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The German Federal Supreme Court decides on the patentability of a dosage of a pharmaceutical
On September 24, 2013, the German Federal Supreme Court has, in its decision "Fettsäuren" (X ZR 40/12) reversed a decision of the German Federal Patent Court and revoked a patent in its entirety. The Supreme Court has confirmed its case law according to which the disclosed discovery of the biological reasons of the effect on which a pharmaceutical is based, does not disclose a new technical teaching if the active pharmaceutical ingredient, the indication, the dosage and the further circumstances in which the active pharmaceutical ingredient is being used, corresponds to the use of the active pharmaceutical ingredient for the treatment of an illness which has been described before. Even the selection of a certain dosage within a previously known range generally does not lead to patentability. Exceptions to this rule are only justified if the dosage instruction defined in the claim evidently has specific technical effects which were not known in the state of the art.
The German Federal Supreme Court decides on copyright protection for applied arts
In a Decision of November 13, 2013 (I ZR 143/12 "Geburtstagszug") the Supreme Court has revised its longstanding case law: Contrary to earlier case law, the standard for accepting copyright protection for applied arts is the same as that for copyright protection for fine arts. The previous case law, according to which the standard regarding applied arts was higher, has been justified based on the consideration that for applied arts also design patent protection is available. Alteration to the case law has been reasoned based on the consideration that the Design Patent Act had been reformed in 2004 according to which there is no longer a close connection between design patent protection and copyright protection.
Grünecker distinguished as the law firm of the year for IP
Grünecker receives the JUVE award as “law firm of the year for IP”. The editorial team of the specialist journal JUVE distinguishes law firms which, based on their operations and market position, are seen to be especially dynamic. The JUVE editorial staff points out that Grünecker has excelled in this respect in all areas of expertise under review. The law firm has been able to successfully develop its focus on trademark and competition law in the following ways: In early 2013, three new partners were appointed simultaneously, namely Anja Franke, Holger Gauss and Nicolás Schmitz. “Grünecker comes out the leader in trademark and competition law”, remarks the JUVE editorial team: “While its competitors among the law firms covering a wider variety of fields have to combat downward trends in terms of business, Grünecker simultaneously appoints three aspiring attorneys from its own ranks partners. The household name in IP consultancy and litigation gives its aspiring star attorneys freedom to develop distinct profiles with an edge in data privacy and design model law. And they have indeed succeeded at that: the new partners attend to such high-profile customers as Xerox or Hermès, with multi-national projects”. The JUVE editorial team also commends Grünecker as being “outstanding in the field of patent law”. Due to its leading position when it comes to handling patent applications, the law firm is very well known in Europe. In addition, with its offices in Paris the law firm is better prepared than competitors for the advent of the new EU patent. Paris will be made the seat of the Central Division of the Unitary Patent Court. With the legal advent of the EU patent (probably in summer 2015), Paris will therefore receive extensive competences for handling patent cases (for nullity suit and infringement proceedings). Grünecker has already had offices in Paris since 2009, which are continually being expanded.
EPO repeals restrictions on filing divisional applications
In its October meeting, the Administrative Council of the European Patent Organization decided to repeal the restrictions on filing divisional applications which were introduced in 2010. As of April 1, 2014, it will again be possible to file a divisional application based on any pending patent application. The 24-month time limits for the filing of divisional applications are abandoned. However, an increased fee will be due for divisional applications of second or subsequent generation. The exact amount of this fee is not yet known.
The Five Largest Intellectual Property Offices (IP5) agree on the Patent Prosecution Highway Pilot Programme
As of January 2014, a comprehensive IP5 Patent Prosecution Highway Pilot Programme of the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People’s Republic of China (SIPO) and the United States Patent and Trademark Office (USPTO) shall be initiated. The goal is to enable obtaining patents faster and more efficiently on the basis of PCT as well as national work products.
The German Federal Supreme Court Decides on the Undue Broadening of a Utility Model
In a decision of August 6, 2013, “Ink-jet Printer” (X ZB 2/12), the German Federal Supreme Court has dealt with the consequences of an undue broadening of a utility model claim. As long as not “something entirely different” has been claimed and as long as the originally claimed subject matter only has been limited, it is not necessary to invalidate the utility model. “Something entirely different” is not in place if only a technical teaching, which is contained in the originally filed application and described as belonging to the invention, has been concretized. In contrast to that, “something entirely different” is in place if a technical aspect is claimed, which is not contained in the original application, neither in its concretized form nor even in an abstract form.
The Enlarged Board of Appeal Sends Case back to the Board of Appeal
In a Decision of May 13, 2013 (R 0015/11), the Enlarged Board of Appeal saw the right to be heard in the sense of Article 113(1) EPC to be violated and has sent the case back. Moreover, a request was made that the members of the Board of Appeal, who participated in this decision under review, be replaced. However, this request was rejected. In the proceedings under review, the Board of Appeal has rejected an auxiliary request for being unclear (Article 84 EPC) without ever having indicated that this would be a decisive issue. A general hint in the Summons to attend oral proceedings that, among others, Article 84 EPC could be discussed, is not sufficient in that respect.
Austria is the First Country which Ratifies the Unified Patent Court Agreement
In February of 2013, 24 Member States of the European Union have signed an agreement concerning the Unified Patent Court. It has to be ratified by at least 13 Member States, amongst them France, Germany and the United Kingdom. Now, Austria took that step as a first Member State and has deposited the ratification instruments in Brussels. Since the European Court of Justice has refused in its decisions of April 16, 2013 (C-274/11 and C-295/11) actions of Spain and Italy against the Unified Patent System, the project is on track.
The German Federal Supreme Court Decides about the Trade with Used Software
In a decision of July 17, 2013 (UsedSoft II, I ZR 129/08) the German Federal Supreme Court has clarified the rules regarding the exhaustion of distribution rights of a copyright owner: The producer of computer software has stipulated in the license agreements with his customers that the right to use the computer program cannot be transferred. The defendant is trading with “used computer programs” and “used software licenses”. The District Court and Higher Regional Court have seen this as being unlawful. After receiving the response of the European Court of Justice to several questions hereto, the German Federal Supreme Court has referred back this case to the Higher Regional Court. The right to distribute a copy of a computer program can be exhausted in accordance with Article 4 Para. 2 of the Regulation 2009/24/EU. Preconditions, however, are that the copyright owner has given the right to the first purchaser to use a copy of the program without any timely limitation. Furthermore, any further purchaser of the copy of the program can only rely on the exhaustion of the distribution right if the first purchaser has destroyed its own copy.
The Technical Board of Appeal of the European Patent Office Refers Questions to the Enlarged Board of Appeal
In a Decision of July 9, 2013 (T 00 83/05; G 2/13) the Technical Board of Appeal has referred several questions concerning the exclusion of essentially biological processes from patent protection to the enlarged Board of Appeal, namely: whether the exclusion of essentially biological processes for the production of plants in Article 53 b) EPC can have a negative effect on the allowablity of a product claim directed to plants or plant material such as plant parts. In particular, the enlarged Board of Appeal shall decide whether a product by process claim is allowable if its process features define an essentially biological process and/or if a claim directed to plants or plant material is effected if the only method available at the filing date is an essentially biological process.
The European Parliament and the Council of the European Union Accepts Regulation (EU) No. 608/2013 Concerning Customs Enforcement of Intellectual Property Rights
As of January 1, 2014, the new Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual property rights will be applicable and repeal Council Regulation (EC) No. 1383/2003. The new regulation will not apply to goods carried by passengers in their personal luggage provided that those goods are for their own personal use and there are no indications that commercial traffic is involved. Furthermore, infringement resulting from so-called illegal parallel trade specifically overruns in excess of the quantities agreed upon in license agreements is excluded from the scope of the regulation.
The German Federal Supreme Court decides about damage claims in a contributory infringement case as well as the transfer of the patent during infringement proceedings
In a decision of May 7, 2013 (“Fräsverfahren”; X ZR 69/11) the German Federal Supreme Court has annihilated the decision of the Higher Regional Court of Munich and referred the case back. A contributory infringement was committed by offering means for the implementation of the invention. However, the patentee has had no evidence that a direct infringement committed by a third party by actually using the offered means in a patent infringing manner has in fact taken place. The Higher Regional Court of Munich has denied the patentee’s claims for an accounting and the declaratory action stating that the contributory infringer is in principle liable for damages. However, the German Federal Supreme Court found that in general even only one contributory infringement committed by offering such means is sufficient to adjudge these claims. Moreover, the German Federal Supreme Court decision is concerned with the question of how to procedurally treat the case in which a patent is transferred during infringement proceedings before registration of such transfer in the patent register. As long as a transfer of a patent is not registered, only the previously registered patentee is entitled to claim patent infringement. However, this registration is not decisive for the question of who, according to the material law, is the holder of the claims. Consequently, a previous patentee, who is still registered as the owner, but has in fact previously transferred the patent and the claims resulting thereof, has to adapt the claim request in a way that the claims are to be fulfilled vis-à-vis the new and actual owner.
