On the 16 October 2008, The Fitzwilliam Museum in Cambridge played host to another prestigious Venner Shipley Champagne reception. The event was attended by prominent members of the scientific and high-technology community in Cambridge and East Anglia, as well as influential figures in the field of intellectual property.
The highlight of the evening was a keynote speech by Alison Brimelow CBE, the President of the European Patent Office, entitled "Making the European patent system fit for the future - facts, challenges and options". The speech gave a fascinating insight into the challenges facing the European Patent Office and the steps being taken to streamline the application process and ensure high quality patents continue to be granted.
Guests enjoyed Champagne and canapés in the grand surroundings of the main galleries of The Fitzwilliam. The event proved an excellent opportunity to admire the works on display and to network at the highest level.
We would like to thank all of our guests for making the evening such a success. In particular, we would like to thank Alison Brimelow for joining us and speaking at the event.
The highlight of the evening was a keynote speech by Alison Brimelow CBE, the President of the European Patent Office, entitled "Making the European patent system fit for the future - facts, challenges and options". The speech gave a fascinating insight into the challenges facing the European Patent Office and the steps being taken to streamline the application process and ensure high quality patents continue to be granted.
Guests enjoyed Champagne and canapés in the grand surroundings of the main galleries of The Fitzwilliam. The event proved an excellent opportunity to admire the works on display and to network at the highest level.
We would like to thank all of our guests for making the evening such a success. In particular, we would like to thank Alison Brimelow for joining us and speaking at the event.
"Making the European patent system fit for the future - facts, challenges and options" a transcription of the speech given by Alison Brimelow, President of the European Patent Office, on the 16th October 2008 at the Fitzwilliam Museum, Cambridge.
Ladies and Gentlemen,
It is both an honour and a pleasure for me to be here today to address such a distinguished audience in such an awe-inspiring environment. I would like to express my thanks to the organisers of this reception at Venner Shipley, and in particular to Mr Piotrowicz, for inviting me to share a few thoughts with you on how the European patent system can support innovation in Europe.
I wish to rephrase the wording of my topic. Perhaps we should share a few ideas on the European patent system, where it stands today and what needs to be done to maintain its innovation-supporting capacity in the future.
Moreover, it is clear that the European patent system does not stand alone, but is part of a larger architecture stretching across the WTO countries and beyond. It is therefore necessary to look outside the boundaries of Europe and to include our partners at global level.
[The past: European islands]
The success story of the European patent system as we know it today started in 1973 when the Munich Convention, the EPC, was signed.
This led to the creation of the first transnational regional system, which can be seen as the first successful attempt to overcome the existing patchwork of national patent islands in Europe.
In 1978, when the newly founded European Patent Office opened its doors to applicants, another significant regime for filing patent applications, the PCT, entered into force.
Both regimes have developed more successfully than first expected:
• The number of EPC member states has jumped from seven to 34.
• The PCT has evolved into the preferred filing route for global business.
The European patent system is now a major factor in the European integration process and a cornerstone of the European economy. And the PCT has linked Europe with the other regional patent islands: first the US and Japan, and then also China and Korea.
In the early 1980s it was already becoming clear that the growing volume of trade between Europe, the US and Japan would affect the three regional patent systems. The introduction of trilateral co-operation between the EPO, the JPO and the USPTO established the first significant bond between those three offices.
The ensuing technical projects involved simplifying data exchange and formatting standards with a view to facilitating the flow of patent applications within the trilateral system. As a result, technical and procedural standards were set which are still valid today. This was the foundation of the current global system.
Matters evolved rapidly. After 1989, the ex communist states adopted modern systems for the protection of IP, in many cases with the help of the EPO. The TRIPS agreement defining minimum standards of IP protection was signed in 1994 and the WTO system of global trade was created in 1995. New powerful players emerged, such as China, India, Russia and Brazil.
At the same time, technology took off spectacularly:
- In biotechnology and genetic engineering, new prospects opened up for medical technology and agriculture.
- The digital revolution enabled traditional technologies to expand in entirely new ways.
- Increasingly, technologies converged as the classic boundaries between technical fields became blurred.
What were the consequences?
• Companies adopted global patenting strategies which they aligned with their business objectives.
• The number of patent applications filed worldwide rose dramatically, and especially at the five largest offices: the EPO, USPTO, JPO, KPO and SIPO.
[The current challenge: global warming of patents]
Many companies now file second applications under the PCT to implement their patent strategies in the five patent islands.
Accordingly, the total number of patent applications rose from just 800 000 in 1985 to well over 1.8 million in 2006. The lion's share of this growth is accounted for by the five largest offices, namely the EPO, USPTO, JPO, KPO and SIPO. The proportion of PCT filings within this total is also steadily rising.
At the EPO alone, patent filings more than doubled between 1995 and 2008.
The huge demand for patent rights places enormous pressure on the patent system in terms of workload, processing time and quality. This situation is not improved by the fact that, in the five interdependent regional systems, a large amount of work is still duplicated.
However, none of the leading offices is in a position to solve the problem on its own.
Let me cite some facts to illustrate these concerns:
• Backlogs have reached high levels and are growing (at the USPTO 1 million dossiers, at the JPO well over 800 000 and at the EPO just under 400 000 unprocessed dossiers). This puts pressure on the patent offices and causes problems with deadlines.
• Stock levels have increased even though punctuality in the patent granting procedure has improved. Volumes cannot be reduced just by efficiency on the part of patent examiners.
• Strategic patenting involves the deliberate use of unclear patent claims and tactical manoeuvring by applicants. We call this phenomenon "woolly boundaries".
In a nutshell, these three phenomena can be described as
- an increasing propensity to patent in world trade
- backlog problems
- "woolly boundaries" in patent applications and patents.
Taken together, these amount to a phenomenon I call "global patent warming".
Its main consequences are the generation of uncertainty in the markets, and economic risks.
Although other geographical regions are more affected than Europe, global patent warming is also being keenly felt here. This is clear from the debate in certain areas of technology, notably those with high growth and major market potential such as
• computer software
• or pharmaceuticals and biotechnology.
This phenomenon threatens the status quo of the patent system. Action is needed now to address each of its components in order to stop its further evolution and to safeguard the functioning of the European and international patent systems.
[The four strategies]
What solutions could be envisaged to address the challenges of global patent warming?
a. Merging the islands
The first strategy would call for closer co-operation between the patent islands. I call this "merging the islands", with the main global offices acting as partners.
The key elements of this package are:
- support from the US, Japan and most EPO states
- enhancing co-operation to achieve more work-sharing
- synchronising the different stages of the patenting process
- more sharing of knowledge and decision-making.
"Work-sharing" clearly does not mean that all offices recognise the examination results of the office of first filing, but that they take into consideration what has already been done in the earlier stages of the procedure. For Europe as a whole, substantive recognition is not possible, but we can try to co-operate more effectively through:
- common development of tools
- common use of the same tools, e.g. classification schemes
- use of e-tools and prior-art search tools.
b. Raising the bar
This strategy serves two aims: making the system work better and granting fewer but better patents. We need to redefine the boundaries of patent protection to improve the quality of the product.
The main elements of this strategy are:
- the creation of quality systems
- tighter enforcement of rules
- fine-tuning the rules
- removing opportunities for procedural abuse
- changing the rules for entering the system, and the grant rules.
In Europe we have already started taking measures in line with this strategy:
- In 2006, a European quality policy was adopted in co-operation with the member states.
- Proposals are on file for consideration by our member states with a view to tightening the procedural rules and tackling in particular the abuse of divisional applications.
- On a new fee policy, initial steps are already being implemented and others are to be submitted to the EPO's Administrative Council.
c. Shining a light
The third strategy aims at reducing the high degree of uncertainty created by the global warming in patents. It seeks to establish certainty about the nature of pending patent applications:
- What is happening, and in what areas?
- What technologies are likely to emerge?
- Are there any "hot spots" to be reckoned with?
The aim is not only to gain more information about the pool of pending applications, but also to find ways of prioritising the handling of applications by patent offices. For instance, the "first in - first out" principle of processing could be scrapped in favour of giving priority to reducing uncertainty.
