ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 89th meeting of the Administrative Council of the European Patent Organisation (4 to 7 June 2002, Stockholm)
The Administrative Council of the European Patent Organisation held its 89th meeting in Stockholm from 4 to 7 June 2002 under the chairmanship of Mr Roland GROSSENBACHER (CH).
The President of the Office, Mr Ingo KOBER, presented his management report depicting its activities in the first half of 2002.
With regard to filing figures, the events which had cast a shadow over the end of 2001 had been followed by an apparent decline in the number of European patent applications. Disruptions to postal services in the United States following the anthrax scare had led to big delays in the transmittal of application dossiers, especially for international applications. Nonetheless, the final filing figures for 2001 had been very close to the Office's forecasts, reaching 158 200 against an expected 160 000. Once all the latecomers had been counted, the forecasts might even be exceeded.
By the end of April things seemed to be getting back to normal, with the number of transmittals running at close to the usual levels. Yet one possibility that could not be ruled out was that the changes to the PCT procedure made by both the PCT Assembly and the Office might have affected applicants' behaviour.
In the first four months of 2002, 52 900 European patent applications had been filed. That was 2% below the April 2001 figure, and 8% below the planning figure, which had not expected the delay in transmittals to continue after 2001. For Euro-PCT, filings to date were 2.4% above 2001 levels and 9.5% below the plan, which foresaw strong growth in PCT filings. Direct European patent applications had fallen slightly more than envisaged.
In the year ending April 2002, 156 600 European patent applications had been filed, of which 65.2% had been Euro-PCT. That was slightly above the April 2001 figures but still below the plan, which envisaged a total of 180 000 filings at the end of 2002, including 69% by the PCT route.
The productivity of Office staff had grown by 4.3% in 2001 compared with 2000, both in respect of total core products - search, examination, opposition, and appeal decisions - and for the Office as a whole.
At the end of April, total production in search had amounted to 43 900 searches, ie an increase of 3 500 or 9% compared with the same period in 2001.
At the end of April 2002, the number of final actions in examination had been 5% higher than that for April 2001, at 21 350. The new procedure for preliminary examination under PCT Chapter II had enabled the number of these examinations carried out during the first four months of the year to be increased by 40%. The number of oppositions dealt with was 21 dossiers (nearly 3%) lower than in 2001.
From January to April 2002, over 14 600 European patents had been granted, more than twice as many as in the same period the year before. The figure for European patents granted over the twelve months to the end of April was close on 43 000.
The technical boards of appeal had settled 481 appeals, 103 more than in the same period of 2001 and 32 above plan. During the same period, 428 technical appeals had been filed, compared with 484 in 2001.
The search workload had been particularly affected by disruption to US postal services following the anthrax scare. At the end of April, it had been 7% below its April 2001 level, and 11% below plan. International searches especially had been down: by 10% on 2001, and 19% below plan.
With regard to European dossiers, the examination workload at the end of March had been 17% below plan and 2% below the March 2001 figure. The PCT examination workload had grown by 13%, but was 12% below plan.
In the first four months of 2002, 457 new appeals had been filed - 46 fewer than forecast and 50 fewer than during the same period of 2001.
At the end of April, 3 255 appeals had been pending before the technical boards of appeal. That was a decrease of 39 cases, or 1.2%, compared with the corresponding figure for the previous year.
The backlogs were still a problem, but the Office's recent undertaking with regard to PCT-related issues had freed capacity which was currently being targeted at them. An interesting feature was that the Euro-direct search backlog was concentrated in five out of fourteen technical fields, namely computers, telecommunications, electrical machines, human necessities, and vehicles and general technology.
At the end of April, the search backlog had been 73 000 dossiers, 45 000 of them involving European searches, compared to 55 600 and 34 200 respectively in 2001.
The aim was to reduce this figure by 2003/2004 using the manpower capacity released by the streamlined PCT procedure and to strengthen recruitment in those areas where the backlog was high.
