1. ESIA IP update – Shanghai IPTF of the WSC, Feb. 2011
Alfred Hoffmann (INF) / Marc Schouten, (NXP), ESIA IPTF Chair

2. 1. Europe’s Unified Patent System & enhanced cooperation procedure
2. Feed-back from EPO on patent quality
3. Status London Agreement

3. Single European Patent System
European Council agreed on draft regulation for a Unified European Patent system in December 2009
1. Patent Court (EEUPC)
2. EU Patent regulation

4. Single European Patent – Patent Court
Opinion of the European Court of Justice requested on compatibility of proposal for the Patent Court (EEUPC) with EU treaty
Hearing in May 2010
Opinion of Advocates General published in August. Raises doubts in relation to the rights of the defence. Concerns about compatibility of proposals with EU law.
Opinion of European Court of Justice will be published on 8 March 2011

5. Single European Patent – EU Patent
Translation arrangement proposed on 1 July 2010
Required unanimity proved impossible to achieve.
December 2010: 23 EU member states propose to adopt compromise under the “Enhanced Cooperation” provisions of the Lisbon treaty
“Enhanced Cooperation” allow EU member states to move forward while other member states may join later
15 February 2011: EU Parliament gave it consent to “Enhanced Cooperation”
Authorization by Council of Competiveness Ministers expects on 9-10 March
Translation arrangement was not yet part of the proposals agreed to by the Council in December 2009.
Proposal translation arrangement was not acceptable to two member states, two other member states were indecisive. 23 other member states joined the request on enhanced cooperation. Enhanced cooperation is introduced in the Lisbon Treaty which amended the treaties constituting the European Union and entered into force on 1 December 2009.
Enhanced cooperation requires consent of the European parliament (granted 15 Feb 2011) and requires authorisation of the Council (expected 9-10 March).

6. Improvement of Patent Quality
Quantitative survey encompassed ten major areas:
Number of patent applications & patents per patent office per year
Workload of patent examiners – applications assigned per year
Patent office budgets
Patent examiner efficiency – applications processed per year
Methodology of patent application examination
Training, experience & qualification of patent examiners
Staffing of patent offices – retention & turnover of examiners
Backlogs and how long it takes to obtain a granted patent
Collaboration with other patent offices
Collaboration with industry
Qualitative survey Chart of Patent Quality Survey highlights:
Best practices
Areas for improvement
Suggestions
We perceive the quantitative parameters as a measure of the thoroughness that an application is examined. For this reason our industry would like to compare these parameters between the various patent offices.
IPTF Report to WSC 6 6

7. Patent quality & the work of the EPO
Overall comparison: EPO / GPO fair well in global comparison regarding the quality of patents
Overall quality of the European patent system
Possibility to have a search/first office action within the priority year

8. Patent quality & the work of the EPO
1.[all PTO’s] to keep standardized and transparent metrics, including: EPO is quite transparent
a) Number of apps/year.
b) Number of patents issued/year.
c) Number of apps pending at year end.
d) Actual examination time per application (from filing until issuance as patent or abandonment). Published
e) Average first action (from filing to first action.)
f) Case load per examiner (Patent apps/examiner). Not published
g) Average years experience of examiners. Not published, but low turnover. EPO spends significant effort in training.
h) Full time/part time examiner ratio. Part-time slowly increasing but not beyond certain threshold
i) Examiner turnover ratio. < 1%, but for retirement
To the extent these parameters are not published the EPO is willing to provide those on request

9. Patent quality & the work of the EPO
2. Strike balance between application of procedure & legitimate interest of applicant, as procedural efficiency weighs heavily
3. Actively promote the use of interviews with the examiner & submit auxiliary amendment EPO is very open to this and it is indeed encouraged. However, EPO experience is often that the companies or the people working on behalf of the companies do not prefer this interaction.
4. Publish targets on time for first office action & time until decision; office to aim for time until decision in line with best of class (especially for Europe) Efforts are being made to speed up. EP first filings see a first response in months. PACE program.
5. More detail would be helpful in rejections relating to ‘obviousness’ or ‘lack of inventive step’.
ESIA would like the EPO’s point of view on these five points.

