Reports on meetings of the Administrative Council
Report on the 83rd meeting of the Administrative Council of the European Patent Organisation (5 to 7 December 2000)
The Administrative Council of the European Patent Organisation held its 83rd meeting in Munich from 5 to 7 December 2000 under the chairmanship of Mr Roland GROSSENBACHER (CH).
The EPO President, Mr Ingo KOBER, presented the Office's activities report for 2000.
The President welcomed Turkey on its becoming a full member state of the Organisation on 1 November 2000. Turkey's accession had brought to 20 the number of member states in the Organisation.
This year had again seen strong growth in filing figures, confirming recent trends. The number of European direct applications and of Euro-PCT applications in the international phase filed in 2000 would exceed 140 000, 63% of which being Euro-PCT filings.
The number of search requests was 17% up on last year and 5% higher than forecast, mainly as a result of a 12% increase in Euro-PCT search requests. There were 19% more requests for examination than in 1999, exceeding the estimate by 4%.
Due to industrial action which delayed grants of European patents, the number of oppositions was down slightly on 1999.
It was expected that approximately 1 300 technical appeals would be filed in 2000.
There had also been a significant rise in the number of requests to extend European patent applications to the six countries with which extension agreements had been signed. Around 22 000 extension requests would be received in 2000.
At the end of October 2000, overall production in search had totalled around 106 200, including the 9 300 searches carried out in DG 2 under the BEST project, an increase of 11% compared with the same period last year.
The total number of examination, opposition and PCT Chapter II files completed by the end of October was 68 000, or 12% less than projected. This shortfall was a result of the ongoing recruitment drive and a consequence of the "B84/B85 action", which had held up
European grants. However, at the end of October, DG 2 productivity had reached 96.3% of expected levels.
In the boards of appeal, increased net capacity had boosted the number of appeals dealt with by 7.7 %. Some 1 170 cases would be processed by the year-end.
The year 2000 would close with filings up by 77% compared with the 1995 figures, whereas the staff complement had only grown by 20% over the same period.
Backlogs had therefore continued to grow in 2000.
The search backlog was approximately 44 000 at the end of October. The backlog of European direct applications was 30 000, marginally up (by 3 000) on the estimate.
The substantive examination backlog had continued to grow in the course of the year. By the end of October, first communications had yet to be served in respect of 42 150 applications as opposed to 22 400 at the end of 1999. This sharp increase was a knock-on effect of the ongoing recruitment, combined with the priority given to search over examination work under BEST.
By the end of 2000, about 3 250 technical appeals would be pending before the boards of appeal. This was an increase of 130 cases (4.2%) on the figure for the corresponding period in 1999.
Developments had continued apace in the departments responsible for the grant procedure.
The number of PCT files had continued to grow, at the EPO and all the other offices which act as PCT international authorities. Efforts to reform and streamline the system had been made and proposals from the EPO, USPTO and JPO had been discussed.
Work on new PCT procedures for electronic filing and processing of international applications had progressed, and it was hoped that the International Bureau could conclude these efforts in the coming year.
All European first filings would be processed under the BEST procedure. If applicants requested the accelerated PACE procedure, the ensuing patents would be the first on the world market.
The Office estimated that BEST would bring about an increase in productivity of approximately 14%. The implementation of BEST throughout DG 1 and DG 2, considered to be a priority in the Broad Consultation Process, was scheduled for completion in 2005.
Substantive examination was continuously monitored by the Directorate for Harmonisation and Quality, which had reported that applications passed to grant by the BEST examining divisions of DG 1 in 1999 had met the highest standards applied to DG 2. This bore out the positive outcome of the earlier study and indicated that favourable conditions prevailed for extending BEST in DG 1.
The Receiving Section was now processing its files online. All sections in DG 1 were now effectively paperless with the exception of dossiers for the PCT Receiving Office. The backfile scanning of DG 2 dossiers would be completed in the second quarter of the coming year. By that stage, all Office administrative staff would be able to use PHOENIX to support the examination procedure.
PHOENIX now contained 43 million pages to which 130 000 new pages were being added each day. The electronic exchange of priority documents with the Japanese Patent Office was operational and more than 1.3 million pages had been received. This saved applicants about DEM 20 million annually.
In 1999, DG 1 had carried out a user satisfaction survey for the first time. The findings had been very encouraging, and had since been borne out by follow-up surveys in the fields of physics/electricity, chemistry and mechanics.
DG 2 had now carried out a similar survey on the procedures involved in PCT Chapter II, Euro-PCT applications, Euro-direct applications and oppositions, together with DG 2 services such as accelerated prosecution, file inspection, oral proceedings, and oral and written communications. Respondents could also give their opinion on the competence of examiners and support staff, as well as on patentability issues. The findings of this survey had been very satisfactory: 75% of users who expressed an opinion rated the Office's performance as very good or good, and less than 5% thought it poor or very poor.
However, users had been less impressed with how long the procedures took, with 25% expressing a wish for more rapid processing.
On 6 September 2000, the EPO had published two "mega-applications" which had posed a new challenge because they were both so lengthy. One had 10 000 pages, the other 50 000, mainly consisting, in both cases, of a DNA sequence listing. It was clear that patent applications of such a size could not be published in the normal way. After careful consideration of several options, it was decided that the paper, ESPACE® CD-ROM and esp@cenet® versions should all include the first page, description, claims, etc., but not the DNA sequence listing. In the case of both applications, the DNA sequences and certain reference tables were published in their entirety on a special CD-ROM only.
The creation of a new board of appeal in chemistry on 1 October 2000 had brought to 18 the total number of technical boards.
On 1 November 2000, the boards of appeal had introduced a new procedure for convening oral proceedings, intended to reduce processing times.
The 10th Judges' Symposium had been held in Luxembourg in September. European patent judges and chairmen and members of the EPO boards of appeal had attended this event, which focused on broad claims, patents for computer programs, and the future structure of a European patent court.
In the past year, there had been an intensive recruitment drive for DG 1 and DG 2 examiners and administrative staff. The outcome had matched last year's success.
At the beginning of 2000, the Office had needed to recruit some 460 examiners to fill all its vacant posts (not including 116 successful candidates who had accepted the EPO's offer but had not yet started work). However, that figure comprised not only vacancies outstanding from last year and new posts provided for in the 2000 budget but also staff departures through natural wastage, mainly retirement.
The Office had received a total of 7 000 applications for examiner posts, and 1 167 candidates had been interviewed. Since the beginning of the year, 340 new examiners had started work at the Office with 137 others due to do so in 2001.
The Service Regulations contain a provision to appoint, exceptionally, nationals of non-EPO member states. This facility had been used to appoint new recruits from future member states: in 2000, 22 people from Bulgaria, the Czech Republic, Hungary, Poland, Romania and Slovakia had started work as EPO examiners.
The arduous task of thoroughly revising the EPC had culminated in the Diplomatic Conference which had taken place in Munich from 20 to 29 November 2000. The vast majority of the amendment proposals made in the Basic Proposal had been adopted.
A solid legal framework had thus been put in place under which to implement BEST Office-wide. The EPC had also been brought into line with the TRIPs Agreement and the PLT 2000, and its provisions on grant, opposition and appeal had been streamlined, with the detail being moved into the Implementing Regulations. The Convention now also contained new provisions: institutionalising intergovernmental conferences (IGC); establishing a fast-track procedure to bring the EPC into line with international treaties and EC legislation; introducing petition for review of board of appeal decisions in the case of a serious procedural error; creating centralised limitation proceedings; and improving the arrangements for further processing and re-establishment of rights.
This was of course only the first step towards a comprehensive overhaul of the patent system in Europe. Nevertheless, ratification of the revised EPC would lay the groundwork necessary to ensure that the European Patent Organisation remained dynamic and became more responsive than ever before to the evolving needs of European industry.
