Advertisements yes, but not with intention to sell

What would the designer think
of Italian advertisements?

Advocate General (AG) Cruz Villalón has published his Opinion in Case C-516/13 Dimensione Direct Sales and Labianca reported earlier here .

Article 4 par. 1 of the Copyright directive 2009/29 provides that "Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorize or
prohibit any form of distribution to the public by sale or otherwise".
The referral is about the "or otherwise" piece of this Article.

In an earlier referral (C-256/06 Peek & Cloppenburg/Cassina), the ECJ had decided that the words"or otherwise" should be interpreted narrowly in the sense "that the concept of distribution to the public, otherwise than through sale, .... , applies only where there is a transfer of the ownership of that object" (cf. margin number 41 of the decision) such that the mere offering of a counterfeit for use would fall under the scope of this provision.

The AG proposes to answer that Art. 4(1) of the InfoSoc directive forecloses offering the original or copies for sale to the public without consent, including where such offer has led to any acquisition, provided that such an offer was made with the manifest intention to enter into contracts of sale or other acts involving a transfer of ownership in them.

This blogger wonders if the manifest intention is a sufficiently objective criterion. What if the future advertisements say come and test our fancy Marcel Breuer chairs in our shop in Italy rather than come and buy our fancy Marcel Breuer chairs in our shop in Italy as was in the case underlying the referral?

This opinion has been commented by Eleonora Rosati here and by Jeremy Philipps here.

Are patents only Paper Tigers?

An interesting article by Peter Hess, Tilman Müller-Stoy and Martin Wintermeier published in the German journal "Mitteilungen der deutschen Patentanwälte" compiles a lot of statistics on the outcomes of nullity actions in at the German Patent Court and the BGH. An English version was made available by the law firm of the authors Bardehle Pagenberg here. 

 

In a nutshell, the report shows that almost 80% of the nullity actions are at least partially successful in that the patents are partially revoked, wherein 43% of the patents are totally revoked. In the field of Software and Telecommunications technology, the rates are even higher According to the authors "one might possibly even speak of a failure of the patent system" in this field.  The authors want to initiate a discussion on examination quality.

 

Konstantin Schallmoser comments on the EPLAW blog that the invalidation rate is not surprising given that nullity actions are usually filed only if a preliminary assessment of the case shows that there are reasonable chances of success.

This blogger wants to add that the sample of patents subject to a nullity action is not representative for the patent system as a whole for other reasons. Invalidation makes economical sense only if the patent has a high economical importance, which might speak in favour of a high quality of the underlying invention. On the other hand, the efforts and time usually spend for the invalidation search is much higher than what a patent office can do within the (financial) limits set by the official fees. The functioning of the patent system depends not only on the quality but further on the affordability of the examination. My feeling is that the offices strike the balance quite well, though there is some room for improvement of course.

Presentation on Specialist Congress is no Offering for Sale- LG Düsseldorf 2 U 3/14 - Warmpressumformung



Junior Specialist Congress

An representative of defendant in the case "Warmpressumformung" hat presented information on and advantages of products covered by a German utility model on a specialist congress.  

 

The plaintiff submitted that this presentation amounted to an offer for sale.

The court points out that the congress was announced as a forum for interested circles for information on the state of development of various enterprises and in relation to new applications in lightweight car body engineering. The presentation was therefore considered as information on development in progress and not as an immediate preparation of a sale (as was the case e.g. in the decision „Kunststoffbügel“ (BGH, GRUR 2006, 927).

The German Text of the decision can be found under the following Link.

On counting the number of inventions - T129/14

How many branches does this tree have?
Photo by Pablo D. Flores

The decision T129/14 deals with the algebra of counting the number of inventions in a single European Patent Application.

While the substantive examination procedure deals with the question whether there is one invention or zero inventions (wherein the applicant tends to advocate in favour of the greater among these numbers) the situation is opposite in the search procedure. In this early stage of the procedure, the examiner may, under certain circumstances, limit his search to the invention first mentioned in the claims. A search for further inventions is carried out only upon payment of a further search fee (this option having been introduced for the case of EURO-PCT applications only as of November 1, 2014).

