ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 60th meeting of the Administrative Council of the European Patent Organisation (4 to 8 December 1995)
The Administrative Council of the European Patent Organisation held its 60th meeting in Munich from 4 to 8 December 1995, the first held under the chairmanship of Mr Julián Álvarez Álvarez (ES), who had been elected for a three-year term of office with effect from 1 December 1995. The EPO President, Mr Paul Braendli, presented his activities report for the second half of 1995.
The President stated that the total number of 1995 filings was expected to be in the region of 77 500, which was 7 500 or 10.7% above the budgeted figure. Of these, 40 000 were direct European and 37 500 Euro-PCT applications. Approximately 18 800 Euro-PCT applications would enter the regional phase, which was 5% more than anticipated in the budget.
Reflecting these higher filing figures, the number of search requests was also on the increase - at around 88 000, or 6% above the business plan. On the other hand, the examination workload (around 53 200 European patent applications) was 6% below plan. The number of requests for preliminary examination under PCT Chapter II was 14 500, or 17.9% above plan, however. The number of oppositions was slightly lower than expected (-1%) and would probably total some 2 750 for the year. The number of technical appeals was likely to be in the region of 1 060 or 170 below plan.
The President pointed out that, since the examiner complement was 44 posts under plan while the workload had increased significantly, the search backlog had risen to around 5 400 cases. In examination, the backlog of first communications was down on the previous year (to 35 000), while the appeals backlog had remained constant at around 1 150 cases.
Owing to the undesirable increase in the backlogs, particularly in the area of search, the Office expected to have to start recruiting examiners again in 1996, and to take other suitable measures to increase production.
On the subject of improvements to the patent grant procedure, the practical effects of specific search automation projects were making themselves increasingly clearly felt in the Office's day-to-day work. No problems had been experienced in making EPOQUE II available to a larger number of users; on average, since it came on line in February 1995, the system had been regularly used by more than 650 examiners. With a total of nearly 160 000 queries, each examiner had been consulting 73 facsimile-form documents on his or her screen every day. Including queries via EPOQUE I, an average of 140 documents in electronic form had been consulted for every search performed at the Office. Since October, it had also been possible to print out documents using the Bacon Numerical Service (BNS) as planned, as a result of which the range of information technology tools available to examiners was almost complete.
The President reported on a survey which had been carried out amongst applicants in late 1994 and analysed in 1995 to ascertain views on the quality of the searches performed. One thousand questionnaires had been sent out to applicants worldwide, the response rate (46%) being more or less the same as that achieved with the 1992 survey. Overall, 54% of applicants responding (compared with 56% in 1992) rated the quality of searches "good", 41% (as against 37%) rated it "satisfactory", and 0.2% (as against 1.3%) "poor". Of particular relevance to automation was the response to the question of how well the content of applications was covered by the documents cited in the search reports: 47% of replies (as against 40%) said that coverage was "good", 43% (as against 50%) said it was "satisfactory", and 1.4% (as against 2.8%) that it was "poor". This positive trend was also apparent in relation to how well search reports covered non-patent literature: 57% (as against 48% in 1992) considered this to be satisfactory. These results reflected the efforts of the documentation department in Directorate-General 1 to include non-patent literature in the EPOQUE databases.
On the subject of technical co-operation with the countries of central and eastern Europe, DG 1 had been involved in a number of DG 5-led projects. These mainly involved the Berlin sub-office, where two seminars had been held to familiarise companies from these countries with the EPO and the grant procedure for European patents. Sixteen presentations had also been given on site in some 200 companies. In September, a workshop on protection for computer hardware and software had been held in Berlin for representatives from industry and the patent offices of the countries of central and eastern Europe. Presentations had been given in companies in the Czech Republic, Slovenia, Latvia and Lithuania.
In DG 2, 83 examiners - some 10% of the total - were now taking part in the BEST project (compared with 268 DG 1 examiners). The number of searches carried out in DG 2 in 1995 was expected to be approximately 1 400. A survey conducted by DG 1 had revealed that the quality of searches carried out solely on-line in the areas covered by DG 2 was comparable to that of searches carried out in DG 1.
A training programme had been set up in DG 2 for principal examiners called upon to chair oral proceedings on opposition cases, the aim being to respond to clients' concrete expectations and to harmonise the quality of oral proceedings. In 1995, over 120 examiners and directors had taken part in this programme, which was to be continued for the next two years.
The following report was given on DG 3:
With a view to securing appropriate patent protection for key technologies in the field of biotechnology inventions, a point of law had been referred to the Enlarged Board of Appeal in July, asking whether a patent claim which related to plants or animals in general contravened the prohibition on patenting in Article 53(b) EPC if it encompassed plant or animal varieties. On the basis of board of appeal case law, the EPO had always found in favour of the patentability of claims relating to plants or animals in general, which was why claims for plants or animals as such had always been allowed in inventions relating to the genetic alteration of plants and animals.
