From phm@a2e.de Wed, 15 Dec 1999 14:49:37 +0100 (CET)
Date: Wed, 15 Dec 1999 14:49:37 +0100 (CET)
From: PILCH Hartmut phm@a2e.de
Subject: [Patents] Re: EPC 52 revision proposal

Jean-Jacques de Jong <jean-jacques_de-jong@hp.com> commented:

> > Our proposal for reform of =A752
> >=20
> > Article 52 - Patentable Inventions
> >=20
> >     1. European Patents are granted for industrial inventions, i.e. new
> >        problem solutions, which are difficult to find and are applied i=
n
> >        the mass production of tangible goods.[1]
> >=20
> >    Items of the following categories do not in themselves constitute
> >    industrial inventions, but may form parts of industrial inventions:
> >     1. information of all kinds, including data and programs stored on
> >        storage media of any kind.[2]
> >     2. the use of aesthetic forms for any purpose[3]
> >     3. human thinking and social interaction, including the playing of
> >        games, the organisation of companies, the rendering of services,
> >        the medical treatment of people and animals.[4]
> >     4. living beings and parts thereof[5]
=2E..=20
=20
> Hartmut, did you read the Guidelines for Substantive Examination, part
> C? If not, I would suggest you to (there is also a German version if you
> prefer):

Thanks, this is indeed very relevant material.

> http://www.european-patent-office.org/guidelines/english/c_toc.htm.
> These are all the practical rules and criteria which should be applied
> by the examiners. They derive from all the *consistent* case law of the
> past years. This will help you feel the difference between theory (the
> text of the law) and practice (how the law is interpreted).

It seems to me that the interpretation of law deviated so much from the
actual law, because

(1) the actual law lacked clarity=20
(2) at each instance where an interpretation was needed, it was made in
    favor of a larger scope of patentability

This is how the Guidelines interpret 52.2:

<<
2.1 The Convention does not define what is meant by "invention", but
Art. 52(2) contains a non-exhaustive list of things which shall not be
regarded as inventions. It will be noted that the exclusions on this
list are all either abstract (e.g. discoveries, scientific theories
etc.) or non-technical (e.g. aesthetic creations or presentations of
information). In contrast to this, an "invention" within the meaning
ofArt. 52(1), must be of both a concrete and a technical character.
>>
=20
This is imho a poor interpretation, because "abstract" and "non-technical"
are vague notions.   They are even less clear than the article which they
are supposed to clarify.

The criterion of "industrial application" could be clearer, but the
Guildelines deliberately dilute it:

 4.1 "An invention shall be considered as susceptible of industrial
 application if it can be made or used in any kind of industry,
 including agriculture". "Industry" should be understood in its broad
 sense as including any physical activity of "technical character" (see
 IV, 1.2), i.e. an activity which belongs to the useful or practical
 arts as distinct from the aesthetic arts; it does not necessarily
 imply the use of a machine or the manufacture of an article and could
 cover e.g. a process for dispersing fog, or a process for converting
 energy from one form to another. Thus, Art. 57 excludes from
 patentability very few "inventions" which are not already excluded by
 the list in Art. 52(2) (see IV, 2.1).

At the MPI conference in Munich in November, Dai Rees, patent examiner of
the EPO, explained that=20

(1) "industrial application" is to be understood as [german] "gewerbliche
    Anwendung", which in turn is to be interpreted as "anything from
    which one can make money" and is therefore irrelevant, because nobody
    will pay patent fees if he can't make money from the patent.
(2) any business method can be patented, if it contains a technical
    element, "such as the use of an IP address", as an integral part.

I can't imagine that the patent system was originally designed on such
feeble concepts.  They must have been deliberately diluted.  It is now
necessary for us to=20

(1) find stronger concepts for delimiting the patent system
(2) show that these stronger concepts conform to the original spirit
    of the patent system, that was diluted over time by case law.

We have accomplished (1), I think, and still need to do (2).  (2) is not
absolutely necessary though.  It is mainly helpful for supporting (1).

--
phm=20







