[Patents] Re: Dispositionsprogramm decision and new examination guidelines

[phm@a2e.de (PILCH Hartmut)]

Mr Raible wrote:

> Lately, one TBA of the EPO has shrunk art. 52(2) EPC into a black hole
> so that it has become invisible to the naked eye, whereas art. 52(4)
> EPC has been exploded into a kind of supernova by other instances of
> the EPO.

> Such a strange interpretation of the same article is wholly
> inappropriate and without logic, and this could only come about
> because the TBAs no longer refer their pertinent cases to the Enlarged
> Board of Appeal (EBA).

Since the EPO is currently rewriting its examination guidelines, wouldn't
that be a good opportunity to involve the EBA ?

> The Annual Report of the EPO for 2000 has the following to say:

> "No new cases were submitted to the Enlarged Board of Appeal which
> concluded three."

> It is very regrettable, indeed, that the TBAs are so afraid of
> submitting legal problems like the interpretation of art. 52 EPC to
> the EBA where they belong. A TBA can not ever await praise from the
> EBA, and so it is understandable - on a human basis - that the judges
> do not invite criticism on themselves, but one has to remind them of
> what judge Cl=E9ment Payraudeau said:

> "C'est le r=F4le de la Grande Chambre de recours de dire le droit
> commun." "It is the job of the EBA to interpret community law."

> And one might add: It is NOT the job of a TBA to decide basic matters
> of European Patent Law.

=2E..

> In their book "The law and practice of the Enlarged Board of Appeal of
> the EPO during its first then years", one of the authors commented
> that this is all the fault of the European Patent Attorneys who do not
> know the law and do not prepare suitable referrals. How about doing
> some work yourself?  Do not ascribe everything to those poor
> overworked fellows, the European Patent Attorneys. No referral in 2000
> is what one calls an "Armutszeugnis" in German. It is time that these
> art. 52(2) questions are referred, and then Hartmut Pilch can also
> give his input as an amicus curiae, even such old and obsolete
> decisions as Dispositionsverfahren.

What could be a way of having them referred to the EBA right now?

My impression is that at the EPO some people are doing fairly diligent
work of writing examination guidelines, but then the TBA regularly takes
both the law and the guidelines into its own hands and deviates in a way
that makes it very difficult to put back any systematics into what it is
doing, making the job of writing examination guidelines as difficult as
the job that Hu Yaobang, a fairly popular Chinese Communist Party
secretary of the 1980s, assigned to Chinese novel authors:  "to describe
the superiority of socialism in a very lively and realistic way".

If I had to write such novels or draft such guidelines, I would protest --
perhaps by appealing to the EBA.  I can't write anything coherent, if my
sources are incoherent.

The examination guidelines of 1978 were, I am told, inspired by Gert
Kolle's interpretation of the Dispositionsprogramm decision.  They
represent exactly what we want today, and nobody has ever pointed out any
incoherence in them.  The guidelines of 1985 already had some vague
concepts such as "change of the state of a machine" and "virtual machine"
introduced, probably due to some previous TBA decisions which, similar to
the Antiblockiersystem decision of 1980, still referred to technical
inventions but at the same time opened loopholes by inexact terminology --
I am still trying to find out more about that history and would be
interested in any hints.

Instead of asking the European Commission to come up with a directive, it
might be in fact better to first ask the EBA to conduct a thourough review
of the caselaw of the last 25 years and try to find a line that is both
coherent, law-conformant and adequate.  The latter aim is of course
difficult to assess for a court, but since the EBA allows an enlargement
of the discussion with incorporation of "amici curiae", it should be able
to play an important role here.

In any such debate, the Dispositionsprogramm decision would be a point of
reference, just as it is in TBA judge Mark Schar's article of 1998

=09http://swpat.ffii.org/vreji/papri/jwip-schar98/

> (One of the merits of proceedings
> before the EBA is that the decisions do not come out of the blue - the
> questions referred are published in the OJ, and interested people can
> put in their comments and make themselves heard.)

And I guess it could be possible to use all means of contemporary public
communication so as to give interested people and parties an opportunity
to participate.

--
Hartmut Pilch                                           http://phm.ffii.org=
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Protecting Innovation against Patent Inflation=09      http://swpat.ffii.or=
g/
80000 signatures against software patents         http://www.noepatents.org=
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