In this section we inform briefly about recent developments and changes in the field of Intellectual Property in Germany and Europe.
Judgment of April 15, 2010, Xa ZR 69/06 – EPC Art. 56 Sentence 1
When traditionally there has been a theoretical divide between two sectors of a specific field (here: data transmission in public telecommunication networks and data transmission via Internet and LAN technology), the person skilled in the art nevertheless may feel the need to take suggestions from both sectors into consideration for solving a technical problem if at the priority date there had already been applications and methods crossing the divide between these two sectors (here: VoIP) and if the technical problem arises in both sectors in a similar way.
Decision of April 22, 2010, Xa ZB 20/08 – German Patent Act Section 1 Subsection 1, Subsection 3 No. 3, Subsection 4
(a) A method relating to the direct cooperation of the elements of a data processing system (here: a server comprising a client for dynamically generating structured documents) is always of a technical nature wherein it is not relevant whether it is characterized by technical instructions in the configuration in which it is applied for a patent.
(b) Such a method is not excluded from patent protection as a program for data processing equipment if it solves a concrete technical problem with technical means. A solution with technical means is not only present if system components are modified or addressed in a novel way. It is rather sufficient that the execution of a data processing program utilized for the solution to the problem is determined by technical factors outside the data processing equipment or if the solution precisely consists in configuring a data processing program in such a way that it takes the technical factors of the data processing equipment into consideration.
Judgment of April 15, 2010, Xa ZR 28/08 – German Patent Act Section 4
It is usually obvious to the person skilled in the art who faces the technical problem of providing a composition having advantageous effects on risk factors for certain diseases to first of all study compositions known to have these effects, to determine their active ingredients and to enrich them, especially if there are indications that the effect can be improved by a higher dosage of the active ingredient.
Judgment of March 18, 2010, Xa ZR 74/09 – EPC Arts. 65, 70; Law on International Patent Treaties (version of December 20, 1991) Art. II Section 3
If a translation of the European patent not published in the German language was filed by the patent proprietor within the prescribed period, Article II Section 3 Subsection 2 Law on International Patent Treaties is not applicable and the legal effects of the patent for the Federal Republic of Germany occur even if the translation comprises omissions. Such omissions are generally to be regarded as errors in the translation whose legal consequences are determined according to Art. II Section 3 Subsections 4 and 5 Law on International Patent Treaties.
Decision of April 15, 2010, XA ZR 10/09 – German Patent Act Section 93 Subsection 1, Section 100 Subsection 3 No. 3; German Constitution Art. 103 Para. 1
(a) The German Courts have to take into account decisions issued by the authorities of the European Patent Office or by courts of other member states of the European Patent Convention and relating to essentially the same question and where necessary have to deal with the reasons which led to a different result in the previous decision. This is also applicable as far as legal questions are concerned, for example, the question whether the prior art has rendered obvious the subject-matter of the industrial property right.
(b) Not every violation of this obligation violates the respective party's right to due process of law.
By Alexa von Uexküll
The Federal Patent Court (FPC) recently has granted a Supplementary Protection Certificate (SPC) for an implantable device containing an active ingredient as an integral part of the device, as the product is also subject to the same level of regulatory scrutiny as provided for in Directive 65/65/EEC (now replaced by 2001/83/EC).
In accordance with the decision 14W (pat) 12/07 of January 26, 2010, the FPC overruled the German Patent and Trademark Office (GPTO), rejecting an SPC for a medical device comprising “Yttrium-90 glass microspheres”. The product had been approved in accordance with Directive 90/385/EEC relating to active implantable medical devices (“the medical devices Directive”) for use in radiotherapy.
The GPTO had rejected the SPC application for contravening Articles 2 and 3(b) of Regulation (EC) No. 469/2009 concerning the Supplementary Protection Certificates for medicinal products (“the SPC Regulation”). In these articles, reference is made to Directive 2001/83/EC and Directive 2001/82/EC, the directives relating to the medicinal products for human and animal use (“the medicinal products Directives”).
According to the GPTO, the approval for the Yttrium-90 glass microspheres, granted under the medical devices Directive, could not be considered to be a valid approval within the meaning of the SPC Regulation, which only expressly refers to the approvals granted in accordance with the medicinal products Directives.
Relying on the European Court of Justice (ECJ) decision C-431/04 MIT / Gliadel, the FPC concluded that in the absence of any definition of the term “active ingredient” in the SPC Regulation, the meaning and scope of this term must be determined by considering the general context in which it is used and its usual meaning in everyday language. Thus, the SPC Regulation in its Article 1 merely provides a definition for the term “product” which is the “active ingredient or combination of active ingredients of a medicinal product”, which in turn is defined in Article 1(a) as “any substance or combination of substances” which may be administered to humans or animals for a therapeutic purpose.
According to the FPC, the glass microspheres, which are provided in a form ready for use, consist exclusively of glass containing radioactive Yttrium-90 as an integral component, embody not only the active ingredient itself, but also the medicinal product. Upon administration of the microspheres to a predetermined site of action, this medicinal product serves to directly treat cancerous tissue. As the microspheres are intended to remain in the body, they also per definition constitute an active implantable medical device within the meaning of Article 1(2)(c) of the device Directive.
The FPC concluded that the absence of an authorisation under the medicinal products Directives should not be a bar for obtaining an SPC, as the level of testing required by the medicinal devices Directive should allow the product to conform with the requirements of the medicinal products Directives.
In an obiter, the FPC emphasised that in order to take account of the newly evolving therapeutic technologies, and the growing emergence of so-called “borderline products”, the definition of the term “medicinal product” should be modified to avoid any doubt as to the applicable legislation when a product, fulfilling the definition of a medicinal product, also falls within the definition of other regulated products.
The FPC decision, granting an SPC for the medical device “TheraSphere® Yttrium-90 Glass”, follows the previous decision of the Dutch Court (Rechtbank’s-Gravenhage/District Court of the Hague Reg. No. AWB 02/1915 OCT), who also found that an analogy between the level of testing required by the medicinal devices Directive and medicinal product Directives allowed the product to qualify for an SPC.
From a pragmatic point of view, the approach adopted by the FPC and the Dutch Court would seem to be fair, in that there appears to be no justification in providing extra proprietary exclusivity by way of an SPC for a medicinal product subject to testing in accordance with the medicinal products Directives, but not for a product which has undergone similar rigorous testing, but by its very nature is classified as a medicinal device.
The position adopted in the FPC decision is, however, controversial, as the SPC Regulation verbatim requires that an SPC should only be granted if the product has obtained an authorisation under the medicinal products Directives. It will therefore be of interest to see how other member states will decide on this issue. It is also conceivable that the issue will be resolved by a pending referral to the EJC.
Thus, in a previous decision (Memantin 3Ni 59/04), the FPC had concluded that an approval within the meaning of the SPC Regulation must be in accordance with EU Directive 65/65/EEC (which has now been replaced by the above-mentioned medicinal products Directives), as opposed to any other equivalent approval.
In the corresponding British case, the English High Court has referred the following questions for a preliminary ruling to the ECJ (case C-195/09):
“3. Is a product which is authorised to be placed on the market for the first time in the EEC without going through the administrative procedure laid down in Council Directive 65/65/EEC within the scope of Council Regulation (EEC) No. 1768/92 [as defined in Article 2]?
4. If not, is an SPC granted in respect of such a product invalid?”
It is expected that the EJC will hand down its decision within 2 to 3 years.
In spite of the above uncertainties in terms of the validity of the decision, it would appear expedient to review the status of the regulatory approval of any device comprising an active ingredient as an integral part of the device in all EU/EFTA member states, as well as the corresponding patent portfolios covering the product, in order to ascertain whether they may form basis for an SPC for that product.
The Enlarged Board of Appeal have handed down their long awaited decision in relation to the patentability of software.
The Board decided that the referral by the the president of the EPO is inadmissible as there is no inconsistency in the case law of the Technical Boards of Appeal, contrary to the opinion of the EPO's president.
Thus, the established case law and the current practice of the EPO in allowing software patents will not change
Albania's parliament has approved the country's accession to the European Patent Convention and Albania became a member of the European Patent Organisation today, 1 May.
The other contracting states of the European Patent Organisation are all of the 27 EU member states plus Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, San Marino, Switzerland and Turkey.
"We welcome Albania and are particularly pleased to have another country from Southeast Europe join our ranks," said Alison Brimelow, President of the European Patent Office (EPO), the executive arm of the European Patent Organisation.
The EPO applies a centralised procedure to examine European patent applications for the Organisation's member states. Applicants can obtain patent protection in as many of the member and extension countries as they designate on the basis of a single application.
The Enlarged Board of Appeal have handed down their long awaited decision in relation to the allowability of dosage regimens.
Over the past decade there have been conflicting decisions as to whether a claim directed towards a known therapeutic agent for use in the treatment of an illness may be regarded patentable, if the only distinguishing feature is the specific dosage regimen.
In the case at hand, the referring board questioned whether the limitation “for use in the treatment by oral administration once per day prior to sleep” was suitable to established novelty.
The Enlarged Board of Appeal have now confirmed that a different mode of treatment such as a dosage regimen may be relied upon to establish patentability of a medical use claim,. provided the claim is worded in the “medicinal products format” as provided by the new Art. 54(5) of the EPC 2000.
Thus, the referred questions were answered as follows:
“1. Where it is already known to use a medicament to treat an illness, Article 54(5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.
2. Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state-of-the-art.
3.Where the subject matter of the claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called the “Swiss-type” claim as instituted by decision G5/83.”
In the appeal before the Federal Court of Justice (Bundesgerichtshof) regarding the revocation of a biotechnological patent, which relates to the isolation of neuronal precursor cells and their use in the therapy of neurological diseases, Civil Senate Xa has stayed the appeal in order to bring the matter before the European Court of Justice (ECJ). The referral concerns the interpretation of § 2 of the German Patent Act, in particular, the Act’s exclusion of the use of human embryos for commercial and industrial purposes from patentability which may be disputable in the light of the identically worded Article 6 of Directive 98/44/EC on the legal protection of biotechnological inventions. The ECJ will have to settle the question of how to interpret the term “human embryos” and whether, within the meaning of the law, a blastocyst is also considered an embryo. Cf. Decision Xa ZR 58/07 of the Federal Court of Justice and Press Release No. 231/2009 dated 13 November 2009.
