Reports on meetings of the Administrative Council
Report on the 67th meeting of the Administrative Council of the European Patent Organisation (10 to 13 June 1997)
The Administrative Council of the European Patent Organisation held its 67th meeting in Helsinki from 10 to 13 June 1997, with Sean FITZPATRICK (IE) presiding.
The Council elected Daniel HANGARD (FR), Director of the French Patent Office (INPI) and head of the French delegation on the Council, as Chairman of the Budget and Finance Committee for a three-year term with effect from 15 September 1997.
The EPO President, Ingo KOBER, presented the 1996 annual report. He also reported to the Council on the Office's following activities during the first six months of 1997:
The number of applications had risen further. In the first four months of the year, the Office had received a total of 30 486 European patent applications (outstripping the 1997 forecast by 10.1% and more than 13% above the figure for the same period in 1996). The increase was accounted for by a rise in both the number of European direct filings (7.6% above the forecast for 1997 and 3.3% up on 1996) and of Euro-PCT applications (12.4% above the forecast and over 23% up on 1996). Of the total, 13 755 were European direct and 16 731 Euro-PCT applications, showing that the proportion of Euro-PCT applications - now at 55% - was continuing to rise. If the rate of increase so far observed were to be maintained for the whole year, the total number of applications received in 1997 would top 90 000. Although search and BEST DG 1 examination production had met the planned targets, backlogs in DG 1 would nonetheless increase during 1997.
The number of appeals lodged with a technical board of appeal by April 1997 was approximately in line with the forecast of 441. Compared with the corresponding period of the previous year, however, the number of appeals filed had increased by 23%. The increase had been particularly pronounced in chemistry (33%) and physics (over 80%). In the first four months of the year, fewer technical appeals had been dealt with than in the corresponding period in 1996 (445 equivalent cases compared with 487), meaning that the backlog had grown a further 16%.
The increase in the use of electronic search tools continued with use of EPOQUE I rising by some 20%, this being primarily attributable to the increased use made of EP and US full text facilities and the EPODOC database. Use of the EPOQUE II viewer was up 30%, with users taking advantage of the additional text data captured in the OCR project. An objective indicator of the increasing use made of electronic tools was the stability in the average number of documents cited in search reports, despite the fact that the number of classified paper search groups consulted had been falling steadily. Important new additions to the non-patent literature available for consultation on line were planned, with contracts currently in preparation with the IEEE and the API to extend coverage in the fields of electricity and physics. New versions of DOCTOOL, which recorded classifications of new documents and re-classifications of existing documents, were currently under development and would enable new documents to be delivered to examiners electronically and the classifications to be entered on-line, meaning that search databases could be updated very quickly. A new inventory database for non-patent literature was also in preparation which would allow users to find links between articles and abstracts of articles and then to determine where they could be found in internal or external databases.
During the period under review the Receiving Section work linked with BEST DG 2 searches was transferred to Munich where the staff concerned received extensive training from their counterparts in The Hague. The transfer would allow a better balance of workload between the two sites.
The new training methods developed by DG 2's training directorate after a careful analysis of the tasks undertaken in DG 2 had begun to be used on new recruits. This entailed a shift towards centralised training, which in turn would ensure that training of recruits working in different technical areas was more closely harmonised.
This year's EUROTAB meeting had been held in Paris on 22 and 23 May. The issues discussed included acceptable types of claims for classical biotechnology inventions and the requirements for the successful claiming of priority, in particular the concept of "the same invention" within the meaning of the rule concerning priorities, a controversial subject of vital importance to the applicant.
Moving on to automation, the President explained that during the previous year a production version of the electronic filing software had been developed. It was known as EASY version 1.1 and was now being tested by a limited group of some 200 applicants and representatives from EPC member states. Some users had already tested previous versions of the software. Assuming the results were positive - and all the signs so far were that they would be - steps would be taken to make EASY available to all users of the European system. The aim of the EASY project was to offer full on-line electronic filing. The latest version of the software represented the first step towards achieving this goal, since the existing rules still required the application to be filed on paper in parallel with the electronic copy on diskette. In other words, the paper copy of the application remained the "authentic copy" for the moment. Prior to the introduction of genuine on-line filing, there were legal issues relating to authenticity and security to be resolved and the EPO was in close contact with its member states and trilateral partners with a view to arriving at a consensus on the ways that these problems must be solved.
Moving on to legal and international issues, the President began by announcing that the procedures for ratification of the revised Article 63 EPC had now been completed in all member states. Ireland, which had been the last to do so, had deposited its instrument of ratification in Bonn on 16 May. According to Article 4 of the Revision Act, the revised version of Article 63 EPC would therefore enter into force in all member states on 4 July 1997.