At the Second Intergovernmental Conference (IGC), which was held in London in October, the Working Party on Cost Reduction submitted, for adoption, an agreement on the application of Article 65 EPC. This agreement provided that states which have an EPO official language would not require routine post-grant translation. The remaining signatory states would require national-language translations of the claims only, and the description would have to be available in the EPO official language nominated by that country.
The agreement would enter into force once ratified by eight contracting states, including the three in which the most European patents had taken effect in 1999 (France, Germany and the United Kingdom). It had the potential to reduce translation/validation costs by up to 50%, a goal set by the Paris IGC in June 1999. It was signed by eight states at the London IGC (Denmark, Germany, Liechtenstein, Monaco, the Netherlands, Sweden, Switzerland and the United Kingdom).
The Working Party on Litigation, which had been set up last year, had presented its initial findings to the Conference. It had been mandated to prepare, by the end of 2001, an optional agreement on the settlement of litigation concerning European patents.
At the Conference, the President had also presented a paper on the EPO's efforts to cut its processing times.
The Commission had launched a new and very concrete initiative with its proposal of 1 August 2000 for a Regulation on the Community patent. Whereas the previous projects - the 1975 Community Patent Convention and the 1989 Agreement relating to Community Patents - involved introducing the Community patent by a treaty under international law, the Commission's present proposal would do so via Community legislation in the form of an EU regulation.
Under the proposal, the EPO would grant Community patents on the basis of the EPC for the entire territory of the Community, and administer them centrally. The effects of the Community patent, the rules on assignment and licensing, and the judicial arrangements for enforcement and the settling of validity issues, would be laid down in the regulation on a unitary, Community-wide basis.
This ambitious and attractive proposal was based on the work already done in the 1975 Community Patent Convention and the 1989 Agreement relating to Community Patents, and on the time-tested structures of the EPC, but also took account of users' criticisms of previous Community patent models, particularly regarding the language issue and the arrangements for settling litigation. It was therefore no wonder that it had been very well received, and had gained the support of inventors and industry.
Nor did it come as any surprise, however, that the approach suggested was somewhat contentious, both politically and legally. This applied, in particular, to the method of linking the EPC and Community law, and to the system for settling litigation. The proposals were genuinely new and inventive, and therefore required especially careful scrutiny.
The 31st meeting of SACEPO, which was held in Munich on 29 and 30 June, was devoted largely to the Basic Proposal for revision of the European Patent Convention.
A total of 1 035 candidates had sat the European qualifying examination, a slight increase on 1999. The pass rate for first-time sitters had been 37%, compared with 24% for candidates resitting the examination.
The number of professional representatives qualified to represent clients before the EPO had increased slightly to 6 200.
Use of the extension system had continued to increase during the year, and expiring extension agreements had been renewed by a further two years.
Macao had recently amended its patent law, and European patents could now be validated there. However, it had introduced this possibility without prior consultation with the EPO.
Following a study by representatives of Singapore, Thailand and Laos on the "validation on request" scheme, representatives of Malaysia had been examining the impact of the extension scheme in Slovenia. The governments of several countries were currently considering the scheme.
The US Bar/EPO Liaison Council had held its annual meeting in Munich in June. Reporting on new developments, the EPO had received some positive feedback from the American members regarding changes in its handling of complex applications, whilst drawing criticism, as expected, concerning its approach to business-method applications.
Following the grant of patent 0 695 351 to the University of Edinburgh last February, proceedings had now reached the opposition stage. There had been thirteen valid oppositions, from five different countries. All of them had mentioned ethical grounds, but two had also argued on the grounds of lack of novelty, inventive step or sufficiency of disclosure.
The 18th Trilateral Conference had taken place on Awaji Island (Japan) on 2 and 3 November, at the invitation of the Japanese Patent Office. The main conclusions of the conference were set out in the traditional Memorandum of Understanding, which gave details of the numerous technical projects involved.
