[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]

United Kingdom Books

You are here: BAILII >> Databases >> United Kingdom Books >> Harmonisation of Intellectual Property in Europe [1998] BOOKS 1 (1998)
URL: http://www.bailii.org/uk/other/books/1998/b1.html
Cite as: [1998] BOOKS 1

[New search] [Help]

Harmonisation of Intellectual Property in Europe: a case study in patent procedure

Philip Leith
Queen's University of Belfast
1998

This study was first published by Sweet and Maxwell as Vol 3 in their Perspectives on Intellectual Property series and included an introduction by Adrian Chandler.

This version is made available (November 2007) for educational and research use. Copyright remains with the author who can be contacted at: [email protected]

This html version was produced from the original text files and may include errors which were removed in the original publication of the text. Please let the author know if you find anything requiring correction.

Important Note: This study was published some years ago and there have been some changes at the EPO which are important. For example, search and examination have been combined into one directorate as a consequence of the success of the BEST programme. These changes have not been included in the republication of this work, but it would be feasible to do so through some annotation facility.

Introduction.	Chapter 1
Background	Chapter 2
Towards the European Wide Patent.	Chapter 3
The European Patent Attorney	Chapter 4
Attorney Perceptions of the European Patent System	Chapter 5
Philosophy, harmonisation and Development in the European Patent System	Chapter 6
Cost and Language Translations	Chapter 7
National Patent Office Responses	Chapter 8
Conclusion	Chapter 9
Research Strategy	Appendix A
Questionnaire	Appendix B
The Problem/Solution Approach	Appendix C
References	References

Thanks

This study was funded by the Research Fund of the European Patent Organisation and also supported by a sabbatical from my host University. I thank both organisations for this financial support. I also thank all those who took the time to participate as respondents or interviewees in the project and hope that the study accurately reflects the reality of the European patent system, as seen from the perspective of the patent attorney.

My period in Munich was supported by a sabbatical from Queen's University, and Professor Lothar Phillips of the Institut für Rechtsphilosophie was my host at the Universität München. Library facilities were also made available to me at Max Planck Institut für ausländisches und internationales Patent-, Urheber- und Wettberbsrecht and I thank the Institut for this.

This study was originally produced as a Report to the Research Fund of the EPO. A number of individuals have commented upon that report, and I have pleasure in thanking them for those comments. The heads of the national offices, in particular, commented upon Chapter 8 and kindly allowed me to use extracts from transcripts of interviews. Adrian Chandler, Professor Norma Dawson, Mr George Woods and Mr Michael Vivian provided comments which ensured a greater accuracy; the first two individuals also helped ensure improved readability. Mr Edward Armitage also provided early advice which helped to construct the research programme.

In the text, the male gender is used throughout. This is solely for writing convenience.

For Christine and Annie.

Chapter 1: Introduction.

1 Introduction

Since opening for business and the receipt of patent applications in the late 1970s, the European Patent Office has grown considerably. It is now akin to a multi-national corporation, employing a large staff of highly paid experts from a large number of European countries, and receiving patent applications from an international clientele. Given this substantial institution which now resides in the patent world, it is surprising that it has been so little studied. Though there are a number of texts on European patent law, the actual institution which gives these laws effect has been almost untouched by research, despite the ever-growing interest from socio-legal researchers into how law 'works'.

This is all the more significant because the European Patent Office is, in many ways, an unusual creature: given the right to dispense national monopolies within a European context, it is relatively independent from these national or European forces. For example, national governments have only limited input to the running of the organisation (e.g. they have no 'veto', except through voting with the majority of member states), the European Patent Office is not a part of the EU framework, and the national membership is not tied to EU membership. Thus national monopolies are provided by an institution which is relatively free, as we see later, from some pressures. Of course, on the other hand, the European Patent Office is not a commercial enterprise, and it is bound by other forces which it cannot seemingly overcome (e.g. the 'language problem' we look at later). As an institution for study, it is attractive to the academic because it is unusual.

Moreover, with the rise in interest in the study of the legal profession and its international character, the European Patent Office is of importance, because a new 'European' profession was created to work with the Office. The cares and worries of the patent professional as he or she undertakes work is transferred from one particular national patent office to both a national office and a European Patent Office, and the competition for work (the driving force for every part of the legal profession) is made international. Given that there has been research interest in the potential of international lawyering, it is surprising that where an example of it (albeit in a highly specialised and technical area) exists, it has not been investigated.

And on the more esoteric field of law, we can see that the European Patent Office is of interest to lawyers and researchers. An institution which is 'European' yet with no European appellate structure is surely interesting - how do the judgements from one jurisdiction make themselves felt in another and how important are any differences in jurisdictional interpretation? Is it possible to have an effective judicial system without a common system of appeal? If so, how does this operate?

Why then, given these aspects, is the European Patent Office so little known in the general literature of law? Perhaps one main reason is that to many, the area of patent law is something of a backwater. It is not a field with which the general legal practitioner has much contact and, in the UK, the patent bar is of almost insignificant size when compared against the bar as a whole. Industry and commerce certainly have interest in it, as do, for example, those interested in the problematical social area of patenting (genetic patents, perhaps) or the protection for software, but the general legal academic has little interest. Many lawyers, of course, undertook the study of law to escape disciplines like engineering and science and it must be said that a modicum of technical literacy is required to understand properly the most difficult of the arguments. However, the interest of the patent system is not simply at the detailed, technical level: it is a system of much complexity and legal importance and in this text, I try to emphasise these aspects rather than those of 'how to patent' a given device or process. There is little (if anything) in this text which will deter the lawyer, and hopefully much which will educate the user of the patent system in the processes of patenting.

2 The Approach Taken

There are several aspects which make the European patent system an ideal field of study for those interested in studying law, and which directed the study in this text:

While the area is small, it is also - in legal terms - resilient: even though major legislative events have occurred over the last few years, patent law and practice have been relatively stable and the field seems, surprisingly, to have been capable of keeping much of its prior case law and procedure untouched by the changes.

It has been perceived as an important area for harmonisation by the member states of the EU and others, and has to date gone far down this road.

It is considered to be of major economic importance and, being a legal reward for technological innovation, it is particularly interesting at this time of substantial technological change (e.g. responses to digitalisation and bio-engineering).

Some - admittedly patent barristers - have described it as the "hard core of intellectual property". Intellectual property is presently of great importance.

This text is particularly interested in the second item - that of harmonisation and the problems which are associated with it. Patent law is a valuable area to study because - unlike other areas where harmonisation has been applied by a supra-national court - there is no hierarchical structure where decisions can be referred from differing countries to one final court of appeal. In this case harmonisation has been applied in "carrot" rather than "stick" mode. Without the stick we can see and explore effects which might not otherwise be researchable. It is also of interest since the steps to harmonisation of patent law mean that we have a similar platform from which we can investigate the roles of the legal professionals in different countries, an important asset in times of free-movement of legal work.

In this research, the participant we investigate is the patent attorney. The client is the inventor or owner of an invention who wishes patent protection for his invention and who - in most cases - requires the representational abilities of the patent attorney. Due to the various competing routes to grant of patent (i.e. national, European, PTC), the client has a number of decisions which must be made which impact upon the eventual type of patent protection gained (if, that is, the 'invention' is granted a patent) and the attorney must (as in other areas of law) advise on the 'best' route for the client. Reasons for choosing the patent attorney as the object of study are primarily that we are interested in 'law in practice' - that is how the day to day tasks undertaken by the legal advisor relate to the prescriptive rules of law. Law in practice is where law lies. Of course, there are written Conventions and other pieces of legislation, but these provide only the framework within which the professional operates. Many more factors impinge upon use of law than simply the text of law. It is, for example, well known that commercial litigation is much more amenable to economic rationalisation than is other civil or criminal litigation. The decision about settling or not settling in alleged patent infringement cases is thus not solely related to the text of law, but to financial calculation. Likewise, the building of a patent portfolio is not related to the ability to get patent applications past the examiner, but to the economic arguments for each patent as part of a business strategy. If these aspects are ignored, we cannot say that we understand patenting.

These kinds of arguments are important because the monopoly nature of intellectual property rights lies under constant attack - especially at this point in time. For example, why should monopoly rights be awarded for inventive ability when, perhaps in fact, they are being used by industry in a manner which is highly destructive of competition (destruction which would not be allowed in any other EU industrial area). Jacob has suggested ^[1] that economic analysis of intellectual property rights is required in order to ensure that monopoly rights do not become too strong. That may be one technique. Another is to investigate the system from the views of the participants to see what is happening in practice and how closely this practice aligns itself to the ideology of intellectual property law. This investigation is therefore one which looks at the players in the system, and uses them as a means of reflecting what is happening in this corner of IP rights.

Two approaches were taken. First a questionnaire was sent to a large number of German, UK and Dutch patent attorneys. Second, in-depth interviews were carried out with patent attorneys in these three countries and also Ireland. There was a surprising level of homogeneity in the responses found from these three different patenting cultures - a homogeneity which was certainly not expected prior to the research beginning. In the text, we show just how successful has been the coming together of the national patent attorneys into an international body with common concerns and ways of handling client's needs.

The specific questions which motivated this research were whether the following are true or not:

• harmonisation of substantive law is less effective than has been believed, if the interpretation of a nationally harmonised point differs substantially throughout the European Patent Convention's member states. While this would be most obvious in, for example, interpretation of the 'inventive step' in the patent field, there may well be other less obvious substantive law factors which mitigate against harmonisation;

• there are procedural aspects which clients feel are of significant advantage to them. These arise from the national perspective, encouraging them to choose the national rather than the community route. For example, the opportunity of earlier litigation through early grant of application;

• there are tactical issues where, for example, patent applications are made according to the commercial context in which the invention has been produced and where, for example, speed and standard of search are judged to be important to the applicant.

These three aspects are all potential barriers to the developing symbiosis between European and residual national systems and as such deserve fuller study. They are certainly of importance to the European legal client base since harmonisation might - as proponents argue - bring with it benefits of strategic and legal equality. At present, however, little research has been carried out into the client's perspective of the national or European routes in harmonised areas, and it is difficult to ascertain the relative importance of the three elements above.

This project attempts to determine how legal advisors advise their clients in this particular area, employing novel, cross-European, socio-legal research techniques. It is impossible, of course, to provide an absolute index as to whether this advice is 'best advice' in the client's interest but the study provides clarification of the various socio-legal factors which impinge upon harmonisation.

Two products are gained from the research strategy. First, a questionnaire 'snapshot' of the factors which currently intrude upon the advice given to the client in the differing national contexts. This is useful in discussion of symbiosis. Second, in-depth interviews provide a longer term view of the grounds which affect client action in making patent applications. As the literature on the subject makes clear, the factors involved in the decision to make a patent application (particularly the commercial ones) have not been fully clarified. Yet without this kind of understanding, legislating and planning action in this field will always be reacting or acting towards an unclear objective (or one which is too general). This socio-legal research is thus companion research to those historical/commercial studies or legislative studies which currently exist.

While this research will be of immediate and primary interest to those concerned with the study and symbiosis of patent systems, it is of wider theoretical interest in Europe since we must expect harmonisation to be an ever-growing factor in European legal systems. Indeed, the problems found acting against patent symbiosis will be evident in other areas of harmonisation. While we do have a relatively large amount of information on the harmonisation of US law across State borders, the European context differs substantially in its complexity: there are not only two differing theoretical systems (the common and civil law systems) but a large number of differing legal cultures. Such complexity is a worthwhile area of study for socio-legal researchers, but is presently seldom carried out. This project can be seen as one in which cross-national socio-legal research techniques can be assessed.

A further aspect which is important in a study of an administrative organisation such as the European Patent Office is the extent to which law can be taken out of the court context and dealt with in an efficient and predictable manner. Since Frank's Courts on Trial ^[2] which argued for a move to administrative rather than judicial decision-making, there has been a substantial growth in such administrative processing. While the field of administrative law has, of course, grown in parallel, there has been little significant socio-legal study into the advantages or problems vis a vis the court-based system which administrative systems offer. This study will generate future writing on some of these aspects.

3 Structure of this Text

The study has two main expected groups of readers. The first is composed of those who are professionally involved in the patent area and are therefore well aware of the nature of the system, its history and its operation. The second are those for whom the patent system is a case study of wider relevance. To ensure accessibility for this second grouping much information which is well known to the patent field is contained in this text. The structure is thus a two part format:

1. First, the knowledge we have at present of the system and the tensions within it are discussed. In Chapter 2 we discuss the role of the patent and its general background. In Chapter 3 we look at the European Patent and see how it relates to the grander harmonisation process.

2. Then the results of the study questionnaire and interview are discussed. It is here that the body of the new knowledge gained through this investigation is dealt with.

It is important to note that this study is not a study in comparative law. While there is reference to law from non-UK countries there is no attempt to compare and contrast the different systems. Neither is this a text on the substantive law of the UK or the European Patent Convention (EPC), even though mention is made of both legal systems. Rather, it is perhaps best to view this study as a study into that most important of elements: how substantive law becomes transformed into procedure and thus becomes a workable part of everyday legal life. Little discussion has taken place of this procedural transformation in the jurisprudential literature, but it seems clear to me that it is at the very heart of the legal enterprise.

It is also important to note that I am not advocating a particular approach to patent route. However, for reasons of convenience, I take it to be the case that there is a path (perhaps not necessarily a teleological path) which member states are being driven down, despite frequent complaint to the driver. This is the path of harmonisation and centralisation of legislative decision-making. Though the Community Patent Convention (CPC) has not yet seen practice, my presumption is that political (if not presently industrial) forces will cause a supra-national patent appeal court to be eventually brought into action; though, given the history of the CPC, I should not like to suggest a time scale for this introduction. My presumption may be incorrect, but even if it is, it should cause no harm to the research findings which are analytical rather than prescriptive.

Chapter 2: Background

1 The Patent

The patent - after a long legal history which is linked, as might be expected, with the rise of technology and industry - has recently come to be subsumed under the term 'intellectual property' and is now closely related to forms of property ownership such as copyright and trade secrets, rather than its previous history of 'warrant' ^[3] . It is a form of property which is much misunderstood both by the general public and also by many in the commercial and inventive communities to whom it is most directed. Many knowledgeable commentators reserve a measure of scepticism as to the utility of patents to inventors, a scepticism which is not to be found in other areas of intellectual property. It is commonly spoken of that only a small percentage of all patented ideas will make their way to the marketplace (perhaps around 10%) and from those an even smaller number will actually be profitable to the owner of the patent ^[4]. Even after having been awarded, a patent is capable of being revoked should a commercial opponent decide to oppose its validity or litigate against the breadth of the claimed protection. Some suggest that a patent claim or description can have a subsidiary role in deliberately trying to obfuscate commercial competitors. Also, to the inventive community, whom it is supposed to serve, the patent is frequently seen as being too complex, too expensive and offering too little protection.

Despite this scepticism, the patent has been a long lasting - and relatively fixed - form of property ownership in, at least, the UK. This stability has been retained during a period of unparalleled economic and technological change - from cottage industry through to multi-national, bio-industries. Perhaps due to this stability, it has been looked upon with some envy by those wishing a secure form of property ownership - in particular those who wish to protect computer programs but also other areas such as plant breeding ^[5] and animal gene manipulation ^[6]. The use of the patent to protect such software is not allowed either by the legislature or by the courts in any of the European countries ^[7], but plant breeding does look set to receive some form of patented protection in future and the debate over such creatures as the Harvard Mouse continues.

The patent's strength - in terms of providing commercial value - has been greater for its holder at some points in history than at others. Dutton, in his study of the patent ^[8] during the industrial revolution shows opposition to the very idea of a patent itself from many in the legislature and judiciary and also the changing relationships between inventor and manufacturer which developed through the differing judicial attitudes ^[9].

As Charles Dickens's demonstrated ^[10], gaining patent protection has sometimes been achieved only after a highly complex and expensive procedure. The cost of attaining a patent has - in some national systems, such as the UK - always been a major concern to the inventor. It remains so in the current European patent system. However, as we will see, there are a variety of issues which make the cost of patent protection more flexible than might first be imagined and thus allow the inventor to consider the cost of protection in a tactical manner.

Importantly, a patent is a 'property' right dealing with a peculiar form of property. Being based on an "idea", it has no existence in any concrete state as have forms of 'real' property such as land ^[11] . And it covers a highly restricted form of invention. These fundamental facts are at the heart of the provision and use of patents.

The closest relation to the patent - from the perspective of the inventor and manufacturer if not the lawyer - is the 'trade secret'. Trade secrets, of course, are wider in form: while they can be a potential patent which has not been made public they can also relate to sensitive financial information. The inventor or manufacturer can abstain from patenting and instead rely upon trade secret protection for the invention. Trade secret protection does have advantages over the patent, in certain circumstances, but does not offer a monopoly should that secret be lost to the wider community of manufacturers. The patent, unlike a trade secret, grants a monopoly for making an invention public.

The grant of monopoly is the essential reward to the inventor for taking out a patent and provides the historical context in which the patent has moved from being a 'warrant' to being an article of 'property'. In return for making known information of potential economic importance to the nation, the inventor was awarded a monopoly over the control of the use of that invention for a stated period of time. The patent is thus, in part, a method of making information public. It is a contract between the state and the inventor, but one in which only the holder of patent will litigate to defend the contract. The Patent Office which publishes the details of a granted patent is, of course, providing manufacturers and other inventors with information which they might use without resort to the inventor (and indeed the publishing of a patent could provide another inventor with the seeds for a new patent to make the first worthless). However, the grant of monopoly provides the inventor with a means of requesting a court to halt a manufacturer from using the published patent information either completely, or until agreement is reached between the inventor and/or the manufacturer. Public perception is often that patent protection can be used to stop ideas being put into production (for example, the 'everlasting match' is one 'invention' which has supposedly been kept from purchasers). This is not possible, since the monopoly awarded to the inventor is not total and there exist procedures to allow an idea to be put into commercial use against the wishes of the patent owner if, for example, the "patented invention is capable of being commercially worked ... that it is not being so worked or is not being so worked to the fullest extent that is reasonably practicable" ^[12].

Part of the requirement from the inventor is that he will make 'full disclosure' of his invention and that this will be in a form suitable for use by other manufacturers. However, commentators have suggested that, in practice, the form of disclosure is necessarily better seen as an aid to potential litigation rather than an aid to manufacture ^[13]. 'Full disclosure' has been radically extended in meaning since the inception of computer-based handling of patents. It refers, as traditionally, to the requirement that an invention is fully described in the patent application, but it also now relates to the ease by which other potential users of the patent (and potential rivals) are enabled to discover the published information. In hard-copy form there can only be a small number of sites where someone wishing to inspect patents can go. And, given the number of applications and successfully awarded patents, the interested party might have difficulty in keeping up with what has been published. With on-line access to patent literature, the researcher can have relatively easy access to current published applications, awarded patents and sight of patents from a variety of national sources. This potential gold-mine of information for manufacturers and other inventors has been remarked upon by many information specialists ^[14]. However, in all research which has been undertaken into the use of this information by industry etc., the researchers have discovered little exploitation. For example:

In [Stephenson's] industrial survey, of the fifteen companies visited, all but three made some use of patent information. R&D staff could request a one-off search to find the 'state of the art' of their project. Also, many of the staff were supplied with current awareness literature, including patents, by their information departments. Requested searches tended to be made towards the end of a project, with the feeling that any existing patents could be designed around and did not need to be considered beforehand. Use of patent information in order to solve problems was rare ... ^[15]

It was further found in this research ^[16] that many who did use patents as a source of information viewed them as not really providing full disclosure and suffering from 'calculated misdirection' by attempting to misdirect the readers attention from the most important elements of the invention. This supports the contention that the patenting system can sometimes be used more as a means of protection than as 'fully disclosing' information source. Ullrich has suggested that it is due to the principal legal requirement of non-obviousness for patenting rather than for 'advance' that the information in patents is less useful than might be. He has written:

"If, however, the patentee knows or reasonably foresees the utility of his invention, releasing him from the duty to fully disclose it on the grounds that the non-obviousness alone constitutes the decisive standard of patentability would seriously reduce the benefits associated with the establishment and maintenance of the patent system ..." ^[17]

The reason for this loss of benefits is, of course, that the patent should exist as an information source for industry. Ullrich suggests that the current system may work poorly and that lenient disclosure requirements by the courts "do not assist in avoiding information defects".

2 The National Basis for the Patent

Historically, the patent has been a national property right and patents has been awarded by a national legal system to an inventor. This has the corollary that litigation over patents has also been of a national nature: a plaintiff must litigate in each country in which he has a patent even though the defendant in each of these countries may be essentially the same corporate body. It is possible for a defendant to win in some countries but not in others and thus be allowed to manufacture and sell a product in some countries but not all. This is also possible depending upon the number of countries in which an applicant seeks a patent: usually an applicant will not protect an invention in all possible manufacturing countries and markets, but will carefully consider the required geographical extent of protection. For example, with inventions pertaining to automotive manufacture, it is unlikely that protection will be sought in any but those countries where there is a car industry.

Patents, being nationally determined, are the resultant product of different philosophies. Some countries have awarded a patent without serious investigation as to the nature of the patent (for example, Italy and Belgium and, until recently, France) and some have attempted to provide reasonably exhaustive investigations (for example, the Netherlands, Germany and the UK). Patents granted from different countries are thus not equivalent in protection, since they do not claim to offer the same level of investigation of the patentee's claims.

The differing 'culture' of patent systems has been noted in, for example, different attitudes between the US and Japanese systems ^[18]. In the US, the inventor's rights have been seen to be paramount with no disclosure of the patent application until the patent has been granted (allowing the inventor to keep any non-patented invention secret) and the priority ^[19] (that is, according the invention to the relevant person) is given to the first inventor rather than to the first person who makes a patent application (the filer) as happens in almost all other countries' systems ^[20]. In Japan, the emphasis - it has also been argued - is upon dissemination where late examination, publication and pre-grant opposition make ideas available to industry before grant of patent ^[21]. Since there are many inventions which are not patentable ^[22] despite their commercial worth, it can be seen that publication of a patent application is not always in the interests of the inventor, since publication is only non-harmful if the application results in the grant of a patent. The harmful results of publication of a patent application where the patent is not awarded - apart from wasted time and cost - include allowing competitors insights into possible future manufacturing decisions.

Despite the various patent cultures and differing emphasis, there has been a marked desire for compatibility of protection and application through harmonisation. Much of this is driven by the expressed desire of industry for a level playing field in the application of technology throughout the world - and differing levels of patent protection are seen to act against this commercial even-handedness. This new, more global attitude to the patent has arisen from the recent globalisation of capital, which is in direct opposition to the national perspective on the patent. For companies wishing to export and import around the world, differing cultural attitudes to patents can be a barrier to trade. In the European context, the driving force behind the European Patent System has been industry's perceived need for a patent which will match the free trade system between the various EU states. Even with similar and harmonised patent laws, however, patents still require a litigation system to give them value. Since litigation is national there are still differences in the patent systems in the EU states, as we see later.

Alongside this desire for harmonisation across borders, there has also been a contradictory legislative attempt by many states to continue to use the patent as a means for developing and encouraging national industries. This is not surprising given the history of the patent. In EC Commission v. UK ^[23] the Commission argued that sections of the 1977 Patents Act were counter to Article 30 EEC (relating to prohibition of free movement of goods by 'quantitative restrictions'), particularly Section 48(3) which provided for "compulsory licences where a patent is not worked in the United Kingdom to the fullest extent that is reasonably practical or where demand for the patented product in the United Kingdom is being met to a substantial extent through importation." The UK argued that these matters were related to the national patent (and as such were for national law to consider) and that when the Community Patent Convention was brought into operation, the Patents Act would be subject to its provisions. The European Court of Justice found against the UK arguing that the relevant sections in the Patent Act were discriminatory against working of the patent by importation. However, it should be noted that this was more a political decision than a practical one since very few compulsory licences had ever been awarded using this section (despite the number of academic articles and case notes which refer to the decision). What it does clearly show is that the Court of Justice is prepared to act against the national basis of a patent when it might potentially interfere with the community marketplace.

American multi-nationals have been in the forefront of complaints that Japan has been using its patent system as a means of protecting its own industries by making the gaining of a patent slower for non-Japanese applicants when the patent deals with commercially important areas. If true, we can see that such actions by the JPO could be based on the attitude that the priority role of the patent is as a national means of dissemination of information rather than protection of the individual's property right. Japanese companies have also been accused of 'Patent Flooding' where large numbers of applications are made claiming minor technical improvements to existing patents. This latter tactic can be helpful in pressurising existing patent holders to license to Japanese firms. One attorney interviewed in this research suggested that it was not infrequently found that a Japanese company would have 40 patents in a small area and that this was 'psychologically difficult to work around if you have only 2 even if your two are better'.

Of course, such an accusation is difficult to prove: there are also indications that Japanese patents are high in number because employees are given financial rewards for gaining successful patents for their employers. Such a situation is part of the culture of Japanese management and therefore has a national element. However, such flooding is not always advantageous ^[24] since it can be expensive in patenting costs.

Though we take as a given that the patent system exists - perhaps warts and all - it is interesting to look at the suggestion in the UK Government's green paper, Intellectual Property Rights and Innovation ^[25] for techniques to swing the balance of protection of innovation back to the smaller inventor. The essential element of these proposed forms of protection was that they would cost less and would be provided within a market oriented approach (with the Patent Office, 'freed of civil service constraints' ^[26] ). This Green Paper was introduced with a highly national bias (the Patent Office was to be given extra roles to play) despite the introduction of the European Patent just a short period before. The ideas contained within this paper were not taken seriously by UK patent lawyers or the UK academic patent community, though the calling for a 'registered invention' has echoes in the current desire in some European circles for a European utility model ^[27] . Perhaps the main point to be taken from this Green Paper is that there is a continuing suggestion (from outwith the legal patent community - the Paper was prepared by the Chief Scientific Officer to the Cabinet) that national radicalism might be a counter to the perceived problems of the existing patent system.

In Europe, if not always in the UK, there has been considerable appetite for a lower level of patent protection. Effort has been put into suggesting a European Utility Model ^[28] which would broadly follow the German model. The Max-Planck Institut has been particularly active in trying to persuade the European patent profession and Governments to adopt such a strategy. The main rationale for this new protection relates to a favourable cost structure, more user-friendly procedures and more lenient validity requirements. Kern reports on a study funded by the EC Commission on the economic importance of the utility model to small and medium-sized enterprises (SMEs) and suggests that:

In all states, and particularly in Germany, the patent attorneys accepted rapid and simple registration of utility models as an important advantage for SMEs. Additionally, the study indicated that the lower standard of inventive step was a significant consideration for SMEs in Germany and Spain. Furthermore lower application fees presented another reason in favour of utility model protection. ^[29]

The primary advantage of the utility model is that it would allow ideas which were novel (but not inventive, i.e. 'obvious') to be given protection and would thus reward small manufacturers, say, for their work. The contra-argument, however, to such a form of protection is that it will complicate the patent system through encouraging litigation: the utility models might be used by patent applicants as temporary measures or as 'minefields' to deter otherwise legitimate use of ideas. The practical advantages are, of course, quick and cheap protection; the opponents respond to this by suggesting that if the problem is that patenting is too slow and expensive, better to speed it up and cut costs than to make the system - as a whole - more complicated.

3 The Economics of the Patent

Though every European and national Governmental report into patenting begins by suggesting the close link between inventive activity and the patent, researchers have found it difficult to quantify just how strong is this link. And it is equally difficult to discover in which direction the link travels. Does inventive activity improve when the economy is strong and thus there are more patents applications (i.e. they can be afforded) or is it the economy which gains its strength from the inventive activity which comes from having a patent system. There are indications of both directions of linkage. We can see that patents awarded were lower in the mid-1980s after the early recession of the early 1980s which suggests that patenting activity is dependant upon strength of the economy. On the other hand, the linkage in the opposite direction would not be expected to be so obvious and so short term, and it may well be that the effect can be measured only with difficulty since inventive activity frequently happens within a highly commercial context (the R&D lab of a company) than as a free-floating variable available for measurement.

In the most well-known analysis of the UK patent system (by Taylor and Silberston ^[30] ) the conclusions of the link between invention and patent were not found to be strikingly strong:

Important as [patents] are in some industries, they provide on the whole only a very limited inducement for industrial invention and innovation. Where really big risks which involve large sums of money are concerned, the patent system may well not offer a sufficient inducement for public interest purposes. Here above all governmental intervention and assistance is needed, as for example in aircraft, atomic energy and space technology. ... And once this help has been given, patents are of minimal importance, since more than adequate monopoly is provided by the shee[r] cost of private entry into these industries. ... The patent system is essentially weak and vulnerable even in the more industrialised of modern societies, but it does confer some advantages, as we have shown, and it is an important protection for the small firm and the small man. On balance it is a valuable institution, but its economic value overall is quite modest, and it is desirable that extravagant claims should not be made on its behalf. ^[31]

This research was carried out over 25 years ago and in a very different political climate to today's UK - now governmental intervention is rarely to be found. Also, the techniques which Japanese industry have been using in patent protection (e.g. 'vertical' and 'aggressive' patenting) were not discussed to any substantial degree in this report. It may be that this report is more a picture of declining British industry than of what a healthy patent system might be capable.

Some aspects of research into patent economics are interesting, particularly where it involves empirical research. For example, Wyatt ^[32] suggests - using economic analysis - that the patent system tends to aid inventive activity, but directs research "too much within the total towards patentable inventions". Being "induced inventions" they "will typically be of minor importance, representing improvements to existing technologies perhaps, rather than fundamental changes".

Literature which examines use of 'patents as indicators' is small and does not show clearly that R&D programme is well measured by patent counting ^[33]. The EC Commission's research evaluation was unable to argue more strongly than "Altogether, patent indicators are an effective additional tool for the assessment of programme assumptions..." ^[34] . Despite this lack of evidence to the incisive nature of these indicators, some argue that they are of great benefit. For example, according to Ashton et. al. ^[35] patent information can be used in a practical manner to provide planning information, for example, to:

characterise the technical position of a firm in a marketplace

identify firms with superior technology for acquisition, joint ventures, or licensing

determine the rate at which a technology is growing, maturing, or stagnating

detect technological shifts away from past development directions

Such information is usually provided as a consultative service to industry. It is one of the services currently being offered by the EPO and some national offices. It may be that such information is best analysed by those closest to the patent, since they will be aware of technical problems in interpretation of statistics which the smaller manufacturing firm might totally miss.

It has been argued by Fox et. al. ^[36] from their investigation of the transfer of invention from the University to industry that there are four clear stages from idea to successful prosecution of an invention. These stages make up an 'innovation chain' from invention to successful commercial implementation, and are a chain which the smaller inventor usually finds difficult to follow. The stages are:

1. Lab process. Here the idea has been put into effect but in a very small scale experimental situation.

2. Pilot project or prototype. Here the original laboratory scale has been extended to show that the ideas work, albeit again in a laboratory situation.

3. Working production process/model. Here the idea has been put onto the factory floor or equivalent to show that the idea can work in situ. This is not a fully developed system but must show that significant economic benefits can be achieved.

4. Product on the market. The final stage.

A patent will probably be applied for at stage 1. The requirement of non-prior publication ensures that the inventor will consider staking a clear claim to his idea before he begins to tout the idea around potential manufacturers and licensers of the technology. However, there is a large gap between step 1 and step 4. Fox et. al. write:

The significance of demonstrating a production process or model under real working conditions is of great importance in achieving the commercialisation of an invention and it is the stage which is the most difficult for the university inventor to demonstrate. He may have completed the laboratory stage with [governmental funds] and then with [further governmental] assistance build a prototype or pilot plant, at which point he will normally be expected to convince industry of the effectiveness of the invention. However, industry may not yet be convinced and may require to see a working production process before it is ready to buy a licence.

These economic factors are not questions which are of direct interest in this report, but they do provide some indication of the research which is taking place in this area. Despite this overall lack of clear linkage between patent and national economic success, it is essential to understand that the patent would most probably not exist if it was not presumed to link closely with economic activity and therefore be successful as a contract between individual and state - this is the 'rhetoric of the patent'.

One problem which must be recognised about the patent system is that much of the information which relates to it is anecdotal. It is naturally difficult to find concrete evidence that a company is using the patent system in a way which might be counter to the philosophy of a Patent Office, or counter to free-market principles, or where a patent tactic has 'gone awry'. However, there is much in this 'patent mythology' which is intuitively acceptable. There are stories of patents being awarded to applicants in non-examining systems which are then claimed in CV's to demonstrate inventiveness, even though such systems are only 'registration systems' and provide no indication to the likely manufacturing usefulness or novelty of the ideas so patented. And there are stories of manufacturer's patent activities acting against their commercial interests. One relates to the design of ski boots. It has been claimed a patented boot produced by one company was highly successful and well liked by the buying public. However, the company protected the new boot by a whole host of related patents so that rival manufacturers could only do one thing in commercial response - 'create a counter-revolution'. The counter-revolution - reviving an older style of boot - was successful and caused the commercial failure of the 'better', patented boot through skilful marketing.

But in conclusion, despite the lack of positive evidence for the effectiveness of the patent system in economic terms, the fact that the system supports itself from income demonstrates that users believe it to be a useful commercial tool.

4 Servicing the Patent System

There is no legal constraint preventing inventors resident in any of the European patent system member states (the object of this study) from preparing patent applications themselves. Certainly, a reasonable number of patent applications are so prepared. However, the construction of a patent specification so that it is capable of fulfilling its proper roles of:

specifying the claims upon which the application is based and which indicate novelty and non-obviousness (i.e. the inventive step);

balancing the choice between 'broad' and 'narrow' claims; and

acting for the patentee in potential litigation

is a difficult process. There is a clear indication that Patent Offices (especially those with an examination process) encourage the applicant to make use of a professional representative. Self-prepared applications tend to be prepared by applicants who have no prior experience with the patenting organisation and thus require more effort (adding to costs to the office) from that organisation in terms of clerical administration: they might, for example, believe that a specification contains the claims and these do not need to be re-stated in the 'claims section' of the application form. In terms of examination, it may be difficult for the searcher and examiner to ascertain the precise claims being made due to their lack of desired precision. More communication between Patent Office and applicant also means more cost to the Office ^[37] . All of these aspects tend to make patent organisations prefer applications prepared by knowledgeable and trained professional representatives. These exist in most countries as a specific group of individuals - patent attorneys or patent agents ^[38] .

Having applications prepared by middle-men significantly increases the cost of the patenting system. For example, in EPO applications which are awarded protection, roughly one third of the cost is apportioned to the patent itself, one third to the professional representative and one third to translation costs. We look in more detail at the specific costs and tactical elements involved in reducing these costs later, but for now note that the cost of representation is not insignificant.

The cost of patenting has always been a complaint of business and the lone inventor. In the UK the Green Paper Intellectual Property Rights and Innovation suggested that 'price flexibility' ^[39] might be achieved by the de-monopolisation of the patent agent. Perhaps more importantly (given that there is no evidence that the de-monopolisation which was put into place has significantly reduced costs) was the suggestion that UK patent attorneys (due to their professional rules) may be the best source of information on constructing a patent, but they were not best suited for providing the necessary commercial information which the inventor requires in order to use his patent tactically. For example, the Office of Fair Trading (OFT) investigation into the UK monopoly noted that:

The CIPA encourages their members to remember at all times the commercial objective of patenting. But other sources from within the profession commented to the Office that, although a few patent agents had developed an expertise in licensing inventions, clients (usually small firms and individual inventors) did not always understand that the patent agent was not necessarily qualified or sufficiently experienced to assess the commercial value of a patent or any other form of intellectual property. Examples were quoted of patent agents in private practice tending simply to carry out the task of obtaining patents with little or no advice on the wider issues involved in reaping the benefits of an invention. ... Consequently, the Office was told that the services a patent agent offered did not always make commercial sense to the client or always gave him what he really needed. ^[40]

The OFT suggested that the legal restrictions on mixed practices would, by allowing one group to have both drafting and commercial skills, lead to a significant reduction in 'restrictions [which are] generally regarded as anachronisms that inhibited the development of new techniques and forms of organisation and worked to the general disadvantage of small firms and individual inventors' ^[41] . In effect, the problem was not seen as primarily one of a legal monopoly acting against the inventor, but that the monopoly was providing advice and support which was too narrow. In the European context, a monopoly situation has not always been seen to be problematical. The inventor can still prepare his own application but if a professional representative is to be used (as all patent offices advise applicants) then one who is registered ^[42] must be used. Applicants residing outside the relevant countries must have their application processed by an EP representative (though, this does not of course mean that claims and description must be written anew - they can simply be taken from, say, the US patent application if these are in a suitable format). Those representatives from national systems who wish to become EP representatives must sit a series of examinations. These examinations cover the drafting of patent specifications, but not the commercial aspects of using patents in business. It has been suggested that having a limited number of EP representatives has added to the cost of patenting via the European route because EP representatives are in a relative scarcity.

Those organisations which produce relatively large quantities of patent applications have a tendency to use their own in-house patent attorneys. Some 20% of UK applications were found to be made by in-house agents (a similar number to those being unrepresented). Considering that these compose one third of the total number of active patent agents ^[43] this suggests that in-house agents are either less efficient than their private counterparts, doing fewer applications from prior filings, or are not working full-time on drafting patent applications (for example, are involved in licensing or litigating, perhaps).

While the patent attorney is perhaps the person most actively involved with the patent and the client of the patent system, there are other roles within the patent system. For example, in the UK litigation (as opposed to application for patents) is usually carried out by barristers with an expertise in that area. The numbers involved are not great - it has been suggested to me only about 4 barristers in the UK work full time on patent work (a number of others taking patent work only when it is available). There is a distinct London patent bar with its own association which will take care of most of the litigation which is passed to them by solicitors. The UK Patent Court allows representation of clients by patent agents and studies are providing information on whether patent agents are being successful in gaining litigation work ^[44].

5 Conclusion

A patent is not as strong a legal entity as many other forms of ownership. The lack of strength arises from various elements - the difficult nature of invention itself; the restricted forms of invention which can be patented; the national basis for patents in an ever more international world; the close linkage between litigation and the value of a patent. Yet despite all these problems, and the consistent criticism of the inventor and the legislator, there seems to be no workable alternative to the patent. As Aubry has suggested:

The system is as imperfect as other human systems. After 350 years, it has been refined and balanced, but as a result it can be criticised for its costs and delays. However, as has been said on more than one occasion, no-one has yet thought of a better system. None of the alternatives so far seems likely to attain those particular objectives which the patent system despite its short-comings achieves day by day and week by week. That is why it is so widely used by the world's industries. ^[45]

Given this lack of alternative, rather than try to find a radical new form of warrant or monopoly for the patent, we have seen pressure to make the system more rational and, in attuning itself with growing trans-national trade, more international. The European Patent, which we look at in the next chapter, is the European attempt at rationality and trans-nationality.

Chapter 3: Towards the European Wide Patent.

1 The Strength of a Patent

The patent is best understood as a lever in commercial negotiations and litigation. A potential manufacturer is at liberty to use any of the published patent literature in the improvement of his production processes or improvement of his product, though if the patented idea itself is used, then he is expected to either purchase the patent or arrange a license from the inventor. Using that information is part of the State's contract with the inventor. The inventor, having a monopoly, can either encourage the manufacturer to use the invention (by licensing or by selling the patent to the manufacturer) or can attempt to prevent the manufacturer from using the invention, usually until financial agreement is reached. Both of these steps rely upon the strength of that patent.

A 'weak' patent is one where the rights of the inventor to the patent do not seem to be particularly good - that is, in litigation, the inventor might not succeed in having his patent upheld by the court. A 'strong' patent is one where the inventor seems to have a good case should litigation ensue. Of course, as in most legal systems, the closer to the courtroom door both sides get, the less reliance can be placed upon the absolute nature of terms such as 'weak' or 'strong' ^[46] . Many small inventors would almost always seem to be in weak position with regard to litigating against major industrial concerns, and this of course affects the strength of their patent ^[47] .

The patent is thus a legal lever which is awarded to an inventor on the basis of the information which the inventor supplies to the State. Since litigation is such an important element of patent value (or at least the threat of litigation is an important element) the litigability of a patent can have a marked effect upon the commercial value of that patent. One advantage of a strong patent is that a legal system can presuppose that the patent is valid in temporary injunction matters - and usually these are required to prevent someone from mass-producing an item which has been patented. For example, in Germany where injunctions are given less freely than in the UK, the court will accept the validity of the applicant's patent ^[48] since it has passed (via the patent examination system) a reasonably stringent test ^[49] and will allow injunctions without concurrent discussion of validity.

There are several aspects which combine to produce stronger patents - geographical extent, validity, litigation history and presence of existing licences being the four most important.

Geographical Extent is the most elementary and is to do with the extent to which a patent has been protected in the various countries in which the product might be manufactured or the process used. Since a patent is a national form of protection, it is obvious that a patent can only have validity in one country and thus the invention can only be protected in that country. However, the patent applicant can extend coverage by applying for a patent in a number of countries. It is true that not all countries may be prepared to award a patent for the same invention (there being both small and large differences between the national requirements - especially between the US and European countries) but for those inventions which have passed through several patenting systems (particularly those which assess the invention) there is a strengthening of the value of the invention with each patent awarded. Not only is the patent strengthened, but there is an element of safety for the inventor - not all his inventive eggs are being placed in one national basket (should the patent fall in national litigation) and even though the patent might not be valid in some countries, there might be sufficient countries in which it does stand to provide financial reward for the inventor.

Even in those countries where the patent falls or the invention is not granted a patent, there might be other means whereby the invention can be protected. For example, Rubric's cube was not held to be patentable in the Netherlands (due to the similarity of the internal mechanism to a prior invention) but was protected by copyright of the external coloured faces in the Netherlands marketplace.

Validity is the other important element contributing to the strength of a patent i.e. whether the patent should have been awarded in the first place. Obviously, in litigation where a patent holder attempts to prevent a manufacturer from using an invention, the best defence the defendant has against the litigant is to argue that the invention is not 'really' an invention at all. That is, the defendant will argue that the patent was not validly granted and should be revoked. In order to support the validity of a patent, it is necessary to show that the invention passes two steps successfully. First, that it is in one of the patentable fields and kinds of entities which can be patented ^[50] . Second, it must show that it is indeed an invention. This second element is composed of the test of 'novelty' and of 'non-obviousness'. If, in litigation, it is found by the relevant national court that the invention does not pass these tests, then any patent awarded is revoked in that country. Further, although the patent is awarded on a national basis, it is not the case that these steps are considered on a national basis. A patent can be held to be invalid if there is found to be a similar prior invention either in the literature or in the patent literature in any other country, if that country's patent system requires absolute novelty. This is a requirement in all EPC member states.

In order to ensure that the value of the patent which is awarded to inventors is reasonably strong, some countries carry out an examination process for all applied for patents. In this process, the literature is (i) searched to ascertain the prior literature and prior art on the subject; and (ii) the invention is examined in the light of the material found in the search process as to whether the applied for invention is worthy of patent protection. The strength of an awarded patent is, in large part, dependant upon the thoroughness of these searching and examination processes. Those national Patent Offices which do not carry out this process are providers of extremely weak patents.

Litigation history is the third element contributing towards the strength of a patent. By this we simply mean that if a patent has survived litigation intact in one country, then it has proven itself in a manner which a patent which has not been so attacked has been unable to do.

Existing licences are those agreements which the inventor has made with manufacturers. Although, in legal terms, they are the least important of the described elements which go towards providing strength of a patent, there are considerable advantages to a patent holder in having these. They imply to other manufacturers that the licensees have looked closely at the value of the patent and have considered that it is economically more prudent to work with the owner of the patent than to consider litigation or use of the idea without the patentee's permission.

Since this latter element is not within the power of legislators to either award or directly support, it will not be dealt with further here. However, it is important to realise that patents are commercial objects every bit as much as they are legal objects and that therefore their strength is as much commercial as legal: a patent which has not interested potential manufacturers or been used in product development can hardly be considered 'strong' so much as 'value-less'. In this latter case the inventor might well think about letting the patent lapse.

2 Meeting The Need for a Strong European Patent

The deficiencies of the various national patent systems have been particularly highlighted by the growing trans-border nature of industry and invention. This is particularly true in the European Union countries where the commercial and political philosophy has gravitated towards integration and free markets across EU borders. Despite the fact that a basic legal thrust of the EU has been to provide a framework of competition law, it has been considered that inventive monopoly is of value to the economic well-being of the community.

It had been hoped that a new EU-wide patent system would have been in place for the beginning of the customs-less Europe in 1993 ^[51] . This patent system - known as the Community Patent ^[52] - would have had the effect of providing one single patent for the entire EU area (and other member countries) with the advantage of litigation over the patent in one country being recognised by all other countries. Various problems have been met in reaching this goal, and currently the situation is that a transitional system - the European Patent - is still in place and provides the only trans-national patent system for the EU and related countries. This was brought into existence by the European Patent Convention, which (with the addition of Ireland and Portugal in 1992) 17 States had ratified. In 1996, Finland's accession brought the number of member states to 18.

The European Patent system is not a replacement for the various national Patent Offices, rather it is a complement to them, offering a means whereby a bundle of national patents - covering if the application wishes, all 18 member States - can be obtained through one application. Indeed, the link is more complex than 'complementary'. The governing council of European Patent Office is composed of representatives from the national Patent Offices of the member states at the same time as there is competition over attracting applications - this means that the EPO acts in competition to the national Patent Offices. It is commonly held by employees of the EPO that they are the only organisation to have their competitors as their executive board. The position of President of the EPO is thus a difficult one, matching the needs of the EPO (which might wish to increase its workload at the expense of the national patent routes) with its Administrative Council who might potentially resent losing this workload to the European body.

Since its inception in 1978, the European Patent system has shown itself to be more successful than was originally envisaged. It has achieved its success by attempting to produce a strong patent for its applicants. It has done so by emphasising those elements (discussed above) which it was capable of impacting upon. Since neither litigation history or licensing are available options, the EPO has concentrated upon providing patents which are of wide extent and validity. In terms of extent, a European patent is valid in all the member countries (subject to fees and any required translations being provided). In terms of validity, the EP system tries to provide as valid a patent as possible through extensive searching and examination.

3 Searching at the EPO

As with many decisions taken in Europe, the decision to divide the search and examination between two main geographical locations was based on pressures from national governments. The search section (DG1) resides in the Netherlands and the examination section (DG2) is based in Munich. A further Berlin office does some search work and - being located there for political, pre-re-unification purposes - is financially supported by the German government. Some search examination work is also now carried out in Stockholm. No other national Patent Office has split its search and examination functions in this way: we look below at the BEST programme (Bringing Examination and Search Together) which is a recent attempt to bring the two processes together.

The Netherlands office was based upon the prior searching organisation, the IIB (International Patent Institute) ^[53] and some of those currently employed by the EPO in DG1 came from this institution. The EPO employs over 1,000 search examiners, all of whom are fluent in at least the three working languages of the European Patent system - English, German and French and who have an expertise in particular areas of science and technology. Applications are received in the Netherlands office and first processing of these is carried out there. The rules governing the EPO regulate the form of a proper application (date, details of applicant, claims etc.) and the application's accordance with these rules is checked by the Receiving Section. All those working in this section are also fluent in at least the three working languages, so that applicants have a choice of language in discussion with the staff. Applications are not yet received in computer format, but this is currently being planned. The Japanese and US patent offices are involved in trilateral research and standardisation to use computer-based systems for reception of patent applications, with the JPO presently furthest down this path ^[54] . Applications are digitised (i.e. in facsimile format) and also coded for later publication and also for internal use. The date of filing of an application is an extremely important date, since the priority of the invention against other claims is based upon this and the processing at the EPO - as with all Patent Offices - has to ensure that applications are given this. A period of 18 months occurs between filing and publication of the application details, and during this time the application is kept in secure conditions.

EPO patent applications do not necessarily need to be filed first with the EPO. They can be routed via national Patent Offices, and some national offices require this route to be taken ^[55] . The EPO does not only process applications for its own patent. It acts as an international search and examination authority under the PCT (Patent Co-Operation Treaty) procedure. PCT applications are treated in the same manner as EPO applications. In effect the PCT application is a competitive patent application to the European patent. Unfortunately (for the EPO), the time in which a PCT application must be processed to produce a search report was shorter than that taken to do an EP search (though the two are identical in standard and search depth). Thus another element of competition was being provided by the EPO to its own patent. The difference was, until recently, marked. Rule 42 of the PCT requires that the EPO has 3 months from receipt of an application to produce a search report, while until 1994 the EPO 'has taken all steps to ensure' that search reports for first EP filings with the EPO are produced in 9 months ^[56]. However, by 1996 this time difference had been removed and applicants could receive a search report for an European Patent in roughly the same time length as a PCT application. The time difference in future will obviously depend on staffing and numbers of applications. Since the inception of the EPO, there has been a backlog of search and examination work which has only recently begun diminishing, and which has only now allowed the routinely speedy production of a search report. It is important to remember, though, that an accelerated search can be requested from the EPO where an applicant feels this to be useful.

When an application has been received and processed by the documentation service at the EPO to ensure that it is full in its clerical requirements, it is passed to the Search Examiners.

3.1 Search Examination

In theory, any invention can have inventive effect over a large number of areas. An invention of a radical new kind of electric motor would have a broad application across many different fields. A patent covering this kind of broad field is more commercially valuable than one which is restricted to, say, an improvement in an electric motor which might give a 3% improvement in torque. However, no matter what breadth of invention is contained in the application document, the applicant must make specific claims upon which the application for patent is based. It is these claims which are the basis of the examination by the search examiner ^[57] .

The application, of course, must include full disclosure of the invention and this takes the form of a description and any drawings required to describe the device, substance or process ^[58] . An abstract is also required with an application but this is not referred to in the search or examination steps. It is primarily the claims upon which the examination process is based, using the description as a means of making sense of the claims. In some fields - such as mechanical engineering with drawings, or in chemistry with formulae - it is truer to say that the claims are more accurately and fully described in the description, yet they require the written statement of claim which sets the boundaries of the protection being applied for.

The search examiner has the following functions:

(i) provide an initial classification for the application;

(ii) check whether the idea is part of 'prior art' at the time of application.

It will be up to the second stage examiners (in DG2) to decide on patentability using the information from this first stage.

Given the huge number of patents and the large number of scientists and technologists working in the world, this search process could potentially be an expensive and time consuming process. However, it is substantially eased by a system of classification of the invention by application field. Using this classification system, the application can be directed to the search examiner most expert in the area and that search examiner can use the classification to attempt to discover other possible conflicting patents or important information. The EPO uses a classification system which is an extension of the International Patent Classification ^[59] system and which contains around twice as many classifications. Thus an application dealing with cleaning would be given a broad classification of B08 when it first arrived at the EPO. It would then be sent to the examination section dealing with this broad classification where it would be looked at and more finely classified (say the sub-class involved 'cleaning contact with a liquid') and sent to the person responsible for that particular subdivision. Applications are thus streamed into their most appropriate classification. Applications do arrive which transcend one or more classifications, in which case they will be examined by more than one examiner.

Having arrived at the most relevant search examiner, the application can then be search examined. This means that the application is investigated to see whether it makes claims which are based upon prior art, which includes ^[60] :

(a) prior patents

(b) prior published information

The search examiner will look for documents which relate to these aspects. A classification of any discovered documents will be found which might affect the awarding of patent protection. Important documents found are coded ^[61] as:

X: particularly relevant if taken alone

Y: particularly relevant if combined with another document in the same category

A: technological background

E: earlier patent document, but published on, or after the filing date

and it is these which are most likely to affect the granting of a patent. Those applications which are labelled with an 'X' or more than one 'Y' indicate that the patent application is unlikely to be granted a patent, since these indicate that there is evidence of prior art in the area which is relevant. The documentary form is the important one in the search process. Searching is most usually done in isolation from the applicant and it is rare for the EP search examiner to contact applicants ^[62] .

Search examination is a preliminary process in the patent awarding procedure. It simply tries to shoehorn the patent application into a relevant classification and then decide whether there is any existing information in the literature which might prevent the patent being awarded. However, though it is preliminary to the more 'substantial' examination for inventiveness, it is clear that the value of this latter examination is heavily dependant upon the search examination. On completion of this search procedure, a search report is produced. This is filed with the application and - importantly - a copy is sent to the applicant.

Not all applications for a patent are followed through. The search report allows the applicant to consider whether the next stage is a desirable step. By looking at the documents cited in the report the application can achieve a clearer understanding of the value of the application, the field and the claims made. It may be that at this stage the applicant discovers that his invention has already been patented, or that it solves a problem for which there are more elegant solutions. The search step is extremely important to applicants for these and other reasons. As an example of other reasons, the EPO and other national Patent Offices having search experience, are prepared to carry out standard searches (and more specialised ones) for potential applicants or manufacturers which will provide them with information which might enable them to construct an application which will give stronger patent protection, or which will let potential manufacturers and research departments do 'trawls' or literature before commercial decision are made.

Since the search is both important in gaining a patent and in making these decisions, the 'depth' or quality of the search process is highly relevant.

3.2 Search Quality

The EPO prides itself on the quality of its search mechanism. It's advantages, it believes, reside in several factors:

(i) The number and experience of search examiners: the EPO, compared with most national Patent Offices, employs a large number of search examiners. They are divided into three main areas, chemistry, physics/electricity and mechanics. Each of these areas are further divided into fields related to the search classification system. There are between 11 and 13 subdivisions in each of these fields - each known as a 'Directorate'. In smaller national offices it is argued that the smaller number of examiners does not allow for the degree of expertise in each of the classification areas.

The staff turn-over in the EPO is very low (in the order of 2 or 3% per year) and many examiners have examining experience of 20 years or more (these, of course, were incorporated into the EPO at inception). This tends towards having a strong body of institutionalised expertise.

(ii) The size and organisation of the EPO literature: Documentation is particularly important to the EPO since it is the basis of the search. It comprises patent literature from various countries and also updated journal literature (and some textbook material). Journal literature is classified according to the classification system and is stored as near the search examiners as physically possible - usually one or two doors away. There are roughly 27 million patent and non-patent documents available to the searchers, and this is being added to at the rate of 1 million more per year. Due to the large number of documents available, the EPO has moved over to computer based indexing and handling of information. One project, EPOQUE (for EPO QUEry Service) has provided a standard interface to a large number of diverse in-house and external commercial databases. Using one standard query language ^[63], the examiners can have their search terms translated into the necessary commands for any available database and search for patent or other information. Such a system ensures that examiners have a highly flexible and easy to use search tool. EPOQUE also provides both image and text on the examiner's screen, and documents not immediately physically available can be ordered over the system for next day delivery to the examiner. The system is an in-house design, being designed by search examiners but programmed by a software house. This system is made available to the national Patent Offices and, potentially, applicants in the EPC member States. There is no limitation on the individual search examiner's use of data bases. In cost terms, 80% is used by chemical searchers who carry out pattern-matching searches for chemical structures. The system also allows individual examiners to build up their own in-house databases of information which then become part of the EPO's search system.

(ii) The language abilities of all its staff: most national patent systems are based upon one language and recruitment is via technical expertise in this one language. However, the depth of a search cannot be limited to one language, since it is novelty and inventiveness which is being tested by the patent system, rather than the ability to take an invention from one country and pass it to a second. A national or EPO patent will not be awarded for an invention if the literature shows that it was known about or patented in another country which might have a different language. Further, if in litigation it can be shown that the awarded patent was not completely novel, then it will be revoked. A stronger patent should ideally be checked against the prior art of as many countries as possible.

It follows, therefore, that the wider the spread of available languages to an organisation, the wider its potential search area is. All EPO staff are fluent in the three standard languages of the EPO but many have another language as a mother tongue. Of course, the EPO is not totally fluent with all patent literature. While the US patent system is obviously open to EPO staff, the Japanese system is not. In the latter case, reliance is placed upon English language versions of patent abstracts and use of diagrams contained within the Japanese application. The language argument is therefore at it most powerful when patents and literature in the French and German systems are considered but also relevant in the other language categories of the EPC member States where the search examiners might have expertise.

3.3 The Search Report

The search report will be sent to the applicant when completed. Usually it is reckoned to take some 12 hours of search examiner's time to complete each search and report. It is a reasonably bare document, principally citing:

1. relevant sources found and the importance (indicated by code) of each of these documents in the search examiners view;

2. the search classifications used in the search process;

3. the classification given to the application itself.

A copy of this is forwarded to the applicant. The search report will not be made publicly available until the patent application has been published (i.e. 18 months after date of filing) but at that point it becomes available to competitors and other potential applicants.

The nature of the patenting operation can be seen to be centred upon documentation and classification. This might appear to be a relatively clerical type of operation and one which is non-problematical. This is not so. There are problems of standardisation within the EPO where the different search sites have to be monitored for coherent working practices, and even within the same search offices it is necessary to monitor the search process. Training of search examiners is reasonably lengthy (some three years) and at no time in their search career will they be left without some form of supervision or oversight. In the early days of the EPO's operation, some search was carried out by national patent offices. Armitage tells us that this was not particularly successful ^[64] 'because it was undertaken in the interests of the national offices'. However, there is evidence that searching is, in practice, more difficult to standardise at level of quality and depth than many imagine. For example, problems have arisen in the attempts to bring closer together the other two major international patent providers - the US Patent and Trademark Office and the Japanese Patent Office. A research project investigated the operation of PCT searches within these three offices where:

the first filing was made at one of the three Offices and a subsequent filing at another. The results of the test have indicated that substantial differences exist in the search criteria and the search methods employed by examiners in the three Offices. ^[65]

Such indications should not be taken lightly and it is the case that applicants, particularly where these are attorneys, are well aware of the different search standards in the Offices to which they make applications.

3.4 Substantive Examination

Examination is the process whereby each application is considered in the light of several factors. These are stipulated by the EPC:

1. The application does not reside in any of the fields which are expressly forbidden - Articles 52(2) ^[66]and 53 ^[67], EPC. This is not, always, a simple matter and the examiner is expected to deal with applications which might contain moral questions which are outside his or her technical expertise - for example, recent bio-technology applications which have a moral dimension; or which relate very closely to forbidden elements - for example, applications in the field of artificial intelligence which is by its very nature based upon a computer program ^[68].

2. The application deals with an invention which demonstrates novelty: Article 54 (1) states that 'An invention shall be considered to be new if it does not form part of the state of the art.' Novelty of an application can therefore only be decided upon what existed prior to the date of application. The examiner must consider the situation at the time of application, rather than at the time of examination (which will usually be 18 months or more later) and must decide what the state of the art was at that point in time. Article 55 allows certain disclosures of the invention which will not harm the applicant's novelty: for example, certain recognised official exhibitions. The examiner is not simply, therefore, looking at the technical element in the application, but locates this in a time scale which indicates both technical and legal factors.

3. The application shows an inventive step. An inventive step is one which (Article 56) 'is not obvious to a person skilled in the art'. The inventive step is the most difficult part of the examiner's task. Novelty decisions can be based on the literature which is discovered in search examination, but setting the 'inventive step' is something which has frequently been treated as a shamanistic activity. The examiner must understand the application in order to do this in a manner which goes beyond simply seeing how it works. He or she must put themselves in the position of another expert in that industrial situation and try to decide whether the step taken was obvious or not: and many insightful inventions appear highly obvious after being described.

4. That the application shows a unity of invention. Article 82 requires that the application 'will relate to one invention only'. The examiner must decide when - as is usually the case - there is more than one claim, whether there is more than one invention for which protection is being claimed. The deletion of any secondary claims is possible ^[69] , but just so long as no protection beyond that first claimed in the application is given to the applicant.

5. The application shows clarity in the description and claims - Articles 83 and 84 require. The clarity of the patent is important since it sets the basis upon which others can see what is allowed and what is protected. The examiner must therefore be aware of the intended meanings contained in the claims and descriptions, but also of unintended meanings which might provide unwarranted protection in future litigation or which might cause revocation of that patent.

It can be seen that there is close meshing of the technical and administrative in the demands which are made of the examiner. This can be further demonstrated by the fact that it is reckoned to take 3 to 5 years before an examiner is fully competent ^[70], and even then the examiner will never by free from supervision.

Surprisingly, it is the text of the EPC itself, rather than the Rules, which sets down the format of examination when in Article 18(2) it stipulates the number of examiners as 3 for each application. This number was substantially different from that found in national offices, where usually examination is carried out by individual examiners who are responsible only to a senior examiner. It was described to me that in some offices - particularly the UK office, but not the German office - it was not unusual to have 'rogue examiners' who had a particular agenda of their own relating to inventions. Whether this is true or not, it is claimed that the three examiner system has various benefits to the EPO which are not available to patent offices which operate on different systems. No criticism of the three examiner system were made to me by any of my interviewees at the EPO. The advantages are chiefly:

• The individual examiner, especially in the early career, has the support of more experienced examiners.

• It is difficult for 'rogue' examination to occur since one examiner must persuade two other examiners of the correctness of the decision (though there are also other techniques which reduce the rogue element).

• Communication with colleagues about the technical content of the application can help the examiner to understand a point which might not be immediately clear from the description or claims in the application.

• Where problems of language occur - once again in the examiner's early career - he is aided by having examiners who will probably have a different mother tongue. This means that phrases and useful expressions can be collected by, say, a French examiner who needs to write to an applicant in English.

Of course, the system is more expensive than one where an application is dealt with by only one examiner. Although, as the EPC makes clear ^[71] examination will usually be carried out by one primary examiner, the time and effort needed to properly understand the application by all three examiners is not to be underestimated.

The culture of examination is a technical one, and the entire culture of the EPO is examination-led. Though lawyers have an input (as we see below), nearly every person in the EPO has a technical background and has spent considerable time in the examination process (in DG1, the time relates to 'search examination'). Directors of technical divisions and those involved in training and quality control, for example, are all examiners and intimately understand the problems of examination. It can - I was told - be an exciting form of work: the examiner is at the very forefront of technical development and a high degree of intellectual and technical ability is required. Examiners also have to deal with appeals and oppositions and chair oral proceedings. They have to be decisive: one Director informed me that an examiner had to be able to come to a decision and not wake up one day thinking that a patent should be awarded and then wake up the next day thinking it should not. Few examiners will move to senior positions (given the present workload) and thus a career in examination is one to be spent in that role ^[72] : much like the role of a provincial lawyer who will always be dealing with small businesses, petty crime, property, wills and marriage failure.

Techniques for examination have developed in the culture of the EPO and have become the way of doing things. The level of control under which the examiner works (discussed below) is one way of implementing this culture. However, more formal techniques have been developed, too. One of these is the problem/solution method for determining the level of inventive step ^[73] . This technique can be seen to allow the examiners to include new technical developments relatively easily within their work practices and provides a decision-making procedure that minimises the risk of an examiner using hindsight and believing that the invention is simple or trivial:

In the problem and solution approach one first takes a step back to the closest prior art and, from that position, one surveys the prior art to see whether or not there existed, before the invention was realised, something that pointed towards it. By using this approach one reduces the advantage of already knowing the invention and the risk that hindsight (ex post facto reasoning) will distort one's judgement.

... using this method ... the assessment of inventive step is more consistent and transparent, because it relies more on objective criteria than subjective impressions. ^[74]

It is looking at the 'technical problem' which provides the power of this technique. The patent is based in technical problem solving and it is therefore correct that decisions on inventive steps, too, should be so based. But the advantage is greater than simply a methodology for known technical areas: it lets the examiner deal with new areas - for example, digitalisation - in a manner which has been well tried and tested for other areas. When computer software and hardware are brought together, for example, the examiner can decide firstly whether a purely software approach is being advocated (if so, no patent can be awarded ^[75] ). If not, then he or she simply moves on to deciding what the problem to be solved was and whether at that time there existed anything in the prior art which solved it or indicated that it could be solved.

Despite the undoubted rigour of the position of examiner, the need for a consistent product (i.e. a patent which will withstand litigation) demands that the examiner work within a highly constricted mesh: forever controlled. Though the examiner's view of inventive step in the individual application is his or her own, that view has been inculcated by training and supervision. It has to be consistent with the view taken by all other examiners. This is a question of quality control which we look to next.

3.5 Quality Control

The technology which the EPO has to work with covers a very wide area: from specifications describing synthesis of new chemical compounds through to new forms of inflatable canoe. It is obviously difficult in this arena to ensure equivalent 'inventive steps' and clarity requirements from individual examiners, each of whom work in a highly specific sub-field of one of the three examination directorates of Chemistry, Physics/Electricity and Mechanics. In order to provide for harmonisation of practice, it is necessary to have means of control and influence above the level of the individual examiner. Partly this control arises from the fact that all work being carried out by an examiner (including communication with applicants) crosses the desk of the relevant Director. The Director will develop an intimate understanding of the strengths and weaknesses of the individual examiner and will look to the work of the examiner for these. Immediate control is thus through the examiner's supervisor who has a reasonable expertise in the examiner's area.

In the wider context, though, the examiner's work (and that of that Directorate) must accord with a standard throughout the organisation. The inventive step in one directorate should be equivalent to the inventive step in the others.

In the first days of the EPO there was no pressure of production ^[76] . It was possible for every case to be looked at with a group of examiners, and for a culture - a way of doing things - to be built up in relative isolation from external pressures. This common culture which was created in the early ('pioneering', I was told) days was later, through the three examiner system and the relatively long training period, passed onto new recruits. As the number of cases increased, a Harmonisation Group was developed (consisting of one director representing three directorates) to review files and discuss and clarify issues. Points which were to be passed to staff were published via internal staff notices from the vice-president after the Harmonisation Group communicated with him.

The staff notices were the administrative means of making up for a lack of precision in the EPC and the EPO Guidelines ^[77] . They are now in both computer-based and print format and readily available to staff. Much of the information in these is of little external interest: for example, specifying the colour of pen to be used in marking amendments on applications; and how to paginate replacement pages. It also changes as minor problems arise. It aims to provide a source of information for the examiner in all circumstances where there might be a problem of harmonised procedure. Errors in practice are those which do not accord with the manner in which they are specified in the staff instructions ^[78] .

The EPO staff were drawn from a number of different countries and a number of different patent cultures, so it was important in the early days to provide a core body of 'harmonised' staff who were not simply proponents of their own national practice. This became particularly important as the number of applications grew and staff recruitment continued. With that rise in the number of applications and staff, there came a rise in the problems of harmonisation and a Directorate with full-time staff was set up to oversee that standards were adhered to. This Harmonisation and Quality Control Directorate (presently with a staff of 10) now operates a Total Quality Management programme. The Directorate is not in a supervisory role to examiners, but essentially takes a 'photograph' of the work of DG2 by looking at a random selection of applications ^[79] . The files looked at are judged against the standards of the staff instructions and 'non-compliances' are noted. These are fed back to the examiner who will respond. There are reasons for 'non-compliances' apart form error: confusion in the procedures to be followed for example. This procedure will not, of course, find every problem in every file but it can be imagined that most 'non-compliances' will not be made by just one examiner, and therefore should show up in the random sample. These can then be the subject of further staff instructions and, perhaps, training. The work of the Harmonisation and Quality Control group also sees substantive complaints from applicants, and this gives further insights into problems. However, complaints of this nature are not dealt with by this group.

Information from this Directorate is advisory - both to examiner's Directors and also to the committee which advises the Vice-Prensident on the issuing of staff instructions. This important committee is known as the PPPC.

4 The PPPC

The Patent Practice and Procedure Committee (PPPC) is at the heart of any changes or developments in the examination section. It is composed of a principal director in the role of chairman, four directors representing the three areas; the director of training and also the director of harmonisation; a 'formalities and procedure' expert and an 'opposition expert'. The PPPC is the balancing tool whereby the different pressures within the examination section are discussed, reviewed and - if a change in practice or procedure is considered useful - suggestions made to the vice-president. The PPPC will also discuss suggestions made by the vice-president; and will look at complaints which are forwarded to it by the vice-president. The PPPC had been set up by the present vice-president as a formal means of getting representative views on change.

One problem which was intimated to me during my interviews within the EPO was the 'problem' of representation in DG5. This is the legal section and is responsible not only for the typical legal functions in such an organisation (e.g. contracts, purchases etc..) but also for providing legal advice on the patent system within the organisation. The problem was seen to be too high a German representation in DG5 ^[80] , which was felt to be contrary to the required independent legal position of the EPO. Obviously such a representation - if it had practical effect - could be perceived as a problem by external non-German applicants. However, the PPPC acts as a more nationally representative body ^[81] . It is also the case that DG2, being more technically than legally oriented, provide an opposing pressure to that which is interested in moving towards any given legal philosophy by emphasising the practical needs of the organisation ^[82] .

Importantly, in the context of this study, it should be remembered that both the present vice-president in charge of DG2 and his predecessor were from the UK patent office. The final decisions about practice and procedure are thus decided by a UK member (though it is possible for the PPPC to continue to pressure against a decision of the vice-president if they believe that it was 'errant' or problematical, through re-introduction). I was told that advice to the vice-president was rarely ignored since the PPPC had such a highly representative nature. I was also told that comments on instructions from the vice-president's Committee had been proffered by the PPPC and had been found to be welcomed.

As an example of the kind of important topic which the PPPC looks at, we can think of the 'problem/solution' approach to examining. This method was initially suggested by DG3 as the appropriate way to look at the 'inventive step'. It was originally felt by the PPPC to be a useful but not a total technique for examination. However, over time it did - in DG2's view - prove itself able to solve difficult problems and, with the support of the PPPC, made the move over into formal staff examining methodology. Now, however, DG3 have recently suggested that it might be being over-relied upon as a methodology, and that not all cases may be appropriate. PPPC thus now have the task of discussing and reviewing this technique in the light of DG3's comments.

Another example of PPPC's work is the decision to send a preliminary opinion to the parties to an opposition ^[83]. In the UK system such a practice seems like the judge providing a decision to the parties before they meet in court - a highly contentious idea. However, the thinking of the PPPC was that it helped efficiency by allowing the parties to concentrate upon those elements of the preliminary opinion which differed from their own case.

Complaints are directed via the vice-president to the PPPC. Not all complaints are relevant to the PPPC, of course, so they see only those dealing with practice and procedure. Interestingly, I was told that most complaints come from the UK , who try to influence practice and procedure more than any other nationality by suggesting 'improvements' ^[84] . The style of communication from the UK was also noted - it being more 'anti-authoritarian' than other nationalities (particularly the Germans who are polite and respectful) - and the fact that this could have an effect upon the examiner was mentioned: particularly when a UK applicant was dealing with a German examiner. Such problems can sometimes come to the PPPC.

DG3, as the body dealing with appeals, has substantial sway over the examination section. Though only the Enlarged Board of Appeal is given - by Article 112 - clear legislative functions to decide and clarify points of law, the Boards of Appeal effectively have the same power: they can forever remit decisions back to DG2 when they are unhappy about the method or results ^[85] . DG3 is, of course, an examiner-based section.

The goal of the PPPC is to turn problems into practical solutions. They are aware of being a commercially-oriented body who must operate in a self-supporting manner. This commercial nature relates mostly to finding efficient ways of carrying out the examination process: sometimes this includes finding the best way to implement decisions (from the vice-president or the Enlarged Board of Appeal, for example) upon which they must act.

5 Linking Search and Examination: BEST

The division of search examination and examination between two diverse physical sites was historically grounded, but this does not mean that it is necessarily the only way in which the EPO can manage these aspects - for, after all, the EPO is the only patenting office in the world where the search examination and examination are not carried out by the same individual. It is also the case that the while the backlog in search examination at the EPO is now practically gone, the examination backlog is still high.

While there may well be advantages in having the split in the examination process, there are also disadvantages:

• lack of flexibility in allocating work-load (particularly when search examination work-load is less than examination work-load).

• for each area of inventive application, the EPO requires two individuals with expertise. One individual will carry out the search report and the second will be a member of the three-man examination board.

• though it should not be the case that searching prior art is done entirely within the framework of examination (i.e. that the examiner's mind is made up before the prior art is fully searched) it is useful for search examiners to have feedback and understanding of the results of their searches. This is not presently the case in the split process.

• examination is more interesting than search examination. Presently those EPO employees who undertake search examination have the less interesting task - this might be an example of poor staff management.

With these criticisms in mind, a project was undertaken to try to bring the two examination processes together - called, BEST (for Bringing Examination and Search Together). The project required volunteers from the Hague office to be trained in examination and to be passed a proportion of examination files from the outstanding backlog. The project has, internally, been considered a success and is now EPO policy ^[86] . This does not mean necessarily that all search examiners will undertake this training (it is long, and intensive) or would want to, but the clear goal is to achieve both motivation of the search examiners and also flexibility in allocation of work. And further, of course, to improve the quality of the complete examination process:

... it is also expected that BEST will improve the search and examination quality. The search examiner, by doing also the examination, will better understand the needs of a good examination and will thereby be able to improve the quality of the search and the search report. As the substantive examiner will, by carrying out the search seem more documents in the relevant technical field, he will get a wider view of the state of the art and therefore become better skilled in the art. ^[87]

If, of course, the improvement is significant, it may well be asked whether the original split of the two elements of the process was sensible and whether or not this is an example of the effect of compromises made to political forces in the early days of the EPC.

A parallel development with BEST has been the gradual levelling-off of applications to the EPO. This has meant that recruitment of examiners has terminated during the study period and that the training load of new staff to the organisation had eased ^[88] . The Training Directorate ^[89] had thus been able to move its focus towards supporting the BEST programme, where reasonably experienced staff are having their knowledge extended rather than initiated from scratch. This has allowed those involved in training to produce internal training documents which are both clear and succinct, covering the various elements of examination (clarity, novelty etc.) to a standard for which required time and effort may not have been otherwise available.

It has been part of the culture of the EPO to be relatively open with its technique of examination (for example, producing the clear and understandable problem/solution approach). Whether the documentation from the BEST training programme will become available outside the organisation will, perhaps, be a test of the EPO's willingness to lay open its most central processes to its clients.

Another interesting aspect of BEST has been its attempt to use computer based tools as an enabling medium for examiners. This is not a topic which is central to this project, but indicates a common concern amongst all patent offices to try to harness the new technologies to their way of working.

For the search examiner who becomes involved in BEST and who finds the searching process isolating, the project stands to improve their working environment substantially. One patent attorney who I interviewed had worked for over two years as a search examiner before moving to industry and noted that he was:

'working in the dark with no opportunity to have feedback from the applicant - of what they thought of your search, which documents they found relevant ... Knowing what I now know, I would be a better search examiner because I now know what the task is ... Training was not very good when I joined - simply to search in the most efficient manner but not directed towards what DG2 or the applicant wanted. Perhaps trainers didn't know what was required themselves. It was very boring. Sometimes you wanted to phone up an applicant and say, "What do you mean by this?" '

The figures for 1996 indicate that BEST is continuing to develop. Some 18% of search examiners at DG1 now also undertake substantive examination, with some 8% of the total substantive examinations for that year being undertaken by these DG1 staff.

6 Oral Proceedings

Most communication between the client or his representative occurs by telephone or by mail. On receipt of the application there may be some problem which requires clarification and which is best handled by telephone, but until the substantive examination the client or his representative will await receipt of the search report. At this point, the file is forwarded to DG2 for substantive examination. The client contact will increase here with discussions over the telephone (logged and any points agreed put into writing and a copy sent to the applicant), by interview and by mail. However, there may come a point in the proceedings where it is felt (either by the examiner or by the client) that resolution of the application or some problematical point may be made by having formal face to face contact between the applicant and the examiner. In this case oral proceedings will be instituted. Usually this is carried out through a meeting in Munich, but it is possible now to use video-conferencing techniques ^[90] .

While oral proceedings do give the applicant the opportunity to try to persuade the examiner of the 'error of his ways', it appeared to me that in many cases oral proceedings are seen by the examination division as not so much a way to give the applicant an opportunity to change their minds (though this does happen) but as a way of bringing the examination proceedings to a close when it was felt that there was a substantial difference between the two sides, and where the applicant was unhappy about this difference.

The nature of oral proceedings in substantive examination is thus formal, with three examiners and minutes being taken. 'Interviews' are less formal and can take place between one member of the examining division and the applicant and when, say, amendments are required in the claims, both the examiner and the representative will have to return to their colleagues and client, respectively. to confirm that tentative decisions made are agreeable ^[91] .

7 Opposition

Opposition, too, has oral proceedings but these differ radically from those of the substantive examination. Opposition is a procedure which was well known to the German patent community prior to the EPC and had previously been known prior to 1977 in the UK. It is, in the EPC, a process whereby after a patent has been granted any person can raise objections that the patent so granted should have been. Grounds ^[92] are:

• the subject-matter of the patent is not patentable.

• the patent does not disclose the invention sufficiently.

• the patent awarded offers wider protection than that claimed in the original application.

It is possible, through opposition, for a patent to be withdrawn or amended. Opposition is, of course, a highly useful procedure for opponents who are concerned that patent protection is being awarded to their commercial rivals. The opposition procedure gives opponents a relatively cheap way of opposing a patent where the only other path would be actions through court litigation in all of the countries where the patent is valid.

Opponents are allowed a 9 month period from grant in which they can oppose. When a patent is opposed, all parties to the action are invited "as often as necessary, to file observations". This process gives each side the opportunity to comment upon the statements made by others. Finally, oral proceedings are held to allow the parties to make any final comments and sway examiners. The examining division in opposition is composed of three technical examiners, two of whom were not part of the original examination division ^[93] . When required, this Opposition Division can be extended by inclusion of a legally qualified member - this happens in particular when witnesses are being heard in the oral proceedings.

Opposition in the EPO is primarily a written procedure. The parties will prepare their documents setting out their case and forward these to the EPO, who will then pass copies to the other party. Whereas substantive examination is relatively informal, opposition is highly formal: no contact will be made with one party without the other being informed.

Opposition is weighted against the opponent in two ways:

• As in examination, the benefit of doubt is given to the applicant. This means that the opponent must prove his case, rather than simply use opposition as a means of having the examination division's view looked at by two new examiners.

• Normally the primary opposition examiner is the same person who chaired the original examination procedure.

The second element means that the best chance of winning an opposition will be on presenting new prior art rather than arguing about the level of inventive step. I was told that this was 'inevitable' because the examiner will already have done a good job of looking at the level of inventive step, and if the patent can be overcome it means that the examiner "has made a mistake". However, I was also told by a Director in DG2 that since number of oppositions was a sign of a field's commercial worth, rather than an indication of the standard of work done by the examiner, that no adverse comment would be made against an examiner whose work resulted in a high level of oppositions.

In general, these seeming biases against the opposing party are not impossible to overcome. The figures for 1996, where 6.2% of patents were opposed, are that around one-third of oppositions were completely successful with the patent being revoked. Of the remaining two-thirds, the patent was either maintained in amended form or opposition was rejected.

The EPO has a model of what oral proceedings in opposition should be like which it is currently emphasising. The emphasis has been necessary because there has been criticism of this aspect of opposition proceedings ^[94] . This model is being promulgated through a training program, ChOral ^[95] which is attempting to harmonise practice across oral proceedings. The goals of this model opposition are:

• proceedings should be competent and efficient;

• parties should leave feeling that they have had a fair hearing (e.g. not only that the hearing was fair but that it was perceived to be so);

• that the chairman should take a role between passive/aggressive and should be seen to be actively listening constructively to the parties, while not allowing irrelevant evidence to be brought in to the process.

One aspect of the opposition proceedings which is not found in typical UK proceedings is that, at the beginning of the oral proceedings, the chairman will present the view of the Opposition Division. I was told that this was a procedure which had recently been brought in, and that it had arisen from a suggestion made by a UK patent attorneys. The point of this procedure is that, since oral proceedings are the final step of the process, it is right (and efficient) that the parties should have a clear view of where they must apply pressure to change the views of the Opposition Division.

Another aspect which is not typically found in the UK is that the Opposition Division will try, wherever possible, to announce a decision shortly after oral proceedings (the examiners will immediately retire after these proceedings). It is not always possible to do this: sometimes new documents are only presented at the oral proceedings and the opposing party must have the opportunity to discuss this; where a patent has to be amended, if the client is not present, the changes must be agreed with the client and this cannot be done until later. Sometimes no decision is possible because the issues have not been sufficiently clarified before oral proceedings: in this case "it is the fault of the Opposition Division for calling them too soon."

Oral proceedings are difficult to arrange. They have to be set up some time in advance with all parties (and witnesses) available. For those patent attorneys who do not live in Munich, it is obviously beneficial to be able to arrange one or more meetings/oppositions for each visit to Munich.

8 Appeal

Appeals within the EPO relate to the non-award of patent or to various other procedural matters ^[96] . They are handled by a separate Directorate (DG3) which is composed of extremely experienced examiners. There are three kinds of appellate boards: technical, legal and enlarged ^[97] . The latter is a 'final board' of appeal - and can sometimes (at request of the President) include national patent judges ^[98] - which can be initiated in one of three ways:

• if a Board of Appeal feels there is a point of law which needs consideration;

• if a party to appeal requests and is supported by the Board of Appeal;

• by the President of the EPO.

It acts, as Art 112 suggests, to "ensure uniform application of the law, or if an important point of law arises".

The appeal system is basically open to clients who wish to appeal against any aspect of the EPO's procedure, from the Receiving Section to the conduct of Oppositions. As an indication of the level of workload, the figures for 1996 are:

Technical Appeals	Legal Appeals	Enlarged
1120	30	7

For applicants, it will (as the figures indicate) be the Technical Appeal Boards which they will most likely meet - though, the chances are not high: against 1120 technical appeals there were, in total, over 86,000 applications filed in 1996. Around half of these appeals were allowed (in part at least) and around one quarter were dismissed ^[99] .

It is important to note that, unlike the Opposition procedure, the appeal procedures are free from the influence of the original examiners. Here, the appellant has a chance to restate his case to a fresh panel rather than try to persuade those who have taken a decision that they were incorrect or failed to understand an important point.

9 The Patent Co-operation Treaty (PCT) Route

While the EP system is aimed at providing a community wide patent for its European member states, there have been attempts at harmonisation at the international level for some considerable time. The World Intellectual Property Organisation (WIPO) has been extremely active in these attempts. The Patent Co-operation Treaty is one such outcome of their international harmonisation attempts. It is a Treaty which is aimed, eventually, at providing a world-wide path to patent. At present it has around 70 member states who accord with the PCT procedure.

While the eventual aim is global, the PCT route has been described as a "work saving arrangement" ^[100] whereby an applicant can apply for a bundle of patents through one single application. The procedure, in outline ^[101] , works as follows:

1. The applicant files an application in PCT form with the national office in which the applicant is resident

2. An 'international search' ^[102] is carried out by an International Search Authority (the EPO is one such authority) and this search report is sent to the applicant.

3. From 30 months after the priority date examination can be carried out. At this point the applicant must provide translations into the relevant languages for the chosen countries where the patent is desired to have effect. Costs for examination also become due at this point and other related fees (such as for representatives) become payable.

4. First stage examination ^[103] can be carried out (International Preliminary Examination) by an International Preliminary Examination Authority - once again the EPO is such an authority. A national authority can require this to be carried out nationally. If a patent is awarded, it is done through final examination by the national patent office.

The effect of this administrative scheme is that the applicant can start off an international process for very limited costs ^[104] . The applicant's priority is ensured, a high quality search report will be made available, and only after 30 months does any real decision have to be made about whether the patent application will go forward and in which countries it is worth-while for the applicant to consider protection. The popularity of this PCT route can be seen from the increasing number of applications. It is an advantageous route for national offices because the expensive parts of the process (search and initial examination) are carried out elsewhere. However, it has been suggested that the costs of work done by the EPO are not fully met by the fees charged under the PCT procedure, and that this rival patenting procedure is in effect being subsidised by EPO patent applicants who do not use the system.

Advantages to the applicants, apart from gaining priority ^[105] , are:

• the maximum costs of designating all countries in the world is the same as designating 10 countries. This means that an applicant can designate all countries in the world at application time and then delete from this list those in which he is not interested later;

• 'Europe' can be designated as one country.

• Where the examination ('Chapter II' procedure) is carried out by the EPO, it will usually be the same examiner who will look at this later in the European 'regional phase' and will be unlikely to change his mind.

• Fees for examination and designation are not paid at time of application. This means that the applicant pays only a small sum at the beginning of the procedure and will not lose money if the application is dropped (after a negative search report, say).

One problem with the PCT route is that it is highly formalised with regard to time limits. National Offices are under no duty or obligation to warn applicants that documents have not yet been filed or translations provided.

Research by the EPO for the Business Plan ^[106] notes that there are a number of advantages to the different 'applicant blocks' who use the PCT route - the US, in particular who use this route much more frequently than do the Japanese. In the US, the applicant can use his own patent attorney (rather than one registered with the EPI) and still get the high quality search performed by the EPO. Japanese applicants, the research argues, find the PCT route 'expensive and complicated' and the EPO does not expect any increase in PCT application from this block for some years.

In my research at the EPO I met two differing views of PCT. One was that it was clearly a rival to the European Patent and thus, if not a bad thing, at least should be viewed suspiciously. The other was that it was just another tool which the EPO was able to offer the applicant. However, the success of PCT may well adversely affect the financial circumstances of the EPO, since many of the costs to the applicant can be held off until late in the application process, and if the applicant decides not to go ahead with the application, money can be saved. This cannot be done with the European Patent where the costs must be paid at the beginning of the process.

The PCT route is becoming more attractive to users due to these advantages, and application numbers continue to increase each year. For 1996, 52.5% of the total filings at the EPO were Euro-PCT. The European Patent applications increased only 1.1% over 1995's figures, whilst for PCT applications, the increase was 18%.

10 Conclusions

The success of the EPO and its European Patent can clearly be seen from the differences in the numbers of applicants expected prior to the system starting and those which have actually been received at the EPO. It should be noted, however, that a large percentage of the applications come from the US and Japan. These two countries were awarded around 47% of all European patents in 1996, with 3.8% being awarded to other non-contracting states. This means that about 50% of European patents are held by non-European inventors or industries.

The success has come with a certain amount of praise. Armitage, as a former Comptroller of Patents at the UK Patent Office, has written:

No expense was spared as the system was aimed to give a greater assurance than ever before that patents would be granted fairly and, once granted, would be valid. With the principle of absolute novelty went a search by multi-lingual staff of a wider collection of uniformly-classified patent documents than can normally be attempted by a national Patent Office. Then examination, though undertaken by individual examiners, had to be confirmed by trios of examiners, normally of different nationalities. The whole was to be overseen by independent appeal bodies sitting in impressive groups of between 3 and 7 people. ... Finally, it must be said that the EPO has operated on an admirable principle of openness and in the conviction that, given good inventions, the job of a Patent Office is to grant patents, not to conjure up reasons for refusing them. ^[107]

Despite, however, the Rolls Royce standard, there have been criticisms of the EPO and its product. We look at these in following chapters.

Chapter 4: The European Patent Attorney

1 Introduction

A patent office - whether European or National - sets a hurdle which must be passed by applicants desiring a patent. The hurdle is composed mainly, as described earlier, of a finding of novelty and the finding of an inventive step in applications. Though most patent applications - even if they pass over this hurdle and are granted by the relevant office - will never be commercially worked, at the application stage the applicant is obviously hopeful that some commercial advantage will arise. The patent office therefore can be seen as a barrier to potential profitability. Thus, despite the fact that it has the more positive role of actually awarding a protective right, applicants can see it in a much more negative one - that of denying them profitable monopoly rights.

The value of a patent is not in its abstract idea; rather it is in the protective implementation of that idea. This means that to be a useful patent it has to prevent the invention being implemented by other manufacturers, rather than simply lay claim to the invention: a patent attorney would always prefer to try to protect a screw in a machine if that machine could not work without the screw, rather than patent a new machine. The reasoning is clear: without access to the screw other manufacturers would be unable to work the idea, but with a new idea there is always difficulty in deciding just which part of the implemented idea to protect to stop circumvention of the protected elements. Other manufacturers are fully entitled to try to find a path which will allow manufacture around the patent.

The patent attorney, then, is at the hub of a process where he is acting in the interests of the commercial client, trying to persuade the examiners of the patent office that the application clearly jumps the hurdles. Persuasion is at the heart of the attorney's expertise. As one German patent attorney expressed it:

"When I have a new trainee, on his first day I tell him ... two things. The first is you do exactly the same when writing a story - you collect the facts and you must give them a structure, the structure of the claims. And if you are a good author, then that is the first requirement. The technical element you can learn form the person who comes to you - there is no need to know anything about the topic you are working on. But then when preparing a case you have to convince the examiner of the merits of the invention. And that is not a point of technical ability but of psychology."

2 Professional Training and Examination

Though clients can represent themselves before the EPO ^[108] to act for clients, the attorney must ^[109] appear on a list maintained by the EPO. In fact this list is maintained by a professional body ^[110] , The European Patent Institute, which was set up to act as a professional body representing 'European Patent Attorneys'. Annual fees (around 350 DM) must ^[111] be paid to this body in order for the individual attorney to be able to act for clients. Most attorneys find little difficulty with this, but one German attorney was particularly opposed to this body and its imposed powers:

"The EPI is the most flagrant breach of generally accepted international rules in existence. It is a monster which should not be there. It is unbelievable. It is incredible. Because it is an organisation to which everyone must belong - you have no choice - and the EPI has objects and tasks not by its own choice or by decision of its members. All of this was created on a governmental basis in the contract which formed the EPO. So when the governments created the EPO they also created a professional organisation to which I must belong; which governs what I do, how I display my services, how I treat my clients and how I co-operate with my colleagues; which forces me to pay an annual contribution. All this was done by a few governments who formed a multi-national treaty."

It should also be noted that shortly after the introduction of this centralised agency to ensure the standard of professional behaviour ^[112] the UK Government ironically took a different tack ^[113] and suggested that the way forward for the patent profession was via a liberal attitude to representation, rather than the European model with tight constraints.

There have been two clear paths towards the role of European Patent Attorney. The first is the so-called 'grandfather clause' ^[114] which allows patent attorneys from member states to become European Attorneys on that state's ratification of the EPC. Most EPAs on the list of the EPI arrived through this clause (the average age of EPAs is around 50 years). The second path is by means of examination ^[115] - the European Qualifying Examination ^[116] and most current entrants to the EPI now take this latter path. Given the age profile of current EPAs, in order to keep the numbers of representatives at the current level, large numbers of new EPAs will be required over the next decade.

Candidates for the examination require a technical degree and a full-time training period in one of the member states ^[117] of three years duration where supervision is provided by an EPA. The examination is held over three days (but can be taken in two blocks) and looks to both practical and legal aspects of the examinee's knowledge.

In Paper A, the examinee is expected to draft independent claims giving the applicant maximum valid protection and which have a reasonable chance of being accepted on 'inventive step' and form grounds. In Paper B, the examinee is expected to draft a reply to an official letter from a substantive examiner. The letter will discuss and contain arguments relating to prior art. Amendments put forward in this letter should be in an acceptable format and accord with the EPC. In Paper C, a letter is drawn up dealing with representation of an opponent at Opposition, complying with Article 100 (grounds for opposition) and Rule 55 (notice of opposition). The successful paper here is one which deals with all possible grounds for opposition.

The final paper, Paper D dealing with legal aspects, is considered the most difficult by candidates and the advice to examinees is to "prepare well before enrolling for the exam". It is accepted that supervision of candidates in their full-time training does not usually include legal aspects, so the candidates are very much on their own in preparing for this paper.

It has two parts: (i) Questions directed to legal knowledge where the examinee is expected to use formal legal citations in a brief and to-the-point manner; (ii) the candidate must draft a legal opinion in reply to a client requesting advice. Paper D deals with various rights of applicants, third-party rights, PCT, CPC, Paris Convention and the laws of the EPC contracting states.

The examination results are closely investigated ^[118] and are the object of much discussion. From analysis of these results, the 'perfect candidate' would be: British, a chemist, female, aged 25-30 and work in a patent attorney's practice rather than in industry. There are pressures from candidates to increase the percentage who pass, and pressures from the existing membership of the EPI to keep standards high and entry low: they note, for example, that the relevant pass rate in Japan is 3% ^[119].

3 Skills of the Patent Attorney

The Qualifying Examination indicates that legal skills are the least developed skills of young patent attorneys - the education of technical students at university is completely different from that of a law school, and it is not surprising that chemists, engineers and electronics engineers have problems with Paper D. We have already suggested that persuasion of and negotiation with substantive examiners is one of the most important skills which the attorney must have, but there are others. Obviously administration is important, given the importance of deadlines in the patenting process, but client contact, technical knowledge and commercial understanding are necessary too. The following surveyed factors are indications of which skills the patent attorney derives pleasure from and defines what the profession offers its membership:

contact with new science;

technical understanding;

legal aspects;

litigation;

client contact

The survey information ^[120] shows that litigation is the least liked of the list (Figure 1). Over 35% of the total sample put this in 5^th place, while only 14% put it in first place. The two most popular choices were, first, technical understanding and, second, contact with new science. Legal aspects were liked slightly more than client contact. The results were generally in line for each of the three surveyed countries, though 26% in DE put legal aspects as first choice at while NL and UK put this option first at 13%). These results are not hard to believe. Those who become patent attorneys will have received a technical education at some earlier point in their career. When they could have chosen to study law at university, they have instead chosen some scientific discipline and have only turned to law when it is in a technical framework.

Figure 1

Patent work is an international field and requires language skills in order that the attorney can represent clients with different languages. It is clear that patent attorneys in Europe, with the exception of the UK, claim extremely good language skills (Figure 2). Almost 100% of the sample claimed competence in English, while NL attorneys also claimed a high expertise in German. French was also spoken, and surprisingly, some German attorneys claimed competence in Russian. Only 2 attorneys in the sample spoke Japanese despite the large amount of associate work being received from Japan.

Figure 2

English is the language of patent communication. This was supported in interview. It was suggested by one German attorney that Japanese find it easier to communicate, using English, with German attorneys rather than with UK attorneys. The German who suggested this believed that both German and Japanese worked with a smaller, more basic subset of English and that this made communication easier for the Japanese client. This suggestion may, of course, be related to the competition for work, below.

With only some 10% of UK attorneys speaking a foreign language, the stereotype of the poor foreign language ability of the British seems to be true.

It is possible for attorneys to have the necessary skills to work in more than one technical field and around half of the attorneys in the survey have a second technical field (usually mechanical). It is also possible to have a third technical field, but only a minority have this (e.g. 16% in the UK, 13% in DE and 19% in NL). It is more likely that the attorney will have a third technical field if he works in private practice. This is understandable, since in industry it is common for an industrial concern to be mostly concerned with one technical field and industrial attorneys will usually work in that area and no other.

4 Employment Location of Patent Attorneys

There are basically three locations for the patent attorney after the training and examination periods have been successfully completed. These are private practice (as an employee, a partner or as a sole practitioner) or in industry or in government service. The survey results are as in Figure 4.

Figure 3

Germany, in these results, has a higher percentage of sole practitioners than either the UK or NL while NL has a higher percentage of industrial practitioners. It is interesting that of those in private practice, most are partners. This is significantly different from the situation in general law work, where we have seen a rise in the percentages of employed lawyers and difficulties in younger lawyers becoming partners in their firms. Government employs a negligible percentage of European patent attorneys. Note that the profession in Germany is much closer to the legal profession - patent attorneys in private practice are frequently members of legal firms. This is not usual in the UK.

Salaries appear to be higher in private practice than in industry. It may also be - but no evidence is available - the case that industrial attorneys are under more work pressure than their private counterparts. Usually those attorneys who indicated that they could not participate in interviews came from industry and suggested that shortage of time was the major factor in their decision. There were suggestions that private practice was the most attractive location for those looking for future careers:

"Every second physics student these days wants to be a patent attorney. They all think that patent attorneys roll about in money and drive big cars - the ideal fat cat."

However, private practice was also considered a relatively uncertain place for potential attorneys to receive their training. One Munich attorney stated:

"In these bigger firms here, they sometimes have 20 trainees and no-one cares for them. They are just translators. Cheap translators. They never get hired after they have passed their examinations - they just get sacked and a new set of trainees are hired. They are not given proper training. It is a bigger problem in Munich than in Britain. ... We have some firms with 5 attorneys and 20 trainees. The trainees never get feedback, never see the result of what they have done, never get a corrected version of their work. By private training and effort they manage to survive the examination, but you can imagine when they become attorneys what kind of picture they have of what work is. Some of them have never handled a trademark. Some have only worked on pre-prepared applications."

5 Clients and Workload

There are three distinct sources of client for the patent attorney. First is the direct client, by which is meant the industrial concern who directly approaches the attorney. Second, is the client who is an associate patent attorney who acts as an intermediary between the industrial concern and the patent attorney. And third is the client who is an employer with their own patent department. Each of these client types has advantages and disadvantages to the attorney:

5.1 Direct clients

The advantage to the patent attorney of having direct clients is that the work is the most interesting. Direct clients are usually SMEs and would not usually have an in-house patent department: however, patent departments will use outside attorneys when there is too much work in-house. The attorney will be responsible for taking the raw inventive idea from the firm and moulding it into a form suitable for gaining protection. The attorney will have direct input to influencing the patent strategy of the direct client.

Mostly, especially with smaller firms, the disadvantage of working with this client is that there is very little understanding of the nature of the patenting process and that the patent attorney must explain the various options and costs. In my interviews, I consistently was told that these clients in particular want to be educated about patents and need to be educated and that education becomes a continuing factor in the relationship with the firm:

"with small clients - whether the owner is responsible or managers - then you are a co-operating member of the firm."

Even with larger firms some education is required:

"with the big firm where you only have contact with an average level within the firm and mostly with one or two persons, after filing three or four cases, they are not experts but they are not far away from that."

The type of education required is broad. It can be necessary to explain the very basics: what a patent is and the problems associated with litigation and enforcement of patent protection. But, also it is usually necessary to explain the available patent routes and their respective costs. And, as a representative of a firm dealing mainly with medium sized direct clients suggested, even those who are patent minded and use the patent system can be aware that they need help in understanding and finding prior art:

"Clients usually don't know the prior art very well - they don't have a good idea of the international prior art. Clients have partial knowledge in their particular field ... They have esoteric knowledge but it is not in depth and they know it. Clients expect the search to tell them more. I don't have one client who believes that he knows the state of the art in his field."

Given the challenges and intellectual rewards which arise from working with the direct client mean that such work is always welcomed for its intrinsic interest.

5.2 The Associate

The associate is an attorney, usually, in a different country. He has much closer contact with the original client, and utilises the attorney only to carry out some function which cannot be carried out himself - for example, representing a client at the EPO if the attorney is from, say, Japan or the US. Also, when a European patent enters the national phase, there is a requirement for translations to be prepared and this may be carried out for an associate by the attorney (either in-house or via a translation agency) ^[121].

The attorney has less work to do for each application when it is received from an associate. The gist of the specification has already been prepared, and the claims have been decided upon. However, the format of claims is different in each of the three major patenting systems and it is usually the case that - even if the claims are not to be amended in substance - that they must be amended in form before they can be accepted by the examiner (e.g. the EPO requires a maximum of 10 claims per application ^[122] , but the US does not have this limit). However, there are time pressures which impinge and mean that work from an associate is frequently carried out in haste. One trainee attorney who was usually given work from associate's to carry out suggested:

"From our point of view it's usually a time factor - you sometimes get three filings on one day and there's no way that we can sit down, if we received that new pile the day before, and have only a couple of days to cut the number of claims to ten. We just don't get the time."

In this case the attorney will simply forward the offending application to the EPO and sort out the format of the claims later. It is not unknown to have applications which contain both US claims and restated EP claims. No doubt the European claims have not been worked over as well as the US claims and the European attorney is afraid of losing protection from hasty re-drafting.

The distance between the attorney and the original client means that the attorney working for the associate can be kept in the dark as to why applications are forwarded for processing at such a late date. These can be that clients do not know whether they want to proceed but:

"Often we don't really know the reason why because its come through our US office. Possibly it's a cost factor or because everyone has so much work to do that it is running on the last terms. We invariably get filings in the last priority month."

There is also a tendency for such work to be seen as low level work which requires little thought from the attorney. Where the client is an unknown quantity, the attorney cannot know how far he should push in trying to get as broad claims as possible.

"People from the sausage factories have an approach which is totally different [to those trying to get broad protection for clients]. Their only function is to file in the EPO a ready made case that they get already prepared, convey the examiner's reaction to Japan, incorporate the Japanese reaction into a written form here and file. They are mailmen. They never have conflicts with examiners because there is nothing they could have a conflict about; except in the rare case where everything in the specifications has been totally anticipated and the client wants a patent nonetheless.

In Munich practically everyone works for foreign associates who have already written their application. He always gets less than was claimed - a minus. But that is not his problem. It is someone else's client and someone else has to explain this. ... The patent attorney is only a mediator, a broker. That makes a hell of difference - whether you fight for your own client or you just get orders."

However, this is a highly profitable area of work for attorneys and most of it arrives in Europe via either Germany or the UK. Many firms are almost totally reliant upon a workload from associates - in London or Munich, it may be that as much as 95% of the firm's work is provided by associates.

5.3 The Employer

The attorney who is employed in an industrial concern is unlikely to have the career opportunities of private practice: a partnership in the firm is not likely since it will only be the relatively large industrial concern which has a patent department. Usually, the attorney will have a more limited area of technical invention to oversee than the attorney who is in private practice. This, of course, is due to the nature of industrial concerns which tend to emphasise a smaller number of product areas. In larger patent departments (those of the multi-nationals) the patent attorney may well be responsible for only one small section of technology. For example, within an electronics field, he might have responsibility for inventions in optical-storage areas, looking only at these inventions over a wide product range.

What comes from working in a patent department is akin to working with direct clients, but having an input into the marketing, litigation and licensing strategy of the firm. One attorney from a multi-national suggested:

"I think in general it is more interesting [in industry] but it depends upon the industry. We see not only the construction of patent applications on the basis of an idea but we are also involved in the selection and in the application of patents by licensing. The possibility of licensing is a factor in whether or not we file for an invention. But pay is a point - we have different responsibilities. We have to decide during the patent's life whether or not the patent is still usable. All those decisions are usually made by the client of a private practice. Colleagues in private practice don't see that at all. Once in a while a senior partner in a practice is asked for assistance in licensing."

The firm with a patent department will more likely be aware of the commercial worth of patents. Usually, patent decisions (e.g. which inventions to support, in which countries) are made in collaboration with the R&D and marketing departments. The firm will have a relatively clear annual budget for patenting, and it will be up to the joint group to decide how to spend this: which patents to license, which patents to cross licence with competitors, the attitude to take with patent infringers (licence or litigate, perhaps).

Whereas with direct clients, where much time is spent on education and explanation of the basics of what can be protected, in the patent department the attorney will have everyday communication with his inventors and can expect them (via, perhaps, the R&D manager) to provide more potential inventions that the company will wish to support. He can support them by providing patent information, carrying out basic prior art search etc. Information can also be passed to R&D about possible patent oppositions. In many ways, the attorney in industry is his own client and can take important commercial decisions during the building of the company's patent portfolio.

However, given these seeming advantages to the attorney, it is generally the case that working in industry is seen to be less attractive than working in private practice. I was told that it is easier to find a position in industry (which advertises more frequently for attorneys) than in private practice. In private practice the financial rewards can be greater. However, one attorney suggested that it is the nature of the workload in private practice which attracts the young attorney:

"In a company, there is more emphasis on technical knowledge and technical experience. It is larger and more specialised and there is more emphasis upon the technical knowledge - that is the situation here. That is why many patent attorneys in [this multinational] are a little bit older when they start - most have gained technical experience before they move into the patent department - and are usually 35 to 40 years old. Young people do not have that experience. So they see that as a barrier.

Private practice is more dynamic and appeals more to younger people. Mostly in our office we sit at our desks and we are too busy reading and writing. For a person who is 25 that is more difficult. Although we do in principal the same things as in a private practice, it is a little bit more dynamic. You have inventions from different clients - they can travel to them. Inherently it is less specialised, with a broader field."

Certainly, one factor found during arranging interviews for this research, which supports this 'dynamic argument' was the high level of travel involved in private practice. It was very common for interviews to be postponed until trips to Japan or the US had been undertaken. No such problem was met when attempting to arrange interviews in industrial settings.

The attorney in private practice will tend - when preparing applications rather than amending them - to be working with companies with a limited range of products. This will not be so marked in industrial practice: often a large range of products are being produced, so that the attorney is more concerned with protecting an idea (which can be used in a range of products) and also looking to the continued development of that idea and its use in future products:

"I have the impression that smaller companies try to protect the product but, at least in my field, we want to protect enormous parts of the technology in our field, because we must have a package for our license discussions. We are not just protecting the product, but we must have as much as possible around it. We are always running into threats from other companies and must have something to exchange. We squeeze as much out of a claim as is possible to protect a large spread of products."

6 Competition for Clients

The attorney in industrial practice has his clients on his doorstep. Usually they come directly to him, and he will carry out an education programme so that they understand the kind of ideas which are appropriate for patenting and protection. There is - formally - no competition for clients. However, the danger exists that the clients in the research departments may begin to consider themselves knowledgeable enough to carry out the patenting process themselves, in which case the client becomes the competition. Such competition has to be terminated since, in the wider sense of things, a patent portfolio is too important to be fragmented:

"We cannot do our jobs properly if our inventors make the decisions on patenting without consulting us. Therefore, we would like to see an upper limit on their understanding of the patent system. Of course, we can't forbid them gaining knowledge, and they will gain that knowledge. But we would like them to exercise their knowledge in consultation with us because we have the experience and a general overview of the company's activities. And we try to co-ordinate similar activities in different fields. So if we are negotiating with a company on a certain subject and you want to approach that same company about a different subject, there is bound to be some interference between the two negotiations. If you have - effectively - a lot of small companies working on their own, you cannot have that co-ordination."

However, the attorney in industry is his own client. The barriers between the attorney and the owner of intellectual property disappear here, and the notion of competition is redundant: it is unlikely that he will be preparing applications for his firm's competitors.

The private practitioner is in a very different position. Work arises from external clients and external clients can - if they wish - simply pass this work onto any number of other attorneys. It is also possible - as happened to one Munich firm which I interviewed - that a major direct client decides to set up it's own in-house patent department and removes its workload from private practice altogether. Such an occurrence is potentially catastrophic if the workload is not spread across a number of clients.

Smaller attorney's firms - particularly those with direct clients - can have long standing relationships with these firms where a measure of trust is built up. It is not uncommon for attorneys in this situation to continue working long after normal retirement age, but working at a lesser pace and with a more limited number of clients. Small firms who use patent protection with some regularity appear to like the continuity of contact with the same attorney.

In Ireland, the recent introduction of the EP system upset the prior situation where most attorneys were working for firms and for associates who wished to gain protection in Ireland through the Irish Patent Office. Much of this work was lost on entry to the EP system ^[123] , and one firm of attorneys decided that work could perhaps be acquired by looking to the lone inventor and marketed itself accordingly. But this type of workload can be problematical:

"We also wanted to help individuals so we hit upon a whole new system which is a 'Private Inventor Protection Package'. We will do nothing until they give us £450. Once we have that, we consider the invention and send them a report. 90% is standard, telling them how to commercialise their invention. We also, in that report, say 'You should go ahead' or 'You should not go ahead' or 'We await your instructions'. We also say if you decide not to go ahead we will give you all your money back. If they do go ahead, we charge them £450 (no matter what the actual cost). The interesting thing is that there are some we just send the money back to and say there is no point in going ahead with this, it is not a patentable invention. They hand back the cheque and say, 'Please go ahead'. You should see our files - they are screamingly funny - but we cannot get the people to take the money back. We say, nothing here, nothing patentable ... and they immediately think you are trying to steal their invention."

But for much work - particularly that coming from the US and Japan - there is intense competition, particularly from London and Munich. The difference between these two cultures was noted by many attorneys as having an effect upon which location the foreign clients preferred (US law being part of the Anglo-American tradition and Japanese law related to German). One from London suggested that:

"The UK attorney does not simply see his job as acting as an intermediary between the client and the office. He sees his job as acting in his client's interest and fighting aggressively for his client's interest. I suspect that the Germans think of themselves more as a negotiator between the office and the client. I think also the basis in this country is adversarial and we tend to be more aggressive than in Europe."

and that US clients prefer UK attorneys whose view is closer to their own legal culture:

"I've never seen US clients move from UK to German attorneys but I've seen it the other way around where the client has been using a German agent and wasn't happy: believing that their interests were not being properly looked after."

However, there were just as many German attorneys who would argue that the move of US work from London to Munich was more normal. One German attorney suggested that the UK attorneys had problems with examiners at the EPO (and UK attorneys do complain most of all to the EPO about examiners) simply due to their attitude:

"UK patent attorneys would surprise me if they wrote a polite letter. This [rudeness] is not done here. UK patent attorneys are attacking, but examiners who are not British might be negatively affected."

The profitability of this large bulk of work from outside Europe is looked at with some envy by those in the smaller countries - Greece, Spain, etc.. - and there have been some suggestions from attorneys in those countries that this work should be shared more evenly. This idea is, of course, laughed at by the attorneys in Munich and London.

7 What Do Clients Want from Patent Attorneys

Clients obviously want patent protection from their attorneys, but this is too simplistic an answer to the question of what clients want. The role of the attorney could be extremely wide. Indeed the revision to the legislation governing UK attorneys ^[124] was brought in because there were arguments that the profession was not offering services which were wide enough to clients (e.g. commercial advice).

The findings here are that there is very little request for advisory commercial information from attorneys. Most attorneys do not feel able to provide this advice and prefer to simply set out the various routes and costs to the client and let the client decide which route is most appropriate. A frequent reply I received was, "It is not the job of the patent attorney to give, for example, marketing advice".

A number of factors of client need were surveyed, both for whether they were offered by the attorney and whether they were used by the client. These were:

analysis of potential value of patent;

prior search of patent literature;

analysis of EPO v National route;

Translation of patent upon award

We will return to the information regarding patent route and translation later. For now, it is enough to conclude that, with regard to:

(i) value of patent: around 50% of patent attorneys claim they would always or usually offer this as a service to clients, while 60% of clients of these attorneys would always or usually make use of this service (i.e. around 35% of clients make use of this information). No indication, of course, can be got from the questionnaire of just what sort of advice is given - it may be minimal. In the case of work for associate clients it is unlikely to be offered or given.

(ii) search of patent literature: It is only the NL where more than 50% of attorneys would offer prior search of patent literature before an application. This high percentage may be due to the higher percentage of NL attorneys from the sample who work in industry. In the UK and DE, less than 25% would always offer this as a service, while only around 40% would usually offer this service. Clients, however, who were offered this service seem to be relatively keen on it (67% of those offered would always or usually make use of it).

The survey information does not accord completely with the interview information. In interviews, most attorneys stated that they did not offer prior patent search, rather awaiting the search report from the relevant patent office. It was only in Ireland where much patenting activity is government supported (and requires evidence of inventive worth for funding), in large multi-nationals ^[125] , and in several smaller isolated private practices dealing with direct clients that I found much prior patent search.

The questionnaire also requested information pertaining to factors that the attorney thought most appreciated by the client. The factors specified were:

(i) well constructed claims: Strikingly, while there is mostly a similar pattern found in most DE and UK responses, to this element, the German attorneys suggested that this was the most important factor in 43% of the responses while the UK suggested only14%. UK attorneys put this factor 2^nd and 3^rd in 38% of responses while the DE attorneys suggested 31% at these points.

(ii) cost effective service: All attorneys put this factor high on their list. Around 25% of all attorneys put this aspect first.

(iii) good advice about route: Once again, the German responses were out of line with the UK and NL responses with 51% of DE attorneys putting it in either 1^st or 2^nd place against 8% of UK attorneys. In the NL, none put this in 1^st place.

(iv) advice about final cost: Despite the constant reference to cost of the patenting process by both applicant and patent attorney, this factor appears relatively low down the list of factors. For example, 31% of the total responses placed it in 6^th or 7^th position.

(iv) pre-application research: Once again, this factor appeared relatively low in the priority of factors with a slight tendency for the UK and NL attorneys to put it lower than the DE attorneys.

(v) attorney taking responsibility for whole process: This factor is highly important to all attorneys. The total of those putting this in first place was 47% with a higher figure from the UK (56%) than DE (40%) and NL (44%).

(vi) interpretation of search report: Interpretation of the search report is, as we have seen, an important part of deciding whether any client should go on with the process. It appeared as a factor of middle importance in the view of the attorneys.

These indications are not too distant from the evidence provided in interview. It is clear that there is some difference between the DE and UK approaches to route. We look at these later. The element of cost is not particularly surprising from the comments made in interview - the general attitude being that a professional service was being provided to clients and clients were aware that professional services were to be paid for a professional prices. Price, in this context, would not therefore be an over-riding factor.

Information was also gleaned about the cost to the client of preparing applications for Europe and for the national office. Some suggestions have been made that the EPI confers a monopoly situation upon attorneys of which they are not slow to take advantage. The attorneys suggest this is not always the case. While few charge more for national work than for European work, around 50% of those responding claimed that the costs were about the same ^[126] .

Patent attorneys do not only prepare applications in patent work: clients require advice from attorneys on patent matters. On one occasion an interview was interrupted by a phone call to my interviewee from a client firm who had received a letter claiming that a new product brought to the market (with a very expensive advertising campaign) was infringing a patent. The attorney has to be able to provide advice on the worth of the allegations and possible costs.

And attorneys have to use their skills and knowledge to reduce costs to clients. One attorney I interviewed was - during the interview - taking phone calls to arrange payment of a client's fees from a bank account in Italy. The fluctuation in the exchange rate meant that paying from this account (rather than one in Munich) would save the client money, and not doubt help to keep the client happy with the attorney.

8 Information Needs and Sources

Any 'knowledge worker' - as patent attorneys are - potentially requires access to information on a variety of levels. For the attorney there is a need for an updating service as the law and procedure controlling his function changes and there is a need for materials to allow access required information to carry out every-day tasks. The attorney is a cross between a technician and a lawyer and thus could have two differing information needs.

In visiting attorneys for interview, I saw many different libraries and offices. These covered the spectrum: small, smoke-yellowed offices furnished with old scientific textbooks to large libraries in new office blocks supporting a large number of attorneys. Most offices had some legal texts and some scientific resources, but what was surprising was how few had computer-based access to information, given their technical backgrounds. Few attorneys were able to, from their office, carry out searches of patent information. Only one attorney I interviewed had a computer on his desk ^[127].

Some attorneys believed that a collection of older technical books was a distinct advantage in their work. These books could, I was told, contain valuable arguments which might be used in opposition. Being older they might contain prior art which is not available to the examiner. One example of this was an German industrial attorney working in medical optics who suggested that the early technical advances in German optics were particularly valuable here. Others told me that, especially for the non-specialist attorney, a wide range of technical books would act as an introduction to any area (and that age of book was no bar to usefulness). Given this basic, historical understanding, the attorney could make sense out of the inventor's idea and try to put it into some reasonably coherent form.

What was also surprising was the spread of legal knowledge across the profession: it too covered the spectrum, with some attorneys relatively aware of developments and others not so. A specific example which was met over and over again was the recently introduced rule which prevented introduction of materials to oppositions at too late a date ^[128] . I heard complaints about this practice (usually because it had been used against the attorney) but a large proportion of these attorneys were not aware of this rule change, despite it being a relatively important one. At the other end of the spectrum are those attorneys who write articles with a high level of legal understanding for the trade and academic journals. One attorney who was interviewed was author of a standard text on chemical patents which had gone through two editions and was about to go into a third. Another had written a short text on the PCT route and yet another interviewee appears regularly in the European Intellectual Property Review.

This whole area of professional knowledge and knowledge sources is a complicated one. In the work of the general European lawyer, research has found that lawyers do little legal research for their clients ^[129] and most legal knowledge is routine and procedural. This explains the lack of take-up of legal information systems in Europe ^[130] . I suspect that, for most patent attorneys, it is the same. Most knowledge used in day to day activities are routine and based upon understanding gained through experience and practice rather than researched for new cases.

From the survey information, some indications can be gathered about the general usefulness of the differing kinds of information sources available to the attorney. The ranking of these information sources is as follows:

• European Patent Office decisions

• National legal decisions

• Patent journals

• Technical journals

• Trade journals

It is highly demonstrative of the importance of the EPO, that for all information sources, EPO decisions appear at the top of the list.

For access to patent information, hard copy is by far the most useful (UK: 31%; DE: 38%; NL 28% chose this as most important), on-line access is next favoured (being put in first place by UK 29%; DE 17% and NL 22%). CD-ROM is least favourite method of accessing this information in the UK (with 13%) and DE (19%). In NL it may be the higher percentage of industrial respondents in the survey reflects that access to CD-ROM is easier in industry. The questionnaire suggests, for 28% of the NL respondents, that CD-ROM is the most important access method.

9 Numbers of Applications

It would be wrong to give the impression that the attorney necessarily produces patent application after patent application. There are some who indicated in the questionnaire response that they filed a high number (one suggested 840 prior and 414 new application, but there must be more than a suspicion that this covered the office output rather than his own. Such problems are the bane of the questionnaire analyst) but most attorneys prepare only a handful of new applications per year. Most claimed, that 'within the past 6 months' they had prepared less than 10 - see Figure 4.

There must be some suspicion about the higher figures involved here. It may be that there are individuals who are simply 'mailmen' and file as many applications as a postman delivers letters, but it is difficult to believe that one individual could file over 200 applications (even though these are prepared elsewhere) in 6 months.

Figure 4

10 Conclusion

This chapter paints a picture of a small but active community of specialist lawyers. Their skills are - like those of the everyday lawyer - one of the keeping clients by keeping clients happy. However, whereas the lawyer usually covers a wide area of social problems (crime, family disputes etc..) the patent attorney usually covers a wide area of technical problem. And in-house patent attorneys seem to be much like in-house lawyers in that for a more commercially inclined practice they give up the wider area of practice that the private lawyer expects.

My interviews dealt solely with patent practice. This does not mean that attorneys are only interested in this work or that their work is purely the preparation of applications. Many also do work in Trademarks and offer clients advice in other areas of intellectual property.

Lawyers in general practice, are litigation minded (though they almost always prefer negotiation to litigation). This is not the situation with patent attorneys. In my interviews I only found one attorney who was interested in litigation (and had built a practice primarily dedicated to this). However, it could be argued that the advocacy which the lawyer uses in front of a judge is the same sort which is used against the patent examiner.

The reader of texts on the sociology of lawyers will find much in common with the description above of the European Patent Attorney. What will not be found so much, however, is that the EPA is far more of an international player than the general lawyer.

Chapter 5: Attorney Perceptions of the European Patent System

1 Introduction

In the Chapter 3, we looked at the goals of the European patent system - a system which was to serve industry by providing a single mechanism for the examination and granting of patents throughout the member countries. In many ways, the system has shown itself to have been highly successful - applications quickly exceeded the expected number; the number of member states who signed the European Patent Convention continues to increase; and the 'philosophical' influence of the European Patent Office upon the national legal systems continues to grow substantially.

However, there are criticisms of the European patent system. Some have suggested that it does not really fulfil the aim to which it was originally directed: low cost, pan-European protection, for example, and argue it is most suitable for multi-national industries. There are also criticisms of the procedures used at the EPO.

Surprisingly, the European Patent Office has been little studied by researchers using socio-legal techniques and we are left with a situation where much of the comment upon the European patent system is without proper evidential support. In this chapter we begin to remedy this defect, looking at evidence ^[131] culled from the patent attorney profession concerning the system as it operates. Attorneys are not, of course, the only participants in the system. But they are one of the most important elements. They translate the desires of the applicant into reality - idea into patent - and stand, therefore, at a very important point in the system. The view of attorneys is thus highly important and deserve discussion. The reader must bear in mind that the goal of the attorney is to achieve a positive result for their client: in such an environment we must expect a measure of conflict between examiner and attorney, and for this to be demonstrated in the evidence provided. Having said that, the general conclusion is that attorneys are generally satisfied with the operation of the European patent system.

It is important to recognise that the philosophy behind this research is that while rules of law are certainly important, much more important in understanding these rules of law is the need to investigate the participants in a legal system. The fundamental unit of legal knowledge is the legal actor, not the legal rule. Without an understanding of the actors and how they mould law and interpret law to fit their daily tasks, we cannot really understand that law.

2 Communication with the EPO

Communication is at the heart of the patent attorney's relationship with a patent office. The role of the attorney is to represent his client's interest in as positive manner as possible. Simply forwarding applications and waiting to hear the final result is not enough - the attorney must, if performed properly, be able to get feedback from the patent office and negotiate with the examiner as to how best to push forward his client's claims. Below, we look in more detail at the oral hearings and oppositions which are part of this process. However, one basic aspect is just how well the attorney sees simple communication with the Office. This is important because the EPO is an international agency which is not physically represented in individual countries. All communication is with the office in Munich (since, rarely, is there any communication with search examination in the Hague).

Generally, those interviewed found little problem in communicating with the EPO. Language was, by and large, not a major problem - though some suggested that some examiners were not as adept in all three languages as they ought to be. On the whole, though, there was a view that the EPO tried to ease access to attorneys - helping them, for example, plan several meetings for one trip to Munich.

The questionnaire results indicate little difference between the national offices (Figure 2) and the EPO (Figure 1) in this regard. The only difference of significance is that less communication is to be found between the attorney in the Netherlands and their national office (50% positing no view).

Figure 1

Figure 2

It was interesting that the UK patent office had moved to a more distant location from its historic site in the centre of London. It was argued by UK attorneys that this move had not actually made communication more difficult - rather the reverse. The argument was that by moving to Newport, the old, unfriendly support staff had been lost and the new staff were more prepared to be helpful. The examiners, it was suggested, had always been relatively approachable and that their move to Newport had not affected the service that attorneys received. Of course, many patent attorneys in the UK have always been remote from London.

This evidence seems to suggest that basing the EPO in Munich has not caused substantial problems. There are attorneys - particularly in industry - who complain about the extra costs of travel to Munich, but these complaints do not seem unduly pervasive within the profession at large.

3 Search and Examination

3.1 Examination Teams

The EPO is novel in the patent world in that it uses teams of examiners to carry out substantive examination of applications, rather than single examiners. This has been described in Chapter 3, above. Interviewees were asked whether they believed that this system made much difference to the prosecution of patents at the EPO. Views differed. Some considered that the work was carried out by one member of the team and that rarely would others properly understand the invention. Others suggested that it was the case that, particularly in problem applications, the team would act in agreement with each other. Usually those who felt the system was working noted that they would be told by an examiner that, say, changes to claims agreed would have to be agreed by the other members of the team. This was taken as strong evidence that there was a measure of consultation - especially when the examiner would inform the attorney that the proposed changes were not agreed by his colleagues.

