Reports on meetings of the Administrative Council
Report on the 80th meeting of the Administrative Council of the European Patent Organisation (6 to 8 June 2000)
The Administrative Council held its 80th meeting in Limassol at the invitation of the European Patent Organisation's newest member state, Cyprus. It was the first meeting held under the chairmanship of Roland Grossenbacher (CH), who recently succeeded Sean Fitzpatrick (IE).
Mr Grossenbacher opened the meeting with a tribute to Kurt Haertel (DE), the founding father of the European patent system, who passed away in March this year. Mr Haertel will be remembered at a special event being held prior to the Council meeting in October.
The Council decided to extend the mandate of Curt Edfjäll as Vice-President DG 4 for a further five-year period, starting on 1 July 2001.
Serge Allegrezza (LU) was unanimously appointed chairman of the Budget and Finance Committee with effect from 15 September 2000. He succeeds Daniel Hangard (FR), to whom the Council expressed its thanks for his chairmanship over the last three years.
The Council appointed the chairman of Board of Appeal 3.3.7 in the chemistry field. It also appointed a number of new members of the boards of appeal, and reappointed for a further term some existing members of the Enlarged Board of Appeal, the boards of appeal and the Disciplinary Board of Appeal. A Dutch national judge was appointed as an external legally qualified member of the Enlarged Board of Appeal.
The EPO President, Ingo Kober, presented the Office's 1999 annual report and his report on the Office's activities during the first half of 2000.
The number of filings continued to dominate the work situation in the Office. In the first four months of the year, the numbers of Euro-direct and Euro-PCT filings were up 9.7% and 13.4% respectively over the same period in 1999. The combined figure went up by 12% to 43 500 in total. Euro-PCT applications accounted for 60.5% of the total. In the twelve months to April, some 126 130 European applications were filed. This was 11 190 more than in the preceding twelve-month period, and amounted to an increase of 9.7%.
In the first four months of this year, the workload in the search area reached 46 062, 13% up on the same period last year and 5% above Office forecasts. The increase was primarily in Euro-direct filings. Production was 10% higher than in the same period last year. Although total production was in line with forecasts, this was not the case for European searches, which do not receive the same priority treatment as PCT files.
The examination workload corresponded to forecasts and was 34% up on the same period last year. Production in this area has been adversely affected by industrial action in Munich. The number of European examinations completed fell by almost 40% during the first four months of this year. The actual number of patents published was down 6.6%.
A total of 430 technical appeals were filed in the first four months of the year, around 11% above the forecast, but some 5% down on the corresponding figure for 1999 (453). The number of technical appeals dealt with in the same period rose 19% compared with last year (667 equivalent cases as opposed to 559 in 1999). The total number of technical appeals pending at the end of April was 3 133. This was 32 fewer than at the same time last year, representing a decrease of 1%.
The departments responsible for the grant procedure are still developing rapidly.
The new version of EPOQUE-JAVA or EPOQUE-NET has been installed on examiners' workstations. The incorporation of a single viewer for all document types, whether text or image, represents a significant improvement to the Office's search tools. Document access and navigation within documents have also been greatly simplified. The downloading of the BNS collection from the tape robots onto magnetic discs is now complete, and the entire collection is now available on-line in real time.
Regarding the granting of European patent No. 0 695 351, which has become known as the "Edinburgh patent", the President said that a number of oppositions had been filed and that there may be more to come, because the opposition period runs until 8 September 2000. An opposition division was formed in April, and extended to include a legally qualified member. The patentee has submitted revised claims well in advance of the expiry of the opposition period and, with regard to claims 47 and 48, defended his patent by adding the qualification "non-human".
The opposition division has already issued a first communication notifying the parties that the patent will only be defended within this restricted scope. It also stated that, according to the description of the patent and the obvious aim of the patented invention, the subject-matter of the patent was neither the cloning of human beings, nor cloning in general.
Internal measures have been taken to prevent similar situations occurring in future. The "early warning system" for applications filed in this sensitive area of technology has been improved. All examiners in this field have been reminded of the heavy responsibility they bear, especially when examining whether an invention should be excluded from patentability on the grounds that it is contrary to "ordre public" or morality within the meaning of Article 53(a) EPC or because it does not meet those requirements set out in the Implementing Regulations which were incorporated into European patent law from the Biotechnology Directive. Legally qualified members will sit on examining divisions more often in future, and the checking mechanisms implemented by the directors responsible and by Directorate Harmonisation and Quality have been reinforced.
Another area where there is controversy about patentability is business and administrative methods. The EPC explicitly excludes the patentability of methods of doing business as such. Even so, there has been a large increase in the number of applications in these areas because of the expansion of e-commerce on the Internet and decisions handed down by the US Court of Appeals for the Federal Circuit that business methods are not necessarily excluded from patentability in the United States. The number of applications of this type waiting to be searched and examined has more than doubled over the last two years and at present totals around 400.
In practice, the vast majority of these applications do not simply claim abstract business methods, but rather describe technical means (eg computer networks) for carrying out these methods. They are not considered to relate to methods of doing business as such, and are examined in exactly the same way as any other application. They are thus patentable in Europe if they fulfil the normal requirements for patentability, including novelty, inventive step and industrial applicability. However, it has to be stressed that, in a strict interpretation of patent law, an invention must overcome an objective technical problem in a non-obvious way. In other words, it is the technical invention to which a "business machine" may relate which makes it patentable, not simply its commercial ingenuity.
Predictably, this topic has generated a great demand for information from representatives, applicants and the public alike. The Office has taken every opportunity to make its position clear and has frequently supplied speakers for seminars and conferences.
The Office's information systems are developing in ways which allow more communication with the various users.
Thanks to the epoline® range of products, the Office is well on the way to a state-of-the-art system of communication with applicants and attorneys. The Register of European Patents is now available to a small number of test users via esp@cenet. On-line file inspection is being tested by a limited number of users and should become operational in the second half of the year. On-line filing tests will also be starting in the near future. Just as importantly, the new epoline® Helpdesk is now fully operational. Reaction on the part of applicants and attorneys has been most enthusiastic.
Meanwhile, the handling of files in the Receiving Section is now carried out on-line using the PHOENIX and EPASYS systems. In DG 1, all units are now effectively paperless, except for the PCT receiving Office and a small amount of BEST work in progress. PHOENIX currently holds some 35 million pages, with 2.5 million being added every month. One million of these pages are from priority document exchange with the Japanese Patent Office.
The use of PHOENIX during examination is being introduced progressively. The scanning of the backfiles at The Hague means that all files reaching the examination phase can now be accessed via PHOENIX. Since last autumn, all new demands under PCT Chapter II are handled in PHOENIX. In order to reduce the transition period during which files have to be handled both in paper form and on PHOENIX, the scanning of older paper files was started in DG 2. The aim is to have all examination files on PHOENIX by the first half of 2001.
Under PHOENIX Online, the downloading of PHOENIX files onto magnetic disks has started, with a view to making the collection available on-line.
There have been important developments in the field of legal affairs too.
At the final meeting, in Paris, of the Working Party on Cost Reduction set up by the intergovernmental conference on reform of the patent system in Europe, a draft agreement on the application of Article 65 EPC was supported by a majority (twelve) of the delegations. Under the agreement, those signatory states having an official language in common with the European Patent Office would not normally require any post-grant translation. The remaining signatory states would nominate one EPO official language in which the description would have to be made available. Only the claims would have to be translated into each official language of each designated state. In all cases, the signatory states would be entitled to require a full translation in case of enforcement of the patent. Actual cost savings would be dependent on how many states adopt the agreement and designation rates. The Working Party considered that an average 50% reduction over current validation and translation costs would be realistic. The draft agreement will be submitted to the second intergovernmental conference, to be held in October in the United Kingdom. Its entry into force will be subject to ratification by at least eight contracting states, including the three contracting states in which the highest number of European patents took effect in 1999.
The Working Party on Litigation also made important progress on the difficult work entrusted to it by the intergovernmental conference.
The Working Party examined in depth a model for an entity common to the contracting states ("common entity") which would have an advisory role vis-à-vis the national courts in patent cases, and largely agreed on its functions and composition, as well as procedures and financing. More importantly, though, the Working Party also discussed the structure of an optional protocol on dealing with litigation over European patents. A group of between six and eight delegations showed support for the creation of a common European patent court of the first and second instance which would have sole responsibility for decisions on infringement and the validity of European patents. A document has been drawn up dealing with the core matter of this proposal. Some four delegations wanted first-instance competence to remain with the national courts and could only support the creation of a common appeal court. The results of the Working Party's work should also be presented at the forthcoming intergovernmental conference.
The Diplomatic Conference for the Adoption of the Patent Law Treaty, the WIPO treaty for harmonisation of formal requirements under patent law, has been successfully concluded.
Signature of the new Treaty can be looked upon as a further step towards the harmonisation of substantive patent law. The consensus reached in formal matters shows the continued readiness of the states to put their patent systems on a common footing.
The chairman of the Committee on Patent Law, Paul Laurent (BE), gave the Administrative Council a report on the discussions held by the Committee at its meeting in April. He explained that the aim of the forthcoming revision of the European Patent Convention was to improve the legal security of applicants and the efficiency of procedures, and prepare the ground for future developments, such as the creation of a litigation system for European and, ultimately, Community patents. Another important contribution to this was the transfer of provisions to the Implementing Regulations.
The Council took note of the opinion papers on the grace period which it had commissioned from Professor J. Straus and Mr J. Galama and decided to submit the opinions to the second intergovernmental conference, which is to be held in London on 15 and 16 October 2000.
The Administrative Council unanimously adopted a declaration regarding the ongoing industrial action in Munich which called upon those taking part to cease their actions forthwith in order to prevent further harm to applicants, the member states and the Office. The representatives of epi and UNICE, who have observer status at Council meetings, fully supported this declaration.
The Council approved the amendments made to the Rules of Procedure of the Boards of Appeal (see page 316 below) and the amendment to Article 27 of the Regulation on the European qualifying examination for professional representatives before the European Patent Office (see page 320 below).
It also approved a number of Office contracts and endorsed the draft budget of the European School Munich for the 2001 accounting period.
At the close of the meeting, the chairman gave a speech in honour of Renate Remandas (GR), who had to leave her post as Vice-President DG 5 at the end of March 2000 for health reasons. In his speech, he highlighted Mrs Remandas' genuine European character and her pioneering international spirit, and thanked her for her immense contribution to the European Patent Organisation.