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.  

Dressing up as Pippi Longstocking is not unfair, either

In a case reported here, the right-holders of the work of Astrid Lindgren had sued a supermarket offering carnival costumes of the literary figure of Pippi Longstocking for infringement of copyright and unfair competition.  The alleged acts of infringement included distributing a prospectus with models being dressed with the costume.

According to the case-law, the utilization of work products of third parties is generally allowable but can be considered unfair if specific circumstances appear to justify this finding.

The action had been dismissed by the BGH insofar as copyright was concerned and had been remitted to the 2nd instance (OLG) to re-assess the claims based on competition law. The OLG found that the pictures with the models could be considered to be an imitation in the sense of § 4 Nr. 9 Buchst. a und b UWG but rejected these claims because no specific circumstances rendering the imitation unfair were recognizable.

The case went back to the BGH which confirmed the result but for different reasons. According to the BGH, the imitation of a character of a novel by transferring features having features of competitive individual character into other product classes as this is the case for carnival costumes is possible but must not be assessed based on low requirements ("keine geringen Anforderungen"). In the case at issue, the overlap between the features characterizing the literary figure of Pippi Longstocking and the design of the carnival costume is sufficiently small to exclude an imitation.

This applies to alleged imitations the character in the novel as such and is without prejudice to the claims based on unfair imitation of actual merchandizing products offered by the right-holder.

When Does Presentation of Information Count for Inventiveness?

The decision T 0336/14 offers new insights on the treatment of "mixed inventions" at the EPO.

The headnote is as follows:

In the assessment of inventive step of a claim which comprises technical and non-technical features ("mixed invention") and in which the non-technical features relate to cognitive content presented to the user of a graphical user interface (GUI), i.e. relate to "what" is presented rather than "how" something is presented, it has to be analysed whether the GUI together with the content presented  credibly assists the user in performing a technical task (related to "why" that content is presented) by means of a continued and/or guided human-machine interaction process (see point 1.2).

The board summarizes the case-law and comes to the conclusion that

In other words, it has to be established whether the information presented constitutes "technical information", which credibly enables the user to properly operate the underlying technical system and thus has a technical effect, or rather "non-technical information", which is exclusively aimed at the mental activities of the system user as the final addressee.

In this blogger's view, the latter offers a quite handy and reasonable test which will surely be frequently cited in examination procedures.

UPC Rules of Procedure: 18th (and final) draft

The 18th draft of the UPC rules of procedure has now been published on the UPC website. According to the press release,

At its last meeting the UPC Preparatory Committee adopted the Rules of Procedure of the Unified Patent Court, subject to some further adaptations once the Committee has decided on the court fees. This is a major milestone in the progress of the Committees work.  

The agreed text is draft no. 18 which shows that the text has undergone a rigorous process of development and testing. The Rules of Procedure are the result of a successful and fruitful collaboration between the Preparatory Committee's Legal working group and the Drafting Committee. This will underpin the Court's framework and functioning. The work has benefitted strongly from comments from stakeholders submitted during the written consultation and the oral hearing. 

The Rules will be an essential element in the future training of judges of the Court and the decision of the Committee will ensure a smooth transition from the development to the active planning of such training. 

Those interested in the Court's operation should familiarise themselves with the text.

This blogger is most impressed by this monumental work of the Drafting Committee, which will surely be loved and hated and hopefully be the solid ground for the functioning of the Court and the basis professional life of quite a few practitioners in the next decades.

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.

Orientation on the Patent Claim - OLG Düsseldorf Heizkessel mit Brenner

One of the 3 criteria in the German doctrine of equivalence is that the considerations of the person skilled in the art when finding a replacement for the feature of a claim "orient themselves on the teaching of the patent claim".

It is not surprising that this criterion gives rise to discussions as to what it actually means.

The decision 15 U 139/14  "Heizkessel mit Brenner" of the Düsseldorf Upper District Court (OLG Düsseldorf) relates to an appeal against the rejection of a request for preliminary injunction and contains a translation of the criterion into a more handy language. According to the Court, the technical teaching given the patent has to be accepted as justified and may not be questioned in its technical legitimacy upon searching a replacement means with the same technical effect.

Two proprietors - two appeal fees - BGH Mauersteinsatz

The decision "Mauersteinsatz" X ZR 3/14  relates to the appeal of two proprietors co-owning a patent which had been revoked in an opposition procedure.  The appeal had been lodged "in the name and on behalf of the patentees" by the common representative of the proprietors along with the payment of only one appeal fee of EUR 500.

The Bundespatentgericht rejected the appeal as inadmissible because the statutory rules require the payment of one appeal fee per appellant - i.e. two appeal fees in this case.  According to the German law, the co-proprietors are considered as an "association by fractions" (Bruchteilsgemeinschaft) rather than an association under civil rights (GbR) which could have been considered as one single party.

The BGH found that in a constellation like this - where the fundamental right to judicial protection is at stake - the Bundespatentgericht should have tried to allocate the appeal fee to one of the appellants in order to avoid unacceptable hardship, wherein no strict standard should be applied.  In the case at issue, it turned out that the payment form showed the name of only one the appelants such that the appeal of the latter was considered admissible and the appeal of its co-applicant was rejected.

CEIPI Training Program for Technically Qualified Judges

The first block of the CEIPI Training Program for Technically Qualified Judges has taken place in Strasbourg in this week. The seminar was experienced as a very fruitful and important event by the attendees and the speakers.

The lineup of speakers and their enthusiasm is really impressing and& Cristophe Geiger (CEIPI) and his team did an excellent job in taking this initiative and briging the UPC project a step forward.

 The first block was focused on the history, fundamentals, independence of the judges and competition law. Most of the participants were experienced patent attorneys from private practice and industry.  A major concern among the participants is the question of potential conflicts of interest for practicing patent attorneys working as part-time technical judges - in particular up to which degree of remoteness these may play a role.

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.

Main Request Rejected but Not Adversely Affected - T 0327/13

The case T 0327/13 of the EPO technical boards of appeal is an appeal against a decision of the opposition division which maintained the patent in amended form according to an auxiliary request filed by the patentee.

The patentee's main request had been rejected and, nonetheless, the board comes to the surprising conclusion that the patentee was not adversely affected by the decision. How this?

The main request essentially corresponded to claim 1 as granted with further dependent claims and the auxiliary request essentially corresponded to claim 3 as granted with further dependent claims. Claim 2 was not an issue in the 1st instance.

Well, the patentee did not really challenge the decision to reject the main request (corresponding to claim 1 as granted followed by dependent claims):

2.3.2 The grounds of appeal do not address this request at all, let alone indicate any reason for setting aside or amending the decision of the Opposition Division's decision that claim 1 of this request lacks novelty over D1. On the contrary, it is apparent from the grounds of appeal that the appellants no longer dispute that D1 discloses a slide nozzle device having all the features set out in claim 1 as granted, as well as in claim 1 of the main request as filed before the Opposition Division (see sections 2 and 3). Hence, the appellants do not challenge the refusal of this claim by the Opposition Division .

Rather, the patentee added a further independent claim to the claims as maintained. The new independent claim was based on claim 2 as granted with some further limitations.

2.3.5 The present appeal thus amounts to an attempt to remedy the non-filing of an independent claim based on granted claim 2 in the opposition proceedings, and so aims to extend the protection conferred by auxiliary request 1 allowed by the Opposition Division to the alternative solution of claim 2. This runs contrary to the purpose of appeal proceedings: their function is to give a judicial decision upon the correctness of the decision under appeal. It is certainly not to reopen the opposition proceedings and, as attempted in the present case, give a patent proprietor the opportunity to improve its position by adding an independent claim to a claim set already allowed by the Opposition Division.  

2.4 Therefore, in view of the appellants' case, the Board considers that they cannot be regarded as "adversely affected" by the decision of the Opposition Division and thus are not entitled to appeal under Article 107 EPC.

I have to admit that I am fairly puzzled by this conclusion. Would it not have been more straightforward hold the claims inadmissible under Rule 12(4) EPC because they could have been presented ... in the first instance proceedings? Or eventually because of lacking substantiation (none of the reasons to reject the main request was addressed?)

EPO to revise strike regulations

According to a post on the IPKat here, the Den Haag appellate court has granted an appeal filed by EPO staff organizations SUEPO and VEOB against a 1st instance decision and ordered that the EPO should nullify recently introduced limitations of the right of the EPO employees to go on strike.

The English translation of the decision is not yet available but will be published. According to what I have understood, the EPO did not contest the international jurisdiction of the Dutch courts such that the ruling should have effect for the German parts of the EPO as well. Even though the international jurisdiction might be doubtful, I think that the decision of the EPO's management to subject its decisions to judicial review is of great benefit to the public trust in the organization.

Once Out, Always Out

I have posted on a tendency to apply the discretionary power of the EPO Boards of Appeal to admit documents which had not been admitted by the Opposition procedure here. Other examples are  T1872/08, T1817/08  and T1485/08.

In brief, the Technical Board of Appeal argues in each of these decisions that it has no discretion on its own to admit documents which have not been admitted in the first instance for good reasons. Documents which have not been admitted in the first instance will not be admitted in the second instance either.

All these decisions refer to the decision T 640/91, Official Journal EPO 1994, 918 and terribly misunderstand this decision. The paragraph which is repeatedly cited relates to the question whether a refund of the appeal fees is justified because opposition division has violated the right to be heard by not admitting documents at a late stage and examines the way in which the first instance has exercised its discretion for this purpose.
A new decision in the same direction has been published today: T 1643/11. I really regret this development. The circumstances may be very different in the 2nd instance: Adjournment of the oral proceedings might have had to be necessary when the document was filed late in the Opposition Proceedings whereas the parties have plenty of time to study the documents when they are filed together with the appeal brief.

The approach taken by the TBA encourages parties to not even try filing documents at a late stage of the 1st instance but rather wait for the appeal in order not to produce evidence that the document "could have been filed in the 1st instance", which, according to the current attitude of the TBA, amounts to a death sentence of the evidence. This is clearly not beneficial for the procedural economy.

Patent Infringement on Trade Fair?

The OLG Düsseldorf has decided that exhibiting infringing products on a specialist trade fair is "offering for sale" in the sense of § 9 S. 2 Nr. 1, 2. Alt. PatG unless the fair is a pure "performance show" (Leistungsschau).

This ruling is contrary to an earlier ruling by the  Mannheim District Court (29.10.2010, 7 O 214/10, see here) which judged 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.

The BGH had decided on the question of trademark infringements by exhibiting on trade fairs in the decision Pralinenform II and in relation to a risk of first offence in an unfair competition case here.

For more background information see here.