Productivity vs Quality at the EPO: A rare glimpse behind the curtain that’s worrying

What is quality, in general? It may mean different things to different people.

The most recent discussion about (perceived) quality issues at the EPO has been going on for quite some time. Actually, it goes back to as early as 2018 (at least); see e.g. this letter. The EPO published its Patent Quality Charter in September 2022, almost simultaneously with the Industry Patent Quality Charter (IPQC) by a group of some of the EPO’s top key account applicants (Bayer, Ericsson, hp, Nokia, P&G, Qualcomm, Roche, Siemens, Syngenta, Vodafone). The signatories of the IPQC had some exchange of views with the EPO, and they put some very specific suggestions / requests for information on the table. Interesting points, indeed. But my understanding is that the discussion is now at a standstill. Again.

I stayed out of it for a long time. I felt that I had too little knowledge of the facts, and I don’t like to discuss hearsay and fuzzy perception.

What does quality mean to the EPO? A lot. The EPO has dedicated a whole website section to Delivering Quality; here’s the header:

The Patent Quality Charter is the cornerstone of the EPO’s ‘commitment to quality’. But it does not define quality, really. It says that the aim is to deliver ‘high-quality patents and services’ and it outlines a whole lot of measures that the EPO says it follows to achieve that. There is nothing wrong about it. But, frankly, it’s a fluffy read. It’s ‘quality lyrics‘, indeed. It feels good and comfy, but it slips through ones fingers and one cannot really tell what it means in daily practice.

On the other hand, the EPO’s most recent Quality Report 2022 is a book of 80 pages. I was hoping for a more tangible definition of (high or highest) quality. There is none, I believe. Not even in the chapter ‘A shared understanding of quality‘. But the Executive Summary allows for some reverse-engineering:

Whatever high quality of a patent or a patent service is, it cannot mean less than what is objectively necessary to

[…] deliver the highest levels of legal certainty and predictability.

Now, that is something. A superlative. In the right place. I take from this that the EPO won’t settle for anything less. Great!

But why then all the fuss about quality issues? I did not get it. Until recently.

My interest in this topic grew dramatically when I read in the Stuttgarter Zeitung that some internal instructions at the EPO were essentially saying that the clarity of a patent is not a priority, and that inventive step is not to be examined in depth. I was taken aback. Inevitably, this cannot result in work products that deliver the highest levels of legal certainty and predictability. Quite the opposite.

I asked my LinkedIn network whether anyone has the respective document(s) at hand:

And, indeed: I got hold of two EPO-internal emails, one from January 2023 and the other one from March 2023. I have no reason to believe that they are not authentic. I have redacted the emails myself: Specific names, directorates, email addresses etc. just do not matter. My focus is on content. Both emails were sent by the same EPO director with responsibility for two directorates of DG1. Examiners are primarily addressed in terms of content, as well as (for whatever reason) other directors, a member of the ombuds office and top management of DG1. The subject line of both emails is:

Friday Note

Let’s see what the examiners of the two directorates get to read from their director as a message for the weekend. I have rehashed the emails. Quite often. And I have tried to give the author the benefit of doubt to the extent possible. I really did. Still, I’m pretty shocked. In my perception, the emails convey two messages, loud and clear:

1. 1. It is production that matters, first and foremost.
   2. Quality? Come on. Don’t be so complicated.

Here is why.

Production is king

One of the emails closes as follows:

So yesterday I’ve informed the TMs [team manager] that the situation will have to improve, very soon. Not because production is the only thing that counts, it’s because production is the only thing that guarantees our payslip on the 26^th of every month.

I was about to just tick that off as a matter of style, and move on. But, think about it: Does that mean that the monthly salary of examiners and directors is directly connected to a certain production number? Maybe. We cannot know. The EPO does not publish incentives for examiners, even though IPQC asks for exactly this information (see here, item #5).

It was not even end of January 2023 when this director let his people know:

One may or may not share this director’s opinion that a daily control / demand of certain production numbers makes much sense for knowledge workers. I don’t. Peter Drucker comes to mind:

Moreover, because knowledge work cannot be measured the way manual work can, one cannot tell a knowledge worker in a few simple words whether he is doing the right job and how well he is doing it.

Anyway. This director is sold on numbers. For the March 2023 email, even more data was available. The situation had not improved:

Offering support for those who are below the production target is a good thing. I guess. Depending on the kind of support. Which brings me to the second topic: Quality.

Quality is thrown under the bus

The January 2023 email has a large section about quality. The director refers to ‘The Universal Better Curve’ and holds:

We don’t want ‘Epic’. (In the same curve, ‘Good’ and ‘Great’ are not good enough).

A universal truism. But the director’s reasoning is a stunner. The examiners are pointed to certain safety nets (three person division, team manager, formality officers, appeals/opposition, litigation) in the EPC:

The safety net options according to the EPC were designed knowing we would not be perfect, so an examiner insisting on guaranteed perfection is not working in line with the EPC.

Really? This is not my reading of the Travaux Préparatoires of the EPC. It really is nonsensical to me. It perverts the gist of a system that was meant to be set up in a way that provides for ‘highest guarantees‘. And it is a very slippery slope: It’s a prime example of diffusion of responsibility. It doesn’t really matter what I do; someone else will care. This can’t be it.

The director then goes on to draw a parallel with the aircraft industry: Aircrafts are not perfect, but still widely accepted despite their imperfection. With all due respect, this quite likely is the most inappropriate comparison one can think of:

• • First, the aircraft industry is one of the most closely regulated industries in the world, and aircrafts are built strictly according to specs accepted by the regulators. Quality at the EPO is not regulated externally.
  • Second, aircrafts are extremely reliable. When you took a flight in 2022, your chance that this aircraft fatally crashed was 0,00000016%. That’s not much, really. Rumor has it that more people in the world are kicked to death by donkeys than die in plane crashes. Apparently, both regulators and aircraft manufacturer do a good job. Aircrafts are not perfect, that’s true. Nothing is. But they are pretty close.

