Developments in-house

Personnel issues

Preparations for the new management career structure continued in 2004. The Office began work on an effective system for the early identification, development and training of young managers. On the basis of an external study it also re-evaluated B and C grade jobs in administration, formalities and technical services.

Last year the Office conducted a study among staff in DGs 1 and 2, the Human Capital Survey, which gave it major new insights for its policy on issues such as HR management, motivation, communications, the working climate and mission statement implementation. Thanks to the high response rate of 88%, management was given a clear picture of the workplace atmosphere of a great many staff. The survey’s findings were published on the Office’s intranet.

On the social front, too, the Office last year made significant changes in fulfilment of its responsibility to staff. The Administrative Council took a decision which clarified the status of same-sex marriages: the Office now recognises them as valid if they are also valid under the law of the member state in which they were contracted. A further change affected the conditions for family-related leave.

Last year the Office set up a medical health service, a major move towards improving healthcare provision and support for its staff at the workplace. The unit is made up of two occupational health physicians and an in-house medical adviser.

Recruitment and training

Over 23 000 people applied for jobs at the EPO in 2004, and more than 700 were invited to interviews. Priority was given to posts in DG Administration and DG Legal/International Affairs. 221 posts were filled, including 64 examiner posts, leaving the EPO with a staff complement of 5 918 at the end of the year.

In the area of staff training, the Office held 1 067 courses, mostly concerning management issues, human resources/communication, languages and IT, along with dedicated courses for patent examiners and examining support staff.

EPO construction projects in The Hague and Munich

To meet future building needs in The Hague, the Office launched an international architectural competition to replace the main building there. The competition, which was concluded in November, was conducted in two stages, with a preliminary application phase followed by a co-operative second phase. A total of 391 architects applied, and 52 of them were invited to take part in the competition. For the second phase the multinational jury chose ten entries, from which they ultimately selected the five prize-winners. The first prize went to Xaveer de Geyter Architecten B.V.B.A. of Brussels, the second to MVRDV of Rotterdam, the third to Henning Larsen Tegnestue A/S of Copenhagen, the fourth to Hascher Jehle Architektur of Berlin, and the fifth to Itten+Brechbühl AG of Berne and Venhoeven CS of Amsterdam.

January saw the inauguration of the leased “Le Croisé” building, which is housing some 350 examiners while the “Shell” building is being extensively renovated. In the course of the year the latter was fitted with up-to-date air-conditioning, and 350 offices are being modernised in the first phase of renovation.

At the end of the year, twelve months ahead of schedule, the Office took delivery of Phase 7 of its PschorrHöfe complex in Munich. Furthermore, the Administrative Council authorised the President to sign a contract for the construction of Phase 8, due to be ready for occupation at the end of 2007.

Developments in DG 3 (Appeals)

General
To cope with the growing workload, a new board of appeal in chemistry (3.3.9) took up its duties on 1 October last year, becoming the EPO’s twenty-second technical board of appeal.

At its June 2004 meeting the Administrative Council considered the basic proposal for revising the EPC to give the boards of appeal organisational autonomy within the Organisation. The Council in principle advocated submitting the basic proposal to the contracting states for discussion at a diplomatic conference; but it is not yet clear when the next such conference will take place.

Enlarged Board of Appeal
In order to ensure uniform application of the law, or if an important point of law arises, a question can be referred to the EPO’s Enlarged Board of Appeal. In 2004, the Enlarged Board received two referrals concerning points of law from a technical board of appeal under Article 112(1)(a) EPC and one from the President of the Office under Article 112(1)(b) EPC.

There are currently four cases pending before the Enlarged Board. G 3/03, referred to it in March 2003, deals with requests for reimbursement of the appeal fee. In G 1/04 the President referred questions concerning the interpretation of the expression “diagnostic methods practised on the human or animal body” as used in Article 52(4) EPC and hence the patentability of such methods. In G 2/04 Technical Board 3.3.4 referred questions concerning the transfer of opponent status, while the question referred by Technical Board 3.2.5 in G 3/04 was whether appeal proceedings may be continued by a third party that had intervened during the appeal proceedings in the event of the sole appellant withdrawing his appeal.

The referral which was pending as G 4/03 was terminated when the intervener withdrew his intervention.

On 8 April last year the Enlarged Board handed down its decisions in G 1/03 and G 2/03 (consolidated into a single case), ruling that an amendment to a claim by the introduction of a disclaimer could not be refused under Article 123(2) EPC for the sole reason that neither the disclaimer nor the subject-matter excluded by it from the scope of the claim had a basis in the application as filed. It listed a number of criteria to be applied for assessing the allowability of a disclaimer that was not disclosed in the application as filed.

In its decisions of 26 April 2004 in G 2/02 and G 3/02 (likewise consolidated), the Enlarged Board held that the WTO/TRIPS Agreement did not entitle the applicant for a European patent to claim priority from a first filing in a state which at the relevant dates had not been a member of the Paris Convention but had been a member of the WTO/TRIPS Agreement.

European Patent Judges’ Symposium
The 12th European Patent Judges’ Symposium, held in Brussels in September, was attended by 85 judges from 29 countries, including 24 of the contracting states, along with representatives of the European Court of Justice, the EU’s Court of First Instance, the European Commission and the European Parliament. These symposia, held every two years, provide a platform for national judges from legal systems with differing traditions to exchange experiences, thereby promoting mutual understanding in the development of European patent law. The programme focused on the patentability of computer-implemented inventions and on recent developments in European and national jurisprudence.

