Monday, 27 October 2014

What is a "Normal" Dog Biting Event? - T 718/08



The main request in an appeal against the decision of the opposition division to revoke a patent amongst other grounds on Article 100(b) EPC as the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art.

Claim 1 of the main request reads:
A chewable product (40) capable of enhancing dental hygiene in a pet, comprising a continuous phase (44) and a discontinuous phase (46) characterised in that the phase proportions are such that a force of at least 100 Newtons is required to penetrate a surface of the product (40).
In the Auxiliary request, the it was claimed that the force required to penetrate the product is greater than expected to be exerted by such pet during a normal biting event.

The methods for measuring the penetration force given in the specification made reference to a "specially constructed model tooth" of and an analysis system "designed to simulate the biting action of a dog's teeth" and to "a specially designed cone-shaped penetrometry probe of length 12mm" pushed into the product "at a rate of 2mm/s". Further geometrical details such as the cone angle of the model tooth or the probe were lacking.

The board discusses various attempts of the patentee to provide evidence for the fact that the skilled person will be able to derive suitable values for the cone angle as a matter of routine and concludes that the skilled person is unable to determine the missing cone angle on the basis of the patent and his common general knowledge. Failing a specific value of the cone angle he will be unable to reliably measure penetration force and thus reproduce the claimed invention. The invention according to the claims of the main request is thus insufficiently disclosed (Articles 83, 100(b) EPC).

This is a good example of the inescapable enablement-disclosure-trap where a drafting error turns out to be fatal many years after filing.

Friday, 19 September 2014

No Refund of DPMA Examination Fee

In the case X ZB 11/13, the applicant had requested the refund of the examination fee for an application which had been deemed to be withdrawn when the examination hand not been started.

The BGH discusses various possible claims for refund of the examination fees including the constitution and comes to the conclusion that no statutory basis for the refund exists. In contrast to the examination fees of EPO, the examination fees are considered to be fees for formally initiating the examination procedure and not linked to any actual service being carried out.

Wednesday, 17 September 2014

Patentability of Cinematographic Techniques in Multi-User Games

The decision T1259/08 relates to a rejected patent application based on the problem of network delays in multi-user games.

The idea was to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by a network delay. The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user. The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene.

In the embodiment, when either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay.

The board of appeal applies a broad interpretation of "cinematographic technique" such that the latter includes so-called time warping  known from the prior art. Whether or not the time warping technique diverts the user is considered irrelevant because this feature relates to human perception.

The board further notes that the solution would not have been inventive either:
The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.
 

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.
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