ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 71st meeting of the Administrative Council of the European Patent Organisation in Munich (16 to 17 June 1998)
The Administrative Council of the European Patent Organisation held its 71st meeting in Munich from 16 to 17 June 1998, with Sean Fitzpatrick (IE) presiding.
The EPO President, Ingo KOBER, presented the 1997 annual report. He also presented the Office's activities report for the first half of 1998.
Mr Kober reported that the staggering rise in the number of European patent applications filed had continued through the first months of the year. The total number of applications filed in the 12 months to the end of May 1998 had been about 106 350 (some 17 000 up on the 12-month period to May 1997). In the first five months of the year, the rise in the number of European direct applications had been significantly higher than forecast (6.5% higher than the revised 1998 planning figure and 17.1% higher than the actual 1997 figure). The number of Euro-PCT applications had been 12.5% higher than the revised 1998 planning figure (ie 27.2% up on the previous year). The proportion of Euro-PCT applications in the international phase had reached 58% in the first five months of the year.
The 433 technical appeals filed up to April had been 3.6% above the forecast, but some 3.8% lower than the corresponding figure for the previous year. In the first four months of the year, more technical appeals had been dealt with than the previous year (528 compared to 444, making an increase of 19%). The backlog of technical appeals at the end of April had been 1 010, although the redefinition of the backlog meant that this figure was not directly comparable to the one given the previous year.
The Office had been striving hard in the first half of the year to improve efficiency and raise productivity by 5%. Even before any scientific calculation of the comparative figures, it was clear that the Office's productivity would increase significantly in the year ahead.
The unabated rise in the number of applications was continuing to feed the backlogs in both search and examination. The Office had set itself the objective of eliminating the search backlog (which currently stood at 20 000 dossiers) by the middle of the year 2000. If this was to be achieved, search output in 1998 would have to be 20% higher than in 1997. The backlog itself was not spread equally across all technical fields. Although it was quite low in chemistry (3 000 dossiers), it was higher in mechanics (6 000) and at its worst in electricity-physics (over 10 000), where it was most acute in telecommunications and multimedia technology.
Numerous measures had been taken to maximise search output, the most important being to:
- return 15 examiners from other duties to search work
- concentrate BEST DG 2 activity on searching (3 000 more search dossiers in 1998)
- initiate a "fire brigade" action together with DG 2
- focus BEST DG 1 activity on searching (only 30% of examiners' time on examination compared to 40% in 1997)
- increase productivity by 5%
- redeploy examiners within DG 1, especially to the telecommunications field, and
- recruit more examiners
It had been noted that BEST examiners tended to be more efficient in their search activity because they were more easily able to assess the relevant state of the art during substantive examination.
The use of electronic tools continued to form an increasingly important part of the work in both search and substantive examination. With an overall increase over 1997 of 10% of the active connection time in the EPOQUE RETRIEVAL part, the major growth continued in the use of the EPODOC database, which covered more than 40% of all search activity, with 12% of search activity conducted in the full-text databases. A total of about 170 000 active search hours' usage was expected during 1998, with national office users accounting for 12.5% of the total. With respect to the EPOQUE VIEWER access, an extrapolation of the usage of drawing and image figures for January to April 1998 had resulted in a forecast of 36 million documents being viewed during the year (a growth of 29% compared to 1997). The BNS was expected to deliver more than a million documents from the BNS archive collection for on-screen viewing. This was 28.4% more than the previous year. Printing of BNS documents by users was not growing as fast, and the forecast of 920 000 documents being printed in 1998 was about 14.1% more than in 1997. The roll-out of CASEX 2 in Munich had been completed as planned early in 1998. CASEX was the electronic system used by substantive examiners to streamline the preparation and issue of their written communications and decisions in the examination and opposition procedures as well as for PCT Chapter II work. It considerably reduced the physical movement of files around the Office, thus increasing the speed and efficiency of the whole procedure. At the same time there was an improvement in quality: presentation was harmonised and errors such as those arising in transcription of data and the use of wrong address labels were eliminated entirely. CASEX 2 would be gradually introduced in BEST-DG 1 from the middle of the year.
Article 54(3) EPC obliged an examiner to carry out a top-up search of European applications with a filing date before, but a publication date after, the filing date of the application being examined. Until now a full paper collection of EP and WO applications falling in this range had been maintained in Munich. The new TOPS system, operating in the EPOQUE environment, selected the documents that an examiner must view on the basis of the dates involved and the classes previously searched and displayed them on-screen. TOPS was already used in about half of the cases examined in DG 2 and the aim was to expand rapidly so that the vast majority of the paper collection could be dispensed with by the end of the year. This would free many of the staff needed to maintain the paper documentation for other tasks.
The Harmonisation and Quality directorate had finalised its 1997 report. Analysis of the results of its investigations showed that the work of examiners continued to improve. Particularly worthy of note was the marked reduction in the number of deviations from the requirements of Article 84 EPC, a problem which had been identified in one area of DG 2 in 1996. A special programme had been set up to increase awareness of how the requirements of the article were to be interpreted. That this had been successful had been shown in follow-up investigations carried out during 1997.
BEST-DG 2 had continued its expansion. A total of 35 new examiners had been recruited in 1998, bringing the number involved to about 200 examiners. The absence of paper search documentation had meant that on-line search tools had had to be used extensively from the start of BEST-DG 2. These examiners now possessed a high degree of on-line skill. A new forum had been created for the presentation of the latest approaches in on-line searching and to facilitate the exchange of experience in this area between DG 1 and BEST-DG 2 staff. It was called AMIE (standing for Advanced Methods in EPOQUE). The first meeting had been held in Munich in March. Among many new developments, GROMIT, a program allowing graphical searching based essentially on optical character recognition had been presented for the first time and opened completely new perspectives for on-line searching of drawings.
BESTLINE, an Intranet, now linked the 200 BEST-DG 2 examiners. This network had numerous uses, including on-line training and tutorials and the dissemination of handbooks, and it could even be used as a discussion forum accessible simultaneously by all users.
In 1998, efforts to recruit new staff had been redoubled. Some 2 100 applications for examiner posts had been forwarded to the technical directorates in DG 1 and DG 2 in the first five months of 1998 alone, with more than 300 candidates being invited for interview. In all, 150 offers of employment had been made since January on the basis of the recommendations of the selection boards. The Office had been finding recruitment difficult in some technical fields. Competition from companies in fields such as telecommunications was stiff, with these companies recruiting massively themselves and offering conditions of employment comparable to those offered by the EPO.
Implementation of the Distributed Internet Patent Service (DIPS) approved by the Council the previous December was running according to plan. A major effort had also been made to investigate and then design the adaptation of EPOQUE and BNS to the new DIPS service.
Moving on to legal affairs, the President began by mentioning that changes to the Rules under the Patent Co-operation Treaty would enter into force on 1 July 1998. Departments of the Office affected by these changes had made the necessary adaptations. Furthermore, the Office was preparing for the relevant PCT committees a study on the problem of "mega-applications", which were being filed more and more frequently and particularly in the framework of the PCT. "Mega-applications" were those which contained a disproportionate number of claims, sometimes as many as 500.
The work on the Directive on the Legal Protection of Biotechnological Inventions was now almost complete. The Directive had been adopted by the European Parliament by an overwhelming majority on 12 May. After formal confirmation by the Council of Ministers, it would be published in the Official Journal of the European Communities and thereby enter into force. EU member states then had two years in which to introduce it into national legislation.
The Commission was of the firm opinion that the Directive was in full conformity with the EPC and did not oblige the European Patent Organisation to bring the EPC into line. Because it was desirable for national and European law to be as uniform as possible, it was being investigated whether any aspects of the rules for interpreting the Directive needed to be added to the EPC Implementing Regulations.
The upward trend in the number of candidates enrolling for the European qualifying examination had continued. At 993, the number of candidates sitting the examination had been about 5% higher than the previous year. Of these, 472 had been first-time candidates. In co-operation with the epi, the Office had prepared a new marking system for the European qualifying examination. The marking as such had been simplified and would be more transparent to the candidates. The Examination Board had decided to apply the new marking system as from the 1999 examination.
Turning to relations with the European Commission, the President began by mentioning that, with its Green Paper on the Community Patent and the Patent System in Europe, the European Commission had sparked off an intensive discussion on the future form of patent protection in Europe. The first results had been released by the Commission in its Communication on the Hearing of the Interested Circles of 26 November 1997. These results showed that users had expressed the strong wish for both the creation of a unitary patent for the territory of the European Union and the construction of an efficient legal framework for the enforcement of Community patents. A massive reduction in procedural fees and the introduction of appropriate translation requirements, together with a suitable litigation system, were seen as crucial for the success of a future Community patent. The Economic and Social Committee's recommendations on the Green Paper (see opinion dated 25 February 1998) essentially corresponded to the demands of the interested circles. On the language issue, the Committee favoured the package solution and supported the bearing of costs of the translations of abstracts by the Commission. They also recommended a Community regulation as the legal basis for a future Community patent system. As soon as the position of the European Parliament was made known - the Commission intended to determine and announce the legal framework and detailed form of the most important elements of the future Community patent system. A first formal proposal for a revised Community patent would be presented in early 1999.
Moving on to international affairs, the President said that eight central and eastern European countries had now applied for membership of the Organisation. First, in 1996, had been the Czech Republic, Poland, Hungary and Slovakia; then, in 1997, applications had been received from Slovenia, Estonia, Romania and Bulgaria.
