Joff Wild

So what happens when a major patent office concedes publicly that its growing backlog will never be beaten and that for the foreseeable future there are going to be hundreds of thousands of unexamined applications piling up, creating levels of uncertainty never before known in the jurisdictions for which it is responsible? Well, over the next couple of years we may well find out, because this is the situation in which the European Patent Office now says it finds itself.

In an exclusive interview with IAM, which took place in the Slovenian capital Ljubljana, venue for this year’s European Patent Forum and European Inventor of the Year ceremony, EPO president Alison Brimelow said: “I am coming to the conclusion that the backlog will not be mastered." It is now time, she continued, to think about what must be done to ensure that the patent system can function adequately in this new environment. “There are no silver bullets but there are a range of things that we could do – some of which will be more effective than others.”

While stressing that she had come to no conclusions and had not even begun to form firm opinions yet, it is clear that recognising backlogs are essentially an unsolvable problem has freed up Brimelow and her team to ask a series of questions that indicate major changes to the European patent system are a real possibility. How about mutual recognition for starters, or maybe a two-tier application process? Higher fees are another option, as is blocks of applications being handled by teams of examiners instead of each being handled by an individual operating in a silo. All of this in addition to the measures – including raising the patentability bar – already outlined in the document Future Workload, which was approved by the Council of the European Patent Organisation last December.

Also present at the interview was Ciarán McGinley, the Controller of the EPO. According to McGinley there have been fundamental changes in the global patent system over the last few years. “When we used to talk about dealing with backlogs our main focus was on timeliness. Now, given the cross-patenting between regions even if we deliver good pendencies, we will still have a backlog blackhole,” he said. One way of looking at it, he continued was that all the world’s major offices now have a permafrost of pending applications. This, McGinley said, created real uncertainty. The US will soon be at a point when there will be one million pending applications and Europe is forecast to be there within five years. It is important to work out if there are ways of shining a light into the blackhole to find out what lurks within. “If we can’t then the current distortions that you see in the US market - which have led to the emergence of patent trolls, for instance – will begin to occur in Europe.”

Again, it is important to make clear that Brimelow, McGinley and other members of the office’s senior management are still in the very early stages of exploring what might be done. But have no doubt that there is some very deep thinking going on.

“There are a number of developments that are leading to issues being explored in a way that would not have been possible two years ago,” Brimelow told me. One of these, she said, is mutual recognition. Although the idea of automatically registering a patent that has been granted by another patent office has been around for many years, it has always proved a political hot potato. Differences not only in patentability criteria between offices, but also in perceived levels of quality, have made it nigh on impossible for people to countenance mutual recognition as anything but a pipedream. But that, said Brimelow, may be changing. “In conversations I have had at the margins of this event [the Forum], I detect that more users of the system are prepared to contemplate what we have to do if we are serious about mutual recognition.” Some very serious players, she continued, are interested in understanding what going down this path may mean.

Although Brimelow said that different US and European perceptions of patentability still created significant barriers, there could be ways to get round them if the will is there. For example, it may be a case of not recognising grants in all areas but instead only in some of the less controversial ones, such as mechanics. Another option is to look at extending the Utilisation Pilot Project, which makes use of work done by national patent offices in Europe to speed along the European patent application process, to patent offices outside of Europe. “Presumably this subject is not going to go away, so it is important that we think it through. User input here is very important,” Brimelow said.

One user of the EPO that has been thinking deeply about the future of the patent system is IBM. Last year, the company’s head of IP law, David Kappos, told IAM about what he termed the European Interoperability Patent – essentially a right granted by the EPO on the proviso that its owner would be willing to license its use to anyone that asked. It is an idea that has got Brimelow thinking. “Perhaps this might mean taking a two-tier approach, with soft IP on one level and the gold plate, traditional route on another,” she suggested. In essence, those foregoing the exclusive use of their rights would be examined to one standard, while those who wanted to retain all options would be examined at another.

The above is only a portion of what was discussed during the hour that I spent with Brimelow and McGinley. I will report on other issues – such as the possibility of higher fees, the team approach to examination and the quality of the applications the EPO receives - over the next few days.

Of course, there is a long way from saying things to actually doing them, especially in Europe. Even if Brimelow wanted to make major changes, she could not without getting sign-off from the EPO Council; and with over 30 countries wanting their say there, that is never gong to be easy. However, it seems to me that the president is moving towards a point where she could be making some pretty radical suggestions during the final two years she is in office. Thoughts are crystallising, ideas are beginning to form. Watch this space.