The backlog in examination had been 69 000 dossiers at the end of April 2002, compared to 51 600 in 2001. However, as with search, released capacity would be used to reduce this by 2004/2005.
The backlog in the technical boards of appeal had stood at 1 207 cases at the end of April, some 10% (134 cases) less than at the same time the previous year.
The latest statistics on the streamlined PCT procedure showed an examiner interaction rate of 34%, which was slightly higher than the January figure (31%) but still far below the projected 50%. The forecast saving of about 250 man-years would therefore definitely be achieved. This released capacity would be used primarily to reduce the backlogs, in particular the EP search backlog. As to the procedure itself, the texts of the standard communications had been improved to take better account of the status of each file, and after some initial delays refunds were now being sent out on time.
The extension of BEST in DG 1 was proceeding according to plan (full BEST in 2005). About 770 DG 1 examiners were now (May 2002) working in BEST mode. Some would start working on oppositions later in the year. It should be noted that the Office had made remarkable progress, considering that it had devoted considerable human resources to training new recruits and BEST examiners, a measure which would begin to bear fruit in a few years' time.
That year's EUROTAB meeting had been hosted by the Irish Patent Office in Kilkenny. Agenda items had included the concept of the technical invention, the processing of so-called "complex applications", priority, and the concept of the same invention. The following year's EUROTAB would be hosted by Germany.
That year's "Seminar for Applicants" had attracted some 70 participants from industry, representing 20 different countries. As well as present and future member states, there had been participants from the USA, Japan, India and Israel. As usual, they had been provided with a varied programme of lectures (new topics being the Online European Register and File Inspection and the automatic preclassification project), some workshops, a round-table discussion and a "free search" in direct interaction with an examiner. Several participants had taken the opportunity to present their companies to the examiners who dealt with their applications.
In decision G 3/99, handed down on 18 February 2002, the Enlarged Board of Appeal had held, inter alia, that an opposition filed in common by two or more persons was admissible on payment of only one opposition fee.
The boards of appeal had received the following visits: from Finnish patent practitioners from the Helsinki University of Technology, and from a delegation of Supreme Court and District Court judges from the Republic of Slovenia.
DG 3 had long been collecting national decisions, and a project was currently under way to publish them with a view to providing better information about national case law.
The fourth edition of the "Case Law of the Boards of Appeal of the European Patent Office" had now been published in the three official languages. It would also be available on CD-ROM.
The upward trend in the number of candidates enrolling for the European qualifying examination continued. At 1 454, the number of candidates who sat the examination had been about 20% higher than the previous year (1 164 candidates). Of these, 671 had been taking the examination for the first time.
The pass rate had reached a low level in recent examinations, and this seemed unlikely to improve significantly in the near future. For easier learning and to broaden the range of possibilities for effective preparation, an interactive section of the Compendium had been put on a CD-ROM, enabling candidates to simulate examination conditions. The disc held some 11 200 documents and about 9 000 links. The Compendium on CD-ROM had been made available to the public in mid-December 2001. The feedback from users had been very positive, and in order to meet continuing demand an additional 500 discs were to be produced in addition to the first 1 600 already distributed.
In the field of documentation, efforts to provide EPO examiners with the best and most comprehensive electronic search tools had continued.
MEDLINE, a major non-patent literature database, had been added to the internal collection offered on EPOQUE. With 11.5 million abstracts, that was the largest-ever NPL addition to the internal databases.
The complete EPOQUE full-text collection now contained more than ten million documents. The milestone of 110 million records in the EPOQUE databases had been passed, and there were now 5 million patent abstracts in the master EPO patent database, EPODOC. These abstracts were also searchable by the general public via esp@cenet®.
"HARMONY", the trilateral classification project, was continuing. The first concrete results were expected in the semiconductor field, where USPTO examiners would start classifying their incoming documents under the European Classification Scheme that summer.
The EPO's online filing system, epoline®, which had now received over 1 100 applications, had been further developed to support PCT entry into the regional phase. At the same time, discussions with the epi had led to an agreement on the inclusion of word-processing files with an application to provide a basis for any future corrections. That addition had provided the epi with the functionality it needed to be able to actively support online filing. In parallel, support had been under way for the operational Finnish online filing system and the development of new systems for the Spanish, French and UK offices. The latter planned to be in production with national, European and PCT filings by the end of the year.
The Online European Patent Register, which now provided 35 000 searches a week to about 3 000 users, had been further extended to give more search and display capacity. A tool to allow users to be informed by e-mail of any changes in dossiers that interested them had also been designed in co-operation with a number of external users, and would be made available by the end of the year.
The Online File Inspection system was now used more than 2 000 times a day to view any of the 600 000 published applications with their associated correspondence. The Office was currently completing the backfile scanning of all opposition and appeal files, which would be finished by the end of 2004. Nonetheless, to ensure the best possible service, the EPO was giving priority to scanning all files where a paper file inspection request had been received, and would review the overall completion date in the light of the number of online requests for paper-only dossiers.
In the area of automation, the Office planned to set up a new unit of the IS department to support national offices in their installation and use of automation systems developed by the European Patent Office.
Despite the freeze in The Hague, the Office's recruitment drive had continued, with 229 new staff (including 144 examiners) joining by May and another 80 new examiners due to start in the following few months. The Office had also launched a major new campaign covering not only its existing member states, of course, but also those due to join shortly.
The Office's financial situation remained healthy: 2001 had ended with an operating surplus of nearly DEM 308m, and accumulated net working capital had increased to DEM 858m (or EUR 439m). In 2002, net working capital had continued to rise, to EUR 457m at the end of the first quarter. The operating surplus had been over budget at almost EUR 24m.
Ten states had been invited by the Administrative Council to accede to the EPC, namely Bulgaria, the Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, Romania, the Slovak Republic and Slovenia.
In April, four of them (Bulgaria, the Czech Republic, Estonia and the Slovak Republic) had deposited their instruments of accession with the German government. Thus on 1 July 2002 the EPC would enter into force for those states. The others were expected to accede in the near future.
At that time, six co-operation and extension agreements were in force between the European Patent Organisation and states in eastern and south-eastern Europe. However, the agreements with Latvia, Lithuania, Romania and Slovenia would be terminated as soon as those states acceded to the EPC.
The co-operation and extension agreements with Albania and the Former Yugoslav Republic of Macedonia would continue to apply. A new agreement signed in November 2001 with the Federal Republic of Yugoslavia had not yet entered into force. Negotiations on a co-operation and extension agreement with Bosnia-Herzegovina, initiated in 1997 but suspended for several years, had now recommenced.
A preliminary draft of new Implementing Regulations under the EPC 2000 had been completed and had been the subject of extensive in-house consultation. All the comments and proposals made by the EPO departments involved were now being looked at and the draft was being reviewed. Once that review had been finished the draft new Regulations would be published on the EPO website for public consultation and would be submitted to SACEPO. A meeting of the Patent Law Committee to discuss the final draft, which would be reviewed again after the public consultation had taken place, was scheduled for October.
As no agreement had been reached in December on the key elements of a future Community patent system, debate on the Commission's proposal of August 2000 had continued on the political and technical levels.
The EPO had taken an active part in the second meeting of the Working Group on Reform of the PCT. Regarding the core issues (simplification and streamlining of the PCT procedure) considerable progress had been made (inter alia) in the matter of an expanded international search report (EISR). It was hoped that at its meeting in early July the PCT Reform Committee would be able to finalise the work and prepare the ground for a decision by the forthcoming PCT Assembly implementing such a system as soon as possible as a first step. The system would be entirely in line with BEST, providing applicants - in addition to the international search - with an international search opinion (ISO) which in most cases would render unnecessary the cumbersome PCT Chapter II procedure of further (but still preliminary) examination. For the EPO, this approach would reduce the Chapter II workload considerably.
