3 December 2018

European Patent Office News

Mr Campinos has an impressive record of 20 years of executive leadership experience in the Intellectual Property field, and he has shown his leadership skills as Executive Director of the European Union Intellectual Property Office (EUIPO) for seven years. Before that, he was President of the Portuguese Institute of Industrial Property (INPI) and served as the Portuguese representative on the EPO’s Administrative Council.

The appointment of Mr Campinos did not come as a surprise. His only competitor was Cuno Tarfusser, an Italian judge at the International Criminal Court. No more than one round of voting was necessary to reach the qualified majority of three quarters of the votes of the 38 member states.

One of Mr Campinos’s most pressing tasks will be to smooth relationships between the EPO’s Administrative Council and its 7000 staff following a number of controversial reforms to EPO service regulations spearheaded by Mr Battistelli. Although the objective of the reforms was to modernise the EPO and improve its efficiency, it is reported that they have caused some internal strain.

In his first statement as EPO President, Mr Campinos said: “I’m delighted to start my role as President of the EPO, an organisation already respected greatly for the services that it offers. The EPO is undoubtedly a success story and we want to build upon that by assessing with our staff and stakeholders if improvements can be made. That means working to ensure that the Office will not only be efficient, but also effective in delivering high quality patents to our users to support Europe’s innovation sector.”

With the EPO recognised as issuing high-quality patents covering a market of 700 million people over 44 countries, the challenge for Mr Campinos is to ensure that the EPO maintains its status as a world leading patent organisation.

The EPO’s annual Quality Report was recently issued, with over 5000 users taking part in the survey. The level of user satisfaction for the EPO and patent administration services increased to 89 percent in 2017 from 80 percent in 2015, according to the report.

The EPO average pendency in examination time has been reduced to 22.1 months, compared to 23.5 months back in 2015. Timeliness of patent cooperation treaty examination procedures has also been improved, with the percentage of international applications filed and transmitted within 28 months rising by two percent in 2017, and by 16 percent in total since 2012.

In other news, 20 December 2018 marks the 40th anniversary of the first published European patent application, EP 0 000 001. The first published application was filed by Euratom, the European Atomic Energy Community. It was published in German and relates to a thermal heat pump.

The initial batch of European patent applications published on that first day was made up of 112 documents. They came from applicants based throughout Europe, the USA, Japan, and elsewhere, and related to diverse subject matter including herbicides, locks, centrifuges, solid catalysts, and pharmaceutical compositions.

In other developments, a validation agreement between the EPO and the Kingdom of Cambodia recently entered into force. This is the latest development to expand the territory over which protection can be obtained by means of a European patent application well beyond the borders of the EPC member states.

There are currently 38 member states of the European Patent Convention (EPC), which are Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Lithuania, Luxembourg, Macedonia, Malta, Monaco, Netherlands, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland & Liechtenstein, Turkey, and the United Kingdom. All of these states are automatically deemed designated upon payment of a single designation fee. When a European patent is granted, it must be validated in each designated member state in which protection is required, whereupon it confers the same rights as national patents granted directly by the national office.

There are also currently 2 extension states, Bosnia & Herzegovina (BA) and Montenegro (ME). Since 1993 there have been 10 states that have signed extension agreements with the EPO, 8 of which have now become full EPC member states. These agreements enable patent rights provided by European patents and patent applications to be enforced in the extension states, despite those states not having acceded to the EPC.

There are also 4 validation states, Morocco, Moldova, Tunisia, and, most recently, Cambodia. Validation agreements between these countries and the EPO are like extension agreements, allowing protection to be obtained in non-EPC member states, however, they are not limited to European countries. Validation states are not to be confused, however, with the process described above of national validation in EPC member states.

To extend protection to extension and/or validation states, additional fees need to be paid, within the same deadline as the request for examination. Specific post-grant validation requirements also apply in extension and validation states, in order for the patent to be effective.

Patent protection can also be obtained in Hong Kong by means of a European patent application. In a first stage, a request to record the designated patent application must be filed within 6 months ofPatent protection can also be obtained in Hong Kong by means of a European patent application. In a first stage, a request to record the designated patent application must be filed within 6 months of publication of the European patent application. A request for registration and grant in Hong Kong must subsequently be filed upon grant of the European patent.

The EPO also has a number of Patent Prosecution Highway (PPH) agreements in place with other patent offices, including JPO (Japan), KIPO (South Korea), SIPO (China), USPTO (USA), ILPO (Israel), CIPO (Canada), IMPI (Mexico), IPOS (Singapore), IPA (Australia), SIC (Colombia), ROSPATENT (Russian Federation), MyIPO (Malaysia) and IPOPHL (Philippines). The Patent Prosecution Highway offers a mechanism by which positive examination results in one office can be used to accelerate patent prosecution in a second office.

Finally, no commentary is complete these days without mention of Brexit. However, when it comes to patents in Europe, it is business as usual. The EPO is not an institution of the European Union and the UK’s membership of the EPC is entirely unaffected by Brexit. Indeed, since the result of the UK’s referendum on EU membership, there has been no let-up in the large number of European patent applications filed by British applicants and attorneys. The EPO’s recent Annual Report shows that UK businesses continue to file a large and growing number of European patent applications, with an increase of 2.4% in 2017, the fourth consecutive year of growth. We look forward to further positive developments in the future.