Final IP Symposium of The German EU Presidency: "The Future of the Patent Jurisdiction in Europe".
During June 25-26, 2007, and under the umbrella of the German EU Presidency, the German Federal Patents Court (Bundespatentgericht) had hosted a symposium under the title
"The Future of the Patent Jurisdiction in Europe"
It was essentially a closed-shop conference but press and at least one FFII member had been admitted; see the report of Ms Monika Ermert on Heise's Newsticker [in German only, sorry]. A set of notes in English has been provided by some FFII observer. Allegedly Mr. Raimund Lutz, President of the Bundespatentgericht, has said on closing of the conference and in view of the various approaches of reforming the patent system in Europe:
"[...] I note that some people are losing interest in doing so. [...]"
Computer-Implemented Inventions: Where Do We Stand In The Debate On "Software Patents"?
A conference organised by the European Patent Office and to be held on July 05, 2007, under the title
"Computer-implemented inventions: where do we stand in the debate on 'software patents'?"
fuels speculations about this matter soon to re-appear on the political agenda. Mr Joff Wild of IAMwrites in his blog:
"[...] Last week I mentioned a lunch I had with someone close to the EPO who was talking about a potential reintroduction of the CII Directive next year. I wonder if this conference is a prelude to that happening. Last time around, there was almost open warfare between opposing camps, so one way of reducing tensions may be to get everyone talking together, rather than throwing accusations at each other from different parts of the continent. By bringing in people such as the FFII's Pieter Hintjens and Eva Lichtenberger of the European Green Party to debate face to face with supporters of the Directive, it may also be easier for people to make up their minds about who is right and who is wrong. What is certain is that there needs to be some clatification on where Europe does stand with regard to softare and CII patents - the current uncertainty is not sustainable. Keep an eye on this, things could soon begin to happen. [...]"
Or, will it be merely an interim summary and bemoaning of the widening rift between the practice of the EPO, on the one hand, and national case law, on the other? Let's wait and see.
"[...] The third priority for Brimelow is managing the EPO as businesses and individuals are applying for more patents than ever before. She refers to the problem of ever-increasing demand for patents as a 'global warming' of the IP system and says it will be a 'turbulent time'.
'My priorities are to make the EPO fit for the future and shape the future, whichever one of those you want to put first ... I've been quoting Lord Salisbury recently, who once said: 'Change? Why change? Things are quite bad enough as there are.' There is a tendency to think 'for goodness sake, why do you want to change anything?'. But the answer is, because things will be even worse if you don't.' [...]"
Surely the style of governance to be performed by Ms Brimelow might well be somewhat different from that of the outgoing President, Mr. Pompidou, I guess.
Her usage of the language of a "global warming of the IP system" appears be well-suited to support speculations that Ms Brimelow might, amongst many others, be supporting a future policy of "fewer, but better" patents or at least something like that.
In the interview Ms Brimelow also asserts that one of her first priorities on taking up the presidency will be to improve relations between managers and examiners. Furthermore, also the question as to how the EPO can work effectively with national offices will be in the focus during her term of office.
I can only wish her good luck for those difficult tasks.
"[...] The term 'Web 2.0 is rapidly becoming a standard expression to describe the phenomenon where internet users take an active role in adding and maintaining information on the internet. Wikipedia is perhaps the best example of a Web 2.0 internet site.
Some patent-related sites are emerging based on the Web 2.0 philosophy. IPNewsflash (http://pct.ipnewsflash.com/index.php) is an IP meta-information portal that presents IP information data from various information channels. The Tools section (http://pct.ipnewsflash.com/fresh_pubs.php) includes an interesting beta version of a tool presenting EP publication data in a graphical way. It also offers RSS feeds based on IPC classes. In addition to an overall view of EP publications, there are views showing IPC class distribution and main applicants.
Selecting an IPC class lists the 'fresh' publications. Fulltext or PDF data is available from esp@cenet, and there are links to the EPO's Register Plus for procedural and file status data. [...]"
Well, I don't think that this tool really belongs to that what the buzzword "Web 2.0" means because of it lacks something like a community but nevertheless I think that this project shows the beta stage of some very promising web application for monitoring patent data by means of RSS feeds. It is definitively worth to have a try.
U.S.: Democratic Presidential Candidate John Edwards Promising to "Remove" Drug Patents.
During electoral campaigns politicians love to make popular, if not populist pledges to their electorate. The upcoming campaigns for the U.S. presidential election in 2008 appear to be no exception:
"[...] DETROIT - Democratic presidential candidate John Edwards wants to reduce the cost of U.S. health care by removing patents for breakthrough drugs and requiring health insurance companies to spend at least 85 percent of their premiums on patient care. [...]"
I do not have any idea as to whether such plan just to "remove" some patents by federal legislation would go well with the provisions of the U.S. constitution. In Germany, the title given to the patent owner by granting a patent is protected by the German constitution very much like property from which the owner can be evicted only under very limited circumstances.
EPO has Published Annual Report 2006: New Record in Filing Numbers.
"[...] The number of patent applications received by the European Patent Office reached 207 300 in 2006, the EPO announced today. The figure marks a new record and a 5% increase on the previous year's total of 197 400 applications.
According to the EPO's Annual report 2006, which was presented at a Munich press conference on Monday, the proportion of filings originating the European Patent Organisation's 32 member states fell by more than 1% to 48.5% (compared to 49.6% in 2005).
Germany continues to top the table in Europe, with around 24 900 applications, accounting for 18.4% of the total. France is in second place with 8 010 applications (5.9%), followed by the Netherlands with 7 400 (5%).
Among the non-European countries, the United States and Canada account for the largest number of filings, followed by Japan, Korea and China.
