International affairs

I. Development in the European patent system
II. Trilateral co-operation
III. International co-operation
IV. Patent information

I. Development in the European patent system

Member and candidate states

The geographical coverage of European patents expanded again last year. Poland, Iceland and Lithuania acceded to the European Patent Organisation, which now has 30 member states. In addition, three more extension agreements entered into force, with Croatia, Serbia & Montenegro and Bosnia-Herzegovina, enabling European patents to take effect there as well. Hence there are now altogether 36 European countries in which patent protection can be obtained through the European patent system.

Malta and Latvia have instituted EPC ratification proceedings and are likely to accede during the first half of 2005.

Community patent

Last year again failed to bring progress on the Community patent project, and after four years of intensive debate and numerous initiatives on technical and political level, solutions acceptable to all EU states with regard to critical issues such as the language regime still seem to be out of reach. However, the Community patent is still seen as a fundamentally important item of EU intellectual property legislation, and consequently the High-Level Group of Independent Experts chaired by Wim Kok in its report has called on the European Council to renew its efforts with a view to adopting the Community patent at its meeting in spring 2005.

Brussels Bureau

By finalising its accreditation with the EU, the Office last year consolidated its position in Brussels. The work of the Brussels Bureau focused on raising the Office’s profile with the European institutions, especially the European Parliament. Opportunities were offered above all by debate on the European Commission’s proposed directive on the patenting of computer-implemented inventions. The Bureau and Commission representatives also discussed mechanisms for keeping small and medium-sized enterprises better informed about patents. In the course of the year the Bureau also made initial contact with other EU bodies.

European Patent Litigation Agreement (EPLA)

The Working Party on Litigation set up by the Paris intergovernmental conference in 1999 decided at its December meeting to postpone all work on the EPLA until the spring 2005 meeting of the European Council, expected to determine the future of the Community patent. In the meantime the draft agreement is to be brought into line with the latest EU legislation, in particular Directive 2004/48/EC on the enforcement of intellectual property rights. However, the opinions of European industry and user organisations expressed at the “EPO Public Hearings 2004” yet again emphasised the urgent need to implement the EPLA, so that the long-awaited central European Patent Court can be established to conduct infringement and revocation proceedings for European patents.

London Agreement

Four contracting states – Germany, Iceland, Monaco and Slovenia – have now ratified the London Agreement on the reduction of translation requirements for European patents, concluded in October 2000. Denmark has already taken all the steps needed to bring its patent law into line with the Agreement but has not yet deposited the relevant instruments. Ratification proceedings have also been instituted in Sweden, Switzerland and the United Kingdom. To enter into force, the Agreement must be ratified by at least eight contracting states, and these must include France, Germany and the United Kingdom.

EPO Public Hearings 2004

To broaden the basis for debate on PCT work sharing between the national patent authorities and the EPO, the Office last year arranged three conferences for the principal groups of European patent system users – small business, industry and the finance sector. These hearings examined how patents created value and who did what in the European patent system, and they sent up a clear signal as to how patent users expected the system to develop in the future. The reduction of patenting costs, the creation of a central system of courts for European patents and improved procedural transparency are of paramount importance for users. With regard to work sharing in the European patent system, the participants all clearly endorsed the jurisdiction of the EPO at every stage of the centralised European grant procedure.

International harmonisation of patent law

Work on the international harmonisation of substantive patent law again achieved little progress last year, despite all the efforts made. Intensive and detailed discussions on harmonising a number of patentability requirements (novelty, enlarged novelty, inventive step and the grace period) were held both in the Organisation’s Committee on Patent Law and on Trilateral level; but the resultant proposal for a new work plan – known as the “reduced package” – failed to find the necessary support either in WIPO’s Standing Committee on the Law of Patents or in its General Assembly. That was due in particular to the desire among developing countries to extend the debate to issues such as the protection of genetic resources and traditional knowledge.

To overcome this stalemate, WIPO’s International Bureau has invited a number of developing and industrialised countries and the EPO to consultation meetings on possible moves towards further harmonisation. The US government too intends to hold exploratory talks with various industrialised countries, including the European Patent Organisation and its member states, on the current status of patent law harmonisation and on its future.

Research Fund of the European Patent Organisation

Fifteen applications for financial support were submitted to the Fund in 2004. After consulting the Research Advisory Board, the President decided to award grants to five projects.

European Patent Academy

To foster the development of patent-related industrial property protection in Europe and strengthen the pan-European harmonisation of patenting practice, the contracting states last year decided to set up a European Patent Academy.

The new Academy, which has been operational since January 2005, is managed by the EPO and has its headquarters in Munich. For now it is drawing its staff from the existing EPO International Academy. Its main task is to develop a European training and education scheme in co-operation with national, European and international institutions and organisations for the benefit of the European patent system.

The Academy is the Organisation’s response to the new demands facing industrial property protection in a knowledge-driven economy such as is envisaged by the EU, where a key part is played by the education and training of patent professionals and other system users.

Hence the Academy’s emphasis is on offerings for specific target groups, such as preparatory courses for the European qualifying examination and vocational training for practising patent professionals. Other key elements are the harmonisation of infringement and enforcement procee-dings and patent-related training at universities. There are also due to be courses in corporate IP management and for civil servants and representatives of contracting states’ patent offices.

Changes to the European patent grant procedure

Last year the Office launched various initiatives with a view to meeting the “Paris criteria” for the grant procedure, ie bringing the average time taken to grant a European patent down to 36 months. However, this can only be achieved by means of a whole range of actions, and the applicant community will have to co-operate.

One major project in this context was the creation of an extended European search report, which in addition to the search report proper also provides the applicant with an initial non-binding opinion on the patentability of his invention. This opinion corresponds either to the first examination communication, addressing all the objections to granting the patent, or to a positive statement in favour of patenting. The new system enters into force on 1 July 2005.

In addition, Rule 51(4) EPC has been amended, shortening the period between the communication that the patent is ready for grant and the actual decision to grant.

A further amendment affects Rule 108 EPC, ensuring equal treatment for Euro-PCT applications entering the regional phase and direct European filings.

PCT reform

Last year the EPO focused on implementing the PCT enhanced international search and preliminary examination system. In addition, the PCT Assembly adopted a unified procedure for protests concerning non-unity of invention; the Office, though, will retain the two-stage procedure until the EPC 2000 comes into force. Since April this year it has been possible to levy a late furnishing fee for the late filing of gene sequence listings. In the biotechnology field this problem has latterly caused many delays in preparing international search reports.

The reform programme for 2005 approved by the PCT Assembly includes further procedural improvements, such as restoration of the right of priority, rectification of obvious mistakes and the opportunity for PCT applicants to obtain a supplementary search on linguistic grounds, in addition to the primary international search report, so that the Japan Patent Office, for example, could add documents in Japanese to an international search report established by the EPO. These proposals were on the agenda for the Reform Working Group meeting in May this year.

Last year there was also a Meeting of International Authorities (MIA) under the PCT in Geneva, which for the first time considered reports on quality management from the individual International Authorities under the new PCT Search and Examination Guidelines and discussed further aspects of PCT reform.

At an extraordinary meeting of the Administrative Council in The Hague in November, the member states decided unanimously to continue deliberations on the future of European co-operation with regard to PCT work. This may also have implications for the EPO’s current PCT Partnership Agreement with Sweden and Spain.

II.Trilateral co-operation 

Since 2002, with a view to mastering their workload in the long term, the Trilateral Offices (the Japan Patent Office, the USPTO and the EPO) have pursued a strategic approach to trilateral co-operation, with increased filing activity and high-quality examination processes as their common concerns. To reduce processing times and avoid duplication of work, they have created a mechanism for providing the Office of Second Filing with timely access to the search data of the Office of First Filing.

Additional programmes such as examiner exchanges, patent law harmonisation, automated system development and harmonised classification are intended to narrow the gaps between search results. The Trilateral Offices have set up working groups for certain areas of co-operation, such as work sharing and emerging technologies, especially nanotechnology and machine translation.

The Trilateral Offices have also reinforced their commitment to using the Internet as the key dissemination tool for patent information in the future. They see trilateral co-operation, and in particular the sharing of information, as a major tool for building the global patent system into a knowledge-based society.

III.International co-operation

New co-operation agreements

Western Balkan countries

Last year, extension and co-operation agreements came into force in Croatia (April), Serbia and Montenegro (November) and Bosnia-Herzegovina (December). That means that European patents can now be extended to all the Western Balkan countries, including Albania and the former Yugoslav Republic of Macedonia.

ASEAN countries

Thanks to an addendum to the ECAP II agreement with the European Commission, the co-operation programme with the south-east Asian nations now also covers Cambodia, Laos and Vietnam. As a result, the EPO is now the main IP co-operation partner in the ASEAN region.

China

At their 15th bilateral meeting, the EPO and China’s State Intellectual Property Office (SIPO) reached an agreement on training and the exchange of patent information and of technical information for automation purposes.

