Problems and Advantages PCT has for Offices. York Busse, European Patent Office

Transcription

1 Problems and Advantages PCT has for Offices 1/8 York Busse, European Patent Office Firstly, what do these two letters, P & C, stand for: Problems, Complications, Costs? Maybe (letter E) Endless Problems - (laughter) maybe (letter T) Trouble. A Time-consuming exercise. Well perhaps at the end of my short presentation we may find out what the letters EPCT really stand for! I m here to discuss or tell you about some of the problems and advantages the PCT has for the EPO and I m very grateful for this opportunity. But I m not quite sure that I can completely define the title Problems and advantages and I m also not very sure that you really need to be taught about the problems and advantages of the PCT, in particular, in cooperation with the EPO. You are maybe more of an expert than I am as you already know - I m sure - that the EPO s role in the PCT is manifold. It works as a receiving office. It is an international authority for search and preliminary examination and, last but not least, it is a designated and elected office. So firstly let s have a closer look at what the EPO does in its role as receiving office. Here you can see the latest figures for 2002: I myself was a bit surprised to learn that more than 15,000 applicants chose to file their applications directly with the EPO and not via the national offices (23,000 applications). And as Jay (Estling, WIPO) already mentioned, as from last November it is possible to use the modern tool of electronic filing called epoline. Roughly 80 applications have come in so far electronically and I will not elaborate on Jay s little side remark that epoline is changing every day. Of course it s true that there are still many problems to be solved but this is normal I think for a new system like e- filing, which relies more on computers than anything we were used to before. But we too are very optimistic that in a couple of years we will have a system which is

2 stable and will work to the satisfaction of our users. And those who are not satisfied with the EPO service can always file their application with the International Bureau (audience remark off microphone) by hand (laughter). 2/8 Secondly the EPO acts as a PCT authority and this is certainly something which is much more important when you look at the respective numbers (for the EPO), and the EPO is one of the few authorities which has worldwide competence. So not only European applicants can use the EPO as PCT authority but also those from, for example, Japan or the Americas or developing countries which, in addition, can benefit from specific conditions regarding fees. Thus we are open to applicants from all over the world although we have implemented some limitations due to the workload; concretely this means exclusion of certain technical fields if the applicant is from the U.S. This table here - I hope it s in your papers - is just for those who are interested in the question: what does limitation of competence mean in practice? It s directed to U.S. applicants only, so I will not go into detail now as I m sure that you know how this system works as it has already been in force for almost a year. The EPO has the biggest work share of all PCT authorities. As you can see here, for last year it was more than 50%; and in cooperation with our European ISA partners, that is the Swedish and Spanish offices, it was more than 60%. The same stands true for the EPO as a preliminary examination authority - here again it was more than 50%. And this of course is one of the root problems we have with the PCT. I will come to this in a second. Before I do so, let me just in a few words mention the PCT Partnership, as we call it, with the Swedish office, competent for Nordic countries, and the Spanish office, competent for PCT applications filed in the Spanish language. This Partnership came into force four years ago and involves close cooperation between the three offices.

3 3/8 This cooperation concentrates on training, quality control and the use of common technical tools mostly developed by the EPO for search and also for the drafting of search reports. This Partnership has proved very successful so far and it works to the benefit of our users. But here again there are sometimes problems concerning users stemming from the Nordic region. They do not realise that their work will be done by the Swedish office or, as the case may be by the Spanish Office for users from Spain or Latin America although they all designated the EPO as searching authority. This has to be kept in mind by applicants when they choose their ISA. But what about other problems we might have with the PCT? First of all, I would like to mention what I call here the varying filing cultures. As you already heard the EPO is competent not only for Europeans but also for the rest of the world provided applicants and receiving offices have decided to specify the EPO as PCT authority. Therefore, we are confronted with applications drafted in different ways and this can create problems. For example in applications dealing with excluded matter or what we call complex or mega-applications. My colleague, Mr. Philpott, will go into this in greater detail this afternoon. Another burning problem, if I may say so, is the strict time limits the PCT has established and which of course have to be followed by the authorities. PCT work comes first; that means that we always have to start with PCT searches although there are many European applicants who have filed European applications and waiting for their search reports. And, as you can certainly imagine, in certain technical fields the situation is still critical. On the other hand the Office has been trying hard for a couple of years: it hires new examiners and has introduced a rationalised procedure in Chapter II to cope with the backlog. But, nevertheless, it is a fact that the strict time limits, in particular the time limits for establishing the search report, cannot always be met yet.

4 4/8 Of course there are other smaller problems - more related to formalities. There are differences in the handling of EP applications as to PCT applications as well as different forms and procedures. More internal problems rather than anything else, but we have become used to it. Another very important question is: how is the interface working between the international phase and European phase? On the one hand we are faced with what we call a dropout, a dropout of about 35% depending on the technical field. What does it mean? It means that up to 35% of PCT applications which have been searched and preliminarily examined by the EPO do not enter the European phase. A lot of time invested for this kind of work but which does not lead to the grant of a European patent and this, of course, gives rise for concern. Another example here, again a very practical one, is the use of the EPO s form for entering the European phase. If applicants decide to use this form, they help the office a lot, and it is much easier for the office, as well as for applicants, to fulfill all the needs which are necessary to enter the European phase successfully. Referring again to the different filing cultures, I would like to show you now this little graph where you can see the kind of work that the EPO has to deal with as PCT authority: it makes clear that a huge part of our work does not come from Europe and therefore is not entirely adapted to the European style. Some specific problems which the EPO s Receiving Office is confronted with - very boring because they create additional work which could be avoided - are missing signatures as well as problems with the title of the invention. Sometimes they are missing, sometimes there is a contradiction between the request form on the one hand and description on the other hand. And there s always a confusion about confirmation fees under Rule 15(5) and payment of

5 5/8 missing designation fees under Rule 16bis PCT. Some applicants very economically use the forms they have at hand, which are very often outdated. So this causes another set of problems when they wish to designate countries which have become members to the PCT but are not mentioned in the form. But I m happy to mention that the latter problem will be solved as from the beginning of next year when we more or less get rid of the designation system. Strangely enough, from time to time, sometimes on a daily basis, two to three applications are filed with the EPO although we are not the competent receiving office. The reason is mostly because the application is not filed in one of our official languages, so that we then have to forward this application to the International Bureau. Here are some other examples relating to the EPO as international searching authority: one of our biggest problems is the late receipt of the search copy from some receiving offices. This creates the beginning of a chain of delays and therefore we are very unhappy about these cases. What also causes us problems is incomplete information when we receive the search copy, for example, that the sequence listings are not filed in the standard, that is, in computer-readable form. As a result the International Searching Authority then has to invite applicants to submit these. Or the non-unity procedure under Rule 40 PCT which is very time-consuming, the protest procedure in particular. There again we hope that after the next step of the PCT reform these problems can be resolved. I would also like to give you some examples of problems that the Preliminary Examining Authority is faced with. These are mainly practical problems. Here again the data in the request form differs from the data in the demand form. This requires a lot of contact with applicants and representatives to

6 6/8 determine who the real applicant is and who is filing what. Sometimes demands are filed with the EPO although it is not the competent authority. We encounter this regularly, maybe three to four times a day. And you can well image the manpower needed in the formalities section due to the intensive work involved: transmittal of files has to be managed; the International Bureau has to be contacted; the competent authority has to be found out and fees which have been paid to the EPO have to be refunded. So these are the kind of problems we are faced with: very practical, not highly political but rather bothersome. Problems which greatly reduce our work force capacity, which could otherwise be wisely invested elsewhere and definitely more usefully for the applicants. Another problem we are still faced with is late-filed demands. Luckily this is slowly becoming more of a problem of the past because of the uniform time limit of 30 or 31 months for entering the national phases. Most of the PCT contracting states have now implemented this change so that the differences in time limits between Chapters I and II do not matter any more. This is a very good development and maybe one of the most important developments in the first stage of the PCT reform. Talking about problems also means talking about advantages. And here it is very clear to all of you that the PCT is a very attractive filing system. In particular, as far as the EP is concerned, is the fact that one designation covers all of our member states. This is something which has proved very helpful in the past and is a good way of filing for many applicants who look for worldwide protection for their invention. But there are of course other advantages which most of you are very much aware of. One of these advantages is important for applicants who wish

7 7/8 to get their application into order in the international phase. If they do so, they will have, if I may say so, an easy game when they enter the European phase. The preliminary examination report could then be converted into the first communication in the European phase and the further steps will follow smoothly. As you all know, for many offices who do not have their own examination and search facilities, the results of the PCT work - that of the EPO and other PCT authorities - is of great importance and significance for their national patent system. Therefore we constantly strive for quality and improvement in our work. As far as the European phase is concerned, in many cases the international publication replaces the EP publication and the international search report drafted by the EPO as International Searching Authority or one of our partner offices or the Austrian Office (for developing countries) replaces the European search report. This is of course also beneficial for the applicants as they do not have to pay a supplementary European search fee. As to the work of the non-european International Searching Authorities, applicants here benefit from a 20% reduction which reflects the reduction in work our search examiners might have when they perform the supplementary European search in these cases. As far as the preliminary examination is concerned, if it is done by the European office there is a possibility of a 50% reduction provided the applicant has not made use of the socalled streamlined or rationalised procedure, which my colleague, Mr. Philpott, will go into more depth this afternoon. EPC, PCT: in my view the two systems are twins. Maybe Siamese twins and one should not separate them. I think both systems represent a story of success. Both went into action in the same year and, for the future, I hope we will continue with this success to the benefit of the users and economy.

8 8/8 What is the EPO planning for the next couple of months and years? One point I mentioned already: to maintain the quality, which by the reactions we see from our applicants, is said to be of a high standard. We strive to improve the BEST system, to bring search and examination together, expanded to all our technical fields and to all our examiners. We hope to have our Phoenix system ready to handle PCT files. The Phoenix system is a system of electronic processing of our files. The European Partnership with the Spanish and Swedish offices will be further elaborated and we hope to continue in a successful way. The trilateral cooperation is one of the cornerstones of the success of the PCT system in my view and, in particular, of the PCT reform which is still ongoing. At last but not least, we will have a close bilateral cooperation with WIPO and the International Bureau, not only in terms of electronic filing, but in many other fields where we have to cooperate in operating our systems. And we will do everything to continue our successful work. What is also important for the future, I think, is that we should not rush too much and too fast regarding the work of the PCT reform. A phase of consolidation is important. We need to analyse the effects of the first stage of the reform which will be implemented in an additional step next year. A careful evaluation has to precede any decision on what the next reform step should be. In doing so we should listen to you, we should listen to our users and we should do this carefully before we embark on further changes. Thank you. (Applause)