Reports on meetings of the Administrative Council
Report on the 93rd meeting of the Administrative Council of the European Patent Organisation (2-5 June 2003)
The Administrative Council of the European Patent Organisation held its 93rd meeting in Munich from 2 to 5 June 2003 under the chairmanship of Roland GROSSENBACHER (CH).
The President of the European Patent Office, Ingo KOBER, presented the first of his biannual activities reports for 2003, beginning with the Office's work situation:
The measures taken to master the workload (restricted PCT competence, accelerated PCT procedure, accelerated grant procedure) had placed the Office in a good position to achieve its objectives in terms of the duration of the European patent grant procedure.
For 2002 a total of 175 000 applications had been predicted and 165 100 actually registered, including over 111 000 filed by the PCT route. Compared with the equivalent figure for 2001 available at the start of 2002, that represented growth of almost 4.5%. However, the number of applications filed in 2001 had been revised upwards once they had all been recorded in the EPASYS database, eventually settling at 161 300.
The international situation, the slowing of growth in patenting activity in some technical fields and uncertainty over the figures for 2002 all called for greater caution for 2003. In the first four months of the year, almost 50 000 applications had been filed, about 6% fewer than in 2002.
Over the previous twelve months, 164 400 applications had been filed, of which 69% were Euro-PCT applications. The plan for 2003 as revised at the start of the year was based on a total of 175 000 applications, 71% being Euro-PCT filings.
Search, substantive examination and opposition
The search workload was nearly 1% up, compared with the same period in the previous year. The number of international searches was 5% higher than in 2002, the number of European searches 3% lower.
In European substantive examination, the workload had increased by more than a third compared with the first quarter of 2002. In contrast, the workload for PCT Chapter II had decreased by 24%, in line with the revised plan.
As a consequence of the large increase in the number of granted patents from 2001 to 2002, the number of oppositions filed in the first quarter of 2003 had increased by about 37% compared with the same period in 2002.
In the period to the end of April 2003, 474 technical appeals had been filed. This figure was 4.6% above the forecast and 9.2% above the corresponding figure for the previous year (434).
The backlog situation had improved in several industrial sectors in respect of PCT searches and searches on first filings. For these priority files, audio video media was the only sector in which the situation had worsened slightly since the beginning of the year.
At the end of March, the total search backlog stood at 78 700 files, 1 600 fewer than at the end of last year. The backlog in European applications had fallen a little since the beginning of the year and stood at 46 200 files.
The number of examination files for which the Paris criterion for the duration of the procedure was not observed had stabilised since the start of the year. For European applications it had fallen in 9 of the 14 industrial sectors. The biggest rises had been in industrial chemistry, computers and telecommunications.
At the end of March, the backlog of European examinations stood at 62 800 files, approximately 8 500 (12%) fewer than at the end of March 2002.
By the end of April, 3 164 cases were pending before the Technical Boards of Appeal, representing 100 cases or 3.1% fewer than the corresponding figure for the previous year (3 264).
The backlog of the Technical Boards of Appeal had been cut by 3% compared with March 2002, down to 1 183 files.
In the course of 2002, the overall productivity of Office staff had risen by 1.9% over 2001. For core products - search, examination, opposition and appeals - productivity was 0.5% up, which was very encouraging given that some resources were unavoidably tied up in the training of the many new recruits.
Search, substantive examination and opposition
By the end of April 2003, total production in search stood at 50 500 searches, about 6 500 or 15% more than over the same period in 2002.
In accordance with Office policy on streamlining PCT Chapter II output, completed examination in this procedure had decreased by 34% in the first quarter of 2003 compared with the same period in 2002. This had released capacity for other procedures and had contributed to some of the increased search production. The major impact, however, had been in EP examination, with more than 25 000 completed final actions by the end of April 2003, 19% more than in the same period in 2002.
The number of oppositions handled was down by 74 files, or 13%.
Published granted patents
By the end of April 2003, 19 500 European patents had been published (2002: 14 700).
By the end of April 2003, 501 technical appeals had been settled. This figure was 4.2% above the corresponding figure for the previous year (481).
Patent Grant Procedure
Progress with the joint cluster structure
The implementation of BEST had made it necessary to harmonise search and examination practice. Therefore, the Office was introducing a new management structure in DG 1/DG 2. The first phase of this new structure had been implemented on schedule on 1 January 2003. This entailed the creation of pilot "joint cluster" principal directorates for four technical areas, each comprising about 200-300 examiners in between 8 and 14 directorates spread over the three sites (Munich, The Hague and Berlin). At the same time the "horizontal functions" for planning, quality assurance, documentation and patent administration had been integrated in four principal directorates with Office-wide responsibility.
During the first few months, further work had been undertaken to define the responsibilities of those involved in the new structure and to adapt working methods and procedures. At this stage, the conclusion that could already be drawn was that the structure was generally well accepted; in particular, real progress had already been made on ensuring that planning and other activities took into account the specific requirements and constraints of the technical areas covered by a joint cluster. Furthermore, feedback and evaluation procedures had been put in place to benefit from the experience gained during the pilot phase when full-scale implementation began on 1 January 2004, provided the evaluation proved positive.
Extended European Search Report (EESR)
On 1 July 2003, one month later than originally announced at the extraordinary SACEPO meeting held in February, the Office would launch a pilot project named EESR, or Extended European Search Report. Under this scheme, which would apply to all EP first filings, the B09 (the communication prepared by a BEST examiner at the time of the search) would be sent together with the search report as a free service to applicants. Applicants who preferred not to receive this extra communication would be able to opt out.
This project would help the Office to fulfil its mandate from the 1999 Paris intergovernmental conference to bring the average time for granting a European patent down to 36 months. In addition, it would provide applicants with more legal value earlier and thereby reduce the economic risks. It would furthermore allow the Office to draw maximum benefit from the BEST methodology. The Office's intention was to run this pilot scheme for one year, followed by a review to assess whether it should be extended to second filings as well.
Boards of Appeal
The possibility of establishing the Boards of Appeal outside the European Patent Office as the third organ of the European Patent Organisation had been examined and a document outlining such a proposal submitted to the Council.
In January 2003 the Enlarged Board of Appeal had given its decision in G 1/02 in which it upheld the validity of delegating certain tasks in proceedings before the opposition division to formalities officers.
In late 2002 and early 2003, four new cases had been referred to the Enlarged Board of Appeal under Article 112(1)(a) EPC and consolidated into two proceedings. G 1/03 and G 2/03 concerned the allowability of amendments to patent claims by disclaimers that had no basis in the application as filed. G 2/02 and G 3/02 concerned entitlement to claim priority in connection with the WTO/TRIPs Agreement. A fifth case had been referred recently: G 3/03 dealt with the reimbursement of the appeal fee after interlocutory revision had been granted.
Office automation and documentation
The EPO's programme of implementing e-business products and services continued to expand. The Online Filing software supported both new PCT applications and European phase entry. A total of 3 500 online filings had been received.
An average of some 100 000 register requests per week were made in the epoline® Online European Register. Online File Inspection was consulted over 4 000 times per day.
A new esp@cenet® interface had been released which now also incorporated INPADOC family and legal status information. The number of facsimile pages downloaded per week regularly exceeded 3 million.
Recruitment and Personnel Matters
EPO recruitment drives had targeted 30 countries. By the end of May, 270 new staff (153 of whom were examiners) were in post, another 105 candidates having been offered employment.
The operating result remained positive.
The operating surplus in 2002 amounted to EUR 45m, and in the first quarter of 2003 a surplus of EUR 10m was generated rather than the expected deficit of EUR 2.5m.
Net working capital remained relatively stable in the first quarter of 2003 at EUR 460m.
Enlargement of the Organisation and extension agreements
On 1 January 2003, Hungary became the 26th member of the European Patent Organisation, followed by Romania on 1 March 2003. After termination of the co-operation and extension agreements with Slovenia and Romania as a consequence of their accession to the EPC, there were now four extension states: Albania, Latvia, Lithuania and the Former Yugoslav Republic of Macedonia. The extension agreement with the Federal Republic of Yugoslavia, now the State Union of Serbia and Montenegro, signed in November 2001, had not yet entered into force. Co-operation and extension agreements with Bosnia and Herzegovina and with Croatia were in preparation, the latter being due for signature in June 2003.
With its Common Approach of 3 March 2003, the Council of the European Union had sent out a political signal and defined the parameters for further work on the Community patent. At their summit meeting on 21 March 2003 the EU heads of state and government had welcomed the agreement and called for rapid implementation of the political objectives.
