Documents-1960-1965 : art. 307662 /en

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• Item Number : 307662
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PATENTS WORKING PARTY

LT 234/82

Section 4 3076/IV/62-E

Orig.: French

Brussels, 22 May 1962

CONFIDENTIAL

Proceedings of the 5th meeting of the Patents Working Party held at Brussels from 2 to 18 April 1962

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Discussion of Article 14, paragraph 3

The French and German delegation submitted proposals regarding this provision to the Working Party.

The Chairman explained that the rule in paragraph 3 could have very harsh practical consequences. If, for example, a first application had been filed in Germany, it formed part of the prior art vis-à-vis a subsequent application to the European Office.

Under the German system, it would be possible for the first application not to be published in Germany until after examination of the provisional European patent based on the second application had begun. It was possible that the European Office might confirm the European patent without knowing of the German publication. Nonetheless the prior German application would constitute grounds for revoking the European patent under paragraph 3. To counter that danger a prudent applicant would simultaneously file applications for a European patent and coexistent national patents. Then if prior national applications existed, he would lose only the national patent of the State in

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question and the European patent while retaining the other five national patents. Clearly such a solution was prejudicial to the European patent since it would encourage applicants to take out national patents as well.

Mr. Fressonnet endorsed the Chairman's comments. He stressed that the aim of the French proposal was to avoid having European patents placed in a worse position than national patents. Consideration might be given to extending the blocking effect of a national application beyond the frontiers of that State to the whole of the territory of the Contracting States.

Mr. Roscioni largely shared the views of the previous speakers. But he felt obliged to point out that in Italy a fairly serious problem existed because, according to a decision of the Court of Cassation, a prior application in any country whatsoever was a bar to the grant of an Italian patent.

The Working Party decided to continue the discussion the following day.

The meeting was adjourned at 18.00 hrs.

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PATENTS WORKING PARTY

Meeting from 2 to 19 April 1962

Minutes of the meeting on 14 April 1962

Discussion of Article 14 of the Preliminary Draft (continued)

The Chairman opened the meeting at 09.30 hrs.

The Working Party continued its discussions on paragraph 3 of Article 14 and the French and German proposals. The latter sought to restrict the territorial scope of European patents by excluding any effects on the territory of a State where prior rights existed.$^{(1)}$

The Chairman stated that under Article 14(3), a European patent would be void for the whole territory if a prior national right existed resulting from a filing prior to that of the European patent application even if it was not public at the time the latter was filed. That position was more unfavourable for an inventor than if he had applied for six national patents. There was a danger of the European patent becoming less attractive.

Replying to Mr. Roscioni, the Chairman reiterated the aim of Article 14(3). The article was based on a fiction. It incorporated in the state of the art something that did not exist when the European application was filed in order to avoid a check on whether applications are identical in the course of the European procedure.

(1) Text of the French proposal: 'However, if in one of the Contracting States a third party has been granted for the whole or part of the invention which is the subject of a European patent, a national patent not yet published on the priority date of the European patent but with an earlier priority date, the effects of the European patent shall not extend, insofar as the invention is the same, to the territory of the State in question.'

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Mr. Fressonnet, supported by Mr. Roscioni, pointed out that the effect of Article 14(3) was to make the European filing (second filing) void although the applicant could not have known of the first filing. In view of that he felt that inventors would prefer to file six national applications rather than a European application. He therefore proposed that the paragraph be deleted.

The Chairman pointed out that the European Office could never be absolutely certain of recording the existence of all prior national rights during the examination procedure. Two solutions could be envisaged. First where prior national rights existed, the European patent could be revoked following proceedings brought before a national court. Secondly, the Convention could provide that in such a case the European patent had no effect on the territory of the State in which prior rights existed.

Mr. Fressonnet and Mr. Pfanner advocated the second solution on the lines of the French and German proposals.

Mr. van Benthem wondered whether there wasn't a third possibility. The European Office itself could rule on the validity. The advantage of that solution would be that the decision would have universal effect.