In total, the EPO granted 62 780 patents last year, an increase of 17.9% on 2005. The largest filers in Europe were Philips, Samsung and Siemens, reflecting the importance of the communications and information technology sector for the patent system.
Filing activity was also particularly strong in medical technology (+6.8%), electronic communications (+3.8%) and electrical elements (+5.9%). There was also considerable growth in organic chemistry and macromolecular compounds (+10.6%), in contrast to downward trends in biotechnology and engineering elements (-5.3%).
US filing behaviour focussed on medical technology but also showed strong activity in data processing and basic electrical elements. Japanese applicants were particularly active in automotive engineering and macromolecular compounds.
Around 23% of all patent applications filed with the EPO relate to subject-matter in high-tech areas as defined by the OECD, such as aerospace technology and microelectronics. The largest proportion of these filings (36%) was accounted for by EU countries, followed by the USA (30%) and Japan (19%). High-tech filings from other regions rose from 11% to 13%.
For the current year, the EPO expects a further growth in patent applications by 5% to reach more than 220 000 filings in total and well over 140 000 new grant proceedings. [...]"
"Online access to CTM file is the new web tool providing access to CTM file documents online free of charge. CTM files generally contain all correspondence exchanged between the OHIM and the CTM owner and/or its representative.
The access to documents will be subject to the same legal constraints currently applied to the inspection of files procedure at the Office, namely Article 84 CTMR and Rule 88 IR: confidential documents and documents relating to non published Community Trademark applications are not publicly viewable. However, they might be consulted by the owner or its representative via My Page.
Only correspondence relating CTMs filed after 01/01/2004 or published in Part A of the Bulletin after 01/01/2004 are available electronically.
The system makes available online new publicly documents in an average of two working days after being received by the OHIM. [...]"
In my earlier posting I had reported about EU Council Document 8566/07 devising a questionnaire related to the Commission Communication on enhancing the patent system in Europe and addressed to the Working Party on Intellectual Property (Patents). Now, the results have been published with Document 10710/07:
"[...] 1. On 4 April 2007, following the conclusions adopted by the Competitiveness Council on 4 December 2006 and the European Council on 8-9 March 2007, the Commission presented a Communication on enhancing the patent system in Europe (doc. 8302/07).
2. The above-mentioned document as well as the questionnaire issued by the Presidency (doc. 8566/07) formed the basis for the discussions in the Working Party on Intellectual Property (Patents) on 3 and 11 May and 1 June 2007.
3. The purpose of the present report is to inform the Permanent Representatives committee of the outcome of these discussions and to provide a basis for the continuation of Working Party discussions during the incoming Presidency.
4. Delegations broadly welcomed the Commission's approach, which involves the continued search for effective solutions concerning the Community Patent as well as support for a single, European-wide patent jurisdiction. They shared the Commission's opinion that, in order to achieve significant added value compared to the status quo in both of these areas, any solution at EU level must be closely aligned with the outcome of the consultations that the Commission held with stakeholders last year."
There seems, however, to be no clear position concerning the EU Community Patent:
"5. Several delegations were in favour of reopening the discussion on the Community Patent in the light of certain issues mentioned in the Communication, particularly with regard to simplifying the language regime. Some Member States expressed openness toward diverging from the approach contained in the 2003 Common Political Approach and rejected by European business associations (translation of claims into all official languages), with some Member States referring to the London Protocol as an appropriate model for the Community Patent. The delegations welcomed the Commission's initiative to continue - together with the Member States - its efforts to find effective solutions that would lead to a considerable reduction in translation costs."
Nothing appears to be really new. Concerning litigation, a very few core principles appear to be unanimously supported by the EU Member States:
"6. As to the Commission's compromise approach to the establishment of a single patent judiciary, no delegation questioned the general principles that, once established, any effective litigation system would have to be decentralised at first instance, have a centralised appeal court and make use of technical expertise in the proceedings. However, there was a widespread feeling that more clarity was needed with regard to the factual details underlying these general principles, which might otherwise be subject to varying interpretation and understanding among the Member States, and that without a common understanding, no true consensus could be achieved. [...]"
"[...] 'Patents are granted too easily', suggested Wim Van der Eijk, Principal Director of the International Legal Affairs and Patent Law Department at the European patent Office (EPO). 'We need to have a more critical look, and steer policy in the direction of less, but stronger patents'. [...]"
Did Mr Van der Eijk speak on behalf of the EPO or did he merely express his private opinion?
Mr Van der Eijk is contributor to the STOA Workshop on Policy Options for the Improvement of the European Patent System. Following a final presentation to the European Parliament, the report issued by the Scientific and Technical Options Assessment (STOA) group will be 'available soon' in its completed form, EU Reporter says.
"[...] A World Intellectual Property Organization (WIPO) committee negotiating proposals this week for a stronger development focus at WIPO appeared to be on track to finishing work by meeting's end Friday, though some hurdles remained. At press time, breakthrough agreements had been reached on contentious issues such as open collaborative projects, intellectual property protection, and development impact assessments. [...]"
"[...] Intellectual Property Protection as the Backbone of Innovation
34. A fully functioning intellectual property system is an essential factor for the sustainable development of the global economy through promoting innovation. We recognize the importance of streamlining and harmonizing the international patent system in order to improve the acquisition and protection of patent rights world-wide.
35. The benefits of innovation for economic growth and development are increasingly threatened by infringements of intellectual property rights worldwide. We therefore strongly reaffirm our commitment to combat piracy and counterfeiting. Trade in pirated and counterfeit goods threatens health, safety and security of consumers worldwide, particularly in poorer countries. In this regard we welcome work on the WHO initiative to implement the International Medicinal Products Anti-Counterfeit Taskforce (IMPACT). Our common efforts in this combat are therefore in the interest of all countries at all levels of development.
