Wednesday, 12 December 2012

Removing a Link Does Not Remove Infringement

The Upper District Court (OLG) in Karlsruhe was confronted with a case of infromgement of the copyright of a photography. The photography was used in an editorial context in the internet and the infringer had signed a cease-and-desist declaration obliging him to remove the infringing content and to pay a fixed contractual penalty immediately in each new case of violation.

The infringer removed the link but kept the photography on the server. The copyright owner, who presumably had bookemarked the URL in order to check whether the infringer would follow his duties, then claimed that a contractual penalty was due. 

The court found this claim to be valid and rejected the defence that the content was not practically accessible due to the lack of a link from the editorial part of the web pages. The court confirmed the established case-law that the fact that everybody who had stored the URL in advance (just as the copyright owner or his representative) could access the content was sufficient to make the content available to the public.

It goes without saying that similar arguments will apply to internet-based trademark- or patent infringements provided that the content qualifies as an offer for sale. The lesson to learn is that it is better to entirely delete any potentially infringing conent from the web server rather than relying on the non-accessibility after the deletion of a link.

The question whether it would have been sufficient to modify the URL in such a way that it would qualify as a kind of password.

The full text of the decision can be accessed via Justizportal Baden-Württemberg here.

Friday, 5 October 2012

Originality not Required

The latest part (I ZR 21/11) in the recent series of interesting decisions on design protection under German unfair competition (see e.g. (here) law relates to a toy set with a box having a glass bottom, a bag of sand and some tools to create patterns in the sand spread on the bottom.

The set had been protected by a utility model, which, however had expired when a competitor started to sell highly similar toy sets. The court in the 2nd instance had rejected the claims by arguing that the realization of a general idea using only basic shapes could not lend a "competitive character" to the design in the sense that the design could be construed as an indication of the commercial origin of the product by the public.

The BGH disagreed and argued that restriction to the use of basic shapes might lead to a puristic design which could be considered characterizing for the commercial origin of the goods such that copying the design could be an avoidable deception on the commercial origin of the goods.

Originality of individual features of the design is not required. Decisive is rather the overall impression.

Tuesday, 17 July 2012

Mentioning Effects of Technical Features in the Claim?

I have just posted on the BGH decision  "Desmopressin (X ZR 131/09)".
The case at issue in X ZR 131/09 was a utility model relating to a pharmaceutical composition containing an oxidizing agent. Claim 1 required the content of the oxidizing fall short of a certain upper threshold. According to the specification, the low content of oxidizing agent leads to an extended use-by date.
The defendant was able to prove that he had used a recipe inevitably leading to a composition falling under claim 1 but could not prove his subjective knowledge of the relation between the content of the oxidizing agent and the use-by date.
The BGH considered this sufficient. The second headnote reads (in translation):
The subjective knowledge required for the possession of the invention exists when the activity is methodically directed to the realization of a technical teaching realizing all the features of the subject-matter of the invention (here: a certain recipe of a pharmaceutical composition). It is irrelevant whether or not the acting person has knowledge of effects being related to the realization of the subject-matter of the invention according to the specification (here: that the consideration of an upper limit for the content of oxidizing agent leads to an extended use-by date).”
In the reasons (margin number 18), the court argues that the possession of the invention can not depend on preconditions which did not become part of the technical teaching as defined in the claim. Accordingly, the knowledge of effects mentioned in the specification but not incorporated in the claim may not be decisive for the possession of the invention.
The interesting point is that adding a feature such as ".. such that the use-by date is extended" to the claim would have transformed this effect into a mandatory part of the technical teaching. According to the logic of the BGH, the failure to provide evidence proving the knowledge of this effect wozld have led to a refusal of the prior user right and - consequently - to infringement. An intersting case where the addition of a feature could theoretically enlarge the (inter partes) scope of protection.
A practical consequence exists for litigations with purported prior use-rights. Limiting the claim by adding a feature explicitly mentioning the effect of otherwise clearly defined technical features (in a co-pending nullity procedure or using the central limitation procedure of the EPO) could strongly increase the defendan's problems in providing sufficient evidence for the prior use.