Effective April 1, 2010, the EPO distinguishes between so-called voluntary divisional applications which are filed on the applicant's own initiative and so-called mandatory divisional applications which are filed in response to a non-unity objection.
As of April 1, 2010, voluntary divisional applications will need to be filed within a period of 24 months from the first communication pursuant to Article 94(3) EPC which is issued by the examining division in respect of the parent application. If a divisional application has already been filed, the two year limit will run from the first communication which is issued in any of the family of applications.
Mandatory divisional applications will have to be filed within 24 months from the communication pursuant to Article 94(3) EPC in which the specific unity objection is raised by the examining division for the first time.
Since the divisional application has to be filed while the parent application is still pending, it must be filed at the latest one day before the grant of the parent application is published even if the 24 month time limit were to expire later.
The rule change will apply to all divisional applications filed on or after April 1, 2010. If the 24 month time limits have expired before April 1, 2010, a divisional application may still be filed within six months of that date. If they are still running on April 1, 2010, they will continue to do so for not less than six months. Further processing has been excluded for the new time limits for filing a divisional application.
We therefore recommend to review all pending EP applications for subject matter which needs to be prosecuted in a divisional application. If you are considering filing a divisional application in one or more of your applications, please inform us accordingly. We will then remind you in due time.
The new rules and the transitional provisions may be downloaded from
I. PATENT ACT
1. Improvements in nullity proceedings:
In the first instance before the Bundespatentgericht (Federal Patent Court), the court will in future be obliged to explicitly draw the parties’ attention to questions which are relevant to the court’s decision. By the setting of a deadline, the disputing parties and the court will be better protected from surprising new facts which so far were frequently only presented in the final hearing.
The appeal proceedings before the Bundesgerichtshof (Federal Court of Justice) will be accelerated by a number of measures. In particular, appeal proceedings will in future basically concentrate on reviewing the first instance decision for errors of law, thus bringing appeals in patent cases in line with the Code of Civil Procedure. By considerably reducing the requirement of assessing facts in the appeal stage, the appointment of a court expert will no longer be required apart from exceptional cases.
2. New Claims Fees:
As of October 1, 2009 the German Patent and Trademark Office (GPTO) will introduce the following fee structure as known from the EPO system:
Claims 1 to 10: no claims fee;
Claims 11 and subsequent: 30.00 EUR per claim.
3. Article 145 Patent Act:
Contrary to previous proposals, Article 145 Patent Act has not been cancelled, i.e. the patentee is generally still obliged to enforce all patents relevant to a specific infringing act in one single court case.
II. TRADEMARK ACT
1. Broader scope of opposition rights:
As in the Community Trademark system it will in future be possible to base trademark oppositions in Germany not only on earlier trademarks but also on earlier business signs (company names, domain names and work titles), as well as on trademarks with a reputation. Previously, the owners of such rights were forced to bring cancellation claims against conflicting trademarks before the ordinary courts.
2. Acceleration of appeal proceedings:
After receiving a negative decision from the GPTO it will in future be possible to choose whether to first file a request for reconsideration by a senior examiner at the GPTO (“Erinnerung”) or whether to immediately file an appeal (“Beschwerde”) with the Federal Patent Court, thus accelerating the appeal proceedings.
III. EMPLOYEES' INVENTIONS ACT:
In future, a so-called “claiming fiction” will apply according to which an employee’s invention shall automatically be transferred to the employer four months after notification unless the latter has previously released the invention to the employee.
The World Intellectual Property Organization, WIPO, has announced that revised fees for international trade mark applications designating the European Community under the Madrid Protocol will take effect on 12 August. The fee changes follow the introduction of a 40% reduction in Community trade mark fees on 1 May. WIPO has announced that the new fee for an International Application designating the EC (three classes), will be 1,311 Swiss Francs (currently 2,229 Swiss Francs).
Vossius & Partner achieved revocation of European Patent 0619321 of Affymax. It was particularly directed to Microarrays for analysis of polypeptide or amino acid sequences. The claimed invention covers so-called chips where upon vast amounts of DNA or peptide sequences can be synthesized on pre-defined locations at high density. The patent was thus also referred to as the „Density Patent“. Such devices allow high-throughput screening of protein or nucleic acid specimens for binding activities. The invention is primarily used for expression profiling or to detect genetically determined disease. In 2006 the inventors had been awarded Inventor’s of the Year by the European Patent Office. The Patent has now been revoked in its entirety.
For more information please contact info@vossiusandpartner.com (reference D2356 EP/OPP S5).
Vossius & Partner achieved revocation of European Patent 1054722. It was directed to a diesel exhaust purification system and method. The Patent is considered a key patent for technologies fulfilling the most recent and strict European and US exhaust gas emission standards. The Patent has now been revoked in its entirety.
For more information please contact info@vossiusandpartner.com (reference G5430 EP/OPP S5).
