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 Administration Implementation 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 Valid in One country Up to 38 countries + 2 extension states International Bureau or European Patent Office or National Offices 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 global importance of patents 250,000 to 300,000 same applications filed each year in two or more IP5 Offices More crossfilings Increase of the workload at the major patent offices Industry calls for easier processing of crossfilings
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
International co-operation: 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)
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.
Principles of cooperation with member states 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).
Key functional areas in the patent cycle Conflict resolution Awareness Enforcement Patent information Commercialisation Post grant Pre-filing User support Publication Patent granting Professional representatives Search/ Examination Classification
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 Qualification 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 medialess 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!