Electronic Courtroom

This senate is not yet digitalized

Yesterday, I had my first opportunity to experience the new "electronic courtroom" at the Bundespatentgericht - on which I had reported here earlier.

The room still smells very new (carpet glue I guess) and is quite fancy. All the Judges and the parties have a big monitor embedded in their tables which would allow them to have a shared view on an electronic document. Further, the documents are displayed on a big flat screen on the wall.

Unfortunalely, we were caught by surprise to be in that room as we did not receive any advance notice and did not bring any electronic documents and neither the judges nor any other party has desired to share any document such that everything besides of the black screens on the tables was as usual.

This appears to be a general caveat. Only two out of the approximately 15 (ß) courtrooms of the Bundespatentgericht are electronically equipped and these are occupied by two "resident" senates (one technical appeal senate - in our case the 19th - and one nullity senate) respectively. Since the other senates have not yet digitalized their files, thay may not use this courtroom even in the unlikely case that it would not be occupied by its resident senates.

As a consequence, there is no opportunity to use the new electronic courtroom even upon request unless your case is handled by one of the four (the 19th and 3 still unknown) "digitalized" senates.

When it comes to Money - J25/10

The EPO's legal board of appeal has noted in a  decision publised in the OJ that a decision not to refund 75% of the examination fees upon a withdrawal of the application has to be reasoned.

Following the withdrawal of a European patent application, a refusal by the Examining Division of a request for a 75% refund of the examination fee, on the basis that substantive examination had already begun (Article 11(b) RFees), must be based on facts which objectively demonstrate that this is so.

 In the case at issue, the examiner had simply alleged that he had already started the examination without giving any more detailed facts or evidence in support of this allegation. The board refers to the principles of the democratic legal order entailing the need to ensure predictability of jurisdiction and
hence legal certainty by preventing arbitrariness as set out in G 3/08.  Furhter, the board notes:

It appears to the Board that the application of these principles is particularly important in the present case for two reasons. First, since the decision which the Office, via the Examination Division, is required to take involves its own financial interests, it is important for the public confidence in the Office that the decision-making process should be transparent. For the same reason it is also important that such decisions should be reviewable by the Boards of Appeal. Second, in the present case any relevant information lay solely within the knowledge of the Office. It is not a case in which, for example, a communication had been sent to the applicant, so that there were externally verifiable facts on which a decision to refund fees could be based and reviewed. This makes it important that the applicant (and the Board of Appeal) knows what the actual underlying facts are on which the decision was based. (cf. point 12 of the reasons, emphasis added).

In hope that the particular importance of the principles of the democratic legal order in cases where the EPO's finances are concerned does not imply that these principles are less important in cases which do not affect the EPO's finance.

 

Keeping the Doors Open – R 3/11

The last decision of the EPO’s Enlarged Board of Appeal (EBOA) addresses the critera of an objection under Rule 106 EPC, which reads:

A petition under Article 112a, paragraph 2(a) to (d), is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings.

This is what the EBOA has to say about the nature of the objection (Reasons 3.1):

Raising an objection pursuant to Rule 106 EPC is a procedural act and, when it is possible, a precondition for access to review by the Enlarged Board. It is an extraordinary legal remedy against final decisions of the Boards of Appeal. Therefore such an objection must be expressed by a party in such a form that the deciding body is able to recognize immediately and without doubt that an objection pursuant to Rule 106 EPC is intended. For the same reason such an objection must be specific, that is the party must indicate unambiguously which particular defect amongst those exhaustively listed in paragraph 2(a) to (c) of Article 112a and Rule 104 EPC it intends to rely on.

And further on:

… apart from, the usual phrases that the parties addressed the Board, after which the matter was discussed with the parties, and the reciting of the requests of the parties, the minutes contain the following:

"The Chairman asked the parties if they had any other Observations or requests and there were none."

This clearly contradicts the petitioner's position that the objection pursuant to Rule 106 EPC was in fact raised.

The absence in the minutes of an objection under Rule 106 EPC and of any request for correction of the minutes are strong indications, that such objection, if any, was at least not duly qualified, which is a necessary condition (see point 3.1 above).” (emphasis added)

In order to keep the possibility for filing a petition to review under Art. 112a (2) EPC, it is therefore highly advisable to take care that the objection as well as the decision to dismiss the objection figures in the minutes. Apparently simply murmuring the “usual phrases” (whatever these may be?) are not sufficient for this purpose.

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.

E-Justice and the Financial Crisis

The Federal German Patent Court (Bundespatentgericht) has opened two "electronic courtrooms" equipped with displays enabling the sharing of electronic documents.

According to the press release, we owe this investment to Germany's "Konjunkturpaket II" stimulus package issued in January 2009 in the aftermath of the first part of the financial crisis, which comprised, among others, investments in e-justice.

Politicians and Trademarks

The IPKat reports that a trademark application containing the word "Lenin" and another trademark making reference to Russia’s Prime Minister Vladimir Putin and President Dmitry Medvedev has been refused.

What is the situation in Germany? A brief survey has revealed that the German Trademark Register has 13 entries (mainly for vodka) including "Lenin". Lenin is beaten by Churchill, who has 28 entries - mainly for cigars, whiskey and gin.

David Cameron and Angela Merkel share 28/27 entries with other Camerons (notably James Cameron) and Merkels and no distinctive range of products or services can be assesed for the time being.

Perishable Products and Valuable Disclosure

 

My french blogger friends Oliver Randl of K’s-law and Laurent Teyssèdre of Le blog dudroit européen des brevets have both reported an interesting decision of the EPO board of appeal dealing with the often frustrating question allowability of an amendment under Art. 123(2) EPC.

The patent related to the use of a preservative for food products, “wherein the preservative is added to such food products at a concentration from 0,006% to 0,015%” (cited from claim 1 as amended).

The upper- and lower limits of this concentration range were taken from different examples where the preservative was used for different types of food products.

I presume that most people would guess that this amendment is not allowable as it combines features from different embodiments. However the board Z 3.3.09 allowed the amendment. Why?

Here is the essential part of the argument (reasons, 2.1):

In order to assess whether this new range complies with A 123(2) it has to be considered whether a skilled person, in analogy to T 201/83, would generalise these values in the sense that he would recognise them as not only associated with the specific food products and temperatures used in the examples.

In this context, it emerges from table 1 of the application as filed that LAE as preservative is active against a number of gram-positive and gram-negative bacteria as well as fungi and yeast. It is furthermore stated on page 1, lines 4 to 5 from the bottom that “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products”. From this the skilled person would therefore recognise that the preservative effect of LAE is universal and not limited to specific bacteria and food products." 

I am pleased to see that at least one board appears to argue technically rather than linguistically when it comes to 123(2) EPC.

Indeed, the alarm bells of the examiners are usually set off when the "skilled person" is invoked for disclosure.

However, what is "clearly and unambiguously" disclosed in a text depends on the reader and his background knowledge. The case law is very clear in that the disclosure original documents has to be viewed through the eyes of the skilled person - and not even any ordinary skilled person but a skilled person with the famous "mind willing to understand and not with the mind desirous of misunderstanding". Decisive is what this person in this state of mind understands and whether or not this understanding is unambiguous.

I think that this is disregarded too often when the allowability of amendments is discussed.

My impression not only from this decision but as well from a decision of  the BGH reported here is tha the case-law both at the EPO and in Germany goes into the direction that a combination or sub-combination of features is considered to be disclosed in an individualized way and "as an invention" (rather than as an arbitrary selection) if the notional skilled person may clearly and unambiguously derive technical advantages of that specific combination or sub-combination from the documents as a whole.  In the above case, it was the sentence “LAE and related compounds are particularly suitable to be used in the preservation of all perishable food products” that has saved the case.

This should have, according to my personal opinion, a strong impact on how to draft patent specifications in the future. Sub-combinations disclosed without mentioning specific advantages thereof are pointless and mentioning many advantages applicable to sub-combinations is essential and creates valuable disclosure.