How well does the EPO perform in comparison? Let’s have a look at the Quality Report 2022 again. It reports about audits made in 2021 and 2022 on more than 800 files each year that proceeded to grant:

Don’t be misled by the large greenish parts of the bars. This is anything but impressive. The remainder of 23.4% faulty dossiers in 2022 is huge. If an audit in my firm revealed that roughly every fourth work product has issues in the assessment of novelty, inventive step, sufficiency of dislosure, or clarity, I would jump up and go re-check the insurance. Clearly, it would be the top priority to sort this out. Whatever it takes. 

What is most alarming is that it apparently doesn’t get any better. After the 2021 results, the EPO’s target for 2022 was 85% — which tells me that this was rightly seen as an important thing to work on. In my perception, 85% is anything but an ambitious goal. But, be that as it may: 76.6% in 2022 falls short of this mark, again, by far. 

That’s quite a difference to the aircraft industry, isn’t it?

The hands-on advice in these emails on how to reach the production target is worrying in terms of quality because they run against the EPO’s explicit aim of delivering the highest levels of legal certainty and predictability. The advice is inconsistent with the Guidelines. But the Guidelines trump everything within DG1: As set forth in the foreword,

[…] parties may expect the EPO to act in accordance with the Guidelines until such time as they – or the relevant legal provisions – are amended.

Now, what can users really expect after all?

Clarity: What can be assessed in terms of novelty and inventive step is clear (enough)

As a rule, clarity should not be the most extensively discussed aspect in a typical office action. But is it really this easy:

I don’t think so. Anyway, with the benefit of doubt: The director does not say here (yet) that clarity should not be addressed at all when the claim is understandable enough for the assessment of novelty / inventive step. Examiners should simply not deal with it as the first item.

But later, the director copies a piece from yet another document (further internal instructions, maybe?) as a summary:

I am having a hard time to actually match title and content here. The mere fact that a claim can be understood to an extent that allows for the assessment of novelty / inventive step does not mean that the claim is clear. Clarity according to Art. 84 EPC is to define the metes and bounds of a claim. A claim may have a severe clarity issue, e.g., in the preamble due to a feature that does not have anything to do with the actual invention. Assessment of novelty / inventive step is not hindered by such a lack of clarity. But this has to be addressed and eliminated before grant. Issues of this kind are not just of a formalistic or typographical nature. That’s a fatal misconception. I fail to see how clarity issues of this kind are being dealt with in the above cheat sheet of when and how to apply Art. 84. That’s worrying.

Don’t get me wrong, I am not advocating for an acadamic or unrealistic approach to clarity here. Just a complete one. The Guidelines give a lot of guidance in this respect, and they rightly hold:

The clarity of the claims is of the utmost importance in view of their function in defining the matter for which protection is sought.

This doesn’t leave much room for shortcuts in order to increase production. The above cheat sheet does not live up to this standard.

Inventive step: Lowering the bar

Assessment of inventive step at the EPO is done according to the problem-solution approach. The final step is the actual assessment of obviousness, according to the could-would approach (highlighting added):

In the third stage the question to be answered is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves

On the contrary, this director holds as follows:

This is not what the Guidelines say; see above. The motivation or reason to come up with the distinguishing feature does not need to be derived from the best / closest prior art. In fact, this will hardly ever be the case. If this were the threshold for passing the obviousness assessment, almost everything is inventive.

The fact that this argument is sometimes brought forward by prioprietors in opposition proceedings does not mean that it is a good one. The contrary is true, in my perception: It is always a first indication that they don’t believe (anymore) that they can win their case when they continued playing by the rules (the Guidelines, I mean).

If this director’s position sets a precedent (or is already popular in other directorates), it will inevitably lower the bar in the assessment of obviousness. One may want that or not (I don’t). But as long as the Guidelines stand as they are, the public may legitimately expect that examiners are trained and encouraged to apply them, not to sneak around and bend them for an increase of production in return.

What can be done?

I firmly believe it is high time to re-adjust priorities.

When even an internal(!) audit reveals that about every fourth dossier that proceeds to grant is faulty, and when even a modest attempt to improve the situation failed (by far!), then it’s high time to reduce the hustle. Users would not mind if the average office action took a few days or even weeks longer if that resulted in, let’s say, >95% of the dossiers being in good order when they proceed to grant.

✍ MW

Header image: © European Patent Office

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‘FRIDAY NOTES’ TO EPO PERSONNEL

January 2023:

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March 2023:

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IPQC

The Charter:

Some specific suggestions:

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PATENT QUALITY CHARTER (EPO)

The EPO contributes to achieving the UN sustainable development goals and a safer, smarter, and more sustainable world by delivering high-quality patents and services, fostering innovation, competitiveness, and economic growth in technologies of transformation.

It does so based on a solid legal framework and thanks to the expertise of its staff. Our stakeholders rely on us for timely delivery and the highest levels of legal certainty, predictability, and consistency.

To meet their expectations, we regularly review our procedures and how we collaborate, including how we can support and learn from each other.

We consistently live our values in every aspect of our work, whether it’s processing patent applications, conducting post-grant proceedings or interacting with our user community. We are committed to excellence at all stages of the patent grant process and actively promote quality ownership among all stakeholders.

We trust that this commitment to deliver products and services of the highest quality in a consistent and efficient manner, and to ensure legal certainty, leads to higher user satisfaction and confidence in the European patent system.

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