Open for business
Patents are often described as the currency of our knowledge-based economy and are increasingly seen as business tools rather than mere legal instruments. As a consequence of growing investment in R&D in many regions of the world, an increasing number of players are entering the fields of innovation and patents. Users and the public have diverse needs and expectations, which in turn present challenges to patent offices catering for many stakeholders. Patent offices need to broaden their range of products and services, to be more responsive and adaptive, and to become more accessible and transparent.
In short, patent offices must be more open to modern business needs. All of the big economic regions of the world are devoting resources to improving their patent systems, on the understanding that these are a crucial element for attracting foreign investment. So what is happening in Europe?
In a previous edition of this IAM supplement, I informed readers about our efforts in the field of patent information. Indeed, access to information is a key pillar of business support and something to which the European Patent Office (EPO) gives the highest priority. We are constantly improving our sources of information, as well as their interpretation, relevance and accessibility, in order to help businesses make the best-informed decisions about which technologies to invest in, develop or abandon. Here I present a few updates
Patent Translate, our automatic translation service based on a partnership with Google, was completed in December 2013 (a year ahead of schedule), offering free translations in 32 languages from and into the three EPO languages (English, French and German). This unique service provides translations which are good enough to judge the general relevance of a document, meaning that only a few critical pages or paragraphs require a human translation. This is a major step forward in removing language as a barrier to understanding developments made by scientists and engineers half a world away.
We have also pioneered the most refined patent classification in the world, the Cooperative Patent Classification – in partnership with the US Patent and Trademark Office (USPTO) – based on the European Classification System and including US best practices. Since the official launch at the start of 2013, it has been adopted by more and more patent offices around the world. Once most national patent offices classify their documents according to the classification, this will greatly improve the accuracy of searches and facilitate the understanding and sharing of results between patent offices.
As well as these two major projects relating to search and patent information, the EPO continues to focus on improvements to the examination process, mainly through feedback from applicants and user groups.
Given the ever-growing number of patent filings in the world (265,690 at the EPO, an all-time high in 2013, and more than 2 million in the world), there is a real risk that relevant information about the patentability of an application will become public at a much later stage. This can be extremely damaging for applicants, especially when product lifecycles are short, as is the case in the information and communications technology and electronics sectors. Applicants often tell us that the EPO search report, coupled with a preliminary patentability opinion, can have far-reaching consequences for their own development decisions. Comprehensive information in the early months of the patent application process is relied on heavily – not only by applicants, but also by third parties eager to see how their competitors’ applications are faring – and is seen by some as even more important than the potential scope of the examined claims a few years in the future.
This is why we launched the Early Certainty from Search project in July 2014, which is designed to provide more essential information at the earliest stage practicable. We want applicants to have clarity about the future prospects for their patent application and their technology as soon as possible, whether they apply to the EPO directly or via the Patent Cooperation Treaty (PCT). All search reports, accompanied by a written opinion on patentability, should be issued within six months of filing at the EPO. For many applicants that come to us first, this still leaves them plenty of time to assess their options for filing elsewhere around the world within their priority year.
This is why we will seek to conclude (ie, with a grant, refusal or withdrawal) cases where examination has already been started before starting new examinations – although this will not affect our popular accelerated examination scheme, which applicants already use. Similarly, where the search and preliminary opinion are both favourable, we see no reason to delay and will do our best to expedite examination and a swift grant. There will also be times when the public interest is best served by an accelerated examination – for example, when substantiated objections are filed by an identified third party – so we will prioritise those as appropriate.
The accuracy and usefulness of a search are closely linked to the completeness of the prior art. Our databases already contain over 600 million documents, comprising patent publications from over 100 countries and non-patent literature in the form of academic papers, conference proceedings and technical journals, among others. We also have access to third-party sources. Being aware of the sensitive relationship between patents and standards, we have invested extra effort in integrating standards documentation into our collections, particularly in areas such as digital communications, because so many relevant disclosures about the state of the art now occur in standards discussions. Our examiners cited standards documents over 14,000 times in their 2013 search reports, amounting to 35% of all prior art in some information and communication technology fields. Given the tension between cost-effective industry-wide standards and proprietary rights, it is vital that patents that are essential for technologies adopted in standards and that might form part of a pool or be subject to fair, reasonable and non-discriminatory licensing be correct in their scope.
Another key issue in relation to prior art is the explosion of Asian documentation, fuelled mainly by patent filings at China’s State IP Office (SIPO) and the Korean IP Office (KIPO) – all of which adds to the global body of knowledge that examiners may need to consider. Indeed, those two Asian offices, along with the Japan Patent Office (JPO), receive some 60% of all patent filings around the world, so their contribution to the state of the art is critical to the completeness of the EPO search. Our recent data acquisition channels have contributed over 31 million Japanese, Chinese and Korean patent documents to our records, going back at least three decades (and in the case of the 22 million Japanese documents, as far back as 1931).