CIS and Mongolia

The EPO has signed a co-operation agreement with the Eurasian Patent Office, covering staff training, patent promotion, automation and documentation.

Sub-Saharan Africa

By signing a co-operation agreement with the French Patent Office (INPI) and the African Intellectual Property Organization (OAPI), the Office last year supported the creation of a regional IP training centre in Yaoundé (Cameroon). The centre is to be instrumental in promoting an IP and innovation culture in the region.

Other activities

Last year more than 120 EPO experts were involved in projects in 45 countries. Most of these projects concerned issues relating to training, the building of institutional structures, IP awareness and the enforcement of IP rights within the framework of EU-funded programmes. The Office again relied on close co-operation with the member states and with organisations such as WIPO and the Alicante-based Office for Harmonization in the Internal Market (OHIM).

In May, over 500 experts from Turkey, including judges, attorneys, government and university representatives and IP practitioners, attended a symposium in Istanbul which allowed Turkish and European experts to exchange views on the effective enforcement of IP rights in Turkey.

A regional conference held in Cairo in June looked at the benefits of IP rights for purposes of innovation support and technology transfer in the Arab countries. It was a platform for the region’s IP stakeholders to conduct an in-depth debate on political and strategic issues relating to industrial property in emerging economies.

The fifth ELDIPAT Conference of Latin American countries was held in Lima in May. The chief features were a public conference on patent information and innovation support, attended by around 200 people, and a presentation of the LATIPAT patent information server.

The EPO International Academy

Last year the EPO International Academy strengthened its co-operation with the national patent offices of the contracting states in the field of education and training. In the course of the year it also ran four large-scale international events and 21 smaller IP training seminars. In December it was integrated into the structures of the newly created European Patent Academy.

IV.Patent information

In the course of 2004, the Office laid the legal and technical foundations for electronic publication and launched a trial service. This cleared the way for free publication of all European patent applications and patents on the Internet to replace the paper versions. The European Patent Bulletin has been available on the Internet since mid-2004, and the paper version was discontinued at the end of the year.

The adoption of WIPO’s new publication standard prepared the ground for publishing patent documents in XML format. The EPO had been one of the leaders in developing the WIPO standard, and last year steps were taken to implement its technical provisions in the Office’s publications. The Office organised special XML seminars for national offices and commercial patent information providers to prepare users for changes to EPO databases.

Over 500 delegates and 43 exhibitors attended the EPIDOS Annual Conference, held in Prague at the invitation of the Czech government. Here too, along with IPC reform and developments in the EPO’s databases, the focus was on the move to XML formatting.

There was an entirely new concept behind the 2004 annual conference of the PATLIB centres, held in Vilamoura on the Algarve and co-organised with the Portuguese Patent Office. Nearly 400 participants from 47 countries this time exchanged experiences with the marketing of patent information. The PATLIB network now has 300 members.

At the “Far East meets West” forum, patent information users from Japan and Europe, and for the first time from China and Korea, met in Vienna for an exchange of views. The participation of Chinese delegates was a direct result of the patent information co-operation agreement between SIPO and the EPO, which was renewed in October. This agreement is also the basis for the creation of a Chinese patent information service at the EPO’s Vienna sub-office.

As the 2003 survey of patent information usage had revealed major shortcomings, the Office reinforced its efforts to raise the public profile of patent information. A catchy slogan (“Patents – knowledge for everyone”), a new introductory brochure and a series of technical publications are intended to polish up the image of patent information. Some of these brochures are also to be translated into the official languages of the member states.

Last year the EPO launched the esp@cenet® assistant, an online service with dynamic e-Learning modules for esp@cenet® users, and held its first “virtual classroom” training courses, in which users around the world participate live via the Internet. The virtual classroom project is an attractive solution for providing training because it eradicates travel expenses and yet allows students to interact with the course trainer. The EPO is ready to make its technology available to national patent offices that are likewise interested in offering virtual classroom training to their esp@cenet® users.

The EPO website now has over 90 000 pages, totalling some 4 GB of data. Last year 14 new microsites were added, raising usage to 4.5 million page visits and 83 million hits in 2004. The introduction of a content management system this year will mean faster implementation of changes and additions.

The content of the INPADOC databases was further extended. The integration of Indonesian and Moroccan data brought the total number of patent offices whose bibliographic data is available to 73. The coverage of the legal status database grew to 44 countries with the addition of Estonian and Taiwanese data.

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