epi Quo vadis?
J. Pereira da Cruz (PT)
T. Tangena (NL)
The best way to predict the future is to create it.
Last year the European Patent Office introduced a strategic document and work plan with its vison about the future of their organisation and how to implement this future. Moreover EPO President Antonio Campinos came to the Lisbon epi Council to explain and discuss this vision. He stressed in his informal talks with Council members that he is willing to work with epi, but epi should not rely on the EPO to do all the work. There will only be a common future if epi takes up the challenge and do our share to make this future possible. Up to now epi has not given a response. Since the strategic document of the EPO was published, discussions in the Councils have been mainly internally focused on topics like signing documents of good behavior, the hiring of an executive director, changing the By Laws and GDPR (EU General Data Protection Regulation). The authors of this document are of the opinion that epi needs to focus much more on developing a vision of the future and how to implement it. In the Helsinki Council and in epi Information no. 4/18 we made a start by looking and discussing the patent attorney of the future. The authors think that we now need to do a follow up by making a plan for the future of epi. As the most important partner of the EPO, epi should look for synergies where EPO and epi can work together for a better result. The authors have looked at the EPO strategic plan and used the same goals where appropriate. We have defined the goals in certain areas and indicated in key initiatives how at least part of these goals can be achieved.
Goal 1: Build an engaged, knowledgeable and collaborative organisation
For an international organisation as epi, the use of a good IT system is very important. epi has been building a website that can be used for all kinds of purposes, like knowledge disclosure, knowledge sharing, networking and webinars. We should now extend this website to make it the first place a European Patent Attorney (EPA) looks for information about the profession.
Further one of the major issues in epi is the large difference between countries with a lot of patent activity (‘large’ countries) and those with little activity (‘small’ countries). This creates a number of problems. First there are many patent attorneys in the large countries and just a few in the small countries. For the small countries it is difficult to gain experience in drafting patent applications. The new work share platform on epi’s website can be of some help, but trust is key here. How do you know the person you ask to draft for you is capable and trustworthy? Further, training new patent attorneys to replace retirees or to support growth can be problematic if the patent attorney population is small. The Candidate Support Program has helped, but once this program is finished, how then to train new patent attorneys? We can think about an agreement then with the EPO to see how EPO and epi together could tap into funds under the cooperation programme. The advantage is that efforts can then run in parallel with cooperation activities of the EPO that are already taking place in the countries, often together with national authorities, where a kind of flywheel effect can then be achieved. The Bilateral Cooperation Plans (BCPs) for each country respond to the situation there: the EPO (and its Patent Academy) offers to help think about these BCPs, offers assistance and ensures that the epi and its (potential) members also get their money's worth per country. If we get more involved in these plans, i.e. take up a role there, we can also become more EPO’s ambassadors in the countries as noted President Campinos. We believe there is a task here for epi.
Goal 1, key initiative 1: Build a platform to train students who are interested in becoming European patent attorneys
- Start with developing on-line training for drafting patent applications. We have already the very useful course: ‘Life of a patent’, but from our experience, you need to draft at least 10 to 15 cases in order to really understand how to draft a patent application. These cases should range from easy ones (get a feel for best prior art, novelty, inventive step) to complicated ones. The course should be done on line with the help of paid epi tutors. A group of students from different countries can have a simultaneous start every year and complete one of these cases for instance every 14 days. The group can use the existing forum for students to exchange views on the cases. The forum would be supervised by the tutors.
The drafting course would serve several purposes:
- to serve as an early test whether candidates are suited to become a patent attorney. This is useful for the firms that employ them and for the candidates themselves;
- to help make the candidate capable of doing useful work quickly. A good training in drafting and understanding the basics will make candidates, at an early stage, useful for firms. It would also improve the chance of passing the European Qualifying Examination;
- to build a network across Europe with persons that know and trust each-other since they studied together. This network will be useful for the further career of candidates, for instance for exchanging work across borders. The course should be open for candidates from all countries, but candidates from small countries should get a preferential treatment.
- In a second phase we can develop further on-line training, for instance regarding EPC, PCT, but also topics like other IP rights and exploitation of IP rights.
Goal 1, key initiative 2: Give patent administrators / paralegals a role within epi
In the past, epi asked in meetings of the EPO Academy for more initiatives towards patent administrators. This has now been taken up by the EPO. There is a European certificate planned for patent administrators. But we need to think about the role of epi. How can we work together with the EPO to give the patent administrators their proper role in Europe. The European patent world is not that large and keeping two organisations in the air at European level is not good, relatively too expensive and (also in terms of lobbying) ineffective. Patent administrators are in most cases our employees. The authors think that epi should be involved in choosing and teaching the training program and in the issuing of the certificates. We also need to think how to incorporate patent administrators in the epi organisation. This can be done, for instance, by establishing an associate membership for patent administrators with the certificate, along with some transitional measures for existing administrators. The associate membership could allow access to epi facilities, like website and seminars. We could also invite some observers from the associate members to attend Council.
Goal 2: Deliver high quality products and services
Recently, we have seen more emphasis on quality at the EPO. This is a very good initiative where epi should collaborate whole heartily. Both the EPO and epi fully realize that only a good application can lead to a good patent. That means our patent applications and communications need to have the highest quality.
It is further important that epi takes a more explicit stance in a number of rather vital debates. For example, the EPO is discussing a more flexible patent granting process, EPO thinks about instant searches “à la Singapore”. And, of course, information technology initiatives of the EPO, like eDossier, eOLF, i.e. digital transformation in general. What is epi’s position on these topics? The EPO has set up its own Centre of Excellence for Artificial Intelligence in Berlin. This is the kind of development that epi should also be involved.
Goal 2, key initiative 1: Develop epi’s point of view in the ongoing vital debates as mentioned before. There is a task here for our committees. We should also discuss these points of view in epi Council to come to an epi point of view. We can also use epi Information to commission a paper to explain the pros and cons of a certain position. With the introduction done in epi Information, discussions in Council can then be more lively. All this will make epi more influential and at the same time make Council meetings much more attractive, since epi is helping to shape the future patent system
Goal 2, key initiative 2: Develop a set of (on-line) seminars on drafting applications in specific technical areas. We now have in our European Patent Practice Committee four technological groups: Pharmaceuticals, Information and Communication Technologies, Mechanics and Chemistry. These technological groups, together with EPO Examiners active in specific areas, can develop specialized seminars that focus on how to draft applications in those areas. The drafting of an application in telecom is very different from drafting in pharmaceuticals. By providing a best practice and guidance, we can improve the skills of (new) European Patent Attorneys and raise the quality of granted patents. The proper set up of a patent application can also serve as a guideline / condition for an instant search and opinion that the EPO is planning.
Goal 2, key initiative 3: More focus on exploitation/valuation of patents. This was also something the EPO President stressed as important. According to the European Commission, the backbone of the European Economy are SMEs: 99 out of every 100 firms are SMEs. Up to now SMEs do not use the patent system very much. It is especially important that they better exploit the benefits of patents. The EPO web site already shows examples of how existing SMEs profit from the patent system. We need to promote this further. Exploitation and valuation, especially towards SMEs, are also 'hot' in the thinking of both national patent offices and the European Commission. The Commission is now implementing the prediagnosis aid (e.g. in the Netherlands called the IP Smart scan) for companies that already have a seal of excellence. This kind of initiative certainly touches the work of the patent attorney. Moreover, a new instrument is about to be introduced to carry out a kind of IP scan of recipients of European funds under Horizon 2020. There, too, epi can jump on a moving train to make the role of attorneys just a little broader.
