Issue 05/2006 of the Official Journal of the EPO has been Published on the EPO Website.
Today, Issue 05/2006 of the Official Journal of the EPO has been published on the EPO website. Inter alia, the text of G 1/04 - "Diagnostic methods" is published therein.
Some Questionable Assertions on EU Position Concerning CIIs.
Somewhat strange political assertions concerning an alleged amended position of the EU Commission with regard to the patentability of computer-implemented inventions (CII) recently have been circulated on the Internet.
On May 24th, 2006, FFII had published a statement under the title "European Commission: EPO Case Law Not Binding - Software Not Patentable". Referring to the answer given by the EU Commission in reponse to a question from Polish MEP Adam Gierek they argued:
"[...] The Commission replied that the pre-grant phase of patents could still be governed by the European Patent Convention (and thus be handled by the EPO), but that post-grant aspects such as validity and litigation would fall under Community Patent regulation. The ECJ would also be able to form its own opinion, independent of EPO case law. Their conclusion is that in practice, the EPO would therefore have to follow Community Patent case law and not the other way round.
Pieter Hintjens, president of the FFII, said: 'I'm stunned. The Commission has been denying reality for so long and pretending that the earth was flat and apples did not fall downwards, whereas the EPO has been obnoxiously granting unwarranted pieces of paper whose only innovative effect has been in the domain of patent litigation. Does the Commission now accept that the EPC rules do actually rule? Or have I misunderstood something?'
He further added: 'The proposed Community patents will be granted by the EPO: a non-accountable, non-Community organisation, with no independent appeal possible. The Commission says this is no problem since the ECJ can invalidate the granted patents in infringement cases. That is however only true if it comes to civil litigation, which is often too expensive for SMEs, forcing them to pay for a license. Therefore software patents not yet taken to court will impose an enormous burden on the industry.'
'It is nevertheless good to see that the Commission no longer presents EPO case law as 'the status quo which must be codified'. However, it relies too heavily on courts to keep Europe safe from software patents. Whether or not Europe should have software patents is not a legalistic detail which should be left to courts to sort out. It is a crucial economic policy decision which must be taken by our elected representatives.' [...]"
I think that Mr. Hintjens in fact has misunderstood something. FFII correctly wrote that the pre-grant phase shall be governed by EPC, i.e. with regard to the crucial criteria of patentability by Artcle 52 EPC. On the basis of this Article, in EPO's view, no patents on software 'as such' are granted. Patents are granted on computer-implemented inventions provided that such inventions have necessary technicality. Also under the proposed EU Community Patent Regulation, the Boards of Appeal of the EPO will continue to have the utimative authority with regard to the pre-grant phase, i.e. in case of a dispute between the EPO and the applicant they are the competent institution taking a binding final decision on whether a patent is granted or not.
But things get interesting when the post-grant phase is analysed. Article 28 of the Proposal for a Council Regulation on the Community patent as published with Document 7119/04 dated March 08, 2004, says:
"Grounds for invalidity
1. The Community patent may be declared invalid only on the grounds that:
(a) the subject-matter of the patent is not patentable according to Articles 52 to 57 of the Munich Convention;
(b) the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
(c) the subject-matter of the patent extends beyond the content of the patent application as filed, or, if the patent was granted on a divisional application or on a new application filed in accordance with Article 61 of the Munich Convention, beyond the content of the earlier application as filed;
(d) the protection conferred by the patent has been extended;
(e) the proprietor of the patent is not entitled under Article 4(1) and (2) of this Regulation;
(f) the subject-matter of the patent is not new having regard to the content of a national patent application or of a national patent made public in a Member State on the date of filing or later or, where priority has been claimed, the date of priority of the Community patent, but with a filing date or priority date before that date.
2. If the grounds for invalidity affect the patent only partially, invalidity shall be pronounced in the form of a corresponding limitation of the patent. The limitation may be effected in the form of an amendment to the claims.
3. In the processes before the courts referred to in Article 30 concerning the validity of the Community patent, the holder of the patent shall be entitled to limit the patent by modifying the claims. The limited patent shall then be the basis for the process."
Article 30 of that Draft reads:
"Actions and claims relating to the Community patent - Exclusive jurisdiction of the Court of Justice
1. The Community patent may be the subject of invalidity or of infringement proceedings, of action for a declaration of non-infringement, of proceedings relating to the use of the invention prior to the granting of the patent or to the right based on prior use of the patent, or of a counterclaim for a declaration of invalidity or of a petition for the grant or revocation of a compulsory licence. It may also be the subject of proceedings or claims for damages or provisional or protective measures or requests for the determination of compensation.
2. In accordance with the decision giving the Court of Justice jurisdiction for matters relating to the Community patent, adopted pursuant to Article 229a of the Treaty, the actions and claims referred to in paragraph 1 shall come under the exclusive jurisdiction of the Court of Justice, except in the case of Article 9a. In accordance with the decision taken pursuant to Article 225a of the Treaty, they shall be brought in the first instance before the Community Patent Court and, on appeal, before the Court of First Instance."
Now, this means that in fact an institutional conflict between the Boards of Appeal of the EPO, on the one hand, and the ECJ, on the other hand, theoretically might come up later on after the full implementation of the EU Community Patent: For example, in a borderline case concerning some CII, the Boards of Appeal in the pre-grant phase might give "green light" to grant a patent but later the ECJ might cancel the same patent upon an invalidation action brought before the Court by some third party in the post-grant phase because of a different view on Article 52 EPC. However, in principle this is already the current situation we now have with regard to the national courts which have to take decisions in cancellation cases concerning patents granted by the EPO under the EPC. In such cases, they are not allowed to base their decisions on their respective national law but they are strictly bound to interpret the EPC. The general practice is that national Courts are acting carefully in order to avoid creating case-law diverging with regard to the line followed by the Boards of Appeal of the EPO whenever possible. The only generalisation would be that after installation of the EU Community Patent, the ECJ also would have a (big) voice amongst the Courts decising cancellation cases for European Patents granted by the EPO. With regard to Courts within EU Member States it should be considered that in such scenario they won't feel free to depart from any ECJ line of case-law further on.
