ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 69th meeting of the Administrative Council of the European Patent Organisation in The Hague (2 to 5 December 1997)
The Administrative Council of the European Patent Organisation held its 69th meeting in The Hague from 2 to 5 December 1997, with Sean FITZPATRICK (IE) presiding.
The EPO President, Ingo KOBER, presented the Office's activities report for 1997.
Mr Kober reported that the number of applications was expected to reach 96 000 for the year, some 43 700 being European and 52 300 Euro-PCT filings. The proportion of Euro-PCT applications was thus around 55%, somewhat higher than the forecast of 53%. About 27 500 Euro-PCT applications had entered the regional phase, 5% more than the budgeted estimate.
The number of search requests was expected to reach 106 500 by the end of the year. The number of requests for examination had risen by almost 4% to 80 000, with the number of requests for international preliminary examination under PCT Chapter II running at 14% above plan. The number of oppositions, on the other hand, had continued to fall and would be 10% lower than forecast. There had been an increase in the number of technical appeals filed, which were expected to total some 1 250, 1.5% more than forecast.
Turning to output, the President reported that the net available capacity of examiners working in search would be 730 in 1997; the DG 1 output target, which had been adjusted to 86 300 to take this capacity into account, would be met by the end of the year. In addition, 1 500 searches had been carried out for the EPO by national offices and another 4 900 in DG 2 under the BEST project.
The net examination capacity would be 713 examiners in 1997. Here, the adjusted output target of 60 850 equivalent examinations in DG 2 would be slightly exceeded. A further 8 000 equivalent examinations had been performed by DG 1 under the BEST project.
The number of appeals dealt with had increased by 9% despite a slight reduction in staff capacity (slightly less than 46 employee-years). The number of cases completed (some 950) would nonetheless still fall short of the number of appeals filed.
Even with these good production figures, the backlog had continued to grow in the course of 1997. In search, the backlog would be 25 000 files by the end of the year as a consequence of the increase in filings. With the increasing proportion of PCT work, which was given priority treatment owing to strict PCT deadlines, the situation had deteriorated particularly badly with respect to European searches, where the backlog would be some 21 000 files by the end of the year (as against 11 500 at the end of 1996). The consequence was that about 35% of European applications could not be searched in the six months following their publication date, a rise of 25% compared with the previous year. The backlog in substantive examination was set to rise slightly to some 37 500 first communications at the end of the year, as against 35 400 by the end of the previous year. The backlog in appeals had also risen slightly to about 1 500, compared with 1 330 at the end of the previous year.
Increasing workloads had led DG 1 to look for alternative global workload forecasting methods. The Quality and Planning directorate had developed a new approach based on the evolution in the numbers of search requests per IPC sub-class over the preceding two years. The new system would make it possible to gauge future growth in the workload by extrapolating the data available per IPC sub-class for any given combination of directorates, clusters, industrial sectors or technical fields.
The investigation into ways of progressively adjusting the composition of search directorate clusters to improve the consistency and technical coherence between directorates working in the same or related technical fields or in the same industrial sector had been completed. The new structures would be put in place gradually from the new year onwards.
A study on the impact of electronic tools involving the analysis of 6 000 searches had recently been completed and the results compared with those of similar surveys conducted in previous years. The statistics were quite revealing. Two years previously, for example, 32% of first citations in search reports had been found on-line. This figure was now 45%, suggesting that the 50% mark would be passed in 1998: electronic search tools would then have supplanted paper as the most important search medium at the EPO.
The results were still not uniform across all technical fields however. In chemistry and electro-physics the figures were 57% and 55% respectively (as against 47% and 40% two years previously). It was in mechanics however - traditionally regarded as a difficult field for on-line searching - that progress had been most marked. While in 1995 only 19% of first-cited documents were retrieved by on-line searching, this figure had jumped to 31% in 1997.
There were three main reasons for this. Firstly, examiners had been gaining and exchanging experience through the learning process. Secondly, the ability to display drawings using the EPOQUE viewer and the on-going capture of legacy documentation had increased the amount of electronic documentation available and improved the coverage of electronic searching. Thirdly, DOCTOOL made it possible for examiners to add to or update classifications, index symbols and keywords, thus enabling them to adapt EPODOC dynamically to their latest search strategies. In this context it was worth noting that new examiners in DG 1 and those learning to search under BEST in DG 2 were only trained to work with electronic tools.
The Documentation department had been adapting to the change in examiners' working methods by focusing on acquisition of documentation in electronic form, often to the extent of substituting it for the equivalent paper documentation. Another consequence of this change had been that some less used paper documentation had been moved to less readily accessible storage space.
Documents cited in search reports were now printed centrally, and centralised printing of search reports (CPS) would be fully operational within a few months. Once the documents cited in the search report and other documents to be sent to clients were printed centrally in a single batch, it would be possible to forward the whole search file directly from the print shop to the mail room, resulting in a faster, cheaper service.
In DG 2 a sharp increase in the numbers of requests for transfer of rights and changes of names had been particularly noticeable. This doubtless stemmed from the increasing globalisation of industry and the resulting restructuring of companies.
The final quarter of the year had witnessed an improvement in the IS system used by the support staff handling demands for international preliminary examination under PCT Chapter II. The system, known as PIPS, was expected to bring a further gain in productivity as well as greater staff flexibility and efficiency.
A new form filing and text processing system - CASEX 2 - had also been developed to meet examiners' needs. The roll-out would be largely completed by the end of the year.
During 1997, four new cases had been referred to the Enlarged Board of Appeal. The first addressed the question of what administrative or legal measures should be taken in response to requests for a board of appeal decision to be revised. A second case referred to the interpretation of the principle of good faith, and there were two other cases relating to the admissibility of an opposition filed by a "straw man". One of the boards of appeal had also decided to refer to the Enlarged Board of Appeal a case relating to the interpretation of Article 53(b) EPC with regard to plant varieties.
The "Regulations Implementing the European Patent Convention" had been revised, updated and reissued in July 1997. The publication contained, in the Office's three official languages, key decisions by the Administrative Council, decisions and communications by the President of the Office and agreements between the EPO and national offices or WIPO since 1977; it also contained information about important EPO forms. For the first time, the last section of this new version also included legal advice from the EPO. The ESPACE-LEGAL CD-ROM had been updated twice in the course of the year. In 1998 the CD-ROM version would replace the corresponding microfiche series, production of which would cease.
A number of Dutch and Belgian judges had paid a two-day visit to the boards of appeal in the autumn. This visit had been an excellent opportunity for an exchange of views and experience with a view to harmonising jurisprudence.
In November, members of the boards of appeal met members of the epi and UNICE for the sixth time. Topics discussed at the meeting included the interpretation of claims according to Article 69 EPC, the handling of re-establishment cases and the drafting of claims in biotechnology cases.
Moving on to legal affairs, the President said that the implementation of the fee reform adopted in December 1996 had now been completed. The reduction in procedural fees and deferment of the due date for payment of designation fees had been unanimously welcomed by the patent system's users.
A number of the EPO's official publications had had to be modified slightly as a result. At the time a patent application was published, the European Patent Bulletin and the published application document itself (the A document) now indicated that all the contracting states had been designated. Once the corresponding deadlines had passed, ie about seven months after publication of the search report, the Register of European Patents now mentioned the states for which designation fees had actually been paid on time. This information would also be provided in section I.5 of the Bulletin in the form of a "positive list". These changes would ensure that the public remained reliably informed of which states had been designated in European patent applications. Details of these changes had been published in the Official Journal and in an insert to the European Patent Bulletin.
Calls from industry and inventors for a reduction in the translation and validation costs for European patents were growing louder. Influential representatives of European industry and allied associations were demanding the dropping of all translation requirements, and European patent applicants were overwhelmingly calling for these restrictions to be relaxed. Even representatives from SMEs and associations of individual inventors had been joining these calls.
The interim results of a survey of 3 500 European applicants carried out by Dr Suchy had shown that some 85% of them supported the complete abolition of the translation of European patents in favour of an improved abstract of the application in English. Although users solidly backed the Office's proposal, it was clear in the light of this result why many of them felt that the Office's "package solution" did not go far enough.
In response to requests from the applicant community, the Office was making it possible for applicants and their representatives to conduct discussions and oral proceedings under the European grant procedure as video conferences. Users would be able to avoid costly and time-consuming visits to The Hague or Munich, something which would particularly benefit those coming from the more distant parts of Europe. The only stipulations were that applicants bear the costs of the video connection and waive the right to further oral proceedings. No special fee would be charged for the use of the video facilities. If the new system was widely used, the EPO would consider extending it to other parts of the European and possibly even PCT procedures.
1997 had also seen a rise in the number of candidates sitting the European qualifying examination, the threshold of 1 000 applications being exceeded for the first time. A total of 950 candidates had sat the examination, almost 10% more than in 1996.
The proportion of first-time candidates passing the examination had been relatively low. The previous year had shown a slight improvement, but in 1997 the figure had fallen to 34%. Here, too, it was difficult to draw any clear conclusions, because the possible reasons for the drop were so varied. What had been pleasing to discover, however, was that the proportion of particularly active European patent attorneys (ie those handling more than ten applications per year) who had passed the European qualifying examination was rising steadily. This showed that new attorneys who had passed the examination were well able to establish themselves in a competitive environment.
The total number of European patent attorneys registered would reach 5 800 by the end of the year.
Moving on to the Office's relations with the European Commission, the President mentioned in particular that he had been invited to a meeting with Commissioner Edith Cresson in mid-October. The language issue had been discussed and Madame Cresson had reiterated the Commission's great interest in the solution proposed by the Office. The Commission was firmly convinced that the steps to make the incomparable store of technical knowledge in the EPO available on the Internet must be taken as soon as possible to support innovation in Europe in general (see below).
The Commission confirmed that it would be helping to fund the secondment to DG XIII of an EPO Liaison Officer, who would be taking up his duties in Luxemburg at the beginning of 1998. This joint action was tangible proof of the excellent relations between the two organisations.
The European Commission's Green Paper on the Community patent and the patent system in Europe had generated considerable interest. The consultation process had concluded with a public hearing in Luxembourg.
Representatives from the Office had also been closely involved in the discussions on the proposal for a European Parliament and Council directive on the legal protection of biotechnological inventions at the meeting of the Group of Experts of the Council of the European Union in the second half of the year. The EPO representatives had been participating as advisers of the European Commission. Discussions had centred on the proposal as amended by the Commission to reflect requests made by the European Parliament. One of the key aspects studied was the improvement of legal certainty for biotechnological inventions in Europe, precisely what the directive was aiming at.
Turning to international affairs, the President reported on his meetings with the Commissioners of the United States Patent and Trademark Office and the Japanese Patent Office at the Trilateral Conference, which this year had been held in Kyoto at the invitation of the Japanese Patent Office. Before the conference, technical experts from the three offices had met to discuss trilateral projects; WIPO experts had attended discussions on those projects with which WIPO was associated a technical level. The conference had ended with the signing of a Memorandum of Understanding.
A plan of action was being implemented under the Common Software project with the aim of achieving autonomous functioning at user sites by mid-1998. To achieve this, some development would be carried out by local sub-contractors. The necessary support and training would be provided by Jouve. The Common Software was already operational at eleven locations around the world. The national offices of Ireland and Hellas had been considering the possibility of installing the Common Software, as had the Belgian Patent Office.
In Latin America, joint activities with WIPO had been progressing. This work consisted mainly of expert missions and training activities. In Mexico it had proved possible to complete transfer of the technology needed for local production of the ESPACE-MX CD-ROMs. The European Commission had confirmed its plans to launch projects with Argentina and Chile and had contacted the OHIM and the EPO (and also WIPO for the project with Chile) with a view to their participating in project implementation. The ECAP project (EC-ASEAN Patents and Trademarks Programme) had come to a close at the end of June 1997. The Commission had already earmarked ECU 5 million for a follow-up programme, ECAP 2, and was currently negotiating a memorandum of understanding with the ASEAN countries.
Work on the EC-Vietnam project, which the EPO was jointly pursuing with the OHIM, had focused on legislation and regulations, with advisory missions from the EPO (covering guidelines for examination) and the Max Planck Institute (on new IP law).
The 8th meeting of the EPO-CPO Joint Committee had taken place in Beijing on 11 November at the invitation of the Patent Office of the People's Republic of China. Minutes covering EPO-CPO technical co-operation in 1998 had been approved. The signing in February of the agreement on the use of EPOQUE by the Chinese Patent Office meant that EPO assistance would concentrate on preparing the CPO to use the system. The CPO had agreed to start the first phase of a data entry project for keyboarding in 1.8 million documents for inclusion in the EPOQUE databases. The European Commission had indicated that it intended to proceed with its "EU-China IPR Programme" by means of a direct agreement with the EPO. The Commission was funding this programme to the tune of ECU 3.8 million. Subject to the conclusion of the ongoing discussions, the EPO would be entrusted with implementing "horizontal measures" and elements of the programme relating to patents. The Commission was anxious to conclude the contract as soon as possible.
Training activities and seminars had been organised for patent office staff, attorneys and judges under the new TACIS regional co-operation project with the CIS countries. These had included several seminars - in Moscow on general issues related to registration of trademarks and industrial designs in association with the Benelux Trademarks Office, in London on issues related to enforcement, and in Munich on patent examination as well as a symposium on enforcement of IP rights in Almaty.
Procurement and development procedures needed for the installation of the Common Software at the Eurasian Patent Office had also been set in motion, as had preparations for the production of a regional CD-ROM product containing patent documentation from the majority of the CIS states using MIMOSA software.
The EPO-funded ICON project had continued to finance training activities, subscriptions to European patent information products and technical literature, as well as paying for staff to attend English courses. More recently it had been agreed to make funding available to buy four CD-ROM jukeboxes that used the same software as the EPO in Vienna for use by the examination centre at the Ukrainian Patent Office
Turning to patent information, the President reported that the reduction in the price of EPO data was being passed on to end-users by commercial hosts. Most of those with whom the EPO had been in contact had lowered the price of access to EPO data by between 30 and 50%.
This year's EPIDOS Annual Conference, which had been held in Lille in October, had attracted almost 400 participants. It had been organised in co-operation with the French Patent Office (INPI). The conference had become a greatly appreciated annual get-together of patent information users and a means of keeping people informed of developments in the patent system in Europe as a whole. The exhibition, at which some 40 exhibitors had presented their patent information products and services, and the training courses and public seminars held in parallel to the conference itself, had also been a great success.
The ESPACE-FIRST CD-ROM was the first of the Office's CD-ROM series to have been prepared using the MIMOSA software. To take advantage of the MIMOSA software, which allowed data to be stored in mixed mode format, these disks also contained mixed mode WIPO data.
DVD optical disks were now being used for the ESPACE-ACCESS disks, which contained details of all European and PCT applications. A DVD ("Digital Versatile Disk") was used in the same way as a CD-ROM, but had a far higher data capacity. For the ESPACE-ACCESS series this meant that a single DVD contained the data which had previously been held on the three disks that made up the CD-ROM set. This was a significant advantage for users, who no longer needed to change CD-ROMs during their work to scan the complete set of data.
A new series which complemented ESPACE-ACCESS was the ESPACE-ACCESS EUROPE series. These disks, which contained data from the United Kingdom, Switzerland, Belgium, the Netherlands and Luxembourg, were already available. Other countries had also expressed interest in having their data stored on future releases of the disk.
The President concluded his report by saying that the falling costs of production of the CD-ROM publications, combined with their growing success with users, would allow the Office to make an even greater reduction in the prices of these products when, in 1998, the prices were adjusted to reflect developments in the marginal costs.
During the meeting, the Council approved the report of the 15th Trilateral Conference held in Kyoto on 14 November 1997 as well as the 15th Memorandum of Understanding signed at the conference.
The Council instructed the Committee on Patent Law to study a proposal from the President regarding the central filing of translations of European patents at the EPO.
The Council approved a proposal by the Office on use of the Internet for the dissemination of patent information. (Information on this matter will be published in a forthcoming edition of the Official Journal.)
The Council approved the 1996 accounts and, after discussing the report of the Board of Auditors and hearing the opinion of the Budget and Finance Committee, discharged the President in respect of the 1996 accounting period. It then adopted the 1998 budget, with income and expenditure in balance at DEM 1 283 million.
The Council approved the purchase of buildings in Rijswijk for the branch at The Hague, and of the Porr building at Rennweg 12 in Vienna for the Vienna sub-office.
The Council gave the Former Yugoslav Republic of Macedonia observer status at meetings of the Administrative Council and the Committee on Patent Law.
On a proposal from the President, the Council appointed a board of appeal chairman and several board of appeal members; it also decided to reappoint several board of appeal members.
Finally, the Council reappointed existing members of the Research Advisory Board as well as appointing three new members.