EUROPEAN PATENT ORGANISATION
Intergovernmental conference of the member states of the European Patent Organisation on the reform of the patent system in Europe, Paris, 24 and 25 June 1999
At the invitation of the French government, an intergovernmental conference of the member states of the European Patent Organisation was held in Paris on 24 and 25 June 1999 under the chairmanship of Christian PIERRET, the French secretary of state for industry.
The French prime minister, Lionel JOSPIN, addressed the delegations from the 19 member states, reaffirming the central role played by industrial property in innovation, economic growth and employment.
The intergovernmental conference adopted a mandate (see below) setting up two working parties with the task of submitting reports to the governments of the contracting states on reducing the cost of European patents and harmonising patent litigation.
On behalf of the United Kingdom, Kim HOWELLS, parliamentary under-secretary of state at the Department of Trade and Industry, suggested that a further intergovernmental conference be held next year if the working parties produce useful results.
The conference also mandated the Organisation to submit proposals on its decision-making procedures and for examining the question of prior disclosures and the various possible solutions. José MOTA MAIA, president of the Portuguese National Institute of Industrial Property, agreed to act as co-ordinator for this part of the mandate.
Finally, the conference requested the Organisation to prepare a European Patent Convention revision conference to be convened in the year 2000 with a view to adopting a revised text relating to various points listed in the mandate.
During the closing session, Mr PIERRET welcomed the representatives of the eight countries invited to accede to the Organisation as from 1 July 2002 (Bulgaria, Czech Republic, Estonia, Hungary, Poland, Romania, Slovakia, Slovenia) and of two countries with observer status (Iceland, Norway) as well as the representative of WIPO.
MANDATE
1 - Improving access to the European patent
A - Reducing the cost of a European patent
The Intergovernmental Conference,
considering that the cost of obtaining a patent in Europe must be reduced in order to facilitate companies' access to the European patent system,
considering that the translation of the full text of the European patent specification required by law in most member states accounts for a significant proportion of the cost of obtaining patent protection,
considering that Article 65 EPC gives each contracting state the freedom to decide whether or not to
· require, in accordance with its domestic legal system, that a translation of all or part of the European patent specification be filed with its industrial property office,
· require that the applicant or the proprietor of the patent pay all or part of the costs of publication of such translation,
· provide that, in the event of failure to observe the above-mentioned requirements, the European patent shall be deemed to be void ab initio,
mandates a working party chaired jointly by France, Portugal and Sweden and instructed to submit to the governments of the contracting states and to the EPC Revision Conference mentioned in point 5, before 31 December 1999, a report containing proposals aimed at reducing translation-related costs by some 50%.
The solutions which could be looked into include the following in particular:
· an option permitting those states which choose to do so to limit the translation to subparagraphs a, b and c of Rule 27 of the EPC Implementing Regulations. The working party could also propose a reformulation of Rule 27,
· an option permitting those states which choose to do so to accept a translation filed with the EPO and to consider it as filed with the industrial property office of the contracting state concerned,
· extending to two or three years the time limit granted to the patent proprietor for furnishing translations, while maintaining the three-month time limit for translation of the claims,
· other proposals, particularly some of those scrutinised by the EPO's Patent Law Committee or made by a delegation. It is understood that priority must be given to those proposals which are most likely to be supported by a substantial number of states.
The working party is also instructed to furnish the governments of the contracting states and the EPC Revision Conference mentioned in point 5 with a draft of an optional protocol to the EPC, under which its signatory states undertake not to require the translation of the description of the European patent, provided that it is available in English.
If it considers it desirable, the working party may also propose an alternative whereby the signatory states undertake not to require the translation of the description, provided that it is available in one of the official EPO languages as designated by each signatory state.
B - Shortening the grant procedure
The Intergovernmental Conference,
considering that the conditions of international competition require patents to be granted within a period that is in keeping with the interests of users,
invites the Organisation to undertake every possible effort to shorten procedures, so as to bring the average time it takes to grant a European patent down to three years, whilst maintaining the level of quality.
2 - Harmonising European patent litigation
The Intergovernmental Conference,
considering that it is necessary to increase the effectiveness and legal certainty of the protection conferred by the European patent by establishing a jurisdictional system that meets the need for a uniform interpretation of the European patent,
aware that European companies and inventors expect a judicial system which brings about a quick and high-quality first-instance decision in each contracting state,
(1) recommends that the contracting states take whatever measures each considers necessary to study the restriction to a minimum - which in some states could mean three or less - of the number of courts dealing with patent litigation; ongoing training of the judges at those courts could be provided with the help of the EPO;
(2) mandates a working party chaired jointly by Germany, Luxembourg and Switzerland and instructed to issue proposals. The working party shall in particular:
· study under what conditions the principle of arbitration in litigation relating to validity and infringement might be acknowledged by the contracting states,
· define the terms under which a common entity can be established and financed to which national jurisdictions can refer, with a view to obtaining advice, that part of any litigation relating to validity and infringement.
The working party shall also present a draft text for an optional protocol to the EPC which, with regard to litigation concerning European patents, would commit its signatory states to an integrated judicial system, including uniform rules of procedure and a common court of appeal.
Its report shall be submitted to the governments of the contracting states and the EPC Revision Conference mentioned in point 5 before 1 July 2000.
3 - Modernising EPO decision-making
The Intergovernmental Conference,
considering that it is necessary to increase the efficiency of EPO decision-making procedures,
noting the EPO Administrative Council's decision to welcome a number of new member states from 1 July 2002,
invites the Organisation
· to put forward various proposals aimed at improving the decision-making process, promoting the degree of transparency and maintaining fair treatment of all the member states, so that these proposals can be implemented within two years;
· to examine the possibility of lowering the qualified majority under Article 35(2) EPC to two-thirds of the votes.
4 - Effects of disclosures
The Intergovernmental Conference,
considering that research institutes, universities and certain firms wish to be able to file patent applications while at the same time being obliged to practise certain forms of disclosure,
considering that modern means of communication such as the Internet increase the risk that the results of research might be disclosed involuntarily,
considering that, both in Europe and in other countries worldwide, these disclosures prevent inventors from obtaining patent protection for their inventions,
mandates the Organisation to examine under what conditions the effects of disclosures prior to filing could be taken into account in European patent law.
5 - EPC Revision Conference
The Intergovernmental Conference,
considering the need to have a revised version of the EPC which takes account of the aims listed under point 3,
considering that the BEST procedure is likely to improve the Office's productivity and that it is necessary to give it a sound legal basis,
considering that it is desirable to eliminate any ambiguity regarding the patentability of inventions involving software and that the European Commission has announced its intention to present as soon as possible a draft directive aimed at harmonising the legislation of the member states concerning the patentability of computer programs,
considering the need to bring the EPC into line quickly with the relevant international agreements and Community texts,
considering that implementation of the Community patent requires close co-operation between the European Community and the Organisation,
requests the Organisation to prepare without delay, in accordance with Article 172 EPC, a revision conference to be convened in the year 2000 with a view to adopting, before 1 January 2001, a revised text relating in particular to:
· Article 35 EPC concerning decision-making;
· Articles 6, 16 and 17 EPC and Section I of the Protocol on Centralisation, so as to implement the BEST procedure;
· Article 52(2) EPC which excludes computer programs from patentability;
· Part IX of the EPC (Special Agreements).
It wishes the revised text to enter into force before 1 July 2002.