A DG 1/DG 2/DG 5 PCT Revision Task Force had been set up to assess the issue. At the WIPO meeting on 29 April it had presented an initial document explaining that in the longer term the EPO advocated the ISO approach as a replacement for the present PCT Chapter II. As an intermediate solution, some form of interaction during PCT examination might be retained, either along the lines of the current streamlined PCT procedure or through early entry into the EP regional phase. The results would be presented to the PCT Reform Committee in due course.
The restriction on the EPO's PCT activity as an international authority had come into effect on 1 March 2002. Although a 5% reduction of the workload had been noted in the technical fields concerned, further measures might prove necessary.
Since 2 January applicants had been able benefit from the uniform 31-month time limit under Rule 107 EPC when entering the European phase. On 1 April the corresponding amendment to Article 22 PCT had come into force in all the PCT member states (including the USA), apart from 19 (including China, Japan and South Korea) which still needed to adapt their national law. Thus it was still too early to evaluate the resulting benefits in terms of workload reduction.
A new edition of the EPO's Euro-PCT Guide for Applicants had recently become available. It covered the many changes relating to the international and European phases.
The Office had also provided assistance with the ongoing work on a European Patent Litigation Protocol. The nine delegations active in the Sub-group of the Working Party on Litigation had last met in December 2001, when it had been decided that the language of the third proposal for a litigation protocol, which contained 185 articles and 215 rules, had to be improved before it could be submitted to the full working party or to an intergovernmental conference. A small steering committee (comprising CH, DE, FR, GB and NL) had therefore been set up to supervise the extensive overhaul of the third proposal which had been carried out over recent months. The EPO had been asked to help, and this had involved not only a complete language check in order to come closer to a text in treaty language, but also a division of the third proposal into several different legal instruments. The basic idea was to incorporate only the most fundamental provisions into a protocol subject to ratification, whereas many lengthy provisions might be contained in other instruments which could be amended more easily.
A draft had been produced in time for the next meeting of the Sub-group, to be held in July 2002. Thereafter, the next step would be to submit, at the end of the year, a final draft in the three official languages to the full working party, which would then decide whether an intergovernmental conference could be convened in 2003.
WIPO had organised a Conference on the International Patent System in Geneva at the end of March. Faced with a quite new environment, patent systems worldwide were subject to extraordinary demands. The conference had concluded that there were urgent problems to be solved, but it was essential to proceed slowly and with caution to enhance and reform the system, making it more flexible and responsive to the needs of users. The EPO could only concur with the view that, if the ultimate goal was the creation of an international patent system, substantive patent law harmonisation had to be the cornerstone on which it rested. Clearly, at present, it was wise to focus primarily on PCT reform, as that promised quicker gains than approaches relying on substantive harmonisation. In that regard, the proposed expanded international search report was certainly a step in the right direction. WIPO would be producing a follow-up paper for the General Assembly within the framework of the "WIPO Patent Agenda", which was likely to identify the problems more clearly and explore various options for dealing with them.
The Standing Committee on the Law on Patents had met in Geneva in early May to pursue work on the draft Substantive Patent Law Treaty with the aim of achieving worldwide harmonisation on the basis of "best practice". Although tangible progress had been made, major hurdles remained, particularly regarding the issue of patentable subject-matter. The European view was that the USA and Europe could agree to disagree on the issue, but the Americans had made it clear that exporting their standard was one of their prime goals in the exercise. It was still too early to predict the outcome, but there seemed to be considerable political will to ensure the success of the endeavour. It would become increasingly important in the coming stages of this work for European delegations to present a united front to safeguard the essential principles enshrined in the EPC, itself already a product of harmonisation according to "best practice".
Following the signing of an extension agreement with the Yugoslav Federation in November 2001, a co-operation programme had started with the Patent Office in Belgrade, whose needs were very substantial.
The EPO had held a meeting in Vienna with the future member states on the subject of data transfer after accession; a similar meeting had been organised in Berlin with patent attorneys' associations.