We have English language abstracts for almost every Asian patent document in our databases, with English translations of the full text for an increasing number of the most recent documents (eg, Japanese documents back to 1999). With the help of Patent Translate, our examiners view between 5 million and 6 million Asian documents in the course of their search work each year, and some 21% of all patent citations in EPO search reports are of Asian origin. This achievement is even more impressive when one reflects that many Asian companies are often active in only a narrow band of technical areas (eg, digital communications, computing or electricity).
For the growing number of international applicants, the PCT is of great importance. The EPO is the most popular provider of PCT services, handling almost 40% of all PCT searches and acting as the international search authority on some 80,000 applications in 2013. The EPO international search report is accompanied by a written opinion on patentability, which for about 90% of applicants is all they need to enter the national phase with confidence. In cases where the EPO has already performed a search on the invention (eg, we searched the national priority application), the international application may be eligible for our PCT Direct service, in which the applicant’s explanations for any changes made to its specification are considered in the examiner’s written opinion.
The EPO is also chosen by approximately 50% of all applicants to provide their international preliminary examination report (which is heavily relied upon for examination in the subsequent national phase). This is a testament to the trust that applicants place in the rigour of the EPO’s examiners and an acknowledgement of our efforts to strengthen our PCT examination procedure. The international preliminary examination report helps applicants to overcome problems thrown up by the international search report and gives them a second chance to get their application fit for the national phase. As part of the report, the EPO performs a top-up search and also gives applicants the opportunity to engage directly with examiners. Through agreement with our IP5 partners (the five major IP offices around the world – the EPO, JPO, KIPO, SIPO and USPTO), and upon request from applicants, we will also accelerate the treatment of PCT applications filed with us which have been examined and deemed allowable by one of the other four major patent offices, and vice versa. This new scheme, the so-called PCT-PPH, started as a pilot programme between the IP5 offices in January 2014.
As of November 2014, PCT applicants with an EPO search report which enter the European phase with non-unity objections will benefit from more options: either using the invention already searched during the international phase as a basis for the application or otherwise selecting another invention of their choice, in which case a supplementary search will be needed. As a result, applicants can avoid filing divisionals at such an early stage and thus make considerable savings.
Beside the necessary improvements to the patent-granting process, another major challenge is the single point of access. Indeed, with patent rights arising in various countries in parallel, it can become extremely burdensome for businesses to check the status of an invention’s protection around the world. This is why we have developed tools to bring more pertinent information about a patent family to one location where possible. Following a commitment given at a meeting of the IP5 in 2013, the EPO and SIPO launched the Global Dossier in June 2014. This allows users viewing the file wrapper of a European patent publication in the European Patent Register also to access file wrapper information translated into English for other family members directly within the EPO’s website. Currently, only SIPO family member file wrappers are available, but during 2015 it is expected that the other IP5 members – the JPO, KIPO and the USTPO – will come on board.
A further example of consolidating pertinent information from many sources is our ongoing improvements of the Federated European Patent Register. Deep links from entries in our register now lead directly through to the online registers of our partner national patent offices, so that the status of European applications in the national phase, and the national patents of 15 states, can be ascertained quickly. This will be simplified even further in the future, when this national data is displayed within the European Patent Register itself.
Markets are global and our applicants are increasingly operating in many countries. State institutions such as patent offices can either facilitate these markets or hinder them. I prefer to think that we at the EPO do the former, enabling rather than impeding, and the few examples given so far about selected projects within the IP5 demonstrate our commitment to cooperating to benefit our users. Work continues on harmonising numerous aspects of our idiosyncratic working practices so that applicants face a uniform set of requirements when proceeding in parallel before different offices.
One last topic that I would like to mention (though there are many others) is the one closest to the heart of many Europeans: the unitary patent package and Unified Patent Court. The political deals were cut at the end of 2012 and the EPO is ready to issue the first unitary patents, hopefully before the next edition of Patents in Europe is published. The ratification process for the court is progressing steadily. Applications already pending with us will be eligible to take up unitary status upon grant, provided that the quorum of ratifying member states (the United Kingdom, France and Germany, plus 10 others) can be reached in the coming months. One cannot underestimate this unique effort from 25 countries to endow a single patent with power in their territories and to recognise the authority of a supranational court with its own rules based on European best practices. There is no comparative example anywhere else in the world. The new system will complement rather than replace the existing routes to patent protection in Europe, offering a new tool for innovators. For my part, I can promise that the EPO will do everything in its power to make the new system work efficiently; it must be certain, timely and cost effective – not for our sake, but for the sake of business.
Benoît Battistelli
European Patent Office
Benoît Battistelli was elected president of the European Patent Office (EPO) in July 2010. His initial mandate was extended by three years (to June 2018), following the unanimous approval of his results and programmes by the Administrative Council of the European Patent Organisation in June 2014. Before joining the EPO, Mr Battistelli had been director general of the French National Institute for Industrial Property since May 2004. He was also elected chairman of the Administrative Council of the European Patent Organisation in March 2009. Mr Battistelli has also held several high-profile positions concerned with innovation, competitiveness or external economic relations (eg, French trade commissioner to Poland, Italy, India and Turkey).