E-Justice and the Financial Crisis

The Federal German Patent Court (Bundespatentgericht) has opened two "electronic courtrooms" equipped with displays enabling the sharing of electronic documents.

According to the press release, we owe this investment to Germany's "Konjunkturpaket II" stimulus package issued in January 2009 in the aftermath of the first part of the financial crisis, which comprised, among others, investments in e-justice.

Politicians and Trademarks

The IPKat reports that a trademark application containing the word "Lenin" and another trademark making reference to Russia’s Prime Minister Vladimir Putin and President Dmitry Medvedev has been refused.

What is the situation in Germany? A brief survey has revealed that the German Trademark Register has 13 entries (mainly for vodka) including "Lenin". Lenin is beaten by Churchill, who has 28 entries - mainly for cigars, whiskey and gin.

David Cameron and Angela Merkel share 28/27 entries with other Camerons (notably James Cameron) and Merkels and no distinctive range of products or services can be assesed for the time being.

Perishable Products and Valuable Disclosure

 

My french blogger friends Oliver Randl of K’s-law and Laurent Teyssèdre of Le blog dudroit européen des brevets have both reported an interesting decision of the EPO board of appeal dealing with the often frustrating question allowability of an amendment under Art. 123(2) EPC.

The patent related to the use of a preservative for food products, “wherein the preservative is added to such food products at a concentration from 0,006% to 0,015%” (cited from claim 1 as amended).

The upper- and lower limits of this concentration range were taken from different examples where the preservative was used for different types of food products.

I presume that most people would guess that this amendment is not allowable as it combines features from different embodiments. However the board Z 3.3.09 allowed the amendment. Why?

Here is the essential part of the argument (reasons, 2.1):

In order to assess whether this new range complies with A 123(2) it has to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples.

In this context, it emerges from table 1 of the application as filed that LAE as preservative is active against a number of gram-positive and gram-negative bacteria as well as fungi and yeast. It is furthermore stated on page 1, lines 4 to 5 from the bottom that “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products”. From this the skilled person would therefore recognise that the preservative effect of LAE is universal and not limited to specific bacteria and food products." 

I am pleased to see that at least one board appears to argue technically rather than linguistically when it comes to 123(2) EPC.

Indeed, the alarm bells of the examiners are usually set off when the "skilled person" is invoked for disclosure.

However, what is "clearly and unambiguously" disclosed in a text depends on the reader and his background knowledge. The case law is very clear in that the disclosure original documents has to be viewed through the eyes of the skilled person - and not even any ordinary skilled person but a skilled person with the famous "mind willing to understand and not with the mind desirous of misunderstanding". Decisive is what this person in this state of mind understands and whether or not this understanding is unambiguous.

I think that this is disregarded too often when the allowability of amendments is discussed.

My impression not only from this decision but as well from a decision of  the BGH reported here is tha the case-law both at the EPO and in Germany goes into the direction that a combination or sub-combination of features is considered to be disclosed in an individualized way and "as an invention" (rather than as an arbitrary selection) if the notional skilled person may clearly and unambiguously derive technical advantages of that specific combination or sub-combination from the documents as a whole.  In the above case, it was the sentence “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products” that has saved the case.

This should have, according to my personal opinion, a strong impact on how to draft patent specifications in the future. Sub-combinations disclosed without mentioning specific advantages thereof are pointless and mentioning many advantages applicable to sub-combinations is essential and creates valuable disclosure.

European Patent Court - Disaster before Christmas

The discussion on the proposed Unitary Patent and Unified Patent Court is rapidly accelerating and an agreement might be achieved even today. The IPKat is trying to keep track of these rushing developments, which will have a huge impact on our professional life.

Impressions from China

I have passed the last week giving a seminar on patents in China, specifically in the province Jiangsu (which is why this blog was somewhat silent the last days).

The energy and speed of development in China is deeply impressing. Looking at the WIPO statistics on patents per capita, R&D expenditure etc, it is a common wisdom that China is rapidly approaching but still lagging behind the western industrial nations and Japan.

What I have now learned is that there are considerable differences within China. Looking at the Jiangsu province, the class leader amongst the chinese provinces, it appears that this province, which has a size comparable to Germany, has already almost caught up with us. In 2010, the roughly 90 Million inhabitants have filed 235873 patents (mostly design patents), 21,81% of which (almost 50000) are Invention patents and the courts have handled more than 4000 IP-related cases. Insiders say that these impressing numbers will increase by furhter 50% in 2011.

Rounding Off The Edge To Get Around Infringement

As discussed here, the roundness of the edges and the interface between the display and the bezel was a bis issue in the Apple v. Samsung desing infringement action at the Hagen District Court.

Samsung has now issued a new version of the Galaxy Tab - the Galaxy Tab 10.1N - wherein, as shown on the image obtained from cyberport.de, the bezel slightly reaches over the edge.

Memory

Memory is not only a famous song from the musical "cats" but furhter a well-known game (also known as concentration, Pelmanism, Shinkei-suijaku, Pexeso or simply Pairs) and - that is important here - a german trademark registered in the name of Ravensburger, a famous game manufacutrer. The registration applies to tangible games as well as to their computerized brethren.

Ravensburger has now sued Apple (as reported e.g. here)for trademark infringement by selling various games with names comprising "Memory" in Apple's AppStore.

Interestinly, the court reporter of the munich-based newspaper Süddeutsche Zeitung notes that the judge has indicated not to cosider the AppStore as a platform comparable to e-bay but rather as a real shop not entitled to any alleviation of liability. I think this could cause big headaches to Apple and other owners of App Stores operating worldwide.

Resist the Tempation BGH I ZB 21/11

I presume that every patent professional has already experienced the following tempting situation: your assistant prepares a letter to be signed on the last page and you find an error on page 1. In addition, you are - as always - in a hurry. Why not sign it and ask your assistant to replace sheet 1 with a corrected version?

In the decision I ZB 21/11, the attorney failed to resist this temptaion. He has allegedly remarked that the application was addressed to the wrong court and asked his assistant to correct this after signing - which she did not do as a consequence of the hectic pre-christmas season.

The request for restitutio in integrum failed because the attorney could have corrected the error immediately upon remarking it.

This is a deviation from the hitherto valid rule that the exercise of due diligence does not require controlling the correct execution of individual and specific directives given to assistants who had proven to be reliable before.

Rescue Where There Is No Remedy

I feel strangely attracted towards the hopeless cases and was really enthusiast readig this one.

The 35th senate of the Bundespatentgericht (newly responsible for utility models) had issued a cost order obliging the plaintigg to pay the entire costs. The order was not perfectly clear in the question whether it concerns the costs of both instances or only the 2nd instance and the defendant requested a clarifying correction of this point.

The request was granted and the corrected order was issued and the plaintiff immediately requested a withdrawal or re-correction of the correction by arguing that the corrected decision was based on a wrong application of the law.

Unsurprisigly, the senate rejected this request for correction because wrong application of the law does not qualify as an "obvious error" which might be corrected.

