Reports on meetings of the Administrative Council
Report on the 78th meeting of the Administrative Council of the European Patent Organisation (7 and 8 December 1999)
The Administrative Council of the European Patent Organisation held its 78th meeting in Munich on 7 and 8 December 1999 under the chairmanship of Mr Sean FITZPATRICK (IE).
The EPO President, Mr Ingo Kober, presented the Office's activities report for 1999.
Starting with a review of filing activity, the President pointed out that the number of filings had risen considerably, although the rate of growth had been somewhat slower than in the previous few years. The number of European direct applications and Euro-PCT applications in the international phase was around 122 000, of which 59% were Euro-PCT applications. The number of search requests was lower than expected, especially in the framework of the PCT. On the other hand, the number of requests for examination had grown by 14% compared with 1998. The number of oppositions was almost unchanged vis-à-vis the previous year and corresponded to the forecasts. In the appeals area, the Office expected a total of 1 220 technical appeals to be filed by the end of 1999 - about 5.2% above forecast and 4% above the figure for the previous year. The number of requests for extension of European patent applications and patents to states which had concluded extension agreements with the EPO had risen sharply. Around 15 000 such requests had been received, which represented a rise of approximately 50%.
By the end of October 1999, the total search production had reached around 95 000, representing an increase of 8.2% over the same period in 1998. The total number of equivalent examinations completed by the end of October, approximately 61 880, was 5% up on the previous year, when the comparable figure was 58 890. An increase in productivity and a rise in the net available capacity of the boards of appeal had allowed an increase in the number of cases dealt with by 13.4% to the end of October (from 1 243 to 1 410 weighted cases).
Generally speaking, the backlog in search continued to give cause for concern. However, the backlog of European direct filings had been stabilised, and the figures for the previous three months even showed a downward trend. The backlog in substantive examination had risen sharply earlier in the year, but recently seemed to have started falling slightly. The total backlog in first communications had grown from 13 900 at the end of 1998 to 20 800 at the end of October 1999. By the end of the year, about 3 230 technical appeals, 170 (5.5%) more than the previous year, would be pending before the boards of appeal. The backlog was expected to reach a total of around 1 250 appeals, up 150 on the previous year.
In 1999 the Office had carried out its first user satisfaction survey in the areas of telecommunications and computers. The two industrial sectors were at the forefront of economic development in Europe, and the users' views on EPO search work had been eagerly awaited. Overall, the results had been very satisfactory. 84% of applicants and professional representatives who had expressed an opinion rated the Office's performance as good or very good. Only a very small minority of 3% gave a rating of poor or very poor. These results were all the more pleasing in view of the Office's major recruitment and training efforts in the previous few years.
Ten years had passed since the first examinations at The Hague under the BEST project in DG 1. Just over 300 DG 1 examiners were now doing substantive examination work and almost 250 DG 2 examiners were carrying out searches. A survey by the DG 2 Harmonisation and Quality Directorate had found that the examination work performed by DG 1 matched the high quality standards achieved by DG 2.
DG 2's Harmonisation and Quality Directorate had carried out its periodic update of the study of judgments handed down by the Revocation Senates of the German Federal Court of Justice on revocation proceedings against European patents designating Germany. Up to the end of 1997, only 462 such proceedings had been initiated out of a total of nearly 400 000 granted European patents designating Germany. Of the cases brought, 67 were still pending and 202 had been settled out of court. Judgments had been delivered in 193 cases.
The European patent had been upheld in 33% of the judgments, partially upheld in 39% and completely revoked in the remaining 28%. This roughly corresponded to the distribution pattern of DG 2 decisions during opposition proceedings in 1998, when 29.6% of cases resulted in rejection of the opposition, 37.5% in maintenance of the patent in amended form and 32.9% in complete revocation. Judgments of national courts in cases involving national patents showed a similar distribution of outcomes.
In the autumn, representatives of the boards of appeal had met members of SACEPO for the eighth time to exchange views on practical problems encountered in appeal proceedings. The topics discussed included proof of prior use, the disclosure of software-related inventions, "file wrapper estoppel", possible changes to the rules of procedure of the boards of appeal and the question of a voluntary waiver of written reasons for decisions.
With regard to building matters, the President told the Council that the Vienna staff had started working at the new Rennweg building on 15 November 1999. The necessary renovation and refurbishment had been completed on time.
Moving on to personnel matters, the President pointed out that recruitment activity had been intense in 1999, especially as far as examining and administrative staff in DGs 1 and 2 were concerned. Over 8 000 applications for examining posts had been received, and 1 250 interviews had been held with promising candidates. Since the beginning of the year, 353 new examiners had started work at the Office, and a further 116 were due to start early in 2000.
It was particularly satisfying to note the Office's success in attracting new staff in cutting-edge fields such as computer technology and telecommunications.
Turning to legal affairs, the President mentioned the new Rules 23b to 23e concerning the patentability of biotechnological inventions, which had been inserted into the Implementing Regulations to the EPC and had come into effect on 1 September 1999. As a result of the clarification these had brought, the Office had again started processing the applications and oppositions involving plants and animals, which had been held up for several years.
Significant progress had been made on several points concerning the revision of the EPC. The Committee on Patent Law endorsed the proposal to delete Article 54(4) EPC. This would result in published prior applications being considered as prior art for all contracting states, irrespective of whether they were designated in the prior application. The Office had tabled a preliminary proposal to reform the system of further processing and re-establishment of rights under Articles 121 and 122 EPC respectively, so as to render the procedure for further processing more generally applicable and to deregulate the system and make it more flexible. The Committee had taken a favourable view of this, and a more detailed proposal was to be prepared, taking account of the comments from the delegations.
