ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 76th meeting of the Administrative Council of the European Patent Organisation (Munich, 15 and 16 June 1999)
1. The Administrative Council of the European Patent Organisation held its 76th meeting in Munich on 15 and 16 June 1999, with Sean Fitzpatrick (IE) presiding.
2. The EPO President, Ingo Kober, presented the Office's 1998 annual report. He then reported to the Council on Office activities during the first half of 1999. The EPO's workload had increased less sharply than in 1997 and 1998. The number of Euro-PCT applications was continuing its upward trend and was 6% above last year's figure. The breakdown of these figures showed that Euro-PCT applications accounted for 59.6% of the total. This corresponded almost exactly to the Office's planning, which was based on 60%. In total, the Office had received 114 820 patent applications in the past 12 months, some 10 080 above the comparable figure for 1998.
The workload in the search area came to a total of 120 120 searches in 1998, a rise of 13%. Search production as at the end of April 1999 was almost 9% higher than at the same time in 1998.
In the examination area, the strong increase in the workload of demands for international preliminary examination under PCT Chapter II had continued through 1998. The Office had received 27 500 such demands, a rise of 25%. This represented a 15% increase in the global workload for the examining and opposition divisions. Production in the examination area had risen by 3.5% in 1998, to a total of 70 950 equivalent examinations. In the first four months of this year, production had been 6% above the comparable figure for last year. 11 700 European patents had been published between January and April this year, a rise of 8% over the same period last year.
The number of technical appeals filed had fallen by 5% in 1998. During the first four months of 1999, more technical appeals had been dealt with than last year (351 compared to 338, making an increase of 3.8%). After taking into account the different weightings for ex parte and inter partes appeals, the increase in production was 6.2%.
In the area of the grant procedure, the number of complex applications - or mega-applications - was on the increase. After study by a joint DG 1, 2 and 5 working party, the Office had decided to apply strictly the provisions of Articles 5 and 6 PCT and Articles 83 and 84 EPC. More frequent use would also be made of the provisions of Article 17(2) PCT and Rule 45 EPC in order to issue a partial search or, in exceptional cases, no search at all if the legal requirements were infringed to such an extent that no meaningful search was possible.
The role of documentation at the EPO had always been a crucial one. At the beginning of this year, the medium-term priorities had been fixed. The objectives remained the same: to increase the use of electronic documentation and to perfect the corresponding search tools. The following figures illustrated the size of the documentation:
- the rate at which new documents were entering the documentation was 40% higher now than in 1995
- each year over a million corrections to the databases were made
- user access times had already been reduced for 10 years of documents (representing 2 terabytes or 2 000 gigabytes of data) by storing them on disks and making them available on-line; by the end of 1999 all of BNS (some 15 terabytes) would be accessible in this way
- a further 300 000 Japanese documents had recently been loaded onto BNS.
Numerous large users had requested copies of parts of BNS. Many users were still unaware that the Office had access to some 40 000 periodicals (non-patent literature) through databases of abstracts or full-text searchable sources.
For internal users, a central contact point had been created within the documentation department. Called "DOCHELP", it would receive all questions on documentation and provide rapid solutions when mistakes or missing documents were reported. There was also an EPOQUE website on the Intranet with all the EPOQUE user documentation and a list of Frequently Asked Questions (FAQs) and tips. The general documentation site now also included the text of the ECLA classification. A DG 1 co-ordination site had been set up to facilitate the use of all the sites and resources available on the EPO Intranet.
The harmonisation exercise carried out in 1998, comprising a study of applications passed to grant, had now been evaluated. The quality of the work was measured in terms of the proportion of applications with major deficiencies (novelty, inventive step, added subject-matter, sufficient disclosure and clarity) in a number of randomly selected applications. According to the results, the quality of the work done in the examination area had further improved, in both DG 2 and BEST-DG 1.
Two new boards of appeal had started work on 1 January 1999, one in chemistry, the other in physics. The total number of boards was now nineteen. Three new questions had been referred to the Enlarged Board of Appeal by technical boards.
The first, G 1/99, concerned the extent to which a patentee who was not an appellant could amend his patent during opposition appeal proceedings, ie the meaning of the prohibition of reformatio in peius for an opponent who was the sole appellant.
The second, G 2/99, was linked to G 3/98, concerning interpretation of Article 55(1) EPC laying down the grace period in cases of abusive prior disclosure of an invention to the applicant's detriment. The question posed in G 3/98 was also of importance in another case and had therefore been referred to the Enlarged Board of Appeal a second time.
