From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Monday, 17 November 2014

EPO, SIPO, PEEPO! We take a look at a fascinating event

Two of the most fascinating organisations in the world of IP are the European Patent Office (EPO) and its Chinese counterpart (SIPO). Both receive quantities of both criticism and praise for reasons that we need not adumbrate here, and both have been talking to one another in what looks a little like a low-risk love-in. Katfriend and occasional guest contributor Peter Arrowsmith (partner in London-based patent attorneys Cleveland) was there to witness this amicable event. As he explains:

Recent developments in the European and Chinese patent systems
On 13 November the EPO and the Chinese SIPO held a joint event in Brussels.  This was a high-level discussion in which the heads of the respective offices presented recent developments and areas of cooperation. 
EPO, ...
The conference began with a presentation by Dr Shen Changyu, the Commissioner of SIPO.  Dr Shen gave some history on the Chinese IP system, and presented some statistics on the remarkable growth in applications filed at SIPO.  Dr Shen explained that this growth has been fuelled partly by a 2008 decision of the Chinese State Council which promulgated the outline of a national IP strategy.  Significant efforts have been made since 2008 towards building a strong IP system, providing incentives for companies to file increasing numbers of applications at SIPO. 
SIPO, ... 
Dr Shen explained that much of the work to date in China has been on establishing a framework for a public service IP system.  He said that the next priority was to improve patent quality and to promote commercialisation.  Dr Shen also stressed the importance of cooperation between China and Europe, and indicated his interest in a continued dialogue. 
PEEPO! We're all watching
to see what happens next ...
President Benoît Battistelli then presented on behalf of the EPO and described some of the specific initiatives his office had developed in the interest of harmonisation. Increasing numbers of technical documents are now published only in Chinese, and limitations in searching these documents create a problem regarding legal certainty in the European patent application system.  For this reason the EPO has considered it a priority to develop automatic translation tools that can allow examiners to access this prior art and reduce the size of the “prior art black hole”.  As evidence of the progress that has been made, Mr Battistelli reported that 20% of search citations in 2013 EPO search reports had an Asian priority -- though the existence of an Asian priority does not necessarily mean that any translation of the search citation was actually required.  It is curious that he did not choose to mention the percentage of these documents which were cited in their original language (I can only guess that this number is a great deal lower). 
 Another important initiative at the EPO has been to promote the Cooperative Patent Classification (CPC) system, which has been in force at the EPO and the USPTO since 1 January 2013.  The EPO believes that differences in search classification systems represent a barrier in the harmonisation of international patents [that surely isn't controversial, says Merpel, who observes that, in the admittedly weakly-analogous field of trade mark law, even use of the same classification system by different people can appear to be a barrier to harmonisation].  Mr Battistelli reported that SIPO has now started classifying Chinese patent applications using CPC, which he believes is significant. 
 The Global Dossier system has recently been introduced by IP5, and Mr Battistelli sees this as another important step towards harmonisation.  The purpose of this system is to allow access to register extracts for the whole IP5 family using a single entry. European and Chinese data are already available on this system, including on-the-fly translations from Chinese into English. 
 Mr Battistelli also made a brief reference to the unitary patent, describing current progress.  He acknowledged that setting fees at the right level was a critical part of the system, and he indicated that the EPO hoped to able to announce fees “by June 2015” [the IPKat can't help wonder why this exercise has taken so long: it's not as if no IP granting office has ever undertaken such an exercise in the past, and the need to know the likely fee level is something that both supporters and critics have been pointing out for a pretty long time. This Kat also wants to know (i) if the criteria for fixing the fees will be made public and (ii) what sort of provision has been made for their swift amendment if it appears that, through a palpable erroneous set of initial assumptions, the unitary patent will produce a cash mountain like that accumulated by OHIM after the launch of the Community trade mark system].  Perhaps others know better, but I had not seen this date anywhere before.
 As an aside, Mr Battistelli also provided some statistics on Chinese participation in the European patent system.  These statistics made China seem like an impressive user of the European system, with Chinese applicants accounting for 8% of all applications.  As reported in a recent post, EPO statistics are typically based on the number of direct European applications plus the number of PCT applications, whether or not these subsequently enter the European phase.  In fact, less than 20% of Chinese-originating PCT applications enter the European regional phase.  When this is taken into account, Chinese applicants account for only around 3% of European patent applications: rather less impressive. 
 In a spirited Q&A session a number of challenging questions were put to the heads of office.  Since Dr Shen and Mr Battistelli had both referred to “patent quality”, one questioner asked whether the offices had considered developing metrics for it.  In reply Mr Battistelli said that “high quality” meant that the EPO was granting “legally solid patents”.  In his view increased quality would come about by increasing the effectiveness of the tools which are available to examiners, including translation tools and harmonisation of classification systems.  Dr Shen concurred, and further said that increased patent quality would be achieved in China by recruiting more examiners and providing effective training [Merpel wonders if any studies have been done on the impact of "patent quality" on patent litigation: it's not so clear to her what the consequences -- in particular the unintended ones -- might be].
Thanks, Peter!

