The Moral Clause in Patent Law and Threats Posed by Human Germl ine Genome Editing

This article examines whether the lack of closure of moral clauses in patent laws, particularly in dealing with the issue of human germline genome editing, causes such clauses to fail to function as a moratorium in countries like Mexico. The hypothesis posed here is that a general, open, moral clause in intellectual property legislation, specifically in patent law, is ineffective when confronted with a foreseeable but strong innovation that alters an area of applied biology such as human germline genome editing. Using the deductive method, this research aims to determine whether countries like Mexico need to provide more specific guidance in their legislation on technological innovations like human germline modification in order to foster an atmosphere of legal certainty. A comparative analysis of the closed morals clause in the European Patent Convention and the open morals clause in Mexico’s intellectual property law confirms this hypothesis. Specifically, the lack of closure of a morals clause in patent law, when confronted with novel and complex technological advances, will likely fail to function as a moratorium.

15. Software patents

This chapter focuses upon the somewhat complex manner in which the patent system has operated in respect of so-called software-related inventions. For a variety of reasons, the United Kingdom’s Patents Act and the European Patent Convention both exclude programs for computers from eligibility for protection. The prohibition extends only to protection for the program “as such” and as interpreted by the patent and judicial authorities applications for inventions that produce a technical effect are considered acceptable even where these are based on programs. This chapter will consider how this situation has arisen and will consider the application of software related patents in key sectors such as that of mobile phones in which products and network technologies make very extensive use of patented technologies. The concept of standard essential patents has attained considerable prominence and requires the owner of such a patent to make its use available to others upon fair and reasonable licence terms. As well as possessing a degree of ambiguity as to what terms might be fair and reasonable, the situation is highlighting the problems of trying to apply national patents in the context of a global industry.

Who decides if there is a conflict between Implementing Regulations and Articles of the European Patent Convention?

In case T1063/18, the EPO Board 3.3.04 declared Rule 28(2) of the European Patent Convention (EPC) non-applicable due to a conflict with the interpretation of Art. 53 b) by the Enlarged Board of Appeal, referring for that to Art. 164(2) EPC. Whether the Board had the competence do to so is discussed in this paper. We suggest that probably the Board has the competence to declare the non-applicability of Rule 28(2) inter partes, whereas the declaration of inadmissibility erga omnes is the privilege of the Enlarged Board of Appeal, whose involvement in this case would have been the legally more appropriate way to proceed.

Settling the Patentability of Products Obtained from Essentially Biological Processes: The EPO President’s Referral to the Enlarged Board of Appeal in the Aftermath of “the Pepper Case”

In the aftermath of the Technical Board of Appeal’s decision T 1063/18 of 5 December 2018 (“the Pepper case”), the President of the EPO has referred, in G 3/19, two questions to the Enlarged Board of Appeal pursuant to Article 112(1)(b) of the European Patent Convention concerning the patentability of products obtained from essentially biological processes under Article 53(b) EPC. The Technical Board of Appeals in T 1063/18 upheld that the new Rule 28(2) of the Implementing Regulations to the European Patent Convention conflicts with Article 53(b) EPC, as it has been interpreted by the Enlarged Board of Appeal in G 2/12 and G 2/13 (the “Tomato II” and “Broccoli II” cases), namely that “the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plants material such as fruit”. Moreover, the TBA concluded that Article 58(b) EPC should prevail over Rule 28(2) EPC-IR. Since this ruling challenges the Administrative Council’s amendment to Rule 28 EPC-IR, the President deemed it necessary to refer the conflict to the EBA in order to “restore legal certainty”.

7. Secondary Patentability Requirements

This chapter considers the secondary patentability requirements of the European Patent Convention (EPC). It assumes the existence of a subject matter for which a European patent may validly be granted, and focuses on the legal tests for determining its novelty, inventive step, and susceptibility of industrial application in accordance with Articles 54 to 57 EPC and the corresponding provisions of the EU Biotech Directive for biotechnological inventions.

5. The Procedure for Obtaining a European Patent

This chapter considers the procedure for obtaining a European patent directly from the European Patent Office (EPO) and indirectly from a competent patent office of a European Patent Convention (EPC) Contracting State or by international patent application under the Patent Cooperation Treaty 1970. It also considers the result of each procedure, and the focus within the European patent community on reducing the burden on patent applicants and improving patent quality with a view to minimizing the risk of a patent's revocation post-grant.

4. Introduction to European Patent Law

This chapter introduces the European law of patents and related rights with a discussion of the nature of patents as limited-term monopoly rights granted in respect of new, inventive, and industrially applicable inventions and the routes to obtaining patent protection in Europe. It then considers the existing European patent system established by the European Patent Convention 1973/2000, including its basis in state-based conceptions of IP territoriality, and the challenges presented to that system by globalization and developing technology. And finally, it discusses the long-standing pursuit of a unitary patent and unified patent court for Europe, including the reasons for each, and the features of the proposed Unitary Patent Package of 2012/2013.