This strategy will help offices allocate their resources appropriately to clearing up the boundaries between the different pending rights.
This relatively new approach is being increasingly discussed by the other offices.
d. Inventing a better mousetrap
Finally, a strategy is being devised for improving the system with a view to the eventual co-production of intellectual property rights. We call it "inventing a better mousetrap".
The aim here is to redesign the procedure so as to eliminate distorting incentives such as subsidies for procedural fees, as these can tend to have an undesirable impact on the behaviour of applicants. Covering costs is therefore very important.
Together with other elements such as process improvement and tool sharing, this strategy should enable offices finally to produce IP rights that are fit for purpose in their region.
It is clear that all these projects need to involve different stages, but jointly they will have an impact on global patent warming.
Are any measures already under way that take a similar line to these projects?
[Situation at present]
• Some promising moves have already been made in Europe and at global level to address the issue.
In Europe:
- The strategy debate in 2006 was strongly focused on
- the European quality policy
- the European Patent Network, and especially the UPP (the results of which are pending)
- the European Patent Organisation's Workload Study, which in December 2007 made strategic recommendations for tackling the workload in the European patent system.
At global level:
- The EPO in July became involved in the projects constituting the Patent Prosecution Highway/Triway.
- In June 2007, the first "Big Five" meeting took place in Hawaii.
- In May 2008, as part of the Washington Process, the EPO, JPO, USPTO, KIPO and SIPO met to discuss ways of addressing the problem of growing backlogs:
- The vision was the elimination of unnecessary duplication of search work by the office of first filing and the office of second filing.
- The approach to this involved "foundation projects" on the basis of the PCT and harmonisation tools.
- One of the challenges here was punctuality: work done by the office of first filing must be available before the office of second filing starts its work.
- On the quality front, there had to be a common quality standard for the efficient exchange of results.
To ensure that all five offices work to the same quality standards, eight foundation projects were defined:
A common documentation database
Common hybrid classification
Sharing and documenting of search strategies
Common search and examination support tools
Common access to search and examination results
A common training policy
Shared machine translation
A common application format
This is the first concrete move towards tackling one aspect of the "global warming in patents" phenomenon. Let's see how it evolves. The next meeting of the five offices has been scheduled to take place in Seoul in October.
[Closing remarks]
• I have tried to illustrate the problems the global system of patents is facing, and to explain how these challenges also pose a threat to the European patent system.
• The problem is complex and much debated, but unequivocally recognised by all major players.
• Solutions such as a world patent office or mutual recognition of substantive examination are neither at hand nor feasible.
• With its unique history of merging its own patent islands into a coherent region, Europe is well placed to take a leading role in this process.
• Similarly, the achievements of the European patent system could serve as a model for solutions on a larger scale.
• Leadership in theory must now be followed by leadership in action. Here, too, Europe has already made encouraging initial moves over the past two years, and has set an example.
Thank you for your attention.
Ladies and Gentlemen,
It is both an honour and a pleasure for me to be here today to address such a distinguished audience in such an awe-inspiring environment. I would like to express my thanks to the organisers of this reception at Venner Shipley, and in particular to Mr Piotrowicz, for inviting me to share a few thoughts with you on how the European patent system can support innovation in Europe.
I wish to rephrase the wording of my topic. Perhaps we should share a few ideas on the European patent system, where it stands today and what needs to be done to maintain its innovation-supporting capacity in the future.
Moreover, it is clear that the European patent system does not stand alone, but is part of a larger architecture stretching across the WTO countries and beyond. It is therefore necessary to look outside the boundaries of Europe and to include our partners at global level.
[The past: European islands]
The success story of the European patent system as we know it today started in 1973 when the Munich Convention, the EPC, was signed.
This led to the creation of the first transnational regional system, which can be seen as the first successful attempt to overcome the existing patchwork of national patent islands in Europe.
In 1978, when the newly founded European Patent Office opened its doors to applicants, another significant regime for filing patent applications, the PCT, entered into force.
Both regimes have developed more successfully than first expected:
• The number of EPC member states has jumped from seven to 34.
• The PCT has evolved into the preferred filing route for global business.