It was usually in oral proceedings that the attorney would discover whether there was a joint approach to the problem. One sceptical German attorney suggested that the internal politics and culture of the EPO seemed to act against the proper functioning of the three man team, and cited oral proceedings for his evidence:

"[In oral proceedings] the primary examiner reports on his own previous actions. You have a chairman and a minute writer. The minute writer hates the proceedings because he doesn't get any points for it. He just sits there and tries to get it over as fast as he can with as little writing as necessary. And the chairman in a lot of cases will keep out of things because he doesn't want to annoy the examiner. So if the [joint, team] influence is there, it will be before you get to oral proceedings. There will be cases when the primary examiner takes the case to his colleagues and some might say, I think you are wrong. This might happen, but this would have the effect of making examination in the EPO homogeneous. But nothing is further from the truth - in the EPO you get everything from people who use a formalistic approach to the point of saying if it isn't in the same terms in the prior art document I will grant it. The other extreme is the examiners who will only grant a patent if it shows a surprising effect ..."

But in general, there was a belief that the system could operate effectively, but not with the regularity that one might suppose from the importance given to the three man teams in the EPC. If there are positive effects - as many believed there are - it is in that extremely wrong decisions are avoided, but only these. There was no belief amongst attorneys that full and meaningful joint consultation took place on every application allocated to a team.

3.2 Speed of Patent Prosecution

Speed is a potentially important element in patenting since the system is, at heart, intimately connected with commercial and marketing considerations. Slow patent granting may, at the worst, mean that when a patent is eventually granted, the commercial worth of the development may have been substantially undermined by lost sales which are difficult to recoup by the patent holder ^[132] . And, for the legal process, too slow examination can have unwelcome effects. One of the main arguments which Jacob put against the European system in 1993 was that national litigation could be substantially held up by awaiting the termination of the patent granting procedure:

I am afraid [the EPO's] idea of a fast track is still very slow. The clear position now is that if you want a patent fast then the national route is the way to go. A recent dramatic example is the Genentech tpA patent. The Opposition Division has just reached a conclusion on the opposition. The appeal is still to come. Yet this is essentially the same case as was heard and determined by our High Court in 1987 and our Court of Appeal in 1988. Oppositions are not academic disputes: industry cannot afford to wait like this. ^[133]

Of course, it is not clear that speed of the procedure is necessarily a black and white question. There are two elements in the examination procedure - the speed of search which is the time taken to produce the initial information on relevant documents and the speed of examination which is the time between completion of the search report and either grant or refusal of the application. This latter speed of examination is further composed of the time taken for first office action (where the applicant can get some indication of the examiner's view of the application) and final decision. And finally, though not dealt with in this study, is the period until any appeal which might be made through the EPO's appellate system is actually heard and written decisions provided. It is the time to opposition and appeal which particularly concerned Jacob.

The search report is the first piece of information to be returned to the patent applicant and it is really only with receipt of this that the applicant can begin to consider whether the patent might be granted and be potentially valuable. Applicants rely upon the search report because they do not usually have the facility to carry out prior pre-application searches themselves. One German attorney, describing his advice to clients - which appears to be the standard technique - suggested that pre-application search work was of little real value, and that it was better to simply file and await the search report:

"I usually advise, if the client wants a patent, not to make a prior search because on the one hand this holds up the whole procedure and he loses priority and on the other hand the German patent office makes a very fine search for 200 DM on a patent application. To prepare a good search theme or issue is nearly as time consuming as preparing an application so I usually draft and file the patent application and immediately ask for a search by the German patent office. After 6 months I get a search report and the client then gets a very extensive report from me in which I say according to this search report you have the following chances ..... Claim 1 will be affected, but if we include claims 2 and 3 then it will be a good patent. So we can either file a German patent application or go ahead with foreign applications. If the client wants the latter, I usually try to force the number of countries down because they want more. I ask them whether they have calculated how much of their produce they must sell in order to support the cost of the patent. Also for Europe I usually recommend not more than 5 or 6 countries: that is one of the advantages of our common market - if you have blocked the biggest 3 or 4 countries, it is completely useless to manufacture or sell things. Only in very special cases do you need more than 10 countries. I usually do it only under protest."

There is evidence that a speedy search report is a highly important factor in - at least - some patent applications and, according to some EPO employees, provided a major reason why the PCT route was preferred (3 months against, originally, 9 months) rather than EPO direct applications. At the time of interviewing, however, the EPO was able to provide a search report through both PCT and EPO in near equivalent times. This ability to 'compete' against the PCT times will, of course, depend upon workloads at any point in time.

It is possible to request both a faster search and a faster examination through the EPO. It seems that while the former is requested the latter is rarely so. This tends to indicate that applicant's approach to examination is not so time sensitive as their approach to initial searching. The evidence demonstrates that in choice of patent route, speed of search is a particularly important factor.

The general view of national and EPO search times are given in Figure 3.:

Figure 3

The EPO figures are generally satisfactory, but not quite as positive as those given for the national offices (Figure 4). The interviewees generally were aware of the fact that it was possible to have a speeded up search report prepared by the EPO, but few in the interview sample seemed to make much use of this procedure.

Figure 4

3.3 Standard of Search

There was very little divergence in attitude to the standard of search provided by the EPO. It was consistently considered by interviewees to be of a very high standard. Usually some such statement as, 'very high quality', or 'no problem' was used in interview. This is attested to by the questionnaire responses (Figure 5)

Figure 5

The standard of the national search was less satisfactory (Figure 6), but generally the view appears to be that since it usually costs less, the standard expected must be less.

Figure 6

3.4 Speed of Examination

For the time taken to complete the examination process, the questionnaire figures (Figure 7 and 8) indicated that there was a general level of satisfaction with the speed of examination, but that a proportion were also unhappy at the length of time taken by both the national and EPO offices. It is particularly the UK attorneys who are most unhappy with the EPO's speed of examination, yet there is little difference between the German and UK attitudes to their national offices.

Figure 7

Figure 8

In interview, the time to examination was rarely put to me as a particular problem. In many cases, it was considered an advantage to have a slower examination time: as we see below in the discussion of claims. One attorney in industry who generally liked the PCT approach suggested:

"Sometimes, if speed is important, we will use EPO and request a speeded examination. The PCT route is not particularly quick."

The general view gathered from interview was that speed of examination was rarely a problem. If this was urgently required, then it could be arranged, but for most applications the urgent information was usually the search report, because upon this was based the strategic decision of whether to continue with the application and by which route.

Finally, with regard to the time the whole process takes, there was a higher level of satisfaction with the national office rather than EPO 'time to patent award' (which provides a view of the total time taken from filing of the application to eventual grant). The figures are:

Time to Patent Award	Very Satisfied	Generally Satisfied	Satisfied	Generally Unhappy	Very Unhappy	No View Given
EPO:
UK	1%	13%	26%	41%	12%	7%
DE	3%	18%	39%	25%	5%	9%
NL	0%	16%	59%	16%	9%	0%
National:
UK	7%	32%	39%	8%	1%	15%
DE	11%	28%	29%	22%	4%	5%
NL	0%	3%	13%	28%	6%	50%

Note that the Netherlands view is not in line with the German and UK views. Also note that UK attorneys are slightly more positive about their national office than the German attorneys and their national office. These figures are, generally, a restatement of the views held on speed, quality, and cost of the different offices.

3.5 Examination and Inventive Step

The level of inventive step in the EPO, it was generally agreed by attorneys, was first, a comprise between the German and UK levels. Second, that the compromise level of the EPO had the effect of drawing the German and UK levels closer to this compromise level: prior to the inception of the EPO the levels as found in the national offices had been relatively far apart but the EPO had caused a levelling of the playing field and, generally, the two had been brought much closer together. Third, there was some measure of disagreement - from German attorneys - over just where the German level stood, some suggesting it was still much higher than others believed:

"It is true that it is more to do with individual examiners. But nevertheless the examination at the EPO is not as hard as the national examination if you take an average."

Another German attorney suggested:

"I think at present the levels [at the EPO] of inventive step are higher than they were at the start. In the beginning they patented nearly everything. Now they have adopted a stronger point of view which in some aspects is more formal than substantive as in the German office. It may be even now a bit lower than in national applications, but it depends - even in the national office - on just who the examiner is. Nevertheless, I have US clients who have asked me to file in German national and in all other countries of the European system because their clients have said we need an examination at the German national office in order to be sure it really is an invention. This was not my feeling , but the feeling of the US client. ... But all these procedures end with a German national patent. Different ways to achieve something which is considered equal but which is not equal."

Importantly, though, these views on the national vs. EPO level were seen as representing the general level. At the specific level of each individual patent application, attorneys did not believe that they could predict what the individual examiner would posit as being the level of invention with regard to that application. This position was consistently put: that the German level was higher than the EPO level, and the UK level was lower, but that this general level was consistently a poor indicator for the specific case in hand. This view, of course, is not total. Some attorneys - a minority in those spoken to - were confident that the general level allowed prediction of result. One UK attorney particularly interested in licensing issues believed that the breadth of claims at the UK office were broader - and less likely to be upheld in litigation - due to the lower level of inventive step:

"The UK office is a bit easy on inventive step. If anything it is too low. That gives me a dilemma when I have to decide (having got both UK and EPO applications through) which I am going to keep on. I have to say do I take the broader claims which are less likely to be valid and hope that the national court will uphold them when it comes to it or do I just go for the European one which will have slightly narrower claims on the same background information (which are more dependable) and have the administrative convenience of giving us the same scope everywhere. Obviously this is commercially tricky because you want to know what scope they are licensing everywhere and if they are the same everywhere then that makes sense to them and gives them the confidence that they know what they are about."

But another took the view that despite a general difference in level of inventive step, there was not much to choose between the UK office and the EPO:

"If anything [inventive step at the UK office] is lower. But as far as I can see, in the way that the examiner's mind works when tackling a problem, in the UK office - though they don't have the EPO guidelines - they are asking much the same questions. So it is much of a muchness as to the issue of prosecuting between one office and another."

With regard to the individual examiner, although many interviewees suggested that they did pay attention to his nationality and sometimes suggested that nationality was important, they also stated that nationality was never a final predictor of the level of invention required by the examiners at the EPO. Nationality was presumed to describe the 'patent culture' of the examiner - either from a culture with a high level of inventive step or from one which was registration based. It was frequently put to me that this was 'just a suspicion'. The following German attorney is an example of this type of tendency in belief:

"Whichever patent office you deal with you can always come across an examiner who will dig his heels in and as far as you can see is just not listening to your arguments. It is unfortunate that - if the client can't finance an appeal to get around such a blockage - you have to accept what he says. Those are the only two alternatives. It is not just a problem of the EPO but it is perhaps one which happens - or at least there is a suspicion that it may happen - more frequently in the EPO because of the constituency of the examiners. It may be bias on my part but if you have a German examiner there is a danger that they will demand a higher level of inventive step. But again that is just certain individuals - other German examiners are perfectly reasonable. Other nationalities might by unreasonable but not with quite the same frequency."

Yet no attorney who posited this nationality-bias towards inventive level presented it as a simple black/white situation. They all immediately followed up by pointing out that they knew German examiners who were more flexible than, say, Italian examiners and Spanish examiners who were harder to convince on inventive step than Dutch examiners - the latter ought to have set the highest level.

The level of inventive step is not just a factor which is derived from pressure in one direction (that is, from the patent office) but can be, to an extent, manipulated by the attorneys themselves. The decisions about which inventions to push forcefully must arise from considerations about what is 'obviously' an invention and what one might be lucky to get protection for. As I was told on more than one occasion, the attorney was sometimes surprised at receiving protection and sometimes astonished that he did not. One ex-director of the EPO who had, in retirement, started a consultancy for firms wanting advice with the more complicated legal and technical aspects of application suggested that the examiners in the EPO were aware of the pressures from attorney's reflecting the national levels of inventive step: that they believe that UK patent attorneys are trying to force the level down while the German attorneys are trying to force the level up. This can be seen from the questionnaire data ^[134] in Figure 9 and 10.

Figure 9

Figure 10

Little evidence was gleaned from interviewees who would, on consideration of the application, choose patent route accordingly. The clear conclusion from this research is that most attorneys have difficulty in predicting, in individual cases, the views of the substantive examiner. This usually precludes choosing different patent routes for particular applications (i.e. patenting certain sorts of inventions through given national offices) for the bulk of their inventions.

This research thus confirms (and extends) that of the Leberl Study initiated by the EPO ^[135] . Leberl looked at the level of inventive step and claims in the field of chemistry. He found that:

"The simple fact is that the level at which the inventive step requirement is pitched varies from one national office to another; but within each office, standards can vary considerably depending on the examiner handling the case."

Chemistry - despite its reputation for having its 'own patent law' and its own problems ^[136] - is no different from that of the other areas of inventive activity. All offices - national or European - are viewed by attorneys as having an internal harmonising problem. Further, as Leberl concluded, although harmonising internally could help, there could be no objective means of measuring inventive step apart from that of satisfaction from users. His study - and this study - show a general satisfaction with this from applicants.

There was however, a belief among some attorneys that for some sorts of inventions, it was much more likely to get them past an EPO examiner than one at the German office. These sorts of inventions were, for example, ones where the science was not commonly agreed upon - electronic devices to reduce calcification in domestic water pipes, were given as one example. It was also argued to me by a few attorneys that those inventions which would be unlikely to lead to opposition and industrial use (referred to by one attorney as 'nonsense' inventions) would find an easier passage through any patent office, since it would be unlikely that any dispute would ever arise over the patent due to its lack of inherent commercial worth ^[137] . The examiner could thus take a less robust attitude to them. Other attorneys suggested to me that they didn't deal in such nonsense inventions, but that they might imagine this to be the case. Such beliefs may well be apocryphal - since no attorney gave me an example from their own case load demonstrating this.

Another area was that of applications dealing with software inventions ^[138] where it was suggested that the EPO was the appropriate office to deal with such matter. However, software, it was argued by one industrial attorney working for a multi-national computer company in Germany was particularly problematical to some examiners:

"If you are talking to examiners who specialise in the field of GO6F (which is the group for computers, basically) the patent examiners there are very much aware of the current case law from the EPO Boards of Appeal and it is very difficult to pull wool over their eyes. With newer ones, or less cynical ones you can. I mean, older examiners also tend to be much more restrictive than younger examiners. With older examiners you certainly can't pull the wool over their eyes, sometimes with the younger ones you can. When you are talking about examiners who specialise in other technical fields, in which computers are increasingly being used they are certainly not as aware of the case law of the EPO Boards of Appeal. In many cases, as a patent attorney, you are obliged to cite the relevant case law at them because their first attitude is to look in the negative catalogue of Article 54 and to say, computer programs are not patentable, I'm going to reject your invention. I then come back with [list of cases] ... Then they often turn completely to the other direction and can have the wool pulled over their eyes without really thinking is there a technical problem behind this, is the attorney just clothing the claim in useless hardware features in order to disguise the software invention (the non-patentable software invention behind it). Those examiners are much more susceptible to manipulation."

Software is a particularly interesting area at present, since there is a problem of searching where the field lacks a standard terminology. Software is also difficult to analyse, since programs are impossible to reverse engineer to their original programmed state (though they can be analysed at the assembly language level). This latter problem will not be helped by recent EU attempts to limit engineering. However, only one attorney in the interview sample worked directly with these kinds of questions.

The special nature of inventive step in relation to chemical applications was noted by one London attorney who argued that the main difference between the UK office and the EPO with regard to such applications was that the EPO required more experimental data, rather than a difference in level itself:

"On the chemical side, a new chemical is invented by virtue of its properties not by virtue by its newness and it is the recognition of the properties of the new chemical which are important. The problem comes when it comes to inventive step on the chemical side, is what do you need to do to establish that it has those properties. In the traditional, old fashioned English way of examination, if you wrote into your specification, 'Compound X has important activity in treating the common cold', then that was taken at face value and so long as X or something similar had not been suggested for treating of the common cold then that was sufficient to establish inventive step. What tends to happen in the EPO is they tend to ask for experimental data to support that assertion and its just a matter of difference in emphasis, it is just a difference in how much you need to prove about the inventive level."

The questionnaire evidence on the satisfaction with both the EPO and National examinations shows a general evenness of view towards both offices from attorneys (Figures 11 and 12). This arises, I believe, from the fact that the attorney - when he negotiates over an application - is working with an individual examiner rather than an office and believes that examiners throughout the patent offices discussed, do try to apply the procedures in as fair a way as they can. Some attorneys do have problems with individual examiners but, for most, the examiner is not simply acting as a barrier to patent protection per se. As can be seen, the very difficult task of examination (from both the national office and EPO) is viewed very favourably by almost all attorneys.

Figure 11

Figure 12

However, the interview material did throw up a number of complaints - both about the EPO and the national offices. For example, one interviewee suggested that at the German national office, female examiners were more difficult to deal with because they had a more difficult time at that office with regard to status. Their lack of confidence in their role caused problems with attorneys. At the EPO there were complaints about lack of seriousness and, sometimes, competency. However, over the interviewees as a whole, the general view was that examiners were not necessarily unhelpful or obstructive. That is confirmed by the questionnaire responses.

While, as discussed above, most did not see the high standard of EPO search as being anything apart from an advantage - particularly in that it meant that there was a lesser chance of prior art being discovered at a later stage in the process (though this was never ruled out by attorneys as a possible eventuality), one London attorney felt that there were problems inherent in having too good a search report since, once this search information was considered in substantive examination, it tended to remove the reality of the person 'skilled in the art' from the procedure. He gave an example of the effect that prior art which was removed from the field of application could have on discussions of inventive step:

"We're throwing the baby out with the bath water. For harmonisation and for objectivity -the EPO's arguments - does it mean that people who have made real inventions are having their patents revoked? I have seen it happen. I had a case last year ... where the patent related to an ileostomy coupling and this was a coupling which had a particular arrangement. The prior art which was ultimately cited in front of the Board of Appeal was a Japanese utility model which related to a coupling for a fuel pipe in an engine - there were structural similarities - but as far as inventive step, there is absolutely no way that somebody working in the field of ileostomy couplings is going to look at a document relating to couplings in fuel pipes in an engine, because they are just totally divorced fields. When this argument was put to the Board - with 2 German and 1 Dutch board members - the Dutch member said we have to take an objective view of inventive step. Therefore the invention is obvious. I cannot understand that decision - it was wrong to my mind, very wrong. They were looking at it strictly from a structural point of view rather than from the point of view of the application. You need to think about the skilled man and his expertise and suchlike, but the approach taken by the EPO in that case was not a very practical way of looking at inventive step."

The problem, to this attorney, is that the EPO was applying a more formal examination procedure than he considered desirable in that they were considering absolute novelty to be more important than novelty in that particular technical field. When novelty is decided on absolute criteria, the millions of documents which are available to the EPO searcher all become relevant. Yet the 'man skilled in the art' in one particular technical field can never be expected to have that kind of information access to all technical fields and thus 'novelty' in his field is being sacrificed to a wider concept of 'novelty'. In effect, the criticism is that looking for absolute novelty is too formal a way of deciding novelty. The accusation of 'formalism' in EPO examination was one which was met from a large number of attorneys in interview. Of course, under the EPC ^[139] , "the state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way" which does not preclude - in fact it tends to support - a highly formalistic examination of what should be considered relevant 'prior art' during substantive examination. One attorney suggested that, "novelty matters more to the EPO than inventive step" because - in the formal way of doing things - the concept of novelty was easier to work with than that of invention over prior art.

This accusation was taken further by one London agent who suggested that the emphasis upon absolute novelty was actually undermining the examination process:

"I had a patent revoked by the High Court but reinstated by the Court of Appeal. The claims were held invalid by the High Court on the basis of a little bit of red netting which was made in Argentina in the early 70s. No-one would have found that in an examination. So then you can say - 'What's the point of all this examination?' - it is damaging to the patentee because you have a citation saying there and he'll amend his claim away from it and then eventually something is found in Argentina which is there. So he has made completely the wrong amendment because he didn't know the closest prior art.

I had another patent in the 70s which was revoked by the High Court but which was reinstated in the CoA. It was on a separator for oil and petrol in a petrol station forecourt sewage system. And that was revoked because of something that was buried in the ground in Essex. And again the same point, you would never have found that in an examination, so why are we spending these huge sums to have patents examined. These are specialist things but in the whole of the engineering field the closest prior art is probably not in the patent specification, its probably in a journal or a paper or more likely in something that someone has done. I do seriously question the detailed examination and the huge costs to us all."

This seems to sum up a general attitude amongst the profession - that the real unknown in patent granting and revocation is the prior art which is belatedly discovered. It is certainly one of the most effective ways to undermine a commercial opponent's patent. One German industrial attorney I spoke to indicated that he kept a large stock of old German textbooks covering the field of optics, since he sometimes found that examiners did not have access to this information and he had been able to provide - in opposition - effective prior art from these texts.

The US view of examination at the EPO is interesting, indicating that it is viewed positively by those outside Europe. The figures from the GAO study ^[140] are:

Quality of Examination	Very Satisfied	Generally Satisfied	Neither Satisfied nor dissatisfied	Generally dissatisfied	Very dissatisfied
USPTO	3.7%	57.0%	20.0%	18.1%	1.1%
Japanese PO	2.9%	34.6%	39.9%	18.5%	4.1%
EPO	20.6%	63.0%	14.1%	2.3%	0.0%

The extremely high level of satisfaction with examination at the EPO can be seen by the fact that almost 85% of respondents in this US study were either very satisfied or generally satisfied with the EPO examination.

Though judges were not interviewed as part of the main element of this research, some were. One German judge expressed the view - as found in London, too - that judges did not pay much attention to where a patent actually came from. They looked at it 'from scratch':

"When they come to you in the court with any kind of patent, European or a national, you can make no difference between them. You look at the patent: is it strong or not strong - not whether it is European or national."

Though this judge was one who thought that, sometimes, EPO patents did not have such a high level of inventive step as at the German office. However, he did not allow this general belief to affect his investigation of the validity of each specific patent which was being litigated.

3.6 The Problem and Solution Approach

The problem and solution approach has already been discussed in Chapter 3. It is a technique used in substantive examination which offers some hope of a more objective finding of 'inventive step' than other approaches. The EPO's examiner's Guidelines ^[141] lay out three steps which are part of the problem/solution approach ^[142]:

1. determining the closest prior art,

2 establishing the technical problem to be solved, and

3. considering whether or not the claimed invention, starting from the closest prior art and the technical problem, would have been obvious to the skilled person.

The closest prior art is that which derives from one (usually documentary) reference. This closest prior art is considered to be only that which was available at the time of the applicant's filing. The technical problem to be solved is found by deciding what technical features differ between the claimed invention and that one piece of closest prior art. The 'technical problem' is the technical effect(s) that the invention provides over this closest prior art. It may be that this technical problem, as found by the substantive examiner, differs from that specified in the filed application: if so, the filed problem is reformulated.

As has already been mentioned, this procedure has much support within the EPO. Following on from the Leberl Study, discussed above, the EPO have approved this approach as offering significant advantages in internal harmonisation ^[143] . In the profession, the support is not so positive. It is understood to be an attempt to provide a means of aiding examiners, but it is perceived that this benefit to the examiner is sometimes at the expense of the applicant.

On the one hand, the problem and solution approach is seen to be useful by many attorneys, since it does provide a mechanism within which they can prepare their claims in a format which they know will be well received by the examiner. On the other hand, however, there is a worry that the approach is too clinical and that, sometimes, it can be difficult to mould an invention into the requirements of the EPO's examiners. The criticism is that the problem/solution approach can be too formalistic. Certainly, it is clear that inventions are not formal entities, and they must be constructed out of the materials available - space left by prior art and the demands of the EPO's problem solution approach being only two of these materials. One German trainee attorney described her difficulty in working with the concept and trying to mould the invention to both fit the problem/solution approach and the prior art:

"You can't discuss inventive step until you have novelty. You have to prove that first, or you can't proceed. I still have difficulty with it myself - I can see that it is novel and the EPO examiners approach it a bit narrowly with their problem and solution approach. The two part form where you take away the thing which is known in one particular prior art document and what is supposedly new has to have its inventiveness argued over the art. The difficulty that I have is that - and I don't know whether it is a difficulty or just one I'm having in my learning process - you literally then have to argue the inventiveness of that new bit over the art which is being cited and I don't see that is necessarily where the invention has been made. Its a bit like unfortunately this art turned up and our bit which is left over is this - and it is difficult to argue the inventiveness of that bit that already entails the combination."

And another London attorney, who was by and large happy with the examination at the EPO, suggested that the tendency to objective examination techniques was not as practical as it should be:

"The thing about level of inventive step which I find difficult is that it is not a very practical approach - it is very formalistic, this problem and solution - is fine in theory but it is not how inventions come about. The EPO are looking at inventive step possibly 10 years after the event, when they have all the prior art in front of them and they take this artificial approach of selecting from the prior art what they think is the closest prior art document. But that selection is based on hindsight. It is made in the knowledge of the invention."

Obviously, the problem/solution approach is one which attempts to overcome the problems of ex post facto analysis, despite what this latter attorney suggests. All inventions are looked at some time after the event of invention, and no procedure could ever put the examiner perfectly into the role of the inventor (though see below). The charge which was being made was certainly one of formalism - that the procedure was too rigid and not linked to the inventive act. This criticism was certainly consistently made, but very difficult to pin down. Attorneys were asked, whenever they suggested formalism, to provide an actual example of it from their caseload. Few were able to do so, and the feeling that I gained through interview was that they felt there was a quality to some applications which should have been recognised as 'inventive' but which was not being so recognised by the substantive examiner. But just what this quality was, was very difficult to adjudge: perhaps it was simply the gut feeling that an inventor had been inventive, but was not being rewarded by the system. Every system of reward, no doubt, has a measure of unfairness: it may be that the problem/solution approach was being viewed as the cause of unfairness in the system, when actually the more fundamental cause was the EPC's stated desire of absolute novelty.

The type of research strategy which was undertaken in this project did not really enable a clearer picture of what was happening to be found. A technique which looked at specific cases and discussed these with the participants may well have wielded more insight. This lack of ability to get to the bottom of these criticisms, and determine their worth, is unfortunate since the problem/solution approach is the essence of substantive examination.

One attorney suggested that the way around potentially formalistic examination procedures was the radical solution of making the examiner work with the same materials as the inventor:

"The only way to make a patent examination really objective is to file the application in two envelopes. One which is open cites the prior art and the problem; the other closed envelope contains the solution. The examine has to look to all prior art and then if he finds a solution he can reject the invention. If he doesn't find it .... then you can even adopt a higher level of inventive step because our low level of inventive step is a compensation for the fact that a patent applicant does not represent real life. No inventor has the whole prior art of the last 100 years in his head (or even before it) and therefore he is not directed towards certain things. So as compensation, inventive step is put lower than a man in the art would really prize. The average man skilled in the art is an omniscient idiot. He knows everything but his means of combination are very low."

But such a position was not, I think, put with any real belief in its potential implementation. And, of course, the examiner would be in a very much better (ex post facto) position to produce the inventive step himself, looking at an idea which may be several years old.

In conclusion, is the problem/solution approach a problem itself? Though the charge of formalism through this approach was made by many attorneys, it did not appear to me to be seen as a damning criticism of the entire examination procedure. The attorneys simply had to accept this approach and try, wherever possible, to mould whatever invention they were describing into the format required by the examiners. If they could manage this - all was well - but for those difficult applications, more thought and effort was required to make the idea 'fit' the examiners' desires.

3.7 Claims

It is the responsibility of the EPO to ensure that granted patents are clear ^[144] and sufficient ^[145]. The reason for these requirements are obvious - that the informational element of the patent is usable by those who refer to patents. Of course, 'clarity' and 'sufficiency' are flexible concepts - ultimately the responsibility of the Boards of Appeal - and these aspects of a patent which covers a complex area depends upon the background understanding of the reader. The reader is presumed to be a reader 'skilled in the art'.

There are substantial reasons to believe that applicants frequently try to produce claims which do not have the clarity which the system might wish. There are indications that the patent profession believe that one of their proper aims, for the client, is to act against the requirement of claim clarity. There are several reasons which might explain this. For example:

• The patent might not be granted and - on publication of the application after 18 months - too precise an explanation will have been given to the industrial opposition without benefit to the applicant.

• Even if granted, the function of the patent to the applicant is one of protection rather than advertising its research and development to rivals.

• A claim which is too clear might, to the applicant, appear too narrow.

An example of the latter - having claims which are flexible (unclear?) enough to be moulded and altered in focus - came from an industrial patent agent who was aware that he had to protect his products from competition rather than get less useful protection which could be worked around by those competitors. He suggested that he would exchange speed of patenting for this flexibility any time. He spoke of the need to change claims during the substantive examination process and this necessitated keeping an eye on what infringers were doing: "I am not interested in a quick examination, but I want time." Claims can, of course, be changed right up to and including opposition proceedings.

No doubt in particular circumstances there are more reasons why clarity is not provided fully by the applicant. EPO training, relating to clarity and sufficiency, treat a number of factors which might cause a lack of clarity in granted patents for which the examiner must be on the look-out. These cover grammar, structural confusions in claims (for example, incorporating concealed further claims) and other problems. The required clarity and sufficiency levels is, of course, set by the examiners.

Of those 'problems' met by attorneys the narrowing of claims by examiners is one most frequently met, since the examiner might well be of the opinion that the broad claims which are contained in the application are not inventive over the prior art, but more narrowly based ones could be. It was, indeed, a common complaint from interviewed attorneys that they were offered claims which they felt were narrower than the applicant deserved. One attorney with a Dutch industrial firm described the pressures on those in private practice, which he felt able to withstand:

"If we have a letter from an examiner saying that he will agree to the application so long as we make certain changes, I will look at the recommendations. If a few small amendments are made to the claims and now it is allowable, The first thing I do is check, "Do they comprise any undue restrictions. I have no hesitation whatsoever in just writing a letter, I do not agree ... If a private attorney receives a letter stating that a patent will be granted, all he has to do is to agree. He can then charge the client Fl xyz with no more effort. We, however, do this [reply and argue] regularly. If my first letter is a grant, then I think I have done something wrong - my claim is too narrow - let's check it again ....."

Another more controversial 'problem' would be the allowing of extending of claims which went beyond the disclosure contained in the application. This would, in effect, be allowing the applicant, ex post facto, to extend his property rights well after application. Such extension of rights is specifically not permitted by Art 123(2) of the EPC. Brandi-Dohrn ^[146] suggests that the 'unduly broad claim' is to be found in EPO patents where the claims are not supported by the description in the application. I found no incidence of attorneys who claimed that they had been allowed 'unduly broad claims' ^[147] . Indeed there are criticisms that the EPO is too restrictive in this matter - particularly in allowing amendments - and some suggest more flexibility should be allowed. After all, this argument went, the inventor is being rewarded for his idea and should have rightful protection against infringement which goes beyond the 'spirit' and implied meaning of the application. This is particularly the view from the German position:

"In the [German] national practice you can go more to the real point of the invention independent of the structure of the original filed claims. At the EPO you are really restricted - bound - to the original claims. That is one major difference. There are other differences which are more favourable to the applicant; for instance, unity. At the EPO, generally, if you pay the fee for a large number of sub-claims beyond 10, and since the subclass are protected only in combination with claim 1 or something derived therefrom, you will not have more scope of protection but only more detailed protection for the cases which might arise later. So they don't look very much towards unity - not as strongly as the national patent office. Very often I have a first office action at the national patent office ... and then it states that 'Your application contains six different inventions. With respect to invention 1 and 2 I have these citations, but I have not examined the other claims.' From a decision of Mr Häusser, President of the German Patent Office, I can ask for suspension of further examination until the final decision is received from the EPO [if Germany is designated]. So I file exactly the same application [with the EPO] and receive no objection at all with respect to unity."

The questionnaire derived figures indicate that (i) EPO claims allowed are satisfactory, but with a minority believing they are too broad (Figure 13); and (ii) that EPO claim amendments are, broadly, satisfactory but with a minority believing that they are too narrow (Figure 14).

Figure 13

Figure 14

Responses for attitude to 'national claims allowed' indicated broad satisfaction but a minority of UK attorneys (around 25%) believing their national office was allowing claims that were too broad, and a minority of German attorneys (around 25%, again) believing that their national office was too narrow in allowing claims. The responses for the attitude to 'national office amendments allowed' suggested that most were satisfied with what was allowed.

However, for those with a keen litigation awareness, broad claims are one thing, but it is far preferable to have claims which will withstand litigation:

"I always think about potential litigation. Its fundamental. That's what its all about - it's like insurance. Having a heart attack in the US will cost you £30,000. The chances are slight but you make sure that you are covered. It is exactly the same on the patent. I say to people in training - you've got to think of this patent going to the House of Lords. Just occasionally, someone wants a 'keep off the grass patent' which is one which you know is pretty dodgy but it lets you waive it around, but all my clients want something which is a valid legal instrument. This doesn't mean to say that I don't draft claims which are broad - I try in my drafting to achieve the most you could get. You may have to narrow it down but it means it will cover things which take the inventive idea at least onto paper."

Negotiation over claims is at the very heart of the patenting process. For the applicant, broad claims are usually to be welcomed. But for the opponent (and opponents are usually applicants, too) the broad claim means that competitors are gaining wider protection than is justified.

3.8 BEST

Views on the BEST project were relatively tentative - the project had only recently been considered a success by the EPO and there was some hesitation about making too many predictions about how it would develop in future. Indeed, many attorneys interviewed had little information on the success or otherwise of the BEST project, though all knew something of it. Some were positive, suggesting that it might reduce costs. Of those who felt that it could be problematical, the main reason for being opposed - or worrying about the method - was that it could introduce the unwanted 'hunting effect' which was a negative aspect of , for example, the German examination system. The 'hunting effect' is when the examiner is carrying out the search with a potential bias from his role of examiner: that is, he is actively hunting through the search file for prior art to support his initial view on substantive examination, rather than searching with no clearly held view on the substantive merits of the application.

The division between search examiner and substantive examiner was seen by many to be one of the positive aspects of the present EPO methodology:

"The EPO examination is usually better because there is not the 'hunting effect' - the examiner is not hunting but is more like a judge who sits between the examiner and the applicant. His mind is better balanced than if he is both hunter and judge. The best search report is the most complete and bringing out all the things because for my client it is even worse if I should come to court later and then the deadly reference is cited. I like it much more to find it in the patent office and can then argue against the examiner, or I can say to my client, forget it and then he has saved costs and problems."

And another argued that the hunting effect was currently to be found in those examiners under the BEST approach:

"At the moment I hate it. I think it is not the BEST but the worst project. ... All those applications under the BEST project are examined much more severely and that leads to an imbalance in the whole system. With the old system, you have a reasonable certainty - if I get the EPO report I can say that I have the material on which the substantive examination can rely. I can argue against all these documents. So you have a chance of 80/20%. If I don't come to a completely unreasonable examiner I will take the application through. You don't have this in BEST examination because the examiner, if you make an argument, always cites a new document so it can go on and on."

And an opposing view was that it would not make much of a difference in practice, anyway:

"I don't think it will make much difference. A good examiner in Munich who finds there is something wrong with the search will do his own searching. Although there are very few who do that, I have seen it done. A good examiner will not just say 'My colleague in the Hague gave me this, and if this doesn't do the trick I will grant the patent.' That's a bad examiner. There is something to be said for BEST - doing a search at the Hague and then having the substantive examination in Munich is a very bureaucratic approach and it may make it even more easy for some examiners not do their job properly. They have a very good excuse - if the art doesn't fit then its not their fault. Some of them are very lazy - both examiners and members of appeal boards."

Generally, though, the view of the attorneys was that they would have to wait until they had garnered more experience with the system before they could tell whether they approved or not.

3.9 Oral Proceedings

Oral proceedings can be held for many reasons. The EPC states ^[148] that they 'shall take place at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings." Oral proceedings are also part of the opposition procedure, but for the present we refer simply to those which are prior to grant or refusal of patent.

It was clear from interviews (and questionnaire responses) that oral proceedings were generally felt to be satisfactory. They gave an opportunity for an attorney to present a case or to try to persuade the examination divisions - though examiners informed me that they frequently agreed to oral hearings simply to try to bring a problem to a resolution. There was a suggestion that examiners were happier to have formal oral proceedings rather than informal discussions with attorneys. The attorneys frequently would prefer an informal discussion to, as they see it, iron out problems the examiner might be having in understanding the invention. Certainly, attorneys feel that the examiner doesn't always really 'get' the invention and in such a situation the attorney understandably wants to 'educate' the examiner through informal contacts. One London attorney suggested:

"One of the problems you might have with the EPO is the level of technical expertise. That can be a bit variable. I think you find UK examiners are - I don't know if it is a language problem or what - but they tend to be more approachable in argument. There is difficulty in conducting and getting an informal interview with an EPO examiner - sometimes they are a little reluctant. You end up requesting oral proceedings, but in the UK you can have a telephone conversation if there is any particular difficulty and see the examiner face to face and sort things out. The examiners do seem to be more on the ball in the UK - that is just my experience and it may be that I have just been particularly lucky with the subject matter I deal with."

However, for most attorneys there are little problems either with the concept of oral proceedings or their functioning prior to patent grant. There are more problems encountered during oral proceedings which are part of the opposition procedure ^[149] .

4 Opposition

In interview, there was a relatively positive view provided of opposition. One of the main reasons for this is that it is a system which allows the attorney to present a case in a relatively non-legal manner. One English attorney was, perhaps more positive than most, when he suggested that an advantage was that the two sides (opponent and patentee's representative) were brought together in technical environment:

"Yes I like the opposition because the person opposing is 'in the trade' and he knows more or less what [prior art] is around. He can then say, I saw something like that - but the examiner can't do that at all. So I like the facility of opposition. In Italy, for instance, the patent is granted automatically - there is no opposition which is a pity because you have to go to the court which is a lengthy and very expensive proceeding. I like opposition."

However, there were several problems with opposition. One was that there seemed to be no standard format of hearing involved. Much was left to the chairman, and there was a feeling that the chairmen had not been properly trained. This was a view which the EPO itself had noted during the research period and there were plans afoot to improve the training involved. This lack of training was also felt by some to affect the handling of witnesses. One Munich attorney suggested that this could be used to good effect:

"The technicians who usually run the oppositions departments are not used to witnesses and they want to avoid it if they can. It is really a little bit of a trick that you bring in - as an opponent - something which can only be proved by witnesses (i.e. public use) in order to force the opposition division to look in more detail to your written prior art arguments ... so that they don't have to hear the witnesses."

Another problem was that of surprise tactics - the way the EPO allowed new information to be brought into the proceedings at a very late date. For example, that prior art and other evidence was being sprung on the participants in the opposition - sometimes in the hearing room itself. Most attorneys were aware that the EPO had changed the rules concerning this ^[150], but there was - at that point in time - still a feeling of unease that it might still be happening. Evidence, it was also argued, was being looked at in a highly unscientific manner:

"As regards experimental data, it seems to me that the EPO have got themselves into a terrible state because they have no mechanism (or they do have but they never seek to use it) to try and test how relevant or how accurate the data is. They positively encourage, not dishonesty, but suppression of bad data. I had a case where we submitted comparative data to show an inventive step and there were 20 different data points. One of those data points didn't show any advantageous effect. When we came to the oral proceedings at Appeal Board level, there was an argument about novelty which was overcome but when we came to inventive step they recognised that the data showed inventive step apart from this one particular data point. I argued - based on earlier decisions - that you have to take the data as a whole ... In the end I had to disclaim that one particular composition which was ludicrous ... After the oral proceedings I said to one of the members of the appeal board, 'Don't you realise that the effect of this kind of silly decision is that in future why should I put a complete data set in. I could just have deleted that data point and you wouldn't have been any the wiser. There is no penalty on the patentee for doing it. You are encouraging inaccurate data being submitted.' He just shrugged his shoulders."

Jacob took particular exception to the lack of a court-like quality in the EPO ^[151] and was particularly concerned about evidential aspects. This is not surprising given the emphasis in the common law upon evidential matters and the complexity and care which the courts can take to the introduction of evidence (brought about by the historical role of the jury in common law trials). The EPC does cover the introduction of evidence in oral proceedings in Rules 71 to 76. However, to the common law oriented practitioner, there is a substantial difference between the philosophy here (with just a few rules) and the complicated structure of evidence rules in UK courts. It is also, of course, the case that oral proceedings are not in front of a recognised judicial representative of the EPO: the oral proceedings are in front of examiners (with legally qualified members, if present, in the minority) who must act in a judicial capacity. The handling of evidence is a matter being dealt with under the ChOral training programme, but there is no attempt to move the EPO's approach closer to that of the common law legal systems.

There was also a feeling amongst some that the period after patent grant during which oppositions were accepted was too long:

"A period of 9 months is good for nothing: it only delays the coming into force of the patent. If I get opposition orders - orders to file oppositions - I get them in the month after the publication of the patent or in the month before the end of the period. In the whole 7 months in between nothing happens."

Importantly, it became clear to me that many attorneys view the opposition in a manner which is radically different from that of the EPO. The EPO view put to me was that opposition was the second and final stage in a procedure where the first stage is primarily textual. The second stage alone is non-textual. The examiners had come to their decision about the inventive merits of the application and would not usually expect to change their minds on this (which would be an admission that their decision was wrong). What would affect them would be the introduction of new material - prior art etc.. Also, benefit of doubt should be given to the applicant, since he has no recourse to appeal against denial.

Most attorneys interviewed were surprised to be told of the former reason (i.e. the textual one). Their view was that the opposition was an opportunity to reopen the case and look again at all the materials and decisions which had been taken during the substantive examination. In effect, they viewed opposition as distinct from the process of substantive examination - almost seeing it as a form of nullity procedure where the examiner had the opportunity to see the error his ways.

