ESAB: The EPO's new advisory board

The EPO has recruited an expert group of eleven advisors to sit on a newly-minted advisory council, to be known as the Economic and Social Advisory Board, or ESAB.

The purpose of ESAB is to tell the EPO how to direct its efforts when studying the impact of patents on the economy and society. These studies are to be funded by the EPO and will be supported by the EPO's Chief Economist and a secretariat, but the Board will be completely independent in selecting topics and deciding how the studies and workshops will be organised. We are told that participation in many of the workshops will be open to the public, and the Board's findings will be published.

At its inaugural meeting last week, the Board selected its first three topics for study, as follows:

• The role and structure of fees
• The importance of patent quality
• Challenges to the functioning of the patent system from overlapping sets of patent rights (so-called patent thickets)

Daphne spent a very enjoyable afternoon pretending to be
a smartphone patent, hiding out in the thicket

The topics chosen represent a pretty interesting starting set. Just considering the first one, there's no doubt that the role of patent fees, even leaving aside their structure, is a hot topic. In the USA, there's the debate over fee diversion, and many other national offices are also seen as useful sources of revenue for governments. Applicants pay fees for patents, and those fees are whisked away into the central revenue.

EPO fees were traditionally set at levels which seemed to be somehow tied to the cost or value of the services provided at each stage - formalities examination on filing, search report, examination procedure and finally grant and printing, with the fees roughly matching the time and effort involved. In recent years the fees have increasingly been used as instruments of policy, being used as both carrot and stick to reward behaviours which the Office wants to encourage (reductions for online filing) and to punish those behaviours considered undesirable (the enormous hike in excess claims fees a few years ago). Which is the right role for patent fees, or are both valid?

And what about the structure of fees: should there be pre- and post-grant annuities as in Europe, or just a small number of post-issuance renewals as in the USA? Should EPO divisional applications require the payment of thousands of euros of accumulated annuities on filing, or ought this be deferred until at least a search report has issued and the examination fee is due? What purpose does the designation fee serve in the context of the EPC in its current form, and should it be combined with the filing, examination, or grant and printing fee? In 1984 the national offices agreed to pay the EPO 50% of every renewal fee received for European patents - is this still the correct level?

Of course these initial mewsings are mere guesswork and idle speculation until the ESAB sets out the parameters of each study and the methodology for obtaining input, but the IPKat is reassured that the topics will be investigated in depth and with a high level of insight when one considers the distinguished (and perhaps surprisingly international) composition of the Board, those members being:

So much ability in such a confined space

• Prof. Dr Dietmar Harhoff, Ludwig Maximilian University, Munich
• Prof. Bronwyn Hall, University of California, Berkeley
• Prof. Dr Geertrui van Overwalle, University of Leuven
• The Rt. Hon. Prof. Sir Robin Jacob, University College London, Faculty of Laws
• Dr Mariagrazia Squicciarini, OECD
• Prof. Sadao Nagaoka, Hitotsubashi University, Tokyo
• Prof. Dr Mu Rongping, Chinese Academy of Sciences, Institute of Policy and Management, Beijing
• Béatrix de Russé, Technicolor SA, Paris
• Ruud Peters, Philips, Eindhoven
• Dr. István Molnár, College of Kecskemét, Hungary
• Prof. Dr N. Ayşe Odman Boztosun, Akdeniz University, Antalya

The IPKat wishes the ESAB and the supporting staff from the EPO well in this new endeavour.