tag:blogger.com,1999:blog-5574479.post8902651355760704679..comments2024-03-29T11:10:02.290+00:00Comments on The IPKat: [Conference report] Whither will bifurcation go? A critical discussion on Germany's bifurcated patent proceedingsVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger9125tag:blogger.com,1999:blog-5574479.post-2553321417866944632021-10-22T14:20:10.184+01:002021-10-22T14:20:10.184+01:00My earlier post regarding stays seems to have got ...My earlier post regarding stays seems to have got lost but never mind. This post is stimulated by a TBA decision reported today, see https://www.epo.org/law-practice/case-law-appeals/pdf/t150463du1.pdf<br />The opposition was filed in 2011 and the proceedings have been concluded 10 years later with the opposition being rejected. To argue that the patentee should not be able to enforce their rights pending an opposition would effectively be denying the patentee their legal monopolistic rights.Kantnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-83322800779521448562021-10-17T15:55:08.115+01:002021-10-17T15:55:08.115+01:00The problem is when you see decisions after appeal...The problem is when you see decisions after appeal in opposition before the EPO, around two thirds if not more of the patents are either revoked or maintained in amended form.<br /><br />And more than often the revocation or amendment is due to documents which were available at the time of the search but were not retrieved during the search (even Art 54(3) prior art from the applicant!).<br /><br />It would be wise to wait for the result of an opposition when there is an opposition pending at the EPO before deciding on the validity and hence the possible infringement of the German part of an European patent. <br /><br />When extrapolating the figures from oppositions at the EPO which roughly concern 5% of the granted patents, it seems also advisable to wait the result of the validity examination of the German part of an European patent before deciding on infringement.<br /><br />I claim that when hit by an infringement action before a German court, it is clear that in most cases the alleged infringer will hit back with a lack of validity. The chances of succeeding on the validity side are quite good when looking at the prior art dug out by opponents. <br /><br />The EPO claims that its quality has improved since 2010.<br />An analysis of the decisions of the BA in matters of opposition show that this is not, and by far, the case. <br /><br />What about the validity of the patents granted by the EPO?noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-4855713667372670092021-10-15T22:24:12.188+01:002021-10-15T22:24:12.188+01:00The question is, how much is intent here, and how ...The question is, how much is intent here, and how much is simply history.<br /><br />Until 1961 the patent office had "senates" (plus a board of appeal) to decide on validity. But since there is a right to have a court review decisions of an office, the Federal Patent Court had to be set up, and the senates were taken out of the patent office and turned into a court (any parallels to the EPO boards?).<br /><br />If anyone wants to change this, this would mean a major overhaul of the patent act and the institutions.<br /><br />Vice versa, the Länder would not accept moving infringment suits to the Federal Patent Court, as they would loose a cash cow of their judicial system (since the "Streitwerte" are often so high in patent matters)...<br />Fragendernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-20266383892899346452021-10-13T13:56:45.597+01:002021-10-13T13:56:45.597+01:00"The problem is thus a question of coordinati..."The problem is thus a question of coordination between the judicial authorities of the Länder and the Federal Patent Court."<br /><br />This is doe-eyed innocence, implicitly assuming that it would be a good thing for the gap to disappear.<br /><br />A DE patent has been examined by the mighty DPMA, and assumed to be valid from the point of grant. Analogously for an EP(DE). In fact, if the DE patent or EP(DE) has survived an opposition, the presumption is so strong that a preliminary injunction can be obtained much more easily. <br /><br />So the default assumption is that the patent is valid. Why would an infringement court need to bother itself about validity? It is being asked to adjudicate based on a patent that must be valid, by virtue of the patent's own existence. Questions of validity at that point are somewhat vulgar, and besmirch the reputation of the respected DPMA.