Documents-1960-1965 : art. 2767611 /en

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LT 234/82

PATENTS WORKING PARTY

Section 5 IV/2767/61-E

Brussels, 3 May 1961

CONFIDENTIAL

Proceedings of the 1st meeting of the Patents Working Party held at Brussels from 17 to 28 April 1961

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Discussion of Article 11 of the Preliminary Draft

The Working Party agreed with its Chairman that all questions concerning inventive level be deferred until it came to discuss Article 16.

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The Chairman asked whether it was necessary to have at the beginning of the European Convention a provision indicating which inventions were patentable.

Mr. van Benthem suggested a provision that patents would be granted for products or processes which were invented and new. Such a wording would avoid judges giving a patent a wide interpretation. It would emphasise that a patent does not protect the inventor's abstract idea but the practical implementation of that idea in certain forms susceptible of industrial application.

After lengthy discussions and taking account particularly of comments by Mr. Roscioni, Mr. Fressonnet, Mr. Pfanner and Mr. Sünner, the Working Party unanimously decided not to adopt that suggestion for the following reasons:

- there was a danger that it might restrict too narrowly the possibility of obtaining patent protection, for example for inventions in the field of nuclear physics; - it was at variance with the terms generally used, because it was the invention which was patented not a particular product or process; - finally it was not in confirmity with a draft convention drawn up by the Enlarged Bureau of the Committee of Experts of the Council of Europe.

However, the Chairman observed that account should be taken of Mr. van Benthem's suggestions when discussing the rules on interpretation of the European patent.

The Working Party instructed the Drafting Committee to make it quite clear that a European patent would be granted only on condition that the invention was susceptible of industrial application.

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Mr. De Muyser said that it would be desirable for each Article in the Convention to be accompanied by an official commentary to assist courts in interpreting the Convention uniformly.

The Chairman doubted whether it would be possible to bind courts by such a commentary which could not be ratified as a law but he felt that an explanatory commentary would certainly be of value.

The Working Party then turned to the question of whether they should define the concept of invention in terms of what was excluded in accordance with the Reimer proposal (cf. EXP/Brev. (56) 8 of the Council of Europe, page 8, Section 1, paragraph 2).

The Chairman felt that in practice national case law applied the same principles in this respect and, in any case, Mr. Reimer's proposals did not provide a clear and precise definition.

The Working Party agreed not to lay down in the European Convention any exceptions to patentability as put forward in the Reimer proposal since a negative definition would be just as difficult as a positive definition. Furthermore in the past this point had not given rise to any practical problems under national law. The Working Party did, however, accept a proposal by Mr. De Muyser that the experts draw up a commentary explaining its decisions.

The Working Party unanimously agreed that no definition of the concept of technical progress be included in the European Convention.

Discussion of Article 12 of the Preliminary Draft

As regards exceptions to patentability, the Co-ordinating Committee, with the approval of the State Secretaries, gave instructions that only inventions contrary to 'ordre public' and morality should be excluded. The Chairman proposed that inventions relating to new plant or animal varieties be excluded as well.

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After some preliminary discussion, the Working Party agreed to leave aside for the time being the problem of "ordre public" and to consider the following problems in the order given:

- Is it necessary to provide for such exceptions to patentability in the European Convention? - What is the definition of morality? Is there a "European" definition of morality? Should national definitions be applied or is it necessary to consider what is common to them all? - Finally, if it is agreed to use national definitions, will an invention be patentable if it is contrary to morality in only one of the Contracting States?

The Chairman adjourned the meeting at 18.00 hrs.

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PATENTS WORKING PARTY

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Minutes of the meeting on 18 April 1961

The Chairman opened the meeting at 9.30 hrs. and re-opened discussions on Article 12 of the Preliminary Draft Convention.

The Working Party agreed to prescribe that an invention contrary to morality would not be patentable.

The Working Party recognised that there was no European definition of morality. The German delegation and the Chairman preferred to refer to national concepts. But the majority felt that if such a stance were taken, it would give too great a prominence to national concepts in the European Convention. The Working Party unanimously thought that interpretation of the concept of morality should be a matter for the European institutions. It was therefore enough to mention the concept of morality in Article 12, paragraph 1, without giving further details.

The Chairman made two reservations. First he pointed out that the European Office was liable to interpret the concept of morality in a manner at variance with a national concept, a point on which the States were particularly sensitive. Secondly, the Chairman felt that when examining the problem of revocation, the problem of revocation of a European patent in one State on the grounds that the patent was contrary to morality there would have to be considered in greater depth.

As regards 'ordre public', the Working Party investigated in what States that concept existed and how it was interpreted. It found that in the Netherlands the concept was particularly wide and the exclusion applied to an invention which

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merely contravened a single law. In all other States, apart from Germany, the "ordre public" requirement existed but had no practical importance.

Two solutions were put forward:

(1) making no mention of "ordre public" in the European Convention, or (2) mentioning "ordre public" but qualifying it with a rider that the mere fact that an invention was contrary to a national law was not sufficient for "ordre public" to be invoked.

As regards the first solution, Mr. Pfanner and Mr. Fressonnet stated that the European Office cannot be empowered to determine national "ordre public". Such a power might infringe principles of national law. It would also be difficult to define the concept properly to avoid any abuse.

Mr. Roscioni thought that the fact that "ordre public" was mentioned in all national laws was a point in favour of the second solution. The concept of "ordre public" should be qualified by a rule similar to that in Article 6 quinquies B. 3. of the Paris Convention for the Protection of Industrial Property.

The Working Party instructed the Drafting Committee to draw up two provisions on the lines of the solutions set out above for Article 12, paragraph 1.

Article 12, paragraph 2, first sub-paragraph, was approved unanimously.

Regarding processes of a technical nature for producing new vegetable or animal species (Article 12, paragraph 2, second sub-paragraph), the Netherlands delegation filed a reservation pending the results of internal discussions. The other delegations were in agreement. Mr. Pfanner stated however that a distinction had to be drawn between production by biological means and production involving external technical factors.

