A couple of minutes ago I was called in by a KSNH paralegal to assist her in filing an application for a national German trade mark application utilising the new DPMAdirektWeb facility which is available to the public since November 12, 2013. She had just [...]]]>

A couple of minutes ago I was called in by a KSNH paralegal to assist her in filing an application for a national German trade mark application utilising the new DPMAdirektWeb facility which is available to the public since November 12, 2013. She had just arrived at a step where the items of the list of goods and services are to be entered. To her surprise there was no visible option just to enter free text. The user appeared to be forced to select from a picklist drawn from a lager database of goods and services already known to the DPMA from earlier applications. And, it turned out that the specific item the client wanted to see within the list of goods and services was not available in the picklist offered by the new website.

I couldn’t believe that the new filing system is crippled that way and immediately called a DPMA hotline number indicated on the DPMAdirektWeb page. To my surprise the lady at the other end of the line confirmed that it is not possible to enter arbitrary text into the list of goods and services.

Well, is such action of the DPMA really within the bounds of applicable law?

As far as I know neither German Trade Mark Act nor Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 do comprise any provision allowing Offices to hinder applicants to file trade mark applications covering goods and/or services which are new to the respective internal database of acceptable items.

It is just that Offices like to streamline their internal processes by preferring to deal with pre-approved lists of goods and/or services only.

The German Patent and Trade Mark Office (DPMA) is one of many administrative agencies of the Federal Republic of Germany. Its task is to implement the law, not to create new law.

I have not yet bothered to obtain an Official statement of the DPMA concerning this matter. But I would not be very much surprised if they argue that any applicant insisting on using an individually worded list of goods and services still may refer to a paper-based way of filing the application. However, doing so comes with EUR 10,– extra costs for Official application fees. And, yes, we patent attorneys usually can switch to the DPMAdirekt on-line filing facilities which have ownership of a smartcard as a prerequisite.

But I prefer to see this as a matter of principle: If the law allows to file individually worded lists of goods and services, every filing facility should support such kind of freedom.

I can see that DPMA might strongly feel encouraged by the bad example given by OHIM to proceed on a way of nudging applicants to follow paths where the interest of the respective administrative agency to have smooth, fast and cheap internal workflows is fostered at maximum at the expense of the applicant’s interest to have a trade mark perfectly tailored to its needs. However, OHIM at least allows free text in lists of goods and services – although the current as well as the future OHIM on-line web filing TM facility (operative from December 02, 2013 onwards) both have plenty of nag-screens warning the user when departing from the path of virtue which requires to stick to the internal database of pre-approved items.

If court proceedings took many years and a final decision was delivered only after, say, ten years of endless deliberations or so, delivering  justice this late might well be perceived as delivering no justice at all. Hence, when composing present Draft of the Rules of Procedure [...]]]>

If court proceedings took many years and a final decision was delivered only after, say, ten years of endless deliberations or so, delivering  justice this late might well be perceived as delivering no justice at all. Hence, when composing present Draft of the Rules of Procedure (RoP) for the envisaged Unified Patent Court under the still-to-be-ratified Unified Patent Court Agreement (UCPA), the Members of the Drafting Committee under the guidance of the Preparatory Committee apparently thought it might be a good idea to set short time limits within the numerous stages of the Court proceedings in order to reach a decision in the first instance after one year.

But you can fall down from a horse on either side of the saddle.

When working as a European Patent Attorney before the European Patent Office you may get accustomed to terms and deadlines that usually are integer multiples of one month, e.g. four months or six months in case of responding to a normal Office Action.

For observers from outside the law firm business this might sound like an indication of slothfulness and bureaucratic procrastination. But in reality months can pass by quite rapidly if you need instructions from a client that is not sitting a few steets apart form your Office but on another continent.

Take, for example, a case where an attorney seated in Munich acts on behalf of a client C located somewhere in the United States or in Japan. Let us further assume a frequently occurring constellation where this client C has outsourced co-ordination of overseas legal matters to a local law firm L seated in San Francisco or Tokyo, respectively.

