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?