IP & international relations

 

EPC 2000

The revised European Patent Convention (EPC 2000), adopted by the diplomatic conference of November 2000, entered into force for all its contracting states on 13 December 2007. The first major revision of the Convention in the EPO's thirty-year history, it entails a series of amendments bringing it into line with developments in international law, in particular the Agreement on trade-related aspects of intellectual property rights (TRIPS) and the Patent Law Treaty (PLT). It strengthens the position of applicants and patentees, simplifies access to pan-European patent protection and introduces new legal remedies and a central limitation procedure, without departing from the fundamental principles enshrined in the original convention of 1973.

Member states

On 1 March 2007 Malta became the 32nd member state of the European Patent Organisation, and in the course of the year Croatia and Norway deposited their instruments of accession. Thus since 1 January 2008 the Organisation has had 34 member states, and as four other states have extension agreements the European patent system now offers patent protection in a total of 38 countries.

The Office performs national prior-art searches on behalf of the members of the former International Patent Institute (Belgium, France, Luxembourg, Netherlands and Turkey) under working agreements which were revised in 2005. The last of these agreements, those for Belgium and Luxembourg, came into force on 1 January 2007.

In 2007, the contracting states and the EPO made good progress with their partnership within the European Patent Network (EPN). One of the year's major tasks was full implementation of the new co-operation policy within the network, which is based on best practice exchange and expertise transfer among member states, supported and facilitated by the EPO.

Work continued on a pilot project involving users and the Austrian, Danish, German and United Kingdom patent offices, in which the EPO utilises search reports drawn up by national patent offices, and progress was also made on the common European quality system. Following the EPO's decision to stop providing special searches as of 1 September 2007, such work is now handled by the member states.

A workshop with member state representatives was held in Vilnius in June to prepare a new set of co-operation programmes focusing on technology transfer from universities to industry, targeted patent-related services for small businesses, collaboration tools and the distribution of study materials. National action plans for co-operation are being drawn up with national patent offices, and two pilot projects have been launched, on technology transfer from universities to industry and on IP pre-diagnosis services for innovative European SMEs.

Candidate states

In December 2007 San Marino was invited to accede to the EPC and thus is expected to become a new member state in the near future, along with the former Yugoslav Republic of Macedonia, which received its invitation in 2006.

Developments in the European patent system

In the course of the year the EU actively examined various ways of achieving progress on EU-wide patent jurisdiction for European and Community patents. The status report presented by the Portuguese Presidency shows that there is agreement on a number of key features, but several important issues require further discussion, for example whether a Community court should be competent to deal with European patents and whether separate procedures are needed for infringement and revocation.

The year also saw major progress towards reducing translation costs for European patents under the London Agreement, which Denmark, Germany, Iceland, Latvia, Liechtenstein, Lithuania, Monaco, the Netherlands, Slovenia, Sweden, Switzerland and the United Kingdom had already ratified, acceded to or otherwise implemented. In 2007 they were joined by Luxembourg and Croatia, and in October the French parliament finally gave its approval too, clearing the way for the Agreement to enter into force on 1 May 2008.

EC-funded activities

In the Western Balkans, synergy between EPO bilateral activities - such as consultancy, electronic publishing and training - and EU-funded technical assistance was reinforced in 2007. Under the CARDS (Community Assistance for Reconstruction, Development and Stabilisation) project on behalf of Croatia, the EPO was able to involve five member states in the common implementation of EU-funded technical assistance, organising a series of training events and study visits, while the Serbian CARDS project resulted in modernisation of the Intellectual Property Office (IPO) in Belgrade and at the end of the year put Serbia in a position to request an invitation to join the EPO.

ECAP II, the EC-ASEAN Intellectual Property Rights Co-operation Programme, came to a successful conclusion on 31 December 2007. After nearly seven years of collaboration with the EC, the Office for Harmonization in the Internal Market (OHIM), the Association of Southeast Asian Nations (ASEAN) and IP stakeholders in Europe and Asia, the project ended with the Grand Intellectual Property Exhibition held in Bangkok in November.

In June, the EPO signed a contract with the European Commission to deliver technical assistance to the EU-China Project on the Protection of Intellectual Property Rights. The four-year project is designed to improve the effectiveness of intellectual property enforcement in China by providing technical assistance to Chinese legislative, judicial, administrative and enforcement agencies and institutions.

Trilateral co-operation

The main focus of co-operation between the EPO, the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) was on re-using the work of other Trilateral Offices to reduce workloads. The memorandum of understanding signed at the annual Trilateral Conference held in Washington in November also included projects to enhance quality, harmonise patent practice, develop electronic access to documents at the Trilateral Offices and strengthen the PCT. The Trilateral Offices also agreed on a common application format in consultation with users, allowing an applicant who needs to file an application with each office to prepare a single application in a common format accepted by each office without the need for amendments related to formalities.

Bilateral projects

A strategic partnership agreement was signed with the State Intellectual Property Office of China (SIPO) to enhance co-operation between the two offices. As a result, and with a view to improving access to Chinese prior art for the EPO and European industry, SIPO made its full-text database available.

A memorandum of understanding was signed on co-operation in the development of Chinese-English machine translation systems.

A further memorandum of understanding was signed between the EPO and the Russian Agency for Patents and Trademarks (ROSPATENT), setting out the framework for future co-operation and relations, and a series of patent innovation and information events in Russia was launched in mid-2007.

International harmonisation

2007 was an eventful year for the PCT. A number of major changes entered into force on 1 April, including new provisions on missing elements and parts of the international application, the possibility of restoring a lost right to priority (subject to fulfilment of an "all due care" requirement at the EPO), rectification of obvious errors, the inclusion of Korean documentation in the PCT minimum list, and the establishment of minimum quality standards for International Searching Authorities (ISAs) in the Regulations. These changes constitute the final stages of the PCT reform exercise launched in 2001, which was designed to simplify PCT procedures and make the treaty more efficient.

At the PCT Assembly in September, agreement was reached on adding Korean and Portuguese as PCT publication languages, and India and Brazil were appointed as ISAs. The PCT contracting states finally agreed on a new supplementary international search system, due to take effect from 1 January 2009, which is designed to prevent previously undiscovered prior art taking applicants by surprise on national/regional phase entry.

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