It was now up to the Commission and the EU Council, along with the European Patent Organisation and its member states, to put flesh on the common approach and create a Community patent system that really met the needs of its users. The European Patent Office would do its utmost to help the European Patent Organisation and its bodies with the work now awaiting them.
That applied above all to the revision of the European Patent Convention that would be needed to accommodate the Community patent and the accession of the Community to the Organisation (an issue the Council addressed separately at this meeting).
EPC 2000 revision
The Council's adoption of the new Implementing Regulations in December 2002 had marked the end of substantive EPC 2000 revision work.
The EPC 2000, its new Implementing Regulations and the associated explanatory remarks had been published in a special edition of the Official Journal, and were also accessible on the Office's website. The proceedings of the Diplomatic Conference 2000, the conference documents and the preparatory materials for EPC revision would be published separately on CD ROM.
The states that had acceded to the Convention since 1 July 2002 had already ratified the EPC 2000. In other contracting states, ratification proceedings had been instituted or were being prepared.
In almost all of the 120 PCT contracting states a uniform time limit for national phase entry under Article 22 PCT had been implemented. The effect had been that 3 000 demands for international preliminary examination were received on a monthly basis. The equivalent figure for 2002 had been 4 000 demands, ie a reduction of some 25%.
The preparatory work for introduction of the new expanded international search system for applications filed as from 2004 had seen substantial progress; in particular, very promising progress had been made on the complete overhaul of the search and examination guidelines.
At the request of the Committee on Patent Law, the Office had again taken up the issue of the grace period and, after consulting the EU Commission, had submitted to the Committee a draft grace period proposal as the basis for establishing a common European position. The draft envisaged the introduction of a grace period subject to tight constraints in terms of duration (6 months) and formal requirements (declaration of intention to claim).
European qualifying examination (EQE)
The upward trend in the number of candidates enrolling for the European qualifying examination had continued. At 1 540, the number of candidates who had enrolled for the examination was about 6% higher than the 2002 figure (1 454 candidates). Of these, 615 had enrolled to sit the examination for the first time.
This year saw two new examination centres open, in Vienna and Madrid.
Professional representation before the EPO
The accession of seven new member states to the European Patent Convention had also resulted in the addition of around 500 patent attorneys to the list of professional representatives, which now included more than 7 400 names.
Technical co-operation activities
The EPO's international technical co-operation activities had included work with China, the EPO-SIPO co-ordination meeting having been held in Beijing in February 2003.
Under the EC-ASEAN Intellectual Property Rights Co-operation Programme (ECAP 2), the EPO had run two major regional events, a workshop in Manila for ASEAN customs officials (May 2003) and an EU-ASEAN symposium on geographical indications in Hanoi (June 2003).
A highlight of co-operation in Latin America was the traditional Latin American Encounter on Patent Information, ELDIPAT, which had taken place in 2003 in Havana.
In April 2003 the EPO, together with the UK Patent Office, ARIPO and the Companies and IP Registration Office of South Africa (CIPRO), had organised a regional forum on IPR for Africa and the Middle East in Johannesburg.
Regarding the CIS states and Mongolia, a high-level delegation from Azerbaijan had been received at the EPO. The EPO had participated in the 13th Interstate Council on Intellectual Property Issues of the CIS in Chisinau, Moldova.
Among central and eastern European countries, activities to support states about to accede to the EPC had been organised. This included the organisation of a European patent application receiving section seminar in The Hague at the beginning of the year.
The EPO International Academy
The EPO International Academy, acting as a service provider in the area of external training, had been engaged in increased co-operation on training with the IP offices of member states.
An initiative to create an International Academy better suited to providing intensified training in intellectual property to meet the demands of the 21st century had been launched. Initial contacts had been established with the European Commission and with other interested circles such as CEIPI and the epi.
EU Liaison Bureau in Brussels
The Office had continued its efforts to enhance relations with the European institutions. In January the first session of regular meetings between the Commission (DG Internal Market) and the EPO had taken place: such meetings aimed at co-ordinating work between the two institutions and would take place three times per year, with at least one annual meeting at the level of Commissioner/EPO President. In view of the EU Council's Common Approach on the Community Patent (3 March 2003), such discussions would have increasing importance.
