About the Revision of the 1973 European Patent Convention (EPC)

Notes written by Bernard Lang on November 17, 2000.
about the November 2000 Diplomatic Conference in Munich

 

This revision of the 1973 European Patent Convention (EPC) has been prepared by the European Patent Office (EPO) Administrative Council (EPO-AC), with the latest decisions taken on 7 September 2000.

On that basis, a Diplomatic Conference for the is to be held in Munich, from 20 to 29 November 2000, its oganization being detailed in a general information document.

It is important to be aware that the EPO is not administered by the European Commission, and has a different (though overlapping) membership. Fifteen of the twenty contracting parties to the EPC (who will be represented at the Munich Conference) are also member states of the European Union.
Hence there is a potential sovereignty conflict between the EPO and the European Union (EU).

The list of members in EPO Covernmental Conference 2000 to vote on "Basic Proposal" to change The European Patent Convention:

AT      Austria
BE      Belgium
CH      Switzerland
CY      Cyprus
DE      Germany
DK      Denmark
ES      Spain
FI      Finland
FR      France
GB      United Kingdom
GR      Greece
IE      Ireland
IT      Italy
LI      Liechtenstein
LU      Luxembourg
MC      Monaco
NL      Netherland
PT      Portugal
SE      Sweden
TR	Turkey   (to join the EPC on November 20, 2000)
The controversial issues to be evoqued in this documents concern changes to the following articles of the EPC :

Regarding EPC article 52.2

Concerning the inclusion of a modification of EPC article 52.2 to allow the patentability of software, and hence all intellectual methods, including for example business methods, there has been a vote by the (then) 19 members of the EPO Administrative Council (EPO-AC) during the september 7, 2000 meeting. The votes were apparently as follows (certified information seems hard to find):
for        10 votes      AT,BE,CY,CH,GR,IR,IT,LI,MC,NL
against     8 votes      DK,DE,ES,FR,LU,PT,SE,UK
abstain     1            FI
It is to be noted that: Several countries agree that, given this situation, it would be wiser to wait to know the position of the EU before making any decision at the EPO level. Noting the lack of consensus in Europe on these issue, both in the population and among the economic agents, the EU General Directorate for the Internal Market launched a consultation, and a premature vote on this issue by member countries would be an act of defiance to the European Union, and could create a very messy situation.

What can be done: the procedures of the Diplomatic Meeting

The change to EPC is proposed as a single package Draft Revison Act (DRA) of many modifications including for article 52.2 and also 33.1 (see references above), prepared by the EPO. A commented version is available as the MR/2/00 Basic Proposal : see page 27 and following for article EPC 33.1, and see page 43 and following for article EPC 52-2.

The package is to be accepted as a whole by a majority of 75% (i.e. 15 members) in order to come into effect (procedure rule DRP 32(1) and thus change the text of the European Patent Convention (EPC). Since the package contains many needed improvements to the EPC, countries will be reluctant to reject it.

However, the modifications to articles EPC 52.2 and to EPC 33.1 are quite independent and should not be pyggy-backed on the rest of the proposal as a bundled all-or-nothing decision.

The meeting will follow rules of procedure that have been defined by the EPO-AC in the Draft Rules of Procedure (DRP). This document states in article DRP 32(2) that the DRA package can be amended, but an amendment requires a majority of 2/3. Given that modifications of EPC 52.2 and EPC 33.1 are already in the package, that means that 14 countries would have to request the removal of these modifications in order to maintain the status quo, i.e. remove EPC 52.2 and EPC 33.1 by unbundling the proposal, instead of a majority of 15 countries to accept them.

Note: while this 2/3rd rule may be a proper way of handling a complex array of interrelated modifications, so as to avoid endless discussion, using it to bind in the package completely independent issues can only be considered a fraud with respect to the Convention voting process, especially considering the lack of transparency of the preparatory work.

The following is a way out of this blocking situation that has been set up by the EPO Administrative Council:

There are 2 basic ways this can be achieved:

  1. HARD (by 6 countries)
    threaten to reject the whole DRA package proposal, i.e. block any change to the Convention (the whole meeting being hence a failure), if not enough countries accept to vote the removal of modifications to EPC 52.2 and to EPC 33.1, and so get the 2/3 majority. This can be done if 6 countries agree to it.

  2. SOFT (by 11 countries, i.e. simple majority)
    to be done very early in the meeting, during item 2 of the draft agenda (Consideration and Adoption of the Rules of Procedure)
    use articles DRP 32(3) and DRP 38 of the Draft Rules of Procedure (DRP) that states, together, that the procedure rules can be change by a simple majority, i.e. 11 countries (what happens when it is 10 against 10 ?) or less if some abstain:
    Using these 2 articles DRP 32(3) and DRP 38, a vote can change the rule DRP 32(2) so that the 2/3 majority can be changed into a simple majority for making amendments to the whole Draft Revison Act (DRA) package.
    Then later, during the discussion of the DRA, use simple majority to remove the changes to articles EPC 52.2 and EPC 33.1 from the DRA.
The members of the diplomatic conference may be reluctant even to use the soft alternative, since there is a risk that it may restart several closed discussion on various topics. However, they may decide to request this change of procedure only to the proposed changes for articles EPC 33.1 and EPC 52.2 since these are independent of other articles.

Remember also that the HARD technique can be used if the SOFT one does not work or is not sufficient.

It is to be regretted that such methods have to be used. But the responsibility lies exclusively with (at least some members of) the EPO-AC who, for reasons known only to them, tried to force the issue with complete disregard for the democratic process, without ever attempting to analyze the impact (obviously significant) of their decisions, and without adequately informing the public and its political representatives as should be their duty.

Remarks

It is not clear that all countries are aware of what is hidden in the proposed modification of EPC 33.1. More lobbying and dissemination of information should be done on that issue in the concerned countries.

Furthermore, this procedural situation should also be explained, so that proper instructions may be given to the representatives of each country. Some have been known to be remarkably unimaginative when having to support political choices and decisions that do not please their IP professional community.

This document has taken issue only with the modifications to articles EPC 52.2 and EPC 33.1 the Draft Revison Act (DRA). It is by no means an implicit support for the rest of the DRA, or a statement that we see nothing wrong with the rest of the DRA. It is simply that we have not had the time to analyze this document further. For all we know, the DRA could be full of other traps.

References

Terminology

   EPO         European Patent Office
   EPO-AC      EPO  Administrative Council
   DRP         Draft Rules of Procedure for the Diplomatic Conference
   EPC         European Patent convention  (the topic of the conference)
                 i.e. the text that rules the EPO
   DRA         Draft Revison Act
               the revision that is being proposed by the EPO, and has
               to be accepted with or without amendments to change the
               EPC.
   EU          European Union