In its "Timeshifting" decision, the OLG Düsseldorf followed the example of an earlier decision of the BGH [Federal Court of Justice] (BGH judgment dated February 18, 1975, GRUR [official journal of the association for the protection of industrial property and copyright] 1975, 425 – "Metronidazole") and regarded equivalent patent infringement as also coming into consideration when the replacement means as such was still unknown at the priority date. While for answering the question of equivalent patent infringement the BGH considered it decisive whether the replacement means was producible for the person skilled in the art at the priority time, it is sufficient according to the decision of the OLG that the replacement means was provided by the further advance of the technical progress and that the modification "just fell into the lap" of the person skilled in the art on account of this general technical progress so that its use having objectively the same effect was recognizable to the person skilled in the art without further creative consideration. Under such circumstances, the fact that the equivalence requirements of obviousness on the basis of the technical teaching of the claim are fulfilled on the assumption that the replacement means (which actually became available only later) had already been known to the person skilled in the art at the priority date is sufficient for the incorporation of the equivalents in the scope of protection. However, there is no general postponement of the evaluation time of equivalent patent infringement from the priority date to the infringement date.
The judgment of January 14, 2009 was published in InstGE [decisions of the regional and higher regional courts on intellectual property right] 10, 198. Please do not hesitate to contact us if any questions arise or further information is required.
At the meeting of the Administrative Council of the EPO on March 25, 2009 several changes were decided on. The most important changes which will come into force on April 1, 2010 relate to the right to file divisional applications and the consideration of the Written Opinions and International Preliminary Reports on Patentability in the EP proceedings.
1. New deadline for filing divisional applications (rule 36(1) and (2) EPC)
Effective April 1, 2010, the EPO distinguishes between so-called voluntary divisional applications which are filed on the applicant's own initiative and so-called mandatory divisional applications which are filed in response to a non-unity objection.
As of April 1, 2010, voluntary divisional applications will need to be filed within a period of 24 months from the first communication pursuant to Article 94(3) EPC which is issued by the examining division in respect of the parent application. If a divisional application has already been filed, the two year limit will run from the first communication which is issued in any of the family of applications.
Mandatory divisional applications will have to be filed within 24 months from the communication pursuant to Article 94(3) EPC in which the specific unity objection is raised by the examining division for the first time.
Since the divisional application has to be filed while the parent application is still pending, it must be filed at the latest one day before the grant of the parent application is published even if the 24 month time limit were to expire later.
The rule change will apply to all divisional applications filed on or after April 1, 2010. If the 24 month time limits have expired before April 1, 2010, a divisional application may still be filed within six months of that date. If they are still running on April 1, 2010, they will continue to do so for not less than six months. Further processing has been excluded for the new time limits for filing a divisional application.
We therefore recommend to review all pending EP applications for subject matter which needs to be prosecuted in a divisional application. If you are considering filing a divisional application in one or more of your applications, please inform us accordingly. We will then remind you in due time.
The new rules and the transitional provisions may be downloaded from Linktext
2. Mandatory response to the Communication pursuant to Rule 161 EPC
Present Rule 161 EPC stipulates that the applicant in a EURO-PCT application may file an amendment to the application, in particular amended claims, before the actual examination starts at the EPO. It is not necessary to respond or comment on any objections that were raised in the international proceedings. In contrast, according to new Rule 161 EPC it will be mandatory to address the objections which were raised in a written opinion or International Preliminary Report on Patentability if they were issued by the EPO. If the applicant does not comply with this new requirement the application shall be considered withdrawn.
This new stipulation applies to all EURO-PCT applications in which the Communication pursuant to Rule 161 EPC is issued on or after April 1, 2010. However, since the deadline for responding to this communication is only one month and can not be extended, we recommend to prepare the arguments and comments in due time before the regional phase is entered in Europe.
The Office for Harmonization in the Internal Market (OHIM) recently announced a consider¬able fee reduction for Community trademarks as of May 1, 2009. This move will make the Community trademark, which enjoys protection in all 27 Member States of the EU, even more attractive than previously.
Following this announcement, Vossius & Partner have decided to likewise considerably reduce their attorney fees for Community trademarks with immediate effect. The total fees (Official and attorney fees) for a Community trademark filed through Vossius & Partner will thus be reduced by nearly 40%.
For further information, please contact our Trademark and Design Department at trademarks@vossiusandpartner.com.
Effective from April 1, 2009 the EPO will change the structure of the claims fee, the excess page fee and the designation fee.
Claims fee
The claims fees will be calculated as follows:
Claims 1 to 15 No fee
Claims 16 to 50 200,00 EUR per claim
Claims 51 and subsequent claims 500,00 EUR per claim
Excess page fee
For all applications filed before April 1, 2009 an excess page fee had to be paid at grant, if the application included more than 35 pages. This fee will no longer be applicable for applications filed on or after April 1, 2009. Instead an excess page fee amounting to 12,00 EUR for the 36th and each subsequent page will be due at filing or on entry to the regional phase, respectively. Pages forming a sequence listing which complies with WIPO Standard ST.25 are not counted.
Designation fee
A single designation fee of 500,00 EUR will replace the existing designation fees of 85,00 EUR for each designated EPC state. For applicants who currently pay the maximum 7 designation fees (595,00 EUR), the new fee will result in a small saving.
Applicability of the new fee schedule
The new fees will apply to European patent applications filed on or after April 1, 2009 and international applications which enter the regional phase on or after that date. For a divisional application lodged at the EPO on or after April 1, 2009, the new fees will apply regardless of the effective filing date derived from the parent application.
If the 30-month time limit expires on or after April 1, 2009 early processing must be requested if you wish to enter the regional phase before April 1, 2009 in order to benefit from the reduced costs.
If you are planning to file a new European patent application, to enter a European regional phase or to file a divisional application which has a large number of claims (over 50) and/or significantly more than 35 pages, we would suggest filing before April 1, 2009 in order to avoid the increased fees.
Recently, the grounds of the judgment rendered by the Federal Supreme Court (BGH) in the nullity proceedings “Olanzapine” (file no. X ZR 89/07, to be accessed via http://www.bundesgerichtshof.de) have been presented. The judgment deals with the definition of novelty pursuant to Section 3 Patent Act and, thus, is of high importance not only to inventions in the field of chemistry, but to patent law in its entirety.
In the first instance, the Federal Patent Court had declared the patent null and void for lack of novelty. The Court based its finding on the Federal Supreme Court’s jurisdiction in its decision “Fluorane”, GRUR 1988, 447, which so far had been considered established case law. It is true that in this decision, the BGH made it clear that the fact that a chemical compound is encompassed by a prepublished formula is not significant to the question of novelty as such. The only issue that is stated to be relevant, however, is the question whether the indications made in a prior publication with respect to a chemical compound will enable an expert without further ado to put the invention relating to this chemical compound into practice, i.e. to get hold of the substance in question. In the Fluorane case, the BGH answered this question with respect to the disclosure content of the citation in the affirmative, although the claimed compound was not mentioned therein as an individual compound.
The European Patent Office, on the other hand, has long been of the opinion that only those technical teachings which disclose a substance as the inevitable result of a predescribed process or in a specific, i.e. individualized manner are detrimental to novelty (cf. e.g. GRUR Int. 1989, 226, 227 – Xanthines/DRACO). Now, as regards “Olanzapine”, the BGH considers itself – as the Court itself states in the grounds of the decision – “essentially in line” with the jurisdiction of the Boards of Appeal at the EPO.
It is true that with reference to “Fluorane”, the following is again stated in the BGH judgment “Olanzapine”:
“Therefore, the fact that a chemical compound is encompassed by a pre-published formula is irrelevant to the disclosure of the specific compound in the same way as the fact that the specific embodiment of a device is encompassed by the general terms of a device claim is irrelevant to the disclosure of this specific embodiment […]. Rather, what is decisive is whether the specific compound is disclosed. For this purpose, indications have to be contained which enable the skilled person without further ado to put the invention relating to this specific chemical compound into practice, i.e. to get hold of the respective substance […]”.
At the same time, however, it is confirmed with reference to the BGH judgment “Elektrische Steckverbindung”, GRUR 1995, 330, that the aim of extending the scope of disclosure which is prejudicial to novelty beyond the “literal wording” is not to supplement the disclosure by the technical knowledge, but to determine the meaning of the disclosure. Accordingly, with reference to the BGH judgment “Schmierfettzusammensetzung”, GRUR 2000, 296, “the skilled person’s ability to prepare a more or less large number of individual compounds which are encompassed by a disclosed structural formula by means of known processes or else using his technical knowledge must not be equated with the disclosure of these individual compounds. […] In order to “make them available” to the skilled person, as a rule more detailed information, in particular with respect to their individualization, is required”.
From the above it can be concluded that a prior publication disclosing a general structural formula may only be detrimental to the novelty of an individual compound encompassed by this structural formula if the prior publication contains a hint to the specific compound, so that the skilled person will “implicitly read” this specific compound “between the lines” due to the indications made in the prior publication, but that it cannot be detrimental to novelty if he has to make use of his technical knowledge in order to fill gaps in the disclosure of the prior publication.
Even though, in its third guideline, the BGH refers to a “continuation” of Fluorane, it rather seems that with Olanzapine the BGH turns away from the latter and approaches the jurisdiction of the Boards of Appeal at the European Patent Office.
In Fluorane, novelty of a claimed specific compound was considered anticipated by prior publication of a general formula comprising four variables in combination with its definition in the description, although it had not been explicitly mentioned.
Moreover – as stated in the present “Olanzapine” judgment – in Fluorane, the Senate “considered itself bound to the finding of the Patent Court […] according to which due to the general formula, almost 2000 individual compounds encompassed by the respective formula would be disclosed to the skilled person in an enabling manner”. With respect to Fluorane, the BGH however now decided not to be bound by the factual finding of the Patent Court ruling that: “This finding is not maintained under the present law”.
In Olanzapine, a prior publication (K4) had disclosed a general formula comprising only two variables, the meaning of which, however, had not clearly been defined but was supplemented by definitions taken from a Table by the Patent Court. The BGH objected to this way of proceeding as being “beyond the disclosure content” and considered the disclosure as not being detrimental to novelty in the same way as the disclosure of the prepublished basic patent by the same owner, the broad general formula of which encompasses Olanzapine, which, however, in the Federal Supreme Court’s point of view does not alter the fact that “the compound as such is not disclosed but is only obtained” if a number of meanings of substituents are combined, is not detrimental to novelty. Thus, the disclosure lacks “individualization” which in the jurisdiction of the Boards of Appeal at the EPO had always been the prerequisite for a prior publication to be detrimental to novelty and now is also considered essential to this end by the BGH.
The guidelines of the decision Olanzapine read as follows:
EPC Art. 54; Patent Act Section 3
I. The assessment whether novelty of the subject matter of a patent is anticipated by prior publication requires the evaluation of the whole content of the prior publication. What is decisive is which technical information is disclosed to the person skilled in the art. The definition of the disclosure does not differ from the one conventionally taken as a basis in patent law (continuation of the judgment rendered by the Senate on December 16, 2003 – X ZR 206/98, GRUR 2004, 407 – Fahrzeugleitsystem).
II. Subject matter that is not explicitly mentioned in the claim and in the description, but is self-evident from an expert’s point of view in order to put the protected teaching into practice and, thus, does not require any specific disclosure but is “implicitly read between the lines” can also be disclosed. However, the inclusion of self-evident subject matter does not permit to supplement the disclosure by the technical knowledge, but, by analogy with the evaluation of the literal sense of a patent claim, merely serves to completely evaluate the meaning, i.e. the technical information the skilled reader gathers from the source against the background of his technical knowledge (continuation of BGHZ 128, 270 – Elektrische Steckverbindung).
III. Basically, if a chemical structural formula is disclosed, the individual compounds encompassed by this formula are not disclosed yet (continuation of BGHZ 103, 150 – Fluorane).
The EU-Enforcement Directive 2004/48/EG and the elimination of the translation requirement by the London Protocol have both been implemented into German law by the "Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums" ("Law on the enhanced enforcement of intellectual property rights"), promulgated on July 11, 2008.
With promulgation of the law, the translation requirement for European Patents has been abolished retroactively as of May 1, 2008. European Patents for which the mention of the grant of patent was published on or after May 1, 2008, do not have to be translated into the German language anymore.
The provisions implementing the EU-Enforcement Directive that was meant to harmonize essential measures, procedures and remedies concerning the infringement of intellectual property rights, will not enter into force until September 1, 2008. This is particularly true for the amendments of the German patent, trademark and design acts.
With its decision re: adidas/Marca Mode et al. of April 10, 2008 in Case C-102/07, the European Court of Justice (ECJ) has again brought the interpretation of trademark law in Europe significantly forward in a number of important aspects. In several cases of trademark conflicts with adidas, Marca Mode and other companies had claimed that stripe motifs other than that registered for adidas must remain available for all economic operators, and that stripe motifs on garments were moreover purely decorative in nature. The ECJ held that the availability criterion was not a relevant factor neither when assessing a likelihood of confusion nor within the context of the enhanced protection of trademarks with a reputation. Furthermore, the competitors of adidas could not rely on the mere decorative character of stripe motifs within the context of Article 6 (1) (b) of the Harmonization Directive (Limitations of the effects of a trademark), because “decorative nature” was not a descriptive indication as provided in Article 6 (1) (b). As a result, other companies cannot rely vis-à-vis adidas on the requirement of free availability or on the purely decorative nature of stripe signs, provided that a likelihood of confusion or a conflict with a trademark with a reputation exists.
Pursuant to Article 4 CDR a design can only be protected as a community design to the extent that it is new and has individual character. A design shall not be considered new if an identical design has been made available to the public (disclosed) before.
A recent decision of the Third Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) confirms the general view that also disclosure outside the European Union, for example in China, can be detrimental to novelty of an European design. OHIM argues that in such a case it is not necessary that the design in question has actually been placed on the market in Europe or elsewhere, but that it can be sufficient if the design has e.g. been exhibited at an important trade fair in China or has been promoted in the Chinese specialized press. The only requirement is that the design in question could have become known to the specialized trade circles within the European Community in the normal course of business. In view of the increased volume of trade between Europe and China, the Board of Appeal assumed in the present case that EU designers, manufacturers, importers and distributors of kitchen appliances are well aware of kitchen products disclosed in China.
Although the decision only refers to the design of kitchen appliances, it can be assumed that this legal practice will be extended to other product groups. The Chinese market in particular is an important place of production for many technical devices and thus is thoroughly observed by the specialized circles operating within the European Union. For this reason it is increasingly important especially for international companies to protect their designs at an early stage and to keep good record of their first publication in order to guarantee that a subsequent application is in any case filed within the 12-months grace period.
At 6.30 pm on 16 January 2008, after the oral proceedings in the Opposition Proceedings, the European Patent Office revoked patent EP-B1 0 639 228 with the title “DNA Typing with short tandem repeat polymorphisms and identification of polymorphic short tandem repeats”, which was filed by the Baylor College of Medicine in 1992 and is exclusively licensed to Promega USA.
The revoked EP patent was to protect a PCR-based profiling assay during which so-called short tandem repeats (STR) are amplified. The STRs according to the invention were repetitive DNA sequences with the repeat unit consisting of four nucleotides. These nucleotides are located in specific loci in the genome of every human being. Every human being has two copies of one locus. When examining several loci, the common origin of two samples of an individual can be tested with an extremely high statistical significance. The test is used by the FBI and the German Federal Criminal Police Office, amongst others, for the so-called genetic finger printing. A further area of use is paternity diagnostics.
In 2006, opposition was filed against the patent EP-B1 0 639 228 based on lack of novelty and lack of inventive step. With intermediate notice before the oral proceedings, the Opposition Division stated that the granted patent was not considered new. The exclusive licensee, Promega, USA, filed more than six auxiliary requests. In the written proceedings and in the oral proceedings, the patent attorneys Hans-Rainer Jaenichen and Christian Kilger succeeded in convincing the Opposition Division that none of the requests is patentable.
Thus, the patent has been revoked in its entirety.
France has deposited the instrument of ratification with the German Ministry of Justice on January 29, 2008.
The London Agreement will thus enter into force on May 1, 2008.
For more information please visit the EPO homepage or feel free to contact us.
On January 1, 2008, the accession by the European Community to the Hague International Design System became effective. The European Community had submitted its instrument of accession to WIPO on September 24, 2007.
Applicants and designers from the European Union will now be able to obtain design protection by one single application not only for the European Union, but for all the member states of the Geneva Act of the Hague Agreement, in a simple, effective and economic way.
Meanwhile also the accession of the U.S.A. is drawing nearer: On December 7, 2007 the US Senate approved the ratification of the Hague Agreement so that President Bush is expected to sign the instrument of ratification in the near future.
In its decision in Case C-234/06 P – Il Ponte Finanziaria (Bainbridge) of September 13, 2007, the European Court of Justice (ECJ) clarified some important questions concerning direct as well as indirect likelihood of confusion (trademark series) between trademarks. Where direct likelihood of confusion is concerned, the Court held that the assessment of any aural similarity was but one of the relevant factors for the purpose of global assessment. If, when making a purchase, the relevant public usually perceived visually the mark designating the goods (in this case: clothing and leather articles) the degree of aural similarity between the marks could be of less importance. Where mere phonetic similarity between two signs was established there was not necessarily a likelihood of confusion (para. 35 and 36). As regards an indirect likelihood of confusion, the ECJ stated that the opponent could successfully claim a series or family of marks only if a sufficient number of trademarks capable of constituting a family or a series was actually in use, and that the competent court was entitled to require the necessary proof (para. 64 and 65). Both findings should lead to an adjustment of the German case-law.
OHIM recently announced a number of changes of Office practice, aimed at simplifying and accelerating the opposition proceedings.
Admissibility check: (1) In future, oppositions will be considered admissible if the admissibility criteria are complied with at least for one of the earlier rights on which the opposition is based. (2) In order to indicate the goods and services of the earlier rights on which the opposition is based, it will be sufficient for admissibility purposes to state the relevant class number(s). By these amendments, the Office intends to process oppositions more quickly in the early stages of the proceedings.
Adversarial proceedings: (1) In case an opposition or CTM application is withdrawn during the adversarial part of the opposition proceedings, OHIM will in future issue the cost decision together with the confirmation of withdrawal, to avoid the necessity of awaiting a separate cost decision. (2) Joint requests for suspension of the opposition proceedings during negotiations will be granted on similar lines as joint applications to extend the cooling off period, i.e. the second request for suspension will be granted for the period of one year, with the possibility of opting out.
The changes entered into force on September 17, 2007.
In two landmark and final decisions of September 20, 2007, the German Federal Supreme Court (FSC) rejected infringement claims the chocolate manufacturer Ferrero had brought, based on several “Kinder” trademarks which were registered together with additional graphical elements and/or in colour, against its competitors Haribo (for use of the trademark “Kinder Kram”) and Zott (for use of the sign “Kinderzeit”). In both cases the reason for refusing Ferrero’s claims was the same: The word element “Kinder” (“kids”) was not per se registrable for chocolate, since it merely designated the customers, namely kids. When taking into consideration the graphical elements of the plaintiff’s marks, there was no similarity between those trademarks and the competitor’s marks. It seems that Ferrero was not able to successfully claim that the “Kinder” trademarks are well-known in Germany. The two decisions, which have not yet been published in full, could have considerable impact on pending or future cases with a similar background. In particular it is to be expected that registrability aspects will receive more emphasis in future in trademark opposition and infringement cases. Case numbers of the FSC: I ZR 6/05 and I ZR 94/04. Further information can be found under www.bundesgerichtshof.de, Pressemitteilung (press release) No. 132/2007.
On August 7, 2007 the Technical Board of Appeal 3.3.05 of the European Patent Office revoked the patent EP 1 013 342 B1 in full for lack of novelty in opposition-appeal proceedings (T 0868/06) in which the Attorneys Christian Kilger and Dieter Heunemann from the Berlin Office of Vossius & Partner represented three clients which had previously been sued under this patent for patent infringement before the Düsseldorf District Court. These clients intervened during the appeal which had been launched be another party.
In the mid nineties, motorized PCR-machines were first developed in order to cope with the necessity of automating processes such as the polymerase chain reaction and sequencing, techniques which were used for determining the human genome sequence. Thereafter, these automated machines were indispensable for all high throughput applications.
The patent claimed a thermocycler apparatus for chemical and/or biological reactions with a cover for closing a base body, a locking mechanism and an electrically activatable positioner, arranged so that the cover may be urged against reaction vessels. Numerous companies in Germany and Europe had been sued for patent infringement. The revocation of the European patent allows the companies concerned to offer automated high pressure lids for PCR devices again and to revive the competition in this market. It is more than likely that Applera Corporation USA will now withdraw all pending patent infringement suits based on this patent.
On June 28, 2007, the Enlarged Board of Appeal of the EPO finally decided on the various questions referred to it with respect to the filing and content of Divisional applications. In brief, the established practice of the EPO is confirmed and the recent deviating decisions of various Technical Boards of Appeal are disapproved.
The Australian High Court has given its first detailed consideration to the issue of inventive step under the "new" Patents Act 1990.
In what is arguably the most important patent case to come out of Australia for many years, the High Court adopted a firmly pro-patent position which will shape Australian patent law for many years to come. A detailed discussion of the case provided by our colleague Bill Bennett of Pizzeys, Patent & Trade Mark Attorneys, Australia, is attached in pdf format.
The Norwegian parliament decided to accede to the European Patent Convention as of January 1, 2008
On May 21, 2007, the EU Council chaired by German Federal Minister of Justice Brigitte Zypries adopted a decision to reduce the fees of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) as soon as possible. Considering the ten-year success story of the Community trademark system far exceeding expectations and leading to a substantial revenue surplus, the European Commission was called upon to immediately propose a reduction of the fees charged by OHIM, in particular of the fees for the application, registration and renewal of Community trademarks.
News on further progress in this matter will be placed at this site when available.
In 2000 Lindt, the well-known Swiss manufacturer of high-quality chocolate products, registered the form of a sitting chocolate Easter bunny as a 3-D Community trademark. The bunny was wrapped in golden foil with the imprint “Lindt GOLDHASE” and wearing a red collar with a ribbon and a little golden bell.
When Riegelein, a German producer of confectionery, also manufactured and distributed a sitting chocolate Easter bunny wrapped in golden foil with the imprint “RIEGELEIN CONFISERIE” and wearing an imprinted brown-red ribbon, Lindt claimed that this bunny infringed its 3-D Community trademark.
The Regional Court as well as the Appeal Instance, the Higher Regional Court however, rejected Lindt’s claims, arguing that there was no likelihood of confusion. Both Courts claimed that the word element “Lindt GOLDHASE” dominated the overall impression of the 3-D trademark so that the differing word element “RIEGELEIN CONFISERIE” would lead to a sufficient distance between the marks, allowing the relevant consumers to distinguish between the golden Easter bunnies.
Upon Lindt`s further appeal the decision was reversed by the Federal Supreme Court and the matter was referred back to the Higher Regional Court.
The Federal Supreme Court objected to the findings of the Higher Regional Court and argued that it could not be assumed that the pictorial overall impression of the Lindt bunny was dominated by the word element “Lindt GOLDHASE” alone. The Court held that also the shape and colour had to be taken into account when examining the overall impression conveyed by a 3-D trademark – unless such features were of no relevance in comparison to existing word elements.
In the present case the Federal Supreme Court held that the “sitting rabbit” shape and golden colour of the bunny had not sufficiently been taken into consideration. Furthermore, it had been neglected that the features of the red collar with ribbon and golden bell provided a high degree of distinctiveness to the 3-D trademark, thus influencing the figurative overall impression conveyed by the “Lindt” Easter bunny.
Now it will remain to be seen whether the Lindt Easter bunny will continue to be the only golden chocolate rabbit being hidden at Easter time…
Decision of October 26, 2006 – I ZR 37/04
On 1 December 2006, the Government of the Republic of Malta (MT) deposited its instrument of accession to the European Patent Convention (EPC) and to the Act revising the EPC of 29 November 2000 (Revision Act).
On 1 December 2006, Malta deposited its instrument of accession to the PCT which will enter into force for Malta on 1 March 2007.
On August 30, 2006, the Technical Board of Appeal 3.2.04 of the EPO revoked the Patent EP 0 904 717 in full for lack of inventive step in opposition-appeal proceedings (T 0452/05) in which Vossius & Partner represented one of the Opponents. Ever since the launch of the well known "Senseo"-machine of Philips and Sara Lee on the market in 2002, millions of this machine have been sold. The machine uses "coffee pouches", that is to say coffee-filled pads in pre-portioned amounts and individually packaged in filter paper. Sara Lee tried to monopolize this "coffee pouch" market by its European Patent EP 0 904 717. The Patent claimed an "assembly" comprising a filter container and a matching "coffee pouch". In previous proceedings, the Regional Court of Düsseldorf had completely prohibited numerous coffee roasting companies from marketing any kind of these allegedly matching "coffee pouches", finding for contributory patent infringement. Vossius & Partner succeeded in subsequent appeal and preliminary injunction proceedings in having this total prohibition lifted for a renowned well-established company to the effect that the "coffee pouches" could be sold for alternative uses (for instance for applications in machines with sieves). The revocation of the European Patent allows the companies concerned to offer their coffee pouches again and to revive the competition on this market. Sara Lee has now also withdrawn its patent infringement suit.
The ECJ decided that Art. 6 (1) Council Regulation (EC) No. 44/2001 does not apply in European patent infringement proceedings.
The ECJ decision will bring an end to cross border patent infringement proceedings because as soon as the invalidity of the patent is invoked within an infringement case the infringement court would have to declare of its own motion not to have jurisdiction with regard to infringement/validity of a foreign patent.
The recent Case Law of the EPO shows substantial uncertainties in connection with the validity and the contents of Divisional Applications. Vossius & Partner explains.
by Dr. Paul Tauchner and Dr. Niels Hölder