In what had become known as the "PGS" or "BASTA" case (T 356/93), the biotechnology board had ruled that a claim relating to plants or animals in general contravened Article 53(b) EPC if the protection it conferred encompassed plant or animal varieties. A typical feature of the genetic alteration of plants or animals, however, was that it could be performed on plants or animals in general, ie also on plants or animals which were plant or animal varieties. This ruling therefore virtually prohibited patenting of genetically altered plants or animals.
The problem was of considerable magnitude since, on the date of referral to the Enlarged Board, some 500 plant applications and around 300 animal applications with per-se claims for plants or animals were pending before the European Patent Office. As advances were made in this field of technology, the number of such applications would continue to mushroom. In the interests of legal certainty not only for the applicants involved but also for the Office's granting practice, this point of law had therefore been referred to the Enlarged Board. [An opinion has been issued and will be published in OJ EPO 4/1996.]
Moving on to legal and international affairs, the President first reported on the European qualifying examination. The number of candidates registered again broke all records: 895 candidates sat the examination in 1995 as against 626 the previous year. The new rules adopted in December 1993 came into effect in full for the first time, and the option of sitting the examination under the new modular system was taken up by a large number of candidates. The 1995 pass rate, at some 40%, was a slight improvement on the previous year's figure of 37%.
Owing to the considerable success of the previous volumes, it had been decided to publish the 1995 examination papers in compendium form with examiners' reports and model answers. Two brochures for those interested in detailed information on representation before the EPO had been prepared in collaboration with the EPI. "How to become a European patent attorney" described requirements to be met in order to qualify as a professional representative before the EPO and was designed mainly for graduates and newcomers to the profession. The second brochure, entitled "The European qualifying examination", dealt specifically with the examination requirements.
An extraordinary meeting of SACEPO had been held in November, the main item for discussion being the Committee's reaction to the strategy document and the findings of the hearing, particularly the issue of the cost of patent protection. The discussion had been open and forthright, reflecting a broad range of views and opinions. It was, however, unanimously agreed that such hearings should be held on a regular basis.
The quality of EPO services was rated highly, something which was borne out by the latest statistics on the validity of European patents in proceedings before the German Federal Patent Court and Supreme Court, where over 75% of European patents had been upheld either fully or as amended, a figure which compared very favourably with that for German national patents.
Of course the cost issue had loomed large over the discussion. Anxiety about rising costs was very real. It was felt that action had to be taken soon to tackle this problem before it undermined the viability of the European patent system. The Office's proposal to reduce the designation and filing fees had received unanimous and wholehearted support, not only because of the saving this would bring but also primarily because, by adopting this measure, the EPO would be the first patent office in recent times to actually cut its fees and would be sending a clear signal that it had recognised the severity of the cost problem and was willing to play its part in tackling it.
Another international conference of patent judges had been held in Washington from 22 to 26 October, jointly organised by the US Court of Appeals for the Federal Circuit (CAFC), the AIPLA and the EPO. Judges from 22 countries, including 14 EPC contracting states, had taken part.
The programme had comprised two main sessions. The first had been intended primarily for the judges only and had dealt with the subjects of infringement proceedings and appeals against patent office decisions. The second had been attended by both judges and interested circles from the USA. The topics for discussion had included patentability, temporary injunctions, expert evidence and assessment of damages. The programme had also provided the opportunity to attend CAFC proceedings and an information seminar given by USPTO. The conference had been notable for its warm and friendly atmosphere. The 8th symposium of European patent judges would be held in Stockholm from 17 to 21 September 1996 at the invitation of the Swedish government.
Turning to the field of international affairs, the President pointed out that on 4 July Switzerland had become the ninth contracting state to ratify the Act revising Article 63 EPC. The revised text of this article would thus enter into force on 4 July 1997.
A total of 12 contracting states had already deposited their instruments of ratification. Belgium, Luxembourg, Monaco and Spain had yet to do so, and Ireland's accession was still outstanding. In this connection, under Article 172(4) EPC any contracting states that had not ratified or acceded to the revised text by 4 July 1997 would cease to be parties to the Convention.
The statistics for the extension agreements were looking very positive. By the beginning of October, 2 140 extension requests had been received for Slovenia, 872 for Lithuania and 173 for Latvia. On 3 November an extension agreement had been signed with Albania.
Malta had recently expressed an interest in the extension system as a transitional arrangement pending accession to the EPC. Andorra had also said it would like to accede to the EPC.
Of the states which, in the Europe agreements, had given the EU an undertaking to request accession to the EPC, the Czech Republic was the first to ask for pre-accession technical discussions. This country, as well as Poland, Hungary and Slovakia, had to submit its request to the EPO by the end of 1996, while Romania and Bulgaria had until the end of 1997.
On the subject of international technical co-operation, particular mention was made of the installation of the common software in the Romanian Patent and Trademark Office. This software was currently also being installed in six other central and eastern European countries as well as in Malaysia. Strong interest had been signalled from offices in other parts of the world too, including the new Eurasian Patent Office and the Chinese Office. The Office for Harmonization in the Internal Market in Alicante had also decided to use this software for the management of its trade mark registration procedures.