In parallel with this work, the Office had continued to support EU innovation and research policies, especially those directed to the Lisbon objectives, and to promote the European patent system in EU circles. To better accommodate the needs of the Office, the Liaison Bureau had recently moved to new premises closer to the European institutions in Brussels.
Patent Information and Co-operation
INPADOC, esp@cenet® and other databases
Considerable progress had been made on converting the INPADOC family and legal status databases to make them compatible with the esp@cenet® service. As a result, INPADOC data had been available on a preview version of the esp@cenet® service for two months. Pending confirmation that the preview version was functioning satisfactorily, the new service would be launched publicly in the near future.
Concerning the data itself, the INPADOC bibliographic database had been extended in March 2003 to include United States design patents. Currently, the bibliographic database contained data from 71 countries and patent-issuing authorities. The legal status database had data from 42 countries and patent-issuing authorities.
A new version of the MIMOSA user software had been released for reading the ESPACE products not only of the EPO but also of the national offices of most member states. An important benefit of this new software was to allow handling of much larger volumes of data in a single database. One immediate result was that the ESPACE ACCESS EP A database could be brought back into a single database in the three languages.
Since February, users had been able to find the latest four editions of the paper EPO Bulletin available for downloading as a PDF document from a password-protected area on the Internet.
PATLIB 2003 Conference
The PATLIB 2003 Conference had taken place in Liège, Belgium, and had been co-organised with the Belgian Patent Office and the Interface Entreprises of the University of Liège. About 300 participants had taken part under the conference theme of "Investing in the future". The PATLIB network currently had around 280 members, including some in future member states.
Growth in the use of the EPO website had continued unabated. About 2.5 million hits were registered every week (an increase of 60 per cent over 2001), and about 70 gigabytes of data each month were delivered to some 110 000 distinct IP addresses.
Survey of patent information needs in Europe
During the first few months of 2003, an independent company had carried out some 2 000 interviews in all 27 member states, plus three future member states and the USA. An initial basic analysis of the results had been carried out and detailed results would be published over the next few months.
Once the President had concluded his activities report, the Council addressed several major issues:
The Council decided to set up, as from 1 July 2003, a Board under Article 28 EPC. This Board will assist the Chairman in preparing the Council's work. Besides the Council Chairman and Deputy Chairman, it will comprise the following three further Council members, who have been appointed for terms ending on
30 June 2006:
- Jaime SERRÃO ANDREZ (PT)
- Mihály FICSOR (HU)
- Elmar HUCKO (DE)
At the invitation of the Council Chairman, the Chairmen of the Budget and Finance Committee and the Committee on Patent Law will be regularly involved in the Board's discussions.
The President of the European Patent Office will take part in the Board's discussions.
The Council also approved the following appointments and reappointments to DG 3:
- Gabriele DE CRIGNIS (IT), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- Armin Johannes MADENACH (DE), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- William E. CHANDLER (GB), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- David H. REES (GB), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- Fred VAN DER VOORT (NL), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- Gabriele ALT (DE), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- Maria Rosario VEGA LASO (ES), appointed technically qualified member of a board of appeal with effect from 1 October 2003
- Konrad BUMES (DE), appointed technically qualified member of a board of appeal with effect from 1 January 2004
- Alessandra PIGNATELLI (IT), appointed legally qualified member of the boards of appeal with effect from 1 October 2003
- Jean-Claude SAISSET (FR), reappointed legally qualified member of the Enlarged Board of Appeal, the boards of appeal and the Disciplinary Board of Appeal with effect from 1 July 2003
- Alice PEZARD (FR), appointed external legally qualified member of the Enlarged Board of Appeal with effect from 1 July 2003
- Paul MICHEL (GB), reappointed technically qualified member of a board of appeal with effect from 1 September 2003.
The Council unanimously elected Maria Ludovica AGRÒ (IT) as Chairman of the Budget and Finance Committee for three years as from 10 June 2003, and paid tribute to the outgoing Chairman Serge ALLEGREZZA (LU).
After numerous votes had been taken, the Council noted that the procedure for appointing a president had failed to yield a result, none of the candidates in contention having obtained the required qualified majority, and decided to terminate the procedure.
The Council decided to initiate a new appointment procedure and to put this item on its agenda for the October 2003 meeting.
The Council also unanimously decided to extend the term of the serving President,
Ingo KOBER, by six months until 30 June 2004.
Finally, the Council unanimously decided to give Iceland observer status.