Meeting with the European Patent Office Lisbon, 8 June 2016

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1 EPO Attendees Mr Benoît Battistelli Mr Raimund Lutz Mr Guillaume Minnoye Ms Margot Fröhlinger Mr Francois Regis Hannart Mr Niclas Morey Mr Telmo Vilela Mr Nelson Das Neves President Vice President, Legal/International Affairs Vice President, DG1 Principal Director, Patent Law and Multilateral Affairs Principal Director of European and International Co-operation Director, International Organisations, Trilateral and IP5 Member of the President's Office Project Co-ordinator International Co-operation FICPI Delegation Mr Douglas Deeth President Mr Julian Crump Vice-President Mr Antonio Pizzoli Chair of CET 4 Mr Robert Watson Vice-President, Work and Study Commission, Europe Members Commission 1. Update on EPO Benoît Battistelli warmly welcomed the FICPI delegation and gave a detailed overview of the EPO activities. He said it had been a positive year for the EPO, with a substantial increase in the number of applications (up 4.8%), and with a greater increase in the amount of grants (up 6%). He was at pains to point out that there had been no change in the proportion of the applications granted. There has been a 14% increase in work products (reaching 365,000 work products in 2015) and increased productivity (10%, products by FTE now at 56.5). The backlog is steadily reducing. The search backlog has been reduced by 65%, and they aim to eliminate it by July The overall backlog was 2 years of work at the end of 2015, having been at 3 years at the end of Quality is still the EPO s number one priority. The whole application process is ISO9001 certified, and the EPO ranked 1 st out of the IP5 offices for quality in the recent IAM survey. They see a key element to their quality being the 3-member Examining Division. Just under 200 new Examiners were recruited last year, and they have undergone intensive training. New tools for Examiners are being provided, with the CPC becoming a world standard, and an increase in the percentage of Asian documents being cited in searches. The Early Certainty from Search program and its upcoming counterparts for Examination and Opposition should allow the EPO finally to satisfy the Paris Criteria on timeliness (36 months from filing to grant). 1 / 5

2 Both the Global Dossier and the Federated European Patent Register have been steps forward in tools for users. Within the PCT system, it was highlighted that the EPO has frozen its ISA fee since April The PCT-PPH within the IP5 was recently renewed for 3 years. The EPO-AU PPH will begin on 1 July He also mentioned that Tunisia will become a validation state shortly (the third such state after Morocco and Moldova). Benoît Battistelli referred briefly to the social tensions at the EPO. He pointed to the figures already discussed as showing that the EPO is functioning well, with the issues arising from only one trade union who do not have the ability to disrupt the EPO s activities. 2. Reform of Boards of Appeal Benoît Battistelli said it was important to increase the appearance of independence of the Boards of Appeal, and they must improve their efficiency: the average delay in completing cases currently stands at 3 to 4 years. He summarised the proposals that will be in front of the Administrative Council at the end of June The plan is to create a President of the Boards of Appeal, who will be the senior Board of Appeal member as well as in charge of administration. A subsidiary group of the Administrative Council (BOAC) will be put in place to help Council run the Boards of Appeal. Specific career rules for the Board of Appeal members will be introduced as well regulations on conflicts of interest. The Boards will be relocated to new building in Munich. Regarding the appeal fees, the EPO consider the Boards: Cannot be fully self-financed (owing to access to justice reasons) Cannot be fully subsidised The appeal fees only currently cover 6% of the costs; Mr Battistelli thinks this should be more like 20-25%, so as to gradually increase the Appeal fees from the current 1860 to 7350 in The FICPI delegation pointed out that the increases proposed in the AC s documents seemed excessive, especially for ex parte appeals. The delegation recalled that when an increase of appeal fees had been discussed within SACEPO a few years ago (from 1240 to 1860), it had been proposed that the ex parte and inter partes fees might be different, in view of the amount of work each type of case involves. This comment seemed to be well received by Mr. Battistelli and his team, although general protests about the increase in the appeal fees were less well received. The AC document does not set an increased fee, but instead principles for guiding the BOAC and AC in future. 2 / 5

