New President Outlines EPO's Need to Adapt to a Moving Landscape

On 1 July 2007 Alison Brimelow CBE, former Chief Executive of UKIPO, took up the post of President at the European Patent Office (EPO). In an interview published by the EPO, she has set out the challenges of a changing global patent system and how the EPO might respond to them.

Ms Brimelow wishes to see that the quality of patents granted by the EPO is maintained its current high standard. Her mantra of “less is more” is considered to be a great importance along with the “need to make sure that the patents that we grant are highly relevant, not marginal, and have a real utility, as opposed to being a sort of currency for the 'rich man's poker' game”.

Links between the quality standards are made with the current backlog of cases at the EPO, the reduction of which seems to be a priority for the new President. She also considers the huge backlogs as being responsible for changing the nature of the patenting system and created “ambiguities which can be exploited in ways unforeseen by those who established the patent system”. She goes on to state that “If you spend several years waiting for a decision, you and others can play 'rich man's poker', taking a bet on what your rights are going to be and discussing your commercial relationships in the shadow of that pending set of applications. I use the phrase 'rich man's poker' very deliberately as this is a game much better suited to companies with long pockets than to the small. This means that SMEs have an additional struggle in terms of effectively deploying the fruits of their innovation”.

This statement is of interest because the President is clearly concerning with redressing the balance in the patent system so as to allow innovative SMEs to have a higher standing in the business community than is possible with the current patent situation.

The President does provide some clues as to how she thinks the EPO can start to address the 'backlog challenge' by reducing the workload of EPO examiners without compromising quality. She states that “all big patent offices are struggling with the same problem - accessing prior art and keeping backlogs under control. Being prepared to “utilise” work, particularly the searches done by other offices, is both rational and essential if the patent system is to keep its head above water”.

This is not an entirely new initiative for the EPO, which is actively seeking a trilateral agreement with the JPO and USPTO for an examination work-sharing scheme. There is a clear hint that such schemes might be extended to other Offices, including KIPO in South Korea or SIPO in China, in the future. This is further hinted at in the President's belief that the EPO can be influential in shaping how the global patent systems develop. “There is no point in deluding ourselves that we are simply providing a European service. We are not. We are a global patent office in a global economy”.

However, in reality, such a work-share scheme might only be of real benefit during the search phase of an application if the quality of substantive examinations is to be maintained. The jurisdictional differences between Europe and other states, particularly when assessing inventive step, are likely to require full examination by a suitably experienced examiner if quality is to be maintained. Indeed, in some technologies where exclusion from patentability might be an issue (computer implemented inventions for instance), a top-up search might be needed.

The President also makes some interesting comments regarding her perceived role for the EPO within the European Union, particularly since the EPO is not part of the EU. The EPO's unique position and knowledge of IP is considered to be important to “help Europe take the right decisions”. “That means listening, reflecting on what sort of IP framework will sustain and improve Europe's growth and competitive position”.

The President comments on the ongoing Community Patent saga unfolding in Europe, stating that Europe is finding it difficult to reach closure on this issue. “The message from industry is very clear, they want a Community patent, but they don't like what's on the table. There are also voices which say that they are absolutely certain that European Patent Litigation Agreement is exactly what they want, and others who have real reservations”. Clearly, these are issues which the new President is hoping the EPO can influence or resolve.

Charles Clark