Documents-1960-1965 : art. 908163 /en

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• Display Name : 9081-IV-63E
• Item Number : 908163
• Folder / Language : English
• Language Tag : #English
• Original PDF : Documents-1960-1965/English/Documents 1961 - 1963/IV 9081 63 E/9081-IV-63E.pdf

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[p.1]

PATENTS WORKING PARTY

LT 234/82

Section 11

9081/IV/63-E-Final

Orig.: French

Brussels, 1 December 1963

CONFIDENTIAL

Proceedings of the 10th meeting of the Patents Working Party held at Brussels from 16 to 27 September 1963---

MINUTES---

9081/IV/63-E-Final

Orig.: French

[p.2]

9081/IV/63-E-Final

- 64 -

Article 9

Mr. Roschmaier explained the views of the international associations regarding this Article and on Article 13 on inventive step. The Union of Industries of the European Communities (UNICE) proposed that Article 9 be worded as follows:

'European patents shall be granted for inventions that are new and susceptible of industrial application'. UNICE considered that inventive step should be a requirement for patentability but thought it better not to mention the term expressly since it suggested too subjective a concept.

Mr. van Benthem supported the UNICE viewpoint which was also shared by the interested circles in the Netherlands. The other members of the Working Party preferred to retain the provision in the Preliminary Draft which showed clearly the three criteria for the grant of patents: novelty, inventive step and industrial application.

Mr. Pfanner made the point that it would be inappropriate to change this article which had influenced the formulation of the Strasbourg draft at a time when the latter draft was soon to be signed.

Mr. van Benthem agreed with the majority of the Working Party. Article 9 was retained but referred to the Drafting Committee to ensure that it accorded with

9081/IV/63-E-Final

.../...

[p.3]

9081/IV/63-E-Final

- 65 -

the corresponding article of the Strasbourg draft, the wording of which seemed better.

Article 10

Mr. Froschmaier set out the views of the international associations which wanted sub-paragraph (b) to provide that the exception to patentability in that sub-paragraph should not apply to microbiological processes and the products thereof in accordance with the Strasbourg draft. He then read a note from UNICE requesting clarification at the Diplomatic Conference that the Convention allowed all conceivable objects to be patented, even those that were not eligible for national protection. He added that the United Kingdom shared the views of the international associations on microbiological processes and that Austria wanted a number of additional exceptions to patentability.

After a short discussion, the Working Party accepted the proposal on microbiological processes and referred the text in question to the Drafting Committee for harmonisation with the wording of the Strasbourg draft. UNICE's request was not approved as it was clear that the provisions in the Convention on patentability were not the same as national provisions.

Article 11

Mr. Froschmaier read the views of the international associations on paragraph 1. The International Association for the Protection of Industrial Property (AIPPI) and UNICE proposed the following wording: "An invention shall not be considered as new if it forms part of the state of the art".

The United Kingdom raised the problem of multiple priorities.

Mr. Pfanner then explained the provisions of the Scandinavian draft on novelty.

The Chairman thought that the UNICE proposal should not be adopted. The drawback was that it was expressed as a negative. It seemed to shift the burden of

9081/IV/63-E-Final

.../...

[p.4]

9081/IV/63-E-Final

- 66 -

proof. It was important to remember that it was up to the inventor to prove that the invention was new. Following Mr. van Benthem's suggestion, the Working Party considered that paragraph 1 could be brought into line with the corresponding provision in the Strasbourg draft. The paragraph was transmitted to the Drafting Committee.

AIPPI wanted formal proof to be required of the content and date of oral disclosure.

UNICE felt that a general description of an inventive idea should not destroy its novelty and proposed the following wording: "the state of the art shall be held to comprise everything made available to the public, in a manner sufficient to enable the invention to be carried out...". Finally UNION would like the term "public" to be defined.

The views of the Austrian Government were similar to those of UNION.

The Chairman summarised the problems regarding paragraph 2:

1. Additional evidence is wanted in connection with oral disclosure. 2. Further definition is wanted of the description. 3. Further definition of the word "public" is also wanted.