3 comments:

Mark Richardson said...

The unitary patent renewal fee discussion seems to be caught in some sort of time warp....

The criteria for fixing the fees were discussed at the Premier Cercle conference in the summer and we covered some of this on IPcopy (http://ipcopy.wordpress.com/2014/07/08/unitary-patent-and-unified-patent-court-conference-review/).

There do genuinely seem to be a lot of competing factors that need to be considered but it is dragging out way longer than anyone had hoped.

There was even recently a suggestion (to my mind at least) during a talk by Neil Feinson of the UKIPO that the fees might take even longer to agree! (http://ipcopy.wordpress.com/2014/10/21/unitary-patent-and-the-upc-a-talk-by-neil-feinson-at-the-westminster-legal-policy-forum/).

A recent article on the Kluwer patent blog suggests that they've not yet started talking about hard numbers yet. They are still looking at the implications of different fee levels. (http://kluwerpatentblog.com/2014/10/23/real-discussion-on-renewal-fees-still-has-not-started-yet/)

Anonymous said...

Is the harmonisation of classification systems really going to help patent quality?

Unlike trademark classification, patent classification has a single purpose: that of indexing patent documents for searches. Mr. Battistelli presumably hasn't carried out a prior art search in his life, but this particular Anonymouse has, and in his experience, relying on a variety of different classification schemes actually helped him perform better searches: sometimes a document wasn't correctly classified in ECLA, but could be found using the US classification or the Japanese F-terms. If he was honest, Mr. Batistelli could say that harmonising patent classification schemes opens the door to more work-sharing between patent offices, which should help reduce costs. But pretending that it will improve that much-elusive beast, patent quality, is being "economical with the actualité", as Alan Clark would have put it...

Anyway, there already has been much too much ridiculous political tinkering with patent classification schemes: see the "Why?"...I mean "Y" classes in the CPC, in particular Y02 ("Technologies or applications for mitigation or adaptation against climate change"...

Ron said...

I also think that a harmonised classification scheme is going to be attractive to the EPO because it would make their work easier, and that it would make it more difficult to retrieve prior art. My personal experience has been that having available different classification schemes based on different philosophies does improve the chances of unearthing elusive documents.

When I was an examiner with the UK Patent Office, I took part in an exercise to check the accuracy of the EPO's ECLA scheme against the UK scheme. We identified 50 UK cases that had corresponding EPO filings, and compared the search results. In a significant number of cases the documents found in the respective search reports were completely different, but no less relevant.

When I later switched sides, in my early years of training to become a Patent Attorney, I sometimes helped out our searcher with prior art searches. I was told that the reason why US-applied IPC terms were so unreliable was that they were applied by a clerk using a concordance, and not by an examiner. Hence cases where the concordance was not very good, would be elusive. The procedure was therefore to do a search using the IPC, identify any EPO cases which had US family equivalents, identify the IPC terms applied by the US, and then repeat the search using the US-applied terms, however prima facie inappropriate they may have seemed. This would usually produce a crop of US patents having no foreign equivalents.

Subscribe to the IPKat's posts by email here

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