On 4 November, the Office had welcomed a delegation from Turkey, headed by the new President of the Turkish Patent Institute, Mr Yunus Lengeranli. The law providing for EPC ratification was being reviewed by a parliamentary committee and would be forwarded very soon to the General Assembly of Parliament. The Office had assured Mr Lengeranli that any assistance required in legal matters would be forthcoming.
In September, the WIPO Standing Committee on the Law of Patents (SCP) had completed its work on the treaty for the harmonisation of formal requirements, better known as Patent Law Treaty II. Access to a first draft of the so-called "Basic Proposals" had already been given through the SCP Electronic Forum. The Office had been closely involved in the work from the outset. It had pushed hard for the elimination of outdated formal and procedural requirements. The current draft treaty harmonised formal requirements and laid down important standards concerning the date of filing, time limit extensions and re-establishment of rights. It would now have to be checked whether PLT II would necessitate changes to the EPC or the European grant procedure.
The Ad Hoc Advisory Group of WIPO, on which the Office was represented, had continued its work on the revision of the Regulations under the Patent Cooperation Treaty. Changes to the Regulations as a result of the new Patent Law Treaty, which were to be discussed at an extraordinary PCT Assembly in March 2000, had been examined at a meeting of the PCT Committee for Administrative and Legal Matters (PCT-CAL).
The Office and the International Bureau of WIPO had continued their successful bilateral efforts to improve PCT procedures.
1 001 candidates had sat the European qualifying examination. The pass rate, unmatched in previous years, had been particularly high.
In 1999, 44% of candidates sitting the examination for the first time had passed, compared with only 36% in 1998. For resit candidates, the pass rate had risen from only 20% to 33.5%.
Regarding the area of international affairs, the President reported that the Office had hosted the 17th Trilateral Conference in Berlin in mid-November. This had followed the usual technical meetings, held in Europe earlier in the year, and a meeting of the Trilateral Working Party on Statistics at the end of September. The technical results had mainly concerned four documentation issues. Other important subjects discussed in the trilateral framework had included electronic processing of applications and the use of e-commerce in patent offices. WIPO, which had been invited to a number of pre-conference meetings, had presented its latest PCT automation plan.
The partnership with the Swedish and Spanish Offices had been strengthened, with the introduction of a common fee structure and other organisational measures. Four working groups had been set up at the first meeting of the Permanent Committee on the Harmonisation of Search Activities (PCHSA) to study search practice and procedure, search tools and methods, training and exchange of examiners and the monitoring of search quality. They had presented reports at the second meeting of the PCHSA in Stockholm on 30 September 1999.
EU-funded projects with countries in South-East Asia and with India, Argentina and Chile, to be implemented jointly by the Office and OHIM, were expected to start soon. The programme with Vietnam, also financed by the EU, had been extended to the end of 2000, and additional funding of EUR 100 000 had been granted.
The bilateral activities with the rest of Asia had continued, and negotiations on the subject of validation on request had begun with Singapore and Thailand on the basis of the mandate given by the Council.
Version 2 of the Common Software had been developed. This included new publication features and covered the management of international trademarks. It was already in use at the Finnish Office and the Eurasian Patent Office. The Hellenic Patent Office had started an automation project which included use of the Common Software.
In the field of patent information, all ESPACE® products would be in MIMOSA format by the end of the year. A 32-bit version of the software had been distributed. GLOBALPAT, the First Page database on CD-ROM, now covered 1971 to 1998. The Office and WIPO were considering how to fill the gap left by the USPTO's decision to withdraw from the project.
Use of the Office's website had continued to increase, peaking one week at over 700 000 page requests.
Use of esp@cenet® had continued to grow by 15% per month. In October, use had been made even easier for non-specialists by the look and feel of the new user interface. There was a basic search facility and a shopping basket function that would soon enable users to order documents from national offices or the EPO.
First tests of access to the Register of European Patents via esp@cenet® were being carried out. Initially, the same functions would be available as with the existing form of on-line consultation.
INPADOC legal status data now included data from Finland, Chile, Moldova and Israel. Australian data was being prepared. Much progress had been made in the project to add data on the entry or non-entry of PCT applications into the national phase.
The Council unanimously approved the extension of the President's term of office for a further period of three years, ending on 31 December 2003.
The Council decided to accede to Turkey's request to attend its meetings and those of the Committee on Patent Law as an observer.
With a view to the revision of the EPC, the Council decided to mandate the Committee on Patent Law to study the following new proposals in detail:
- Article 11 (160(2)) - Establish long-term arrangements for participation of national judges in proceedings before the Enlarged Board of Appeal
- Articles 33 and 35 - Enable the Administrative Council to amend the EPC to comply with EU legislation and international treaties
- Article 55 - Introduction of a more general "grace period"
- Article 69 - Strengthen European patents by clarifying the extent of protection (equivalents, "prosecution history estoppel")
- Article 112 - Enable parties to file appeals in order to have a case reviewed by the Enlarged Board of Appeal.
The Council also decided that, at its next meeting in Dublin in February 2000, it would convene a Diplomatic Conference from 20 to 29 November 2000, with the option of extension and conclusion in the spring of 2001. The Committee on Patent Law would deal with the revision issues which were still pending. There would be a meeting at Administrative Council level to prepare for the Diplomatic Conference, preferably in June 2000; failing this, an extraordinary meeting would be held at a later date.
The Council approved the 1998 accounts and, after discussing the Board of Auditors report and hearing the opinion of the Budget and Finance Committee, discharged the President in respect of the 1998 accounting period.
The Council adopted the 2000 budget, with income and expenditure in balance at DEM 1.59bn.