And, of course, in the EU Commission's view, the EPO surely does not grant "Software Patents". Hence, asserting that also under the EU Community Patent scheme the EPO will not grant such patents does not come as a surprise. Please note that the EU Commission did not issue any statement to the effect that the EPO shall be barred from further granting patents on (technical) CIIs.
"[...] A series of articles appearing recently in specialist publications have caused consternation among software developers and IT companies when they claimed that there had been a change in the European Commission's stance on software patents. These stories either implied or asserted that computer programs will be excluded from patentability in the upcoming Community Patent legislation and that the European Patent Office will be bound by this law.
But software patent specialists - members of the UK's Chartered Institute of Patent Agents (CIPA) - are confident that there has in fact been no change and that the journalist has misinterpreted the situation. CIPA spokesman Ilya Kazi said 'In response to a question from Adam Gierek, a Polish MEP, the European Commission confirmed that Community Patents could be revoked if they had been granted improperly - for example, if a patent related to excluded subject-matter. This is entirely what we would expect. As part of the patenting process, some patents may be granted which subsequently can be shown to be invalid. For example, new information may be revealed that was not available to the granting authority.'
Ilya Kazi went on to explain that in the answer to the Polish MEP's question has been misconstrued as a statement that Community Patents relating to software will automatically be revoked. This is not the case and is not what was actually said. 'Accordingly', said Ilya, 'the position remains that patents relating to software will continue to be granted, and should be upheld, provided the underlying invention has the necessary technical character. There are no specific proposals to change the regime relating to software or to introduce a further appeal process.' [...]"
Sadly, there have appeared a number of in fact very misguiding articles on the Internet like this, this and that. See also the discussion on Slashdot.
BTW, nobody should take for granted that the EU Community Patent scheme will ever enter into force. Altogether, the entire public brouhaha around the Commission's reply to Mr. Gierek's question appears to be nothing more than a storm in a teacup.
"[...] As regards the reference to 'other public policy interests' we agree that the overall system needs to contemplate these but feel that these considerations relate to how the invention is used rather than whether exclusive rights should be attached to it. Technology for which patents happen to be granted should be governed by separate legislation - relevant to that technology - and inclusion of such provisions in patent legislation - dealing with the circumstances in which patents should be granted - are often inappropriate and ineffective. There is a difference between the patent - which is a right to prevent others from using - and the ability oneself to exploit the invention for which the patent gives protection. [...]"
And:
"[...] Are there any other features that you consider important?
(a) An effectively and professionally managed system of granting authorities (Patent Offices) and Practitioners (Patent Attorneys).
(b) Balance between an appropriate level of inventive step and an appropriate level of scope of protection afforded by a patent.
(c) The reference to 'clear substantive rules on what can and cannot be covered by patents' seems to suggest that the importance lies in defining clearly what can and cannot be covered rather than performing the underlying analysis to establish what areas of technology benefit from the protection afforded by patents. We believe that the first step is to identify those areas from an economic standpoint and only then define them appropriately. Nor should exclusion to patentability be driven by general public policy issues beyond considering what exclusive rights should be available for; legislation designed to govern the exploitation of technology should be constructed separately from the framework of the patent system.
(d) Ensuring the potential needs of all users - from the multinational to the individual - are taken into account.
(e) The initial premise that the patent system solely supports innovation by granting monopolies to inventors is not the whole story. By encouraging inventors to publish their inventions, it also enables others to make further inventions, sometimes by designing around an existing patent. Therefore having clear boundaries and recognising the benefit of later inventions is also an important requirement of a patent system. [...]"
UK Consultation on the Patent Office Strategy for Supporting Innovation.
Yet another public consultation has been launched by the UK Patent Office. It has the title "Consultation on the Patent Office strategy for supporting innovation" and is available here:
"[...]
Introduction
The Patent Office has been considering how it can deploy its considerable knowledge, resources and expertise to support innovation in the UK beyond our existing support activities and core statutory functions of granting IP rights, serving as a tribunal and providing advice on IP policy to Ministers. To this end, we have prepared a strategy for supporting innovation which is the subject of this consultation. Annex 1 describes how the Office intends contributing to the Government's innovation support agenda by building on its existing support activities and pursuing new initiatives.
Appended to the strategy is a wide ranging action programme which constitutes a menu from which activities will be pursued when resources permit. The Office will not necessarily lead on all the activities. Where we propose working in partnership with other organisations our aim is to establish how best we can engage with them in support of joint objectives. Priority will be given to actions which offer the greatest benefit in respect to innovation.
An independent review of the intellectual property rights in the UK is currently being undertaken by Andrew Gowers who has been appointed by the Chancellor of the Exchequer to lead the review and report in Autumn this year. See the Gowers Review website off site link for more information. [...]"
The UK Patent Office says that it is committed to supporting innovation in the UK. One of its 10 Year Goals is said "To be a centre of excellence supporting innovation and creativity, known worldwide for our knowledge-based services and policy making". They want to help creating the conditions for business success and helping the UK respond to the challenges of globalisation.
The strategy the UK Patent Office is proposing has six objectives, namely:
Ensuring that business understand how best to use IPR to lever commercial success from their creativity.
Ensuring that research and academic bodies understand how best to use IPR to lever success from their creativity.
Delivering a high quality rights services in a modern e-environment.
Developing and offering commercial services which use the expertise of the Office to assist business in decision making.
