How often does the EPO issue summons for oral proceedings as a first action?

Due to the revisions in the Guidelines in 2018, the Examining Division of the EPO is now able to issue a summons for oral proceedings as a first office action (hereinafter also called as "OA") if:

– in its opinion, there is no prospect of a grant, even taking into account the applicant's reply to the search opinion;
– the content of the claims on file is not different in substance from that of the claims which served as a basis for the search, and
– one or more of the objections raised in the search opinion which are crucial to the outcome of the examination procedure still apply.

(GL C-III, 5)

It is however questionable, how often the Examining Division makes use of the summons as a first action in practice.

I have never experienced a case where summons have been issued as a first OA, nor have I heard of anyone else encountering such a case.

So I looked for cases where summons have been issued as a first OA by using so called EP Bulletin Search (https://data.epo.org/expert-services/index.html), a search tool provided by the EPO. After spending some time with the EP Bulletin Search,  I could finally find one case where summons have been issued as a first OA, i.e., European patent application EP3452931.

In view of the facts that we have rarely heard of a case in which summons have been issued as a first OA, and that I could find only one case after spending a certain amount of time with searching, it can be concluded that the Examining Division issues summons for the oral proceedings as a first OA extremely exceptionally.

Top 20 German representatives of US applicants before GPTO

Today I have generated a ranking of top 20 German representatives based on the number of German patent applications from USA and published in 2020.

Search tool:

DPMAregisterPatent Expert

Search formula for obtaining raw data:

INH=US UND EREGT>=M1-2020 UND EREGT<=M12-2020 UND (AKZ = 1020? ODER AKZ = 1120?)

Results:

It is quite interesting that the members are significantly different from those of “Top 20German representatives of Japanese applicants at GPTO”, isn’t it?

 

Top 30 Japanese applicants at GPTO

I have created a ranking of top 30 Japanese applicants based on the number of German patent applications published in 2019.

Search tool:

DPMAregisterPatent Expert

Search formula for obtaining raw data:

INH=JP UND EREGT>=M1-2019 UND EREGT<=M12-2019 UND (AKZ = 1020? ODER AKZ = 1120?)

Results:

 

Is EPO more productive than GPTO and JPO?

 I.         Background

The European Patent Office (EPO) has increased the productivity in examinations since 2016 (see e.g., “Boosting performance and quality” of the EPO).

But is the EPO more productive than other patent offices?

So I have compared the examination productivity of the EPO with those of the German Patent and Trademark Office (GPTO) and the Japanese Patent Office (JPO).

 

II.         Material and method

1.         Definition of examination productivity

The examination productivity in this study is defined as the number of completed examinations (decisions for grant and rejection) per an examiner in 2020 and has been calculated by the following formula:

Total number of completed examinations / Total number of examiners in office.

 

2.         Available data (2020) 

2.1. Total number of examiners

    EPO:              4099 (1)

    GPTO:            about 1000 (2)

    JPO:               1883 (3)

 

2.2. Total number of completed examinations

    EPO:              140845 (4)

    GPTO:           41723 (2)

    JPO:              220000 (3)

 

III.        Results

 

IV.       Discussion

Although it must be considered that the JPO examiners do no conduct prior art search by themselves, the examination productivity at the JPO amounting to 116.83 is remarkable, which is by far the highest.

The EPO and GPTO examiners both conduct prior art search by themselves so that the EPO and GPTO examiners should have comparable working conditions. Nevertheless, the GPTO examiner has a higher  examination productivity (41.72) than the EPO examiner (34.36).

The examination before the GPTO is famous for being slow, but this figure indicates that the GPTO examiners work more productive than the EPO examiners.

 

V.        Source

(1) https://documents.epo.org/projects/babylon/eponet.nsf/0/66A405546212DDF4C12586FC00330A90/$FILE/social_report_2020_en.pdf

(2) https://www.dpma.de/docs/dpma/veroeffentlichungen/jahresberichte/jahresbericht2020.pdf

(3) https://www.jpo.go.jp/resources/report/nenji/2021/index.html

(4) The EPO does not publish the number of completed examinations any more. Thus, the number was obtained from EP bulletin search (https://www.epo.org/searching-for-patents/legal/bulletin/ep-bulletin-search.html) by query commando “PSDP=2020* or PCRF=2020*”.

Top 20 German representatives of Japanese applicants at GPTO

In my last article "Top 50 German representatives at GPTO", I have generated a ranking reflecting top 50 German representatives based on the total number of German patent applications before the German Patents and Trademark Office.

I was then interested in top German representatives representing Japanese applicants, because Japanese applicants are major clients for me.

 So I have created a ranking of top 20 German representatives based on the number of German patent applications filed by Japanese applicants and published in 2019.

Search tool:

DPMAregisterPatent Expert

Search formula for obtaining raw data:

INH=JP UND EREGT>=M1-2019 UND EREGT<=M12-2019 UND (AKZ = 1020? ODER AKZ = 1120?)

Results:

 

Obtaining a machine translation of an old Japanese patent literature with six steps

The Examining Division of the EPO often cites Japanese patent literatures as prior art documents.

Those of you who are not familiar with the Japanese language will probably then look for English machine translations of these Japanese patent literatures created either by the EPO or Google Patent in order to get a grasp of the contents of these documents.

However, the cited Japanese patent literatures are sometimes so old that neither the EPO nor the Google Patent provides English machine translations of these documents. 

In this case, it may still be possible to obtain an English machine translation from so called J-PlatPat, a platform of the Japanese Patent Office, with following steps 1 to 6:

Step 1

Open the English page of “Patent/Utility Model Number Search” in J-PlatPat.

 

 

Step 2

Input the publication number of the Japanese patent literature you look for in the second field.

 

In this regard, you may have encountered a situation in which J-PlatPat did not accept the publication number although you have correctly enter the number as indicated on the Japanese patent literature. This happens because J-PlatPat requires a certain format (SXX-XXXXX or HXX-XXXXXX) of a publication number but a publication number is not necessarily indicated according to the format on a Japanese patent literature.

In this case you must slightly modify the publication number depending on the number at the begin of the publication number.

If the number at the begin is 4 or larger, e.g. 59-12345, then the number has to be modified to S59-012345.

On the other hand, if the number at the begin is 0 or 1, e.g. 1-12345, then the number has to be modified to H01-012345.

 

Step 3

Click the search button.

 

Step 4

Click the publication number at the search result.

 

Step 5

Click “Open” at “Scope of Claims” and “Detailed Description”.

 

Step 6

Done. Congratulations! You have now a English machine translation of the Japanese patent literature.