The European patent system is now a major factor in the European integration process and a cornerstone of the European economy. And the PCT has linked Europe with the other regional patent islands: first the US and Japan, and then also China and Korea.
In the early 1980s it was already becoming clear that the growing volume of trade between Europe, the US and Japan would affect the three regional patent systems. The introduction of trilateral co-operation between the EPO, the JPO and the USPTO established the first significant bond between those three offices.
The ensuing technical projects involved simplifying data exchange and formatting standards with a view to facilitating the flow of patent applications within the trilateral system. As a result, technical and procedural standards were set which are still valid today. This was the foundation of the current global system.
Matters evolved rapidly. After 1989, the ex communist states adopted modern systems for the protection of IP, in many cases with the help of the EPO. The TRIPS agreement defining minimum standards of IP protection was signed in 1994 and the WTO system of global trade was created in 1995. New powerful players emerged, such as China, India, Russia and Brazil.
At the same time, technology took off spectacularly:
- In biotechnology and genetic engineering, new prospects opened up for medical technology and agriculture.
- The digital revolution enabled traditional technologies to expand in entirely new ways.
- Increasingly, technologies converged as the classic boundaries between technical fields became blurred.
What were the consequences?
• Companies adopted global patenting strategies which they aligned with their business objectives.
• The number of patent applications filed worldwide rose dramatically, and especially at the five largest offices: the EPO, USPTO, JPO, KPO and SIPO.
[The current challenge: global warming of patents]
Many companies now file second applications under the PCT to implement their patent strategies in the five patent islands.
Accordingly, the total number of patent applications rose from just 800 000 in 1985 to well over 1.8 million in 2006. The lion's share of this growth is accounted for by the five largest offices, namely the EPO, USPTO, JPO, KPO and SIPO. The proportion of PCT filings within this total is also steadily rising.
At the EPO alone, patent filings more than doubled between 1995 and 2008.
The huge demand for patent rights places enormous pressure on the patent system in terms of workload, processing time and quality. This situation is not improved by the fact that, in the five interdependent regional systems, a large amount of work is still duplicated.
However, none of the leading offices is in a position to solve the problem on its own.
Let me cite some facts to illustrate these concerns:
• Backlogs have reached high levels and are growing (at the USPTO 1 million dossiers, at the JPO well over 800 000 and at the EPO just under 400 000 unprocessed dossiers). This puts pressure on the patent offices and causes problems with deadlines.
• Stock levels have increased even though punctuality in the patent granting procedure has improved. Volumes cannot be reduced just by efficiency on the part of patent examiners.
• Strategic patenting involves the deliberate use of unclear patent claims and tactical manoeuvring by applicants. We call this phenomenon "woolly boundaries".
In a nutshell, these three phenomena can be described as
- an increasing propensity to patent in world trade
- backlog problems
- "woolly boundaries" in patent applications and patents.
Taken together, these amount to a phenomenon I call "global patent warming".
Its main consequences are the generation of uncertainty in the markets, and economic risks.
Although other geographical regions are more affected than Europe, global patent warming is also being keenly felt here. This is clear from the debate in certain areas of technology, notably those with high growth and major market potential such as
• computer software
• or pharmaceuticals and biotechnology.
This phenomenon threatens the status quo of the patent system. Action is needed now to address each of its components in order to stop its further evolution and to safeguard the functioning of the European and international patent systems.
[The four strategies]
What solutions could be envisaged to address the challenges of global patent warming?
a. Merging the islands
The first strategy would call for closer co-operation between the patent islands. I call this "merging the islands", with the main global offices acting as partners.
The key elements of this package are:
- support from the US, Japan and most EPO states
- enhancing co-operation to achieve more work-sharing
- synchronising the different stages of the patenting process
- more sharing of knowledge and decision-making.
"Work-sharing" clearly does not mean that all offices recognise the examination results of the office of first filing, but that they take into consideration what has already been done in the earlier stages of the procedure. For Europe as a whole, substantive recognition is not possible, but we can try to co-operate more effectively through:
- common development of tools
- common use of the same tools, e.g. classification schemes
- use of e-tools and prior-art search tools.
b. Raising the bar
This strategy serves two aims: making the system work better and granting fewer but better patents. We need to redefine the boundaries of patent protection to improve the quality of the product.
