Monday 25 July 2011

Family Affairs - BGH X ZR 77/10 "Treppenlift"

Family Affairs - BGH X ZR 77/10 "Treppenlift"

Hitherto, the german judicial system had the reputation that it's first instance has the character of being closer to alternative dispute resolution (ADR) than to a real trial. Indeed, the possibilities to file furhter arguments, requests or evidence have been fairly generous as compared to e.g. those of our friends in good old England.

Indeed, the efforts made in the first instance to convice the judge have sometimes been fairly poor because the parties felt that it would be sufficient to get their stuff together when things are getting serious in the 2nd instance.

In an attempt to tighten up the procedure, the general procedural rules (ZPO-Zivilprozessordnung) has been amended as of 2002 and similar amendments have been introduced in §83 and §117 of the patent act (PatG) as of October 2009 for the nullity procedure. In a nutshell, arguments, requests and evidence is considered late if it could have been filed earlier.

Still, some of my colleagues are not yet very used to this and the case-law, in particular in patent matters, is not yet very detailed.

The decision “Treppenlift” BGH X ZR 77/10 is, as far as I know, one of the first decisions where the supreme court (BGH) has overruled the decision of the 2nd instance upper district court which considered a defence argument as being late-filed.

The case at issue had 2 defendants, one of which was a natural person A and the second was a a corporate body B, the manager C of which was married to A. A argued in the 2nd instance that the original inventor of the patent in suit was actually her husband C and that the invention was unlawfully usurpated by the plaintiff.

However, the right to raise the unlawful usurpation as a counterclaim is limited to the injured party C, who was, himself, not party of the infringement procedure and who had transferred the right to enforce the rei-vindication claim to A only after the completion of the 1st instance.

The upper district court found that, given the close relation between C and the defendants, this defence argument could have been filed earlier. After all, C had been personally attending to the procedure, although not as a party but only in his function as a representative of a party.

The BGH found that this reasoning was incorrect because there was no duty to C to transfer his rights at a given time and that A and B could not have argued with the unlawful usurpation prior to this transfer. As a consequence, the late-filing was due to the late completion of this transfer of rights rather than to any negligence of the parties.

In wonder if the denfence that late-filed material had been in the possession of a close relative will work for other cases as well.

Wednesday 13 July 2011

Essentiallity Test Revisited - Deleting Features From the Claims before the EPO

K's law discusses the decision T 747/10 today, where the EPO technical board of appeal applies the "essentiallity test" in the Gidelines for examination as develpoed in T 0331/87 is applied and makes an attempt to put it into a more precise form.

This test says that the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:

  1. the feature was not explained as essential in the disclosure;
  2. the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
  3. the replacement or removal requires no real modification of other features to compensate for the change.
The case at issue related to a light therapy apparatus with light sources connectable to a computer via an interface. Original claim 1 required that the interface does not only control the light sources but also serves as a power supply. Interestingly, the BoA argues that the "technical problem" mentioned under 2 is the "subjective technical problem":
A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.
In this case, the original specification had actually mentioned two technical problems:
While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources.
and comes to the conclustion that using the (USB-) interface for power supply does at least contribute to the solution of the second problem of improving the portability. Other alternatives (e.g. batteries) were not consistently disclosed. On the other hand, the board argues that the replacement of a feature with an equivalent one (which is originally disclosed) should be possible even tough the original feature may contribute to the technical solution of the subjective problem and comes to the conclusion that:
In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.
It is interesting for me that both the „classical“ decision T 0331/87 and this new decision appear to have problems with the line of demarcation between the requirement of “support by the specification” of Art. 84 EPC and Art. 123 EPC. This is very clear in T 0331/87, where the board argues in item 3 of the reasons:
For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (…) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application […]. In other words, it is to examine whether the claim as amended is supported by the description as filed.

The argument is a little more hidden in the decision T 747/10, but it appears that distinguishing between cases where more than one alternative is mentioned and cases where only one alternative is mentioned is equivalent to answering the question whether or not the broader claim is supported by the specification and is limited to the scope within which the invention makes a technical contribution to the prior art.

So why did the BoA not refer to Art. 84 EPC?

For the ”Houdaille decision T 0331/87, the case is clear: This was an opposition procedure and the BoA was simply not entitled to carry out an examination on Art. 84 EPC. In the light of this finding, it appears that this groundbreaking decision is circumventing the statutory limitation to the grounds for opposition set out in Art. 100EPC and has to be questioned.

For the case T 747/10, the application of Art. 84 EPC would have required reverting the case to the Examining division for carrying out the examination on this article.

I wonder if failure to do so could be considered a violation of the applicant’s right to be heard?

Tuesday 12 July 2011

Scammy Trademark Registers - We're Ready to Rock and Roll!

It appears to be a lucky coincidence of circumstances that the IPKat has fantasized on last friday on fraud investigations initiated by a bank against scammy trademark- or patent registers sending out demands for payments with an "official" appearance to credulous applicants and that the OLG Köln has decided in the file 6 U 166/10 on such a case.

I think that every patent attorney has experience with clients coming up with this kind of letters and the WIPO holds an ipressive register with samples thereof. Until now, I have simply recommended to throw the letter into the bin.

The intersting point for me in the OLG Decision mentioned above is that the plaintiff was a patent and trademark law firm. Yes, indeed, we are competitors of these poeple and are - ourselves - entitled to fire of all the competition law guns we usually fire off in the name of our clients in our own name. Here we go!

Besides, it's the overall appearance giving the documents an "official touch" which is considered an avoidable deceit on the origin thereof and thus the same legal concept as the one discussed in my last post, which turns out to be impressingly versatile.

Friday 8 July 2011

Design Protection Under Unfair Competition Law in Germany

Jeremy Phillips, one of the marvelous IPKats, has authored this month's editorial of the Journal of Intellectual Property law & Practice, wherein the German approach to design protection via the law on unfair competition was praised.

Since it is clearly a rare and sensational exception that we Germans are hailed by the English, I tought it is a good idea to briefly talk about this.

Germany's Federal Supreme Court grants complementary protection under unfair competition law using two possible approaches:
  1. firstly, the offering of goods or services being imitations of the goods or services of a competitor in such a way that it results in an avoidable deceit on the trade origin of the specific goods and/or services is considered unfair (§4 Nr. 9 a) UWG),
  2. secondly, the offering of goods or services being imitations of the goods or services of a competitor in such a way that it expoloits or damages the valuation of the imitated goods or services is considered unfair (§4 Nr. 9 b) UWG).
A fairly good overview on the requirements to be fulfilled for consumer products can be found in the decision 6 U 157/09 of the Frankfurt Upper District Court. Here are the basics in a nutshell: Both approaches are based on the notion of "wettbewerbliche Eigenart", which could be roughly translated as "Competitive Individual Character" and is slightly different from the "individual character" required for registered designs in that the focus is put to features with the qualify for the identification of a particular trade origin of the goods. Everyday products, for which the relevant public is not used to consider the origin as relevant, do not qualify as products with "competitive individual character". Well- known or "famous" products are considered to have an increased competitive individual character.

For the particular case of design protection, it is required that the indifidual character results from design features (which should not be technically unavoidable). Furhter, the imitation of a product with competitive individual character is considered unfair only if particular circumstances are met, wherein a lower competitive individual character may be compensated by a higher degree of unfairness in the circumstances of the immitation and vice versa.

For the first approach, these particular circumstances result form the avoidable deceit on the trade origin of the goods, for which it is clearly reuqired that the relevant public is used to think about the origin of the products and to draw information of this origin from the design features.

For the second approach, these particular circumstances result form the exploitation of the valuation of the imitated product, which is possible only if the imitated product enjoys a certain appreciation and high profile in the perception of the relevant public, which needs to associate at least some positive properties with the product, resulting in particular from its quality, exclusivity, luxury or prestige value with the product.

If you feel bad, take a look at those who are doing even worse

If you ever felt that your national trademark office or the OHIM are not operating well, please have a look at this post on the indian weblog SPICY IP: Kurian’s parting gift to the Trade Marks office – a CBI probe. After the indian patent and tademark office had revealed that 44,000 (!) trademark applications had gone lost over the last 5 years, the leaving director PH Kurian as requested a criminal investigation on corruptive structures inside of the trademark registry from the indian bureau of investigations.

Thursday 7 July 2011

Conspiracy Theory - BPatG 3 Ni 25/09

The German Federal Patent Court has partially nullified a patent in a procedure where the patentee had defended the patent in a limited form only and the plaintiff had limited his request to the part of the patent that was not defended anymore.

In such a case, the patent court has a simple job and maintains the patent to the extend to which its validity is undisputed and nullifies the rest - which is not defended anymore. It does so even without substantive examination. So far, this is a fairly boring case.

The interesting part comes now: one of the inventors has filed a third-party observation (labelled "amicus curiae brief" - which sounds somewhat overblown for us germans) arguing that the whole procedure was a hocus-pocus arranged to deprive him of his financial compensation as an employee-inventor. How this?

If a patentee abandons a patent, the german act on employee's invention obliges him to offer the patent to the inventor prior to the abandonment. This is, of course, generally not the case when the patent is nullified. I do not want to make any allegations to the patentee since I do not know any furhter details on the background. However, the very idea is compelling: engage a straw-man for nullifying the patent in order to circumvent the german law on employee's inventions?

The decision mentions that the evidence for abusive behavior is not sufficient and that the dispute between the inventor and his former employer is pending at the civil courts. The patent court has no jurisdiction on the question of the impact of the nullification on the financial compensation of the inventor.

We are looking forward to hear the sequel of this.

Wednesday 6 July 2011

How to claim your right despite of its being exlpicitly foreclosed by law?

In a recent post, I had discussed a notice issued by th 10th senate of the German Federal Patent Court (BPatG) according to which there may be an entitlement of a tird party to appeal a decision to grant provided that very exceptional circumstances are met.

This finding is rather surprising because the German Patent Act leaves no doubt that only the parties involved in the procedure in which the appealed decision was taken are entilted to appeal the latter.

Now, the full text of the decision has been published including a detailed line of reasoning.

While being so exceptional that the importance of this particular case constellation is probably very minute, I found it interesting that the line of reasoning emloyed may well be taken as a blueprint for other cases where no statutory basis for a claim may be found or - even more important - where the law explicitly forecloses the right your client desperately wants to enforce, as was the case here.

The BGH decision "Fischdosendeckel" cited in my previous post, the Supreme Court argued that the statutory foreclosure of 3rd parties from the appeal procedure as set out in §74 of the German Patent Act is the result of a balancing of interests between the interest in a completion of administrative proceedings within an adequate time and the encroachment of the intersts of the 3rd party, which, however, are at least partially preserved by the right to file third-party submissions.

The supremecourt then argues that in cases of grave contraventions of the basic principles of public procedures Jusitita's balance may swing to the other side so as to justify an exception to the written law.

The answer to the question in the title of this post is thus: Identify the balancing of interests on the basis of the foreclosure and prove that the interests being considered predominant as a rule are overbalanced by your interest in this particular case.

Monday 4 July 2011

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".
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