ADMINISTRATIVE COUNCIL
Reports on meetings of the Administrative Council
Report on the 65th meeting of the Administrative Council of the European Patent Organisation (2 to 5 December 1996)
The Administrative Council of the European Patent Organisation held its 65th meeting in Munich from 2 to 5 December 1996, with Julián ÁLVAREZ ÁLVAREZ (ES) presiding.
The EPO President, Ingo KOBER, presented the Office's activities report for 1996.
Mr Kober reported that the number of applications was expected to reach 85 500 for the year, some 10 500 (or 14%) over budget and comprising 41 100 direct European and 44 400 Euro-PCT filings. The proportion of Euro-PCT applications was thus around 52%; the expected figure had been 51%. About 22 700 Euro-PCT applications would enter the regional phase, 11% more than the budget estimate.
The number of search requests had increased accordingly, and was 9.3% above the 1996 budget figure. At 53 200, requests for examination too would be 1.4% higher than forecast, with the number of requests for preliminary examination under PCT Chapter II running at 9.2% above plan. The number of oppositions, on the other hand, would be around 2 530, or 9% lower than forecast. There would be a slight increase (to about 1 160) in the number of technical appeals filed.
In search, the revised 1996 output target (80 000 searches) would be met by the end of the year. In examination, the revised output target would be slightly exceeded. In appeals, the output target would not quite be reached; procedural aspects were becoming increasingly complex, and a number of important cases which had attracted media attention could also have affected the number of cases dealt with this year.
With filings on the increase and a growing proportion of PCT work needing rapid treatment, both the stock (work in hand) and backlogs had increased, especially in search. The backlog in European searches would end the year at about 12 000 cases. This meant that 25% of European applications were not searched in time. To prevent a further increase in the backlog and the processing times, and to meet its aims as regards punctual publication of search reports, the Office was taking steps to increase production (for example by filling all vacant examiner posts during 1997). In examination, there was a backlog of 34 900 first communications. In appeals, the backlog was 1 300 cases.
Introduction of the BACON Numerical System (BNS) during 1996 had resulted in significant staff savings. BNS enabled any document from the BACON collection to be printed on demand at any EPO site with a suitable printer, thus doing away with large-scale photocopying services.
BNS was now used to print the documents for the classified paper search files the documents cited in search reports and also to deliver to examiners (either for on-screen viewing or printing on paper) the documents found during on-line searches. The BNS database currently contained 22.5 million documents, comprising both the minimum PCT and the BACON-extended collections. Every month, 180 000 documents were printed, 60 000 viewed using EPOQUE, and 80 000 extracted for such purposes as CD conversion and OCR.
Over the year, the documentation available to search examiners had continued to grow. The number of patents in the systematic search documentation had increased by 700 000 to 24.5 million, and non-patent literature by 100 000 items to 2.5 million. Deployment of the DOCTOOL system during 1996, allowing examiners to add keywords directly to documents on-line, had resulted in the addition of over 200 000 keywords and ICO codes. Nor had work on the European classification system (ECLA) been neglected; 4 000 new sub-divisions had been created.
In 1996, DG 1 had added to its electronic full-text databases selected non-patent literature from the Elsevier publishing house. At the moment, DG 1 selected articles from over 1 200 journals for inclusion in the systematic documentation, and the intention was to obtain as many as possible in electronic full-text format, which would permit an effective search in non-patent literature. The Elsevier full-text database and the IBM Technical Disclosure Bulletin database were only the first two of many such databases, and discussions were under way with other publishers to see how soon other literature could be made available to examiners in electronic form.
The increasing use of electronic search methods had transformed the search examiner's job from a highly individual and essentially solitary one into a profession in which individuals had to regard themselves as members of a team of experts and where the sharing of experience was of paramount importance. The Office had devised a "learning process" to encourage and reinforce this transformation. Within each "cluster", one person was responsible for co-ordination, and the results were periodically evaluated by means of surveys.
The surveys showed a marked increase in the level of confidence in the electronic search systems. The number of searches where the examiner consulted the electronic databases before the paper classified collection had increased by about 27% between 1995 and 1996. The success rate in finding the most relevant document using electronic tools had increased during 1996 by 20% in mechanics and electricity/physics and by 6% in chemistry. Even so, in chemistry and electricity/physics the most relevant document was still found on-line only in approximately 50% of cases, and in mechanics the proportion was even lower (about 23%). This indicated that although the learning process was making headway in increasing confidence in the search systems, more had to be done in terms of indexation, search strategies and the data available on-line before a truly paperless environment could be envisaged.
The effects of the learning process could also be seen in increased use of the EPOQUE system. In 1996, the total number of records retrieved through on-line searches was approximately 19.7 million, 13 million of which were subsequently looked at in the full-text/drawing viewer. This represented growth of 11% and 80% respectively compared with 1995, and meant that an average of 230 records were retrieved per search and 150 documents subsequently viewed. In addition, over the same period, database connection time had increased by 12% to over 91 000 hours per year.