The third question, G 3/99, related to the admissibility of an opposition and an appeal jointly filed by a number of persons.
Two eagerly awaited decisions from Technical Board of Appeal 3.5.1 (T 935/97 and T 1173/97) on the patentability of computer software had now been handed down. The board had concluded that computer program products could be patentable if they resulted in additional technical effects which went beyond the "normal" physical interaction between software and hardware associated with running the program.
New decisions of the boards had been available on the Office's website since the beginning of this year. The database contained 'T' decisions prepared since 1997, and would be enhanced gradually over the next few months to include older decisions and the decisions of the Enlarged and Legal Boards of Appeal.
By the end of January, Y2K compliance testing of the first major group of computer systems had been completed. All but one of the remaining systems would be tested by the end of June, with the final test scheduled for July.
The documentation databases had been adapted, and the software modifications would be completed in June. The reload of all EPO databases under EPOQUE had been prepared and would take place in the third quarter of this year. BNS and the INPADOC databases had already been made Y2K-compliant.
There had also been important developments in legal affairs.
Important texts intended for publication in the Official Journal - especially decisions of the Council or President - would henceforth be published first on the Office's website, so as to inform the public as quickly as possible.
As part of the fee reform, the search fees payable by ex-IIB states would be reduced.
The Office had implemented a further consequence of the fee reform by stipulating that with effect from 1 July 1999 the Office would carry out an international-type search on national applications filed at national offices if the law of the country in question allowed for such searches. Unless otherwise agreed between the Organisation and the national offices, the fee for this type of search on a national first filing would be EUR 945, corresponding to the price of an international search at the EPO after 1 July. For national applications claiming a priority (ie not first filings), the fee would remain higher, at EUR 1 482. The new pricing structure for international-type searches was only of relevance for Switzerland for the time being.
At its meeting in mid-March, the Committee on Patent Law had pursued its work on the points for revision of the European Patent Convention referred to it by the Council. The Office's paper arguing that Article 23(3) EPC should not be amended in order to make the TRIPs Agreement and the European Convention on Human Rights binding on the boards of appeal had received a favourable opinion from the Committee. The proposal to bring Article 52(1) EPC into line with the TRIPs Agreement and to delete at least the reference to computer programs in Article 52(2)(c) EPC had been approved in principle. Finally, the proposal aligning Article 53(a) EPC with the TRIPs Agreement had also been given a favourable opinion. The EPC revision exercise was thus progressing steadily.
Work on the Patent Law Treaty II (PLT II), the WIPO treaty for harmonisation of formal requirements under patent law, had been largely completed. At its meeting in April, the Standing Committee on Patent Law (SCP) had adopted a large part of the texts which would be the subject of the "Basic Proposals" for the diplomatic conference. The final text would be derived by fine-tuning this at a meeting in September. The diplomatic conference to conclude PLT II would be held in Geneva from 11 May to 2 June 2000. The Office had always been actively involved in efforts to harmonise patent law. The European Patent Organisation had been granted the status of "Special Member Delegation" in the rules of procedure of the diplomatic conference.
Work on revision of the Regulations under the Patent Cooperation Treaty had continued in WIPO's Ad Hoc Advisory Group, in which the Office was involved. At the moment, the PCT Administrative Instructions were being examined with a view to making changes to permit electronic filing.
The introduction of PHOENIX had allowed the Office to conclude an agreement with the JPO for the electronic exchange of priority documents. This had entered into force in January 1999, releasing applicants from the obligation to file a copy of the priority document if the priority claimed was a European patent application, an international application filed with the EPO or the JPO as receiving Office under the PCT, or a Japanese patent or utility model application. As a result, the Receiving Section was no longer asking applicants to submit copies of such priority documents.
The European qualifying examination had been held in March 1999. In 1994 there had been 666 candidates for the examination, 895 in 1995, 1 095 last year, and over 1 100 this year. These figures showed that the profession of European patent attorney was very attractive to new generations of scientists and engineers, and that the wish to join the profession was present in all member states. In 1999, there had been 2 candidates from Finland, 2 from Ireland, 4 from Ellas, 11 from Spain, 14 from Austria, 17 from Switzerland, 23 from Belgium, 27 from Denmark, 40 from the Netherlands, 40 from Sweden and 90 from Italy. The largest numbers had been from France (127), the United Kingdom (160) and Germany (426). It was however rather worrying to see that the ratio of candidates sitting the examination for the first time to those resitting it was continuing to fall, and quite rapidly of late. In 1996 the ratio had been comparatively positive, at about 5 to 4 in favour of the candidates sitting it for the first time. This year, though, it was about 450 to 650 - in other words, more than reversed. Despite the rising number of candidates, the absolute number of successful candidates had remained fairly constant, at somewhat under 250 (239 in 1996, 234 last year).
