Sigrid Sterckx and Julian Cockbain,’Exclusions from Patentability: How Far Has the European Patent Office Eroded Boundaries?’ 17-65 (Cambridge: Cambridge University Press 2012).
Sterckx/Cockbain – Exclusions from Patentability
Background
It is the nature of intellectual property law to constantly evolve to keep up with technological and business changes while international agreements are difficult to amend. The revisions of substantive provisions in the Paris Convention date back to the Lisbon conference of 1958. The negotiations were difficult on provisions regulating sensitive issues, including compulsory licenses in particular. The 1960s and ’70s saw a surge in innovation and inventions, especially in Europe. The interested circles were particularly keen on getting additional rules improving patent protection implemented, as well as harmonization of procedural rules. The last prominent and key improvement on the multilateral level was the PCT. However, the PCT essentially deals with the first phase of patent procedure only, the application. The national phase involving review of the patent filing remains within the purview of each PCT Member Party. This entailed the problem that diverse and diverging national laws cause expenses and undue delays. There was also a swell of primarily developing countries gaining independence, especially in the 1950s. The Bandung Conference saw the creation of the Group of 77 (group of developing countries), formed to unite efforts in defence of their interests, particularly to mitigate the perceived impact of the patent system as it existed at the time in industrialized countries. This was followed by the United Nations Conference on Trade and Development, (UNCTAD), whose agenda reflected the expressed concerns of developing countries.
It was in that more complex historic and socio-economic context, albeit not the only one, that the EPC was initiated as a European project, which concluded in 1973. It was the result of a long-term process that started after the Second World War as part of a plan to set up European institutions to secure peace in Europe. The founders were the member countries of the ECSC (European Coal and Steel Communities) and third countries like Switzerland. As the name suggests, the EPC is a multilateral and regional treaty open to countries belonging to the geographical area of “Europe”. It was revised in 1991 and 2001. In conjunction with the Paris Convention and the PCT, it is the most precise and lawyerly treaty regulating patents for inventions.
The EPC entailed the setting up of the European Patent Organization (EPO) in 1977, consisting of two bodies: the European Patent Office and the Administrative Council. The latter, composed of representatives of all member States, supervises the former and acts as the “legislative” arm of the organization. The EPO currently has 38 member states, including EU countries, EFTA countries, Switzerland and Turkey. The organization’s geographical scope may extend beyond that of its current formal membership. It provides for a complex system of recognition of the European patent in “European extension States” (European non-contracting parties) and in “validation States” (non-European countries).
The Office has its headquarters in Munich and a branch in The Hague as well as offices in Vienna, Berlin and Brussels. The first President of the European Patent Office, Johannes Bob van Benthem, was succeeded by Paul Braendli, former Director of the Swiss Bundesamt für Geistiges Eigentum/Swiss Federal Office for Intellectual Property (BAGE), whose tenure at the EPO lasted 10 years (1985-1995). His successor-in-title at the BAGE, Jean-Louis Comte, was a prominent leader and representative on the EPO’s Administrative Council. The next director of the BAGE, and thereafter of IGE/IPI, was Roland Grossenbacher, who is currently an Honorary Member of the Council in recognition of his exceptional contributions and competence.
This account is in fact aimed at pointing out the Sisyphus curse that resulted from rejection of the EEA Treaty in a Swiss referendum in 1992. Not being in the first circle (EU members) or even the second circle (EEA − European Economic Area) of one of the most solid and operational European institutions, Switzerland presented Roland Grossenbacher as candidate for the post of President of the Administrative Council. For purely political reasons he had no chance vis-à-vis other candidates originating from EU member states. But one of the most talented staff members of IGE/IPI, Peter Messerli, became Vice-President of the EPO in charge of the Boards of Appeal. During his tenure the Boards of Appeal took many key decisions amidst a major wave occuring in parts of civil society that concerned biotechnology, in particular, such as stem cell issues. The book by Steckx and Cockbain excerpted below is dedicated to him.
The EPC amounts to a compromise between integration and national prerogatives. Patents are jointly reviewed and issued. Once granted, the European patent (EP) becomes a bundle of independent national patents. The validity of patents, however, depends upon national or European Union law, with the Court of the European Union having final jurisdiction. The rejection of a single transnational patent court by the European Court of Justice forced Switzerland to create its own central patent court attached to the Federal Administrative Court in St. Gallen.
Applications for the EP can also be filed through the PCT route. The European patent system is distinct from the new EU unitary patent system, which is also open to Swiss applicants. Protection with unitary effect can be applied for in EU countries that participate in the latter system. The EPO is in charge of reviewing and granting the unitary patent as a standard European Patent. The unitary patent provides users an alternative to national patents obtained nationally and to filing through the PCT.
Fees are regulated under a complex set of rules governing the various elements involved in the filing and approval processes. Fees may be payable for example to the EPC and/orto national offices. The general concept is similar to the PCT: the EPO distributes back to EPO members a percentage of the fees collected in accordance with various schedules. Currently, the portion received by IGE/IPI accounts for the most substantial part of its budget.
