Ad hoc news via Twitter

@FPCreviewSometimes it takes me a while to draft a meaningful and reasonably investigated post; I am not going to spoil this Blog with half-baked stuff. On the other hand, I’d like to share information that is readily available as soon as possible. I will use Twitter (@FPCReview) from now on to share such advance information.

Starting off right now (if you haven’t seen the tweet already):

Revised Guidelines effective as of 1 January 2016

The Guidelines on Proceedings before the FPC are upon to change with effect as of 1 January 2016. The FPC currently provides English translations of both the old and the new Guidelines: see Guidelines effective until 31 December 2015 and Guidelines effective as of 1 January 2016.

I have compiled a tracked-changes version to spot the changes:

Download (PDF, 199KB)

Apparently, only Art. 7 is concerned. It is now clarified that the terms refer to main proceedings. Moreover, it is made clear that terms of six weeks are granted for submission of the defence to a claim or a counter-claim, and that a term of four weeks is granted for “further submissions” (e.g. reply and rejoinder). In my perception, this is inline with current practice.

Reported by Martin WILMING

The independence of judges — and how to check it

Having briefly commented on the revised Guidelines on Independence only yesterday, I have now taken note of some further amendments on the website of the FPC; please see the screenshot below:

Website FPC, screenshot of 06 January 2014

First, the companies for which the judges work (besides their assignment at the FPC) are now explicitly indicated for each and every judge. Since Art. 4 of the revised Guidelines now extends to these companies, parties are enabled to more easily investigate the independence of the judges. In order to further enable parties to do such checks, the FPC has compiled a leaflet on how to use official patent, trademark and design databases (embedded hereinbelow). This leaflet is accessible via a link atop the list of judges (see above screenshot).

Download (PDF, 31KB)

Reported by Martin WILMING

Revised Guidelines on Independence effective as of 1 January 2015

As already indicated earlier, the decision 4A_142/2013 of the Supreme Court prompted changes to the Guidelines on Independence. The new Guidelines have been published recently and are effective as of 01 January 2015.

Please find below a tracked-changes version that I have compiled based on the English translations of the former Guidelines and the revised Guidelines. Note that these English translations are provided by the FPC for information purposes only; they have no legal force. Anyhow, besides some editorial amendments, you will readily note the — in my personal opinion — most important changes:

  • Expectedly, Art. 4 now also extends to the company for which the court member works.
  • Art. 5 has been deleted. Former Art. 5 held that purely administrative activities for achieving or maintaining the validity of the Swiss part of a European patent of one of the parties (not the patent in dispute) was not deemed to constitute a ground for recusal. Now, such activities are included in the list of special grounds for recusal (see Art. 4, lit. g).

It will be interesting to see how the FPC will actually apply these revised Guidelines — and how they stand the test of daily grind.

Download (PDF, 204KB)

I have also compiled a tracked-changes version based on the official German versions of the former and the revised Guidelines:

Download (PDF, 205KB)

Martin Wilming

Searching decisions in the database of the FPC with a detailed query form

A “simple search” for decisions had already been available on the FPC website since the very beginning, but I have noticed only recently that the FPC has meanwhile enabled much more detailed database queries:

Database query / search for FPC decisions

A manual is also available. This search interface is definitely a valuable tool.

Note, however, that indexing is not exhaustive (e.g., a search for “Costs: Legal aid” in field “GL” does not result in any hits, but there are published cases that inter alia deal with this topic — but the respective tag has not been assigned).

Moreover, there is apparently a difference between the two fields “GL” and “GS”: Both are entitled “Subject”, but searching those fields with the same query yields completely different results. For instance, searching for “Assignment of patent” in field “GL” yields O2012_012 and S2012_009. However, searching for “Assignment of patent” in the field “GS” only results in S2012_005 — a hit that is not at all produced in the field “GL”.

Parties are expected to promptly inform the FPC about corresponding decisions in other jurisdictions

Recently, a party to proceedings pending at the FPC had informed the FPC of a decision issued by a foreign court in co-pending proceedings. The counterparty requested that this submission be dismissed, in view of the FPC’s case law on unsolicited submissions.

The President took the opportunity to clarify the following:

Even though the FPC does not appreciate unsolicited submissions, harmonisation in Europe in fact requires that the FPC takes corresponding decisions issued in other jurisdictions into consideration. In doing so, the FPC thus first needs to know such corresponding decisions. Consequently, the FPC not only accepts such information, but in fact expects parties to promptly provide such information.

Reported by Martin WILMING