36. We commit to strengthen cooperation in this critical area among the G8 and other countries, particularly the major emerging economies, as well as competent international organizations, notably the World Intellectual Property Organization (WIPO), WTO, the World Customs Organization (WCO), Interpol, the World Health Organization (WHO), the OECD, APEC, and the Council of Europe. We invite these organizations to reinforce their action in this field.
37. We welcome the joint Declaration of the business communities of all G8 countries on 'Strategies of G8 Industry and Business to Promote Intellectual Property Protection and to Prevent Counterfeiting and Piracy' which highlights actions companies are taking to secure their intellectual property rights at home and abroad and to keep their global supply chains free of pirated and counterfeit goods - from producers and distributors, retailers and merchandisers. Industry and business have an essential role to play in protecting innovation, and we will engage our respective private sectors on effective solutions with regard to both the supply and the demand side of piracy and counterfeiting. We also welcome educational campaigns with the help of business communities in our countries directed at raising awareness of consumers with regards to the negative effects of counterfeiting and piracy.
38. In light of the urgency to implement concrete measures which will improve and deepen cooperation among G8 partners and deliver real enforcement results, we decide to undertake the following:
(a) We endorse the Guidelines for Customs and Border Enforcement Cooperation designed to strengthen cooperation and coordination among our national customs and law enforcement administrations. In this context we especially welcome the development of an effective information exchange system - where appropriate - in close association with the WCO which will lead to improved cooperation among the relevant enforcement authorities worldwide.
(b) We endorse new Guidelines for Technical Assistance on intellectual property rights protection to interested developing countries, as well as a mechanism to better coordinate and leverage existing G8 assistance to such countries with a view to building the capacity necessary to combat trade in counterfeited and pirated goods to strengthen intellectual property enforcement. In partnership with certain developing countries we agree to launch technical assistance pilot plans with a view to building the capacity necessary to combat trade in counterfeited and pirated goods to strengthen intellectual property enforcement. The progress on these pilot plans will be reviewed by the G8 in 2008.
(c) We endorse the recommendations aimed at improving G8 member countries' cooperative actions to combat serious and organized intellectual property rights crimes and the further work on their basis to facilitate structured international cooperation regarding the investigation and prosecution of those crimes.
(d) While appreciating the information contained in the OECD report estimating the economic impacts of counterfeiting and piracy on national economies and right holders, as well as public health and safety, we will encourage the OECD to work with member states to further identify and target in its report specific areas for concrete actions.
(e) We recognize the need for continued study by national experts of the possibilities of strengthening the international legal framework pertaining to IPR enforcement.
(f) We consider the establishment of an IPR Task Force focusing on anti-counterfeiting and piracy to look together at how best to improve the working of the international IPR protection and enforcement, and produce recommendations for action including improved peer review. The issue will also be considered in the Heiligendamm Process. [...]"
And further:
"[...] A New Dialogue on Innovation and Intellectual Property Protection
39. Lively interaction between science and business, strong protection and enforcement of intellectual property rights, and the combination of market-based entrepreneurship and science-based research are increasingly decisive factors in promoting economic growth and development around the world. We invite the major emerging economies to a follow up process using the OECD as a platform with the aim of establishing a new international dialogue on innovation and intellectual property protection as part of the Heiligendamm Process. Such a dialogue will provide a forum for the positive exchange on topics critical for growth of successful knowledge economies and the promotion of an innovation-friendly business environment also taking into account the needs of small and medium sized enterprises, including:
(a) the crucial role and economic value of intellectual property protection and implementation as a central framework condition for the development of a future-oriented economy based on technological progress and innovation;
(b) effective market incentives for innovation and the diffusion of knowledge at the national level taking into account recent developments in technology markets; and
(c) the crucial importance of efficient innovation value chains that promote business commercialization of patented research results and exploit licensing as a major driver for the international transfer of technology. The dialogue could furthermore ascertain measures the industrialized countries and major emerging economies can take to achieve fully effective implementation and protection of intellectual property rights within their own territory. Fully respecting the mandate, function and role of the competent multilateral organizations, in particular the WTO and the WIPO, participants in the dialogue may also discuss initiatives aimed at strengthening intellectual property rights protection which should then be addressed in the appropriate international fora. The G8 Summit 2009 will take stock of the progress made by that date. [...]"
The Declaration also refers to the "Heiligendamm Process" (p.36-37), which was announced at the Summit as a dialogue between G8 and the important emerging economies (Brazil, China, India, Mexico, South Africa). The G8 Justice and Home Affairs Ministers also met in Munich on May 23-25, 2007. Their Concluding Declaration recognised that product counterfeiting and piracy damage the innovative capacity of national economies. See the statement of the UK-IPO.
EPO Board Of Appeal Clarifies Various Legal Issues - UK Lord Justice Jacob Heavily Criticised.
The European Patent Office has published Decision T 0154/04 - 3.5.01 of the Boards of Appeal concerning European Patent application 94912949. The application is directed to a method of estimating product distribution, at it appears to be clear already prima facie that there might be some difficulties in view of the patentability of such invention over the legal requirements set forth in the EPC. But what makes this Decision really interesting is not only a thorough discussion of the merits of the individual case but still more the scrutiny with which the Board under the Chair of Mr Steinbrenner has answered some more general questions in the context of the debate on the limits of patentability.
One interesting point might be read as an answer to UK judges proposing to raise the question concerning the limits of patentability to the Enlarged Board of Appeal in view of allegedly differing case law issued by various Boards over the years:
"[...] The decisions of the EPO Boards of Appeal are mutually contradictory. To say that is not to criticise anyone. On the contrary the Boards of Appeal have each done what they think is right in law - as befits tribunals exercising a judicial function. But surely the time has come for matters to be clarified by an Enlarged Board of Appeal. Under Art.112(1)(b) of the EPC the President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question. That is now clearly the position. There are indeed at least four differing points of view. We have no power to refer any question and must reach our decision now independently of what any Enlarged Board might decide if and when there is a reference. Nonetheless we have ventured to formulate questions which might be asked of an Enlarged Board in the hope of encouraging a reference. We add that the Comptroller supports us in this course. [...]"
The answer given by the Board of Appeal reads as follows:
"[...] A decision deviating from an opinion given in another decision of a board of appeal, a diverging opinion expressed in decisions of different boards, or a deviation from some national jurisprudence - for example, from the UK case law of the Court of Appeal to which the appellant referred in support of its case - are not per se valid reasons for referral (see also Article 15 RBPA). Hence, the legal system of the European Patent Convention gives room for evolution of the jurisprudence (which is thus not "case law" in the strict Anglo-Saxon meaning of the term) and leaves it to the discretion of the boards whether to give reasons in any decision deviating from other decisions or to refer a point of law to the Enlarged Board. The President of the European Patent Office may intervene under Article 112(1)(b) EPC, in particular if the legal situation becomes unclear for first instance proceedings. [...]"
And, vice versa, there will be limited reception of national case law by the Board of Appeal:
"[...] In the interest of the harmonisation of national and international rules of law, the boards of appeal will take into consideration decisions and opinions given by national courts in interpreting the law (see G 5/83 - Second medical indication/EISAI (OJ EPO 1985, 64), Reasons No. 6). Nevertheless, in the proceedings before the European Patent Office, such considerations do not exonerate a board of appeal from its duty as an independent judicial body to interpret and apply the European Patent Convention and to decide in last instance in patent granting matters. In addition, despite harmonised legal regulations it is not self-evident that their interpretation is also harmonised among different national courts, let alone courts of different contracting states, so that the boards of appeal would be at a loss as to which interpretation to follow if they did not exercise their own independent judgement. [...]"
A doctrine providing a patentability test based on seven principles for inventions comprising non-technical features is stated as follows:
"[...] The constant jurisprudence of the boards of appeal as far as it is relevant to the present case may be summarised succinctly in the following principles:
(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
(B) Having technical character is an implicit requisite of an 'invention' within the meaning of Article 52(1) EPC (requirement of 'technicality').
(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded "as such" (Article 52(3) EPC).
(D) The four requirements invention, novelty, inventive step, and susceptibility of industrial application are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.
(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
(F) It is legitimate to have a mix of technical and 'non-technical' features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features 'as such', do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.
(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention). [...]"
UK Lord Justice Jacob is heavily criticised in view of his arguing in the recent Aerotel/Macrossan judgement:
"[...] These views [of the EPO Boards of Appeal] are entirely consistent with the legal concept of 'invention' applied by the Board in the context of Article 52(1) to (3) EPC, which should not be mixed up with the layman's ordinary understanding of invention as a novel, and often also inventive contribution to the known art. Using these two very different concepts of invention in one breath would be a legal fallacy.
The 'technical effect approach' endorsed by Lord Justice Jacob in the Aerotel/Macrossan judgement (see paragraphs Nos. 26(2) and 38) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable 'given the shape of the old law' (Lord Justice Mustill, loc.cit.), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969.
Actually, any reference to the prior art in the context of Article 52(2) and (3) EPC would lead to insurmountable difficulties; the prior art, the 'state of the art' in the terminology of the Convention, is a complex concept finely tuned by a combination of provisions, Articles 54 to 56 EPC, and depending on the filing and priority dates of the application or patent as well as on the patentability requirement involved.
There is, however, no rule whatsoever defining the prior art which should be applied in the context of Article 52(2) EPC. It is simply inconceivable that the contracting states missed such an important point in the conclusion of the Convention. Hence, there are convincing reasons why the 'contribution' or 'technical effect' approach should be abandoned, which the boards did some ten years ago.
[...] The 'technical effect approach (with the rider)' applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that 'novel and inventive purely excluded matter does not count as a 'technical contribution' ' (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria; referring e.g. to mathematical methods and to discoveries, the Enlarged Board of Appeal said in decision G 2/88 (supra), Reasons No. 8: '[...], as was recognised in Decision T 208/84 [...] (dealing there with a mathematical method rather than a discovery, but the same principle applies), the fact that the idea or concept underlying the claimed subject-matter resides in a discovery does not necessarily mean that the claimed subject-matter is a discovery 'as such' '.
In fact, a non-technical feature may interact with technical elements so as to produce a technical effect, e.g. by its application for the technical solution of a technical problem (see for example Opinion G 1/04 (supra), Reasons Nos. 5.2 ff.). If this is true for some purely excluded matter, for example the intellectual exercise cited in the Opinion, then - to the extent it contributes to the technical effect - it must count as a contribution to the technical character.
[...]
From this distinction between the technical features and non-technical features ('merely mental in nature' in the citation above), it must be inferred that nontechnical features to the extent that they do not interact with technical features to produce a technical effect cannot establish novelty or inventive step (see also the decisions cited in 'Case Law of the Boards of Appeal of the European Patent Office, fifth edition, December 2006, European Patent Office 2006, chapter I.D.8.4). The Aerotel/Macrossan judgement at paragraph No. 27 makes the comment that to 'deem the new music or story part of the prior art (the device of Pension Benefits and Hitachi) is simply not intellectually honest'. However, this misses the point of the approach used by the Board to determine the technical features in a claim if technical and non-technical aspects are tightly intermingled in a mixed type claim, as it is typically the case with computer-implemented inventions (see, for example, decisions T 172/03 - Order management/RICOH (not published in OJ EPO), Reasons Nos. 4 ff. and T 619/02 (supra), Reasons No. 4.2). [...]"
Indeed, after the failure of the EU Draft Directive on the patentability of computer-implemented inventions, which would have harmonised these matters, there appears to be a widening rift between the Decisions of the EPO Boards of Appeal, on the one hand, and of the Case Law of the UK Courts, on the other.
Cyprus, France, Germany, Ireland, Italy, Luxemburg, Portugal, Sweden and Turkey still have not yet ratified the EPC2000. They have time up to December 13, 2007, at the latest. EPC Member States that have not ratified or acceded to the revised text of the EPC2000 Convention by that date will cease to be parties to this Convention as from that time in accordance with Article 172 (4) EPC. Germany's ratification proceedings are going according to plan as far as I can say.
"Norway is set to become the 33rd member of the European Patent Organisation on 1 January 2008, according to a decision taken by parliament this week.
In its session on 11 June the parliament voted to ratify and accede to the European Patent Convention (EPC), with only the votes of the Christian People's Party (Kristeleg folkeparti) opposing the move.
As a participant and signatory at the 1973 Munich diplomatic conference, the Scandinavian country has been entitled to join since the EPO was founded. It is the only participant that has not yet become a member of the Organisation.
Norway will deposit the instruments of ratification with the German government in October, in accordance with the rules set out in the EPC, so that it will become a member at the start of 2008."
Obviously the accession to EPC and the approval of the NPI Agreement have been in one and the same package nodded through by the Norwegian Parliament on June 11, 2007.
Earlier this year I had reported on the project of establishing a Nordic Patent Institute (NPI). Recently, on June 11, 2007, the Norwegian Parliament has given its approval to the Agreement of July 05, 2006, between the governments of Denmark, Iceland and Norway to establish the NPI. Before that, on May 04, 2007, the Nordic Patent Institute had been assigned the two-letter code "XN" for use in all documents relating to industrial property titles and applications. The NPI will be located in Taastrup, Danmark. See also the Blog entry made by Mr Anders Due of the Danish PTO.
Quake or tremor? is the headline of the main article on the cover of the recent print issuee of the Intellectual Asset Management Magazine. It deals with the changing face of patent monetisation in the U.S. I must confess, however, that today quite different associations came to my mind when thinking of words like quake and tremor in the context of Intellectual property.
Seen from one side, today was quite a normal business day in a normal business week. Applicants from various fields of the industry continued to seek for patent coverage of their employee's inventions as ever, and Examiners in various Patent Offices issued Office Actions objecting to this and that. And, finally, a number of patents have been granted. However, if deliberately seen from some other side, I hardly can take today and other days earlier this month as normal and routine but I am tempted to feel that something very important is happening, gradually but steadily changing our business, not yet having decided to stand still some day or to culminate in some sort of a landslide, quake or tremor.
A few days ago I wrote an article on a striking factual co-operation of a conference organisation EUPACO having emerged out of a scenery around FFII, on the one hand, and high-level IP attorneys from IBM, on the other hand. Obviously the most important patent applicant on the globe, in terms of quality as well as in terms of quantity, shows some desire to sort things out which previously had been standing crosswise between patent critics and activists on one side and the industry on the other. To explain this, FFII has put on the Internet a set of presentation slides from the EUPACO-1 conference, the slides being authored by Mr Roger Burt and Mr Jonathan Sage of IBM Europe titled "Intellectual Property Strategy in the 21 Century - Balancing Open & Proprietary Innovation". Take alone this title - besides IBM it might not be quite usual in various quarters of the industry to admit - not to mention even to stress - that open and proprietary innovation might be genuine antagonists that need some sort of balancing. When glancing at the slides, it appears as if in IBM's view from 2007 onwards collaborative innovation is an important concept. They think that there is a common life cycle of innovation like the progress from discovery to adoption to application where proprietary innovation has its place, but a limited and confined one. In particular at later stages IBM sees benefits to discuss the exploitation of inventions in the framework of Commons. Of course, not everyone in the industry outside of IBM might be prepared to share such views but I do think that IBM might well be playing the role of a vanguard in researching and exercising new models of exploitation of innovation. Meanwhile academia is continuing playing that well-known basso continuo of demanding fewer and narrower patents.
There is a new Background Document for the STOA Workshop on Policy Options for the Improvement of the European Patent System addressing Members of the European Parliament, stating:
A rapidly increasing demand for patent rights is putting strain on the system and jeopardising patent quality. The main challenge is to prevent this from happening within the European patent system.
The high speed of introduction of new technologies makes it harder to determine the adequate scope of patents granted. The main challenge is to ensure that too broad patents are not granted within the European patent system.
Partly as a result of the growth of patents in complex technologies, a rise in defensive and strategic patenting behaviour has in some sectors resulted in 'patent thickets' where numerous and possibly overlapping patents exist making it difficult for new and small inventors to enter the market. The main challenge is to alleviate the effects of patent thickets within the European patent system.
More and more companies are patenting and spending greater time and effort on trading rights and licensing, thus diverting resources from actual innovation. The main challenge is to ensure that companies are not forced to deal excessively with patenting and licensing and are 'freed up' to concentrate more on innovation within the European system.
Increased interest in the patent system calls for greater transparency and the involvement of more experts, politicians and stakeholders in the future development of the system. The main challenge is to ensure that this occurs within the European patent system.
In particular, the authors demand:
Insertion of the economic mission of the patent system in the European Patent Convention;
Enhancing governance within the European Patent System;
Improving quality aspects in regard to patentability standards and patent grant procedures;
Dealing with emerging technologies;
Increasing access to patented inventions; and
Facilitating defensive publications.
The paper was coordinated by Mr Bjorn Bedsted, Project Manager, The Danish Board of Technology/ETAG, and prepared by:
Mr. Robin COWAN, Professor of economics, BETA, Universite Louis Pasteur and UNUMERIT, Universteit Maastricht, the Netherlands;
Mr. Wim Van der EIJK, Principal Director International Legal Affairs and Patent law, EPO, Munich, Germany;
Mr. Francesco LISSONI, Professor of Applied Economics, University of Brescia, Italy;
Mr. Peter LOTZ, Head of Department of Industrial Economics and Strategy, Copenhagen Business School, Denmark;
Mrs. Geertrui Van OVERWALLE, Professor of IP Law, University of Leuven, Belgium;
Mr. Jens SCHOVSBO, Professor, University of Copenhagen, Faculty of Law, Denmark; and
Mr. Matthew ELSMORE (rapporteur), Assistant professor, Aarhus Business School - University of Aarhus, Denmark
And, there is another paper Patentschutz und Innovation commissioned by the German Minister of Economy and Technology and authored by a larger number of German heavyweights in economic research which, unfortunately, is available in German only. There also is a general tendency in this paper to limit the scope of the patent system albeiit the practical conclusions presented at the end of the document may differ from those of the STOA backgrounder as mentioned above.
Listening to the melody of IBM's sinfonia based on the melody of collaborative innovation over that basso continuo I suddenly feel very irritated by some cacophonic noise emerging from the inner gear of the European Patent Office. FFII-related circles have managed somehow to unearth Document CA/93/07 presented by the staff representation to the Administrative Council. The paper had been submitted by the staff representatives via the President of the European Patent Office in accordance with the Administrative Council's rules of procedure. The main headline says that the trust of the EPO Staff in its highest governing bodies, including the Administrative Council, is worryingly low. The paper stresses that staff perceives the attitude of the Council delegates towards staff as negative. Moreover, again according to that paper, when Staff Representatives mentioned certain alleged potential conflicts of interest in a recent Council meeting, some delegations reacted with irritation and even went so far as to threaten expulsion of the Staff Representatives from the Council if such allegations were made again. With other words: The atmosphere appears to be entirely poisoned. It surely is a grave situation but I am no sure as to if I would be prepared to go as far as Mr Joff Wild who, in his blog, reported the issue under the title Civil war at EPO. According to The Register, the EPO has confirmed that the Document is authentic, but could not offer any official comment on its findings at the time being. Furthermore, The Register was told the Document will be formally submitted to the Administrative Council only during the week commencing 25 June, after which perhaps some official comment might emerge. But still more interesting than the brawls in the framework of the European Patent Organisation are some concerns expressed in the staff paper that can directly be linked to the basso continuo mentioned earlier:
"[...] There is a strong belief amongst staff that the financial benefits to the Member States arising from the renewal fees motivate the Administrative Council, and consequently the EPO administration, to focus on the quantity rather than the quality of the granted patents. [...]"
It might well be desirable Member States of the EPC explaining publicly their position in this respect. If the Governments of EPC Member States should prove incapable of defusing the current spat this might, on the long run, well mature into a further nail in the coffin of the European Patent Organisation as an entity standing independently besides the legal framework of the European Union. However, Mr Pieter Hintjens seems to be a bit premature when foreboding
"The EPO is collapsing, predictably."
And, IPKat Blog comments on that pointing out that the term of Office for the current President of the EPO, Mr Pompidou, will terminate by June 30, 2007:
"[...] The IPKat sincerely hopes that the new president Alison Brimelow, who is due to start her job at the end of this month, can help in bringing some harmony back to the EPO and bring to an end to this bickering. It certainly doesn't look good to the outside world that such a large and important organisation as the EPO is apparently riven with conflict between the ordinary workers and the higher levels of the organisation.
Merpel points out that it's all about money really. The EPO is now such a cash cow that everyone is complaining, from the basis of pure self interest, that they don't get their fair share.[...]"
But some very interesting insights about the role of money in this debate are then provided by a comment made on IPKAT's Blog by Mr Jim Boff, a prominent Patent Attorney from the UK, pointing out that the EPO can alternatively be seen as a wealthty organisation or as a wreck near bankrupcy; compare also the information given so far in epi information 04/2006:
"[...] The perception may be that the EPO is a cash cow, but the reality is somewhat different.
For many years the EPO has run on a cash accounting basis, which indeed makes it appear to be rolling in dosh. However, the EPO has now moved over to International Financial Reporting Standards [IFRS], which do not paint such a pretty picture.
Under IFRS future liabilities (such as pension provisions)have to be given a value in the accounts, whereas future uncertain assets (such as present value of future renewal fee income) cannot be put in the accounts, except as a note to the accounts. This makes the EPO appear to have a gaping wound in its finances.
There is thus a tension between:-
- those whose agenda is to close that apparent wound in finances[these tend to fear what might happen if the EPO went bust as Member States would then be liable for the shortfall];
- those who simply want a share in the dosh, by keeping fees down or otherwise.
"[...] Our analysis indicates that this vital system is one facing profound systemic change. This transition has happened so quickly that it has been hard for those within the hermetic world to grasp this and adapt to these changing conditions. The expanding stresses and strains within the patent system, caused in no small part by the need to cope with the growing demands of an ever-increasing number of global players, have created blockages, growing uncertainty for business and societal questioning. These tensions are being exacerbated by the driving forces pressuring on the system.
This is a world where conflict and the need for change co-exist; how these changes impact the system, moving it in the direction of one of these four scenarios, will depend on how the driving forces we have identified interact and play out. [...]"
And further:
"[...] The patent system increasingly relies on technology, and new forms of knowledge search and classifi cation emerge.
Traditionally, the world of patents has been viewed through the Market Rules lens. But it is unwise to take decisions on the basis of just one possible future. We believe that viewing the other three worlds - too often ignored by many - will enable the system and those within it to better respond to the multiple pressures of the future.
The patent system, evolved over centuries to protect industrial technologies within a relatively small number of nations, is likely to have to adapt - perhaps radically. Globalisation - global competition - encourages more innovation as new products are marketed and sold worldwide. It also means more exchanges of ideas and technology, resulting in a challenge: how will we develop harmonised means to deal with the growing number of such exchanges? This is the world of 'Market Rules'.
The system must also accommodate the multiple players and stakeholders from different cultures and with different worldviews who are working towards different goals within a global environment. The challenge here will be to find a way of meeting the specific developmental requirements of diverse nations at global level, because a system that blocks the access of poor people to essential drugs or food will impact the credibility of the system. This is the world of 'Whose Game?'
Civil society is increasingly engaged in the IP debate, and this interest is likely to significantly shape the agenda of the 'commons' debate. As questions around the public benefi ts of IP gain traction, we enter the world of 'Trees of Knowledge'.
The subject matter protected by the patent system is changing, too. Technologies become increasingly fast, interdisciplinary and cumulative, increasing the tensions on the patent system and leading us to 'Blue Skies'.
These four scenarios illustrate the different ways the world of patenting and intellectual property could evolve. Each of these four worlds represents a series of trade-offs that will be made, and each will have winners and losers, advantages and disadvantages. [...]"
Perhaps all these events of a few days in June 2007 should be seen in their interconnection. Doing so might, under some circumstances, make sense of all that.
[UPDATE 2007-06-13] The EPO has opened a discussion forum concerning the Scenarios project.
EFF Europe have published on their copycrime.eu websiteDocument No. 9446/07 of the Council of the European Union titled "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". The paper is authored by the German EU Presidency and addressed to the Working Party on Substantive Criminal Law.
The IPRED2 draft is fiercely debated. EFF, for example, objects in particular:
"[...] IPRED2's new crime of 'aiding, abetting and inciting' infringement again takes aim at innovators, including open source coders, media-sharing sites like YouTube, and ISPs that refuse to block P2P services. [...]"
Main findings on behalf of the EU Council as of February 21, 2007, had been:
Bearing in mind the principle of subsidiarity, further scrutiny is needed with regard to the need of criminal measures at EU level to protect intellectual property rights.
The Presidency [Finland] will discuss with the incoming Presidency [Germany] the possible ways of handling the substantive provisions of the instrument while awaiting the evaluation of Directive 2004/48/EC[(IPRED1)] and the ruling of the Court of Justice in case C-440/05 which would give guidance on the question of Community competence in adopting criminal law measures.
The discussions on the substantive provisions of the instrument should be based on a scope of the instrument limited to the intellectual property rights harmonised in Community legislation, in line also with the principles included in the conclusions of the informal meeting in Vienna on 13/14 January 2006.
On April 25, 2007, the European Parliament had passed a legislative resolution on the Commission proposal (P 6_TA-PROV (2007)0145), adopting the proposal subject to a large number of amendments.Now, in view of this situation, the German Presidency feels that the following items should be addressed:
Legal basis for laying down rules on criminal law (to be deferred initially in the light of the above decision of the Justice and Home Affairs Ministers);
Scope of the Directive (confined to the infringement of intellectual property rights harmonised in Community legislation, or more far-reaching);
Definition of offences (e.g.: counterfeiting, piracy);
Qualitative limitations on offences (e.g.: on a commercial scale, serious crimes);
Participation (incitement/aiding and abetting);
Whether attempt should be a criminal offence;
Penalties for natural persons;
Liability of legal persons and penalties for legal persons;
Confiscation and forfeiture; extended powers of confiscation;
Joint investigation teams and involvement of right holders;
Further amendments tabled by the European Parliament.
According to the Document, the German Presidency would like to have used the meeting of the Working Party on Substantive Criminal Law on June 04, 2007, to discuss the amendments tabled by the European Parliament. Accordingly, it plans to start with a general exchange of views and then begin to examine the European Parliament position in detail. No details seem to be known in the public so far.
This appears to me as if virtually all interesting points are still open and undecided.
"[...] The Bush administration wants to reform the nation's patent system by requiring better information from inventors and allowing public scrutiny of applications, according to the director of the government's patent office.
The goal, said Jon W. Dudas, director of the United States Patent and Trademark Office, is to improve the quality of patents, which should curb the rising wave of patent disputes and lawsuits. The legal wrangling is often over broad descriptions of ideas or activities, so-called business methods, or software that contains only incremental changes over prior work. [...]"
In particular, Mr. Dudas postulates something that might be seen as a new doctrine of a shared responsibility for patent quality among
the patent office,
the applicants, and
the public.
According to Mr. Dudas, reform legislation should require the applicants to conduct a thorough search of related patents and technical journals, and then explain why the patent being sought represents a significant innovation beyond previous ideas in the field. Mr. Dudas' thoughts are to be presented before the U.S. Senate Judiciary Committee.