Ensuring that rights can be enforced in a balanced and easily accessible manner.
Developing the framework of domestic and international IP law and policy to meet the needs of a modern knowledge based competitive economy.
The UK Patent Office wants to ensure that their strategy for supporting innovation, particularly the programme of activities they have identified, is appropriately focused to make the most effective and efficient use of the Office's expertise and resources. They are also keen that their strategy complements rather than duplicates or cuts across innovation support activities being carried out by others. Above all they want to ensure that the strategy will deliver maximum benefits to UK business. This consultation is, in their view, intended to give all interested parties the opportunity to help fashion the strategy so that it achieves these objectives. No foreign, international or EU perspective appears to be mentioned in their consultation paper.
Everyone is welcome to comment on the strategy. A consultation response form is available at Annex 3 which a contributor may wish to use to reply. Responses should be sent by post, fax or e-mail by August 21, 2006.
New CII Case-Law from Boards Of Appeal of the EPO.
Case T 0424/03 - 3.5.01 (Clipboard formats I/MICROSOFT) decided on February 23, 2006:
"[...] 1. The claim category of a computer-implemented method is distinguished from that of a computer program. Even though a method, in particular a method of operating a computer, may be put into practice with the help of a computer program, a claim relating to such a method does not claim a computer program in the category of a computer program (point 5.1 of the reasons).
2. A computer-readable medium is a technical product and, thus, has technical character (point 5.3 of the reasons).
[...]
The Board also considers the claimed method steps to contribute to the technical character of the invention. These steps solve a technical problem by technical means in that functional data structures (clipboard formats) are used independently of any cognitive content (see T 1194/97 - Data structure product/Philips; OJ EPO 2000, 525) in order to enhance the internal operation of a computer system with a view to facilitating the exchange of data among various application programs. The claimed steps thus provide a general purpose computer with a further functionality: the computer assists the user in transferring non-file data into files.
[...]
With respect to the closest prior art (Windows 3.1), the method of claim 1 solves the problem of how to facilitate a data exchange across different data formats, in particular when transferring non-file data.
The solution provides for a file contents clipboard format and a file group descriptor format which interact to allow data to be sent in a first format (non-file data) and processed in a second format (file encapsulation) at the receiving data sink.
While Windows 3.1 is able to copy a block of text or graphics into the clipboard in corresponding clipboard formats at the same time and to paste the data into a receiving document or window in one of the clipboard formats offered, a clipboard format adding the aforementioned formatting metamorphosis (encapsulation into a file upon transfer of non-file data) does not derive in an obvious manner from the pre-existing operating system. [...]"
Mr. Stefan Kremplreports [in German only, sorry] on Heise News that the work dispute between the top EPO officials, on the one hand, and the Examiner Corps, on the other hand, escalates further. See also my previous posting.
Mr. Krempl writes that the Examiners have voted with a majority of 76 per cent out of 1.126 voters to go for a full-day strike tomorrow.
Representatives of the Examiners are reported to have argued that a new approach for assessing the work performed by the EPO staff would effectively result in wages increasing with the number of patent applications processed.
Besides the strike issue, my impression is that some higher-ranked EPO Officials seem to be a bit nervous in view of the political challenges they are facing as there is, for example, the rebuttal of the EU Draft Directive on the patentability of computer-implemented inventions which would, if adopted, have set something like the EPO case-law practice as a leading norm for the entire EU.
Moreover, some smaller EPC Member States try to press the EPO to outsource some work of its core processes to smaller national patent Offices in order to help them survive.
And, so according to roaming rumours, internally the EPO top brass are quite aware of the fact that they have a quality problem with regard to substantial examination (buzzword: "trivial patents") which has to be resolved quickly. But, contrary to that what various anti-patent campaigners try to propagate with their propaganda efforts, the problem is not that the Boards of Appeal lack independency with regard to their decisions. To the contrary, one of the key aspects in this context might be that the Boards of Appeal appear to be less than ready to raise the minimum distance of an invention from prior art necessary to qualify for inventive step. As long as the Boards of Appeal are not willing to re-think their approach with regard to the assessment of the inventive step, the Examining Divisions of the EPO will be screwed on anyway. And, of course, nobody in full possession of the faculties would argue in favour of abandoning the independency of the Boards of Appeal concerning their decisions. The problem might be related to the question how to communicate to the Members of the Boards of Appeal that changes are necessary. Normally this would be done by the souvereign, perhaps in the case of the European Patent Organisation created as a trans-national entity by a Diplomatic Conference of the EPC Member States amending the EPC. However, the statutory provisions concerning the inventive step within the EPC never have been modified in order to allow or facilitate anything like "trivial patents" (whatever that might mean precisely). How could even theoretically a Diplomatic Conference communicate that a more robust approach is needed in view of the requirement of inventive step in order to save the patent system as it stands?
"[...] Google Trends analyzes a portion of Google web searches to compute how many searches have been done for the terms you enter relative to the total number of searches done on Google over time. We then show you a graph with the results - our search-volume graph.
Located just beneath our search-volume graph is our news-reference-volume graph. This graph shows you the number of times your topic appeared in Google News stories. When Google Trends detects a spike in the volume of news stories for a particular term, it labels the graph and displays the headline of an automatically selected Google News story written near the time of that spike. Currently, only English-language headlines are displayed, but we hope to support non-English headlines in the future.
Below the search and news volume graphs, Google Trends displays the top cities, regions, and languages for the first term you entered. [...]"
I have played around for a little while with this tool. First, I have entered the terms "patents" and "trademarks". It does not really come as a surprise that apparently patent-related searches are much more common than trade mark related ones.
However, on the average Google News seems to report as often on patent matters as on trade mark matters. I am a bit surprised that not the U.S. but India appears to be the top country searching for patent related matters. Also there is a slight but clear decline in search volume for patents over the years.
Below is the graph for the keyword "software patents" alone. You can see some spikes which can easily be understood in view of the dates of the political turning points of that matter. Interestingly, the graph fades out shortly after the final decision of the EU parliament to abandon that project altogether.
In view of this chart, I would dare to argue that the campaign against so-called "software patents" is virtually dead even on the Internet.
"[...] Patent examiners don't exactly have a reputation for staging angry protests. But on Tuesday 9 May they plan to hold a half-day strike at the European Patent Office (EPO) in Munich, Germany, to defend their right to work to a high quality. [...]"
"[...] Wolfgang Manntz, the chair of the Berlin branch of the EPO staff union, told ZDNet UK that a half-day strike was held in Munich and a full-day strike in Berlin. Management has proposed a change to the patent assessment system, which the union claims will force patent examiners to process more applications.
'If we have to produce more, then patent quality will go down,' he said. 'We are already at the limits of working productivity.'
A spokesman for the EPO confirmed the strike had taken place and said it had been 'followed by a large majority of EPO staff' [...]"
It does not really come as a surprise that the EPO Officials beg to differ. A spokesman told the research journal Nature last week that the proposed system is expected to increase patent quality as well as productivity, writes Ms. Marson.
[UPDATE 2006-05-17] There is a report on Heise News [In German only, sorry] saying that the EPO Examiner's strike was announced to be continued on May 16, 2006.
There is a very interesting interview on IP Watch with Mr. Konstantinos Karachalios of the European Patent Office (EPO) discussing some of its concerns about the future of the intellectual property system done by EPO by launching a major study of the "critical issues" ahead. The first part of the study, the result of 70 interviews with key players worldwide, will be published shortly.
"[...] KARACHALIOS: We have identified already four basic driving forces on a very consensual broad basis: People from very different nations, different positions within the office, very different backgrounds - we all agreed on these four major driving forces which are more continental shelves moving, drifting, pressing one another.
The first is, broadly speaking, society. The deeper, long term expectations, fears, attitudes, how this underground landscape may influence the IP system. It might sound trivial, but it is not, because there has been a perception that the IP system is something for specific circles, experts and lawyers. However, since IP has entered the political arena, wider societal forces inevitably demand a greater role and influence.
There are political movements, non-governmental organisations [NGOs], wishing to play a role - already playing a role. That is very apparent. As the IP history of the past 100 years shows, a big problem is that IP is one of the rare, highly polarised fields, where it is apparently very difficult to build any kind of consensus, even to gather commonly agreed empirical data to serve as a basis for an objective discussion. It is a huge task for everybody rejecting extremist positions and seeking to create win-win situations.
The second continental plate is technology, emerging new fields and its pace, its acceleration, what is called 'technology avalanche.' To give you one example: The whole 20th century is equivalent to only 16 years of technological progress measured by the year 2000, i.e., technologically seen, the whole century could be compressed within only 16 years, with developments concentrated more and more towards its end. Taking into account this accelerating effect, could you imagine how many such time units we and our children will experience and must cope with during the 21st century? There will apparently be more than 100, but can you imagine how many? Well, if you simply extrapolate the current trend, assuming no large-scale and long-term disasters, it may be that we will have to accommodate a technological progress equivalent to 25,000 years, based on year 2000 technology, within two generations. Even if you take 'only' 1,000 years, we will be faced with challenges similar to the ones that are still facing most populations in Africa, which were catapulted from the iron or Stone Age into modernity within two to three generations.
[...]
The third challenge is linked to the general economic environment, including the innovation process. Whose interests is this system serving and where is the right balance? There is an ongoing general discussion about knowledge as public good and knowledge as an exclusive private property right. This is a never-ending question, one will never find the perfect equilibrium, it will remain a matter of political negotiation. Another aspect is the rapidly changing economic and production conditions within the globalization mega-trend.
Then we identified a fourth driving force, geopolitics, the working group of which I am coordinating. The question is how does geopolitics play into the agendas. How a change within a major geopolitical player, let's say the US, may influence the rest of the world. That means that you have to capture what is going on now in the micro-scale within the societies and policymaking levels not only of the current, but also the future major players, and also try to imagine the qualitative transformation of their IP agendas as they change in the years to come. This cannot be done by linearly extrapolating current agendas and weighing them with probable geopolitical future weight, you need to get the 'turn', the possible metamorphosis from caterpillar to butterfly.
So these are the four driving forces which of course are not separated, they play strongly into each other. Having this in mind, we have set up four groups to look more systematically into each one of the mentioned main challenges, intending to make a synthesis at the next phase of the project. For each topic we will hold small workshops including also external people. [...]"
This four-fold approach appears to be a quite broad attempt to tackle present problems of the system of IP law but, I think, an appropriate one.
"[...] KARACHALIOS: There is a widespread perception that the system is coming under stress. In the US it is very apparent, there is a lot of very vivid debate there, and this [spills] also over to Europe. There are two main symptoms: One is the increasing backlog, the patent offices face increased difficulties to cope with the numbers of applications. Apparently the system has been very attractive and successful, so an increasing number of people wish to use it. But this poses questions. Is the experienced geometrical growth sustainable and if yes, how can we cope with it? To give you an example: based on the situation and the predictions at its creation period, the EPO was conceived to become in the long term an organisation with some 2,500 persons, dealing with a maximum of 40,000 applications a year. Not even 30 years after, we are 6,500 persons and receive 200,000 applications a year, trends upwards. You see here that predictions and extrapolations based on solid experience and common sense do not always deliver realistic results. [...]"
What will be the consequences to be drawn?
[UPDATE 2006-05-18] If you click on the link to the interview as provided hereinabove, you'll notice a page indicating "Our apologies, this interview has been taken down." I dont't know the specific reasons. An abbreviated version (approx. 1/4 of the original length) is now available there.
UK: Sir Digby Jones Calls for the Creation of an IP Minister.
According to an article recently published on FT.com, Sir Digby Jones, outgoing director-general of the CBI, has called for the creation of an organisation in charge of patents, copyright and other intellectual property issues, headed by an IP minister:
"[...] 'Intellectual property has become too important to be just one of a number of responsibilities of a minister,' he said. 'We need an IP minister to take strategic charge of the issues across government and address the disparate challenges facing the UK.'
The CBI says small businesses need tax breaks to cover the costs of applying for patents.
'Small and medium-sized firms and individuals wanting to access the patent system continue to be hampered by costs and red tape,' Sir Digby said. [...]"
Well, the creation of an organisation in charge of patents, copyright and other intellectual property issues, headed by an IP minister, would truly reflect the importance of Intellectual Property in modern politics. However, it also would increase overhead to some extent.
The UK economy is knowledge-based. Within that broad framework IP rights underpin crucial money earners for the UK: the UK has a huge positive balance of payments from copyright; trade marks are crucial to branded products sold across the world by UK companies; and patents ensure that profits from research-based innovation are not undercut by competitors riding on UK R&D. We do have some overall concerns about some of the underlying assumptions set out in the background, which might suggest a specific agenda driving part of the review, perhaps influenced media representation of 'topical' issues such copyright in the digital world and software patents debates. The introduction contains some very negative references, e.g to 'restricted or restrictive licensing' and 'overly broad' patent protection.
It is our experience that media coverage of IP issues is often based on misunderstandings of the IP system. For example there are frequently reports about so-called 'trivial patents' which turn out to be merely patent applications that have not yet been examined. Similarly, many of the issues highlighted in the media are specific to the USA.
We are pleased that the introduction to the review acknowledges that the UK's IP framework is a critical component of the UK's success in the global economy. Generally, we consider that the IP system in the UK and Europe works effectively. Like any other system, the IP system is not perfect, but it is in general very good. It incorporates numerous checks and balances to maintain the proper relationship between owners of IP, their competitors, consumers and the wider public interest. This relationship should not be upset by making significant changes unless there is sound research and hard evidence to justify any such changes. The review should also avoid a debate on some issues on which there may be genuine concerns drawing in other areas (such as trade marks and designs) which operate in a fundamentally different context and to which the same concerns do not apply. For example, trade marks and designs have a vital role in combatting the tide of piracy and counterfeiting (often funding organised crime) which threatens to overwhelm EU industry, none of which appears to be recognised in the background to the review.
Summary:
In general the IP system in the UK is works effectively. Changes to it should only be undertaken with considerable caution.
In addition the quality of access and of information about the system are also generally good.
There are a number of issues in relation to the operation of the 'system' itself to which consideration should be given:
The costs of enforcement or challenge are very high, and in some cases (but not all) this is inappropriate and a significant disincentive to enforcement or freedom of action. This is particularly so in relation to the patent system.
Retaining quality of granted rights in the patent system is of major importance.
Continuing international harmonisation is likely to be valuable, although not at any cost.
At a European level
There is some concern about the costs of obtaining patent protection in Europe. In particular reduction in translation costs should be a focus, and the London Agreement should be pressed forward.
Harmonisation on the litigation front through the EPLA should be promoted, although details need to be sorted out and we do not support the current transitional arrangements.
The use of specialists (patent and trade mark attorneys) in intellectual property matters in the 'higher' European Courts should be assured and steps taken to obtain a political consensus and to amend the EU provisions where necessary, to parallel access in the UK.
There are several further areas in which we would make recommendations:
There needs to be a suitable formally constituted body where IP issues can be debated and where users of the system can interact with each other and with the Patent Office.
We believe that the government should ensure that high quality, properly informed independent research is carried out into IP issues, including the economic and social consequences of any proposed changes to the system.
There should be improved linkage across government in relation to IP policy and an understanding of IP and IP issues.
Steps should be taken to promote the value and important of IP to the UK economy in the public perception.
CIPA Amicus Brief on Divisional Applications Under the EPC.
CIPA, the Insitute of the British patent professionals, has published an Amicus Brief sent to the Enlarged Board of Appeal of the European Patent Office concerning pending case No. G1/05:
"[...]
Question 1:
Can a divisional application which does not meet the requirements of Article 76(1) EPC because, at its filing date, it extends beyond the content of the earlier application, be amended later in order to make it a valid divisional application?
We submit that the answer to this question should be 'yes', for the following reasons.
[...]
Question 2:
If the answer to Question (1) is yes, is this still possible when the earlier application is no longer pending?
We submit that the answer to this question should be 'yes', for the following reasons.
"[...] The United States Patent and Trademark Office (USPTO) will hold a briefing on May 12, 2006, from 9:00 a.m. to noon in the agency's Madison building, 600 Dulany Street, Alexandria, VA. The USPTO has created a partnership with academia and the private sector to launch an online, peer review pilot project that seeks to ensure that patent examiners will have improved access to all available prior art during the patent examination process.
As a follow-up to the February 16th meeting, this briefing will focus on further developing previously discussed initiatives as well as answering the question of what constitutes valid prior art and a greater in-depth analysis of the peer review pilot project that is under consideration. [...]"
The Peer-to-Peer pilot project is backed, inter alia, by IBM. Although I am not in a position to provide any specific forecast of the final results effectively obtainable by this pilot projekt I think that I should recommend to all patent profesionals throughout Europe to closely monitor its activities because of it appears to have a huge potential to change patent practice in future.
Amended Proposal for a EU Directive on Criminal Measures Aimed at Ensuring the Enforcement of IP.
The EU Council has published Document 8866/06 conveying an amended proposal for a Directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights as drafted by the EU Commission.
"[...] This proposal for a Directive amends the proposal for a Parliament and Council Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights (2005/0127 COD). It puts into effect the Communication from the Commission of 23 November 2005 (COM(2005) 583 final) on the implications of the Court's judgment of 13 September 2005 (Case C 176/03 Commission v Council). It was held in that judgment that provisions of criminal law required for the effective implementation of Community law come under the EC Treaty. The Commission states in its Communication that it will make the necessary changes to pending proposals as and when required. It specifically mentions the proposal for a Parliament and Council Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and the proposal for a Council Framework Decision to strengthen the criminal law framework to combat intellectual property offences (COM(2005) 276 final). Consequently, the proposal for a Framework Decision has been withdrawn and a proposal drawn up amending the proposal for a Directive on criminal measures.
The provisions in the proposal for a Framework Decision relating to penalties and extended powers of confiscation have now been incorporated in the new proposal for a Directive. The only provisions that have not been taken over are those relating to jurisdiction and the coordination of proceedings, contained in Article 5 of the proposal for a Framework Decision. The Commission plans to take a horizontal approach to this subject under its Green Paper on conflicts of jurisdiction and the principle of ne bis in idem in criminal proceedings, adopted on 23 December 2005. It does not consider it essential to lay down specific arrangements for the protection of intellectual property.
Counterfeiting and piracy, and infringements of intellectual property in general, are a constantly growing phenomenon which nowadays has an international dimension, since they are a serious threat to national economies and governments. The disparities between the national systems of penalties, apart from hampering the proper functioning of the internal market, 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 first principle of the Draft is an assertion that the EU Member States will have to 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.
The amended proposal provides that each EU Member State will have to take the necessary measures to ensure that, when committed by natural persons, offences are punishable by a maximum sentence of at least four years' imprisonment when committed under the aegis of a criminal organisation, or where they carry a health or safety risk. Under some circumstances, heavy files are provided instead of imprisonment.
Furthermore, EU Member States will have to take the necessary measures to allow the total or partial confiscation of goods belonging to convicted natural or legal persons, at least where the offences are committed under the aegis of a criminal organisation or where they carry a health or safety risk.
And the Member States will have to ensure that the holders of intellectual property rights concerned, or their representatives, and experts, are allowed to assist the investigations carried out by joint investigation teams into the offences.
Finally, Member States will also have to ensure that the possibility of initiating investigations into, or prosecution of, offences are not dependent on a report or accusation made by a person subjected to the offence, at least if the acts were committed in the territory of the Member State.
How will these provisions change the landscape of patent infringement? Are such criminal provisions as aimed at by the EU indeed suitable for such complex cases as patent infringement cases? I am in doubt.
"[...] The Free Software Foundation (FSF) has always been concerned about the power of language. Most famously, it is known for insisting on the term "GNU/Linux" and giving "free software" equal billing with "open source" in order to receive its due credit. [...]
According to Peter Brown, executive director of the FSF, explaining this tactic and trying to replace loaded terms with more truthful ones will play a large role in the campaign's preparation and likely in the campaign itself. Brown is concerned with what George Lakoff, a professor of linguistics and cognitive science at the University of California, Berkeley, calls 'framing.' Essentially, framing is the definition of a debate in favor of one side. For example, by encouraging taxation issues to be discussed in terms of 'tax relief,' the American Republican party has ensured that any discussion is heavily weighted toward its own views. Not only does the term imply that taxes are too high, but the use of an emotionally charged word like 'relief' suggests that those who support it are standing up against oppressors - and that those who question them are supporting those same anonymous oppressors. Lakoff suggests that the American right wing understands the importance of framing and spends considerable time, effort, and money on it. By contrast, he sees the left as largely unaware of how framing shapes public debate, tending to naively assume that simply telling the truth is enough to gain support for its viewpoint.
The FSF sees framing as a concern in several technology issues. In fact, Brown sees the opponents of the FSF's stances as being the same type who help frame the American public political debates. 'They spend a lot of money on marketing,' he says. 'They have experts, they have access to research, and they know that if you can frame the debate, then you are much more likely to push your installation or consumer project past the eyes of the people.'
Richard Stallman, founder of the FSF, says one example of framing is the phrase 'intellectual property,' which he describes as 'a seductive mirage,' condemning it for creating a false analogy in people's minds between creative and intellectual works and physical objects, and for misleadingly conflating separate issues about copyrights, patents, and trademarks into a single issue. Similarly, Brown says the automatic use of 'piracy' to describe file sharing attempts 'to turn legitimate uses into a high crime, into something like genocide,' and the term 'trusted computing' describes technologies that make the hardware on which they are installed untrustworthy from the viewpoint of security. [...]"
The utilisation of "framing" is, in my view, essential for a thorough understanding of the present debate on Intellectual Property Law. Not only with regard to Mr. Stallman's rejection of the concept of Intellectual Property in its entirety but also concerning linguistic warfare projects like replacement of "patents on computer-implemented inventions" by "software patents".
Why can promoting the concept of "software patents" against "patents on computer-implemented inventions" be seen as "framing"? Now, it is much easier to suggest to the common layman that patents on computer-implemented inventions are "illegal" because of they "violate" Article 52 EPC than to argue on the same track with "patents on computer-implemented inventions".
Article 52 speaks of "programs for computers" which, if taken "as such", are not patentable. The general public addressed by the various anti-patent campaigner's groups might well feel overstrained to correlate "patents on computer-implemented inventions", on the one hand, and "computer programs as such", on the other hand, exactly as desired by those campaigners. As "software" is clearly synonymous with "computer program", the general public is much more inclined to believe that something like "software patents" must be illegal if so told by the anti-patent campaigners.
The fact is that the concept of "patents on computer-implemented inventions" much more precisely describes the factual core of the debate but the anti-patent campaigners have been very successful in "framing" the entire political dispute by pressing the language of "software patents" no matter how many false conclusions are facilitated on the juridical terrain.
I can enjoy a truthful debate on the limits of the patent system. But this way of "framing" the debate as done by the anti-patent campaigners during the past years appears to be somewhat filthy.
"[...] There is a very close link between IPR and the competitiveness of the EU economy. A proper, affordable IPR system is important to foster innovation. The European Inventor of the Year event offers an opportunity to highlight the achievements of European inventors. Knowledge and Intellectual Property Rights (IPR) are core elements of the revised growth and jobs initative. On this occasion the following ongoing key Commission policies regarding IPR should be highlighted (see IP/558):
Innovation performance: Europe falls back vis-a-vis the US and Japan
The European Innovation Scoreboard 2005 provides empirical evidence that a lower level of patenting to a large extent accounts for the difference in innovation performance between EU countries and to the innovation gap between Europe, the US and Japan. However, leading Member States have a patenting activity similar to US one; they register twice as much EPO patents as the US, and the US registers twice as much USPTO patents as them. The available data clearly shows that patent indicators are highly correlated to countries global innovation performance. Countries doing well in terms of innovation performance also score high in patenting.
Figure: Innovation performance vs patenting activity
The available data clearly shows a strong correlation between a strong IPR-culture and good innovation performance.
Statistics on patent applications in 2005
In absolute numbers Germany has by far the highest number of patent applications with over 23 000 in 2005. France follows with 8 034 and The Netherlands with nearly 7 800, while the UK only put in 4 649 applications in 2005. [...]
Europe needs an effective IPT system
It is therefore demanding that the EU works upon its weaknesses and turns them into strengths. Even though the concrete scope and shape of IPR protection at the EU level is debateable, a sound and effective IPR framework should aim to contribute to:
Better economic performance, through giving firms the right incentives to make new inventions and the financial strength to continue to develop further innovation;
More efficient dissemination of new knowledge and ideas, through encouraging intellectual property owners to publish their ideas and place their inventions on the market;
Better products and services, through continuous product development, whilst at the same time safeguarding health and safety and environmental protection through conformity with market regulations.
Community framework for patents is lacking
Proposals have been made, including one on the Community Patent, and another on Computer Implemented Inventions. However, they have not yet received sufficient political support to ensure their adoption. The adoption of the Community patent would reduce the costs of patenting as well as increase legal security for European enterprises in general. This would certainly contribute to a better protection of intellectual property in Europe. The Commission has recently started a consultation exercise on the Community patent and possible alternatives, such as the development of a 'European Patent Litigation Agreement' or the closer harmonisation and mutual recognition of Member State patents.
Reinforcing the IPR-culture throughout Europe
More also needs to be done however on awareness raising and supporting enterprises, especially SMEs in valorising their intellectual property and using intellectual property rights. The Commission strives to encourage SMEs to valorise their intellectual property and make use of IPRs.
The Commission is undertaking a number of actions to assess what other support measures can be taken. An Expert Group will draft policy recommendations by end 2006, as part of the Commission's IPR-Initiative announced in the Industrial Policy Communication of autumn 2005. The recommendations will focus on how barriers to the use of IPR can be removed and how the relation between IPR and innovation can be strengthened. A specific TrendChart Workshop will validate these policy recommendations.
The policy recommendations will have three building blocks.
1. A special statistical report on IPR usage will further analyse how companies use IPR in different sectors, building upon the results of the European Innovation Scoreboard. This report is foreseen for May 2006.
2. A report on barriers to the effective use of IPR will be produced by the Commission's Europe INNOVA. Sectoral Innovation Panels by June 2006. This Report will identify the reasons for companies using or not using intellectual property rights and possible policy measures in response.
3. A benchmarking study on publicly-funded IPR support services was launched in January 2006. It will identify all existing regional and national support measures for companies in the field of IPR, assess their efficiency and identify good practices.
Based on these elements, it will be possible to identify where companies experience difficulties, whether government measures address these issues and propose points for improvement.
Furthermore, a number of specific IPR initiatives in support of enterprises will be launched under PRO INNO Europe, which supports trans-national cooperation, including the European Design Prize and the project led by the European Patent Office on 'training the trainers' in IPR support services.
PROTON Europe is a network of technology transfer offices linked to Public Research Organisations and Universities. It is supported by the EC under the Gate2Growth initiative. A significant amount of top research with current or potential commercial relevance is undertaken in universities and research institutions in Europe. The objective of PROTON is to boost the commercial uptake of publicly funded R&D throughout Europe by further developing the professional skills of their technology interface structures with industry.
The IPR Helpdesk provides free-of-charge basic guidance on intellectual property issues to the stakeholders. Its main achievements are a range of multilingual tools: website, newsletter, topic documents. It also manages a fast-reply helpline for individual queries.
Enforcing IPR in the fight against counterfeiting and product piracy
Counterfeiting is one of the major problems that the Commission has to cope with. From 2000 to 2005, customs seizures have increased by 1000%, while counterfeiting is no longer limited only to fashion and design articles, but is extended to medicines and electrical equipment. The enforcement of intellectual property rights in third countries is more than ever critical. The Commissions actions include:
Close cooperation between Member States and the Commission must go on to continuously improve our custom control system.
Speedy and reliable information exchange between authorities from different Member States remains an important issue.
Intensive cooperation between right-holders and customs authorities
Activities are ongoing under the Commission's action plan for an efficient customs response to counterfeiting and piracy.
The Commission has just proposed to introduce criminal law provisions to combat intellectual property offences .
[...]"
It appears as if the EU Commission really intends to do something about the practical correlation between IP, innovation and economic well-being.
"[...] There is a long tradition of cooperation between the Commission and the EPO. Both in the field of strengthening the European IP-culture and in enforcement, joint initiatives have been launched. [...]"
"[...] Small and medium Enterprises (SMEs) are a key factor in the economic development and innovation. And Intellectual Property (IP) plays a crucial role in fostering innovation. However, the available information on important IP issues for SMEs, which takes into account their special needs such as time and resource constraints, actual knowledge and required understandable 'business' language, is still limited. Thus, many SMEs are challenged by the peculiarities of the IP system.
Acknowledging these facts and the paramount importance of SMEs the EPO compiled in cooperation with the Danish Patent and Trademark Office (DKPTO), the French Industrial Property Office (INPI), the German Patent and Trade Mark Office (DPMA) and the UK Patent Office (UKPO) a series of SME case studies on IP. All case studies are the result of intensive interviews with the individual companies. [...]"
Develop an IP strategy: define your goals and know the level of patent protection you need at each step
Get professional help: enlist the support of a patent attorney if you do not have the skills in-house
Choose the right patent attorney: he/she should possess good knowledge of your technical field, plus fair and efficient advice taking into account your resource constraints
Do not underestimate the cost: attorney charges, translation costs, renewal and other fees add up
Demand information: get your attorney to give you a clear overview of the filing process, waiting periods and costs involved in a patent application
Adapt your filing strategy to your real business needs: do not patent everything and everywhere. Be selective and determine which ideas and markets are worth protection
Do not view licensing as failure: it can be a lucrative alternative or adjacency to manufacturing your invention
Revise your patent portfolio continuously: filter out patents with no business perspective, either for own exploitation or for licensing
Start a technology and competitor watch process: use cost-free patent information and other sources (e.g. scientific publications, trade journals) both to inspire yourself and to identify potential infringers as soon as possible
Communicate pro-actively: communicating the protection of your IP is a cost-efficient mean to reduce the potential risk of infringement
Keep in touch with your licensee: regular contact and meetings provide you with information on your licensee’s activities and thus can prevent default
Be sure of your case: if you are planning to fight an infringement make absolutely certain that you are in the right as a lawsuit could otherwise be a quick route to going out of business
[...]"
It is interesting to see details of SMEs successfully utilising the patent system. The various anti-patent campaigners groups are trying hard to give the general publich the impressions that SMEs and the patent system never can get together.
"[...] From 1-5 May 2006, the World Intellectual Property Organization (WIPO) Standing Committee on Copyright and Related Rights (SCCR) will hold its 14th Session in Geneva to determine the fate of the controversial Broadcasting Treaty.
In its final meeting before the General Assembly votes this autumn to send the proposed Broadcasting Treaty to a Diplomatic Conference for final treaty drafting, WIPO delegates will debate a far-reaching 'wish list' of new rights for large broadcasting companies.
The proposed broadcasting treaty would create entirely new global rights for broadcasting companies who have neither created nor own the programming. What's even more alarming is the proposal from the United States that the treaty regulate the Internet transmission of audio and video entertainment.
It is dangerous and inappropriate for an unelected international treaty body to undertake the task of creating entirely new rights, which currently exist in no national law, such as webcasting rights and anti-circumvention laws related to broadcasting. A global treaty is not the place for experimentation with new rights, but rather for the harmonization of existing legal norms. WIPO treads on shaky ground by proposing to create new rights that no elected body in the world has yet agreed to. [...]"
"[...] On the second day of a weeklong meeting at World Intellectual Property Organization on copyright issues, there is little indication so far whether member governments will recommend the full negotiation of a treaty boosting the protection of broadcasts, according to participants. [...]
Whether the treaty will extend to webcasting, broadcasts over the Internet, is a primary topic of concern. Article 6 of the treaty states, 'Broadcasting organizations shall enjoy the exclusive right of authorizing the retransmission of their broadcasts by any means, including rebroadcasting, retransmission by wire, and retransmission over computer networks.'
A highly unpopular proposal by the United States to include webcasting in the treaty ended up as a 'non-mandatory appendix' to the treaty.
A key term under scrutiny is 'fixation,' which is the capture and later rebroadcast of transmissions. The treaty would give the organisations the exclusive right of authorizing the fixation of their broadcasts, as well as of authorising any type of reproduction of their broadcasts. This includes transmission over computer networks, and wired or wireless, and the right is not exhausted even if the broadcast was public. Questions are being raised about the meaning of phrases referring to authorisation and the prohibition of broadcasts from unauthorised fixations. [...]"
"[...] 'As currently drafted, the treaty would have a profound chilling effect on the free flow of information over the Internet,' the U.S. Telecom Association reportedly said in a statement. The telcommunications industry group suggested changes to: limit the treaty to signal theft, delete the webcasting portion, permit transmissions within the home, and ensure intermediary carriers are not made liable.
Also reported to be coming out against the current draft was Intel Corporation, because 'proponents have not demonstrated that the benefits of creating new exclusive rights outweigh the burdens that these new rights impose.' The burdens that they reportedly cited include: control of mobile device and digital home innovation, technical protection measures, liability risk for software makers, device makers and Internet service providers, more complexity to the clearance process for using content, harm to copyright owners, and harm to the public interest [...]"
"[...] Negotiators at the World Intellectual Property Organization today scheduled another meeting on a proposed broadcasters' rights treaty before deciding whether to recommend a full negotiation. They also took the significant step of putting an unpopular proposal to include webcasting in the treaty on a separate, later negotiating track. [...]"
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
Issue 05/2006 of the Official Journal of the EPO has been published on the EPO website. Inter alia, the text of G 1/04 - "Diagnostic methods" is published therein.
Patent Consultation of the EU Commission has been published on the Internet:
