Report | Doc. 75 | 06 September 1949
Creation of a European patents office
Committee on Economic Affairs and Development
1. REPORT
By a unanimous vote at its Sitting on 13th August, the Consultative Assembly proposed to the Committee of Ministers the insertion in the Agenda of the present Session of the study of the problem of the creation of a European Patents Office. The Committee having given its assent, this question was placed on the Agenda of the Sitting on 16th August, as item No. 8; and on 22nd August the Assembly decided to refer the study of this technical question, without a previous General Debate, to its Committee on Economic Questions, under the following, heading:
(b) Question No. 8, concerning the creation of a European Patents Office, it being understood that the Committee shall confer with the Committee on Legal and Administrative Questions before submitting its Report on the question.
In pursuance of this decision, the Committee on Economic Questions, having held a meeting on the same day, and being of opinion that, in the absence of any indications such as might have been derived either from a General Debate or from draft Resolutions, it would be difficult to go into the substance of the question, decided to designate one of its members to make a preliminary study of the matter and, if necessary, to submit any proposals that might be appropriate on the subject.
This introductory Report was submitted to the Committee on Economic Questions which discussed it at its meeting on 1st September.
After reviewing the reasons which have impelled the European countries for many years past to seek some common method of action in the matter of patents of inventions, and after referring to the successive failures, due to the great difficulty of unifying different legislations which had their roots in customary law and long-standing habits, the Report proposed a method of action based on the following principles:
a. The setting up of an Office whose function would be to grant "European Certificates of Invention", administered by a Board of Directors on which the various States belonging to the Council of Europe would be represented.
b. This Office would grant "Certificates" after a double examination of the invention for newness, including:2.1. a preliminary examination before request for a patent is submitted, with, if need be, discussion with the applicant;2.2. an invitation of third party opposition from all Member States.
c. The Board of Directors of the Office would lay down the rules and regulations according to which requests would be both submitted and examined. However, the said rules would have to provide for the transmission of requests to the Office through the special services of each individual State, and also for the use of these services to invite third party opposition.
d. Through an international convention between Member States, every State would agree to accept the "European Certificate of Invention" as the basis for a request for an "Inventor's Patent":4.1. by regarding it as acceptable in the form laid down by the Board of Directors for the establishment of "European Certificates of Invention", notwithstanding existing legal or administrative regulations enforced in individual States regarding the wording and the material form in which such request has to be presented;4.2. and by exempting this request from the necessity of an examination for newness, which, as a result of the decision of the "European Office", would be taken for granted as regards the legal or administrative regulations of a national nature. All other legal regulations, including the "patentable" nature of the invention, would apply to this request which, to the extent to which it complied with the regulations, would permit the granting of an "Invention Patent"; the latter would be subject in its effect in each country to existing legislation in that country regarding patents granted by its Government according to its own procedure.
e. A request for a patent, with the "European Certificate of Invention" would be optional, it being open to any inventor to choose between this procedure and the procedure peculiar to any Member State, as existing at the present time, and maintained in any State that desired to do so.
After discussing the advantages and drawbacks of the proposed system, and after pointing out, in particular, that it respected the effects of existing national legislation, the Rapporteur concluded by proposing that the Committee should adopt these principles as a basis for a draft Resolution, which would be submitted to the Assembly, recommending to the Committee of Ministers that the said principles should be put into application.
After some exchange of views, and some discussions that took place on the basis of this Report in the Committee, the latter arrived at the following conclusions at its Sitting on 1st September:
The Committee on Economic Questions, having examined the introductory report on the creation of a European Patents Office, have decided as follows:
The Committee on Legal and Administrative Questions, having been informed of these decisions, and having been requested for its opinion, announced its views in a letter dated 5th September, in the following terms:
"The Legal and Administrative Committee have taken into consideration the Report of M. Longchambon and the action which your Committee proposes to take.
"I have the honour to inform you that the Committee, of which I am Chairman, can see no legal objection to your suggested course of action."
That, Ladies and Gentlemen, is how the matter stands. The Appendices, which are attached to this paper for information, will enable you to form an opinion on the substance. They are:
Appendix I. An introductory note on the study of the question of the creation of a European Patents Office, submitted to the Committee on Economic Questions.
Appendix II. Example of an international, convention by which the proposed project might be put into application.
I therefore have the honour, on behalf of the Committee on Economic Questions, to propose to you the following Resolution:
1.1. DRAFT RESOLUTION
The Consultative Assembly, approving the decisions of the Committee on Economic Questions:
a. transmits to the Committee of Ministers the project for the creation of a European patents office, which has been studied by this Committee, together with an opinion upon it furnished by the Committee on Legal and Administrative Questions;
b. requests the Committee of Ministers to inform the Committee on Economic Questions at the earliest possible date, through the President of the Assembly, of any objections which it may have to make to the implementation of the project;
c. instructs the Committee on Economic Questions to submit to it, in the course of its next Session, a final draft, together with the opinion thereon of the Committee on Legal and Administrative Questions.
Appendix 1 APPENDIX I to the Report on the Creation of a European Patents Office
(open)Introductory Note to the Study of the Problem of the Creation of a European Patents Office by M. LONGCHAMBON Rapporteur of the Committee on Economic Questions
The reasons in favour of the creation of a European Patents Office are many and cogent.
Every nation has recognised by its legislation the exclusive rights of an inventor to exploit the fruits of his invention, and to this end has established an official service to grant a patent.
But every nation has its own definition of the conditions and formalities to be fulfilled in order to obtain such a patent, with the result that there are sometimes very great differences in these definitions from one country to another.
In particular, the idea of "newness", an essential condition in all legislations for the validity of a patent, has led to very widely differing systems, whose two extremes are those of the United States and France or Belgium.
In the United States, the official service which grants a patent has the responsibility of deciding on the newness of the request, after a thorough cross-questioning carried out by Government experts in the presence of the inventor and his advisers.
In France, the patent is granted without any consideration of the newness, leaving to the holder the entire responsibility of proving the newness of his invention before the Courts, if it should be contested by a third party.
In an intermediary system, such as is in force in Great Britain, the Patent Office, after examination of the claim, publishes the request and, for a short period, anyone may contest the newness of the object in question. The Office weighs up the opposition and gives a final decision.
Denmark, Ireland, Norway, the Netherlands and Sweden have systems similar to that of Great Britain, with small variations.
Italy, Belgium, Greece, Luxembourg and Turkey grant patents without either examination or opposition, as is the case in France.
Furthermore, the formalities in connection with the request for a patent, which are often very strict (size of paper, number of lines per page and words per line, width of margin, specifications for illustrations, necessity or otherwise for a national agent, time-lag, fees, etc.) also differ from country to country.
Now the interest of the inventor, which all these systems wish thus to guarantee, often requires his invention to be protected not only in one country but in several.
This is an extremely complex and difficult task, involving the collaboration of.a whole series of specialists, not only for the granting of the patent, but for its protection during the period, of its validity, making, if required, opposition in due form and with the necessary time-lag in countries where "opposition" is made or, if necessary, taking action in the civil court in countries where patents are issued without enquiry.
It can be easily understood that this situation, together with the extension and increasing complexity of matters submitted for patents, due to technical and scientific progress, makes it more difficult for the isolated and impecunious inventor to protect his interests, and favours powerful firms, enabling the most powerful to create a trust in the invention, in the interests of monopoly and economic warfare.
On the other hand, the diversity of conditions under which patents are granted from one country to another creates a difference in practical value, in the eyes of possible users, between patents granted by different Governments. A patent obtained in the United States, after very strict examination as to newness, is immediately considered as valid by whoever acquires a licence to use it. As regards a patent granted in France, the owner undertakes this examination himself or has it done for him. by experts, if he does not wish to run the risk of a possible lawsuit. Matter to be patented thus tends to gravitate towards countries guaranteeing a thorough examination and to bypass others, bringing to the former an advance in technical progress, accentuated by an exact knowledge of the range of the invention as acquired by-official experts in the course of their cross-questioning. Other countries, though recognising the danger of their systems, are not all able to change them, because of the high costs involved, such as by the technical difficulties of setting up a thorough system of examination.
Thus, we must seek, one way or another, a unification of these systems out of regard for logic and clarity; protecting the interests of genuine inventors on behalf of which this legislation has been enacted; giving greater efficiency to the users of patents by affording them greater security and fewer complications; avoiding disloyal competition and the tendency to create a trust in matters submitted for patents.