As part of the RIPP-PHARE project, a jukebox system for accessing 2 400 CD-ROMs via a network of 60 PCs had been installed in the Hungarian Patent Office. This installation now formed the basis for the document search system used by Hungarian examiners. It was hoped that it would become a viable alternative to paper documentation for other patent offices as well.
In Latin America the Office had helped Mexico set up the regional production of ESPACE-MEXICO. On the training side, an international symposium on the subject of biotechnology had been held in co-operation with the Mexican national office and WIPO. At the request of the President of the Brazilian Patent Office, the EPO had sent a technical adviser to Brazil to help with modernisation of the national office. Substantial assistance had also been given to Argentina and Chile, and the Office had been represented at a regional MERCOSUR seminar on integration in the field of industrial property rights, organised jointly by WIPO and Brazil.
In Africa the Office had helped ARIPO organise a roving seminar in various existing and potential member states.
In Asia all activities had been carried out within the framework of the EU-funded programmes for the ASEAN states (for example, participation in a regional symposium on the transmission of information relating to industrial property rights). Another symposium for 80 judges on the enforcement of industrial property rights had been organised in Manila in October, in co-operation with WIPO.
A second ASEANPAT CD-ROM covering all the countries of the region had been produced. It was hoped that the ASEAN countries would soon be in a position to produce these CDs themselves.
The patent offices of Malaysia, Thailand and the Philippines had decided to take account of the results of EPO patent examinations when granting patents.
In Macau, discussion had centred on the implementation, in co-operation with the Portuguese Patent Office, of a project financed by the European Union. The 6th annual meeting of the joint CPO/EPO committee had taken place in Beijing. Bilateral co-operation - in particular with respect to training and the secondment of experts in 1996 - had been discussed and initial talks had taken place on co-operation in the fields of documentation and automation. Two information meetings had been held with the German Patent Office on the possible adoption of the EPOQUE system by the Chinese Patent Office. A delegation from the Chinese Office had visited DG 1 in order to prepare the invitation to tender for the required systems.
With regard to the countries of the former USSR, the Eurasian Patent Organisation, which had been set up in Geneva at the beginning of October, had elected Mr Blinnikov as president. It was planned for the first applications to be accepted as of 1 January 1996, with the EPO providing technical and legal support.
In addition to CD-ROM workstations and collections, the EPO had also provided several CIS states with expertise and training. With the Office for Harmonization in the Internal Market in Alicante, which had taken over the trade marks side, it had helped the CIS states produce promotional material.
A first symposium on regional co-operation in the field of industrial property rights had been held in Minsk in June with the help of the Danish Patent Office. Another regional symposium, this time on patent information, had been organised together with WIPO in Tashkent in November.
While on the subject of patent information, the President pointed out that the 1995 EPIDOS Users' Meeting had taken place in Stockholm from 11 to 13 October and had focused on "Patent information and SMEs". This meeting, which had been described by users as "the best yet", had been a prime example of what could be achieved through close co-operation between a national office and the EPO. The widespread positive response in both the Swedish and the international press, together with the gratifying comments from the public, would go a long way towards creating even more interest in the patent system.
An agreement had been reached between the trilateral co-operation offices on the distribution of the new, successfully developed MIMOSA CD-ROM software. In line with the original aim of producing a standard software which would be widely accepted for use with patent information products, it would be made available to all interested parties at marginal cost.
New contracts had been signed for the printing of European A and B documents, which would lead to further savings of around 25% under this budget heading. The number of documents published by the EPO had more than doubled in the period from 1989 to 1995, while costs had fallen by two thirds as a result of the new publications policy.
Co-operation with member states had continued in the form of new working agreements with Belgium, the Netherlands, Luxembourg, Italy, Greece, Ireland and Monaco for the production of national ESPACE CD-ROMs. Of the 17 member states, 16 already published their documents on CD-ROM.
The Council approved the 1994 accounts and, having discussed the auditors' report and heard the opinion of the Budget and Finance Committee, approved the President's actions in implementation of the 1994 budget. The President's proposal for reduction of the filing and designation fees was rejected, as the Council felt that further study of the matter was required. The Council then adopted the 1996 budget with income and expenditure balanced at DEM 1 160m.
The President was authorised by the Council to enter into negotiations with the government of Andorra with a view to concluding a co-operation and extension agreement. The Council was given a detailed report on the Trilateral Meeting held in October and informed of the recent rejection by the American Congress of USPTO's plans to become an autonomous body within the US government's Department of Commerce.
In response to a proposal by the President, the Council also appointed the Chairman of the Legal Board of Appeal, along with two legally qualified members of the Enlarged Board of Appeal and one technically qualified member of the Board of Appeal (Electricity). Board of appeal chairmen and members were also reappointed.
Finally, the Council appointed Mr Braendli a member of the Advisory Board of the Research Fund for a two-year period commencing on 1 January 1996 and reappointed the serving Board members, with the exception of Mr Borggård, who did not wish to continue on the Board.