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EPO to review substantive practice and procedure in drive to maintain quality

Last Friday, the EPO posted a press release on its website with the headline “Council of the European Patent Organisation backs a comprehensive strategy to tackle workload”. The release reports that the Council had approved the findings of a document presented by the Board of the organisation’s administrative council which had recommended ways the EPO should tackle its ever-increasing workload and the pressures this put on the office in terms of quality thresholds and growing pendency times.

Specifically, five recommendations were made:

• Utilising work done by others (other patent offices in Europe or outside Europe, applicants and third parties).

• "Raising the bar" (i.e. granting exclusive rights only for technical innovations with sufficient inventive merit)

• Improving the efficiency of the process (coming up with new measures to deal with the workload in an efficient way)

• Enhancing cooperation within Europe (e.g. by building the European Patent Network that consists of the EPO and the national patent offices)

• Making the Organisation and the EPO fit for the future (enhancing their capability to deal with new challenges, reviewing governance and finance).

I have since managed to get hold of a copy of the report (which is not yet available online) and it is quite a detailed document – running to close to 40 pages. Those who have read the blogs I have written (here, here and here) based on the interview with Alison Brimelow I did at the beginning of this month will not be surprised by much of what is in it. However, there is one section that was new, at least to me: “Raising the bar”.

In this section, the report states that the need to maintain the quality of EPO patent grants is paramount. As a result, it is necessary to ascertain what is meant by “quality” so that the European patent system can do what it is supposed to do: promote “innovation by granting exclusive rights only for innovations with sufficient inventive merit”. Over its next three pages, the report looks at how this should be done. It suggest three routes:

• Changes to current practice and procedure that do not necessitate changes to the European Patent Convention (EPC).

• Finding ways in which applicants, their representatives and third parties can help ensure that redefined quality standards are adhered to.

• Changes to legal standards under the EPC, if these are necessary.

The report says that a study should be undertaken to review current substantive practice and procedure. It goes on: “Proposals to amend these may include a reinforcement of the importance of the problem and solution approach in the assessment of inventive step.” Other areas that could be reviewed are the application of the technical character requirement and a possible redefinition of the concept of “prompting” the skilled person. Finally, the study might look at the “requirements for completing the votum by the division on the proposal to grant a patent” and whether this should “formally form part of the open-to-public-inspection part of the file”.

The report also states that quality can only be maintained and enhanced if the quality of applications is also high. It discusses various ways in which applicants, their representatives and third parties can help ensure this is the case. “With this in mind,” the report says, “it should be studied how the behaviour of applicants could be influenced and how third parties could be involved.” Among possible measures suggested are that: there should be a “strict application of the legal condition that only technical innovations can be protected by a patent”; the one independent claim per category should be strictly enforced; “a general top limit of claims per application (like recently introduced in the USA)” be introduced; ways are thought of to “stimulate applicants to search (prefiling) inventions”; and “allow third parties to request accelerated examination”.

With regard to legal changes to the EPC, the report states that: “The major focus will be on the level of inventive step which is perceived in a number of quarters as being too low.” However, changes should only be made if there is a “compelling case” for this to happen. It is also important, says the report, to consider the impact any changes made in Europe would have on the international patent system. Among the specific areas suggested for further investigation is: “Whether and how the existing definition of a person skilled in the art should be modified.”

Of course, there is a lot more to the report than just this brief summary of one particular section. And the whole publication is just a series of suggestions – admittedly accepted by the Council – rather than a set of concrete decisions. However, it's probably fair to say that they do provide a very clear insight into the way those that run the office are currently thinking. Like their colleagues at the USPTO’s Patent Advisory Committee, it is pretty clear that the authors of the report believe the current system is unsustainable. One thing that everyone at the EPO could profitably learn from the US experience, though, is just how important it is to bring all stakeholders in the European patent system into any reform process – change dictated from on high will cause a lot of mistrust and resentment.

My understanding is that EPO officials are currently deciding whether the report should be made available on-line. I very much hope that they decide it should be. This is an important document that should be read by as many people as possible. It looks set to provide the base from which major changes could take place in the European patent system over the next few years.


Joff Wild
IAM Magazine
18 December 2007

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RE: EPO to review substantive practice and procedure in drive to maintain quality

I would certainly like to read it, it sounds as if there is some good stuff in there. I like the idea of being able to accelerate someone else's application. I hope it can be anonymous as the most likely reason I would have is that its making a freedom to operate opinion difficult to finish.

Barbara E Cookson, Filemot Technology Law Ltd on 19 Dec 2007

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