The EPO's Competent Opinion Of Considerable Weight - Walzenformgebungsmaschine

According to the decision Xa ZB 10/09 "Walzenformgebungsmaschine", the german patent courts have to pay attention to decisions issued by the EPO or by other national courts relating to essentially the same questions as "competent opinions of considerable weight". Although the decisions are of course not binding, the duty to observe such decision results, according to the German Federal Supreme court, from the public interst in an application of law which should be as uniform as possible.

One couple or two individuals? T 0783/09

The famous german writer Goethe has reasoned on the leave of the Gingko tree:

 
"Is it one living thing
That has become divided within itself?
Are these two who have chosen each other,
So that we know them as one?

I think I have found the right answer
To these questions;
Do my songs not make you feel
That I am both one and twain?"

Similar thougths may have arrived to the technical Board of Appeal in T 0783/09, pointed out by Laurent Teyssèdre, which has considered a case limiting the rule that a selection out of two lists of else non-individualized features is considered novel (T 12/81). 

In the case, a paragraph 21 of the specification reads:

In a very preferred embodiment .. the  DPP-IV-inhibitor is selected from LAF237 and DPP728 and the further antidiabetic compound is selected from a grop consisting of .... [22 individually mentionned compounds follow]".

The board then argues: "Thus, the fifth paragraph of page 21 indicates two individual DPP-IV inhibitors, .... and twenty-two individual antidiabetic compounds ..." and "Thus, the skilled person would directly and unabiguously recognize forty-four individual combinations, among them the three "basic" combinations referred to in claim 1."

As to the reasons for deviating from T 12/81, the board says:
However, given the term "can" in the citation from
decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subjectmatter is not a mandatory consequence of its
presentation as elements of lists. Thus, the "disclosure status" of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled
person would clearly and unambiguously derive the subject-matter at issue from the document as a whole (reasons, point 5.6).

We would be curious to learn what circumstances of this specific case have led to this surprising answer. Is it sufficient that one of the lists contains only two "very preferred" items? I think that this decision will strongly increase the average number of "very preferred" features in future applications.

Entitlement to use a patent does not foreclose the right to file an oppstion

The federal supreme court has decided in the case X ZB 33/08 (Deformationsfeder) that an  to the inventor's institution has the right to file an opposition against this patent even if the inventor has made an appointment with the applicant granting an entitlement of use for this institution.

The appointment does not imply a no-challenge obligation binding the institution as a third party such that the filing of an opposition does not in general violate the principle of good faith. This finding could change if it would turn out that the institution has functioned as a straw-man for the inventor who is, in general, not entitled to file an opposition against his invention.

The applicability of this reasoning to EPC opposions is not immediate. Interesting points arise from a comparison of this decision with G03/97 and OJ EPO 1992, 747, where the Technical/Enlarged Board of appeal emphasizes that contractual claims are in general subject to national jurisdiction.

Sufficient substantiation for re-establishment of rights J15/10

An instructive case on how to substantiate (better: how to better not substantiate) a request for re-establishment of rights at the EPO was discussed in K's Law today. This is what happened:

"But even if the [applicant’s] letters dated 14 July 2009 and 7 December 2009 were to be taken into consideration, these submissions would not remedy, but on the contrary would confirm, the inadequate substantiation of the initial request for re-establishment. In his letter of 14 July 2009, i.e. more than three months after the filing of the request for re-establishment and well after the expiry of the period for requesting re-establishment of rights, the [applicant] submitted as a new element of fact that his representative had been responsible for giving renewal advice to DWI. The [applicant] contended that the representative had discharged his duty by sending a reminder for payment on 16 December 2008. In response to the communication pursuant to A 113(1) dated 28 September 2009, the [applicant] introduced a further element of fact by arguing that his representative had had no reason to verify payment by DWI at the end of December 2008, because the time limit for payment had been observed by DWI in the previous years. On the other hand, the [applicant] no longer relied on a misunderstanding on the part of DWI as the reason for non-observance of the time limit. The [applicant] did not advance any other fact or obstacle that had prevented the payment of the renewal fee by DWI and could be regarded as pertinent for excusing the omission. Instead, he acknowledged in his letter of 7 December 2009 that “the payment of the renewal fee for the EP-application was forgotten by DWI” (cited from the decision).  

Misunderstanding or obliviousness? The board found:

"The variation in the [applicant’s] submissions and the resulting diversity of conceivable explanations for the omission show that the initial request for re-establishment did neither set out or substantiate in sufficient detail the core facts making it possible to consider whether all due care required by the circumstances had been taken to comply with the time limit concerned." (cited from the decision).

What to learn? Better tell the whole story in all detail from the onset. 

Nullity - refund for expenses of accompanying attorney at law

There is a recent tendency questionning the refund of expenses of an accompanying attorney at law in a nullity procedure at the German Patent Court (Bundespatentgericht) by the underlying party. Nullity procedures in Germany are in most cases conducted by a patent attorney who ist accompanied by an attorney at law as a support for legal questions, in particular of more procedural nature.

The former (before 2005) used to grant a refund of the expenses due to this "double-representation" by the underlying party. In the last years, the Supreme Court (BGH) emphasized that the claim for this refund of expenses has to be examined on a case-by-case basis, wherein this examination has to remain cursory in order to account for the difficulties in predicting the legal problems which might arise during the procedure. In cases where legal difficulties are very unlikely, a further representative with higher legal qualification may not be necessary such that the costs therefore would not be refunded (see e.g. BPatG
GRUR 2008, 735).


In a recent decision, the 5th senate of the Bundespatentgericht has back-pedalled a little by ruling that an accompanying attorney-at-law is always adequate in cases where an infringement procedure is co-pending for headnote (in german) see here)