"Oh Really! I've not heard that one - not from anyone from the EPO. I would agree for a different reason: that in opposition, the benefit of doubt should always be given to the patentee because he doesn't get a second chance. If he loses it at the EPO he has lost it everywhere. As far as the opponent is concerned he can still seek revocation in the national courts, so the balance should always be in favour of the applicant at the EPO."

Despite there being a number of misgivings about the process of opposition, it is clear that most attorneys do find it generally a useful procedure (whether as patent opponent or patent defender), but the problems with lack of clear procedural format and training of examiners casts a shadow for some attorneys (Figure 15).

Figure 15

A further factor which was mentioned by many attorneys as a problem was the fact that decisions of the opposition divisions were given immediately after the hearing, but written reasons did not appear for some considerable time ^[152] .

Appeal and opposition procedures are purely internal to the EPO. The applicant can try to negotiate with the examiners dealing with the application, and he can request oral proceedings to try to resolve questions. However, what he cannot do is to appeal to a superior panel external to the EPO. And in opposition the situation is similar - opposing parties present their opposition to the same body (that is, the EPO) who made the decision in the first place. There is no means of judicial review ^[153] in such a process - the EPO are solely responsible for the granting of a patent. Cook ^[154] has discussed whether Boards of Appeal should be viewed as offering 'means of judicial review' and concluded that they can be ^[155] . However, as discussed in the conclusion to this text, there is a need to investigate the link between the Boards of Appeal and substantive examination.

The process is, perhaps, particularly unfortunate for the applicant. He has no final external right of appeal against an EPO decision not to grant a patent, while the party opposing has: through national litigation.

5 The PCT Route

The PCT route has attracted an increasing number of applications over the past few years. It offers an alternative path to the European Patent but is - within Europe - provided as a service by the EPO. The EPO thus acts as an International Searching Authority and also - for those who wish an examination - as a Preliminary Examining Authority. We have already discussed - above - that the PCT route imposes time constraints upon the EPO which mean that PCT search reports have frequently been provided in a shorter time by the EPO than their own patent search reports. There are also other advantages which accrue from this route, primarily:

• Fees are not payable en bloc at the start of the application process. Applicants can thus - potentially save money - if an application is not carried through. It is only after 30 months that the bulk of the fees must be paid. Also office costs can be reduced since US applications do not require as much documentary work at filing from the attorney.

• A large number of countries can be specified in the initial application (most developed countries in the world are now PCT member states) and those not required can be dropped at the 30 month stage. Further, 'Europe' can be designated as one country, which further saves initial costs.

• Usually examination - if carried out - under PCT will be undertaken by the same examiner who will undertake the examination during the post-PCT phase. This means that the applicant can be reasonable confident of the result of the EPO patent examination prior to moving into this phase.

• It is possible, during the 30 month period, to find out what competitors are doing and consider more carefully the format of the claims.

In interview, it was clear that there was one type of main user of the PCT route: the attorney who represented clients who needed time in order to decide whether to carry on with their application. This was either someone representing a direct client, or someone in industry who had a number of patent applications but was not sure which would be followed through to produce the best portfolio. The extra costs of the PCT route would enable the attorney to 'buy time' for the client. This need not always work out as a more expensive strategy. One attorney suggested that "If only 20% of PCT applications are abandoned, then costs compare well with other routes".

Some attorneys suggested that good communication with the client was essential to make the most of the PCT route - and that this communication was best found in industry where the client and the attorney are - in effect - the same person. The reasoning behind this view was that the deadlines imposed by the PCT procedures meant that delays in communication could cause complete loss of protection. Other attorneys suggested that this was not necessarily the case - good office management could overcome these problems. However, there was an understanding that the situation was improving, since the regulations governing PCT applications were being eased, and were less strict with regard to deadlines etc.

Few users - other than those who required time - saw much benefit from the PCT route. Most did not require protection for their applications outside Europe; the overall costs of PCT meant that in the long run it was seen to be more expensive than protecting through the European patent; and finally - although this had improved - there was still a belief that the system was too formalistic and that protection could be lost by missing a deadline.

One common viewpoint put - both in the UK and Germany - was;

"In my office I only recommend PCT if the clients are completely unsure about whether the project will go on. Then I say, all right. I can buy you a one year term through the PCT application. I think the competent people in WIPO make wonderful computations about what you can save by PCT but I am of the opinion that it is at least for us in Germany not a saving. It is for the other countries where they pay a much less fee for the search. We pay a high European fee and get it partially (but only partially) refunded. I am of the option that the PCT is really a matter for emergency cases, quick filing and filing if the client is unsure about what he wants."

However, this view was not totally held. One Munich attorney was particularly keen on PCT - evidenced by having written a short book on using it - and suggested that he recommended his clients (mostly small German companies with international produces and one large Finnish company) to first file PCT - particularly where there was any possibility of requiring protection outside Europe. The argument used to justify this was that with a maximum of 10 designation fees, the PCT route opened up an option of some 78 countries. It may be that the particular direct clients of this attorney were more interested in extra-European protection than those of most other attorneys interviewed.

The relative success of the PCT route has led some to suggest that if we are really concerned about trans-nationality, then it would much better to think global rather than Europe-wide. There is much in this suggestion. If the EPO is successful as an International Search Authority and as an International Primary Examination Authority - there is no real necessity for it to grant an EPO patent. If agreement can be reached by various countries over standardisation of the patent (and much work has already been done in this area by the WIPO) then the EPO can remain as search and examination authority, but the patent offered would then be a World Patent rather than a European Patent. This, critics suggest, would be of much more benefit to industry than having rival blocks of patent protection as exist at present. Clearly the present figures indicated that the PCT route is continuing to grow in popularity, with some 50% of applications to the EPO in 1996 being PCT, a growth from 1995 of 18% of applications. This indicates a much more positive approach towards the PCT route than was found during the period of research. It may be that, as understanding of the route grows, the cost advantages which accrue from postponing costs are seen to be more valuable. The effect of the EPO's cost cutting in July 1997 may begin to reduce the swing towards the PCT route, but this will not be clearly seen until 1998 at least.

Patent harmonisation has gone a long way. The changes which seem to be occurring in the US system - tentative legislative steps towards priority based on first filing rather than first use - are indications of the desire for harmonisation. And from the other direction, in my interviews at the EPO some suggested that aspects of the US claim format were seen to have advantages which the EPO form did not have. It may be thus possible, perhaps, to move towards a World Patent overseen by the WIPO ^[156] .

Of course, we have seen the difficulties of bringing together just 18 countries and how the national tendencies have led to a much more expensive patent than was first imagined: particularly with the costs of translation. It may be that WIPO would have an even more difficult task if it tried to move past the current PCT procedure to one where national governments lost control of language and invention.

However, putting these future concerns aside, the clear conclusion from this research appears to be that if the EPO fee structure was more in line with that of the PCT, then the PCT route would quickly fall in attractiveness. Most clients are persuaded by their attorneys only to consider PCT when time is required - either for late decisions (e.g. whether to continue or in which countries to proceed to gain protection), or when the precise format of the claims has yet to be decided.

6 Conclusion

In this chapter, we have looked at a variety of information which demonstrates, perhaps, that the EPO has not been unsuccessful in achieving a measure of happiness from the professional representatives who act for applicants. That there are several significant problems - cost especially - is not without doubt. But, generally, in interview it was found that most attorneys found the system workable and effective. In the following chapter we look at the more problematic area of harmonisation.

Chapter 6: Philosophy, harmonisation and Development in the European Patent System

1 Introduction

In the preceding chapters we have looked at the European patent system in some detail - the nuts and bolts of examination and search and how these are viewed by the professional representatives. However, the EPO is not simply a fixed administrative system. There have been calls for change, development and improvements in its operation - some of them based on criticisms of the working of the system. And there have also been calls for change in the Convention itself. In this chapter we look at the problems which have been found and amendments to the EPO and EPC which have been suggested by commentators. Our perspective is, as usual, that of the patent attorney.

It is important to note that the European patent system does presently work, and that there is an element of pride amongst the patent profession that they have been able to come together, from a variety of backgrounds, and help make this system reasonably effective. One attorney who participated at a political level in the profession spoke about the problems found with each new accession to the EPC, and emphasised that harmonisation amongst the representatives was always the outcome of the accession process:

"In the council of the representatives before the EPO we have the same experience when a new country joins and sends its representatives into the council. At the beginning it is not easy to harmonise them into our circle because we have terrible difficulties speaking to one another because we had such different backgrounds. Discussion with the English, French, Italian was terrible. Each came with their own tradition and there was a banging together of the traditions. Now we have come to a harmonised view of things mostly but when new countries join, the commotion and discussion starts again before the new country is brought together into this common view-point. But it is an interesting experience - this coming together of different traditions, backgrounds and thinking."

However, we begin by looking at the problems - rather than the successes - of legislating patent harmonisation.

2 The EPC, EPO and the CPC

A brief outline of the framework of European harmonisation is useful. The European Patent Convention (EPC) is the legal framework which controls the granting of European patents. It has been introduced to national legislation in all 18 member countries ^[157] - in the UK, this was achieved via the Patents Act 1977. As part of general European economic harmonisation, it was felt that there should be a common means of patent protection throughout the community (and associated countries - e.g. Switzerland). The main legislative problem encountered with the EPC has been that it does not fully detail interpretational practice of the patent during litigation. If a European patent is litigated, it is treated as a national patent: that is, with no right of appeal to any extra-national court from the national courts ^[158] . No supra-national appeal court was set up in order to produce a non-national form of appeal from national courts - though early proposed views of the EPC did include such a patent court ^[159] . This has meant that national patent philosophies have not been entirely removed from the system - as we see below.

The EPC is, in some ways, simply a stop-gap approach to a more far-reaching harmonisation - that of the Community Patent Convention (CPC). The CPC's intention is to build upon the foundations of the EPO but to produce a more integrated and heterogeneous patent harmonisation in the European Union. A major plank of this was a common court of appeal (termed COPAC) to which national courts would be subsumed. The CPC was planned to be in place for the customs-free Europe of 1992 but has still not been implemented. There is, therefore, no common court of appeal in the European patent system. Yet, despite this inability to implement a fully integrated and harmonised legislative plank in time, the 'temporary' European patent system has been successful. Just why the stop-gap approach of the EPC has been successful - when one might believe that the lack of a European appellate structure would militate against successful harmonisation - is one topic in this chapter.

In the UK the introduction of the EPC via the Patents Act of 1977 has been relatively problem free. Most commentators - until recently ^[160] - have suggested that the new Act has not appreciably altered the traditional practice and most of the case law prior to the Act has been retained. In other European countries, too, the system appears to have been integrated reasonably easily. However, the legislation (both the EPC and the national implementing legislation) are particularly problematical in one or two specific areas: that of the interpretation of patent documents, being one. Article 69 of the EPC is a clear example of the problem of harmonisation, dealing as it does with interpretation of the text of a patent.

In the UK, historically, the importance of the patent specification has lain in the claims. These claims were said to specify exactly where the invention lies and therefore where protection to the patent owner was to be given. It was therefore up to the inventor to specify where the invention lay - and the court would accept the claims as described by the inventor. If the inventor had not specifically claimed something, then it was presumed not to be claimed at all. More recently there has been a slight easing of this approach - termed the 'literal' approach - to interpreting a patent specification. The interpretation of patent claims has recently followed a three point test which has been developed from the reasoning in Catnic ^[161]. Basically, these three questions help to decide whether variations on the protected idea are to be considered infringements or not. This is the reasoning which was used in the Epilady case, we discuss below. The third question is important when dealing with interpretation of the claims. It reads:

"Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim."

This approach to reading a patent is still a form of the 'literal' approach, but more correctly termed 'purposive construction' (since the description should help the court put the claims into context). It broadly follows a general principle of British law that what is not claimed by the patentee is not protected. The UK has, at least from the Nobel v Anderson decision in the 1890s, emphasised the careful wording of the claim and one finds in legal writings today that the UK patent establishment still tends to follow the thinking in Nobel - that what has not been stated in the claims is not claimed. In Germany, however, there has been a tendency to look more fully at the whole specification and give more weighting to a more 'functional' interpretation of the claims and the description - in effect to provide broader protection generally than that provided by a UK interpretation. The German approach is said to allow 'functional equivalents' to be protected - that is 'equivalent' ideas which are not as exactly specified in the patent document.

These two diverse philosophies have been well known for many years. Yet the EPC did not really tackle the problem of which method of interpretation to follow. In Article 69(1), Extent of Protection, the UK philosophy was signalled:

The extent of protection conferred by a European Patent or a European patent application shall be determined by the terms of the claims. Nevertheless, the descriptions and drawings shall be used to interpret the claims.

A 'Protocol on the Interpretation of Article 69' was also attached to the EPC in an attempt either (a) to more define formally the interpretation or, as many commentators have suggested, (b) to fudge and hope that the problem would go away. The protocol signalled a closer relationship to the German philosophy:

Article 69 should not be interpreted in the sense that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the words used in the claims, the description and the drawings being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.

Clearly, such legislative 'clarification' offers lawyers a fair degree of argument in litigation, given the differing philosophies in member States. Jacob, writing in 1993, suggested that as far as the UK was concerned, 'I do not think the Protocol has made any difference ... We in the common law system have stuck to Article 69. The monopoly is determined by the claim, sensibly construed in context.' (i.e. using Catnic) ^[162] .

3 Problems from the divergence of national interpretation

That the UK has stuck to Article 69 (but with a more literal interpretation) and that Germany has stuck to Article 69 (but with a more broadly construed interpretation, supported by the protocol) is true. One set of cases which demonstrate the cultural chasm are the well discussed Epilady ^[163] and Formstein ^[164] . Epilady dealt with a patent claim for a woman's hair remover where the claim specified a revolving, bent spring which closes on hair and removes it. The court found that replacing the spring with a slitted rubber tube which carried out the same removal process was not an infringement of the patent. In German litigation the 'functionally equivalent' rubber replacement was found to infringe. Formstein dealt with a kerbstone which was designed to lead away a proportion rain water off it carried. An alleged infringer simply laid the traditional form of kerbstones with a slight gap between them to achieve the same effect. This was found to be infringement - a result it would be difficult to imagine a UK court arriving at.

Another interpretational problem which has arisen is that of the 'second use' of an already known substance. This can be explained if we imagine some common compound - bitumen paint, say, which might usually be used on roofs for weatherproofing but which is subsequently discovered to cure baldness. A patent is granted for the use of the substance as a baldness remedy (since this is a novel use and clearly inventive). The problem lies in the fact that the substance is well known and available to the public, even though there is no 'prior art' suggesting it be used in the second manner. The EPO has granted patent applications ^[165] which allow the patenting of chemical compounds which were known (i.e. were not novel) but where new purposes have been found for these well-known compounds. In UK patent law this is problematical since - as has been suggested by various commentators - this is an indication that "mere novelty of purpose now suffices for patentability" and such has not been the prior case in the UK. The legal problem arises over interpretation of 'made available to the public' with the EPO taking a different view to that of the national courts, particularly the UK court. ^[166] This is an example of the EPO developing its own 'legal culture' - with the EPO Enlarged Board of Appeal providing some decisions where the UK Patent Office is doubtful about their applicability under UK patent law.

A number of legal academics have written about Epilady and Formstein, and other cases dealing with European diverse interpretation, and the question arises as to whether these seeming divergences demonstrate some fundamental weakness in the European patent system, where legislative harmonisation has failed because the courts have not been tied together in an appellate structure. Given that the EPC was supposed to provide a more certain legal framework for patent owners etc., has it all been in vain if litigation results can be predicted simply as the outcome of 'forum shopping' ^[167] .

Certainly, some have suggested ^[168] that an appellate structure can materially affect confidence in the patent system. In the US there was a problem of handling appeals until the early 1980s. The problem was that with 12 Circuit Courts of Appeal, it was found necessary to stabilise patent law and variable interpretation through one single common court of appeal which would hear all patent appeals. Merz and Pace argue that much success has been achieved by this new common appeal court and that forum shopping has fallen and predictability has arisen. They argue that the new appeal structure:

"... has been felt at every level, from patent prosecution through enforcement. Many patent attorneys and litigators attribute an observed 50% increase in patent litigation during the 1980s to the CAFC's rulings. Some also attribute the marked increase in patent application filings to a perceived increase in patent enforceability." ^[169]

and that such an effect is positive since patenting is expensive: "unless the courts are going to recognise and enforce patent rights, maintaining technological advances as trade secrets (when possible) may be a better alternative" ^[170] . In a legal system which is hierarchically organised (having one supreme court) control of the decision making of the lower courts can be managed by allowing appeals to higher courts. The appellate process is not a complete control mechanism, of course, since there are a variety of factors which might militate against a case with a reasonable chance of successful appeal being started ^[171] . For example, the cost of appeal must be borne in mind; the ability of the trial judge to produce decisions which are resistant to appeal; and the limited grounds which most systems allow appeal to be based upon. Even when appeals are started, there is no certainty that the appeal court will not simply legislate in Jeremy Bentham's ex post facto manner - 'like a man training a dog'. However, in theory at least, this kind of control system should act by keeping the most unwanted judicial decisions out of the system.

This problem of the judicial interpretation of claims is a highly important one, as can be seen by the differing results of Epilady and Formstein cases. However, there is no presently available procedure which will allow the harmonisation of these two philosophical approaches, unless persuasion can be used. Obviously, if the Community Patent was to be introduced with its common appeal court (or even if the appeal court was to exist without the Community Patent) such a difference would be referable to this body (as happens with European case law where a common appeal court exists). However, the CPC has not yet been implemented. Applicants thus have the possibility of "forum shopping" with their patent litigation as mentioned above ^[172] . According, for example, to Huydecoper:

"... the Netherlands is a country where patentees may expect somewhat more favourable treatment, and potential infringers a somewhat less sympathetic reception, than in the surrounding EPC countries." ^[173]

4 Do national divergences really matter?

In interviews with patent attorneys, it was clear that Epilady/Formstein is a well understood problem, and that there is hesitation about potential litigation over any of the patent applications that these attorneys prepare. However, there is no feeling that it is some fundamental problem which is about to destroy the European patent system - just that one might be unlucky as an attorney at some point.

Another perspective comes from Jacob who suggests in a relatively Hartian manner that, despite the differences, that the core of patent law is relatively clear:

Whatever the reason [for the move away from literal interpretation], 15 years on seems not to have produced a great approximation of laws in this important regard, although there has been some slight rapprochement discernible. Does it matter? Curiously I think not particularly. True the current position is untidy and true it is that there are borderline cases such as [Epilady]. But the great majority of patent monopolies do not fall in this class. We are only talking about disputed edges. The proposed Community Patent Court which would be the remedy so far as EC countries is concerned, would itself I think create greater uncertainty generally. I am not surprised by the fact that European (indeed international) industry has not been pushing hard for this over the last 15 years. We really do not need it. ^[174]

If these divergences in law do not really matter, we should be asking 'Why don't they matter?'. Is it really the case that (out of over 40,000 European patents granted in 1996 by the EPO) only the very smallest, almost unmeasureable fraction will be a borderline case from the 'disputed edges'? Certainly such cases are not well represented in the law reports, but even a Hartian analysis would suggest that the penumbra must be larger than we have in practice.

In theoretical terms, these interpretational problems seem to cry out for the correcting force of a supra-national court. The whole rationale for the EPC and the EPO has been that European industry needs a solid and predictable patent upon which patent owners can rely. If courts of first instance in different countries are interpreting the common legislation in philosophically different lights, it appears clear that industry is not being provided with what it was promised. Industry should be demanding the CPC and the COPAC approach which is tied into the CPC. It does not appear to be doing this. This is not to say that there is no support for COPAC, but that the support is not exactly fulsome.

For example, in Fig 1, the questionnaire results show that only 35% of German attorneys wanted a COPAC solution, whilst 42% wanted no changed. A further 18% did not want COPAC, but rather a separate appeal structure to carry out the tasks currently being done by the EPO, but separate from the EPO. For the UK, there was greater support for COPAC (48%) but 32% wanted no change in the present situation and 20% wanted the present non-COPAC approach but with the EPO's current appeal tasks carried out by a different body. ^[175] These views are, of course, those of attorneys and we might expect support for COPAC to be stronger amongst patent attorneys than industry since the former are more aware of the potential problems of litigation and interpretation of claims during litigation than their clients ^[176] .

Figure 1

Given this, and the views collected in interview ^[177] which support this information, it is clear that there is no overriding feeling of need for COPAC, despite the problems of interpretation of patent documents.

There is no legal answer to why the legislative confusion surrounding Article 69 does not seem to matter to patent owners. But there are factors which help clarify this lack of concern. It is, perhaps, more to do with the day-to-day operation of the European patent system; the way patents are used by commerce; and the sheer success of the EPO in terms of numbers of patents granted which have removed the day-to-day worries about a lack of a European appellate structure. The argument is that harmonisation of law in this area has occurred because most of the law-deciding tasks have been removed from the national courts and the EPO has been able to act both as a supra-national patent office and, importantly, a trans-national court. This latter factor means that the EPO has been able to act, to a large extent, in a quasi-judicial role.

4.1 The EPO provides a 'Harmonised' Philosophy

In large part because the EPC allows non-signatory states to make use of the EPO, it has a very powerful influence upon patent philosophy in the world. The heavy Japanese and US use of the EPO system rather than the national systems (around 50% of EPO applications are from the US and Japan) means that the EPO is the 'third force' in the world of patents. This power has meant that it has had a substantial effect upon the patent philosophies of the European national offices. For example, as discussed in Chapter 5 the level of 'inventive step' in national patent offices is at present the result of the existence of the EPO.

The general independent philosophy of the EPO also seems to be welcomed by users of the system. The questionnaire asked attorneys which of the two patent philosophies - UK or German - should be followed by the EPO, or whether the EPO should follow it's own path. The resultant figures are in Figure 2.

Figure 2

While it is not surprising that German attorneys have a more pronounced bias towards the German model than the UK attorneys (and vice versa) it is highly significant that (a) most were in favour of the EPO developing its own patent philosophy; and (less surprising, perhaps) (b) few attorneys had no view. Given that there are clear cultural and historical differences between the various patent systems, and that the EPO has only been in operation for less than 20 years, it is striking that it has successfully overcome these differences and engendered some measure of trust to such an extent that the majority of patent attorneys now feel that it should guide claim interpretation rather than follow one or the other of the two main philosophies.

It is also the case that the UK courts, for example, have tried to take the views of the EPO into account as has been legislated for in the Patents Act 1977. For example, recently the validity of the Catnic test was brought into question by the Court of Appeal in PLG ^[178] . The court suggested at that time that, with regard to the third Catnic question first indicated by Diplock, that its time was past:

Such an approach merely engenders a sterile debate on the precise meaning of Lord Diplock's words, a matter which should be left to legal historians. Lord Diplock was expounding the common law approach to the construction of a patent. This has been replaced by the approach laid down in the Protocol. If the two approaches are the same, reference to Lord Diplock's formulation is unnecessary, while if they are different it is dangerous. In future, it is to be hoped that attention will be concentrated on the requirements of the Protocol and the developing European jurisprudence and not on those of the common law before 1977.

However, it should be said that the matter is not so simple as simply negating Catnic principles. It has been suggested ^[179] that these views could be seen as obiter and that Catnic remains valuable. The important point is that the EPO jurisprudence is now being seen as central to legal thinking by the UK Court of Appeal.

My interviews did not involve many judges. However, those few judges I spoke to were keen to come to a common position with those from other countries. The annual meeting of judges from the patent world (reported in IIC ^[180]) was seen to be 'a very good thing'. In the UK - where judges are not numerous - such contact is not so difficult, but German judges told me that the numbers involved in patent work meant that it was difficult for them all to undertake this form of personal communications on a regular basis. And it was not always so easy to access good quality translations of patent decisions from the other countries. Brinkhof - writing as Vice-President of the Dutch Court of Appeal - has certainly put this view forward arguing that "The desirability of co-operation between courts becomes clear when one tries to imagine the situation which would prevail if no such co-operation existed" ^[181] .

The general evidence is that there is a willingness all round to base patent philosophy around EPO jurisprudence and that this willingness is part of the harmonising process itself. In a study of European patents undergoing analysis in the Netherlands and Germany, Brinkhof and Schutjens suggest:

It would appear that the EPC is altering the focus of the development of European patent law. The EPO is playing a crucial role in setting the standard for the interpreting Arts. 52-57 EPC. National judges are wisely paying attention to the EPO and are exercising restraint in their ability to deviate from the judgement of the EPO. Moreover, national judges have shown a great and repeated willingness to accept the leading role of the EPO. Nevertheless, any change of attitude amongst the judiciary could lead to disruption of the European patent system. ^[182]

There may be some substance in the final worries concerning the European judiciary (particularly with regard to 'software patents'), but such a change of attitude currently shows no signs of substantially disrupting the system. In a patent system which emphasises the reliability of a patent, it is potentially worrying that a patent might not be found valid in litigation due to a divergence of national and European Patent Office legal principles, even though national courts are encouraged to follow the EPC and the decisions of the EPO's Enlarged boards.

It is also the case that an institution as old as the EPO now will have developed its own culture and - with increasing success - may have become more confident about applying this culture in legally important ways. This is not historically unknown since most patent offices have undergone periods where they and the courts have not seen eye to eye on important aspects of patentability and where there has been something of a battle between the two forces ^[183] .

4.2 The EPO's 'Court Functions' cannot be ignored

One reason why the courts seem prepared to follow the jurisprudence of the EPO is that it is structured both as a trier of fact and a 'court' of appeal. The investigation of fact is composed of two parts: examination which is carried out by the EPO's staff, and opposition where the decision to grant a patent is open to criticism from industrial competitors. Usually, in this latter process, the most successful tactic is that of finding prior art or evidence of prior publication which would invalidate the patent.

The appellate section of the EPO is composed of 'technical boards of appeal' and 'legal boards of appeal'. Decisions of the examiners in DG2 are open to appeal through this section, as are all appeals from attorneys relating to the work of the EPO. The appellate boards will include at least one legally qualified member as well as the more normal technical representation. 'Legal' appeals are heard by a board of legally qualified members. A further appeal board, 'The Enlarged Board of Appeal' is only available to appeals which are initiated by the President of the EPO or the Boards of Appeal.

The structure of the EPO thus is not simply a bureaucratic authority carrying out technical examination. It is of course beyond argument that the examining and search divisions (where most employees are to be found) are technically rather than legally oriented. My interviews with EPO examiners clearly demonstrated that they have the same opinion of lawyers as is often held by the public: i.e. that lawyers only complicate matters. However, at the appellate level, the appeal boards are composed of experienced examiners in conjunction with lawyers who are capable of representing the EPO's legal philosophy and jurisprudence. The decisions of the appeal boards are well reported in the literature and are accessible to patent attorneys.

There is, of course, no judicial review available to those who are unhappy with the implementation of procedures at the EPO. This point has been discussed in Lenzing ^[184] and analysed by Cook ^[185]. In the views of attorneys, the incorporation of an appellate structure within the EPO itself does appear to go some way to overcoming the lack of any external appeal system to the EPO's decisions ^[186]. However, for those who have seen the recent changes in the UK's use of judicial review, the system does have attractions:

"I think what there needs to be is some method of judicial review of the decision of the EPO, and that means from something outside the EPO. Yes, it is a common law approach but I'm sure that I'm not alone in thinking this. I have had clients where decisions have been made against them where the decision was unfair and when the decision was inaccurate (i.e. certain points were claimed to have been discussed when they hadn't been at all). At one point I had one client who was so incensed that he took advice on whether we could take action under the European Convention on Human Rights on the basis that we hadn't had a fair hearing. But [laughs] when we came to look at the Convention it doesn't give you any protection at all for this sort of thing."

Thus not all are completely happy with the present EPO appeal system. Many patent attorneys are also unhappy about the length of time which the appeal process takes. And some indicated - in a more positive light - that the limited role of the Enlarged Board of Appeal should be reconsidered and the possibility of it being a more legally constructive agent should be investigated.

5 Amending the EPC.

It is a major criticism of any legal institution (whether physical or legislative) that it cannot cope with change and changed circumstances. Since the EPC is the controlling legislation for the EPO, there is a potential danger that if the EPC is too rigid as some have suggested, then the EPO will not be able to change to meet new needs - that the EPC will be its straight jacket. Since there has been harmonisation of national law from all members states towards the EPC, it would be difficult to imagine that re-jigging the Convention would be an easy task - every state would once again have to agree in totality to the new amendments ^[187] . In such politically sensitive areas as trans-national legislation, we have seen how slow and how 'irrational' the system can become, when each country has an effective veto over change and when agreeing to change in one area can be used as a lever to negotiate other national advantages in other areas ^[188] .

In specific terms the criticisms of inflexibility relate particularly to new scientific developments. Since the patentable development areas are negatively defined, there is no specific problem for most scientific developments, so long as these are directed towards industrial application. However, for those areas which have been denied protection by Article 52 - computer programs, medical operating procedures, biotechnology etc. - it might seem difficult to see how it will be possible to radically negate this denial of protection.

In fact, the situation is not so extreme as might seem from Article 52 and 53, since the Harvard Mouse was given a European patent in 1992 ^[189]. Moreover the problem/solution approach in EPO examination may have allowed more flexibility than might otherwise have been imagined, since it allows an invention to be looked at in a reasonably wide context.

There are obviously particular intellectual and legal problems in the bio/moral areas, but in other areas of patenting activity there are problems, too. For example, the digitisation of technology means that few industrial items now have no computer chip controlling the device. In order to provide protection for inventions, therefore, the patent offices and the courts have had - if we take Article 52 in its strictest interpretation - to 'bend' the rulings relating to computer software. The rapid onslaught of computerisation has occurred only since the middle of the 1980s, and it is now the case that analogue techniques have been replaced almost totally by digital techniques. Yet when the EPC was being discussed, it was the case that computers were large, cumbersome machines which carried out only certain kinds of processing tasks. It is still not formally the case that a program itself (or an algorithm) will be protected, but as Sherman has argued ^[190] , techniques of drafting have been produced which allow a measure of protection for computer based intentions. Sherman suggests that 'it will not be long before the Board of Appeal and the courts in the UK are presented with skilfully drafted claims for algorithms and computer programs per se, as is now happening in the United States'. ^[191] Indeed, White notes that a UK patent for a method of operating a computer was granted which he was "personally unable to see as different from those rejected by the Court of Appeal." ^[192]

Whether or not it is perceived as being an advantage to offer patent protection to computer software which is novel and overcomes the inventive step hurdle is debatable, but there is certainly a strong argument both in favour and against. The software industry is becoming more and more dominated by fewer and fewer major players, and it could be argued that a clear monopoly situation is being created which is not in the interests of any state ^[193] . However, there is also an argument that real innovation in software should be rewarded just as much as minor technical improvements in machinery. The case of spreadsheets should not be forgotten - what are now seen as highly important programs with applications in every professional area were not allowed patent protection, with the result that a major innovation and its inventor were denied reward for their innovation.

The attorney sometimes has an interest in changing the EPC. It is clear that most attorneys would prefer more business rather than less business, and the availability of software patents would certainly mean an increase in patenting business. Clearly the attorney can, incrementally, try to change the examination at the EPO by consistently putting forward claims which are at the very limits of what the examiner sees as allowable. Ultimately, such incremental changes may well result in a change to the EPC (but this has not yet occurred with, for example, software or genetic engineering - though it may not be too far away). Professional attorney organisations can also argue at the political level for changes in the EPC. And, sometimes, it may be the case that the Boards of Appeal of the EPO can be used to effect a different interpretation of the EPC. One attorney suggested that some patent attorneys in Germany have taken this latter step:

"There are patent attorneys who - mainly for the interest in a point of law - will actually pursue something at their own costs. Go through to the Boards of Appeal ... I know a couple in Germany who are prepared to take interesting points through to the Boards of Appeal. I think it is seen as a service to the clients, to the law profession. There are a number of points, particularly in German law, which are unclear and which swim around without any clear idea where different district courts make different decisions without it ever going to the supreme court for a final decision. ... It is certain senior members of the profession who do it ..."

What changes to the EPC we have seen have been primarily interpretative rather than textual. From the ground level of the patent attorney profession such changes to this international Convention do not really seem to be within their control, and they generally appear to believe that they must work within the text as given, rather than force changes.

6 Utility Models

The support given by the EU to the notion of a European-wide utility model as part of the protection of inventions suggests that the lack of such protection in the EPC is a weakness. The concept of 'utility model' is also described - usually to emphasise that it need not follow exactly the German configuration - as Second Tier Protection ^[194] . Lees has suggested that this description provides a 'blank sheet' start ^[195] . The utility model is seen by its proponents to be cheaper and more appropriate for small businesses. In general the presumption is that:

(i) smaller companies who innovate may not be able to innovate to the same level as those in larger companies. The level of inventive step in the full patent system, therefore, may be more than they are capable of achieving. Despite this, such companies should be awarded protection for their innovations. This probably is the most sensitive element in discussions of utility models. For example, the inventivity is obviously related to relevant prior art: should this be absolute novelty (as with the full patent) or more local novelty. Should novelty require non-disclosure or should - as some suggest - a grace period be allowed. This grace period would mean that a company would not lose protection simply by showing someone the idea before applying for protection. Having decided upon what novelty requirements are to be set, the next question is 'What inventiveness is required' - none, or a lower level than that of the full patent?

(ii) The costs should be enabling for smaller businesses. This will tend to depress expectations of search and examination since these are the major costs of the present patent system, and small businesses are held to find these costs too high.

(iii) Speed should be paramount, so that small businesses can get quick protection and so that the wider public can receive information more quickly. The speediest method is, of course, simply to allow a registration system so that there is no examination of the application and no period between application and publication ^[196] . But this, of course, is the patenting method which the European patent system was supposed to overcome - registration without examination.

(iv) the elements to be protected are of interest to smaller enterprises. Usually this means that chemical inventions will not be given protection (as in Germany they are outwith the utility model system) but that mechanical and electronic inventions will be protected. Some suggest, however, that processes should be protected, too.

(v) a 'grace period' of 6 months can be allowed. This grace period allows the applicant the freedom from the secrecy requirements which, it is argued, small industry finds so difficult with the patent system.

There are, depending upon the format of utility model chosen, a variety of other aspects which may be seen positively. For example, if the German format is followed, then this will mean that one or more utility models can be 'split off' from a patent application to allow earlier litigation etc.. It would also mean that for those applications where the attorney might wish more than 10 claims, the claims above that number could be reset in utility model format, thus giving a patent and one or more utility models around the patent as both added protection and as a complicating force to competitors.

However, there are obviously a number of arguments which can be put against the main proposed advantages. The major one is that if the levels are set so low (local novelty and no inventive step required) then one must ask why protection is being granted to the company? Do they really deserve such a monopoly? There is also the relationship between other forms of protection - such as the UK design protection - which means that, perhaps, too many forms of protection are being offered which do little to actually enhance the wider development of technology.

Since a major reason being put for the concept of a European Utility Model is that it should effect harmonisation across the inventive community, there is obviously the requirement that those systems which actually exist at present will have to be modified: there are those countries which have none; those which have true utility models; and the last approach which is the short term patent (granted without examination). With three different types of system, it may be difficult to achieve harmonisation.

In my interviews at the EPO there was some (very) limited support for the idea, but mostly it was felt that these would simply make the task of the manufacturer more difficult: there would be a 'minefield' of utility models which might explode at any point in a manufacturer's operation. Most attorneys took the view that a European Utility Model would follow that of Germany. This 'perceived' utility model ^[197] would basically be described as a 'lesser patent' (in Germany it has a 10 year life span which is not insignificant, and in Ireland, the 'petty patent' has a similar span) without an 'inventive step' or if it has one, it is of low level which shows 'advantage' ^[198] . Novelty would be the primary aspect of the model which would be only examined in litigation. Without examination as a process to remove the valueless models from the literature, the manufacturer will not have the expertise to judge the value of these himself.

It was also argued, by one attorney, that if the European utility model was to become a reality it would mean a decrease in patent filings at the EPO, although, as he suggested, the loss of work from patenting may be recovered from utility model work. However, this does not seem convincing, since if the proposed utility model is basically a registration system in the first instance, then there will obviously be a loss of search and substantive examination work. This may be a factor being accounted for in the EPO's staff viewpoint.

The responses (in Figure 3) from the questionnaire shows that attorneys do not take a particularly negative view of a proposed European utility model, though German attorneys are more positive than UK attorneys.

Figure 3

These figures do not match the interview responses. In German interviews, I was told - almost without exception - that utility model protection was something which was of value (particularly in a strategic sense ^[199] ). In the UK, the view given at interview was different, and almost totally sceptical - which obviously differs from the questionnaire results. There are (also obviously) UK attorneys who do have a positive view of the value of a utility model ^[200] but none were in the interview sample.

The typical German response was positive with some suggesting that - in terms of protection - a German utility model could often be as useful as a patent. Early litigation was facilitated; and the German utility model was particularly useful if there was an associated search report. Generally, this finding of favour with the national format led most German attorneys to believe that a European one would be just as advantageous:

"It is a question of experience. Those with no experience think that it is difficult and everyone who has experienced it thinks it's wonderful. We have lived with the system and for many years and have not found any difficulties, even with infringement cases based on utility model registrations.

Since having our amplified utility model act we can really get a broad protection for everything - and for at least 10 years - the number of UM applications has increased. Even big industry who were against it in the discussions now use it more and more. So why not have such a system on the European basis."

And that from the UK:

"The profession in the UK was initially in favour of the utility model but the profession is now much more divided. What we originally thought was that this would enable you to get patents or protection for things which full patents were refused but then we began to realise that a lot of other people would get these apart from our clients so our clients may become bothered by those. And if you are saying you don't have to have 'invention' it means that you can get it for something that someone has done without making an invention - using his ordinary knowledge. The big companies will use these as well and have outposts of utility models all around.

In Germany when the Gebrauchsmuster lasted only 6 years there was definitely a lower inventive level. But some Germans are now saying that the inventive level required for a Gebrauchsmuster is moving up towards that of a patent. If we had a utility model with a lower inventive level it could push up the inventive level for patents. I don't want that."

A tactical advantage of the German utility model is that it can help to get quicker protection. Most UK attorneys, in reply to this point, suggested that the problem lay with lack of speed from the patent offices:

"The strategic use of a utility model is probably due to the failings of the EPO - the fact that they take things so long to get things granted. But if you want to fix that problem then kick the EPO up the backside and get them to grant patents a bit quicker."

Germans though are keen on the tactical use of this model - even those who are not positive about the European-wide proposal see the national model as being highly useful. Some interviewees indicated that they frequently used utility model applications as a first step in gaining protection: particularly if they foresaw some problems with inventive step or suchlike. Another interviewee - when acting for national clients - always filed a utility model first and then requested a search report. This allowed the prior art to be discovered before doing anything else. This attorney was relatively unusual in that his next move was to file a PCT application and claim all countries (paying the 10 designated maximum fee) and, 8 months after the priority year, decide whether to go national. It was only where urgent protection was required (e.g. in litigation) that this attorney filed national or EPO applications immediately.

However, despite the general negative view gained from UK interviews, there are a percentage of UK attorneys who do see that a European utility model will help their clients. These attorneys are to be found in private practice - only around 9% of UK industrial attorneys believed that additional protection would be provided by this new proposed model. For those in private practice, the figure was 58%. There was no such distinction to be found in the German or Dutch responses.

In Ireland, there was a general scepticism found towards the new petty patent. It was seen to be a means of providing the individual inventor with protection - but protection which was of little real value. However, the major advantage it did have for other, more major players, was that it allowed access to tax advantages. This meant that the system was being used to speedily reward innovation (since the tax advantages became immediately available on registration of the petty patent) through research and development at a lower level than the patent system.

7 German Philosophy

My research did not look in much detail at the operation of DG5 in the EPO which is responsible for, amongst other things, patent administration, patent law, legal services, international affairs, international legal affairs and technical co-operation. It is, in many ways, the 'legal advisor' to the more technical Directorates. It has a tendency for German educated lawyers to be more represented in this Directorate than those of other nationalities. There are a number of reasons for this, and there is no evidence that it is the general policy of the EPO to recruit German lawyers ^[201] . Cawthra, writing in 1993 as a member of DG3, suggests some of these reasons are due to the nature of German legal education ^[202] :

"The thorough and exhaustive training undergone by German Rechtsanwälte need not be emphasised here. In particular the period of practical and varied experience they gain in the period between the first and second State examinations is an advantage they have over lawyers of most other nationalities. During this period they can familiarise themselves with the practical problems of intellectual property rights in their national patent office, in patent agent's offices and in industrial patent departments.

So it was hardly surprising that in the early years there seemed little need (and not enough time) to train lawyers in the EPO .... This predominance of German lawyers in Directorate General 5 is reflected in the fact that today, six out of the ten senior posts in Directorate General 5 (director A5 and above) are filled by German lawyers."

Some attempts have been made to overcome the bias in German representation - a nationality bias which is not found elsewhere in the EPO - but the advantages to the young German lawyer from their educational system are difficult to overcome (Cawthra particularly noted the unpaid nature of stagiaires offered by the EPO). Recently, however, funded stagiaires have been offered which enable law students from non-German countries to undertake periods at the EPO.

