Tuesday, 29 September 2015

Two proprietors - two appeal fees - BGH Mauersteinsatz

The decision "Mauersteinsatz" X ZR 3/14  relates to the appeal of two proprietors co-owning a patent which had been revoked in an opposition procedure.  The appeal had been lodged "in the name and on behalf of the patentees" by the common representative of the proprietors along with the payment of only one appeal fee of EUR 500.

The Bundespatentgericht rejected the appeal as inadmissible because the statutory rules require the payment of one appeal fee per appellant - i.e. two appeal fees in this case.  According to the German law, the co-proprietors are considered as an "association by fractions" (Bruchteilsgemeinschaft) rather than an association under civil rights (GbR) which could have been considered as one single party.

The BGH found that in a constellation like this - where the fundamental right to judicial protection is at stake - the Bundespatentgericht should have tried to allocate the appeal fee to one of the appellants in order to avoid unacceptable hardship, wherein no strict standard should be applied.  In the case at issue, it turned out that the payment form showed the name of only one the appelants such that the appeal of the latter was considered admissible and the appeal of its co-applicant was rejected.

Saturday, 26 September 2015

CEIPI Training Program for Technically Qualified Judges

The first block of the CEIPI Training Program for Technically Qualified Judges has taken place in Strasbourg in this week. The seminar was experienced as a very fruitful and important event by the attendees and the speakers.

The lineup of speakers and their enthusiasm is really impressing and& Cristophe Geiger (CEIPI) and his team did an excellent job in taking this initiative and briging the UPC project a step forward.

 The first block was focused on the history, fundamentals, independence of the judges and competition law. Most of the participants were experienced patent attorneys from private practice and industry.  A major concern among the participants is the question of potential conflicts of interest for practicing patent attorneys working as part-time technical judges - in particular up to which degree of remoteness these may play a role.

Wednesday, 23 September 2015

Gold Bear or Golden Teddy?

This blogger loves both Haribo Gummi Bears and chocolate in all shapes and would never risk to confuse edible gummi animals with with edible chocolate animals (in particular rabbits), even in cases where both belong to the same zoological species.

It was therefore surprising to him that the judges of the judges of the cologne district court found a risk of confusion between Haribo Gold-Bears (Goldbären) and the Lindt Chocolate Teddy - a sitting wrapped in Gold foil.

 The case went through the instances to the BGH, who judged today that a likelihood of confusion does  indeed not exist.

According to the BGH, the comparison between a word mark and the three dimensional shape of the product is to be limited to the semantic content of the word mark (Goldbären) without consideration of the shape of the products (Gummi Bears) sold under that word mark. Further, strict requirements are to be imposed in order to avoid an extension of the monopoly of the trademark to product designs.

A precondition for the likelihood of confusion is that the word mark is an obvious, natural and exhaustive (naheliegende, ungezwungene und erschöpfende ) designation of the three-dimensional design. It is not sufficient that the trademark is only one among multiple obvious designations of the product shape.

In the case at issue, the BGH found that the chocolate bear could have been designated as "Teddy", "Schokoladen-Bär" or "Schokoladen-Teddy" instead of "Goldbär" and concludes that the likelihood of confusion does not exist.

Friday, 18 September 2015

Main Request Rejected but Not Adversely Affected - T 0327/13

The case T 0327/13 of the EPO technical boards of appeal is an appeal against a decision of the opposition division which maintained the patent in amended form according to an auxiliary request filed by the patentee.

The patentee's main request had been rejected and, nonetheless, the board comes to the surprising conclusion that the patentee was not adversely affected by the decision. How this?

The main request essentially corresponded to claim 1 as granted with further dependent claims and the auxiliary request essentially corresponded to claim 3 as granted with further dependent claims. Claim 2 was not an issue in the 1st instance.

Well, the patentee did not really challenge the decision to reject the main request (corresponding to claim 1 as granted followed by dependent claims):
2.3.2 The grounds of appeal do not address this request at all, let alone indicate any reason for setting aside or amending the decision of the Opposition Division's decision that claim 1 of this request lacks novelty over D1. On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division .
Rather, the patentee added a further independent claim to the claims as maintained. The new independent claim was based on claim 2 as granted with some further limitations.

2.3.5 The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division.  
2.4 Therefore, in view of the appellants' case, the Board considers that they cannot be regarded as "adversely affected" by the decision of the Opposition Division and thus are not entitled to appeal under Article 107 EPC.
I have to admit that I am fairly puzzled by this conclusion. Would it not have been more straightforward hold the claims inadmissible under Rule 12(4) EPC because they could have been presented ... in the first instance proceedings? Or eventually because of lacking substantiation (none of the reasons to reject the main request was addressed?)

Monday, 23 February 2015

EPO to revise strike regulations

According to a post on the IPKat here, the Den Haag appellate court has granted an appeal filed by EPO staff organizations SUEPO and VEOB against a 1st instance decision and ordered that the EPO should nullify recently introduced limitations of the right of the EPO employees to go on strike.

The English translation of the decision is not yet available but will be published. According to what I have understood, the EPO did not contest the international jurisdiction of the Dutch courts such that the ruling should have effect for the German parts of the EPO as well. Even though the international jurisdiction might be doubtful, I think that the decision of the EPO's management to subject its decisions to judicial review is of great benefit to the public trust in the organization.

Wednesday, 18 February 2015

Once Out, Always Out

I have posted on a tendency to apply the discretionary power of the EPO Boards of Appeal to admit documents which had not been admitted by the Opposition procedure here. Other examples are  T1872/08, T1817/08  and T1485/08.

In brief, the Technical Board of Appeal argues in each of these decisions that it has no discretion on its own to admit documents which have not been admitted in the first instance for good reasons. Documents which have not been admitted in the first instance will not be admitted in the second instance either.

All these decisions refer to the decision T 640/91, Official Journal EPO 1994, 918 and terribly misunderstand this decision. The paragraph which is repeatedly cited relates to the question whether a refund of the appeal fees is justified because opposition division has violated the right to be heard by not admitting documents at a late stage and examines the way in which the first instance has exercised its discretion for this purpose.
A new decision in the same direction has been published today: T 1643/11. I really regret this development. The circumstances may be very different in the 2nd instance: Adjournment of the oral proceedings might have had to be necessary when the document was filed late in the Opposition Proceedings whereas the parties have plenty of time to study the documents when they are filed together with the appeal brief.

The approach taken by the TBA encourages parties to not even try filing documents at a late stage of the 1st instance but rather wait for the appeal in order not to produce evidence that the document "could have been filed in the 1st instance", which, according to the current attitude of the TBA, amounts to a death sentence of the evidence. This is clearly not beneficial for the procedural economy.

Tuesday, 20 January 2015

Patent Infringement on Trade Fair?

The OLG Düsseldorf has decided that exhibiting infringing products on a specialist trade fair is "offering for sale" in the sense of § 9 S. 2 Nr. 1, 2. Alt. PatG unless the fair is a pure "performance show" (Leistungsschau).

This ruling is contrary to an earlier ruling by the  Mannheim District Court (29.10.2010, 7 O 214/10, see here) which judged that the mere fact of exhibiting a product infringing a patent was not sufficient to prove the alleged infringer's intention to sell the product in Germany with a degree of certainty sufficient to grant a preliminary injunction.

The BGH had decided on the question of trademark infringements by exhibiting on trade fairs in the decision Pralinenform II and in relation to a risk of first offence in an unfair competition case here.

For more background information see here
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