Filing in English Will Become More Attractive for German Applicants

The Rosetta Stone

The German Federal Government Cabinet has agreed to a proposal of the Minister of Justice Sabine Leutheusser-Schnarrenberger to reform the German patent law.

The maybe most important point from a practiacal point of view is he prolongation of the delay for filing German translations of applications originally filed in English of French language from 3 months to 12 months from the filing date but not later than 15 months from the priority date. The examiner may invite the applicant to file the translation earlier in exceptional cases of particular complexity.

In addition, applications for which the translation is not timely filed are no longer deemed to be not filed but deemed to be withdrawn. The consequence is that the priority may still be claimed.

According to the explanatory remarks of the proposal (page 27, 1st paragraph), the DPMA will carry out the search and issue the search opinion for applications filed in English or French even if the translations are not yet provided.

Applicants may file their first applications in English language and will obtain a preliminary opinion prior to the expiry of the due date for filing the translation into German and decide on the basis of this opinion on his further strategy. The (slightly increased) search fees of EUR 300 are a very competitive price for a reasoned opinion and if the applicant decides to file an EP application to be validated in Germany later on, the original German application may be dropped and no translation of the full specification into German will ever be necessary.






For German applicants, this will strongly increase the attractivity of first filings in english language, in particuar if they follow an "all or nothing" strategy where the application is either dropped or prosecuted in multiple countries and where the probability of prosecuting the application in Germany only is low.

The proposal has yet to be ratified by the Bundestag and Bundesrat.

Implicit Incentives - BGH Installiereinrichtung II

The German Federal Supreme Court (BHG) has recently ruled on the "pointers" or "incentives" known to be needed to find that it is obvious for the skilled person to furhter develop a known solution in the way indicated by that pointer.

Besides of noting that all this depends on the circumstances of the individual case, the court notes that not only explicit promptings are relevant:

Rather, the characteristics ofthe technical field under consideration, in particular relating to the education of the persons skilled in the art, the usual way of developing innovations, technical requirements resulting from the construction or the application of the subject-matter under consideration as well as non-technical requirements may play a role.

E-Mail via SMS - BGH on Inventive Step

When establishing a logical chain of considerations leading the skilled person from the prior art to the subject-matter of a claim in order to challenge its inventiveness, the most difficult part consists often in finding the incentive of the skilled person to take a particular step. The case-law both in Germany and at the EPO requires such an incentive e.g. for the combination of different pieces of prior art.

In a decision issued last week, the German Federal Supreme Court BGH had to decide on a patent relating to a method for transmitting e-mails using the SMS-Standard. The method required a modification of the data structure according to the SMS-Standard and the solution employed mechanisms which had already been provided (though for slightly different purposes) in the same standard.

The BGH found that the skilled person faced with the problem of improving a standard has an incentive to use the mechanisms provided therein and - if the standard provides for a manageable (überschaubar) number of possible approaches for solving the technical problem - to take each of these approaces into consideration even if an unmanageable number of possible approaches would be imagineable outside of the standard.

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.

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.

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".

Right to Oral Proceedings? Not Always!

According to §46(1) of of the German Patent Act, the Examining Division of the German PTO (DPMA) has to grant a request for oral proceedings provided that the latter is relevant to the case ("sachdienlich").

It is well-established case law that this relevance/pertinence is given, as a rule, for a first hearing, and a non-compliance with this requirement is generally considered a violation of the applicant's right to be heard. I have not learned of any exception to this rule - until now.

The 20th senate of the Bundespatentgericht had to decide on an appeal against a decision to reject an application in 20 W (pat) 94/05. The examining division had rejected the patent without scheduling oral proceedings despite of the applicant's auxiliary request to be heard orally.

The examining division had objected against the unity of multiple independent claims and had won the impression that the applicant would not be willing to react on these objections during oral proceedings. This impression was based on the resolute position the applicant took during the procedure in writing. As a consequence, the oral proceedings were considered not relevant to the case.

Surprisingly, the 20th senate has confirmed this ruling. This will surely increase the legal incertainty in the german application procedure. It is the primary task of patent attorneys to represent the cases of their client in a convincing, resolute and determined way. Shall we now express our doubts in our own arguments in the written submissions in order to avoid a rejection without oral proceedings?

The right to oral proceedings is based on the fact that an oral discussion has a nature different from a procedure in writing and I think that not only the applicant has to account for the possibility that the examining division changes its mind during the discussion but the examining divion also has to account for the possibility that it will be able to convince the applicant - no matter how determined the applicant appears in writing. Depriving the applicant of his right to oral proceedings is clearly a violation of the right to be heard and I hope that this decision will remain isolated.

Equivalent or an Altnerative? BGH "Okklusionsvorrichtung"

Art. 2 of the protocol of interpretation of Art. 69 EPC requires that the scope of protection of a patent claim goes beyond its literal meaning by requiring hat:
"For the purpose of determining the extent of
protection conferred by a European patent, due
account shall be taken of any element which is
equivalent to an element specified in the claims."

The practice shows that the national courts of the EPC member states are do not judge in unison what precisely is to be considered to be equivalent in the sense of the protocol of interpretation. However, in any case, teh considrations employed amount to balancing conflicting interests: The patentee strives for broad protection as a fair remuneration for his invention, his competitors want free competition.

Where is the borderline to be drawn to ensure fair protection for the patentee's inventive achievement? How can the borderline be made visible in order to guarantee a sufficient degree of legal certainty?

The BGH has answered these two questions by providing three other questions relating to the claim to be interpreted - the so-called "Schneidmesser" - questions:
1) Does the variant of the claim with the allegedly equivalent element solve the problem underlying the invention by means which have objectively the
same technical effect?
2) Was the person skilled in the art enabled by his or her expertise on the priority date to find the modified means as having the same effect?
3) Are the considerations that the person skilled in the art applies based on the technical teaching of the patent claim?
Whilst the first question is a simple technical quesiton and the second one boils dow to a kind of obviousness analysis, the third one is always the most difficult to answer and a little obscure.

The German Supreme Court (BGH) has now shed some new light on this third question - in the decision "Okklusionsvorrichtung" X ZR 16/09. In the case at issue, the specification had explicitly mentioned several alternatives for a specific feature, whereas only one of these alternatives was claimed. The court ruled that the choice of a specific alternative for achieving a technical effect was one of the considerations constituting the technical teaching of the patent claim and that there is no infringement if the alleged infringer does not make use of these considerations.

As a consequence, the mentioning of non-claimed alternatives in the specification forecloses the patentee form arguing that these alternatives are equivalent.

From a practical point of view, this is problematic because the practice of mentioning many alternatives as possible fallback positions has to be questioned. There will be no problem if the alternatives are mentioned in order to support a broad feature covering all of them. However, the scope of protection might be reduced if the claim is limited to one of the alternatives in the examination procedure. It might be worthwhile considering the deletion of the non-selected alternatives in this case.