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Today the German Supreme Court (Bundesgerichtshof, BGH) has published the full reasons of the decision in re Xa ZB 20/08 dated April 22, 2010. The decision is related to German patent application DE10232674 filed by Siemens AG on July 18, 2002.

At OHIM, Alicante, Spain

On May 12, 2010,  the General Secretariat of the EU Council has sent Document 9412/10 titled Future revision of the trade mark system in the European Union - Adoption of Council conclusions to the EU Council (Competitiveness configuration). According to a statement given with the Document, the Commission had, in line with an invitation received by the Council in May 2007 (9427/07), launched a study on the overall functioning of the trade mark system in Europe. This study, which has been awarded to Max Planck Institute for Intellectual Property, Competition and Tax Law (MPI) in Munich, should be finalised towards the end of 2010. The preliminary findings of the study were presented to delegations at the meeting of the Working Party on Intellectual Property on 25 March 2010. Following this presentation, the Presidency proposed to delegations a set of Council conclusions aimed at providing the Commission with input for its ongoing reflection on the future revision of the trade mark system in the European Union. The latest version of the draft Council conclusions was broadly endorsed by the Permanent Representatives Committee (Part 1) (COREPER) on 12 May 2010. However, the United Kingdom delegation maintains a parliamentary scrutiny reservation on these conclusions.

See also my earlier postings here, there, and there.

In view of the vote of COREPER, it appears likely that the Draft conclusions will pass the EU Council at next occasion.

Free WIFI - No longer available in Germany?

Well, I think I don't have to tell you here that patents are some sort of exclusive right related to inventions. Only inventions are eligible to be patented. Some of them, to be more precise.

But mere inventions, taken by themselves, are quite worthless for the society.

They might be seen as some sort of raw material for breeding innovation which means that changes happen in the real world.  Innovation is a change in the thought process for doing something or "new stuff that is made useful", as Wikipedia puts it. Patents seen as a legal instrument to assist in doing the administration of the benefits of inventions can make sense only if a sufficient fraction of those inventions make their way into real innovation.

Producing inventions is one thing, transforming them into innovation is quite another. Not all inventions turn out to be fit for innovation. Time has to tell.

However, experience suggests that in many, if not in most or even all cases, real innovation is a double-edged sword: Wherever and whenever innovation occurs, there will not only be winners but also victims: The representatives of Old School (or Ancien Regime as I would like to name it) who insist on doing it traditionally as it ever was done before the advent of the specific invention in question. In this context, think of Schumpeter's concept of creative destruction as a necessary attribute of a dynamic capitalism which is fit to survive its crisis. As brutal as it sounds, allowing victimisation of endangered members of the class of proponents of Old School by not bailing them out by means of new regulations might well be a necessary prerequisite for sustainably saving our capitalist system of economy.

As reported earlier on this Blog, under the date of October 22, 2008, the President of the European Patent Office (EPO), Ms Alison Brimelow, had referred a set of basic questions to the Enlarged Board of Appeal concerning the patentability of computer-implemented inventions (Case G 03/08).

Just today the Enlarged Board of Appeal of the European Patent Office has published an Opinion concerning this referral. The conclusion is that the referral of 22 October 2008 of points of law to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1)(b) EPC. The headnotes given by the EBoA are as follows:

1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112 (1) (b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time.
2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112 (1) (b) EPC.
3. As the wording of Article 112 (1) (b) EPC is not clear with respect to the meaning of “different/abweichende/ divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.
4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112 (1) (b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified.
5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112 (1) (b) EPC.
6. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.
7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC.

This result does not come as a surprise. Renowned experts like Prof Straus as well as ambitious newcomers like Tufty the Cat already had indicated that the problem of inadmissibility might well be the Achille's heel of Ms Brimelow's referral.

The Opinion appears to reach a political culmination point in Sect 7.2.7:

"Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an Enlarged Board referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby (cf. the present referral, page 2, Section 1, paragraph 3). Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over."

Well, in this particular case the legislator is not prepared to take over. It is, however, clear that the EBoA felt a bit abused by the President's attempt to use it as an instrument to clarify a political issue which had already caused the legislator to fail.

Bottom line: The Enlarged Board of Appeal won't interfere in the business of defining the limits of patentability of computer-implemented inventions; stick to present case law as it is known. Nevertheless, the G 03/08 Opinion provides some lengthy comments on available case law and how to properly understand its meaning.

Four patent examiners from the European Patent Office (EPO) have jointly launched a book titled "Patent Law for Computer Scientists - Steps to Protect Computer-Implemented Inventions". The 1^st edition of the book, XV, 194 p., Hardcover, ISBN: 978-3-642-05077-0, has recently been published by Springer in Heidelberg, Dordrecht, London and New York.

As set out in the preface chapter, the book is based on a total experience of some 70 years of the authors in the patent business within the EPO.

According to the Springer website, their professional background can be summarised as follows: