Implementation of London Agreement: German Patent Law now in a Shambles?
A friendly reader of this Blog was so kind to post a comment to my previous posting reporting that the London Agreement will enter into force on May 01, 2008.
With his comment, the reader points out that there might be some case of a sloppy exercise of work by the German political and parliamentary machinery in 2003 which now might have turned German Patent Law into a shambles: The London Agreement requires Member States of the 'London Club' revising their national law in accordance with the provisions thereof. With regard to Germany, this has already happened in 2003, where the German Parliament had passed a Bill amending the national German translation requirements in accordance with the London Agreement. Of course, at that date they did not know when exactly the London Agreement would enter into force. The national German law says that the Act to abolish the full translation requirement shall enter into force on the first day of the fourth month after the entry into force of the London Agreement. If I have counted correctly, the date of entry into force of the German national provision will be
September 01, 2008.
According to the provisions of the London Agreement applicable for Germany in conjunction with German law requiring a full translation within 3 months starting with the mention of grant, the latest European Patents granted by EPO for which a full translation for Germany is required will be mentioned in the Official Gazette on May 01, 2008, opening a three month term for preparing and filing a German translation with the German Patent and Trade Mark Office by
August 01, 2008.
This it appears as if national German Law would require filing of a full German translation with the German Patent and Trade Mark Office until one month in excess of the date given by the London Agreement.
If the Parliament does not manage to fix this problem by August 01, 2008, patent applicants might face a tough decision: Recurring to the London Agreement itself, not filing a full translation for patents mentioned in the Official Gazette from August 02 to September 01, 2008, risking the invalidity of their European Patent on the territory of Germany, or 'voluntarily' obeying German law by paying for a full translation.
"[...] National search reports, to check if Community Trade Marks being applied for are similar or identical to those already registered in individual EU member states, will become optional from 10 March, 2008.
From that date, search reports will be produced only if requested by the applicant at the time the application is filed. The searches will be done in all participating member states - 17 at present - and a separate fee will apply. Community search reports and warning letters, will continue to be delivered as before.
The fee for the national searches is currently being reviewed and further information will be given on the OHIM website before the new system takes effect. [...]"
It's Official: London Agreement to Enter Into Force On May 01, 2008.
The German Ministry of Justice just has confirmed that the French Instrument of Ratification for the London Agreement has reached the premises of the German Foreign Office yesterday, 2008-01-29, in the evening hours. Hence, the London Agreement will enter into force on
May 01, 2008.
The London Agreement will be effective for all European patents in respect of which the mention of grant was published in the European Patent Bulletin after May 01, 2008, to the extent of the present geographical coverage of the Agreement.
London Agreement: France To Deposit Instrument Of Ratification This Week?
There are unconfirmed off-line reports saying that France will deposit the Instrument of Ratification for the London Agreement with the German Government later this week but most probably before February 01. If this is true, the Agreement will enter into force on May 01, 2008.
The London Agreement will reduce costs of the patentee for validating European patents;
The London Agreement will not facilitate or improve (European) companies' access to the European patent system;
The reduction of validation costs by the London Agreement will lead to an enhanced filing of the companies which already make use of the European patent system;
The reduction of validation costs by the London Agreement will lead to an enhanced validation of European patents, especially of non-residents of US, JP, KR and CN;
The London Agreement will lead to a significantly reduced risk for the patentee with respect to translation costs;
The London Agreement will lead to an improved position for the patentee when enforcing the patent, because he can adapt and shape the translation of the European patent (within the originally granted wording of the claim) to the infringement issue;
The London Agreement will lead to a shift in the balance of the European patent system or to a weakening of the enforceability of the European patent;
The London Agreement will have an impact on the technological dependency from foreign countries;
The London Agreement could lead to higher national maintenance fees (annuities) to compensate the loss of ncome of NPOs due to the discontinuation of publication of translation of European patents validated in that Member State;
The London Agreement could lead to an artificial splitting of the Common Market of the European Union, because not all EU Member States will join the London Agreement
The London Agreement will lead to constitutional problems in many EPC Member Countries;
The London Agreement could lead to a significant reduction in local patent knowledge in many Member States of the London Agreement, both at the NPOs and as far as local patent attorneys are concerned; and
The London Agreement could lead to further criticism against the patent system in Europe.
Well, time will tell us as to whether or not some of such concerns really will materialise.
The New Route Proposal is an initiative of the Japanese Patent Office presented to the Trilateral Summit of European, US and Japanese Patent Offices in Munich on November 17, 2005. Under the new route proposal, it is possible for applicants to obtain an extra 18 months for processing at the national or regional level provided certain steps are taken on filing.
"[...] The United States Patent and Trademark Office (USPTO) and the Japanese Patent Office (JPO) have been considering a proposal for work-sharing called the "New Route". Under the New Route framework, a filing in one office that is party to this arrangement would be deemed a filing in all member offices. The first office and applicant would be given a 30-month processing time frame in which to make available a first office action and any necessary translations to second office(s), an the second office(s) would exploit the search and examination results in conducting their own examination. [...] Because the New Route, as envisaged, would require changes in law in the USPTO and the JPO, the USPTO and the JPO agreed, at the May 2007 Trilateral Technical Meeting, to commence a pilot project to test the New Route concept based on the two filing scenarios currently available under existing law in both offices. [...]"
The New Route pilot project will commence in both offices on January 28, 2008, i.e. to-morrow. The pilot project will, however, be terminated once 50 applications have been accepted into the pilot project by each office, or on January 28, 2009, whichever occurs first.
Applicants having a pending application satisfying a list of criteria can volunteer for participation in the pilot project by sending a fax to Ms Magdalen Greenlief, Assistant Commissioner for Patents at the USPTO.
France: Merger Debate Stalled in Entrenched Fights?
Last December I had picked up 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").
Yesterday, Mr Pierre Breese reported that a number of French patent attorneys appear to be convinced that the merger is a necessary and desirable evolution, and some are prepared enthusiastically for for such a step, some merely to follow reluctantly the path of unification as envisaged. Favourable for a modernisation of the profession, they are aware that the market for IP law and customer expectations imply a change in conditions for the exercise of their profession. However, others are decidedly resisting to any change and would not end their careers in any form other than the one they had always known. As a result, according to Mr Breese's report, the positions seem to get entrenched and, strangely, representatives of the French patent attorneys now, one month before a crucial deadline, start questioning their legitimacy to negotiate, while for weeks they had met ministers, and government partners.
Mr Breese asks why the profession of lawyers could not be opened, on the basis as planned, for the French patent attorneys who prefer to move, leaving back those who want to continue working with the current status.
This French debate appears to be an overall attempt to strengthen France as a EU Member State attracting IP business, in particular, but not limited to, litigation matters under some much anticipated EU Patent Court system.
Any idea that an entire national profession of patent attorneys like the French one could be merged into the profession of lawyers, with bearable burdens for additional training and with all related consequences in view of the right to appear before all sorts of courts, was received with disbelief and disaffirmation amongst German patent attorneys as far as I can tell. In view of the German traditions of training lawyers I would even be prepared to go as far as to say that it appears to be inconceivable to launch any political project similar to that currently debated in France for the remainder of this century because of the German profession of lawyers never will be ready to co-operate in such a game even if some political pressure were exerted by the German Government.
[UPDATE 2008-01-29] Mr Breese reports in a new posting that today an important step was taken by the members of the Institute of the French patent attorneys who voted with a two-thirds majority for a motion in favour of the continuation of the negotiations currently underway for a merger with the profession of lawyers. On February 08, 2008, a general assembly of the National Bar Council will have to decide on a similar motion. The next step will then be approval of draft rules governing the merger between the two professions by the two professions before presenting a common text at the Chancery in late February 2008. This text will then be submitted to Parliament to succeed if the two professions confirm their agreement a unified profession integrating Industrial Property Counsel in the legal profession.
Patents on Computer-Implemented Inventions: UK Courts Inching Towards EPO Positions?
Last year I had reportedDecision T 0154/04 of the Technical Board of Appeal 3.5.01 of the European Patent Office, the text bluntly criticising UK Lord Justice Jacob in view of his arguing in the Aerotel/Macrossan judgement. The EPO Board of Appeal had blamed Lord Justice Jacob for using two very different concepts of invention in one breath, this arguing of the UK Judge - in their opinion - resulting in a legal fallacy.
As a consequence of this particular piece of UK case law, the UK Patent Office UK-IPO had established a practice of flatly rejecting patent claims to computer program products contrary to the practice of the EPO. Last year, five companies, namely Astron Clinica Limited, Cyan Holdings Plc, Inrotis Technologies Limited, Software 2000 Limited and Surf Kitchen, Inc., had appealed against this restrictive practice.
Now, and this seems to be quite surprising, the table appears to be turned again: On the well-known IPKat Blog, Mr David Pearce reports that the Honourable Mr Justice Kitchin has ruled yesterday that the current UK Patent Office practice of flatly rejecting patent claims to computer program products is wrong. Mr Pearce writes:
"[...] After comprehensively summarising the last couple of decades of legal developments, covering the usual suspects (Gale, the oft-misspelled Merrill Lynch, Fujitsu and various EPO decisions), Kitchin J arrived at the main question in this appeal, which was whether the UK-IPO was correct in construing that the Court of Appeal judgment in Aerotel/Macrossan inevitably prohibited the patenting of all computer programs, or whether the old approach of considering the 'potential' technical effect of a computer program (following the EPO approach) could be taken into account, in a similar way to considering the effect of a method claim that would inevitably be carried out by running a program (which all of the applications under appeal contained). The UK-IPO had concluded that Aerotel/Macrossan ruled out computer program product patent claims, and consequently reverted to its old practice of rejecting such claims.
Kitchin J, however, considered that the point did not actually arise in Aerotel/Macrossan, because the court was not even asked to consider the question of computer program products claims. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to this point, being T 1173/97 and T 935/97. Also, the new four step test approach should produce the same result as the 'old' approach, and the Court of Appeal had said as much by saying that Merrill Lynch must be followed.
Probably more importantly, Kitchin J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, where the EPO line tends to be followed closely.[...]"
Mr Pearce characterises himself as being quite amazed by the judgment because before the recent judgement he had been convinced that, under the system of UK case law, there was no room for manoeuver after Aerotel/Macrossan, and he asks the important question as to whether the UK-IPO can simply all go back to falling into line with the EPO, or if they will judge that this one is worth going further on.
Livre reports that after two years in office, Mr Pieter Hintjens earlier this month has decided to step down as FFII President. Apparently there have been severe differences between Mr Hintjens and other members of the board. Mr Hintjens is a software designer, writer, and campaigner with over 25 years' experience in the IT business. Founder and director of iMatix Corporation, he was the main author of the AMQP/0.8 industry standard messaging protocol, and main designer of the OpenAMQ messaging system. He had been elected at the FFII General Assembly on November 29, 2005, as successor of the founder of FFII, Mr Hartmut Pilch.
Under its President Mr Pieter Hintjens the FFII was more eager than under his predecessor Mr Hartmut Pilch not only to serve the interests of the moralist subgroup within the crowd of the FFII followers. It strongly appeared as if FFII wanted to gain political influence by acquiring a more pragmatic appeal. For example, Mr Hintjens fostered a co-operation with IBM officials with regard to some aspects of patent politics.
According to the report cited above, FFII Vice-President Mr Barrionuevo (Spain) follows Mr Hintjens as FFII President.
Mr. Barrionuevo is the CEO of OPENTIA, an I.T. company located in Madrid, and VIRTUA, an OPENTIA R&D branch located in the Technological Park of Andalusia (Spain). It is also reported that he is well known as an activist of electronic civil rights - being also coordinator of the project EstandaresAbiertos.org as well as a member of OpenDocument Fellowship, ODF Alliance and the Advisory Council of Hispalinux.
Obviously there appears to be something like a rift between different groups concerning the future composition of the board. This note says that not only Mr Pieter Hintjens but also Mr Ivan Villanueva has stepped down. Maybe that Ms Laura Creighton, Founder of Sekans, a Swedish Venture Capital Firm, and Mr Rene Pfeiffer from Austria will join the FFII board.
FFII had their heyday during the public debate on the EU Draft Directive on the patentability of computer-implemented inventions when they managed to turn the table in the plenary vote of the European Parliament after the first reading of that matter. If they were allowed to get away with the result of the first reading, patent law in Europe would have been crippled. However, eventually the entire project was canceled by a vast majority of MEPs in the second reading of that bill in the European Parliament. Hence, Europe did not get a harmonisation directive unifying handling of patent applications relating to computer-implemented inventions, on the one hand, but Europe did not suffer any degradation of substantive patent law, on the other hand. Altogether it has been a wise choice to sacrifice the Draft Directive in return for maintaining the sound condition of the established body of patent law throughout Europe.
During Mr. Hintjens' term in office, FFII was mainly active with regard to the Microsoft OOXML standardisation matter. It will be interesting to see if there will be any changes to the general orientation of FFII campaigning in the near future.
[UPDATE 2008-01-22] FFII appears to be split in agony over the Presidency of Mr Barrionuevo. Some RSS feed from www.ffii.org today unveiled a notice on a boad Wiki which is (at least currently) readable by the public, showing that Mr Pilch vigorously criticises Mr Barrionuevo, demanding that presidency should be taken over by the 1st vice president, Ms Laura Creighton.
Further Steps in EU Patent Policy Under Slovenian EU Presidency.
The EU Council has now published Document 5245/08 issued by the present EU Presidency (Slovenia) and addressed to the Working Party on Intellectual Property (Patents). The title of the Document is EU Patent Jurisdiction - Remedies, procedures and other measures.
According to the cited Document, the proposed EU-Patent Jurisdiction ("the Court") would constitute a Community jurisdiction with uniform remedies and procedures. The new Document presents an outline of the remedies, procedures and other measures that the first and second instances of the Court could apply.
The Document further suggests that the rules should be tailor-made for patents and ensure expeditious and high quality decisions, striking a fair balance between the interests of right holders and other parties. Moreover, they should provide for cost-effectiveness of procedures and thus facilitate access to justice, in particular for SMEs.
The document complements the revised Presidency's working document "Towards an EU-Patent Jurisdiction - Points for discussion" regarding the main features of the envisaged EU patent jurisdiction (14492/07 PI 42).
Important aspects of the new Document appear to be, inter alia, as indicated by some quotations from the text of the Document:
The Court could be given the authority to permit the inspection of commercial premises without notice by a qualified person who may search for goods, materials, devices etc. In this context, the Court could accept that a detailed description or a sample of the "evidence" may be considered sufficient proof for the whole. This procedure, known in patent law as saisiecontrefacon,is an example of good practice which already exists in certain Member States. It would enable proof of infringement to be brought very efficiently and at a moderate cost. But the interests of the defendant also need to be adequately protected. "Fishing expeditions" must be avoided and the production of evidence should, for example, be subject to the protection of confidential information. If the orders would affect third parties, their interest should be taken into account and they should, for instance, be given the opportunity to submit observations.
Interlocutory injunctions should stop any impending infringement, or forbid the continuation of the alleged infringement. The Court could also order the seizure of the goods suspected of infringing a patent right so as to prevent their distribution within the channels of commerce. When the recovery of damages is likely to become difficult or impossible, the Court could be authorized to order the seizure of property of the alleged infringer, including the blocking of his bank accounts. Another essential tool for the proprietor would be that the Court orders a party to refrain from removing assets beyond the jurisdiction of the Court so as to frustrate a judgement (freezing order, or Mareva injunction). Injunctions should be based on the principle of equity and judges should be given criteria for weighting the interests of all the parties. In order to avoid abuse, it could be explored whether the request for injunctions should be limited to situations where the applicant manufactures or commercialises competing products.