The sub-paragraph was transmitted to the Drafting Committee together with the Netherlands reservation.

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During the course of an in-depth discussion of Article 12, paragraph 3, the Working Party considered the following three alternatives:

1. Alternative advocated by the Chairman

To obtain a European patent, the application had always to be filed with a national body to allow national defence interests to determine, within fixed time limits, whether it had to be kept secret.

One advantage of such national screening was that it would not be necessary to set up within the European Office a committee of experts on national defence; furthermore European officials would not have to decide on secrecy and the final advantage would be that the applicant would no longer run the risk of being guilty of "treachery" under his national law.

Mr. Roscioni pointed out that such screening would compromise the possibility of establishing common filing.

2. Alternative advocated by Mr. van Benthem

The application for a European patent was filed with the national authorities which suspended proceedings if it had to be kept secret. The national authority would transmit the application to the European Office if the secrecy bar was lifted. This solution could be combined either with simultaneous filing with the national authorities and the European Office, or with filing with the European Office and transmission of a copy to the competent national authority.

The advantages of this alternative were that:

1. the European Office would not have to determine whether an invention was to be kept secret; and 2. the European application would retain its priority if the secrecy requirement was lifted after perhaps a very short interval.

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3. Alternative advocated by Mr. Lannoy

The application could be filed with the European Office but it was for national legislation to require that inventions possibly concerning national defence be submitted to national authorities. That solution was implicit in the wording of Article 12, paragraph 3, which would be superfluous if the European Office could never decide whether an invention was to be kept secret.

The Working Party decided to leave the question open. But the wording of Article 12, paragraph 3, was retained for the time being to draw attention to the problem.

The Working Party instructed its Chairman to examine the matter in depth and to submit a study on the matter at a later date.

The Chairman explained the approach he intended to adopt. The ideal solution to avoid the above-mentioned drawbacks would be not to allow secret patents to come before the European Office. To that end there should be national screening. It seemed unnecessary for the Convention to require Member States to provide for such a procedure. The problem could be resolved by national legislation.

The meeting was adjourned at 12.30 hrs and resumed at 15.15 hrs.

Discussion of Article 13 of the Preliminary Draft

The delegations approved the content of Article 13. However the Netherlands delegation filed a reservation concerning technical processes in agriculture.

The Chairman pointed out that it would be difficult to exclude inventions concerning agriculture from patentability under the European Convention because of the opposition of a single State. If the Netherlands reservation was not

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withdrawn, they would have to consider a special provision that protection would not be effective in that State.

Mr. Fressonnet asked whether it would not be possible to dispense with Article 13 by suitably amending Article 11.

The Chairman replied that the aim of Article 13 was to avoid any restrictive interpretation of the industrial nature of patentable inventions.

Mr. De Muyser argued that in the expression 'for industrial or agricultural purposes', the word 'agricultural' placed next to the word 'industrial' effectively restricted the sense of 'industrial', since the industrial application of an invention could relate to other human activities.

In response to this observation, the Working Party instructed the Drafting Committee to find a formulation allowing as wide an interpretation as possible. In view of the importance of agriculture, it would be appropriate to mention it by way of example in the text using the adverb 'particularly'.

Mr. van Benthem was afraid that the words 'in any other way' placed too great a stress on the industrial nature and underplayed the need for practical implementation of the invention. The expression could lead to patents being granted for inventions not susceptible of application.

The Chairman decided to leave resolution of that question until later.

Discussion of Article 14 of the Preliminary Draft

The Chairman pointed out that the Co-ordinating Committee had given specific instructions that the concept of absolute novelty be used.

There were two variants to Article 14.

The first (Reimer draft) was based on the criterion of the state of the art. The second, based on the Nordic draft, provided for a more general criterion.

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The Working Party agreed on a combination of the two variants using the criterion of the state of the art but with the list in the Reimer draft replaced by a more general definition as in the Nordic draft.

The Working Party then examined the question of the best wording to express the concept of absolute novelty. Discussion was focussed on the terms "rendered public" and "generally available". In order to avoid any risk of a restrictive interpretation, the Working Party decided to adopt the wording "available to the public". The word "available" emphasised the possibility of taking note of the invention. The word "public" was less broad than the term "generally" /"å tous" in French/ and expressed the idea that it was enough for the invention to be available to an unrestricted number of persons for it to lose its novelty.

Replying to Mr. Roscioni, the Chairman stated that an invention was only disclosed if, by virtue of the disclosure, a person skilled in the art could carry out the invention. It did not seem necessary for this principle to be expressly stated in the Convention. If the matter made available to the public did not allow the invention to be carried out, the invention remained novel.

A suggestion by Mr. De Muyser that the duration of the effects of oral disclosure be limited was rejected by the Working Party on the grounds that what had once been made available to the public could never again become secret. Provision of evidence was the key issue here.

The Working Party instructed the Drafting Committee to draw up the text of paragraphs 1 and 2 of Article 14 in accordance with the results of the discussions.

Finally, the Working Party turned to the question of prior rights in Article 14, paragraph 3.

The Chairman explained the different principles of the Reimer draft and the Nordic draft.

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Under the Reimer draft, account had to be taken of the prior application in its entirety in evaluating the novelty of the more recent application. The prior application was treated as having been published on the day the more recent application was filed.

The Nordic draft provided that the evaluation of the novelty of the more recent application had to take account only of those elements of the prior application which had been protected by the grant of a patent as a result of the prior application. The aim of this system was to prevent the grant of two patents for a single invention.

The Chairman pointed out that the two solutions would have different consequences for the practical work of the European Patent Office.

Applying the first solution, the task of the Office would merely be to compare all the elements of the prior application with the more recent application. Applying the second solution, on the other hand, the Office would, in addition, have to examine whether elements of the prior application were to be found in the elements of the patent resulting from the prior application, a factor which would substantially complicate its task.

The Chairman adjourned the meeting at 18.00 hrs.

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PATENTS WORKING PARTY

Meeting from 17 to 28 April 1961

Minutes of the meeting on 19 April 1961

Continuation of the discussion of Article 14, paragraph 3

The Chairman explained the principle embodied in the Reimer draft. A patent was granted to an inventor as a reward for his contribution to the state of the art. As the public was informed by the publication of the first application, there were no grounds for giving such reward to the second inventor. Under this approach, therefore, the first application was presumed to be known to the second inventor when he filed his application. Because of the fiction it established, this system was somewhat prejudicial to the second inventor since he did not in fact know of the first application. In this respect the Nordic draft was more logical. However, the Reimer draft had one very substantial advantage over the Nordic draft in that, under the former, the Patent Office did not have to decide in abstracto on the question of the extent of protection afforded by the patent, a question which was normally reserved for the courts. Another drawback to the Nordic draft was that it extended the examination time since the second applicant had to wait until a patent was granted to the first applicant. Furthermore it would oblige the European examiner to evaluate the scope of protection of a prior national patent on the basis of national principles.

Mr. van Benthem pointed out that the Reimer proposal would mean that a patent could be granted for a subsequent application only insofar as it possessed the requisite inventive level vis-à-vis the first application.

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The Working Party unanimously approved the principle of the Reimer draft. It thought that it was the only practical solution for the European procedure. But it left open the possibility of returning to the question of inventive level when examining Article 16 of the Preliminary Draft. The Working Party also wished to tackle the thorny problem of priority rights again at its next meeting.

The Working Party then turned to the question of what account should be taken of prior national applications. It decided unanimously that they should be taken into consideration when examining a European patent application. This would not give rise to any difficulties since under the European system examination could be deferred for up to five years. Such a time-lag would even allow prior-examination countries to publish the prior application before the European Office began its examination.

The first variant of Article 14, paragraph 3, was transmitted to the Drafting Committee.

Discussion of Article 15 of the Preliminary Draft

Discussion of sub-paragraph (a) of Article 15 was deferred until the Working Party had available the text of the 1928 Paris Convention on International Exhibitions, which had been referred to by Mr. De Reuse. But the opening discussions revealed no unanimity as to the obligation to take account of Article 11 of the Paris Convention for the Protection of Industrial Property. However, since the Co-ordinating Committee had clearly expressed its intentions regarding that Convention, it seemed appropriate to accept those provisions voluntarily.

The meeting was adjourned at 12.30 hrs. and resumed at 15.00 hrs.

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The Chairman turned to Article 15(b). He explained that that provision was concerned not with disclosure authorised by the inventor but only with cases where the disclosure was against his wishes. The provision was designed to give proper compensation for an inventor whose ideas had been stolen or who had been the victim of industrial espionage or abuse of a position of trust, as an ordinary civil-law action for damages could not give him full satisfaction. It was nonetheless true that that provision ran contrary to the principle of absolute novelty and that it was somewhat wanting as regards legal certainty. But he thought that the rule would be applied only rarely and that any possible abuse could be limited by a restrictive wording.

Mr. Fressonnet did not want to adopt a final stance but pointed to the fact that the question was currently being studied by the Committee of Experts of the Council of Europe. He asked for those discussions to be taken into account before the question was decided.

The Chairman thought that the restricted solution proposed by him (Article 15(b)) would be acceptable since the strongly contrasting solutions adopted in Germany on the one hand and countries such as the Netherlands, on the other, had both been favourably received by the interested circles.

Mr. Roscioni said that he was against giving any period of grace for disclosure authorised by the inventor. On the other hand he was in favour of sub-paragraph (a) and the principle of grant in accordance with sub-paragraph (b). He wanted the concept 'evident abuse' defined more closely. He suggested use of the words 'evident abuse confirmed by the judgment of a criminal court'.

Finally Mr. van Benthem declared that despite the Netherlands delegation's intention to vote against such a proposal within the Council of Europe, it was prepared to go along with the majority of the Working Party in the interests of harmonising European law.

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The Working Party adjourned this question until its next meeting to allow time for contacts with interested circles and also to take account of the outcome of the next meeting of the Committee of Experts of the Council of Europe.

Discussion of Article 16 of the Preliminary Draft

The Chairman reminded the Working Party of its mandate from the Co-ordinating Committee in this respect. The Working Party was to examine whether the concept of 'inventive step' should be incorporated in the European Convention, and if so, whether it should be defined.

The Chairman pointed out that there had already been two attempts to define it, one in Article 16, the other in Article 14 (second variant, paragraph 1) of the Preliminary Draft.

The difference between the two definitions lay in the words 'substantially' ('essentiellement', 'merklich') on the one hand and 'was obvious' ('allait de soi', 'nahe lag') on the other. That difference was not between a subjective concept and an objective concept but between a quantitative criterion and a qualitative criterion.

The aim of the proposed criterion in Article 16 was to protect an invention by a patent on condition that it involved inventive step (qualitative characteristic). The aim of the wording of Article 14, second variant, paragraph 1, (Nordic draft) on the other hand was to grant a patent for an invention on condition that it was at a certain remove from the state of the art (quantitative characteristic). It was quite conceivable, for example, that a new invention, involving only a slight change in the state of the art, could nevertheless constitute a genuine inventive step although not being at a sufficient remove from the state of the art to satisfy the Nordic criterion. The patentability position would therefore differ under the two systems.

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Mr. Fressonnet felt that it was desirable to discuss first of all whether or not the concept of inventive level should be included in the European Convention. He added that the trend in France was moving towards that concept (Roubier). Some people, though, thought that it was too subjective a criterion.

Mr. van Benthem declared that the Netherlands would find it difficult to accept the grant of a European patent having no regard to inventive level. An exclusive right could not be granted for inventions which were already common property because they were part of the state of the art.

Mr. De Muyser emphasised the general trend of the Convention to lay down strict criteria for the grant of European patents and said that the introduction of the concept of inventive level was in line with that trend.

