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.