Axel H. Horns Patentanwalt European TM Attorney European Patent Attorney

Axel H. Horns Patentanwalt European TM Attorney European Patent Attorney Patentanwalt Horns Mittermayrstraße 18 D - 80796 München To: Mr Erik Nooteboom Head of Unit Industrial Property Unit Internal Market and Services Directorate General European Commission 1049 B r u s s e l s B E L G I U M Mittermayrstraße 18 D - 80796 München voice + 49 89 30630112 fax +49 89 30630113 email horns@ipjur.com web www.ipjur.com vat id DE167403316 Datum / Day: 2006-04-12 Ihr Zeichen / Your Ref.: N/A Mein Zeichen / My Ref.: B0044 (prov.) Questionnaire On the patent system in Europe Sir: Having read the questionnaire On the patent system in Europe as published on the Commission's website I take the liberty to offer my comments on the issues raised therein. The answers as set out hereinbelow are given on my own responsibility and not on behalf of any particular client, although my practical experiences obtained in my work as a patent professional are forming the background thereof. 1.1 Do you agree that these are the basic features required of the patent system? a) clear substantive rules on what can and cannot be covered by patents, balancing the interests of the right holders with the overall objectives of the patent system; Answer: Yes, but taken as such this statement appears to be hardly more than a truism. The real problem is to get an idea as to how to balance the interests of the right holders with the overall objectives of the patent system. It seems also to be less than clear what those objectives of the patent system might be in practice. In my view, the provisions as set forth in Article 52 EPC in conjunction with the respective current case law of the Boards of Appeal of the European Patent Office seem to form a basis for an appropriate solution, in particular with regard to the question of the patentability of computer-implemented inventions - HITACHI T_0258/03. GPG Key D95095DE7AA3AA48 / FP BF40 63FE A3B0 33EB 0654 6782 D950 95DE 7AA3 AA48

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 2 Furthermore, my impression is that at the time being the Commission's approach is, when seen in its entirety, much too much focussed on aspects of pre-grant Patent Law, i.e. material criteria of patentability, neglecting political options in the field of post-grant Patent Law, i.e. exceptions from or modifications of the legal effects of a valid patent with regard to certain circumstances of the case. Take, for example, not only the system of exemptions embodied within (continental) Copyright Law but, in the realm of patents, also provisions like, for example, Article 5ter of the Paris Convention (or, see also 11 DE-PatG): "[...] In any country of the Union the following shall not be considered as infringements of the rights of a patentee: (1) the use on board vessels of other countries of the Union of devices forming the subject of his patent in the body of the vessel, in the machinery, tackle, gear and other accessories, when such vessels temporarily or accidentally enter the waters of the said country, provided that such devices are used there exclusively for the needs of the vessel; (2) the use of devices forming the subject of the patent in the construction or operation of aircraft or land vehicles of other countries of the Union, or of accessories of such aircraft or land vehicles, when those aircraft or land vehicles temporarily or accidentally enter the said country.[...]" Solving the problem of a potential hampering of the world trade caused by the threat of locking up foreign ships in seaports on the basis of local patents enforceable on the territory to which the respective seaport belongs on the post-grant side of the patent law was, im my view, a much better idea than, on the pre-grant side, starting a debate on whether or not the body, machinery, tackle, gear and other accessories of a vessel "as such" should be patentable. Unfortunately, contrary to the situation within (continental) Copyright Law where a lot of conflicts are addressed by means of exemptions ( Schrankenbestimmungen ), postgrant exemptions currently not play such a huge role in Patent Law up to now. Exeptions of relevance in Patent Law are the exemption for non-commercial private use of a patented invention and a very few more. The bigger problem appears to be to propose exemptions and/or modifications solving real-world problems without effectively crippling the patent system in its entirety. Nobody should expect that one magic exeption could be noted down solving all of the current patent troubles. I would rather guess that it must be, like the situation on the Copyright theatre, a patchwork of small hand-tailored exeptions with and without payments in accordance with the various business models out there. I am currently thinking of three examples of possible post-grant exemptions or modifications for the patent system in conjunction with software-related markets:

