Integration by Granting Practices:

National Patent Offices and the EPO:

Harmonization, Centralization or Networking?

Georg Artelsmair

ESF SCSS Exploratory Workshop:

The Future of Patent Governance in Europe

Hamburg, 1-2 September 2014

Disclaimer

This presentation only reflects the private view of the

author

Contents

A. Complexity of the European patent framework

B. How to deal with this complexity

C. Cooperation as a necessity

A The complexity of the system

Europe is sometimes a bit complex

and the European patent system is not an exception!

The multi-level patent system in Europe

Nation state EPO EU WIPO WTO

Executive

authority

Granting of

national

patents; limited

PCT

examination;

national

innovation

systems

Granting of

European

patents;

PCT

examination

(UPP)

European

innovation

policy

PCT

Ad-

ministration

Implemen-

tation of the

TRIPs treaty

Legislative

authority

Limited to

national patent

legislation

[UPC]

Little; EPC

secondary

legislation

Community

patent law

(UPP)

[UPC]

Very little:

Adopting

implementin

g regulations

None

Judicial

authority

Judicial

decisions on

national and

European

patents

Responsibilit

y for

European

applications,

including the

granting of

patents

Responsible

for issues

related to the

single market

[UPC]

Very little;

Arbitration

and

mediation

Very little:

Settlement

of disputes

between

states

Three possible routes to file a patent

Route

National

European (EPC) International

Via National offices European Patent Office

or

National Offices

International Bureau

or

European Patent Office

or

National Offices

Valid in One country Up to 38 countries +

2 extension states

Up to 147 countries

In brief Applications are filed

with the relevant

national office and

are valid for that

state only

One single application in

DE/EN/FR for all EPC

contracting states

Same legal effects as

national patents

An international patent

procedure, not an

international patent

After the international phase,

applicants can choose to

enter the national/regional

phase in various states

Some user feedback on the European Patent

System (received by EPO)

• EPO remains a reference for its overall quality

• EPO’s highly skilled and specialised patent examiners much

appreciated

• EPO shall more strictly keep the deadlines

• Differences between European and Unitary patent are not always clear

• European patent attorneys from new contracting states need training

• Advantages of the PCT route with the EPO acting as ISA are not well

known to all

• Patentability of CII is a major concern

• Patent-translate tool is often used

• Etc.

The users’ needs: a main driver for the co-operation activities

Increase of the workload at the major

patent offices

More cross-filings

Increase of the global

importance of patents

• 250,000 to 300,000

“same” applications

filed each year in two

or more IP5 Offices

• Industry calls for easier

processing of cross-

filings

B How does the EPO address this complexity?

• By striving for high quality services

• By working together with other IP offices

The EPO strives for quality

• Highly skilled examiners

• State-of-the-art searches

• State-of-the-art patent

information service

• Thorough procedures and

review processes

• Quality controls and an ongoing

commitment to improvement

State-of-the-art examination services

• World's largest collection of documents

– 800 million records of patent and non-patent

literature documents in over 120 databases

– more than 7 000 journals

– databases updated daily, based on NPOs input

• High-performance EPOQUE search tool

– used by examiners

– a worldwide benchmark

– used by over 40 patent offices, including

Australia, Brazil, Canada and China

• Machine translation to extend the range of easily

accessible information

– based on corpora collected together with NPOs

State-of-the-art patent information services

Espacenet

over 88 million

patent documents,

easily searchable

Patent Translate

Automatic translation

between English

and 31 other languages,

including Chinese,

Japanese and Korean.

C Cooperation as a necessity

To provide the best possible user services the EPO

cooperates with:

• Non-Member States, in particular IP5

• International Organisations

• Member States

• Promote the EPO as a Global Player

– as international PCT authority

– with the adoption of EPO tools and standards

(e.g. Cooperative Patent Classification – CPC)

– as provider of patent information and

documentation

– with validation agreements

• Influence the development of the Global Patent

System

– by reducing work duplication (e.g. Common

Citation Document – CCD)

International co-operation:

Co-operation with International organisations

• WIPO: co-operation activities include e.g. the fully

electronic exchange of PCT documents

• EU: Brussels Bureau, unitary patent

• OHIM: projects and activities in the area of IP

training, exchange of human resources, awareness,

IP promotion, IT systems, etc.

• OECD: common studies

• International standardisation organisation: public

availability of telecommunication standards

Co-operation with Member States

• Strengthening the network of national offices in the

member states

• Promoting interoperability between the EPO and the

national offices

• The focus is on three main areas:

– Training for staff of NPOs and other institutions

– Patent-related IT services and tools

– Patent information awareness and tools

Today, 38 member states and 2 extension states

Belgium • Germany • France •

Luxembourg • Netherlands •

Switzerland • United Kingdom •

Sweden • Italy • Austria •

Liechtenstein • Greece • Spain •

Denmark • Monaco • Portugal •

Ireland • Finland • Cyprus •

Turkey • Bulgaria • Czech Republic •

Estonia • Slovakia • Slovenia •

Hungary • Romania • Poland •

Iceland • Lithuania • Latvia •

Malta • Croatia • Norway • Former

Yugoslav Rep. Macedonia •

San Marino • Albania • Serbia

European patent applications and patents can also

be extended at the applicant's request to Bosnia-

Herzegovina and Montenegro.

• Focus on the needs of the users

• Complementarity and subsidiarity (NPO – EPO)

• Objective-driven co-operation activities

• NPOs at the centre of co-operation

• Support focusing on the start-up phase of projects

• Co-financing based on eligibility criteria

• Focus on core business (patents).

Principles of cooperation with member states

Key functional areas in the patent cycle

Conflict

resolution

Enforcement

Publication

Search/

Examination Classification

User

support

Patent

information

Awareness

Professional

representatives

Commer-

cialisation

Pre-filing

Patent granting

Post grant

General implementation aspects

• Three main areas of Co-operation:

o Training

o Patent-Related IT Services and Tools

o Patent Information & Awareness

• Basis of Co-operation with MS are the Bilateral Cooperation Plans, supported by standardised Project Cards

• 13 million/year Budget.

The way to better user support

Content

Platform

Qualific

atio

n

High quality

user service

Examples of on-going co-operation projects

• European language technology services: Provide machine

translation services to and from DE/EN/FR to all MS languages plus

CN, JP, KR, RU

• EQE Candidate Support Project: Support for candidates from new

member states (together with CEIPI and EPI)

• Federated European Patent Register: One stop shop access to legal

status information

• EPOQUENet: State of the art search tool for examiner

• Discussion Platform for Exchange on Patent Procedures:

Discussion of patent practices in specific technical fields between EPO

and NPO examiners

• CPC: New classification standard

Outline of new projects

• Data acquisition: Priority project for the coming years based on

“quality at source”. Will include back scanning of documents from

1973 to date.

• Espacenet new: One-stop-shop access to all patent documents in

Europe (plus CN, JP, RU ...) searchable in full text

• Electronic Exchange for National Searches: Harmonised media-

less exchange of documents between NPOs having Working

Agreements on National Searches with the EPO.

• Patent Learn Initiative (IP Learn with OHIM): Awareness raising

based on modular blocks at universities

Conclusion

The issue is not:

Harmonization, centralization OR networking?

but:

Harmonization, centralization AND networking!

Thank you very much

for your attention!