Contacts with national courts, applicants and representatives
The eleventh meeting between members of the boards of appeal and UNICE and epi representatives was held on 23 June 2004.

DG 3 last year also continued with its series of lectures (PDCs) held by European judges and experts on patent-related matters.

As in previous years, the boards were again visited by high-level delegations from contracting and non-contracting states.

The visitors included judges from France, Tajikistan, Saudi Arabia, Turkey and Romania, along with graduates of two training courses for Finnish patent practitioners on visits organised by the Helsinki University of Technology and the Finnish Association for Corporate Patent Agents. DG 3 also welcomed the head of the Czech Patent Office’s appeals department and representatives of the Romanian Patent Office.

DG 3 representatives also participated as expert speakers in seminars and conferences organised by the DG 5 International Academy and in international symposia and seminars.

DG 3 publications
DG 3’s efforts to develop tools for providing information on board of appeal case law to the public continued last year. All the decisions handed down by the boards since 1980 are now available free of charge on the Office’s website (www.epo.org), where they can be found via the case number or via search terms. They also appear on the ESPACE® Legal CD-ROM or DVD, which is published twice a year.

The 2004 issue of the “Ancillary Regulations to the EPC”, published by DG 3’s Legal Research Service, is a collection of important secondary legislation to the EPC and of the President’s most important decisions, along with communications and legal advice from the EPO.

For some years, the Legal Research Service has been collecting national patent decisions from the contracting states. In September the fruits of this labour were published, initially in English, in the “European National Patent Decisions Report”, which was presented at the 12th European Patent Judges’ Symposium in Brussels. This book offers readers a handy digest of national decisions on patent matters, giving them an opportunity to compare legal practice in various national jurisdictions and thereby providing a picture of the level of harmonisation in European patent law. German and French versions of the report are due to appear this year.

The Legal Research Service publications “Case Law of the Boards of Appeal of the EPO”, “Ancillary Regulations to the EPC”, “European National Patent Decisions Report” (English first edition) and the equivalent CD-ROMs are available from the EPO sub-office in Vienna.

Rising demand for epoline® services

Usage of epoline® products and services continued to grow last year. 14% of all European filings came via the Internet, including a large number of subsequently filed documents now that the Online Filing software offers that option as well. The EPO also introduced an updated version of Online Filing with new features and a new look and feel, and the German and UK Patent Offices launched their own national versions.

While usage of the Online European Patent Register stabilised at the previous year’s level of 600 000 queries per week, the number of online public file inspections rose to over 8 000 a day (2003: 7 000). The WebRegMT monitoring service launched in 2003, which allows simultaneous monitoring of up to 250 different cases before the EPO, registered 1 900 users in 2004.

By launching the Register Plus service, a one-stop shop for data from the Online European Patent Register, Online Public File Inspection, esp@cenet® and the INPADOC Legal Status database, the EPO expanded the range of structured patent information that it offers. It also made significant improvements to the Online Fee Payment service, with the result that in 2004 transactions worth over EUR 3m per month were completed via epoline®.

Once again there was good attendance at epoline® user courses and seminars and at the Annual Conference in Salzburg, arranged jointly with the Austrian Patent Office. A total of over 650 users from all over the patent world took part in these events.

Professional representatives

Last year’s accession of Poland, Iceland and Lithuania to the European Patent Convention brought the number of contracting states to 30.

Under Article 163 EPC, patent practitioners from new contracting states have one year in which to exercise their right to be added to the EPO’s list of professional representatives (Fig. 11) without having to sit the European qualifying examination.

By the end of last year that right had been exercised by 327 practitioners from Poland, eight from Iceland and four from Lithuania. In the course of the year the transitional period expired for Hungary and Romania, by which time 35 Hungarian and 88 Romanian representatives had been registered.

Last year 399 candidates passed the qualifying exam, and 388 candidates who have passed it in the last two years were added to the list. A further 19 representatives who had been temporarily deleted applied for reinstatement. That brought the number of additions to 850 (2003: 733), as against 457 deletions (2003: 264) on age or disciplinary grounds.

Thus at the end of the year there were 8 108 professional representatives on the EPO’s list (2003: 7 696). 4 081 of them (50.3%) had been added under Article 134 EPC after passing the qualifying exam, while 4 027 (49.7%) had been admitted under Article 163 EPC.

In 2004 there were 192 firms of patent agents and industrial patent departments registered with the EPO as “associations of professional representatives”. Some 12 000 of the European patent applications filed with the EPO last year were handled by associations, and around 38 000 by other professional representatives. In a further 470 cases, legal practitioners acted as professional representatives. 80 such practitioners were added to the list, bringing the total to 985.

The list of professional representatives is available in book form, on the ESPACE® Legal CD-ROM and on the EPO website .

European qualifying examination (EQE)

There were 1 821 enrolments for the EQE last year, 18% more than the year before. 424 candidates passed all the papers, which constitutes a 25% increase in the pass rate.

European Patent Register

Workload related to the register was more or less the same as in 2003. Of the 1 185 requests received (2003: 1 250), 433 were for interruption of proceedings under Rule 90 EPC, 57 for suspension of proceedings (Rule 13 EPC), 583 for registering of licences (Rule 21 EPC) and 13 for other rights in respect of European patent applications and patents.

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