Mr. De Reuse pointed out that under Belgium law, this notion was, in part, contained in the concept of invention itself. He also felt that the criterion involved some risk of subjectivity.

Mr. Roscioni was in favour of the criterion of inventive level but feared difficulties in defining the concept. He suggested that it be left to the courts.

Mr. Pfanner endorsed Mr. van Benthem's comments and emphasised that, under German law, the concept of 'Erfindungshöhe' did not necessarily involve creative effort (flash of genius) on the part of the inventor. It was enough if he broke new ground and applied some intellectual activity.

The Chairman summarised the discussion as follows:

1. Opinions in the Member States differed somewhat on this point but the Gajac study showed that there was general opposition to granting a patent for something that went beyond the state of the art but that any person skilled in the art could have found. There was therefore a certain consensus on this point.

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2. The concept of inventive level was better defined in countries with preliminary examination. The reason was that in those countries, patent offices took many more decisions on this point than were taken by courts in revocation proceedings in other countries.

3. The concept of inventive level was an objective concept like that of morality. In both cases, there could ultimately only be one solution.

4. Even if the Convention did not incorporate the concept of inventive level, examiners from countries with preliminary examination would certainly apply it. They would find it difficult to grant a patent for an invention failing to satisfy this criterion.

5. It would certainly be simpler not to incorporate the concept of inventive level in the Convention. But then Germany and the Netherlands would find it difficult to ratify the Convention. It would also give rise to the risk of real legal uncertainty pending the development of case law.

6. Interested circles in the six States wanted the European patent to give them a maximum of certainty. Therefore the criterion of inventive level had to be used.

7. The fact that the concept of inventive level was not common to all the national laws would not cause any major problems since an inventor who failed to obtain a European patent could apply for a national patent.

8. An objection to the evaluation of inventive level by the courts was that the inventor's competitors would be obliged to challenge the existence of inventive level by means of very costly revocation proceedings and this could damage the reputation of the European patent. Furthermore in Germany, where the concept was

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applied, the interested circles would prefer the technically-qualified staff of the European Patent Office to assess it rather than the courts.

On this subject, Mr. van Benthem, supported by Mr. Pfanner, recounted the numerous difficulties encountered in his country where the evaluation was left to the courts (expert evidence, counter-evidence and two instances).

Replying to Mr. Fressonnet, the Chairman confirmed that Mr. Roscioni's proposal would certainly be upheld. The Chairman's proposal for a definition of inventive level would satisfy the mandate given by the Co-ordinating Committee. It would also allow the matter to be discussed with national interested circles on the basis of a more detailed document.

Mr. Roscioni summarised his views as follows: he preferred to maintain his proposal since, in such matters, he had greater confidence in lawyers than in technically-qualified persons. The problems with expert evidence and counter-evidence could be avoided by giving the European Office responsibility for submitting an opinion to the European court. The opinion would be drawn up by the technical staff of the European Office. Finally, he was prepared to support the concept of inventive level examined by the European Office provided that a satisfactory definition was found incorporating objective criteria.

The Chairman, from the more general angle of future European procedure, made two comments:

1. The European Office could comprise two instances, the second being made up of independent technical and legal staff on the lines of a recent Swiss solution. In effect then the department of second instance would be an administrative court within the European Office. Such a solution would allow a compromise to be found. In the procedure at first instance, the examiner at the Office would decide on the inventive level, but the inventor could appeal to

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the department of second instance, which would constitute a judicial body as proposed by Mr. Roscioni.

2. In addition to the patent grant procedure, the Convention would provide for revocation proceedings. A European court would have exclusive jurisdiction over such matters, at least at second instance. After some years the case law of that court would have established valid criteria for evaluating the concept of inventive level just as national courts have done for the concept of morality. Such case law would provide all the necessary guarantees for uniform judicial interpretation of that concept.

The Working Party decided to submit to the Co-ordinating Committee not only a draft provision on this subject but also notes explaining the various viewpoints within the Working Party.

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PATENTS WORKING PARTY

Meeting from 17 to 28 April 1961

Minutes of the meeting on 20 April 1961

The Chairman opened the meeting at 10.15 hrs.

The Working Party approved the minutes of the meeting on 18 April 1961.

The Chairman said that he could not yet give his opinion on Mr. van Benthem's question about the words 'in any other way' in Article 13.

Article 13 was passed to the Drafting Committee which was to leave the expression in brackets pending a final decision.

Continuation of the discussion on Article 16 of the Preliminary Draft

The Working Party discussed the different principles applying to Article 16 and adopted a number which would appear in the new wording of that Article.

The Chairman submitted to the Working Party a proposed new version of Article 16 worded as follows:

'A European patent shall not be granted, even where the invention is considered to be new within the meaning of Article 14, paragraph 1, if the invention is not substantially different from the state of the art when the European application is filed.'

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In contrast to the Preliminary Draft, that wording did not contain a precise definition of inventive level but rather circumscribed it. It sought to provide a compromise between the differing standpoints of the delegations and to make concessions to those who feared that the concept of inventive level was too subjective.

Mr. Roscioni emphasised that the new proposal had the advantage over the Nordic proposal of not confusing novelty and inventive level. As a gloss on the words 'if the invention is not substantially different from the state of the art', he proposed adding at the end of the Article the words: 'that is to say that the invention is not obvious from the state of the art'.

Mr. van Benthem, on the other hand, was worried that the Chairman's new proposal might make the concept of inventive level stricter and he suggested going back to Article 16 as worded in the Preliminary Draft.

Mr. Fressonnet said that in the French translation of the Chairman's new proposal, rather than the words 'si l'invention ne diffère pas essentiellement de l'état de la technique', the following wording should be used: 'si l'invention ne diffère pas notablement (ou de façon appréciable) de l'état de la technique'. That wording was more flexible and closer to the German text.

He further proposed another compromise solution for Article 16. That Article opened with a general phrase alluding to inventive level. It continued something like this: 'A European patent shall not be granted even where the invention is considered to be new under Article 14, paragraph 1, if the invention does not involve an inventive step, that is to say, if it does not differ considerably from the state of the art and if it is obvious for a man skilled in the art'. The requirements following the words 'that is to say' must not be cumulative.

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The Chairman considered Mr. Fressonnet's proposal a good compromise solution and instructed the Drafting Committee to submit to the Working Party a text worded accordingly.

Agreeing with Mr. Lannoy, the Chairman said that there would be no point in trying to define the concept of inventive step. Mention of the criteria would be enough.

In reply to a question from Mr. Fressonnet, the Chairman agreed that the term 'inventive step' could be omitted from the title of Article 16. He suggested that the text of that Article become paragraph 4 of Article 14 of the Preliminary Draft and begin with the words 'a new invention shall not be patentable ...'.

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Resumption of the discussion on Article 15 (a) of the Preliminary Draft

The Chairman recalled that discussion on disclosure at an international exhibition had been postponed at the meeting on 19 April to enable the delegations to consider the text of the 1928 Paris Convention on international exhibitions.

Before opening the discussion, he reminded the Working Party that in accordance with the Co-ordinating Committee's decisions, it had decided to include voluntarily the non-prejudicial disclosure provided for in Article 11 of the Paris Convention for the Protection of Industrial Property, which referred to international exhibitions without defining them.

The Chairman's proposal covered inventions exhibited at officially organised international exhibitions and private international exhibitions accorded official recognition.

Mr. De Reuse suggested that they should merely refer to the definition of international exhibitions given in Article 1 of the 1928 Paris Convention on international exhibitions. That definition was confined to a small number of exhibitions, to which foreign countries were invited through diplomatic channels and which were not of a periodic nature. The restriction was necessary because, with a text as vague as that of Article 11 of the Paris Convention for the Protection of Industrial Property, there was a real danger that exhibitors might find their priority rights refused in some countries.

Mr. De Muyser shared Mr. De Reuse's fears and expressed reservations regarding Article 15(a).

Mr. Pfanner on the other hand thought that it would be contrary to the spirit of Article 11 of the Paris Convention for the Protection of Industrial Property to refer to Article 1 of the 1928 Paris Convention on international exhibitions because the latter Article 1 was too restrictive. He was in favour of more uniform and wider protection for disclosure at international exhibitions.

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Mr. Fressonnet was less concerned with numbers than with certainty. For the inventor it was of prime importance to know for certain what exhibitions were protected.

The Chairman thought they would have to look for a compromise solution. In the meantime, the current text of Article 15(a) would be retained in brackets.

He hoped that the discussions to be held on the matter the following week between the experts of the Council of Europe would clear up the problem. He further asked the French delegation to draw up by 15 June a list of exhibitions protected not only by the 1928 Paris Convention on international exhibitions itself but also by the first paragraph of the Annexed Protocol with particular reference to fairs.

Finally, the Chairman considered that a compromise could be reached on the basis of his proposal confined to the small number of official exhibitions and officially recognised exhibitions, e.g. by making such recognition a matter for a joint body.

Examination of Part I of the Preliminary Draft Convention (Articles 11 to 29) was thus concluded. The Chairman noted that only Articles 15 and 29 were being held over with all the others adopted.

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Examination of the texts drawn up by the Drafting Committee

In reply to a question from Mr. De Muyser, the Chairman stated that the texts of the Articles would be transmitted to the Co-ordinating Committee with a report setting out the grounds for the Working Party's decisions, without expressly mentioning the nationality of the delegations.

He said that the titles above each Article were merely a working guide. The Co-ordinating Committee would decide whether they were to be retained in the final text of the Convention.

At the Chairman's request, Mr. van Benthem, Chairman of the Drafting Committee, introduced the discussion on the new texts submitted to the Working Party.

Section 2

The French title of Section 2 was 'Droit des brevets'.

Article 11

The Chairman explained that Article 11 summarised the essential requirements for an invention to be patentable. There was no mention of inventive step. When examining the wording of Article 16, they would have to decide whether that criterion should be mentioned in Article 11. Subject to that reservation, the wording of Article 11 was adopted.

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Article 12

The text put forward contained two variants. The first variant made no reference to 'ordre public'. The second did, mentioning specifically 'fundamental principles of ordre public'. That abstract expression had been chosen deliberately to emphasise that an invention contrary to a national law would not necessarily be contrary to 'ordre public' within the meaning of the Convention.

The Working Party approved the text on morality and went on to discuss the exception for 'ordre public'.

The phrase 'the fundamental principles of ordre public' was considered tautologous since the concept of 'ordre public' was essentially based on fundamental principles.

After discussing that problem, the Working Party endorsed Mr. Fressonnet's proposal incorporating the following new wording for sub-paragraph (b) of the second variant:

'(to the fundamental principles) of ordre public; the fact that a legal provision prohibits the exploitation of an invention shall not be decisive for the application of this Article'.

Regarding point 2 of the second variant, Mr. De Reuse criticised the term 'les nouveautés végétales'; he preferred 'les nouvelles obtentions végétales'. He thought that the term 'nouvelles espèces animales' would not cover any new animal breeds that were produced.

The Working Party decided to wait and see what terminology would shortly be adopted in Paris at the International Conference on the Protection of New Varieties of Plants before changing those terms.

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It further agreed to submit the whole of point 2 to specialists to check that the terms used were in accordance with the wishes of the drafters, particularly regarding the meaning of the words 'purely biological processes'.

After discussing the second paragraph of point 2 of the second variant, the Working Party decided to delete it and incorporate it in the first paragraph which would be worded as follows:

2. 'New plant varieties or new animal species and purely biological processes for producing them'.

The German text was to be adapted to the French text with the word 'Erfindungen' (inventions) in particular being deleted.

The new version of Article 12 was adopted subject to the opinion of the experts on paragraph 2 of the second variant.

The meeting was adjourned at 12.30 hrs. and resumed at 15.00 hrs.

Article 13

Mr. De Muyser and Mr. De Reuse asked whether the reference to the manufacture or use of the subject-matter of an invention was enough to cover all possible applications.

The Chairman, supported by Mr. Fressonnet, explained that the subject-matter of an invention could also be a new application of a known substance obtained by a process already used. The implementation of a new application constituted a use of the subject-matter of the invention. He therefore felt that the wording of Article 13 covered all possible eventualities. A corresponding explanation would be given in the report sent with the proposed texts to the Co-ordinating Committee.

The new text of Article 13 was adopted.

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Article 14, paragraph 1---

The text of paragraph 1 of Article 14 was adopted.

Article 14, paragraph 2---

The Chairman queried whether the reference date for determining the state of the art should not be the day preceding the date of filing of the application rather than the date of filing itself.

A number of delegations suggested that the time at which the application was filed should be the criterion.

Mr. van Benthem, supported by the Chairman, explained that the adoption of such a solution would cause almost insurmountable problems of evidence and account would have to be taken of all sorts of disclosure, such as conferences, articles in journals etc.

The Working Party adopted paragraph 2 taking account of the Chairman's proposal.

Article 14, paragraph 3---

The Working Party first discussed the consequences of delay in publishing a prior patent, resulting in a patent being granted for a subsequent application in the meantime.

The Chairman explained that such a situation would only arise in practice under the European patent grant procedure for secret patents. Once the secrecy obligation was lifted, the proprietor of such a patent would have to bring revocation proceedings against the proprietor of the patent granted on a subsequent application and the latter would then be revoked. Such legal uncertainty for the proprietor of a subsequent patent was the inevitable consequence of the existence of secret patents.

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In order to leave no lacunae in the text submitted, the Working Party decided to specify that patent applications published on the same day as the prior application was filed also formed part of the state of the art.

To eliminate the risk of duplicated patents for a single invention if two applications were filed by two different applicants on the same day, the Working Party endorsed a proposal by Mr. Pfanner that paragraph 3 be supplemented by a provision that in such cases the time of filing would be decisive.

The new text of Article 14 was adopted taking account of the amendments made during the discussions.

Article 15

Drafting of the whole of this Article was deferred.

Article 16

Article 16 was adopted by the Working Party. It wanted Article 11, which listed the essential conditions for patentability, to mention inventive step. The words "and involving inventive step" would be inserted at the end of Article 11.

To make Article 16 readily understood, the text as submitted, including the reference to Article 14, was adopted.

Article 16 was adopted by the Working Party.

As proposed by Mr. Fressonnet, the Working Party decided to re-examine the order of the Articles when it had finished drawing up the whole of the Draft Convention. It was already clear that the numbering of Articles 11 and 12 would not change, that Article 14 would become Article 13, that Article 15 (discussion of which had been deferred) would become Article 14 and the former Article 13 would become Article 16.

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LT 234/82

PATENTS WORKING PARTY

Section 6 IV/2767/61-E Brussels, 3 May 1961

CONFIDENTIAL

Proceedings of the 1st meeting of the Patents Working Party held at Brussels from 17 to 28 April 1961---

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IV/2498/1/61-E

Part I

The European Patent

Section 2

Substantive Patent Law

Article 11

Patentable Inventions

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

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Article 12

Exceptions to patentability

European patents shall not be granted in respect of :

1. 1st variant:

- inventions the exploitation of which would be contrary to morality;

2nd variant:

- inventions the exploitation of which would be contrary:

(a) to morality,

(b) [to the fundamental principles of] "ordre public"; the mere fact that a legal provision prohibits the exploitation of an invention shall not be decisive for the application of this Article.

2. - new plant varieties or new animal species and purely biological processes for producing them.

[3. The question of the exclusion of inventions kept secret for defence reasons will be reviewed later.]

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Article 13

Industrial Application

An invention shall be considered to be susceptible of industrial application if its subject-matter can be made or used in any kind of industry including agriculture [or if it lends itself in any other way to use for industrial purposes].

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Article 14

Novelty

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall comprise everything made available to the public before the date of filing of the European patent application, by means of a written or oral description, by use or in any other way.

(3) Additionally, patent applications or patent specifications published either by the European Office or by the competent authorities of one of the Contracting States on or after the date mentioned in paragraph 2 of this Article shall be considered as comprised in the state of the art, provided that such patent applications or patents are based on a priority application. If several applications are filed on the same day, the order in which they were filed shall be decisive for the application of this paragraph.

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Article 15

Non-prejudicial disclosures

A disclosure of the invention within the meaning of Article 14 shall not be taken into consideration if it occurred within six months preceding the European patent application and if it was in consequence of

(a) the display of the subject-matter of the invention either by the applicant or his legal predecessor at an official international exhibition organised by the competent authorities of a Contracting State or officially recognised as such [by a joint institution of the Contracting States], or (b) an evident abuse of knowledge of the invention to the detriment of the applicant or his legal predecessor.

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Article 16

Inventive Step

A European patent shall not be granted even where the invention is considered to be new within the meaning of Article 14, if the invention does not involve an inventive step, particularly by virtue of the fact that, for a man skilled in the art, its realisation flowed obviously from the state of the art.

Notes:

1. The Working Party agreed unanimously that the requirement of inventive step should be used as a condition for the validity of a European patent. 2. The Working Party also agreed unanimously that such a requirement should be expressed in the text of the European Convention. 3. The Working Party agreed unanimously that the requirement of inventive step in the text of the Convention should be expressed in the form set out in Article 16 above. 4. (a) The majority of the Working Party thought that evaluation of the requirement of inventive step should be a matter for the European Office during the procedure for the grant of the European patent. (b) Some members of the Working Party were in favour of a system leaving evaluation of the requirement to a judicial body after grant of the patent.

  Very strong reservations were expressed concerning that proposal by many delegations which argued that an inter partes procedure is long and onerous and would leave the European patent in a position of permanent uncertainty.

5. The majority of the Working Party expressed the opinion that even if the requirement of inventive step were not expressed in the text of the Convention, the European Patent Office could not dispense with an evaluation of that requirement during the examination procedure.

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LT 234/82

PATENTS WORKING PARTY

Section 5 IV/2767/61-E Brussels, 3 May 1961

CONFIDENTIAL

Proceedings of the 1st meeting of the Patents Working Party held at Brussels from 17 to 28 April 1961

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Discussion of Article 11 of the Preliminary Draft

The Working Party agreed with its Chairman that all questions concerning inventive level be deferred until it came to discuss Article 16.

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The Chairman asked whether it was necessary to have at the beginning of the European Convention a provision indicating which inventions were patentable.

Mr. van Benthem suggested a provision that patents would be granted for products or processes which were invented and new. Such a wording would avoid judges giving a patent a wide interpretation. It would emphasise that a patent does not protect the inventor's abstract idea but the practical implementation of that idea in certain forms susceptible of industrial application.

After lengthy discussions and taking account particularly of comments by Mr. Roscioni, Mr. Fressonnet, Mr. Pfanner and Mr. Sünner, the Working Party unanimously decided not to adopt that suggestion for the following reasons:

- there was a danger that it might restrict too narrowly the possibility of obtaining patent protection, for example for inventions in the field of nuclear physics; - it was at variance with the terms generally used, because it was the invention which was patented not a particular product or process; - finally it was not in confirmity with a draft convention drawn up by the Enlarged Bureau of the Committee of Experts of the Council of Europe.

However, the Chairman observed that account should be taken of Mr. van Benthem's suggestions when discussing the rules on interpretation of the European patent.

The Working Party instructed the Drafting Committee to make it quite clear that a European patent would be granted only on condition that the invention was susceptible of industrial application.

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Mr. De Muyser said that it would be desirable for each Article in the Convention to be accompanied by an official commentary to assist courts in interpreting the Convention uniformly.

The Chairman doubted whether it would be possible to bind courts by such a commentary which could not be ratified as a law but he felt that an explanatory commentary would certainly be of value.

The Working Party then turned to the question of whether they should define the concept of invention in terms of what was excluded in accordance with the Reimer proposal (cf. EXP/Brev. (56) 8 of the Council of Europe, page 8, Section 1, paragraph 2).

The Chairman felt that in practice national case law applied the same principles in this respect and, in any case, Mr. Reimer's proposals did not provide a clear and precise definition.

The Working Party agreed not to lay down in the European Convention any exceptions to patentability as put forward in the Reimer proposal since a negative definition would be just as difficult as a positive definition. Furthermore in the past this point had not given rise to any practical problems under national law. The Working Party did, however, accept a proposal by Mr. De Muyser that the experts draw up a commentary explaining its decisions.

The Working Party unanimously agreed that no definition of the concept of technical progress be included in the European Convention.

Discussion of Article 12 of the Preliminary Draft

As regards exceptions to patentability, the Co-ordinating Committee, with the approval of the State Secretaries, gave instructions that only inventions contrary to 'ordre public' and morality should be excluded. The Chairman proposed that inventions relating to new plant or animal varieties be excluded as well.

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After some preliminary discussion, the Working Party agreed to leave aside for the time being the problem of "ordre public" and to consider the following problems in the order given:

- Is it necessary to provide for such exceptions to patentability in the European Convention?

- What is the definition of morality? Is there a "European" definition of morality? Should national definitions be applied or is it necessary to consider what is common to them all?

- Finally, if it is agreed to use national definitions, will an invention be patentable if it is contrary to morality in only one of the Contracting States?

The Chairman adjourned the meeting at 18.00 hrs.

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PATENTS WORKING PARTY

IV/2767/61-E

Minutes of the meeting on 18 April 1961

The Chairman opened the meeting at 9.30 hrs. and re-opened discussions on Article 12 of the Preliminary Draft Convention.

The Working Party agreed to prescribe that an invention contrary to morality would not be patentable.

The Working Party recognised that there was no European definition of morality. The German delegation and the Chairman preferred to refer to national concepts. But the majority felt that if such a stance were taken, it would give too great a prominence to national concepts in the European Convention. The Working Party unanimously thought that interpretation of the concept of morality should be a matter for the European institutions. It was therefore enough to mention the concept of morality in Article 12, paragraph 1, without giving further details.

The Chairman made two reservations. First he pointed out that the European Office was liable to interpret the concept of morality in a manner at variance with a national concept, a point on which the States were particularly sensitive. Secondly, the Chairman felt that when examining the problem of revocation, the problem of revocation of a European patent in one State on the grounds that the patent was contrary to morality there would have to be considered in greater depth.

As regards 'ordre public', the Working Party investigated in what States that concept existed and how it was interpreted. It found that in the Netherlands the concept was particularly wide and the exclusion applied to an invention which

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merely contravened a single law. In all other States, apart from Germany, the "ordre public" requirement existed but had no practical importance.

Two solutions were put forward:

(1) making no mention of "ordre public" in the European Convention, or (2) mentioning "ordre public" but qualifying it with a rider that the mere fact that an invention was contrary to a national law was not sufficient for "ordre public" to be invoked.

As regards the first solution, Mr. Pfanner and Mr. Fressonnet stated that the European Office cannot be empowered to determine national "ordre public". Such a power might infringe principles of national law. It would also be difficult to define the concept properly to avoid any abuse.

Mr. Roscioni thought that the fact that "ordre public" was mentioned in all national laws was a point in favour of the second solution. The concept of "ordre public" should be qualified by a rule similar to that in Article 6 quinquies B. 3. of the Paris Convention for the Protection of Industrial Property.

The Working Party instructed the Drafting Committee to draw up two provisions on the lines of the solutions set out above for Article 12, paragraph 1.

Article 12, paragraph 2, first sub-paragraph, was approved unanimously.

Regarding processes of a technical nature for producing new vegetable or animal species (Article 12, paragraph 2, second sub-paragraph), the Netherlands delegation filed a reservation pending the results of internal discussions. The other delegations were in agreement. Mr. Pfanner stated however that a distinction had to be drawn between production by biological means and production involving external technical factors.

The sub-paragraph was transmitted to the Drafting Committee together with the Netherlands reservation.

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During the course of an in-depth discussion of Article 12, paragraph 3, the Working Party considered the following three alternatives:

1. Alternative advocated by the Chairman

To obtain a European patent, the application had always to be filed with a national body to allow national defence interests to determine, within fixed time limits, whether it had to be kept secret.

One advantage of such national screening was that it would not be necessary to set up within the European Office a committee of experts on national defence; furthermore European officials would not have to decide on secrecy and the final advantage would be that the applicant would no longer run the risk of being guilty of "treachery" under his national law.

Mr. Roscioni pointed out that such screening would compromise the possibility of establishing common filing.

2. Alternative advocated by Mr. van Benthem

The application for a European patent was filed with the national authorities which suspended proceedings if it had to be kept secret. The national authority would transmit the application to the European Office if the secrecy bar was lifted. This solution could be combined either with simultaneous filing with the national authorities and the European Office, or with filing with the European Office and transmission of a copy to the competent national authority.

The advantages of this alternative were that:

1. the European Office would not have to determine whether an invention was to be kept secret; and 2. the European application would retain its priority if the secrecy requirement was lifted after perhaps a very short interval.

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3. Alternative advocated by Mr. Lannoy

The application could be filed with the European Office but it was for national legislation to require that inventions possibly concerning national defence be submitted to national authorities. That solution was implicit in the wording of Article 12, paragraph 3, which would be superfluous if the European Office could never decide whether an invention was to be kept secret.

The Working Party decided to leave the question open. But the wording of Article 12, paragraph 3, was retained for the time being to draw attention to the problem.

The Working Party instructed its Chairman to examine the matter in depth and to submit a study on the matter at a later date.

The Chairman explained the approach he intended to adopt. The ideal solution to avoid the above-mentioned drawbacks would be not to allow secret patents to come before the European Office. To that end there should be national screening. It seemed unnecessary for the Convention to require Member States to provide for such a procedure. The problem could be resolved by national legislation.

The meeting was adjourned at 12.30 hrs. and resumed at 15.15 hrs.

Discussion of Article 13 of the Preliminary Draft

The delegations approved the content of Article 13. However the Netherlands delegation filed a reservation concerning technical processes in agriculture.

The Chairman pointed out that it would be difficult to exclude inventions concerning agriculture from patentability under the European Convention because of the opposition of a single State. If the Netherlands reservation was not

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withdrawn, they would have to consider a special provision that protection would not be effective in that State.

Mr. Fressonnet asked whether it would not be possible to dispense with Article 13 by suitably amending Article 11.

The Chairman replied that the aim of Article 13 was to avoid any restrictive interpretation of the industrial nature of patentable inventions.

Mr. De Muyser argued that in the expression 'for industrial or agricultural purposes', the word 'agricultural' placed next to the word 'industrial' effectively restricted the sense of 'industrial', since the industrial application of an invention could relate to other human activities.

In response to this observation, the Working Party instructed the Drafting Committee to find a formulation allowing as wide an interpretation as possible. In view of the importance of agriculture, it would be appropriate to mention it by way of example in the text using the adverb 'particularly'.

Mr. van Benthem was afraid that the words 'in any other way' placed too great a stress on the industrial nature and underplayed the need for practical implementation of the invention. The expression could lead to patents being granted for inventions not susceptible of application.

The Chairman decided to leave resolution of that question until later.

Discussion of Article 14 of the Preliminary Draft

The Chairman pointed out that the Co-ordinating Committee had given specific instructions that the concept of absolute novelty be used.

There were two variants to Article 14.

The first (Reimer draft) was based on the criterion of the state of the art. The second, based on the Nordic draft, provided for a more general criterion.

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The Working Party agreed on a combination of the two variants using the criterion of the state of the art but with the list in the Reimer draft replaced by a more general definition as in the Nordic draft.

The Working Party then examined the question of the best wording to express the concept of absolute novelty. Discussion was focussed on the terms "rendered public" and "generally available". In order to avoid any risk of a restrictive interpretation, the Working Party decided to adopt the wording "available to the public". The word "available" emphasised the possibility of taking note of the invention. The word "public" was less broad than the term "generally" /"å tous" in French/ and expressed the idea that it was enough for the invention to be available to an unrestricted number of persons for it to lose its novelty.

Replying to Mr. Roscioni, the Chairman stated that an invention was only disclosed if, by virtue of the disclosure, a person skilled in the art could carry out the invention. It did not seem necessary for this principle to be expressly stated in the Convention. If the matter made available to the public did not allow the invention to be carried out, the invention remained novel.

A suggestion by Mr. De Muyser that the duration of the effects of oral disclosure be limited was rejected by the Working Party on the grounds that what had once been made available to the public could never again become secret. Provision of evidence was the key issue here.

The Working Party instructed the Drafting Committee to draw up the text of paragraphs 1 and 2 of Article 14 in accordance with the results of the discussions.

Finally, the Working Party turned to the question of prior rights in Article 14, paragraph 3.

The Chairman explained the different principles of the Reimer draft and the Nordic draft.

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Under the Reimer draft, account had to be taken of the prior application in its entirety in evaluating the novelty of the more recent application. The prior application was treated as having been published on the day the more recent application was filed.

The Nordic draft provided that the evaluation of the novelty of the more recent application had to take account only of those elements of the prior application which had been protected by the grant of a patent as a result of the prior application. The aim of this system was to prevent the grant of two patents for a single invention.

The Chairman pointed out that the two solutions would have different consequences for the practical work of the European Patent Office.

Applying the first solution, the task of the Office would merely be to compare all the elements of the prior application with the more recent application. Applying the second solution, on the other hand, the Office would, in addition, have to examine whether elements of the prior application were to be found in the elements of the patent resulting from the prior application, a factor which would substantially complicate its task.

The Chairman adjourned the meeting at 18.00 hrs.

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