Mere Announcements are Not Enough - 7 W (pat) 81/14

The decision 7 W (pat) 81/14  relates to the request of an opponent to refund the appeal fee. The patentee had indicated to abandon the patent subject to the opposition by non-payment of the annuities and to not to derive any rights from the patent for the past.  The opposition division has then issued a decision to close the case and to consider the case as settled (Erledigung). The opponent filed an appeal and, in the course of the appeal procedure, the patent lapsed and the patentee waived (Verzicht) the patent for the future and the past.

The Bundespatengericht asserts that the decision suffers from a fundamental deficiency because the mere announcement to let the application lapse cannot be equated to a binding waiver such that the case had indeed not been settled when the decision was issued. The appeal fee was refunded.

The Closest Prior Art and its Neighborhood

One of the important differences between the assessment of inventive step at the EPO and in the German case-law lies in the definition of the starting point for inventive step. While the EPO usually focusses on a particular document selected as the "closest prior art", the Bundespatentgericht and BGH usually take a more holistic view on the prior art as the summary knowledge of the skilled person, which may be exemplified and proven by one or more documents.

The decision T1841/11 seeks to find an intermediate solution by defining a broader field of suitable starting points rather than a single one. The headnote reads as follows (emphasis added):

The closest prior art should relate to the same or at least a similar purpose (or objective) as the claimed invention. Even if prior art relating to the same purpose is available, it is not excluded that a document relating to a similar purpose might be considered to represent a better - or at least an equally plausible - choice of closest prior art, provided that it would be immediately apparent to the skilled person that what is disclosed in the document could be adapted to the purpose of the claimed invention in a straightforward manner, using no more than common general knowledge (Reasons, point 2.6).

If, despite the availability of prior art relating to the same purpose as the claimed invention (here: manufacturing a semiconductor substrate comprising a silicon-germanium film), it is nevertheless considered appropriate to select as closest prior art a disclosure relating to a similar purpose (here: manufacturing a semiconductor substrate comprising a germanium film), at least one claimed feature corresponding to the purpose of the invention will generally appear as a difference over the closest prior art (here: silicon-germanium). However, this difference is not one which can legitimately be invoked in support of inventive step.

The problem-solution approach presupposes that the skilled person has a purpose in mind from the very beginning of the inventive process, which in this case is the manufacture of a known type of semiconductor substrate comprising a silicon-germanium film. Within this conceptual framework, it cannot be logically argued that the skilled person would find no motivation to incorporate silicon-germanium. Moreover, an argument that it would not be straightforward to incorporate this difference into the teaching of the document considered to be closest prior art, or that this would require more than common general knowledge, would not, in such a case, constitute an argument in favour of inventive step, but rather an argument that this document is not in fact a promising starting point (Reasons, point 4.1).

Mediation Rules of the UPC Patent Mediation and Arbitration Centre

Permanent Arbitration Tribunal The Hague 1899

The Mediation Rules of the Patent Mediation and Arbitration Centre annexed to the UPC have now been published by the Preparatory Committee here.

There have been some doubts whether parties seeking mediation service would be inclined to travel to Lisbon or Ljubliana for this purpose rather than staying in their comfort zone in Paris, London or Munich. Art. 9 of the Rules now leave a broad choice to the parties. The parties and the mediator might even decide to enjoy a retreat in the Caribbean and this blogger is sure that this would help finding a friendly settlement.

One of the many benefits of mediation besides of the confidentiality is the broader and more flexible scope. According to Art. 35 (2) of the UPC agreement, the facilities shall be provided for mediation and arbitration of patent disputes falling within the scope of this Agreement, i.e. subject-matter for which the UPC has exclusive jurisdiction. Parties might want to settle other issues as well (say trademark rights or the right to custody of a commonly owned dog). The rules can be broadly interpreted in this regard. Art. 2 No. 1 of the Mediation Rules say that the services are offered for disputes relating to European patents and European patents with unitary effects for which the Unified Patent Court (UPC) is exclusively competent (Article 32 UPC Agreement).  In other words, any relation to a patent under the UPC competence is sufficient.

Art. 3 2. c) of the rules stipulates that the request for mediation shall contain a succinct summary of the facts giving rise to the dispute including an indication of the intellectual property rights involved. This can be interpreted as meaning that the dispute may involve intellectual property rights other than the patent under the UPC competence but does not limit the competence of the Mediation Centre to intellectual property rights. The right to custody of a commonly owned dog may well be treated.