Interestingly, the senate interpreted the request as a "remonstrance" (Gegenvorstellung) under §321a ZPO, which is a legal construction wich - accordig to my knowledge - a never been applied in procedures before the Bundespatentgericht before.

Originally, this procedure is a means for self-correction of decisions by the court having issued the decision in cases where no other legal remedy exists and where it turns out that the court had violated the right to be heard such that this violation has an impact on the outcome of the decision.

However, the 35th senate argues that it is equally applicable in cases where no other legal remedy exists and the decision is "tangibly unlawful" (greifbar gesetzeswidrig).

The original decision can be read here.

Intellectual Property and the Kindergarten

After many quarrels about who determines the rules of their games (including who is the princess and who is the horse), my children have reported that they have now finally found a new rule making their Kindergarten life more peaceful: The one who has invented the game determines the rules. This made me think.

After a first attack of fatherly pride, I am now wondering whether this new rule really decreases the number of arguments or rather provokes new arguments on novelty, inventiveness and inventorship...

The Scams are Third Parties - Who is Second Then?

Reading decisions on requests for restitutio in integrum is always very educating because it gives insights into the brimming life of IP owners on the one hand and because the desperate plight of somebody having lost a valuable right despite of all due care sometimes reveals super-human forces of creativity and legal quibbles.

Now, I came across a decision where this fertile ground has encountered the hitherto independent battlefield of scammy patent- or trademark registers recently discussed e.g. here and here.

The applicant had not paid the official filing fees and tried to turn the existence of warning letters issued by the German PTO into his favor. He argued that these letters warn against payment invitations and reminders issued by third parties. According to him, this would imply that the German PTO also issues payment invitations or the like, because if there is a third party to issue the reminder, there should also be a second one....

"Comprising" is not "Consiting Of" - BGH X ZR 75/08 "Reifendabdichtmittel"

The the patentee in the decision "Reifenabdichtmittel" had amended a limitiation according to which an adhesive for sealing tyres "comprises" a number of ingredience to a limitation that the adhesive "consists of" the same ingredients, i.e. that no other ingredients were used.

The BGH fond that, as a rule such an amendment is not allowable because it introduces the new technical feature of the "conclusiveness" of the recipe and that furhter incentives from the specification are needed to make such an amendment allowable. The specification mentioned indeed an embodiment with no furhter ingredients (such that the amendment would presumably have been allowable under the EPC) but did not explicitly mention this feature. Rather, other portions of the specification indicated that fillier materials could be added optionally and this option was not explicitly excluded for the embodiment under discusstion.

In the judgement of the BGH, the allowability of such an amendment would require indications that the feature of consisting of the mentioned ingredients only has particular advantages or is otherwise desireable.

It is interesting to compare this decision with T 390/08, where the "consisting of" in claim 1 in combination with a dependent claim mentioning further ingredients (or more precisely, the introduction of a further element in the opposition procedure) led to a clarity objection. There appears to be a tendency to require some explicit "singeling out" of specific combination of features to be claimed, which may be supported by mentioning particular advantages of the specific combinations.

For the practice, this means that when mentioning the advantages of optional additional features for supporting their inventiveness during the prosecution, it is wise to also mention an advantage of the embodiment without these features. In the case at issue, it would probably have been sufficcient to say that the adhesive is cheaper or easier to brew if no filler materials are used.

Trademark Registration of Shapes which give Substantial Value to the Product

The IPKat has reported an interesting General Court of the EU decision in an appeal of Bang & Olufson against an OHIM decision.

The procedure dealt with the question whether or not the shape of the loud-speaker should not be registered because it "gives a substantial value to the goods" in the sense of Article 7(1)(e) of Regulation No 40/94.

The press release says:
In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and on-line auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.

Whilst I perfecly agree with this judgement, this appears to be in conflict with an
older decision of the BGH on a BMW radiator cowling, wherein

the BGH argues with regard to §3(2)Nr.3 MarkenG that this exception applies where the aestethic shape of the goods is considered the actual "tradable value", whereas it does not apply in cases where the shape/design is only an "ingredient" of the good, which has other functions besides of beeing beautiful.

I think that the fact that the B&O loudspeaker has other functions besides of beeing beautifulcannot be reasonably constested.

My impression is that the court was led by the empirical fact that every boy in Germany can tell the brand of a car by looking at a radiator cowling, which is not the case for loudspeakers. Given this, it is surprising that the BGH has finally rejected the BMW cowling as being "devoid of any distinctive character". Apparently, BMW had not conducted a poll.

Position Trademark at the Wrong Position? Who Cares!

I came across a fairly interesting decision relating to Levi's "red tab" - a small red flag made of tissue mostly with "Levi's" written on it on the left hand side of the right back pocket of Levi`s famous Jeans.

A german manufacturer has now sewed little red flags with his trademark on the right border of the right back pocket and was sued for trademark infringement.

Levi's has used a broad collection of trademarks showig the red tab with and without the Logo "Levi's" and togehter with pockets with or without ornamental seams. In the decision cited above, the BGH argued that the assesment of the strenghended distinctive character by the upper district court was based on polls where the red tab was not shown in an isolated form but together with other features (e.g. ornamental seams of "arcuate" double-wing shape) indicating the origin of the product.

The case had been reffered back to the upper district court, which has found that the only difference in the position does not prevent the risk of confusion in a sufficient way.

The fact that the trademark was registered as a "position trademark" does not appear to play a role in any of the judgements.

A new trial will be held on October 19, 2011 at the BGH in this matter.

EPLAW criticizes the draft agreement on the unified court

Fairly severe criticsismns have now been raised by the patent litigation attorneys association EPLAW and Prof. Krasser of the Munich based Max Planck Institute for Intellectual Property Rights against the draft agreemen on the unified patent court in Council doc 13751/11.

Besides of some points already mentioned by the IPKat, one important and new point is that the rules relating to patent infringement (in particular questions of equivalence) should not be included into the agreement in order to preserve them from the doom of being interpreted by the CJEU.

Evidence from outer Space - Apple v. Samsung

In a recent post, I have discussed the preliminary incjunction granted against Samsung based on Apple's community design rights.

Florian Müller of FOSS Patents has reported on the evidence provided for invalidating Apple's righs.

Actually, some of the references are faily old: one is taken from the 70's TV series "The Tomorrow Poeple" and shows an astronaut walking around with a kind of Tablet PC and the other is taken form Stanley Kubrick's classic "2001 - The Space Odyssey" and shows two astronauts having lunch while playing with their tablet PC.

For me, this attack is not very convincing not only because of the blurriness of the prictures but rather because it appears to mistake the technical concept of the Tablet PC with its design.

Dispute about the real Obazda goes to round 2

Obazda is the name of a Bavarian cheese specialty which is preferably eaten together with brezels in the beer gardens and/or at the Oktoberfest. It is basically a mix of mashed Camembert or Brie cheese with some fresh cream cheese and sweet paprika powder, which gives it a slightly orange color. Whilst every bavarian here knows that his mother's recipe for Obazda is the real and original one, there are some pharisaic, if not puritan newly immigrated swabians discussing the right way to prepare Obazda including the right degree of clumpiness.

 

Perfectly fitting the Oktoberfest season, the Bundespatentgericht has had oral proceedings in an opposition against the registration of a protected geographical indication (PGI) for "Obazda" or "Bavarian Obazda". The PGI was registered by the association of the bavarian dairy industry, the members of which are, as the interested reader might imagine, bavarian enterprises from the dairy industry. The opponent was actually not an immigrated swabian frim but interestingly a bavarian enterprise which had moved from the munich area to Leutkirch, which is in Swabia and around 6 kilometers from the bavarian border.

In a press release , the Bundespatentgericht has indicated that the expression "Obazda" was eligible for a PGI registration in principle but that it has doubts whether the right choice for the applicant would not be an interest group to be formed, which could then be open to bavarians in exile sufficiently close to the bavarian border. With regard to the recipe and the required degree of clumpiness, the presiding judge Franz Hacker turned out to be surprisingly open-minded. However, the attitude with regard the method for conservation in industrial used, the court found that the latter should not be restricted to thermising the cheese because the traditional recipe does not contain any conservation at all. The case was referred back to the first instance.

The PatLit Weblog

I am very pleased to have been invited to contribute to the PatLit weblog, which focusses on patent litigation issues around the world.

My first post has just been published - have a look!

Apple v. Samsung II, preliminary injunction confirmed

Corrigendum: The most recent PI with the reference 14c O 194/11 was based on the older community design 000181607-0001 and not on the new one, whereas the below citation pertains to 14c O 64/11 granted in May.


The Dusseldorf District Court has confirmed its preliminary injunction against Samsung's "Galaxy Tab 10.1", as reported in a press release by the court.

I wonder if this decision will survive the 2nd instance, since the preconditions which are usually applied to PI's based on unexamined rights (e.g. utility models) do not appear to be met in this case.

The full decision is not yet published, but judging from what is publicly available neiter the enforcibility nor the infringment are as unquestionable as required for preventing damages due to unjustified preliminary injunctions.

Actually, the decision characterizes the essential features as follows:

Sharp edges and corners are avoided as well as projecting switches or decorative elements. The display surface is arragned in the mat finished silver and convex housing in such a way that it is surrounded by a slim silver rim of the housing, wherein the rim is first tapered and then extends perpenducularily downwards, where it connects to the convex backside of the housing. Interfaces are arranged on the perpendicular rim. The display itself is provided with a black border surrounding hte rectangular, dark imaging surface like a frame.

Firstly, it is to be noted that nothing of the above is novel over the first generation IPad besides the tapered portion of the rim, which is protected the community design 000181607-0001 and shown here on the right hand side.

and bublished in 2004 (the Community design 001222905-0002 for the IPad 2 was filed in July 2010).

On the other hand, judging from the photos on the Samsung web page (see right hand side), the Samsung Galaxy tab appears to have a fairly round profile and lacks the characteristic edgy profile of the IPad 2.

.

As already noted, this is far from being an unquestionable infringement for me. However, it is to be noted that the IPad 1 was not cited as prior art.

As a further remark, the amount in dispute was fixed to 450.000 EUR so that I am wondering if this is not evidence for the practice discussed in one of my previous posts .

Translations After Opposition – Patent Lost But Better Off Than Before?

First of all, let me say this: YES, for German parts of EP patents where a full translation had been filed after the date of publication of the decision to grant (i.e. prior to the entry into force of the London protocol), it is necessary to file an amended translation if the patent is maintained in an amended form after the end of the opposition procedure. Actually, the amended translation needs to be filed for patents where the mention of the decision to grant was published prior to May 1, 2008, irrespective of the date of the decision in the opposition procedure.

This is one of the most dangerous pitfalls of the German national law relating to the EPC because in cases where the German representative is not the representative in the opposition procedure, the applicant relies on the wrong assumption that the applicability of the London protocol extends to the cases mentioned above and does not inform his German representative on the outcome of the opposition procedure.

Once the time limit has expired, the only possibility to safeguard the application is to request a restitutio in integrum, for which all the persons involved have to provide evidence that all due care required by the circumstances has been exercised. The latter includes, of course, that everybody knew the law to be applied.

I think that the German patent and trademark office GPTO must have accumulated mountains of files where a re-instatement into this delay has been requested. Many of us are waiting for these cases to progress through the instances. However, the files appear to have created some obstruction in the digestion system of the GPTO.

The Federal supreme court has now published a rather inconspicuous decision (X ZB 2/11) with the name “Ethylengerüst” which might help to break this obstruction. Under the cloak of a request to refund the printing fees of EUR 150 for publishing the patent in the amended form, the court decided on the validity of the transitional regulations (Art. XI, § 4 IntPatÜG) prescribing the filing of the translation as discussed above after the publication of the decision.

In the case at issue, the patentee had correctly filed the translation and paid the pertinent publication fees but requested a refund of the publication fees by arguing that the legislation procedure suffered from the fundamental error of retrospectively imposing new requirements onto the patentee. Actually, the amended law had entered into force on July 7, 2008 and had a retroactive effect on patents where the decision to grant was published on May 1, 2008 or later, thus violating the principle of non-retroactivity.

However, the BGH could not follow this argument because principle of non-retroactivity does not foreclose the retroactive applicability of laws ameliorating the situation of the circles concerned. This is the situation here: the duty to file a translation and to pay the publication fees was abrogated retroactively for patents where the decision to grant was published on May 1, 2008 or later. Thus, the patentees were better off than before. As a consequence, it was not the legislative procedure that has led to the loss of rights but rather his own fault.

Bad luck for those who have lost their rights by relying on a broader field of application of the London protocol.

The Oracle of Munich - Predicting the Public Perception

I just came across the decision 27 W (pat) 554/10 in an appeal against the refusal of a trademark registration. The trademark contained the abbreviation RCQT and parts of a sign of military origin and was refused as offending the public order and morality (§ 8 II Nr. 5 of the German Trademark Act).

Apparently, the letters RCQT stand in some obscure rightist circles for "reconquista" and are used in anti-islamic contexts. However, it is clear that rest the general public will not find anything offending in these four letters and the preception of the latter is what usually counts in the trademark procedure.

Whilst fully approving the decision to refuse the registration, the reasons therefore are fairly interesting to read. The pertinent case-law says that the trademark registration should be refused if the trademark is suitable for offending the sense of morality of a considerable part of the public. The senate argues that the public perception does not depend on the perception of the majority in a calculatory sense. Rather, the act of registering the trademark would increase the fraction of the public feeling disturbed by the trademark.

This reasoning appears to be fairly skewed to me because we all have learned that the public preception is a question of fact which may be proven by polls and the like for the actual registration date and/or the past. When the office is trying to predict how the public perception will develop and reject the application based on this prediction, it leaves the principle of objectivity, which is at the basis of good governance.

