INGRES conference on developments in European IP law 2015 - patents

Yesterday, the Institute for Industrial Property (INGRES), a Swiss association of IP enthusiasts, held its annual conference on developments in European IP law at the Sorrell hotel in Zurich. The esteemed speakers included Klaus Grabinski of the German Federal Court of Justice, Ursula Kinkeldey, former Permanent Member of the Enlarged Board of Appeal at the EPO, Stefan Luginbühl, International Legal Affairs with the EPO and expert on the Unitary Patent Package, IPKat Eleonora Rosati and many others.

The morning was dedicated to all things patent law. Klaus Grabinski presented highlights from the BGH's patent jurisprudence in 2015. I always find it interesting which cases an insider selects for such talks, which in this case were the Apple "slide to unlock" patent decision, concerning the thin line between technical nature and presentation of information as such, X ZR 101/13 ("polymer foam II") of 6 September 2015 concerning the interpretation of claims and added subject matter, X ZR 103/13 ("cross linkage") of 2 June 2015 concerning the interpretation of claims in view of the examples, and X ZR 81/13 ("cooking pot") of 13 January 2015 concerning equivalent infringement by means that do not achieve entirely the same effect as the means according to the claim. Klaus Grabinski also mentioned discussions in Germany on whether double patenting should be permissible in the future (see Article 139(3) EPC), as it currently is, e.g., in Denmark and Sweden (see p. 290 sqq. of National Law Relating to the EPC, 16th ed. 2013, for an overview of the legal regimes regarding double patenting in EPC contracting states). This would provide patent proprietors with a fallback position in case their European Patent or Unitary Patent was revoked unjustly by the Unified Patent Court. The downsides of double patenting are the risk of contradictory decisions and the increased burden on competitors to clear the path - good reasons that have led most contracting states not to allow double patenting.

Ursula Kinkeldey, as a former permanent member of the Enlarged Board of Appeal at the EPO no longer subject to the EPO's president's disciplinary powers, addressed the referral G1/15 concerning partial priorities, but not without first expressing her concerns over the "tumultous" (quote/unquote) staff relations at the EPO. Sticking to facts, let's just recap that as of 1 January 2016, 7 (25%) Technical Boards were without president, 14 (13%) of technically qualified member positions were vacant and 7 (21%) of legally qualified member positions were vacant. One board in the field of electrical engineering had only two technically qualified members, and the situation is expected to get worse in 2016. The firing of two SUEPO members last week led to a wave of solidarity namely for Ion Brumme, who is hard hit by the loss of income for his family. The plan to move the Boards of Appeal to Vienna, on the other hand, seems to be shelved.

Stefan Luginbühl of the EPO brought to everyone's attention that a new wording of Rule 82 EPC will enter into force on 1 May 2016, allowing handwritten auxiliary requests during oral hearings. Under the new (old) rule, the authentic text of the patent as amended will be the text filed during oral proceedings even if the proprietor is unable to provide formally correct documents at that moment. Documents fulfilling the formal requirements under Rule 49(8) EPC will only need to be submitted within a period of three months, as the other formal requirements set forth in Rule 82(2) EPC. Luginbühl's overview of the UPC Package's implementation provided little new information, except that last week, Finland ratified the Agreement on a Unified Patent Court as 9th Member State. A point of contention are the costs of the proceedings and the (amount of) reimbursement of legal fees by the losing party, which was considered too high by many small and medium enterprises according to the survey conduct last July.


Konstantin Schallmoser of Preu Bohlig & Partner then reminded everybody that not acting when the UPC Package comes into force is also a decision. "Acting, not reacting" was the theme of his talk. Reasons for opting out of the UPC system were the risk of an invalidity decision concerning all national parts of a European Patent, familiarity of national court systems and lower costs, at least in Germany, for the enforcement of a national part of an EP. On the downside, there was a risk that an opt-in was later not possible (because once a national proceeding has been started, there is no way back into the UPC system), higher cost in case of multi-jurisdictional proceedings, costs of the opt-out (this is still an open question - there may be no fee after all) and the legal uncertainty regarding the validity of the opt-out in case of multiple owners. Konstantin thinks that in case of "strong" patents, i.e., patents likely to survive a validity challenge, the advantages of the UPC system outweight the drawbacks, while "weak" patents should be opted out. Readers are invited to leave their comments.

Cat model, not utility model

Dirk Szynka provided an overview of the German utility model, highlighting several benefits not widely known - or rather, recently forgotten by many practitioners. Namely, although since the BGH decision "Demonstrationsschrank" the inventive step required for a valid utility model is the same test as the inventive step under patent law, the definition of the prior art is not. The German utility model knows a six month grace period in favour of the inventor and its successors, and prior public uses are only considered if they occurred in Germany. The latter point, together with the limited searchability of German utility models (they do not necessarily show up as members of a patent family), may provide a nasty surprise for foreign competitors. On the other hand, the courts in Düsseldorf and Mannheim are reluctant to issue ex parte injunctions based on (non examined) utility models - but the Munich courts seem to be more open for this.

In a second post, I will cover the "soft IP", starting with Eleonora's contribution on developments in EU copyright.