More Amicus Curiae Briefs Submitted to Registrar of Enlar...

Prof Dr. mult. Joseph Straus is one of the most distinguished experts on Intellectual Property Law in Germany. He is Director Emeritus of the well-known Max Planck Institute for Intellectual Property, Competition and Tax Law located in Munich. In his submission he starts with Article 112 EPC, the language of which states that the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two boards have given different decisions on that question. Straus then reiterates that all decisions invoked by Ms Brimelow in the present Referral as diverging were handed down by the very same Technical Board of Appeal 3.5.1. The time span over which those decisions were handed down covers, depending on the questions referred to, roughly twenty years. During this time, the Board had two chairmen, and the composition of the Board varied under each chair to a certain extent but could not be described as being 'completely different'. Some members who served already under the 'old' chair continued to serve for a certain period of time also under the second chairman. Mr Straus believes that the ordinary meaning of 'two boards' as the term is used in EPC Article 112 (1)(c), under organisational circumstances prevailing in the European Patent Office (in particular where the Boards of Appeal are identified by a number), means two different boards having different numbers. Straus emphasises that the preparatory documents of the EPC 1973 unambiguously reveal that the treaty makers of the EPC clearly rejected the competence of the President of the EPO to refer to the Enlarged Board of Appeal questions of law which are simply of interest to the European Patent Office - for whatsoever reason. This is due to the court-like character of the Enlarged Board of Appeal and that it should not function as a consultative legal department of the EPO. Mr Straus explicitly rejects notions of Mr R. Moufang conceding the President of the EPO the competence to refer questions of law practically always to the EBA. He sees a risk that the status of the independence of the Boards of Appeal might be put at risk by a broad interpretation of the EPC. Hence, in Mr Straus' view, the pending referral is utterly inadmissible. He gives a warning that the finally internationally recognised status of a judicial authority of the Boards of Appeal of the EPO should not be taken for granted. The problems regarding the status of the Boards of Appeal in terms of institutional independence have been known since long and have been thoughtfully and skillfully presented, he writes, and solutions suggested in a study prpared by the former President of the German Federal Patent Court, Ms A. Sedemund-Treiber and Prof. F. Ferrand, of October 25, 2003. Since this study was submitted to the Administrative Council of the European Patent Organisation, nothing has happened to improve the institutional independence of the Boards of Appeal. According to Straus, rather the opposite seems to be the case. He points out that Mr Teschemacher recently has given a number of reasons why the judicial status of the Boards of Appeal should be treated with even more care than in the past.

Tufty Sylvestris aka Tufty the Cat has provided a statement extensively discussing the admissibility of the referral to the EBA by Ms Brimelow. As the author of this Blog knows from trustworthy sources, Tufty has done a wise move in hiring a ghost writer for this undertaking, a young witty professional who brings in a lot of expertise in this particular field. Hence, the result is not to be deemed to resemble something like a cat's toy but a very sound discussion of serious legal issues. In Tufty's personal view the referral is wholly inadmissible for the simple reason that the President of EPO has failed to show that two Boards of Appeal have given different decisions on any of the questions posed. Further according to Tufty, whether the questions raise fundamental issues regarding the patentability of computer programs or not is beside the point since the limitations of Article 112 EPC are quite clear: It states that the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question. Tufty then argues that it becomes clear from three and a half pages of detailled analysis of case law that the questions posed by the President either cannot realistically result in different answers when considering the cases pointed out in the Referral itself or are irrelevant due any alleged divergence of case law being instead a development in a line of reasoning that is now established and is not contradictory.

Dr Reinier B. Bakels is an expert in the field of software and business method patent policy. He participated in several policy-setting projects in this field, both at the national and the EU level, integrating legal, economical, technological and political perspectives, for the European Parliament, the European Commission and the Dutch government. In his submission he presents something which looks more like a fully-fledged academic research paper than a standard Amicus Curiae Brief. Mr Bakels does not deal with the nasty question of the admissibility of Ms Brimelow's referral but attempts to have a fresh start with some new sort of thinking. He sees a reason for having a thorough review of the present case law in that it does not address the basic controvery about software patentability. Given that all available sources provide little help for the interpretation of the EPC, Bakels suggests that it is necessary to resort to an analysis of the internal structures of patent law. According to his findings, this analysis actually reveals some essential clues the inherent boundaries of the patent law domain. In his analysis, he reaches a conclusion according to which that patents are only appropriate for knowledge elaborated to the stage of concrete application so that they can be applied by any person skilled in the art. Because in law, the 'invention' concept is defined as subject-matter which is potentially patent-eligible, such knowledge is apparently an invention. Knowledge ready for immediate application is technical knowledge in common parlance, in contrast to theoretical knowledge, Bakels concludes. The questions submitted to the Enlarged Board of Appeal all start from the presumption that the technical content is decisive for software patentability and implicitly assume that technology is a designation for a specific type of discipline. Only technical subject-matter should be patent-eligible - but the word 'technical' must be understood in a sense very different from today's practice in patent law, but nontheless also compliant with common parlance: 'technical' basically is the opposite of 'theoretical'. 'Technical' denotes a quality of knowledge, rather than a specific group of (engineering) disciplines. Only technical knowledge - in this sense - is ready for application by an average 'person skilled in the art' as required by the EPC, Bakels argues.

I guess that the Gentlemen Members of the Enlarged Board of Appeal might feel pressed to think twice on the question of the admissibility of Ms Brimelow's referral. On the one hand, the course of arguing as presented by Tufty the cat surely was at least in some latent mode already present from the very beginning in the minds of all persons concerned. But Mr Straus surely has topped this looming question by going as far as to scrutinise the present state of the case law in view of the special aspect of the absolute number of Boards of Appeal involved. If the EBA simply would ignore such arguing, their reputation might be in peril. Otherwise, getting over the admissibility bar despite these arguments now appears not to be that easy, whatever the political desire of the Board members might be.

If the Enlarged Board of Appeal should jump over the admissibility hurdle they will find themselves confronted with demands linke 'we want more of the same' from the usual pro-patent stakeholders interested in more or less maintaining the status quo, as well as with flawed 'get rid of software patents' rethoric of well-known abolitionist groups or individuals representing that way of thinking. Mr Bakels' approach brings in some fresh air but I am somewhat in doubt as to the EBA would dare even only to deal explicitly with such deviation from long established concepts of case law.