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Patent Attorney Axel H Horns' Blog on Intellectual Property Law.

 

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Wednesday, June 18, 2008

 

Oberlandesgericht Düsseldorf: A Bitter Row with Federal Patents Court Over Patent Validity?

On May 29, 2008, EXTERNAL LINKIPEG Blog had EXTERNAL LINKreported on a quite strange decision of Düsseldorf Appeal Court (Oberlandesgericht Düsseldorf):
"[...] The Düsseldorf Appeal Court sets new standards in enforcement of patents of pharmaceutical companies against generic manufacturers by granting a preliminary injunction although the patent has been invalidated in first instance by the Federal Patent Court, in Germany the exclusive court having jurisdiction in patent validity disputes.

The case concerns a patent of Eli Lilly (EP 0 454 436, for Lilly's product Zyprexa) which was declared invalid by the Federal Patent Court in first instance by decision of 4 June 2007. Eli Lilly filed an appeal against this decision to the Federal Supreme Court. After the first instance court decision of the Federal Patent Court generic companies started to distribute generic products falling under the Eli Lilly patent in Germany. [...]"
And, a reader of that blog had issued therupon a quite heated comment, arguing that the Duesseldorf District Appeal Court OLG, with no jurisdiction to consider validity and no scientific education, nevertheless had concluded that the Federal Patents Court BPatG was wrong to find the asserted claim invalid.

Now I've seen the EXTERNAL LINKfull text of that decision (I-2 W 47/07). Well, I'm not so sure that this Decision indeed will set any new standards. The judges wrote:
"[...] Auch wenn es keine festen Anforderungen an die Rechtsbeständigkeit gibt, kann sie im allgemeinen nur dann als ausreichend gesichert angesehen werden, wenn die Patentfähigkeit des Antragsschutzrechtes bereits in einem kontradiktorischen Verfahren zumindest durch eine erstinstanzliche Entscheidung anerkannt worden ist. Dagegen wird ein Verfügungsgrund in aller Regel zu verneinen sein, wenn der in einem Einspruchs- oder Nichtigkeitsverfahren (die nachstehend erörterten Grunds&aul;tze gelten in beiden Fällen) entgegengehaltene Stand der Technik beim Verletzungsgericht so starke Zweifel an der Schutzfähigkeit hat aufkommen lassen, dass in einem entsprechenden Hauptsacheverfahren die Verhandlung im Verletzungsrechtsstreit nach § 148 ZPO ausgesetzt werden müsste, um die Entscheidung ¨ber den gegen das Antragsschutzrecht eingelegten Rechtsbehelf abzuwarten. Erst recht gilt das, wenn schon eine erstinstanzliche Entscheidung ergangen ist, die das Patent für nichtig erklärt hat. Auch wenn nach einem solchen Urteil die aus der Erteilung des Schutzrechtes folgende Tatbestandswirkung fortbesteht, bis die Entscheidung in Rechtskraft erwächst, rechtfertigt die von einer sachkundig besetzten und zur Bewertung der Schutzfähigkeit berufenen Instanz getroffene Entscheidung regelmäßig so weitgehende Zweifel an der Rechtsbeständigkeit des Antragsschutzrechtes, dass im Hauptsacheverfahren eine Aussetzungsanordnung geboten ist und dementsprechend auch im Verfügungsverfahren keine Unterlassungsansprüche mehr durchgesetzt werden können, so lange die erstinstanzliche Nichtigkeitsentscheidung Bestand hat. Der Verletzungsrichter, der die begehrte einstweilige Unterlassungsverfügung dennoch erlässt, müsste sich über die sachkundige Beurteilung aus dem Nichtigkeitsverfahren hinweg- und seine eigene Einschätzung an deren Stelle setzen. Das verbietet sich regelmäßig schon deshalb, weil damit - rein faktisch - eine Überprüfung von Nichtigkeitserklärungen des Bundespatentgerichts durch das Verletzungsgericht verbunden wäre, die - wie das Landgericht im angefochtenen Beschluss im Grundsatz zutreffend ausgeführt hat - dem vom Gesetzgeber im Nichtigkeitsberufungsverfahren eingerichteten Instanzenzug und der damit vorgenommenen Kompetenzzuweisung zugunsten des Bundesgerichtshofs zuwider laufen würde. Wer als Schutzrechtsinhaber Verletzer im Wege der einstweiligen Verfügung auf Unterlassung in Anspruch nehmen will, kann dies deshalb grundsätzlich nur tun, wenn er im Wege der Einspruchsbeschwerde oder der Nichtigkeitsberufung die zu seinen Ungunsten ergangene Entscheidung mit Erfolg zu Fall gebracht hat. [...]"
I won't give a full translation now - in the essence, the judges of the Düsseldorf Court (OLG) are simply saying that, as a general rule, the judges in an infringement suit should not dare to override a decision of the Federal Patents Court in a Nullity or Opposition case. So far they absolutely comply with the German tradition of practising patent law.

But - what has happened in this particular case?

The Düsseldorf judges continue:
"[...] Eine Ausnahme von dem prinzipiellen Vorrang der erstinstanzlichen Einspruchs- oder Nichtigkeitsentscheidung ist von Verfassungs wegen (Art. 2 Abs. 1 GG i.V.m. dem Rechtsstaatsprinzip) allerdings dort zwingend geboten, wo der Widerruf oder die Nichtigerklärung evident unrichtig ist und das selbst nicht fachkundig besetzte Verletzungsgericht diese Unrichtigkeit verlässlich erkennen kann, weil ihm die auftretenden technischen Fragen in Anbetracht des Sachvortrages der Parteien zugänglich sind und von ihm auf der Grundlage ausreichender Erfahrung in der Beurteilung technischer und patentrechtlicher Sachverhalte abschließend beantwortet werden können. [...]"
They are citing the German consitution, arguing that an infringement Court shall be free to ignore a prior decision of the Federal Patents Court if that decision was evidently incorrect, provided that this can clearly be recognised by the infringement Court on the basis of the presentation of facts and evidence as presented by the parties and also on the basis of the judge's own experiences in assessing technical matters. And:
"[...] Es ist jedoch mit Sicherheit zu erwarten, dass das Nichtigkeitsurteil im Berufungsverfahren keinen Bestand haben wird, wobei es nicht einmal darauf ankommt, dass die Beweislast für den mangelnden Rechtsbestand des Verfügungspatents bei den Nichtigkeitsklägerinnen liegt, weshalb jeder Zweifel darüber, ob der Stand der Technik die patentgeschützte Verbindung offenbart oder nahegelegt hat, zur Abweisung der Nichtigkeitsklage und zur Aufrechterhaltung des Verfügungspatents führt (vgl. BGH GRUR 1984, 339, 340 - Überlappungsnaht; Mitt 1999 362 - Herzklappenprothese). Denn die im Verfahren befindlichen Entgegenhaltungen lassen die sichere Feststellung zu, dass die Verbindung Olanzapin für einen Durchschnittsfachmann nur mit Hilfe erfinderischer Überlegungen aufzufinden war. [...]"
Hence, the Düsseldorf judges have concluded that, in this very particular case and only in view of the very particular mertis of the case, the Federal Patents Court must have been wrong, and they think that it is for sure that there is novelty and inventive step for the claims asserted.

What follows is a lengthy discussion of the reasons given by the Federal Patents Court. Step by step the Düsseldorf judges are presenting arguments in order to demonstrate that the decision of the Federal Patents Court must not only be wrong, but is evidently wrong from its very basic assumptions about the subject-matter as claimed in relation to prior art in the light of applicable case law.

As I am not a chemist, I'll refrain from commenting the technical aspect of the dispute here.

Obviously the Düsseldorf judges are playing at high stakes; if their arguing should finally be disproved by the Federal Supreme Court (Bundesgerichtshof, BGH) they might have made fools of themselves. And, I do not expect that many other judges sitting over infringement cases will be encouraged to go the same way: The risks to be confuted are immense. I am inclined to say that this case is a singularity, a very rare exception from the German way of separating the infringement judgement, on the one hand, from the validity judgement, on the other hand. I don't believe that it represents any shift of paradigms. In its essence the row appears to be something like a serious dispute among judges ow two Courts on the correct interpreatation of a particular piece of prior art within a legal framework set by case law of the Federal Supreme Court.

Maybe that in this particular case the judges had felt that they indeed had obtained an outstanding technical understanding of the subject-matter in question, resulting in a belief to the effect that it was their duty to stand up against some arguing of the Federal Patents Court that in their view could not be left unchallenged.

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Tuesday, June 10, 2008

 

Ms Neelie Kroes: "Standards Are The Foundation Of Interoperability".

EXTERNAL LINKMs Neelie Kroes, European Commissioner for Competition Policy: "Being open about standards" at the occasion of the EXTERNAL LINKOpenForum Europe - Breakfast seminar, Brussels, 10th June 2008:

"[...] Standards are the foundation of interoperability.

Standards may, of course, be proprietary or non-proprietary. Much excellent technical development has been driven by non-proprietary standards - the internet is awash with acronyms for non-proprietary standards: HTTP, HTML and XML.

Many standards bodies express a preference for non-proprietary standards. Non-proprietary standards avoid the need for licence agreements and royalties. They avoid the need to ask permission if you want to use or develop the technology - follow-on innovation may be easier. They avoid subjecting the future development of the standard and the technology to the commercial interests of the technology's originator.

Of course, proprietary technology development is vital to reward R&D investment and innovation that would otherwise not be made. The patent system is a tremendously effective mechanism to create incentives to innovate, and reward successful innovation.

Proprietary technology is at the heart of Europe's success in second and third generation mobile technologies, for example. Intellectual property protection for technology will always be necessary to give just rewards for investment in R&D. There will always be an important place for proprietary technology and formal proprietary standards.

Standards may also emerge, de facto, from markets: a particular operating system for example, or a particular document format.

Standards emerging from the market can be a good thing if they emerge as a response to consumers' expressed preferences. But they may also be problematic, having none of the safeguards of disclosure that standards bodies typically require.

The patent system, too, has some inherent safeguards:
  • Disclosure: helps avoid unintentional infringements, and makes it easier to innovate around the patent.
  • In some exceptional circumstances, patent systems even provide for compulsory licensing.
  • And of course, patents are limited in time.
However, it is now common to hear criticism of how the patent system is used:
  • There are so many patents, whose scope is sometimes less than crystal clear, that it can be harder to know what patents read on a particular technology.
  • There are also concerns that patents are now often used strategically and no longer primarily to protect innovation.
In addition, the growing importance of software means that copyright and, in particular, trade secret protection is often just as important as patents, if not more so, in technology markets. But:
  • Laws on copyright and trade secrets rightly do not require disclosure of software source code before protection is granted.
  • Trade secrets are not limited in time - and in effect, as far as technology is concerned, neither is copyright.
  • And of course copyrights and trade secrets may not be technologically innovative.
Where interoperability information is protected as a trade secret, there may be a lot of truth in the saying that the information is valuable because it is secret, rather than being secret because it is valuable.

This raises the possibility of perpetual exclusion, based on technology which is not even innovative.

Clearly we can do better.

Having worked in business for much of my life, in government for part of it, and now serving as the Commissioner for Competition, these considerations draw me to a simple conclusion.

We need an approach to standards that is based:
  • on evidence;
  • on economics; and
  • on experience.
It is simplistic to assume that because some intellectual property protection is good, that such protection should therefore be absolute in all circumstances.

It is simplistic to assume that because standardisation sometimes brings benefits, more standardisation will bring more benefits.

It is simplistic to assume that if the best approach is sometimes to base a standard on proprietary technology, then that is always the best approach.

And it is simplistic to assume that we can fix on a standard today, without paying attention to the risk of being locked-in tomorrow.

So what does this mean in practice?

First, we should only standardise when there are demonstrable benefits, and we should not rush to standardise on a particular technology too early.

Second, I fail to see the interest of customers in including proprietary technology in standards when there are no clear and demonstrable benefits over non-proprietary alternatives.

Third, standardisation agreements should be based on the merits of the technologies involved. Allowing companies to sit around a table and agree technical developments for their industry is not something that the competition rules would usually allow. So when it is allowed we have to look carefully at how it is done.

If voting in the standard-setting context is influenced less by the technical merits of the technology but rather by side agreements, inducements, package deals, reciprocal agreements, or commercial pressure ... then these risk falling foul of the competition rules.

In addition, if we are to include proprietary technology in a standard, then ex ante disclosure may help those involved make a properly informed decision. Competition law should not stand in the way.

This will almost always entail ex ante disclosure of the existence of essential patents. And it may increasingly entail ex ante disclosure of maximum royalty rates. Both can increase the effectiveness of the standard setting process, lead to more competitive solutions and reduce the risk of later antitrust problems. Standards bodies could very often require disclosure without fear of competition law intervention.

Standards bodies do important work in difficult circumstances. But like all of us their rules need to keep pace with the changing commercial environment. If they need help in tightening up their rules to avoid being manipulated by narrow commercial interests, or to design the right ex ante rules, then they have my support. My door is always open.

Fourth, if we extend intellectual property protection for technology, then we should only do so when it is justified under intellectual property principles, i.e. on the basis of evidence that such extension will lead to more innovations and will therefore promote consumer welfare.

Finally, if standards develop through customer preferences, most of the time, we should do nothing.

That stance may surprise you. But it is often wise to resist the impulse to regulate. If the proprietary technology initially appears to harm consumers more than it helps them, often the market will find a way out of the problem.

Of course, although I am a great believer in the market finding the right result, I am not naive. Sometimes intervention will be necessary.

When a market develops in such a way that a particular proprietary technology becomes a de facto standard, then the owner of that technology may have such power over the market that it can lock-in its customers and exclude its competitors.

Where a technology owner exploits that power, then a competition authority or a regulator may need to intervene. It is far from an ideal situation, but that it is less than ideal does not absolve a competition authority of its obligations to protect the competitive process and consumers.

In essence the competition authority has to recreate the conditions of competition that would have emerged from a properly carried out standardisation process.

There seem to me to be two possibilities and, depending on the case, either or both may be necessary.

First, the de facto standard could be subject to the same requirements as more formal standards:
  • ensuring the disclosure of necessary information allowing interoperability with the standard;
  • ensuring that other market participants get some assurance that the information is complete and accurate, and providing them with some means of redress if it is not;
  • ensuring that the rates charged for such information are fair, and are based on the inherent value of the interoperability information (rather than the information's value as a gatekeeper).
In addition, where equivalent open standards exist, we could also consider requiring the dominant company to support those too.

Better, much better, than trying to sort out these problems, is preventing them from arising. And we all have a responsibility to ensure that this type of perpetual lock-in does not happen, and, where it does happen, we have a responsibility to minimise the damage.

Here I am not speaking of my role as the Competition Commissioner, but as a purchaser of technology.

What can purchasers do? Quite a lot.

Look at Apple. Over the last couple of years there have been some calls to regulate Apple - in particular to ensure some interoperability between competing music stores and its iPod music players, and between competing music players and music from the iTunes store.

The issue arose because first, the music labels insisted that Apple used digital rights management technology, and then second, Apple's iPod was a tremendous success. But now the major labels have licensed other music stores to provide music in MP3 format, a format that can play on the iPod and on other players. So pressure from consumers, and possibly concern from the major labels about over-reliance on Apple, looks to have led to a timely market-based solution.

This is important. If consumers can avoid lock-in to a single vendor, by exercising influence through purchasing behaviour, they may be wise to do so.

As purchasers, we need to be smart when we buy technology. We need to be aware of the long term costs of lock-in: you are often locked-in to subsequent generations of that technology. There can also be spill-over effects where you get locked in to other products and services provided by that vendor.

That is just bad purchasing.

And that is why the Commission has committed that:
  • for all future IT developments and procurement procedures, the Commission shall promote the use of products that support open, well-documented standards. Interoperability is a critical issue for the Commission, and usage of well-established open standards is a key factor to achieve and endorse it.
This policy, adopted last year, needs to be implemented with vigour.

There is much to learn from other public bodies such as Munich - and I am delighted to have the Mayor of Munich here this morning to tell us about his experience. But Munich is not alone: there is also the German Foreign Ministry, and the French Gendarmerie. The Dutch Government and Parliament are also moving towards open standards.

The Commission must do its part. It must not rely on one vendor, it must not accept closed standards, and it must refuse to become locked into a particular technology - jeopardizing maintenance of full control over the information in its possession.

This view is born from a hard headed understanding of how markets work - it is not a call for revolution, but for an intelligent and achievable evolution.

But there is more to this than ensuring our commercial decisions are taken in full knowledge of their long term effects. There is a democratic issue as well.

When open alternatives are available, no citizen or company should be forced or encouraged to use a particular company's technology to access government information.

No citizen or company should be forced or encouraged to choose a closed technology over an open one, through a government having made that choice first.

These democratic principles are important. And an argument is particularly compelling when it is supported both by democratic principles and by sound economics.

I know a smart business decision when I see one - choosing open standards is a very smart business decision indeed."
In the first place, this - of course - addresses Microsoft and their desparate efforts to see their EXTERNAL LINKOOXML specification raised to be an ISO standard.

However, I'm also afraid not everybody acquainted with patents has understood that message to its full extent. The relationship of the patent system, on the one hand, and the world of open standards has not yet been worked out fully. And, there is still some risk that the baby will be thrown out with the bath water as soon as the political debate on this issue starts: Some folks e.g. from EXTERNAL LINKFFII supporters' grassroots movement might well be tempted to do so. Nevertheless, it is a class of problems that must be dealt with in a competent and sensible manner, and the organisational strength of the anti-patent moralists' movement appears to be on a low for the time being.

And, finally, up to today it appears that EPO is still committed to proprietary standards when it comes to electronic filing. Their EXTERNAL LINKepoline software suite only runs under Microsoft Windows:
[...] 2.4.2 Software requirements

The software is supported on the following operating systems:
  • Microsoft Windows NT 4.0
  • Microsoft Windows 2000
  • Microsoft Windows XP
  • Microsoft Windows 2003 Server
The following software should already be installed on the target PC (the machine where the eOLF thin client/local installation client is to be installed):
  • Adobe Reader Version 5.x, 6.x, 7.x, 8.x
  • Gemplus driver installation package
  • GemSAFE Libraries 3.2.5 or higher
If the ASOS machine is to be used as a server only (no client installed on the same machine), no software has to be installed beforehand. [...]
To the best of my knowledge, also GemSAFE and Gemplus software are available exclusively for operation under various flavours of Microsoft Windows.

Ah, yes, in a formal sense they have EXTERNAL LINKdeclared their software suite to be open source. But this might well be considered as being something like a fig leaf. Take, for example, the sources of the epoline client software eOLF V3.20 from EXTERNAL LINKsourceforge.net to be compiled using EXTERNAL LINKDelphi 7: If you attempt to have a full download, you'll be offered something like a file eOLFv3.20src.exe representing a self-extracting archive that only runs on a computer with Microsoft Windows. I nevertheless have bothered to have a look into this kind of archives and, no surprise, I found sources cluttered with entries into various Microsoft APIs. Take, at random and for example only, a source file v7/richedit/RichEdit2.pas clearly indicating a Microsoft Windows strategy:
uses

  Windows, Messages, SysUtils, Classes, Graphics, Controls, Forms, Dialogs,
  StdCtrls, ComCtrls, ComStrs, RichEdit, Langs, WStrList, DB, DBCtrls,
  ActiveX, OleCtnrs, olectrls, ComObj, OleDlg, RichOle, Menus, Printers;

[...]

var
   Storage:IStorage;
   OleObject:IOleObject;
   OleSite:IOleClientSite;
   ReObject:TReObject;
   OleCache:IOLECache;
   Data: TOleUIChangeIcon;

[...]
Borland Delphi produces code for machines running Microsoft Windows only. Kylix, which allowed Delphi code to be ported to Linux relatively easily, discontinued. CrossKylix discontinued and CrossFPC not released and inactive. The above-quoted code lines obviously refer to Microsoft Windows proprietary standards like EXTERNAL LINKOLE or EXTERNAL LINKActiveX.

Hence, in reality the epoline software by no means appears to be platform independent. I can't see any commitment to open non-proprietary standards. In fact, this looks like more than ten years of programming on the basis of proprietary standards. A case of quite deep vendor lock-in, indeed.

Should, in many years from now and by means of a successfully closed EU Community Patent project deal, the European Commission ever become a majority shareholder in the European Patent Organisation, a successor in Office of Ms Kroes perhaps might wish to talk to the EPO President and to the Administrative Council in order to make sure that open standards get adopted there.

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Monday, June 09, 2008

 

At Long Last: European Patent Register, Online File Inspection Now Available 24/7.

From the EXTERNAL LINKwebsite of EPO:
"The European Patent Register and the Online File Inspection Facility, Register Plus, is now available 24/7.

The database is updated on a 24 hour cycle, and at any time the visible content will be as at 19.00 the previous evening.

The European Register and Online File Inspection will be unavailable from 05.00 to 05.30 for daily maintenance.

We will keep any other outages to a minimum and we will inform you in advance of any downtime. [...]"
See also my earlier posting INTERNAL LINKhere.

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New OHIM Website from July 01, 2008

From EXTERNAL LINKOHIM's website:
"[...] OHIM is launching a new website on 1 July. The site has been designed to be more welcoming while also providing professional users with easy access to the tools they need to register trade marks and designs and to manage their interactions with the office. The front page includes a "professional area" with direct links to MyPage, legal texts and case-law. There is also quick access from every page to OHIM's databases and to the e-filing tools and forms.

The new site, which has been developed after consultation with users, includes better search features, an expanded news service, and access to basic information to help less frequent visitors orient themselves. The content has been rewritten and reorganised, and OHIM will also be introducing interactive elements including user discussions, polling and multimedia. More information will be made available progressively over the coming weeks to help users make the transition to the new website. [...]"
Until then, keep fingers crossed, hoping that the website will not fall victim to some sort of guys who do pay more attention to trendy gorgeous design gimmikcs like flash animations or huge colourful but effectively dysfunctional images than to pure and robust functionality for information-seeking users.

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Wednesday, June 04, 2008

 

UK: Informal Consultation Paper on The Modernisation of the Trade Marks (International Registration) Order.

From the EXTERNAL LINKConsultation Document:
"[...] Currently, the legal framework for the examination of international trade marks designating the UK (international marks (UK)) is a mix of the self standing international provisions in the Madrid Protocol ('the Protocol') and secondary legislation in the Trade Marks (International Registration) Order 1996 (SI 1996 No 714) ('the Order 1996'), made under powers conferred by section 54 of the Trade Mark Act 1994 (as amended, 'the Act'). The Order 1996 has been amended five times, normally in the wake of changes to domestic rules, since 1996. [...]

The UK-IPO now propose to consolidate this instrument, and incorporate changes made to domestic rules (The Trade Mark Rules 2008 ('the Rules') currently subject to consultation) as they apply to international marks (UK). [...]"
The deadline for submitting comments lapses on June 30, 2008.

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Monday, June 02, 2008

 

Will Community Trade Marks Become Cheaper After All?

From EXTERNAL LINKSaturday's edition of the Financial Times (FT.com):
"[...] A cut in European Union trademark fees could finally be in sight after Brussels said it planned legal changes to tackle a mounting surplus of funds at the EU trademark office this year.

Charlie McCreevy, the internal market commissioner, told a meeting of industry ministers in Brussels that he planned a legislative proposal before the end of the year. [...]"
A bit of the background beomes clear from EXTERNAL LINKDocument 9874/08 drawn up by the Council Secretariat. The Document conveyed a Note received from the Portuguese delegation on the abovementioned subject, to be raised under "Any other business" in the meeting of the Competitiveness Council which was held on May 29-30, 2008.

See also my earlier posting INTERNAL LINKhere.

The Note argues that, as a result of the high fees charged for Community trade marks, the Community Office currently has a surplus of more than EUR 300 million which is increasing at the rate of EUR 1 million per week.

The Portuguese arguted that, faced with such wastage, OHIM took the view that fees for Community trade marks should be reduced for the benefit of Community undertakings and citizens.

A similar position was adopted by the Competitiveness Council in Brussels in May 2007 in its conclusions on the Financial Perspectives of OHIM and the further development of the Community trade mark system1. In those conclusions the European Commission was called upon to immediately propose a reduction of the fees for Community trade marks.

Portugal's official position is that the fees for Community trade marks must be unconditionally and unrestrictedly reduced. To date, however, the fees remain unchanged.

See also EXTERNAL LINKMr Joff Wild's posting on his IAM Blog from which I took a hint towards the FT.com article.

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Further News on EU Patent Politics.

On Wednesday June 11, 2008, the EU Working Party on Intellectual Property (Patents) will have another meeting (see invitation Document EXTERNAL LINKCM 2046/08). The agenda for that day comprises:
  • Discussion of the Draft Agreement on the European Union Patent Court (INTERNAL LINK9124/08 PI 24 COUR 19): examination of Part III (Articles 22 to 56); and
  • Draft Council Regulation on the Community Patent: first exchange of views on the revised proposal (EXTERNAL LINK9465/08 PI 25)
Said Document 9465/08 conveys a revised proposal for a Council Regulation on the Community patent . Changes to the previous version of the proposal
(EXTERNAL LINKDocument 7119/04) have been based on recent discussions in the Working Party on Intellectual Property (Patents). Obviously the word processors used by the EU Commission and by the Slowenian EU Presidency still do not have a redlining function; it is quite tedious to find out where the differences between both versions are. A few remarks so far:
  • The amended text of the recitals now emphasises that a cost effective, legally secure Community patent will in particular benefit Small and Medium-Sized Enterprises (SMEs) and would be complementary to the Small Business Act for Europe. The creation of such a unitary title should make access to the patent system easier, less costly and less risky, in particular for SMEs. Moreover, it is stressed in the amended text that the availability of a unitary title providing for equal protection throughout the entire territory of the European Union will enhance and help raise effectiveness of the fight against counterfeiting and patent infringement to the benefit of inventors, businesses and society at large. A complete geographical coverage without any loopholes will ensure effective patent protection at all external borders of the EU and will help to prevent the entry of counterfeit products into the European Single Market on the basis of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights.
  • Again in the recitals, the amended text makes cleat that the EPO will play a central role in the administration of Community patents and will alone be responsible for examination of applications and the grant of Community patents. Nevertheless, the topic of a European Patent network is conceptually introduced: the paper assures that all National Patent Offices will likewise have an important role to play, inter alia by giving advise and support to potential applicants for Community patents, in particular SMEs, by receiving applications, by forwarding applications to the EPO, and by disseminating patent information. National Patent Offices shall be compensated for these activities. In particular, applications for Community Patents can be filed directly with the EPO or via the National Patent Office of a Member State. In order to facilitate access to the patent system, in particular for SMEs, in those Member States who do not have a language in common with one of the EPO's languages, it should be possible for applicants to file an application in the working language of the National Patent Office, where this is an official language of the EU. When the applicant files in a non-EPO language he/she shall designate one of the official EPO languages as language of proceedings. The costs related to translations shall be borne by the system ('mutualisation of costs'). The level of procedural fees for processing an application for a Community Patent shall be the same regardless of where the application is filed and will be related to costs for handling the Community Patent.
  • It is further anticipated in the recitals that the EPO should also be entrusted with the task of administering the Community patent in the post-grant stage, for example, as regards the collection, distribution of annual fees to National Patent Offices and the management of the Register of Community Patents.
  • To the extent that this Regulation does not provide otherwise the substantive law applicable to the Community patent, for example as regards patentability, the scope of patent protection and the limitation of the effects of the patent, will be governed by the pertinent provisions of the Munich Convention and national law where this complies with Community law.
  • The Community patent shall constitute a third option. Applicants shall remain free to apply instead for a national or a European patent. The amended Regulation is without prejudice to the right of the Member States to grant national patents and shall not replace Member States' laws on patents or European patent law as established by the Munich Convention.
  • It is further stipulated in the recitals that the renewal fee for a Community Patent must not exceed the level of the corresponding renewal fees for an average European Patent and will be progressive throughout the life of the Community Patent. Renewal fees for Community Patents will be payable to the EPO, which will keep not more than 50 percent to cover its costs. The remaining amount will be distributed among the National Patent Offices of the Member States in accordance with a distribution key. The key for distribution shall reflect a basket of fair, equitable and relevant criteria, which should relate to patent activities and the size of the market. They should also apply balancing factors, in particular where Member States do not have an official language in common with the EPO and where Member States have a disproportionately low level of patent activities and there is a need for promotion of innovation. The Council shall agree on the relevant criteria for the level of renewal fees and for the fixing of the distribution key. A Select Committee of the Administrative Council of the EPO shall, once the Community patent enters into force, implement these criteria and fix both the level of the renewal fees and the precise distribution key for their allocation.
  • Art. 2 Para. 1 now makes explicitly clear that the Community patent is a patent designating the Community which is granted by the EPO under the provisions of the Munich Convention. Para. 4 states that the provisions of the Munich Convention shall apply to the Community patent to the extent that this Regulation does not provide for specific rules.
  • Concerning Licences pf Right, Article 20 now states that on written request by one of the parties, the Community Patent Court shall determine the appropriate compensation or review it if circumstances have arisen or become known which render the compensation determined obviously inappropriate.
  • Apparently provisions for providing compulsory licenses as given by Art. 20 and 21 of the original version have been scrapped. However, this might be covered by Recital 6 stating that Any negative effects of a monopoly created by a Community patent should be prevented through a system of compulsory licences. This is without prejudice to the application of Community competition law by the Commission or national authorities. However, the European Union Patent Court should be entrusted with the grant of compulsory licences in situations not falling under Community competition law.
  • Article 24a now says that applications for a Community patent shall be filed in one of the languages referred to in the Munich Convention. However, applicants may instead choose to submit their application in one of the official languages of their Member States, which shall be an official language of the EU. In the latter case the application shall be translated into one of the official languages of the EPO which should be designated by the applicant as language of proceedings. The translation costs concerned shall be borne by the system.
Obviously certain financial provisions are made in order to make sure that national patent Offices will not have to suffer should the EU Community Patent later become a huge success comparable to the EU Community Trade Mark administrated by OHIM. There appears to be, however, no sound justification for such measure beyond national egoism of EU Member States.

And, there might be some background behind the complete shift of the issue of compulsory licences to the field of competition law which deserves a broader discussion.

Also, Article 24a seems to be a bit odd. The crux appears to be that the translation costs concerned shall be borne by the system. Wow! Does that mean that EPO will refund the applicant's translators bills? I am in doubt: I am afraid that in plaintext this means that someone from within the European Patent Network will do the translation work, free of charge for the applicant. In the effect this might mean that the applicant will lose control of the translation process and its quality characteristics.

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Monday, May 19, 2008

 

Draft Agreement on the European Union Patent Judiciary.

The EU Council has published EXTERNAL LINKDocument 9124/08 issued by the Slovenian EU Presidency and addressing the EXTERNAL LINKWorking Party on Intellectual Property (Patents). The title of the Document is Draft Agreement on the European Union Patent Judiciary.

The revised Presidency working document contains a Draft Agreement on the European Union Patent Judiciary for discussion at the meetings of the Intellectual Property (Patents) Working Party on 28 May and 11 June 2008. The revised version takes account of the discussions in the Working Party on 2, 8 and 25 April 2008 as well as of comments and observations received from stakeholders. Furthermore, it also comprises two lists of issues to be included respectively in the Statute of the European Union Patent Judiciary and in the Rules of Procedure, which need to be developed at a later stage.

Of particular insterest is the Draft wording of Article 28 on representation:
"[...] Article 28
Representation

(1) The parties shall be represented by lawyers authorized to practise before a court of a Contracting Party who may be assisted by a European Patent Attorney, who is a national of a Contracting Party entitled to act as professional representative before the European Patent Office (hereafter: European Patent Attorney), and/or by patent attorneys with proven patent litigation experience.

(2) Notwithstanding paragraph 1, European Patent Attorneys and patent attorneys with proven patent litigation experience who are in possession of a European Union Litigation Certificate may represent the parties in actions for revocation of a patent before the central division.

(3) Representatives of the parties and their assistants shall enjoy the rights and immunities necessary to the independent exercise of their duties.

(4) Representatives of the parties and their assistants shall be obliged not to misrepresent cases or facts before the Court either knowingly or with good reasons to know. [...]"
Paragraph 1 appears to resemble current German practice in litigation proceedings but paragraph (2) clearly falls back behind: Under the current rules valid in Germany, every German patent attorney ("Patentanwalt") is entitled to represent the parties in actions for revocation of a patent before the Federal Patents Court ("Bundespatentgericht"), no questions asked for additional Certificates.

And: What does it mean to misrepresent cases or facts before the Court either knowingly or with good reasons to know? If we have any suspicion that our client might have told us not the full truth, will be be obliged to cease representation?

The preliminary list of topics to be included in the Rules of Procedure of the European Union Patent Court comprises, inter alia,
  • Detailed language arrangements
  • Requirements for representatives
  • Requirements for European Patent Attorneys (including rules on EU patent litigation certificates or proof of patent litigation experience)
  • Privileges, immunities and facilities of representatives
  • Status of parties' representatives
  • Misrepresentation
  • Exclusion from proceedings
  • Use of electronic procedures
  • Electronic filing of submissions and evidence
  • Electronic communication
  • Serving of documents by electronic means
Hence, it looks as if the experts are very busy, on a more technical level, to hammer out Draft texts for the planned EU-wide patent litigation system. But never forget - the second half of 2008 will show us as to whether or not all this will become reality one day.

As it was to be expected, not everybody is enthusiasic over such plans. From the other end of the spectrum, see EXTERNAL LINKthis report authored by EXTERNAL LINKMr Ciarán O'Riordan, Member of EXTERNAL LINKFSFE. It is a pity that he did not bother to disclose the whereabouts of that Working breakfast on Community Patent on which he reports. BTW, EXTERNAL LINKFFII appears to be quite dead, at least concerning this matter.

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Monday, May 12, 2008

 

Enhancing The Patent System in Europe: Progress Achived So Far.

There is a new EXTERNAL LINKDocument 8992/08 issued by Slovenian EU Presidency to Permanent Representatives Committee (Part 1) on May 08, 2008, concerning potential enhancemet the patent system in Europe. Some of the key points of that Document quoted below read as follows:
  • Considerable progress has been achieved on both the patent litigation system and the Community patent, thanks to the positive and constructive attitude shown by delegations throughout the discussions. While some delegations would prefer to keep progress on patent litigation separate from that on the Community patent, others are of the opinion that consensus should be reached on both areas simultaneously. Therefore it would seem that a future political agreement would be difficult to achieve in the absence of a "package" deal covering both the patent litigation system and the Community patent. Accordingly, the Presidency sought to advance work on both in parallel.
  • As regards the patent litigation system, while there appears to be broad agreement on the overall structure, there are also issues which need to be further discussed in more technical detail. These include, in particular, the composition of panels at first instance, the language of proceedings, the jurisdiction for counterclaims for invalidity, transitional arrangements, the modalities for granting the Court of Justice the power to review judgments handed down by the appeal instance, and the funding of the system. The essence of this progress is reflected in working document 9124/08.
  • In response to a request by the Presidency, the Council Legal Service presented orally to the Working Party on 8 April 2008 its preliminary views on the type of legal instrument suitable for creating the envisaged patent litigation system. It was noted that for an international agreement to be concluded by the Community and the Member States (as well as third countries) it would be advisable to request the opinion of the Court of Justice.
  • As regards the Community patent, discussions focused on the two main outstanding issues, i.e. translation arrangements and the distribution of revenue from renewal fees. It is felt that an agreement on these two issues would considerably facilitate an overall agreement on the Community patent Regulation. There was broad agreement that in the interest of the users of the patent system, in particular SMEs, the cost of the Community patent must be affordable.
  • As regards the Community patent, discussions focused on the two main outstanding issues, i.e. translation arrangements and the distribution of revenue from renewal fees. It is felt that an agreement on these two issues would considerably facilitate an overall agreement on the Community patent Regulation. There was broad agreement that in the interest of the users of the patent system, in particular SMEs, the cost of the Community patent must be affordable.
  • As regards the Community patent, discussions focused on the two main outstanding issues, i.e. translation arrangements and the distribution of revenue from renewal fees. It is felt that an agreement on these two issues would considerably facilitate an overall agreement on the Community patent Regulation. There was broad agreement that in the interest of the users of the patent system, in particular SMEs, the cost of the Community patent must be affordable.
Well, it appears to me that one of the crucial points lies behind that quite pale wording according to which "While some delegations would prefer to keep progress on patent litigation separate from that on the Community patent, others are of the opinion that consensus should be reached on both areas simultaneously". From private sources who recently had attended the European Patent Forum event in Ljubljana sources I have been told that it seemed also that there is quite some opposition to that Council proposal for a European Patent Litigation solution and Community Patent. Despite the quite optimistic bulletins disseminated by the EU Presidency, success should not be taken for granted. Most probably, later this year the French EU Presidency will face a hard job to press that matter trough.

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Thursday, May 08, 2008

 

"Permafrost" Of Pending Applications - Alison Brimelow: "I Am Coming To The Conclusion That The Backlog Will Not Be Mastered."

Sometimes it needs to have a full-time journalist conducting an interview with a key figure in order to to help on the blogosphere analysing certain facets of the reality of the European patent system. Today, well-known Mr Joff Wild from EXTERNAL LINKIAM Magazine EXTERNAL LINKwrites in his EXTERNAL LINKBlog:
"[...] In an exclusive interview with IAM, which took place in the Slovenian capital Ljubljana, venue for this year's European Patent Forum and European Inventor of the Year ceremony, EPO president Alison Brimelow said: 'I am coming to the conclusion that the backlog will not be mastered.' It is now time, she continued, to think about what must be done to ensure that the patent system can function adequately in this new environment. 'There are no silver bullets but there are a range of things that we could do - some of which will be more effective than others.' [...]"
"The backlog will not be mastered" - Ouch.

Also present at the interview was Mr McGinley, the Controller of the EPO. According to Mr Wild's Blog posting, Mr McGinley suggested that one way of looking at the backlog issue is that all the world's major offices now have a permafrost of pending applications. This, McGinley said, created real uncertainty. The US is already at a point where there are one million pending applications and Europe is forecast to be there within five years.

To me all this appears to be result of a grim reality check conducted by Ms Brimelow during herfirst year in office. Such exercises do not come to me as a surprise - they rather appear to be typical for this EPO President. I like her fresh thinking. But perhaps the crisis of the patent system is much deeper than thought by many, in particular by most of the patent profesionals. Is all this talk of "permafrost" and the phrase "The backlog will not be mastered" anything else than something like an announcement of a protracted bankruptcy of the global patent system as we know it today?

But what to do now? Mr Wild heavily stresses that it is important to make clear that Ms Brimelow, Mr McGinley and other members of the office's senior management are still in the very early stages of exploring what might be done. But Mr Wild has no doubt that there is some very deep thinking going on. in the interview, Ms Brimelow hinted that there are a number of developments that are leading to issues being explored in a way that would not have been possible two years ago. One of these, she said, is mutual recognition.

Mutual recognition - on the stage of the EXTERNAL LINKTrilateral Co-operation this could mean that, under some formal conditions, that a patent granted by EPO immediately would have legal effect in, say, the US. So far - well. But - of course: Any realistic scenario also would comprise the other way round: A patent granted by the US-PTO should also, under some formal conditions, have legal effect in Europe. Taking aside current differences in substantial patent law of the US and EU (which would have to be harmonised anyway before any recognition solution could be seriously considered) - is there really a chance in any foreseeable future that such mutual recognition would be accepted by the respective societies involved?

I think that it is most important that such developments will be discussed in an open manner. Hence, I appreciate that Ms Brimelow has given early indications. But what will follow in the coming years should not be an exercise in secret diplomacy, in the end presenting a revolutionising set of perhaps drastic measures as a result of widely intransparent negotiations. Doing so might seriously hamper much needed broad acceptance of any big solution by the general public.

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Friday, April 25, 2008

 

EU Community Patent: Machine Translations Ante Portas?

From Mr Nikki Tait in EXTERNAL LINKFT.com:
"[...] Efforts to break the logjam over a so-called 'community patent' - a single intellectual property right which would give a holder protection in all 27 EU countries - have gathered pace in recent months and are being pursued by the current Slovenian presidency. [...]

The last effort to launch a community patent had to be abandoned in 2003, because countries were unable to agree on a language regime for the new IP right.

But under proposals being hammered out in Brussels, officials hope to offer countries the option of machine-based translation, which could convert a patent into all 23 official EU languages for minimal cost in a matter of minutes.

Officials say that this would cost only a few million euros to set up, and allow equal treatment for all languages.

Such translations would be for information purposes and would not be legally binding, and most litigation would be conducted in either French, German or English. However, officials claim that only about 1 per cent of patents are ever challenged. [...]"
Well, it was widely expected that during the French EU Presidency after July 01, 2008, important things would happen.

But those machine translations ... INTERNAL LINKI am still sceptical.

See also EXTERNAL LINKMr Joff Wild in the IAM Blog from where I got the link.

[UPDATE 2008-04-30] See Official EXTERNAL LINKDocument 8928/08 issued by the Slovenian EU Presidency and addressed to the Working Party on Intellectual Property (Patents) which will EXTERNAL LINKdiscuss it on May 15, 2008. Tt is titled "Towards a Community patent - Translation arrangements and distribution of fees" and goes further into the details.

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Wednesday, April 16, 2008

 

A New IP-Related Blog In Germany.

This might be of interest for all readers of my Blog who have some command of the German language: EXTERNAL LINKMr Bastian Best recently has launched a Blog named EXTERNAL LINKpawannabe.org focusing on the various aspects of German Patentanwalt traineeship.

That website looks as if it might even be true that EXTERNAL LINKtools are provided to the effect that other Patentanwalt trainees can create their own personal blogs.

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Tuesday, April 15, 2008

 

German Bill on Contingency Fees For Attorneys-at-Law, Patent Attorneys and Tax Advisors.

In INTERNAL LINKmy earlier posting I had pointed out that contingency fees are strictly off-limits when hiring German attorneys-at-law, patent attorneys or tax advisors under German Law. In particular U.S. colleagues sometimes have difficulties understanding that in Germany the law is so much different in this respect.

In March 2007, the EXTERNAL LINKGerman Constitutional Court ("Bundesverfassungsgericht") had published a EXTERNAL LINKdecision [in German only, sorry] saying that this strict ban on contingency fees is incompatible with the German Constitution because it might, in very special cases, deter potential clients from enforcing the law. This is in particular considered relevant if a potential client has not enough money for funding an attempt to enforce the law on his or her own risk. See also a related EXTERNAL LINKpress statement [in German only, sorry].

Meanwhile, the German Government has launched a EXTERNAL LINKBill for the Revision of the Ban on Reaching Agreements on Contingency Fees ("Gesetz zur Neuregelung des Verbotes der Vereinbarung von Erfolgshonoraren", in German only, sorry). The first reading thereof in the lower chamber of the German Parliament ("Bundestag") will be on April 24, 2008.

The new bill will not make available contingency fees for all constellations. Technically, contingency fees will be further banned in general. Only if very particular circumstances apply, contingency fees will become available in exceptional cases (items indicated below apply for Patent Attorneys):
  • Reaching an agreement on a contingency fee only on a case-by-case basis;
  • Only if particular circumstances justify a contingency fee;
  • Such circumstances are especially deemed to be given when a potential client would, after skillful consideration, be deterred from enforcing the law if no contingency fee were available.
Moreover, such kind of agreements will be heavily regulated with regard to their form:
  • Agreement must be in writing with handwritten signature; e-mail is insufficient;
  • Agreement must not be part of any Power of Attorney form;
  • Agreement must be clearly marked as such;
  • Agreement must contain amount of contingency fee;
  • Agreement must contain specification of what fee is earned under which particular conditions;
  • Agreement must specify premium amount which is earned if the desired success has been materalised to its full extent;
  • Agreement must specify all substantial facts and legal considerations of the case on which an assessement of the chances of the case is based; and
  • Agreement must contain a statement warning the Client that burdens imposed under a cost shifting regime will have to be paid anyway.
It appears to be quite clear that German legislator still does not like contingency fees very much.

The upper chamber of the German Parliament ("Bundesrat", representation of the German Länder) has already supplied comments on that draft. In particular, Bundesrat wants to sharpen the language well beyond the original draft of the Government. In the original draft it is generally required that particular circumstances justify a contingency fee; in particular but not limited to cases when a potential client would, after skillful consideration, be deterred from enforcing the law if no contingency fee were available. Bundesrat wants to change the language in a way such that contingency fees are exclusively available if and only if when a potential client would, after skillful consideration, be deterred from enforcing the law if no contingency fee were available. German Government has replied to the statement of the Bundesrat by rejecting their demand to further narrow the scope of the clause allowing contingency fees. German Government intentionally wants to open the market for contingency fees a bit more than any minimalist solution required by the decision of the Constitutional Court. However, no complete liberalisation is desired.

If this enters into force, future case-law will tell how far attorneys are allowed to go.

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Monday, April 14, 2008

 

EU Commission Urges Member States and Public Research Organisations to Better Convert Knowledge into Socio-Economic Benefits.

From EXTERNAL LINKDocument IP/08/555 dated April 10, 2008:
"[...] The European Commission today adopted a Recommendation on the management of intellectual property in knowledge transfer activities of universities and other public research organisations. The Recommendation provides public research organisations (PROs) with operational principles to more effectively manage and exploit intellectual property.

[...]

Europe is notoriously claimed to be better at producing high-level knowledge than at converting it into socio-economic benefits. While the output in terms of scientific publication is comparable to that of the US, European universities and PROs produce considerably less inventions, file less patents, negotiate fewer licensing deals and generate a lower number of spin-offs than their US counterparts. Surveys have shown that European organisations lag behind their North America counterparts regarding invention disclosures (by 25%), patent applications (by 53%) and patent grants (by 36%). [...]"
The full Document is available EXTERNAL LINKhere.

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London Agreement and IPRED-1 in the German Parliament.

It is well-known that Germany INTERNAL LINKhas some trouble with the implementation of the EXTERNAL LINKLondon Agreement because of the EXTERNAL LINKoriginal implementation bill was flawed due to miscalculations on the date of entry into force of the translation requirement for European patents designating Germany.

In INTERNAL LINKmy earlier posting I had reported that despite the fact that a political consensus has been reached within Government, including a clause to the effect that the new Bill will properly drop the translation requirement for all European Patents designating Germany which are advertised in the Official Gazette after April 30, 2008, there appears to be absolutely no chance to rush such a Bill through Parliament before May 01.

It was then expected that the new Bill will be published in the Bundesgesetzblatt not earlier than June 2008. Its effects with regard to London Agreement and concerning European Patents having their grant mentioned in the Official Gazette after April 30, 2008, will then be of a retroactive nature.

I did not spot any related legislative initiative in the German Parliament, and a friendly reader of this Blog eventually has made me aware of how the German Government intended to manage that matter:

In fact, Germany is overdue sinve two years or so to cast EXTERNAL LINKDirective 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (IPRED-1) into national German law. INTERNAL LINKA new Bill would, if passed by the German parliament, affect the enforcement of German Patents, Utility Models, Trade Marks, Designs as well as Copyrights.

A few days ago, the Judicial Committee ("Rechtsausschuss") of the lower chamber of the German Parliament ("Bundestag") had published its EXTERNAL LINKfinal report [In German only; sorry] on that issue, and - voilà - the amended text of that bill now comprises Articles 8a and 8b appended to the original text and implementing the measures as prescribed by the London Agreement.

Of course, with regard to its substance the London Agreement is entirely unrelated to IPRED-1. All that is only a trick to speed up the process of rushing through Parliament in a piggyback mode a small snippet of legislation without having to start from scratch with adopting a full new legislative initiative by the German Government. I am even inclined to go as far as to say that the measure taken by German Government and Parliamentarians was almost user-friendly towards interested circles and affected groups of the patent system: They could also have decided to append the implementation clause to any other bill, say, on a bill to amend some details of the German system of pension funds or the like. Only because of the IPRED-1 implementation bill was readily available as a vehicle to also carry the new implementation clause of the London Agreement, the political class in Berlin refrained from attaching that matter to some entirely un-related and non-patent legislative matter.

Last Friday, on April 11, 2008, the lower house of the German Parliament EXTERNAL LINKhas passed the EXTERNAL LINKbill as amended by the Juridical Committee.

Now the bill will be passed to the upper house of the German Parliament ("Bundesrat"). It is generally expected that the law will be promulgated in June 2008 but with retro-active effect as from May 1, 2008. However, if the Bundesrat, where the German Länder are represented, should enter into some deeper controversy about the IPRED-1 bill, then the implementation clause for the London Agreement could be taken hostage and be frozen for some more weeks or even months. I have no precise ideas as to whether or not this is likely to occur. Right holders in the fields of the music or movies industries are always eager to further sharpen such kind of legislative initiatives, and I do not fully understand their lobbying influence in all of the many German Länders.

Anyway, it would be quite embarrassing if Germany could not present an implementation act in force for the London Agreement later this year. Such calamity would certainly create big legal uncertainties for patent holders. And, I think it should not go unnoticed that when browsing the plenary protocol of the session of the German Bundestag of last Friday you might well get the impression that introducing the implementation caluse for the London Agreement was not an emergency repair but business as usual. Not a single mentioning of the first failed attempt to have that clause, and for sure no word of exculpation for the need to urgently do some repair.

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Sunday, April 13, 2008

 

Two New IP Blogs.

There is a new EXTERNAL LINKIP-related Blog live on bogspaces.com titled "OAMI Live - Vox Populi. The floor is yours." The introduction text reads as follows:
"OAMI Live is led by independent European citizens directly or indirectly concerned by OHIM activities. Information on this site does not involve the responsibility of OHIM or of the European Community. This site does not collect any personal data. All contributors are free to identify themselves in their post messages."
However, due to unknown reasons, it looks as if they do not provide any RSS or ATOM content syndication feed.

And, second, there is another new Blog titled EXTERNAL LINKIP Kenya on-line now which appears to be EXTERNAL LINKsomehow related to EXTERNAL LINKAfro-IP - the blog for intellectual property law, practice and policies in Africa.

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Thursday, March 20, 2008

 

Rates of Growth.

From the EXTERNAL LINKOHIM website:
"Record year for Community trade marks and designs

OHIM has had another record year for applications for Community trade marks and designs, and 2007 also saw further significant improvements in productivity and timescales for registrations.

Over the past four years, the cumulative change at the Office has been dramatic, with a 50% increase in trade mark and design applications and a rise in productivity of almost 60%. Over the same period the average time to register a trade mark has fallen by one-third to 13 months, and the time taken to register a design has fallen by 60% to six weeks."
From the EXTERNAL LINKEPO website:
"The World Intellectual Property Organization (WIPO) has announced a record number of patent filings under its Patent Co-operation Treaty (PCT) in 2007.

According to a WIPO press release, 4.7% more applications were filed under the PCT compared to 2006, taking the total to 156 100 applications last year.

[...]

Six European countries - Germany (11.6% of all applications), France (4.1%), the United Kingdom (3.6%), the Netherlands (2.7%), Switzerland (2.4%) and Sweden (2.3%) - were among the top ten countries of origin, with Italy (1.9%) and Finland (1.3%) following close behind.

The growth in filing was particularly strong in north east Asia, which accounted for 25.8% of all international applications under the PCT. [...] "
From the EXTERNAL LINKwebsite of the German Patent and Trade Mark Office:
"Der insgesamt positive Trend bei der Anmeldung gewerblicher Schutzrechte hat sich auch 2007 fortgesetzt. Das bereits hohe Niveau bei den Patentanmeldungen wurde mit 60 992 Anmeldungen noch leicht übertroffen. Besonders nennenswert sind hier die 13 139 Patentgesuche von ausländischen Anmeldern. Dies entspricht einer Steigerung von 4,5 %. [...]

Im Markenbereich wurde mit 83 673 angemeldeten Marken (nationale und internationale Registrierung) das Ergebnis des Vorjahres um 4,2% übertroffen, wobei dieser Zuwachs vor allem durch inländische Anmeldungen erreicht wurde.

Bei den Geschmacksmustern verläuft die Entwicklung der angemeldeten Muster weiter positiv. Hier ergibt sich im Vergleich zum Vorjahr ein Plus von 6,4%. [...]"
(In short: German patents plus 4,5%, German Trade Marks plus 4,2%, German Registered Designs plus 6,4%)

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News From Merger Deliberations in France.

Recently I had picked up INTERNAL LINKhere and INTERNAL LINKthere reports on a debate currently ongoing in France to perform a merger between the profession of the Patent Attorneys ("conseils en Propriété Industrielle") with the profession of the Lawyers ("avocats").

Now it appears as if the project is neither dead nor doomed to be stalled indefinitly but there appear to be many obstacles. EXTERNAL LINKAccording to Mr Breese, on March 18, 2008, the two professions involved chose not to abandon the process. They were, both in favor of two proposed mergers but with significant differences. The project on which the patent attorneys had spoken favourably probably would not have resulted in a favourable vote by lawyers, and vice versa. The problem appears in particular to be related to two aspects:
  • The status of patent attorneys became lawyers: CNCPI rejects the term integration which would be contrary to the project, while lawyers present a status as a fully integrated profession after the demise of the profession of patent attorneys;
  • The conditions for access to the occupation: CNCPI presented a draft where the entrance to CRFPA would be neither more nor less than the current EQF and CAPA would be specific to Intellectual Property Law while the lawyers proposed a project where the entrance and exit would be merely to have Intellectual Property Law as an optional subject.
See also other reports from Mr Breese on that subject-matter:And, on EXTERNAL LINKLe blog du droit européen des brevets:
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Issue 01/2008 of epi-Information Now On-Line.

The recent issue 01/2008 is ready for download EXTERNAL LINKhere (PDF).

From the Table of Contents:
  • Results of the election to the fifteenth epi Council
  • epi Tutorials 2008
  • Accession of Norway to the European Patent Convention
  • Fall from grace (On Grace Periods in EPC2000) by Pete Pollard (NL) and Cees Mulder (NL)
  • EPC 2000 from the perspective of EQE candidates by Brian Cronin (CH)
  • Raising the Bar? by P. Rosenich (LI)
  • Product-by-Process Claims - A Jurisdictional Comparison by N. Finnie (GB), B. Bennett (AU)
  • Die Inventivpsychologie und erfinderische Täigkeit by S. V. Kulhavy (CH)
  • Formular-Kommentar Markenrecht by G. Eisenführ (DE)
Furthermore, this issue brings an interesting piece of statistics titled "List of Professional Representatives as of 29.02.2008". It is essentially a breakdown of epi membership base by country (i.e. place of business or employment; not so much exciting) and by route of admission (quite interesting). There are two routes to go for being entered into the list of professional representatives:
  • Article 134 EPC 1973, requiring to take a quite difficult European Qualification Examination (EQE), or
  • Article 163 EPC 1973, requiring entitlement to represent natural or legal persons in patent matters before the central industrial property office of the Contracting State in which he or she has his place of business or employment, during a one-year time window after entering into force of EPC 1973 or of accession of one of the later acceeding countries (so-called "Grandfather's clause")
The statistics is as follows:


What appears to be quite remarkable is that no less than 40% of all epi Members have been entered on the list on the basis of the "Grandfather's Clause". In Germany, one of the founding fathers of the EPC, roughly a quarter of the national chapter are "Grandfathers".

This distinction is a quite relevant matter for all candidates; for example, EXTERNAL LINKmerely 24,1 % of all candidates successfully took the EQE 2007 in the first sitting.

Why at all has the EQE been installed from the outset? I don't know. When the OHIM (Office for Harmonisation in the Internal Market) was created, a political decision had been taken not to install any kind of additional qualification exam. Instead, there is something like an eternal Grandfather's Clause in place, saying that a candidate must be entitled to represent natural or legal persons in trade mark matters before the central industrial property office of a Member State Where, in that State, the entitlement is not conditional upon the requirement of special professional qualifications, persons applying to be entered on the list who act in trade mark matters before the central industrial property office of the said State must have habitually so acted for at least five years. However, persons whose professional qualification to represent natural or legal persons in trade mark matters before the central industrial property office of one of the Member States is officially recognized in accordance with the regulations laid down by such State shall not be subject to the condition of having exercised the profession. (EXTERNAL LINKArticle 89 CTMR).

Did anybody seriously complain that the Professional Representatives enroled with OHIM without sitting another exam are less qualified for their job compared to the European Patent Attorneys admitted to represent before the EPO who took the EQE?

BTW, deadline for the next issue of epi Information is May 19, 2008. Documents for publication should have reached the epi Secretariat by this date.

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German Government Unable to Correct London Agreement Implementation Law In Due Time.

INTERNAL LINKAs I had reported earlier, the German Act amending the national German translation requirements in accordance with the London Agreement as passed by German Parliament is seriously flawed because of its discrepancy with regard to the deadline for abandonment of the requirement of a full German translation for European Patents designating Germany which appears to be later than that fixed by the London Agreement itself.

According to a letter originating from the German Ministry of Justice and circulated by the German Institute of Patent Attorneys (Patentanwaltskammer), German Government has abandoned all hope to get this problem fixed before the entry into force of the London Agreement, i.e. May 01, 2008.

Despite the fact that a political consensus has been reached within Government, including a clause to the effect that the new Bill will properly drop the translation requirement for all European Patents designating Germany which are advertised in the Official Gazette after April 30, 2008, there appears to be absolutely no chance to rush such a Bill through Parliament before May 01.

It is now expected that the new Bill will be published in the Bundesgesetzblatt not earlier than June 2008. Its effects with regard to London Agreement and concerning European Patents having their grant mentioned in the Official Gazette after April 30, 2008, will then be of a retroactive nature.

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