Critical remarks on the Revision of the European Patent Convention

Transcription

1 Critical remarks on the Revision of the European Patent Convention The Institute of Professional Representatives (epi) in general is not dissatisfied with the revision process, for example with the adoption of protectability of the so-called Second Medical Indication (Art. 54(5) EPC) and the removal of the envisaged definition of equivalence as well as the file wrapper estoppel from the Protocol on the Interpretation of Art. 69 EPC. On the other hand, some of the results of the revision fell short of the profession s expectations, and a number of open questions remain. One could argue first of all that the revision could have come at an earlier date. We would then have more flexibility in the system already now. Patent laws like any other laws in accelerated times cannot remain unchanged over longer periods of time. They will in the future have to be amended more frequently and will perhaps also have to diversify, in order to encompass technological developments. In Japan I was told the patent law was amended about 18 times in the past 40 years to adapt it to the needs of the local industry. Since many of the old EPC provisions were shifted to the still unknown Implementing Regulations, the Revision document is incomplete. Let us turn to some of the provisions that were adopted, but which nevertheless will continue to occupy our minds. Art. 33 EPC Competence of the Administrative Council in certain cases This article ties the EPC to international treaties. The Administrative Council shall be competent to bring certain portions of the Convention into line with inter alia European Community legislation relating to patents. The question can be posed, is this provision a may or a must, and how much time would be allotted for the adaptations. One example will be dealt with later. Art. 52 EPC Patentability of Computer Programs Art. 52 EPC has been aligned with Art 27 (1) TRIPS and now refers to the patentability of inventions in all fields of technology. It has (only) taken about 100 years to formally introduce into the patent law the prerequisite that patentable inventions must lie in a technical field. Still, no definition of what an invention is has been attempted, for example that the invention is the technical solution of a (technical) problem. 1

2 The codification of the technical character of patentable inventions comes at a time when new scientific developments strain this term. We might be tempted to ask what technology signifies today in the world of biological and digital revolutions. Unless the patent law can embrace new developments readily, other protection tools will have to be invented or perhaps existing protection systems such as the copyright system, which already evidences a cross-over in the field of technical designs, expanded to technological subject matters. In the light of such developments, the reintroduction of the exclusion from patentability of computer programs as such into the Basic Proposal had to be regarded as a step backwards, a wrong signal from a political point of view. Convincing reasons were not given. It was disturbing that apparently last minute political persuasion prevailed, because the European Commission needs more time for a new consultation process in connection with its planned Directive, allegedly due to strong lobbying from the open source society. The present provision of Art. 52 EPC may therefore be interpreted as somewhat contradictory, because the EPO will continue to patent computer programs, if the invention claimed produces a technical effect beyond the normal physical interaction between the program and the computer. This situation in our view decreases legal certainty, deprives European inventors of a chance to patent their software-related inventions in Europe and quite generally diminishes the competitiveness of the European patent law as such vs e.g. US patent law. Since therefore European industry and inventors in this field are at a disadvantage vis-a-vis their counterparts in the United States, they might be induced to take their inventions to the United States for patenting. Should the European Commission succeed in coming up with a Directive on softwarerelated inventions, then a new conference of ministers would have to amend the EPC, or the Administrative Council of the European Patent Organisation under new Art. 33 (1)(b) EPC would have to bring the Convention into line with European Community legislation (relating to patents). Again, this is not a simple procedure. In the latter case the new voting rules require unanimity and the presence of all Contracting States. Furthermore, a decision taken on this basis would not take effect if a Contracting State declares, within twelve months of the date of the decision, that it does not wish to be bound by that decision. Now, should the European Commission in for example one year s time arrive at a Directive pertaining to the protection of software-related inventions - if it relates to patents at all - and should the whole ratification process, as analysts predict, take about four years from now, then it will be at least six years until the EPC theoretically could take a more liberal attitude towards recognising computer programs as such. A rather long time for a dynamic technology. 2

3 Unless the whole situation is clarified, e.g. by a European Directive, national courts may have interpretation problems in national litigation cases in which relevant European patents are enforced. As concerns the other exclusions in Art. 52 (2)(d) EPC, the writer of these lines still is not clear about what exactly presentation of information means in the light of today s technological capabilities, which apparently were unavailable at the time the Convention was drafted. Art. 53(a) EPC Exceptions to patentability European patents shall not be granted inter alia in respect of inventions the commercial exploitation of which would be contrary to the orde public or morality. Here one can question again whether the EPO is competent in morality. Could this for example be defined in the Implementing Regulations? What happens if a patent has already been granted and morality changes? The item should be removed from the EPC. Art. 80 EPC Requirements for a filing date This rather important provision, as the European patent application cannot exist without a filing date, is void for the time being, because it solely refers and depends on the Implementing Regulations. Art. 78 EPC requires that a European Patent application needs to have one or more claims. Now according to Art. 80, which is something of an enabling clause, the Implementing Regulations would have to stipulate that a filing date can be accorded even if the application had no claim. The provision of Art. 80 EPC is of particular importance if contemplated in the light of the Grace Period discussion, because one of the present prerequisites for according a filing date is that the application contains at least one claim. The Implementing Regulation to Art 80 EPC would now allow the Adminstrative Council to forego this requirement, which would for example allow for the short term (preliminary) filing of scientific (university) paper containing an invention before the imminent publication thereof. New Arts. 90 (1) and (2) EPC are also relevant in this respect. Art. 69 EPC Protocol on the interpretation of Art. 69 EPC Pursuant to the Basic Proposal the Protocol on Art. 69 EPC was to be supplemented by a definition of equivalents and a provision for a file wrapper estoppel. After a lengthy 3

4 discussion in the Revision conference the definition of equivalence contained in the Basic Proposal was cancelled. There was a strong urge by some delegations, e.g. the British Delegation and the observers, to re-submit the whole matter with the Second Basket. Also the epi had advocated against the inclusion of any definition of equivalence, pending further studies, because the proposal had come up at a late drafting stage of the Basic Proposal only. The amendment of the Protocol now consists in that Art. 2 pertaining to Equivalents stipulates that for the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claim. The mere mentioning of equivalents in the Convention will at least have the beneficial consequence that courts, which are routinely confronted with equivalents, cannot claim equivalents do not exist. However, the same courts should also know, in a harmonised manner throughout Europe, what equivalents are. Therefore, an attempt could indeed be made in the Second Basket to complement the present provision. This, however, would need careful consideration of all the possible consequences. The most disturbing feature in the proposed wording concerned the point of time for taking into account equivalents, which pursuant to many decisions is the priority date. The main argument against the Basic Proposal rested in that it would lead to uncertainty as to the scope of protection. Naturally, if one takes the priority date, then the scope of protection remains the same over the lifetime of the patent, whereas if on takes a later point of time in the life of the patent, the scope might accompany technological developments or even increase. In other words, new means and measures for carrying out the patent s teaching might evolve which had been unknown at the time of filing. Taking the point of time of an alleged infringement as the decisive point for assessing equivalents or infringing elements, respectively, could however have different consequences for inventions for instance in the mechanical field and in the pharmaceutical field, and this must be examined closely. Prior Statements The taking into consideration of prior statements of the applicant or the patent office in the file that led to grant might limit the scope of protection. One of the arguments against the inclusion of such a clause in the Protocol on the Interpretation of Art. 69 was that it would require the inspection of the file and an undue burden for parties involved or contemplating litigation.or simply wanting to know the scope of protection in order to work around the patent. A further argument against the file wrapper estoppel has been brought up, namely that Art 69 (2) EPC states that the extent of protection conferred by an application is to be determined by the latest filed claims contained in the publication and that later on the granted patent retroactively determines the extent of protection. Some comentators (in Germany) have said that it forbids to take the file into acount when applying the Protocol 4

5 on interpretation. In my view this does not neccessarily follow from paragraph (2). The emphasis in this paragraph merely is on the application and the patent. The above arguments, although somewhat blue eyed, nevertheless need to be clarified. The file wrapper estoppel would become a particulary relevant issue if the EPO in order to shorten the grant procedure would not require an amendment the specification at all after examination. It goes without saying that in an infringement case, when the court must discuss the scope of protection, e.g. with the help of an expert, the defendant will make a file inspection as a matter of routine, and the court most probably would be confronted by the defendant with any limiting statement that had been made in the grant procedure but is not apparent from the patent specification. After all, the patentee is the master of the procedure and a patent not granted without his approval. Art. 149a EPC This article inter alia refers to two questionable provisions, namely the competence of the Administrative Council to decide that (a) the members of the Boards of Appeal or the enlarged Boards of Appeal may serve on a European patent court or a Common Entity and take part in the proceedings before that court or entity in accordance with any such agreement; and (b) that the EPO shall provide the common entity with support, premises and equipment and shall moreover bear the expenses incurred by that entity. It should be recalled that the Common Entity now under discussion should interprete the European patent. Would a material dependency from the EPO also lead to an intellectual dependency? The SECOND BASKET A number of important items were deferred to the so-called Second Basket, such as the implementation of the Community Patent Regulation, computer programs, the Grace Period, new matter in divisional applications, and so forth. Some delegations believed the Second Basket would be dealt with in the spring of this year. These expectations may prove premature. My prediction is that the Second Basket will take considerable time, last but not least because it contains politically controversial matters. As any revision process takes about five to six years, we might expect the second round of the revision to come about at the time foreseen for the next conference of ministers pursuant to new Art. 4a EPC. Walter Holzer 5