Contractual Fines in Undertakings to Cease-and-Desist

PatLit has posted a message on a fine of EUR 5000 for the breach of a cease-and-desist order. Apparaently, the Nichia PR dept. does a good Job and I the blogosphere (including me) is helping them doing viral marketing.

I would like to take this occasion to explain some legal background on this

According to the Nichia press release , there was no court order to cease-and-desist but rather an out-of-court settlement including a confession statement. This is cease-and-desist agreement rather than a court order and ordinary contractual law applies.

It is very common that such an undertaking to cease-and-desist contains an entitlement to a contractual fine. 5000 EUR is a very common amount for this type of fine.

Since inappropriate amounts for the fine lead to the nullity of the entire claim, the undertakings often do not specifically fix the amount but rather say that the amount "shall be appropriately fixed by the right owner and re-assessed by disctrict court in the case of dispute" (so-called "Hamburger Brauch").

It appears to me that this is what has happened here.

Apple v. Samsung - Preliminary Injunction Based on a Registered Community Design

A recent preliminary injunction of the Düsseldorf District Court (LG Düsseldorf - see decision and press release) has generated a lot of excitement in the community (see e.g. here and here and has been extensively discussed by the IP Kat. The Samsung Galaxy Tab 10.1 had (and apparently its predecessor) had to be removed from the Samsung booth at the IFA.

I do not want to enter deeply into the discussion of this case, but rather like to point out two things:
- the PI was based on a registered community design, and not on a patent;
- the chamber 14c of the Düsseldorf district court is responsible for industrial designs and appears to apply a jurisdiction which is somewhat more friendly to the right-owner that the one used by the chambers 4a and 4b responsible for patents.

As reported in a recent post, the preconditions to obtain a PI based on a patent are fairly high. The reason is that unjustified PI's should be avoided at any cost in order to prevent an abuse of this sharp sword and damages at the defendant's side.

My presonal feeling is that this preliminary injunction would not have been granted if it would have been based on a utility patent since the enforcibility was not "beyond any reasonable doubt" and because the community design has, to the best of my knowledge, not yet survived a nullity procedure at the OHIM.

I do not know what prior designs Samsung could find in the short time between the issuance of the PI on August 9 and the hearing on the appeal held on August 25 but I guess that the time was way to short to reliably challange the validity of the design.

A decision on Samsung's appeal is expected for Friday, Sept. 9.

As a matter of fact, it appears to be very advisable to complement a patent portfolio with a good collection of registered design rights wich may have a narrow scope of protection but are clearly superior in terms of enforcibility on a short time scale.

The reason is that the question of infringement can be judged litteraly "at first sigt" - even by a customs officer or a non-specialist judge of a district court, which is clearly not possible for patent rights or utility models.

I am looking forward to see whether the 2nd instance will maintain this difference in the standards for the issuance of PI's between industrial designs and patents.

Sidestepping the Re-Dating - Late Filed Drawings

The 10th senate of the Bundespatentgericht (responsible for the more exotic cases) had to decide on a request to refund the examination fees paid for a german patent application (10 W (pat) 11/10).

In contrast to the examination fees at the EPO, the examination fees of the DPMA are due for the request, not for the actual examination work. As a consequence, a refund is only possible in cases of double payment or if the patent application was not pending when the payment was made (i.e. when the request was not validly filed with the payment.

In the case under dispute, none of the above circumstances was met. Rather, the office had found that drawings were missing (despite the fact that it had issued an acknowledgement of receipt mentioning the drawings) in the documents as originally filed and had requested the applicant to hand them in later. The consequence of late-filing of missing drawings in the German procedure is basically identical to the procedure of Rule 56 EPC: The application is re-dated. If the applicant does not want this, the references to the missing parts are deemed to be deleted.

The appellant in this case has found a rather elegant way to alleviate the painful effects of the re-dating. This is actually what I found interesting about this case: He did not hand in the missing documents for the original application but rather filed a second application claiming the priority of the first application and including the drawings. If it turns out that the drawings had been (or are deemed to have been) filed at the filing date of the first application, everything is fine. If not, the priority date is saved at least for the subject-matter contained in the first filing, which is not re-dated.

The appellant argued that all the trouble was caused by the DPMA having carelessly lost the drawings and that at least the examination fees for the first application (which is deemed to be withdrawn once a second German patent application claims its priority) should be reimbursed as a matter of fairness. However, the patent court contented itself with applying the patent law and did not grant the request.

I am wondering if there would be a civil claim to damages against the patent office DPMA?

Maximum Protection Conferred by EU Directive on Copyright

While we are used to interpret EU directives in the sense that they define minimum requirements the national laws have to fulfil, an exception to this rule may be found in the ECJ case (Cassina ./. Peek & Cloppenburg ), which was initiated by the BGH in the case I ZR 247/03, known as “Le-Corbusier-Möbel II”.

The defendant, a well-known brand of fashion shops in Germany, had legally bought armchairs designed by Le Corbusier in Italy. At that time, the Italian Copyright excluded furniture from protection. The armchairs have been used in Germany in a lounge in front of the changing room and as a decoration in the window of the shop.

One of the questions conferred to the ECJ was whether or not this use was a “distribution to the public” in the sense of Article 4(1) of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.

The ECJ answered in the negative by pointing out that since the directive is intended to implement at Community level the Community’s obligations under the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, the wording of the directive needs to be interpreted in the light thereof. Those Treaties link the concept of distribution exclusively to that of transfer of ownership.

The BGH argues that the german § 17 UrhG implementing the right to distribution to the public of Article 4(1) of Directive 2001/29/EC into german law has to be interpreted in conformity with the directive. This is not very surprising. More surprising is how this conformal interpretation is achieved. The BGH argues that the purpose of the directive is not only to ensure a minimum protection but rather to harmonize the application of copyright in the information society so as to prevent a refragmentation of the internal market due to significant differences in protection (cf. e.g. recital 6 of the directive). As a consequence, the interpretation has to respect this purpose.

The latter object, however, may only be achieved if the directive also defines a maximum protection conferred in the member states.

The interesting point for me is that the same argument can not only be applied to the right to distribution to the public but generally to any right conferred by the directive 2001/29/EC. It would be interesting to systematically check the consequences of this reasoning onto the national application of copyright law rather than waiting for the pertinent decisions of the BGH.

New York, New York - a helluva town

The Blog IP finance has reported an interesting case about trade secrets hidden in New York subway brakes.

