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Saturday, April 01, 2006

Issue 01/2006 of epi-Information Now On-Line.

Each and every

European Patent Attorney is,

by virtue of statutory provisions, a member of

epi, the Instutute of the professional representatives entitled to act before the European Patent Office. The Institute is an international non-governmental public law corporation and has its own

by-laws and

code of professional conduct. At present, the Institute which represents the first all-European patent profession comprises about 8.000 members from 31 European countries, both from industry and free profession.

Inter alia, epi publishes a quarterly journal "epi Information". According to epi, its primary objective is to inform members of epi's current activity. Officer reports, from Council meetings, and major reports from Committees are included. In addition, the journal encourages members to use its pages for an exchange of information and professional experiences. The epi-Information journal is open to the public; it can not only be found off-line in various well-assorted public libraries but also on-line.

The recent issue 01/2006 is ready for download

here (PDF).

In the Editorial section, Mr. Johnson complains about certain deficiencies in the day-to-day practice of the EPO, suggesting to form a "EPO Users' Group":

"[...] [T]here are 'smaller' questions they do ask, in the context of the EPO, such as 'why are my problems not understood, (by the Examining Division, Opposition Division etc).' A case in point is the appointment of Oral Proceedings. We know of a recent case where an attorney was summoned to two completely separate Oral Proceedings, on two entirely separate cases, on the same day, at the same time. His perfectly reasonable request for one to be shifted fell on totally unsympathetic ears - as we understood it, he was told that another attorney should represent the client on one of the cases. This attitude does not serve the system, the Office or the users well at all. A small shift in attitude by the Office to such issues, which matter to applicants, would go a long way to lessening criticism of the Office. Perhaps a way forward would be to set up a Users' Group which could meet with the Office say annually to discuss aspects of procedure, changes to be implemented etc. We understand that such a system works well at the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), where meetings between the Office and the Users, represented in the main by NGOs meets in Alicante once a year. Such a body would not be to usurp the excellent work done by SACEPO. A 'Users Group' would channel feelings of the Users to the EPO about such matters as Summons to Oral Proceedings, general handling of cases, actual and perceived frustrations felt by Users, etc. The Office in turn could present its views to the Users. [...]"

Furthermore, there is an article of Mr. Torlot presenting "The European Patent Academy - An Approach for EQE Candidates" (pages 10 to 12). Mr. Lyndon-Stanford presents an Opinion on the Patent Profession rendered by CNIPA, dealing with a concern that with the low pass rates of the European Qualifying Examination (EQE) in some member states of the EPC the patent attorney profession could be effectively extinguished (page 15). There is also an article of Ms. Stolzenburg, Ms. Ruskin and Mr. Jaenichen "Of incomplete complete inventions: T 1329/04-3.3.8" (pages 15 to 27):

"[...] The present article deals with the question of when an invention should be considered as being complete. So far it appeared as if this issue had been settled to the effect that there is a complete invention if the technical teaching provided in a patent application can be performed by the (average) person skilled in the art without inventive effort on the basis of the disclosure provided. Experimental data in the application as filed supporting the enablement of the technical teaching were not required, i. e. 'performable' was sufficient while 'performed' was unnecessary. Decision T 1329/04 of Technical Board 3.3.8 has abandoned this established principle. Instead it took the position that a subjective test has to be applied according to which it is to be determined whether, in the absence of experimental data in the application as filed, it was plausible to the (average) person skilled in the art that the invention would really work as described. Consideration of later data confirming that the technical disclosure of the application as filed was entirely correct was refused. The decision is in the area of biotechnology but its principles would be equally applicable in all other areas of technology since, based on Article 52 (1) EPC, the requirement that there must be a complete invention is the common denominator for all patentability requirements. Thus: when is an invention complete? [...]"

Ms. Krekora discusses the question "Should patent attorneys know pharmaceutical law?" in her article "Reform of European Pharmaceutical Law & Patent Protection" (pages 27 to 28). Finally, Mr. Kulhavy presents an article on "Begründung der Definitionsmethode zur Prüfung erfinderischer Tätigkeit" [In German], pages 28 to 32.

Altogether, despite the fact that epi Information usually comprise a lot of internal trivia, I think the journal is worth to be read by wider circles interested in the working of the European Patent Convention.

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