A THANK-YOU, AN EPO DECISION AND A FRESH ETMR

1 Thanks for coming to visit

This August was a record month for visitors to the IPKat weblog. The site received 11,441 hits, an increase of more than 500 over its previous best-ever month. In addition, IPKat's August postings were emailed direct to 146 individual recipients.

Thanks so much for showing your interest - and for posting your comments (even when they're anonymous). It's an incredible incentive for the IPKat to try to keep the standard up and to improve upon it if possible (What about me ...?, says Merpel)


2 Tribulations among the phosphoramidites

The IPKat's friend Darren Smyth (below, right) has just sent him this note on a recent European Patent Office (EPO) decision, T0713/02 (Phosphoramidites/Avecia). It is due for publication in the Official Journal, and has just been posted to the website. Darren explains:

It appears that Avecia, the applicant, had intended to claim priority from a US application and its CIP, but in fact erroneously only claimed the second priority. There was a novelty-destroying publication before the filing date, but after the priority date that had not been claimed. The first Examination Report raised a novelty objection, and the applicant amended the claim by means of a disclaimer to remove the compounds in the cited publication. The second Examination Report then raised an inventive step objection based on the same document, and then the applicant requested a correction to add the priority claim that had been omitted (and therefore make the publication no longer citable).

A formalities officer issued a communication allowing this correction, but the Examining division disagreed. It held that the communication had not been a decision, and furthermore that it was ultra vires because the formalities officer had acted beyond his competence. The Examining division did not allow the correction, mainly because of the long delay in seeking it.

The Board of Appeal held that the Communication from the formalities officer was not a final, binding decision, and that it had the power to review it. And basically it agreed with the Examining division that the correction should not be allowed because of the delay in seeking it, and because the priority claim was particularly important in the present case because the question of whether a cited document was prior art depended upon it. The applicant had already accepted that the publication was a novelty-destroying citation by amending the claim in response to the first Examination report, and had therefore accepted the lack of the first priority claim. The headnote reads:

1. Even where the Formalities Officer allowed a request for correction of priority data, that matter is not thereby decided in the applicant's favour in binding form prior to the decision terminating the granting procedure and is, thus, open to review by the Board of Appeal. (Point 2.1 of the reasons).

2. The examination of a request for correction of priority data after the publication of the application is not to be restricted to that portion of the facts and circumstances which in a decision of a Board of Appeal in another case were considered not to preclude the correction. Therefore, in the present case, it cannot be ignored that the requested correction by addition of an earlier priority date would eliminate from the state of the art pursuant to Article 54(2) EPC a highly relevant document, which the applicant had previously de facto accepted as comprised in the state of the art. (Point 2.2 of the reasons).

Darren observes that it seems harsh on the applicant to lose an application because of a clerical error which should have been spotted earlier but wasn't. The IPKat fondly remembers the days of Gunther Gall at the EPO when every effort was made to negate the harsh effects of arbitrary rules, particularly for the benefit of the patentee.


3 Latest ETMR

The September 2005 issue of Sweet & Maxwell's European Trade Mark Reports has just come out. As usual it's full of goodies, including four English-language versions of decisions from non-English speaking jurisdictions:

* BMW Motorhaube (BMW engine hood), where the German Bundespatentgericht cancels the registration as a trade mark of a car part and reviews various grounds of cancellation;

* SPCEA v Greenpeace France, in which the Tribunal de Grande Instance de Paris held that the use of a distorted version of the claimant's trade mark on its website was not a trade mark infringement as such (not a commercial use), but that there was nonetheless liability for denigratory treatment of the mark;

* Les Grands Chais de France v Albert Heijn, where the Court of The Hague meditated on the likelihood of confusion between a popular brand of wine and a lookalike product;

* Ferrari SpA v Turkish Patent Institute, where the Ankara Court of Intellectual Rights, Turkey, explained how the owner of the MASERATI trade mark was entitled to well-known marks protection against the MASERA mark.

There are also cases from Ireland, the UK, OHIM and the Court of First Instance of the European Commnunities. An additional novelty, not without European interest, is a non-precedental decision of the TTAB in the United States that the word mark NOT MADE IN FRANCE is unregistrable (but why, Merpel asks?).

The IPKat is, as usual, delighted to hear from any readers who know of good European trade mark cases that should be reported. Just contact him here.