The Chairman resumed consideration of the two possible solutions. First, if the European patent was granted without taking account of a prior right, the patent had no effect in the country where that prior right existed. Consequently

Text of the German proposal: Article 20a - Prior national rights

(1) A European patent cannot be relied on in a Contracting State where a national patent with the same subject-matter exists or has existed if the national patent is based on an application which precedes that for the European patent but which was only published by the competent national authority on or after the date mentioned in Article 14, paragraph 2. (2) Where, in the case referred to in paragraph 1, a national application has been filed at the same time as a European patent application, the latter shall be presumed to have been filed later unless the proprietor of the European patent can show that the application was made by the same inventor.

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where disputes arose, national courts would have to check on the existence of prior rights and their scope vis-à-vis the European patent. Furthermore the judgment would only be effective inter partes. The possibility would also exist of contradictory judgments. If Article 14(3) was not amended, the proprietor of the prior right could have the European patent revoked and the decision would have universal affect.

Secondly, in the case of territorially restricted revocation, the question arose of whether a national or a European body should rule on the revocation. The Chairman would prefer a European body.

In cases of partial revocation it would be necessary to modify the content of the patent. It was undesirable for such modification to be carried out by national bodies. Moreover the principle hitherto had been that national courts did not rule on the validity of European patents.

Mr. Pfanner, supported by Mr. Fressonnet, argued that the European body should not rule on the revocation of European patents where prior rights existed. In cases of partial revocation, the European Office would still have to examine whether the part that had not been revoked still constituted an invention. If so, its content would have to be reshaped. Two European patents with the same number would then exist, the first valid in five countries and the other in one country for example. That was a source of confusion that had to be avoided.

The Chairman recognised the force of that argument. After further discussion, the Working Party opted for national courts having jurisdiction and endorsed the principle of the French and German proposals. The Drafting Committee would decide whether a special article was required or whether Article 20 could be expanded as in the French proposal.

The Working Party decided to delete from Article 14(3) the words: 'or the competent authority of a Contracting State'.

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The Chairman said that, having deleted those words from Article 14(3), they were left with two options: either the Office would take account of no national prior rights or it would take account only of those national prior rights of which it was aware.

Mr. van Benthem considered a third possibility. The Office would merely have to notify the person concerned of prior national rights of which it was aware.

The Working Party endorsed Mr. van Benthem's proposal.

The Chairman submitted to the Working Party another solution regarding prior national rights. It was feasible in view of the fact that, in its discussion of Article 171, the Working Party had decided to allow transition to the national procedure not only up to the time the provisional European patent was granted but up to the time of the final confirmation of that patent. The following solution might possibly be the most effective: Article 14(3) would not be altered. In other words, prior national rights would also be included in the state of the art by means of the fiction under Article 14(3). In that way prior national rights would have the same affect as lack of novelty. Those prior national rights might not be referred to in the novelty opinion of the IIB at The Hague since the European Office would receive that opinion at a fairly early stage. But it can be assumed that the Examining Division of the European Office would be aware of prior national rights in 90% of cases once it began examination of the provisional patent, that is generally within 5 to 7 years after filing. The Examining Division would then be able to rely on the prior national rights against the applicant in the course of the examination procedure. The applicant could, pursuant to Article 171, file an application for a national patent in those Contracting States where no prior rights existed. For the relatively few cases in which prior rights had not come to the attention of the Examining Division in time and where the European patent was confirmed in ignorance of those rights, the solution could be to apply Article 20a excluding prior national rights as grounds for revocation. It would be enough to limit the scope of Article 20a to the definitive European patent and to expand Article 122.

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Section 2

The Chairman pointed out that the wording of Articles 11 to 18 had strongly influenced decisions taken by the Council of Europe on a draft convention on the harmonisation of patent law. They should therefore not alter the wording of those articles too much as otherwise they would have to inform the Council of Europe, especially since the text agreed at Strasbourg had been submitted to the Governments.

The Working Party decided to endeavour not to make any changes deviating from the text agreed in the Council of Europe.

Article 11

Article 11 was passed to the Drafting Committee.

Article 12

The Chairman was in favour of the second variant. The Working Party agreed. The first variant was deleted.

Mr. Fressonnet pointed out that the French draft concerned publication of an invention contrary to morality.

The Chairman raised no objection to that addition. The text of Article 12 would therefore refer to exploitation or publication.

Regarding the term 'fundamental principles of ordre public', Mr. Fressonnet, supported by Mr. van Benthem, explained that that expression was intended

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to prevent the Office from granting patents for inventions that were clearly contrary to "ordre public" but without requiring the Office to know in detail all the provisions of national law on "ordre public".

