Tuesday, 27 May 2014

EPLIT meeting in Edinburgh

Micaela Modiano of Modiano & Partners was so kind to provide us with her report on the first annual meeting of the newly founded European Patent Lititators Association in Edinburgh, which is surely of interest for all of our readers who were unable to attend:
About half a year after foundation of the European Patent Litigators Association (EPLIT), the first annual meeting of EPLIT took place in Edinburgh on 2nd May, 2014.

The meeting was opened by Eugen Popp by briefly explaining how the idea to create an association such as EPLIT arose. As the UPCA appropriately provides for representation of parties by European patent attorneys having an additional qualification in patent litigation, there is an ongoing need to promote the participation of European Patent Attorney Litigators in proceedings before the UPC. Active participation of attorneys specialized in litigation seems essential for reaching the goal of user-friendly, fair and cost-efficient patent litigation in Europe. However EPLIT is not only open for EPA litigators, but also other practitioners qualified according to Article 48(1) or (4) UPCA are eligible as associate members.

The introduction was followed by a presentation from Laura Starrs, a member of the UPC task force of the UK Intellectual Property Office. She gave a brief overview on representation before the UPC according to Article 48 UPCA before entering into a detailed presentation on the question of what qualifications will be considered appropriate in order to qualify as representative under Art 48(2) UPCA. She mentioned that the Preparatory Committee is currently working on an amended proposal (in view of input from the member states) whereas a revised proposal will be published soon and will be subject to a public consultation which will be open for six weeks. Her presentation was followed by a discussion on where the level should be set for appropriate qualifications according to 48(2) UPCA.

After a coffee break, elections of two further board members as well as of three temporary directors took place. Koen Bijvank, first president of EPLIT, presented the endeavours EPLIT’s board plans for the immediate future. Amongst others, meetings with officials and the organisation of mock trials will be the primary objects of the first elected board of EPLIT. Finally, the creation of six working groups was agreed on. These working groups established at the First Annual Meeting of EPLIT are the following:

1. Qualification
2. Costs of Proceedings
3. Code of Conduct
4. Privilege
5. Mock trials
6. Issues of substantive Law


For anyone interested in joining EPLIT and eventually joining one of the working groups, the application form can be found on
www.eplit.eu.

Friday, 23 May 2014

When does Clarity become an Issue in the Opposition Procedure?

Many of the skilled readers will know that clarity of the claims is not a ground of opposition under the EPC. Clarity of all the claims is supposed to examined in the examination procedure and treated as something like res judicata  in the subsequent opposition procedure. G 09/91 states, however, that amendments of the claims are to be fully examined as to their compatibility with the requirements of the EPC (including clarity).

In principle, Art. 84 EPC applies to all of the claims, the independent ones and the dependent ones. As a consequence, most of the boards have interpreted  G09/91 in such a way that mere combinations of formerly dependent claims do not introduce subject-matter which has not yet been examined for clarity and therefore do not open the power of an Opposition Division or a Board of Appeal to examine the clarity of amendments of this kind. However, there is a recent tendency to deviate from this line (see e.g. here) or to circumvent Art. 84 EPC via Art. 83 EPC by arguing that the claim is so unclear that the specification does not enable the skilled person to carry it out.

Experience shows that the concentration of both examiners and attorneys rapidly decreases once they have successfully read and understood claim 1 and that the clarity of the claims tends to decrease with increasing number.

This may lead to problems when a dependent claim including its shortcomings is suddenly placed in the limelight by being incorporated into an amended claim 1. Both opposition divisions and opponents have to control their well-trained reflexes to scrutinize the clarity and are sometimes obliged to even support highly allergenic words like "substantially" in a claim 1.

The latter was the fate of the technical board of appeal in the decision T 373/12, which was faced with the nuisance that the formulation "substantially all of its surface area" had found its way from claim 3 as granted into an amended claim 1. It has therefore referred the following questions to the enlarged board of appeal:
1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of

(a) elements of dependent claims as granted and/or

(b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?

2. If the Enlarged Board of Appeal answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features or may it extend to features already contained in the unamended independent claim?

3. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded? 4. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?

Wednesday, 14 May 2014

Copyright and Divine Inspirations

Who owns the copyright of the ten commandmens?
An interesting case on author's rights has been reported by the upper district court in Frankfurt (Oberlandesgericht Frankfurt am Main) here. The copyright dispute dealt with a text for which the author had allegedly experienced "divine inspiration" from Jesus.

The defendant argued that the copyright thus belongs to Jesus and not to his humble servant who had only received the dictation from Jesus and thus played the role of a typist without any creative freedom.

The court disagreed. According to the judgement, any inspiration from the other side has to be entirely attributed to its receiving person.

Tuesday, 1 April 2014

Patentee+Patentee=Two Appeal Fees


In the case on which the decision 10W (Pat) 17/14 of the German Bundespatentgericht is based, two legal entities co-owning the patent had commonly filed an appeal against the decision of the opposition division and paid only one appeal fee.

According to earlier decisions of other senates of the the Bundespatentgericht, this had been considered sufficient because co-owners of a patent were considered mandatorily joint parties (notwendige Streitgenossen) in a legal sense. After all, they are obliged to perform procedural steps jointly.

According to the 10th Senate, this is not sufficient to qualify the co-owning patentees as a single party. According to law, the fees have to be paid for “for each Appellant” (für jeden Antragsteller).
Subsequent attempts of the patentee to argue that the actually formed single legal entity for the purpose of prosecuting the patent from the onset have not been successful. The same holds for the attempt to subsequently allocate the appeal fee to one of the patentees. It has to be unambiguously clear which parties are parties of the appeal procedure at the time limit to file the appeal.

The appeal was deemed to be not filed.

Wednesday, 19 March 2014

Is it unfair to account for compatibility with design characteristics of copetitors?

The question of whether or not the adaption of design features, in order to integrate a product into a series or a system developed and designed by a third party, offends the principle of fair competition has been under heavy dispute in the past.

While the BGH had ruled in the decision "Klemmbausteine II" (Urt. v. 7.5.1992 - I ZR 163/90, GRUR 1992, 619 = WRP 1992, 642)that such an integration into a series of a third party (in the case at issue, the products were plastic bricks matching Lego breaks constitutes an unfair profiting of the achievements of that third party.

However, this rule was put into perspective with the subsequent decision “Klemmbausteine III” (I ZR 30/02) and "Modulgerüst" according to which this subsequent protection against inserttion into a series of a third party should be at least limited in time. According to the Senate, the term of protection should be based on the term of protection of similar industrial property rights such as patents or registered designs. However, a legitimate interest of the author of a series of product to be protected against insertions into the series was recognized.

The two recent decisions “Regalsystem” (I ZR 136/11), and "Einkaufswagen III" constitute surprising turning point in this line of decisions. According to the decision “Einkaufswagen III”, the fact that an interest of customers in optically compatible products in view of the need of replacement or enlargement exists is no indication for an inappropriate exploitation of the valuation of the imitated product, but rather an indication to the contrary. If a need for replacement using optically compatible products exists of the side of the customers, an inappropriate exploitation of the valuation of the counterfeit product may be excluded even if the aesthetic design features are adopted almost identically.

One decisive factor is the question whether or not the salability of a product with differing design features would be reduced as compared to the product with imitated design features (BGH “Regalsystem” I ZR 136/11).

Monday, 17 March 2014

Maltese IP Attorneys are no Patentanwalt

The Federal Court of Justice BGH has received an appeal against a decision of the Bundespatentgericht. The appeal was filed by a person registered as "IP Attorney" at the Intellectual Property Office of the Republic of Malta, but not as a German Patentanwalt.

The appellant's representative invoked the Directive 2006/123/EC of 12 December 2006 on services in the internal market as a legal basis for his entitlement to represent before the BGH. The BGH did not follow this argument because the directive 2005/36/EG is lex specialis to Directive 2006/123/EC and allows for supplementary qualification examinations for profession in its field of application. The German (supplementary) qualification examination for qualified patent attorneys from other European Countries is such a supplementary examination and is therefore in perfect conformity with Union law.

Since the Maltese representative did not figure in the list of German Patent attorneys, he was not entitled to represent his client in this case. As he did not pass the examination, he was further not entitled to be registered in this list. The appeal was deemed to be not filed.

The full decision can be read here.

Wednesday, 12 March 2014

Button in the Ear has no Distinctive Character

Sometimes, the world is unfair. One of the most distinctive trademarks this blogger knows from his childhood is the "Button in the Ear" with the Steiff ear tag for Teddy bears and other cuddly animals.

The Steiff Company has therefore been well advised to apply for a community trademark registration for this trademark. The trademark was labelled as a "position trademark" accompanied with the illustration on the left hand side.

However, the members of the boards of appeal of the OHIM and judges of the European Court of Justice apparently do not share this blogger's experiences and have rejected the application  due to a lack of distinctive character.

According to the court, buttons and little tags bearing information such as a brand, price or cleaning instructions are usual design features of cuddly animals and the Steiff ear tag does not differ from the design usual in this field to a sufficient degree.

It appears that Steiff will have to provide evidence that the sign acquired distinctive character through the use which has been made of it.
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