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.