Hi Christoph,
Thanks for this explanation, which makes some things clearer but also throws up some questions (I basically need some more information on the points you make – I have looked at the cases you refer to but can’t quite follow your logic, particularly on how
we exclude random mutations from patentability by the relying on case law). I would be very keen to have a call (this week?) to discuss some of the details and the next steps so we have a common understanding before the letter is finalised.
On the bigger / more strategic issues:
- I am not a fan of the disclaimer as it is not a binding, transparency rule and still puts the onus on civil society to be alert and check it is being applied fully. But if we can really achieve what we want on the other two points in an easy way, I guess
we could live with it, and see how it works in the next year. If it doesn’t work e.g. on the new GMOs we would anyway have to get active again.
- Regarding the process: You are suggesting that the Admin Council adopts a text that basically replaces the proposal made by the President in 2017 and which will then be reflected in the examination guidelines? Can we check that the Admin Council is able
to do this legally? I also wonder strategically if it makes sense to straight away propose this “light” option. On the one hand, I see what you say that they are more likely to be interested in an easy solution. But on the other hand it will be difficult to
us to demand a change in the implementing regulations at a later stage if we do not do so now. Again, it is probably better to discuss this together on a call.
Thanks
Katherine
-----Ursprüngliche Nachricht-----
Von: Npos_2018 [
mailto:npos_2018-bounces@testbiotech.de] Im Auftrag von Christoph Then
Gesendet: Dienstag, 19. Mai 2020 17:50
An: npos_2018@testbiotech.de
Betreff: Re: [Npos_2018] Draft letter to AC and welcome to Gudula
Dear Katherine
thanks for your comments. I agree that this letter is somehow a change in our communication towards the Members of the AC. But it is not a change in our goals!
I have to admit, when I started to work on this letter, I already had much more arguments and reasoning written down in a longer draft version, before I finally again studied the Decision G1/08 and was happy to find there is a new, smart and more precise
way to move the AC. But maybe I should explain. We need a common understanding. So thanks for your question.
In our original response to the 2017 decision we were not fully aware of the obvious contradiction between the President's document and the Decision in G2/07 and G1/08. Therefore, we did not point out these contradictions. But now we should use it. My
conclusion: Our position is much stronger than we thought. Also within the current jurisprudence of the EPO, they can not just leave it with this incorrect interpretation of the President.
We should be aware that the decision of G1/07 is already introduced into the examination Guidelines (at least partially). I always was wondering about the strong wording in the Guidelines about fundamental
differences between GE and conventional breeding. But I was too stupid and not aware that this is the wording from G1/08. I think at the level of the Technical Board, we might have been made aware that this wording
is already quite effective (but this is just some guessing).
Being aware of the facts and findings as summarized, I would like to keep our demand as much as streamlined and easy as possible, to move the delegates to take initiative. Also after our talks with the German ministry, I am sure, we will get most interest
and support in our demands if we can show that they can be fulfilled it without changing the Rules or the text of the EPC. So I would like to follow this path.
Would it become legally binding if the AC would adopt the text as proposed? In itself, it would not have a legally binding effect such as a new Rule or change of law. But this is not necessary: We just have to make sure that there is no longer any contradiction
between the decision of the AC and (what we think is) the correct interpretation of Rule 28 (2). If my understanding is correct, the desired legal binding effect will simply result from G1/08 and not from the new decision of the AC.
In short: my understanding is that the problem (with the definition) is solved as soon as the AC agrees with us that the text of the President is an incorrect interpretation. If my analysis is not correct, the AC will not follow it and we have to raise
stronger demands anyway.
Similarly, the demand that all products and materials needed for breeding are excluded does not seem to by a major problem. I think this demand is supported by all contracting states. There is only a contradiction introduced by the text of former President:
It says, that cells still are still patentable. If we get rid to this text, the problem should also disappear.
On the scope of patents, I guess we will have to live with the disclaimer. I see no way to convince the AC to come up with stronger initiatives. But if the proposed text would be adopted, it could support our position. I am not so happy with this situation,
but do not think we can go further on the basis of G3/19.
As indicated above, after the decision of the Enlarged Board, the interest of the European governments to get active on this topic might by minor. But nevertheless, I am (for the first time) optimistic we can still reach our goals. Let us go for it.
In addition, what we still could add to the draft letter, is a a change in national law (definition of essentially biological processes and scope of patents). I missed that to add in my draft, but I would like to add.
If needed we also can have a chat on the telephone (or zoom conference).
I think this is a huge opportunity and we should use it asap. But we also should have common understanding of the situation.
Cheers
Christoph
Am 19.05.20 um 15:44 schrieb ARCHE NOAH Katherine Dolan:
> Dear Christoph,
>
> Thanks for the draft. I have a couple of questions and based on your reply I would make some more detailed comments on the letter:
>
> 1) In my view we are too complementary about the 2017 decision. I am conscious we should show that we appreciate their efforts, but they did after all ignore our warnings that the proposal didn't go far enough. In Austria we also have the specific situation
that we heavily criticised the proposal in 2017 as formally establishing loopholes that were previously informal (
https://www.ots.at/presseaussendung/OTS_20170626_OTS0008/arche-noah-europaeisches-patentamt-will-patente-auf-pflanzen-und-tiere-legalisieren)
and it was this criticism that got Austrian government to vote against it. So it is awkward for us to be too positive now - particularly as we don't want to expect less of the current minister than the minister in 2017, especially as she is a green.
>
> My question - is it ok for you in general if we are less complementary about the 2017 decision or is this very important for you?
>
> 2)
>
> You call on the AC to "adopt and publish a text for clarification". Do you know what legal binding form this can take? Why are we not aiming for a further change in the Implementing Regulations?
>
> Thanks
> Katherine
>
> -----Ursprüngliche Nachricht-----
> von Christoph Then
> Gesendet: Dienstag, 19. Mai 2020 13:26
> Betreff: [Npos_2018] Draft letter to AC and welcome to Gudula
>
> Dear all
>
>
> welcome to Gudula from Gene ethical Network which replaces Judith which is on parental leave!
>
> please see attached the draft letter to be sent to the Member States of the EPO asap. I also will prepare a German version.
>
> I think, after further reading of G2/07 and G1/08, there are very good chances to sort out the issue the one way or the other. The wording seems to be stronger than I remembered. I included a condensed legal overview which is adding some new elements
(after all discussions ...).
>
> Please come back with your comments till Thursday.
>
>
> Cheers
>
> Christoph
>
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