Once again the number of candidates for the European qualifying examination had risen substantially. 952 candidates had sat the examination, some 10% more than the previous year. Of these, 490 were sitting the examination for the first time.
The accession of Finland to the European Patent Convention had also resulted in the addition of 163 Finnish patent attorneys to the list of professional representatives at the expiry of the transitional period laid down in Article 163 EPC. The list now contained more than 5 700 names. The list itself had undergone a change this year in that it was now available not only in the familiar printed form but also via two modern distribution media CD-ROM and the Internet.
The 1989 Agreement relating to Community patents had now been ratified by seven of the twelve signatory states. All this meant that it remained open as to when or whether the Agreement would enter into force. This was all the more so at the present because the European Commission was in the process of drawing up a green paper on further strengthening of the European patent system, in which the question of implementation of the Community Patent and its relation to our own Convention would be central. The impression gained from discussions held with Mrs Cresson and Mr Monti was that the Commission was keen to pursue development of the patent system in Europe vigorously, promotion of innovation and growth policy being at the very centre of common interests. The patent system had thus gained in importance in Brussels. The Commission's rather legalistic, dogmatic approach to the development of the European patent system was now giving way to one that stressed the commercial aspects, and hence also the cost issues. The green paper was due to be published shortly.
Two CEIPI/EPI basic courses in European patent law had been held in Helsinki. The first, between 1994 and 1996, had been held in the offices of Berggren, the second, from 1995 to 1997, in the offices of Oy Kolster. A seminar on European patent law had also been held in November 1996 for participants from Nordic countries. There were even some participants from the Baltic countries. All these events were very well received by the participants. CEIPI had been in contact with the Technical University in Helsinki for some time with a view to organising a CEIPI/EPI basic course there. The plan was to offer day-long training courses at regular intervals according to the CEIPI/EPI basic programme. Some would cater for Finnish patent attorneys entering the profession, others for more experienced practitioners. The detailed programme was currently in preparation and would start in the autumn.
CEIPI had once again held the regular courses it normally staged at this time of year. The two seminars held in January and February in preparation for the European qualifying examination had drawn an enthusiastic response from across Europe. The basic training in European patent law offered by CEIPI's international section was becoming increasingly popular, with a notable rise in the number of participants from France, Italy and the Nordic countries. The EPO itself had also been involved in the organisation of training courses.
Several hundred examiners, patent attorneys and judges had received training during courses organised jointly by the EPO and other organisations (EPI, CEIPI, WIPO and Queen Mary College) and our own member states (Austria, Germany and Switzerland). Participants came from practically all over the world. The month of June alone had seen three such seminars.
Once again, the increased use of the option of extending the protection offered by European patents to non-member states had continued. So far, some 2 800 valid requests for extension to the states with extension agreements (Albania, Latvia, Lithuania, Romania and Slovenia) had been made in 1997, compared with 1 700 in the same period in 1996. In addition to the co-operation and extension agreements with these countries, supplementary working agreements had also been signed to take account of the consequences of the fee reform - namely the deferral of the due date of payment for the designation fees (or, here, extension fees) - to the satisfaction of all concerned. Only Albania had yet to respond, owing presumably to the situation which had received so much media coverage of late.
The Office's Common Software Unit was also being kept busy with interest in the software being shown from some of our own member states, such as Greece and Ireland, as well as countries such as Viet Nam. The Common Software had already been installed in 11 industrial property offices or international organisations around the world.
With the completion of RIPP I and RIPP II in 1996, RIPP III was started in January. This new programme put a greater emphasis on increasing intellectual property awareness amongst attorneys, businesses and judges. One project, for example, was the preparation of an information pack for distribution to businesses operating in the RIPP countries comprising brochures, a video and an interactive CD-ROM, which was expected to be available later in the year.
The ECAP programme was scheduled to finish at the end of the month, and the last major events had been the meetings of the heads of the offices of the ASEAN countries with industry. These meetings, which were organised with the assistance of the national patent offices, took place in London, Paris, Milan and Munich. An updated ASEANPAT CD-ROM, similar to our ESPACE-ACCESS series but covering the seven ASEAN countries, was launched with funding from the ECAP programme. The final meeting of the ECAP Programme Advisory Committee, which was staged by the European Commission on 4 June, had decided to launch the ECAP 2 programme, in which the EPO had been requested to participate.
The seventh meeting of the Joint CPO-EPO Committee had taken place on 25 February in Munich at the EPO's invitation. An agreement was signed under which the transfer of EPOQUE technology to the Chinese Patent Office would be carried out in parallel with the installation of the necessary technical infrastructure, as agreed between China and a European consortium. This was expected to result in EPOQUE being operational in China by the end of 1998.
Activities in the CIS countries had concentrated on the final stage of the Tacis Uzbekistan Project (to the end of April), the regional activities under the Tacis Regional Project and bilateral EPO-funded activities under the ICON project. The main activities in Uzbekistan had focused on various aspects of training, both for patent attorneys and national patent office staff, and included a workshop on the PCT, study visits (to Albihns in Sweden, for example) and a series of courses held at the EPO and the Austrian Patent Office.
Those regional activities which were to continue under Tacis until mid-1998 were aimed at assisting the Eurasian Patent Office and supporting the development of national patent offices. Besides benefiting from various other support actions, the Eurasian Patent Office was being equipped with the Common Software and various technical facilities, and Mr Grigoriev, its Vice-President, had been invited on a study visit to DG 2.
The EPO was the most frequently used international searching and preliminary examining authority, and its activities under the PCT had continued to grow in recent months. The EPO was also closely involved in the preparations for an extensive revision of the Regulations under the PCT. A draft decision containing proposals was expected to be ready for the forthcoming annual PCT Assembly. The project run jointly by WIPO's International Bureau and the EPO since early 1996 and aimed at improving electronic data exchange, had made further progress and would be the subject of a special meeting planned for July with other PCT authorities which had expressed interest in this work.
Turning to patent information, the President explained that significant changes in the world of patent information since 1988 had made a revision of European patent information policy one of the priorities facing the Organisation. The meetings and discussions on patent information policy had culminated in Hearing 97, which had been held in March. Interest in the Hearing had been considerable, and its many participants had represented a good cross-section of the different players on the patent information stage.
PATLIB was the framework for the efforts made by member states and their regional patent information centres - in tandem with the EPO - to support small and medium-sized enterprises (SMEs), universities and inventors by making information resources available locally, in customised form and, crucially, in the local language. The annual PATLIB Conference had taken place in Monaco in the second half of May. The conference, restricted to specialists from national patent offices and regional patent information centres, attracted a record 130 participants. In parallel with the conference, the general public was invited to a series of seminars, as well as an exhibition where 17 exhibitors presented patent information products and tools. Both events had been well attended.
The MIMOSA mixed mode software had been enhanced to support jukebox and network functions and, in close co-operation with the USPTO, an international tender procedure had been conducted for the production of the First Page Database on CD-ROM. The contract had eventually been awarded to the Bundesdruckerei in Germany.
Other areas of patent information had seen a broadening of the scope of data available. For EPIDOS-INPADOC, there had been new legal status data from Brazil, utility model data from Austria and Denmark, and from Ireland and Spain backlog legal status data covering the period 1992-1995.
Completing his report, the President pointed out that new ESPACE CD-ROM discs had appeared covering the first pages of EPO and PCT patent applications from 1978 to 1987, the CD-ROM backlog of Portuguese documents had been completed and the ESPACE-MC series covering Monegasque data from 1957 to 1996 had also been produced.
At its meeting in Helsinki, the Council also considered the issue of accession to the EPC by a number of states - the Czech Republic, Hungary, Poland, Slovakia and Slovenia - which had filed formal requests. The Council decided that in addition to Slovenia, the other states should henceforward also be granted observer status on the Administrative Council to enable them to make optimum preparations for possible accession. The Council also agreed to authorise the President to commence negotiations on the technical aspects with a view to preparing an Administrative Council decision on accession under Article 166(1)(b) EPC, including transitional arrangements such as the extension system, and to report to the Council on the outcome, if possible by the end of the year.
The Council decided to authorise the President to enter into negotiations with the Republic of Bosnia-Herzegovina on the basis of existing co-operation and extension agreements and to conclude a similar agreement.
The Council approved the renewal of the agreement with WIPO on the Office's role as an authority under the PCT. The agreement was due to expire at the end of its ten-year term. The Council approved in principle the Office-wide extension of BEST and mandated the Committee on Patent Law to study the project in the context of the Convention and to submit its conclusions and recommendations to the Council in due course.
The Council approved in principle the plans for the extensions and connecting buildings for the European Patent Office's branch in The Hague. A firm of architects would be commissioned to conduct the preliminary studies and design planning and draw up a binding master budget. The Council also authorised the President to enter into negotiations with a view to purchasing a building to house the Office's Vienna sub-office.
The Council also approved the new patent information pricing policy proposed by the President.
The Council further approved the co-operation programmes with certain member states (Ireland, the Principality of Monaco and Finland), as well as projects aimed at improving the services offered by patent information centres in Germany.
Finally, the Council approved the proposed appointments/reappointments of chairmen and members of boards of appeal. The number of appeals in chemistry had necessitated the creation of a fifth board of appeal in this field.