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European Patent Organisation Discussing Fee Reform and Sustainable Financing (III)

nospam@example.com (Axel H Horns) — Wed, 07 Jul 2010 18:51:00 +0200

EPO Financing Trends (Source: Document CA/33/10)

On the website of the EPO Staff Union (SUEPO) a number of relevant Documents from the Administrative Council of the European Patent Organisation (EPOrg) running the European Patent Office have appeared:

Document CA/39/10 dated 2010-02-23: Fee Reform and Sustainable Financing - Document 1: "Support for evidence based policy"
Document CA/33/10 dated 2010-05-20: Fee Reform and Sustainable Financing - Document 2: "Cost-coverage, yes, but not everywhere"
Document CA/36/10 dated 2010-05-20: Fee Reform and Sustainable Financing - Document 4: 'Continue enhancing certainty in the patenting process'
Document CA/38/10 dated 2010-02-26: Fee Reform and Sustainable Financing - Document 6: 'Predictability of national renewal fee policies'
Document CA/82/10 dated 2010-05-18: Fee Reform and Sustainable Financing - Timetable
Document CA/91/10 dated 2010-06-09: Summary of the Study on the Economic Dimensions of the Fee Structure in the European Patent System

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European Patent Organisation Discussing Fee Reform and Sustainable Financing (II)

nospam@example.com (Axel H Horns) — Mon, 14 Jun 2010 13:01:00 +0200

As already indicated in my earlier posting, in September and October 2009 three regional workshops on Fee Reform and Sustainable Financing took place between the European Patent Office (EPO) and the EPC Member States. Representatives of 27 Member States attended the regional workshops. The EPO organised an additional fourth workshop in Munich with representatives of epi, FICPI, Business Europe, EU Commission DG Market and WIPO.

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European Patent Organisation Discussing Fee Reform and Sustainable Financing (I)

nospam@example.com (Axel H Horns) — Fri, 11 Jun 2010 16:45:00 +0200

At the 117^thmeeting the Administrative Council in March 2009, the European Patent Office (EPO) had launched a debate on sustainable financing and fee reform. This debate emerged from the process of Strategic Renewal launched jointly in May 2007 by both the current and previous Presidents of the EPO.

In this context, Document CA/100/09 of the Administrative Council (AC) of the European Patent Organisation (EPOrg) running the European Patent Office (EPO) outlines a roadmap developed by the EPO following a debate in the session of the AC in March 2009 on sustainable financing and fee reform.

The roadmap to support the strategy on sustainable financing and fee reform is divided into three time lines. Short term are those actions that can be expected to be delivered in the 2009/2010 time period. Medium term are those actions that can be expected to be delivered in the 2011/2012 time period. Long term are those actions that can be expected to be delivered from 2013 onwards.

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USPTO Making Bulk Data Available To The Public Via Google -- Hello, EPO, Are You Listening?

nospam@example.com (Axel H Horns) — Wed, 02 Jun 2010 21:32:30 +0200

Google, Inc.

I just stumbled on an article on techdailydose.nationaljournal.com by Ms Juliana Gruenwald titled PTO Teams With Google On Trademark, Patent Database:

"The U.S. Patent and Trademark Office Wednesday announced it has reached a two-year 'no-cost' agreement with Google to make patent and trademark data electronically available for free to the public in bulk form.
Saying it currently lacks the technical capacity to offer such a service itself, the PTO said the two-year agreement with Google is a temporary solution while the agency seeks a contractor to build the PTO its own database that would allow the public to access such data in electronic machine-readable bulk form.
PTO Director David Kappos said in a statement that the move is part of its efforts to comply with President Obama's Open Government initiative by 'making valuable public patent and trademark information more widely available in a bulk form so companies and researchers can download it for analysis and research.' [...] Up until now, the PTO only provided such data in bulk form for a fee."

And what are the provisions currently set by EPO?

Aside from weekly publication data, bulk data are accessible only for a fee.

Perhaps EPO might wish to contact Google, Inc.

EPO EBoA Opinion in re G 03/08 (Patentability Of Computer-Implemented Inventions)

nospam@example.com (Axel H Horns) — Wed, 12 May 2010 17:00:45 +0200

As reported earlier on this Blog, under the date of October 22, 2008, the President of the European Patent Office (EPO), Ms Alison Brimelow, had referred a set of basic questions to the Enlarged Board of Appeal concerning the patentability of computer-implemented inventions (Case G 03/08).

Just today the Enlarged Board of Appeal of the European Patent Office has published an Opinion concerning this referral. The conclusion is that the referral of 22 October 2008 of points of law to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1)(b) EPC. The headnotes given by the EBoA are as follows:

In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.
Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC.
As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of “different/abweichende/ divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.
The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified.
Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC.
T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.
The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC.

This result does not come as a surprise. Renowned experts like Prof Straus as well as ambitious newcomers like Tufty the Cat already had indicated that the problem of inadmissibility might well be the Achille's heel of Ms Brimelow's referral.

The Opinion appears to reach a political culmination point in Sect 7.2.7:

"Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an Enlarged Board referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby (cf. the present referral, page 2, Section 1, paragraph 3). Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over."

Well, in this particular case the legislator is not prepared to take over. It is, however, clear that the EBoA felt a bit abused by the President's attempt to use it as an instrument to clarify a political issue which had already caused the legislator to fail.

Bottom line: The Enlarged Board of Appeal won't interfere in the business of defining the limits of patentability of computer-implemented inventions; stick to present case law as it is known. Nevertheless, the G 03/08 Opinion provides some lengthy comments on available case law and how to properly understand its meaning.

Amazon.com: 'Method And System For Placing A Purchase Order Via A Communications Network'

nospam@example.com (Axel H Horns) — Wed, 17 Mar 2010 20:29:04 +0100

On Friday, December 07, 2007, I had reported on a decision of the EPO Opposition Division revoking a patent EP0927945 originally awarded to Amazon.com, Inc., on April 23, 2003, during the 'hot phase' of the debate on the patentability of computer-implemented inventions.The title of the patent was 'Method and system for placing a purchase order via a communications network ' Claim 1 thereof read as follows:

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The Political Legacy Of Ms Alison Brimelow

nospam@example.com (Axel H Horns) — Wed, 03 Mar 2010 16:21:00 +0100

Earlier in May 2009 I had reported that Ms Brimelow is not going to apply for a second term in Office as President of the European Patent Office beyond her term ending in June 2010. After considerable woes, the Administrative Council (AC) of the European Patent Organisation (EPOrg) eventually managed to elect her successor by a 3/4 majority of votes on March 01, 2010.

On the very same day, Ms Alison Brimelow has held the second Annual Francis Gurry Lecture at the University of Melbourne, Australia.

The Francis Gurry Intellectual Property Lecture was established by Melbourne Law School, in conjunction with the Institute of Patent and Trade Mark Attorneys of Australia, in 2009. The lecture is named in honour of the Law School's distinguished alumnus, Dr Francis Gurry, Director General of the World Intellectual Property Organization (WIPO).

Not aiming at a second term as President of EPO and preparing to retire from her office, it can be assumed that Ms Brimelow felt free to talk on certain issues in relation to her role with less restrictions and considerateness as usual. With other words, Ms Brimelow's presentation at Melbourne University might resemble something like a privileged peek behind the scenes of European patent politics. Hence, I would be inclined to recommend reading her presentation in full. Below is an excerpt giving some overview on the topics covered; however, it is not intended to replace the full text:

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BREAKING NEWS: Mr. Benoît Battistelli to become next President EPO

nospam@example.com (Axel H Horns) — Mon, 01 Mar 2010 16:15:07 +0100

There are fresh reports on Twitter saying that Mr. Benoît Battistelli today has won a sufficient majority on the session of the Administrative Council of the European Patent Organisation (EPOrg) running the European Patent Office.

Mr Battistelli currently is Director General of France's Institut national de la propriété industrielle (INPI), and has served as Deputy Chairman of the EPO's Administrative Council. He represents France in the Administrative Council of the European Patent Organisation. As a graduate of the ENA he worked in public administration, followed by various functions in the Directorate General for Competition and Consumption, and in the Directorate of the Economy and Finance Ministry responsible for external economic relations, in particular with regard to trade with Italy, India and Turkey. As of 1997 he was regional director responsible for the external commerce of the Ile de France, and from 1999 was "chef de service" responsible for innovation and competitiveness, as well as industrial property rights in the Ministry for Economy and Finance. Before becoming Director of INPI he worked for the legal practice of Nicole Fontaine.

See the announcement on the Official EPO website here.

Meanwhile the EPO Central Staff Committee has pointed out that in their view EPO (and with it the staff, administration and the Administrative Council) have suffered as a result of an unfortunate tandem presidency of Mr Alain Pompidou and Ms Alison Brimelow. In particular, they argue that the Presidency of the EPO emerges discredited and weakened and the Office has strayed from the European Public Service spirit originally foreseen by its founding fathers, the social climate being extremely unsettled, which is ineffective and costly both in human and financial terms. Having in view the professional career of Mr. Battistelli indicating a strong attachement to Public Service, EPO Central Staff Committee express their hope that he will demonstrate the sorely missed capacity to listen and to respect, to present and communicate clearly his goals.

[UPDATE 2010-03-04] See also this report with details on the voting process in Managing IP

Improving the Links Between ESOs and the European Patent Office

nospam@example.com (Axel H Horns) — Wed, 24 Feb 2010 18:08:00 +0100

On July 23, 2009 I had reported that the European Patent Office (EPO) had concluded a Memorandum of Understanding with the Institute of Electrical and Electronic Engineers, Inc Standards Association (IEEE-SA). In this context Mr Wim Van der Eijkof the EPO also had indicated that EPO was in talks with the International Telecommunication Union (ITU) and the European Telecommunications Standards Institute (ETSI) to conclude similar agreements with them.

Now the Expert Panel for the Review of the European Standardisation System (EXPRESS) entrusted with its task by the EU Commission, 'Enterprise and Industry', has published a final report saying, inter alia,

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Administrative Council Fails To Determine New EPO President

nospam@example.com (Axel H Horns) — Thu, 10 Dec 2009 16:58:01 +0100

A session of the Administrative Council of the European Patent Organisation (EPOrg) is going on from December 08-11, 2009.

Reports are coming in that yesterday another round of voting to determine the next EPO President has failed. According to Article 11 (1) EPC, the President of the European Patent Office shall be appointed by the Administrative Council. According to Article 35 (2) EPC, a majority of three-quarters of the votes of the Contracting States represented and voting is required therefor. There appears to be no exception which might lead to the election of a new President, bypassing the 75% quorum rule.

And it looks as if none of the candiates of the present tableau has managed to reach this quorum.

Meanwhile it has come to be known that Mr Jesper Kongstad has withdrawn as candidate for EPO president.

According to my knowledge, Mr Roland Grossenbacher (Switzerland), Director of the Eidgenössisches Institut für Geistiges Eigentum, and Mr Benoît Battistelli (France), Director General of the Institut National de la Propriété Industrielle, have been the frontrunners in the voting process but both failed to pass the quorum.

Now the Administrative council might re-open the application process for new candidates or retry to get a sufficient majority on the next session in 2010.

[UPDATE 2009-12-11] Ms Brimelow's term of Office extended by up to 6 months.

[UPDATE 2009-12-11] Serious dispute concerning transparency in today's session of EPOrg AC - IAM Blog

Enlarged Board Of Appeal at EPO: Can Impartiality of Member Be Challenged By Amicus Curiae Brief?

nospam@example.com (Axel H Horns) — Mon, 02 Nov 2009 19:09:00 +0100

Can the author of an amicus curiae brief addressed to the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) challenge the impartiality of the Board or of one of its members?

On April 26, 2009, Mr M. Schulz submitted a letter via e-mail to the EBA with various comments on the proceedings in the matter of G 0003/08 - Referral by the President of the EPO in relation to a point of law pursuant to Article 112(1)(b) EPC - patentability of computer-implemented inventions. Arguing that a particular member of the EBA, Mr Rees, had somehow - in discharging his professional duties - been involved before the submission of the referral by Ms Brimelow in various activities related to the patenting of computer-implemented inventions, he challenged the impartiality of the entire Board, demanding dissolution thereof.

In view of the fact that Mr Schulz merely had written a letter as part of the general public invited to provide comments on the subject-matter of G 0003/08 - he clearly was not party to the proceedings - it might not have come as a surprise if the EPA had disposed Mr Schulz' challenging of impartiality directly to the waste-bin.

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EPO Under Fire At CIPA Congress

nospam@example.com (Axel H Horns) — Thu, 08 Oct 2009 19:33:00 +0200

EPO under fire. Wrong target?

On October 01 and 02, 2009, the United Kingdom Chartered Institute of Patent Attorneys (CIPA), the professional and examining body for UK patent attorneys (CIPA), has held a Congress titled The IP System under Attack. According to the organisers, the Congress programme was based around debates on key issues, giving the protagonists in controversial issues a platform to air their views and offering delegates greater opportunity to make substantive contributions from the floor. Among the issues addressed in this way were the performance of the EPO, the concept of cheaper IP litigation, raising the bar on standards of examination, patents versus competition and patents versus open source software.

Now, media reports from the Congress are coming in. IP World reports that the head of the controlling office at the European Patent Office, Mr Ciaran McGinley, was faced with tough questions following his speech at the CIPA Congress. Some patent attorneys at the conference even accused the EPO of blaming them for its very own problems.

Well, as I did not attend to that event I can't report any details on my own witnessing; however, I feel tempted to offer one remark concerning that debate.

Of course, Mr Ciaran McGinley officially appeared there as a representative of the European Patent Office (EPO), and he rightfully received, on behalf of EPO, the remarks on rule-making and related criticism of the patent attorneys gathered at the CIPA event.

However, should those critics be addressed to the EPO at all?

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Raising the Bar - Second Basket: Having A Peek Into The Chamber Of Horrors

nospam@example.com (Axel H Horns) — Mon, 21 Sep 2009 21:11:00 +0200

Chamber Of Horrors
(EPO Applicant / Representative in the Fetters of New Regulations?)

During the first centuries of its operation, the European Patent Office (EPO) had actively established and seeked to maintain an overall policy of being a 'user-friendly' Patent Office serving its 'customers' in a flexible and smooth way. Of course, the EPO was an 'authority' right from the start and it never had 'customers'. Nevertheless, this policy was part of a start-up strategy to boost the EPO's acceptance as in the 70s of the past century it was quite unclear as to whether or not the newly set up Office would be able to stand against the bunch of traditional national Patent and Trade Mark Offices in the EPC Member States running well-established businesses, respectively. For example, the introduction of the 'Further Processing' provision (Article 121 EPC 1973) in addition to the well-known 'restitutio in integrum' (Article 122 EPC 1973) at the outset could be seen as an attempt to make the EPC more user-friendly for the applicants and their representatives than comparable provisions in many of the national jurisdictions of the EPC Member States: If you have missed some of the more important deadlines, don't worry, just complete the omitted act and pay the prescribed Official fee, no questions asked. In contrast, requesting 'restitutio in integrum' - in those days the only available remedy in many national jurisdictions - always means some painstaking efforts to explain and justify missing the respective deadline. Such measures might have attracted applicants and lured them towards the EPO, taking them away from national routes of patent prosecution.

Those good old days are now gone forever. Like other patent authorities, also the European Patent Office is drowning in streams of patent applications constantly arriving in their thousands, thereby, over the time, accumulating to a huge backlog. And, certain circles of the general public have turned hostile towards the patent system in its entirety, demanding that fewer patents shall be granted. Hence, there appears to be some parallelism between the interests of the management of the EPO to cope with the huge backlog problem, on the one hand, and a general turn of the zeitgeist in favour of making it harder to obtain a patent, on the other hand. Hence, it does not come as a surprise that the Administrative Council of the European Patent Organisation, the primary institution created by the EPC which is running the European Patent Office, is more and more willing to shift burdens away from the Office to the applicants and their representatives.

Raising the Bar - First basket.

Under the label 'Raising the Bar' a bunch of measures have been taken by the EPO, backed by respective decisions of the Administrative Council of the European Patent Organisation:

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The List Of Candidates For EPO Presidency Is Now Closed.

nospam@example.com (Axel H Horns) — Thu, 17 Sep 2009 19:02:10 +0200

Qualified Candidates for EPO Presidency (In alphabetical order)

From the EPO website:

"The time limit for receipt of applications for the post of President of the European Patent Office expired on 15 September 2009. The procedure will now continue with the applications from the four qualified candidates for the position, which falls vacant on 1 July 2010.

In alphabetical order, the four qualified candidates are:

Ms Susanne AS SIVBORG (Sweden), Director General of the Swedish Patent and Registration Office
Mr Benoît BATTISTELLI (France), Director General of the Institut National de la Propriété Industrielle
Mr Roland GROSSENBACHER (Switzerland), Director of the Eidgenössisches Institut für Geistiges Eigentum
Mr Jesper KONGSTAD (Denmark), Director General of the Danish Patent and Trademark Office

The appointment procedure is governed by the European Patent Convention (EPC). The President is appointed by representatives of the member states of the European Patent Organisation meeting in the Administrative Council (under Article 11(1) EPC) by a majority of three-quarters of the votes cast (Article 35(2) EPC). The term of office is five years, and it may be renewed.

At its meeting in October 2009 the Administrative Council will hear the qualified candidates individually before deliberating and voting on the appointment.

The term of office of the current EPO President, Alison Brimelow (United Kingdom), ends on 30 June 2010."

So far no surprise then. EPO does not tell us if there have been non-qualified candidates, e.g. those lacking support of their respective Government.

See also my earlier postings here, here, and there.

Photo: EPO Website.

EPO and the IEEE agree on co-operation

nospam@example.com (Axel H Horns) — Thu, 23 Jul 2009 14:00:00 +0200

There is a new press release on the website of the European Patent Office (EPO):

"The EPO has concluded a Memorandum of Understanding with the Institute of Electrical and Electronic Engineers, Inc Standards Association (IEEE-SA).

Signed by EPO's ad interim Vice-President for Legal and International Affairs, Wim Van der Eijk, and IEEE-SA Managing Director Judith Gorman, the memorandum aims to increase co-operation between the two institutions on standards and intellectual property.

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