In this case, the chain of communications from EPO to the applicant then goes as follows:

EPO --> Munich Attorney --> Law Firm (San Francisco / Tokyo) --> Applicant

Applicant -->  Law Firm (San Francisco / Tokyo) --> Munich Attorney --> EPO

If merely a routine Communication of the EPO is to be answered, this chain normally is traversed only once. In the first step, the Munich attorney takes the file of the application, reads the Official Communication and writes a statement explaining its meaning, in many cases providing a sketch of the options as to how to reply thereto. When received by the intermediate Law Firm, usually an attorney located there issues another comment to put the EPO Office Action and the statement of the Munich attorney into a wider context of the overall strategy of the client. Within the client’s organisation, multiple departments and/or persons may contribute to the instructions eventually to be routed back to the Munich attorney via the intermediary Law Firm. Only after this series of exchanges of messages the Munich attorney can start with drafting a proper reply to be submitted with the EPO. In this example, at least four communication steps are necessary to receive proper instructions on how to draft a response in face of the deadline.

Of course, theoretically it is possible to hold available all the time spare attorney’s capacity in Munich and at the intermediate Law Firm (in our example in San Francisco or Tokyo) at standby in order to be prepared to immediately work on incoming communications. It is clear, however, that doing so must be an expensive exercise. Hence, in order to have a balanced workload for all nodes within the communication chain, some delay needs to be accepted. In practice, terms of several months are proven to be acceptable in most cases.

When browsing the various Rules in the 15th Draft version of the Rules of Proceedings, the fact attracts attention that there are numerous deadlines buried therein counting just from 10 to 20 days. And it is to be expected that litigation cases might be much more complex and stakes therein might be much higher than in simple prosecution cases. Therefore, it can safely be assumed that the above-mentioned chain of communication in many cases needs to be traversed more than once when litigation matters before the UPC are dealt with. And again only after this series of communication steps the response to the Court can be drafted by the Munich attorney and eventually filed with the Court.

Below find a list of Rules that comprise such tough deadlines: 

• Rule 16 – Examination as to formal requirements of the Statement of claim
• Rule 19 – Preliminary objection
• Rule 27 – Examination as to formal requirements of the Statement of defence
• Rule 39 – Language of the proceedings before the central division
• Rule 89 – Examination as to formal requirements (ex parte proceedings)
• Rule 142 – Defence of the unsuccessful party and Reply to Defence
• Rule 197 – Order to preserve evidence without hearing the defendant
• Rule 198 – Revocation of an order to preserve evidence
• Rule 207 – Protective letter
• Rule 213 – Revocation of provisional measures
• Rule 221 – Application for leave to appeal
• Rule 224 – Time periods for lodging the Statement of appeal and the Statement of grounds of appeal
• Rule 229 – Examination as to formal requirements of the Statement of appeal
• Rule 235 – Statement of response
• Rule 238 – Reply to a statement of cross-appeal
• Rule 252 – Examination as to formal requirements of the Application for rehearing
• Rule 321 – Application by both parties to use of the language in which the patent was granted as language of the proceedings
• Rule 323 – Application by one party to use the language in which the patent was granted as language of the proceedings
• Rule 371 – Time periods for paying court fees
• Rule 379 – Examination and decision

When studying these Rules it becomes clear that not all of them are purely technical; some of them require research and careful evaluation of strategic options.

This scheme of terms and deadlines not only puts attorneys under stress; client organisations may also be affected as well. If a large public company acts as party to Court proceedings, one may assume that there is a well-staffed patent department. If the head of this department is out of office, there will be a deputy having substantially the same knowledge as the superior. Hence, one might argue that this company should be able to take decisions within a few days if so required by the RoP.

However, what about representing a client from the SME range? Under such assumption strategical decisions in many cases solely depend on the Managing Director in person. But what can be done if, for example, the Managing Director is out for, say, a fortnight on an extended business trip to another continent? I imagine a Munich attorney spending  hours in the evening or in the early hours of the day desperately trying to get the Managing Director of a German SME Client happening to be party to UPC proceedings on the phone in a hotel in Shanghai or Palo Alto in order to discuss difficult but utmost important questions concerning the Court case. Surely the Managing director will also be dismayed learning that a crucial deadline will lapse in a few days, the response to be filed contributing perhaps in a make-or break fashion to the fate of the Court case (and, maybe, to that of the company).