It is true that many attemps have already been made since the first International Congress of Vienna in 1873, which declared:
"In consideration of the great inequality between existing legal systems regarding patents and of the modifications in international relations which have taken place in modern times, a need of reform is urgently felt, and we cannot too strongly recommend Governments to try lo draw up, as soon as possible, an international agreement for the protection of inventions."
The problem was again considered at the Congress of Paris, in 1878, but no solution was found.
In 1883, the so-called "Paris" International Union was founded for the protection of industrial property. The texts of the articles of foundation, together with those added later, contained certain suggestions for the creation of unified legislation, but had only very limited results regarding the Inventor's Patent.
The 1914-1918 war raised the question once more. In 1916, an international Parliamentary economic conference was held in Paris. The various Governments of the Entente were represented at it. Tho following Resolution was unanimously adopted:
"The Economic Conference esteems that the allied countries should unite more closely for the protection of industrial property, by using among themselves a system of international registration of patents and in setting up a common organisation for the examination of inventions."
The Convention which was born of this conference, although signed by many countries, had no practical results.
In 1932, at the Congress of London, Italy took up the matter again, but without success.
During the second world war, at a moment when she thought herself victorious, Germany was preparing the principles of a European patent which she would have applied to the conquered countries.
In 1949, our Assembly attacks the problem once again.
The failure of all previous attempts is undoubtedly due to the fact that they tried to effect a unification of existing legislation. This entailed a widespread and complicated modification of systems which differ among themselves not only, as we have seen, by the formalities and conditions attaching to the granting of patents, but also in the nature and extent of the rights conferred by the patents, in the exercise of these rights, and in the effects of the patents All these differences, with their legal provisions, not to mention extensive precedents, have created a terribly complex whole.
Can we hope to overcome these same obstacles through the Council of Europe? Probably not.
But this unification is by no means necessary for the essential aims we must attain.
If we can achieve the following aims:
we shall have done all that is essential.
And there are solutions to this problem.
As an example, we set out one of them below.
(a) The establishment, in co-operation, of a service for the examination of patents, to which requests shall be submitted through existing national services, which will transmit them when the inventor wishes to obtain the "European Certificate of Invention".
Examination as to the newness of the matter submitted, with discussion between examiner and inventor.
Rejection of the request by the service if the matter has already been patented, with the possibility of appeal before a special section.
Agreement to the request if newness seems to be established after this examination. Provisional granting of the certificate, and communication of it to all national services, so that opposition may be made by third-parties within a fixed period (2 months).
Final decision by the European service after a study of possible opposition. Final granting and publication of the certificate or rejection, with the possibility of appeal before the special section.
(b) Every Member State would agree to accept the "European Certificate of Invention" as the basis for a request for an "Inventor's Patent".
(1) By regarding it as acceptable in the form laid down by the Board of Directors for the establishment of "European Certificates of Invention", notwithstanding existing legal or administrative regulations enforced in individual States regarding the wording and presentation of such a request;
(2) By exempting this request from the necessity of an examination for newness, which, as a result of the decision of the " European Office", would be taken for granted as regards the legal regulations of a national nature.
All other legal regulations, including the "patentable" nature of the invention, would apply to this request, which, lo the extent to which it complied with the regulations, would permit the granting of a national inventor's patent; the latter would be subjected in its effect to the existing legislation in that country regarding patents granted by its Government according to its own procedure.
This procedure will be maintained in countries which desire it, and direct granting of national patents will therefore remain possible for those who desire it.
(c) All countries outside the Council of Europe may subscribe to this system.
(d) The guarantee of newness of the European patent being at least equal to that of a United Slates patent, it might be possible to come to an understanding with that country for the reciprocal granting of "imported" patents without too many formalities.
DISCUSSION OF THE PROJECT
The project entirely meets the requirements implicit in the aims we had set ourselves.
(a) It gives to those who so desire it the means of obtaining through a single channel a valid patent, both from the point of view of form and establishment of newness, and a patent carrying the best possible guarantees of newness, in all adhering countries. The creation of a highly technical examination service would be a very heavy charge, the consideration of which would, however, be possible if a great number of countries participated (if there were a "unified market"). The invitation of third-party's opposition, which is, from all points of view, the best procedure, could be carried out simultaneously in all Member States.
The international character of this organisation, which would be. ensured by the composition of its Board of Directors and of its services, and its cooperation with all the national offices, would be a guarantee of impartiality and loyalty in its work. In this way, legitimate private interests and common interests would be best protected.
(b) It should be possible for this system to function without any extensive modification of existing legislations.
(1) It provides, for a definition of the protected person acceptable by all legislations. This could be that of the Belgian and German laws: "The patent is granted to the first person applying for it."
In spite of the differences in legislation of the various countries on this point, this is the rule which, in pratice, is more or less followed everywhere.
The European Office, since it would issue only a "certificate" and not a "patent", could perhaps agree to grant this to the first applicant, who would be considered as an agent of "to whom it will belong" in every country where the certificate is to be converted into a patent.
Some legal ruling would have to be given on this point, although there does not appear to be any a priori obstacle in the way of such procedure.
(2) It provides for a definition of newness acceptable by all the existing national legislations. For this it would suffice if the European definition were sufficiently strict to enable each of the national definitions to appear less strict.
This would be obtained automatically by the conditions for the issue, of the certificate which, as mentioned above, would be more strict and more restrictive in all fields than the conditions under national legislations and, therefore, would cover all the requirements of the latter.
For example, the legislation in Great Britain confines itself to the establishment of newness in relation to practices or publications known in Great Britain. The European certificate would represent there a guarantee of newness in relation to practice and publications known in Europe and, therefore, including Great Britain. The spirit of the legislation would, therefore, be fulfilled (and in the letter also, by procedure for third-party opposition).
(3) The same applies with regard to the idea of the "patentable nature" of the invention, which would be defined by a European certificate. It would suffice if this definition were wider than in any national legislation, so that each could maintain its own restrictive effect at the moment of conversion into a patent.
For example, the legislation of some countries does not admit the "patentable nature" of a chemical product in itself; in other countries, the legislation does admit this. The European definition should, therefore, admit it. The certificate issued would be ineffective in the countries where it was not admitted, since our principle is that the certificate, in order to be effective, must be converted in each country into a national patent, in order to become legal in accordance with the legislation of that country.
The same applies lo the provisions with regard to anything "contrary to public morals, public order, etc." existing in national legislations. This protection would be assured in accordance with the separate legislations.
the acceplance by each country without discussion as to the newness or form of presentation of a registered European certificate and its conversion into a national patent. Legally, some legislative provision, ratifying an international agreement to this effect, would be necessary.
In practice, there seems to be no serious reason why any country should oppose this. Putting aside the question of the form of presentation—which would be decided after consultation with the various countries and in accordance with the established procedure of examination (in the form of specific claims, "claims" in the Swedish, German and United States sense), and concerning which there should be no real difficulty—the question of establishment of newness should not encounter any opposition, in view of what has already been stated above.
Psychologically, there may be a certain amount of reserve on the part of those countries already possessing their own examination services, which would be tempted to refuse to grant a patent for an invention which had not passed through their national examination service. But we have already shown that the examination for tho issue of the European certificate will be at least as strict and restrictive as any of those systems actually in existence. It should be remembered that, in this system of procedure, there is a provision: for an invitation for third party opposition through the intermediary of the national services, which latter may, if necessary, themselves act as third party opponents.
The role of the national services would, therefore, remain very important for the protection of the interests of their nationals, and their activities on behalf of these not requesting a European patent would remain unchanged.
Internal agreements of a private order, useful to both sides, could be made between the European examination service and this or that national examination service, so that the latter would participate through its experts in the task of the European service.
(5) The differences in the national legislations concerning the necessity or not of a national agent, the length of the protection period, national patents' fees, exploitation obligations, compulsory licences, forfeiture, right of personal possession, right of requisition, etc., could continue without upsetting the system in any way, since the "effects" of the patent obtained in a country upon presentation of a European Certificate would be those determined by the national laws of that country.
The European Office, through its European Board of Directors could, however, study the recommendations to be made to the various countries in order to arrive progressively at unification, and could serve as a consultative Council for those countries which contemplate modification of their legislation.