The trade secrets case being interesting enough, it is even more interesting to see how a New York judge lost his professinal aloofness when it came to the subway. This is what the judge had to say:

To the parties in this case, subway brakes are known as “Brake Friction Cylinder Tread Break Units” (“BFC TBU”). For the rest of us, BFC TBU are “that loud squeaking, sparking braking system that so reliably stops the New York City Transit subway system.” ... Twenty-four hours a day and 365 days a year, the City’s subway cars safely stop at 468 passenger stations—and, as any straphanger knows, many times in between—depositing riders of all classes and descriptions at homes, workplaces, ballparks, and every other destination imaginable. See generally MacWade v. Kelly, 460 F.3d 260, 264 (2d Cir. 2006) (“The New York City subway system … is an icon of the City’s culture and history, an engine of its colossal economy, a subterranean repository of its art and music, and, most often, the place where millions of diverse New Yorkers and visitors stand elbow to elbow as they traverse the metropolis.”). The subway is an indelible feature of the City’s culture. Its legend and lore fascinate locals and visitors alike. See, e.g., Carrie Melago, It’s the Rail Thing: Subway Ride Record is Official, N.Y. Daily News, Aug. 8, 2007, at 24 (reporting that six alumni of Regis High School set a new world record for stopping at all 468 stations on a single fare: 24 hours, 54 minutes, and 3 seconds). A point of personal pride for many New Yorkers, the City’s subterranean transit has appeared in song, on stage and screen. See, e.g., Leonard Bernstein, et al., “New York, New York,” from On the Town (“New York, New York—a helluva town, / The Bronx is up but the Battery’s down, / And the people ride in a hole in the ground; / New York, New York—It’s a helluva town[!]”), as quoted in The Oxford Dictionary of Humorous Quotations 329 (Ned Sherrin, ed., 1995) (attributed to Betty Comden and Adolph Green, lyricists). The subway’s rhythm and sound have also rumbled into the canon of American literature. See, e.g., Tom Wolfe, The Bonfire of the Vanities 36 (Farrar Straus Giroux 1998) (1987) (“On the subway, the D train, heading for the Bronx, Kramer stood in the aisle holding on to a stainless-steel pole while the car bucked and lurched and screamed.”). Moving forward, our next stop is the trade secret dispute concerning the distinctive brakes used by the New York City subway system.

I wonder if the cultural importance of "that loud squeaking, sparking braking system" is of any advantage for the right owner.

Attorneys do not lie - at least not systematically

The decision discussed in my previous post has provoked a sharp reaction from the German association of attorneys at law (Deutscher Anwaltverein).

Says its president:"it is surprising that the talk is about 'systematic manipulation' whilst the 'empiric findings of the judges' are derived from specific statements of attorneys". One might wonder if finding systematic deviations from a number specific probes is not what empiricism is all about... Still, I feel that the word "systematic" has some kind of an "organized crime"-flavor whcih is maybe ideed somewhat inappropriate.

However, the rumor goes that the criminal case against the attorneys has been dropped.

Thou shalt not lie! - The truth about the amout in dispute

Despite of the uncontestable reputation of us german patent attorneys as advocates of honesty and truthfulness, the Düsseldorf Upper District Court (OLG Düsseldorf) appears to have some doubts in this regard.

Mr. Kühnen, the chief judge of the court’s chamber specialized in IP is not the only german judge who is currently concerned about this, in particular when it comes to money.

The first thing the judges decide on in a trial in Germany is the amount in dispute, i.e. the economical value of the right under dispute. This is an important issue because not only the amount of litigation costs refunded by the underlying party but also the court fees depend on this value. In former times, the attorney’s fees to be paid by the client used to be calculated from the amount in dispute as well. This means that not only the court but also the attorneys had a financial interest in not to chose an inappropriately small value for this. Since direct information on the economical importance of the litigation is not available for the judges in most cases, they have to rely on the estimates and information obtained from the parties.

The Düsseldorf OLG and the Xth senate (responsible for patents) in the Federal Supreme Court (BGH) have both identified a recent tendency that the law firms charge their clients on an hourly basis (which is permissible if the result is higher than the one calculated on the basis of the amount in dispute). The consequence is that the parties (and their attorneys) might not have an interest in providing a reasonable estimate anymore but rather to reduce the risk of litigation by providing unreasonably low estimates for the amount in dispute.

One might think that the courts would helplessly come to terms with their fate and simply take over the flimsy numbers provided by the parties. Not so the OLG Düsseldorf!

The Düsseldorf OLG has addressed this problem in two decisions: OLG Düsseldorf, April 15. April 2010 — I-2 W 10/10 “Du sollst nicht Lügen” (you shall not lie) and OLG Düsseldorf, May 10. April 2011 — I-2 W 10/10 “Du sollst nicht Lügen II” (you shall not lie II - not yet available online, published in Mitt. 7-8/2011, 383).

In the first decision, the prevailing plaintiff had originally given an estimate of EUR 200.000 for the amount in dispute and has asked to correct this value to 30.000.000 EUR after the decision was made (in a procedure for fixing and distributing the legal costs which takes place after the decision on the main issue).

The underlying defendant did not find this very sporty and argued that his confidence in the plaintiff’s original estimate should be protected and that the plaintiff should not be rewarded for obvious lies. After all, this is just as if you were entitled to double the stakes in a poker game after not only having seen the cards of your buddy but even after the croupier has decided who has won!

Finally the amount in dispute for this case was fixed by the court to EUR 2.050.000 based on the evidence provided by the plaintiff.

The Düsseldorf OLG argued that the confidence in a lie may not be protected to the detriment of the state treasury and that the true amount in dispute is to be fixed according to the true, factual circumstances.

In the second decision, the tone is even sharper: If the parties do not suitably contribute to an adequate assessment of the value under dispute, the court may estimate a value which is sufficiently high to reliably motivate the parties to fulfil their duty to contribute in a request to correct the value under dispute. To use the picture of the poker game, the croupier is entitled to raise the stakes to a really painful amount if he is bored by the players toying with pennies only.

This is not all: if the party refuses cooperation to an adequate setting of the value under dispute, this will generally lead to the suspicion of an attempted financial fraud to the detriment of the state treasury, which may result in a criminal liability.

As an aside: an attorney who has made himself liable to prosecution will inevitably lose his accreditation. In sincerely think that this will change the way of thinking on the amount in disputeSo better keep up with the truth!

Family Affairs - BGH X ZR 77/10 "Treppenlift"

Family Affairs - BGH X ZR 77/10 "Treppenlift"

Hitherto, the german judicial system had the reputation that it's first instance has the character of being closer to alternative dispute resolution (ADR) than to a real trial. Indeed, the possibilities to file furhter arguments, requests or evidence have been fairly generous as compared to e.g. those of our friends in good old England.

Indeed, the efforts made in the first instance to convice the judge have sometimes been fairly poor because the parties felt that it would be sufficient to get their stuff together when things are getting serious in the 2nd instance.

In an attempt to tighten up the procedure, the general procedural rules (ZPO-Zivilprozessordnung) has been amended as of 2002 and similar amendments have been introduced in §83 and §117 of the patent act (PatG) as of October 2009 for the nullity procedure. In a nutshell, arguments, requests and evidence is considered late if it could have been filed earlier.

Still, some of my colleagues are not yet very used to this and the case-law, in particular in patent matters, is not yet very detailed.

The decision “Treppenlift” BGH X ZR 77/10 is, as far as I know, one of the first decisions where the supreme court (BGH) has overruled the decision of the 2nd instance upper district court which considered a defence argument as being late-filed.

The case at issue had 2 defendants, one of which was a natural person A and the second was a a corporate body B, the manager C of which was married to A. A argued in the 2nd instance that the original inventor of the patent in suit was actually her husband C and that the invention was unlawfully usurpated by the plaintiff.

