The German minister of justice, Ms. Brigitte Zypries, has just opened her own personal blog [in German only, sorry.]
No, I won't contribute to any speculations as to whether or not Ms. Zypries will be in office after the coming general elections in September. And I also do not know whether this blog is merely part of Ms. Zypries' re-election campaigning strategy or whether it will be continued as a long-term project even after the elections.
The UK Patent Office wishes to establish whether the law should continue to require the registrar of trade marks to examine new applications in order to identify any conflict with earlier trade marks in different ownership and, if so, to refuse registration of the later trade mark.
This is usually called examination on 'relative' grounds in order to distinguish it from the separate examination of applications that is intended to prevent marks from being registered which are inherently unsuitable to be the subject of an exclusive trade mark property right: the so-called absolute grounds for refusal.
The 2001 Consultation
The Patent Office consulted interested parties on the same subject in 2001. The earlier consultation sought to establish whether there was a consensus for changing the law in this respect by means of an order under the Regulatory Reform Act. Users were divided at the time as to whether trade mark applications should still be examined by officials on relative grounds or whether such matters should only be capable of being raised in opposition or invalidation actions. A majority took the position that there should be no immediate change to the system of official examination on relative grounds before 2006.
One of the factors identified was the potentially prohibitive cost of the alternative means of enforcing earlier trade marks: opposition proceedings, particularly to small and medium businesses (SMEs). The earlier consultation showed strong support (81%) for simplifying opposition procedures with 84% of respondents indicating that the UK registry should introduce a system whereby the right to oppose an application on the basis of an earlier mark is subject to proof of use of that earlier mark.
Ministers concluded that there should be no change to the system of examination on relative grounds at that time, but that changes should be made to streamline and reduce the cost of using the opposition system.
The Changes Since Then
Changes have subsequently been made to the opposition system. In particular, the right to oppose a trade mark has (for marks over 5 years old) been made conditional upon the opponent being able to show use of the earlier trade mark. The opposition rate was already falling and these changes have helped to further reduce the number of oppositions filed. Although the number of new applications has remained fairly stable the number of oppositions has dropped from 1312 in 2001 to 801 in 2004.
Further, where opposition is filed, 46% of cases based on allegedly conflicting earlier trade marks are now settled by a quick preliminary indication from the registrar as to the likely outcome of the matter, which removes the need for either side to file evidence at the Office. For the remainder, most are settled by negotiations between the parties. Only 150-200 cases per year proceed to the point where the registrar has to make a substantive decision on the opposition. And one in every three of those cases are now decided without the need for (or cost of) an oral hearing.
Why is a Further Consultation Necessary?
The outcome of the earlier consultation has resulted in continuing uncertainty as to the future form of the UK system for examining trade marks. 72% of those who expressed a view in 2001 believed that the matter should be reviewed again at a later date. The proposed further consultation is intended to end this uncertainty by allowing an informed decision to be taken as to the form that the national registration system should take for the foreseeable future.
Why have a Pre-Consultation?
The Office is conducting a pre-consultation exercise in order to establish whether its perception of the strengths and shortcomings of the current system is widely shared by users of the system. It is our intention to identify those features of the current system which are most valuable to users and those features which are causing the most difficulty. The results of the pre-consultation exercise will be used to produce options to put before users in a subsequent formal consultation document.
When will the Consultation Proper begin?
The plan is to issue a consultation document early in 2006. This will be the subject of an extensive consultation exercise.
EU Commission on Development and Implications of Patent Law in the Field of Biotechnology and Genetic Engineering.
The EU Council has published a report from the Commission to the Council and the European Parliament "Development and implications of patent law in the field of biotechnology and genetic engineering" as Document 11341/05:
"This is the second report pursuant to Article 16c of the Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions and bears the title “Developments and implications of patent law in the field of biotechnology and genetic engineering” (hereinafter the “second 16c Report”). Its purpose is to set out the key events which have occurred since publication of the first Report, and to comment on two issues identified in the latter: the scope of patents on sequences or partial sequences of genes which have been isolated from the human body; and the patentability of human stem cells and cell lines obtained from them. The Commission’s analysis is based on the Commission staff working paper SEC(2005)943.
The first 16c Report stated that the main provisions of the Directive were clear and precise; that uncertainty could not be permitted where the patentability of plants, animals and microorganisms was concerned; and that there was no ambiguity regarding the patentability of material isolated from the human body.
This Report introduces some new, fundamental considerations. While it can be argued from a plain reading of the provisions of the Directive that there are no objective grounds for limiting the traditional protection granted by patent law to inventions relating to sequences or partial sequences of genes isolated from the human body, other issues have also been raised relating to ethics, to research and to economics. The Commission will continue to monitor whether there are any economic consequences of possible divergences between Member States’ legislation.