(c) Fees. — Under the system as described, national fees would be retained in their entirety. The necessary charge made to meet the costs of the European service would thus be a supplementary charge on the existing rates, and the costs of such a service would necessarily be very high.
However, in view of the existence of the "large market" formed by sufficient countries joining together and the rather large quantity of applications which this would allow, the fee payable by the individual could be kept at a reasonable level.
The simplification of procedure provided by the European service for inventions, which are to be patented in several countries, will moreover correspond with a reduction in costs for the holder, which may be quite appreciable in some cases. The security given to the holder as to the newness of the invention would be of great value to him, and consequently to the inventor.
It seems that it should be possible to fix a reasonable rate, which would allow many people to make application to the European service.
Generally speaking, it is only inventions of little intrinsic value or of very doubtful newness which would be discouraged and there is no cause for regret here. It must also be remembered that the present possibilities would still exist in their entirely for all inventors and for all inventions.
While trying to balance the budget of the European service exclusively through the fees levied, the participating nations should nevertheless undertake to guarantee the maintenance of the service by annual subsidies where necessary.
(d) Priority Period. — One of the most useful results of the 1883 International Union is that all the participating countries grant a priority period of one year to every application made in one of them, dating from the receipt of this application.
This provision should automatically come into play where the application for a "European Certificate" in any country is considered by the International Union as an application for a patent; this should not give rise to any fundamental difficulty and could be negotiated with the Board of tho Union.
It might, however, be a good idea, in order to allow the free development of the procedure of European examinations, if the countries belonging to the system of the European certificates could agree among themselves to a priority period of eighteen months, or two years, for the patents deriving from a European certificate.
(e) Special legislation existing in some countries (France, for example) provides for certain applications for patents, relating to national defence, to be kept secret.
Since applications would be transmitted to the European Office through the intermediary of the national services, the working of this legislation would not be hindered.
Summary. — The application of this system would allow the maintenance, probably in its entirety, of existing legislation, to which should bo added, through the ratification of an inter-European convention, the registration of European certificates of invention as national patents, at the request of the patentees, of European certificates of invention, without any discussion of the form or the newness, and possibly with a priority period increased to eighteen months or two years.
ALTERNATIVES
(a) The European examination service might simply be at the disposal of the national services, or of individuals, as a consultative body to give advice on the newness of the invention.
The reply should be given after documentary research into priority, without any procedure of objection.
It should be noted that the costs of such a service would still be very high, whereas the advantages to the user would be much fewer than those of the system outlined above.
(b) The consultative nature of the European Office might be retained, with national services bearing the responsibility for accepting or rejecting the application for a patent, with consultation compulsory in some cases to be made complete by a procedure of opposition. This would result in systems giving advantages similar. to those of the system outlined above, but at the cost of far-reaching modification in the legislation of some countries.
Appendix 2 APPENDIX II to Report on the creation of a European Patents Office
(open)STUDY for draft Proposal of a Convention on the creation of a European Patent Office
The Governments of
Considering that the fulfilment of closer union between Members of the Council by means of agreements and common action, particularly in the economic and administrative fields, is one of the principal aims of the Council of Europe;
Considering that the effective and inexpensive safeguarding of the rights of European inventors calls for the creation of a European public organisation responsible for the granting, in accordance with common regulations, of industrial rights, the final validity of which will depend on the respective national legislations;
Considering that, pending the unification of national legislations and of local industrial rights' offices, the creation of a European Patents Office would be an immediate and definite step in that direction;
Considering that technical progress and the development of inventions make increasingly imperative the pooling of the means and resources of each of the Member States of the Council, for the protection of the inventor and of national industries which benefit from his activities;
Considering Article 15 of the International Convention for the protection of industrial rights signed in Paris on 20th March, 1883, revised in Brussels on 14th December, 1900, in Washington on 2nd June, 1911, at The Hague on 6th November, 1925, and in London on 2nd June, 1934, together with the Resolutions of the International Congress of Vienna in 1873 and of the Parliamentary Economic Conference of 1916;
Considering that, by the Recommendations of an d of the Consultative Assembly and the Committee of Ministers of the Council of Europe have respectively adopted the Proposals set out below;
Agree that:
Article 1. — A European Patents Office shall be set up, responsible for the issuing of a "European Inventors' Certificate" to inventors who apply for it through their respective national services for the protection of industrial rights.