It is important to understand that the difficulties discussed above are not caused by technical delays of the communication processes. In the days of e-mails and electronic Court filings (as prescribed by the RoP), these delays can be neglected (if all systems continue to work properly). However, the decisions as to how to respond to a Court communication still need to be taken by humans, and those non-technical but social steps set the limits for minimum terms and deadlines prescribed in the RoP.

And, I do not say that such terms as proposed in the 15th Draft of the RoP can by no means be met in practice. However, setting up organisational measures on hot standby in order to cope at any time with, say,  a 10 days deadline will cost extra efforts and money. SMEs will probably be challenged by the proposed short terms and deadlines more than bigger companies because of on top of their invoice presented by external attorneys  they might struggle also to make sure that their (usually very small) bunch of internal top brass personnel (often only the Managing Director) can be accessed virtually at any time in order to obtain crucial decisions within very few days.

Hence, concerning the 15th Draft of the RoC, I’m not so sure that minimum requirements as discussed above are met.

 (Picture: (C) 2009 by jimmyharris via Flickr and licensed under the terms of a CC license [2013-09-01])

In a move towards greater transparency, the European Patent Office is improving the access to the documents of the Administrative Council of the European Patent Organisation. Under this new policy, [...]]]> In Janurary this year I was happy to report that

In a move towards greater transparency, the European Patent Office is improving the access to the documents of the Administrative Council of the European Patent Organisation. Under this new policy, all public documents of the Administrative Council will be made available after each session and published on the EPO’s website. The documents of the October 2012 session are already accessible.

Well, let as have a look what actually has been published there …

Today, on August 30, 2013, I can see there a whopping bunch of 17 (seventeen) publicly accessible AC documents dated 2013, most of them reflecting minor technicalities. Even without having any privileged insights into the inner workings of the AC I feel much on the safe side to assert that just 17 published documents are a trickle compared to the full registry of documents circulated in that body during that time period. And, even this publication of a tiny minority of CA documents has not been announced widely and is hardly to find on the website of the EPO if you don’t already know where to look.

There appears to be only one valid conclusion: The public repository of CA documents as we see it now merely is sort of a fig leaf excuse for not wanting to have much insight into the CA business for the general public.

In this context it is important to closely examine the responsibilities: It would be grossly unfair to blame EPO personnel for this misery, Surely the general policy governing the public availability / confidentiality of CA documents is defined by the CA itself, not by EPO or its President. And the CA is made up of Representatives appointed by the EPC Member States (see Article 26 EPC). And those Representatives are not only selected by their respective national Government but also instructed, briefed, and supervised by the ministry in charge with IP politics (in most cases Ministry of Justice, I’d guess).

This means that on a high ministerial level the general thinking is that it would not be good to give plenty of information out to the general public about the proceedings of the CA of the EPO.

But it goes from bad to worse.

It is not only common thinking of our European political elite that detailed information from CA documents should be withheld. It was the same game when ACTA was negotiated. And, last not least, it was not any different when the deliberations concerning the Unified Patent Court (UPC) were held.

In the context of the latter I have seen an interesting paper from Dr. Ingve Björn Stjerna, LL.M., a German Lawyer and Certified Specialist for Intellectual Property Law seated in Düsseldorf titled „Unitary patent“ and court system – The „sub-sub-suboptimal compromise“ of the EU Parliament. The subject of this paper is as follows:

As is well known, in its meeting on 11 December 2012, the European Parliament adopted the so-called “patent package”, consisting of the Regulations on the “unitary patent” and the translation regime while agreeing to the conclusion of an intergovernmental Agreement for the creating of a “Unified Patent Court System”. The “unitary patent” Regulation is based on a compromise proposal of the (former) Cyprus Council Presidency which was discussed by Legal Affairs Committee of the European Parliament in a special meeting on 19 November 2012, the public was excluded. An audio recording of the meeting, which recently became available, shows the motives for the acceptance of this “compromise” which one of the rapporteurs called “sub-sub-suboptimal” and “a bad solution”
there. The course of this meeting shall afterwards be described and assessed in more detail.

By his meticulous work Mr Stjerna gives us a peep through the keyhole of the locked doors shielding the final phase of the negotiations for the final version of the Unified Patent Court Agreement (UPCA) as signed earlier this year. And what we can see there is not very much appetising.

After the opening of the Internet to the non-academic world in the years after 1995, there was an enthusiastic move to use the new digital technologies for making government-related documents accessible to the general public. It was the time when patent documents and statute books became accessible as PDF files (albeit it was a long way against many forms of resistance from vested interests). The EU opened a huge portal offering a vast amount of official documents, including from the EU Council.

In the meantime, members of the political class  and their support staff have experienced that, in some cases, information freely put up for grabs on the Internet may translate to power. In particular to the benefit of the general public or individuals or NGOs claiming to act on their behalf.

In recent years, more and more relevant documents are kept secret again. For example, the Public Register database of the EU Council increasingly publishes a great many of documents only by some of their metadata, not with any contents.

Today, within an era when apparently our political elites in the western world choose to fund sort of a huge shadow Internet for secretly collecting vast amounts of data from citizens and businesses, discontent grows in view of the widening gap between, on the one hand, our political elites, obviously inapt to solve real problems in a proper way, but at the same time accroaching to learn of all our digital communications going on, and, on the other hand, the general public, perceiving that one item after the other gets resolved poorly or goes down the drain anyway and, at the same time, feeling increasingly shielded from relevant information needed for judging on the performance of our political class.

Hence, what we can see on the stage of IP-related politics appears to be a mirror image of wider problems in nuce.

According to Art. 48 (1) UPCA, all national lawyers of the [...]]]> Reades of this blog may have noticed that we try to cover the discussion about representation rights of European Patent Attorneys before the new Unified Patent Court. Our recent postings related to this issue may be found here, here, and here.

According to Art. 48 (1) UPCA, all national lawyers of the UPC member states are entitled to represent cases before the UPC, regardless of their knowledge and experience in patent law and practise. Art 48 (2) UPCA grants such individual representation rights also to European Patent Attorneys according to Art 134 EPC, if they have an “appropriate qualification such as a European Patent Litigation Certificate“.

Now a proposal of the Institute of Representatives before the European Patent Office (epi) came to our attention (download) in which criteria for the required “appropriate qualification” and a structure of the European Patent Litigation Certificate are proposed to the UPC Preparatory Committee which is in charge of definig this issue.

Appropriate Qualification: The paper states that an appropriate qualification of a European Patent Attorney (EPA) should include

abilities [...] going beyond the European Qualification Examination [...]. They should, in particular, reflect the necessary and desirable skills and knowledge for representation before the UPC.

A source of such abilities is seen in the

extensive experience acquired as patent attorney in their respective EPC member state, going beyond representation before the Patent Office.

The paper mentiones the following examples for such experiences:

• EPAs already qualified to represent before a court in patent matters in an EPC member state and able to afford evidence of an effective experience of representation before such court.
• EPAs that have successfully completed, before entry into force of the UPC Agreement, one of the courses in patent litigation given by CEIPI, Nottingham and Hagen.
• EPAs with a Bachelor level law degree from a university of an EPC member state.
• EPAs demonstrating extensive practical experience of the conduct of patent litigation in an EPC member state, for example by assisting an authorized representative or a judge before national courts in at least five patent litigation cases and/or having commensurate practical experience of the conduct of opposition procedure before the EPO and the Boards of Appeal. 

European Patent Litigation Certificate. For the certificate a modular system is suggested in order to take into account the different levels of legal qualification of national patent attorneys from EPC member states.

In a Core Module the different levels of national education should be ballanced based on an “advanced national patent attorney training”. Such European Patent Attorneys, whose national qualification meets these requirements would then not be required to take this Module. Examples of the issues covered by the Core Moduel are:

• Basic knowledge of the legal principles of civil law, covering common law and continental law,
• Basic knowledge of the “Brussels” EU Regulation and various EU Directives in the IP area (particularly the Directive on Enforcement), EU competition law, International IP law (including the Trips agreement and the Hague Convention on recognition and enforcement of foreign judgements in civil and commercial matters), the European Human Rights Convention,
• Main principles of contract law, IP ownership and company law.
• Organisation and IP related important case law of the European Court of Justice and the Court of First Instance, including preliminary ruling procedure.
• Patent infringement and validity, covering claim analysis, Article 69 EPC, literal/non-literal infringement, contributory infringement, exhaustion, defences against infringement, main case law of the UPC with an emphasis on providing practical strategic advice.

From a European perspective, this new proceedings seems particularly interesting [...]]]> In this ealier posting on the America Invents Act we reported on the new Covered Business Methods Review (faq, info) which allows to challenge any business method patent before the Patent Trial and Appeal Board (PTAB) as soon as it is enforced against an accused infringer.

From a European perspective, this new proceedings seems particularly interesting as the question as to whether or not a claim falls under the CBM review is answered by 37 CFR § 42.301 as follows:

(a) Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

(b) Technological invention. In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

This definition is surprisingly similar to what European case law (and German case law) has developed to define “methods for [...] doing business [...] and programs for computers as such” according to Art. 52 (2), (3) EPC (and § 1 (3), (4) PatG). Even further, the requirement of a “technological feature that is novel and unobvious” seems to correspond to the well-established Comvik approach (cf. T 641/00, 2002) of the EPO Boards of Appeal, according to which non-technical features cannot contribute to novelty and inventive step.

The first case under a CBM review was SAP America, Inc. v. Versata Development Group, Inc. based on US 6,553,350, covering claims relating to ”pricing products in multi-level product and organizational groups“. In its decision of Januar 9, 2013 the PTAB argued that the subject-matter of challenged claims 17 and 26 to 29 does not relate to a technological invention, as theses claims

[require] no specific, unconventional software, computer equipment, tools or processing capabilities [so that] invention may be implemented in any type of computer system or programming or processing environment.

From a European point of view and before the background of Comvic-related case law, this may be understood in the sense  that theses claims do not exhibit a further technical effect beyond the mere usage of computer equipment which would be required to provide a technical solution and patent-eligibility under Art. 52 EPC. At this point the patent would ave been already revoked in Europe, e.g. in opposition proceedings before the EPO. In the US, however, this “non-technological invention test” only is a prerequisite for the “real” patent-eligibility assessment as to whether or not the claim relates to an abstract idea only.

In the final written decision of June 11, 2013 the PTAB decided that the challenged claims are unpatentably abstract (see also here). On pages 25, 26 the decision recaps the known guidance:

To be patentable, a claim must do more than simply state the law of nature or abstract idea and add the words “apply it”. Yet, an application of a law of nature or abstract idea to a known structure or process may be deserving of patent protection. The key question is, therefore, whether the claims do significantly more than simply describe the law of nature or abstract idea.

Particularly with respect to the old Gottschalk v Benson ruling, the decision seems to stress that an abstract idea, e.g. a mathematical method (algorithm), requires “a substantial practical application except in connection with a digital computer” to be patentable.

This again appears conform with the European perspective that a “further technical effect” requires something beyond the normal physical and electrical effects common to all programs executed on a general-purpose computer; see e.g. T 1173/97, T 163/85.

As to the concrete claims under challenge, the PTAB concluded on pages 28 to 33 basically that these claims

• have no substantial practical application except in connection with a computer,
• are implemented by general-purpose computer hardware and programming,
• merely add insignificant, conventional and routine steps that are implicit in the abstract idea itself.

Consequently, claims 17 and 26 to 29 were held unpatentable under 35 U.S.C. §101 as they merely recite unpatentable abstract ideas without providing enough significant meaningful limitations to transform these abstract ideas into patent-eligible applications of these abstractions.

Conclusion. As this outcome would be perfectly justified also before the background of European patent law, the difference between a non-technological invention and an abstract idea remains somewhat unclear to me, as both issues were decided by basically pointing to the fact that the challenged claims do not go beyond an unspecific general-purpose computer environment.

According to 37 CFR § 42.301, claims are only admitted for review under the CBM program if they do not comprise a “technological feature that is novel and unobvious over the prior art”. Thus, from a logical point of view, this appears to imply that a non-technological claim covered by 37 CFR § 42.301 may only be rendered patentably non-abstract by substance not lying in any field of technology.

This almost inevitably means that a patent can be granted in the US exclusively based on novel and unobvious non-technological features, i.e. on pure mathematical, computational, or business-related progress. Doesn’t the cat catch its tail here as exactly this is excluded by pertinent US case law?

Therefore, at least for me, the question arises, what is the difference between a non-technological and an abstract claim? And, from a different perspective, how can a non-technological invention be non-abstract and thus patentable?

Doesn’t a technological invention always imply non-abstractness and vice versa?