Forces and Weaknesses of the European Patent Organisation

Report of the Ingres Meeting, April 18th 2008 in Bern

Christoph Gasser* / Michael Ritscher**

On the occasion of an INGRES evening event at the "Zunfthaus zum Affen" in Bern, at the invitation of Franz Nyffeler, former president of INGRES and past federal judge, Dr. Roland Grossenbacher, director of the Federal Institute of Intellectual Property and (until the beginning of March 2009) president of the governing board of the European Patent Organisation (EPO), talked about the operativeness of the EPO as part of the global patent system.

Roland Grossenbacher explained that the community patent developed into a factor of disturbance. This is particularly due to the fact that the European Commission, which strives to get the original vision of the community patent adopted, is now blocking the agreement on the European Patent Litigation Agreement (EPLA). Apparently the Commission fears that the EPC, combined with the Londoner agreement on language and the EPLA, would make a community patent unnecessary.

On the contrary, a spectacular success is promised to the European Patent Convention nowadays - not only because of the number of applications that surpassed all expectations (2007:216000) and the meanwhile 34 Member states, but also because of the relatively high quality of the granting process. This success jeopardises, in the sense of a vicious circle, increasingly the quality of the examination and extends the time of treatement (there remaines unintentionally - but factually - a deferred examination). A completion of the examination within three years would only be possible if either 2000 new examiners were to be engaged or the applications would decline by 45%. However, the European Patent Organisation expects a further increase of 50% as well as a growing complexity of applications. One can fear an invasion of patent applications and finally the implosion of the global patent system. For companies, this would mean that they - without energic countermeasures being taken - would be handicaped by an increasing number of not yet or not strictly examined patents.

The EPO is actually predestined to adopt a leading role and to overcome these challenges. On the one side it disposes of outstandingly educated and experienced employees ("the greatest strength of the EPO") thanks to its attractic conditions of employment. These are able to examine the applications with the accurateness required by all sides. Moreover, the internationality of the EPO allows a diversity of opinions and a differentiated and competent strategic leadership. The EPO moves by no means in a vacuum, instead it has the possibility to continue to write its success story thanks to its "Governance".

Following the speaker, this project could be implemented despite the missing continuity in the presidency mainly via the establishment of a committee of the governing board (the so called "Board 28") as well as the realistic assessment of the financial possibilities thanks to the introduction of the "International Financial Reporting Standards". Based on this "Governance" it also succeeded to limit the looming damage caused by decentralisation efforts.

However, it should be crucial for the EPO not to try to act in an economic policy oriented way but to concentrate without fuss or quibble on its core task which consist of the common coverage of the increasing number of patent requests, that is to say the preparation and the putting at disposal of the stand of techniques, research and patent examination.

As a consequence there should be a more restrained granting practice, which is in itself uncontested. What is controversial is how this practice should be restricted. Roland Grossenbacher calls for a change in one's view. Instead of facilitating wherever possible the entrance to patent protection, a more restrictive practice in the sense of highering the entrance level ("raising the bar") should be adopted. This should concern all actors, that is to say applicants, examiners, the boards of appeals as well as the courts.

Trivial reports should be recognised as soon as possible and eliminated. Accordingly, the PCT-application process should be improved, which speaks against decentralisation.

After some critics and recommendations directed towards the governing board of the EPO and the EPO, the speaker described four scenarios:
1. A "non friendly take-over" of the European Commission as a consequence of the establishment of a community patent should be avoided. Should this not succeed, a solution should be chosen which could at least maintain the non-EU members in the system of the EPC.
2.The actual deferred examination of patent applications leads to the global implosion of the patent system.
3. A solution to the demonstrated danger of "mutual recognition" of one office by the other should be rejected. Indeed such a recognition would carry the risk that the quality moves into a downwards spiral and establishes itself at the lowest common level.
4. Hence, following the speaker, there remains only one last resort: the invasion of applications should be quieten in the sense of "raising the bar". An even more thorough examination of applications would resist even a fundamental critic of the patent system. Even without legislative interventions, it is in the hands of the EPO to sustainably influence the development through a more restrictive practice and also by raising the production. This could be reached comparatively fast. More than any other patent office it has the necessary resources. The appropriate will is also visible and should be reinforced by the governing board but also by public discussion. Thereby, the Minister conference of the contracting States that was established by the EPC could play a significant role.

  • Dr. iur., Lawyer, LL.M., Zurich

** Dr. iur., Lawyer, LL.M., Zurich