The main elements of this strategy are:
- the creation of quality systems
- tighter enforcement of rules
- fine-tuning the rules
- removing opportunities for procedural abuse
- changing the rules for entering the system, and the grant rules.
In Europe we have already started taking measures in line with this strategy:
- In 2006, a European quality policy was adopted in co-operation with the member states.
- Proposals are on file for consideration by our member states with a view to tightening the procedural rules and tackling in particular the abuse of divisional applications.
- On a new fee policy, initial steps are already being implemented and others are to be submitted to the EPO's Administrative Council.
c. Shining a light
The third strategy aims at reducing the high degree of uncertainty created by the global warming in patents. It seeks to establish certainty about the nature of pending patent applications:
- What is happening, and in what areas?
- What technologies are likely to emerge?
- Are there any "hot spots" to be reckoned with?
The aim is not only to gain more information about the pool of pending applications, but also to find ways of prioritising the handling of applications by patent offices. For instance, the "first in - first out" principle of processing could be scrapped in favour of giving priority to reducing uncertainty.
This strategy will help offices allocate their resources appropriately to clearing up the boundaries between the different pending rights.
This relatively new approach is being increasingly discussed by the other offices.
d. Inventing a better mousetrap
Finally, a strategy is being devised for improving the system with a view to the eventual co-production of intellectual property rights. We call it "inventing a better mousetrap".
The aim here is to redesign the procedure so as to eliminate distorting incentives such as subsidies for procedural fees, as these can tend to have an undesirable impact on the behaviour of applicants. Covering costs is therefore very important.
Together with other elements such as process improvement and tool sharing, this strategy should enable offices finally to produce IP rights that are fit for purpose in their region.
It is clear that all these projects need to involve different stages, but jointly they will have an impact on global patent warming.
Are any measures already under way that take a similar line to these projects?
[Situation at present]
• Some promising moves have already been made in Europe and at global level to address the issue.
In Europe:
- The strategy debate in 2006 was strongly focused on
- the European quality policy
- the European Patent Network, and especially the UPP (the results of which are pending)
- the European Patent Organisation's Workload Study, which in December 2007 made strategic recommendations for tackling the workload in the European patent system.
At global level:
- The EPO in July became involved in the projects constituting the Patent Prosecution Highway/Triway.
- In June 2007, the first "Big Five" meeting took place in Hawaii.
- In May 2008, as part of the Washington Process, the EPO, JPO, USPTO, KIPO and SIPO met to discuss ways of addressing the problem of growing backlogs:
- The vision was the elimination of unnecessary duplication of search work by the office of first filing and the office of second filing.
- The approach to this involved "foundation projects" on the basis of the PCT and harmonisation tools.
- One of the challenges here was punctuality: work done by the office of first filing must be available before the office of second filing starts its work.
- On the quality front, there had to be a common quality standard for the efficient exchange of results.
To ensure that all five offices work to the same quality standards, eight foundation projects were defined:
A common documentation database
Common hybrid classification
Sharing and documenting of search strategies
Common search and examination support tools
Common access to search and examination results
A common training policy
Shared machine translation
A common application format
This is the first concrete move towards tackling one aspect of the "global warming in patents" phenomenon. Let's see how it evolves. The next meeting of the five offices has been scheduled to take place in Seoul in October.
[Closing remarks]
• I have tried to illustrate the problems the global system of patents is facing, and to explain how these challenges also pose a threat to the European patent system.
• The problem is complex and much debated, but unequivocally recognised by all major players.
• Solutions such as a world patent office or mutual recognition of substantive examination are neither at hand nor feasible.
• With its unique history of merging its own patent islands into a coherent region, Europe is well placed to take a leading role in this process.
• Similarly, the achievements of the European patent system could serve as a model for solutions on a larger scale.
• Leadership in theory must now be followed by leadership in action. Here, too, Europe has already made encouraging initial moves over the past two years, and has set an example.
Thank you for your attention.
Making the European patent system fit for the future - facts, challenges and options.
