Communiqué on 142 meeting on EPO Administrative council

The report on the meeting of the Administrative Council of the EPO has now been published here as follows:

142nd meeting of the Administrative Council of the European Patent Organisation (Munich, 10 and 11 December 2014)

The Administrative Council held its 142nd meeting in Munich on 10 and 11 December 2014 with Jesper Kongstad, Director General of the Danish Patent Office, in the chair.

After the Chairman's report on the last meetings of the Board of the Administrative Council, the President of the European Patent Office, Benoît Battistelli, presented his activities report. The Council expressed its clear satisfaction.

The Council then exchanged information on strategic matters within the Organisation and on the social climate and addressed a particular issue concerning alleged misconduct by a Council appointee under Article 11 (3) EPC, reported separately on this website.

Further, the Council proceeded with a series of appointments and re-appointments to positions in the boards of appeal.

Later, the Council heard status reports on the Unitary patent and related developments as well as on substantive patent law harmonisation.

Lastly, the Council adopted a reform of the career system as well as the draft budget for 2015.

Council Secretariat

No surprise so far. The rumors that the new career system has been adopted are confirmed. The new career system is supposed reduce (or entirely eliminate) the effect of seniority on salary increases and put a strong focus on productivity. According to a letter published via the FOSS blog run by Florian Müller, this is likely to affect the quality of the patents delivered by the EPO.

This blogger thinks that a more incentive-based salary system is a very good idea as long as the quality of the work remains an essential factor. However, the quality of the work of patent examiners is difficult to quantify insofar as the substantial part thereof is concerned. Quality management systems tend to put an excessive weight on factors which can be easily "measured" and to neglect other, more  relevant factors. Is the recent trend showing an increasing number of EPO examination procedures limited to purely formal issues without ever entering into a deeper a discussion on the technical merits of the invention a result of an unbalanced incentive system?

Dangers of Copy & Paste



The fist embodiment

In the case T395/13, the technical board of appeal of the EPO had to deal with a case where the appellant - who had not participated in the oral proceedings of the 1st instance -  argued that the decision was not sufficiently reasoned.

According to the appellant,

Sections 11.4 and 11.5 of the decision under appeal did not relate to the present case, but could instead be seen to have been copied from the decision in one of the parallel cases involving the same parties and opposition division (specifically the opposition against European patent No. XXXXXXXXX). The document referred to in those sections as E2 was clearly not that identified as E2 in the section "Facts and submissions" in the decision under appeal, but was instead the document now referred to as E2A. That these sections were not relevant to the present case was also apparent from the fact that it used terminology (specifically the expression "local client printer module") which appeared only in the parallel case, not in this one.

 The board adds that:

It is also clear that ..... sections 11.4 and 11.5 are exact copies of the corresponding sections of the decision taken by the same opposition division in the parallel opposition procedure against the European patent No. XXXXXXX, including even the repetition of mistakes (such as "The fist embodiment" in section 11.5.2). (emphasis added, cf. reasons, item 2.1)

The decision was set aside and remitted to the 1st instance.

EPO - News from the Administrative Council

The Administrative council has published a "Communique on decisions taken by the Administrative Council at its 142nd meeting concerning senior employees and appointments and reappointments to the Boards of Appeal" as follows:

The Administrative Council of the European Patent Organisation held its 142nd meeting in Munich on 10 and 11 December 2014 under the chairmanship of Jesper KONGSTAD (DK).

The Council addressed a number of points concerning senior employees and the Boards of Appeal. Specifically, the Council addressed disciplinary arrangements applicable to senior employees appointed by the Council under Article 11 (1)(2)(3) EPC and, noting its obligations under Article 11(4) EPC, agreed to set up a Council Disciplinary Committee.

The Council took this opportunity to reiterate its full endorsement of and support for the principle of independence of the members of the Boards of Appeal, as specifically set out in Article 23 EPC and generally embodied in internationally recognised principles of judicial independence.

The Council also made four re-appointments of members of the Enlarged Board of Appeal and Chairmen and legally qualified members of the of Boards of Appeal pursuant to Art 11(3) EPC, as well as a total of twelve appointments and re-appointments of legally qualified members of the Enlarged Board of Appeal pursuant to Art 11(5) EPC.

On a proposal from the President of the Office, the Council addressed and carefully considered a particular issue concerning alleged misconduct by a Council appointee under Article 11 (3) EPC. As a precautionary and conservative measure without anticipating any further steps which may ensue, the Council unanimously decided to suspend the person concerned from active duty on full salary until 31 March 2015. The Council requested the investigation to be completed as soon as possible, in order to allow it to decide on the next steps. The Council expressed its concern at an incident unique in the history of EPO.

Details of the appointments and reappointments as well as of other decisions taken by the Council at this meeting will be published separately.

Council Secretariat

 The setup of a council disciplinary committee is a step which serves to ensure the separation of powers. However, it is to be noted that the main concerns of the demonstrating employees (new career plans, internal disciplinary regime for employees other than those appointed by the AC) are not at all addressed.

This blogger wonders whether the "senior employees" other than the members of the boards of appeal (the employees appointed by the Council under Article 11 (1)(2) EPC are the president and the vice president(s)) are mentioned only for the sake of completeness or whether this might indicate that any sort of investigations with regard to the activities of these persons have been discussed or are on the first schedule of the new council disciplinary committee?

Wind of Change at the EPO?

About 1500 or 1600 individuals (according to the organizers) including EPO employees, sympathizing professional representatives, curious bloggers and chimeras of these categories have demonstrated in front of the EPO's Isar building today, where the meeting of the Administrative Council was about to take place.

The EPO management contributed to the event by calling the police to make sure that the demonstrators did not enter the EPO premises but rather stayed on the walkway.

Representatives of the staff committee made various proposals on how to make sure that the fundamental human rights including the freedom of speech and the guarantee of judicial review are respected. One proposal was to establish an independent committee reviewing the managerial decisions for this purpose, the other one was that the EPC should access the European Council.

For more background information, see here and here.

EPO in Unrest - Ask Your Local Council Member

The IP Kat and others (e.g the Enlarged Board of Appeal here) have expressed their concerns about the judicial independence of the EPO Technical Boards of Appeal after the news that a board member had been forced to leave his office (and was prohibited from entering the EPO premises) here and here (see. here, and here).

Readers who share these concerns should contact their local council member prior to the meeting later this week. Their addresses can be  found  here.
In case anybody needs inspiration for what to say, a sample letter by Tilman Müller-Stoy (Bardehle Pagenberg) can be found here.

Does Withdrawing a Main Request Imply that Admissibility of Appeal Is Accepted?

After a first part of the oral proceedings in the opposition underlying the case T2157/10, the Opposition Division had expressed its preliminary opinion that the opposition was considered admissible and then turned to the substantive issues of the case.

The patentee then withdrew its main request and made one of its previous auxiliary requests its new main request. The patent was then maintained in amended form as requested proprietor.

 

The latter was, however, not satisfied with the decision and filed an appeal, the admissibility of which was obviously questionable because one might wonder if the appellant was not adversely affected by the decision.

 

The discussion in the oral proceedings in the first instance is summarized by the Technical Board of Appeal as follows (items [1.2] - [1.4]):

During those oral proceedings, the proprietor also raised the issue of whether the opposition was admissible (see minutes, p. 2, 7th par.). After discussion with the parties and deliberation, the opposition division stated that it "consider[ed]" the opposition to be admissible (see minutes p. 3, 5th par.). 

The board takes this to mean that the opposition division expressed its conclusion on this issue, but did not pronounce a decision at this point. Thereafter, the minutes (p. 3, pars. 2 and 3 from the bottom) report that "[t]he chairman asked the proprietor to clarify the requests on file: the rejection of the opposition or to maintain the patent in amended form" and that "[t]he proprietor said that his request was to maintain in amended form."

Hence, the interlocutory decision of the opposition division found in favour of the highest-ranking substantive request of the appellant.  

Moreover, in the board's view, the minutes must be understood to imply that the proprietor no longer requested the opposition division to find the opposition to be inadmissible. Any request to this effect which may have been made before was thereby withdrawn. (emphasis added).

This is how the patentee conceived this situation (cf. item [2.2]):

The subsequent request by the chairman of the opposition division that the proprietor clarify its request was exclusively related to substantive requests. It was clear at the time that what the proprietor was asked to clarify was on the basis of which sets of claims it requested that the patent be maintained. It was also clear, so the argument, that by making the substantive request that the patent be maintained in amended form, and irrespective of the fact that the basis for the amended patent was labelled "main request", the proprietor did not intend to withdraw its procedural request that the opposition be found inadmissible. Rather, maintenance in amended form was requested merely if the opposition division decided that the opposition was admissible.

The board of appeal rejected the appeal as inadmissible. This blogger is wondering whether this result could have been avoided if the patentee had expressed its intentions more clearly: Is it possible to appeal the decision to hold the opposition admissible without at the same time requesting the maintenance of the patent as granted?




 

Advertisements yes, but not with intention to sell

What would the designer think
of Italian advertisements?

Advocate General (AG) Cruz Villalón has published his Opinion in Case C-516/13 Dimensione Direct Sales and Labianca reported earlier here .

