patent harmonisation and utilisation: first europe...

Patent Harmonisation and Utilisation:First Europe and Then the World?

Dr Mark WeaverDirector Practice & Procedure

3 December 2009

Utilisation and Harmonisation - Drivers

Challenges

• Worldwide Patent Application Backlogs - Millions

• Duplication of Work

• Increased Costs

• Lack of Consistency

• Increased Legal Uncertainty

Possible Solutions

• Utilisation and Work Sharing

• New Bilateral or Multi-Lateral Agreements

• Improve on Existing Work Sharing Agreements

• Substantive Patent Law Harmonisation

• Simplified Language Requirements

First Europe ...

European Patent Landscape

EPO - 36 Member States

Austria • Belgium • Bulgaria • Croatia •Cyprus • Czech Republic • Denmark •Estonia • Finland • France • Germany •Greece • Hungary • Iceland • Ireland •Italy • Latvia • Liechtenstein • Lithuania •Luxembourg • Former Yugoslav Republic of Macedonia • Malta • Monaco • Netherlands •Norway • Poland • Portugal • Romania •San Marino • Slovakia • Slovenia • Spain •Sweden • Switzerland • Turkey • United Kingdom

European patent applications and patents can also be extended at the applicant's request to the following states:

Albania • Bosnia-Herzegovina • Serbia

Status: December 2009

Unified Patent Litigation System

UPLS

European and Community

Patents Court

ECPC

Community Patent

Enhanced Partnership

European Patent Network

EPN


• Unified Patent Litigation System

• Draft Council Conclusions on an enhanced patent system in Europe

http://register.consilium.europa.eu/pdf/en/09/st14/st14040.en09.pdf

• Draft Council Agreement on the European and Community Patents Court (ECPC)



• EU Competition ministers meeting today and tomorrow to discuss:

– ECPC

– Community Patent

• EU to accede to European Patent Convention (EPC)

– Enhanced Partnership based on European Standard for Searches (ESS)

• criteria for quality standards on e.g. training, tools, feedback and assessment

• ESS to be implemented within context of European Patent Network (EPN)

• especially EPO Initiatives

– European Quality System (EQS)– Utilisation Project

Constraints

• Member states have asked European Court of Justice (ECJ) to provide an opinion as to the legality of a unified patent litigation system (UPLS)

– Any agreement at the meeting of the Competitiveness Council conditional on a positive response from the Court

– Decision is expected next year

• Final agreement on Community patent and ECPC

– Input required from European Parliament under Lisbon Treaty

European & Community Patents Court

Establishment of the European and Community Patents Court (ECPC)

• Exclusive jurisdiction in respect of civil litigation related to infringement & validity of Community patents and European patents

• Court of First Instance, Court of Appeal, Registry

• Court of First Instance

– Central division – Local and regional divisions

Community Patent

• Unitary patent throughout the European Union

• Contrast with European patents granted under the EPC– Bundle of nationally enforceable patents in the designated states – Enforcement only through national courts – Possible inconsistency of result before national courts

• EU-wide consistent patent right

• Centralised enforcement through ECPC

• Draft Council Regulation on the Community patent


Enhanced Partnership

• European Patent Office to make use of search results of EPC member state NPOs

• Promote innovation by enhanced patent granting process through decreased duplication of work

• More rapid delivery of patents

• Increase speed of access to market for innovative products and services

• Fully respect the central role of the European Patent Office in examining and granting European patents

• European Patent Office to consider but not obliged to use the work of NPOs

• European Patent Office free to carry out further searches

• No restriction on the possibility for applicants to file their application directly at the European Patent Office

European Patent Network

• Utilisation by the EPO of work done by NPOs

• Implementation of a European Quality System

• User support activities

• New cooperation policy - EPO and NPOs

• Study on future workload

Utilisation Project

Two main goals of utilisation

• enhance the efficiency of the patent system in Europe

– enabling the EPO to make use of work carried out by NPOs

– reducing duplication of work

• improve the quality of the patent system in Europe

– feedback mechanism from EPO examiners to NPOs

– implementation of the European Quality System

Utilisation - First Steps

Rule 141 EPC & Rule 70b EPC from January 2011

• Request applicants to provide national office search products to the EPO in connection with a European patent application through application of Article 124 EPC

• Further investigate mechanisms for inter-office co-operation to exchange data (Art. 130 EPC)

• Agree with NPOs to deliver products (e.g. searches) on time within the priority year, such that they can be used by the applicant and the EPO during the handling of the EP filing

European Quality System

• Establish EQS within the framework of the EPN

• Define minimum requirements of the EQS

• Convergence of NPOs participating in the EPN

• Continuous improvement in quality of products & services

• Foundation for participation in EPO utilisation scheme

Thorny Issues

• Relationship of EPO to National Offices

– Central Role (Centralisation Protocol)

– Work distribution

– EPO staff concerns (quality, consistency)

– Users wishes

• Community Patent Renewal Fees

– Progressive

– Cost-covering

– Accrue to EPO

• Keep 50% • Remainder to member states• Distribution key

Thorny Issues

• General question of languages and translations will not be dealt with at the EU Ministers' meeting

– European Commission to put forward a separate proposal

– Most important next step in reaching a deal

• ECPC

– Central, Regional, Local• Competence• Consistency

– EU- and EPC-wide application of Court decision

– Forum Shopping (Price, Result)

Thorny Issues

• Languages of ECPC

– Fairness & predictability– Translation & Interpretation

• Language of community patent application

– EPO model, OHIM model, official member state language

• Community patent translations

– London Agreement model, local language(s)

• Lisbon Treaty

– Language arrangements for IP rights in Europe decided by member states

– no co-decision procedure

... Then the World

International Patent Landscape

International Patent Landscape - PCT

• Patent Cooperation Treaty (PCT)

– long-established cooperation mechanism

• Administered by World Intellectual Property Organization (WIPO)

http://www.wipo.int/patentscope/en/

• Filing of a single international patent application

• Same effect as national applications

• Protection in up to 142 states

• International cooperation for applications only

• Patent granting remains national or regional

• "PCT Patent" advocated by WIPO in the past, but no current proposals

PCT - Scope for Working Sharing and Harmonisation

• WIPO and most developed countries want to strengthen PCT

• PCT Draft Roadmap

• National Offices (national and international roles) should– eliminate duplication within their own Offices– encourage work sharing and reduction of duplication between different Offices– take further steps to ensure the availability of high quality search and examination

reports

• Significant opposition from developing countries – Duplication not necessarily a bad thing (different national patent law requirements)– Threat to sovereignty and use of IP protection as policy tool– Harmonisation by the back door

• "Studies" will be undertaken (always bad news - stalling tactic)

• Possible progress via PCT International Authorities– Mainly developed countries, but increasingly also developing countries– JPO not always pro-PCT– Major changes need majority agreement of all PCT Contracting States

Substantive Patent Law Treaty

• Proposed text to be adopted and applied by signatory states

• Driven by WIPO

• Intended to harmonise substantive patent law internationally

• First proposed 2000

• Too many differences to reach agreement

• No consensus on "modalities and scope of future work"

• No progress since 2005

Trilateral Cooperation

• Trilateral cooperation between EPO, JPO, USPTO since 1983

http://www.trilateral.net/index.html

• Traditionally technical (data and document exchange, standards)

• Increasingly patent policy

• Work sharing (such as PPH)

• Common Quality Standards and Systems (TQS)

• Catalogue of Differing Practices

– Substantive Patent Law– Assumption that majority of provisions and practices are the same– Establish catalogue where differences exist– Initially for work sharing (utilisation)– Potential for harmonisation– EPO initiative, approach welcomed by other Trilateral offices

IP5 Cooperation

• Trilateral offices plus China and South Korea (since 2008)

• Mission Statement:"The elimination of unnecessary duplication of work among the offices, enhancement of patent examination efficiency and quality, and guarantee of the stability of patent rights"

• Ten "Foundation Projects"– mainly information and documentation standardisation– Search and Examination Rules– Quality Management

• Quality Management similar to European and Trilateral schemes

• Search and Examination Rules– Diametrically opposite approach to Trilateral project (catalogue of all practices)– Model rules (similar practice already exists or majority of IP5 offices apply)– Common Rules (to be established; could be completely different to any IP5 practice) – Need to reconcile this mammoth waste of effort with more efficient Trilateral project– Led by China; diplomatic approach needed

Bilateral Initiatives - Patent Prosecution Highway

• Invention is patentable/allowable in the Office of first filing (OFF)

• Corresponding application in the Office of second filing (OSF) advanced out of turn for examination

• OSF can exploit the work results of the OFF

• One examination could lead to grants in many countries

• One to one national PPH cooperation supported by EPO

• EPO sees “plurilateral PPH” as a threat to the existence of the PCT

• Without significant reforms of the PCT system this could happen

• The answer is not to kill PPH but improve the PCT

• Trilateral offices to apply PPH to PCT applications

Conclusions

• Patent cooperation and work sharing in Europe has significant momentum

• Patent protection harmonisation in Europe is (theoretically) a given, but sometimes more honoured in the breach than in the observance

• Enhanced Partnership, Community Patent and ECPC should give further impetus to both utilisation and harmonisation in Europe

• Last but not least, the language problem ...

Conclusions

• In work sharing, "every little helps"*

• PPH may allow some fast tracking, but can only be limited in scope

• PPH does not address differences in substantive patent law

• The PCT can have only a limited impact on harmonisation, but has a high potential for work sharing benefits

• Further progress under PCT hampered by politicisation and polarisation

• International legal codification attempts at harmonisation (SPLT) have run into the sand

• Trilateral and IP5 initiatives offer potential opportunities for both international work sharing (short to medium term) and international harmonisation (longer term)

* with apologies to Tesco

Conclusions

• Maybe not Europe first, but rather Europe and the World in parallel

• Don't hold your breath ...

Rule 141

Information on prior art

• (1) An applicant claiming priority within the meaning of Article 87 shall file a copy of the results of any search carried out by the authority with which the previous application was filed together with the European patent application, in the case of a Euro-PCT application on entry into the European phase, or without delay after such results have been made available to him

• (2) The copy referred to in paragraph 1 shall be deemed to be duly filed if it is available to the European Patent Office and to be included in the file of the European patent application under the conditions determined by the President of the European Patent Office

• (3) Without prejudice to paragraphs 1 and 2, the European Patent Office may invite the applicant to provide, within a period of two months, information on prior art within the meaning of Article 124, paragraph 1

Rule 70b

Request for a copy of search results

• (1) Where the European Patent Office notes, at the time the Examining Division assumes responsibility, that a copy referred to in Rule 141, paragraph 1, has not been filed by the applicant and is not deemed to be duly filed under Rule 141, paragraph 2, it shall invite the applicant to file, within a period of two months, the copy or a statement that the results of the search referred to in Rule 141, paragraph 1, are not available to him

• (2) If the applicant fails to reply in due time to the invitation under paragraph 1, the European patent application shall be deemed to be withdrawn

Thank you for your attention

Any questions?

Dr Mark WeaverDirector Practice & Procedure European Patent OfficeMunich | GermanyTel. +49 (0)89 2399 [email protected]://www.epo.org

patent harmonisation and utilisation: first europe...

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