Technical co-operation activities in Asia had been continuing, with the start of a bilaterally-funded programme with south-east Asian countries. An important part of the programme consisted of advisory and training missions. Meanwhile, the EPO was continuing to assist in the production of ASEANPAT (regional) and national CD-ROMs and to supply CD-ROM documentation to south-east Asian national offices. The European Commission had approached the EPO and OHIM with a view to the implementation of a second project for the south-east Asian countries.
A regional conference had been jointly organised in February by the EPO, the UK Patent Office, ARIPO (the African Regional Industrial Property Organization) and the government of Malawi in Mangoshe, Malawi. The topics of the conference had been technology transfer, opposition, infringement and enforcement and, lastly, information technology.
In March, the EPO and the Mexican Patent Office (IMPI) signed a three-year working agreement. In addition to expert missions, a "workshop on simplified examination" had been organised jointly by the EPO, the Spanish and Mexican patent offices and WIPO for nationals of Latin American countries.
The activities under the TACIS and ICON projects for the CIS countries had included a number of training seminars for examiners, administrators and lawyers. In April, a contract had been concluded with a supplier in Moscow for the hardware and licensed software necessary for the implementation of the Common Software at the Eurasian Patent Office. The equipment, purchased under TACIS, was expected to have been delivered and installed by the end of June. Two seminars on industrial property awareness aimed at small businesses had recently been held in Georgia and Turkmenistan. The European Commission had requested the EPO's help for future TACIS projects in the field of industrial property.
Work had commenced on a new technical co-operation programme for Romania, as part of the European Commission's national programme: the main elements of this programme were equipment procurement, training and public awareness. More generally, contracts were being prepared under RIPP for the production of videos and brochures for public awareness in central and eastern European countries. A new contract for production of the TRACES CD-ROM was also being finalised.
Bilateral co-operation with the State Intellectual Property Office of the People's Republic of China (SIPO) - formerly known as the Chinese Patent Office - had been dominated by the transfer of the EPOQUE technology and related databases. This work had been agreed in the "Agreed Minutes on Cooperation in the Field of Search Documentation and Related Automation Systems" signed in 1995, and was expected to be completed towards the end of the year. The contract for the new "EU-China IP Rights Cooperation Programme" was being finalised. Activities concerning patents and horizontal measures would be under EPO management and were expected to start later in the year.
All the Office's international technical co-operation training activities had been regrouped under the umbrella of an "EPO International Academy", with the aim of enhancing the quality and content of the courses offered to trainees. The WIPO, the USPTO, as well as the Japanese, Chinese and Korean offices already had similar units. The new academy would also enable the Office to strengthen ties with its other partners, the national offices of the member states.
Moving on to patent information, the President explained that a new liaison officer had been seconded to Finland in April and existing officers had been replaced by new ones in Luxembourg and Italy. The ESPACE-ACCESS EUROPE CD-ROM series had been enhanced with the incorporation of data from Portugal, bringing the number of countries participating to seven. Soon the series would become even more attractive for users with the addition of English-language abstracts. Improvements in the WIPO data preparation process and further developments had enabled the Office to shorten the delay in distribution of the ESPACE-WORLD CD-ROMs from up to four weeks after the date of publication of the corresponding documents to a maximum of one week, starting in May. GLOBALPAT, the latest CD-ROM product developed by the trilateral offices, had been made available to all national offices of the member states and their patent libraries.
The Office had continued to update and improve its web-site. As many as 300 000 queries per week were being logged.
At the end of May, the annual PATLIB conference had been held in Alicante. The conference, restricted to professionals of national patent offices and regional patent information centres, had concentrated on the themes of "patent information for innovation" and "regional activities and networks". In parallel to the core conference, the general public had been invited to an exhibition and open training sessions. The whole event had been planned and organised in close co-operation with the Spanish Patent and Trademark Office.
The Council also discussed the issue of the extension eastwards of the European Patent Organisation. It decided that it was not possible at this meeting to decide on the issue of invitations to the observer states which had submitted requests for accession and that it would give a response to their requests at the earliest possible date.
The Council decided to grant Albania observer status at meetings of the Council and the Committee on Patent Law.
The Council discussed at length a proposal by the EPO President aimed at improving the coherence of the fee structure, including in particular a reduction in the search fee. A concrete proposal by the Office would be submitted to the forthcoming October meeting.
The Council agreed to Slovenia's request to renew its extension agreement. The Council approved the co-operation programmes on patent information proposed by the Swedish Patent Office, the Swiss Federal Institute of Intellectual Property and the Spanish Patent Office.
Given the workload situation, the Council approved a proposal by the EPO President to make binding offers, to take effect as from 1 January 1999, for approximately 137 examiner posts planned for the 1999 budget to candidates selected during the second half of 1998.