26 April 2010

How to collect annuities

In one EP application my firm is in charge of, the European Search Report, which was issued on 19 Aug 2005, only cited A-classified documents, i.e. prior art that does not oppose to novelty or inventive step but only serves as technical background. Proceed further according to Rule 70 (2) EPC has been declared on 23 Jan 2006, only seven months after the filing date of 23 May 2005.

Even though the European Search Report only cited A-classified prior art documents, indicating that the claimed subject-matter is substantively allowable, it took the Examing Division more than four years to issue the first Office Action in which merely the clarity (Art 84 EPC) of two terms of claim 1 was objected. It is absolutely unclear why raising two minor clarity issues takes that long.

During this period, the renewal fees for the 3rd, the 4th, the 5th, and the 6th year became due and have been payed on 30 May 2007 (400 €), 28 Mar 2008 (420 €), 28 May 2009 (700 €), and 30 Mar 2010 (900 €), respectively.

If the Examining Division would have issued the first Office Action within a resonable period after declaration to proceed further on 23 Jan 2006, the application could have been granted within a year's time, such that at least the renewals for the 4th to 6th year, summing up to more than 2.000 €, would not have flowed from the applicants purse in that of the EPO.

Please don't misinterpet me; I am not saying that the EPO follows some sort of strategy to maximise annuities by prolonging proceedings, but still, at least, the EPO, which independently finances itself by fees and annuities for pending applications, did not follow an appropriate work flow assuring that easy work is done first in order to improve procedural efficiency for the benefit of applicants.