Article 4 par. 1 of the Copyright directive 2009/29 provides that "Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorize or
prohibit any form of distribution to the public by sale or otherwise".
The referral is about the "or otherwise" piece of this Article.

In an earlier referral (C-256/06 Peek & Cloppenburg/Cassina), the ECJ had decided that the words"or otherwise" should be interpreted narrowly in the sense "that the concept of distribution to the public, otherwise than through sale, .... , applies only where there is a transfer of the ownership of that object" (cf. margin number 41 of the decision) such that the mere offering of a counterfeit for use would fall under the scope of this provision.

The AG proposes to answer that Art. 4(1) of the InfoSoc directive forecloses offering the original or copies for sale to the public without consent, including where such offer has led to any acquisition, provided that such an offer was made with the manifest intention to enter into contracts of sale or other acts involving a transfer of ownership in them.

This blogger wonders if the manifest intention is a sufficiently objective criterion. What if the future advertisements say come and test our fancy Marcel Breuer chairs in our shop in Italy rather than come and buy our fancy Marcel Breuer chairs in our shop in Italy as was in the case underlying the referral?

This opinion has been commented by Eleonora Rosati here and by Jeremy Philipps here.

Are patents only Paper Tigers?

An interesting article by Peter Hess, Tilman Müller-Stoy and Martin Wintermeier published in the German journal "Mitteilungen der deutschen Patentanwälte" compiles a lot of statistics on the outcomes of nullity actions in at the German Patent Court and the BGH. An English version was made available by the law firm of the authors Bardehle Pagenberg here. 

 

In a nutshell, the report shows that almost 80% of the nullity actions are at least partially successful in that the patents are partially revoked, wherein 43% of the patents are totally revoked. In the field of Software and Telecommunications technology, the rates are even higher According to the authors "one might possibly even speak of a failure of the patent system" in this field.  The authors want to initiate a discussion on examination quality.

 

Konstantin Schallmoser comments on the EPLAW blog that the invalidation rate is not surprising given that nullity actions are usually filed only if a preliminary assessment of the case shows that there are reasonable chances of success.

This blogger wants to add that the sample of patents subject to a nullity action is not representative for the patent system as a whole for other reasons. Invalidation makes economical sense only if the patent has a high economical importance, which might speak in favour of a high quality of the underlying invention. On the other hand, the efforts and time usually spend for the invalidation search is much higher than what a patent office can do within the (financial) limits set by the official fees. The functioning of the patent system depends not only on the quality but further on the affordability of the examination. My feeling is that the offices strike the balance quite well, though there is some room for improvement of course.

Presentation on Specialist Congress is no Offering for Sale- LG Düsseldorf 2 U 3/14 - Warmpressumformung



Junior Specialist Congress

An representative of defendant in the case "Warmpressumformung" hat presented information on and advantages of products covered by a German utility model on a specialist congress.  

 

The plaintiff submitted that this presentation amounted to an offer for sale.

The court points out that the congress was announced as a forum for interested circles for information on the state of development of various enterprises and in relation to new applications in lightweight car body engineering. The presentation was therefore considered as information on development in progress and not as an immediate preparation of a sale (as was the case e.g. in the decision „Kunststoffbügel“ (BGH, GRUR 2006, 927).

The German Text of the decision can be found under the following Link.

On counting the number of inventions - T129/14

How many branches does this tree have?
Photo by Pablo D. Flores

The decision T129/14 deals with the algebra of counting the number of inventions in a single European Patent Application.

While the substantive examination procedure deals with the question whether there is one invention or zero inventions (wherein the applicant tends to advocate in favour of the greater among these numbers) the situation is opposite in the search procedure. In this early stage of the procedure, the examiner may, under certain circumstances, limit his search to the invention first mentioned in the claims. A search for further inventions is carried out only upon payment of a further search fee (this option having been introduced for the case of EURO-PCT applications only as of November 1, 2014).

The case of so-called non-unitiy a posteriori can be understood by adopting the illustrative image of a "claim tree", the examiner should start searching with claim 1 as the stem of the tree. When having found a document destroying novelty up to a branching point where the claim tree splits into different branches, these branches should be identified by defining "special technical features" shared by the claims being a part of the branch under consideration (Rule 44 EPC) and the examiner should then follow the branch first mentioned in the claims for the further search and invite the applicant to pay additional search fees for the other inventions. Failure to do so leads to foreclosure of the unsearched subject-matter for the further prosecution (Rule 137(5) EPC).

In the case underlying the decision T129/14, the examiner had  adopted a particularly captious approach to counting the number of inventions in the application. The examiner found prior art destroying the novelty of claims 1, 5, 14 and 15 as originally filed, which he considered to constitutethe unitary group of inventions first mentioned in the claims, and concluded that these claims cannot contain any special technical features in the sense of Rule 44 EPC which could potentially be shared with other claims. Amendments relating to subject-matter of claims other than those mentioned above were rejected as relating to unsearched subject-matter.

In the picture of the claim tree, the examiner reverses the tree and defines the stem as a further branch and magically increases the number of inventions by one.

Luckily, the board of appeal did not follow this approach. Claims which are anticipated by the prior art cannot include features which define a contribution the claimed invention makes over the prior art as stipulated in R 44 EPC. The application was remitted to the first instance and the appeal fee was refunded as a matter of equity in view of the fundamental procedural violations.

Thanks to Laurent Teyssèdre for having spotted this decision in his French blog here.

News on Enforcement of Standard Essential Patents under FRAND

The Advocate General Melchior Wathelet  has now issued his opinion on the case ZTE-Huawei (Case C 170/13) on the requirements on enforcement of a Standard Essential Patent (SEP).

Among other things, the Advocate General proposes to stipulate that:
the SEP holder must, in any event, present the alleged infringer with a written offer of a licence on FRAND terms and that offer must contain all the terms normally included in a licence in the sector in question, including the precise amount of the royalty and the way in which that amount is calculated.

The most surprising part in my view is the proposal that the infringer’s conduct cannot
be regarded as dilatory or as not serious during negotiations for a licence on FRAND terms if it reserves the right, after entering into an agreement for such a licence, to challenge before a court or arbitration tribunal the validity, use and essential nature of that patent.

This is likely to create conflicts with the existing German case-law unambiguously accepting the right of the patentee to terminate a license agreement for good cause if the licensee files a nullity action against the patent. In the case of a co-pending nullity suit, the principle of dolo agit, qui petit, quod statim redditurus est (foreclosure to claim something the claimant would have to return immediately because the corresponding counterclaim exists) therefore forecloses the licensee from forcing the patentee into an agreement which could then be terminated by the patentee immediately.
A comment by Colm Ahern can be found here.

The full text of the opinion can be found here.

The Orange Book Standard is discussed e.g. here.

No difference between "to contain" and "to comprise" - T 0056/08

The words "comprising", "consisting of" or "containing" count among the most discussed words in the patent-related case-law.

In the decision T 0056/08 here, the respondent/opponent had argued that an amendment from "to comprise" to "to contain" infringes Art. 123(2) EPC.

Respondent's argument that the verb "to contain" has a more restrictive meaning than the verb "to comprise", the Board would point out that the general meaning of the verb "to contain" is "to have in it", "to hold", "to include", "to encompass" or "to comprise". 

Therefore, the Respondent's argument cannot be accepted.

No Copy & Paste of Preliminary Opinion - T 1312/10

In the decision on the basis of the appeal T 1312/10, the Examining Division of the EPO had merely copied the reasoning given annex to the summons to oral proceedings and did not discuss the additional arguments filed in response thereto in arriving at its decision to refuse the application.

The Board judges that this constitutes a substantial procedural violation and ordered that the appeal fee be refunded although a refund was not even requested. The Board of appeal was very assiduous not only in this point but further introduced new documents D4 and D5 into the procedure (wherein D5 was not even prior art) but finally found that the claim 1 complies with the substantial requirements of the EPC.

What is a "Normal" Dog Biting Event? - T 718/08

The main request in an appeal against the decision of the opposition division to revoke a patent amongst other grounds on Article 100(b) EPC as the patent did not disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art.

Claim 1 of the main request reads:

A chewable product (40) capable of enhancing dental hygiene in a pet, comprising a continuous phase (44) and a discontinuous phase (46) characterised in that the phase proportions are such that a force of at least 100 Newtons is required to penetrate a surface of the product (40).

In the Auxiliary request, the it was claimed that the force required to penetrate the product is greater than expected to be exerted by such pet during a normal biting event.

The methods for measuring the penetration force given in the specification made reference to a "specially constructed model tooth" of and an analysis system "designed to simulate the biting action of a dog's teeth" and to "a specially designed cone-shaped penetrometry probe of length 12mm" pushed into the product "at a rate of 2mm/s". Further geometrical details such as the cone angle of the model tooth or the probe were lacking.

The board discusses various attempts of the patentee to provide evidence for the fact that the skilled person will be able to derive suitable values for the cone angle as a matter of routine and concludes that the skilled person is unable to determine the missing cone angle on the basis of the patent and his common general knowledge. Failing a specific value of the cone angle he will be unable to reliably measure penetration force and thus reproduce the claimed invention. The invention according to the claims of the main request is thus insufficiently disclosed (Articles 83, 100(b) EPC).

This is a good example of the inescapable enablement-disclosure-trap where a drafting error turns out to be fatal many years after filing.

No Refund of DPMA Examination Fee

In the case X ZB 11/13, the applicant had requested the refund of the examination fee for an application which had been deemed to be withdrawn when the examination hand not been started.

The BGH discusses various possible claims for refund of the examination fees including the constitution and comes to the conclusion that no statutory basis for the refund exists. In contrast to the examination fees of EPO, the examination fees are considered to be fees for formally initiating the examination procedure and not linked to any actual service being carried out.

Patentability of Cinematographic Techniques in Multi-User Games

The decision T1259/08 relates to a rejected patent application based on the problem of network delays in multi-user games.

The idea was to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by a network delay. The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user. The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene.

In the embodiment, when either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay.

The board of appeal applies a broad interpretation of "cinematographic technique" such that the latter includes so-called time warping  known from the prior art. Whether or not the time warping technique diverts the user is considered irrelevant because this feature relates to human perception.

The board further notes that the solution would not have been inventive either:

The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.

 

EPLIT meeting in Edinburgh

Micaela Modiano of Modiano & Partners was so kind to provide us with her report on the first annual meeting of the newly founded European Patent Lititators Association in Edinburgh, which is surely of interest for all of our readers who were unable to attend:

About half a year after foundation of the European Patent Litigators Association (EPLIT), the first annual meeting of EPLIT took place in Edinburgh on 2nd May, 2014.

The meeting was opened by Eugen Popp by briefly explaining how the idea to create an association such as EPLIT arose. As the UPCA appropriately provides for representation of parties by European patent attorneys having an additional qualification in patent litigation, there is an ongoing need to promote the participation of European Patent Attorney Litigators in proceedings before the UPC. Active participation of attorneys specialized in litigation seems essential for reaching the goal of user-friendly, fair and cost-efficient patent litigation in Europe. However EPLIT is not only open for EPA litigators, but also other practitioners qualified according to Article 48(1) or (4) UPCA are eligible as associate members.

The introduction was followed by a presentation from Laura Starrs, a member of the UPC task force of the UK Intellectual Property Office. She gave a brief overview on representation before the UPC according to Article 48 UPCA before entering into a detailed presentation on the question of what qualifications will be considered appropriate in order to qualify as representative under Art 48(2) UPCA. She mentioned that the Preparatory Committee is currently working on an amended proposal (in view of input from the member states) whereas a revised proposal will be published soon and will be subject to a public consultation which will be open for six weeks. Her presentation was followed by a discussion on where the level should be set for appropriate qualifications according to 48(2) UPCA.

After a coffee break, elections of two further board members as well as of three temporary directors took place. Koen Bijvank, first president of EPLIT, presented the endeavours EPLIT’s board plans for the immediate future. Amongst others, meetings with officials and the organisation of mock trials will be the primary objects of the first elected board of EPLIT. Finally, the creation of six working groups was agreed on. These working groups established at the First Annual Meeting of EPLIT are the following:

1. Qualification
2. Costs of Proceedings
3. Code of Conduct
4. Privilege
5. Mock trials
6. Issues of substantive Law


For anyone interested in joining EPLIT and eventually joining one of the working groups, the application form can be found on www.eplit.eu.

When does Clarity become an Issue in the Opposition Procedure?

Many of the skilled readers will know that clarity of the claims is not a ground of opposition under the EPC. Clarity of all the claims is supposed to examined in the examination procedure and treated as something like res judicata  in the subsequent opposition procedure. G 09/91 states, however, that amendments of the claims are to be fully examined as to their compatibility with the requirements of the EPC (including clarity).

In principle, Art. 84 EPC applies to all of the claims, the independent ones and the dependent ones. As a consequence, most of the boards have interpreted  G09/91 in such a way that mere combinations of formerly dependent claims do not introduce subject-matter which has not yet been examined for clarity and therefore do not open the power of an Opposition Division or a Board of Appeal to examine the clarity of amendments of this kind. However, there is a recent tendency to deviate from this line (see e.g. here) or to circumvent Art. 84 EPC via Art. 83 EPC by arguing that the claim is so unclear that the specification does not enable the skilled person to carry it out.

Experience shows that the concentration of both examiners and attorneys rapidly decreases once they have successfully read and understood claim 1 and that the clarity of the claims tends to decrease with increasing number.

This may lead to problems when a dependent claim including its shortcomings is suddenly placed in the limelight by being incorporated into an amended claim 1. Both opposition divisions and opponents have to control their well-trained reflexes to scrutinize the clarity and are sometimes obliged to even support highly allergenic words like "substantially" in a claim 1.

The latter was the fate of the technical board of appeal in the decision T 373/12, which was faced with the nuisance that the formulation "substantially all of its surface area" had found its way from claim 3 as granted into an amended claim 1. It has therefore referred the following questions to the enlarged board of appeal:

1. Is the term "amendments" as used in decision G 9/91 of the Enlarged Board of Appeal (see point 3.2.1) to be understood as encompassing a literal insertion of

(a) elements of dependent claims as granted and/or

(b) complete dependent claims as granted into an independent claim, so that opposition divisions and boards of appeal are required by Article 101(3) EPC always to examine the clarity of independent claims thus amended during the proceedings?

2. If the Enlarged Board of Appeal answers Question 1 in the affirmative, is then an examination of the clarity of the independent claim in such cases limited to the inserted features or may it extend to features already contained in the unamended independent claim?

3. If the Enlarged Board answers Question 1 in the negative, is then an examination of the clarity of independent claims thus amended always excluded? 4. If the Enlarged Board comes to the conclusion that an examination of the clarity of independent claims thus amended is neither always required nor always excluded, what then are the conditions to be applied in deciding whether an examination of clarity comes into question in a given case?

Copyright and Divine Inspirations

Who owns the copyright of the ten commandmens?

An interesting case on author's rights has been reported by the upper district court in Frankfurt (Oberlandesgericht Frankfurt am Main) here. The copyright dispute dealt with a text for which the author had allegedly experienced "divine inspiration" from Jesus.

The defendant argued that the copyright thus belongs to Jesus and not to his humble servant who had only received the dictation from Jesus and thus played the role of a typist without any creative freedom.

The court disagreed. According to the judgement, any inspiration from the other side has to be entirely attributed to its receiving person.

Patentee+Patentee=Two Appeal Fees

In the case on which the decision 10W (Pat) 17/14 of the German Bundespatentgericht is based, two legal entities co-owning the patent had commonly filed an appeal against the decision of the opposition division and paid only one appeal fee.

According to earlier decisions of other senates of the the Bundespatentgericht, this had been considered sufficient because co-owners of a patent were considered mandatorily joint parties (notwendige Streitgenossen) in a legal sense. After all, they are obliged to perform procedural steps jointly.

According to the 10th Senate, this is not sufficient to qualify the co-owning patentees as a single party. According to law, the fees have to be paid for “for each Appellant” (für jeden Antragsteller).
Subsequent attempts of the patentee to argue that the actually formed single legal entity for the purpose of prosecuting the patent from the onset have not been successful. The same holds for the attempt to subsequently allocate the appeal fee to one of the patentees. It has to be unambiguously clear which parties are parties of the appeal procedure at the time limit to file the appeal.

The appeal was deemed to be not filed.

Is it unfair to account for compatibility with design characteristics of copetitors?

The question of whether or not the adaption of design features, in order to integrate a product into a series or a system developed and designed by a third party, offends the principle of fair competition has been under heavy dispute in the past.

While the BGH had ruled in the decision "Klemmbausteine II" (Urt. v. 7.5.1992 - I ZR 163/90, GRUR 1992, 619 = WRP 1992, 642)that such an integration into a series of a third party (in the case at issue, the products were plastic bricks matching Lego breaks constitutes an unfair profiting of the achievements of that third party.

However, this rule was put into perspective with the subsequent decision “Klemmbausteine III” (I ZR 30/02) and "Modulgerüst" according to which this subsequent protection against inserttion into a series of a third party should be at least limited in time. According to the Senate, the term of protection should be based on the term of protection of similar industrial property rights such as patents or registered designs. However, a legitimate interest of the author of a series of product to be protected against insertions into the series was recognized.

The two recent decisions “Regalsystem” (I ZR 136/11), and "Einkaufswagen III" constitute surprising turning point in this line of decisions. According to the decision “Einkaufswagen III”, the fact that an interest of customers in optically compatible products in view of the need of replacement or enlargement exists is no indication for an inappropriate exploitation of the valuation of the imitated product, but rather an indication to the contrary. If a need for replacement using optically compatible products exists of the side of the customers, an inappropriate exploitation of the valuation of the counterfeit product may be excluded even if the aesthetic design features are adopted almost identically.

One decisive factor is the question whether or not the salability of a product with differing design features would be reduced as compared to the product with imitated design features (BGH “Regalsystem” I ZR 136/11).

Maltese IP Attorneys are no Patentanwalt

The Federal Court of Justice BGH has received an appeal against a decision of the Bundespatentgericht. The appeal was filed by a person registered as "IP Attorney" at the Intellectual Property Office of the Republic of Malta, but not as a German Patentanwalt.

The appellant's representative invoked the Directive 2006/123/EC of 12 December 2006 on services in the internal market as a legal basis for his entitlement to represent before the BGH. The BGH did not follow this argument because the directive 2005/36/EG is lex specialis to Directive 2006/123/EC and allows for supplementary qualification examinations for profession in its field of application. The German (supplementary) qualification examination for qualified patent attorneys from other European Countries is such a supplementary examination and is therefore in perfect conformity with Union law.

Since the Maltese representative did not figure in the list of German Patent attorneys, he was not entitled to represent his client in this case. As he did not pass the examination, he was further not entitled to be registered in this list. The appeal was deemed to be not filed.

The full decision can be read here.

Button in the Ear has no Distinctive Character

Sometimes, the world is unfair. One of the most distinctive trademarks this blogger knows from his childhood is the "Button in the Ear" with the Steiff ear tag for Teddy bears and other cuddly animals.

The Steiff Company has therefore been well advised to apply for a community trademark registration for this trademark. The trademark was labelled as a "position trademark" accompanied with the illustration on the left hand side.

However, the members of the boards of appeal of the OHIM and judges of the European Court of Justice apparently do not share this blogger's experiences and have rejected the application  due to a lack of distinctive character.

According to the court, buttons and little tags bearing information such as a brand, price or cleaning instructions are usual design features of cuddly animals and the Steiff ear tag does not differ from the design usual in this field to a sufficient degree.

It appears that Steiff will have to provide evidence that the sign acquired distinctive character through the use which has been made of it.

Copyright Protection of Culinary Creations

Two very interesting posts in the IPKat (one by Alberto Bellan here and one by Annsley Merelle Ward here) address the interesting question of copyright protection of culinary creations.

While the copyright protection of recipes in their written form has been the issue of the BGH decision "Marions Kochbuch", the recent decision "Geburtstagszug" might open a way for a copyright protection of the particular aesthetic presentation of food on the plate. 

When doing some search on the history of patent law for a lecture last year, I was surprised that the protection of the creation of cooks might indeed have been the first known monopoly rights for intellectual property in history.

Sybaris, a Greek colony in southern Italy that existed from 720 to 510 B.C., was supposedly known for a luxurious and decadent lifestyle. Quoting from the historian Phylarcus, the Greek writer Athenaeus states:

The Sybarites, having given loose to their luxury, made a law that . . . if any confectioner or cook invented any peculiar and excellent dish, no other artist was allowed to make this for a year; but he alone who invented it was entitled to all the profits to be derived from the manufacture of it for that time; in order that others might be induced to labour at excelling in such pursuits.

(Quoted from "The Law of Patents" by Craig Allen Nard)

Supposing that the legislators grant monopoly rights for intellectual property for the purpose of inciting developments which promote the general prosperity of their people, I think it is very interesting that the focus has shifted from culinary innovations in a luxury society in ancient Greece to technical innovations in the Renaissance era until today. This shows how the way of thinking and the valuation of good food has changed.

Farewell Handwritten Amendments at the EPO

As of January 1, 2014, the EPO does no longer accept submissions including handwritten amendments on replacement sheets of the application documents. Under Rule 86 EPC this also applies to amendments in patent specification documents in opposition proceedings.

This may be of particular relevance if the patentee wishes to submit new requests in the course of oral proceedings. According to the FAQ page:

Documents containing handwritten amendments may be used as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent; a final decision granting a patent or maintaining it in amended form may only be taken on the basis of a document which is not formally deficient.


In order to assist the parties in such circumstances, the Office provides technical facilities that will allow compliance with the formal requirements while ensuring a smooth conduct of the oral proceedings at the same time.

The author of this note has always appreciated the craftsmanship involved in preparing artful collages of paper snippets and spiced op with handwritten notes and the smell of glue in the attorney's rooms. The FAQ page further explains how the new and sterile reality will look like:

Parties using their own laptops or other electronic devices to prepare amendments may rely on the EPO’s public Wireless Network, which is widely available in public areas, or printers available in the EPO. 

For parties who do not use their own electronic equipment, the EPO provides for PCs and printers in the attorney rooms as well as in many rooms used for oral proceedings. Additionally each attorney’s room is equipped with at least two PCs and one local printer. The local printer can be either used via the EPO PC or an external laptop which can be connected via USB cable to the local printer allowing direct use. 

Additionally EPO LAN printers allow for printing PDF documents directly from a standard USB stick (FAT32 filesystem). It is sufficient to stick a USB stick into the USB port of the printer on the left-hand side of the front panel. Then using the touchscreen control panel, select “Print from USB” and choose a PDF document to be printed.
State-of-the-art text editing software (such as MS Word, OpenOffice, etc.) provides for a possibility to directly save any document as a PDF file, which then can be stored on a USB stick and printed from the LAN printers.

 

New Name and New Invalidity Procedure for Registered Designs



The German IP right formerly known as Geschmacksmuster is a fairly powerful tool but has hitherto lingered in a niche existence. One of the reasons might have been that its name was difficult to pronounce for foreign applicants and even for the German public not very telling. According to the press release:

From 1 January 2014, designs - previously named "Geschmacksmuster" in German - will be called "eingetragenes Design" - meaning "registered design" - in Germany. The Act Modernising Designs Law and Revising Provisions for Notifications on Exhibition Protection (Gesetz zur Modernisierung des Geschmacksmusterrechts sowie zur Änderung der Regelungen über die Bekanntmachungen zum Ausstellungsschutz) of 10 October 2013 (Federal Law Gazette I 2013, no. 62, p. 3799) has also implemented other changes facilitating procedures for designs.

"With the renaming, we accommodate language developments," says Cornelia Rudloff-Schäffer, President of the DPMA. "The IP right's subject matter will become easier to understand, referring to both form and appearance of a product."

Invalidity proceedings for registered designs will also be introduced. The designs unit in Jena can declare a registration invalid if a respective application has been submitted. It can be based on absolute or relative grounds for invalidity. In civil proceedings, invalidity of a registered design can only be achieved by putting forward a counterclaim before the designs courts of the Länder from 1 January 2014.

Computers and Mobile Phones in oral Proceedings before the EPO Boards of Appeal

Allowed in Oral Proceedings?

The Vice President of DG3, Wim van Eijk, has issued a notice which might be interested for practitioners:

In oral proceedings before the Boards of Appeal under Article 116 EPC the parties and their representatives are allowed to have with them and to use portable computers such as laptops, tablets or other electronic devices provided that their use does not create any nuisance or disturbance. Where, for example, the use of an electronic device disturbs the oral proceedings, the chairperson may decide to forbid its use.

See here for some remarks on the word "chairperson".

Online File Inspection

As of January 7, 2014, the German Patent Office has opened its data base for online file inspection. Via the DPMARegister website, users may look into the public parts of the files of recently granted patents and of laid-open patent applications, wherein the usual restrictions pertaining to confidential and sensitive information apply.

The documents available for online inspection comprise the parts of files of:

• all patent and utility model applications for which a request for file inspection was submitted on or after 21 January 2013,
• all granted patents and registered utility models published since 21 January 2013 and
• all patent applications filed at the DPMA on or after 21 January 2013 that have already been published.

Apparently, the DPMA staff is still in the process of scanning the files and not every file is actually accessible. The author of this note confirms that the electronic access is provided within a few days when requesting it by clicking on the corresponding link on the bottom of the page with the bibliographic data. A possibility to be notified once the electronic file is available would be very convenient.

Further details are available in Notice No. 12/13 of the President of the German Patent and Trade Mark Office of 28 November 2013 and in the Help pages provided by the DPMA.

Dressing up as Pippi Longstocking Does not Infringe Copyright

Carnival season is approaching and it was time for the BGH to provide the fun of dressing up as somebody else with a sound legal basis.

In the decision "Pippi-Langstrumpf-Kostüm" (I ZR 52/12) the legal successors of the copyright of late Astrid Lindgren had sued a supermarket advertising for Pippi-Longstocking carnival costumes for damages.

The BGH rejected the action by confirming the earlier case-law that individual characters of literary works may well be the subject of isolated copyrights. However, "this presupposes that the author of this figure provides it with a distinctive personality by the combination of salient personality traits and distinguishing exterior features. Here, a rigorous test must be applied. Just the description of the external shape of a figure or acting their appearance will not be enough for it in most cases."

The mere reference to literary figures in other works it is not sufficient to infringe copyright, as the Ist senate says:
Especially for works that are very well known, is usually sufficient to provide only slight hints, especially in relation to external features, to make a clear reference to the earlier work. It then has to be examined in each case, whether such a reference already implies the takeover of the personal characteristics.... In the present case the complete image of the literary figure of Pippi Longstocking as relevant for copyright is obtained only by means of a mental link the viewer establishes with the dominant traits of character, as embodied in the superior-known literary work, this complete image is, however, not visible in the pictures of the advertisment.