As part of co-operation with Latin America, discussions had been held with the President of INPI (Brazil) regarding possible EPO support for the modernisation of the CEDIN information centre, including the possible development of a Brazilian esp@cenet® system.
In Mexico, particular attention had been paid to further support for the project to create "patenting centres" all over the country.
In Asia, the Local Co-ordination Unit of the ECAP II project had been officially opened during the "EC-ASEAN Symposium on Networking of Training Centres and Courts" held in Bangkok, Thailand. The unit was located on the premises of the Department of Intellectual Property (Thai Patent Office). It had been set up with funds from the European Commission and was headed by an EPO staff member supported by two Thai colleagues.
In the EC-China programme, the main thrust had been to assist the Chinese IP agencies (about twenty) in meeting the requirements of the TRIPs agreements in order to prepare China's accession to the WTO.
The Common Software had gone into production in two further EPO member states, Monaco and Greece.
The third congress of the European Intellectual Property Institutes Network (EIPIN) had taken place in London, where more than 100 students had met for discussions and participation in a mock court.
With progress towards a knowledge-based society in Europe now a reality, the EPO International Academy continued to keep pace with the trend by internationalising and adapting its training programme. The 2002 programme built on the EPO's effective and far-reaching co-operation with the offices of the current and future member states. The accession process starting in July 2002 was to be actively supported by seminars designed to facilitate the accession states' integration into the Organisation at all levels. The current programme comprised 22 seminars and included several public events.
The country coverage of the INPADOC bibliographic database had been extended to 71 countries. The legal status coverage was now 40 countries.
In the area of co-operation with member states, twelve bilateral co-operation programmes relating to patent information were now in progress. Three programmes had been successfully completed in 2001. A new bilateral co-operation programme with Belgium had been approved in April, and a new multilateral programme on patent information training had been proposed.
The PATLIB network had grown to more than 180 centres in the current member states. The annual PATLIB Conference had taken place in Sicily with record attendances. A liaison officer had been appointed for all member states, based in Vienna. Other activities had included the production of an interactive Compendium CD-ROM for those sitting the European qualifying examination.
Much activity had taken place under the post-grant projects. The harmonisation of data on lapsed patents, between the national offices and the EPO database, was proceeding successfully.
The EPO website had recorded high usage levels, with more than a million hits a week delivering over 50 gigabytes of data each month.
The classified backfile on CD-ROM had been updated for ESPACE® GLOBALPat by merging the data from the start of 1997 to the end of 2000 into the classified collection. The updates to the classified collection had been distributed to the national offices of the member states, the PATLIB centres and WIPO member states. The classified collection had been grouped into 13 clusters, which could be purchased separately. Regular production of the monthly numerical frontfile CD-ROM had been resumed as from January 2001.
As far as software development was concerned, the MIMOSA version 4.15 user interface software had developed into a de facto worldwide standard in the patent environment.
During the review period, the EPO had participated internationally in thirteen exhibitions and trade fairs. It continued to promote epoline® and esp@cenet® at appropriate public events and to raise public awareness of all new developments at the EPO. The EPO project to survey the needs of patent information users had begun. The invitation to tender had been published.
In addition to his management report, the President presented the Annual Report 2001.
At its 89th meeting the Council also appointed Mr Lionel BARANES (FR) to succeed Mr Jacques MICHEL as Vice-President DG 1, for a term of five years from 1 November 2002.
The Council appointed Mr Wim van der EIJK (NL) as Chairman of the Committee on Patent Law for a term of three years from 6 June 2002.
The Council reappointed Mr Lars BJÖRKLUND (SE) as Chairman of the Working Party on Technical Information for a further term of three years from 26 October 2002.
The Council mandated its Chairman to institute proceedings for appointing a successor to the EPO President, to take office on 1 January 2004.
The Council approved a revised and updated version of its own Rules of Procedure.
Lastly, the Council approved an amendment to the Regulation on the establishment of an Institute of Professional Representatives before the EPO (see p. 429 in this issue).