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.

Gold Bear or Golden Teddy?

This blogger loves both Haribo Gummi Bears and chocolate in all shapes and would never risk to confuse edible gummi animals with with edible chocolate animals (in particular rabbits), even in cases where both belong to the same zoological species.

It was therefore surprising to him that the judges of the judges of the cologne district court found a risk of confusion between Haribo Gold-Bears (Goldbären) and the Lindt Chocolate Teddy - a sitting wrapped in Gold foil.

 The case went through the instances to the BGH, who judged today that a likelihood of confusion does  indeed not exist.

According to the BGH, the comparison between a word mark and the three dimensional shape of the product is to be limited to the semantic content of the word mark (Goldbären) without consideration of the shape of the products (Gummi Bears) sold under that word mark. Further, strict requirements are to be imposed in order to avoid an extension of the monopoly of the trademark to product designs.

A precondition for the likelihood of confusion is that the word mark is an obvious, natural and exhaustive (naheliegende, ungezwungene und erschöpfende ) designation of the three-dimensional design. It is not sufficient that the trademark is only one among multiple obvious designations of the product shape.

In the case at issue, the BGH found that the chocolate bear could have been designated as "Teddy", "Schokoladen-Bär" or "Schokoladen-Teddy" instead of "Goldbär" and concludes that the likelihood of confusion does not exist.

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.

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.

Copyright - No higher level of originality for applied arts

According to the former case-law in Germany, copyright protection of works of applied arts had been considered to be available only for works with a level of originality clearly above an average level of creativity. The reason was that an essentially similar protection by registered designs was available for works with a level of originality above an average level of creativity such that the additional and longer-lasting copyright protection appeared to be justified only if the level of creativity substantially exceeds the level required for design registration.

This case-law has now been overruled in the decision "Geburtstagszug" I ZR 143/12 . The Ist Senate argues that the above reasons are no longer tenable since the law on registered designs has been reformed in 2004. Since then, the close relationship between copyright protection and design protection does no longer exist and originally is no longer required at all for a registered design. It is sufficient if the design has a different overall impression.

As a consequence, it is no longer allowable to impose conditions on the copyright protection of works of applied arts other than those imposed on non-applied works of fine arts, literature or music.
Rather, it is sufficient to reach a level of creativity justifying that the relevant public may speak of an "artistic" achievement (künstlerische Leistung). The relevant public is defined as a public with reasonable susceptibility to arts being familiar contemplations of arts.

This decision is a little revolution in the design protection in Germany for product or furniture designers, architects or the fashion industry.

How to Avoid Confusion in Keyword Advertising

This is not an advertisement for trademarks showing up on your screen

Google's Keyword Advertising service offers displaying advertisements in little boxes on the right-hand side of the search results if the search includes particular keywords while the keyword is still visible as typed in Google's search field. If the advertisements contain informations on goods and services available on clicking thereon and the keyword is a registered trademark, the trademark will be displayed togehter with the goods and services on the same screen. Captious trademark attorneys might argue that in the case the combined display on  the same screen consititutes an unallowed use of the trademark. In the decision "Bananabay II", the BGH had decided that this use did not constitute an identical use of the trademark (Art. 5(1)(a) of the trademark directive  89/104/EEC) as long as the advertisement itself is clearly separated from the search results, marked as advertisement and does not contain the the registered trademark or any hints to the products of the trademark owner but rather a link hinting towards a different commercial origin of the products or services.

The question whether or not this use might ocnstitute an infringement of (Art. 5(1)(b) of the trademark directive  89/104/EEC) in that a likelihood of confusion on a part of the public, which includes the likelihood of association between the sign and the trade mark is created, was still open.

In the decision MOST-Pralinen answered this question to the negative. Under the conditions develpoend in "Bananabay II" (advertisement in a separate box, advertisement itself does not contain the trademark), neither a likelihood of confution nor a likelikood of association exists.

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.

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).

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.

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.

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.

"Comprising" is not "Consiting Of" - BGH X ZR 75/08 "Reifendabdichtmittel"

The the patentee in the decision "Reifenabdichtmittel" had amended a limitiation according to which an adhesive for sealing tyres "comprises" a number of ingredience to a limitation that the adhesive "consists of" the same ingredients, i.e. that no other ingredients were used.

The BGH fond that, as a rule such an amendment is not allowable because it introduces the new technical feature of the "conclusiveness" of the recipe and that furhter incentives from the specification are needed to make such an amendment allowable. The specification mentioned indeed an embodiment with no furhter ingredients (such that the amendment would presumably have been allowable under the EPC) but did not explicitly mention this feature. Rather, other portions of the specification indicated that fillier materials could be added optionally and this option was not explicitly excluded for the embodiment under discusstion.

In the judgement of the BGH, the allowability of such an amendment would require indications that the feature of consisting of the mentioned ingredients only has particular advantages or is otherwise desireable.

It is interesting to compare this decision with T 390/08, where the "consisting of" in claim 1 in combination with a dependent claim mentioning further ingredients (or more precisely, the introduction of a further element in the opposition procedure) led to a clarity objection. There appears to be a tendency to require some explicit "singeling out" of specific combination of features to be claimed, which may be supported by mentioning particular advantages of the specific combinations.

For the practice, this means that when mentioning the advantages of optional additional features for supporting their inventiveness during the prosecution, it is wise to also mention an advantage of the embodiment without these features. In the case at issue, it would probably have been sufficcient to say that the adhesive is cheaper or easier to brew if no filler materials are used.

Trademark Registration of Shapes which give Substantial Value to the Product

The IPKat has reported an interesting General Court of the EU decision in an appeal of Bang & Olufson against an OHIM decision.

The procedure dealt with the question whether or not the shape of the loud-speaker should not be registered because it "gives a substantial value to the goods" in the sense of Article 7(1)(e) of Regulation No 40/94.

The press release says:
In the Court’s view, that design is an essential element of Bang & Olufsen’s branding and increases the value of the product concerned. Furthermore, it is apparent from extracts from distributors’ websites and on-line auction or second-hand websites that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.

Whilst I perfecly agree with this judgement, this appears to be in conflict with an
older decision of the BGH on a BMW radiator cowling, wherein

the BGH argues with regard to §3(2)Nr.3 MarkenG that this exception applies where the aestethic shape of the goods is considered the actual "tradable value", whereas it does not apply in cases where the shape/design is only an "ingredient" of the good, which has other functions besides of beeing beautiful.

I think that the fact that the B&O loudspeaker has other functions besides of beeing beautifulcannot be reasonably constested.

My impression is that the court was led by the empirical fact that every boy in Germany can tell the brand of a car by looking at a radiator cowling, which is not the case for loudspeakers. Given this, it is surprising that the BGH has finally rejected the BMW cowling as being "devoid of any distinctive character". Apparently, BMW had not conducted a poll.

BGH Webseitenanzeige X ZR 121/09 - Technicity

The German Federal Supreme Court (BGH) has now issued a new decision on an alleged computer implemented invention.

The patent was directed to a method including a "displayable representation" showing the sequence of web-pages visited by a registered user on an information site.

The fact that the claim did not explicitly mention that the method is implemented using servers, clients and other technical devices was not considered harmful by the BGH because it was considered self-evident ("offenkundig") for the skilled person that the execution of the claimed method required the use of computers in a network such that the method was of technical nature. This follows the line of argument started in the decision "dynamische Dokumentengenterierung", according to which "a method consisting of the direct interaction between elements of a data processing system – a server and a client for dynamically generating structured documents in the case under dispute – has technical character irrespective of whether it is defined by technical features or not."

The BGH stresses that the question whether or not the method is excluded from patentability as a computer program "as such" needs an independent analysis of the additional requirement that the claim comprises instructions serving the solution of a specific technical problem with technical means.

Finally, the method was considered a "computer program as such" despite of being technical. The reason is that the hurdle of headnote 2 of dynamische Dokumentengenterierung was not taken. The latter requires that the method/the computer program is either "determined by technical features outside the computer or that the program accounts for the technical restrictions of the computer".

Equivalent or an Altnerative? BGH "Okklusionsvorrichtung"

Art. 2 of the protocol of interpretation of Art. 69 EPC requires that the scope of protection of a patent claim goes beyond its literal meaning by requiring hat:
"For the purpose of determining the extent of
protection conferred by a European patent, due
account shall be taken of any element which is
equivalent to an element specified in the claims."

The practice shows that the national courts of the EPC member states are do not judge in unison what precisely is to be considered to be equivalent in the sense of the protocol of interpretation. However, in any case, teh considrations employed amount to balancing conflicting interests: The patentee strives for broad protection as a fair remuneration for his invention, his competitors want free competition.

Where is the borderline to be drawn to ensure fair protection for the patentee's inventive achievement? How can the borderline be made visible in order to guarantee a sufficient degree of legal certainty?

The BGH has answered these two questions by providing three other questions relating to the claim to be interpreted - the so-called "Schneidmesser" - questions:
1) Does the variant of the claim with the allegedly equivalent element solve the problem underlying the invention by means which have objectively the
same technical effect?
2) Was the person skilled in the art enabled by his or her expertise on the priority date to find the modified means as having the same effect?
3) Are the considerations that the person skilled in the art applies based on the technical teaching of the patent claim?
Whilst the first question is a simple technical quesiton and the second one boils dow to a kind of obviousness analysis, the third one is always the most difficult to answer and a little obscure.

The German Supreme Court (BGH) has now shed some new light on this third question - in the decision "Okklusionsvorrichtung" X ZR 16/09. In the case at issue, the specification had explicitly mentioned several alternatives for a specific feature, whereas only one of these alternatives was claimed. The court ruled that the choice of a specific alternative for achieving a technical effect was one of the considerations constituting the technical teaching of the patent claim and that there is no infringement if the alleged infringer does not make use of these considerations.

As a consequence, the mentioning of non-claimed alternatives in the specification forecloses the patentee form arguing that these alternatives are equivalent.

From a practical point of view, this is problematic because the practice of mentioning many alternatives as possible fallback positions has to be questioned. There will be no problem if the alternatives are mentioned in order to support a broad feature covering all of them. However, the scope of protection might be reduced if the claim is limited to one of the alternatives in the examination procedure. It might be worthwhile considering the deletion of the non-selected alternatives in this case.

Does offering at a trade fair imply a risk of first infringement? - BGH Pralinenform II

The fact that exhibiting a product on a trade fair implies the risk of a first infringement used to be undisputed in the good old days.

In April 2010, the Federal Supreme Court (BGH) has overturned this case-law and issued a ruling (Pralinenform II - I ZR 17/05 according to which the mere fact of exhibiting a product on a trade fair in Germany does not imply the statutory presumption that the exhibitor intends to sell the product in Germany.

The ruling related to trademarks and the generalization to other intellectual property rights is under dispute.

A recently published decision of the Frankfurt Upper District Court has apparetnly disregarded the BGH decision under 6 U 157/09 in a case relating to the well-known Stabilo-pens by putting the burden of proof for the intention not to sell the product in Germany to the alleged infringer.

The Mannheim District Court (29.10.2010, 7 O 214/10) was apparently a little more up to date by ruling that the mere fact of exhibiting a product infringing a patent was not sufficient to prove the alleged infringer's intention to sell the product in Germany with a degree of certainty sufficient to grant a preliminary injunction.

For the practice, it is higly advisable to provide evidence not only for the exhibition of an infringing product but also for the alleged infringer's intention to sell the product on the German market.

The value of a Patent Law Firm BGH XII ZR 40/09

The Federal  Court of Justice has recently issued a ruling on the value of the practice of a dentist, which includes the value of the substance as well as the goodwill. The result may be transferred to patent law firms (and to all other professional practices).

Here is how it goes: The value of the goodwill at a certain point in time is to be calculated under the presumption/hypothesis that the practice is sold. Relevant is thus the price which can be realized on the market. Presume there is an investor considering buying the practice and letting do the work by an employed professional person. The the salary B of the employed person corresponds to the value of the work contributing to the earnings. The rest is thus the profit of the goodwill. Start with the net earnings A of the practice per year and presume that a fraction of 10% thereof depends on the person of the owner to such an extend that it would not be realizable after a sale. A rough estimate of the earnings after the sale would therefore be A*0,9. Then, subtract the value of the work B contributing to the annual profit to obtain C=A*0,9-B.

This value corresponds roughly to the profit resulting from the goodwill the invesor may expect in the year after the acquisition.

It has to be multiplied with a factor F corresponding to the number of years in which the goodwill will be sustained. For the dentist's practice, the BGH has presumed a time of three years, wherein the profits of the second and the third year have to be discounted based on the basic banking interest rates, the general enterperneurial risk yielding a factor F sligthly below 3, in this case F=2,7620. The overall formula for the value V of the practice is thus

V=A(*0,9-B)*F.

In view of the typically long-term relations between patent attorneys and clients, the sustainability time for a patent practice could be set to a value higher than 3 years. However, for times beyond, say, 8 years, the discount factors (general enterpreneurial risk ... ) result in a very low weight in the overall sum such that factors F of more than 5 are unrealistic. For B, the salary of an employed patent attorney with some years of experience may be put in, i.e. something between 100kEUR and 120kEUR. However, I am not sure about this because I have never been employed.

Entitlement to use a patent does not foreclose the right to file an oppstion

The federal supreme court has decided in the case X ZB 33/08 (Deformationsfeder) that an  to the inventor's institution has the right to file an opposition against this patent even if the inventor has made an appointment with the applicant granting an entitlement of use for this institution.

The appointment does not imply a no-challenge obligation binding the institution as a third party such that the filing of an opposition does not in general violate the principle of good faith. This finding could change if it would turn out that the institution has functioned as a straw-man for the inventor who is, in general, not entitled to file an opposition against his invention.

The applicability of this reasoning to EPC opposions is not immediate. Interesting points arise from a comparison of this decision with G03/97 and OJ EPO 1992, 747, where the Technical/Enlarged Board of appeal emphasizes that contractual claims are in general subject to national jurisdiction.