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 3 aa) Source code exemption: Source code is somewhat ambigous insofar as it is at the same time means for human-to-human communication as well as means for controlling a machine. It might, hence, considered as interference with "freedom of speech" to shut down a source code repository on the net because of there is a patent somewhere which might be infringed if the source code is compiled, linked, and run on a processor in a specific technical environment. ab) Collective Licensing for patents: It might be worth to think of establishing a legal framework for collective licensing concerning patents on CIIs as a legal basis for collecting societies. This might greatly simplify processing of RAND licenses in the field of certain mass-market technologies. ac) Maintaining patent-free open standards: I could, for example, imagine the Patent Law to be amended by introducing a rule allowing major standardising institutions like DIN, ISO or W3C to publish a full technical disclosure for a proposed interoperability standard in some kind of an Official Gazette issued by some competent Authority on EU level. Then, each and every patent holder has an opportunity to oppose against this proposal within a certain term of, say, nine months or so. If a patent holder opposes, the standardising organisation as well as the public will be notified accordingly. An opposition can be absolute (i.e. the patent holder refuses to license the patent at all) or relative (i.e. the patent holder is willing to provide a RAND license only). If a patent holder does not oppose in due time the grant of a RF license will be stipulated by law. Such procedure would not unduly harm the interests of patent holders (they merely have to closely watch the Official Gazette and make up their mind) because of they will not be forced to grant any license. On the other side, if no opposition has been filed, the standards bodies can be sure that the proposed standard is in fact patent free. If oppositions are raised, they can re-think on whether or not drop that proposal. However, as in many other cases, the problems are in the gory details. For example, it will not be easy to deal with unexamined or even unpublished patent applications. Furthermore, the proposed procedure might not scale very well. If thousands or even tens of thousands of proposals would be published per year, the burden for the patent owners would be clearly inacceptable. On the other hand, patent owners must be hindered to simply block any standard without even looking at the details by simply filing objections on the basis of each and every patent available in their patent portfolio. If the total number of published proposals per year is sufficiently low this might be achived by requiring a modest Official fee or by imposing a duty to substantiate the Opposition.

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 4 These cases aa), ab), and ac) are given for illustration purposes only. b) transparent, cost effective and accessible processes for obtaining a patent; Answer: Yes, but taken as such this statement appears to be hardly more than a truism. The real problem is to get an idea as to how to form transparent, cost effective and accessible processes for obtaining a patent. Currently, there are too many languages involved in the European patent system. I would favour a solution based on English as primary language for European patent purposes. c) predictable, rapid and inexpensive resolution of disputes between right holders and other parties; Answer: Yes, but taken as such this statement appears to be hardly more than a truism. The real problem is to get an idea as to how to obtain predictable, rapid and inexpensive resolution of disputes between right holders and other parties. The EPLA seems to be a proper approach to tackle this problem. d) due regard for other public policy interests such as competition (antitrust), ethics, environment, healthcare, access to information, so as to be effective and credible within society. Answer: In my view, the patent system should not be overburdened with other issues from outside. It should be kept in mind that the patent system creates exclusive rights preventing the public from making use of patented inventions without the patent owner's consent, i.e. patenting ethically questionable or otherwise politically disliked inventions does not mean to allow their use. Moreover, patent Examiners would clearly be overstrained if they were asked to assess also aspects of competition law, ethics, public healthcare and so on. In particular, I am strongly opposed against any attempts to solve political problems located outside the area of Intellectual Prroperty Law by excluding, on the pre-grant side of the patent law, certain classes of subject-matter from patentability: da) I understand that certain areas of biotechnology are subject to political controversies due to their (potential and/or alleged) detrimental side effects. However, the question as to whether or not genetically modified organisms and/or products thereof are to be allowed should be answered by appropriate sectoral regulation in the respective field of law, not by restricting the material criteria of patentability. db) I understand that development and deployment of software or software-based products should not unduly be hampered by the patent system. However, I strongly believe that it is strictly impossible to solve any relevant problem or conflict in the field of patenting of

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 5 computer-implemented inventions in a balanced and satisfying way by restricting, in order to generally prevent grant of such patents, the material criteria of patentability on the pre-grant side of the patent system more than as to the limits currently observed in the HI TACHI decision of the Boards of Appeal of the European Patent Office. If particular problems on the respective markets caused by the patent system are identified so far, they should be addressed by modifications (exemptions) on the post-grant side of the patent system, not by restricting the range of patentable inventions on the pre-grant side of the Patent Law (see my above remarks on question 1.1). 1.2 Are there other features that you consider important? Answer: The fate of the Draft Directive on the patentability of computer-implemented inventions has urgently shown that this is not a good time to start any new approach for a general refurbishment of the European Patent Law. The risk of, in response to any new political initiative, effectively obtaining a destruction of the patent system by political groups deliberately intending to hamper the functioning of the present system of Intellectual Property Law is too high. The excessive proposals for various amendmends to the Draft Directive on the patentability of computer-implemented inventions as introduced during the first and second reading thereof in the European Parliament aiming to reach a virtually borderless exemption rule in order to ensure interoperability are a stern warning to everbybody not to over-estimate the preparedness of some of the patent critics to engage themselves in any meaningful, realistic and fair discussion on post-grant exemptions and modifications. However, if at any later time and under different circumstances such discussion should ever be re-started, efforts should be made to ensure that the discussion is not narrowly guided on a pre-grant track. 1.3 How can the Community better take into account the broader public interest in developing its policy on patents? Answer: I do appreciate the communication with the general public over the Internet by means of publishing papers and conducting public consultations as already done by the Commission. 2.1 By comparison with the common political approach, are there any alternative or additional features that you believe an effective Community patent system should offer? Answer: The viability of the Community Patent depends on two key factors: a) Language Problem: The translation costs must be reduced dramatically, otherwise the Community Patent is doomed to fail. I would prefer an English-only approach.

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 6 b) Conflict resolution problem: Without a convincing conflict resolution scheme in place, the Community patent is doomed to fail. In my view there are some necessary key factors: - Technical judges sitting in a Court hearing the cases; - Courts of the first instance should be local (national); - Patent Attorneys with a technical background should be entitled to represent their clients. 3.1 What advantages and disadvantages do you think that pan-european litigation arrangements as set out in the draft EPLA would have for those who use and are affected by patents? Answer: see above under 2.1 3.2 Given the possible coexistence of three patent systems in Europe (the national, the Community and the European patent), what in your view would be the ideal patent litigation scheme in Europe? Answer: An EPLA-like scheme applied also to national patents. 4.1 What aspects of patent law do you feel give rise to barriers to free movement or distortion of competition because of differences in law or its application in practice between Member States? Answer: a) Non-unitary structure of the European Patent as currently granted by the EPO; and b) Complex exhaustion rules. 4.2 To what extent is your business affected by such differences? 4.3 What are your views on the value-added and feasibility of the different options (1) (3) outlined [below]? (1) Bringing the main patentability criteria of the European Patent Convention into Community law so that national courts can refer questions of interpretation to the European Court of Justice. This could include the general criteria of novelty, inventive step and industrial applicability, together with exceptions for particular subject matter and specific sectoral rules where these add value. (2) More limited harmonisation picking up issues which are not specifically covered by the European Patent Convention. (3) Mutual recognition by patent offices of patents granted by another EU Member State, possibly linked to an agreed quality standards framework, or "validation" by the European Patent Office, and provided the patent document is available in the original language and another language commonly used in business.

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 7 Answer: ad (1) ad (2) ad (3) I would appreciate the creation of a unitary Community Patent with an English-only language regime and some proper adaption to the EPLA approach. If such an attempt on the basis of a modified version of the common political approach should fail, I think that at the time being no further initiatives to bring the main patentability criteria of the European Patent Convention into Community law should be made. The fate of the Draft Directive on the patentability of computer-implemented inventions has urgently shown that this is not a good time to start any new approach for a harmonisation of the European Patent Law. The risk of, in response to any new political initiative, effectively obtaining a destruction of the patent system by political groups deliberately intending to hamper the functioning of the present system of Intellectual Property Law is too high. Not at the time being. The fate of the Draft Directive on the patentability of computer-implemented inventions has urgently shown that this is not a good time to start any new approach for a sectoral harmonisation of the European Patent Law. The risk of, in response to any new political initiative, effectively obtaining a destruction of the patent system by political groups deliberately intending to hamper the functioning of the present system of Intellectual Property Law is too high. This would ultimately mean some kind of a devolution and, finally, also a destruction of the present European Patent system built around the European Patent Office. Such a proposal does not make sense to me. Currently, the EPO is member of the club of the big three Patent Offices of the world within the Trilateral Cooperation. This gives Europe an audible voice in international patent politics. A bag of dozens of small national Patent Offices instead of the EPO seems to be no viable alternative. 4.4 Are there any alternative proposals that the Commission might consider? Answer: See my answer to section 1.1. 5.1 How important is the patent system in Europe compared to other areas of legislation affecting your business? 5.2 Compared to the other areas of intellectual property such as trade marks, designs, plant variety rights, copyright and related rights, how important is the patent system in Europe? 5.3 How important to you is the patent system in Europe compared to the patent system worldwide?

Patentanwalt Axel H. Horns Dipl.-Phys. Seite 8 5.4 If you are responding as an SME, how do you make use of patents now and how do you expect to use them in future? What problems have you encountered using the existing patent system? 5.5 Are there other issues than those in this paper you feel the Commission should address in relation to the patent system? Yours faithfully, Axel H Horns Patentanwalt European Patent Attorney European Trade Mark Attorney /data/pat/wrapper/b/0044/060412eu-consultation-001.odt