INGRES Conference Part I - European Patent Law Developments

On Monday, INGRES, the most active Swiss association of IP practitioners, held its annual conference on European intellectual property law in Zurich (yes, European law - the conference on Swiss IP law is traditionally held in July. And yes, Swiss IP practitioners take a keen interest in developments in European IP law, despite Switzerland not being a member state of the EU).

The morning was entirely dedicated to patent law. Among the esteemed presenters were Klaus Grabinski (Bundesgerichtshof), Petra Schmitz (Member Board of Appeal @ EPO), Stefan Luginbühl (Director, International Legal Affairs @ EPO), Tilman Müller-Stoy (Bardehle Pagenberg) and Dieter Brändle and Tobias Bremi (Swiss Federal Patent Court).

Not the conference location, but the location
for the ski excursion the previous day

Out of the many decisions of the BGH rendered in 2016, Klaus Grabinski chose one of particular relevance for inventive step (X ZR 78/14 - optical element), one concerning a use up period for patent infrining goods (X ZR 114/13 - heat exchanger), and no less than three concerning different aspects of infringement by equivalent means (X ZR 29/15 - Pemetrexed, X ZR 76/14 - v-shaped guiding element, and again X ZR 114/13 - heat exchanger) for a closer look.

On inventive step, the "optical element" (LED) decision held that the choice of a prior art document as "the" closest prior art requires a justification. Such justification is generally found in the motivation to find a solution to the problem to be solved, and not merely in the most common structural features. When a prior art document is a potential "springboard", it is irrelevant that there are other prior art documents that may be equally suitable as starting points for the development that leads to the invention. This struck me as quite close to the EPO approach, with an even greater emphasis on whether the "closest" prior art addresses the same problem as the invention. During the discussion it was pointed out that under the EPO approach, the definition of the problem to be solved changes depending on the closest prior art. Hence it is futile to say that several prior art documents (with different disclosures) are more or less suitable starting points to develop a solution to the same problem, because the problem cannot remain the same. The answer to this was not entirely satisfactory IMHO - essentially, it was argued that the problem to be solved needed to be defined broadly enough to allow several closest prior art documents to be considered.

On the use up period, the BGH explicitly referred to the UK decision Navitaire Inc v EasyJet Airline Co Ltd (No. 2) [2005] EWHC 282 (Ch), [2006] RPC 4 for the proposition that injunctive relief should only be denied if it is "grossly disporportionate". In the specific case, the prohibition to sell convertibles with an "Airscarf" feature (warm air blown around the neck), was not disproportionate. It was made clear that denial of injunctive relief must remain an absolute exception to the rule that the patentee is entitled to injunctive relief. The usual inconveniences of a prohibition are insufficient to justify such an exception. While injunctive relief is not automatic, we are a far way from Ebay v. MercExchange.

Dr. Klaus Grabinski telling it like it is

Petra Schmitz presented on the assignment of the priority right (T 205/14), allowability of undisclosed disclaimers (pending referral before the EBO) and the withdrawal of an appeal after non-payment of a renewal fee (T 1402/13).

The assignment of the priority right led to the most discussion. In T 205/14 the BoA found that the EPC contained no provisions on the requirements for a valid assignment of the priority right, not even a requirement that such assignment must be in writing (against T 62/05). The assignment was exclusively governed by national law. In the case of the assignment of an invention from an employee to the employer, such assignment was governed by the law applicable to the employment law relation, in the specific case Israeli law. The place of filing of the priority application (in the case US) was irrelevant. A number of commentators disagreed with this. There was also disagreement whether the parties could validly choose the law applicable to the assignment of the priority right. In the T 205/14, there was no explicit choice of law, and the BoA did not need to address the issue. Petra Schmitz hinted that there would shortly be a decision that addressed this issue in the case of an assignment outside an employee-employer relationship. The question is of great practical import because the priority right must be validly assigned at the time of filing of the application claiming the priority. One cannot later amend a lacking assignment.

Stefan Luginbühl presented on the latest developments in European patent law, notably the Unitary Patent and Unified Patent Court (UPC). To make it short, nobody's blinking so far, the UPC system is expected to come into force January 2017. Germany's parliament is expected to approve ratification in spring, but the ratification document will not be submitted until the UK has ratified. The preparatory committee has received 840 applications for the positions as judges at the UPC (40% from Germany, 16% each from the UK and France), among them all the well-known patent judges of Europe. It was pointed out during the discussion that the Agreement on a Unified Patent Court contains no exit provision - should the UK actually ratify, it is unclear how it could leave should it want to (or have to) once it is leaving the EU.

Tilman Müller-Stoy gave an outline of the procedural rules of the UPC with a focus on the rules of evidence. Points of discussion were the affidavits and the obligation to produce evidence favouring the other side. Affidavits must be submitted with  a statement of the witness that he is aware of his obligation to tell the truth and of his liability under applicable national law in the event of any breach of this obligation - the consensus being that the applicable law is the law of the place of the local division where the affidavit is submitted, not the law where the witness resides. It is an open question what happens if the law at the place of the local division does not provide for sanctions for false written witness statements because such statements are unknown in the national law. A hearing of the witness in person must be explicitely requested. On the production of evidence, a party may be obliged to disclose evidence in its possession, provided that the requested items of evidence are reasonably specified (R 170.3, 190). The only sanction that can be imposed for non-compliance with a production order seems to be adverse inference. Whether this is a sharp or blunt instrument depends on how this will be handled in practice.