ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 73rd meeting of the Administrative Council of the European Patent Organisation in Munich (8 to 10 December 1998)
The Administrative Council of the European Patent Organisation held its 73rd meeting in Munich from 8 to 10 December 1998 under the chairmanship of Mr Sean FITZPATRICK (IE).
The EPO President, Mr Ingo KOBER, presented the Office's activities report for 1998.
Starting with a review of filing activity, the President pointed out that although the number of direct European applications filed almost matched forecasts, the number of Euro-PCT filings was about 5% below plan and totalled 116 000. The number of Euro-PCT applications entering the regional phase was 0.8% higher than forecast for the first ten months of the year.
The Office's net staff complement in the search area would be 810 examiners in 1998. On the basis of these staffing levels, the adjusted target was 99 250 searches. A further 1 400 searches had been carried out for the EPO by national offices and another 7 300 in DG 2 under the BEST project.
In the examination area, the net staff complement would be about 700 examiners. The adjusted target was 62 020 equivalent examinations. A further 6 800 equivalent examinations had been performed in DG 1 under the BEST project.
The number of technical appeals dealt with had risen by 6.3% despite there having been no change in the staffing levels (now standing at just over 46 employee-years). Nevertheless, the number of new appeals filed (about 1 180) remained above the number actually dealt with (about 1 050).
The unbroken upward trend in filing figures and the strict deadlines imposed on PCT work resulted in a further increase in backlogs in search and examination despite the major efforts made and the rise in productivity. In the search area, where the backlog had reached 32 000 (of which 25 000 were European direct filings) at the end of October, there were signs that the situation was stabilising. The term "backlog" was redefined in the examination area. Under the new definition, the backlog covered applications which had still not been dealt with after fourteen months, and amounted to some 17 100 first communications at the end of October. For appeals, the definition of "backlog" was also changed. While the backlog of ex parte appeals used to comprise those which had not been dealt with within 12 months, the limit was now 20 months. For inter partes appeals, the limit had been raised from 16 to 23 months. On the basis of the new definition, the backlog would be about 1 100 appeals at the end of 1998.
With regard to the grant procedure, the continuing increase in workload led to special measures being taken in DG 1 to reduce non-search activities and contribute to the hoped-for rise in productivity. One of these measures consisted in reducing the proportion of time that BEST examiners spend on examination from 40% to 30%.
For the third time, a postal survey was conducted of the main users of the European procedure in all sectors of industry. These users were asked to give their opinion on European and Euro-PCT searches performed in the past few years. When the results were compared with those of similar surveys carried out in 1992 and 1994, it was found that users considered quality to have been maintained on the whole but were now more concerned about the timeliness of the searches.
Moving on to the subject of automation, the President reported that the use of on-line tools had continued to rise. A total of 51.8% of search consultations were conducted on-line (last year the figure was 45.2%, against only 33.5% in 1995). Another indication of the trend towards on-line searching was that the number of paper search-groups consulted per search was continually falling, even though the total number of consultations was increasing.
DOCTOOL had been extended with CLIPON, which allowed an examiner to classify new patent documents on-line. The system was launched in June, and examiners could volunteer to use it instead of the more traditional classification on paper. Altogether 39% of incoming patent documents were already classified using the CLIPON system, 25% of them being fully classified on-line.
The massive OCR operation launched in 1995 with the aim of converting 1.5 million patent documents into character-coded form finally reached its objective in 1998: the entire post-1970 PCT minimum documentation (including one patent document per patent family) was now full-text searchable in EPOQUE. The OCR project was now concentrating on front-file documents and pre-1970 documents on an "à la carte", "bottom-up" basis.
To improve accessibility of non-patent literature on-line, a new database was in the process of being set up, which would create automatic links between abstracts, full text and images of non-patent literature stored in different databases. The system was expected to be available to examiners from the beginning of 1999.
The growth in the use of EPOQUE and BNS had once again been spectacular in 1998. The total number of active users per month had grown to 3 000, of which 1 900 were examiners and 840 users in national offices. On average the system was used for 15 300 active search hours per month, an increase of 19.8% over 1997 figures. Growth of 65% compared to 1997 in the number of documents displayed in dual mode with the EPOQUE viewer brought the average number of documents viewed to 3.7 million per month. BNS was used to view some 110 000 documents (up 47% on 1997) and to print 87 500 documents per month.
Since July, when the new scanning contractor (Xerox Business Services) took over, the PHOENIX system had been dealing with all incoming European direct filings at the location where they were filed at the Office, whether it be The Hague or Munich. This eliminated the need to send those filed in Munich to the Receiving Section at The Hague, which was both time-consuming and costly. These applications would also be further processed using PHOENIX. A start was made on Euro-PCT applications: all files with a 1998 number would be scanned in. By the end of 1998, new PCT-ISA and PCT-RO dossiers would also be scanned. In October the roll-out in the examination and PCT Chapter II areas was started in Munich, the first PHOENIX files for substantive examination having since reached DG 2. With over 2 million pages already stored in the PHOENIX system and 800 dossier actions being performed per day, the system was on track for full deployment by the end of 2001.
The workload in the field of new technologies continued to grow in 1998, particularly for software-related applications. Many of the continually rising number of PCT Chapter II demands for preliminary examination were essentially connected with systems and methods involving software.
Another very active area was genetic engineering. Here the pressure on the limited number of staff continued to grow as a result of the heavier workload and the increase in the amount of PCT Chapter II work to be done. The proportion of PCT Chapter II work in this area was running at 66%. To counter this, the number of substantive examiners working in this area was expected to have doubled between 1997 and the end of 1999.
To further harmonise examination practice between DG 2 and BEST-DG 1, the DG 2 Harmonisation and Quality Directorate had organised a training course for BEST-DG 1 examiners.
The Filing Office in Munich saw the introduction of PHOENIX in the context of BEST-DG 2, which brought with it new tasks including in particular the printing of paper search files for examiners. Meanwhile, the PCT II section saw an increase of 28% in the number of demands for preliminary examination in 1998. Revised procedures and support programmes were introduced to cope with the major changes to the PCT rules which came into force on 1 July 1998 and the transition to PHOENIX. There did not seem to be any slowdown in the rise in number of requests for transfers of rights and changes of name either, which continued unabated in 1998. The decision to postpone the due date for payment of designation fees, which came into effect in July 1997, led to a transfer of work from DG 1 to DG 2. In addition, the Office had to set up new internal procedures to cope with the requests made for accelerated handling of opposition procedures where infringement proceedings were under way before a national court, following the announcement in the Official Journal that such accelerated handling was being made available. The Office had long been looking for a way to speed up the handling of the 30 000 requests for file inspection received each year. To help deal with the requests, the Office had placed a dedicated form on the EPO's Internet website. Once the form was received, it could be forwarded over the internal electronic mail system to the relevant location in any of the Office's buildings.
The Enlarged Board of Appeal recently delivered a decision in a case concerning the protection of legitimate expectations where an appeal is deficient. The President referred to the Enlarged Board of Appeal the Office's opinion in case G 1/97, which posed the question of how requests for the review of legally valid decisions of the boards of appeal were to be treated in the legal framework laid down by the EPC. Oral proceedings were held in September in two other cases, both concerning the admissibility of appeals filed by a so-called "straw man"; decisions were expected in the near future.
Turning next to legal affairs, the President reported that he had been pleased to notice a slight increase in the proportion of candidates passing the examination at the first attempt in 1998. In 1997 the proportion had sunk to less than 34%, but in 1998 it was around 36%. By the end of the year a total of 5 900 names would be on the list of professional representatives. Part of the increase in 1998 had been the addition of patent attorneys from Cyprus. The ratio of attorneys registered on the basis of Article 163 EPC to those registered according to Article 134 EPC was now two to one.
The President then reported on the Office's efforts to continue to foster good relations with the European Commission. In particular, he reported on his meeting of 27 July 1998 with the Vice-President of the European Commission, Sir Leon Brittan, who had shown a keen interest in the growing role of industrial property in trade and commercial policy, at both bilateral and multilateral level. Sir Leon had clearly taken note of the differences between the American and European patent systems as raised in the context of the transatlantic economic partnership currently being defined. He had also mentioned the Millennium Round of the World Trade Organization and the possibility of a TRIPS 2 agreement.
The DIPS project had made good progress. Level 1 and Phase 1 of Level 2 had become operational according to plan in July and the new service had been named esp@cenet. When the system was officially inaugurated in October in the presence of Madame Edith Cresson, member of the European Commission, some 16 servers were in operation in Europe. The last servers would be accessible on-line in the near future. A helpdesk for users of esp@cenet was now in place.
By mid-November, one month after inauguration of the new service, the Office was already seeing an average of 70 000 requests for pages per day, with more than 15 000 for Level 2 and a total of more than 50 000 for all Level 1 servers, with a growth rate of 30% per week. Users from as far afield as the Americas, Asia and Australia were accessing the system. Phase 2 of Level 2 was expected to be operational by the beginning of 1999.