The case of so-called non-unitiy a posteriori can be understood by adopting the illustrative image of a "claim tree", the examiner should start searching with claim 1 as the stem of the tree. When having found a document destroying novelty up to a branching point where the claim tree splits into different branches, these branches should be identified by defining "special technical features" shared by the claims being a part of the branch under consideration (Rule 44 EPC) and the examiner should then follow the branch first mentioned in the claims for the further search and invite the applicant to pay additional search fees for the other inventions. Failure to do so leads to foreclosure of the unsearched subject-matter for the further prosecution (Rule 137(5) EPC).

In the case underlying the decision T129/14, the examiner had  adopted a particularly captious approach to counting the number of inventions in the application. The examiner found prior art destroying the novelty of claims 1, 5, 14 and 15 as originally filed, which he considered to constitutethe unitary group of inventions first mentioned in the claims, and concluded that these claims cannot contain any special technical features in the sense of Rule 44 EPC which could potentially be shared with other claims. Amendments relating to subject-matter of claims other than those mentioned above were rejected as relating to unsearched subject-matter.

In the picture of the claim tree, the examiner reverses the tree and defines the stem as a further branch and magically increases the number of inventions by one.

Luckily, the board of appeal did not follow this approach. Claims which are anticipated by the prior art cannot include features which define a contribution the claimed invention makes over the prior art as stipulated in R 44 EPC. The application was remitted to the first instance and the appeal fee was refunded as a matter of equity in view of the fundamental procedural violations.

Thanks to Laurent Teyssèdre for having spotted this decision in his French blog here.

News on Enforcement of Standard Essential Patents under FRAND

The Advocate General Melchior Wathelet  has now issued his opinion on the case ZTE-Huawei (Case C 170/13) on the requirements on enforcement of a Standard Essential Patent (SEP).

Among other things, the Advocate General proposes to stipulate that:
the SEP holder must, in any event, present the alleged infringer with a written offer of a licence on FRAND terms and that offer must contain all the terms normally included in a licence in the sector in question, including the precise amount of the royalty and the way in which that amount is calculated.

The most surprising part in my view is the proposal that the infringer’s conduct cannot
be regarded as dilatory or as not serious during negotiations for a licence on FRAND terms if it reserves the right, after entering into an agreement for such a licence, to challenge before a court or arbitration tribunal the validity, use and essential nature of that patent.

This is likely to create conflicts with the existing German case-law unambiguously accepting the right of the patentee to terminate a license agreement for good cause if the licensee files a nullity action against the patent. In the case of a co-pending nullity suit, the principle of dolo agit, qui petit, quod statim redditurus est (foreclosure to claim something the claimant would have to return immediately because the corresponding counterclaim exists) therefore forecloses the licensee from forcing the patentee into an agreement which could then be terminated by the patentee immediately.
A comment by Colm Ahern can be found here.

The full text of the opinion can be found here.

The Orange Book Standard is discussed e.g. here.

No difference between "to contain" and "to comprise" - T 0056/08

The words "comprising", "consisting of" or "containing" count among the most discussed words in the patent-related case-law.

In the decision T 0056/08 here, the respondent/opponent had argued that an amendment from "to comprise" to "to contain" infringes Art. 123(2) EPC.

Respondent's argument that the verb "to contain" has a more restrictive meaning than the verb "to comprise", the Board would point out that the general meaning of the verb "to contain" is "to have in it", "to hold", "to include", "to encompass" or "to comprise". 

Therefore, the Respondent's argument cannot be accepted.

No Copy & Paste of Preliminary Opinion - T 1312/10

In the decision on the basis of the appeal T 1312/10, the Examining Division of the EPO had merely copied the reasoning given annex to the summons to oral proceedings and did not discuss the additional arguments filed in response thereto in arriving at its decision to refuse the application.

The Board judges that this constitutes a substantial procedural violation and ordered that the appeal fee be refunded although a refund was not even requested. The Board of appeal was very assiduous not only in this point but further introduced new documents D4 and D5 into the procedure (wherein D5 was not even prior art) but finally found that the claim 1 complies with the substantial requirements of the EPC.