rights to food, to health, to the protection of traditional knowledge, the rights of farmers and the protection of biodiversity, which are opposed to any patentability of life.

The Boards of Appeal of the EPO

The Boards of Appeal are competent to examine appeals lodged against decisions of the Receiving Section, Examining Divisions, Opposition Divisions and the Legal Division [19]. The latter are themselves competent to examine patent applications, respectively, on: the form at the time of filing, the substance, the oppositions and the particulars to be entered in the European Patent Register as well as the registration on the list of representatives in approved patents and their removal therefrom.

The EPO also has an Enlarged Board of Appeal whose main task is to ensure uniform application of the European Patent Convention (EPC). It rules on questions of law of fundamental importance referred to it by the President of the EPO or by the Boards of Appeal. Its opinions are published with a specific code (eg G3/19).

The Enlarged Board of Appeal and the Boards of Appeal are composed of technicians and lawyers appointed by the Administrative Council of the EPO for a period of five years. The members of the Enlarged Board of Appeal are selected from the Boards of Appeal.

Inf’GMO regularly informs you of the decisions of these Chambers of the EPO concerning the patentability of living organisms [20].

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