It was clear to me during interviews at the EPO that examiners - particularly at Director level - are conscious of this German bias and that this might have an effect which - if it existed - should be controlled. In particular, it was emphasised that the PPPC (the committee which meet to oversee the examination operation etc. - see Chapter 3) was a counteracting force. This committee deliberately ensured that the nationality of the members was a reflection of the member states. They were also conscious that sometimes the advice from DG5 originated in a German philosophy. It was also mentioned to me that there were reasonably strong links between the Max-Planck Institut - whose intellectual property section is just a short walk from the EPO's offices - and that this might further emphasise the bias. Indeed, some commentators have suggested that one reason for the EPO being based in Germany was that the Max-Planck Institut was based there and another that German legal thinking in patent matters was particularly highly regarded ^[203].

Despite the views from the EPO examining divisions, in interview, there was little concern from UK attorneys about this potential bias. One London attorney suggested:

"The influence of the Max-Planck is of little concern to the applicant. As far as the applicant is concerned the most important aspect they are interested in is certainty. The degree of legal certainty. If they are told they need experimental data with an application they don't mind. Just so long as they know what the rules are. What they don't like are the rules changing or getting one approach from one person and another from another person.

And that, even though there might be potential problems, English thought was entrenched in the EPO anyway:

"The examination section has been dominated, to a certain extent, by English thought - through the vice-presidents, so I wouldn't have thought that the Max-Planck Institut has had an immense amount of influence there but I don't know. What I do know is the utility model thing. We were alarmed when they had a big conference and therefore we, here, set up our conference at Rocket Hall where I met people like Von Kirchman just to make it clear that the Max-Planck Institut wasn't the only philosophical centre in Europe. And I think that the French ran the Grenoble conference for the same reason. So the Max-Planck Institut does have influence, but they are bringing it to bear in the Commission rather than in the EPO."

And, yet another London attorney, viewed the 'threat' as well under control:

"Yes it is perceptible, but I think the Brits over there are fighting their corner quite well. It has not been totally German dominated. There are aspects of procedure which are governed by UK thinking - for example, the way that the Convention is applied. You don't get an insistence on inventive height. It is fairly applied as is patentability. You can see that the EPO can interpret the Convention in - within limits - whichever way it chooses, but it has taken a sensible approach as far as the main provisions. There are some problem areas - priority where the EPC is out of kilter with the Paris Convention. They could have interpreted it so that where there were any discrepancies we follow the Paris Convention but no, they stuck to the literal wording - that is something that may be more German because the interpretation they have chosen to give it is something from German patent law. So there are problem areas but in other areas they do take the sensible view."

Information from questionnaire responses (Figure 4) indicated that most attorneys took the same view, with Germans being less inclined to see physical location as being important, and the UK attorneys giving slightly more effect to a British V-P (Figure 5).

Figure 4

Figure 5

8 Conclusion

In conclusion, we can see that although there are technical problems inherent in the harmonisation process, things are - from the perspective of the practitioner - not too bad. Generally, the view is taken that the EPO is managing relatively successfully to pull together the different philosophies in the European patent community and is trying to apply 'common sense' approaches to the problem. There are obviously areas which are worthy of further study - the appellate system in practice and just how the problem of software is being resolved in a practical manner, for example - but to the 'attorney in the street' these problems are not causing undue dissatisfaction with the system.

Chapter 7: Cost and Language Translations

1 Introduction

The patent system is a commercial system. It is intimately related to costs - profits from inventions, research and development spending - and it thus seen in a highly cost-sensitive light by all those in industry who make use of it. The common complaint that is consistently heard is that the current system is too expensive. Every participant complains about this, not simply the European users - groups of intellectual property lawyers in the US complain that the costs of European patenting are too high. In this chapter, we look at the situation and try to determine where these costs appear to arise from and whether there is any possibility that they will be lowered in the foreseeable future.

We also look at the language problems which have so bedevilled European integration at all levels. These have been blamed by many for increasing costs of patenting to a significant extent. Is there a possibility that language problems will - also in the foreseeable future - melt away?

2 Cost

The reference by Armitage ^[204] - quoted at the end of Chapter 3 - to the EPO being a Rolls Royce system suggests two factors. On the one hand it intimates craftsmanship and quality, and on the other, luxury prices which are not amenable to all potential applicants. Certainly cost is a considered element in all patenting: there is evidence that large companies will await the latest date for filing with the EPO (usually a few days before the 12 month priority period since first filing elsewhere ends) to delay costs ^[205] . Every report which has investigated the problems of patenting has emphasised that the smaller inventor - both the SME and the private individual - asserts it is hard to fund patent protection. Those who are trying to persuade more use of the patenting system note that cost is always in the background:

"There are a lot of firms who are not very patent minded ... They don't do enough to protect their ideas ... and sometimes they are afraid that others will imitate. They are becoming more patent minded, but it is always a question of cost ... "

The cost of a patent - in all systems which carry out examination rather than simply registration - can be seen to be made up of several elements. These are:

Cost of search;

Cost of examination;

Cost of annual renewal fees;

Cost of professional fees;

Cost of translation (when required).

The funding of the patent system of each country is financed to a large extent by 'renewal fees'. Failure to pay these fees will mean the patent lapsing. Renewal fees increase in level over the period of protection. It is the renewal fees which help support all patent offices and which help to cover the costs of administration and examination. A patent office which has had a sufficient history of patent granting will have a constant source of renewal fees being paid over the life of the patent (though, of course, not all patents have a life of 20 years - most are dropped by their owners) to ensure that examination and filing fees are kept at a reasonably low level. However, since the EPO was a relatively recent organisation, it 'front loaded' the cost of its patent (with higher filing and examination fees) and has lower renewal fees (as a percentage of the total cost) than other offices. Recently, it has reset the balance between these two sources of income. At the time of this research, this was not the case: the original funding situation was in place, and the interview and questionnaire material reported here reflects that cost structure. In 1997, a radical alteration to this EPO cost structure was initiated but no real evidence is yet available as to how this has affected the application numbers. Since, as we argue later in this text, the primary advantage of the PCT route has been a cost/time advantage, it can be expected that the new EPO cost structure will affect what has been an ever growing level of PCT application.

As has already been mentioned, national offices have been able to provide what Armitage has called 'windfall profits for national Treasuries' ^[206] despite the frequently claimed national interest in providing cheap protection for their inventors ^[207] . Cost of patent administration is a sensitive issue in patenting. First, it is being asserted by more and more national governments that national Patent Offices (as with the EPO) should be self-supporting in funding terms. This self-funding should come from fees to applicants and fees to patent holders as well as from the selling of 'services' such as information sources and expertise. Indeed, this has gone further than simply being self-supporting in the case of the EPO, where the Administrative Council can decide ^[208] how much of the renewal fee intake gained from EPO granted patents is redirected towards the national member states. This effectively means that the Council (composed of representatives from the national Patent Offices) can 'over-price' the cost of a European Patent in relation to the costs of EPO office administration. Currently this 'overpricing' is in the form of the national states taking 50% of the renewal fee income from the EPO.

Van Benthem, a former President of the EPO, has written of the higher than desired cost of EP protection:

The national interests of the contracting states have thus overridden the interests of the European patent system to such an extent that the system is now in jeopardy. It has gradually become too expensive for a large proportion of small and medium-sized firms, which thus no longer have access to the centralised European patent grant procedure, and all for the sake of interests which, although they may be justifiable culturally, and perhaps politically, are no longer justifiable in economic terms, because the practical needs of the economy are paramount. ^[209]

Of course, as we see later, the national offices do not necessarily concur with the view that they are undeservedly taking funding from the European patent system which would be best left with the EPO.

It has been argued that making the granting of patents a financially self-supporting procedure has detrimental effects upon the quality of a patent. Jacob ^[210] suggests that this must be so since in order to stay solvent the various patent offices must provide patents. They are, in effect, caught in a bind in that if they set the level of patent grant too high, they could drastically affect their application numbers. The current proposed privatisation of the UK Patent Office is, of course, just as problematical in that privatisation tends to suggest fixing fees at the maximum level which the 'market' can bear. Whether a national patent office will be required ^[211] when - or if - the Community Patent Convention finally comes into effect is another question and suggests that any proposed privatisation might require guarantees to purchasers which involve extra costs to the inventive community.

Second, in opposition to these forces is the concomitant desire for as cheap a form of patent protection for the inventor as possible. Certainly, the Community Patent Convention has been seen to be a means of reducing costs. However, the requirement by participating states for each patent to be translated into the relevant national language is certainly a potential problem. Cheapness and trans-national scope do not, at present at least, seem capable of being combined and - as we see - one of the major problems of all available patent routes is that some translation is required if the patent application is not in the language of the state where protection is required.

The cost of patent protection during the 20 years that protection is offered is not paid in one lump sum with the application. Instead, fees are payable for each of the search and examination stages and then, if the patent is granted, fees are payable on a yearly basis - on a rising scale - to ensure that the patent is kept valid. There are also fees involved when translated documents are required. This provides a 'total cost' of protection which is obviously an important figure. However, it is unlikely that all patent applicants consider the cost of protection in its entirety for the full patent period to be paramount. There are many tactical reasons for this: the commercial value of the invention might not be as much as the inventor imagined and he might let the patent lapse during the period of protection - (e.g. the applicant might believe that if the idea cannot be licensed within a short period of patent grant then it is probably not worth pursuing). It may be that the applicant is keen to see a search report before deciding whether to proceed to the further stages towards grant of patent - giving an indication of how the invention stands in relation to state of the art. It may be that an initial filing is carried out at a national office (with its fee structure) while the eventual aim is to gain wider protection through the EP or PCT routes using a different fee structure.

It is interesting to note that one attorney interviewed had discovered a means of gaining priority at no cost. This attorney would prepare an application and file it with the EPO, but not include the required fees. The EPO accepted this and processed it as a correctly filed application, and then requested payment from him: payment which he did not forward. This meant that his client had a priority date (at no cost) and could then decide what the next step in route should be. With such tactics being encountered, it is clear that cost is very much to the forefront of the users of any patent system.

2.1 Office Costs - Search, Examination & Renewal

In the EPO there are two reasons why the first two elements of the list - search and substantive examination - are relatively high in comparison with national offices. First, employees are paid salaries commensurate with 'international' status which means that the basic staffing costs will be higher than in most national offices ^[212] . Second, the high standard of search and examination towards which the EPO aims requires more individuals (and more materials) to be involved in each application, tending to increase the costs yet further.

Attorneys in all countries are very aware of the high salaries and mention was consistently made of this. One Munich agent suggested:

"With all things they are a little bit high - with the standard of building and the space they have or need. I always have the problem when I take a client to the EPO. They always say to me, 'Oh, now we know why the fees of the EPO are so high', because they were used to the premises of the German patent office which are quite modest. The same is said with the salary ... No taxes are paid here ... The man at the door earns as much as a German primary examiner earns; a European primary examiner earns as much as the President of the German Patent Office. It is a saying - I cannot prove this but look also at the publications with high printing standards. All these things are made to high cost.

The President of the German Patent Office had 30,000 DM per year for representation and travelling etc. That might be 10 or more times higher here. I cannot say how they can save money, I can only say they are three times as expensive as any other patent office."

The response from the EPO to high salary costs is that an international body requires international salaries in order to attract staff. It is pointed out that there are few Swiss staff members because the salaries in Switzerland compare well with those in Munich. Certainly, the role of an expatriate is not always a happy one, and few would give up the comforts of a working life spent in a home culture to one spent in a foreign one. Several staff at the EPO were adamant that they see the pay as being an essential element of keeping them interested in this kind of work and living away from their 'homes'. This is a staffing problem which the EU, too, has caused, with a kind of 'wealth trap' which keeps staff tied by large salary. It is, however, difficult to feel sympathy for those in such a trap and, indeed, I found no-one in the patent attorney field expressing a contrary view to this.

The EPO, as a body, is obviously keen to have good representation of the member states amongst its staff and does not seem too unhappy with the current representation - it is certainly a staff worthy of an international body. However, none of the attorneys I interviewed were particularly concerned about the make-up of the EPO's staff. More typical was that of the attorney who suggested:

"It is this European flag which they raise. You may like it or you may not. You like it if you are in the staff but not if you have to pay for it."

There was a view amongst some of those interviewed that the problem of costs (as seen by the patent attorney profession) lay in the fact that the EPO were trying to push high costs onto the profession, rather than accept that the profession had competition to keep their costs down and service up. This point was related to a debate in the literature over which side has the more expensive costs relative to work carried out ^[213] :

"A patent attorney who is busy and is good can earn as much money as a European official. It would make no sense to have an independent profession if a good income was not possible - but what I usually dislike is that they are paid well but they try to transfer the costs to the profession which is in competition with each other while the European patent office is - in its special field - without competition. It has some competition, it is true, from the national patent offices but these offices cannot achieve the same as can the EPO due to the multiplying effect of several states."

The evidence concerning the relative costs of the EPO and the national offices suggest that there is a feeling that the costs of EPO work is seen as less advantageous than that of the national office. However, it must be said that apart from the general feeling that the EPO 'was costly' it was accepted by most interviewees that if the applicant wished protection in more than 3 countries, the EPO route was the cheapest.

For prosecution of an EPO application the questionnaire evidence is ^[214] :

Cost of EPO prosecution	Very Satisfied	Generally Satisfied	Satisfied	Generally Unhappy	Very Unhappy	No View Given
DE Private	2%	2%	21%	38%	26%	12%
DE Industrial	0%	8%	22%	35%	27%	0%
NL Private	0%	9%	64%	27%	0%	0%
NL Industrial	5%	19%	38%	19%	10%	10%
UK Private	0%	7%	35%	36%	13%	9%
UK Industrial	1%	13%	49%	30%	4%	2%

and for the national offices, the figures gathered are:

Cost of National prosecution	Very Satisfied	Generally Satisfied	Satisfied	Generally Unhappy	Very Unhappy	No View Given
DE Private	28%	31%	29%	7%	0%	5%
DE Industrial	8%	38%	27%	24%	3%	0%
NL Private	0%	18%	73%	0%	0%	9%
NL Industrial	0%	114%	24%	0%	0%	62%
UK Private	15%	31%	40%	3%	0%	10%
UK Industrial	16%	37%	24%	1%	0%	22%

This clearly shows that national offices are seen to produce more cost satisfaction for attorneys than the EPO. However, it should be noted that in interviews I did not find that cost was the only concern of attorneys. Mostly, the view taken was that these costs had to be paid and although they would prefer them to be lower and more accessible to all clients, the fact remained that there was still a saving for clients wanting protection in several countries and - as described above - the search examination was of a very high standard.

The situation for renewal fees is not too different from that of costs for search and examination. For the EPO:

Cost of EPO renewals	Very Satisfied	Generally Satisfied	Satisfied	Generally Unhappy	Very Unhappy	No View Given
DE Private	2%	5%	26%	31%	16%	21%
DE Industrial	0%	3%	35%	32%	16%	14%
NL Private	0%	9%	18%	55%	9%	0%
NL Industrial	0%	19%	38%	33%	5%	5%
UK Private	0%	7%	40%	36%	7%	10%
UK Industrial	10%	11%	49%	26%	6%	7%

and for the costs of renewing national patents:

Cost of National renewals	Very Satisfied	Generally Satisfied	Satisfied	Generally Unhappy	Very Unhappy	No View Given
DE Private	24%	22%	41%	2%	0%	10%
DE Industrial	16%	19%	49%	3%	0%	14%
NL Private	0%	0%	55%	27%	9%	9%
NL Industrial	0%	14%	19%	10%	10%	48%
UK Private	9%	33%	46%	3%	0%	9%
UK Industrial	9%	34%	34%	1%	0%	22%

This demonstrates that, as with patent prosecution costs, the profession prefers paying the lower costs associated with national offices. This is not an earth-shattering discovery. It is interesting to note the view from the US as evidenced by the General Accounting Office's investigation into Japanese patenting by US firms ^[215] . In that study, the EPO was used as a tool to help analyse the Japanese position. Figures gathered for the cost of obtaining protection in the US and EPO were:

Cost of obtaining a patent (patent prosecution)	Little or no problems	Some problems	Moderate problems	Great problems	Very great problems
US Office	33.8%	29.7%	24.2%	8.9%	3.3%
EPO	15.3%	27.1%	37.3%	14.1%	6.3%

The figures are not completely comparable with those given above (since the wording of the question was different) but they do indicate that the EPO is seen to be more problematic in terms of the prosecution of patents than the US national office. The US national office is, of course, not an 'international body'.

Finally, one potential cause of costs was that the industrial community was having to support a double system. The argument was that if the renewal fees for patents which were entirely processed by the EPO were not being split between the EPO and the national office (as was suggested more than once to me by EPO staff) then costs would fall, because 50% of the renewal fees would be 'freed' from the system. When put to attorneys, this idea was not seen to be particularly beneficial, the primary argument being that smaller companies do not need the wide geographic protection of the European patent and prefer the lower examination costs of the national offices.

Perhaps cost-cutting could be achieved by reducing the standard of search and examination? There was some limited support for this., However, this support was in the minority and we have already seen the generally positive attorney's views of the EPO search and substantive examination.

2.2 Translation Costs

Another element of the total 'patent cost' is the cost of translation. This is not a problem which can be solved by the EPO, since these costs are brought about only when the patent has been granted to the applicant and he then wishes this patent to take national effect. We look below at the particular problems wrought by language in a multi-lingual community, but suffice to note here that few attorneys in interview were particularly optimistic about cost savings through limiting translation. Indeed, many suggested that the translation system was of benefit to attorneys who practised in systems where patenting was limited:

"What about simplifications in the whole [translation] procedure to save costs? It is a political fact. I confess that in the translations which are made - I say it cautiously - the relationship between cost and use is not positive. But I understand that that must be seen in economic terms: we Germans are used to a system like the EPO system which is close to the German system. We have a patent minded country now - the number of applications per head is higher than other countries. The English have the language advantage. I think that we have the main work for the EPO.

But look to other countries - Sweden, Spain, Italy - what did [their patent attorneys] do up until now? They had to translate incoming applications and file them with their national patent office. They usually had no examination procedure. So they are not used to this procedure and therefore they have to learn it and they are rather expensive for this kind of work (the French I think are more expensive that British and Germans for doing EPO work). What is left to them is the translation work. If you cancel all the translations, patent attorney offices in all those countries would die ... is this good from the point of industrial policy? Perhaps it is just a transitional factor - the example of the second engineer on the electric lock."

We look below at the problem of language in the patent community.

2.3 Professional Fees

Professional fees make up the final element of the patent cost. This is not an essential part of the cost of a patent since it can be carried out by an applicant without professional help. However, the advice to clients is that professional representation is highly advisable. Note that it may be that applications prepared for one filing Office are usable in other offices, too, with minor alterations. ^[216] This will reduce the cost of patenting first in Europe and then in, say, the US. There has been a suggestion that patent attorneys - having undergone further examination and training to understand the operation of the EPO system are charging higher rates for this work than for that dealing with national applications. This might, if true, be a result of the EPO's registration requirement producing a monopoly situation. The evidence gleaned in this research is that there seems to be no evidence of such a monopoly being used unduly:

	EPO work more expensive	National work more expensive	Both work about the same	No indication
DE Private	45%	5%	50%	0%
DE Industry	24%	3%	49%	24%
NL Private	45%	0%	55%	0%
NL Industry	38%	0%	52%	33%
UK Private	43%	0%	56%	1%
UK Industry	21%	0%	34%	45%

Cost to the client is mostly the same for both national and EPO applications. However, over 40% of attorneys in each country do charge more for EPO work. It is not clear why such charging is to be found, and -unfortunately - this topic was not discussed in the interviews. Note that only in Germany are there some attorneys who suggest that national work is usually more expensive than EPO work.

It is clear that industrial attorneys are more likely not to be aware of cost to client: it may be that the internal accounting procedures do not allow quantification of this.

3 Patenting Costs in Context

Of course, the cost of the EPO prosecution, potential opposition and renewal fees are not the only costs involved in the patenting process. Many patent attorneys are ever-conscious that the cost of a patent is just one element in the chain. One London patent attorney who was a partner in a prestigious firm suggested that a wider view has to be taken of costs than simply that of patent prosecution. His view was more litigation minded and trans-national, perhaps, than most of the other interviewees who spoke on the subject but he suggested that UK court costs were a more problematical issue for UK industry:

"The British legal system when I started off, the judge hadn't even read the patent. So you began the hearing and wasted a good morning with counsel reading the patent specification. I actually like the German way of doing things - the court has read all the papers, they know what is certain in their minds and they know what is uncertain and they will say in Germany can you address this point ....

[A named UK high court] has been brought up in one tradition and believes it is the best tradition. I spend most of my time dealing with other traditions - my British work is only a very small part of my work and I can see that the other traditions have extraordinary benefits. You are a private inventor and your patent has been granted, I hand you your patent and say it will cost you at least £250,000 to do anything about that in litigation. One case in the UK cost my clients about £1,000,000 It was not a difficult patent - it was a simple mechanical invention.

That not only puts the private inventor out of the British legal system, but also puts most small companies out. It is grievously unfair. Even a simple patent could cost you £125,000 - plus the other side's cost. This is much too expensive. Then I look abroad: in Austria it costs about one twentieth of the UK cost. In most of Europe it costs about one tenth. These are huge differences. In Austria you can litigate for maybe about £10,000.

I say lets look and see what they are doing which is different. One thing is the judge reads the papers (and may be blind ignorant as in France) ... In other countries you have experts in the trade concerned and they deal with the terribly difficult questions of sometimes what the claim is. I think that we Brits look askance at that and say it's not perfect - rough justice - and I saw in the EIPR just this week there is a comparison of one case which went around the European courts. I'd like to read it and see how it fared, whether rough justice arrived at the same conclusion."

There is, of course, an awareness within the UK legal system that the litigation system is too expensive and, sometimes too complicated. The submission by the Trade Marks Patents and Designs Federation to the Lord Woolf enquiry into the Civil Justice System in the UK provides one indication of this situation. One major desire of the TMDPF is that the rules of procedure used in patent litigation should be changed: in effect the problem is that the 'Rolls Royce' approach to litigation is not appropriate. Certainly, there are indications that post-Woolf there will be alterations to the patent procedures (particularly trying to answer criticisms of the new Patents County Court) but whether the radicalism demanded by industry will be applied is a different question.

However, the position regarding litigation costs is not as simple as is sometimes made out. For example, Adams, in his recent study of forum choice in patent disputes has restated the commonly held view amongst legal commentators that what most matters to a plaintiff is: 'Will I win'. There is little point in choosing a forum where costs are lowest, but chances of success are also lowest. Adams suggests that the European playing field is not particularly flat with regard to litigation:

In the present situation, it is fairly easy for the patentee to seek out a jurisdiction which it is felt likely to favour it, and, as noted above, where a case is problematic, a patentee may choose to bring it before a tribunal where the judge is a non-specialist in the hope of getting a result in a way which would be impossible before the judges or jurisdictions which have specialist judges. In short, the present situation is chaotic and uncontrolled, and while as potential plaintiffs, patentee companies may welcome the level of choice which has been opened up, they should remember that they are also potential defendants. ^[217]

It is moreover possible for companies to trim their litigation costs. For example, it has been suggested that the Court of Session in Edinburgh offers lower cost litigation than the High Court in London. It is also possible for companies to use barristers who are not at the top of the earnings scale ^[218] . However, there is little evidence that companies are prepared to reduce their chance of winning through using less experienced counsel than that found in the specialist London bar.

4 Language Requirements

If the provision of translated patent applications had no cost element then it would be highly advantageous to require all patent applications to be made available in as many languages as possible. It would simply be following the dictum to make information as available to potential users as possible. Unfortunately, the cost can be highly significant to potential patentees. The EPO, as has already been stated, has three working languages in which all its examination staff are competent ^[219] . All applicants can use these languages - French, German or English - as they wish. For applications which arise from the US or the UK it is usual that they will be in English, but foreign applications may be in a language which is suitable to the attorney acting for the applicant. However, it is true that most applications (including those originating in Japan) are in English. All applications for a patent which are successful must have their claims translated (at the applicant's cost) into the two languages in which the application was not prepared ^[220] .

However, there is - under the EPC - a potential requirement for further translation to be made. The EPC ^[221] allows individual governments to elect to require translations into the national language should they wish. During negotiation of the Convention, this was believed to have been an option which would not be required frequently. However, a larger number of States than expected have used this article and most now require that patents granted by the EPO will only be valid if translated into the national language of that state. This significantly increases the cost of patent protection to the applicant (a translation figure of £7,500 for the cost of each patent has been suggested ^[222] when 12 languages are involved). There is an argument that most science in Europe is English based - certainly that of engineering - though there are productive research centres in Germany and France which publish and research in these languages. Some believe that, for example, in a country like the Netherlands where English is almost the second language, it makes little sense to have English patents translated into Dutch. It is further claimed that those which are currently so translated are never accessed in that language ^[223] .

Questionnaire information gathered suggests that attorneys do believe that language translations are required. However, this is not even across the community. Those in the UK see it, obviously, as much less of a problem than those in other countries excepting the Netherlands where industry appears to be used to using English. Response to the question: "Would the value of EPO patents - as information sources - be weakened by only being available in English?" are:

	Yes	No	Don't Know	No Response
DE Private	67%	26%	5%	2%
DE Industry	62%	27%	5%	5%
NL Private	54%	36%	9%	0%
NL Industry	18%	80%	0%	0%
UK Private	25%	61%	13%	1%
UK Industry	27%	52%	17%	4%

And in interviews, it was commonly held by attorneys that those who would most suffer would be those in SMEs and also those in countries who did not usually have experience in English: Spain, Portugal, Greece, etc.

Scordamaglia - a senior EU official - was not particularly hopeful that rationalism will prevail with European patent language. While optimistic about the Community Patent, he wrote:

I think it has to be accepted that Europe, unlike the USA, will not be able to achieve its integration on the basis of one or a limited number of languages: the various languages are an essential part of our cultural heritage and we have to accept - and pay the price for the fact that even in fields like patent specifications where our national cultures are not really at issue we have to operate for political reasons with a large spread of languages. Let us hope that cheap techniques for operating with several languages will be rapidly developed - for instance, automatic translation by computer. ^[224]

Unfortunately, computer aided translation has not yet come to the aid of any of the European institutions ^[225] and, with patent applications, the situation is perhaps worse than with other legal areas for the cost of translation is being carried by the applicant him or her self (rather than by the various Governments in the EU).

However, despite the criticism of translation, it is surprising that, in a recent research report, most patent applicants seemed unworried about changing the present language requirements ^[226] . While 73% of US respondents argued for translation only in case of litigation, the figure for the UK was only 29%, In the UK, 41% suggested keeping the current situation, 12% for extension of translation period; and 18% for translation of claims only. In the EPC countries as a whole, 43% wished to keep the current regulations; 12% wished a longer period for translation; 21% wished translation of claims only: and 24% wished translation only in event of litigation. The countries most in favour of the present situation were, Belgium, Spain, Greece, Italy and Portugal. The figures for the UK are highly surprising since one might have expected them to reflect the views of the US applicant. It has been argued by some (and this was a criticism I heard particularly from EPO staff) that patent attorneys make substantial profit from translation services and they might well be more amenable to keeping the current situation. This 'extra-fees' argument would not be expected to be the case from the applicant who was the object of the above study, and the results of this study to seem to be counter-intuitive.

Quality of translation is a factor which might help the applicant. Thus, for those countries where a language is required which is not one of the 3 core languages, a 'quick' translation could be provided which would cost less than a well-worked one. However, if the patent document which is to be discussed in the litigation is poorly translated (rather than a translation which is specifically provided for actual litigation, or one in the core languages) then the applicant may well be saving pennies but losing pounds in the loss of patent rights through poorly translated claims or description. The applicant might suspect that a translation into a language he or she cannot understand is making a complex situation even more complex, and might simply stick with a national application in a language he understands.

There is evidence that those US patent applicants in the Japan patent system understand that there are problems of translation. One example has been given of the difference between English and Japanese:

A US patent attorney who is fluent in Japanese told us that he sees translation errors in most US applications he reviews, regardless of the size of the firm or the patent's importance to the firm. He gave an example of how the language difference has presented difficulty:

There is no singular or plural form in Japanese. To properly translate "a pencil with an eraser" into Japanese, a [Japanese patent attorney] suggested that the word "singular" be added to modify "eraser". However, the US patent attorney thought that this addition narrowed the claim and refused to make the change. As a result, the JPO examiner found the description ambiguous and rejected the claim. ^[227]

This is a more severe situation than exists between the European languages, of course, but indicates the kinds of problems which language can cause in patent translation.

Though belief in economic and legal rationality might persuade us that problems of language are simply ones which should be considered together and balanced with other factors by potential applicants, it is possible that they have more effect than would be first imagined. Certainly, the fact that the member States are so keen to have patents translated into their own language provides a highly striking indication of how cultural factors can overcome strong arguments of language rationality.

The EPO has undoubtedly been keen to cut patenting costs, and has seen translation costs as being one achievable way of reducing the overall costs of the system. Attempts have been made to persuade the Administrative Council to make alterations to the language requirements to reduce costs. In late 1996, it looked as though a 'Package Solution' might have been acceptable. This solution was based on replacing the need for a filed translation with an extended abstract. However, the package solution was not accepted and the translation requirements presently stand. Most opposition to such reduced language requirements appears to come from smaller states with more limited industries, and in particular from the attorneys who represent clients in those states. The reasoning for opposition to such strategies as the 'Package Solution' are usually given as the needs of the client ^[228] rather than the fee needs of the attorney.

5 Conclusion

There does not seem, in conclusion, to be much immediate hope for the reduction of patenting costs in the European context. The salary levels at the EPO are unlikely to fall substantially; the cost of language translation is unlikely to be reduced by computer-based techniques; and the requirement for translations to be made does not appear to be immediately resolvable. The feeling that most interviewed attorneys and EPO staff gave was that one simply had to accept the situation as a complex web of pressures - political, professional and economic - and accept it as unlikely to change.

Ultimately, it is the client who has to pay these costs, and it may be that the client is not so adversely affected as is sometimes suggested. In the questionnaire material gathered, there is evidence that the final cost of patenting is not the most important to the client. Compared with factors which attorneys considered their clients valued most such as 'well constructed claims'; 'a cost-effective service'; 'good advice about route'; 'pre-application research'; 'taking responsibility for the whole patenting process' and 'interpretation of search reports', the option 'good advice about final cost' was relatively far down the list. Many respondents did not indicate it as being of particular import to the client, and most who did order it, put it relatively lowly. For example, for DE attorneys in private practice, those ranking it between 4th and 7th represented 57% (with 28% making no indication); for NL private attorneys, 63% (27% no indication); for UK private attorneys 48% (with 21% making no indication). The evidence seems to be that - like much of industry's constant seeking of lower costs and complaining when costs rise - at the end of the day they accept that if they wish patent protection, they simply have to pay the asking costs or go without.

Chapter 8: National Patent Office Responses

^[229]

1 Introduction

Given a situation where applicants can choose which patenting route to take, national patent offices have always faced the danger that their traditional workload would slip away to the EPO. The slippage of work to the EPO has been both planned and unplanned and thus is more than was expected. Not only that: the EPO has not only received work which was the 'better quality' work - that is, work which requires less office effort. The position was outlined by the UK national office as:

"In effect the major countries in Europe gave the EPO a dowry by setting out to transfer demand to the EPO. The founding fathers thought that would be about the order of 35,000 applications per year but demand is now running at nearly 80,000 applications a year (taking Euro-direct and PCT applications together). Moreover, about half of these are for relatively major inventions from large non-European companies whose applications have already been filtered by patent offices in countries such as the USA, Japan and Australia. This means that a large percentage of EPO applications go through to grant and subsequently generate renewal fees.

In the case of the UK Office nearly 80% of overseas demand is now channelled through Munich though over the last 2-3 years overseas demand has started to switch back to the British Office. This may be because the British Office is able to offer a fast and inexpensive patent with a good presumption of validity while the EPO is perceived as being expensive and slow. Moreover, the switch in demand to the EPO by overseas companies has not been matched by a switch in demand by British firms. Of the 20,000 domestic applications that are made each year only about 2,000 end up in Munich. The remainder are processed by the British Office and about 3,000 result in the grant of British national patents. This means that the UK Office is at a financial disadvantage by comparison with, for example, the USPTO and the JPO who are able to use the income generated by overseas applications to subsidise the filtering of their domestic patent applications."

As can be seen, the immediate success of the EPO after its inception and its rise in the number of applications has meant that the workload for the national offices has become potentially critical. This is because, in order to provide a good level of service, each office must have a minimum level of breadth of search and examination. When the number of examiners which can be supported (by income or by available workload) becomes too small, then areas of inventivity cannot be examined in a full and proper manner. The role of the national office, if it wishes to survive in the traditional format, must become one of ensuring that it can:

• afford the documentation levels required for searching

• ensure sufficient expertise and numbers of trained examiners to provide high quality examination.

Of course, these are not the only options. National offices can decide that they no longer wish to compete with the EPO, or they can find means whereby weaknesses in their search and examination can be overcome, or they can aggressively compete for business by offering a competitive package to that provided by the EPO. For example, one of the main options open to national offices is to undercut the pricing structure of the EPO. The UK Patent Office suggests that:

"For DM600 (£285) you can obtain a patent in the UK which has been searched and examined. A typical "bundle" of European patents would involve procedural fees of about DM10,000 and because the EPO's unit costs are 4 times those of the British Office it is hard to see how this figure could be reduced below about DM2,500."

However, it has not only been the price of a cheap national patent which has impacted upon the argument about the future relationship between the EPO and the national offices. In this chapter we will look at the various responses currently being formulated by the four national offices looked at in this study. We begin with the German office.

2 The Deutsches Patent Amt: Competition?

Having the EPO sited in Germany may well have led to a political decision to close the German national office (DPA) and have all applications processed by the EPO. However, it is clear that the DPA itself was not willing to lie down and hand its workload to the EPO ^[230] . Instead a relatively aggressive form of competition was offered to the EPO. The then President, Professor Häusser made it clear before the opening of the EPO that he intended the DPA to be, on measured grounds of quality and cost, the best national office in Europe. ^[231]

The idea of competition is one which has clearly emerged earlier in this text. Professor Häusser was the strongest national representative for this idea: "We have a policy. In my opinion and I think my opinion is correct, it was necessary that the EPO had strong competition, otherwise they would not offer a sufficient quality in an acceptable time." The DPA, it is clear, has been the national office which has been most concerned about providing competition to the EPO. It is also aware that its robust attitude has not been taken up by the other national offices.

Professor Häusser's interview was conducted in the last months before his retirement and the section below indicates the path taken from the mid-1970s to the mid-1990's. Häusser's past career had been as a judge in the Federal Court and the Federal Supreme Court competent for final decisions of patent cases. He was confident that the best national patent offices were those which were led by 'professionals' - his own words were "I am a professional" - in the patent area rather than administrators who did not have strong foundations in the patent world. While no specific national office was mentioned, it was clear that he viewed the current rise of the 'administrator' as unwelcome.

That there was a measure of unhappiness with the current EPO system was also clear. The DPA's offices - lying next door to the headquarters of the EPO - clearly showed the difference in funding levels. The DPA's are much less glamorous - more civil service than international agency. Costs of the EPO procedure were a recurrent topic in the conversation, and that it was a system which was not designed for the local community. Indeed it was stated, as a criticism, that the "EPO is becoming more of a PCT agency".

The routes chosen to achieve Häusser's goal of a competitive national system to the European system were:

2.1 Speed of service to applicants

A criticism of the EPO has always been the relative slowness of its patent grant procedures. By offering a speedy service to applicants, the DPA has been able to offer a highly attractive alternative route (for those wishing such a speedy grant). For approximately 12,000 - 14,000 applications every year, the final decision can be made within 18 months meaning that no first publication is required. For a large proportion of the applications, 22 months would be a usual time to final decision.

A special service is offered to both domestic and foreign applicants in that if there is a request for examination, then a guaranteed first office action can be made within 8 months of the first filing date. For foreign applicants who do not first file at the DPA, this option is available if they file (at the DPA) 4 months after first filing elsewhere.

2.2 DPA providing Pre-EPO Examination

The relative speed of the DPA office actions means that an applicant can receive both a search report and a first office action before the final filing date for the EPO passes. With such an early action the applicant still has time to file elsewhere within the priority year and can know to a reasonable extent how sturdy is his application. To the DPA, the relative high percentage success of first filed national applications which eventually become European patents is an indication of the success of their service to applicants. The speed of processing and the quality of examination mean that applicants can be relatively sure that if they have received a positive response from the DPA, then they will also receive a positive response from the EPO. Since the costs of proceeding first at the DPA are much less than at the EPO, the applicant can use the DPA as a testing ground for his invention before proceeding to wider European protection.

2.3 Keeping a high quality Search File

As is clear from earlier in this text, the search file available to examiners is of major importance. Since patents can be revoked on the existence of any literature which demonstrates prior knowledge or use of the idea protected, competitors wishing to strike down a granted patent will look at least as carefully at prior publications as will the examiners. If the examiners do not have as wide a variety of documents as possible, their granted patents will be weak and prone to revocation. However, the costs of keeping a high quality search file are very high indeed.

The DPA point to the loss of the Netherlands's search file (passed from the IIB to DG1 of the EPO), the UK's reliance upon English-only documentation as a problem and the fact that many other countries (e.g. France) have no search file at all. Counter to this has been the DPA's approach to widen, wherever possible, their own search file. An example of this has been that after German reunification the search file from the GDR was passed to the DPA. This included a wide range of Russian language documents representing the patent knowledge of the former Soviet Bloc. Japanese documents have also been added to the DPA search file. This gives a total coverage of documents in German, English, French, Japanese and Russian which are available to examiners.

2.4 Language Training of Examiners

A wider search file is of little use if the examiners are unable to read in those languages and language training is thus important. The DPA has provided Japanese language training for examiners and claims a number who can make use of the documentation. When the GDR office was amalgamated into the DPA, some 120 examiners with Russian language knowledge were transferred with the search files.

2.5 Streamlined search/examination

The DPA uses an examination system which is based upon the single examiner who does both searching and examination. The advantage which this provides, claims the DPA, is that it allows a much more efficient and speedy form of patent processing than that which uses 3 examiners and a search examiner. Another advantage suggested by the DPA is that harmonisation of level of inventive step is easier with a smaller number of examiners than at the EPO. Moreover, the national office has had an easier training task due to the German 'patent culture':

"We have more experience and tradition in handling patent applications. It is more difficult for the EPO because they have examiners from different countries with different levels of knowledge."

2.6 Level of Inventive Step

The DPA is certain that its level of inventive step is higher than that at the EPO. It was also argued that it was not only the DPA which had a higher level of inventive step than the EPO, but "all examining offices in Europe have strong patents as compared with the EPO." Such a high level provides a stronger patent in case of litigation and it is claimed that this is welcomed by German attorneys:

"And we have still kept our [higher] level of inventive step. It is more difficult to get a German national patent than a European patent and that is related to our level of inventive step. Connected to this high level is a broad scope of protection - with a higher level of inventive step you can give broader protection.

There was a temptation for our examiners to be more generous when deciding levels, but we tried to keep our standards and many applicants now realise that this gives a better scope of protection. A lot of these applicants are coming back to our office"

With regard to quality of examiner, it was suggested, that a higher level of inventive step required a higher standard of examiner (implying that the DPA had this) since:

"It is more difficult to reject a patent application than to grant a patent. For rejection you have to give grounds and reasons - it is more difficult"

It is also suggested that the German courts might, for legal/cultural reasons, prefer the higher level of inventive step offered by the DPA than that of the EPO and "maybe the patent from the EPO would be destroyed".

2.7 Closer contact with Clients

The argument that a national office provides closer contact with the local community of attorneys and industry is one which is a powerful one. It is used by the DPA in two versions. First that being a national office, they can cater more for the needs of their national industry:

"In my opinion ... the national offices are closer to our users/clients. We know their problems, requirements and demands. It is impossible to handle client contact from Spain to Greece or southern Italy ... You have to have close contact to your clients.

Our examiners spend a lot of time on the phone with patent attorneys. It is my opinion that you need a close contact with the applicant"

but also that the EPO itself needs the national offices as a communication method between Munich and the rest of Europe, and also - for efficiency and cost reasons - for disseminating the workload of the EPO throughout the national offices:

"It is necessary to have outposts of the EPO in different countries. National outposts should be national offices. Why did they arrange an European Patent system with only one authority responsible for 17 member states with 9 different languages? In my opinion you could do the work of the EPO with 1,500 staff by using the capacity of the national offices. This would allow reasonable fees."

and:

"In my opinion it is necessary not to have one big office which is extremely expensive, but to develop a system using the national offices with cheaper capacity and closer contact with clients. Even in the UK, problems in Scotland are different from those of Wales. You should have a European office using the capacity of the national offices for search work and deciding on first decisions."