Turning to international affairs, the President first mentioned the momentous step taken earlier this year when the Council had invited eight countries which had requested to accede to the European Patent Convention to join the Organisation from 1 July 2002. In the meantime, the system of extension of European patents and patent applications to states which were not yet members of the EPC had continued to develop positively, as expected. 10 000 valid requests for extension to the six existing extension states had been received in 1998.
Co-operation with the Swedish and Spanish offices had entered a new phase with the signature of the PCT partnership in Madrid on 10 February 1999. Harmonisation of search quality was of extreme importance for the future of the PCT itself, and the agreement stipulated the establishment of a "Permanent Committee on Harmonisation of Search Activities".
Within the framework of the trilateral co-operation programme on search methods, the three offices had run a "concurrent search" pilot project during the last year. 80 applications had been processed in parallel by examiners from the three offices, working in close consultation. This experience had given each of the offices a better insight into the search methods and tools used by the other two. Additional relevant documents - especially Japanese documents - which could be cited in the search reports had been found as a result of the parallel search procedure. However, the additional procedural overheads were heavy.
The 13th RIPP co-ordination meeting had taken place in Vilnius in January and had adopted the working programme prepared by the EPO. As usual, a significant part of the project was the joint EPO/RIPP training programme, with 18 seminars and training actions covering all aspects of industrial property. New language courses for staff of national offices had started in May. The co-ordination meeting had also approved the transfer of the production of the regional CD-ROMs (PRECES for patents and TRACES for trademarks). Financing of production would be taken over by the countries concerned (Bulgaria, Hungary, Latvia, Lithuania, Poland, Romania, Slovakia, Czech Republic) and the Hungarians would be responsible for all technical aspects. The Office was currently working on converting PRECES to MIMOSA format, with the goal of completing it before the handover. Lastly, discussions had taken place with the Commission on a one-year extension of RIPP 3 (for 2000) and the implementation of a RIPP 4 project, which would cover part of 1999 and 2000 on the same basis as previous RIPP projects.
In Africa, the Office had mainly focused its activities on the African Regional Intellectual Property Organisation (ARIPO) and South Africa. With the UK Patent Office and ARIPO, it had organised a regional conference in Nyanga (Zimbabwe) on "Marketing of Industrial Property Services", attended by participants from 17 African states. An expert mission on pharmaceutical products had gone to Egypt, and assistance had been given to the Tunisian Office in preparing its modernisation plan. An EPO expert had also visited South Africa, where a round-table discussion on pharmaceutical products was being organised, together with ARIPO and the European Commission, in the second half of this year. A regional seminar was also planned.
Together with WIPO, the Spanish Patent and Trademark Office and the Uruguayan Patent Office, the EPO had organised a "Latin American Regional Seminar on the Patent Cooperation Treaty" in Montevideo. Brazil's INPI had started to implement its modernisation plan, administered by the WIPO. Despite the delay which had resulted from the fall in the Brazilian currency, the modernisation plan was proceeding, initially with medium-term expert missions on drafting guidelines for the examination of pharmaceutical and biotechnological inventions. A further mission had provided training in patent classification. Under the EPO's technical supervision the Mexican Patent Office was going ahead with the acquisition of the technology needed to produce its CD-ROM series completely in-house. The transfer of technology for data validation for the production of the Mexican ESPACE-B series was now ready.
In the field of automation, the Office had launched the POLITE project (Patent Office LITE) aiming to automate the internal administrative procedures of small and medium-sized national patent offices. Exploratory missions were being carried out with experts from EPO members states' national offices, and a first pilot project would be developed for ARIPO.
A newly developed version of the Common Software provided for the management of international trademarks and included an improved publication module. The Argentine Office was currently evaluating a prototype of the software.
The ninth interstate council on industrial property for the CIS countries had been held in Kiev in early February. This meeting had decided inter alia to begin regular production of the CIS regional CD-ROM series from the beginning of next year. Based on the test disc produced by the EPO with TACIS funding, ROSPATENT would co-ordinate regular production on behalf of all participating countries.
