July2021

Several committee members represent SARIMA and our members on a variety of panels and organisations, expanding our network and opportunities for advocacy.

I have been appointed to the Standing Advisory Committee of the European Patent Office Working Party on Quality (SACEPO WP/Q) for the period 2021-2023. We had a very interesting first meeting where the use of AI for the classification of patents was discussed – there are 70,000 different class codes. Patents are assigned classes (technology categories) that route them to the 4,300 technical specialist examiners (see EPO – Classification for links to the International Patent Classification used by offices internationally and the Cooperative Patent Classification which is jointly managed by the US Patent Office and the EPO).

In terms of the examination process and getting to that first office action, the classification step actually takes a considerable amount of time, so one can see the benefit of using AI to speed up their process. AI will also be used to provide warnings to applicants ahead of formal submission – e.g. when non-European claim formats that are not permitted have been included (e.g. “incorporated by reference”).

The EPO does have its own “database” that pulls together patent as well as non-patent literature. I had wondered whether they were using a proprietary database as they always seem to be able to find prior art that one has not encountered previously! But it is internal, and they don’t license it out, unfortunately.

Improving the quality of incoming applications was discussed, particularly highlighting the quality of drawings and the size of text and margins (Rules 46(1), 46(2), 49(5) and 49(8)). Good to check your drawings ahead of submission so that money is not wasted on amendments. I have often had inventors complain that they cannot use colours in graphs and graphics and when I asked about this, it appears that EPO regulations are being amended and that in certain fields they do already accept colour images. The examiners can access the colour pictures in their “mailbox”, but the patent publication will still be published in B&W for the moment.

With lockdown, fully electronic processing has been adopted saving an astounding 1 million sheets of paper per month that had previously been printed by the examinations team!

You may have noticed that one can validate a granted European patent in Morocco due to a validation agreement that the country entered into with the EPO. I had not realised that this has spread to the Republic of Moldova, Tunisia and Cambodia. Other territories in Asia are currently in discussions, as are African regional organisations OAPI and ARIPO. This is an interesting alternative to establishing your own examining patent office in your country.

Should you have any queries or issues relating to EPO patent applications, please let me know and I will be happy to raise them with the Working Party.

Written by Dr Andrew Bailey, President-Elect