3 The UK Patent Office: Co-existence and Local Delivery?

The context in which the UK Patent Office has existed during the lifetime of the EPO has differed from that of the DPA. First, the concept of government service in the UK has - some might argue - been degraded since 1979. Second, 'efficiency and saving' has been the cry of all who have had control of publicly funded bodies and much of this efficiency and cost saving has been seen to be offered only by the private sector. This has led to calls for the privatisation of the UK Patent Office. ^[232] Part of this cost saving has been the removal of the bulk of the office from London where it was historically based to Newport, some 250 Km to the west of London. As we have already seen, this has not actually caused any negative results, so far as patent attorneys have been concerned, but in the psychology of the Patent Office, provincilisation may well have affected their view of the centrality of their role at the same time as this role has been 'under attack' from the EPO and may have helped lead to the current emphasis on 'local delivery'.

3.1 Local Delivery

Whereas the DPA emphasises a two prong strategy of competition through (i) a stronger patent, quickly processed and (ii) closer ties to applicants, the main thrust of the UKPO response to the EPO is primarily that of 'local delivery'. This approach acknowledges that the EPO is the best way forward for larger companies who have the capacity to handle the complicated patenting process and who also tend to use patents in a more commercial and litigationally aware manner. Indeed it is to the advantage of large companies having the system centralised in Munich. But the majority of these large companies will be primarily non-European, just in the nature of things since the take up of patents is roughly in line with global trade. And, it follows, that this advantage of the EPO to the large companies can, potentially, work against European industry which is composed to a large extent of SMEs. Therefore, for these smaller industry, the UK approach suggests that support should be more local:

"If one believes that the purpose of the patent system is to foster innovation and competitiveness, delivery mechanisms are important. Large international companies may have the resources, and the culture, to cope with the delivery from a centralised Office in Europe. They may well find this a more convenient arrangement than having to deal with a string of national patent offices. But the same is not true of smaller firms who may be deterred by language difficulties. For such companies, and for the private individuals who account for as much as 30% of demand at the UK Office, dealing with Europe is a problem. The need therefore is for an integrated European patent system which includes local delivery and, in particular, enables smaller firms to migrate easily from national patenting to patenting on a European or even a world-wide scale."

This group of industries which the UKPO implies are not being fully satisfied by the EPO is the politically sensitive area of SMEs ^[233] . As part of this support for local industry, the Patent Office is trying to move closer to the geographic regions of the UK. For example, by fostering 11 PIN libraries and building links with 200 one-stop shops - so called, Business-links. In a sense this is simply providing patent information but it is also designed to channel more sophisticated inquiries to the patent office. It is also suggested that someone from the patent office can go and see the person involved, a far cry from the historical working practices of the Patent Office:

"What we in the UK have been trying to do has been to focus seriously on customer service while preserving the integrity of our quasi-judicial role."

There was evidence in my discussion with the UKPO of envy of the French patent system (one of registration) where the system is driven more by a philosophy of economic development and support than the formal examination of applications. In this view of the Patent Office's future, much more emphasis should now be put on serving the industrial customer than processing the applicant's documentation:

"We provide a form of consultancy nowadays, particularly to private individuals and small firms by giving them a search of the prior art, and a substantively examined patent, with which they can go off and talk to their bank manager."

And if the customer is best served by a European application he should be so supported in that:

"It is not the role of examiners at the British Office to dissuade British firms from taking out European patents."

3.2 Decentralisation of Examination & COPAC

Echoing the German view that examination need not necessarily be concentrated in one location or in one organisation, the view of the UKPO is that the mechanism for examination is not one which is an essentially concrete legal process and therefore:

"Examination is an opinion by someone as to the presumption of validity of your application."

Such an attitude clearly leaves the worth of the patent to be decided finally in the courts. This might be read as suggesting that a Patent Office can (or should) never provide a final decision on patentability, but only an indication of such. It is a view which also might suggest that it is the court costs which actually define what sort of patenting system a country should have:

"The core point is that examination is aimed at giving people a degree of confidence that they won't have to go to law. This is important in a Common Law country where the costs of patent litigation are high by comparison with a country such as France."

Given the view that it is not the strength of a patent which is paramount, but the legal procedures and cost structure open to litigants, it is a simple step to suggest that a strongly harmonised central granting agency is not required. Once again, we arrive at a position similar to the DPA which argues that - given the lower examination costs of the national offices - examination could be decentralised. The only central requirement is something which controls the real test of patent validity and infringement - the courts.

"The patent system is complicated, and has to be so because it involves the grant of monopoly rights. It is therefore very important, given the complexity of the system, that once a patent has been granted it has a good presumption of validity. The last thing an applicant wants is to find his patent invalidated by the Courts - and British judges are scrupulous in ensuring that the Patent Office does not grant invalid patents. We need to ensure that there is a Europe-wide appeals system which is equally well-regarded."

It is the UKPO which gave the strongest backing for the COPAC approach. This follows from the belief that examination can be decentralised but, in an integrated European patent system, what is required is centralised legal control to ensure that all countries keep to the same standards of patent grant or revocation. The view supporting this is, of course, the commonly held one in UK legal circles that British justice is the best in the world, and that COPAC is a means of ensuring that other countries play to a level playing field.

3.3 Search File via Computer Communication

Whereas the DPA had successfully built up its own search files to enable competitive search examination, the UK office has not done so to the same extent. However, search files need to be available at least to EPO standards if an EPO standard of search and examination is to be carried out. Given the rise of telecommunications and other means of accessing search files (CD-ROM and the internet, for example) it was suggested that local storage of search files was no longer vitally important and that by use of these newer technologies, it is possible for satellite national offices to access a large a body of material without physically possessing it:

"We require an integrated search system to which all have access. There are a number of competing systems, of which the best is probably the EPO's EPOQUE-BNS system though the German patent office PATIS system is also impressive. There are also private sector databases and the internet also offers interesting possibilities of accessing systems in the United States."

and, on the point of using communications, it was also suggested that these can be used to provide an attractive alternative to other offices:

"The UK office might decide to use the internet to give [it] a distinct selling proposition for its patents search system."

4 The Netherlands Octrooiraad: Change in Name and Philosophy

In 1995 legislation was passed in the Netherlands which effectively ended the traditional form of national patent office in that country ^[234]. The change in philosophy was marked by a change in title of the Netherlands Octrooiraad to Netherlands Industrial Property Office (NIPO). The change in patent legislation had been predicted for some time. In 1988 the government was aware of the success of the EPO. They saw that applications from multi-national firms were going more and more to the EPO or via PCT. The Patent Office had, in the 1970s, almost 20,000 applications and employed more than 150 people in the examining division. At the present time, the number of applications has diminished to around 2,300. Those involved in examination have diminished to around 25. It was considered no longer affordable for the Octrooiraad to keep expertise in all possible areas of technology.

An advisory committee was set up (under the chairmanship of an industrial patent attorney) and the advice to the government was to try to keep going - as a fully examining body - for as long as possible since this was an asset for the country. The parameters were set, so that 15 examiners could handle a patent system with applications requiring 750 substantive examinations per year. Nevertheless the government decided that the number of applications would continue to diminish and that it would arrive at an unacceptable level. Therefore the change in legislation was prepared.

Interestingly, it is the view of the NIPO that the government was not fully aware of the consequences of their thinking:

"I also think it had something to do with lack of understanding in the government ... what the heart of the matter was in examination. We had a lot of economising from the government trying to reduce the number of civil servants and that played a role as well."

The situation appears to be that the Netherlands government itself was convinced that its traditional patent office would fall victim to the success of the EPO. The legislation prepared could be seen as the logical consequence of the European system, since it no longer appeared to emphasise the need for a sufficient number of examining staff - with the Office moving from a position with a very high level of inventive step to a mere registration system. However, despite this enforced change of character, the NIPO still sees levels of examining expertise as the main aim of current management:

"The problem is to keep at the highest level possible my technical expertise - it is the main challenge for my office."

It should also be noted that the office of the NIPO itself is sited within DG1's building at Rijswijk (near Den Haag) in a suite of offices rented from the EPO. Whereas the DPA and the UKPO still provide a physical frontage to their national public, this has been lost to the Netherlands, subsumed within that of the EPO.

The NIPO sees that it has a clear agenda, differing somewhat from those of the DPA and the UKPO. However, the basis of this agenda is still the emphases upon closer ties to the local inventing community.

4.1 Providing a Complementary System

The success of the EPO in taking patent work from the Netherlands office means that it cannot take the German approach. However, the Netherlands is still important in manufacturing and policy should be directed to providing a complementary service to the local industrial community:

"The intention of the new registration has to do with the fact that we don't want to compete with the European system. But that we look for a complementary system, especially in favour of the small and medium sized enterprises - the six year patent and the 20 year patent after novelty search."

As part of this complementarity, there is a linking of the NIPO with 18 'innovation centres' throughout the Netherlands with an on-line link to these 18 centres so they have easy communication. The path taken will be to leave the primary questions to be solved by the regional offices (where they will have access to the NIPO databases). And so far as knowledge dissemination and patent information is concerned the NIPO will educate these centres to undertake this task at a reasonably high level.

4.2 Providing Policy Advice

The new role is not only to support SMEs but to look for special targets in the Netherlands that impact upon patent information policy. The NIPO believes that it must start with Government technology policy because the policy makers who are, for example setting up grant systems to encourage R&D, are insufficiently aware of the knowledge which exists in patent documentation. The NIPO is trying to convince those policy makers (e.g. the Minister of Economic Affairs and the Minister of Agriculture) that it is useful when looking for guidelines for their policy to look at what is already known and what the trends in patent granting are.

Another target is that there are a large number of technical institutes of applied sciences and Universities in the Netherlands. Patents and patent information might seem to technicians not to be interesting (inventors are never lawyers) but it is necessary to convince the technical Universities that patent information is an interesting issue and should become mandatory in the education of technicians, so they know how to protect an invention and also how to find technical information in this documentation which will never be found in a University library:

"We did some search work here in the Netherlands. We learned that 90% of the technical information which can be found in the patent documentation cannot be found in the libraries of our technical universities. There is an amazing issue that researchers neglect such a source of information - they do a lot of work in vain."

As an example of this provision of advice, the Netherlands has an agency which supplies grants to industry. Before getting a grant, there is a need to look at novelty and the markets. There is a need to look at a number of qualities which - it is suggested - can be helped by patent documentation. This agency presently recruits panels to consider the applications. Until now, though, these panels have never incorporated an expert from the NIPO despite these experts having knowledge in these fields:

"So two years ago we looked at 6 of these projects and had 6 examiners and information experts from my office look at these applications. This turned out to be a wonder for them - the sort of information they got from here. They are very keen to continue, but all my examiners are currently needed for the main work. The agency handle more than 300 or 400 project applications a year ... but I would need a larger budget to get people to do this work as well."

4.3 Retaining Inventive Step

The NIPO does not consider the 6 year patent to be identical to a utility model. The requirements for the patents in the new legislation are similar to those under the old legislation - that means that it has to be a new invention, and that it has to have the requirement of inventive step ^[235] . The only change is that if an applicant wishes to discuss the validity of a patent, it cannot be done in an internal procedure before the office. The applicant has to go to the court. This means that the Dutch patent is still a patent in the real sense and does not have the diminished requirements of the utility model.

In parliament a draft Utility Model Act was looked at, but the government preferred to withdraw this, and replace it with a new patent act because the belief in the usefulness of utility models was not seen to be great: there were protests from industries as well (especially the electronic industry) because they feared a high level of applications from Japan getting protection without inventive step. The NIPO agrees that there are a lot of multi-national companies who, in their patent strategy, demonstrate very low levels of inventive step just to build a defensive patent portfolio. It is, therefore, not the case that only large companies want high levels of inventive step.

4.4 Advising the Courts

If a nullity action is begun in the courts under the new patent act the claimant needs the intervention of the Office to get a technical advice on the validity of the grounds for a nullification of the patent. ^[236] The problem for the Netherlands parliament is that courts have no experience in technical fields and there was thus a fear that after the start of the registration system, a lot of competitors would initiate actions in the courts which possess insufficient technical knowledge. Therefore an amendment was introduced by Parliament requiring mandatory advice to be taken. At present the NIPO still have sufficient technical expertise in order to fulfil this task, but had recently ^[237] announced the employment of 5 new technical experts.

4.5 Continuing Recruitment of Technical Experts

The NIPO had (in 1995) a number of unexamined patents in stock - at least 3,000 without a novelty search and another 9,000 with a novelty search without substantive examination. These were covered under the old act by transitional provisions of the new act. Applicants were given the right ^[238] to have their applications dealt with under the old act. 8,200 applicants have used this path which indicates that for another 5 or 6 years the office will continue to carry out substantive examination on these earlier patents.

However, keeping up expertise and training will cause a problem given the limited staff numbers in the NIPO and the fact that in the near future examining experiences will disappear. Discussions have taken place with the EPO, the DPA and the UKPO as to the possibility of new NIPO staff having education in these other offices with estage periods in their examinations fields.

With national applications, the novelty search requirement for the 20 years patents still exists. Most of the searching is currently contracted out to the EPO. However, the NIPO believes it can now do all the national office searching itself. This will be cheaper - the NIPO pays 3,600 DFL for each search done by the EPO and for the national ones it earns 1,200 DFL, so presently the NIPO has to give 2,400 DFL for each search done: "I believe that at least the loss will be less if I do it myself."

The estage periods are not only seen as a good method for keeping up with international standards, but also of offering training to those staff who will aid the courts:

"The new technicians can earn a lot of money [for the office] ... and if you give them the opportunity to follow estage periods from time to time, at examining offices and if they study enough the jurisprudence of examining offices like the EPO but also the DPA and the UKPO, then you have the basis for giving good advice to judges."

A central plank of the Munich agreement was the belief that a centralised search and examination would - as argued earlier - produce quality from a single authority. The fewer applications that a national office has, the more difficult it is to keep up full documentation and to keep up expertise. So in principle the NIPO still believes that the idea of centralisation for quality aspects is favourable:

"Nevertheless I believe that there is a need to keep up national offices, if only for patent information policy and that to run in a good way the information policy, you need basic technical expertise. I see this when I have discussions with my Belgian and Luxembourg partners - they have no technical expertise at all. They have to ask for help from the EPO in patent information policy because they can't explain how to apply the requirements for patent granting in a case because they have no expertise. To explain to a SME what the requirements are and how the system works based only on your patent acts, and without technical knowledge, is indeed a problem. There must be some way within a registration system to give room for keeping up technical expertise. I gave the new president of the EPO some ideas, but contracting out work to the national offices from the centre was not one of them."

Unlike the UKPO, the NIPO does not believe that contracting out work (from the EPO) is the best answer to the problem of declining internal expertise; in part, because at the national level you have more mechanical types of invention coming in from SMEs. Electro-technical and chemical applications are mostly in the multi-national sphere. If the applicant has a real invention in these areas, he needs European protection at the very least.

4.6 Keep Dutch Language Patents

Awareness of the problem of language cost exists, but it is the view of the NIPO that this is more a political than a technical problem:

"Each Dutch inhabitant is considered to be aware of the content of the Dutch legislation. In fact this is a fiction. It is even more a fiction that one is expected to respect a patentee's right when one cannot become acquainted with this right, unless one understands perfectly the foreign technical language in which it is written. Generally speaking one cannot expect this from a SME entrepreneur. Most technicians with an academic background in the Netherlands have enough knowledge of those languages so that they can understand patent descriptions. .... We are not sure of the claim by one of my predecessors - Mr van Benthem - who suggested that only in very few cases the Dutch translation was asked for. We tried to search for this in our library and discovered that we have no real facts or figures on this, but that at least 2,000 or 3,000 times translations are asked for or copies made. And that doesn't give any idea about the use - once you have a copy brought from our library it can be spread over a lot of people. A patent attorney can spread one copy across 50 clients. The indirect spread of translations, I know almost nothing about. So I am not sure that it is as unimportant as some suggest. It would have to be looked at if you initiate a real active information policy."

The NIPO believes that having translations of patents into Dutch makes it easier to convince people of the importance of this information source. And, further, since the EPC states that the claims should be clear to the average man in the field they should be available to this average man. Since the office wishes to start a proper patent information policy, it needs to develop the accessibility of the patent documentation. Not only must it have good guides and classifications, but also the contents of the patent documentation have to be laid down in the most easily accessible language.

4.7 Remain Independent but not Privatised

Although the Annual Report of the NIPO ^[239] suggests that the office is profitable, there is some hesitation by the NIPO in agreeing that this is the actual situation. Because it is an arm of the Minister of Economic Affairs but at the same time a self-governing body, the difficulty is that part of the NIPO expenses are not at the charge of NIPO itself. For instance, the government pays rent for the office space to the EPO. Information policy belongs to the NIPO but the centres of innovation are not part of the NIPO budget:

"because the real cost price of products is not known and is never asked for in government, I can't say that I have in commercial terms a profit. Nevertheless you can see that I have an income of 46 M DFL and my annual direct expenses are in the order of 28 Million DFL. So in that sense I have a profit. All my income is transferred on a monthly basis to the Minister of Finance and each year I claim a budget from the government"

The office has plans to look more closely at the real cost of this work and the real income. It is unsure what the outcome will be. Discussion with the Swiss Patent Office (who have become an agency independent of government) indicated that they had to consider carefully actual cost price of services and income. The Swiss office - it is suggested - had to raise fees to cover expenses. It may be the same in the NIPO that a number of expenses , e.g. pension schemes, are not covered by the provided budget. Switzerland - it is also suggested - was hesitant that raising annual fees might lose many applications, and this hesitancy is apparent in the NIPO, too.

5 The Irish Patent Office: Non-Substantive Examination

The Irish patent office is the smallest of the four offices dealt with here. It is also the office which represents the smallest inventive community and the smallest number of patent attorneys. Ireland has been one of the latest to participate in the European Patent System. Ratification occurred only in 1992 and a new Patent Act was produced to allow for ratification ^[240] . The new Act allows two forms of patent, the full 20 year patent and also a short-term patent (more than 50% of the applications now filed are for short-term patents) which have been designed to provide protection without necessarily requiring substantive examination.

Presently based in the centre of Dublin with the firms of patent agents and attorneys relatively close, there are plans afoot to move the office away from Dublin. These tentative plans have not yet been put into action:

"The government has decided that the office should be decentralised. ... I'd be very pleased to hear the views of attorneys on this move. They haven't offered me any. That's the first point. The second point is that it is difficult to say at the moment what the effects will be on our activities because it has not been decided when the office will move, how any move is going to be phased, what part of the operations move out first [not only patents]. I can't say how long it would be or the phasing of the move ... Particularly if the majority of the existing staff do not wish to move - that leaves an enormous training question which has not been addressed at all."

The general view of the IPO seems to be closer to that of the NIPO than the DPA. However, like the NIPO, there is no desire to give way completely to the EPO. Once again, the factors of local industry and information need are used to support the continuing existence of the Office.

5.1 Local Information and Awareness

Unlike Germany and the UK, there is no great body of potential patent applicants who might be persuaded to apply for national protection. In terms of numbers of patent application the attitude of the Irish office, therefore, cannot be as aggressively competitive as the German. However, this is not to suggest that the Irish Patent Office does not see itself as having a continuing role:

"This office would adhere to the view that national patent offices will continue to play an important and necessary role. I would think that it would be the view of a great many member states of the EPC. ... This is not just the view of the national offices, but of the users of the patent system - that national offices continue ... both in the granting of national patents in promoting awareness of the patent system and in the provision of patent information to the public."

and suggesting that it is obliged to remain as an active local agent:

"There is also a requirement under the Paris Convention that states who adhere to that convention must have available an office for the grant of patents and registration of trademarks. I mention that as a detail but it does lend an additional argument to the necessity of having a national office."

The national office is also seen as the formal liaison point in each country with the EPO - to make available information about all published applications designating Ireland and all granted European patents designating Ireland.

5.2 Fulfilling an Industrial Need

The demand for Irish national patents is now much more localised. The inventor or manufacturer who wishes to go beyond the local market will either be a major Irish or international company (or an subsidiary of such a company) or have a very good invention. Many small and medium manufacturers and inventors will wish to confine themselves to protection in the UK and Ireland. It is this grouping which is particularly reliant on the services of the national Patent Office:

"It is a natural reaction from the EPO to hope to be the main player in patent granting. ... What organisation of the size of the EPO with almost 4,000 people wouldn't want to think in terms of growth, take-over etc., etc.. On the question of competition ... at the end of the day, it all comes down to what industry and inventors want. Industry will want national patents. We joined [the EP system] in 1992 and we are still getting in the order of 1,000 or 1,100 applications - down quite a lot admittedly from direct filings before ratification. Nevertheless that throughput is still there to be dealt with. There is a demand in every country which has ratified for the grant of national patents. That's the way it is - I have heard industry nowhere say, 'National offices are redundant, please close them down, and let's get on with dealing with the EPO'. There are many small industries in most countries who would not want to use the EPO if they are concerned just with the local market.

There will be an emphasis at the national level to promote awareness of the patent system: the role it plays in underpinning R&D. national offices should play a greater role in that. The national office should be a repository for patent information - where you can get a fix on the state of the art, where having got such a fix you can discuss with somebody - professionally qualified people - whether something you have in mind is already part of the state of the art instead of re-inventing the wheel. The need for national patent systems will continue for the foreseeable future. I think the European patent office will make offers to minimise or even reduce the fees for European patents as their contribution to promoting the system. I think there will be more interaction between the EPO and the national offices to help the local promotion and awareness of the system. .... This could be summed as collaboration much more than opposition."

5.3 Substantive Examination by the Profession

For an ordinary (i.e. 20 year) patent application as opposed to a short-term patent application, the applicant must request the establishment of a search report. When it is obtained it will be sent to the applicant who then has time to make any amendments to the specification that are called for in the light of the search report. The Patent Office does not check or vet whether the amendments that the applicant makes are actually sufficient or whether other amendments might be called for. This means that the onus is on the applicant, which in almost all cases means the patent attorney, to ensure that the amendments are carried out. When that is done and confirmation is passed to the Office that the amendments are the ones required, then a patent can be granted.

While this does have some relationship to a registration system - or more correctly a system which does not carry out substantive examination - there is obviously examination being carried out by the patent attorneys involved. This means that the usual relationship between examining Office and attorney is missing: that of the attorney attempting to persuade the office to grant a patent on the issue of inventive step. The Irish office takes the view that patent attorneys are professional people who are registered in the Register of Patent Agents and are presumed to have integrity and professionalism in their operations. Moreover, if they take a lenient view of their application, they risk the patent being attacked for invalidity and revoked.

As to whether the Office is neglecting the issue of inventive step, it is suggested that:

"The office is neither side-stepping nor pronouncing on inventive step. ... It is a question of the patent agent doing a good job for his client. One could imagine certain situations in which the patent agent might advise the client that they consider all of these amendments to be necessary in the light of the search report or that claims have to be rejigged or narrowed. But at the end of the day if the client says, 'I know all that but I don't want to do it anyway - just get on with it', that is a risk - but the patent could be attacked during its term and revoked or amended substantially.

We have the possibility to turn the key and bring on substantive examination if that should prove to be desirable. We have not completely burned our boats on the question of examination."

When infringement is claimed on a short-term patent, before the patentee can initiate proceedings a search report is prepared so that both sides see the result of the search, allowing both to consider the validity of the patent. This was a feature suggested by Irish patent agents as a useful aspect for the law. There has been no history of proceedings since the introduction of the new law.

5.4 Searching by Contract

While a small core of examining staff are still employed at the Irish Patent Office, search reports are established under contract with the UK office, the Irish Patent Office having an insufficient search file to carry this out. In certain cases it is not necessary that an applicant requests a search report. If a corresponding application has been made in the UK, Germany, EPO or under the PCT which gives rise to a search report, then the IPO will use that published application and accompanying search report or the specification of the granted patent issued by any of those offices. This would usually be the route that anyone who used those other offices would follow. It is usually someone who does not want a German, UK or European Patent or who does not want to file PCT who would seek a search report.

At present the IPO is not in a position to carry out a detailed EPO type search on a patent application, but this does not mean that it would consider that searching could not be carried out in National offices in the future:

"But that is not the end of the road - if you can't do it yourself, then you can contract it to some office who can do it. ... The EPO search is obviously well regarded. It is a very expensive search ... But a search done by a large office which has the necessary competence could possibly be utilised by the EPO. I am not suggesting that an examination done by that other office should also be recognised - examination would still be required by the EPO if a search was done by a national office. But it is just an idea of mine ... I don't know if it will ever get anywhere."

The costs in developing a search file mean, of course, that only the DPA or UK offices (or, unlikely, the Japanese or US ones) might provide the subcontractor prepared to compete with the EPO.

6 Conclusion: renewal fees

As can be seen from the above, none of the national offices appears to want to lie down and die. The main reasons used to justify their remaining in business are:

• Local national industry needs something more relevant to their smaller protection needs than the larger European patent system.

• Information must be passed to the national industrial community and this is best done by national offices.

• The EPO requires competition to ensure that it is run more efficiently (and, in the argument by the DPA, keeps up its level of inventive step).

• The EPO is too expensive for many SMEs.

Such reasons will most likely continue to have validity with national governments. It seems, then, that the European patent system will not immediately - despite its success - become the single patenting procedure in Europe. What of the debate about the funding of the system which has been mentioned earlier in this text?

These national offices are representatives on the EPO's governing body, the 'Administrative Council', and have an impact upon deciding the budget of that organisation. In particular, the percentage of renewal fee income which is paid to the EPO is decided by this body ^[241] . As we saw earlier - there was a suggestion by some in the EPO that they were the only organisation which had its competitors on their Board and that the percentage of renewal fee income being 'withheld' was too generous to the national offices given the limited work which is carried out to support renewals. From the responses put by my respondents in the national offices, it seems unlikely that the EPO will be successful in persuading the national representatives that this renewal fee percentage should be re-negotiated. There were four main arguments put forward for this:

6.1 The EPO already has enough money:

"The arrangement at present is that the EPO gets 50% of the renewal fees which are generated by EPO patents in the national phase. There is no indication that the EPO is going broke and in fact the indications are to the contrary - that the financial system is rather healthy at the moment. Not healthy to the extent that procedural fees should be reduced. It is not necessary that the EPO should get all of the renewal fees or a greater share of renewal fees to bring about economies leading to a reduction in fees. I think this is a very important issue because already the EPO has almost 4,000 staff. If they are underpinned - to a large extent - by applications and therefore revenue from US, Japanese and European applicants, one can only wonder what would happen if all that extra revenue came their way ... Organisations tend to expand in line with their natural muscle."

6.2 The national industrial communities should be aided by the European patent system rather than subsidise US and Japanese applicants:

"[The cost structure of the EPO] suits the Japanese and US applicants who are now the largest users of the EP system. Indeed I've often made the point ... that I would have thought a European patent system - when it was being created - would have been created for European industry and inventors. In other words that it would be used by the industry and inventors of the country which actually ratified it. It is normally the case with international conventions that you have to ratify the convention to become a part of the system which they create. This has not been the case with the European system. Ironically, at the end of the day we now find it is a system which facilitates patenting in Europe by Japanese and US companies."

6.3 Renewal fees should not be seen as direct expenses but rather in a national social/cost benefit context:

"Annual fees are not a kind of income which should be compared with costs. Annual fees are a policy issue. We deliver a monopoly for 20 years to a patentee and the policy question is 'What is the social/cost benefit analysis of having no free competition in a field of technology?'. The general idea behind patent policy is that one has the possibility to earn back the investments in R&D. But how long does it take to earn this? That differs from area to area. ... it's impossible to control the equilibrium by legislation. The mechanism we have is in raising of the annual fees each year, so that each patentee knows that the charge for his monopoly becomes heavier. So he has to decide. It is the highness of the annual fees ... creating the equilibrium between social benefits and social costs of the patent system. This argument is always forgotten - it is not only the costs and benefits for my office - you have an annual fee to prevent people keeping monopolies for too long.

From more than 100,000 patents we have in the Netherlands, only 6% come from Dutch firms. ... So it is not a cost/benefit in the simple sense."

Finally, since the national offices argue that they are subsidised by governments and it is not clear that they are profitable enough to lose income, it seems highly unlikely, therefore, that the national offices themselves - without political pressure applied from their respective governments - will change their attitude towards the funding of the EPO. However, as we have seen, there is a highly political environment in which all patenting agencies have to work. A radical change could arise if national governments decided that patenting was something which should be laid on the altar, either of privatisation or European integration. If so, the national patent offices would have little option but to conform with the desires of their governments.

Chapter 9: Conclusion

1 Introduction

In the preceding chapters we have tried to glean - from interview and questionnaire evidence - the view of the patent attorney concerning the European patent system. We have included in this system the various routes offered. The applicant who wishes patent protection in the European Union and associated countries has a range of tactical options open and choices to be made which arise from these routes. Patent protection is available from three sources: the national Patent Office for the country where protection is desired, the European Patent Office for a 'bundle' of national protections, and also a similar step towards a bundle of protections through the Patent Co-Operation Treaty route (usually provided by the EPO and termed 'Euro-PCT' application).

The patent attorney is one of the key figures in the choice of route and also in the system as a whole. He is not just a representative of the client who - without further thought - does the client's bidding (though, of course, at the worst this can be the case - with associate clients). He will frequently advise clients on route; he can push for changes in the patenting system; he can put pressure upon the system to mould itself more to the client's needs; and he can try to ensure that the system supports his own professional and business needs as well as those of the client. It is a clear presumption of socio-legal research that these kinds of factors are vitally important when trying to understand a legal area. Those who look simply to rules and decisions will miss out on a whole host of signals and messages about what is really happening in 'the system'.

However, it is not the case that European patent attorneys have had an absolute dictat in matters relating to the success of the EPO. It is clear that a large bulk of the EPO's income comes from non-European patent applications - particularly those from Japan and the US. As we have seen in this text, patent attorneys who service foreign applications usually have little influence on the patenting strategy of these foreign applicants. It is therefore possible that the EPO could have been a success which was built primarily upon foreign applications, given the typical role as associate attorney to simply apply for patents as their foreign attorneys demand and, if not get the best deal for the clients, at least keep them happy. An EPO success which was built upon these non-European applications may have produced a different EPO - but we, of course, have no way of knowing whether this would have been so.

In this study, there was no attempt made to look at foreign perspectives on the EPO. This is obviously an important element given the current percentage of applications which come through this route. Is it a failing of the research project? It is difficult to know. We do know - from some US sources - that the general approval of the EPO is high, though there are (just as in Europe) cries that the system is too expensive, particularly as compared with the USPTO. It would require a study of the reasons why businesses are keen to gain protection in the European market before we could tell whether there was any difference in attitude between US and European patent attorneys. My suspicions are that there are probably few differences - and that just as the PCT route is being seen as popular in the European context, it is becoming so in the US one for the same reasons.

While the attorney's view is highly important, it is not naturally the only view which should be considered: the applicant, the judge, the examiner all have views which are important to understand. However, in this study, we are looking at the patent system through one particular window - the window in the office of the patent attorney. This means that the study will contain a bias - in terms of research results - towards the values and presumptions of the attorney. That is not a problem, so long as it is clearly understood by the user of this research. All research has this problem of 'research viewpoint'. For example, studies of judicial decision making in patent matters would hardly produce the same results as studies which looked at decision making by patent examiners. Just as there can be no truly objective measure of inventive step, there can be no means of carrying out 'objective' research. Epistemological problems will always be lurking in the background.

What are the conclusions to be drawn about the patent routes which the clients can take? Our interest ultimately lies in the questions:

How does the patent attorney view the different services, patents and service offered by the three differing patent routes?

How sophisticated can the individual attorneys reasoning be about the benefits or disadvantages offered by these routes?

What future does the attorney see for patent developments in Europe?'

From the evidence presented in earlier chapters we can draw together conclusions. These practical queries - as seen from the attorney's perspective - relate to the more detailed points set out in Chapter 1. For convenience, these are repeated here:

• harmonisation of substantive law is less effective than has been believed, if the interpretation of a nationally harmonised point differs substantially throughout the community. While this would be most obvious in, for example, interpretation of the 'inventive step' in the patent field, there may well be other less obvious substantive law factors which mitigate against harmonisation.

• there are procedural aspects which clients feel are of significant advantage to them which arise from the national perspective which encourage them to choose the national rather than the community route. For example, the opportunity of earlier litigation through early grant of application.

• there are tactical issues where, for example, applications for patent are made according to the commercial context in which the invention has been produced and where, for example, speed and standard of search are judged to be of import to the applicant.

There are a number of factors which need to be combined in order to fully answer these points. In this concluding chapter we try to do this.

2 General Views of the EPO

There is a general finding that the European Patent Office is seen as a considerable success by attorneys who use it. This view transcends national borders. As the research progressed it became clear that there is a commonality of attitude throughout the patent profession. Though they might be operating in different jurisdictions with slightly different options available to them, their clients appear to be operating in the same business world and making the same demands of their attorneys, and this tends towards producing a common response to common problems. The general view is certainly that the EPO has tried to build a system which is workable and which attorney's like. This is not to say that there is total happiness, but that the system is seen in a more positive than negative light. This finding was surprising, since criticisms of the EPO are commonly found. It may be that the criticisms which we do find are echoed and amplified and tend to bias the perspective away from the more positive picture. As the research interviews moved from one country to another, it was expected that views would change significantly. This did not happen and the spread of views from each country was broadly similar, and broadly positive.

The EPO was seen, by most attorneys, to be accessible and user-friendly. The accessibility of the EPO, some suggested, had even caused the national offices to improve their handling of applications and queries. Distance to Munich was not seen as a particular problem, though it was mentioned as adding to costs for UK attorneys. However, it was felt that the EPO tried to be helpful in helping attorneys to arrange trips to Munich so that rather than deal with simply one piece of business, the attorney could deal with several on each trip. For many UK attorneys, it was suggested that it was almost as difficult to get to Newport where the national office had been relocated as it was to Munich.

Cost of the EPO patenting procedure (in comparison with national patenting costs) is an issue which is seen as a problem and is consistently referred to by attorneys. Translation requirements are seen to be a major cost but most attorneys do not view this problem as easily surmountable. The recent attempts to gain agreement from the Administrative Council to changes in costings and language requirements, though, show that the EPO has external pressures which inhibit attempts to reduce translation cost, despite its desire to do so. There is a general feeling among attorneys that the EPO is particularly well-funded (staff salaries free from national tax for example) and some suggest that perhaps the expensive 'international' character of the organisation is not as important as the EPO might tend to believe. It is clear that cost of patenting is as important factor which clients take into account and EPO costs must affect patenting decisions: but the European system will still be cheaper than a number of national patents. There is a general lack of enthusiasm for the CPC which has been felt to have lost ground due to translation costs.

Despite the positive view of the attorneys towards the EPO, there is a continuing demand from attorneys for service from the national patent offices. This is more marked in Germany than in Britain or the Netherlands. In Ireland the new patenting system was relatively untested and it was difficult to judge what was happening to the role of the national office, and in the Netherlands political factors have negatively affected the operation of the national office. Why should there still be a demand for the national offices? There are several reasons. First is that many of the clients simply are not interested in international protection - or rather, while they may be have interest in wider protection, they are unwilling to pay the higher costs of international protection. Second, is that the German office clearly felt its role, under the then President, was to be a strong competitor to the EPO - in matters of costs, level of protection and service to client. Such a role has had a strong effect upon the German attorney's choice, and as we have seen some German attorneys believe that the level of inventive height at the DPA suited them better. Third, the German office has had the extra facility of Gebrauchsmuster offering procedural advantages to the attorney in early litigation etc. Fourth, the general attitude of all attorneys seems to have been to welcome the diversity of patenting route. Rather than simply opt for one, they have taken each of the routes and analysed their advantages and used these advantages to the benefit of their clients.

The first of these reasons for national patenting reflects the fact that national patent protection is particularly marked by those representing clients who are SMEs. This implies, of course, that if there are advantages from patenting at the EPO that the advantages are accruing mainly to non-SMEs: that is, to larger European companies and those applicants from Japan and the US. This might be viewed as worrying, since pressures to mould the EPO - if pressure is related to application numbers - will not come from SMEs. This means that European patenting philosophy is being biased towards the needs of foreign enterprise more than local, smaller enterprise. There appears to be awareness of this at the EPO, but no clear solution is suggested for handling this. There may be some solution in the recent fee cuts at the EPO. Of course, the national offices are keen to take this SME argument and use it as a rationale for their existence - that they are able to provide local support to local industry and reach the parts which the EPO cannot reach. Certainly, if the local applicant was not available, it is difficult to see how application numbers could be kept viable for the national offices without some means of funnelling applications from the EPO to the national offices for examination. The EPO does not presently appear to be keen on this tactic.

3 Harmonisation of Substantive Law

It is obvious that there are some problems of harmonisation of law across the EPC member states. These problems of harmonisation are of three kinds:

harmonising of the interpretation of the EPC during litigation in the member states. This is clearly a problem as can be seen by Epilady/Formstein. Another example is that of the differences which are being taken to protection of software.

harmonising of the examination process - i.e. the application of substantive examination law - during patent application throughout all the patent offices of the EPC member states. This is a problem as can be seen from the discussion of differences of inventive step, and also the approaches used to formalise this (e.g. the problem/solution approach).

the third harmonisation problem is that of litigation practice throughout the EPC member states. This final point was not researched in this study, but indications are - for example in Adams study ^[242] of 'forum shopping' that it is potentially disruptive of the harmonising process.

The question is: do these problems of harmonisation of substantive affect the attorney and his attitude to patent route? In some respects they do, but mostly the conclusions are, they do not radically affect the views of the patent attorneys. The problem seems to be that prediction of the outcome of litigation is difficult enough in any legal area. It is not just the substantive law which is the problem, but the fact-finding process can lead to unexpected results. This means that - for the average patent attorney who spends most time creating patent applications or doing similar kinds of intellectual property work - prediction of how a given case might result from the application in hand is difficult. It is especially so when that litigation may be several years in the future: one is not certain of just what prior art may be discovered in future; and one is not certain which claims of the application under construction might give rise to litigation. The combinations of possible outcomes are large. Thus the attorney who tried to consider choosing filing route according to potential litigation could be likened to a gambler trying to choose all the winning horses in a day's racing calendar.

This is not to say that filing route cannot always be affected by potential litigation. There is some belief that the UK would be the most difficult court in which to validate a 'software patent'. Whether it is actually true that a Dutch court would - in the final decision - have a more lenient view of Article 52 than a UK court is difficult to adjudge. None of the attorneys I interviewed suggested that they would be able to predict this. Judges are, after all, human. However, in some countries, it is viewed as pointless considering patenting there because the courts have little understanding of the patenting process: "For example, with Italy and Spain I say, what do you want with a patent there? You cannot prosecute it because the Spanish are not even used to looking at patents. We cannot really enforce it. The enforcement is really a big factor for me."

Patent attorneys are usually not keen on the litigation element of patent practice. Only one of the interviewees in this study indicated that he positively liked litigation and had built his practice on advising clients on litigation strategies. We might say that this approach to litigation is consistent with that of the every-day lawyer. Other research has indicated that UK lawyers see going to court as wasteful of time, effort and energy ^[243] . Most lawyers want resolution of legal problems rather than court-based conflict. Patent attorneys seem to be no different - wherever possible they would advise their clients to negotiate cross-licenses etc., although there are some clients who are more litigationally inclined than others.

All attorneys are aware of the diverging trends in patent philosophy (i.e. 'literal' and 'non-literal') and see this as a potential (but not measurable) problem. However, most did not concern themselves with this in practical every day life. They took the view that this was interesting, but probably irrelevant to their practice. Certainly, it is clear that the factors which are seen to be important to patent attorneys are not necessarily those which are reported and discussed in the EIPR. There is little desire by the practitioner to confront technical legal problems: better to try to get on with the daily routines of looking after the client's interests and negotiating with examiners, always hopeful that the technical legal problems will affect someone else's patent that your own. Effectively, then, patent route does not appear to be affected radically by problems of harmonisation of substantive law

This project was not overly concerned with the views of judges. However, those small number of judges interviewed did seem to have a problem in accessing useful and full case reports from other jurisdictions and would welcome mechanisms for closer links with other European judges and judicial information. German patent judges (existing in much larger number than in the UK) seem to be more isolated in this respect and appear to be particularly keen on opportunities to meet and discuss the problems of the patent world.

There is little evidence that attorneys believe that the German influence in the EPO is too large (despite location). EPO philosophy is seen to be balanced between the German and the UK models. However, there is such a feeling within some of the examining body of the EPO itself.

4 Procedural Aspects

There are several factors - under the rubric of 'procedural aspects' which are important to the attorney and do seem to significantly affect the attorney's strategy. These are:

the availability of utility model protection may affect the attorney's patent filing. In particular, the German utility model offers the attorney advantages which can be useful.

the different fee structures are seen to be highly significant to many clients. For example, the low entry costs to the national and PCT patenting systems are highly attractive to SMEs.

the speedy search of the national offices and, particularly in Germany, the very early first office communication are highly attractive to the applicant. That these are received at no extra cost to the applicant are also significant.

