- Email: [email protected]
Patinnova 99® and EPIDOS 99
World Patent Information 21 (1999) 275±277
www.elsevier.com/locate/worpatin
Patinnova 99â and EPIDOS 99 Michael Blackman * 45 Kenwood Drive, Beckenham, Kent BR3 6QY, UK
Abstract A snapshot of some of the key issues discussed at these conferences is provided. These include the future of patent information services in the new age of electronic databases on the Internet with contributions from Derwent, the EPO, the European Commission, and others. These presentations showed how the commercial and `free' databases may coexist in a way that could bene®t the user with a potentially innovative product. Also illustrated was the value of patent information in the assessment process for awards to technically innovative ®rms. Another underlying theme explored in some depth in both conferences was the renewed eorts to introduce a single Europe-wide patent system, Community Patent Convention (CPC), and the bene®ts this could provide in the world-wide economy. The need to obtain a bundle of nationally valid patents to cover Europe was seen by many industrialists as burdensome, especially when compared with existing systems providing protection in analogous economic blocks such as the USA and Japan. The major hurdles still to be fully overcome include the cost and the necessity for translations, the issues of sovereignty of individual countries in Europe, the legal process for challenging a CPC patent, and the eect on national patent oces and their ability to continue to provide services not available elsewhere. Ó 2000 Elsevier Science Ltd. All rights reserved.
1. Introduction For the ®rst time, these conferences were held sequentially at the same venue. They occupied a full week in October in Halkidiki, Greece and attracted over 500 delegates for a part or all of the week. The Patinnova conference had some plenary sessions, but was mainly in the form of three parallel sessions, covering patent information, patent policy and developments, and patent litigation insurance, respectively. Much detailed information on these conferences is available on the Internet sites for the European Commission and the EPO and will be published in the formal hard copy proceedings, so I have limited myself here to a few general issues and a few items that I found particularly interesting to our work in patent information. The conferences were held against a backdrop of · a major new eort to get the Community Patent Convention (CPC) launched, and · the ongoing ¯uidity and unpredictability of the market in patent information at present, as the eects of
*
Tel.: +44-208-6588583; fax: +44-208-6588583. E-mail address: [email protected] (M. Blackman).
the Internet and of other technological and software improvements in this ®eld continue to make their presence felt. The eects of both developments on the inter-related patent protection, patent enforcement and patent information professions are already substantial and promise to be quite profound.
2. Patinnova 99 2.1. Patenting in Europe: the future There were strong calls for Europe to increase its eorts to introduce a unitary patent system and improve its litigation system for patents. The representatives of the European Commission gave a short outline of an improved litigation system, which could consist of competent ®rst instance courts at national level, and, as second instance, a central European Court of Patents. As a voice from industry, Esko Friman of Nokia, pointed out that ``If Europe wants to be successful in the technology race with the US and Japan, it has to revise its patent system. Patents are playing a key role in that race''.
0172-2190/00/$ - see front matter Ó 2000 Elsevier Science Ltd. All rights reserved. PII: S 0 1 7 2 - 2 1 9 0 ( 0 0 ) 0 0 0 1 5 - 6
276
M. Blackman / World Patent Information 21 (1999) 275±277
There was also pressure to ensure that the patent system gets a higher pro®le in corporate and academic training in order to ensure Europe's competitive edge in the long run. For many industrialists, the current patent system, consisting of national patents and centrally granted, but nationally validated European patents was seen to be too slow and too costly for the needs of European industry acting in a rapidly changing competitive environment. According to Mr Friman's view, a unitary patent, which would also be centrally granted and administered by the European Patent Oce, would make national patent oces not redundant, but assign them to new and even more important roles. Brian Yorke of the life science company, Novartis, gave a thought-provoking view of ``Patenting in the next Millennium''. He ®rst reminded us of the importance of patents in the pharmaceutical industry ± research costs are massive, imitation of the resulting drug is often relatively simple. He set out his view that what innovators need from the patent system is (1) an examined patent in a reasonable time and at a reasonable cost, and (2) an enforcement procedure that has reasonable predictability of outcome, again within a reasonable time and at a reasonable cost. He then matched the various ways of obtaining patent protection around the world against these criteria. He viewed the EPO as a success on examination, and a failure on oppositions ± too slow, while the PCT route he felt was a success, with improved predictability and reduced costs stemming from the searches made and delayed timescale for making the big money decisions. On the CPC patent, he agrees with the concept. If suitably implemented, it could prove valuable, but the vital issues of translations, costs, legal process for opposition, etc. will need to be solved so that a practical tool for business, rather than a politically motivated ``White Elephant'' is created. 2.2. The Community patent convention Back in the 1970s, the European Patent Convention (EPC), Patent Cooperation Treaty (PCT) and the CPC were all emerging as a result of political and pragmatic pressures on governments. This was especially concerned with Europe (EPC and CPC), but was part of a worldwide desire to simplify patenting and save time and money for applicants and governments alike. The PCT does not result directly in granted patents of course, but does simplify initial ®ling in many countries and delays big money decisions for a longer period than other routes. The EPC grants a bundle of national European patents. The CPC, however, is intended to grant a single patent covering the whole European Community; as such it has caused much more discussion, as it impinges on delicate matters of
· the sovereignty of each state and, linked with that, the legal process for challenging a CPC patent, · the cost of and necessity for translations into the language of each state before a granted Community patent enters into force in those states, and · the eects on the continued existence of national patent oces and the services they provide, especially for smaller ®rms and individuals. There was little doubting the sincere desire, in both the larger companies that patent extensively in Europe and the respective regional policy and law making and patent granting authorities, to provide the option of requesting a Community patent in the nearer (next 5±10 yr) rather than more distant future. However, despite the positive statements made, many present felt that the resolution of each of these three thorny issues was likely to continue to be dicult. An emotive speech was made by Ana Palacio Vallelersundi, MEP (Member of the European Parliament) calling for the rights of individual countries to demand translations, whatever the language, to be respected, but also making a strong plea to reduce the costs of patenting signi®cantly. The incompatibility of these two desires was pointed out by one delegate along the lines of ``Given that approximately 40% of the total patenting costs are already attributable to translations, how do you propose to ensure that the cost of patenting is reduced, while espousing a policy which could mean that, for instance, every European Patent would have to be translated into Latvian and a multitude of other languages''? 2.3. Patent information Rob Willows put forward a scenario of the possible bene®ts to individual users, and to the wider potential user community, of the availability of charged-for valueadded patent information services in tandem with free Internet-based databases of patent information. For example, though the latter lack the sophistication of databases like Derwent WPI, they can help people get started easily in looking at patent information in a positive way. This start can lead to a much greater awareness in the community at large and ultimately to a greater need for better quality searches from various sources, once these new users realise the limitations of their own eorts on the Internet databases. Many delegates expressed concerns about the future of high quality databases and services in the present very ¯uid market for patent information providers. It is hard for most of us to feel comfortable without access to value-added databases such as Inpadoc, Derwent WPI, US Claims, Chemical Abstracts, but the rapidly improving oerings through the Esp@cenetâ and IBM sites are clearly going to impact these other services.
M. Blackman / World Patent Information 21 (1999) 275±277
Waldemar K utt explained the increasing role that patent searches are playing in the European Commission's various programmes of assistance for technical innovation. Carried out by the EPO, initially on a small selection of projects, the bene®ts to both the Commission and the applicant were found to be substantial. It was found for instance that the cost of these searches was very low (by a factor of about 30) in relation to the budgets of those proposals shown to be likely to duplicate existing published technology, because they lack novelty and/or potentially infringe existing IPR. Accordingly, patent searches are now a standard procedure on applications to the EC for many awards. Alternatively, applicants are required to show evidence of such searches having been carried out, and with what result, before ®ling their requests for funding. 3. EPIDOS 99 The EPIDOS 99 conference naturally had a sharper focus than Patinnova 99â and brought delegates up-todate on current and projected developments in areas such as Esp@cenetâ , INPADOC, the European Patent register on the Internet, the restructuring of the EPO website, conversion of the ESPACEâ series to MIMOSA and DVD technology. A review of the epoline project, to move the EPO away from paper-based transactions to an electronic system through the Inter-
277
net, concentrated on the vital measures being put in place to ensure the necessary trusted security environment. The priorities in the initial stages of epoline are: online ®ling, online ®le inspection, search report dispatch, fee payment, and the electronic exchange of priority documents. In addition to the conference presentations, several topics were explored in more depth in interactive and informal workshop sessions. I hope that we will be able to carry full articles based on many of these topics in future issues. 4. Conference organisation There were mixed views on whether linking the conferences was bene®cial. Clearly there are some synergies between the two events and some cost savings in travel, etc. On the other side, it was quite a marathon for some attending all sessions throughout the week. In addition, the focus of the two conferences is quite dierent; many delegates felt that linking them led to a lack of a clear focus to the week. The necessary but tedious formal opening and closing and feedback sessions seemed never-ending to many delegates. That said, much useful information and ideas emerged, and there was ample time to network amongst other delegates, speakers and exhibitors. And of course large numbers of people did attend the conferences overall, and most individual sessions and workshops were well attended.
www.elsevier.com/locate/worpatin
Patinnova 99â and EPIDOS 99 Michael Blackman * 45 Kenwood Drive, Beckenham, Kent BR3 6QY, UK
Abstract A snapshot of some of the key issues discussed at these conferences is provided. These include the future of patent information services in the new age of electronic databases on the Internet with contributions from Derwent, the EPO, the European Commission, and others. These presentations showed how the commercial and `free' databases may coexist in a way that could bene®t the user with a potentially innovative product. Also illustrated was the value of patent information in the assessment process for awards to technically innovative ®rms. Another underlying theme explored in some depth in both conferences was the renewed eorts to introduce a single Europe-wide patent system, Community Patent Convention (CPC), and the bene®ts this could provide in the world-wide economy. The need to obtain a bundle of nationally valid patents to cover Europe was seen by many industrialists as burdensome, especially when compared with existing systems providing protection in analogous economic blocks such as the USA and Japan. The major hurdles still to be fully overcome include the cost and the necessity for translations, the issues of sovereignty of individual countries in Europe, the legal process for challenging a CPC patent, and the eect on national patent oces and their ability to continue to provide services not available elsewhere. Ó 2000 Elsevier Science Ltd. All rights reserved.
1. Introduction For the ®rst time, these conferences were held sequentially at the same venue. They occupied a full week in October in Halkidiki, Greece and attracted over 500 delegates for a part or all of the week. The Patinnova conference had some plenary sessions, but was mainly in the form of three parallel sessions, covering patent information, patent policy and developments, and patent litigation insurance, respectively. Much detailed information on these conferences is available on the Internet sites for the European Commission and the EPO and will be published in the formal hard copy proceedings, so I have limited myself here to a few general issues and a few items that I found particularly interesting to our work in patent information. The conferences were held against a backdrop of · a major new eort to get the Community Patent Convention (CPC) launched, and · the ongoing ¯uidity and unpredictability of the market in patent information at present, as the eects of
*
Tel.: +44-208-6588583; fax: +44-208-6588583. E-mail address: [email protected] (M. Blackman).
the Internet and of other technological and software improvements in this ®eld continue to make their presence felt. The eects of both developments on the inter-related patent protection, patent enforcement and patent information professions are already substantial and promise to be quite profound.
2. Patinnova 99 2.1. Patenting in Europe: the future There were strong calls for Europe to increase its eorts to introduce a unitary patent system and improve its litigation system for patents. The representatives of the European Commission gave a short outline of an improved litigation system, which could consist of competent ®rst instance courts at national level, and, as second instance, a central European Court of Patents. As a voice from industry, Esko Friman of Nokia, pointed out that ``If Europe wants to be successful in the technology race with the US and Japan, it has to revise its patent system. Patents are playing a key role in that race''.
0172-2190/00/$ - see front matter Ó 2000 Elsevier Science Ltd. All rights reserved. PII: S 0 1 7 2 - 2 1 9 0 ( 0 0 ) 0 0 0 1 5 - 6
276
M. Blackman / World Patent Information 21 (1999) 275±277
There was also pressure to ensure that the patent system gets a higher pro®le in corporate and academic training in order to ensure Europe's competitive edge in the long run. For many industrialists, the current patent system, consisting of national patents and centrally granted, but nationally validated European patents was seen to be too slow and too costly for the needs of European industry acting in a rapidly changing competitive environment. According to Mr Friman's view, a unitary patent, which would also be centrally granted and administered by the European Patent Oce, would make national patent oces not redundant, but assign them to new and even more important roles. Brian Yorke of the life science company, Novartis, gave a thought-provoking view of ``Patenting in the next Millennium''. He ®rst reminded us of the importance of patents in the pharmaceutical industry ± research costs are massive, imitation of the resulting drug is often relatively simple. He set out his view that what innovators need from the patent system is (1) an examined patent in a reasonable time and at a reasonable cost, and (2) an enforcement procedure that has reasonable predictability of outcome, again within a reasonable time and at a reasonable cost. He then matched the various ways of obtaining patent protection around the world against these criteria. He viewed the EPO as a success on examination, and a failure on oppositions ± too slow, while the PCT route he felt was a success, with improved predictability and reduced costs stemming from the searches made and delayed timescale for making the big money decisions. On the CPC patent, he agrees with the concept. If suitably implemented, it could prove valuable, but the vital issues of translations, costs, legal process for opposition, etc. will need to be solved so that a practical tool for business, rather than a politically motivated ``White Elephant'' is created. 2.2. The Community patent convention Back in the 1970s, the European Patent Convention (EPC), Patent Cooperation Treaty (PCT) and the CPC were all emerging as a result of political and pragmatic pressures on governments. This was especially concerned with Europe (EPC and CPC), but was part of a worldwide desire to simplify patenting and save time and money for applicants and governments alike. The PCT does not result directly in granted patents of course, but does simplify initial ®ling in many countries and delays big money decisions for a longer period than other routes. The EPC grants a bundle of national European patents. The CPC, however, is intended to grant a single patent covering the whole European Community; as such it has caused much more discussion, as it impinges on delicate matters of
· the sovereignty of each state and, linked with that, the legal process for challenging a CPC patent, · the cost of and necessity for translations into the language of each state before a granted Community patent enters into force in those states, and · the eects on the continued existence of national patent oces and the services they provide, especially for smaller ®rms and individuals. There was little doubting the sincere desire, in both the larger companies that patent extensively in Europe and the respective regional policy and law making and patent granting authorities, to provide the option of requesting a Community patent in the nearer (next 5±10 yr) rather than more distant future. However, despite the positive statements made, many present felt that the resolution of each of these three thorny issues was likely to continue to be dicult. An emotive speech was made by Ana Palacio Vallelersundi, MEP (Member of the European Parliament) calling for the rights of individual countries to demand translations, whatever the language, to be respected, but also making a strong plea to reduce the costs of patenting signi®cantly. The incompatibility of these two desires was pointed out by one delegate along the lines of ``Given that approximately 40% of the total patenting costs are already attributable to translations, how do you propose to ensure that the cost of patenting is reduced, while espousing a policy which could mean that, for instance, every European Patent would have to be translated into Latvian and a multitude of other languages''? 2.3. Patent information Rob Willows put forward a scenario of the possible bene®ts to individual users, and to the wider potential user community, of the availability of charged-for valueadded patent information services in tandem with free Internet-based databases of patent information. For example, though the latter lack the sophistication of databases like Derwent WPI, they can help people get started easily in looking at patent information in a positive way. This start can lead to a much greater awareness in the community at large and ultimately to a greater need for better quality searches from various sources, once these new users realise the limitations of their own eorts on the Internet databases. Many delegates expressed concerns about the future of high quality databases and services in the present very ¯uid market for patent information providers. It is hard for most of us to feel comfortable without access to value-added databases such as Inpadoc, Derwent WPI, US Claims, Chemical Abstracts, but the rapidly improving oerings through the Esp@cenetâ and IBM sites are clearly going to impact these other services.
M. Blackman / World Patent Information 21 (1999) 275±277
Waldemar K utt explained the increasing role that patent searches are playing in the European Commission's various programmes of assistance for technical innovation. Carried out by the EPO, initially on a small selection of projects, the bene®ts to both the Commission and the applicant were found to be substantial. It was found for instance that the cost of these searches was very low (by a factor of about 30) in relation to the budgets of those proposals shown to be likely to duplicate existing published technology, because they lack novelty and/or potentially infringe existing IPR. Accordingly, patent searches are now a standard procedure on applications to the EC for many awards. Alternatively, applicants are required to show evidence of such searches having been carried out, and with what result, before ®ling their requests for funding. 3. EPIDOS 99 The EPIDOS 99 conference naturally had a sharper focus than Patinnova 99â and brought delegates up-todate on current and projected developments in areas such as Esp@cenetâ , INPADOC, the European Patent register on the Internet, the restructuring of the EPO website, conversion of the ESPACEâ series to MIMOSA and DVD technology. A review of the epoline project, to move the EPO away from paper-based transactions to an electronic system through the Inter-
277
net, concentrated on the vital measures being put in place to ensure the necessary trusted security environment. The priorities in the initial stages of epoline are: online ®ling, online ®le inspection, search report dispatch, fee payment, and the electronic exchange of priority documents. In addition to the conference presentations, several topics were explored in more depth in interactive and informal workshop sessions. I hope that we will be able to carry full articles based on many of these topics in future issues. 4. Conference organisation There were mixed views on whether linking the conferences was bene®cial. Clearly there are some synergies between the two events and some cost savings in travel, etc. On the other side, it was quite a marathon for some attending all sessions throughout the week. In addition, the focus of the two conferences is quite dierent; many delegates felt that linking them led to a lack of a clear focus to the week. The necessary but tedious formal opening and closing and feedback sessions seemed never-ending to many delegates. That said, much useful information and ideas emerged, and there was ample time to network amongst other delegates, speakers and exhibitors. And of course large numbers of people did attend the conferences overall, and most individual sessions and workshops were well attended.