Introducing the Team Behind Visser’s Annotated European Patent Convention
No worries for all the European patent attorneys, patent lawyers and other professionals in the field of intellectual property. Although the author will write his last pages of Visser’s Annotated European Patent Convention in a few years’ time, the book will continue to be published, with annual updates – as it has been for the last 25 years.
ExamWhat began as a personal ‘hobby’, grew to a highly recommended publication about European patent law. When Derk Visser, now 67, moved as physicist from the Philips laboratories to the Philips Patent Department in 1990, he was trained in house for the exam to become a European patent attorney. But there were hardly any books available about the European Patent Convention (EPC) which had only come into effect just over a decade earlier. So he started to write his own notes about the EPC, and after some months he had a bundle of them. He put them into order, added the full text of the law, and there it was: the first annotated version of the law. For his personal use.
UpdateWhen his Philips colleagues discovered this document, they used it in their training to become patent attorneys. The following year, the Philips candidates for the next exam liked to have an update. Visser made it, with valuable input from readers. When other candidates for the European exam showed interest in the material Philips people used, the idea of publishing the document arose. Visser contracted a graphic designer and a programmer, and together with his wife – who was the publisher – the first ‘official’ edition was distributed in 1994. The rest is history.
EditingVisser – who became partner at the London intellectual property law firm EIP and is now of counsel after his retirement – edited each new edition throughout the year. ‘I always stopped editing on the 15th of November. In the morning of the 16th I handed my files to the programmer – about 400, each article and each paragraph is a separate document. He applied the correct layout and made the pdf for printing, I checked it, errors were corrected, and at the end of the day the complete document was ready for printing. One month after we had stopped editing, the book was on the table of clients, all over Europe. Each year we carried out exactly the same procedure.’
Helpful instrumentThe book turned out to be a very helpful instrument for candidates for the European exam and patent attorneys. Visser: ‘The text of the law is broad and details are not provided in the law itself. I added references to the rules and to the guidelines of the EPO, the European Patent Office. I had to explain words which are typical for patent law. I write how words and phrases should be interpreted on the basis of decisions of judges. But case law changes, judges sometimes don’t agree with each other, in the book we mention that all.’
TechnologyBut a legal book, written by someone who studied physics? And what about the new team? Laurence Lai (Simmons & Simmons) is an aeronautical engineer, Peter de Lange (V.O. Patents & Trademarks) studied chemistry and law, and Kaisa Suominen (Moosedog) is an engineer in material science – and they are all patent attorneys. ‘As a patent attorney you describe technology within the framework of law’, says Visser. ‘It takes a few years to familiarise yourself with the law. If I was asked now: would you like to write this book? I would say: no. Why would I be qualified for such a task; I am not a lawyer. But things happen as they did.’
De Lange: ‘To become a patent attorney, you must have a university degree in science or engineering. A lot of our readers have also research experience in the industry, in laboratories or in software. That is why a book on patent law written by scientists appeals to them.’
Perhaps it is better that the book is not written by lawyers, says Lai. ‘The logic in the book is appealing to exam candidates and patent attorneys – who, like us, are scientists or engineers – as well as to lawyers. Why? Lawyers might write: this is the law and that is the explanation of the court. That’s it. Our approach is different. When an article or rule is changed, we also write why is this changed. Only then you can understand the logic behind the law.’
LiableBut there is more that makes this book important. ‘It is the only English book on the EPC arranged by articles and rules’, says Suominen, ‘which is annually updated, just like the guidelines of the European Patent Office.’
That’s important, Visser adds. ‘If you do not apply recent law and as a consequence you lose a patent of your client, it will be a costly affair for you as a patent attorney as you might be held liable. That’s why patent attorneys have an insurance for such cases. And that’s why you should be aware of the most recent law.’
ManualKaisa Suominen remembers the years she was studying for the exam. ‘I used the 2000-edition and I always found the answers in the book when I had questions. But what is brilliant about the book: it is not only good for the candidates to train for the exams, but is also a practical manual for everyone in the field, both patent attorneys and administrators.’
De Lange: ‘This year I was asked to look at the questions of the exam and the solutions according to the examination committee. My check was: can I find it in our book and did we give the right answer? Did we put candidates on the right track? Or did we overlook an exception or a small sub-rule? I am always aware when writing a topic for the book: imagine, the committee takes this topic for a question on the exam, thousands of candidates will rely on my text.’
DustyThe man who gave the book its name, retired from his job in London when he was 65. ‘If I just grow old with the book, the book would not be properly updated anymore, because as an of counsel I am not in the daily practice anymore’, Visser says. ‘I don’t hear anymore what people want to read, what they think. That is important, and as a result the book will become dusty.’ To avoid that, Wolters Kluwer took over the annual publication. Visser was contracted for three more years after the takeover to assist in the updating. After that, the new authors will be able to do the work themselves. In the first year Visser was author and editor, this year Visser is editor and Lai is co-editor and the last year he will be editor and Visser will be co-editor.
HonouredThe new team members feel ‘honoured’ that they were asked by Derk Visser to continue the job. ‘One consideration was that they should have affinity with legal writing and are interested in law, and that they are not too old’, he says.
Suominen: ‘I was very surprised. I never thought I would see my name on any book, let alone on that book. In Finland we call it – in a non-negative way – the “Besser-Visser”.’ When Peter passed the exam two years ago, he also used the book ‘rather much and studied it intensively’. He did send Visser also suggestions for improvement. ‘We had some contacts about the book. It’s an honour to contribute to the book now. It takes me on average four hours a week, in my spare time – the same for the others.’ Laurence Lai: ‘Derk was looking for a native English speaker, with a background in patenting software and IT invention, and I fulfilled the criteria. When I studied for my exam, I treated the book as a bible. So I was honoured that I was asked.’
Payment of feesThis year the whole team works for the second time on the latest edition. The sections of the EPC are divided between the authors. Every two years they will swap some topics to remain fresh. Every author will read the other chapters, and what is not clear for him or her, will be clarified. Peter de Lange: ‘Last year I spent a lot of time on the rules on payment of fees – that’s very complicated. If your payment is not valid, you may lose your patent application. Those are really tricky rules, which change quite frequently.’ One of the topics of Kaisa Suominen is ‘clarity’: how clear should a patent application be? ‘Because of changes in the practice, an update is necessary’, she explains. And Laurence Lai has covered questions such as: how can presentation of information be patented?
Another important topic concerns the deadlines in the process for getting a patent. Derk Visser: ‘We write why there are obligations to file a document or pay a fee, how to file or pay and the deadline for doing so. We show when certain deadlines are and how they are calculated. But also what happens if you do not comply and what kind of remedies there are. All this information is provided in the book – so more than only notes on the convention and guidelines. In fact, the book explains the system.’
FutureDerk Visser is convinced that the future of his book is in good hands and may help to move the European patent law forward. ‘Example: Once we wrote that a procedure of the EPO was in conflict with the law. What happened next? The law was changed. That’s quite nice.’
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