19th March, 2019
This was FICPI’s first official meeting with Mr. António Campinos who took up office as President of the EPO on 1st July 2018. The composition of the delegations were:
- António Campinos, President
- Niclas Morey, User Support & Quality Management
- Telmo Vilela, Director International Co-operation
- Heli Pihlajamaa, Director Patent Law
- Michael Fröhlich, Director, Patent Law Director, European and International Legal Affairs, PCT
- Domenico Golzio, Director Knowledge & Search Services
- Delia Brasfalean, Advisor President’s Office
- Elvanda Mece, Country Co-ordinator International Co-operation
- Julian Crump, President
- Elia Sugrañes, Deputy Secretary General
- Didier Intès, President TEC
- Robert Watson, Vice-President CET
- Kim Finnilä, Assistant Reporter General CET
- Antonio Pizzoli, Chair CET4
- Brett Slaney, Chair CET6
- Swarup Kumar, Chair CET7
The EPO and FICPI delegations stretching legs
President Campinos opened the meeting with a warm welcome, introduced his team and gave Niclas Morey the word. Niclas Morey briefly noted that the EPO is strongly focusing on quality and user engagement. Further he stated that other offices were catching up, also improving quality in both procedures and substantive matters.
[President] Campinos gave a general presentation on the state of the office, and then focused on more practical matters. Backlog has decreased, particularly in search, but is still there, also in oppositions. In some fields, examinations last 12 to 48 months. The aim is to emerge from the backlog to operational efficiency, i.e. to be able to timely deal with incoming applications. This will have an effect on the financial position of the office since operational surplus will decrease when operations reach stability. EPO will publish a study on this issue in April 2019. The President indicated that he sees a convergence in office practices and tools as relevant for the future. Finally he noted that the Annual Report 2018 was published at the day of the meeting.
[Our] President Julian Crump expressed our great appreciation for the meeting and introduced our team, noting that we, in view of user input, have a truly global representation. He informed that we would shortly publish a significant report on “The IP Professional – Adding Value to the IP System?” which is known internally as the “Project Orange” report.
[We] then followed up with our proposals on the EPO Strategic Plan (2019-2023) comprising international harmonization (diplomatic conference), reviewing search and examination procedures, and streamlining practices, as well as strengthening FICPI’s role in user consultations.
The EPO said that they thought a diplomatic conference would be a last resort. The focus should be on how the office does something, and subsequent results. Convergence should be from the bottom up, and not through “top-down” harmonization. In September/October there should be a conference, where FICPI will be invited, on this matter. Such an approach has been used at the EUIPO for a number of years.
In view of user engagement, the view of the EPO was very positive. Both the EPO and IP5 have a rather limited number of user groups represented, e.g. in comparison with the EUIPO. There are of course a number of other parties to consider, but the EPO will certainly seriously look into engaging with more user groups.
[The] following topic was the FICPI drafting and training courses supported by the EPO. EPO noted with interest our plans to arrange a course in India. The EPO is keen on improving incoming work and professional competence on a more general level, suggesting the use of the EQE as a model. They are also looking into a regional approach involving the EU in order to rationalize efforts. We noted that a great strength of the FICPI courses is that they also deal with patent drafting for other key jurisdictions, such as the US, Japan and China.
[The] first session of the meeting ended with a discussion on increased flexibility in the timeliness of examination. The EPO has been considering options for asking for examination, e.g. with 12 months, 24 months, 36 months, etc. We noted that the recently published summary report of the user consultation does not seem to indicate any preferred solution. The EPO noted that the average duration in examination is now about 36 months, and the direction is to achieve an “in and out” balance. However, across the field, from large to small companies in different technical fields, the preferences vary from one end to another. It seems the current UDEC proposals will not be implemented, and other approaches are being considered. As a closing remark, the EPO noted they are striving to simplify procedures both technically and formally.
[Reconvening] after a coffee break, the focus was on AI. We updated the EPO about our joint colloquium with AIPLA and AIPPI in March 2019 and the main aspects of the programme; offices, practitioners, patenting of AI and legal aspects of AI. The EPO noted that within the IP5 there are various AI projects with Japan and China, with Korea leading the project of use of AI in offices. The USPTO is not involved for the moment.
The EPO noted that they have been working on the patenting of AI for more than 1½ years, mainly looking at three areas: (i) inventions about AI (CII patents), person skilled in the art, sufficiency of disclosure (drafting applications); (ii) inventions using AI, inventorship (an academic study has been carried out and has been discussed in the Committee on Patent Law in February; and (iii) a future category, inventions made by AI.
We noted that some practitioners are struggling to find the right way to approach AI related inventions. EPO noted that, like in other emerging fields of technology, appropriate terminology has to be found, and that in AI related inventions, the invention should not reside inside a black box, and that data processing should still be defined in sufficient detail, bearing in mind the level of knowledge of the person skilled in the art.
The EPO then gave an overview on how they are planning to use AI as an assistant in their various procedures. AI could be used e.g. in search (including images), classification, and analysing larger varieties of data, routing files to examiners (e.g. based on key words in order to categorize which examiner already has searched in a particular area), etc. The EPO uses Google translator for published applications and an internal machine translator for unpublished applications. AI could also be used to extract problem and solution approaches, collecting various potential clarity objections, and categorizing images, flow charts, circuits, tables, etc.
Both the EPO and we noted that there seems to be a common understanding of the underlying concepts.
[We] then raised the topic of erroneously filed elements, noting that e.g. when files are in electronic form, mistakes can easily be made. Consequently, the approach should be liberal, such as allowing the replacement of an entire element or part thereof. The EPO, who will be presenting a proposal for the WIPO General Assembly, however, seems to have a very strict approach to this, including provisions like: (i) replacing parts, not whole file; (ii) no replacing of incorrect file, just incorporating correct file be reference; and (iii) subject to a fee, and only during international phase.
[The] last part of the meeting discussed the revised opposition procedure. The EPO noted that the dedicated opposition divisions have now been in operation for about a year. Training is going on and it understandably takes some time to harmonize procedures. Average handling time is now 18.9 months, closing on the goal of 15 months. The amount of so-called simple cases lies around 70-80%. We noted our experience that the handling of auxiliary requests seems very unpredictable; the EPO stated that this issue is indeed one of those on the agenda.
The EPO also remarked that around 7% of search reports from the EPO contain “A” documents only, and this figure is substantially steady since 2014.
Closing the meeting after intensive discussions, the EPO noted that they had underestimated the time needed for our meeting, and, promised to allow more time next year. They much appreciated our input, also vis-à-vis the strategy consultation.
The FICPI team preparing for the afternoon meeting with the Boards of Appeal