Friday 9 September 2011

Translations After Opposition – Patent Lost But Better Off Than Before?

First of all, let me say this: YES, for German parts of EP patents where a full translation had been filed after the date of publication of the decision to grant (i.e. prior to the entry into force of the London protocol), it is necessary to file an amended translation if the patent is maintained in an amended form after the end of the opposition procedure. Actually, the amended translation needs to be filed for patents where the mention of the decision to grant was published prior to May 1, 2008, irrespective of the date of the decision in the opposition procedure.

This is one of the most dangerous pitfalls of the German national law relating to the EPC because in cases where the German representative is not the representative in the opposition procedure, the applicant relies on the wrong assumption that the applicability of the London protocol extends to the cases mentioned above and does not inform his German representative on the outcome of the opposition procedure.

Once the time limit has expired, the only possibility to safeguard the application is to request a restitutio in integrum, for which all the persons involved have to provide evidence that all due care required by the circumstances has been exercised. The latter includes, of course, that everybody knew the law to be applied.

I think that the German patent and trademark office GPTO must have accumulated mountains of files where a re-instatement into this delay has been requested. Many of us are waiting for these cases to progress through the instances. However, the files appear to have created some obstruction in the digestion system of the GPTO.

The Federal supreme court has now published a rather inconspicuous decision (X ZB 2/11) with the name “Ethylengerüst” which might help to break this obstruction. Under the cloak of a request to refund the printing fees of EUR 150 for publishing the patent in the amended form, the court decided on the validity of the transitional regulations (Art. XI, § 4 IntPatÜG) prescribing the filing of the translation as discussed above after the publication of the decision.

In the case at issue, the patentee had correctly filed the translation and paid the pertinent publication fees but requested a refund of the publication fees by arguing that the legislation procedure suffered from the fundamental error of retrospectively imposing new requirements onto the patentee. Actually, the amended law had entered into force on July 7, 2008 and had a retroactive effect on patents where the decision to grant was published on May 1, 2008 or later, thus violating the principle of non-retroactivity.

However, the BGH could not follow this argument because principle of non-retroactivity does not foreclose the retroactive applicability of laws ameliorating the situation of the circles concerned. This is the situation here: the duty to file a translation and to pay the publication fees was abrogated retroactively for patents where the decision to grant was published on May 1, 2008 or later. Thus, the patentees were better off than before. As a consequence, it was not the legislative procedure that has led to the loss of rights but rather his own fault.

Bad luck for those who have lost their rights by relying on a broader field of application of the London protocol.

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