In DG 2, about 150 examiners would be taking part in the BEST project by the end of 1996. These examiners were all working in the 80 or so technical fields where on-line searches were feasible using existing electronic search tools and where the documentation available on-line gave the same coverage as the documentation in DG 1. About 3 400 searches would be carried out during 1996.
The sharp rise in the number of requests for preliminary examination under PCT Chapter II continued unabated in 1996. The increase of 20% compared with 1995 meant that further steps had to be taken to automate the formalities work involved. PCT Chapter II work already represented a significant proportion of the substantive examiners' workload, and one likely to rise even further in the future.
DG 2's Harmonisation and Quality directorate had reported on its investigations in two critical areas. One of these studies had looked at the application of the EPC to filings entering the European phase after a PCT Chapter II examination, as compared with direct European filings, and had concluded that there was no difference in their treatment.
In DG 3, one remarkable result of the year's work was that there were no cases currently pending before the Enlarged Board of Appeal. A total of seven had been cleared, including two worth special mention: G 2/95, which concerned whether an applicant who filed the wrong application documents by mistake could replace them with the correct ones, and G 7/95 about filing new grounds for opposition during appeal proceedings.
The President also mentioned the 8th European Patent Judges' Symposium, held in Stockholm in September at the invitation of the Swedish government. The symposium's importance went far beyond the geographical borders of the EPO, the 70 delegates who gathered in Stockholm in 1996 having come from 29 countries. They had discussed a wide range of topics, including novelty, colliding applications, prior use and the exceptions to patentability under Article 53(b) EPC.
Moving on to legal affairs, Mr Kober said that despite repeated calls the ratification procedure for the Community patent still lacked real momentum. The 1989 Agreement relating to Community patents had so far been ratified by six of the twelve signatory states. Italy and the Netherlands had recently passed the necessary legislation, but had not yet deposited their instruments of ratification.
This meant it was still far from certain when the Community patent would become reality. In any case, IRDAC (Industrial R & D Advisory Committee), the European Commission's advisory group set up by Mme Cresson, had concluded that in its present form the Community patent would not be attractive to industry, and that a new EU initiative to boost the European patent system would be preferable to revising the Community Patent Convention. Mr Kober said that whichever course were taken, the interests of European applicants called for rapid agreement on the way ahead in order to avoid further delays in strengthening the European patent system.
In 1996, 871 candidates had taken the European qualifying examination. Of these, 55% were doing so for the first time. The pass rate had fallen to the lowest level ever - only 32%, compared with 40% in 1995. At first sight, this might seem to indicate that results had got worse. It could be explained however by the new system, which allowed candidates to re-sit only those papers which they had previously failed. This meant that a candidate who passed one paper was recorded statistically as not having passed the examination as a whole if he still had one or more papers left to take. Once allowance was made for this, the overall pass rate became 43% for first-timers and 21% for re-sitters.
Moving on to international affairs, Mr Kober said that Roman Herzog, President of the Federal Republic of Germany, had visited the EPO, showing keen interest in the latest developments at the Office, patent costs in Europe, and the Organisation's possible future enlargement. He also reported on his own visit to Jacques Santer, President of the European Commission, on 26 September. Mr Santer had been fully aware of the EPO's brief, and willing to bear the Organisation's concerns and efforts in mind in the political reflections about construction of the Community. The Green Paper on Innovation would lead to a Commission action plan, and a "Europe of the Patent" would be a top priority.
In 1996, the trilateral conference and pre-conference had been hosted by the EPO at The Hague in mid-November. Technical experts from the JPO, USPTO and EPO had met to discuss the various trilateral projects, with WIPO experts also participating for three projects with WIPO technical involvement. Trilateral co-operation seemed to have received new impetus over the last year, as reflected in the Memorandum of Understanding signed by the heads of the three offices on 15 November, at the end of the trilateral conference.
Turning to central and eastern Europe, Mr Kober reported that Poland was now the third country, after Hungary and the Czech Republic, to ask to be invited to join the European Patent Organisation. Basic training courses under the RIPP project had continued in Poland, the Czech Republic and Romania. The European Commission had requested that Bosnia-Herzegovina and the Former Yugoslav Republic of Macedonia be included in the RIPP programme. The common software was now in operation in five countries - Romania, Bulgaria, Lithuania, Latvia and Estonia - and on the point of installation in Slovakia. The Czech Industrial Property Office had recently decided to adopt this software with support from the EPO, which had financed the equipment on which a prototype would soon be loaded.
In October an EPO delegation had visited the Turkish Patent Office to help prepare a feasibility study for a project (financed by the World Bank) which aimed to bring Turkey's intellectual property system up to a European level. During the visit, Mr. Yalçiner had reiterated Turkey's intention to accede to the European Patent Convention as soon as possible, and no later than early 1999. This only required ratification of the EPC by the Turkish government.