3 We further requested examples of possible applications of new rules on conflict of interest, which would be added to the current Service Regulations for all EPO employees (i.e. not only members of the Boards of Appeal), which rules will also be discussed at the next meeting of the Administrative Council. Mr Lutz explained that according to the new rules the EPO could forbid for two years former Examiners or BoA members to represent applicants/parties before the EPO or the Boards of Appeals, respectively. 3. Office Cooperation and User Input Niclas Morey summary the outcomes of the recent IP5 meeting held in Japan. The passive component of the Global Dossier is finished. The EPO s portal now has about 750,000 users in a year. There are a number of developments planned to the Global Dossier: Link to WIPO CASE in June 2016 so that exam reports from WIPO CASE countries will be available to examiners) WIPO CASE to be made available to public by the end of the year (via the EPO s portal at least) Work has started on an alerting tool for the IP5 members. The aim is to have this in place for the next IP5 meeting Work has also started on adding Legal Status to the Global Dossier. The aim is to have this in place for the next IP5 meeting Other projects include a standard XML format and standardisation of applicant names Mr. Morey also mentioned that it had been agreed to begin work on Cross-Filing, although he admitted during the discussion that there would have to be progress on substantive harmonisation before this would be practical. A Collaborative Search and Exam pilot is to be launched for about 100 files. This will work from the PCT to the national phase to allow examiners to discuss results. Applicants will be asked to volunteer (this is likely to start in about a year s time). The IP5 work on procedural harmonisation is ongoing: Unity of invention PCT standard to be adopted by 2018 (except for US national applications) Citation of prior art to be standardised with art being classified as cited by the office, cited by the applicant or cited by a third party Sufficiency of disclosure this is very complicated, so may take some time The EPO is to host to IP5 meetings next year in Malta. Regarding FICPI s role in the IP5 discussions, the EPO had proposed this formally to the IP5, noting that FICPI represented the attorneys, but the other offices and Industry groups had reportedly been opposed to the idea. Instead FICPI was invited to participate in a working group on IP5 issues, including 3 / 5

4 the Global Dossier, to be held in advance of the next IP5 meeting. The suggestion was that that the Industry component of IP5 meetings would become more strategic and less concerned with practical details. Mr Battistelli left the meeting at this point. 4. Update on Early Certainty from Search (ECfS) and other examination topics. Guillaume Minnoye explained that the aim was to reduce the ECfS backlog to about 3,500 applications, which is apparently the practical minimum. The EPO hope to reach this steady state within one or two months. ECfS has led to an increase in direct grants (those applications which proceed to grant with one communication) to about 30%. Early Certainty from Examination is going to be introduced. It will include the proposals discussed in the last SACEPO-WPR (as SACEPO WPR 3-16) meeting, relating to increased refunds of examination fees. In particular the EPO will: (1) inform applicants about the intended start of examination to allow them to withdraw the application and benefit from the fee refund (change of practice); (2) increase the fee refund in case of withdrawal, deemed withdrawal or refusal before substantive examination has begun from 75 % to 100 % (Art. 11 Rules relating to fees); and (3) introduce an additional opportunity for a 50 % refund of the examination fee in case of withdrawal after the first action in examination (Art. 11 Rules relating to fees). Some work is still ongoing on how to get the examination backlog down, being a mixture of ECfE and tackling old cases. Regarding the proposal to accept fee payments by online methods only, the EPO team recognised the importance of providing alternative backup methods, whilst wanting to encourage the use of online means as much as possible. 5. Implementation of the Unitary Patent, including conversion provisions and SPCs of UPs Margot Fröhlinger explained that the Commission intends to publish a notice later this year with the aim of clarifying that SPCs can be legitimately based on UPs. This notice will also encourage member states to adopt rules for conversion to national patents in the event of refusal of UP status. 4 / 5

5 The possibility of conversion where UP status is refused after the 3-month deadline for validation has been discussed in the Select Committee, and some countries are introducing provisions for this procedure. There might be a particular issue in the UK and France, which do not have a specific validation procedure (following the London Agreement). Regarding conversion following revocation owing to the existence of a novelty-destroying national prior right, Ms. Fröhlinger reported that this had also been discussed in the Select Committee, but agreement had not been reached. She referred to an opinion from an academic that the UPC could revoke a part of a UP. The EPO plan to start searching for national prior rights as a way of alleviating this issue. The Commission intends to make a proposal next year for Unitary SPCs, but this is likely to be complicated, given a possible need for the use of the enhanced cooperation procedure. Whilst it had been possible to use the European system as the basis for UPs, since the request for unitary effect would be made post-grant, the SPC was a separate right, not an extension of the patent, and therefore an EU institution would be required to grant EU-SPCs. The EPO rejected the proposition that the UPC posed a risk to staffing of the Board of Appeals, as it is foreseen that the UPC judges will all be part-time, at least to begin with, and this would be incompatible with remaining as a member of the Boards of Appeal. The salary levels were also expected to be quite different. 6. Patent Harmonisation Margot Fröhlinger reported on the recent Group B+ meeting in London. She said it was clear that there are major divergences in law in key jurisdictions regarding the Grace Period. In her view, the EPO user community wants a safety net grace period, which differs from that in the US (where publication gives rise to a kind of priority right), and the US is reluctant to change its law on this issue. The EPO thinks the harmonisation process should be user-driven, but this is proving challenging. It seems likely that more technical work will be needed before consulting the wider User Community. 7. Revised Druckexemplar procedure The tool has been changed so that the large bold brackets won t appear there should be a notice about this at some point soon. 8. Patent figures in colour This is in progress at PCT level (at the Meetings of International Authorities) and the EPO expects to introduce the ability to handle colour drawings in their next file handling system. Robert Watson, Vice-President CET 5 / 5