<br /><br />Patentees in German industry, too, have not expensively and laboriously amassed portfolios of tens of thousands of DE patents each with a scope of protection measurable only in angstroms, only to be told that they may not enforce them when the time is right. That would be an outrage. Questions of patent validity are a trifling distraction to the main goal - that of bankrupting the competition. <br /><br />Think too of the respected lawyers of Oberkassel (Dusseldorf) or Solln (Munich) and the associated brave estate agents, car showrooms, housekeepers, decorators, gardeners, restaurants, au pairs, and private schools sustained by dint of honest exploitation of the injunction gap to the benefit of the clients of these lawyers, without fear or favour.<br /><br />No, the injunction gap is a great trickle-down success story of the modern German economy. Anybody arguing otherwise is simply jealous that they don't have the required monies to survive an 18 month preliminary injunction. Mind the Gap and zum Wohl!<br /><br /> <br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87833288826418091002021-10-13T13:30:22.487+01:002021-10-13T13:30:22.487+01:00As Patentee, it's great if you can have a posi...As Patentee, it's great if you can have a positive decision on infringement and leave the tricky issue of validity for another year or two...!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90153707230143245122021-10-13T12:31:56.833+01:002021-10-13T12:31:56.833+01:00The local courts are capable of deciding on the va...The local courts are capable of deciding on the validity of a utility model on an inter partes basis. Since the validity of a patent would involve the same considerations, there is no real reason for patent infringement matters to consider validity at such a superficial level other than that because the patent is an examined right there is the presumption of validity.Kantnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-70317934051098272532021-10-13T09:47:57.345+01:002021-10-13T09:47:57.345+01:00Thanks for the explanations.
The problem is thus ...Thanks for the explanations. <br />The problem is thus a question of coordination between the judicial authorities of the Länder and the Federal Patent Court. <br />I would nevertheless think that it does not bring much to decide on infringement before having decided on validity. <br />This is the more so since both procedures end up in the Federal Court (BGH). <br />The problem is to be solved, but this needs a political will.What justifies bifurcation?noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-52456619039413693192021-10-12T16:46:36.729+01:002021-10-12T16:46:36.729+01:00In Germany, infringement is determined by the Länd...In Germany, infringement is determined by the Länder. A patent is granted by the Bund (Federal state). It is not possible for the court of a Land to annul a property right granted by the Federal state, hence the infringement courts of the Länder are mainly concerned with the Infringement issue. Revocation can only be promulgated by the Federal Patent Court in Munich, with appeals to the Constitutional court.<br /><br />So it is not a matter of Germany "deciding" for a bifurcated route. Bifurcation is a hack to get around constraints imposed by the German constitutional settlement. A German correspondent might wish to "circle back" with more detail, and particularly to what extent the Infringement courts of the Länder are allowed to consider validity during the infringement trial (for procedural/case management reasons on a prima facie basis?).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-32018550192011846552021-10-11T14:27:40.839+01:002021-10-11T14:27:40.839+01:00It would be interesting to know why Germany has at...It would be interesting to know why Germany has at decided for a bifurcated route. Dealing separately infringement and validity does not seem logical. <br />Normally, there cannot be infringement if a patent is not valid. <br />The question is thus why such an injunction gap has at all be created.<br />On the other hand, the German Supreme Court (BGH)is well known for its pro-patentee position. <br />Requesting the German Patent Federal Court (BPatG)to deliver its decisions within a tight time schedule without giving it the staffing needed is not very coherent. <br />The argument that by having a bifurcation the costs are lower only applies when the basis fee for infringement is way lower as the basis fee for nullity. <br />The question to be answered is thus quite different: is the bifurcated system not unduly favouring the patentee to the detriment of a potential infringer? <br />I would say the reply is positive and to reduce the injunction gap would simply be to order a stay if the validity is challenged. If it turns out that the stay was lacking a proper basis and is simply to gain time or even boils down to deceitful manoeuvres, the corresponding penalties for infringement could be increased by a certain percentage. <br />It should not be forgotten that the judges at the BPatG are mainly technically qualified judges which can even return to the German Patent Office after having served on the BPatG.What justifies bifurcation?noreply@blogger.com