The EPO provides food for thought. Though established in the propitious post-war period of the 20th century, it has made tremendous, continual efforts to change in order to meet new technical and above all economic and political challenges. The questions addressed include: How to function efficiently as a patent organization and office? How to operate without becoming a “European fortress” vis-à-vis other parts of the world? How to square the circle for non-members of the EU in an organization that is increasingly influenced and defined by EU law? How to prevent the patent system from being torn to pieces for dogmatic reasons? And most importantly, how to keep out of the trap of allowing abuse of the system? To some extent, the main challenge is to keep Europe attractive as a place for innovation and invention, avoiding a “patenting drain” to the US, China or other third countries and prevent unfair competition, to be frank, from discouraging innovation. Another challenge facing the EP system is the changing landscape regarding the patentability issue, particularly in relation to biotechnology which was dealt with carefully by the WTI based Ph.D. thesis of Michelangelo Temmermann, Intellectual Property and Biodiversity: Rights to Animal Genetic Resources (Alphen aan den Rhyn: Kluwer Law International 2012). The European Patent Organisation has so far prudently and successfully navigated these problems. Being a member of the EPO whilst being excluded from the EU inner circle allows Switzerland to stay in the race, for the time being at least, thanks again to the Swiss personages named above as well as to a significant number of solid Swiss EPO patent examiners and senior lawyers who play a discreet role behind the scenes in keeping the system working well.
The EPC contains a number of important substantive provisions that form the bedrock for national laws, and more importantly for existing and future treaties. Many of the substantive provisions were taken up by Switzerland in the Uruguay Round TRIPS negotiations as a possible platform for negotiation. On the multilateral level, the final text of the TRIPS Agreement integrated several features of the EPC, albeit in a wording ambiguously flexible − or open to controversy. One of the most controversial areas is the scope of patent protections including the exceptions per Articles 52 and 53 of the Convention, addressed in the chapter of the book authored by Sterckx and Cockbain excerpted.
Summary
The chapter by Sigrid Stercks and Julian Cockbain offers a fascinating account and history of the complex and protracted negotiations of the EPC, often in competition with concurring projects such as in particular the inception of the PCT, UPOV, the TRIPS Agreement and EEC efforts to bring about a community patent. This represents one of the most difficult struggles in modern European legal history. Early initiatives taken after World War II and failed efforts to create a European Community Patent are discussed before the authors turn to a detailed account of the negotiating history of the exception clauses for patentability and their subsequent revisions under the influence of the TRIPS Agreement. They highlight as well the Swiss proposals which were retained to exclude discoveries as such and elaborate on the foundations of the provisions on patentability currently in place.
In this comprehensive and enlightening scholarly work they first give an account of the early history of efforts aimed at unifying systems or achieving greater harmonization of patent laws in Europe, either via a single patent (like a future Community patent for the Common Market) or a bundle of patents (like the future European patent). The authors proceed to a description of the EPC and its history, followed by a detailed account of the background for the exclusion of the protection of plant varieties from patent protection. Plant varieties did not fit within the patent framework, failing to meet the patent requirement of industrial applicability in particular. These required testing for homogeneity and stability from generation to generation upon reproduction or any other form of multiplication. The breeder’s exemption in use at that time was a concept alien to the patent system. Experts agreed on the need for a different system. This led to the creation of the L’Union pour la protection des obtentions végétales/Union for the Protection of Plant Varieties (UPOV). The exclusion of plant varieties as an exception to patentability would later be justified on this basis. The authors describe the elements of patentable subject matter already envisioned by visionary experts in the various stages of debate leading up to adoption of the first EPC text and subsequent revisions, giving a detailed account of the discussions of substantive provisions on the patentability of an invention and exceptions thereto. The authors elaborate on computer software protection issues and discuss how these are addressed in the EPC, mainly in its present form. The authors outline the role played by Switzerland in advancing dynamic application of the EPC provisions on “novelty”, including for example the interpretation of the scope of invention protection claims, such as the second medical use of a pharmaceutical product in particular − the so-called “Swiss-type claim”. The article effectively sheds light on the intricacies involved in the adoption of rules in the EPC and how these were later modified.
More importantly, the book represents a mine of information useful for interpretation purposes, such as in litigation on the national, regional or international levels, before the WTO or arbitral fora, for example.
The sine qua non condition for a treaty to stand the test of time, beyond the persistent, modern relevance of its provisions, is its capacity to respond very satisfactorily to issues arising from technological, economic and socio-cultural developments. Concerns have been expressed in certain quarters of society, for example, respecting expansion of the scope of patentability by the EPO. Whilst such concerns must be studied and addressed, one aspect requires further attention: the interest on the part of the EPO, member states and economic circles in Europe in having innovation and invention European policies capable of maintaining a level playing field with the US, particularly since the Chakrabarty case (Sidney A. Diamond, Commissioner of Patents and Trademarks, v. Ananda M. Chakrabarty, et al., 447 US 303 [1908]) on living man-made micro-organisms. The constant evolution of EPC law, including the EPC text and in particular the case law of the Boards of Appeals, have so far been widely accepted as balanced, giving due consideration to all interests at stake.