Particular attention had been devoted to training, which had been conducted not only in the EPO International Academy but also locally in Estonia, Hungary and Poland. Meetings on possible future accession to the EPC had taken place in Budapest and Sofia. Several seminars on enforcement had also been organised in the region, and a RIPP co-ordination meeting had been held in Prague last September.
In July, contracts had been signed with the European Commission for the implementation of the ECAP 2 (covering ASEAN countries) and India projects. These projects were being carried out jointly with the OHIM (Office for Harmonisation in the Internal Market); the EPO was the project leader for ECAP 2, while the OHIM was managing the India projects. At the end of October, a two-year working agreement had been signed with Vietnam, which would complement the programme funded by the European Commission. In Singapore, a training programme for patent agents had been launched, to be conducted by external experts.
Under the bilateral programme with China, the major short-term goal - following the transfer of EPOQUE technology - was to support the Chinese office in its migration to the Java platform. In addition, EPOQUE trainers from the Chinese office had attended the BEST-DG 2 advanced course.
The framework agreement for the development and maintenance of the Common Software had been extended for a further two years, until the end of 2002. The Common Software was currently being upgraded to allow patent offices to integrate data received via online filing.
Training had remained a key element in the EPO's technical cooperation activities. During the year 2000, the EPO International Academy had run 31 seminars, attended by more than 450 participants from 80 different countries. These figures illustrated what a significant contribution the EPO was making to the training effort worldwide.
The EPIDOS annual conference had been held in Vienna in October, in close co-operation with the Austrian Patent Office. It had been attended by more participants and exhibitors than ever before.
The esp@cenet® service had been enhanced by new functionality requested by the user community. Another major development would give the public access to the Register of European Patents on the Internet. Latest estimates indicated that some 5 000 users carried out a total of 40 000 searches per day.
The epoline® customer service had been extended to deal with queries on individual dossiers. The Office lines were now open ten hours a day, five days a week.
17 co-operation programmes in patent information were currently in place, including the three that had recently been entered into with Cyprus, Denmark and Finland.
The number of patent information centres in Europe had continued to grow. By mid-October, there were 166. Details of each were published on the EPO website.
Efforts to improve the administration of post-grant data had continued. The goal was to harmonise the information available on lapsed patents and to improve the transparency of the correction procedure for post-grant data evaluated by the Office.
Once the President had concluded his activities report, the Council addressed several major issues.
The Council elected Mr Mogens KRING (DK) to serve as its Deputy Chairman for a term of three years. It paid tribute to Mr José MOTA MAIA (PT), outgoing Deputy Chairman, who had retired from his national office on 30 November 2000.
The Council unanimously appointed Mr Jean SEBEYRAN (FR) to replace
Mr Sten NIKLASSON (SE) as Chairman of the Pension Reserve Fund Supervisory Board.
The Council re-appointed Mr Peter MESSERLI (CH) as Vice-President DG 3 for a further five years.
The Office informed the Council that the technical and legal framework for electronic filing had now been defined. Once the President's decision had come into force, applications and subsequent documents could be filed electronically with the EPO or the competent national authorities, either via the Internet or on CD-ROM. Online filing opened up an alternative filing route, without altering the existing paper procedure.
The Council gave the final go-ahead for the construction of PschorrHöfe Phase VII in Munich. Building work is scheduled to begin in 2001 and to be completed in 2005. The new premises will accommodate some 500 employees.
The Council approved the 1999 accounts and, after discussing the report by the Board of Auditors and hearing the opinion of the Budget and Finance Committee, discharged the President in respect of the 1999 accounting period.
Finally, the Council adopted the 2001 budget, with income and expenditure in balance at
DEM 1 991 million. Provision was made in the table of posts for 5 513 employees, an increase of 475 posts (including 366 examiner posts) on the year 2000.