Patinnova 99â and EPIDOS 99

Michael Blackman *

45 Kenwood Drive, Beckenham, Kent BR3 6QY, UK

Abstract

A snapshot of some of the key issues discussed at these conferences is provided. These include the future of patent information

services in the new age of electronic databases on the Internet with contributions from Derwent, the EPO, the European Com-

mission, and others. These presentations showed how the commercial and `free' databases may coexist in a way that could bene®t

the user with a potentially innovative product. Also illustrated was the value of patent information in the assessment process for

awards to technically innovative ®rms.

Another underlying theme explored in some depth in both conferences was the renewed e�orts to introduce a single Europe-wide

patent system, Community Patent Convention (CPC), and the bene®ts this could provide in the world-wide economy. The need to

obtain a bundle of nationally valid patents to cover Europe was seen by many industrialists as burdensome, especially when

compared with existing systems providing protection in analogous economic blocks such as the USA and Japan. The major hurdles

still to be fully overcome include the cost and the necessity for translations, the issues of sovereignty of individual countries in

Europe, the legal process for challenging a CPC patent, and the e�ect on national patent o�ces and their ability to continue to

provide services not available elsewhere. Ó 2000 Elsevier Science Ltd. All rights reserved.

1. Introduction

For the ®rst time, these conferences were held se-quentially at the same venue. They occupied a full weekin October in Halkidiki, Greece and attracted over 500delegates for a part or all of the week. The Patinnovaconference had some plenary sessions, but was mainly inthe form of three parallel sessions, covering patent in-formation, patent policy and developments, and patentlitigation insurance, respectively. Much detailed infor-mation on these conferences is available on the Internetsites for the European Commission and the EPO andwill be published in the formal hard copy proceedings,so I have limited myself here to a few general issues anda few items that I found particularly interesting to ourwork in patent information.

The conferences were held against a backdrop of

· a major new e�ort to get the Community PatentConvention (CPC) launched, and

· the ongoing ¯uidity and unpredictability of the mar-ket in patent information at present, as the e�ects of

the Internet and of other technological and softwareimprovements in this ®eld continue to make theirpresence felt.

The e�ects of both developments on the inter-relatedpatent protection, patent enforcement and patent in-formation professions are already substantial andpromise to be quite profound.

2. Patinnova 99

2.1. Patenting in Europe: the future

There were strong calls for Europe to increase itse�orts to introduce a unitary patent system and improveits litigation system for patents. The representatives ofthe European Commission gave a short outline of animproved litigation system, which could consist ofcompetent ®rst instance courts at national level, and, assecond instance, a central European Court of Patents.As a voice from industry, Esko Friman of Nokia,pointed out that ``If Europe wants to be successful in thetechnology race with the US and Japan, it has to reviseits patent system. Patents are playing a key role in thatrace''.

World Patent Information 21 (1999) 275±277

www.elsevier.com/locate/worpatin

* Tel.: +44-208-6588583; fax: +44-208-6588583.

E-mail address: mblackwpi@aol.com (M. Blackman).

0172-2190/00/$ - see front matter Ó 2000 Elsevier Science Ltd. All rights reserved.

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There was also pressure to ensure that the patentsystem gets a higher pro®le in corporate and academictraining in order to ensure Europe's competitive edge inthe long run.

For many industrialists, the current patent system,consisting of national patents and centrally granted, butnationally validated European patents was seen to betoo slow and too costly for the needs of European in-dustry acting in a rapidly changing competitive envi-ronment. According to Mr Friman's view, a unitarypatent, which would also be centrally granted and ad-ministered by the European Patent O�ce, would makenational patent o�ces not redundant, but assign them tonew and even more important roles.

Brian Yorke of the life science company, Novartis,gave a thought-provoking view of ``Patenting in the nextMillennium''. He ®rst reminded us of the importance ofpatents in the pharmaceutical industry ± research costsare massive, imitation of the resulting drug is oftenrelatively simple. He set out his view that what inno-vators need from the patent system is (1) an examinedpatent in a reasonable time and at a reasonable cost, and(2) an enforcement procedure that has reasonable pre-dictability of outcome, again within a reasonable timeand at a reasonable cost. He then matched the variousways of obtaining patent protection around the worldagainst these criteria. He viewed the EPO as a success onexamination, and a failure on oppositions ± too slow,while the PCT route he felt was a success, with improvedpredictability and reduced costs stemming from thesearches made and delayed timescale for making the bigmoney decisions.

On the CPC patent, he agrees with the concept. Ifsuitably implemented, it could prove valuable, but thevital issues of translations, costs, legal process for op-position, etc. will need to be solved so that a practicaltool for business, rather than a politically motivated``White Elephant'' is created.

2.2. The Community patent convention

Back in the 1970s, the European Patent Convention(EPC), Patent Cooperation Treaty (PCT) and the CPCwere all emerging as a result of political and pragmaticpressures on governments. This was especially con-cerned with Europe (EPC and CPC), but was part of aworldwide desire to simplify patenting and save timeand money for applicants and governments alike. ThePCT does not result directly in granted patents ofcourse, but does simplify initial ®ling in many countriesand delays big money decisions for a longer period thanother routes. The EPC grants a bundle of national Eu-ropean patents. The CPC, however, is intended to granta single patent covering the whole European Commu-nity; as such it has caused much more discussion, as itimpinges on delicate matters of

· the sovereignty of each state and, linked with that,the legal process for challenging a CPC patent,

· the cost of and necessity for translations into the lan-guage of each state before a granted Community pa-tent enters into force in those states, and

· the e�ects on the continued existence of national pa-tent o�ces and the services they provide, especiallyfor smaller ®rms and individuals.

There was little doubting the sincere desire, in boththe larger companies that patent extensively in Europeand the respective regional policy and law making andpatent granting authorities, to provide the option ofrequesting a Community patent in the nearer (next 5±10yr) rather than more distant future. However, despitethe positive statements made, many present felt that theresolution of each of these three thorny issues was likelyto continue to be di�cult.

An emotive speech was made by Ana Palacio Vall-elersundi, MEP (Member of the European Parliament)calling for the rights of individual countries to demandtranslations, whatever the language, to be respected, butalso making a strong plea to reduce the costs of pat-enting signi®cantly. The incompatibility of these twodesires was pointed out by one delegate along the linesof ``Given that approximately 40% of the total patentingcosts are already attributable to translations, how doyou propose to ensure that the cost of patenting is re-duced, while espousing a policy which could mean that,for instance, every European Patent would have to betranslated into Latvian and a multitude of other lan-guages''?

2.3. Patent information

Rob Willows put forward a scenario of the possiblebene®ts to individual users, and to the wider potentialuser community, of the availability of charged-for value-added patent information services in tandem with freeInternet-based databases of patent information. Forexample, though the latter lack the sophistication ofdatabases like Derwent WPI, they can help people getstarted easily in looking at patent information in apositive way. This start can lead to a much greaterawareness in the community at large and ultimately to agreater need for better quality searches from varioussources, once these new users realise the limitations oftheir own e�orts on the Internet databases.

Many delegates expressed concerns about the futureof high quality databases and services in the present very¯uid market for patent information providers. It is hardfor most of us to feel comfortable without access tovalue-added databases such as Inpadoc, Derwent WPI,US Claims, Chemical Abstracts, but the rapidly im-proving o�erings through the Esp@cenetâ and IBMsites are clearly going to impact these other services.

276 M. Blackman / World Patent Information 21 (1999) 275±277

Waldemar K�utt explained the increasing role thatpatent searches are playing in the European Commis-sion's various programmes of assistance for technicalinnovation. Carried out by the EPO, initially on a smallselection of projects, the bene®ts to both the Commis-sion and the applicant were found to be substantial. Itwas found for instance that the cost of these searcheswas very low (by a factor of about 30) in relation to thebudgets of those proposals shown to be likely to dupli-cate existing published technology, because they lacknovelty and/or potentially infringe existing IPR. Ac-cordingly, patent searches are now a standard procedureon applications to the EC for many awards. Alterna-tively, applicants are required to show evidence of suchsearches having been carried out, and with what result,before ®ling their requests for funding.

3. EPIDOS 99

The EPIDOS 99 conference naturally had a sharperfocus than Patinnova 99â and brought delegates up-to-date on current and projected developments in areassuch as Esp@cenetâ, INPADOC, the European Patentregister on the Internet, the restructuring of the EPOwebsite, conversion of the ESPACEâ series to MIMO-SA and DVD technology. A review of the epoline pro-ject, to move the EPO away from paper-basedtransactions to an electronic system through the Inter-

net, concentrated on the vital measures being put inplace to ensure the necessary trusted security environ-ment. The priorities in the initial stages of epoline are:online ®ling, online ®le inspection, search report dis-patch, fee payment, and the electronic exchange of pri-ority documents. In addition to the conferencepresentations, several topics were explored in moredepth in interactive and informal workshop sessions.

I hope that we will be able to carry full articles basedon many of these topics in future issues.

4. Conference organisation

There were mixed views on whether linking the con-ferences was bene®cial. Clearly there are some synergiesbetween the two events and some cost savings in travel,etc. On the other side, it was quite a marathon for someattending all sessions throughout the week. In addition,the focus of the two conferences is quite di�erent; manydelegates felt that linking them led to a lack of a clearfocus to the week. The necessary but tedious formalopening and closing and feedback sessions seemednever-ending to many delegates. That said, much usefulinformation and ideas emerged, and there was ampletime to network amongst other delegates, speakers andexhibitors. And of course large numbers of people didattend the conferences overall, and most individualsessions and workshops were well attended.

M. Blackman / World Patent Information 21 (1999) 275±277 277