Resist the Tempation BGH I ZB 21/11

I presume that every patent professional has already experienced the following tempting situation: your assistant prepares a letter to be signed on the last page and you find an error on page 1. In addition, you are - as always - in a hurry. Why not sign it and ask your assistant to replace sheet 1 with a corrected version?

In the decision I ZB 21/11, the attorney failed to resist this temptaion. He has allegedly remarked that the application was addressed to the wrong court and asked his assistant to correct this after signing - which she did not do as a consequence of the hectic pre-christmas season.

The request for restitutio in integrum failed because the attorney could have corrected the error immediately upon remarking it.

This is a deviation from the hitherto valid rule that the exercise of due diligence does not require controlling the correct execution of individual and specific directives given to assistants who had proven to be reliable before.

The Scams are Third Parties - Who is Second Then?

Reading decisions on requests for restitutio in integrum is always very educating because it gives insights into the brimming life of IP owners on the one hand and because the desperate plight of somebody having lost a valuable right despite of all due care sometimes reveals super-human forces of creativity and legal quibbles.

Now, I came across a decision where this fertile ground has encountered the hitherto independent battlefield of scammy patent- or trademark registers recently discussed e.g. here and here.

The applicant had not paid the official filing fees and tried to turn the existence of warning letters issued by the German PTO into his favor. He argued that these letters warn against payment invitations and reminders issued by third parties. According to him, this would imply that the German PTO also issues payment invitations or the like, because if there is a third party to issue the reminder, there should also be a second one....

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.

New Option to Challenge 2nd Instance Litigation Decisions in Germany

The German double-tracked system of litigation suits held at the lower and upper district courts on the one hand and a parallel nullity suit at the German Patent Court and the Federal Court of Justice (BGH) on the other hand is facing changes. The former practice of the district courts to stay the litigation procedure until the ruling in the nullity procedure has reached legal force is gradually superseded by an accelerated practice of deciding on the infringement without waiting for the ruling in the nullity suit in cases where the district court holds that the invalidation of the patent is improbable.

The 2nd instance decision in the litigation suit may be revised by the BGH only in exceptional cases where the Upper District Court has admitted such a revision, which should be done e.g. in cases interests of the general public beyond the individual case are affected. The decision not to admit a revision may be appealed within a term of one month and the grounds for the appeal have to be supplied within a term of two months from the date of notification of the decision.

The BGH has now decided in the case “Crimpwerkzeug III” (X ZR 193/03) that a ground for admitting the revision is given as soon as the BGH bases its decision in a nullity appeal procedure onto an interpretation of the claim deviating from the interpretation used by the upper district court in the judgement in a decisive point. Moreover, if this ground occurs after the expiry of the delay for filing the grounds for the appeal against the non-admission, it may be enforced by means of a request for restitutio in integrum.

In the case under dispute, the alleged infringer had been sentenced for infringing a patent against which a nullity suit was pending. The decision not to admit a revision was appealed at the BGH, who decided to stay this appeal procedure until the nullity suit, which was pending at the BGH likewise, was terminated. The Patent was upheld mainly by arguing that the point-like nature of “supporting points ... formed as thrust faces” was the clue to inventiveness, whereas the district court had held that the larger thrust faces of the allegedly infringing product could still be interpreted as “supporting points” despite of them clearly not being point-like.

According to the BGH, the impossibility to resolve such a discrepancy between the claim interpretations would lead to a loss of confidence into the jurisprudence as a whole and into the German double-tracked system in particular. This entails a sustainable effect of the decision on the interests of the general public beyond the individual case being sufficient for admitting the revision.

This new loop-hole may be opened by the underlying party in a 2nd instance litigation procedure with a co-pending nullity suit by filing an appeal against the decision not to admit the revision and to request the BGH to stay the appeal procedure until the termination of the nullity suit. Additional grounds focusing on discrepancies in the claim interpretation employed by the two courts may then be handed in later by requesting a restitutio in integrum.