A group of high-level ASEAN officials had visited the Office as part of a study tour organised in co-operation with WIPO which had also included stays at WIPO, OHIM and the Eurasian Patent Office. Their objective had been to study regional patent and trademark systems in operation today which might form the basis for a regional patent and trademark system in the ASEAN area.
Implementation of the China II project, financed by the European Commission, had started at the beginning of this year. Its first task was to recruit the necessary staff. A project office had been opened in Beijing and staffed with a locally-recruited project director. In Munich, a project team had been set up, with a project administrator on loan from the French Office. The first work programme had been discussed at a meeting held at the beginning of June.
Other activities under the Office's technical co-operation programme had continued in the field of training and assistance for EPOQUE. The keyboarding of documents included in the PCT minimum documentation for the period 1920-1970 was being carried out satisfactorily by the Chinese authorities.
In the field of patent information, efforts to raise patent information awareness had been reinforced by participation in twelve fairs and exhibitions, mostly in co-operation with national offices, but also through 23 training courses held around Europe. As regards exhibitions, there had been two highlights during the first half of the year. First, the Hanover Fair, a major project bringing together expertise from throughout the EPO but with esp@cenet once again the major attraction. Politicians from several European countries, the press, and hundreds of visitors had praised our Organisation for making patent information available free on the Internet in close co-operation with the national offices of the member states.
The second highlight had been the PATLIB conference and exhibition in Lucerne, organised in collaboration with the Swiss Patent Institute and held at the same time as the EPO's travelling exhibition. Bringing these two events together had certainly boosted the success of both, with more than 200 participants from nearly 30 countries taking part in PATLIB 99. The number of patent information centres in the network continued to grow; membership now stood at around 140. Up-to-date details of each centre were available on the EPO website, and an annual directory (now in its fifth year) listed the centres in each member state.
Use of esp@cenet had grown considerably since its launch. Today, there were approximately 300 000 hits per day on the service hosted by the Office. In February 1999, a big step forward had been taken when the full facsimile documentation from BNS was made accessible through esp@cenet. The "shopping basket" functionality, allowing users to order documents via their national offices, was being tested and would be available in mid-1999.
A major promotion drive for the esp@cenet service had been undertaken in the first half of 1999 in association with the national offices of the EPO member states. Over 100 000 copies of the esp@cenet information brochure had been mailed throughout Europe since the beginning of the year.
Ongoing developments to the search engine would allow the retrieval and display of patent families in esp@cenet, searching with right truncation and the identification of ECLA codes, as well as access to the Register of European Patents later this year. New help pages had been added to esp@cenet and the text of the ECLA classification would be available soon.
The growing use of the Internet had also multiplied the number of queries to our information service. Despite peaks of some 100 queries per day, the Office still managed to run a "same-day" answer service for most questions.
Increased patent awareness and use of esp@cenet appeared to have influenced demand for other Office publications. Requests for searches in the INPADOC databases had increased by 15%. The Japanese section had seen a 15% increase in demand for its services in 1998 compared with 1997. In the area of patent publications, demand for patent documents to be sent by fax had increased by 25%.
The number of countries covered by the legal status database (PRS) had increased from 24 to 27. All legal status data for the Philippines and PCT legal status data (national phase) for Japan and Lithuania were now available. In addition to existing legal status data, Austria, Canada, the United Kingdom and the United States now also delivered PCT legal status data (national phase).
3. The Administrative Council noted the basic assumptions underlying the budget estimates, financial plan and business plan (2000 - 2004).
4. The Council approved the Office's proposals for the implementation in patent law of EU directive 98/44/CE on the protection of biotechnological inventions. The amendments and additions to the EPC Implementing Regulations decided upon are aimed at rapid implementation of the directive (see OJ EPO 1999, 437).
5. The Council also noted progress reports on the co-operation programmes running between the EPO and most national offices in the field of patent information. It also gave a favourable opinion on the President's proposal to extend access to esp@cenet to future member states (countries invited to accede to the EPC and those linked to it by extension agreements).
6. The Council reappointed Lars Björklund (SE), alternate representative of the Swedish delegation, as chairman of the Working Party on Technical Information. It also approved the proposals for appointment/reappointment of members of the boards of appeal and the Enlarged Board of Appeal.