The EPO's extension agreement with Romania had entered into force on 15 October. This was the first country with a long patenting tradition and a national examination system to offer European patents via the extension system. Bosnia-Herzegovina and the Former Yugoslav Republic of Macedonia had also expressed interest in extension agreements. In the first nine months of 1996, 3 000 requests for extension had been received for the existing "extension countries" (compared with 2 666 for the same period in 1995).
The Eurasian Patent Office (EAPO) was developing. The European, UK and French Offices had hosted a promotion and information visit from the EAPO President, Mr Blinnikov. This had been most successful, with more than 500 people attending. In the autumn, for the first time, a group of patent attorneys from the CIS countries had attended a special training course organised by CEIPI in Strasbourg.
Meanwhile the EU had signed the contract for the TACIS regional project, which would get under way early next year.
Co-operation work with ASEAN - known collectively as "ECAP1" and funded by the EU - had proceeded as planned. The European Commission had also proposed a follow-up project (ECAP2) which had been approved by the EU member states. The EPO, its member states' national offices and the Office for Harmonisation in the Internal Market (OHIM) should be able to play an active role in this. At the end of November, the EPO and OHIM had started implementing the EU-funded co-operation project with Vietnam.
In patent information, Mr Kober said the year's major event had been the EPIDOS Annual Conference (formerly known as the User Meeting), held in Turin.
In parallel with the Annual Conference, there had been an exhibition by firms working in patent information. The 35 stands had received some 600 visitors. 400 delegates had attended the actual conference, and this year's innovation - a series of seminars designed to raise general awareness among local industry and students - had been very well received. Numerous organisations had generously provided speakers on topics as varied as career opportunities in industrial property, "technology watches" and financial support for technical innovation.
1996 had also seen the introduction of the first ESPACE CD-ROM series using mixed-mode MIMOSA software. The ESPACE-FIRST series, containing the first pages of EPO and PCT applications, was now produced using MIMOSA, with the EPO documents stored in mixed-mode format and the PCT ones still in facsimile format for the time being. Many patent offices and firms would be using the MIMOSA authoring software for their products, and MIMOSA would rapidly establish itself as a worldwide standard for patent information products. The MIMOSA user software had been distributed to all ESPACE CD-ROM users, and initial feedback had been very positive.
The EPO now planned to move its entire ESPACE CD-ROM series to MIMOSA by the end of next year.
The latest addition to the range of ESPACE CD-ROMs had been ESPACE-MEXICO, and projects to produce the patent publications of Ireland, New Zealand, Canada, Turkey and Israel on CD-ROM were steadily moving forward. An important new patent information product on CD-ROM would be produced using the MIMOSA software. In October, the Council had approved preparation of the First Page database on CD-ROM and at the recent trilateral conference agreement had now been reached on launching a joint tender procedure. All the data was now available in mixed mode, and it was hoped that a product containing European and US data could be released in mid-1997. The Japanese part of the database (PAJ) had been available on CD-ROM since the beginning of 1995.
Several commercial distributors had already shown interest in the on-line distribution of the First Page database.
For use of the MIMOSA software, the three offices had agreed a marginal-cost pricing policy and that the software should be distributed by all three offices using a common model contract. They had also confirmed that a nominated sub-contractor could act on behalf of each office.
EPOQUE had been introduced at the Finnish Office, and was generating great interest. Special training on EPOQUE had also been organised at the Spanish and Austrian Offices. Use of EPOQUE in national offices had generally continued to rise, and by the end of 1996 was expected to reach 7 500 hours (3 000 hours more than in 1995).
The Council also approved the President's proposal to restructure the arrangements for dialogue with the European Commission, by holding two-monthly EC/EPO working meetings (eg to discuss enlargement or draft EC directives and regulations), technical meetings of experts as necessary and an annual high-level meeting (Commissioners, directors-general, EPO President). The Council authorised the President to finalise a co-operation agreement between the EPO and the Chinese Patent Office. It also approved co-operation programmes between the EPO and the Belgian and Italian Offices on patent information.
The Administrative Council had asked its Committee on Patent Law to study possible changes to the existing arrangements for the translation and validation of European patents. Having discussed the committee's report, it decided to pursue this matter.
The Council approved the 1995 accounts and, after discussing the auditors' report and hearing the opinion of the Budget and Finance Committee, discharged the President in respect of the 1995 accounting period. It also adopted draft decisions deferring the date for paying designation fees (see below OJ EPO, 1997, 13) and reducing the procedural fees (see below OJ EPO, 1997, 12). It then adopted the 1997 budget, with income and expenditure in balance at DEM 1 540 million.
The Council gave Romania observer status at meetings of the Administrative Council and the Committee on Patent Law.
On a proposal from the President, it appointed a board of appeal member, and reappointed several others. It also appointed Mr Messerli as Chairman of the Disciplinary Board of Appeal.