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.