Working for Europe's Intellectual Property


Inventors come in all shapes and sizes, from the individual who has devised an ingenious solution that simplifies his daily life, to highly qualified, experienced scientists and engineers working in academia or large multinational companies on high-profile projects. All have one thing in common--if they want to stop others profiting from their invention without their permission, they have two choices: Keep it a secret or patent it, and more and more inventors are choosing the second option. This is because, apart from things like the recipe for Coca-Cola, it is increasingly difficult to keep anything a secret these days; in most cases legal protection is necessary.

Patents, along with other forms of intellectual property, are now recognised as an integral part of any assessment of a company's value and of the quality of the research carried out in an academic institution. They are valuable assets that can be traded or licensed in the same way as other commodities. But in order to be of value, a granted patent must be strong and the rights it affords must be protected by law. The latter is generally the province of lawyers, the courts, and law enforcement professionals, but ensuring that a patent is strong requires different skills and experience.

Before a patent is granted, that is before any rights are accorded to the inventor, it must be decided whether the invention deserves to be the subject of a patent. There are many criteria that must be met, but the main requirements are that the invention is new (not previously known or published) and not obvious. Such assessments can be made only by individuals who understand the technology behind the invention, and this is where scientists and engineers come in. They play an indispensable role in the patenting process as patent examiners.

But what exactly does a patent examiner do? It may seem trite to say so, but an examiner examines a patent application. They must decide whether, according to the rules by which these things are judged, the technology described in the application meets the criteria laid down in the applicable patent law. Each country has its own set of rules on which an invention is assessed, and some requirements can be different from country to country, even to the extent of being unique to a particular jurisdiction. Nevertheless, the fundamentals tend to be similar throughout the world. In addition, there is harmonization of practice and some degree of rationalization in the form of groups of countries that have got together to create supranational or regional organizations responsible for the granting of patents.

One of these, and probably the most successful, is the European Patent Organisation, which grants patents through its implementing arm, the European Patent Office, or EPO for short. (For those of you who are biotechnologists or professional cyclists and who thought that EPO stood for "erythropoietin"--we got there first--in 1973 to be exact.)

The EPO presently has 20 member states, with up to a further 10 Eastern European countries (see BOX) invited to join from July 2002. All of the staff in the EPO, and the examiners in particular, are chosen from nationals of the member states. Examiners all have at least a first university degree in science or engineering and work in the three official languages of the EPO: English, French, and German.

EPO Member States

Austria, Belgium, Cyprus, Denmark, Finland, France, Germany, Hellenic Republic, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Spain, Sweden, Switzerland, Turkey, and the United Kingdom

Coming in July 2002: Bulgaria, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Poland, Romania, Slovakia, and Slovenia

Their function is, when confronted with a new application for a patent, to be first detective and then arbiter. The detective work is what we refer to as "the search." This is akin to sifting through the published literature to find documents which describe, or come close to, the technology in the patent application. The trick is, of course, not to look through every journal article or patent published in a particular area of technology. A selection is made electronically by means of key words, for example, and the number of documents to be looked at in detail is reduced to a manageable level.

The examiner has the latest electronic search tools at his disposal and access to more than 38 million documents in the EPO databases. The documents that are the most relevant are then used in the second part of the work. Here the examiner compares the invention in the patent application with the most relevant published documents; he is effectively deciding whether the inventor deserves to be granted a monopoly and, if so, what this should cover. This is the role of an arbiter, weighing the interests of the public against the legitimate right of the applicant to gain protection for his invention.

The advantage to consumers and researchers is that the information published in the patent can be used in research and development to further improve on the invention. The researchers in turn can then apply for a patent for their contribution to science and technology. An examiner thus has a significant responsibility both to the public in general, on the one hand, and to patent applicants on the other. What makes the job all the more attractive is the opportunity to see and work on many different patent applications at the forefront of technology, which means more variety than would be usual when working on a particular project in research.

Each application is dealt with by a group of three examiners, one of whom has the main responsibility. These groups are different for each application, but all three usually work in the same area of technology. Increasingly, the interdisciplinary nature of many applications has made it necessary to have mixed groups, for example biotechnologists and information scientists. The final decision to grant a patent is always taken jointly by all three examiners, usually following written dialogue between the examiner and the applicant, or more usually a patent attorney who is his professional representative.

Occasionally it is necessary to hold a formal hearing with the patent attorney and his client in order to discuss aspects of the case that cannot be adequately dealt with in writing. It is often easier to get points across and avoid misunderstanding when there is face-to-face dialogue. Such hearings require the development of further skills in addition to the technical knowledge acquired prior to joining the EPO and the patent law experience gained while working as an examiner. It is important to be able to express yourself orally and respond quickly to points raised by the attorney. These skills take on a greater importance in the next stage of the life of a patent. Third parties may register their dissatisfaction with what has been allowed by the EPO and give their reasons why they believe the validity of the granted patent should be reassessed. This so-called opposition procedure places the examiner in the role of referee between the opponent and the owner of the patent rights. Issues are usually resolved in a public hearing which may attract a large number of participants and observers, particularly if the patent is of particular commercial or scientific interest. An examiner thus has an important role to play in the world of intellectual property.

The EPO is at present engaged in the recruitment of a large number of new examiners to work in Munich, Berlin, or The Hague. Scientists and engineers who are looking for a new challenge and are interested in intellectual property can find further information on the EPO Web site.

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