Re-Establishment of Rights After More than One Year

In a very interesting new decision availabe here, the 10th senate of the Bundespatentgericht granted re-establishment of the right to pay the filing fees almost 2 years after the expiry of the time limit. The applicant had filed an application containing only claims and the office had informed him that the minimum requirements for the filing date were not met because a description was lacking. The office furhter noted that any fees would be refunded and that a new filing date could be obtained by filing complete documents.

The applicant responded by arguing that the claims would sufficiently describe the invention to qualify as a description. The argument was found convincing by the examiner who decided to keep the application pending. However, the office did not inform the applicant on this decision. The applicant got aware of this decision only after almost two years, when the GPTO notified the applicant that his right was lost due to non-payment of the filing fee.

Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".

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.

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.

Dispute about the real Obazda goes to round 2

Obazda is the name of a Bavarian cheese specialty which is preferably eaten together with brezels in the beer gardens and/or at the Oktoberfest. It is basically a mix of mashed Camembert or Brie cheese with some fresh cream cheese and sweet paprika powder, which gives it a slightly orange color. Whilst every bavarian here knows that his mother's recipe for Obazda is the real and original one, there are some pharisaic, if not puritan newly immigrated swabians discussing the right way to prepare Obazda including the right degree of clumpiness.

 

Perfectly fitting the Oktoberfest season, the Bundespatentgericht has had oral proceedings in an opposition against the registration of a protected geographical indication (PGI) for "Obazda" or "Bavarian Obazda". The PGI was registered by the association of the bavarian dairy industry, the members of which are, as the interested reader might imagine, bavarian enterprises from the dairy industry. The opponent was actually not an immigrated swabian frim but interestingly a bavarian enterprise which had moved from the munich area to Leutkirch, which is in Swabia and around 6 kilometers from the bavarian border.

In a press release , the Bundespatentgericht has indicated that the expression "Obazda" was eligible for a PGI registration in principle but that it has doubts whether the right choice for the applicant would not be an interest group to be formed, which could then be open to bavarians in exile sufficiently close to the bavarian border. With regard to the recipe and the required degree of clumpiness, the presiding judge Franz Hacker turned out to be surprisingly open-minded. However, the attitude with regard the method for conservation in industrial used, the court found that the latter should not be restricted to thermising the cheese because the traditional recipe does not contain any conservation at all. The case was referred back to the first instance.

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.

Clarity is not at issue in Nullity after the EPO-limitation procedure

To the best of my knowledge, there has not been any case-law on the relation between the new EPO limitation procedure (Art. 105a and 105b EPC) and the nullity procedure.

The first decision in this regard has now been issued by the German Supreme Court (BGH, X ZR 72/08 "Kosmetisches Sonnenschutzmittel III).

There is a small catalogue of grounds for nullity of german patents, which is similar to the grounds for opposition in the EPC. Just as in the EPC, clarity does not count among these grounds.

However, if amendments are made during the nullity procedure in order to defend the patent in a limited form. the full examination including clarity is opened for theese amendments.

In the case at issue, the amendments were not made in the nullity procedure at the Federal German Patent Court (Bundespatentgericht) but in a co-pending limitation procedure before the EPO.

The BGH has now ruled that the claim as limited in the EPO-limitation procedure is to be considered as the valid patent claim and may not be examined for clarity because a pertinent ground for nullity is missing.