The Court should have two ways of setting the specific level of damages. Firstly, it could take into account all appropriate aspects of the prejudice, such as unfair profits made by the infringer and/or lost profits if the patentee can show that he lost sales as a result of the defendant's infringing sales. It could also take into account elements other than economic factors, such as the moral prejudice caused to the right holder. Secondly, the Court could set the damages as a lump sum on the basis of certain elements. A lump sum should always be at least the amount of the customary licence fee which would have been due if the infringer had requested authorisation to use the patented invention in question. These methods do not contain an upper limit. It should however not be the aim to introduce an obligation to provide for punitive damages. This is in conformity with common practice in EU patent litigation.
The parties should be represented by lawyers authorised to practise before a court of a Member State. In patent litigation, questions of technology play an important part in order to reach a legally sound decision. Technical expertise is required not only on the side of the Court but also on the side of the parties. The lawyers should therefore have the possibility to involve and to act together with a European Patent Attorney who is a national of a Member State and entered on the list maintained by the EPO. The European Patent Attorney should be allowed to speak at hearings.
All or part of the procedures should be conducted in electronic form or otherwise making good use of modern communication technologies such as video conferencing. The costs for making use of these technologies should normally be borne by the Court.
The owner of a patent who institutes proceedings before the Court against an alleged infringer must provide proof of this infringement. However, when the alleged infringement concerns a patented process for obtaining a product, it may be very difficult for the patent owner to prove that the claimed process was not used in the manufacture of the product. This is for example the case if there is a strong probability that the identical product was made using the patented process but the patent owner has been unable to determine the process actually used despite reasonable efforts. In such situations specific rules on the reversal of the burden of proof could be considered.
The Court should decide in accordance with the requests submitted by the parties. Apart from well-known facts, decisions on the merits may only be based on the grounds, facts and evidence put forward by the parties.
Given the length of opposition procedures it should be explored whether, despite pending opposition procedures, it should nevertheless be possible to file an invalidity action with the central division of the Court.
With regard to the question of representation before the Court in infringement proceedings, the Document obviously resembles the present German approach to make representation by a lawyer mandatory but to allow Patent Attorneys to speak in Court on their own right.
The recent issue 04/2007 is ready for download here (PDF).
From the Table of Contents:
Mr T. Johnson (GB), Editorial: Whither Patents in Europe?
Mr W. Holzer (AT), former epi President: On Education. Mr Holzer advocates:
"[...] I would advocate some sort of 'compulsory' or rather 'advised' continued professional education, for European Patent Attorneys in certain fields. [...]"
Mr M. Hössle (DE), Directeur de la Section Internationale du CEIPI: 30th epi Anniversary, Nuremberg, 23 October 2007.
Report of the 63rd Council Meeting and of the 30th Anniversary Celebration of the epi Nuremberg, 22nd - 23rd October, 2007.
Draft decisions 63rd Council meeting, Nuremberg, 22-23 October 2007.
Mr C. P. Mercer, President epi: President's and Vice-Presidents' Report.
Mr C. Quintelier (BE): Treasurer's report.
Mr A. De Clercq (BE), Chairperson: Report on the EPO/epi Biotech Committee Meetings of 27 October 2005 and 6 December 2006. (quite old stuff)
Mr P. Rosenich (LI), Chairman: Report of the Disciplinary Committee.
Mr W. Holzer (AT): Editorial Committee Report.
Mr E. Lyndon-Stanford (GB), Chairman, EPPC: Report of the European Patent Practice (EPPC).
"[...] The EPPC voted by a large majority that the level of invention should be raised. However, the feeling of the October 2007 Council meeting was that the level as defined in the EPC and Rules was about right but that the EPC criteria should be applied more strictly. [...]"
Mr J. Boff (GB), Chairman: Report of EPO Finances Committee.
"[...] This report addresses the 91st Budget and Finance Committee meeting held 8th to 11th October.
The BFC meeting: -
made clearer than ever that changes in the applicable accounting standards, while altering nothing of substance in the EPO, presents a less rosy picture than the previous accounting standard and has led to negative perceptions within the EPO and Member States
that decisions concerning the tax situation of EPO pensioners has had a major one-off impact on EPO finances that has aggravated these negative perceptions
that the Office has a view of developments in the patent arena that may lead to some uncomfortable decisions in the future.[...]"
Mr F. Leyder (BE), Chairman: Report of the Harmonisation Committee.
Mr R. J. Burt (GB), Chairman: Report of epi On-line Communications Committee.
"[...] The use of on-line filing continues to expand and now stands at 46 to 48% of filings; it was noted that Germany has the slowest uptake with the use of on-line filing. Germany uses a system for on-line filing different from that used by the EPO and this may explain the lower usage by German applicants. [...]"
Mr C. Eder (CH), Chairman: Report of the By-Laws-Committee.
Mr C. A. Theodoulou (CY): Report of EPC 2000 Seminar in Nicosia.
Mr. C. Quintelier (BE), Mr F. Smit (NL): Benelux epi-seminar on EPC 2000.
Mr J. Marko (HU): Requirement of Inventiveness For Utility Models.
Mr T. Johnson (GB), Mr E. Armijo (ES): FICPI Executive Committee Seville, 4th - 6th November, 2007.
Mr S. Gedeon (HU): Bemerkungen über den Aufsatz von Herrn Patentanwalt S.V. Kulhavy - Arten der Beurteilung von Erfindungen - epi Information, Juni 2007, S. 63-65.
Mr S. Roberts (GB): Comments on Paper C of the 2007 European Qualifying Examination. A brief quotation from this article:
"[...] Colin Philpott, Chairman of the Examination Board of the EQE gave an interesting speech at this year's EQE Award Ceremony. He stressed the importance of the EQE failing candidates who do not demonstrate that they are fit to practise. But he was most loquacious on the subject of the Board's utmost faith and belief in the correctness of everything that the Examination Committees had done this year and that certainly everything had been marked uniformly. Indeed, this message was repeated so emphatically that one could not help thinking he 'doth protest too much'.
In fact the EPI and CEIPI tutors who had earlier sat in the meetings with representatives of the Examination Committee for paper C already knew that there was something rotten to cover up. [...]
In conclusion, while I appreciate that the Examination Committees and the Examination Board perform a noble and difficult task with neither thanks nor gratitude, and that they have historically done this quite well, I do not believe that this absolves them from blame and responsibility when they err as they so clearly did this year. It is not enough for someone to fall on their sword - although that would be an appropriate starting point - remedial action is required to repair the damage done to the candidates who failed this year's paper C. Moreover, something concrete should be done to prevent the paper C Exam Committee pursuing this hobby horse in the future. [...]"
Strong meat, indeed. The underlying problem was that the Committee's position was apparently that candidates should have to show that they can reliably identify the single document which represents the closest state of the art - and hence this is a skill that needs to be tested by paper C. In the effect, those candidates who started from some annex 3 had their arguments ignored unread - or at least received no marks irrespective of the strengths and merits of those arguments (which amounts to the same thing). According to the author this clearly violates Article 16 of the Decision of the Administrative Council of the EQE requiring that the Board shall give the member of the Examination Committees the necessary instructions to ensure that candidates' answers are marked in a uniform manner.
Perhaps many of the candidates who have failed the 2007 EQE due to this problem with the C paper might have duly considered to appeal.
Issue 1/2008 will be a themed issue "Effects and Expectations of EPC2000". Because of the necessary publication of the election results the deadline for the next issue of epi Information has been brought forward to 31 January 2008. Documents for publication should have reached the epi Secretariat by this date.
Feel free to contact PA Axel H Horns via e-mail
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of: