Study visit to the European Patent Office, The Hague
March 24th, 2015 by IPKM blog
On 2 March 2015, students from the IPKM programme visited the European Patent Office (EPO) in The Hague. The event was hosted by Yannis Skulikaris, the Director of the ICT Cluster, and comprised four sessions in which staff members with different tasks illustrated their work in a very detailed way and impressed the students.
In the first part, Mr. Eugenio Archontopoulos demonstrated that the daily task of an EPO examiner is complex and requires a combination of scientific expertise with analytical research and attention for the legal issues relating to European patent applications.
Once a patent application is received by the EPO, the competent examiner classifies the claimed invention according to the area of expertise. After the formalities examination, the Search Division sets up a search strategy to discover relevant prior art relating to the patentability of the invention. This operation is meticulous. The outcome of the search is the European search report accompanied by the search opinion. The search report is the starting point for the substantive examination of the application by the Examination Division, which, eventually, results in the grant of the European patent or the refusal of the patent application. After a refusal, the applicant can file an appeal. After grant of the patent, any person may file within nine months a notice of opposition.
It must be noted that the phases above described can take years, and some applicants strategically try to extend the duration of the proceedings. Indeed, pending applications can be a disincentive for other operators in the market to not exploit that invention as they may wish to avoid any risk of being sued for patent infringement in the case the patent would be granted at the end the proceedings.
The second speaker, Luigi Petrucci, who is an administrator of the patent procedures management, gave an overview of the recent procedural changes to the EPC (European patent Convention). Mr. Petrucci clarified that the target for EPO now is to change the examiners’ workflow management, which is replaced by the new priority scheme to optimize the use of available examiners resources in order to maximize legal certainty in Europe on pending patent applications. This includes issuing all searches with an opinion on time, finishing already started examination files instead of starting new cases, issuing grants shortly after a positive search opinion instead of postponing the grant until it is confirmed eventually, and enabling fast tract examination for third parties which normally involves the opposition procedure after publication of patent application.
In the afternoon, patent examiner Mr. Thierry Michel demonstrated an interactive prior art search. Generally, the whole process of search is looking for prior arts and the aim of the search is to find the closest prior art. Based on the abstract, claims, description and drawings, examiners first perform the search using the relevant key words. Keywords are determined based on the concept of the invention. For instance, keywords for the subject matter “computer program to be migrated” would be “migration” or “virtual machine”. Secondly, the examiners will analyze the results, i.e. the number of documents presented under the relevant keywords, in order to determine whether he needs to narrow down the search results by using additional relevant keywords. The most important step is the third one in which the examiner needs to analyze all documents selected in the previous step and evaluate missing features in regard of the subject matter. All of these steps need to be repeated until the best documents for prior art are found. Novelty arguments may arise from examiners if one document disclosed all features of the invention. If it is not the case, examiners will determine the closest prior art among all the documents of prior art to assess the inventive step.
In the last session, Mr.Yannis Skulikaris gave a concise introduction to the Unified Patent Court (UPC). According to the Agreement on A Unified Patent Court, three committees are to be constituted to “ensure effective operation and implementation” of the Agreement: the Administrative Committee, the Budget Committee and the Advisory Committee. A preparatory committee was also established, which enabled the entry into operation of the Unified Patent Court. The Agreement on the Unified Patent Court was signed on 19 February 2013 by 25 EU Member States.  It will need to be ratified by at least 13 states, including France, Germany and the United Kingdom in order for it to enter into force. Until now, only six countries have notified their ratifications.
In respect of the main features of the UPC, Mr. Skulikaris addressed some problems as well. The UPC will have parallel jurisdiction with national courts, meaning that there might be an opt-out possibility. Meanwhile, in spite of the fact that decisions by the Court of Justice of the EU can be a good source for case law, courts in each Member State may interpret the same legal issues differently and therefore render harmonization of substantial law more difficult. Another problem that has been noted is the composition of the courts. It is questionable whether the participating Member States will be able to agree upon common judges since the judges will be appointed by the Administrative Committee on the basis of a list drafted by the Advisory Committee, which contains the “most suitable candidates”. Another important question is the proper distribution of legal fees: forum-shopping due to financial attraction of one system over the other needs to be avoided.
In conclusion, the study visit to the European Patent Office provided IPKM students with a great opportunity to get in touch with the real practice as well as the working members in the EPO. More importantly, the students have gained a further understanding on the interaction between the rules and the processing, something that is hard to acquire in class.
by Sara Parrello, Bai Wang
 Article 10 of the Agreement
 Article 11 of the Agreement
 http://www.fr.com/files/Uploads/Documents/UPCPrepCommletter03272013.pdf last accessed 24-03-2015
 https://www.epo.org/law-practice/unitary/patent-court.html, last accessed 23-03-2015.
 They are Austria, Belgium, Denmark, France, Malta and Sweden. http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001 last accessed, 23-03-2015
 See http://www.unified-patent-court.org/about-the-upc/15-category-b last accessed, 23-03-2015. Although both advisory committee and Administrative committee are required to have representation from each contracting member states, the list of “most suitable candidates” does not need to fulfill such a requirement.