Mr. Dudas' doctrine might, if ever cast into law, significantly change the way of preparing a patent application. Many inventors - in particular in big companies - are somewhat reluctant or even unable to provide a patent attorney attempting to draft an application text for a certain invention with concise information about written prior art. If required by law to provide reliable prior art information at the time of filing, the applicant typically would have to pay twice for prior art searches: The first one conducted or commissioned by a patent attorney prior to filing, and a second one conducted by the Patent Office after filing. Of course this would make the costs of patenting soar. For individual inventor applicants and small entities some exemptions from such requirements might be provided, says Mr. Dudas.
On June 15, 2007, the U.S.-PTO will begin a pilot project for open reviews of software patents known as Peer-to-Patent Project. This might perhaps be seen as an implementation of the role of the public in improving patent quality.
The U.S.-PTO has published in the Official Gazette a Notice defining the rules for the Peer-to-Patent project, including the requirements for participating applicants, third-party submitters and the rules governing the forwarding of prior art by New York Law School to the USPTO.
"[...] The patent office, said Josh Lerner, a professor at the Harvard Business School, has made a real effort to improve patent quality in the last few years. But Lerner questioned whether Dudas's current proposals amounted to relying too much on getting better information from applicants.
Lerner said inventors are instinctive optimists who tend to believe that what they are doing is unique. Yet even discounting any self-serving bias, he said, the growing complexity of technology makes it more difficult for a single person - applicant or examiner - to assess the innovative merit of a patent claim.
'That's why I think really opening the examination process to public peer review is so important,' Lerner said. 'While the patent office has shown a willingness to experiment with openness, I would put that at the center.' [...]"
Mr. Josh Lerner is the Jacob H. Schiff Professor of Investment Banking at Harvard Business School, with a joint appointment in the Finance and the Entrepreneurial Management Units. Much of his research focuses on the structure and role of venture capital and private equity organizations.
Sarcastic comments can be heard from Mr. Gregory Aharonian's Internet Patent News Service delivered via e-mail:
"[...] Dudas' complaints about problems handling prior art are complaints about the PTO's incompetent logistics and search tools for handling prior art. Between the incompetence of the PTO CIO's Office, and the incompetence of PTO IT contractors, PTO examiners have been denied the resources and tools they need to handle prior art effectively. Sure, some applicants game the system with too little or too much prior art, but the bigger problem for many years has been the PTO's horrible set of tools and resources for handling prior art internally. The PTO is at least 10 years behind the times in search tools. [...]"
It appears as if in Mr. Aharonian's view all recent U.S.-PTO information management initiatives are nothing more than emergency movements just to avoid the entire collapse of the patent workflow. I do not have privileged insights into the internal structures of the U.S.-PTO and, hence, I am inclined to refrain from commenting thereon any further here.
"[...] The European Green Alliance, IBM and EUPACO present the first in a series of briefings for key European Parliamentarians on the future of the European patent system.
The patent system, and the need for a balance between the disclosure of inventions and rights that are granted is of vital importance to the European economy. Parliamentarians must help to shape Europe's patent system and ensure that the right balance is struck; that real invention is rewarded while society benefits. It is crucial that Europe moves forward in developing its patent system within the fabric of European democracy.
Speakers: Dave Kappos, IBM's vice President for Intellectual Property, Ingrid Schneider, political scientist from the University of Hamburg, and Pieter Hintjens, EUPACO Chairman. [...]"
Mr. Hintjens is used, on the one hand, to stress that EUPACO shall not be seen as identical with FFII. But, on the other hand, he actually is President of FFII. Has Mr. Hintjens developed a split personality so far? I don't think so. He appears to be quite consistent in his positions within FFII and within EUPACO, respectively. Recently I had given some comments on the new strategy of FFII and I understand that IBM obviously is interested keeping some sort of a dialogue with a more pragmatic FFII. But what the heck makes IBM partnering with FFII that way? Of course the patent system as it stands is susceptible to improvements and it should be improved e.g. in terms of patent quality or reducing backlogs and processing time. But IBM's way of dealing with FFII might by risky. Mr. Hintjens and his co-activists are by far not dumb guys. IBM must be on the guard not just to be instrumentalised by FFII, in a first phase, as a door-opener and trust agent, facilitating contacts to lawmakers, then to be shrugged off in a second phase when FFII reaches through to press for certain destructive maximalist options like the the dissolution of the EPO or the like.
Recent resolution passed by the European Parliament might well be received as a stern warning to all players on the political stage of Intellectual Property: A body where a resolution demanding patents "not monopolising knowledge in the field of innovation" gets a majority might well be able to cultivate further anti-IP positions in many unforeseeable ways. And, a statement like "The patent system, and the need for a balance between the disclosure of inventions and rights that are granted is of vital importance to the European economy" appears to be FFII-speak demanding some sort of weakening of the patent system.
Let's wait and see. I'm confident that Mr. Dave Kappos of IBM will do the right job in this perilous situation.
Details of the fields of activity of Dr. Ingrid Schneider are availabe here [In German only, sorry]. She has extended experiences in political consulting concerning policy analysis, national and supra-national governance (in particular with regard to the EU), innovation and law, juridification, regulatory agencies, patent law, social studies of science, technology and innovation, technology assessment of biomedical technologies.
Mr. Joff Wild of IAM has posted in his blog an interesting article considering that during coming years three European pro-patent political heavyweights might well change the landscape of Intellectual Property in Europe:
Ms Angelika Merkel, Chancellor of Germany,
Mr Gordon Brown, soon-to-be Prime Minister of the United Kingdom, and
Mr Nicolas Sarkozy, President of France.
One near consequence of the election of Mr Sarkozy in France might be the ratification of the London Agreement by France even this year, although it is likely that there will be a last-ditch campaign against ratification from, among others, French patent attorneys, many of whom remain staunchly opposed.