The Working Party decided to delete the brackets around the term "to the fundamental principles of".

The second variant of Article 12 was referred to the Drafting Committee.

The meeting adjourned at 12.45 hrs. and resumed at 15.00 hrs.

Continuation of the second reading of Article 12

Turning to sub-paragraph 2, the Working Party decided to adopt the wording used in Article 2(2) of the draft Council of Europe Convention.

The Chairman then proposed that sub-paragraph 3 be deleted but that there be incorporated in Article 62 an exception from the national authorities' obligation to transmit to the European Patent Office European applications filed with them if the subject-matter of the application had to be kept secret for national defence reasons.

The Working Party adopted that proposal and instructed the Drafting Committee to determine whether Contracting States should be obliged to convert any European application for which the patent had to be kept secret into a national application with the same priority. The Drafting Committee would report to the Working Party at the subsequent meeting in Munich.

Article 13

The Netherlands delegation first withdrew its reservation about Article 13.

After specifically discussing pharmaceutical products, the Working Party concluded that each Contracting State could cause compulsory licences to be granted for a European patent protecting such a product if public interest so required. Such licences would be limited to the territory of the State concerned. In that way

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national law on pharmaceutical products would not be limited by European law.

Mr. Fressonnet reserved his views on this matter without wishing to go back on the principle set out in the European Convention.

The Working Party decided to delete the words in brackets in Article 13.

To take account of Mr. Roscioni's wish to simplify the task of national judges applying the European Patent Convention and the Council of Europe Convention by harmonising the texts of the two Conventions, the Chairman envisaged expanding Article 13 by inserting in the first sentence the provision in Article 2(1) of the Council of Europe Convention and then continuing the text of Article 13 after inserting the word 'particularly'.

Mr. van Benthem, who had taken part in the drafting of the Council of Europe text, pointed out that it had not been discussed in detail. He preferred a precise wording such as that in Article 13, which could be regarded as a wide interpretation of the Council of Europe provision.

The Working Party felt that Article 2(1) of the Council of Europe text was merely a programme containing no definitions. It was therefore possible to fill in the details in that programme in the national law of the Contracting States and in the European Convention. Article 13 was in any case compatible with the Strasbourg text. The Article was adopted. The words in brackets would be deleted.

Article 14

The French delegation proposed removing mention of prior rights from paragraph 3 of Article 14 and inserting it in Article 12.

The Chairman pointed out that there were two alternative methods of dealing with

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the problem in Article 3(3) of the Strasbourg text. The solution adopted in variant (b) was to incorporate it systematically in the provisions on novelty.

Mr. van Benthem thought that the solution adopted in Article 14(3) was in fact very harsh. He wondered whether the principles laid down for patents of addition could not be extended to the relationship between a prior application and a subsequent application. The subsequent application would merely have to be new vis-à-vis the prior application but would not have to involve inventive step. In that case, the scope of Article 16 would also have to be restricted.

The Chairman's view was that firms filing successive applications for improvements to an invention could obtain patents of addition. There were obviously some disadvantages since the patent of addition expired with the main patent but he felt that they were justified since it was contrary to the public interest to grant a separate monopoly for each improvement that could have been patented from the outset.

The question raised as regards Article 28 on patents of addition of whether an inventive step should be required for such a patent was still open.

The Chairman went on to say that if the improvement was not made by the original inventor, the inventor of the improvement could not obtain a patent unless the improvement involved an inventive step vis-à-vis the main invention. If Mr. van Benthem's proposed solution were adopted for all prior rights, there was a grave danger of infringing the principles laid down in Article 16.

Mr. van Benthem replied that his proposal related only to prior rights that had not yet been published and did not therefore form part of the state of the art. Furthermore, the grant of patents of addition depended on the interpretation of the concept of "improvement", which in the Netherlands, for example, was very narrow, allowing only improvements that could have been covered in sub-claims.

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It was important to remember that improvements could not always be indicated when the main application was filed where they concerned subsequent developments, for example, in a laboratory.

Mr. Pfanner reminded the Working Party that the idea underlying its formulation of Article 14 was that no-one could obtain a patent for subject-matter filed with the European Office in the description of a prior application unless the second application involved an inventive step vis-à-vis the former. He felt that there was a serious risk that the distinction drawn by Mr. van Benthem between the published prior art and that contained only in an unpublished application could lead to two patents being granted to two persons for wholly or partially identical inventions.

For that reason the German delegation would prefer to keep Article 14(3) as it stood without restricting the scope of Article 16.

Mr. Roscioni stressed that the Working Party had already discussed all these problems in depth and that on the second reading they should merely be polishing the text.

Mr. Fressonnet noted that Mr. van Benthem's proposal was on the same lines as that of the French delegation. But there was undeniably some risk of two patents being granted for the same invention.

The Chairman emphasised that the Netherlands and French proposals raised a very serious and far-reaching problem that could not be examined in depth in the time available for the second reading. He suggested that they return to that problem in Munich when the delegations had had time to prepare or after the public discussion of the whole draft. The Working Party accepted that suggestion.

Regarding paragraph 2 of Article 14, Mr. Fressonnet drew attention to the French proposal which specified that the prior art had to be made available in a manner adequate to enable a skilled person to produce the subject-matter of the publication.

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Mr. van Benthem pointed out that that proposed wording amounted to a change of substance. The condition proposed by Mr. Fressonnet was to be found in the Netherlands law and in practice it was a very strict criterion. Very often the descriptions given in patent applications were not sufficient to carry out the inventions. If the French wording were adopted, such prior applications and patents could not be regarded as forming part of the state of the art. Furthermore, there were also purely theoretical publications which could not technically be carried out directly. They were, however, still part of the state of the art.

Mr. Fressonnet said that it was not the intention of the French delegation to change the substance of Article 14(2). He therefore agreed with the majority of the Working Party.

Article 14 was adopted without any change beyond those agreed on earlier.

Article 15

All the delegations except the German delegation thought that temporary protection for exhibitions should be confined to recognised exhibitions. The Belgian delegation maintained its reservation that they should hold to the provisions of the special Convention of 1928.

The Working Party thought that the European Convention should include a provision on temporary protection for certain exhibitions in order to comply with the obligations under Article 11 of the Paris Convention for the Protection of Industrial Property. But clearly only joint measures by all the countries of the Paris Union could afford proper protection. Any protection afforded by the European Convention might well deceive inventors by giving them a false sense of security which would be non-existent if they went on to file applications in non-Contracting States.

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It therefore seemed appropriate to give only very limited protection. Since the French proposal entailed some difficulties regarding the European Office's procedure, they should adopt the provision figuring in the Council of Europe text. The Working Party therefore decided to delete the brackets from around Article 15 and to include in sub-paragraph (a) the text of the corresponding provision in the Council of Europe draft.

The meeting adjourned at 18.00 hrs.

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Provisional Minutes of the meeting on 18 April 1962

The Chairman reopened the meeting at 09.45 hrs. He stated that the minutes as from 13 April 1962 would be deemed to have been approved if no requests for corrections were received by the Secretariat before 28 April 1962. The time limit for the last minutes, which were to be sent to delegates after the meeting, would be extended accordingly.

Article 15 (continued)

The Chairman pointed out that sub-paragraph (b) was in conformity with the corresponding provisions of the Strasbourg draft.

Mr. van Benthem wondered whether they should not extend protection for exhibition at an international exhibition so as to grant a priority right.

After some discussion, the Working Party decided that the Drafting Committee should re-examine the text of Article 15 in the light of the corresponding article of the Strasbourg draft.

It would also draw up a footnote that some of the delegations would approve the text of Article 15 only if a similar rule was accepted within the Council of Europe.

The text could be revised after the September meeting of the Council of Europe in Strasbourg.

Article 15 was referred to the Drafting Committee.

Article 16

Mr. Fressonnet proposed that they adopt the wording of the Strasbourg draft (Article 4).

The Chairman noted that that text did not modify the principles of Article 16 but merely gave the Officer wider powers of interpretation.

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The Working Party approved the proposal but Mr. van Benthem and Mr. Pfanner regretted the disappearance of the term "person skilled in the art".

The Chairman replied that that concept would certainly be taken into account in the Office's case-law.

The comments on Article 16 were deleted. They will appear in the statement of grounds.

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PATENTS WORKING PARTY

LT 234/82

Section 4 3076/IV/62-E

Orig.: French

Brussels, 22 May 1962

CONFIDENTIAL

Proceedings of the 5th meeting of the Patents Working Party held at Brussels from 2 to 18 April 1962

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Discussion of Article 14, paragraph 3

The French and German delegation submitted proposals regarding this provision to the Working Party.

The Chairman explained that the rule in paragraph 3 could have very harsh practical consequences. If, for example, a first application had been filed in Germany, it formed part of the prior art vis-à-vis a subsequent application to the European Office.

Under the German system, it would be possible for the first application not to be published in Germany until after examination of the provisional European patent based on the second application had begun. It was possible that the European Office might confirm the European patent without knowing of the German publication. Nonetheless the prior German application would constitute grounds for revoking the European patent under paragraph 3. To counter that danger a prudent applicant would simultaneously file applications for a European patent and coexistent national patents. Then if prior national applications existed, he would lose only the national patent of the State in

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question and the European patent while retaining the other five national patents. Clearly such a solution was prejudicial to the European patent since it would encourage applicants to take out national patents as well.

Mr. Fressonnet endorsed the Chairman's comments. He stressed that the aim of the French proposal was to avoid having European patents placed in a worse position than national patents. Consideration might be given to extending the blocking effect of a national application beyond the frontiers of that State to the whole of the territory of the Contracting States.

Mr. Roscioni largely shared the views of the previous speakers. But he felt obliged to point out that in Italy a fairly serious problem existed because, according to a decision of the Court of Cassation, a prior application in any country whatsoever was a bar to the grant of an Italian patent.

The Working Party decided to continue the discussion the following day.

The meeting was adjourned at 18.00 hrs.

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PATENTS WORKING PARTY

Meeting from 2 to 19 April 1962

Minutes of the meeting on 14 April 1962

Discussion of Article 14 of the Preliminary Draft (continued)

The Chairman opened the meeting at 09.30 hrs.

The Working Party continued its discussions on paragraph 3 of Article 14 and the French and German proposals. The latter sought to restrict the territorial scope of European patents by excluding any effects on the territory of a State where prior rights existed.$^{(1)}$

The Chairman stated that under Article 14(3), a European patent would be void for the whole territory if a prior national right existed resulting from a filing prior to that of the European patent application even if it was not public at the time the latter was filed. That position was more unfavourable for an inventor than if he had applied for six national patents. There was a danger of the European patent becoming less attractive.

Replying to Mr. Roscioni, the Chairman reiterated the aim of Article 14(3). The article was based on a fiction. It incorporated in the state of the art something that did not exist when the European application was filed in order to avoid a check on whether applications are identical in the course of the European procedure.

(1) Text of the French proposal: 'However, if in one of the Contracting States a third party has been granted for the whole or part of the invention which is the subject of a European patent, a national patent not yet published on the priority date of the European patent but with an earlier priority date, the effects of the European patent shall not extend, insofar as the invention is the same, to the territory of the State in question.'

Text of the German proposal: see footnote on following page.

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Mr. Fressonnet, supported by Mr. Roscioni, pointed out that the effect of Article 14(3) was to make the European filing (second filing) void although the applicant could not have known of the first filing. In view of that he felt that inventors would prefer to file six national applications rather than a European application. He therefore proposed that the paragraph be deleted.

The Chairman pointed out that the European Office could never be absolutely certain of recording the existence of all prior national rights during the examination procedure. Two solutions could be envisaged. First where prior national rights existed, the European patent could be revoked following proceedings brought before a national court. Secondly, the Convention could provide that in such a case the European patent had no effect on the territory of the State in which prior rights existed.

Mr. Fressonnet and Mr. Pfanner advocated the second solution on the lines of the French and German proposals.

Mr. van Benthem wondered whether there wasn't a third possibility. The European Office itself could rule on the validity. The advantage of that solution would be that the decision would have universal effect.

The Chairman resumed consideration of the two possible solutions. First, if the European patent was granted without taking account of a prior right, the patent had no effect in the country where that prior right existed. Consequently

Text of the German proposal: Article 20a - Prior national rights

(1) A European patent cannot be relied on in a Contracting State where a national patent with the same subject-matter exists or has existed if the national patent is based on an application which precedes that for the European patent but which was only published by the competent national authority on or after the date mentioned in Article 14, paragraph 2.

(2) Where, in the case referred to in paragraph 1, a national application has been filed at the same time as a European patent application, the latter shall be presumed to have been filed later unless the proprietor of the European patent can show that the application was made by the same inventor.

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where disputes arose, national courts would have to check on the existence of prior rights and their scope vis-à-vis the European patent. Furthermore the judgment would only be effective inter partes. The possibility would also exist of contradictory judgments. If Article 14(3) was not amended, the proprietor of the prior right could have the European patent revoked and the decision would have universal affect.

Secondly, in the case of territorially restricted revocation, the question arose of whether a national or a European body should rule on the revocation. The Chairman would prefer a European body.

In cases of partial revocation it would be necessary to modify the content of the patent. It was undesirable for such modification to be carried out by national bodies. Moreover the principle hitherto had been that national courts did not rule on the validity of European patents.

Mr. Pfanner, supported by Mr. Fressonnet, argued that the European body should not rule on the revocation of European patents where prior rights existed. In cases of partial revocation, the European Office would still have to examine whether the part that had not been revoked still constituted an invention. If so, its content would have to be reshaped. Two European patents with the same number would then exist, the first valid in five countries and the other in one country for example. That was a source of confusion that had to be avoided.

The Chairman recognised the force of that argument. After further discussion, the Working Party opted for national courts having jurisdiction and endorsed the principle of the French and German proposals. The Drafting Committee would decide whether a special article was required or whether Article 20 could be expanded as in the French proposal.

The Working Party decided to delete from Article 14(3) the words: 'or the competent authority of a Contracting State'.

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The Chairman said that, having deleted those words from Article 14(3), they were left with two options: either the Office would take account of no national prior rights or it would take account only of those national prior rights of which it was aware.

Mr. van Benthem considered a third possibility. The Office would merely have to notify the person concerned of prior national rights of which it was aware.

The Working Party endorsed Mr. van Benthem's proposal.

The Chairman submitted to the Working Party another solution regarding prior national rights. It was feasible in view of the fact that, in its discussion of Article 171, the Working Party had decided to allow transition to the national procedure not only up to the time the provisional European patent was granted but up to the time of the final confirmation of that patent. The following solution might possibly be the most effective: Article 14(3) would not be altered. In other words, prior national rights would also be included in the state of the art by means of the fiction under Article 14(3). In that way prior national rights would have the same affect as lack of novelty. Those prior national rights might not be referred to in the novelty opinion of the IIB at The Hague since the European Office would receive that opinion at a fairly early stage. But it can be assumed that the Examining Division of the European Office would be aware of prior national rights in 90% of cases once it began examination of the provisional patent, that is generally within 5 to 7 years after filing. The Examining Division would then be able to rely on the prior national rights against the applicant in the course of the examination procedure. The applicant could, pursuant to Article 171, file an application for a national patent in those Contracting States where no prior rights existed. For the relatively few cases in which prior rights had not come to the attention of the Examining Division in time and where the European patent was confirmed in ignorance of those rights, the solution could be to apply Article 20a excluding prior national rights as grounds for revocation. It would be enough to limit the scope of Article 20a to the definitive European patent and to expand Article 122.

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Section 2

The Chairman pointed out that the wording of Articles 11 to 18 had strongly influenced decisions taken by the Council of Europe on a draft convention on the harmonisation of patent law. They should therefore not alter the wording of those articles too much as otherwise they would have to inform the Council of Europe, especially since the text agreed at Strasbourg had been submitted to the Governments.

The Working Party decided to endeavour not to make any changes deviating from the text agreed in the Council of Europe.

Article 11

Article 11 was passed to the Drafting Committee.

Article 12

The Chairman was in favour of the second variant. The Working Party agreed. The first variant was deleted.

Mr. Fressonnet pointed out that the French draft concerned publication of an invention contrary to morality.

The Chairman raised no objection to that addition. The text of Article 12 would therefore refer to exploitation or publication.

Regarding the term 'fundamental principles of ordre public', Mr. Fressonnet, supported by Mr. van Benthem, explained that that expression was intended

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to prevent the Office from granting patents for inventions that were clearly contrary to "ordre public" but without requiring the Office to know in detail all the provisions of national law on "ordre public".

The Working Party decided to delete the brackets around the term "to the fundamental principles of".

The second variant of Article 12 was referred to the Drafting Committee.

The meeting adjourned at 12.45 hrs. and resumed at 15.00 hrs.

Continuation of the second reading of Article 12

Turning to sub-paragraph 2, the Working Party decided to adopt the wording used in Article 2(2) of the draft Council of Europe Convention.

The Chairman then proposed that sub-paragraph 3 be deleted but that there be incorporated in Article 62 an exception from the national authorities' obligation to transmit to the European Patent Office European applications filed with them if the subject-matter of the application had to be kept secret for national defence reasons.

The Working Party adopted that proposal and instructed the Drafting Committee to determine whether Contracting States should be obliged to convert any European application for which the patent had to be kept secret into a national application with the same priority. The Drafting Committee would report to the Working Party at the subsequent meeting in Munich.

Article 13

The Netherlands delegation first withdrew its reservation about Article 13.

After specifically discussing pharmaceutical products, the Working Party concluded that each Contracting State could cause compulsory licences to be granted for a European patent protecting such a product if public interest so required. Such licences would be limited to the territory of the State concerned. In that way

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national law on pharmaceutical products would not be limited by European law.

Mr. Fressonnet reserved his views on this matter without wishing to go back on the principle set out in the European Convention.

The Working Party decided to delete the words in brackets in Article 13.

To take account of Mr. Roscioni's wish to simplify the task of national judges applying the European Patent Convention and the Council of Europe Convention by harmonising the texts of the two Conventions, the Chairman envisaged expanding Article 13 by inserting in the first sentence the provision in Article 2(1) of the Council of Europe Convention and then continuing the text of Article 13 after inserting the word 'particularly'.

Mr. van Benthem, who had taken part in the drafting of the Council of Europe text, pointed out that it had not been discussed in detail. He preferred a precise wording such as that in Article 13, which could be regarded as a wide interpretation of the Council of Europe provision.

The Working Party felt that Article 2(1) of the Council of Europe text was merely a programme containing no definitions. It was therefore possible to fill in the details in that programme in the national law of the Contracting States and in the European Convention. Article 13 was in any case compatible with the Strasbourg text. The Article was adopted. The words in brackets would be deleted.

Article 14

The French delegation proposed removing mention of prior rights from paragraph 3 of Article 14 and inserting it in Article 12.

The Chairman pointed out that there were two alternative methods of dealing with

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the problem in Article 3(3) of the Strasbourg text. The solution adopted in variant (b) was to incorporate it systematically in the provisions on novelty.

Mr. van Benthem thought that the solution adopted in Article 14(3) was in fact very harsh. He wondered whether the principles laid down for patents of addition could not be extended to the relationship between a prior application and a subsequent application. The subsequent application would merely have to be new vis-à-vis the prior application but would not have to involve inventive step. In that case, the scope of Article 16 would also have to be restricted.

The Chairman's view was that firms filing successive applications for improvements to an invention could obtain patents of addition. There were obviously some disadvantages since the patent of addition expired with the main patent but he felt that they were justified since it was contrary to the public interest to grant a separate monopoly for each improvement that could have been patented from the outset.

The question raised as regards Article 28 on patents of addition of whether an inventive step should be required for such a patent was still open.

The Chairman went on to say that if the improvement was not made by the original inventor, the inventor of the improvement could not obtain a patent unless the improvement involved an inventive step vis-à-vis the main invention. If Mr. van Benthem's proposed solution were adopted for all prior rights, there was a grave danger of infringing the principles laid down in Article 16.

Mr. van Benthem replied that his proposal related only to prior rights that had not yet been published and did not therefore form part of the state of the art. Furthermore, the grant of patents of addition depended on the interpretation of the concept of "improvement", which in the Netherlands, for example, was very narrow, allowing only improvements that could have been covered in sub-claims.

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It was important to remember that improvements could not always be indicated when the main application was filed where they concerned subsequent developments, for example, in a laboratory.

Mr. Pfanner reminded the Working Party that the idea underlying its formulation of Article 14 was that no-one could obtain a patent for subject-matter filed with the European Office in the description of a prior application unless the second application involved an inventive step vis-à-vis the former. He felt that there was a serious risk that the distinction drawn by Mr. van Benthem between the published prior art and that contained only in an unpublished application could lead to two patents being granted to two persons for wholly or partially identical inventions.

For that reason the German delegation would prefer to keep Article 14(3) as it stood without restricting the scope of Article 16.

Mr. Roscioni stressed that the Working Party had already discussed all these problems in depth and that on the second reading they should merely be polishing the text.

Mr. Fressonnet noted that Mr. van Benthem's proposal was on the same lines as that of the French delegation. But there was undeniably some risk of two patents being granted for the same invention.

The Chairman emphasised that the Netherlands and French proposals raised a very serious and far-reaching problem that could not be examined in depth in the time available for the second reading. He suggested that they return to that problem in Munich when the delegations had had time to prepare or after the public discussion of the whole draft. The Working Party accepted that suggestion.

Regarding paragraph 2 of Article 14, Mr. Fressonnet drew attention to the French proposal which specified that the prior art had to be made available in a manner adequate to enable a skilled person to produce the subject-matter of the publication.

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Mr. van Benthem pointed out that that proposed wording amounted to a change of substance. The condition proposed by Mr. Fressonnet was to be found in the Netherlands law and in practice it was a very strict criterion. Very often the descriptions given in patent applications were not sufficient to carry out the inventions. If the French wording were adopted, such prior applications and patents could not be regarded as forming part of the state of the art. Furthermore, there were also purely theoretical publications which could not technically be carried out directly. They were, however, still part of the state of the art.

Mr. Fressonnet said that it was not the intention of the French delegation to change the substance of Article 14(2). He therefore agreed with the majority of the Working Party.

Article 14 was adopted without any change beyond those agreed on earlier.

Article 15

All the delegations except the German delegation thought that temporary protection for exhibitions should be confined to recognised exhibitions. The Belgian delegation maintained its reservation that they should hold to the provisions of the special Convention of 1928.

The Working Party thought that the European Convention should include a provision on temporary protection for certain exhibitions in order to comply with the obligations under Article 11 of the Paris Convention for the Protection of Industrial Property. But clearly only joint measures by all the countries of the Paris Union could afford proper protection. Any protection afforded by the European Convention might well deceive inventors by giving them a false sense of security which would be non-existent if they went on to file applications in non-Contracting States.

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It therefore seemed appropriate to give only very limited protection. Since the French proposal entailed some difficulties regarding the European Office's procedure, they should adopt the provision figuring in the Council of Europe text. The Working Party therefore decided to delete the brackets from around Article 15 and to include in sub-paragraph (a) the text of the corresponding provision in the Council of Europe draft.

The meeting adjourned at 18.00 hrs.

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Provisional Minutes of the meeting on 18 April 1962

The Chairman reopened the meeting at 09.45 hrs. He stated that the minutes as from 13 April 1962 would be deemed to have been approved if no requests for corrections were received by the Secretariat before 28 April 1962. The time limit for the last minutes, which were to be sent to delegates after the meeting, would be extended accordingly.

Article 15 (continued)

The Chairman pointed out that sub-paragraph (b) was in conformity with the corresponding provisions of the Strasbourg draft.

Mr. van Benthem wondered whether they should not extend protection for exhibition at an international exhibition so as to grant a priority right.

After some discussion, the Working Party decided that the Drafting Committee should re-examine the text of Article 15 in the light of the corresponding article of the Strasbourg draft.

It would also draw up a footnote that some of the delegations would approve the text of Article 15 only if a similar rule was accepted within the Council of Europe.

The text could be revised after the September meeting of the Council of Europe in Strasbourg.

Article 15 was referred to the Drafting Committee.

Article 16

Mr. Fressonnet proposed that they adopt the wording of the Strasbourg draft (Article 4).

The Chairman noted that that text did not modify the principles of Article 16 but merely gave the Officer wider powers of interpretation.

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The Working Party approved the proposal but Mr. van Benthem and Mr. Pfanner regretted the disappearance of the term 'person skilled in the art'.

The Chairman replied that that concept would certainly be taken into account in the Office's case-law.

The comments on Article 16 were deleted. They will appear in the statement of grounds.

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