Regarding the first problem, the Working Party was unanimous that there was no need for specific evidence regarding oral disclosure.

The question could safely be left to the courts which were used to such evidence.

The Working Party also rejected the second suggestion. It preferred the current, more objective wording. It also rejected the third suggestion on the grounds that it would be very dangerous to give too precise a definition of "public".

Mr. Froschmaier set out the views of the international associations on paragraph 3. All but one proposed that matter disclosed in a prior patent should be treated

9081/IV/63-E-Final

.../...

[p.5]

9081/IV/63-E-Fina

- 67 -

as part of the state of the art. Furthermore, all the associations wanted the Preliminary Draft to confine itself to ruling out double protection in principle but to specify that only the content of the claims in the prior application would be retained.

UNICE proposed the following wording: "Inventions already protected by European patents with an earlier date shall not be patentable". However the German UNICE delegation preferred the fiction of paragraph 3. But it wanted the fiction to apply only to assessing the novelty of the subsequent invention. It did not want the fiction to extend to assessment of inventive step as well and therefore wished Article 13 to be retained.

Finally the Committee of National Institutes of Patent Agents (CNIPA) proposed the following wording: "Inventions for which a provisional or final European patent has been granted with an earlier priority shall not be patentable. For the purpose of this provision, inventions for which a patent has been granted shall include all the possible ways of carrying out the invention claimed described in the patent or any obvious changes to those possibilities covered by the claims".

The United Kingdom drew the Working Party's attention to the problem of multiple priorities. The Austrian Government thought that a rule simply preventing two patents being granted was preferable.

Mr. Pfanner pointed out that the Scandinavian draft was based on this Preliminary Draft Convention with the addition of a further requirement.

The Chairman said that according to the letter from Mr. Morff, the Swiss Government seemed prepared to accept paragraph 3.

The Chairman suggested that the Working Party confine its discussions to whether they should simply rule out duplicated patents or whether they should adopt the solution of paragraph 3 whereby the contents of European patent specifications published on or after the date of the subsequent European patent application were considered to comprise part of the state of the art insofar as the patents in question were based on a prior filing.

9081/IV/63-E-Final

.../...

[p.6]

9081/IV/63-E-Final

- 68 -

Mr. Pfanner was in favour of the paragraph 3 solution. He put forward various arguments. A general point was that it was undesirable to grant a monopoly to an applicant for an invention that had already been filed and published. He went on to give various practical arguments. Drawing on experience at the German Patent Office, he stressed that the European Office should be spared the heavy burden of checking that applications were identical. The task of comparing the extent of the protection under two patents would be made still more complex because of the deferred examination system.

Mr. van Benthem, however, wanted paragraph 3 amended. He thought that the unanimous objections of the interested circles could not be ignored. He supported the solution suggested by CNIPA, illustrating his arguments with the following example: a first application is for the use of a relay in a radio. A second application, filed before publication of the first, is for the same relay for a calculating machine. If the Preliminary Draft was retained, the first application would be considered as comprised in the state of the art and no patent could be granted for the application of the relay in the calculating machine. Adopting the system proposed by CNIPA on the other hand, the examiner would have to confine himself to comparing the subject-matter of the first application and of the second application and he would then be able to grant a patent for the application of the relay in the calculating machine. The subject-matter of the invention was different.

Mr. van Benthem pointed out that such a system entailed a risk of duplicate patents being granted but he thought that the risk was fairly small. He stressed particularly one advantage of this proposed solution pointing out to the Working Party that one single invention by a laboratory could lead to a number of different filings, perhaps over a span of four or five months, each one an improvement over the previous application and each ineligible for a patent of addition. Such filings would not be possible under the Preliminary Draft as it stood and that was something to be avoided.

9081/IV/63-E-Final

.../...

[p.7]

9081/IV/63-E-Final

- 69 -

Following Mr. van Benthem's remarks, Mr. Fressonnet made two comments:

(1) Mr. van Benthem had said that there were many examples of duplicated protection, particularly in the case of dependent patents. It should be noted that there was a further factor in such cases, namely inventive step.