However, the right to raise the unlawful usurpation as a counterclaim is limited to the injured party C, who was, himself, not party of the infringement procedure and who had transferred the right to enforce the rei-vindication claim to A only after the completion of the 1st instance.

The upper district court found that, given the close relation between C and the defendants, this defence argument could have been filed earlier. After all, C had been personally attending to the procedure, although not as a party but only in his function as a representative of a party.

The BGH found that this reasoning was incorrect because there was no duty to C to transfer his rights at a given time and that A and B could not have argued with the unlawful usurpation prior to this transfer. As a consequence, the late-filing was due to the late completion of this transfer of rights rather than to any negligence of the parties.


In wonder if the denfence that late-filed material had been in the possession of a close relative will work for other cases as well.

Essentiallity Test Revisited - Deleting Features From the Claims before the EPO

K's law discusses the decision T 747/10 today, where the EPO technical board of appeal applies the "essentiallity test" in the Gidelines for examination as develpoed in T 0331/87 is applied and makes an attempt to put it into a more precise form.

This test says that the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:

1. the feature was not explained as essential in the disclosure;
   
2. the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
   
3. the replacement or removal requires no real modification of other features to compensate for the change.
   

The case at issue related to a light therapy apparatus with light sources connectable to a computer via an interface. Original claim 1 required that the interface does not only control the light sources but also serves as a power supply. Interestingly, the BoA argues that the "technical problem" mentioned under 2 is the "subjective technical problem":

A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.

In this case, the original specification had actually mentioned two technical problems:

While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources.

and comes to the conclustion that using the (USB-) interface for power supply does at least contribute to the solution of the second problem of improving the portability. Other alternatives (e.g. batteries) were not consistently disclosed. On the other hand, the board argues that the replacement of a feature with an equivalent one (which is originally disclosed) should be possible even tough the original feature may contribute to the technical solution of the subjective problem and comes to the conclusion that:

In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.

It is interesting for me that both the „classical“ decision T 0331/87 and this new decision appear to have problems with the line of demarcation between the requirement of “support by the specification” of Art. 84 EPC and Art. 123 EPC. This is very clear in T 0331/87, where the board argues in item 3 of the reasons:

For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (…) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application […]. In other words, it is to examine whether the claim as amended is supported by the description as filed.

.

The argument is a little more hidden in the decision T 747/10, but it appears that distinguishing between cases where more than one alternative is mentioned and cases where only one alternative is mentioned is equivalent to answering the question whether or not the broader claim is supported by the specification and is limited to the scope within which the invention makes a technical contribution to the prior art.

So why did the BoA not refer to Art. 84 EPC?

For the ”Houdaille decision T 0331/87, the case is clear: This was an opposition procedure and the BoA was simply not entitled to carry out an examination on Art. 84 EPC. In the light of this finding, it appears that this groundbreaking decision is circumventing the statutory limitation to the grounds for opposition set out in Art. 100EPC and has to be questioned.

For the case T 747/10, the application of Art. 84 EPC would have required reverting the case to the Examining division for carrying out the examination on this article.

I wonder if failure to do so could be considered a violation of the applicant’s right to be heard?

Scammy Trademark Registers - We're Ready to Rock and Roll!

It appears to be a lucky coincidence of circumstances that the IPKat has fantasized on last friday on fraud investigations initiated by a bank against scammy trademark- or patent registers sending out demands for payments with an "official" appearance to credulous applicants and that the OLG Köln has decided in the file 6 U 166/10 on such a case.

I think that every patent attorney has experience with clients coming up with this kind of letters and the WIPO holds an ipressive register with samples thereof. Until now, I have simply recommended to throw the letter into the bin.

The intersting point for me in the OLG Decision mentioned above is that the plaintiff was a patent and trademark law firm. Yes, indeed, we are competitors of these poeple and are - ourselves - entitled to fire of all the competition law guns we usually fire off in the name of our clients in our own name. Here we go!

Besides, it's the overall appearance giving the documents an "official touch" which is considered an avoidable deceit on the origin thereof and thus the same legal concept as the one discussed in my last post, which turns out to be impressingly versatile.

Design Protection Under Unfair Competition Law in Germany

Jeremy Phillips, one of the marvelous IPKats, has authored this month's editorial of the Journal of Intellectual Property law & Practice, wherein the German approach to design protection via the law on unfair competition was praised.

Since it is clearly a rare and sensational exception that we Germans are hailed by the English, I tought it is a good idea to briefly talk about this.

Germany's Federal Supreme Court grants complementary protection under unfair competition law using two possible approaches:

1. firstly, the offering of goods or services being imitations of the goods or services of a competitor in such a way that it results in an avoidable deceit on the trade origin of the specific goods and/or services is considered unfair (§4 Nr. 9 a) UWG),
   
2. secondly, the offering of goods or services being imitations of the goods or services of a competitor in such a way that it expoloits or damages the valuation of the imitated goods or services is considered unfair (§4 Nr. 9 b) UWG).
   

A fairly good overview on the requirements to be fulfilled for consumer products can be found in the decision 6 U 157/09 of the Frankfurt Upper District Court. Here are the basics in a nutshell: Both approaches are based on the notion of "wettbewerbliche Eigenart", which could be roughly translated as "Competitive Individual Character" and is slightly different from the "individual character" required for registered designs in that the focus is put to features with the qualify for the identification of a particular trade origin of the goods. Everyday products, for which the relevant public is not used to consider the origin as relevant, do not qualify as products with "competitive individual character". Well- known or "famous" products are considered to have an increased competitive individual character.

For the particular case of design protection, it is required that the indifidual character results from design features (which should not be technically unavoidable). Furhter, the imitation of a product with competitive individual character is considered unfair only if particular circumstances are met, wherein a lower competitive individual character may be compensated by a higher degree of unfairness in the circumstances of the immitation and vice versa.

For the first approach, these particular circumstances result form the avoidable deceit on the trade origin of the goods, for which it is clearly reuqired that the relevant public is used to think about the origin of the products and to draw information of this origin from the design features.


For the second approach, these particular circumstances result form the exploitation of the valuation of the imitated product, which is possible only if the imitated product enjoys a certain appreciation and high profile in the perception of the relevant public, which needs to associate at least some positive properties with the product, resulting in particular from its quality, exclusivity, luxury or prestige value with the product.

If you feel bad, take a look at those who are doing even worse

If you ever felt that your national trademark office or the OHIM are not operating well, please have a look at this post on the indian weblog SPICY IP: Kurian’s parting gift to the Trade Marks office – a CBI probe. After the indian patent and tademark office had revealed that 44,000 (!) trademark applications had gone lost over the last 5 years, the leaving director PH Kurian as requested a criminal investigation on corruptive structures inside of the trademark registry from the indian bureau of investigations.

Conspiracy Theory - BPatG 3 Ni 25/09

The German Federal Patent Court has partially nullified a patent in a procedure where the patentee had defended the patent in a limited form only and the plaintiff had limited his request to the part of the patent that was not defended anymore.

