Intellectual Property: EU revives push for common patent policy

Don't forget design | Do it quicker, says the US | The top 10

The idea of a Community Patent has long been debated within the European Union. It would let individuals and companies obtain a unitary patent throughout the EU – and get it enforced. At present, patents can be filed with the Munich-based European Patent Office – but they amount to a bundle of nationally enforceable patents in designated states. That’s expensive, as it means patent cases have to be fought country-by-country rather than in one EU-wide forum.

The absence of a functioning EU-wide patent regime is one of the biggest complaints of business leaders in Europe. The adoption of a law that would create a pan-European patent has been stalled for several years because member states cannot agree on a language regime. The French government, in particular, has in the past held up action on the issue, insisting that French be a required language for patent filings, say Commission officials.

Work on a Community Patent started in the 1970s, but the resulting 1975 Community Patent Convention (CPC) was a failure. It was not ratified by enough EU member-states to take effect. In 1989 the commission tried unsuccessfully to revive the issue, with an amended version of the Community Patent Convention. It tried yet again with a 2003 plan for a Community Patent Regulation, or CPR, which provided that a patent application could be filed in only one language (English, French or German) and would be handled with and examined by the European Patent Office. However, the patent would not be enforceable against an entity until it was provided with a copy of it in its own national language. The Community Patent Regulation would also establish a court holding exclusive jurisdiction to invalidate issued patents; thus, a Community Patent's validity will be the same in all EU member states.

A political agreement to create the Community Patent was reached on 3 March 2003. However, one year later in March 2004 under the Irish presidency, the EU’s ruling Council deadlocked again on the details. In particular, the time delays for translating the authentic text of the claims in case of an infringement remained problematic issues throughout discussions.

Don't forget design

In parallel with attempts to revive the Common European Patent, Internal Market and Services Commissioner Charlie McCreevy made moves to link the Community Design system, which protects designs within the EU, with that of the World Intellectual Property System (WIPO).

The proposal would mean designs could be protected via a single application across the EU and in the 18 countries that are party to the WIPO agreement.

McCreevy said, “These proposals will allow EU firms to safeguard valuable design rights with less bureaucracy, while at the same time encouraging them to trade with third countries in the knowledge that their design rights are protected.”

The Community Design System came into effect in April 2003, while the WIPO system dates from April 2004.

The simplified procedure will save costs because it will no longer be necessary to translate documents, monitor different renewal deadlines in different countries, or pay a series of fees to national registration bodies and agents in different countries.

The move has been referred to the European Council for ratification. McCreevy said its adoption would have a positive impact on research, development and innovation activities, and encourage EU companies to trade with WIPO signatory countries in the knowledge that their designs are protected. Signatories of the WIPO agreement include Singapore, Korea, Turkey and Switzerland.

Do it quicker, says the US

The structural inefficiencies may be nowhere near as great as those which would-be patentees encounter in Europe, but the US Patent and Trademark Office (USPTO) has admitted it needs to cut the time it takes to examine patent applications.

The answer will be to get users to hone their applications so that they can be processed in less time. Applicants will be asked to identify the most important claims, enabling the agency to focus on the most important aspects.

The US Patent Office has seen enormous increases in the number of applications for patents filed each year, which it says has not been matched by an increase in resources to deal with them. In 2004 almost one third of the 355,000 new patent applications involved inventions that had been reviewed already by the USPTO. Applicants resubmitted them with only limited changes to the claims, or sometimes the same claims that had been rejected previously.

“It has become much more difficult to provide reliable, consistent and prompt patentability decisions,” said the office in a press statement. Not only do delays in granting a patent delay new products coming to market, issuing patents for inventions that are not novel and non-obvious can impede competition and economic growth.

Simply hiring more patent examiners would not reduce the time taken to process patents, or improve the quality of the examination. Instead, Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, proposes to put the onus on the applicants to improve submissions, saying, “Better quality applications mean better examination.”

Apart from the sheer volume of applications received in 2004, over 40 percent had more than 20 claims. The USPTO admits that the initial examination of large numbers of claims may be necessary in complex applications but says, “When these must be filed, applicants should be prepared to assist the agency in ensuring these applications don’t absorb a disproportionate amount of the limited time the USPTO has to review applications.”

The new rules mean that in second or subsequent filings applicants will have to show why they could not have submitted amendments in the first instance.

“These rules will make the exchange between examiners and applicant more efficient and effective…… and should also improve the quality of issued patents, making them easier to evaluate, enforce and litigate,” says the agency.

The top 10

And just for a taste of what the USPTO did in 2005, here is the latest list of top 10 organisations receiving most US patents: