Transcript of the seminar organised by the EPO at the European Parliament

9757-seminar.ogg

04-Apr-2005 00:22 4.7M

Very good, ladies and gentleman, so thank you for being hear. Sorry for being late but we have been retarded during the seminar. I am very happy to be with you today. I will give you some remarks. After that I will be happy to hear some questions from you and I will answer part of the questions.

And we have also a specialist M. Yannis Skulikaris. And M. Gert Kolle who will be ready to answer your questions too.

Nevertheless, I would like to address some specific aspects regarding the place of the EPO in the patent policy process.

I thank very much M. Giles Chichester for sponsoring this Information Day at the European Parliament.

And as a former member of the European Parliament, I would like to strengthen the relationship between the European Patent Office and the European institutions

I thank you M too for giving us the opportunity to address the issue of the patent policy at a period which is very hectic. After, we are moving to the CII directive

I have already introduced my colleagues

M. Gert Kolle is responsible for International Legal Affairs and Patent Law at the EPO. He is one of the architects of the success of the European patent system, if I may say so.

M. Yannis Skulikaris is the manager of a department in which patent applications for computer-implemented inventions are examined.

M. Oswald Schröder is the General Communications Manager of the EPO

I want to present to you who is the European Patent Office and how it contributes to the competitiveness and to the innovation process in Europe, and what challenges the EPO perceives for the future development of the patent system in Europe

I would like to draw your attention to the press packs in which you find publications illustrating most of the points addressed here, including statistics. I will not bother you with too many figures, but stick to a number of key facts.

I also would like to encourage you to visit our information stand in the exhibition area at the Spinelli building where you can find more information on the points discussed here.

So regarding the relationship between the European Union and the EPO, I mean the two organisations, the European Union and the EPO, have a similar story.

The EPO was funded in 1977 in the spirit of the European Communities, and more or less by the same group of states. 27 member states in the European Union, 30 in the EPO.

Following the acquis communautaire, EU membership candidates have to apply for membership in the European Patent Organisation. But we have our own budget, we are independent from the European Commission. We are closely linked to the European policy, mainly in the area of innovation and economy and benefits for the citizens.

Today our Organisation counts 30 member states. Practically all EU members are also represented in the EPO. The states are united in the EPO's Administrative Council which is the supervisory board of the Office. The European Patent Office is fully accountable to its member states in all its activities.

Now we move to the role of the EPO in the innovation process in Europe.

Actually, the patent is one of the major transmission belts for the transfer of technology. And the EPO is 6,000 permanent staff, which is mainly scientists and engineers, and the European Patent Convention as a legal basis.

The EPO support all first its activities the innovation process initiated by the EU institutions. So we are two complementary bodies

The EPO will bring legal certainty to the innovation process by granting very high quality patents. And the EPO will act a catalyst of the innovation process with the help of its information tasks and system.

And you will have a demonstration of our electronic tools to have access to the published granted patents upstairs, third floor.

So, all-in-all, the EPO will be involved in the reinforcement of the Lisbon agenda after the Kok-report. Because the EPO has a task to manage the workflow from idea to invention, from invention to innovation and from innovation to the market place

So what do patent do for society?

Patents are the most important transmission belt for the transfer of technology and for the innovation policy.

Patents constituted the largest technology data base that make technology transparent and inform about technological progress and the information which is embedded into patent can give to new ideas and new inventions

I would say that innovation is breeding to innovation

And also, patent by transitory monopoly protect the innovator innovators and inventors. And patent patents reward investment into innovative solution. And so they secure the return of investment.

The invention costs one.

The development one thousand

The access of the product to the market cost one million euros, or one billion sometimes

And patents support the economic growth and employment.

How do patent support the knowledge economy in Europe.

Now, we are in the knowledge economy.

We are lacking and will be lacking of natural resources. So, what is the only resource that we have? The only resource that we have is which is embedded into knowledge and have a value related to intelligence (and is patented).

The EPO supports the aims of the Lisbon strategy

The EPO aims to strengthen its relationship with the EU institutions to achieve the Lisbon objectives

The EPO is concerned by the findings of the Kok-Report.

The protection of intellectual property is an essential feature of the knowledge economy: Intellectual capital is the resource of the future, because as I told you we will be lacking of natural resources.

A well-sorted patent portfolio increases the competitiveness of European enterprises and contributes to prosperity and economic growth. Patents are really the driving force in the transition to the knowledge economy: Between 1996 and 2004, the volume of European patent applications has more than doubled! To respond to the needs of the knowledge economy the EPO has rendered all 55 million documents in its documentation freely accessible for anyone on the Internet -an enormous asset! And this is by this way that patents are in a capitalistic process.

In what way do European patents bring legal certainty to the innovation process?

The legal certainty resides in the quality of the European patent which is based on.

The quality of the patent law: strict criteria of patentability; flexibility: EPC can be amended when new laws are introduced.

The quality of the patenting process: European patents are granted on the basis of a rigorous examination procedure carried out by expert scientists and engineers. And I would say that less than two thirds of the applications lead to a European patent.

Most patents are reduced in scope prior to grant.

There are legal remedies against European patents at EPO level: we have the opposition and the appeals procedures. Both procedures the legal certainty of whether or not a European patent can be granted.

Now I will move to the issue of CII, well here we are.

The EPO has the task to grant patents in all areas of technology. It has to apply the provisions of the European Patent Convention in all cases. And dealing with computer-implemented inventions we have to implement the EPC, and the case law developed by the independent judiciary of the EPO which the appeal court. The EPO grants patents for inventions which are new, involve an inventive step and are susceptible of industrial application. And so to be considered an invention they must have a "technical character".

Our policy is no patents on pure software, no patents on business methods as they do not involve a technical character, no patent on algorithms per se.

Computer-implemented inventions are found in nearly all fields of technology, ranging from car technology to medical devices, household apparatuses to information technology and computers. They are of enormous benefit to society. Following the law the EPO has to implement invention where theres a new technical effect.

If the law is changed or new law introduced by the legal system of the EU, the EPO will adjust its own law accordingly. For example: when the Directive for patenting biotechnological inventions was introduced, the EPO was the first organisation to implement the new law in its practice.

As the patent grant authority for Europe, the EPO will always apply European law. We need it to be simple and clear in order to have it implemented by our 3 500 patent examiners.

Let me thank you for your attention.

8790-seminar.ogg 04-Apr-2005 00:14 4.6M

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There will be plenty of opportunities to receive papers and information. Hear there is also an exhibition stand downstairs where questions can be answered as well.

This is meant to be an information seminar fix in with the EPO information Day which has been organized on a list of chairman of industry committee in the European Parliament

I have been asked simply to chair this session. And I have been asked because I presume, because I think there is a great interesting debate on Community patent and obviously CII have been a key issue in this Parliament and therefore we will be discussion the issue of patents

Of course, as a Parliament, we have no jurisdiction over the EPO. For those of you who dont know, the PO was created in 1977. It has granted over 600.000 applications for patents. It is the executive arm of the EPO which is an intergovernmental body cessed upon the EPC. And its a very large organization which has a 6400 staff mostly scientists and engineers, and its indeed one of the largest international organization in Europe For this reason alone its time we actually got some information and address some of the issues concerning the EPO making decisions on behalf of Europe

It is as you know the main patent granting authority for 30 countries on the base of a single application and as I said it will be the occasion to know more about the activities and decisions of the EPO

So the objective of this morning short seminar to try to inform MEP, Parliamentary systems, Committee experts that will be hear on the key features of the system and what benefits the system can bring to society and indeed more importantly for innovation and industry

And I think its very important time for meeting the board of the EPO in supporting and boosting Europe competitiveness particularly in the light the spring Council that we just have of the 22th March

To review the Lisbon strategy where our Ministers put very clear emphasis on knowledge and innovation as one of the key strands of the review of the Lisbon strategy

And I am sure we want to see how we can ensure that knowledge and innovation to create additional jobs and again we want to ensure knowledge is spread not only in the private sector but in the public domain as well.

I am also pleased to see on the list because I have no influence on what is going to happen today, I am pleased to see theres going to be a presentation on CII.

I am going to ask the President of the EPO, Professor Alain Pompidou, to give us a first presentation on the European Patent system benefits for society.

For those who dont know M. Pompidou, in fact he is very well know in this house, he was a MEP I think for ten years and of course served this Parliament well when he was hear. And for that reason alone, I think we are delighted to have you back.

Ladies and gentlemen,

Thank you for M. to join us. I remember a very memorable meeting in Nice a few years ago.

I would say that its a real pleasure to be in my old house hear and to come back to the floor where I have my desk somewhere in this place

I see you are a very numerous people we try to have a larger room but I must apologize because I see some of you are hear standing up just after the holidays.

So thank you for being hear. Its a real pleasure to be hear. My special thanks to you Madam and also to and to M. Rubic for giving the opportunity to present the organization and also we will have a meeting in the ITR committee this afternoon.

But nevertheless we have now to do our homework. I encourage you to visit the information centre which is just in the first floor hear

Many points raised in this seminar can be explained by our specialists. We are ready to answer your question after the short presentation

And I also draw your attention to our publication and the information folders which will be handled to you. So the point addresses are also reflected in your information materials and they maybe useful for different purposes

So I would begin with the fact that the EPO and the EU have a similar story. And actually some key facts about the EPO. I will not bother you with statistical details and you will found those in the brochures

So the EPO was funded in the early 1970s in the same spirit of the European Communities, and more or less by the same group of states. There are 25 member states in the European Union, we are 30 in the EPO.

The political aim was to create a harmonized patent law and practice with a view to support the integration process in Europe

Therefore the European patent clearly was assigned a role in the internal market.

Following the acquis communautaire, EU membership candidates have to apply for membership in the European Patent Organisation. And today the EPO counts 30 members states. And practically all EU members are also represented in the EPO. The states are united in the EPO's Administrative Council which is the supervisory organ of the Office.

The European Patent Office is fully accountable to its member states and the national courts have to decide of the validity of the European patent after granted

So what is the role of the EPO now in the innovation process in Europe?

With its 6,000 permanent staff, and the EPC as a legal basis support all first its activities the innovation process initiated by the EU institutions and mainly you know all its innovation policy and the implementation of the new Lisbon process. And EPO is ready to take its own part in the implementation of the Lisbon agenda. So EPO is supporting the innovation policy of the EU.

Secondly, the other task of the EPO is to bring legal certainty to the innovation process by granting very high quality patents. And the EPO will act a catalyst of the innovation process with the help of its information tasks and system.

And so the EPO has a role in managing the workflow from the idea to the invention, from the invention to innovation and from innovation to the market. And I think this is the workflow where the EPO has a key role as a transmission belt you know in the all process.

So, what does the EPO is involved to provide the needs of the society?

So I will address now European patent and society.

So patents are the most important transmission belt for the transfer of technology and for the transfer of technological knowledge.

Patents constitute the largest technology data base that make technology transparent and inform about technological progress and I think the information which is embedded in the patent which is accessible through Internet free of charge on espacenet is a major asset in order to bring new ideas to researchers coming from the published inventions which are available free of charge on espacenet.

So patents reward the investment to innovative solution and so they secure the return on investment. And so patent is bringing economical value to the invention coming from the ideas of the innovators. And also patents support the economic growth and employment.

Now how do patent support the knowledge economy in Europe?

The EPO supports the aims of the Lisbon strategy as I told before

The EPO aims to strengthen its relationship with the EU institutions to achieve the Lisbon objectives

And I had already many meetings with Commissioners, with directors of the Commission and also with my ex-colleagues from the European Parliament

The EPO is concerned by the findings of the Kok-Report and we want to support all measures that aim at strengthening the Lisbon process mainly in the innovation policy and bringing economical value to patent.

So the protection of intellectual property is an essential feature of the knowledge economy: Intellectual capital is the resource of the future, because as I told you we will be lacking of natural resources. So we have to be reliable on the added value, the consequence of which: filing a patent, granting a patent for the economical value and for the interest of the society.

To give you an example, a well-sorted patent-portfolio increases the competitiveness of European enterprises and contributes to prosperity and economical growth.

So I think I have been clear enough to tell you that patents are a driving force in the transition for the knowledge economy between 1996 and 200

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04-Apr-2005 00:18 4.8M

The presentation to the ITRE Committee of the European Parliament given by the President of the European Patent Office (EPO), Professor Alain Pompidou.

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A well-sorted patent portfolio increases the competitiveness of European enterprises and contributes to prosperity and economic growth. Patents are really the driving force in the transition to the knowledge economy: Between 1996 and 2004, the volume of European patent applications has more than doubled! To respond to the needs of the knowledge economy the EPO has rendered all 55 million documents in its documentation freely accessible for anyone on the Internet and this is an enormous asset! And this is by this way that patents are in a capitalistic process.

In what way do European patents bring legal certainty to the innovation process?

The legal certainty resides in the quality of the European patent which is based on

The quality of the patent law: strict criteria of patentability (novelty, innovation, industrial application); flexibility: the EPC can be amended when new laws are introduced. To give you an example, the biotech directive has been completely implemented and enters into force by the EPO. That is the quality of the patent law.

Regarding the quality of the patenting process, European patents are granted on the basis of a rigorous examination procedure involving three examiners and carried out by expert scientists and engineers. And I would say that less than two thirds of the applications lead to a European patent.

Most patents are reduced in scope prior to grant.

There are also legal remedies against European patents at EPO level: we have the opposition and the appeals procedures. Both procedures bring the legal certainty of whether or not a European patent can be granted. The quality of the innovation process is stimulated by the European patent system and the EPO provides the world largest free information system on patents. It contains all technical, legal and procedural data pertaining to European patents. The data are legally safe and produce complete transparency on the patentability of every individual case pending before the EPO. They can be inspected by anyone free of charge, I repeat.

Concerning the general information system the EPO acts as a catalytic engine for the European innovation system. This system is also governed by legal certainty and my colleague. And my colleague M. Pilch is going to show you in his presentation what is patent information.

In conclusion, I would say that I have been trying to explain to you in which way the EPO will continue to concentrate its efforts to promote competitiveness and the knowledge economy. We firmly believed that European patent can help to achieve some of the goals addressed by the Lisbon process and to reinforce a close cooperation between the EU institutions and the EPO. This is a key element of our policy in this respect.

Let me thank you for your attention.

Well, I think we will go on swiftly to M. Pilch who is going to talk about the knowledge system. M. Pilch is Austrian and before joining the EPO he worked for the Austrian patent Office.

Thank you.

A presentation on "The value of Patent Information" given by Wolfgang Pilch, Principal Director, Patent Information (EPO).

Thank you very much. To introduce me, I am the principle director of patent information in the EPO. And so most of the time when I introduce myself people ask me: What is patent information?

This is normally a two-day introductory record but I have only five minutes to show you, to make patent information experts, and I will do my best in order to do so.

M. Pompidou has already given you an idea that theres a workflow, theres a workflow from the idea up to the market. When I attended my first market cause, the question always was: When does the innovation process end? When does it end? Most people said: When the product is on the market? Wrong answer. When the product is sold. Because you have to gain money to restart the circle which I show you hear. Theres a circle which goes from research-development over to patenting over to introducing the product to the market, selling it, earning money, starting the innovation process.

From this circle comes patent-information.

You see, technically knowledge triggers ideas, that is every good researcher before it starts to invest the man of his boss should look around and should say: Who has already invented the same industry

University tool is the contrary. They say it was not invented hear therefore it is not good. They spend much money and they receipt the fruit.

Therefore, first step is look into the technically information

What is the best technical information available? In time like this, information which is there free of charge. Patent information is there free of charge. All the patent information which is used in the EPO to check for novelty is available free of charge for the public.

Well come to this a bit later giving you some ideas and figures.

If now a person has some idea that has reason technical status he asks himself what can an average expert do in the field as an idea. Then he starts his research & development and then he comes to the idea of patenting.

He goes to the patent office and now this process is repeated in a professional way Its an exercise where there is a comparison between the application and the existing technical literature and the result is the grant of patent which set the legal basis of what a company is allowed to do exclusively. And this information is published once more. So the side effect of the patent system is that the technical knowledge is increased. And it increases in a enormous speed. Worldwide, more than one million documents are published a year which should be taken in account when a new research & development project is started

This circle goes all-in-all around. Always every inventor has carried on their shoulders older generations.

What is this in figures?

There are 30.600.000 complete patent documents from 33 countries available free on Internet.

Every patent document explains the idea up to the intrinsic details. Thats why an average expert should be able to do the same thing as the inventor. There is nothing like secret patent because if you are honest the first thing which pops to your mind when somebody tells you patent you think secret. Wrong answer.

Patent means open, every thing which is patented is open, is published, is now worldwide and can be accessed by Internet free of charge.

55.000.000 searchable bibliographic records from 73 countries in our database also available free of charge for public

39.500.000 records concerning the legal status of 11.000.000 patents of 44 countries

Because it is very important to know whether a patent is still valid or maybe fees were not paid or it has come at the end of its lifetime. Because at this time the technical knowledge still is there, its available and there are no limits anymore to the validity of the patent

The EPO has a central mission as one of the leading provider of technical information and heads to promote a knowledge-based society in Europe.

Because our society will not be based on productivity, it will be based on knowledge and we will make our contribution to this.

We offer industry tours to avoid lost investment. Do not reinvent things. This is one of the biggest dangers in research and development that money is spent on things which are already known,.

And if you look on patent information databases, you will find practically for everything, even for your wildest dream, for things on the moon, for things circling the earth, whatever you will find patent for it.

And we do it in a transparent way. You see hear from this exam, that every patent application can be seen by Internet by everybody, even anonymous.

So, you have not to identify yourself but you can look into the files of one of the applications even before granting only the 18 months spirit have to be respected.

And all these search material are available free of charge for all the citizens of Europe. They can search for this and try to void spending unnecessary money for lost investments in research & development.

Thank you very much and I will be very be happy if you come down. We can show you example of what I have shown you and give you the real feeling that this is a transparent process for everybody in Europe.

Thank you.

There is a lot of information coming up very quickly

Charles, you didnt introduce where you came in, but if you want to say a few words just before we go to the next presentation.

Thank you very much. Its very kind to give the floor. I just wanted to thank you those who are attending and to this seminar the related events to join the EPO in the Parliament today I confess we have quite for being as popular

I apologize for those who are standing around the edge but its really nice to see you in a full room and I would have preferred a larger room.

And I wanted to thank McCarthy very much for sharing this seminar.

Thank you

Now we have Stefan Steinbrener who is going to do a presentation on the patentability of CII which is I said is the peach of the Parliament especially since the second reading of M. Rocard report in this area

1986: he joined the EPO 1997: he joined Director of the Technical Board of Appeal And now he is the chairman of the Technical Board of Appeal

So we can say we really have an expert hear today

A presentation on "Patentability of computer-implemented inventions" given by Stefan Steinbrener, Dr. rer. nat., Chairman of Board of Appeal 3.5.1 and Member of the Enlarged Board of Appeal (EPO).

Good morning ladies and gentlemen,

The Board of Appeal of the EPO also located within the same office are in fact independent from the trademark office in his jurisdiction in patent granting matters.

Now the contribution []

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04-Apr-2005 00:25 4.7M

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The debate on patentability of CII is subject to two main constraints. Firstly, to apply the law as it stands and secondly, to underdecide issues relevant to the cases on the considerations to so-called (?). That means one hand that cases law cannot reach beyond an appropriate interpretation of the legal provisions as currently (?). And on the other hand for rapid conversion and harmonization enough cases to be decided during a given time period are needed.

Despite the issues topic quality, only very recently have European Appeals on CII began to fulfil the letter condition. We had during the last five year, about twenty cases linked to these problems, just roughly the same number we have twenty years before.

Nearly all decisions have been given by boards 3.5.1 although more contributions from other boards in other technical fields are to be expected due to the dissemination of software and microprocessor technology. Current practices in board 3.5.1. have been adopted by other boards addressing similar issues. So in that respect European case law appears to be harmonized.

After these introductory words, I would like to start with law. Then, very briefly, some basic decisions and focus on some basic conclusions to be drawn from these decisions

If we look at the EPC, the central article is article 52.

52.1 European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

Then we have 52.2

52.2 The following in particular shall not be regarded as inventions within the meaning of paragraph.

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(d) presentations of information.

And we have the provisions of article 52.3, which are often forgotten

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

So what does that mean? According to the preparatory work, the traveaux prépartoires for the EPC, European and national case law were requested to devise suitable interpretation.

What can be directly seen from the law it that there are apparently two barriers for patentability. The first barrier is that this must be an invention; inventions must be distinguished from non-inventions. And the second barrier is that if there is a invention, this one must have a certain quality. It must be inventive, novel, it must industrially applicable.

The current case law is basically laid down drawn in the following decision in my view that computer program product decision (?) ambient (?) Philips controlling invention system PBS partnership to identities convict and option that are touchy (?)

I dont want to go into details of this decision. The decisions have been published in the official journal of EPO and it also available on Internet.

Let me come to the results, the conclusions to be drowned from this decision.

First of all, before we start considering the barriers, we have to look at two crucial fundamental terms which are not defined in the EPC, undefined legal terms. First of all, the notion of invention. The decision say, the case law say, invention within the meaning of article 52.1 EPC have technical character. This corresponds to the traditional European understanding and conforms with the TRIPs agreement. Any of the subject matter listed in article 52.2 EPC may comprise on inventions if it has technical character, in particular because technical problems solves, or technical achieves, technical interactions occurs, or technical considerations must be applied

So, what does that mean technical? The word technical plays a crucial role in this approach. Once again a long definably concept, notional definition has been given by European case law and the board does not think be reasonable approach

The problem is basically one of infringes in the pole areas. The meaning of such term is undisputed and instead of giving or trying to give a general interpretation, the board, its approach is to stick out the great area requiring a great interpretation through a series of individual decisions.

This is not a non-common legal situation. In fact, it is the general problem with law. The whole situation has been very adequately summarized by Lord Hoffman of the House of Lords. In the recent decision in the judgement in the case (?) versus (?) limited, Lord Hoffman said the vast majority of patent specifications are perfectly clear about the extent of monopoly of claims. Dispute over them never came to Court. In border line case, it does happen that need interpretation. (?)

That degree of uncertainty is inherent in any rule that involve the construction of any document. It afflicts the whole law of contract to say nothing legislation.

In principle it is without (?), although I shall consider a moment with uncertainty can be with alleviated by guidelines or a structured approach of construction. Thats the approach of the board attends. A structured approach to construction has laid down the basic decision paragraph referred to.

Giving guidelines to understand what the great area is, what is considered to be technical and what is considered to be not technical. This taking out has been done in a few individual decisions. You may find some key findings of these decisions in the benefits to my talk.

Now, let us go back to the barriers.

Examining for the existence of an innovation is not to be confused or mixed up with examining of novelty, inventive step or industrial applicability. Examining for the existence of an innovation means assessing the invention of the whole underlying technical and non-technical features. Now the technical character of the practices and the methods is very easily determined. If a technical product has technical character, this features provides a basis for technical character, methods can have technical character by virtue of their technical nature or their use of technical means for a non-technical purpose. So it may appear that the first barrier is quite low if it has some as technical aspect.

But we sought it at the second barrier, examining for quality of invention. Because the invention must be in a technical field if the invention is based on a non-technical innovation, its technical realisation, if novel and not obvious may be patentable. The technical realisation begins with the implementation of a non-technical concept as such by the technical expert once this has been bought to him by the non-technical expert, for instance, business men or economists.

So what does that mean? Features are analysed to establish which of them contribute to the technical character. Features which make no contribution to the technical character are not part of the technical solution. Those features are to be ignored when assessing inventive step.

To give you a simple example, if an invention consist of an innovative business method and the technical implementation consist in the mere idea of using a computer. Then it would probably pass the first barrier, but it wouldnt pass the second barrier because the innovative business concept does not contribute to the technical character of the invention and the mere idea of computer implementation.

Let me give my last light on computer programs to the specific aspect of computer programs.

The boards have found all computer programs have technical character in so far as they cause physical changes in the hardware, changes in the bit patent. But these trivial technical interactions are not sufficient to allow patentability. To be patentable they must cause when loaded in a computer a further technical effect going beyond that trivial interaction and giving rise to the necessary technical character.

If they cause such a further technical effect, if they are patentable, then as either computer program (?)

Thank you for listening.

The final presentation (?) is made by (?)

Thank you very much for giving me the opportunity of present the practice of examining CCII in the EPO.

What I will do is that I will first do some explanation and clarification day-to-day examining practice. And then I will try to address some concerns that have been voiced during the discussions about the protection of CII and try to present the view of the EPO regarding this concern.

Let me start with some basic information with regards to terms that we see very often in debates, and this is software patents, not very well defined.

Our view is that this term is somehow confusing if not misleading. Why? The patent application that we get on our desk refers to functions, to functionalities; it is not clear as a rule whether this functionality will be eventually implemented in software or hardware or in any mix of the two. Otherwise of course there is not a clear classification that could give us exact details what are software patents.

For this reason, we prefer to talk about CII we think that this a much more clear term involves computer technology in general (?)

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03-Apr-2005 23:47 4.8M

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A new technical effect

So its in way a regulator body, a legal framework. In the other way, its a catalyser for the free circulation of ideas with a strong protection for them. And as far as I understood M. Rocards position is that there should be a free circulation of ideas.

For the time being, the USPTO on software bring the patents accessible on the Internet at a worldwide level. This can be protected, but this will make the law. And if we have no a proper CII directive for Europe, I mean Europe will laid beyond that. So I think theres no restriction of ideas if theres a CII directive

Perhaps I will ask M. Colley to answer the question of the source code

Perhaps to M. Steinbrener to answer the European case law.

And regarding your question, someone of the panel can answer

So the source code

Well, on the source code, you might have taken a look into our brochure where it is clearly stated that the source code is not a requirement for the applicant to disclose a CII. For the simple case that we dont patent computer programs per se.

Thats why it is neither necessary nor appropriate to disclose the source code. The source code is one way of carrying CII out by using a specific computer program but not only this as disclosed. This is an example.

But we dont examine a computer program which meets the criteria of the Convention. We look at the method behind it. It is either a method or process of treating data, of processing data for whatever purpose, and for that purpose we dont need the source code.

You may criticize disclosure in some patent application, this is your right. But what is required depends on what a person skilled in the art needs to know in order to be able to carry out the invention. And thats it.

And this not necessarily, and in most cases it not a programmer, it is a specialist in the concrete field of technology where the CII is there. And that is the difference.

This is my point on the source code. We dont require it. It is not useful

And last argument. If you disclose the source code in a patent application, you give a potential infringer anything so he can use immediately the invention without having to be implemented it with his own labour skills.

Thats why we dont think the source code is an appropriate mean of disclosing a CII.

Now we expect to the question of definition of technical and technicality I must say I must be careful in answering the question. And if you read Le Soir of today you know why, theres nice article treating what one should say in the public and what one shouldnt say

What I can only do, is that, I dont know if the board will one day try to give a definition of technical and what the definition would look like

What I can say, some general remarks on that. This is a very complex task. If the definition is too broad, then it includes everything and it is useless, if it is limited, if it cuts out certain subject matter, then it will almost and inevitably have unpredictable and presumably undesirable side effects. So you would have to modify late wrong when you will realised oh dear! we hadnt thought of that.

Furthermore it would have to be construed anyway. You cannot get out of this problem of construction, this construction problem

And finally, the notion, the term technical is not a static one, it is a dynamic term which changes in the course of time. Think of what fifty years ago was feasible and what is feasible today.

The gap between abstract ideas and concrete technical applications becomes smaller and sometime it is blurred. It becomes fuzzy in some way. For instance, there are some intermediate steps, virtual chemistry for instance, computer designs, procedures which are precursors, procedures to the concrete hardware production of a product

So, in my view, this is my personal opinion, I have doubts about a functioning and general definition of technical.

Let me just add something. Theres one country and one Court in one given country, Germany, the Federal court of Justice which was trying to give a definition of what is an invention, and in particular what is a technical invention

A technical invention is a teaching addressed to a skilled person as to how to use controllable natural forces to directly achieve a coarsely predictable result without the intervention of the human mind.

Isnt that nice? Does it work in practice? It is there, but I dont know of any of the Court in the world to give such a definition like German one, even the Community that in a way likes definition

But in practice the definition sounds well but on the other hand it not easily transpose today in practice. Thats why, they can have it

But we have a very broad understanding on what technology means.

And M. Steinbrener, technology has to be determined on case basis and therefore all definitions more or less are either not agreeable or they have limitations which dictates some prudence

One remark, the Federal court of Justice which made the definition was obliged in the course of time and they have to deliver directly

Ok, can I

Because I understand we have to finish at twenty

Any other question, perhaps from expert assistants or anyone else who would like to ask a question

Thats not fair

So many people here and so few questions

Well, I carry on

I wanted also see this issue about the genuine invention: How can we distinguish between the invention and software as such the whole area of data processing?

And again one of the issues we have considerable debate on is the whole area of data processing. And there are some people that believe that data processing must be excluded in totality. They are others that argued only the implemented inventions. And again I suppose this is a question of examinations and Id like to have your views on that.

And perhaps to come back to the question, the point that you made, you talked about perhaps in the future what we need is a regulator framework which has more synergy between different options for protecting inventions, or different options for protecting innovation, because innovation can effectively be covered by a copyright but not by patent.

I wonder if you would like to expand on what you think the future hold for us in some of these more complex and more difficult domain.

Let me first try to address the first question that you pose, whether data processing from being patentable by patents.

I think that if a technical problem in a sense what technical might be perceived to be , if a technical problem is being solved sparkly or totally with the help of modern computer technology, for instance data processing, then the fact that this it is technology that has been used to solve the problem, should not automatically exclude this subject matter from a protection by a patent

In other words, modern technology has paved the way for solving problems that were not perceivable when the patent law was written down by means of a computer program

This doesnt change automatically the fact that these solutions are worth to be protected. They are solutions to technical problems, they are in principle subject matter which are not excluded by the exclusions of the patent law, in this sense the patent protection should be accessible to them.

And to answer your question, if we were to exclude totally whatever is being performed, then we wouldnt act in the sense of the people who wrote the law. It was at the time when the patent law was written, and remember that was the 1970s, and in the 1970s the computer programs had certain limited functionalities, and you could even read the code of the computer program for instance, you could even understand what it does.

The functionality that is been able to offer today with the help of computer program has dramatically changed. It has change dramatically and it would not be in the sense of the legislator if we automatically exclude from the patent protection whatever functionality can be achieved nowadays by means of a modern computer technology.

And what about the future synergy?

I am not a lawyer and therefore I will not tell you anything which you might think that this is an official opinion of a lawyer, it is my personal view modern industrial propriety and the efficient regulation of modern industrial propriety takes a little more that just patent law, that is my personal view

And I see that there is a huge potential in regulating the field in a synergy between the patent law and other legal possibilities available nowadays and one of them is competition law

Just to tell that I am still uneasy about the disclosure, the full disclosure. I just think that the last answer was referring to the programs of the 1970s is just a confirmation of that. Actually, at that time we have full disclosure

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We could go through a program and see the specific steps and somehow it might have been granted, issuing a patent.

Right now, I think things have become more complex. But still, source code is a source code. And all the experts could through a source code and see what is in there.

And of course, patent is a fore disclosure of the invention. And I dont think we should make an exception and of course this kind of say work of thought could be protected by copyright. So, the fore disclosure would actually shift to the copyright for this kind work of mind and leave of course more clearly the field to the device of CII. That would be less automatic.

And on the other hand, we need for security reasons, we need, we do need to know the source code we are using. Because we are not sure that in some mind theres something that can be addressed from this outside and kill our computers.

Ok, who wants to answer that one?

There are a lot of arguments on disclosing the source code. As I said, what is necessary under the existing patent law, sufficient disclosure mean that the invention has to be disclosed to person skilled in the odd and the manner to enable him to carry the invention.

This is a good example between patent law and copyright law. Copyright law is to protect the form, the expression which may find itself realised in form of the source code, of an object code, or other kind of description of software. So, you enjoy copyright protection under the condition of the old European directive. Now, with the CII directive, you have full protection of the source code and on the other hand you might get protection for the idea, the technical idea of making a certain process in practice carrying out an invention which makes use of a computer.

So, the two systems coexist, necessarily they coexist. You have the patent, the invention patented may be carried out by using different forms of computer programs not only the source code disclosed in the application whether it would be necessary but you can use it in different ways. You can use higher languages to implement one invention in many many different ways. And then, you enjoy in addition to patent protection, you may enjoy copyright protection for this program. But the patent itself would be enforceable against a user which would use the invention as disclosed without even using a program which may be described in the application.

Thats the synergy. This is I think the most important thing.

The patent system is not there to disclose and to make available anything in terms of source code. So that you have a database of source codes used in the world, you will never be sure that this a system which completely discloses every source code used for whatever purpose.

This was the idea of a generous protection for software disclosed in the frame of WIPO. To create a database of all source codes, object codes, etc. wherever produced, in order to get copyright protection by the way, not patent protection.

So, I think we have a good case of synergy between two systems, copyright and patent law. And on the other hand, there are clear limits of disclosing the source code in patent application

Just before, I think we conclude, I think the President wants to say a few words but I also really want to address a more global issue. Sometimes there are some of you that claim that patents are only hear for big business and that SME dont have advantages, or the same advantages as the multinational perhaps. I wonder if the EPO is trying to redress the balance and to make sure that SMEs have access to patent protection as well

For the specific issue, there are two aspects

One aspect is the access on patent information for SMEs. The second one is that we have patent academy to train all the SMEs interested in managing patent portfolio

And the third one is that we are training also people in order that they use you know the electronic tools to know the patent information

This is the main issue. We will have meeting, we have already a meeting with SMEs to better know what their needs are in term of patent information and patent portfolio assessment

The last thing I would like to say in that first we could have a whole seminar for the whole day with more comfortable facilities. But nevertheless we are ready before the adoption of the directive to organize meetings which should be more targeted on the directive and we will have more facilities because it seems you know that many people are interested in the first point

We are ready to interact I mean with all the movements involved in the drafting of the directive you know. This is the first point.

The second point is that I would like you to remind that the policy of EPO in patenting CCII

No patent applied on software.

No patent on business methods.

No patent on algorithms per se.

There are the three main messages that you should keep in mind and if you want more information, go to the patent presentation, exhibition that you have in the first flour. You will have all the documents that you need and there is one specific document on the CII

And I wanted to thank you again for organizing and giving the opportunity for this seminar hear in the real art you know where the second lecture of the directive will occur

Thank you very much

I think to conclude weve really only skimmed the surface of the issues

I think there are a lot of questions

Id be very grateful the papers your colleagues have given and including your speech and Im sure you will be accessible for people to follow up on specific questions

-- Some people needs the document now

Ok, thank you very much and thank you for having been so patient. I want to apologize on behalf of M. for the room organized that was not obviously appropriate, but in some way that was a good point because a lot of you were interested