Agreement on Community Patent (?)

Update: For the latest news, see here and here.

The according to the latest news here (DPA via Focus online), van Rompuy's Solomonic proposal to split the Unified European Patent Court into three parts - the central division being located in Paris and two other divisions in London and Munich respectively has been adopted. If this is true, this amounts to a great breakthrough in the 40-years of history of negotiations on the EU patent.

Further, according to this source, the London branch will deal with the administrative matters and the substantive jurisdiction will be distributed based on the technical field over the 3 cities.

Reasonable Expectation of Success? BGH "Calcipotriol-Monohydrat"

A skilled person trying to asses Germany's expectation of
success in today's semifinals.

The Federal Supreme Court (BGH) has spent much effort in further developing the case-law on the inventive step in the last months. The mantra is that the skilled person has to find an incentive (Anregung)  to tacke certain technical measures departing from the "beaten tracks", i.e. the usual way of doing things.

The decision  BGH X ZR  98/09 "Calcipotriol-Monohydrat" seeks to clarify the degree of intensity of this incentive in the prior art and adopts - according to this blogger's knowlege for the first time - the notion of a "reasonable expectation of success" needed for the skilled person do do certain experiments. This notion is widely used in the case law of the EPO Technical Boards of Appeal and goes back to T 60/89, 3.2.5.

According to the BGH, the consideration whether or not the adoption of certain measurs described in the prior art may for solving the technical problem under consideration "may gain in importance" when assessing whether or not the skilled person had an incentive to adopt these measures.

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.

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".

When Does a Simulation Step Contribute to the Technical Character of a Method?

Oliver Randl has posted an interesting decision (T 1265/09) relating to an application claiming a method for generating schedules in a call-center. The method basically determines staffing requirements split up in different skill group and "adapts" the settings iteratively as a function of the result of a call-handling simulation.

The EPO Board of Appeal refers to the decosion T 1227/05 in an attempt to define necessary conditions to be met by a simulation step in a method to contribute to the technical character of the method.

The board derives from T 1227/05 that:

The board held that beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method and, further, it held that a simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose (Reasons, [3.1]). The claimed methods were held to meet these conditions because, firstly, they concerned an adequately defined class of technical items, and, secondly, the stated purpose, ..., was established in the further steps of the claimed methods, .... thereby functionally limiting the claims to the simulation of a noise-affected circuit (Reasons, [3.1.1-2] of T 1227/05, emphasis added).

 The Board further notes that these conditions are necessary but does not sufficient.

In the case at issue, the conditions were not found to be met

"since, in connection with the call handling simulation referred to in claim 1, the telephone call center and, in particular, its performance, are not further specified in the claim and, further, the claimed method does not define the further steps which actually result in the stated purpose, i.e. the call handling simulation." ([1.13] last par.)

 In other words - even if a call-center network is a technical system the simulation of which could be considered a technical task, the claim should cleraly define its technical features determining its performance and give details on how this is simulated.

At first sight, this appears to be somewhat narrower than the broader (and often-cited) statement in T1227/05:

"To that extent, specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product (in effect the German Federal Court of Justice ruled in the same way in its decision of 13 December 1999, X ZB 11/98 - Logikverifikation; Reasons II.4(h))."

 However, the board appears to put emphasis on the words "specific" and "technical" in the first line of the above quote.

 

Limiting Factor - Transhydrogenase

The decision "Transhydrogenase (X ZR 115/09)" relates to the use of microorganisms for producing a target substance, wherein the metabolic system of the microorganism is modified "wherein productivity of said microorganism for reduced nicotinamide adenine dinu-cleotide phosphate is enhanced" (cited from original claim 1.

It was known that  nicotinamide adenine dinu-cleotide phosphate (NADPH) plays a role in the metabolic system producing the target substance. However, the prior art did not point out that NADPH is (one of) the limiting factor(s).

The BGH ruled that the skilled person "... has an incentive to consider an improvement of that particular factor in the complicated metabolic system only if it is not known or to be expected with a sufficient degree of certainty that this factor is limiting, i.e. not available in a sufficent amount in the known methods" (cited from the headnote).

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.