Such certificates shall not entitle to any final industrial rights unless the conditions laid down in the respective national legislations are fulfilled. Nevertheless, the decision of the European Office concerning the establishment of newness of the invention shall constitute a definitely fulfilled condition for the national service called upon to issue the patent.
Art. 2. — The procedure for the issuing of the European Inventors' Certificate shall be as follows:
Any person, or group of persons, may apply for a patent to one of the national services for the protection of industrial rights in a Member State and at the same time request a European invention certificate.
Within a fortnight of receipt of such application, the service concerned shall transmit it to the European Patents Office, which will then proceed to an examination, by cross-questioning if necessary, with a view to ascertaining whether newness and patentability of the invention can be established, in accordance with rules which the specialised section mentioned below will have laid down in accordance with the legislation and precedents of the Member States.
If the application is rejected, the person concerned shall be entitled, during a period of three months, to make a claim before the specialised section of the Office.
If the application is upheld, a communication shall be sent, within a fortnight from the date of decision, to the national service for the protection of industrial rights in the Member States, so that any opposition by third parties may be declared within two months.
At the expiration of this period, the office shall take a final decision, against which a claim by the applicant or by third parties may be laid before the specialised section during a period of two months from the date of posting of the communication of this decision to the national service.
On expiration of the time limit for laying of claims, or after the decision of the specialised section regarding any claim, the European office shall communicate its decision, and the national service to whom the application for a patent was made shall proceed to the granting of the patent on the conditions laid down in Article 1.
The other services shall do likewise in the case of any request made to them later by the applicant.
Art. 3. — The national patent obtaine d by registration of the European certificate shall be subject to the conditions, particularly those affecting, validity and forfeiture, laid down in the national legislation.
Art. 4. — The European office shall receive from the Governments Members of the Council of Europe the originals, or certified true copies, in the form of photocopies or micro-photo copies, of any documentation which they possess, or which they may constitute or acquire in regard to these matters, in particular the facsimiles of patents granted, or applications for patents filed with their respective national services. These shall be communicated to the Governments as early as possible.
Art. 5. — A Board of Directors, consisting of eight governmental representatives, nominated by the Committee of Ministers, will be responsible for the functioning of the European office. The Board will appoint the Director of the Office, approve the Budget, and supervise the work of the Director.
The Director will make appointments to fill administrative posts provided for in the establishment of the Office. The members of the specialised section, consisting of ten European experts of high standing in the sphere of industrial property, will, however, be appointed on the proposal of the Board by the Committee of Ministers of the Council of Europe.
Art. 6. — The Office will be a public institution of the Council of Europe, and as such it will be attached to the Secretariat General of the Council. In that capacity it will enjoy the privileges and immunities prescribed in the General Agreement of 2nd September, 1949. The officials of the Office will have the status of officials of the Council of Europe.
The Committee of Ministers, the Consultative Assembly and the Secretariat General of the Council of Europe will have a deciding voice in regard to the activities and the management of the Office.
Art. 7. — The internal, financial and administrative regulations of the Office shall be subject to approval by the Secretariat General of the Council of Europe. The latter will, in this respect, have a dual responsibility to the Committee of Ministers and to the Consultative Assembly.
Art. 8. — The financial resources of the Office will be provided:
a. by charges and fees contributed by those who make use of the services of the Office;
b. by a subsidy granted by the Council of Europe out of the budget of the Secretariat General.
The details regarding these charges and fees will be settled by the Board of Directors, subject to the approval of the Committee of Ministers.
Art. 9. —; The. present Convention, which is concluded for a specified period, may be amended by the Committee of Ministers, on a recommendation to that effect by the Consultative Assembly. Amendments will come into force as from the date of a Minute, drawn up by the Secretary General, confirming the decision of, the Committee of Ministers.
Art. 10. — The present Convention shall be ratified by the respective legislative authorities and will come into force as soon as eight instruments of ratification have been deposited with the Secretary-General.
Done at Strasbourg this in French and in English, both texts being authentic, in a single copy which will be retained in the Archives of the Council of Europe. The Secretariat General will communicate certified true copies to all the Signatories.