For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 15 November 2007

If all EPO patent applications were laid end-to-end ...

The IPKat's friend and IP solo practitioners' powerhouse Barbara Cookson (Filemot) sends this report on the 6th EPO (European Patent Office) Online Services Conference:

"Lake Como has been a favoured resort since Roman times and even now George Cluny and Richard Branson inhabit villas here. Over the last two days, 13-14 November 2007, the Villa Erba’s ultramodern glasshouse (right) was the home of the EPO, and patent paralegals and attorneys from around Europe had accepted their invitation to learn more about the state of online services and how to use them. So more than 500 of us turned our backs on the glittering lake, the pastoral views and the brightly sunlit filemot colours of autumn and paid attention to our computer screens. From a novelty, ebusiness has now become mainstream. Within perhaps 3-5 years, but only when it is ready -- as EPO President, Alison Brimelow, was careful to point out -- end-to-end electronic processing will be the only option, and change we must. The EPO had fielded a magnificent array of senior officials from their IT and formalities areas to listen to the patent-filing public and explain and hone their ambitions for greater efficiency.

For those of us expecting hot news and announcements there were few. You can now subscribe to a new Online services newsletter and there is an RSS feed for news. The promise of a web-based online filing option was also made. Apparently the Swedish insisted. Version 4 will also offer integration with proprietary practice management software.

We didn’t get a clue as to whether we would be designating fewer states after EPC2000 enters into force on 13 December. It seems that the EPO itself won't even know on the day because of the complexities of the procedure for deposits to be made with the German Ministry of Affairs. The fact that this does not distress the user community is somewhat surprising, but we seem to be content that it will be alright on the night. Alison mentioned the London Agreement, but no date for that elusive French ratification –- so near but so far. I did get a strong hint that the new UK rule changes and fee increases would arrive on 17 December.

Many of 32 the national offices had stands demonstrating their commitment to using the common tools the EPO has developed for online filIng as well as document management (PHOENIX) and procedural management system (SOPRANO) [that's Software for Property Rights Administration in National Offices - what a contrived acronym, says the IPKat] that, together with the server hardware, make up the EPTOS system. Many of the profession’s IT clients would have sought a patent for it, but the EPO is going to make it open source and has provided it “free” to the national offices. I put the free in inverted commas because there is a Cooperation Budget but, as Geoff Bennett of UK IPO pointed out, it is never enough.

Left: putting the SOPRANO through her paces

One of the highlights of the conference was a live demonstration of how it all works, conducted in a highly entertaining manner by Guido with an array of supporting stars who showed the process end-to-end, from the patent attorney writing his specification and filing it to its formalities processing, the correction of a deficiency, all the way to publication and retrieval via Espacenet. It all worked and helped to dispel the negativity displayed by the user representative in the opening panel, where EPI President Chris Mercer and Gianfranco Dragotti (the leader of the Italian profession), who call themselves consultants, demonstrated the profession's devotion to the security of paper.

Since we were in Italy it was impressive to learn that online filing to the Italian office will be compulsory for consultants by the end of 2008. Unlike the UK and Germany, Italy is planning to abrogate its examining duties to the EPO. On the second day I chose to attend the workshop on the new Utilisation project, where the EPO are hoping to find out if they can improve efficiency by utilising the work already done by the UK, German, Austian or Danish offices. The project started in April, and despite personal letters from the UK IPO to the representatives of all applicants eligible, only two files have been submitted so far. Germany has done better as there are 60 all told but, since the EPO were hoping for 1000, they are much disappointed. The feedback they received was that faster processing is attractive to only a very select group of applicants. Even those hoping to license or secure investment are also budget-conscious and reluctant to bring forward costs. The EPO say they cannot offer a cost-reduction because they must become more efficient – the possibilities of recruiting to the pool of examiners are limited – 350 a year is the limit of willing linguistically capable technical graduates - and they are making a loss. Apparently patents don’t live as long as they used too and the renewal funded examination model is not going to work any more. The fees will rise but let's hope that it can be done in a way that hurts those who provide low quality applications most.

Clearly there are tensions in the relationships between national offices and the EPO that need to be resolved in a way that can allow both to survive and work together efficiently. I find it humiliating for example that a UK applicant must provide a paper certified copy of his first UK filing to the EPO and deliver it by post but a US applicant does not. We are fumbling our way to a better demarcation of responsibilities.

Right: so long as the online connection is secure, patent attorneys can enjoy unfettered freedom in their pursuit of patentability

The local offices are much better at supporting local applicants to the extent that it is questionable whether the EPO should accept applications from the unrepresented. I do not make that suggestion because, as a representative, I see profit in it for myself as I had to emphasise to the Conference Chair Tim Sebastian but because it allows such applicants the better support they can get from the national office. The EPO has also found that local offices are better able to support online filers with the integration of their technology. As yet only 8 national offices are in production with the same software as the EPO but 16 are working with them.

One of the biggest successes of the EPOline project is online file inspection. In the paper world there were 35000 a year. Now there are 12000 a day, but none of those generate a cent for the EPO.

The EPC2000 changes are obviously taking up much time and it seems that the formalities teams are well ready. At the seminar I attended on Legal Remedies I was impressed by the clarity of thinking and presentation. Further processing and extensions of time will be easier to request. However, Alison did give a strong indication that we did not need to have more time as often as many representatives wished. However, with the backlogs and delays the EPO is labouring under she may find it difficult to take a hard line before her own house is in order.

Personally I look forward to an early implementation of end-to-end electronic processing at the EPO in the hope that this will return more competent personnel to the examining corps from areas such as pre-classification. Apparently there are hordes of examiners just trying to work out in what technical area a potential technical contribution might lie in poorly drafted specifications in order to get the files to the right examiner. European society needs an efficient patent system with grant or refusal within a reasonable timescale. We don’t have one but there is a will at least within the EPO to correct that".

Many thanks, Barbara, says the IPKat - it seems that all the things we've wanted for so long are about to become a reality. But Merpel says, won't it mean fewer jobs and less chance to enjoy a comfortable life at the applicant's expense?

2 comments:

Anonymous said...

Actually, the UPP was hoping for 1500 files in the first 12 months, not the 1000 they now say.

Anonymous said...

I'm not sure electronic processing is a cure for the need for pre-classification. Already there are tests of electronic means for automatic pre-classification (you only have to OCR documents which are, from the big applicants, normally of a good quality and this work doesn't need examiners). The manual or human pre-classification exists for the problem cases - and remember most applications at the EPO are PCT so the incoming format isn't controlled by the EPO.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':