10. Patent quality & the work of the EPO
Further ESIA points:
In our experience, the EPO puts much emphasis on formal matters. EPO specifies that generally patent granting is a formal matter, but at the same time recognizes that being too formalistic can cause cost and delay. Often this also depends on experience of examiners. EPO encourages contesting of opinions and face-to-face discussions, which are used too little by companies.
Low show-up rates in formal hearings (Oral Proceedings).
Pendency time. Possibility of ‘speedy’ grants. PACE program at no additional cost to applicant
Clarity objections where the examiner seems to have a good grasp of the invention.
In the present procedure non-unity is very difficult to overcome, forcing applicants to restrict the scope too early in the process.
Quite often we see applications pending for years without communications after the first Office Action.
: Office action answered in
: No communications between 2007 and 2010
: No communication since 2008
: No substantive communication since 2002
: No substantive communication between 2002 and 2009.
All these have a priority in 2000.

11. Patent quality & the work of the EPO
Further ESIA points:
Costs: EPO differentiates between cost of core work (around 1/3), overhead and translation costs. On core work it is competitive in relation to quality and maintains a high level of patent quality.
How does the EPO compare (excluding national requirements)?
Single European Patent will provide benefits. What are the consequences for the EPO and does the EPO have a view on the timeline, in view of the recent developments. EPO welcomes the decision and is part of the solution.
Clarity objections where the examiner seems to have a good grasp of the invention.
In the present procedure non-unity is very difficult to overcome, forcing applicants to restrict the scope too early in the process.
Quite often we see applications pending for years without communications after the first Office Action.
: Office action answered in
: No communications between 2007 and 2010
: No communication since 2008
: No substantive communication since 2002
: No substantive communication between 2002 and 2009.
All these have a priority in 2000.

12. Suggestion on a patent quality definition
Patent quality means the confidence in validity that can be given to the patent, eventually in court.
The EPO puts a lot of attention to clarity and conciseness. As seen by our industry, the focus should be on the criteria for patentability, in particular novelty and inventive step.
IPTF Report to WSC 12 12

13. Status London Agreement
The present status of the London Agreement is:
Countries that dispense from any further translations
France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland, United Kingdom 
Countries that require a text in English and a translation of the claims in their national language are:
Croatia, Denmark, Hungary (as from 1 Jan 2011), Iceland, Netherlands, Sweden 
Countries that require a translation of the claims but no translation of the specification are:
Latvia, Lithuania, Slovenia 

14. Back up

15. Improvement of Patent Quality
WSC Joint Statement:
To maximize the beneficial effect that intellectual property protection has on stimulating and sustaining innovation, patent offices around the world should implement examination procedures that result in the granting of the highest quality patents possible in compliance with the statutory requirements of patentability.
The WSC previously has called on the GAMS to ensure adequate funding of domestic patent offices as a way to improve the timely and accurate issuance of patents. Recognizing that budget is but one aspect of patent office function that can affect patent quality, the WSC desires to promote a broader dialogue with each patent office in which the respective semiconductor industry may provide observations and suggestions regarding issuance of quality patents based on the industry's experiences as one of the most patent-intensive and innovative business sectors in the global economy.
Towards this end, the WSC has collected and studied relevant data on patent examination, issuance and quality, and has observed certain global best practices in issuing patents and formulated suggestions for improving patent quality and harmonization around the world.
Summary of suggestions from our study is attached to this Joint Statement. The WSC expects that this summary would serve as constructive feedback from the WSC and be of great value to all patent offices
GAMS reply 2009: GAMS welcomes the WSC suggestions from their study to provide constructive feedback to the PTOs of GAMS members and WIPO on the crucial issue of improving patent quality.

16. Improvement of Patent Quality
IPTF Report to WSC 16