Jurisdictions

In an earlier posting I had reported that, on the first day of the Belgian EU Presidency, the EU Commission had published a Proposal for a Council Regulation (EU) on the translation arrangements for the European Union patent. This Document suggests to require human quality translations of EU patents only in case of a dispute. Otherwise, machine translations are deemed to be sufficient for informing the general public.

On September 03, 2010, the General Secretariat of the EU Council has published Document 13166/10 titled Proposal for a Council Regulation (EU) on the translation arrangements for the European Union patent - Background note on machine translations. The paper is addressed to Working Party on Intellectual Property (Patents). In particular, it conveys in its Annex a background note on machine translations for the EU Patent, drawn up by the Commission services, as a basis for discussions at the meeting of the Working Party on Intellectual Property (Patents) on September 08 and 09, 2010.

Only now I have stumbled upon Opinion 01/09 - Statement by the Advocates General of the Court of Justice of the European Union concerning the European Patent and the Community Patent Court as planned by the EU Council; see my earlier postings here, there and there. The date on that Document (Original in French only) is July 2, 2010; however, the Opinion was not published on the Official website of the Court of Justice of the European Union (formerly known as European Court of Justice, or ECJ for short). A link to the French version was posted on August 19, 2010, on EPLAW Patent Blog.

I won't understand those childish games played by interested circles inside of and close to the EU Council in a futile attempt to withhold such important documents from the eyes of the general public.

Anyway, what the Advocates General have to say to the proposal submitted by the EU Council last year is highly relevant:

A first snippet from the Document makes clear that the Advocates General are not opposed to the general layout of the proposed Patents Court (PC) to resolve certain classes of disputes between individuals:

"61. We should first examine whether the European Union judicial system, as resulting from the treaties, prohibits assigning to the future PC sole competence to hear certain disputes between individuals in the Community patent field.

62. The Advocates-General do not believe that that is the case."

The bombshell, however, appears a bit later in the Document:

EPO Financing Trends (Source: Document CA/33/10)

On the website of the EPO Staff Union (SUEPO) a number of relevant Documents from the Administrative Council of the European Patent Organisation (EPOrg) running the European Patent Office have appeared:

• Document CA/39/10 dated 2010-02-23: Fee Reform and Sustainable Financing - Document 1: "Support for evidence based policy"
• Document CA/33/10 dated 2010-05-20: Fee Reform and Sustainable Financing - Document 2: "Cost-coverage, yes, but not everywhere"
• Document CA/36/10 dated 2010-05-20: Fee Reform and Sustainable Financing - Document 4: 'Continue enhancing certainty in the patenting process'
• Document CA/38/10 dated 2010-02-26: Fee Reform and Sustainable Financing - Document 6: 'Predictability of national renewal fee policies'
• Document CA/82/10 dated 2010-05-18: Fee Reform and Sustainable Financing - Timetable
• Document CA/91/10 dated 2010-06-09: Summary of the Study on the Economic Dimensions of the Fee Structure in the European Patent System

Today, the European Court of Justice (former ECJ) has published the decision in Case C-428/08, reference for a preliminary ruling under Article 234 EC from the Rechtbank's-Gravenhage (Netherlands), made by decision of 24 September 2008, received at the Court on 29 September 2008, in the proceedings

Monsanto Technology LLC

v

Cefetra BV, Cefetra Feed Service BV, Cefetra Futures BV, Alfred C. Toepfer International GmbH,

Intervener in support of the defendant: Argentine State:

1. Article 9 of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions is to be interpreted as not conferring patent right protection in circumstances such as those of the case in the main proceedings, in which the patented product is contained in the soy meal, where it does not perform the function for which it is patented, but did perform that function previously in the soy plant, of which the meal is a processed product, or would possibly again be able to perform that function after it had been extracted from the soy meal and inserted into the cell of a living organism.
2. Article 9 of the Directive effects an exhaustive harmonisation of the protection it confers, with the result that it precludes the national patent legislation from offering absolute protection to the patented product as such, regardless of whether it performs its function in the material containing it.
3. Article 9 of the Directive precludes the holder of a patent issued prior to the adoption of that directive from relying on the absolute protection for the patented product accorded to it under the national legislation then applicable.
4. Articles 27 and 30 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, constituting Annex 1C to the Agreement establishing the World Trade Organisation (WTO), signed at Marrakesh on 15 April 1994 and approved by Council Decision 94/800/EC of 22 December 1994 concerning the conclusion on behalf of the European Community, as regards matters within its competence, of the agreements reached in the Uruguay Round multilateral negotiations (1986-1994) do not affect the interpretation given of Article 9 of the Directive.

(Source: 11805/10 ADD1 / SEC(2010) 796)

The EU Council recently has published

• Document 11805/10: Proposal for a Council Regulation on the translation arrangements for the European Union patent. This is merely a wrap-up of the original EU Commission Document as discussed in my earlier posting here.
• Document 11805 ADD1: Commission staff working document: Impact Assessment accompanying document to the Proposal for a Council Regulation on the translation arrangements for the European Union patent.
• Document 11805 ADD2: Commission staff working document: Summary of the Impact Assessment accompanying document to the Proposal for a Council Regulation on the translation arrangements for the European Union patent.

On December 04, 2009, a (partial) political breakthrough had been achieved by the EU Council: A number of conclusions on an enhanced patent system in Europe were fixed on that day.

EU Council Document 16113/09 ADD 1 served as a basis for the political concord and conveyed a revised proposal for a Council Regulation on the European Union patent drawn up by the Presidency for discussion at the meeting of the Council (Competitiveness) on December 04, 2009. Article 61 thereof stated that the Regulation shall be accompanied by a separate regulation, which shall govern the translation arrangements for the EU patent, adopted by the Council with unanimity in accordance with Article 118, second subparagraph of the Treaty on the Functioning of the EU. This Regulation shall come into force together with the separate regulation on the translation arrangements for the EU patent.

Just today, on the first day of the Belgian EU Presidency, the EU Commission has published a Proposal for a Council Regulation (EU) on the translation arrangements for the European Union patent.

Today, the Supreme Court of the United States (SCOTUS) has issued the long-awaited decision in the case 08-964 Bilski et.al. v. Kappos. The headnote goes as follows:

"Petitioners’ patent application seeks protection for a claimed invention that explains how commodities buyers and sellers in the energy market can protect, or hedge, against the risk of price changes. The key claims are claim 1, which describes a series of steps instructing how to hedge risk, and claim 4, which places the claim 1 concept into a simple mathematical formula. The remaining claims explain how claims 1 and 4 can be applied to allow energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand. The patent examiner rejected the application on the grounds that the invention is not implemented on a specific apparatus, merely manipulates an abstract idea, and solves a purely mathematical problem. The Board of Patent Appeals and Interferences agreed and affirmed. The Federal Circuit, in turn, affirmed. The en banc court rejected its prior test for determining whether a claimed invention was a patentable 'process' under Patent Act, 35 U. S. C. §101 — i.e., whether the invention produced a 'useful, concrete, and tangible result', see, e.g., State Street Bank & Trust Co v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 — holding instead that a claimed process is patent eligible if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. Concluding that this 'machine-or-transformation test' is the sole test for determining patent eligibility of a 'process' under §101, the court applied the test and held that the application was not patent eligible.

Held: The judgment is affirmed.

All members of the Court agreed that the patent application at issue falls outside of USC §101 and, in consequence, a patent could not be granted, because it claims an abstract idea. However, despite the fact that the Bilski patent has not been granted it looks as if the U.S. Supreme Court did not kill patents on business methods entirely. The same holds for patents on computer-implemented inventions.