In the light of the Commission’s analysis, it appears that totipotent stem cells should not be patentable, on grounds of human dignity.
There is no immediate answer to the question of the patentability of embryonic pluripotent stem cells and indeed at this stage it would appear premature to come to a definitive conclusion. The Commission will continue to monitor developments in this area."
The IPC reform was initiated in response to a need to adapt the existing IPC to make it a more efficient search tool for patent offices of all sizes and to exploit the possibilities of a modern, electronic environment.
The main features of the new IPC will be:
A stable core and a dynamic advanced level: the IPC will have a relatively stable subset of about 20 000 entries, known as the core level; in addition to this, there will be a dynamic advanced level, which will cover the entire set of entries in the IPC. This advanced level will be continuously updated.
Reclassification of older documents: whenever the IPC is changed, older documents published under an earlier version will be reclassified. In other words, it will be possible to search all documents by using the symbols of the latest IPC version.
Additional definitions: the US Patent Classification system, for example, has extensive sets of definitions. Similar definitions will be developed and incorporated into the new IPC.
The reform of the IPC will enter into force with edition 8, on 1 January 2006. As before, WIPO will be in charge of the administration of the IPC classification schemes. The reformed IPC will be published in July 2005, ie 6 months before entry into force.
All documents classified according to the IPC will be stored in a Master Classification Database (MCD), and managed by the EPO.
According to the EPO, the development of modern methods of electronic access and retrieval of information meant that it was necessary to adapt patent classification to the electronic age.
The EPO says that the IPC reform project was initiated in 1999. Close co-operation among industrial property offices was necessary for achieving the reform.
One of the important features of the reformed IPC is said to be the new principle of reclassifying all documents affected by a change in the classification scheme. As a result, it will be possible under the new IPC to search all documents using a single edition of the IPC.
Another important feature is the two-level structure which better satisfies differing needs of small, medium-sized and large industrial property offices and the general public. The two-level system consists of a "core" and an "advanced" level. The core level is a subset of the IPC without the finely divided subgroups. This will make it easier for less experienced or less specialised users to search or classify.
The EPO further asserts:
Consequences for the searcher
Using the two-level system
Over the 30 years or more that the IPC has been in use, it has become apparent that there is a need to simplify the use of the IPC for less specialised users, but at the same time to allow large patent offices to develop the IPC further by adding more detailed subgroups.
In order to solve this problem, it was decided to define a subset of the IPC (the “core level”) as a simplified classification system that could be used as a stand-alone tool, compatible with the full IPC (called the “advanced level”).
For an international search, ie a search aimed at retrieving prior art from all major industrial countries, the advanced level should be used. The PCT minimum documentation – and possibly more - will be classified in accordance with the latest version of the advanced level.
For a national search, ie a search directed at retrieving documents from a specific country, the core level will usually be sufficient. Some smaller patent offices will classify their documents according to the core level only, since its use requires much less specialist knowledge of the individual technical fields.
When the searcher is sure that the office in question classifies according to the advanced level, this level can of course also be used for a national search. However, when the number of documents is not very high, a core level search might still be appropriate because it will give more hits.
Documents classified in the advanced level will also receive the corresponding core level classification by an automated procedure. Therefore, a search in the core level will give complete results, whereas a search in the advanced level, although more precise, will only find documents belonging to the PCT minimum collection and documents of offices using the advanced level. After performing an advanced level search, searchers should consider doing a second search in the core level, because documents of some countries will only be classified according to the core level.
On the other hand, when classifications are being used only to limit the search to a broad technical area, eg when combining classification and text search, it could be a good idea to use the core level even for searching in international document collections, because this will result in documents from all countries and be less sensitive to variations in classification philosophy.
The document content to be classified
In the past, classifiers have focussed on the claims of a patent document. This was appropriate when most intellectual property offices published granted patents only. Nowadays, most offices publish patent applications before they are examined. This means that the content of the claims at the time of publication does not necessarily reflect the “real” invention or all the material that one would like to retrieve in a search.
In the rules for the reformed IPC, patent offices are recommended to classify not only the content of the claims, but also other important and possibly inventive aspects of the documents found in the description, examples or drawings. All such important features are to be classified as “invention information”. Other content in a document, which whilst being of lesser importance, may still have some search value, can be classified as “additional information”, as in the current IPC.
The distinction between “invention information” and “additional information” has only been visible on the printed document (separated by the “//” sign) up till now, but in future it will also be reflected in the databases, enabling more accurate searches.
IPC Indexing has been reduced to a minimum by converting most indexing schemes to classification. Instead of using indexing, in most cases the classifier can now simply give “additional information” classifications. The concept of linked indexing has been completely abolished, because it was never completely and consistently applied and the benefits for searching never outweighed the classification effort.
It is further said that
Changes to the IPC scheme will no longer be put on hold for up to five years until the next edition is published. This dynamic IPC, called the “advanced level”, will be continuously updated, if necessary, every three months, enabling experienced users to make more accurate searches for new technology with an up-to-date, detailed classification scheme.
For users with less advanced requirements or experience, there will be a relatively stable subset of about 20 000 entries, known as the “core level”. In the core level, symbols will only be changed when absolutely necessary, eg due to emerging technology. The update period is three years. All published patent documents will have a core-level IPC classification (in addition to any advanced-level classification given), so complete searches in this simplified system will be possible.
Whenever the IPC is changed, older documents published under an earlier version will be reclassified. In other words, it will be possible to search all documents by using the symbols of the latest IPC version.
Additional definitions will be available: the US Patent Classification system, for example, has extensive sets of definitions. Similar definitions will be developed and incorporated into the new IPC on a field-by-field basis.
The new IPC will include systematic classification of additional information on top of the classification directly related to the claimed invention.
I think that the most important aspect is whether or not such changess are indeed suitable to improve the quality of the search for prior art.
"After months of debate, officials addressing a proposal to make the World Intellectual Property Organisation more sensitive to developing countries could agree only that further discussion is needed.
The lead U.S. delegate afterward remarked on the 'good will' in the meeting, but said earlier during the meeting that it is 'difficult to have a constructive debate' on intellectual property and development when the parties start from positions of such 'profound' differences.
I think that now, after the European debate on the EU Directive on the patentability of computer-implemented inventions is closed, the diplomatic activities of certain countries to undermine the present legal system global IP protection will gain more public attention. The ant-globalist, anti-capitalist and anti-patent campaigners probably will (at least virtually) gather together in an attempt to attempt to bowl down this basition of IP governance.
EU Directive on the Patentability of CIIs: Official Death Certificate Now Issued.
The EU Council has published Document 10804/05 conveying a formal report on the outcome of the European Parliament's second reading of the Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions.
"In a bid to shake up the beleaguered American patent system, a law professor has crafted a proposal that would shift the patent-application process away from individual examiners to an internet-based, peer-review method.
Called Peer to Patent, the proposal by Beth Noveck, director of New York Law School's Institute for Information Law and Policy, aims to relieve the current system, in which the U.S. Patent and Trademark Office has a backlog of half a million cases. Noveck's plan would turn the review process over to tens or hundreds of thousands of experts in various fields who would collectively decide an application's fate via a massive rating system not unlike that of eBay."
Well, I think that an Internet based feedback system providing the Patent Office with hints concerning relevant prior art might be worth considering. However, the final decision on granting or rejecting a patent must under all circumstances be maintained as an administrative deed reviewable under the scrutiny of the courts or the Boards of Appeal, respectively. Allowing the general public to vote on individual patent applications would be a nightmare, both in practical terms as well in terms of constitutional law. The supremacy of the juristiction of the courts must be preserved under all circumstances.
A New Proposal for a European Parliament and Council Directive on Criminal Measures Aimed at Ensuring the Enforcement of Intellectual Property Rights.
The EU Commission has presented a new Proposal for a European Parliament and Council Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights. The Commission argues:
"Counterfeiting and piracy, and infringements of intellectual property in general, are a constantly growing phenomenon which nowadays have an international dimension, since they re a serious threat to national economies and governments. The disparities between the national systems of penalties, apart from hampering the proper functioning of the internalmarket, make it difficult to combat counterfeiting and piracy effectively. In addition to the economic and social consequences, counterfeiting and piracy also pose problems for consumer protection, particularly when health and safety are at stake. Increasing use of the Internet enables pirated products to be distributed instantly around the globe. Finally, this phenomenon appears to be increasingly linked to organised crime. Combating this phenomenon is therefore of vital importance for the Community. Counterfeiting and pirating have become lucrative activities in the same way as other large-scale criminal activities such as drug trafficking. There are high potential profits to be made without risk of serious legal penalties. Additional provisions to strengthen and improve the fight against counterfeiting and piracy are therefore necessary to supplement Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights. In addition to the civil and administrative measures, procedures and remedies provided for in Directive 2004/48/EC, criminal penalties also constitute, in appropriate cases, a means of enforcing intellectual property rights.
A start was made on harmonisation with the entry into force of the TRIPS agreement which lays down minimum provisions on means of enforcing trade-related intellectual property rights. These include the implementation of criminal procedures and criminal penalties, but there are still major disparities in the legal situation in the Community which do not allow the holders of intellectual property rights to benefit from an equivalent level of protection throughout the Community. As regards criminal penalties, there are considerable differences, particularly as regards the level of punishment laid down by national legislation.
As regards impact on fundamental rights, it should be emphasised that the direct objective of this initiative is to implement Article 17(2) of the Charter of Fundamental Rights which states that “Intellectual property shall be protected”; it does this by approximation of legislation while respecting the different legal traditions and systems of the Member States as well as other fundamental rights and principles recognised by the Charter. The level of sentences has been chosen pursuant to the seriousness of the different forms of wrongful conduct, in accordance with Article 49(3) of the Charter to the effect that sentences should not be disproportionate to the offence.
Since this objective may be better achieved at Community level, the Community may take measures in accordance with the principle of subsidiarity as set out in Article 5 of the Treaty.
A framework decision is required to supplement existing provisions as regards matters which fall under Title VI of the TEU."
Article 3 of the Draft says:
"Member States shall ensure that all intentional infringements of an intellectual property right on a commercial scale, and attempting, aiding or abetting and inciting such infringements, are treated as criminal offences."
According to the Commission, this Article obliges Member States to consider all intentional infringements of an intellectual property right on a commercial scale as a criminal offence. It also covers attempting, aiding or abetting and inciting such offences. The “commercial scale” criterion is borrowed from Article 61 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), concluded on 15 April 1994 and signed by all the members of the World Trade Organisation. Article 61 obliges Members to “provide for criminal procedures and penalties to be applied at least in cases of wilful trademark counterfeiting or copyright piracy on a commercial scale. Remedies available shall include imprisonment and/or monetary fines sufficient to provide a deterrent, consistently with the level of penalties applied for crimes of a corresponding gravity. In appropriate cases, remedies available shall also include the seizure, forfeiture and destruction of the infringing goods and of any materials and implements the predominant use of which has been in the commission of the offence. Members may provide for criminal procedures and penalties to be applied in other cases of infringement of intellectual property rights, in particular where they are committed wilfully and on a commercial scale.”
The infringement must be intentional, that is to say that the act must be deliberate, whether it is an actual infringement, an attempt at infringement, or aiding and abetting or inciting such an offence. This does not affect specific liability systems such as the system laid down for nternet service providers in Articles 12 to 15 of Directive 2000/31/EC on electronic commerce.
According to Article 4 of the Draft, for the offences referred to in Article 3, the Member States shall provide for the following penalties: a) for natural persons: custodial sentences; b) for natural and legal persons: i) fines; ii) confiscation of the object, instruments and products stemming from infringements or of goods whose value corresponds to those products.
For the offences referred to in Article 3, the Member States shall provide that the following penalties are also available in appropriate cases: (a) destruction of the goods infringing an intellectual property right; (b) total or partial closure, on a permanent or temporary basis, of the establishment used primarily to commit the offence; (c) a permanent or temporary ban on engaging in commercial activities; (d) placing under judicial supervision; (e) judicial winding-up; (f) a ban on access to public assistance or subsidies; (g) publication of judicial decisions.
"Lord Falconer of Thoroton announced on 13 July that in the future there will be opportunities for members of both the Chartered Institute of Patent Agents (CIPA) and the Institute of Trade Mark Attorneys (ITMA) to sit in a judicial capacity in appropriate intellectual property courts and cases."
This seems to be a very special British particularity ... in Germany, Patentanwälte (Patent Attorneys) can't sit in a judicial capacity in intellectual property courts and cases.
A number of other amendments brought about by Regulation No 422/2004 required implementing rules and are only now coming into force together with the recent amendment to the Implementing Regulation and the Fees Regulation (see Information from the Commission, referred to above).
The recent amendments to the Implementing Regulation go beyond merely implementing Regulation No 422/2004 and contain a number of other procedural improvements. This is in order to simplify the proceedings, remove doubts and pitfalls, and to benefit from the OHIM's 9 years of experience in applying the CTM Regulation.
How to obtain more information
For the benefit of users, the Office has established a consolidated version of the Implementing Regulation and Fees Regulation valid as from 25 July 2005 . The Office is also reviewing all its Examination Guidelines to adapt them to the revised procedures. As a first step, you can find on our website Draft Guidelines on "General Provisions on Proceedings before the Office" and on "Changes in an application or registration", including divisions of CTM applications and registrations. Further information will follow soon.
Parties to proceedings before the Office should familiarise themselves with the new rules.
Summary of the most important changes
What are the most significant changes brought about by the revised Implementing Regulation?
1. Representation of the trade mark
The new rules make it clear that for a mark consisting of a colour per se, an indication of an international recognised colour code is optional. In fact, the Office recommends indication of such a code but failure to do so will not constitute a ground for refusal. Furthermore, provision will be made for the furnishing of electronic sound files as an attachment to a CTM application for a sound mark filed by e-filing.
2. Division of an application or registration
The new rules implement Articles 44a and 48a CTMR (as introduced by Regulation No 422/2004). This allows for the division of a CTM application or registration. The division will be subject to a fee of EURO 250. Certain periods or procedural situations are defined where a division is not admissible. In particular, it is not possible to divide goods and services that are subject to an opposition. When an opposition is pending, only those goods and services can be divided off which are not contested by the opposition.
3. Opposition procedure
Rules 15–22 governing the opposition procedure have been reframed completely.
One objective was to put the provisions into a logical and chronological order of proceedings, and to clarify a number of formalities regarding which contradictory decisions taken at higher instances had caused uncertainty.
Another aim was to simplify the procedure whilst still retaining the basic features and procedural steps of the opposition procedure.
A new feature of the procedure is the immediate notification of all oppositions even prior to completion of the admissibility check. Once the opposition has been found admissible, the cooling-off period is set in motion, and the parties are invited to file their evidence and arguments, in the same way as has been done up to now.
Another new feature is the limitation of the cooling-off period to a maximum of 24 months.
The time limits for filing translations of documents have been reinforced. An opposition which is not filed in the first or second language of the application must be translated within one month (as is the case now) but if that is not done, the Office will not open a further time limit for doing so. All documents to be filed in the course of the proceedings must be translated into the language of the proceedings within the time limit applicable for the filing of the originals. An exception continues to apply for documents in support of proof of use.
Translations must faithfully reproduce the structure and contents of the original and must not be confined to excerpts which the party considers “relevant”.
A new rule makes it clear that the Office will disregard all facts and evidence that are filed after expiry of the time limits set.
It is also clarified that it is not the task of the Office to point out which documents are missing or could be filed by the parties once the opposition is admissible. This is important for the proof of the existence and validity of earlier rights. Private databases are not accepted as means of proof of the earlier right.
If the applicant requests proof of use, he must do so within the first time limit set for him to reply to the opposition.
As from 25 July 2005 , the transfer fee will be abolished. The OHIM considers it in the interest of the CTM system and of third parties that trade mark owners request the recordal of transfers.
No proof of the licence is needed if the request for recordal of the licence is filed or co-signed by the trade mark owner himself. However, if the request for recordal is filed or signed exclusively by the licensee, proof of the licence or the CTM owner's consent is necessary.
The changes to the conversion procedure, in particular the rule that it is the OHIM that decides on the admissibility of a conversion request, have already been in force since March 2004. However, it will now be clarified that, when a refusal of conversion is based on a meaning of the trade mark in a particular language (without any other qualification as to the territory to which the objection applies) a conversion is refused under Article 108(2) only in respect of those Member States where that language is an official language.
7. Notifications by fax
The new provisions clarify that the OHIM has a choice between fax and post as means of notification. This principle has already been confirmed by the Court of First Instance in the case "Pan Spezialitäten" (Joined Cases T-380/02 and T-128/03). Furthermore, it is clarified that a fax transmitted by a party through a computer work station (a so-called electronically generated fax) is an electronic transmission that does not require any signature.
8. Use of registered mail
Decisions subject to an appeal will continue to be notified by registered letter with advice of delivery (if the OHIM decides not to send the document by fax). However, all other documents will be notified by ordinary mail, which is deemed to have been effected on the 10th day following that of its posting. The category of registered letter without advice of delivery disappears. This means that although, in the future, more communications will be sent by ordinary mail, the addressees of these communications will benefit from an additional period before a document is deemed to have been received.
9. Extensions of time limits
In future, postal strikes in the Member States of the EC other than Spain will be irrelevant for the expiry of time limits. If an applicant or representative becomes aware of a postal strike in his own country, he should send the document via other means (fax or private messenger services).
Professional representatives need not file an authorisation (this merely confirms current OHIM practice).
11. Continuation of proceedings
Continuation of proceedings (continuing proceedings after an unobserved time limit provided the omitted act has been completed at the time the request is made and that payment of a fee of 400 euro has been effected) becomes possible. The request must be made within two months following expiry of the unobserved time limit. Certain time limits are excluded from this possibility.
The formalities for a renewal have been reduced to the strict minimum.
There are no special transitional rules for these changes. This means that the changes apply to all pending cases whenever the situation governed by the respective rule arises. In other words, the new rules apply to situations that arise in the future but not retroactively.
For example, in future, a request to extend the cooling-off period from 24 to 28 months (or from 30 to 36 months) will have to be refused, irrespective of whether the cooling-off period started before July 2005. A CTM applicant must request proof of use in his first observations if the time limit to submit them starts after 25 July 2005. Divisions of applications or registrations and the option to apply for further processing become available as of 25 July. As of that date, no fee will be charged for requests for registration of transfers.
Letters already sent out by the Office in the course of the proceedings remain valid and will not be changed afterwards if the legal basis for them was changed after the letter was sent.
In many aspects the new rules just confirm Office practice and in that respect no transitional issues arise. For example, the Office has, as a matter of course, disregarded documents filed in an opposition procedure after expiry of the relevant time limit set, and in the future, this practice will also be based on new Rule 19 (4).
Mr. Rufus Pollock, FFII UK: "This is the End of the Beginning, not the Beginning of the End."
FFII is committed to go on with their fight against the patent system as it stands now:
"[...] The FFII believes that the fight against software patents is not over.
'This is the end of the beginning, not the beginning of the end. Every year that goes by this side gets stronger,' said Pollock. "There's a lot of work to be done but we have an incredible basis. [...]"
Also Mr. Alan Cox, maintainer of the Linux kernel, seems not to suffer lack of military-style "war" commitment:
"[...] Cox joined the FFII in celebrating the defeat of the patent directive, but echoed Pollock's sentiments that the fight is far from over. 'I'm delighted that the directive has been killed. It's a rare and much welcomed victory for democracy in the EU. It is however just the opening battle in a war,' he said.[...]"
There have also some more strange things been reported. Ms. Eva Lichtenberger, Austrian Green Party MEP, is cited as follows:
"[...] 'The European Patent Office must now accept that there are no majorities in favour of software patents. The office must halt its current practice of granting patents for software, a practise for which there is no legal basis. The EPO should think now about creating policies that benefit not only big business," she said.[...]'
Er, could anybody please be so kind to explain to Ms. Lichtenberger the legal situation concerning the EPO?
In fact, the European Patent Office is not related to the EU. The European Patent Organisation constituted as a supra-national organisation by a separate treaty called European Patent Convention (EPC) runs the European Patent Office (EPO) granting European patents. The European Parliament has absolutely no power to give any directions to the EPO. This is the more true with regard to the Boards of Appeal of the EPO, the members of which do enjoy a status of independency from directions in the same way like judges in the national courts.
The new developments also shed a new light on the project of the so-called EU Community Patent. The Community Patent is a patent granted by the EPO, valid on the entire territory of the EU, and enforced by courts under EU law. The project had failed in 2004 because of the EU countries had been unable to find a compromise on the question of the required translation of the Community Patent into the various national languages throughout the EU. However, from time to time there are voices indicating a desire to revive this project.
"[...] The Member States shall support the Union's external and security policy actively and unreservedly in a spirit of loyalty and mutual solidarity.
The Member States shall work together to enhance and develop their mutual political solidarity. They shall refrain from any action which is contrary to the interests of the Union or likely to impair its effectiveness as a cohesive force in international relations.
The Council shall ensure that these principles are complied with. [...]"
Hence, in the effect the EU would have been in a position to dominate any Diplomatic Conference as well as the Administrative Council because of the other EU Member States would have not been allowed to depart from the Official EU policy. So, the project of a EU Community Patent ever was to a certain degree a plan for something like an (unfriendly?) take-over of the European Patent Organisation and, hence, of the European Patent Office (EPO) by the EU.
Now, if it should turn out to be a matter of fact that anti-patent campaigners have gained excessive political influence in the EU, in particular the EU Commission as well as the EU Presidency should think twice before speeding up with any attempt to revive the EU Community Patent plan. A revieved Community Patent project might well turn out to be a gateway for an unwelcomed invasion of adversaries of the patent system, aiming to destruct and to cripple the European Patent Office as it stands now.
"Munich/Strasbourg, 6 July 2005 - The European Patent Office (EPO) has followed with interest the vote of the European Parliament today and has taken note of the decision of the European Parliament not to accept the Directive on the patentability of computer-implemented inventions (CII) according to the Common Position of the Council. The proposed Directive is therefore deemed not to have been adopted. 'The objective of the directive would have been to harmonize the understanding of what constitutes a patentable invention in the field of CII', explained the President of the EPO, Professor Alain Pompidou.
The EPO carries out a centralised patent granting procedure for the 31 member states of the European Patent Organisation. 'Our Organisation was founded by almost the same countries as those which founded the European Union, and in the same spirit. The purpose behind the creation of the EPO was to make the patenting process in Europe more efficient by applying a single procedure on the basis of the European Patent Convention (EPC). In its practice, the EPO follows strictly the provisions of the Convention, which has been ratified by all member states of the Organisation', President Pompidou explained.
Under the EPC a well-defined practice on granting patents in the field of CII has been established: 'The EPC provides the general legal basis for the grant of European patents, whereas the objective of the directive would have been to harmonise the EU member states' rules on CII and the relevant provisions of the EPC. The EPC also governs our work in the field of CII, together with the case law of our judiciary, the Boards of Appeal of the EPO,' Mr Pompidou said.
As with all inventions, CII are only patentable if they have technical character, are new and involve an inventive technical contribution to the prior art. Moreover, the EPO does not grant 'software patents': computer programs claimed as such, algorithms or computer-implemented business methods that make no technical contribution are not considered patentable inventions under the EPC. In this respect, the practice of the EPO differs significantly from that of the United States Patent & Trademark Office."
The EPO will be one of the coming targets of further political attacks of the ant-patent campaigners on the patent system; that's for sure I think. The crowd will then loudly complain the ongoing grant of patents on CIIs on the basis of the EPC:
"Jonas Öberg, vice-president of FSFE: "This reaffirms the 1973 European Patent Convention (EPC), which excludes software from patentability. The European Patent Office (EPO) has largely ignored this central convention and granted approximately 30.000 software patents in the past years: this must stop today! The EPO should not be allowed to further ignore European policies!"
Georg Greve explains the proposal of FSFE: "Much trouble was caused by the inability of the European Union to hold the European Patent Office responsible for acting against agreed-upon policies: unlike other parts of a democratic executive, the EPO is not liable for the decision it takes. We propose to establish an EPO supervision instrument that holds the EPO management liable for its decisions and prevents further patent system degradation."
Needless to say that the competent judges from the Boards of Appeal have stated since long that patents on computer-implemented inventions are not excluded by Art. 52 EPC.
[UPDATE] The UK-PTO has commented the situation as follows:
1. The Directive on the patentability of computer-implemented inventions (CII Directive) was rejected on 6 July 2005 by the European Parliament during Second Reading. This follows fierce lobbying by opponents to the proposal, primarily from proponents of open source software, who believed that many companies would start to patent all their computer programs preventing the ready access to, use and exchange of source code upon which the open source business model relies.
2. Although a majority of Member States supported the general thrust of the original proposal and the Common Position, it was becoming increasingly likely that any text emerging from the European Parliament was likely to be either unworkable, or would move away from the original aim of maintaining the status quo.
3. The rejection of the Directive by the European Parliament means: (a) the legislative process is terminated. The Directive will not proceed further. (b) the law does not change (c) the fierce debate has ensured that national offices (and the European Patent Office in particular) have examined their practices to ensure they are not being too liberal in granting patents (d) the debate has also raised awareness amongst SMEs in particular of the patent system ? and the possibility of patenting their own inventions.
4. The original proposal was intended to clarify and harmonise the law within Europe. It was intended to maintain the status quo of permitting the patenting of certain types of inventions involving the use of computer programs, providing they made a 'technical contribution' and providing they also met the normal patentability requirements of being new, inventive and having industrial applicability.
5. The Directive was proposed, partly at UK prompting, because there was concern that divergences could arise between the practices of member states' national offices and courts. There was also the risk that, because the present legal position is essentially 'judge-made', a drift could develop in patenting practice towards the US 'patent all' approach to computer programs, which includes patenting business methods. This was not considered acceptable, given the conclusions of a consultation in the UK in 2000/2001, and that of a contemporaneous, but independent consultation carried out for the Commission. They both concluded broadly that computer programs - provided they made a technical contribution - should remain patentable, but business methods should remain unpatentable."
"The European Parliament has voted by a massive majority to reject the software patents directive, formally known as the Directive on the Patentability of Computer Implemented Inventions. The vote to scrap the bill was passed by a margin of 648 votes to 14, with 18 abstentions. [...]"
This means that patents on computer-implemented inventions continue to be validly granted by Patent Offices and enforced by the competent Authorities under the respective applicable national or supra-national laws.
Meanwhile, the Commissioner Mr. Charlie McCreevy has indicated that he will cancel the entire Directive if the European Parliament should go too far:
"[...]A row over software patents is linked to bitter opposition over EU economic liberalisation and to broader anti-free market sentiment, the European Commissioner for the Internal Market has said.
MEPs debate the controversial Computer Implemented Inventions (CII) Directive on Tuesday ahead of a Wednesday vote in the European Parliament.
Charlie McCreevy told EUpolitix.com that debate on the directive has been influenced by broader political opposition to EU economic liberalisation – and anti-globalism.
In particular the CII proposals had become linked to the Services Directive – proposals blamed for the French EU constitution rejection in May.
'The theme, or the background music, to both of these particular directives you could see as part of, anti-globalisation, anti-Americanism, anti-big business protests – in lots of senses, anti-the opening up of markets,' he told this website.
'I think an awful lot of the debate in Europe in recent times has been influenced by this particular type of thinking, which I would accept is part of the opposition to the CII directive and part of the opposition also to the services directive.'
The commissioner will not allow the European Parliament to rewrite the CII – amendments will be voted on this Wednesday.
While welcoming a recent CII vote by the parliament’s Legal Affairs Committee, McCreevy repeats that if MEPs make commission proposals legally unworkable or self defeating he will withdraw them.
'I’ve said all along is that what the original purpose of the directive was, was to codify the existing situation.'
'What I’ve said all along is we’re not going to allow a situation to develop whereby with amendments and changes we end up doing exactly the opposite of what this particular directive set out to do. That I have made clear,' he said.
'I have also made clear is that if the parliament was to reject the directive then I would not be putting another proposal on the table. That remains my position.'[...]"
Good to know that Mr. Charlie McCreevy will step in should the Parliament be misguided to destruct the patent system.
Here are the claims of the newest innovative patent, granted on 29-06-2005:
A method comprising: receiving video and enhanced content information; storing said video information for subsequent playback in a random access memory; and storing said enhanced content information for subsequent playback.
The method of claim 1 further including storing said enhanced content information in a random access memory.
The method of claim 2 including storing said video information and said enhanced content information in a hard disk drive.
Wow! Such a trivial patent has been granted just last month by the European Patent Office? Scandalous!
Err ... the truth is that FFII has simply quoted the original claims as filed with the application and published in Document EP 1254562 A2 referring to PCT Document WO 002001056270 A2
They have generated a PDF version of the granted patent EP 1254562 B1, and if any of their readers should ever bother to dig into this thing, claim 1 thereof as granted by the EPO reads much different:
A method comprising: receiving video and enhanced content information including at least one identifier of web content associated with the video information; retrieving said web content associated with the video information based on said identifier; storing said video information for subsequent playback in a random access memory; providing separate packets for video information and web content and including a time code in each packet to synchronise said video information with said web content; and storing said enhanced content information and said retrieved associated web content for subsequent playback wherein said storing is configured to allow synchronised playback of video information and said associated web content.
Why does FFII allow such misrepresentations? I don't know but the first thought might be that they are much better able to impress and shock the layman with such misleading language than with the much narrower claims actually granted by the EPO.
And such misrepresentations are systematically done done on a methodical basis. On the above-mentioned Wiki page there are other links to "trivial patents".
Let us pick for example the link to EP772327. If you click on the link you will get a page of the so-called Gauss system where the FFII maintaines a collection of patent-related databases and document heaps.
On the web page you can see a lot of information related to EP 0772327 but with no indication visible so as to whether the laid-open Document EP 0772327 A2 reproducing the application as originally filed or the patent Document EP 0772327 B1 as granted by the EPO is actually quoted.
But things get much more worse. Yes, also claims are quoted on that page. For example, claim 1:
An electric mail forwarding system between a mail communication terminal and a portable-type wireless communication terminal, the mail communication terminal serving to receive an electric mail via a data communication network, and the wireless communication terminal serving to transmit a forwarding-request signal for the electric mail to the mail communication terminal via a wireless data communication network, in which the mail communication terminal comprises:
a mail box for storing the received electric mail;
a forwarding-request signal recognizing section for receiving the forwarding-request signal transmitted from the wireless communication terminal and for recognizing additional information contained in the forwarding-request signal; and
a wireless data communication processing section for sequentially forwarding the electric mail to the wireless communication terminal based on the recognized forwarding-request signal.
Of course and as expected, this is not claim 1 as granted. No surprise, the claim language as granted by the EPO is approximately three times as long as the text given by the FFII. The scope of the claim 1 as granted is tiny compated with the language given by the Gauss system.
Feel free to look up the language of the claim 1 as granted e.g. by utilising Depatisnet.
Digging into the Gauss system brings a lot more of such surprises.
It is a common malpractice of the FFII and in particular of members of its supporter crowd to quote claim languages as originally filed or even abstract language when complaining the overbroad scope of so-called "trivial patents".
I contine to say "don't spare the Patent Offices" should they ever have problems with quality control but the tactics of FFII and its supporter crowd to demonstrate bad patents is simply confidence tricksing or dupery. Many people do not know of the utmost important difference between laid-open Documents mirroring the wishes and desires of the applicant and granted patents documenting rights granted by the Authority. FFII is heinously exploiting this opportunity.
I wonder why so many companies supporting FFII are not somewhat embarrassed by this practice.
"A chaos is threatening next week in Strasbourg. Because of the large amount of amendments, the directive could shoot in all kinds of directions like a firecracker and we want to prevent this. Rather no legislation than bad legislation"
"This directive concerning software patents can, if necessary, be brought under the umbrella of the Community Patent. This offers more judicial certainty, the democratic control of the Parliament on the European Patent Office would also be guaranteed by it."
According to FFII, at the initiative of spokesperson Toine Manders (VVD) the liberal fraction of the European Parliament submitted an amendment to reject the controversial Directive concerning the patentability of computer implemented inventions next week.