The German Federal Supreme Court decides about parallel actions of a patentee and an exclusive licensee
In a decision of February 19, 2013 (X ZR 70/12) the German Federal Supreme Court had to decide on the following case: a patentee has filed a patent infringement action against an infringer and thereafter granted an exclusive license regarding the patent in suit to a third party. Then even the exclusive licensee has filed a patent infringement action against the same infringer. The German Federal Supreme Court came to the conclusion that the action raised by the exclusive licensee is inadmissible. Moreover, a final judgment about the action of the patentee is also binding the exclusive licensee.
The German Federal Supreme Court decides about the transfer of a priority claim
In a decision of April 16, 2013 (X ZR 49/12) the German Federal Supreme Court came to the conclusion that the transfer of the right to claim a priority of a German patent application is not subject of a form requirement even if the priority shall be claimed for the benefit of a European patent application. In this case the validity of the transaction is subject to German law which does not provide a form requirement. Herewith the German Federal Supreme Court contradicts a decision of the Technical Board of Appeal of the European Patent Office of November 14, 2006 (T62/05)
The European Commission expresses its view on standard essential patents
The European Commission has sent to companies "objections on potential misuse of mobile phone standard essential patents”. In principle an infringer of standard essential patents can defend himself with the argument that he is willing to enter into a license agreement under "Fair Reasonable and Non-Discriminatory (FRAND)" conditions. However, regarding the issue under which conditions a potential licensee is to be considered as "willing" to take a license there are different opinions between the German Federal Supreme Court and the European Commission. According to the European Commission it is sufficient if the potential licensee declares to be willing to pay a license fee which has been considered "reasonable" by a German court. Moreover, even if the potential licensee raises arguments regarding non-infringement and/or invalidity of the standard essential patent he can rely on his willingness to take a license. Regarding this issue the District Court Düsseldorf has recently referred questions to the European Court of Justice (confer the homepage news of March 2013) and guidelines of said court are to be expected.
German Federal Patent Court Refers Question Regarding a Color Mark to the European Court of Justice
In two proceedings 33 W (PAT) 103/9 and 33 W (PAT) 33/12 (decision) the validity of the color mark “Red”, which has been registered as a color since 2007 on behalf of German Savings Bank and Giro Association and which has been used starting from the last century, namely during the 1960s and 1970s, is at issue. Two banks, which are competitors, have failed with the attempt to cancel this trademark at the German Patent and Trademark Office. Now the German Federal Patent Court has asked the European Court of Justice for a decision as to how large the share of the consumers must be, who associate the color with a certain company and how the interests of competitors in a free use of said color has to be taken into consideration. Furthermore, it shall be clarified, which point in time is relevant for this assessment, the date of the application of the trademark (in this case, 2002) or its registration (in this case, 2007). Finally, it shall be clarified as to who has the burden of proof and to the disadvantage of which party the case has to be decided if the view of the consumer at the relevant point in time cannot be determined anymore.
European Court of Justice Rejects Spain’s and Italy’s Actions against the Unitary Patent System
The council of the European Union has allowed in total 25 European member states to create a Unitary Patent System based on the so-called enhanced cooperation which is possible under the TFEU. The attempt of Italy and Spain to challenge this decision has now been rejected by the European Court of Justice in a decision of April 16, 2013 Cases C-274/11 and C-295/11. The European Court of Justice had to answer several rather basic questions such as whether EU member states are competent at all for an enhanced cooperation in the field of patents or whether the European Union has exclusive competence and whether the enhanced cooperation which must be adopted as a last resort is permissible in the present case. In summary, the united patent system has taken an important hurdle.
The Board of Appeal of the European Patent Office refuses new arguments in appeal pro-ceedings
In a decision of March 7, 2013 (T 0494/11) a board of appeal of the EPO has not admitted the amendment of a parties case during appeal proceedings. An opponent has introduced one month before the scheduled oral proceedings a patent application to show that the claimed prior-ity was not the first application in the sense of Article 87 (1) EPC. Consequently the opponent raised further objections relating to lack of novelty and lack of inventive step. Independently of this priority issue further objections with regards to an inventive step were raised, objections which the reasons of appeal of this opponent did not contain. The Board of Appeal concluded that the introduction of these objections at such late state of the proceedings would be contrary to the spirit of the appeal proceedings as for seen in the Rules of Procedure which prescribes that the statement of grounds and the reply to it must contain a parties complete case. Conse-quently all late filed arguments were not admitted to the proceedings.
The District Court of Dusseldorf refers a case to the European Court of Justice
In a decision of March 21, 2013 (4b O 104/12), the District Court of Dusseldorf has referred several questions relating to standard essential patents to the European Court of Justice. The background is that the German Federal Supreme Court has defined in a landmark decision (KZR 39/6) “Orange – Book – Standard” rather harsh pre-conditions, under which an infringer of a standard relevant patent is entitled to a license and can defend himself accordingly. Basically, the infringer has to offer to enter into a license agreement, the refusal of which offer by the patentee would be discriminatory. Furthermore, the infringer has to render an accounting and to pay for past infringement in order to have this defense argument. In a press release of December 21, 2012, the European Commission arguably has defined less strict pre-conditions of this defense, namely that the competitor declares to be willing to negotiate a license agreement. Now the District Court of Dusseldorf has asked the European Court of Justice for a clarification.
Signing of the Unified Patent Court Agreement
On February 19, 2013, the International Agreement for Establishing a Unified Patent Court was signed. To come into force, the Unified Patent Court Agreement must be ratified by at least 13 of the contracting European Union member states including France, Germany and the United Kingdom. The Court of the First Instance has a central division which will be located in Paris and which has specialized sections in London and Munich. If all necessary decisions are adopted in a timely manner, the first registration of a European patent with the unitary effect may take place in spring 2014.
The German Federal Supreme Court decides about reimbursement of costs in patent nullity proceedings
At the German Federal Patent Court, different chambers have rendered in the past contradicting decisions as to the question of reimbursable costs in patent nullity proceedings. Now, the German Federal Supreme Court has clarified this issue in two decisions dated December 18, 2012 (X ZB 6/12 and X ZB 11/12): If there is a parallel patent infringement action pending which is an action between the same or affiliated parties, then the costs which are caused by the representation in the proceedings by a patent attorney and an attorney-at-law are reimbursable.
The European Court of Justice Decides about International Jurisdiction for Negative Declaratory Actions
In a decision of October 25, 2012, (C-133/11), the European Court of Justice has answered questions of the German Federal Supreme Court regarding the international jurisdiction for negative declaratory actions: the place of jurisdiction in case of a tortuous act is defined by that place where the damaging event has occurred or is likely to occur. This is the place where the damage is realized as well as the place of the event which is causal for the damage. At both places, a negative declaratory action can be brought which aims at a declaratory judgement saying that the preconditions of liability resulting in a damage claim are not fulfilled. A court which cannot assume one of these connecting points has to deny its jurisdiction.
The District Court of Cologne Decides about the Infringement of a Word-mark by a Chocolate Teddy Bear
In a decision of December 28, 2012 (33 O 803/11) Gold Bears, the District Court of Cologne concluded that marketing a chocolate teddy bear wrapped in gold foil infringes the renowned word-mark “Gold Bears” of the plaintiff. The decision is of importance because so far there is no Supreme Court case law regarding the infringement of a word-mark with a three-dimensional design. The District Court of Cologne sees it as a similarity, which causes the trademark violation that the trademark “Gold Bears” represents the same meaning as the three-dimensional design. A further reason is, according to the District Court, the fact that the chocolate teddy bear wrapped in gold foil has the outer form of a gummy bear for which products the trademark “Gold Bears” of the plaintiff has an outstandingly high profile.
The German Federal Supreme Court Decides about a Novelty of a Substance Composition
In a decision of October 23, 2012 (X ZR 120/11) the German Federal Supreme Court decided that a substance composition which is available on the market is not new if it can be analyzed by the skilled person and reproduced without undue effort. If the composition is complex and cannot be easily identified, it is nevertheless novelty destroying if the skilled person can develop a limited number of plausible hypotheses about the possible composition and if he/she can verify these hypotheses by means of available tools for analysis.
The German Federal Supreme Court Decides about Keyword-Advertising
In a decision of December 13, 2012 (I ZR 217/10), the German Federal Supreme Court did not see it as a trademark infringement that a competitor has used the trademark “MOST” as a keyword. According to the German Federal Supreme Court, there is in general no confusion about the origin of goods if, after using a keyword, the advertisement which pops up is clearly separated from the hit-list and only shown in an advertisement block which neither shows the trademark nor a hint to the trademark owner or the goods offered under that trademark.
EU Parliament and EU Competitiveness Council vote in favour of the unitary patent
On December 10 and 11, 2012, the European Competitiveness Council as well as the European Parliament voted in favour of the current unitary patent package. The following day, the Advocate General proposed that the Court of Justice of the EU should reject the corresponding pleas put forward by Spain and Italy and, consequently, dismiss both actions. In view of this, the unitary patent, finally, seems to be in reach. Read more about the unitary patent package. (more)