UPC Rules of Procedure: 18th (and final) draft

The 18th draft of the UPC rules of procedure has now been published on the UPC website. According to the press release,

At its last meeting the UPC Preparatory Committee adopted the Rules of Procedure of the Unified Patent Court, subject to some further adaptations once the Committee has decided on the court fees. This is a major milestone in the progress of the Committees work.  

The agreed text is draft no. 18 which shows that the text has undergone a rigorous process of development and testing. The Rules of Procedure are the result of a successful and fruitful collaboration between the Preparatory Committee's Legal working group and the Drafting Committee. This will underpin the Court's framework and functioning. The work has benefitted strongly from comments from stakeholders submitted during the written consultation and the oral hearing. 

The Rules will be an essential element in the future training of judges of the Court and the decision of the Committee will ensure a smooth transition from the development to the active planning of such training. 

Those interested in the Court's operation should familiarise themselves with the text.

This blogger is most impressed by this monumental work of the Drafting Committee, which will surely be loved and hated and hopefully be the solid ground for the functioning of the Court and the basis professional life of quite a few practitioners in the next decades.

Banking Secrecy has to Step Back in Cases of Obvious Trademark Infringement

In the case "Davidoff Hot Water II", the plaintiff had claimed contact data of an account holder involved in activities relating to trademark infrimgement from a bank. The bank invoked banking secrecy and did not hand over the address of the account holder.

As noted here, the BGH referred the question to the ECJ, who ruled that (par. 39 and 40)

... unlimited and unconditional authorisation to invoke banking secrecy is such as to prevent the procedures laid down by Directive 2004/48 and the measures taken by the competent national authorities, in particular when they seek to order the disclosure of necessary information under Article 8(1) of that directive, from taking due account of the specific characteristics of each intellectual property right and, where appropriate, the intentional or unintentional character of the infringement. 

 It follows that an authorisation of that kind is capable of seriously impairing, in the context of Article 8 of Directive 2004/48, the effective exercise of the fundamental right to intellectual property — to the benefit of the right of persons covered by Article 8(1) of Directive 2004/48 to the protection of personal data concerning them — as a result of the obligation, for a banking institution, to respect banking secrecy. 

The task to find "any other means or remedies" (par. 42) or to establish criteria are to be applied for striking the right balance between the right to intellectual property, on the one hand, and the right to protection of personal data is left to the referring court. The repeated reference to recital 17 of the Directive 2004/48 implies that the intentional or unintentional character of the infringement should play a role.
According to the press release here, the BGH has decided in favor of the right holder. The press release refers to cases of "obvious" infrimgements and does not give any details on the criteria to be applied. This is eventually left to the reasons of the decision, wich are not ye published.

Conveying information and Inventive Step BGH "Entsperrbild"

In the case X ZR 110/13 "Entsperrbild", the BGH had do decide on a patent relating to the unlocking of a mobile phone. The key feature is that an icon (unlock image - the small arrow 402 in the figure on the rhs) is moved together with the finger when executing the unlock gesture.

The Bundespatentgericht had disregarded the icon in the assessment of inventive step and judged that it did not contribute to the solution of a technical problem.

The BGH did not agree. According to the headnote, features relating to the conveying of information in a patent claim need to be subject to a special treatment:

1. Statements relating to the conveying of certain information contents and hence aim at having impact onto the human imagination or intellectual power are, as such, disregarded in the assessment of inventive step. Statements relating to information which shall be conveyed according to the technical teaching of the invention are apt to support the patentability in view of inventive step only insofar as they determine or at least influence the solution of a technical problem by technical means.
2. Information-related features of a patent claim are to be examined as to whether the information to be conveyed is, at the same time, an embodiment of a means for a technical solution, which must not already be indicated as such elsewhere in the patent claim. In such a case, the means for the technical solution as to be considered in the assessment of inventive step.

This decision is likely to be discussed in more detail later on.

Orientation on the Patent Claim - OLG Düsseldorf Heizkessel mit Brenner

One of the 3 criteria in the German doctrine of equivalence is that the considerations of the person skilled in the art when finding a replacement for the feature of a claim "orient themselves on the teaching of the patent claim".

It is not surprising that this criterion gives rise to discussions as to what it actually means.

The decision 15 U 139/14  "Heizkessel mit Brenner" of the Düsseldorf Upper District Court (OLG Düsseldorf) relates to an appeal against the rejection of a request for preliminary injunction and contains a translation of the criterion into a more handy language. According to the Court, the technical teaching given the patent has to be accepted as justified and may not be questioned in its technical legitimacy upon searching a replacement means with the same technical effect.