EPO Patent Information Conference, Bologna, Italy, October, 2013

EPO Patent Information Conference, Bologna, Italy, October, 2013

World Patent Information 36 (2014) 51e53 Contents lists available at ScienceDirect World Patent Information journal homepage: www.elsevier.com/locat...

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World Patent Information 36 (2014) 51e53

Contents lists available at ScienceDirect

World Patent Information journal homepage: www.elsevier.com/locate/worpatin

Conference report

EPO Patent Information Conference, Bologna, Italy, October, 2013 1. Speech from Benoît Battistelli, President, EPO President Battistelli gave delegates a comprehensive overview of the many developments at or involving the EPO over the last year. He started by noting the event marking the 40th anniversary of the EPC, held in Munich the previous week, and also the continuing increase in patent filings and grants, with a record 258K filings in 2012 set to be overtaken by 2013 filings, currently up 4% on that year, and a record 66K patent grants in 2012. The increasing role of the EPO as a global IP influence was illustrated by the agreements with, for example, China, Brazil, Russia, OAPI, and the ASEAN group, the agreement by the IP5 group on a common patent information policy, and the expansion of the CPC beyond the EPO and the USPTO, to the patent offices in China, Korea, Russia and (soon) Brazil. In the European context, he also outlined the ongoing steps in implementation of the Unitary Patent and Court. On more specifically patent information matters, in addition to the CPC developments, the President noted the continuing efforts to build databases at the widest and most accurate levels, with easy access, and to increase the activities designed to enhance public awareness of the value of patent information in many business contexts. He also pointed out the expansion in use of the OPS, the confirmation that 90% of patent authorities are now providing patent status information e to be included in EPO databases e within 6 months of the action reported, and the continuation of the extensive use of Espacenet e covering over 80 million documents, and now Patent Translate- with 22 languages so far and use running at a rate of around 10K per day. In conclusion, President Battistelli reconfirmed the EPO’s extensive commitment to enhancing the availability and use of patent information, and described the recent EPO/OHIM report on the contribution of IP to the European economy e for example about 40% of total economic activity in the EU is generated by IPRintensive industries, which industries also generate around 90% of all exports. He also referred to the efforts on IP at universities through e for example e innovation contests, and the latest annual patent statistics for decision makers conference in November e this time in Brazil, as well as confirming the value of the contributions by the patent information user groups such as the PDG and PIUG to improving databases. 2. Opening ceremony The official opening ceremony was very well hosted by Luciano Bosotti, President, Ordine dei consulenti in proprietà industriale, 0172-2190/$ e see front matter Ó 2013 Elsevier Ltd. All rights reserved. http://dx.doi.org/10.1016/j.wpi.2013.11.005

with brief comments, perspectives and introductions, as well as reminding delegates that Italy was a founding member of the EPC 40 years ago. The first welcoming speech by Loredana Gulino, Director General, Directorate General for the fight against counterfeiting e Italian Patent and Trademark Office, expressed great enthusiasm about the ambitious plans for the Office. Substantial funding is being provided to improve the quality and timeliness of the patent processing procedures, with search reports being produced within 9 months of filing in most instances, as well as improving the public IP awareness activities of the Office and assisting in administering technology transfer grants for SMEs. They are also setting up a training academy, and improving training etc through the implementation of a bilateral agreement with the EPO. She rounded off her presentation by reminding delegates that the Office will celebrate its 130th anniversary in 2014. In the second welcoming speech, Richard Flammer, Principal Director, Patent Information and the European Patent Academy, European Patent Office, reminded us that Bologna is home to Europe’s oldest university, founded in 1088, and was also home to the famous inventor Guglielmo Marconi (1874e1937). He also affirmed the EPO’s continued strong commitment to the quality and timeliness of patent processing, publication and database development. Patent Translate is close to full language coverage and this is a key priority, as is the rapid development of the Federated Register, with the data of 25 countries already involved. In line with the conference’s major theme, legal patent status, he noted that much effort is being made here, on data that is primarily for external use rather than internally within the EPO. The balance between completeness of status data for countries already covered and covering more countries, but less completely in some cases, was also referred to. Susanne Hantos, Senior Associate, Davies Collison Cave, and PIUG Chair, gave an excellent first keynote presentation on ‘Reaching the Golden Age of legal patent status information to facilitate better business decisions’, with a very clear list of the desirable features for such a future scenario. Thus she focussed on the need for accurate, timely and clear information, with full information for all countries, full accessibility for all users, reliable and up-to-date information on patent ownership, as well as other regular, frequent updating. She also hoped that the database providers would make more use of the opportunities to add value in their offerings to the data received from, for example, the EPO. These were issues echoed in many later presentations. A good example of the way that IP can be important to the success of a new enterprise was provided by Mario Moretti Polegato, the President of GEOX, who invented the successful breathable shoes now sold worldwide. After being unable to get anyone to

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support the commercialisation of his invention, he set up his own business. As for many products that can be copied once they are in the market place and successful, his protection through various forms of IP has been important. 3. Conference key themes The main theme of the conference was on current developments, existing services and, especially, user needs in relation to legal patent status information. While patent information searching has much in common, whether at patent offices or in the commercial sector, accurate and reliable legal status information is generally of much greater interest outside of patent offices, so this conference theme was primarily aimed at the latter audience. Also highlighted were the unitary patent, Italian patent data, Asian patent documentation efforts at the EPO, and the CPC. Starting with the major plenary sessions under the legal status theme, the following were of particular interest, in addition to Susanne Hantos’ keynote presentation described previously. Jane List of Extract Information Ltd, explored some of the many problems confronted by a patent searcher seeking definitive yes/no information on the status of particular patents. She illustrated her lively presentation with some specific problem areas, eg pregrant examination rejection, post-grant lapsed or expired, and the specific difficulties with establishing legal status in the USA. Thomas Lorenz, Vice-President, BASF, and the President of PDG, provided a broad view from the user community perspective, specifically the efforts over 50 years by PDG, and their IMPACT group in particular, as well as other groups such as PIUG and CEPIUG. He noted that currently PDG are pressing hard for better data to be provided from Latin America, for example, and working with WIPO on creating a standard for legal status data e to address the present very disparate provisions for, and formats of, status data from different IP Offices worldwide. Gerben Gieling of Synthon gave a presentation elaborating on a number of specific areas of difficulty in determining legal status to illustrate how challenging it often is for patent searchers. These problem areas included Argentina, Russia, the UK, Mexico, Spain, Australia, Canada and the USA. He ended with a detailed checklist of what patent searchers need in the legal status field. Kristin Whitman of Landon IP also focussed on some specific problem areas in some depth, such as “Is Chinese re-assignment data covered and, if so, to what extent, in the main databases used for legal status data?” and “Are Russian term extensions covered in such databases?”. As was shown from working through these examples, she emphasised the need to be extremely careful to check out exactly what is and is not covered for any particular country, database and time span. A special panel discussion, chaired by Luciano Bosotti, with the panel comprising Pierre Avédikian of the EPO, Antonios Farassopoulos of WIPO, Peter Kallas of PDG IMPACT, Aalt van de Kuilen of CEPIUG, and Willem Geert Lagemaat of PatCom, was on the topic of “What’s the future for legal and procedural patent information?” The session was kicked off by Heiko Wongel of the EPO, with a presentation on the issues currently surrounding debates on distributed versus integrated services, in the legal status sector. He also mentioned the WIPO standardisation proposals in this area and the urgent need for action on this aspect. Turning now to plenary sessions on topics other than legal patent status information we had a short presentation on EuKTS e the European Knowledge Transfer Society e which has some parallels with the efforts to set up a certification system for patent information professionals. In the case of EuKTS they have largely set up the structure of the organisation and will soon be in a position to develop various services for the membership.

The session on EPO product and services review of the last year, chaired by Richard Flammer, naturally covered legal status matters, such as the standardization initiative with PDG and WIPO and developments of the Federal Register having direct links to national patent office status data. Other topics covered included work sharing (PPHs), file inspection retrieval, Open Patent Services and the Common Citation Document (CCD) database. The Unitary Patent and Court developments of particular interest to this audience were expertly described by EPO expert Margot Fröhlinger, Principal Director, Patent Law and Multilateral Affairs. After reminding delegates of the agreed legal framework for implementation, she explained how this will work out in practice. Thus the procedures to grant will be carried out in identical fashion to the current EPO search and examination. At the grant stage, the patent applicants will have a strictly limited period in which to decide on a European patent, implemented largely through the national patent offices after grant, or to opt for a European Patent with Unitary Effect (an EPwUE). With the complexities of transitional arrangements that could last up to at least 14 years, the problems arising from the ratification procedures in some countries, some EU member states opting out entirely, and not all parties to the EPC being EU members, it is clear that there will be plenty of challenges in store for patent searchers and analysts for many years to come! Another session concentrated on the situation in Italy, with presentations on PATIRIS e the Permanent Observatory on Patents by Italian Universities and Public Research Institutes, the Italian patent information group e AIDB by Alessandro Piras, and one by Guido Moradei of Quaestio srl providing a summary of the many current pitfalls in seeking reliable data on Italian patents on the Italian Patent and Trademark Office (UIBM) database, INPADOC and TELEMACO (the last of these having been set up by Chambers of Commerce in Italy). He was optimistic that the current efforts and funding at the UIBM would improve matters significantly.1 On the topic of “Asian Documentation at the EPO e how foresight and hard work have helped the EPO meet this challenge”, Jeremy Scott of the EPO described the extensive efforts at the EPO to enhance the use of the ever-increasing patent (and nonpatent) literature from countries like PR China, Japan and Korea, in the search and examination process. Major project groups covering many areas of subject matter were set up to tackle this and to provide extensive training programmes. Amongst other measures, examiners now have access to human assisted machine translation of documents in a 2e3 day time-span. The actual increase in the citation of such documents will be monitored, although initially a larger number of Chinese patent citations has been partly counterbalanced by a somewhat reduced output of Japanese patent publications. 4. Discussion rounds The Discussion Rounds were popular with the very large number of conference participants, who could each select one from a wide choice, with the possibility of a second one if space permitted. The choice included: a question and answer session for first-time delegates; getting ready for the unitary patent e what are patent searchers’ needs?; presenting patent information to the board of directors e best practice in preparing the message and how can the EPO help?; IP in the Web community e how can crowdsourcing and Web 2.0 contribute to patent information?; Cooperative Patent

1 A useful summary of the wider developments in IP and patent information since the conference was last in Italy, in Turin in 1996, has been provided by this author at http://dx.doi.org/10.1016/j.wpi.2013.07.005.

Conference report / World Patent Information 36 (2014) 51e53

Classification e what questions are still open?; Linked data e will an open data policy for patent information lead to innovation in search products?; Federated Register e what are the users’ needs?; and Legal status e getting a complex database fit for the future e defining priorities. The last of these topics provided a very lively session, expertly chaired by Marjolaine Thulin of AWAPATENT. After a brief introduction the attendees were split into 4 groups to discuss which are the most important aspects of global legal status databases of the EPO which should be the focus for development. As the EPO staff made clear, the extent, quality, accuracy, timeliness etc for individual countries and regional authorities is heavily dependent on what is provided by each contributor to the database, which in turn is also dependent on the exact legal requirements of the patent legislation in each country. Moreover the complexities of different data elements, formats, languages, and consistency are formidable, and will continue to be so for some time to come in some instances. Some specific suggestions that came out of the discussion included: - country coverage for Latin America, Africa, Korea, India, and GCC is increasingly desired, and - event codes need to become more consistent, reliable and upto-date (there are encouraging moves initiated the PDG’s IMPACT Group with WIPO on standardization in this area). The popular ‘Table Talk’ sessions over lunch each day also covered a similarly wide range of topics. 5. The superworkshop for power users Although I was unable to attend this meeting, it was once again available and popular, with around 50 participants, this time following completion of the formal conference proceedings. 6. Social events The usual conference dinner and reception were at impressive and historic locations in and near Bologna and were very much enjoyed by the delegates. 7. Exhibition and training sessions The conference was complemented by an extensive exhibition of around 30 patent information providers e both commercial and patent offices, with accompanying presentations and training sessions.

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8. Participants There were around 400 participants this year, from over 40 countries: 1) The countries most represented were Germany, Italy, France, the United Kingdom and the Netherlands. 2) Other countries which were also well represented included Austria, Belgium, China, Switzerland and Denmark 3) There were also participants from countries spread worldwide, such as Australia, Japan, India, Sweden, Bulgaria, Ukraine, USA, Spain, Saudi Arabia, Nigeria, Norway, Algeria, Russia, Finland, Tanzania, Brazil and Israel.

9. Location This was clearly a popular location for the conference, with a very large attendance. Bologna is well situated for travel to and from a great many European cities, and indeed from further afield. The conference centre had a very spacious main auditorium and good bus links to and from the city centre. Bologna is a lovely, friendly city e with excellent food naturally! It also has good train links to other nearby towns for delegates with a day or so in hand, such as the spectacular 5th and 6th century churches e with amazing mosaics e in Ravenna. 10. And finally. The conference was concluded by Bettina de Jong of Shell International B.V. with a broad-ranging and interesting personal overview of the event and by Raimund Lutz, Vice-President, Legal and International Affairs at the EPO, who confirmed that this had been largest in this series of conferences, and that this event indicated the high level of interest in legal status, which in turn is commensurate with the high profile of patent information in major research, merger and other business decisions. As usual, this was a pleasant, well organised and useful conference e congratulations to Richard Flammer, Heiko Wongel, Dan Shalloe and their team at the EPO, and their counterparts at the Italian Patent and Trademark Office, for bringing everything together so well. Next year’s conference will be in Warsaw, Poland between 4 and 6 November 2014. Michael Blackman, Editor-in-Chief United Kingdom E-mail address: [email protected].