(2) Mr. van Benthem had said that the courts could perhaps take account of factors not considered by the examiner. Consequently Mr. van Benthem's proposal gave rise to two different standards depending on whether the Examining Division or the Revocation Board had jurisdiction. Such differences caused major problems. The existence of the patent could easily be called in question again.

Mr. van Benthem replied that he had merely wanted to emphasise that under the solution he proposed, the risk of duplicated patents was not excessive and could be eliminated, if necessary, by means of revocation.

The Chairman then summarised the discussion stressing that the basic idea was that only one patent could be granted for one invention. He pointed out that duplicated patents did exist sometimes. It was not possible for the Offices to be aware of all the possible effects of a patent. This problem should not be confused with the distinct question of dependent patents.

The basis of Mr. van Benthem's proposal was that the Offices should be spared the need to check that applications were identical because that was too involved. The same idea underlay the solution in paragraph 3. But the effect of Mr. van Benthem's solution was to reduce the check on prior applications. Such examination would no longer relate to the effects of prior applications but only to their subject-matter. Under that proposal, the examination would not really be carried out until the revocation proceedings. It was that which constituted the very serious breach of the fundamental rule that there could only be one patent for one invention.

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

9081/IV/63-E-Final

.../...

[p.8]

9081/IV/63-E-Final

- 70 -

When the meeting resumed, Mr. Pfanner again opposed Mr. van Benthem's proposal. He reminded the Working Party of the experience of the German Patent Office where the check that two applications were identical had proved particularly difficult in practice. Seen in that light, it had to be remembered that, under Mr. van Benthem's proposal, the Office would still have to carry out such an examination which would of course be confined to the subject-matter of the application. The fact remained that such difficulties would exist and they ought to be avoided. The proposal might, moreover, produce bizarre results. It would be enough to alter the subject-matter of the application slightly to obtain a new patent. It seemed undesirable to have protection granted for such an invention since the public was already informed of the inventive idea by the publication of the first application.

Mr. Pfanner went on to point out to the Working Party that the grant of a European patent would already take a number of years. After seven years the inventor could expect to have maximum certainty regarding the protection granted him. Under Mr. van Benthem's proposal, he would not have such certainty until after the decision of the Revocation Board. The result would be to prolong too much the inventor's lack of certainty. Finally, the fact that the value of a patent would be finally decided following infringement proceedings made the situation still worse. National courts could hardly decide such cases since they would be faced with two legally valid patents.

He reiterated that the interested circles had been too concerned with the interests of the second applicant without taking sufficient account of the first applicant.

Mr. van Benthem pointed out to Mr. Pfanner that his intention was not to introduce a check on whether applications were the same; on the contrary he wanted to reduce such checking to a minimum. He thought that the problem was one of wording. But he was sure that the problem of duplicated protection was inevitable. He again put the case of the interested circles who were afraid that they would no longer be able to make subsequent filings following a basic invention. He argued

9081/IV/63-E-Final

.../...

[p.9]

9081/IV/63-E-Final

- 71 -

strongly though that inventive step should be required of each invention for which a new application had been filed.

Mr. Pfanner again expressed his support for the solution in paragraph 3 of Article 11. By way of a compromise, however, he put forward a proposal based on comments made by the interested circles in Germany. The majority of them thought that under the deferred examination system there could hardly be any other solution for prior rights than that of paragraph 3 of Article 11. But the effects of the paragraph 3 solution seemed unfair as regards the examination of the more recent invention.

Applying the fiction of Article 11, paragraph 3, prior rights were included in the state of the art not only for assessing the novelty but also the inventive step of the more recent invention.

In evaluating inventive step, the invention in question was not compared with each prior right in isolation or with each prior application. On the contrary, the invention was compared with the composite picture of all prior rights and publications.

In examiners' parlance, the composite picture was called a mosaic. The interested circles were afraid that if prior rights were incorporated in that mosaic of the state of the art, the inventive level of the more recent invention would very often be insufficient. It was however possible to make some concession to the views of the interested circles while not altogether dropping the system of Article 11, i.e. dispensing with checking that applications were identical, by regarding prior rights as comprised in the state of the art insofar as the novelty examination was concerned, but not including them in the mosaic for assessing the inventive step of the more recent invention. Thus inventive step would only be examined individually as against each prior right. The assessment of inventive step would be divided in two.

9081/IV/63-E-Final

.../...

[p.10]

9081/IV/63-E-Final

- 72 -

Inventive step would first be assessed having regard to the whole mosaic of the state of the art without taking account of prior rights. The inventive step found by that examination would be reassessed, but this time as against each of the prior rights. That proposal could be implemented by means of an addition to Article 13.

Mr. Pfanner added that by adopting that proposal the Working Party would curtail the effects of the fiction under Article 11, paragraph 3, which the German interested circles considered unfair, without going all the way to satisfy their wishes. For the majority wanted to return to the old system of prohibiting duplicated protection with a check on whether inventions were identical.

Mr. De Muyser endorsed Mr. Pfanner's proposal. Mr. van Benthem asked whether it was in line with the Strasbourg draft.

Mr. Pfanner replied that the Strasbourg draft allowed of any solution in this respect.

Mr. Fressonnet expressed his great surprise at the protests by the interested circles. A fiction similar to that of paragraph 3 existed under French law. It had never given rise to any such protests. He therefore thought that the current text of the Convention was a good solution since it enshrined the principle of the first applicant obtaining a patent. He was against the compromise solution. Not only would it impose an extra burden on the European Office but it failed to satisfy the interested circles.

The Chairman opposed the traditional system which he considered ill-founded, impractical and, above all, irreconcilable with the system of deferred examination. The basic idea of patent law was to grant a monopoly to persons making technical knowledge available to the public. It was therefore logical to give that monopoly to the first applicant, as the draft provided. Finally, he pointed out that it was important for the Convention to adopt a system corresponding to an overriding logical concept such as that of the Preliminary Draft.

Mr. van Benthem reminded the Chairman that the inventor's reward should be determined having regard to the time when he made his invention public. That was not done by paragraph 3. He found the traditional system logical enough. It should be abandoned only if experience showed that difficulties arose in connection with the protection of prior rights.

9081/IV/63-E-Final

[p.11]

9081/IV/63-E-Fina

- 73 -

Mr. Fressonnet proposed that the purely practical reasons in support of the draft text should be put forward at the meeting to be held with UNICE and possibly other international organisations.

In conclusion, the Chairman noted that the Working Party did not want to take a final decision. He recorded the views of the Working Party that the UNICE proposal was impractical and that of Mr. van Benthem unsuitable. There remained the compromise proposal and the current text.

Mr. Pfanner was asked to draw up a draft text incorporating his proposal. The Working Party would look at the question of the meeting with UNICE on Friday.

...

Article 12

Mr. Froschmaier read the opinions of the international associations. UNICE and UNION opposed Article 12. The Scandinavian draft on the other hand was substantially the same. After some discussion, the Working Party concluded that the text should be retained in the Preliminary Draft since a corresponding obligation was contained in the Strasbourg Draft.

At the instigation of Mr. Pfanner, the text was transmitted to the Drafting Committee which was to take account of the corresponding provision in the Strasbourg Draft.

Article 13

Mr. Froschmaier read the opinions of the international associations.

9081/IV/63-E-Final

.../...

[p.12]

9081/IV/63-E-Final

- 74 -

The Working Party discussed the concept of obviousness. It preferred the German word "naheliegend". The Dutch, French and Italian versions of the Convention were to translate the term as closely as possible. Article 13 was transmitted to the Drafting Committee which was to take the wording of the Strasbourg Draft into account.

Article 14

After reading the opinions of the international associations, the Working Party discussed UNICE's comments on the drafting regarding the term "in any kind of industry, including agriculture".

Mr. Fressonnet underlined the very broad meaning of the word "industry".

Mr. Pfanner added that the word even covered the army and the professions. The Chairman concluded by saying that the text would have to remain unchanged so as not to deviate from the Strasbourg Draft. Article 14 was transmitted to the Drafting Committee.

9081/IV/63-E/Final

[p.13]

PATENTS WORKING PARTY

LT 234/82

Section 11 9081/IV/63-E-Final Orig.: French

Brussels, 1 December 1963

CONFIDENTIAL

Proceedings of the 10th meeting of the Patents Working Party held at Brussels from 16 to 27 September 1963

MINUTES

9081/IV/63-E-Final Orig.: French

[p.14]

9081/IV/63-E-Final

- 64 -

Article 9

Mr. Roschmaier explained the views of the international associations regarding this Article and on Article 13 on inventive step. The Union of Industries of the European Communities (UNICE) proposed that Article 9 be worded as follows:

'European patents shall be granted for inventions that are new and susceptible of industrial application'. UNICE considered that inventive step should be a requirement for patentability but thought it better not to mention the term expressly since it suggested too subjective a concept.

Mr. van Benthem supported the UNICE viewpoint which was also shared by the interested circles in the Netherlands. The other members of the Working Party preferred to retain the provision in the Preliminary Draft which showed clearly the three criteria for the grant of patents: novelty, inventive step and industrial application.

Mr. Pfanner made the point that it would be inappropriate to change this article which had influenced the formulation of the Strasbourg draft at a time when the latter draft was soon to be signed.

Mr. van Benthem agreed with the majority of the Working Party. Article 9 was retained but referred to the Drafting Committee to ensure that it accorded with

9081/IV/63-E-Final

.../...

[p.15]

9081/IV/63-E-Final

- 65 -

the corresponding article of the Strasbourg draft, the wording of which seemed better.

Article 10

Mr. Froschmaier set out the views of the international associations which wanted sub-paragraph (b) to provide that the exception to patentability in that sub-paragraph should not apply to microbiological processes and the products thereof in accordance with the Strasbourg draft. He then read a note from UNICE requesting clarification at the Diplomatic Conference that the Convention allowed all conceivable objects to be patented, even those that were not eligible for national protection. He added that the United Kingdom shared the views of the international associations on microbiological processes and that Austria wanted a number of additional exceptions to patentability.

After a short discussion, the Working Party accepted the proposal on microbiological processes and referred the text in question to the Drafting Committee for harmonisation with the wording of the Strasbourg draft. UNICE's request was not approved as it was clear that the provisions in the Convention on patentability were not the same as national provisions.

Article 11

Mr. Froschmaier read the views of the international associations on paragraph 1. The International Association for the Protection of Industrial Property (AIPPI) and UNICE proposed the following wording: "An invention shall not be considered as new if it forms part of the state of the art".

The United Kingdom raised the problem of multiple priorities.

Mr. Pfanner then explained the provisions of the Scandinavian draft on novelty.

The Chairman thought that the UNICE proposal should not be adopted. The drawback was that it was expressed as a negative. It seemed to shift the burden of

9081/IV/63-E-Final

.../...

[p.16]

9081/IV/63-E-Final

- 66 -

proof. It was important to remember that it was up to the inventor to prove that the invention was new. Following Mr. van Benthem's suggestion, the Working Party considered that paragraph 1 could be brought into line with the corresponding provision in the Strasbourg draft. The paragraph was transmitted to the Drafting Committee.

AIPPI wanted formal proof to be required of the content and date of oral disclosure.

UNICE felt that a general description of an inventive idea should not destroy its novelty and proposed the following wording: "the state of the art shall be held to comprise everything made available to the public, in a manner sufficient to enable the invention to be carried out...". Finally UNION would like the term "public" to be defined.

The views of the Austrian Government were similar to those of UNION.

The Chairman summarised the problems regarding paragraph 2:

1. Additional evidence is wanted in connection with oral disclosure. 2. Further definition is wanted of the description. 3. Further definition of the word "public" is also wanted.

Regarding the first problem, the Working Party was unanimous that there was no need for specific evidence regarding oral disclosure.

The question could safely be left to the courts which were used to such evidence.

The Working Party also rejected the second suggestion. It preferred the current, more objective wording. It also rejected the third suggestion on the grounds that it would be very dangerous to give too precise a definition of "public".

Mr. Froschmaier set out the views of the international associations on paragraph 3. All but one proposed that matter disclosed in a prior patent should be treated

9081/IV/63-E-Final

.../...

[p.17]

9081/IV/63-E-Fina

- 67 -

as part of the state of the art. Furthermore, all the associations wanted the Preliminary Draft to confine itself to ruling out double protection in principle but to specify that only the content of the claims in the prior application would be retained.

UNICE proposed the following wording: "Inventions already protected by European patents with an earlier date shall not be patentable". However the German UNICE delegation preferred the fiction of paragraph 3. But it wanted the fiction to apply only to assessing the novelty of the subsequent invention. It did not want the fiction to extend to assessment of inventive step as well and therefore wished Article 13 to be retained.

Finally the Committee of National Institutes of Patent Agents (CNIPA) proposed the following wording: "Inventions for which a provisional or final European patent has been granted with an earlier priority shall not be patentable. For the purpose of this provision, inventions for which a patent has been granted shall include all the possible ways of carrying out the invention claimed described in the patent or any obvious changes to those possibilities covered by the claims".

The United Kingdom drew the Working Party's attention to the problem of multiple priorities. The Austrian Government thought that a rule simply preventing two patents being granted was preferable.

Mr. Pfanner pointed out that the Scandinavian draft was based on this Preliminary Draft Convention with the addition of a further requirement.

The Chairman said that according to the letter from Mr. Morff, the Swiss Government seemed prepared to accept paragraph 3.

The Chairman suggested that the Working Party confine its discussions to whether they should simply rule out duplicated patents or whether they should adopt the solution of paragraph 3 whereby the contents of European patent specifications published on or after the date of the subsequent European patent application were considered to comprise part of the state of the art insofar as the patents in question were based on a prior filing.

9081/IV/63-E-Final

.../...

[p.18]

9081/IV/63-E-Final

- 68 -

Mr. Pfanner was in favour of the paragraph 3 solution. He put forward various arguments. A general point was that it was undesirable to grant a monopoly to an applicant for an invention that had already been filed and published. He went on to give various practical arguments. Drawing on experience at the German Patent Office, he stressed that the European Office should be spared the heavy burden of checking that applications were identical. The task of comparing the extent of the protection under two patents would be made still more complex because of the deferred examination system.

Mr. van Benthem, however, wanted paragraph 3 amended. He thought that the unanimous objections of the interested circles could not be ignored. He supported the solution suggested by CNIPA, illustrating his arguments with the following example: a first application is for the use of a relay in a radio. A second application, filed before publication of the first, is for the same relay for a calculating machine. If the Preliminary Draft was retained, the first application would be considered as comprised in the state of the art and no patent could be granted for the application of the relay in the calculating machine. Adopting the system proposed by CNIPA on the other hand, the examiner would have to confine himself to comparing the subject-matter of the first application and of the second application and he would then be able to grant a patent for the application of the relay in the calculating machine. The subject-matter of the invention was different.

Mr. van Benthem pointed out that such a system entailed a risk of duplicate patents being granted but he thought that the risk was fairly small. He stressed particularly one advantage of this proposed solution pointing out to the Working Party that one single invention by a laboratory could lead to a number of different filings, perhaps over a span of four or five months, each one an improvement over the previous application and each ineligible for a patent of addition. Such filings would not be possible under the Preliminary Draft as it stood and that was something to be avoided.

9081/IV/63-E-Final

.../...

[p.19]

9081/IV/63-E-Final

- 69 -

Following Mr. van Benthem's remarks, Mr. Fressonnet made two comments:

(1) Mr. van Benthem had said that there were many examples of duplicated protection, particularly in the case of dependent patents. It should be noted that there was a further factor in such cases, namely inventive step.

(2) Mr. van Benthem had said that the courts could perhaps take account of factors not considered by the examiner. Consequently Mr. van Benthem's proposal gave rise to two different standards depending on whether the Examining Division or the Revocation Board had jurisdiction. Such differences caused major problems. The existence of the patent could easily be called in question again.

Mr. van Benthem replied that he had merely wanted to emphasise that under the solution he proposed, the risk of duplicated patents was not excessive and could be eliminated, if necessary, by means of revocation.

The Chairman then summarised the discussion stressing that the basic idea was that only one patent could be granted for one invention. He pointed out that duplicated patents did exist sometimes. It was not possible for the Offices to be aware of all the possible effects of a patent. This problem should not be confused with the distinct question of dependent patents.

The basis of Mr. van Benthem's proposal was that the Offices should be spared the need to check that applications were identical because that was too involved. The same idea underlay the solution in paragraph 3. But the effect of Mr. van Benthem's solution was to reduce the check on prior applications. Such examination would no longer relate to the effects of prior applications but only to their subject-matter. Under that proposal, the examination would not really be carried out until the revocation proceedings. It was that which constituted the very serious breach of the fundamental rule that there could only be one patent for one invention.

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

9081/IV/63-E-Final

.../...

[p.20]

9081/IV/63-E-Final

- 70 -

When the meeting resumed, Mr. Pfanner again opposed Mr. van Benthem's proposal. He reminded the Working Party of the experience of the German Patent Office where the check that two applications were identical had proved particularly difficult in practice. Seen in that light, it had to be remembered that, under Mr. van Benthem's proposal, the Office would still have to carry out such an examination which would of course be confined to the subject-matter of the application. The fact remained that such difficulties would exist and they ought to be avoided. The proposal might, moreover, produce bizarre results. It would be enough to alter the subject-matter of the application slightly to obtain a new patent. It seemed undesirable to have protection granted for such an invention since the public was already informed of the inventive idea by the publication of the first application.

Mr. Pfanner went on to point out to the Working Party that the grant of a European patent would already take a number of years. After seven years the inventor could expect to have maximum certainty regarding the protection granted him. Under Mr. van Benthem's proposal, he would not have such certainty until after the decision of the Revocation Board. The result would be to prolong too much the inventor's lack of certainty. Finally, the fact that the value of a patent would be finally decided following infringement proceedings made the situation still worse. National courts could hardly decide such cases since they would be faced with two legally valid patents.

He reiterated that the interested circles had been too concerned with the interests of the second applicant without taking sufficient account of the first applicant.

Mr. van Benthem pointed out to Mr. Pfanner that his intention was not to introduce a check on whether applications were the same; on the contrary he wanted to reduce such checking to a minimum. He thought that the problem was one of wording. But he was sure that the problem of duplicated protection was inevitable. He again put the case of the interested circles who were afraid that they would no longer be able to make subsequent filings following a basic invention. He argued

9081/IV/63-E-Final

.../...

[p.21]

9081/IV/63-E-Fina

- 71 -

strongly though that inventive step should be required of each invention for which a new application had been filed.

Mr. Pfanner again expressed his support for the solution in paragraph 3 of Article 11. By way of a compromise, however, he put forward a proposal based on comments made by the interested circles in Germany. The majority of them thought that under the deferred examination system there could hardly be any other solution for prior rights than that of paragraph 3 of Article 11. But the effects of the paragraph 3 solution seemed unfair as regards the examination of the more recent invention.

Applying the fiction of Article 11, paragraph 3, prior rights were included in the state of the art not only for assessing the novelty but also the inventive step of the more recent invention.

In evaluating inventive step, the invention in question was not compared with each prior right in isolation or with each prior application. On the contrary, the invention was compared with the composite picture of all prior rights and publications.

In examiners' parlance, the composite picture was called a mosaic. The interested circles were afraid that if prior rights were incorporated in that mosaic of the state of the art, the inventive level of the more recent invention would very often be insufficient. It was however possible to make some concession to the views of the interested circles while not altogether dropping the system of Article 11, i.e. dispensing with checking that applications were identical, by regarding prior rights as comprised in the state of the art insofar as the novelty examination was concerned, but not including them in the mosaic for assessing the inventive step of the more recent invention. Thus inventive step would only be examined individually as against each prior right. The assessment of inventive step would be divided in two.

9081/IV/63-E-Final

.../...

[p.22]

9081/IV/63-E-Final

- 72 -

Inventive step would first be assessed having regard to the whole mosaic of the state of the art without taking account of prior rights. The inventive step found by that examination would be reassessed, but this time as against each of the prior rights. That proposal could be implemented by means of an addition to Article 13.

Mr. Pfanner added that by adopting that proposal the Working Party would curtail the effects of the fiction under Article 11, paragraph 3, which the German interested circles considered unfair, without going all the way to satisfy their wishes. For the majority wanted to return to the old system of prohibiting duplicated protection with a check on whether inventions were identical.

Mr. De Muyser endorsed Mr. Pfanner's proposal. Mr. van Benthem asked whether it was in line with the Strasbourg draft.

Mr. Pfanner replied that the Strasbourg draft allowed of any solution in this respect.

Mr. Fressonnet expressed his great surprise at the protests by the interested circles. A fiction similar to that of paragraph 3 existed under French law. It had never given rise to any such protests. He therefore thought that the current text of the Convention was a good solution since it enshrined the principle of the first applicant obtaining a patent. He was against the compromise solution. Not only would it impose an extra burden on the European Office but it failed to satisfy the interested circles.

The Chairman opposed the traditional system which he considered ill-founded, impractical and, above all, irreconcilable with the system of deferred examination. The basic idea of patent law was to grant a monopoly to persons making technical knowledge available to the public. It was therefore logical to give that monopoly to the first applicant, as the draft provided. Finally, he pointed out that it was important for the Convention to adopt a system corresponding to an overriding logical concept such as that of the Preliminary Draft.

Mr. van Benthem reminded the Chairman that the inventor's reward should be determined having regard to the time when he made his invention public. That was not done by paragraph 3. He found the traditional system logical enough. It should be abandoned only if experience showed that difficulties arose in connection with the protection of prior rights.

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Mr. Fressonnet proposed that the purely practical reasons in support of the draft text should be put forward at the meeting to be held with UNICE and possibly other international organisations.

In conclusion, the Chairman noted that the Working Party did not want to take a final decision. He recorded the views of the Working Party that the UNICE proposal was impractical and that of Mr. van Benthem unsuitable. There remained the compromise proposal and the current text.

Mr. Pfanner was asked to draw up a draft text incorporating his proposal. The Working Party would look at the question of the meeting with UNICE on Friday.

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Article 12

Mr. Froschmaier read the opinions of the international associations. UNICE and UNION opposed Article 12. The Scandinavian draft on the other hand was substantially the same. After some discussion, the Working Party concluded that the text should be retained in the Preliminary Draft since a corresponding obligation was contained in the Strasbourg Draft.

At the instigation of Mr. Pfanner, the text was transmitted to the Drafting Committee which was to take account of the corresponding provision in the Strasbourg Draft.

Article 13

Mr. Froschmaier read the opinions of the international associations.

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The Working Party discussed the concept of obviousness. It preferred the German word "naheliegend". The Dutch, French and Italian versions of the Convention were to translate the term as closely as possible. Article 13 was transmitted to the Drafting Committee which was to take the wording of the Strasbourg Draft into account.

Article 14

After reading the opinions of the international associations, the Working Party discussed UNICE's comments on the drafting regarding the term "in any kind of industry, including agriculture".

Mr. Fressonnet underlined the very broad meaning of the word "industry".

Mr. Pfanner added that the word even covered the army and the professions. The Chairman concluded by saying that the text would have to remain unchanged so as not to deviate from the Strasbourg Draft. Article 14 was transmitted to the Drafting Committee.

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