The EPO User Day 2025 is scheduled for September 23-24, 2025. This year, the EPO will offer dedicated sessions for SMEs and micro-entities, focusing on how patents can support growth and innovation. The event also offers breakout sessions for patent professionals.
Referreal on adaptation of description
As reported by the European Patent Office (EPO), questions relating to the adaptation of the description were referred to the Enlarged Board of Appeal (G 1/25).
It is the EPO’s practice that the description must be aligned with amended claims. I.e., when claims are amended, the description should be adapted accordingly to reflect these changes, avoid contradictions, and maintain a coherent disclosure.
At least one Board of Appeal has previously voiced doubts as to whether there is a legal basis for this practice, as previously reported in this blog section.
Considering recent case law from the Enlarged Board (G 1/24, point 20), it would be surprising if the Enlarged Board took the position that the EPO’s practice on adaptation of the description had no legal basis. The adaptation of the description also appears to be dear to many in EPO management, who seem to regard consistency of description and claims to be a KPI for the ongoing patent quality discussion.
EPO Case Law Book (11th ed.)
The EPO has published the 11th edition of the Case Law of the Boards of Appeal. The case law book (which is available in digital format only) is a great resource on the plethora of decisions rendered by the Boards of Appeal in both ex partes and inter partes proceedings.
EPO seminars
As the year draws to a close, the EPO is going to host several interesting seminars, including:
Opposition Matters 2024: According to the EPO, “Opposition Matters is the EPO’s key event for professional users to keep abreast of the latest and most relevant developments in opposition proceedings.”
Litigation Matters 2024: According to the EPO, “Litigation Matters … is devoted to the latest practices of patent litigation in Europe, with particular attention to the UPC litigation.”
Registration is already open. These events represent a great opportunity to catch up with recent developments. Both events are free of charge and organized by the EPO Academy.
EPO Boards of Appeal decision abstracts
The EPO has started to publish abstracts of decisions of the Boards of Appeal on a monthly basis. The abstracts are accessible via the EPO’s appeal decisions webiste. This is a great resource for those who want to receive updates on recent case law, edited by the Legal Research Service of the Boards of Appeal, on a regular basis.
EPO administrative fee changes from 01 April 2024
Various changes to the EPO’s fee structure will enter into effect on 01 April 2024. See the EPO’s News Website. Both the reduced fees for SMUs and the increase of some renewal fees have been widely discussed; the visitors of my website will have read about this on, e.g., Juve Patents, the Kluwer patent blog and various LinkedIn posts from valued colleagues working in the patent profession.
One issue that appears to have received less attention is that the EPO’s recent decisions also affect the administrative fees (which tend to receive less attention as compared to the fees associated with filing, search, examination, and renewals). Importantly, the fee for registering a transfer will be reduced to nil provided that the request is filed via MyEPO. See EPO OJ 2024, A5 – fee code 022, item 1.1.
While one might think that the present fee of 120 EUR is not a big deal, the EPO applies this fee per application or per patent, even if the same evidence for the transfer is used in all of the applications/patents. In the case of a merger or demerger of companies, registering the transfer of applications and patents (for the latter the patents during the opposition period or in oppositions) can often result in total administrative fees of several hundred thousand Euros in the currently active administrative fee regime.
It is rare for me to applaud the EPO’s fee structure and the continually increasing fee amounts, which occasionally make me wonder whether the EPO is about to price itself out of the market (in particular when compared to, e.g., the GPTO’s fees). The reduction in the administrative fee for registering a transfer, while triggered by the desire to incentivize the use of MyEPO, is in my view a great step, when considering how much work can be involved in checking the entitlement of the signatories of a transfer declaration (e.g., when a chain of authorisations needs to be verified to affirm the signatory authority of the signatories). The reduction in the administrative fee for registering a transfer, when filed via MyEPO, will make it much easier to convince applicants/patentees that it is generally a good idea to maintain the EPO register data aligned with material ownership when a transfer has taken place.
EPO Deep Tech Finder
The EPO has deployed its Deep Tech Finder tool. The Deep Tech Finder is a tool for finding investment-ready European startups that have patent applications at the EPO.
More information is available at the EPO’s FAQ page.
EPO Examination Matters ’23
The EPO hosts a great hybrid format conference Examination Matters 2023. The event is very interactive and provides lively discussions on topics of practical relevance for patent practitioners (both substantive and procedural). Check out the conference materials once they become available.
EPO – strawman’s appeal fee
A new EPO Boards of Appeal decision T 84/19 deals with an interesting question relating to appeal fees. The decision holds that an opponent who is a natural person or otherwise entitled to benefit from the reduced appeal fee does not have to pay the full appeal fee, even if there is a secret sponsor (akin to the ‘real party in interest’ in post-grant proceedings in other jurisdictions). This holds as long as the opposition does not constitute a circumvention of the law regarding the entitlement to pay a reduced appeal fee.
By way of background for the readers familiar with or otherwise interested in USPTO post-grant proceedings: According to decisions G 3/97, G 4/97, it is not required that the ‘real party in interest’ be named in EPO opposition proceedings. Thus, the situation may (and does) occur in which an opponent as party to the EPO proceedings may be different from the person interested in the revocation or amendment of the patent.
EPO project ‘Bringing Teams Together’
The EPO’s project “Bringing Teams Together” appears to face criticism from within the EPO. Various social media and patent-related news sites cover the sarcastic letter allegedly drafted by an unnamed EPO staff member (see, e.g., Wolter Kluwer blog).