A patent is not a goal in itself. A patent should provide value to the owner. This is the main driver for companies and persons obtain for a patent. epi took the first initiative here by setting up a working group to study whether it is beneficial to establish such a committee. The authors think this is a worthwhile exercise. The new committee should focus on training in:
- how to use patents to generate value for the owner;
- patent portfolio management and future costs of patents. Focus should be on how to create potential value for the applicant. Costs are especially important for SMEs and for the structuring of portfolios;
- patent valuation. What is the value of a patent (application) in mergers acquisitions and cooperations;
- how to structure public/private cooperation. More and more research is done to open innovation or cooperation between universities and companies. Especially SMEs with limited research possibilities can profit from know-how available in universities and public research institutes. A proper legal frame work is necessary for such cooperations. A few years ago such a protocol was already developed in the Netherlands;
- how to draft and deal with licensing contracts; and
- how to serve as an interface between other organisations like LES, EPLit and EPO (IP4inno).
Goal 3: Build a European patent system and network with a global impact
As we have noted above, there are large differences between countries in the EPC. To improve the local situation, we need to work with others in those countries. epi can help to stimulate, subsidize, build and reinforce a European patent network across borders so that we can learn from others who are confronted with the same situation. Here, our interests and those of the EPO run parallel. We both want more local use of the patent system. Other natural partners are the organisations of national patent attorneys and the national patent offices. Workforce planning at the EPO, and certainly at the Boards of Appeal should interest epi to a high degree given the high number of retirements in the years to come. In 10 years time, 36% of the present EPO workforce will no longer work at the EPO.
Goal 3, key initiative 1: Promote the patent system together with EPO, the local patent attorneys and the National Patent Offices (NPOs). This could include providing standardized 1 to 2 day lectures on IP for Universities and Polytechnic Schools. At the EPO there is already the IP teaching kit and IP4inno presentation set, but their use needs to be simplified and above all promoted in the countries. Moreover many companies do not know that patent literature (Espacenet) can be an important source of know-how and information on where technology is heading and what their competitors are working on. epi should help to set up teaching structures for such topics in the countries. epi and the national patent attorney organisations should be very much involved in the patent roadshows that the EPO is setting up. The roadshows can be an interesting way to contact local companies and persons interested in patents.
Goal 3, key initiative 2: Funding research and patenting the result is often a large problem, especially for SMEs and private inventors. Many countries, regions and also Europe have incentive programs for innovation. epi should aim to make an inventory of these possibilities to get subsidies for innovation and generating intellectual property. Our European patent attorneys should be able to advise their clients on how to get access to these funds. We should set up a task force together with the EPO, local patent attorney organisations and National Patent Offices to come to an inventory and a brief description of the conditions. The inventor assist program from WIPO is an example where inventors from third world countries are stimulated to use the patent system. We should strive for a similar program for SMEs and individual inventors together with the EPO and the European Commission.
Goal 3, key initiative 3: Stimulate exchange of European patent attorneys across countries as suggested by President Campinos of the EPO in the Lisbon Council. Especially for recently qualified European Patent Attorneys (EPAs), it is important to gain experience. We should set up an internship program with EPAs from countries with little patent activity to work with patent firms with more activity, possibly using the epi work share platform. epi can also setup a fund to assist EPAs from smaller countries and / or compensate receiving firms for such an internship. The initiative could run parallel with internships of EPO examiners. One can also think of epi members doing an internship at the EPO and/or the Boards of Appeal. This would also make a transfer from and to EPO by European Patent Attorneys easier. This can be important for the future when the aforementioned retirements and possible changes necessary when the backlog of applications has been dealt with. epi could also profit from EPO’s experience with teleworking, so that an internship does not necessarily mean moving to another country. Such internships would also serve to build networks of trusted outsource possibilities.
The authors suggest that epi looks carefully at these goals and initiatives. epi Council and in many cases the Professional Education Committee can, help in structuring these ideas and do the follow up. We realise that some of these initiatives will cost money, but we think that this will be money well spent. We hope that this paper may inspire epi to take action, since we think working on these goals and initiatives will ultimately serve to make epi an organisation, that is better suited to provide the best service to its members, its clients, the patent system and society as a whole.
When it comes to the future, there are three kinds of people: those who let it happen, those who make it happen, and those who wonder what happened.
John M. Richardson, Jr.