Monday, 8 March 2010

G 1/07 – Vienna Is Not Narrow-Minded

In my previous post dedicated to G 1/07 I only reported the answers given by the Enlarged Board (EBA) to the questions referred to it by interlocutory decision T 992/03. I promised to come back on the decision of the EBA should I find it to contain interesting statements. In fact, I found the decision as a whole much more interesting than its answers to the (rather narrow) questions. I will dedicate two further posts to noteworthy points raised by the EBA. The first one deals with an interpretative principle that has often been followed as if it was self-evident : the principle stating that exclusions to a general rule are to be interpreted narrowly. The EBA has something very interesting to say on this subject:

[...] The appellant, referring to case law of the boards of appeal and most of the amici curiae submit that on the basis of the Vienna Convention a principle of narrow interpretation of exclusions from patentability should apply, since according to A 4(3) it is the task of the Organisation to grant European patents.

It is established in the jurisprudence of the EBA ever since decision G 5/83 [3ss] that the principles of interpretation of Articles 31 and 32 of the Vienna Convention are to be applied to the interpretation of the EPC even though its provisions do not apply to the EPC ex lege.

According to Article 31(1) of the Vienna Convention a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose. Further means of interpretation including in Article 32 the preparatory work of the treaty are then defined but there is no mention in the said provisions of any principle of narrow or broad interpretation, be it only of exclusions, and decision G 5/83 also does not say so.

Hence, no general principle of narrow interpretation of exclusions from patentability which would be applicable a priori to the interpretation of any such exclusions can be derived from the Vienna Convention. Rather, the general rule in Article 31, point 1 of the Vienna Convention that a treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose must apply to the exclusion clauses contained in the EPC in the same manner as to any other provision, the latter including those positively defining the requirements for patentability.

If the interpretation of the provision concerned according to these principles of interpretation leads to the result that a narrow interpretation is the right approach then and only then such restrictive meaning is to be given to it.

Admittedly, when it comes to considering the impact of the context of a provision, the fact that a provision is an exclusion to a general rule is not without any bearing on its interpretation but this aspect is only one of the factors determining what the right interpretation of the provision concerned is. At least equally, if not more important, is, besides the ordinary meaning to be given to the wording of the provision, that the provision is interpreted in such a manner that it takes its effect fully and achieves the purpose for which it was designed. As has been said before, this must apply to an exclusion clause in the same manner as to any other requirement for patentability.

In its opinion G 1/04 [6] the Enlarged Board stated – thereby referring to decisions of the boards of appeal having acknowledged the existence of such an a priori principle – that the “frequently cited principle”, according to which exclusion clauses from patentability laid down in the EPC are to be construed in a restrictive manner, does not apply without exception. Interestingly, in that opinion concerning the definition of the term diagnostic methods practised on the human or animal body, the Enlarged Board carne to its conclusion that the said exclusion was indeed to be interpreted narrowly only after a thorough investigation of the wording and the purpose of the exclusion clause concerned.

The same approach is also transparent from the Enlarged Board’s more recent decision G 2/06. In that decision the Enlarged Board was concerned with the interpretation of the exclusion from patentability of biotechnological inventions relating to uses of human embryos for industrial or commercial purposes under R 28(c) EPC (and the corresponding Article 6(2) of the EC Directive on the legal protection of biotechnological inventions). In that decision the Enlarged Board does not mention the existence of a principle of narrow construction of exceptions from patentability at all. Instead, as method for interpreting the extent of the prohibition the Enlarged Board goes directly to the rules of interpretation laid down in the Vienna Convention, i.e. it looks at the terms of the provision and its object and purpose (point 16 of the Reasons). No mention is ever made in the further course of the reasons of that decision of any narrow or restrictive view which would have to be taken because the said prohibition was an exception to patentability and in the present case the Enlarged Board will proceed in the same way. [3.1]

I am not unhappy to see the Enlarged Board put aside this principle, although by doing so the EBA deprives me of a beloved trait d’esprit. When people pointed out that exceptions to patentability were to be interpreted narrowly, I often answered that European patents created an exception to the principle of free movement of goods in Europe (all Contracting States to the EPC are in one way or another linked to the European free trade area) and, therefore, European patent law was to be interpreted narrowly. As a consequence, so went my argument, exceptions to patentability were exceptions to an exception and, as such, to be interpreted broadly. Needless to say, I have not made many converts. Now the EBA, by setting aside the exceptions-are-to-be-interpreted-narrowly principle, also sets aside my only original contribution to the patent doctrine. Sad, isn’t it?

To download the decision, click here.


Anonymous said...

First I would like to thank you for your blog. It's a nice piece of work and it has not passed unnoticed at the EPO's boards of appeal.

On a different point, I believe to remember that the justification given in the decision on the exhaustion of priority (T 998/99, OJ 2005, 229) was exactly that "exclusions should be interpreted narrowly". A principle now overturned by the EBA.