Integration by Granting Practices: National Patent Offices ... · Nation state EPO EU WIPO WTO...
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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
Ad-
ministration
Implemen-
tation 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
International Bureau
or
European Patent Office
or
National Offices
Valid in One country Up to 38 countries +
2 extension states
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 workload at the major
patent offices
More cross-filings
Increase of the global
importance of patents
• 250,000 to 300,000
“same” applications
filed each year in two
or more IP5 Offices
• Industry calls for easier
processing of cross-
filings
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
• 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)
International co-operation:
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.
• 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).
Principles of cooperation with member states
Key functional areas in the patent cycle
Conflict
resolution
Enforcement
Publication
Search/
Examination Classification
User
support
Patent
information
Awareness
Professional
representatives
Commer-
cialisation
Pre-filing
Patent granting
Post grant
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
Qualific
atio
n
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 media-
less 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!