Monday, 2 July 2012

No Right to Access to Profits for Employed Inventors - BGH "Türinnenverstärkung"

In the decision "Türinnenverstärkung" (X ZR137/07 of November 17, 2009), the Xth senate of the Federal Supreme Court BGH has overturned its establised case-law according to which the employed inventor has a claim to account for profits in order to determine his fair and adequate compensation.

The senate now judges that a right to access the annual turnover of the product concerned is sufficient to ensure the inventor's rights. The core argument is that modern inventors are engineers acquaintained with the internet and have possibilities to access informations similar to those of e.g. patent owners requesting damages to be calculated by licence analogy or owners. For the latter, no claim to access information had been granted in the past, the reason for the special role of employed inventors being that these were assumed to be humble workers with poor access to information such that complementary information was considered necessary for them to enable the assessment of the value of their invention.

Friday, 29 June 2012

Agreement on Community Patent (?)

Update: For the latest news, see here and here.

The according to the latest news here (DPA via Focus online), van Rompuy's Solomonic proposal to split the Unified European Patent Court into three parts - the central division being located in Paris and two other divisions in London and Munich respectively has been adopted. If this is true, this amounts to a great breakthrough in the 40-years of history of negotiations on the EU patent.

Further, according to this source, the London branch will deal with the administrative matters and the substantive jurisdiction will be distributed based on the technical field over the 3 cities.

Thursday, 28 June 2012

Reasonable Expectation of Success? BGH "Calcipotriol-Monohydrat"

A skilled person trying to asses Germany's expectation of
success in today's semifinals.
The Federal Supreme Court (BGH) has spent much effort in further developing the case-law on the inventive step in the last months. The mantra is that the skilled person has to find an incentive (Anregung)  to tacke certain technical measures departing from the "beaten tracks", i.e. the usual way of doing things.

The decision  BGH X ZR  98/09 "Calcipotriol-Monohydrat" seeks to clarify the degree of intensity of this incentive in the prior art and adopts - according to this blogger's knowlege for the first time - the notion of a "reasonable expectation of success" needed for the skilled person do do certain experiments. This notion is widely used in the case law of the EPO Technical Boards of Appeal and goes back to T 60/89, 3.2.5.

According to the BGH, the consideration whether or not the adoption of certain measurs described in the prior art may for solving the technical problem under consideration "may gain in importance" when assessing whether or not the skilled person had an incentive to adopt these measures.

Friday, 18 May 2012

Filing in English Will Become More Attractive for German Applicants

The Rosetta Stone
The German Federal Government Cabinet has agreed to a proposal of the Minister of Justice Sabine Leutheusser-Schnarrenberger to reform the German patent law.

The maybe most important point from a practiacal point of view is he prolongation of the delay for filing German translations of applications originally filed in English of French language from 3 months to 12 months from the filing date but not later than 15 months from the priority date. The examiner may invite the applicant to file the translation earlier in exceptional cases of particular complexity.

In addition, applications for which the translation is not timely filed are no longer deemed to be not filed but deemed to be withdrawn. The consequence is that the priority may still be claimed.

According to the explanatory remarks of the proposal (page 27, 1st paragraph), the DPMA will carry out the search and issue the search opinion for applications filed in English or French even if the translations are not yet provided.

Applicants may file their first applications in English language and will obtain a preliminary opinion prior to the expiry of the due date for filing the translation into German and decide on the basis of this opinion on his further strategy. The (slightly increased) search fees of EUR 300 are a very competitive price for a reasoned opinion and if the applicant decides to file an EP application to be validated in Germany later on, the original German application may be dropped and no translation of the full specification into German will ever be necessary.

For German applicants, this will strongly increase the attractivity of first filings in english language, in particuar if they follow an "all or nothing" strategy where the application is either dropped or prosecuted in multiple countries and where the probability of prosecuting the application in Germany only is low.

The proposal has yet to be ratified by the Bundestag and Bundesrat.

Friday, 20 April 2012

Re-Establishment of Rights After More than One Year

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".

Wednesday, 18 April 2012

When Does a Simulation Step Contribute to the Technical Character of a Method?

Oliver Randl has posted an interesting decision (T 1265/09) relating to an application claiming a method for generating schedules in a call-center. The method basically determines staffing requirements split up in different skill group and "adapts" the settings iteratively as a function of the result of a call-handling simulation.

The EPO Board of Appeal refers to the decosion T 1227/05 in an attempt to define necessary conditions to be met by a simulation step in a method to contribute to the technical character of the method.

The board derives from T 1227/05 that:
The board held that beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method and, further, it held that a simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose (Reasons, [3.1]). The claimed methods were held to meet these conditions because, firstly, they concerned an adequately defined class of technical items, and, secondly, the stated purpose, ..., was established in the further steps of the claimed methods, .... thereby functionally limiting the claims to the simulation of a noise-affected circuit (Reasons, [3.1.1-2] of T 1227/05, emphasis added).
 The Board further notes that these conditions are necessary but does not sufficient.

In the case at issue, the conditions were not found to be met
"since, in connection with the call handling simulation referred to in claim 1, the telephone call center and, in particular, its performance, are not further specified in the claim and, further, the claimed method does not define the further steps which actually result in the stated purpose, i.e. the call handling simulation." ([1.13] last par.)
 In other words - even if a call-center network is a technical system the simulation of which could be considered a technical task, the claim should cleraly define its technical features determining its performance and give details on how this is simulated.

At first sight, this appears to be somewhat narrower than the broader (and often-cited) statement in T1227/05:
"To that extent, specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product (in effect the German Federal Court of Justice ruled in the same way in its decision of 13 December 1999, X ZB 11/98 - Logikverifikation; Reasons II.4(h))."
 However, the board appears to put emphasis on the words "specific" and "technical" in the first line of the above quote.


Tuesday, 17 April 2012

Limiting Factor - Transhydrogenase

The decision "Transhydrogenase (X ZR 115/09)" relates to the use of microorganisms for producing a target substance, wherein the metabolic system of the microorganism is modified "wherein productivity of said microorganism for reduced nicotinamide adenine dinu-cleotide phosphate is enhanced" (cited from original claim 1.

It was known that  nicotinamide adenine dinu-cleotide phosphate (NADPH) plays a role in the metabolic system producing the target substance. However, the prior art did not point out that NADPH is (one of) the limiting factor(s).

The BGH ruled that the skilled person "... has an incentive to consider an improvement of that particular factor in the complicated metabolic system only if it is not known or to be expected with a sufficient degree of certainty that this factor is limiting, i.e. not available in a sufficent amount in the known methods" (cited from the headnote).

Friday, 23 March 2012

Implicit Incentives - BGH Installiereinrichtung II

The German Federal Supreme Court (BHG) has recently ruled on the "pointers" or "incentives" known to be needed to find that it is obvious for the skilled person to furhter develop a known solution in the way indicated by that pointer.

Besides of noting that all this depends on the circumstances of the individual case, the court notes that not only explicit promptings are relevant:
Rather, the characteristics ofthe technical field under consideration, in particular relating to the education of the persons skilled in the art, the usual way of developing innovations, technical requirements resulting from the construction or the application of the subject-matter under consideration as well as non-technical requirements may play a role.

Tuesday, 21 February 2012

The Applicant is Kindly Requested to Dig His Own Grave

The "Guidelines for Examination at the European Patent Office" are just what the name says. They should guide the EPO Officers through the Examination procedure and are not addressed to the applicant.

Art. 56 EPC comprises a legal presumption of inventiveness in its formulation:
"An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."
Inventiveness is something which has to be disproven and can not be positively proven. Else, the Article would read "An invention shall not be considered as involving an inventive step unless, having regard to the state of the art, it is not obvious to a person skilled in the art. Trying to find a consistent chain of obvious steps to be taken by the skilled person disproving inventiveness is the job if the Examiner. In an attemt to avoid hindsight analysis, the EPO prescribes the problem-and-solution approach for this purpose.

These are the rules of the game: the examiner has to try establishing a logical chain of reasoning using the problem-and-solution approach and the appicant's task in the examination of obviousness is to point to the steps which are illogical or non-obvious in this approach.

It appears that some examiners have gotten this completely wrong. Many (according to my subjectiv impression mainly those from The Hague) use the following text block in their examination reports:
The applicant should indicate the difference of the subject -matter of the new claim vis- a- vis the state of the art and the significance thereof, i.e., which is the underlying technical problern that is solved in an inventive way by those features of the independent claim that form a contribution over the prior art (e.g. D1 ). ln the Ietter of reply, the applicant is requested to apply the problem-solution approach for inventive step as outlined in the Guidelines CIV 11.5, i.e. the applicant is requested to
- determine the closest prior art,
- identify the technical features distinguishing the claimed subject-matter from the closest prior art,
- identify the objective technical problern being solved by the claim, and
- provide a convincing argument as to why the solution to the above objective technical problern that is put torward by the claim would not have been obvious to the skilled person.
 When I read this text block, I always feel that the examiner on the other side has not really understood what the Examination procedure is all about. He actually wants the applicant to execute the tasks of the examining division.

Wednesday, 1 February 2012

Technical Contribution, not Economical Contribution Counts for Inventor's Remuneration

The German Federal Supreme Court (BGH) has published its decision (Ramipril II - X ZR 35/09) in a dispute on Inventor's remuneration.

In the case at issue, neither the original invention report nor claim 1 as filed or as granted relating to a substance made mention of a particular ingredient with the name Ramipril. Nontheless, the feature that the substance contains Ramipril has somehow made its way to a dependent claim 8. However, this dependent claim 8 turned out to cover the economically most important embodiment of the invention.

Both the employer and the Upper District Court considered the fact that the element which turned out to have the highest economical importance as being relevant for the calculation of inventor's remuneration.

Actually, the guidelines for calculating the inventor's remuneration as well as the established case-law require calculating the value of the invention as well as the "share factor" (Anteilsfaktor) the inventor has contributed as compared to the contribution of the employer and of his co-inventors.

The BGH has now found that this "share factor" is to be calculated based on the technical contribution the employee-inventor has made in view of the prior art. The economical importance of this contribution as compared to other contributions of the invention is of secondaryrelevant only to the extend where  the economical success is considerded as an indicator for the role of the feature in the development process of the claimed subject-matter. However, according to the judgement of the BGH, the generally no causal link between the economical exploitation of the invention and individial features of a claim because using the the patented invention necessarily means at least all of the features of the independent claim are used in combination.

Monday, 30 January 2012

Good Excuses, Bad Excuses

I have the impression that the EPO Boards of Appeal have an increasing tendency to not admit new documents or requests if the submitting party does not present good reasons for the late filing. Examples include e.g. T1914/08 (cf. item [2], where the Board asks for a "justification having a causal link to the present proceedings") or T1488/08 (cf. item[2.2] asking for "objective reasons").

It may be heretic but I would like to ask whether this approach is justified in view of the  nature of the proceedings before the EPO. The Boards of Appeal do clearly have the discretionary power not to admit new facts or requests. However, this power has to be exercised on the firm basis of the objectivity principle and the overriding interest in fair proceedings.

In my view, there are (at least) two principles limiting the discretionary power of the Boards. Firstly, the decison not to admit an amendment of the case should clearly not violate the right to be heard of the submitting party. Secondly, the boards (just as the opposition division) should not be forced to knowingly take wrong decisions. The first principle requires the admissibility of amendments constituting a reasonable reaction to events inside of or outside of the procedure and the second principle requires that documents of prima facie relevance should be admitted.

Article 13(1) RPBA states that
“Any amendment to a party’s case after it has filed its grounds of appeal or reply may be admitted and considered at the Board’s discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy”.
What about the excuse? The complexity of the submitted subject-matter is clearly independent of the quality of the excuse.

Further, the procedure will not be the more economical the better the excuse for the late filing is. Rather, the procedural economy allows for the non-admission of amendmens which would clearly not change the result of the procedure (e.g. the admission of the allegedly novelty-destroying Document D99 if the Board holds that the patent is not novel over D1 already). Furhter, procedural economy should not be mixed up with the Board's comfort.

Finally, we are left with the "current state of the proceedings". In my view, this means that the Boards should shift the point of equilibrium of their balance towards the non-admission side in the later the stages of the proceedings. However, this may affect the mechanism of the balance but the weights to put on the balance should remain unchanged.

The fact that the amendment is a direct response to new points raised by the other party may support as a positive weight the admissibility of an amendment for reasons of fairness and for the preservation of the the right to be heard. However, in my view, the lack of such reasons should not constitue a "negative" weight on the balance unless the Board has additional evidence supporting the suspicition that the late-filing is the result of procedural abuse. Procedural abuse is a severe accusation which should not be raised without by the Boards without very good grounds.

In view of these considerations, the reasons for not admitting amendments to the case mentioned in T1488/08 appear to be based on a doubtful exercise of discretion. Here is what the Board has to say:
In the present case, the [opponents] have not submitted any objective reasons justifying the filing of the grounds of added subject-matter and lack of novelty at a later stage than with the appeal (such as e.g. in direct response to new points raised by the [patent proprietors] in their reply). The attempt of the [opponents] to re-introduce these grounds thus may only be regarded as a change of position determined by procedural tactics (so-called “salami” tactics). Already on this basis, the Board considered, in view of procedural economy, that it should exercise its discretion not to admit the later-filed grounds of added subject-matter and lack of novelty.

For the sake of completeness, the Board also considered whether these late-filed grounds would constitute, on a prima facie basis, a valid challenge to the patentability of the claimed subject-matter, and came to the conclusion that this was not the case.(Emphasis added).
 If this way of exercising the discretion was correct, this would imply that every amendment which is determined by procedural tactics is inadmissible. The fact that the prima facie relevance is checked only "for the sake of completeness" and not at the first place implies that this board has set its prioprities in a questionable way. The prima facie test would actually have been entirely sufficent to reject the new grounds.

Friday, 27 January 2012

E-Mail via SMS - BGH on Inventive Step

When establishing a logical chain of considerations leading the skilled person from the prior art to the subject-matter of a claim in order to challenge its inventiveness, the most difficult part consists often in finding the incentive of the skilled person to take a particular step. The case-law both in Germany and at the EPO requires such an incentive e.g. for the combination of different pieces of prior art.

In a decision issued last week, the German Federal Supreme Court BGH had to decide on a patent relating to a method for transmitting e-mails using the SMS-Standard. The method required a modification of the data structure according to the SMS-Standard and the solution employed mechanisms which had already been provided (though for slightly different purposes) in the same standard.

The BGH found that the skilled person faced with the problem of improving a standard has an incentive to use the mechanisms provided therein and - if the standard provides for a manageable (überschaubar) number of possible approaches for solving the technical problem - to take each of these approaces into consideration even if an unmanageable number of possible approaches would be imagineable outside of the standard.

Tuesday, 17 January 2012

Electronic Courtroom

This senate is not yet digitalized
Yesterday, I had my first opportunity to experience the new "electronic courtroom" at the Bundespatentgericht - on which I had reported here earlier.

The room still smells very new (carpet glue I guess) and is quite fancy. All the Judges and the parties have a big monitor embedded in their tables which would allow them to have a shared view on an electronic document. Further, the documents are displayed on a big flat screen on the wall.

Unfortunalely, we were caught by surprise to be in that room as we did not receive any advance notice and did not bring any electronic documents and neither the judges nor any other party has desired to share any document such that everything besides of the black screens on the tables was as usual.

This appears to be a general caveat. Only two out of the approximately 15 (ß) courtrooms of the Bundespatentgericht are electronically equipped and these are occupied by two "resident" senates (one technical appeal senate - in our case the 19th - and one nullity senate) respectively. Since the other senates have not yet digitalized their files, thay may not use this courtroom even in the unlikely case that it would not be occupied by its resident senates.

As a consequence, there is no opportunity to use the new electronic courtroom even upon request unless your case is handled by one of the four (the 19th and 3 still unknown) "digitalized" senates.

Tuesday, 10 January 2012

When it comes to Money - J25/10

The EPO's legal board of appeal has noted in a  decision publised in the OJ that a decision not to refund 75% of the examination fees upon a withdrawal of the application has to be reasoned.
Following the withdrawal of a European patent application, a refusal by the Examining Division of a request for a 75% refund of the examination fee, on the basis that substantive examination had already begun (Article 11(b) RFees), must be based on facts which objectively demonstrate that this is so.
 In the case at issue, the examiner had simply alleged that he had already started the examination without giving any more detailed facts or evidence in support of this allegation. The board refers to the principles of the democratic legal order entailing the need to ensure predictability of jurisdiction and
hence legal certainty by preventing arbitrariness as set out in G 3/08.  Furhter, the board notes:
It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the Examination Division, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based. (cf. point 12 of the reasons, emphasis added).
In hope that the particular importance of the principles of the democratic legal order in cases where the EPO's finances are concerned does not imply that these principles are less important in cases which do not affect the EPO's finance.

Thursday, 5 January 2012

Keeping the Doors Open – R 3/11

The last decision of the EPO’s Enlarged Board of Appeal (EBOA) addresses the critera of an objection under Rule 106 EPC, which reads:
A petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings.
This is what the EBOA has to say about the nature of the objection (Reasons 3.1):
Raising an objection pursuant to Rule 106 EPC is a procedural act and, when it is possible, a precondition for access to review by the Enlarged Board. It is an extraordinary legal remedy against final decisions of the Boards of Appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognize immediately and without doubt that an objection pursuant to Rule 106 EPC is intended. For the same reason such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on.
And further on:
… apart from, the usual phrases that the parties addressed the Board, after which the matter was discussed with the parties, and the reciting of the requests of the parties, the minutes contain the following:

"The Chairman asked the parties if they had any other Observations or requests and there were none."

This clearly contradicts the petitioner's position that the objection pursuant to Rule 106 EPC was in fact raised.

The absence in the minutes of an objection under Rule 106 EPC and of any request for correction of the minutes are strong indications, that such objection, if any, was at least not duly qualified, which is a necessary condition (see point 3.1 above).” (emphasis added)
In order to keep the possibility for filing a petition to review under Art. 112a (2) EPC, it is therefore highly advisable to take care that the objection as well as the decision to dismiss the objection figures in the minutes. Apparently simply murmuring the “usual phrases” (whatever these may be?) are not sufficient for this purpose.

Tuesday, 3 January 2012

Walking the Tightrope between Copyright and Technical Creations

The Bundesgerichtshof has recently issued a decision named "Seilzirkus" (I ZR 53/10) on the eligibility of utility items for copyright/author's right.

This question usually pops up in the field of furniture - in particular "design classics" by the masters of the Bauhaus era where the 70-years post-mortem term has not yet expired. However, author's rights are recently claimed quite often in more profane cases such as the climbing scaffold for children made up of ropes and clips and a central pillar shown on the right hand side.
Top view of the original climbing scaffold

It is well established case-law that features which are “exclusively due to technical reasons” (allein technisch bedingt) may not be used to establish copyright. The generally accepted reason for this is the desire of the legislator to keep technical subject-matter free to be used once the term of the technical protective rights (patents, utility models) has expired. Evidence for this “desire of the legislator” is found in Art. 8 (1) of the Community Design Regulation and Art. 7 (1) e) ii) of the Community Trademkark Regulation and in their counterparts in the national laws.

However, it is fairly difficult to distinguish the purely technical features from those which are (in addition to their technical implications) “artistically designed". Imagine a chair with four rectangular legs. The provision of the legs has obvious technical reasons as well as the rectangular profile, which facilitates the manufacturing. But are these reasons exclusive reasons or are there other reasons (e.g. aesthetical) to use four legs rather than three and to use a rectangular profile rather than a round one.
Allegedly infringing climbing scaffold

The Bundesgerichtshof now clarifies that
 a creation does not enjoy copyright protection if it consists of features which are freely exchangeable or selectable only and if no artistic achievement is recognizable. Exploiting the usual design options in craftsmanship and construction or exchanging a technical feature with another does not lead to an original (eigenschöpferisch) work of art.

Finally, the Bundesgerichtshof shifts the burden of clearly and precisely pointing out in what artistic aspects the creation extends beyond the shape as determined by the function to the holder of the copyright (Headnote II). The latter point will be of high practical relevance because it forecloses the right owner from hiding behind a flowery adulation of the work of art but rather forces him to point to the essential features from the onset.
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