In such a case, the patent court has a simple job and maintains the patent to the extend to which its validity is undisputed and nullifies the rest - which is not defended anymore. It does so even without substantive examination. So far, this is a fairly boring case.

The interesting part comes now: one of the inventors has filed a third-party observation (labelled "amicus curiae brief" - which sounds somewhat overblown for us germans) arguing that the whole procedure was a hocus-pocus arranged to deprive him of his financial compensation as an employee-inventor. How this?

If a patentee abandons a patent, the german act on employee's invention obliges him to offer the patent to the inventor prior to the abandonment. This is, of course, generally not the case when the patent is nullified. I do not want to make any allegations to the patentee since I do not know any furhter details on the background. However, the very idea is compelling: engage a straw-man for nullifying the patent in order to circumvent the german law on employee's inventions?

The decision mentions that the evidence for abusive behavior is not sufficient and that the dispute between the inventor and his former employer is pending at the civil courts. The patent court has no jurisdiction on the question of the impact of the nullification on the financial compensation of the inventor.

We are looking forward to hear the sequel of this.

How to claim your right despite of its being exlpicitly foreclosed by law?

In a recent post, I had discussed a notice issued by th 10th senate of the German Federal Patent Court (BPatG) according to which there may be an entitlement of a tird party to appeal a decision to grant provided that very exceptional circumstances are met.

This finding is rather surprising because the German Patent Act leaves no doubt that only the parties involved in the procedure in which the appealed decision was taken are entilted to appeal the latter.

Now, the full text of the decision has been published including a detailed line of reasoning.

While being so exceptional that the importance of this particular case constellation is probably very minute, I found it interesting that the line of reasoning emloyed may well be taken as a blueprint for other cases where no statutory basis for a claim may be found or - even more important - where the law explicitly forecloses the right your client desperately wants to enforce, as was the case here.

The BGH decision "Fischdosendeckel" cited in my previous post, the Supreme Court argued that the statutory foreclosure of 3rd parties from the appeal procedure as set out in §74 of the German Patent Act is the result of a balancing of interests between the interest in a completion of administrative proceedings within an adequate time and the encroachment of the intersts of the 3rd party, which, however, are at least partially preserved by the right to file third-party submissions.

The supremecourt then argues that in cases of grave contraventions of the basic principles of public procedures Jusitita's balance may swing to the other side so as to justify an exception to the written law.

The answer to the question in the title of this post is thus: Identify the balancing of interests on the basis of the foreclosure and prove that the interests being considered predominant as a rule are overbalanced by your interest in this particular case.

BGH Webseitenanzeige X ZR 121/09 - Technicity

The German Federal Supreme Court (BGH) has now issued a new decision on an alleged computer implemented invention.

The patent was directed to a method including a "displayable representation" showing the sequence of web-pages visited by a registered user on an information site.

The fact that the claim did not explicitly mention that the method is implemented using servers, clients and other technical devices was not considered harmful by the BGH because it was considered self-evident ("offenkundig") for the skilled person that the execution of the claimed method required the use of computers in a network such that the method was of technical nature. This follows the line of argument started in the decision "dynamische Dokumentengenterierung", according to which "a method consisting of the direct interaction between elements of a data processing system – a server and a client for dynamically generating structured documents in the case under dispute – has technical character irrespective of whether it is defined by technical features or not."

The BGH stresses that the question whether or not the method is excluded from patentability as a computer program "as such" needs an independent analysis of the additional requirement that the claim comprises instructions serving the solution of a specific technical problem with technical means.

Finally, the method was considered a "computer program as such" despite of being technical. The reason is that the hurdle of headnote 2 of dynamische Dokumentengenterierung was not taken. The latter requires that the method/the computer program is either "determined by technical features outside the computer or that the program accounts for the technical restrictions of the computer".

Right to Oral Proceedings? Not Always!

According to §46(1) of of the German Patent Act, the Examining Division of the German PTO (DPMA) has to grant a request for oral proceedings provided that the latter is relevant to the case ("sachdienlich").

It is well-established case law that this relevance/pertinence is given, as a rule, for a first hearing, and a non-compliance with this requirement is generally considered a violation of the applicant's right to be heard. I have not learned of any exception to this rule - until now.

The 20th senate of the Bundespatentgericht had to decide on an appeal against a decision to reject an application in 20 W (pat) 94/05. The examining division had rejected the patent without scheduling oral proceedings despite of the applicant's auxiliary request to be heard orally.

The examining division had objected against the unity of multiple independent claims and had won the impression that the applicant would not be willing to react on these objections during oral proceedings. This impression was based on the resolute position the applicant took during the procedure in writing. As a consequence, the oral proceedings were considered not relevant to the case.

Surprisingly, the 20th senate has confirmed this ruling. This will surely increase the legal incertainty in the german application procedure. It is the primary task of patent attorneys to represent the cases of their client in a convincing, resolute and determined way. Shall we now express our doubts in our own arguments in the written submissions in order to avoid a rejection without oral proceedings?

The right to oral proceedings is based on the fact that an oral discussion has a nature different from a procedure in writing and I think that not only the applicant has to account for the possibility that the examining division changes its mind during the discussion but the examining divion also has to account for the possibility that it will be able to convince the applicant - no matter how determined the applicant appears in writing. Depriving the applicant of his right to oral proceedings is clearly a violation of the right to be heard and I hope that this decision will remain isolated.

Equivalent or an Altnerative? BGH "Okklusionsvorrichtung"

Art. 2 of the protocol of interpretation of Art. 69 EPC requires that the scope of protection of a patent claim goes beyond its literal meaning by requiring hat:
"For the purpose of determining the extent of
protection conferred by a European patent, due
account shall be taken of any element which is
equivalent to an element specified in the claims."

The practice shows that the national courts of the EPC member states are do not judge in unison what precisely is to be considered to be equivalent in the sense of the protocol of interpretation. However, in any case, teh considrations employed amount to balancing conflicting interests: The patentee strives for broad protection as a fair remuneration for his invention, his competitors want free competition.

Where is the borderline to be drawn to ensure fair protection for the patentee's inventive achievement? How can the borderline be made visible in order to guarantee a sufficient degree of legal certainty?

The BGH has answered these two questions by providing three other questions relating to the claim to be interpreted - the so-called "Schneidmesser" - questions:
1) Does the variant of the claim with the allegedly equivalent element solve the problem underlying the invention by means which have objectively the
same technical effect?
2) Was the person skilled in the art enabled by his or her expertise on the priority date to find the modified means as having the same effect?
3) Are the considerations that the person skilled in the art applies based on the technical teaching of the patent claim?
Whilst the first question is a simple technical quesiton and the second one boils dow to a kind of obviousness analysis, the third one is always the most difficult to answer and a little obscure.

The German Supreme Court (BGH) has now shed some new light on this third question - in the decision "Okklusionsvorrichtung" X ZR 16/09. In the case at issue, the specification had explicitly mentioned several alternatives for a specific feature, whereas only one of these alternatives was claimed. The court ruled that the choice of a specific alternative for achieving a technical effect was one of the considerations constituting the technical teaching of the patent claim and that there is no infringement if the alleged infringer does not make use of these considerations.

As a consequence, the mentioning of non-claimed alternatives in the specification forecloses the patentee form arguing that these alternatives are equivalent.

From a practical point of view, this is problematic because the practice of mentioning many alternatives as possible fallback positions has to be questioned. There will be no problem if the alternatives are mentioned in order to support a broad feature covering all of them. However, the scope of protection might be reduced if the claim is limited to one of the alternatives in the examination procedure. It might be worthwhile considering the deletion of the non-selected alternatives in this case.

Fishy - is a third party entitled to appeal a decision to grant?

The intuitive answer to this question is clearly no. However, the 10th senate of the German Patent Court had to decide a fairly weird dispute among two manufacturers of tins for fish. One of them found that the description of the drawbacks of his tins in the specification of the granted patent was clearly wrong and detrimental for his reputation.

The plaintiff had first sued the patentee on the basis of an unfair competition claim through all instances up to the federal supreme court, the 1st senate of which (responsible for unfair competition) decided that the exclusive jurisdiction for the contents of a patent specification was at the Patent Office and the Patent Court. So the buck was passed to someone else..

Of course, derogative remarks in the specifications do not count among the limited number grounds for oppositions or nullity in the German procedure (which is comparable to Art. 100 EPC in this regard), it is not possible for a competitor to enforce his right to have the unfair remarks deleted in one of these invalidation procedures (unless the incorrectness of these remarks results in a lack of inventiveness, which may be the case when the alleged invention arguably resolves the non-existing drawbacks).

The German Patent Court has now published a notice (10 W (pat) 21/06) that an appeal filed by a third party against a decision to grant may be admissible under exceptional circumstances, i.e. if the passages under dispute are unrelated to the invention, obviously wrong and abusvive taunt. However, the passages did not qualify as obviously wong in the case under dipute.

So the suprising answer is: yes-a third party is entitled to appeal a decision to grant - under exceptional circumstances.....

All In or Cashing Out - T 144/09 and the ex parte procedure

This week, both K's law and Laurent Teyssèdre's french blog have commented on the decision T 144/09 wherein the failure of the patentee to file a claim suggested by the opposition lead to a refusal of the same claim in the pertinent appeal procedure on the basis of Art 12(4) RPBA.

Article 12(4) RPBA reads as follows:

(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first-instance proceedings, everything presented by the parties under (1) shall be taken into account by the Board if and to the extent it relates to the case under appeal and meets the requirement in (2).

In this case, the patentee had delibeartely chosen not to cancel a feature allegedly offending Art. 123 EPC in any of the requests filed in the opposition and the board finds:
A request can be held inadmissible under Article 12(4) RPBA when added subject-matter held unallowable during proceedings before the opposition division is not removed at least by way of an auxiliary request filed in those proceedings, but only by way of a request filed during the appeal proceedings (Reasons 1.4).

Whilst the diligent patent attorney will immediately learn from this decision that he should better file as many auxiliary requests as possible overcoming the objections raised by the OD in the opposition proceedure, the situation turns out to be more complicated in the ex parte procedure.

In the opposition, if the patent is maintained in amended form according to the auxiliary request, the patentee has the opportunity to consider appealing this decision while relying on the principle of non reformatio in peius to at least have saved the patent according to the auxiliary request as a fallback possition.

In the examinaition procedure, if the applicant follows a "suggestion" of the Examining Division and files amended documents as an auxiliary request, the ED will very likely issue a communiation under R71(3)EPC according to the auxiliary request and, if the applicant apprioves the documents intended for grant, has no possibility to appeal the decision to grant due to his approval.

If, on the other hand, the applicant disapproves the documents of the communication under R71(3)EPC, this is entirely equivalent to a withdrawal of his auxiliary request such that he may be barred from prosecuting this request in the appeal procedure just as if the auxiliary request had not been filed.

There is actually no reliable possibility to keep the ED's suggestion as a fallback position as in the opposition procedure and to have the pertinent questions of law examined by the BoA without risking to lose the entire patent. In poker you would say the suggestion of the ED puts the applicant in an "all in or cashing out" position.

The Atomic Bomb of US patent law - Therasense v. Becton Dickinson

In the decision Therasense v. Becton Dickinson discussed in the previous post, the US fedearal circuit has strongly raised the bar for inequitable conduct in the US litigation.

The previous practice was, indeed, completely incomprehensible for poeple with an education in the continental-european law tradition. The popularity of inequitable conduct defense used in about 70% of the litigation procedures in the US has strongly impaired the reputation of the entire US jurisdiction because in particular for patentees from abroad, the incalculable risk of finding the patent unenforcible strongly disfavors the choice of the US jurisdiction for litigation.

I think that many European patent practitioners have sighed a breath of relief when reading the harsh words, the Federal Circuit has found for this phenomenon. Here are some memorable citations from the majority opinion, which in turn appears to cite various amicus curiae briefs:

Moreover, inequitable conduct charges cast a dark cloud over the patent’s validity and paint the patentee as a bad actor. Because the doctrine focuses on the moral turpitude of the patentee with ruin-ous consequences for the reputation of his patent attor-ney, it discourages settlement and deflects attention from the merits of validity and infringement issues

Inequitable conduct disputes also “increas[e] the complexity, duration and cost of patent infringement litigation that is already notorious for its complexity and high cost.” Brief and Appendix of the American Bar Ass’n as Amicus Curiae

Perhaps most importantly, the remedy for inequitable conduct is the “atomic bomb” of patent law. Aventis Pharma S.A. v. Amphastar Pharm., Inc., 525 F.3d 1334, 1349 (Fed. Cir. 2008). Unlike validity defenses, which are claim specific, see 35 U.S.C. § 288, inequitable conduct regarding any single claim renders the entire patent unenforceable.

UMoreover, the taint of a finding of inequitable conduct can spread from a single patent to render unenforceable other related patents and applications in the same technology family. See, e.g., Consol. Aluminum Corp. v. Foseco Int’l Ltd., 910 F.2d 804, 808-12 (Fed. Cir. 1990). Thus, a finding of inequitable conduct may endanger a substantial portion of a com-pany’s patent portfolio.

Inequitable conduct “has been overplayed, is appearing in nearly every patent suit, and is cluttering up the patent system.” Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454 (Fed. Cir. 1984). “[T]he habit of charging inequitable conduct in almost every major patent case has become an absolute plague. Reputable lawyers seem to feel compelled to make the charge against other reputable lawyers on the slenderest grounds, to represent their client’s interests adequately, perhaps.”

With inequitable conduct casting the shadow of a hangman’s noose, it is unsurprising that patent prosecutors regularly bury PTO examiners with a deluge of prior art references, most of which have marginal value.

We are all well aware that a well-operating patent system is essential for a county's economy. The Federal Circuit has really done a good job by re-introducing common sense into the inequitable conduct doctrine.