The first factor was particularly found to affect the German attorney's perspective of their national office. They were very keen on having the extra tactical dimensions which were offered by the utility model. These allowed quick filing and registration to lay claim to an idea; potential peeling off of parts of patents to gain utility model protection; and - when litigation was underway (but a patent had not yet been fully examined or granted) a utility model combined with search report was seen to give fair warning to competitors. Not only were these tactical issues important, but the utility model was seen as offering protection for a reasonable length of time - though as one attorney suggested, he always told clients that 10 years looked longer in foresight than in hindsight.

In the UK, there is no such extra protection, but some attorneys did mention the added rights to industry of design rights. However, there appeared to be no such positive view of these design rights as an aid to patent litigation, as was found in Germany in the discussion of utility models.

The procedural rules concerning fee structure are central to the choice of route. This is most clearly demonstrated by the PCT route consistently being advanced as important to clients who were not sure about their patent filing plan. For those who have no such concern about 'buying time' (for example, for associate clients in the US and Japan) the PCT route had fewer advantages. But for the client who is unsure about what a search report will discover or who is looking for commercial funding or support to develop the idea, PCT offers a means of delaying the payment of fees until more information has been gleaned. This is seen as the main advantage of PCT.

For SMEs, too, the fee structure is highly important. They may want protection in the wider European market, but they are prepared to settle for national protection at a lower cost of search and examination. All attorneys (and one must suppose their clients, too) are aware that they are not paying the real cost of search and examination at the national office - that the fee structure which allows them cheap access is due to the relationship between examination fees and renewal fees. They do not complain about this advantage from the national office. However, this advantage was really only useful to SMEs, because the EPO fee structure works to the advantage of the larger industry who seek protection in more than 3 countries. Usually attorneys felt that break-even point is around 4-5 countries, depending upon which countries are designated.

Speed in the provision of a search report is vital to those applications which are tentative (by definition these are from SMEs, since they have the least access to prior art before application). It is only when the search report is received that the applicant can decide how to proceed. The EPO clearly has an advantage in the quality of its search report, since it is seen to offer the most comprehensive overview of the existing prior art.

For most applicants, the speed of examination is not so important ^[244] . All attorneys are aware that they can manage to get speeded examination if required - from national offices as well as from the EPO. What is useful, though, and may tend to encourage application to national offices is that there is a usually very early first office communication which occurs usually within the priority year. This will give an even clearer indication to the applicant than the search report of the likelihood of protection. The applicant is thus well armed. However, once again, this procedural advantage is most useful to SMEs who are more likely to be interested in 'tentative' applications. Larger industry will have a clearer view of the value of their applications and of their potential novelty and will not be so reliant upon office indications (as well, of course, as looking to cost savings from the EPO's wider geographical coverage).

Procedural aspects are thus more important to the attorney than are those based in substantive law. At least with procedures, they are relatively clear and can be counted upon in the decision-making processes.

4.1 Examination

The EPO has set a level of inventive step which is regarded by most patent attorneys as acceptable. This level is seen as being a compromise between those offered prior to the EPO's inception by the German (higher level) and British (lower level) offices. This is not to say that all attorneys were happy with this - some suggested that foreign applicants (particularly Japanese clients) felt that levels were too low, and offered too little protection because of this lower level. Some German attorneys suggested that the German level was still higher than that of the EPO and was of more value to clients. However, the level of inventive step across the EPO is not seen by all attorneys to be harmonised. Individual examiners throughout the EPO are frequently seen to differ markedly in level. How is this explained? The difficulty is seen to be simply that it is a human decision making process, and that despite the best efforts to mechanise this decision making process through concepts such as the problem/solution approach and well documented procedures, it is by no means a simple process to determine novelty or inventive step. Novelty is easier, but the experience of the search examiner must impact upon the process and in a large staff of search examiners a spread (however narrow) of abilities will be found which will act against any programme of harmonisation which imposes mechanical solutions.

The inventive step, of course, is based upon a legal fiction - the man skilled in the art who has access to every piece of art - and such a basis will always make the routinisation of the examination process difficult. It should also not be forgotten that patenting is a dialogue between the substantive examiner and the attorney and some attorneys will simply be better at persuading examiners or extracting the most for their client from that attorney.

It was suggested by some attorneys in interview that they sometimes wondered whether this lack of internal harmonisation to have been caused by the nationality of examiner affected the examiner's philosophy and approach to examination. This simply taken, would be that the German examiner would impose a higher level of inventive height than an Italian because the two individuals would be representative of their national patenting culture. However, despite being frequently mentioned, no interviewee believed this to be true. All mentioned Swiss examiners who had lower requirements for patentability than Italian examiners, for example. The argument that nationality impacts upon examination may have been true in the early days of the EPO when examiners were already experienced in national offices and were simply transferred to the EPO. This cannot be true today, since most examiners have never held positions in national offices, having been directly recruited to the EPO and therefore, one suspects, recruited without any patent philosophy at all.

Interviewees all suggested that the difficulty of internally harmonising level of inventive step is seen to be a problem for all patent offices, not just the EPO. The individuality of the examiner is seen to have an important role in the system, and this militates against tactical use of the competition offered by the European patent system except in certain, limited categories. Thus the attorney who tries to be too tactical by sending applications to the national office or EPO based upon the substance of the application will usually be unsuccessful because he cannot know who the individual examiner will be. But what are those limited categories where there appears to be a difference in approach between offices? One of the major ones appears to be software where the EPO is seen to be more amenable, and also there was the suggestion that some inventions where the science was not particularly well-founded might fare better at the EPO. It is difficult to tell how true these assertions are - the research project did not direct itself at specific application types and only a small proportion of the interviewees were active in software protection.

The EPO search report was seen to be of particularly high quality and was extremely well regarded. Some felt that the original system of search examination was best, and that the combination of search and substantive examination (under BEST) would encourage the unwanted 'hunting effect'. Others did not see this as a problem. All interviewees felt they would have to await developments and more experience with the system before they could tell whether - from their view - it was a positive change.

It is clear that most attorneys rarely carry out searching prior to preparing an application. The exception is Ireland where this is related to the Government grant-aided nature of industrial research. Pre-application search is also carried out in multi-national companies. The high standard of EPO search is therefore seen as a highly advantageous factor: the attorney can be pretty sure that if the hurdle of EPO search is overcome, the application will not fail on novelty. Of course, all are aware that some piece of unexpected paper may always turn up, but it was felt much less likely to turn up after an EPO search, than after a search at any national office.

Examination was seen to be acceptable but the imposition of the problem/solution approach on all applications was seen to cause some problems. A criticism heard frequently was that examination was 'too formalistic', but it is difficult to see how formalism can be reduced from a system where harmonisation is a major goal. The problem/solution approach was found by many to make it easier to complete applications, so long as they fitted this approach, since they knew what the examiner would be looking at.

There was no clear over-riding view that the three-man examination team was effectively carried through in practice. Some had direct evidence that it was being carried out, but primarily when there were difficulties involved. Others treated the idea that all examiners would study and analyse the application to the depth required for proper understanding with scepticism. There was no clear view whether this system was markedly superior to that of national offices with single examiner systems. It was seen however, by most attorneys, to be helpful in certain situations.

The EPO is not, in the main, a legally oriented organisation: it is a technical one where the vast majority of staff have scientific or engineering backgrounds and have been latterly trained in legal tasks. The attitude which pervades the search and examination divisions is thus primarily practical, rather than evasive, balancing and legalistic as might be found with academic lawyers. Generally this practical approach to be found in the examination division was welcomed by most attorneys, who are - like lawyers in practice - interested in solving problems, finding solutions and getting their client's needs sorted out without necessitating great legal debates.

4.2 Opposition

Attorneys generally liked the opposition proceedings though most felt that clearer guidelines and training on procedural matters for examiners would be beneficial. The problem most found was that there was no clear procedural training for examiners, and the flexibility offered could be confusing - for example, was the examiner listening and noting arguments which were unacceptable (without evidence, perhaps) or simply letting the attorney have his say but ignoring the unacceptable arguments. Since this research such a training programme has been put into effect, under the title ChOral.

There was much made of the fact that oral decisions would be given after the opposition hearing, but that some months would pass before written reasons were received. Almost all attorneys felt that this was not acceptable, and that if reasons were known at the oral date, then they should be given at around that time. Some sceptics suggested that the time taken was to allow the examiners to think up reasons to support their judgements.

The time taken to reach opposition hearings was also considered unduly lengthy by attorneys, though the EPO response was that this was caused through a combination of EPC requirements and the practical problems of arranging suitable dates for all involved.

4.3 'Eggs in One Basket'

In the pre-EPO days and the early years ^[245] there was much concern from industry and representatives that the European patent system would not be successful because all the applicant's eggs were being placed in one basket with the EPO procedure. If the applicant was unsuccessful, then all protection would be lost, if was feared. This was a major concern at the time. It is insightful to note then, that the phrase 'eggs in one basket' did not appear once in interview, and has not been discussed in the literature for some years. With near twenty years of EPO operation this concept appears to have been completely removed from the thought patterns of the profession.

5 Tactical Issues

Tactical issues, of course, include those just mentioned above. We might say that everything to do with choice of route is related to tactics. However, here we are particularly concerned about the more commercial aspects which impinge upon the applicant - using the patent as a commercial tool, for example.

It is clear that one of first decisions which is made by the applicant is that of geographical protection. It is rarely necessary to acquire protection in all European countries. The trade mechanism within these countries means that by carefully choosing three or four, it will not be possible for competitors to evade a client's protection. For example, invention in the car industry can be protected by patents in only those countries which manufacture cars - there is no need for protection in countries where cars are only marketed. This has the effect of reducing the translation costs required by the applicant. It also partly explains why industry has seemingly lost interest in the Community Patent - for most ideas which required protection, a more limited block of protected countries can suffice: there is no need for blanket coverage of Europe.

My interviewees consistently told me that smaller clients - who were usually inexperienced in patenting - wanted wide geographical protection. Some wanted to protect in every country in the world. They had to be persuaded that this tactic was not appropriate, unless they were prepared to pay large application and renewal fees. Usually being told the potential costs reduces the applicant's desire for global protection. SMEs were particularly encouraged to use local protection, since there would be little interest in licensing income, and only manufacture and sales was to be protected. This means that attorneys will encourage smaller enterprises to consider local protection, rather than encourage wider protection and licensing. Of course, given the difficulty of such licensing, it is not always a criticism of attorneys that they try to moderate their client's use of the patent system.

The European patent was initiated as a means of providing a strong patent. It is viewed by attorneys as being a good patent (well searched and examined to reasonable inventive height) although some still consider the national patent to be stronger. One German attorney told me that he considered a German patent to be 'watertight'. However, the great weakness of all patents is that of the existence of prior art which later comes to light. The European patent is seen to be better in this regard, because the standard of search is better. However, while it is not - to most attorneys - watertight, the chances of someone litigating against a patent are low. Thus if the patent survives opposition it will be viewed as an extremely well-examined patent and be considered a strong patent. This is one reason, it seems to me, why the opposition procedure (found in the EPO and in the German office) was liked by attorneys: strength of patent could be achieved through a more technical than litigational form of examination.

Generally, commercial tactics are governed by cost to the client. While a strong patent is desired, lesser protection will frequently do, if the costs associated are also lesser. Time and time again I was told that the cheaper national search and examination - though not providing as well examined a patent as the EPO - was 'good value' for the client. The conclusion must be that - patents are commercial tools and they are viewed in a highly commercial manner by their users and the commercial perspective sees advantage arising from the diversity of route:

"I think all of the regional and international differences are good because they add to the possibilities. They add however, also to the necessity and the need of good education for the patent attorneys. It is almost the problem of a chess player to correctly place the men in the big field you have."

5.1 The PCT Route

The primary attraction of the PCT route for most attorneys lies in the ability to postpone costs and decisions about patenting. This was seen as a particularly important element for SMEs. It appears to be almost solely the lack of this opportunity from the EPO structure which led to the rise of PCT applications from European industry. Only a relatively small number of attorneys mentioned the international advantages of the PCT route since most attorneys interviewed were concerned with European or national applications.

It is clear that the PCT route is seen as highly useful and ever-improving as a patent route. It is felt that WIPO has done much to make the PCT route easier through making the datelines less formal, and the attorney can (as he can with the EPO) manage to salvage something should a deadline be missed.

There are other benefits of PCT filing. For example, if the preliminary Chapter I examination was carried out at the EPO and the application went onto the Chapter II examination stage, it would likely be examined by the same examiner. This examiner could be expected to take a similar view as was taken at the first stage, giving a degree of confidence to the attorney.

5.2 Utility Models

The usefulness of the utility model is seen positively by many attorneys. German attorneys are most in favour but so are British and Dutch attorneys in private practice are, too. In Ireland, the existing system is seen to be mainly useful as a tax device, and for dealing with applications from clients which are 'no-hope' in commercial terms. The advantages of the German system are, as noted earlier, primarily tactical and are seen as adjuncts to the patent system rather than as replacements for them. The attitude generally amongst the British attorneys who were in favour was that it would increase the options they could offer clients. However, in interview, the British perspective was more moderate than that of the German view, the latter having had much experience of their own system.

Many attorneys indicated that it was sometimes worthwhile to have a piece of paper which could be waved at opponents. The advantage of the utility model is that it is a piece of paper which can be got early in the protection process. Some attorneys suggested that in many cases it was as useful to their clients as a full patent. It was sometimes tactically sensible, therefore, not to proceed with a full patent and simply rely upon the shorter term utility model at lower cost. If paper waving was to be done, then it was better to have a search report which could be waved as well. This clearly shows the advantage of early an search report.

There was little support for a European utility model, since utility models were seen to be a form of protection which were particularly related to the local market. Making the system European was thought to bring too much complexity to the patent system. However, search examination would, of course, have to pay attention to these utility models anyway, and the main reason from those who were opposed to such a protection (even if it was only available nationally) was that it would simply complicate their client's lives by providing 'mine fields' through which they would have to tread.

6 Conclusion

This aim of this study has been to look at the problems of European harmonisation in one particular area of law. Prior to the research being undertaken it did appear that there were some significant problems in harmonisation due to differing attitudes in the patent profession in the different European countries. We have clearly shown that this is not actually the case: there is a highly positive attitude to harmonisation which can be found through all the professional representatives involved in the European patent system. They are certainly not acting in any way which would detract from their client's use of the European system when it is to the client's benefit. However, there is some sophistication about choice of route which means that the attorney must be aware of the client's needs. Usually these needs are geographical, financial or to do with the nature of the industry in which the client is involved. These set the basic parameters of the system and control the initial advice which is given to clients.

There is some consideration given to the nature of the protection offered by the various routes. This depends upon the nationality of the patent attorney, since the protections offered by the various national offices differ. The German office can provide complementary protection in the form of a utility model. This is a highly prized aspect of the German system, allowing early litigation and some flexibility in protection (e.g. 'peeling off' utility models to develop new claims). The important element of 'inventive step' however, is an aspect of protection where the level between the various offices is difficult for the attorney to predict, and this means that it is not possible in most applications for the attorney to choose route according to this. It is possible for an office to set general limits on what is inventive and what is not: we have evidence that the introduction of the EPO certainly raised levels at the UK office and reduced them at the German and Dutch offices. But it is difficult to apply a rigorous standard level across an office - that is, internal harmonisation remains a problematic.

On the financial level, both the UK and German offices offer a measure of competition due to reduced patenting costs in comparison with the EPO which is welcomed by the client, particularly the SME. This is less useful to the larger client who needs more widespread protection and can make use of the savings offered through the EPO procedures. The Dutch and Irish offices, due to lesser numbers of application, appear to be limited in what they can offer the attorney, and we have seen that they are not so liable to see themselves as providing any large scale opposition to the EPO.

Choice of route can also be affected by client indecision in the patenting process. Not all ideas will go through the system and the attorney can impact upon the client's choice of route to reflect either this lack of decision or existence of clear plans. Time can be bought through the PCT route; early search and examination can be got from the national offices (particularly the German but also the UK office); and the best search of prior art is got from the EPO. The result is that no patent attorney I interviewed wished for any change in the availability of a variety of patenting routes. All desired choice and flexibility. While the EPO is generally welcomed as providing a service which is of benefit to clients, there is no desire for the demise of the national office. The national office is seen to provide benefits, primarily to the SME but also because it offers a standard against which the EPO can be gauged. For those national offices which are able to provide this standard, there seems to be no desire to close their office doors and transfer their work to the EPO.

The EPO has been enormously successful. It has succeeded in attracting many more applications than was initially planned. Not only has it been successful in the numbers of applications, but it has developed a highly influential legal philosophy which is bringing - despite some problems on the way - harmonisation to patent examination in national patent offices and to patent litigation throughout European courts. The history of patent offices has usually been one of tension between the office and its national court. We do not see this with the EPO which, by its trans-national position, has been enabled more successfully to affect the interpretation of patent law. This has been so despite the absence of an appellate court. The success of the EPO has therefore been a worthwhile area for study - both of patent harmonisation and for cross-national lawyering.

In intellectual property terms, the patent is certainly the area which has proven that successful harmonisation can occur ^[246] and should provide lessons to lawyers that technical legal problems can be overcome if there is a professional need for these to be so overcome. Though much academic debate has been spent on the problems of harmonisation (the literature on, for example, Epilady demonstrates this), the needs of any legal system are that, somehow the system will continue to function due to the simple day-to-day routines which lawyers develop to get on with their tasks and earn their livings.

The patent area is also noteworthy in other intellectual property terms. For example, it demonstrates that having a public service organisation with a role of assessing public and monopoly owner's rights is one means of achieving a well-considered balance between these pressures. Compare this with the situation in copyright where European harmonisation has, many have argued, has been to the detriment of the public's rights ^[247] . Laddie, in his review of the monopoly of copyright, argues that the balance between the public's right and the copyright owner's right is not well set, in part because there is no requirement for independent analysis of the claimed monopoly:

Another of the problems with copyright law is that, unlike inventions protected by patents or designs protected by registration, the requirements for qualification are so low as to be virtually non-existent ... As another member of the judiciary put it, the fact that our system of communication, teaching and entertainment does not grind to a standstill is in large part due to the fact that in most cases infringement of copyright has, historically, been ignored. ^[248]

It is the balance which clearly exists in the patent area and yet which is nearly non-existent in the copyright area which gives rise to the reported suggestion at the beginning of this text that patent law is the 'hard core' of intellectual property law. One can see the balance clearly between the monopoly right to use an idea and other's right to work around it and to have access to information about that right. Set against the patent system, other monopolies do not always appear so beneficially balanced.

Finally, there are a large number of areas of possible further research which arise naturally from any research project. These cannot, by the very nature of things, be examined in any detail in the original research, though they do impinge and will affect any final view of the research area. For example, the role of the EPO as an independent body which has substantial influence upon the legal and economic systems of its membership - both EU and non-EU; the future relationship of the European Patent to the Community Patent; the more detailed study of opposition and examination in practice (particularly interesting in the software area); the litigation of European patents in countries where there has been a history of registration etc. These are all areas which the reader will find touched upon, but not examined in any detail, in this text.

Also, this study did not look closely at the appellate elements of the EPO. There are, however, indications that both attorneys and some EPO staff would like to see changes in practice and role of the Boards of Appeal and Enlarged Board of Appeal. The tensions which surround the appeals processing in the EPO have been noticed in the literature ^[249] but have not been properly or fully investigated. In particular, the tensions which seem to be particularly relevant are:

Between the substantive examination DG2 and the appeal processing in DG3. For example, that DG2 operates very much on a practical, 'engineering' level whilst DG3 has responsibility to consider the wider framework of patentability. This aspect covers the role of the PPP Committee and its relationship with DG3.

Between the interpretation of the EPC by DG3 and the advisory role of DG5 to the President's Office. It is possible that different philosophies exist between DG3 and DG5 which lead to non-heterogeneous advice being given to the President.

Concerning access of users to the Enlarged Board of Appeal. Access to the Enlarged Board of Appeal is presently from the President or Boards of Appeal. This means that the jurisprudence of the EBA may develop too slowly for the needs of the system, in relation to obtaining an authoritative decision on an important point of law, and to ensuring uniform application of the law.

Between DG3 and the EPO as a whole. In particular this relates to proposals by patent attorneys - found in my previous study - that the role of the Boards of Appeals might be extended and/or divorced from the EPO. The important question is: is greater independence of DG3 essential or desirable for continuing public confidence in the European patent system.

Between the national courts and DG3. For example, the calls from the High Court in London that national patent judges should have a more active - indeed guiding - role upon interpretation of the EPC via the Enlarged Board of Appeal. And, contrary to this, is the UK Court of Appeal which has suggested that the EPO's interpretation should take precedence over that of the UK courts. Questions relate to greater participation by national judges in the EBA, or in a European patents appeal court which might be a further level of appeal on points of law above the EBA may provide better harmonisation and or public confidence in the European system. It may also provide a mechanism for discussion of the 'public domain' to be enabled.

Between the EU and DG3. In particular, although the proposed CPC has not come into effect, there has - during the history of the EPO - been a tension between the economic interests of the EU and those of the wider partners in the EPO. This also concerns the effect a Community Utility Model might have on patentability; and the relationship of any European Patent Court which might be formed.

Finally, would the development of a more coherent system of appellate jurisdiction within the European patent system help develop harmonisation with Asian and American patent systems?

These are all highly relevant to a full understanding the operation of the European patent system. The results of this present study demonstrate that the EPO has been a highly influential agent in European patent matters: this has gone beyond the early goals which emphasised the 'efficient', mechanical processing of applications. It is now the case that the EPO is the single most important element in European patent philosophies. It is clear that understanding the Boards of Appeal is a further necessary step in understanding the future of the European patent system.

140

Appendix 1: Research Strategy.

1 Introduction: the difficulty of socio-legal research.

Socio-legal research is most usually directed towards the problems of one particular jurisdiction. This factor is only natural since most legal problems are related to one legal jurisdiction. It is the social problems (rather than the legal aspects) which are trans-national and which are often looked at in comparative ways: i.e. how each jurisdiction solves or resolves these social problems. It is also, perhaps, the case that in the past socio-legal studies have been more directed towards the sociological aspect than the legal. Much debate in the 1960s and 1970s was about whether socio-legal research should be done by lawyers or done by sociologists. It is generally the case that lawyers have kept to law and left socio-legal studies to sociologists.

This is not the place to go into the internal debates of a discipline, but it is my feeling that the subject area has concentrated too much upon the social (e.g. studying the structure of legal professions etc.) rather than trying to study how technical law is used in practice and affected by social context. This project is an investigation of this latter kind - it is not the usual sort of socio-legal study because it looks at the implementation of the EPC in a social context which is that of three legal cultures. The EPC provides a case study where we have an intermingling of law and practice in different jurisdictions (without the limiting pressures of a common appeal court) with the added spice of commercial life ever present.

The aim of this research has been to demonstrate the ‘flavour’ of the patent attorney’s working life and his advice to clients and to answer some basic research questions about the practice of patent law. Pressures - both legal and economic - impinge upon this working life; hopefully the earlier chapters convey enough information so that the reader can understand these and can understand the complexity of the patenting system.

However, it is important to look at the techniques used in this research. The research was primarily directed to making use of qualitative information gathered in interview, with secondary information from a survey carried out in Germany, the UK and Netherlands. Below, indicators are given to the technical problems of this kind of research work.

2 The Problem of Questionnaires

The questionnaire is a form of data collection which has long been beloved by psychologists, sociologists and market researchers. In comparison with interview techniques it offers advantages of:

(i) large scale contact;

(ii) ease of quantification of collected information (sometimes mistaken for ‘objectivity’);

(iii) control of question agenda (sometimes difficult in interviews);

(iv) allowing collection of some kinds of information which the interview situation does not easily enable (e.g. relating to numerate information).

Perhaps these advantages have blinded many users to the problems of questionnaires - the severity of which sometimes makes this author wonder about their utility. The major problem is that it is an artificial form of communication with the informant: it is controlled and set by only one side in the communication, despite the fact that communication is truly a two way process. In the design of the questionnaire associated with this project much thought had to go into how the questions would be perceived by the informant, what sort of information they could give and how they would want to give this etc.. Despite a large amount of effort and forethought (which was more than was planned for) there was clear evidence from a proportion of the respondents that some questions had not been fully understood (yet these same questions were ‘correctly’ answered by others). It was also clear that the question format did not please all informants - written comments to the side of the questions indicate this: some German comments suggesting a ‘typically British question’, for example. Of course, in the numeric processing of the questionnaires, these comments had to be ignored.

This situation was not unexpected. Personal experience of filling in questionnaires, where it was clear that my view of the topic being discussed was not being fully represented by the designer, indicated the sorts of problems which patent attorneys might have to the one generated in the present study.

Overall, the problems of the questionnaire are many:

(i) it is a poor form of communication;

(ii) the topic is dealt with inflexibly (from the view of the respondent);

(iii) the questions have to be limited in number and format in order to sit comfortably on a given number of pages (too many might frighten away respondents);

(iv) the topic must be constrained within the researcher’s own view of the subject (‘paradigm’) rather than develop in an incremental manner (as in an interview);

(v) the generosity of the respondent is relied upon to take the time to complete the questionnaire accurately (in interview one can ‘force’ accuracy upon a respondent by putting counter arguments etc. - so long as they have agreed to the interview in the first place);

(vi) response rates are usually poor;

(vii) those who do respond might be a particular (‘biased’) section of the chosen population.

Some of these problems are clearly shown in the text of this report. For example, evidence that patent attorneys are relatively happy with oral and opposition proceedings is clearly provided by the questionnaires received. However, in the interview situation it was strongly put to me that in a number of cases which patent attorneys found to be significant, these proceedings were not handled to their satisfaction: my notes contain negative adjectives relating to some staff standards of conduct here - yet this is missing from the collated questionnaire information.

On the other hand, information can come from the questionnaire which is not so easily got from interview. In interview I was told by attorneys that they were ‘of course’ interested in legal matters (but, put sceptically, there is a wide range of level of interest possible). However, it was clear in their choosing of priorities from the list in Question 5, that most put the legal aspects of their work at a reasonable level: much higher than I would have supposed from the interview responses (37% stated it was their first or second choice of elements which gave them enjoyment).

One way around some of the problems of questionnaire format might have been to run a test questionnaire with a small proportion of the total population, evaluate the responses and then rework the full questionnaire for the larger sample. This was not done in this project. In part because of the complexity of this process: it would have to have been done with three different questionnaires and then the differing required amendments for the countries would somehow have to have been collated together into one questionnaire again (this is required, of course, to allow national comparisons to be drawn). Whether this would have significantly improved the overall information from this project is a moot point.

No claim is made to the absolute insight of the findings from the questionnaire. The approach taken was that this would be a helpful adjunct to the more in-depth interviews which, in this author’s view, are the best available socio-legal technique. The questionnaire was not carried out with the full resources (or costs) of, for example, the EPO study Utilisation of Patent Protection in Europe (EPO, 1994b) and cannot be compared in statistical terms with that. However, this current study has qualities which that quantitative study does not.

3 Interviews and Styles of Thought

In past work I have used interview techniques with success. In particular my joint research into barristers (published as The Barrister’s World ¹ ) was produced as the outcome of a series of interviews. As an attempt to describe how barristers (in the UK, these are the section of the legal profession who practice court-based advocacy) see their work, their relationship to solicitors (the other section of the legal profession) and their relationship to clients. The general response to this work from the barrister’s profession in the UK was that it was an accurate portrayal of the barrister we had tried to describe. Such positive response to this work indicates that the interview technique can be used to get to the very heart of how individuals see the world - their ‘style of thinking’.

This project is, in part, an attempt to do that for patent attorneys in the four chosen countries - to find out how they view their service to clients, how they view the EPO and how the view the patents which are awarded by the various patenting routes. It can be strongly argued, therefore, that where we have a mismatch of evidence between questionnaire and interview, the strongest evidence should be seen to be that from the interview. Given that a point is raised by those several interviewees from similar positions (e.g. private practice, experience in chemistry, country etc.) it can be strongly assumed that this is a characteristic of the entire population sited in those positions.

Generally the advantages of the interview are:

(i) interviewees can be persuaded that they should participate (this is done in the initial telephone contact);

(ii) the interview is held in the interviewee’s own environment and allows extra information to be gleaned (size and style of practice - from ‘work-a-day’ to ‘trendy’ to ‘prestigious’, for example).

(iii) the interview moulds itself to the way that the interviewee sees the topic;

(iv) the interviewer has control over the general direction, but the interviewee rarely (perhaps

never) allows the interviewer intrusions until his point has been fully made;

(v) the interviewer can act as ‘devil’s advocate’ and suggest contrary arguments to those being put by the interview to elucidate further information;

(vi) it is (a reasonably) full communication between two participating adults.

Of the disadvantages, there seems only one substantial one: that of the time and effort required. This includes the time to make contact with the interview, the time taken to get to the interview, the time of the interview, time to get to the next interview (or home), and the time to write-up notes taken while still fresh in the memory. It is this time-consuming aspect which has ensured that most socio-legal researchers have taken the questionnaire path.

4 Chosen Strategy.

This project was undertaken during a sabbatical from my host university. Pressures of work before starting this research meant that I was unable to do much preparatory work prior to starting the project. The first 4 months were therefore spent in understanding the EPO system and the legal context of the patent. I visited DG1 in the Netherlands and discussed the problems of search examination and then interviewed in DG2. It was not my intention to look closely at the appellate procedures within the EPO, so no interviews were carried out in DG3. I was never refused contact with an individual and was never refused an answer to a question during my EPO investigations. Indeed, it was generally the case that I received information which was not easily available to the world outside the EPO - e.g. internally published information.

After this period, I began preparation of the questionnaire. For reasons of making this easy to complete and reasonably attractive, I chose a format of 4 pages (A4 size) printed on one single A3 sheet. My worry was that if the questionnaire was too large or ‘bitty’ it might not be answered. I chose a relatively small typeface so that, together, some 32 questions (mainly multiple choice) could be fitted in. A small space was left at the end of the questionnaire for comments from the respondent.

Topics covered: Personal Experience, Patent Workload, Research Tactics, Service to Clients, National vs. EPO, German vs. UK Philosophy, Improvements to EP System, Language and PCT Route. This was designed to try to cover as much ground as possible so that, on input to a computer database system, various elements could be matched. Generally (in the light of discussion above) I was happy with the format, though in retrospect I might have added more detailed questions on the PCT route. The questionnaire is printed in Appendix 2.

This was sent to all EPO Representatives in the UK, 50% of German Representatives (in German translation) and all Netherlands Representatives (in English). I had considered translating the Netherlands questionnaire into Dutch but, after discussion with academics from the Netherlands, was advised to use English. The feeling was that they might consider it more ‘international’ and therefore more important if it was in English. I do not know whether this view has been substantiated.

There were some problems inherent in using the EPO register. First it is a register of those who are able to practice as EPO representatives. This does not mean that all those registered actually do so. Some will have retired, moved to different work, some will have undertaken the EPO examination hoping to enter the field but have not been able to. And many working in practice will either not yet have completed the examination or, if they have so, might not have entered the directory (which is published annually - a newer version was published about two months after my questionnaire was distributed). Certainly, the figures from the German patent attorney’s national association indicate that a much lower figure is active than that indicated by the EPO register. However, once again, it is not possible to claim that the national association’s figures are accurate. One point is that the absence of access to a computer-based version of the EPO register meant that much work had to be done to scan and check the data. In several cases contact was made in a non-random manner (e.g. after a suggestion from an interviewee).

Immediately upon dissemination of the questionnaire I began interviewing in Germany. I used a simple algorithm to select potential interviewees from the Directory of EPO Representatives. This random technique resulted in being able to interview a wide range of representatives who had not received the questionnaire. This was done to try to remove any bias from the survey, by interviewing attorneys who had not had the opportunity either to refuse to complete or to complete the questionnaire.

Potential interviewees were contacted first by letter and then a few days later by telephone. Some could not be contacted at all by telephone and these were dropped from the list. Some were abroad and difficult to arrange meetings with. A very small number (2) declined to take part. Interviews usually took 1 hour to 2 hours (with an average at around 1 hour 20 minutes). It is perhaps difficult to explain how to know when to stop interviewing attorneys, but a sense is got that the effort being applied is not being rewarded by novel information any more. At that stage there is little advantage in continuing. Some 100 hours were spent in interview, mainly in the DE and the UK. There were four industrial interviews in NL and two in private practice. The bulk of interviews were with attorneys in private practice, since it was more difficult to arrange meetings with those in industry. Usually the complaint was lack of time. One large Bavarian car manufacturer told me that if I had already interviewed at a large electronics based nearby then I would know all about the car companies tactics, because ‘all our patent staff come from there’. From the interview materials, I believe that for most practical purposes there is little difference between those in private and industrial practice, apart from the major one of being more commercially and license inclined in the latter - a position which arises from being both attorney and client.

In Ireland, no questionnaire was sent out (there being too few to make the expected results statistically worthwhile). There are only a small number of patent attorneys in Ireland and these are mostly based in Dublin. I tried to interview at all practices in Dublin, but was not able to do so in two: one being a single practitioner (who refused because of lack of time) and at another where my contact was not available at that particular time (due to work and travel).

Since the entire UK listed membership of the EPI had been contacted via the questionnaire, it was not possible to interview UK attorneys who had not been sent this questionnaire. In this case, as in the Netherlands, those attorneys were interviewed who had agreed to take part in future research. This was, of course, a biased sample. However, it seems clear that this has not materially affected the information received: the interviews highlighted just how common are the problems and the approaches of the patent attorney profession. There is, for example, not that much separating an attorney in private practice in Munich, London or in Dublin

A number of other interviews were carried out. The directors of national patent offices in the four countries were interviewed. Several judges in the German state patent courts were interviewed and one high court patent judge in London.

5 Reading the text

Some points relating to reading of the earlier chapters should be borne in mind. These are primarily to do with the use of reported speech and the use of survey results. These are:

5.1 Quotations:

These have been ‘cleaned up’ by two strategies. First, the grammar has been corrected (since oral speech can never match that of the written word, and non-native speakers of English cannot match the abilities of native speakers) but no attempt has been made to change the substance of meaning used by the interviewee. Second, some contraction of the quotation has been carried out. These are indicated by the ellipsis ( ... ). Some of these edited quotations have had a few words, a few sentences (and rarely) a few paragraphs extracted from them. This was done to improve the flow and value of the extract to the study and was done as carefully as could be.

5.2 Questionnaire Results:

Apart from the fundamental problems of this kind of research technique - described above - there were four main problems:

First, not everything which could be gleaned from the completed questionnaire was processed: for example, there were a number of comments made in writing beside individual questions which could not be transferred over onto the processing medium (a spreadsheet program). This information frequently explained the mark put on the questionnaire, or explained why no information was added.

Second, several questions required that the user order their answers: these were, Question 5 relating to aspect of work giving pleasure; Question 12 relating to information sources; Question 16 relating to clients appreciation of services. Some respondents did not order these (or ordered only one or two) or ticked only those they considered relevant. The decision was made that when the responses were not ordered, to simply accept them as being level (i.e. they were all ranked as ‘1’). This results in a slightly strange percentage reading for these questions. This approach was not ideal but, all things considered, seems to make the best sense: if the respondents don’t rank them, then all of the factors marked must either be considered equal or ignored. In this research they are considered equal.

Third, in Questions 18, 19 and 20 (which are tabular) some respondents ticked between two boxes (clearly trying to increase the number of options.) For these responses the approach taken was to resite the mark at the box closer to the middle option. Thus, if a tick appeared between (‘very satisfied’ and ‘generally satisfied’) then the option input to the spreadsheet was ‘generally satisfied’.

Fourth, in Question 32 (‘Do you actively advise clients to use the PCT route?’) an option, ‘Don’t know’, was offered. This really made no sense. This question and the related Question 31 did not really provide much information - better was the perspective got from interviews of just when the PCT route was seen as useful.

6 Numbers

Details of questionnaire responses are:

Totals for all attorneys	Questionnaires Distributed	Questionnaires Returned	% Return
DE	1000	95	9.5%
UK	1234	199	16%
NL	242	32	13%

It is impossible to tell just why there is a lower response rate from Germany. Splitting these figures into either private attorney or industrial attorney we get:

Division of responses according to location.	Private practice	Industrial practice	Government
DE	61%	39%	1%
UK	57%	41%	2%
NL	34%	66%	0%

The interviews were biased towards the attorney in private practice as has been discussed: it was harder to arrange interviews with attorneys in industry for a variety of reasons (for example, Ireland’s attorneys only exist in private practice; and, industrial attorneys in the other coutries claimed to have less time available for interview). Altogether just over 70 interviews were undertaken with attorneys, with around 20% being with those in industry. Nearly 50% of the total were undertaken in Germany and just over 10% in the Netherlands and 10% in Ireland, with the remaining 30% in the UK. The original plan had been to interview a similar number in the UK as in Germany, however it became obvious that extending the number of interviews was unlikely to seriously affect the tentative findings: a commonality of view was found, and it became the case that I could predict - towards the end of research - pretty well what the views of attorneys would be.

Apart from these interviews with attorneys, a number of interviews were carried out at the EPO in DG1 and DG2. A very small number of interviews were also carried out with members of the judiciary in the UK and Germany and in DG3.

7 Conclusion: future research strategies.

The response rate for the questionnaire was not particularly high. This was not entirely unexpected. Future research might attempt to improve upon this research technique by carrying it out in a more structured and controlled manner (e.g. using one to one interview techniques to gather the information). I am not confident that this will improve upon the general level of findings as discussed earlier. It will certainly increase the cost of such research, but whether the findings will be any clearer (that is, easier to interpret) is an arguable point.

My confidence lies much more in qualitative research. After having interviewed a number of German attorneys, it became relatively predictable what other attorneys - even in other countries - would suggest or believe. The differences in viewpoint, it seemed to me, were relatively slight and I had confidence that I fully understood the reasoning behind these views. Looking at the survey results, I do not find myself with this same confidence: indeed, some results seem to beg more questions than they answer. This, of course, is the problem of all questionnaire findings.

The view taken here is that extensions to this research are best carried out by the tedious and time-consuming technique of interview: the nature of the patent attorney’s working life is too complex to be investigated by a heavy reliance upon the questionnaire.

1 The Barrister's World: And the Nature of Law Morison & Leith, 1992.

Appendix B: Questionnaire

This questionnaire forms part of a study into the reasons for client choice of patent route - that choice being a European Patent, a National Patent and one initiated through the PCT route. This information should be of interest to all EPO Professional Representatives. Please spare a few minutes to complete the questions contained in this document

This questionnaire is being distributed to EPO Professional Representatives in the UK, Germany and the Netherlands. Your name was taken from the published list. This research has been part funded by the Research Fund of the European Patent Office and by the UK Society for Public Teachers of Law. This research is independent of these two bodies and the findings will be published independently.

A. Personal Experience.

Q1. For how many years have you been qualified as a(n):

EPI member [ ]

UK patent attorney [ ]

Q2. Which of the following matches your current position most closely:

Sole practitioner: [ ]

Partner in private practice: [ ]

Fee earner in private practice: [ ]

Employed in industry: [ ]

Employed in government: [ ]

Q3. In which languages are you competent to work:

English [ ]

German [ ]

French [ ]

Russian [ ]

Other European [ ]

Japanese [ ]

Q4. Which patent fields do you mostly work in. If more than one, please order these (1, 2, 3) in order of greatest expertise:

Mechanical engineering [ ]

Electrical engineering [ ]

Chemical engineering [ ]

Q5. What aspects of patent work give you most enjoyment (please order, 1, 2, ..):

Contact with new science [ ]

Technical understanding [ ]

Legal aspects [ ]

Litigation [ ]

Contact with clients [ ]

B. Patent Workload.

Q6. Within the last 6 months how many patent applications have you:

Created from new [ ]

Filed from prior application [ ]

Q7. Of the patent applications referred to in Q6, to the best of your knowledge how many were:

New Prior

For employer: [ ] [ ]

For individuals: [ ] [ ]

For small companies

(< 20 employees): [ ] [ ]

For medium companies

(20 to 99 employees) [ ] [ ]

For large companies: [ ] [ ]

Unknown size: [ ] [ ]

Q8. Of the patent applications referred to in Q6, how many were destined for:

New Prior

Only UK coverage [ ] [ ]

European coverage:

Germany, UK & France [ ] [ ]

>5 EPO member state [ ] [ ]

>10 EPO member states [ ] [ ]

Japanese coverage: [ ] [ ]

US coverage: [ ] [ ]

Q9. How many of the applications referred to in Q6 came from clients resident in:

New Prior

UK: [ ] [ ]

Rest of Europe [ ] [ ]

US: [ ] [ ]

Japan: [ ] [ ]

Elsewhere: [ ] [ ]

C. Research

Q10. Do clients, in your view, see technical understanding as the most important aspect of your expertise?

Always/Usually/Sometimes/Rarely

Q11. Do clients, in your view, see legal research as an important aspect of your expertise

Always/Usually/Sometimes/Rarely

Q12. Which of the following have you easy access to? Please order these in the importance you feel they have in developing your expertise in your client’s benefit:

UK Legal Decisions [ ]

EPO Decisions [ ]

Technical journals [ ]

Trade journals [ ]

Patent journals [ ]

Patent Information:

Hard copy [ ]

On-line access [ ]

CD-ROM access [ ]

Q13. How important is it for patent attorneys in the UK to keep up to date with decisions from:

EPO Technical Boards of Appeal: