30 April 2010

Ms Brimelow's legacy and Mr Battistelli's plans

Benoît Battistelli, Director General of the French National Institute of Industrial Property (INPI), has been elected by the Administrative Council of the European Patent Organisation to succeed Alison Brimelow as President of the EPO. His five-year presidency will begin on 1. July 2010.

As reported by both the IPKat and IPjur, his predecessor Alison Brimelow gave an interesting speech on "keping the patent system fit for future" in Melbourne, Australia, on the day of his election, in which she drafted her visions for the future development of the international IP scenery. As a contrast or supplementary to that, Mr Battistelli answered questions in the same political field, as posed by the European Patent Institute (epi) shorlty before his election. Below please find a summary of the essential issues of Ms Brimelow and Mr Battistelli in order to facilitate comparing their respective thoughs.

Ms Brimlows ideas. As a core message, she demanded that "greater integration and the creation of a truly global, sustainable patent system" are needed to keep the patent system fit for purpose in the future and explained that the IP5 initiative between the five largest patent offices in the world (US, JP, CN, KR, EP) may be a basis on which such a system may be built.

Invited by the Melbourne Law School to hold the 2010 Francis Gurry Intellectual Property Lecture, in a speech entitled "Not seeing the wood for the trees: Is the patent system still fit for purpose ?", the former EPO President reflected upon the challenges that patent systems are facing worldwide. "The R&D paradigms have changed, the function of IP is shifting, but patent systems have failed to adapt and develop in consequence". Moreover, she stated, the patent system is "far too complex, and this complexity increases exponentially in the international arena".

Further, she commented on the following issues:
  • Substantive patent law harmonization: While industrialised countries call for a global patent system based on an international infrastructure operating under a harmonized body of laws, regulation and practices, international normative initiatives are currently at a standstill. There is a gap between what people say and what people are prepared to do. Inherent in the concept of harmonization is change. If we are not prepared to change, we cannot possibly pretend to be serious about harmonization.
  • Global backlogs as driver for change: There is a powerful impetus for reducing unnecessary duplication of work in patent systems world-wide. The existing PCT framework should this be improved since it bears the greatest potential for a global work-sharing scheme due to the high volume of applications filed, the existing legal framework and infrastructure, established procedures and also its acceptance by the users.
  • Recent developments in Europe:  The work-sharing scheme of the EPO will apply to work results not just from the national patent offices of member states, but from any office of first filing in the world. Timeliness, high quality of work, confidence-building and coordination between offices are essential ingredients of this scheme, in order to elliminate unnecessary duplication of work and equally enhancing both quality and efficiency, whereas utilisation remains at the discretion of the EPO examiner.
  • The international level: The EPO is cooperating with the patent offices of Japan, Korea, China and the US within the IP5 initiative to achieve a sound, viable, sustainable global patent system, focused on work-sharing. The IP5 will enable efficient work-sharing which will deliver long term and sustainable benefits for all, even without any substantive harmonisation breakthroughs. However, the IP5 projects are ambitious, require a considerable investment of scarce resources and are politically attractive because the IP5 projects will deliver productive results and momentum beyond electoral periods, which is why it was vitally important to enhance IP5 visibility and keep the pressure on.
Mr Battistelli's plans. While the former EPO President articulated political and more abstract ideas, Mr Battistelli's plans appear EPO-centered and more pragnatical.
  • EPO as part of the EU: As regards the possibility of a Community patent, it could be explored again the possibility of a Technical Agreement between the EPO and the European Union, which latter would delegate to the EPO the granting procedure. There would therefore be little change in the present system, the innovation being that applicants would have the possibility of obtaining a European patent as now, or a Community patent. Market forces will decide which is preferred. There would be a review after say 10 years from any Community Patent Regulation.
  • The global role of the EPO: The EPO does have a global role to play in IP, firstly because it essentially represents all of Europe in these matters, and secondly because it has a high degree of technical and legal expertise in patents. Individual countries cannot go it alone, but the EPO can and should play a lead part in developing IP in partnership with member states and other extra-European Patent Offices. Developing a model for providing a balance between holders of patent rights, and third parties is a main issue. 
  • Partnership between EPO and member states: The European Patent Network (EPN, see also here) will play an important role. Therefore there are in practice two levels, the EPO level and the national level. These must work in a complementary way. It is important that the National Patent Offices (NPOs) do not reduce the role, capacity and authority of the EPO, but at the same time the role of the NPOs should be strengthened. The EPN should not be reduced to simple work sharing. The EPO Examiners in their different groups should act as a cluster of competence which would have the overall say in the granting procedure. So it is not a question of sharing files, but of providing a network of competencies between the EPO and the NPO examiners, so-called “virtual clusters of Examiners could be created, to enhance the examination procedure. As regards the future, the operational capacity of the EPO and its budget (1.4 Bn € at present) would need to be looked at from the point of view of the IFRS norms which may not be suitable for an International non-profit organisation. The IFRS spirit may be right, but perhaps not the letter.
  • Patent granting under the PCT: The improvement of the PCT should be a priority. With the new US Commissioner, Mr David Kappos, there may be scope for movement forward. The EPO fully support Francis Gurry's (President of the WIPO) initiatives. As to the PPH, some EPO member states have gone down the PPH route (whereas others, e.g. France, are not convinced on the appropriateness of the PPH) and it should not be denied that a pilot scheme might be looked at. However, resources should not be taken from the PCT, which is the only truly multi-lateral option.
  • Ways of operation of the Administrative Council: The Administrative Council (AC) has its own Chairman, whereas the President of the EPO has a different role, but the two need to work together. The main role of the AC is to vote the office budget, elect the President and Vice Presidents and to control the activity of the Office. The AC should concentrate on these main tasks, must stick to important questions, try to reduce time and to encourage colleagues from the MS to take decisions.
  • Social partnership of EPO with the staff: The staff is greatly dissatisfied with the management of the Office, and with the AC. This mostly stems from a lack of understanding as to their role, the future of the EPO and thus their future, including pensions. Transparency should be provided for the staff and meetings should be convened to explain what is going on in the EPO. It is a difficult but not impossible task to get everyone in the Office pulling in the same direction.
  • Relationship of EPOrg and epi: The EPO must not be isolationist, and must not ignore the users. The epi is one of the main partners of the EPO. As such the Office should look to cooperate with the epi and whilst the EPO would not always be able to take the same position as the users, openess towards and interactions with the epi in order to enhance the patent system in Europe is essential, since the EPO and epi could cooperate too within the framework of the EPN, e.g. like in France, where the Office and the IP attorneys are associated, working together to enhance SME’s IP awareness.
Conclusion: Mr Battistelli appears not to be so much focussed on the international level and high politics (int'l harmonisation, IP5, etc.) but emphesises more the European IP structure and the well-functioning of the EPO itself. This attitude is in fact much appreciated by the EPO's staff, which hopes that in the future the EPO's public service mission that has been accorded to the EPO and allow the EPO to concentrate on its raison d'être, namely the search, examination and granting of high quality patents, will be much more considered on the political level than under the former President. 

From a patent attorney's point of view I would principally agree to the attitude of the staff union, since in recent years the impression has grown among professional representatives that during all that procedural streamlining and raising of bars the EPO has lost sight of the legitimate interests of the system users. In fact, some colleagues and applicants just started to consider more direct national filings instead of going through the streamlined but more and more inflexible and expensive EP system.