Would the mediation be available for these issues as well and would the terms of such a settlement be enforcible under Art. 82 UPC and Rule 11.2 of the UPC rules of Procedure? The answer should be yes. Art. 11.2 of the UPC Rules of Procedure applies to the terms of any settlement and is not limited to subject-matter under the jurisdiction of the UPC.

Must Patent Hold-Up be regulated?

The CJEU decision in the matter Huawei ./. ZTE (see e.g. here)  sheds new light on the interface between standard essential patents, antitrust law and competition law.  It is time to come together and have a look onto the fractal legal landscape in this fascinating field!  The Liège Competition and Innovation Institute (LCII) is so kind to organize such a come together.

Readers who do not yet know how to spend the extra day of the present leap year should consider attending to the event:

REGULATING PATENT “HOLD-UP”? AN ASSESSMENT IN LIGHT OF RECENT ACADEMIC, POLICY AND LEGAL EVOLUTIONS

Abstract: The patent hold-up theory has nurtured many policy developments in the past ten years. On the one hand, Standard Setting Organizations (SSOs) have been exploring changes to their licensing policies, in particular in relation to the commercial implications of FRAND pledges given by holder of Standard Essential Patents (“SEPs”). On the other hand, antitrust agencies and patent courts across the globe have been confronted with several waves of cases Those proceedings have generated a thick, diverse and somewhat inconsistent body of case-law on a wide array of topics, including the availability of injunctive relief, patent valuation, portfolio licensing, practicing and non-practicing entities, etc. This conference seeks to provide a 360° state of play on patent hold-up in contemporary antitrust and patent policy.

This Half-Day conference will take place in Brussels, on February 29th, 2016. The full Conference programme is available here, Registration here.

Speakers include the most prominent scholars, judges and advocate generals in the field such that the event will surely be beneficial to all those who attend.

Double Agent In The Room - T 1693/10

The representative appelant in the oral hearing for the case T 1693/10  took the defendant's representative by surprise by appearing in the company of new colleague who had previously worked in the same firm and same department as defendant's representative.  According to the appelant, he had access to the files and to internal information and his presence was a substantial procedural violation.

Though the alleged double-agent agreed to not saying anything and to only assist the representative as an "accompanying representative", this rendered his former colleague sufficiently nervous to requset that his former colleague be excluded from the hearing and to raise an objection under Rule 106EPC otherwise.

The Board was unimpressed by the presence of the double-agent and pointed out that it was not the body to decide on the epi code of conduct which would be applicable in the case of an eventual conflict of interest.

Novelty on a mental level does not count T 2191/13

The decision T 2191/13 relates to a two-component adhesive system wherein the amount of one of the components B is supposed to be adapted to the respective substrates and processing conditions.

The two-component adhesive system as such was disclosed in the closest prior art but disclosure on whether or not the amount of component B was adapted to anything was lacking.

The board found that the claim was not novel nonetheless. The headnote (in an unofficial translation) reads:

A difference to the prior art existing only on a mental level, which is exclusively based on the existence of an insight, cannot render the subject-matter a claim novel unless the insight is reflected in the technical features of the claimed subject-matter (points 12.3 and 12.4 of the reasons)

The board adds that accepting that features of this type would have a limiting effect would require the assessment of insights an alleged infringer had when selecting component B and the amount thereof when judging on the infringement.  

EPO - Letters to the Administrative Council

The Administrative Council (AC) of the EPO has met yesterday and continues its meeting today. The IPKat reports on four remarkable letters which have been sent to the AC in preparation of the meeting, wherein the stakeholders note that the acceptance of the EPO's proposal to reform the Boards of Appeal have has been (wilfully?) overstated when President Batistelli has presented the results of the user consultation in CA 98/15. The move to directly address the AC rather than relying on the president as the spokesperson is a clear sign of increasing mistrust between the president and the boards of appeal.

The recent discussion and events have shown that a reform aiming at increasing the perception of independence of the Boards of Appeal has to avoid any direct or indirect influence of the president of the office on the management of the Boards of Appeal. As correctly stated in the long-awaited letter of epi to the AC, the President should abstain from exercising control on the appointment or re-appointment of the board members and on the budget of the Boards of Appeal.

Above all, this blogger concurs with the epi in that the complete recruitment stop has to be removed immediately to keep the Boards Operational and to avoid a further increasing backlog. Operational Boards of Appeal with independent, experienced and motivated members, sufficient rooms to hold oral proceedings and staff support are a core ingredient of the functioning of the European Patent System to be administered by the AC.