The discussions on the European Commission's Green Paper on the Community Patent and the Patent System in Europe being held at both a technical level and in the competent political bodies were on the point of being concluded. Many considered that the adoption of a European Directive would enable the Community patent to be introduced quickly. The conditions which such a new system would have to fulfil were now clearer, with legal security and a limit on costs being among the most important. The implementation of these principles, however, remained legally difficult (system for settling litigation) and could be politically sensitive (question of translations). The opinion of the European Parliament had been published recently and it was now up to the Commission to present concrete proposals for the Community patent.
The President then moved on to international affairs, an area in which the Office continued to be very active.
The first Tacis regional programme covering the CIS countries would be completed at the end of 1998. The two most important achievements under this programme were the provision of the Common Software to the Eurasian Patent Office, and the production of an ESPACE-CIS trial disc containing examples of patent documents from most CIS countries and the corresponding bibliographic data and abstracts in English and Russian. It was planned to transfer Jouve technology to the Russian Patent Office to enable it to co-ordinate regular production of the discs.
In connection with the ICON programme, a call for tender was held, resulting in a contract being awarded to a Moscow firm for the provision of high-speed scanning equipment to the Russian Patent Office. The equipment would be used for scanning the Russian/Soviet backfile documents. Although this would benefit the Russian Patent Office, the European Patent Office would also be able to obtain these documents for its EPOQUE databases. Scanning was expected to start early in 1999.
The contract for the "Horizontal Elements" component of the "EU-China IP Rights Co-operation Programme" was signed on 28 October 1998 by the EPO and the European Commission. This project mainly covered training, legal aspects and enforcement of intellectual property rights.
In the second half of 1998, the EPO's bilateral programme of technical co-operation activities with South-East Asian countries focused on
- advising on the preparation of guidelines for the granting of patents in the Philippines,
- on-the-job training of examiners in Malaysia and Thailand,
and
- the organisation of workshops on drafting patent claims for patent agents in Thailand and Singapore - a regional course organised in co-operation with FICPI.
Concerning the EC/Vietnam intellectual property project, the main activities were in the field of enforcement of intellectual property rights: the organisation of two seminars on border enforcement of IP rights, the visit of a delegation of Supreme Court judges to Munich, Paris (in co-operation with INPI) and London, and the visit of a high-level delegation of Vietnamese customs officers to France and the UK.
In November 1998 the President visited Mexico, where he held talks with Mr Jorge Amigo, Director-General of the Mexican Institute of Industrial Property, as well as with the minister responsible for patent affairs and representatives of Mexican industry and patent attorneys. Discussions on the EPO and OHIM implementation of a two-year EC assistance programme for Argentina were drawing to a close.
The concept of validation of European patents on request by non-European countries had aroused increasing interest in a number of countries in Asia and Latin America.
The President had recently travelled to Strasbourg to attend a meeting of the CEIPI administrative council: its programme had continued at the same level as in previous years and various courses for third countries had been organised with European Commission financing.
In the field of patent information there had been major improvements in the "legal status" database with regard to data on the entry (or non-entry) into the national phase of international patent applications (particularly applications originating in the USA), whilst post-grant legal status data for European patents had been supplemented and corrected. A new post-grant monitoring system, which took into account the different national patent laws, had been developed and would be implemented in the near future. This should ensure that the best data available was fed into the databases.
Major efforts had been made to enhance further the information published on the Office's Internet home page. Many sections of the website had been made more usable: for example, the texts of the European Patent Convention and the Official Journal had been fully searchable in all three official languages since January 1998. The list of professional representatives, official notices of the President of the EPO and the Implementing Regulations to the EPC were also available at the website. The Office had moreover noticed that it was receiving many applications for employment in response to announcements of vacancies on its website.
The Council also approved a proposal by the President to amend Article 109(2) EPC and a number of provisions in the EPC Implementing Regulations (see OJ EPO 1999, 1). It decided to authorise the Patent Law Committee to study in detail the proposals for amending and extending the Implementing Regulations in order to implement the EU Directive on the legal protection of biotechnological inventions.
The Council authorised the President to conclude an agreement between the European Patent Organisation, the Spanish Patent and Trademark Office and the Swedish Patent and Registration Office to establish a partnership for carrying out international searches.
The Council also approved the proposals for amending the Rules relating to Fees, necessitated by the replacement of the Deutsche Mark by the euro as the reference currency, and the proposal to abolish payment by money order and cash payment (see OJ EPO 1999, 5).
The Council approved the 1997 accounts and, after discussing the auditors' report and hearing the opinion of the Budget and Finance Committee, discharged the President in respect of the 1997 accounting period.
The Council approved the President's proposals for reducing fees (see OJ EPO 1999, 9) and then adopted the 1999 budget, with income and expenditure in balance at DEM 1 667m.
The Council accorded observer status at meetings of the Committee on Patent Law to the Union of Industrial and Employers' Confederations of Europe (UNICE).